Exhibit 10.14
CuraGen Corporation has omitted from this Exhibit 10.14 portions of the
Agreement for which CuraGen Corporation has requested confidential treatment
from the Securities and Exchange commission. The portions of the Agreement for
which confidential treatment has been requested are marked with X's in brackets
and such confidential portions have been filed separately with the Securities
and Exchange Commission.
RESEARCH AND OPTION AGREEMENT
This Research and Option Agreement ("Agreement") is made effective as of
October 1, 1997 (the "Effective Date") by and between BIOGEN, INC., a
Massachusetts corporation having its principal business office at 00 Xxxxxxxxx
Xxxxxx, Xxxxxxxxx, XX 00000 ("BIOGEN"), and CURAGEN CORPORATION, a Delaware
corporation with its principal place of business at 000 Xxxx Xxxxx Xxxxx, 00xx
Xxxxx, Xxx Xxxxx, Xxxxxxxxxxx 00000 ("CURAGEN"). BIOGEN and CURAGEN are each
hereafter referred to individually as a "Party" and together as the "Parties".
WHEREAS, BIOGEN desires to have access to CURAGEN's functional genomics
technologies (including GeneScape(R), QEA/GeneCalling, MIM/PathCalling and all
additional services provided by CURAGEN) and to have CURAGEN apply such
technologies to certain BIOGEN Proprietary Material in order to expedite the
discovery of information which may lead to the development of novel
pharmaceutical products;
WHEREAS, BIOGEN and CURAGEN wish to initiate the performance of certain
research by CURAGEN;
WHEREAS, BIOGEN wishes to obtain an option to evaluate and license the
inventions obtained or made by CURAGEN in the performance of the research
pursuant to this Agreement, as well as an option to evaluate and license certain
other inventions of CURAGEN;
WHEREAS, BIOGEN will agree to make an equity investment in CURAGEN Common
Stock itself, or through one of its Affiliates, in the amount of Five Million
Dollars ($5,000,000), such investment to be made contemporaneously with the
initial public offering of CURAGEN Common Stock;
WHEREAS, BIOGEN will itself, or through one of its Affiliates, also agree
to loan CURAGEN up to Ten Million Dollars ($10,000,000) on the terms and
conditions as set forth herein; and
WHEREAS, BIOGEN and CURAGEN therefore agree to undertake the foregoing, all
under the terms and conditions set forth in this Agreement.
NOW, THEREFORE, in consideration of the mutual covenants contained
herein, and for other good and valuable consideration, the receipt and adequacy
of which are hereby acknowledged, the Parties hereby agree as follows:
1. DEFINITIONS
Whenever used in the Agreement with an initial capital letter, the terms
defined in this Section 1 shall have the meanings specified.
1.1 "Affiliate" shall mean any corporation, firm, limited liability
company, partnership or other entity which directly or indirectly controls or is
controlled by or is under common control with a Party to this Agreement.
"Control" means ownership, directly or through one or more Affiliates, of fifty
percent (50%) or more of the shares of stock entitled to vote for the election
of directors, in the case of a corporation, or fifty percent (50%) or more of
the equity interests in the case of any other type of legal entity, status as a
general partner in any partnership, or any other arrangement whereby a Party
controls or has the right to control the Board of Directors or equivalent
governing body of a corporation or other entity.
1.2 [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
1.3 [XXXXXXXXXXXXXXXXX] shall have the meaning set forth in Section 2.6.
1.4 "BIOGEN Proprietary Material" shall mean samples provided by BIOGEN to
CURAGEN for the purposes of performing the Research Program and shall also be
deemed to include the nucleic acids and other substances actually contained in
such samples.
1.5 "Clone" shall mean a segment of DNA representing a whole or partial
gene whose sequence or utility is determined from the use of one or more Data
Sets.
2
[Confidential Treatment Requested]
1.6 "CURAGEN Background Inventions" shall mean all patent rights and
know-how of CURAGEN, other than those relating primarily to Inventions, which
CURAGEN has the right to license as of the Effective Date or at any time during
the Term hereof, and which would be infringed by the activities of BIOGEN
permitted by this Agreement or by the development, manufacture, use, sale or
importation of a Licensed Product; provided, however, that CURAGEN Background
Inventions shall expressly exclude (i) any patent rights or know-how
specifically relating to Clones or genes not licensed by BIOGEN pursuant to an
executed License Agreement and (ii) any patent rights or know-how arising from
any CURAGEN collaboration with a third party, except to the extent permitted
thereby.
1.7 "CURAGEN Data" shall mean all information obtained by CURAGEN from the
processing of specified CURAGEN samples, including QC data, expression data,
xxxxxxxx xxxx and any other information obtained or generated by CURAGEN in the
performance of a discrete CURAGEN Project outside the performance of the
Research Program.
1.8 "CURAGEN Data Set" shall mean all CURAGEN Data resulting from a
discrete CURAGEN Project.
1.9 "CURAGEN Project" shall mean a particular project undertaken by
CURAGEN outside the Research Program to process and analyze a specified set of
samples which do not contain BIOGEN Proprietary Material, and as to which
CURAGEN is free to grant rights to BIOGEN hereunder.
1.10 "CURAGEN Project Invention" shall mean any discovery, invention,
know-how or trade secret conceived or made by employees of CURAGEN in the
performance of a CURAGEN Project that results in CURAGEN Data that becomes part
of an Exclusive Data Set, that is based on, incorporates or makes material use
of the corresponding CURAGEN Data.
1.11 "CURAGEN Proprietary Material" shall mean all substances made by
CURAGEN in the performance of the Research Program other than mRNA pools
extracted from BIOGEN Proprietary Material . CURAGEN Proprietary Material shall
also mean all substances made by CURAGEN in the performance of CURAGEN Projects,
including mRNA pools. CURAGEN Proprietary Materials shall include, without
limitation, QEA fragments and materials derived or constructed from QEA
fragments, including, without limitation, fragment and full length cDNA clones.
3
1.12 "Data Set," which may be either a Project Data Set or a CURAGEN Data
Set, shall mean all Project Data resulting from a discrete Research Project or
all CURAGEN Data resulting from a discrete CURAGEN Project, respectively.
1.13 "Discovery Project" shall have the meaning set forth in Section 1.29.
1.14 [XXXXXXXXXXXXXXX] shall have the meaning set forth in Section 7.5.
1.15 "Exclusive Data Set" shall mean any Project Data Set during the
corresponding Exclusive Evaluation Period as provided in Section 2.4 or any
CURAGEN Data Set during the corresponding Exclusive Evaluation Period as
provided in Section 2.5.2.
1.16 "Exclusive Evaluation Period" shall have the meaning set forth in
Section 2.4 or 2.5.2.
1.17 "FTE" shall mean the equivalent of a full year of effort on a full
time basis of a researcher possessing skills and experience necessary to carry
out applicable tasks under the Research Program.
1.18 "Invention" shall mean either a CURAGEN Project Invention or a
Research Project Invention.
1.19 [XXXXXXXXXXXXXX] shall have the meaning set forth in Section 2.1.3.
1.20 "License Agreement" shall mean a license agreement in the form of
Appendix C hereto executed by the Parties upon exercise of any Option pursuant
to Section 7.
1.21 "Optioned Clone" shall have the meaning set forth in Section 7.1.
1.22 "Option Period" shall have the meaning set forth in Section 7.3.
1.23 "Patent Rights" means the rights and interests in and to issued
patents and pending patent applications in any country, including, but not
limited to, all provisional applications, substitutions, continuations,
continuations-in-part, divisions, and renewals, all letters patent granted
thereon, and all reissues, reexaminations and extensions thereof, whether owned
solely or jointly by a Party or licensed in by a Party, with the right to
sublicense, now or in the future, wherein at least one claim of such patent
right is to an Invention.
1.24 "Previously Committed Clone" shall mean any Clone (a) which is subject
to a license or an option previously granted by CURAGEN to any third party, (b)
which a third party has requested CURAGEN to full-length clone, or (c) of which
a third party has commenced full-length cloning and notified CURAGEN thereof.
4
[Confidential Treatment Requested]
1.25 "Project Data" shall mean all information obtained by CURAGEN from
the processing of BIOGEN Proprietary Material in a particular Research Project,
including QC data, expression data, xxxxxxxx xxxx and any other information
obtained or generated by CURAGEN in the performance of each Research Project in
the Research Program.
1.26 "Project Data Set" shall mean all Project Data resulting from a
discrete Research Project.
1.27 "Research Committee" or "RC" shall have the meaning set forth in
Section 2.2.1.
1.28 "Research Plan" shall mean the written description of the research to
be performed by CURAGEN under this Agreement, as further described in Section
2.1.3. The Research Plan may specify one or more independent Research Projects.
1.29 "Research Project" shall mean (i) a particular project to process and
analyze a specified set of samples in the Research Program, one of the primary
purposes of which is the discovery of novel genes or novel utilities of genes (a
"Discovery Project") or (ii) any other project mutually agreed to by the
Parties. Each individual Research Project shall involve the analysis of no more
than [XX] samples unless otherwise agreed by the Parties.
1.30 "Research Project Invention" shall mean any discovery, invention,
know-how or trade secret conceived or made by employees of CURAGEN or BIOGEN or
jointly by employees of both, (a) in the performance of a Research Project
hereunder, or (b) in the course of evaluating or utilizing any Data Set, in each
case that is based on, incorporates or makes material inventive use of the
corresponding Project Data or CURAGEN Data.
1.31 "Research Program" shall mean the research program to be performed
by CURAGEN under this Agreement as described in the Research Plan and amendments
thereto.
1.32 "Research Term" shall have the meaning set forth in Section 2.3.1.
1.33 "Term" shall have the meaning set forth in Section 8.1.
1.34 "Territory" shall mean the world.
2. RESEARCH PROGRAM
2.1 Implementation of Research Program.
----------------------------------
5
[Confidential Treatment Requested]
2.1.1 Basic Provisions of Program.
---------------------------
(a) The objective of the Research Program will be for CURAGEN to generate
and deliver to BIOGEN Project Data Sets by performing Research Projects
utilizing BIOGEN Proprietary Material. CURAGEN shall use commercially reasonable
efforts to perform such tasks as are set forth in the Research Plan, including
use of its functional genomics technologies (including GeneScape(R),
QEA/GeneCalling, MIM/PathCalling and all additional services provided by
CURAGEN) and the provision of such facilities and materials (other than BIOGEN
Proprietary Material), equipment and consultants as it deems necessary to the
achievement of such Research Plan and shall deliver each Project Data Set to
BIOGEN using the GeneScape(R) database and software. In carrying out the
Research Program, CURAGEN shall devote an average of at least [XXXXXXXX] FTEs
per year to the Research Program over its five year duration (the "Staffing
Level") unless BIOGEN and CURAGEN have agreed on a change in the Staffing Level
as provided in (b) below.
(b) BIOGEN may request an increase in the Staffing Level of up to [XXX
XXX] additional FTEs per year to be devoted to the Research Program, subject to
the agreement of CURAGEN. CURAGEN will use commercially reasonable efforts to
increase the staffing level if mutually agreed as promptly as practical. Once
the Staffing Level is increased, it may not be decreased during the following
[XXXXXXXXX] period without the consent of CURAGEN, which consent shall not be
unreasonably withheld.
(c) BIOGEN shall have the right, at BIOGEN's expense, to have an
independent certified public accountant review CURAGEN's accounting records for
the purpose of verifying the allocation of the required number of FTE's to the
Research Program.
2.1.2 Collaborative Efforts and Reports.
---------------------------------
(a) The Parties agree that the successful execution of the Research
Program will require the collaborative use of both Parties' areas of expertise.
The Parties shall keep the RC fully informed about the status of the portions of
the Research Program they respectively perform. In particular, without
limitation, each Party shall furnish to the RC quarterly written reports within
thirty (30) days after the end of each quarterly period, describing the progress
of its activities in reasonable detail, including (x) a summary of Project Data
from ongoing Research Projects, (y) a summary of uses of Project Data and (z) a
description of Project Data Sets from
6
[Confidential Treatment Requested]
completed Research Projects. At any time, upon the reasonable request of BIOGEN,
CURAGEN will provide an update of the status of Research Projects to BIOGEN.
(b) Scientists at CURAGEN and BIOGEN shall cooperate in the performance of
the Research Program and, subject to any confidentiality obligations to third
parties, shall exchange information and materials (including BIOGEN Proprietary
Material) as necessary to carry out the Research Program, subject to the
provisions of Section 4. Each Party will attempt to accommodate any reasonable
request of the other Party to send or receive personnel for purposes of
collaborating or exchanging information under the Research Program. Such visits
and/or access will have defined purposes and be scheduled in advance. The
requesting Party will bear the reasonable travel and lodging costs of any such
personnel.
(c) CURAGEN will give written notice to BIOGEN and the RC upon completion
of the Project Data Set from each Research Project. "Completion" of a Project
Data Set shall occur upon generation of all QEA/GeneCalling data or
MIM/PathCalling data from a Research Project as contemplated by the Research
Plan.
(d) CURAGEN shall set up and maintain, throughout the Research Term, a
secure partition of its GeneScape(R) database and software for the exclusive use
of BIOGEN and CURAGEN for the purpose of identifying genes from Exclusive Data
Sets, and shall provide online E-mail and telephone help during normal business
hours in the use thereof to BIOGEN. CURAGEN and BIOGEN shall jointly set up and
maintain a secure connection to said partition of the GeneScape(R) database and
software in order to give BIOGEN on-line access thereto. Through such
connection, BIOGEN shall have the right to utilize all features and functions of
the GeneScape(R) database and software (including, without limitation,
GeneTools(TM)) in connection with the Research Program.
(e) BIOGEN will also receive access to CURAGEN's QEA/GeneCalling and
MIM/PathCalling subscription databases and to GeneTools(TM) pursuant to one or
more subscription agreements to be executed by the Parties, with terms
substantially as described in Appendix D hereto. Such subscriptions [XXXXXXXX
----------
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXX]
7
[Confidential Treatment Requested]
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] until the
expiration of the Research Term. Such subscription agreements may be terminated
by BIOGEN at any time, without affecting the Research Program, either in their
entirety or with respect to any database at BIOGEN's sole discretion upon three
(3) months prior written notice. BIOGEN shall have no rights to use the
GeneScape(R) database and software except as expressly set forth herein or in an
executed database subscription agreement.
2.1.3 Research Plans.
--------------
The Research Plan for the [XXXXXXXXXXXXXXXXX] of the Research Program shall
be agreed upon by the Parties within [XXXXXXXXXXXXXX] of the Effective Date and
shall include the initial Research Projects and plans to implement the
installation of access to the GeneScape(R) database and software for BIOGEN. The
initial Research Projects shall include a project on [XXXXXXXXXXXXXX
XXXXXXXXXXXXXX] and a project on [XXXXXXXXXX] as further described in Section
2.6. Every [XXXXXXXXXXXXXX] during the Research Term [XXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXX] the Research Plan shall be updated by BIOGEN in
consultation with CURAGEN to cover the next twelve months and shall be approved
by the RC no later than thirty (30) days before the end of each semi-annual
period. The Research Plan shall set forth specific Research Projects for the
period covered by the Research Plan. The RC will consider adjustments in the
Research Plan at any time upon the request of BIOGEN or CURAGEN. Notwithstanding
the foregoing, no project shall become a Research Project without the express
consent of both BIOGEN and CURAGEN; provided, however, that CURAGEN shall
consent to any reasonable proposed Discovery Project which is not substantially
similar to a project that is ongoing, planned, the subject of negotiation with a
third party or subject to a prior commitment to a third party, and which would
not violate a prior restriction under an agreement with a third party. The
Parties shall negotiate in good faith the terms to apply generally to any
Research Project that is not a Discovery Project, other than the [XXXXXXXXXX
XXXXXXXX] which is covered by Section 2.6.
2.1.4 Exclusivity.
-----------
(a) CURAGEN agrees that, during the conduct of a Research Project and
for the duration of any subsequent Exclusive Evaluation Period, CURAGEN shall
not undertake to perform a substantially similar research project with any third
party.
8
[Confidential Treatment Requested]
(b) CURAGEN agrees that during any Exclusive Evaluation Period, CURAGEN
will not grant access to any Exclusive Data Set to any other party and that
during any Option Period, CURAGEN shall not grant to any third party rights to
any Optioned Clone. In addition, CURAGEN shall not, during any Exclusive
Evaluation Period, grant a third party any exclusive rights to license a Clone
contained in the corresponding Exclusive Data Set (i) which BIOGEN has requested
CURAGEN to full-length clone or (ii) for which BIOGEN has commenced full-length
cloning and notified CURAGEN thereof. Notwithstanding the provisions of Article
4 and except as provided in Section 2.6 hereof, upon the expiration of any
Exclusive Evaluation Period for any Exclusive Data Set, CURAGEN shall have the
right, at its sole option, to make such Data Set and reasonable descriptions of
the data contained therein available to third parties or to put the Data Set and
such descriptions in the subscription portion of the GeneScape(R) database.
Nothing contained in this Agreement shall in any way restrict CURAGEN's right to
perform research or collaborate with third parties and to grant to third parties
the right to exploit the results of any such research or collaborations without
restriction other than as set forth above or as expressly provided in an
executed License Agreement. CURAGEN agrees that CURAGEN will not use and/or
replicate any BIOGEN Proprietary Material for any purpose other than as provided
herein.
(c) CURAGEN acknowledges that BIOGEN may, in the course of reviewing
Data Sets, obtain general information not specifically relating to any Clone or
to the utility thereof. BIOGEN shall be permitted to use any such general
information that is non-proprietary to CURAGEN in the course of conducting its
internal research programs, or as otherwise permitted herein, but for no other
purpose.
(d) BIOGEN agrees that, until any such information is in the public
domain, other than as a result of a disclosure by BIOGEN in violation of this
Agreement, an executed subscription agreement or an executed License Agreement,
BIOGEN will only utilize Project Data, CURAGEN Data, CURAGEN Proprietary
Material, Inventions or Patent Rights as expressly provided herein, in an
executed License Agreement or in an executed subscription agreement.
2.1.5 Research License. CURAGEN hereby grants to BIOGEN a non-exclusive
----------------
license under CURAGEN Background Inventions and CURAGEN's interest in any
Inventions solely
9
during the Term hereof and to the extent necessary to allow BIOGEN to perform
its obligations under the Research Program and to exercise the rights granted
herein.
2.1.6 Software License. Any access granted to the GeneScape(R) database
----------------
and software hereunder, or any components thereof, is granted according to the
following terms:
The GeneScape(R) database, software and display screeens are protected by
copyright, patent, trade secret and other intellectual property laws. CURAGEN
hereby grants to BIOGEN and its employees a non-exclusive non-transferrable
license to access the GeneScape(R) database and software solely for the purposes
of and during the Term of this Agreement. BIOGEN shall access Project Data Sets
and CURAGEN Data Sets only through the GeneScape(R) database and software
provided by CURAGEN. BIOGEN shall not copy the GeneScape(R) database, software
or display screens except as occurs during the normal course of CURAGEN-provided
access. In particular, BIOGEN will not retain such normal copies for a time not
reasonably related to CURAGEN-provided access. BIOGEN shall not reverse
engineer, decompile, or disassemble the GeneScape(R) software or display
screens. The GeneScape(R) database and software embody trade secrets of CURAGEN
that are considered Confidential Information of CURAGEN and subject to the
provisions of Article 6 hereof.
2.2 Research Committee.
------------------
2.2.1 Establishment and Functions of RC.
---------------------------------
(a) CURAGEN and BIOGEN shall establish a "Research Committee" (the
"RC"). The RC will be responsible for the planning and monitoring of the
Research Program. In particular, the activities of the RC shall include
reviewing progress in the Research Program and recommending necessary
adjustments to the Research Program, including any Research Project
substitutions deemed desirable based on results and on BIOGEN's commercial
interest, as the research and development progresses.
(b) In planning and monitoring the Research Program, the RC shall assign
tasks and responsibilities taking into account each Party's respective specific
capabilities and expertise in order in particular to avoid duplication and
enhance efficiency and synergies.
2.2.2 RC Membership.
-------------
CURAGEN and BIOGEN each shall appoint, in their sole discretion, three
members to the RC, which shall include a Co-Chair to be designated by BIOGEN and
a Co-Chair to be
10
designated by CURAGEN. Substitutes or alternates for the Co-Chairs or other RC
members may be appointed at any time by notice in writing to the other Party.
The Parties may mutually agree to change the size of the RC as long as there
shall be an equal number of representatives of each Party on the RC. The initial
Co-Chairs and other RC members shall be designated by the Parties upon execution
of this Agreement. CURAGEN shall appoint a Project Coordinator, who shall be
reasonably satisfactory to BIOGEN, to serve as the principal liaison with BIOGEN
for the Research Program. Such Project Coordinator will be one of CURAGEN's
members of the RC.
2.2.3 Meetings.
--------
The RC shall meet at least quarterly, with such meetings to be held,
alternately, in New Haven, Connecticut, and Cambridge, Massachusetts unless the
Parties agree otherwise. Any additional meetings shall be held at places and on
dates selected by the Co-Chairs of the RC. In addition, the RC may act without a
formal meeting by a written memorandum signed by the Co-Chairs of the RC.
Whenever any action by the RC is called for hereunder during a time period in
which the RC is not scheduled to meet, the Co-Chairs of the RC shall cause the
RC to take the action in the requested time period by calling a special meeting
or by action without a meeting. Subject to the obligations set forth in Section
4, representatives of each Party or of its Affiliates, in addition to the
members of the RC, may attend RC meetings at the invitation of either Party with
the prior approval of the other Party, which shall not be unreasonably withheld.
2.2.4 Minutes.
-------
The RC shall keep accurate minutes of its deliberations which record all
proposed decisions and all actions recommended or taken. Drafts of the minutes
shall be delivered to the Co-Chairs of the RC within twenty (20) days after the
meeting. The Party hosting the meeting shall be responsible for the preparation
and circulation of the draft minutes. Draft minutes shall be edited by the
Co-Chairs and shall be issued in final form only with their approval and
agreement as evidenced by their signatures on the minutes.
2.2.5 Quorum; Voting; Decisions.
-------------------------
At each RC meeting, at least two (2) member(s) appointed by each Party
present in person or by telephone shall constitute a quorum and decisions shall
be made by majority vote. Each RC member shall have one vote on all matters
before the RC, provided that the member or members of each Party present at an
RC meeting shall have the authority to cast the votes of any
11
of such Party's members on the RC who are absent from the meeting.
Notwithstanding the foregoing, the objective of the Parties to this Agreement is
that decisions of the RC shall be made by consensus. However, except as
otherwise set forth herein, in the event that the RC is unable to resolve any
matter before it as set forth above, such matter shall be resolved in good faith
by BIOGEN. Notwithstanding the foregoing, no project shall become a Research
Project without the express consent of both BIOGEN and CURAGEN; provided,
however, that CURAGEN shall consent to any reasonable proposed Discovery Project
which is not substantially similar to a project that is ongoing, planned, the
subject of negotiation with a third party or subject to a prior commitment to a
third party, and which would not violate a prior restriction under an agreement
with a third party.
2.2.6 Expenses.
--------
CURAGEN and BIOGEN shall each bear all expenses of their respective RC
members related to their participation on the RC and attendance at RC meetings.
2.3 Research and Development Term.
-----------------------------
2.3.1 Term of the R&D Program.
-----------------------
The Research Program shall expire five (5) years after the Effective Date
unless extended as provided below or unless earlier terminated by either Party
pursuant to the provisions in Section 2.3.3 and/or Article 8 (the "Research
Term").
2.3.2 Extension of the Research Phase of the R&D Program.
--------------------------------------------------
The Research Term may be extended upon [XXXXXXXXXX] prior written notice
by mutual agreement of the Parties on terms to be agreed upon between the
Parties.
2.3.3 Early Termination of the R&D Program.
------------------------------------
(a) BIOGEN may terminate the Research Program at its sole discretion upon
six (6) months prior written notice to CURAGEN, which notice may be given at any
time after the second anniversary of the Effective Date. Notwithstanding any
other provision of this Agreement, any such early termination of the Research
Program shall automatically terminate any ongoing Exclusive Evaluation Period or
Option Period, but shall not affect any License Agreement executed between the
Parties prior to such early termination or any Option that has been exercised
prior to such early termination.
12
[Confidential Treatment Requested]
(b) Any termination of the Research Program under Section 2.3.3(a) shall
be without prejudice to the rights of either Party against the other, then
accruing or otherwise accrued under this Agreement and upon any such
termination, all remaining BIOGEN Proprietary Material provided to CURAGEN under
this Agreement shall be returned to BIOGEN or destroyed and all remaining
CURAGEN Proprietary Material provided to BIOGEN under this Agreement shall be
returned to CURAGEN or destroyed, except for any CURAGEN Proprietary Material
licensed pursuant to an executed License Agreement.
2.4 Project Data Evaluations.
------------------------
2.4.1 Exclusive Access. From the time at which a Research Project is begun
----------------
and continuing through a [xxxxxxx] period which shall commence on the first day
of the [XXXXXXXXXXXX] following the [XXXXXXXXXXXX] in which delivery of a
notice of a complete Project Data Set is made pursuant to Section 2.1.2(c) (the
"Exclusive Evaluation Period"), CURAGEN: (a) shall not use such Project Data Set
and related CURAGEN Proprietary Material resulting from such Research Project
for any purpose other than conducting the Research Program hereunder and (b)
shall keep such Project Data Set and related Inventions and CURAGEN Proprietary
Material confidential and will not disclose or transfer the Project Data Set, or
related Inventions and CURAGEN Proprietary Material, to third parties by
publication or otherwise, without the prior written consent of BIOGEN.
2.4.2 Extensions. BIOGEN may elect to extend the Exclusive Evaluation
----------
Period for any Project Data Set for up to [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXX] from the end of the initial, unextended Exclusive Evaluation Period by
giving written notice to CURAGEN and making a payment of [XXXXXXXXXXXXXXXXX
XXXXXXXXXXXX] to CURAGEN prior to expiration of the then current Exclusive
Evaluation Period for such Project Data Set. An Exclusive Evaluation Period will
be automatically extended for [XXXXXXXXXXXXXX] for up to [XXXXXXXXXX] in order
to allow the completion of any reasonable requests for confirmation of data made
by BIOGEN during the primary [XXXXXXXXXXXX] of such Exclusive Evaluation
Period.
2.4.3 Non-exclusive Access. Except with respect to any information which
--------------------
becomes part of the public domain other than as a result of a disclosure by
BIOGEN in violation of this Agreement, an executed subscription agreement or an
executed License Agreement, following the expiration of the Exclusive Evaluation
Period for a Project Data Set, BIOGEN shall continue
13
[Confidential Treatment Requested]
to have non-exclusive access to such Project Data Set solely through the
GeneScape(R) database and solely for the purpose of identifying Clones of
interest to BIOGEN in such Data Set, or to the extent expressly permitted in
Section 2.1.4(c), in an executed License Agreement or in an executed
subscription agreement.
2.4.4. Data Annotations. Upon the expiration of the Exclusive Evaluation
----------------
Period for each Project Data Set, CURAGEN shall furnish to BIOGEN reasonable
descriptions of the Project Data Set to be included in the GeneScape(R) database
with the Project Data Set. BIOGEN shall have a period of [XXXXXXXXXXXXXX] to
review such descriptions and advise CURAGEN of reasonable objections. CURAGEN
shall not include in the GeneScape(R) database any descriptions, or portions
thereof, to which BIOGEN reasonably objects.
2.5 CURAGEN Projects.
----------------
2.5.1 Access. BIOGEN shall have the option, for such period or periods as
------
CURAGEN may specify, to obtain exclusive access to specified proprietary CURAGEN
Data Sets and related CURAGEN Project Inventions which are offered by CURAGEN in
its sole discretion to BIOGEN for review. Such option shall be exercisable as
set forth in Section 2.5.2 below.
2.5.2 Exclusive Evaluation Option. Subject to any rights which CURAGEN may
---------------------------
grant or have granted to third parties, BIOGEN may request at any time during
the time period specified by CURAGEN that it receive exclusive access (as
described in Section 2.5.1) to any CURAGEN Data Set offered to BIOGEN pursuant
to Section 2.5.1. Such exclusive access to such CURAGEN Data Set shall be
granted to BIOGEN for an Exclusive Evaluation Period of [XXXXXXXXXX] commencing
upon CURAGEN's receipt of written notice from BIOGEN and payment of an exclusive
evaluation fee of [XXXXX] unless BIOGEN is notified by CURAGEN at any time
prior to CURAGEN's receipt of BIOGEN's written notice that exclusive access to
such CURAGEN Data Set is no longer available as a result of CURAGEN's agreements
with third parties existing at the time of the request.
2.5.3 Extensions. BIOGEN may elect to extend the Exclusive Evaluation
----------
Period for any CURAGEN Data Set for up to [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXX] from the end of the initial unextended Exclusive Evaluation Period by
giving written notice to CURAGEN and making a second payment [XXXXXXXXXX
XXXXXXXXX] to CURAGEN prior to expiration of the then current
Exclusive Evaluation Period for such CURAGEN Data Set. An
14
[Confidential Treatment Requested]
Exclusive Evaluation Period will be automatically extended for [XXXXXXXXXXXX]
for up to [XXXXXXXXXXXX] in order to allow the completion of any reasonable
requests for confirmation of data made by BIOGEN during the primary [XXXXXXXXXX]
period of such Exclusive Evaluation Period. Following the expiration of the
Exclusive Evaluation Period for a CURAGEN Data Set, BIOGEN shall have no access
to or right to use such CURAGEN Data Set, other than as expressly permitted in
Section 2.1.4(c), in an executed License Agreement or in an executed
subscription agreement.
2.6 [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXX]
3. FINANCIAL TERMS
3.1 Equity Investment. BIOGEN agrees itself, or through one of its
-----------------
Affiliates, to make an equity investment in CURAGEN in the amount of Five
Million Dollars ($5,000,000), such investment to be made in a transaction exempt
from registration under the Securities Act of 1933 contemporaneously with the
closing of the initial public offering of CURAGEN Common Stock at the public
offering price and pursuant to a mutually agreeable stock purchase agreement
containing reasonable and customary terms for the purchase of stock in such
circumstances and a
15
[Confidential Treatment Requested]
registration rights agreement providing for the filing of a registration
statement covering the resale of the purchased shares to be filed by CURAGEN
within twenty (20) days of the first anniversary of the effective date of the
registration statement pertaining such initial public offering. In the event
that CURAGEN has not closed an initial public offering within [XXXXXXXXXX
XXXXXX] from the Effective Date, BIOGEN shall be released from its obligation
pursuant to this Section 3.1.
3.2 Loan Commitment. As partial consideration for rights granted
---------------
hereunder, BIOGEN hereby commits to the following:
(a) BIOGEN shall itself, or through one of its Affiliates, subject to the
terms set forth below, make funds available to CURAGEN for general corporate
purposes in the form of a loan or loans to CURAGEN in an amount not to exceed
Ten Million Dollars ($10,000,000.00) (the "Loan"). Unless this Agreement has
been terminated for any reason, CURAGEN may, in such amounts and at such times
as CURAGEN, in it sole discretion, may determine, upon [XXXXXXXXXXXXXX] written
notice draw down the balance of the Loan over a period of five (5) Loan Years
(as defined below) following the Effective Date. For the purposes of this
section, a "Loan Year" commences on the Effective Date or an anniversary thereof
and terminates twelve months later. BIOGEN shall not be obligated to advance
more than Five Million Dollars ($5,000,000) in the first Loan Year or to advance
any funds under the Loan at any time during which (i) CURAGEN is in default
under any Note (defined below); or (ii) any proceeding, voluntary or
involuntary, in bankruptcy or insolvency, is pending against CURAGEN, or a
receiver is operating CURAGEN with or without the consent of CURAGEN. BIOGEN's
obligation to advance any funds under the Loan shall terminate upon the earlier
to occur of (i) the last day of the fifth Loan Year or (ii) termination or
expiration of the Research Program and the Research Term.
(b) On the Effective Date, CURAGEN shall execute and deliver to BIOGEN an
unsecured note, substantially in the form set forth in Appendix B attached
----------
hereto and made a part hereof (the "Note"), evidencing the Loan. The schedule
attached to the Note shall be revised each time any amount is drawn down under
the Loan and each time any amount is repaid. Once any principal amount has been
repaid, BIOGEN shall not be obligated to advance such amount to CURAGEN during
the remainder of the term of the Loan. The Note shall be subordinated to [XXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXX]
16
[Confidential Treatment Requested]
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX and may
be prepaid by CURAGEN at any time without premium or penalty on a date specified
by CURAGEN, in cash or at CURAGEN's option, in CURAGEN Common Stock valued at
its then Fair Market Value (as defined in Section 3.2(e) below).
(c) The Note shall bear interest on the outstanding principal amount
thereof at a rate per annum equal to [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXX] Such interest shall accrue and be paid semi-annually commencing on the
six-month anniversary of the date first following any advance under the Loan and
continuing every six months thereafter until the Note is paid in full, unless
otherwise specified in this Section 3.2. Interest payments shall be made in cash
or at CURAGEN's option, in CURAGEN Common Stock valued at its then Fair Market
Value (as defined in Section 3.2(e) below). The applicable rate of interest for
the Note shall be adjusted semi-annually according to the [XXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] on each
six-month anniversary date of the Effective Date.
(d) Within [XXXXXXXXXXXXXX] of the expiration of the fifth Loan Year,
repayment in full of the principal amount and accrued interest, under the Note
shall be made in cash or, at CURAGEN's option, in CURAGEN Common Stock valued at
its then Fair Market Value (as defined in Section 3.2(e) below). Notwithstanding
the foregoing, if this Agreement is terminated by BIOGEN pursuant to Section
8.2(a), or if the Research Program is terminated pursuant to Section 2.3.3,
CURAGEN shall repay the principal and accrued interest owed under the Note
within [XXXXXXXXXXXXX] of the date the Agreement or the Research Program, as
the case may be, is terminated; provided, however, that any such repayment may
be made in cash or stock as set forth above, at CURAGEN's sole discretion.
(e) For purposes of subsection (c) of this Section 3.2, [XXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXX] For purposes of subsections (b), (c), (d) and (f) of this Section
3.2, "Fair Market Value" of CURAGEN Common Stock shall mean: [XXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXX]
17
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXX Delivery of any shares of Common Stock shall take place
no later than five (5) days after the repayment date and shall be subject to
execution by the Parties of an agreement containing customary representations
and provisions to comply with Federal and State securities laws, as mutually
agreed between the Parties. Additionally, if CURAGEN Common Stock is not
publicly traded at the time of any such repayment, BIOGEN shall receive
registration rights with respect to any such shares on the same terms and
conditions as set forth in the Registration Rights Agreement between CURAGEN and
Biotech Manufacturing Limited dated June 25, 1997.
(f) In the event that CURAGEN makes any repayment hereunder in CURAGEN
Common Stock and CURAGEN is eligible to file a registration statement on Form
S-3 (or successor short form) at the time of repayment, then within [XXXXXX] of
the repayment date, CURAGEN shall file a registration statement on Form S-3
covering the resale by BIOGEN of any shares so delivered to BIOGEN; provided,
however, that with respect to any repayment in CURAGEN Common Stock made under
subsection (c) hereof, to the extent not already included in any other
registration, CURAGEN shall [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] file a
registration statement on Form S-3 covering the resale by BIOGEN of any such
shares so delivered to BIOGEN. Notwithstanding anything herein to the contrary,
BIOGEN may require that CURAGEN repay the amounts borrowed under the Note in
cash and stock to the extent necessary to ensure that receipt of CURAGEN's
shares will not cause BIOGEN's holdings in CURAGEN to equal [XXXXXXXX] or more
of CURAGEN's total Common Stock outstanding after the issuance of such shares to
BIOGEN.
3.3 Research Funding.
----------------
18
[Confidential Treatment Requested]
During the Research Term, BIOGEN will pay CURAGEN non-refundable research
payments of [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] per year plus
the sum of [XXXXXX] per year per FTE in the Staffing Level above [XX]FTEs. Such
payments will be made quarterly in advance, commencing on the Effective Date,
and on or before the first day of each calendar quarter thereafter, with the
first and last payments prorated in the event that the Effective Date or the
expiration or termination date is not the first day or last day of a calendar
quarter, respectively. In the event that the Staffing Level is to change in any
calendar quarter, such payment shall be pro-rated accordingly, if necessary,
based on the above-specified level of funding per FTE. The first research
payment shall be made simultaneously with the execution of this Agreement and
shall include all amounts necessary to make BIOGEN current in research payments
due since the Effective Date. BIOGEN will fund its own activities under the
Research Program.
4. TREATMENT OF CONFIDENTIAL INFORMATION
4.1 Confidential Information. During the course of the Research Program,
------------------------
or in discussions concerning Exclusive Data Sets, each Party may disclose to the
other proprietary technical and business information, including but not limited
to information contained in Data Sets (which information shall be deemed
Confidential Information of CURAGEN), (collectively, "Confidential
Information"). For a period of [XXXXXXXXXXX] after the receipt of any such
Confidential Information, except as expressly permitted hereunder, the receiving
Party shall keep confidential all such Confidential Information of the other
Party and will not disclose such Confidential Information of the other Party to
third parties by publication or otherwise. Each Party shall take reasonable
steps to ensure that all of its employees, consultants and RC members shall
protect and use Confidential Information of the other Party only in accordance
with the terms hereof. Each Party further agrees not to use Confidential
Information of the other Party for any purpose other than conducting or
evaluating research hereunder, evaluating and analyzing Data Sets or exercising
any rights granted to it or reserved by it hereunder, in an executed License
Agreement or executed subscription agreement, or as otherwise expressly
permitted hereunder. Notwithstanding the foregoing, it is understood and
19
[Confidential Treatment Requested]
agreed that the receiving Party's obligations of confidentiality and nonuse
herein shall not apply to any information which:
(a) is, at the time of disclosure by the disclosing Party hereunder,
or thereafter becomes, a part of the public domain or publicly known
or available through no fault or negligence of the receiving Party or
any of its Affiliates; or
(b) was otherwise in the receiving Party's lawful possession prior to
disclosure by the disclosing Party, as demonstrated by the receiving
Party's written records; or
(c) is lawfully disclosed to the receiving Party or any of its
Affiliates on a non-confidential basis by a third party who is not in
violation of an obligation of confidentiality to the disclosing Party
relative to such information.
4.2 Publications. It is expected that each Party may wish to publish the
------------
results of its research under this Agreement. In order to safeguard intellectual
property rights, the Party wishing to publish or otherwise publicly disclose the
results of its research hereunder shall first submit a draft of the proposed
manuscripts to the Research Committee for review, comment and consideration of
appropriate patent action at least [XXXXXXXXXX] prior to any submission for
publication or other public disclosure. Within [XXXXXXXXXXXX] of receipt of
the prepublication materials, the Research Committee will advise the Party
seeking publication as to whether a patent application will be prepared and
filed or whether trade secret protection should be pursued and, if so, the
Research Committee will, in cooperation with both Parties, determine the
appropriate timing and content of any such publications.
4.3 Press Release and Regulatory Filings. The Parties shall mutually
------------------------------------
agree on a press release announcing the execution of this Agreement and on any
confidential treatment request to be filed with the Securities and Exchange
Commission with respect to this Agreement. Once any written statement is
approved for disclosure by both Parties, either Party may make subsequent public
disclosures of the contents of such statement without the further approval of
the other Party.
20
[Confidential Treatment Requested]
5. INTELLECTUAL PROPERTY RIGHTS
5.1 BIOGEN Proprietary Material. mRNA pools extracted by CURAGEN from a
---------------------------
BIOGEN Proprietary Material in the performance of the Research Program shall
remain BIOGEN Proprietary Material. All other substances made by CURAGEN in the
performance of the Research Program shall be CURAGEN Proprietary Material.
BIOGEN Proprietary Material shall remain the property of BIOGEN and CURAGEN
shall use such BIOGEN Proprietary Material only for the purpose of conducting
the Research Program hereunder and shall not transfer BIOGEN Proprietary
Material to any other person or entity.
5.2 CURAGEN Proprietary Material. Substances made by BIOGEN from CURAGEN
----------------------------
Proprietary Material shall remain CURAGEN Proprietary Material. CURAGEN
Proprietary Material shall remain the property of CURAGEN and BIOGEN shall use
such CURAGEN Proprietary Material only for purposes relating to performance of
the Research Program, evaluation of the Project Data, the exercise of the option
provided in Section 7.1, or pursuant to the terms of an executed License
Agreement. BIOGEN shall not transfer CURAGEN Proprietary Material to any other
person or entity except in connection with rights granted to BIOGEN pursuant to
an executed License Agreement.
5.3 Inventions. Each Party shall promptly disclose to the other Party all
----------
Inventions. Except as set forth in Sections 5.1 and 5.2, (i) all Research
Project Inventions, and Patent Rights thereon, shall be owned jointly by CURAGEN
and BIOGEN; and (ii) all CURAGEN Project Inventions, and Patent Rights thereon,
shall be owned by CURAGEN. The rights and interests of CURAGEN and BIOGEN in
Inventions shall be subject to the provisions of Article 7.
6. PROVISIONS CONCERNING THE FILING, PROSECUTION AND
MAINTENANCE OF PATENT RIGHTS
6.1 Applicability. The provisions of this Section 6 shall be applicable
-------------
to all Inventions and Patent Rights unless and until (i) they become subject to
a License Agreement, whereupon the License Agreement will govern the rights of
the Parties with respect to the subject matter thereof, or (ii) the relevant
Research Project is completed and the relevant Exclusive
21
Evaluation Period expires and the relevant Option Period, if any, expires,
whereupon this Section 6 shall cease to apply.
6.2 Patent Filing.
-------------
(a) CURAGEN shall have the first right (but not the obligation) to
prepare, file, prosecute, obtain and maintain patent applications and patents on
Inventions, at its sole expense. BIOGEN agrees to provide reasonable assistance
and cooperation to CURAGEN to facilitate such filing, prosecution and
maintenance. CURAGEN agrees that any such preparation, filing, prosecution and
maintenance shall be conducted diligently and that BIOGEN shall be kept fully
informed of the progress thereof and provided with copies of all material
documents pertaining thereto until the end of the Exclusive Evaluation Period,
and for any Invention which becomes subject to an Option, until the end of the
Option Period. BIOGEN shall, whenever possible, be given the opportunity to
review and comment in advance on any patent filings or other correspondence with
the patent office during such periods and CURAGEN shall consider incorporating
any comments provided by BIOGEN in good faith.
(b) CURAGEN may elect not to exercise its first right to prepare, file,
prosecute, obtain and maintain patent applications and patents on Inventions as
described in Section 6.2(a) above at any time for any such patent applications
and patents by giving written notice thereof to BIOGEN. Such notice shall
specifically identify the patent application(s) and/or patent(s) for which
CURAGEN wishes to relinquish such first right. Following the receipt of such
notice, BIOGEN shall have the right to prepare, file, prosecute, obtain and
maintain the patent application(s) and patent(s) identified in the notice, at
its sole expense, on behalf of the owner of the Invention, subject to the rights
granted herein, until the end of the Exclusive Evaluation Period, and for any
Invention which becomes subject to an Option, until the end of the Option
Period.
(c) The Parties shall mutually agree before permitting any patent
application or patent within Patent Rights to lapse as well as before
authorizing any amendment to any patent application or patent within Patent
Rights that would irrevocably limit the lawful scope of the Patent Rights, until
the end of the Exclusive Evaluation Period, and for any Invention which becomes
subject to an option, until the end of the Option Period.
22
(d) No Party shall have any obligation under this Agreement to pay any
fees or costs: (i) for bringing a lawsuit or other action to enforce any of the
Patent Rights against an actual or suspected infringement or (ii) for any other
Party to obtain for its own benefit independent business or legal advice
concerning any of the Patent Rights.
6.3 Notice of Infringement. If either Party learns of any infringement or
----------------------
threatened infringement by a third party of the patents within Patent Rights,
such Party shall promptly notify the other Party and shall provide such other
Party with available evidence of such infringement.
6.4 Infringement. CURAGEN shall have all rights, at its own expense, to
------------
bring suit (or other appropriate legal action) against any actual or suspected
infringement of the Patent Rights.
6.5 Cooperation. BIOGEN shall execute all papers and perform such other
-----------
acts as may be reasonably required to maintain any infringement suit brought in
accordance with Section 6.4 above (including giving legal consent for bringing
such suit, and agreeing to be named as a plaintiff or otherwise joined in such
suit). BIOGEN shall be reimbursed by CURAGEN for any out of pocket expenses
incurred in connection with the foregoing. BIOGEN, at its option and expense,
may be represented in such suit by counsel of its choice.
7. OPTION TO BIOGEN
7.1 Option Grant.
------------
7.1.1 Option. Subject to rights third parties have obtained by virtue of
------
access to other CURAGEN Data Sets, data sets resulting from agreements between
CURAGEN and third parties, or the subscription portion of the GeneScape(R)
database prior to BIOGEN's election, CURAGEN hereby grants to BIOGEN the right
to elect an exclusive option (the "Option") to license all Inventions and other
CURAGEN patents or patent applications as described in Section 2.3 of the
License Agreement relating to any Clone whose sequence or utility is determined
in whole or in part from the use of an Exclusive Data Set which is not a
Previously Committed Clone. Such Option shall give BIOGEN the right to obtain,
at BIOGEN's sole discretion, either (a) subject to the rights reserved by
CURAGEN in Section 7.1.3, an exclusive license to the Clone specified in
BIOGEN's notice of exercise (the "Optioned Clone") and to all Patent Rights
23
and Inventions to the extent that they relate to such Optioned Clone including
but not limited to Patent Rights claiming whole or partial sequences or utility,
to develop, make, have made, use, have used, sell, offer for sale, have sold,
import and have imported products (i) incorporating or derived from such
Optioned Clone, or (ii) discovered or developed using such Optioned Clone, in
the Territory, for any and all human uses, under the terms and conditions set
forth in the License Agreement; (b) a non-exclusive license to the Optioned
Clone and to all Patent Rights and Inventions to the extent that they relate to
such Optioned Clone, solely for use of the Optioned Clone as a target to develop
small molecule products; or (c) subject to the rights reserved by CURAGEN in
Section 7.1.3, an exclusive license to all Patent Rights and Inventions claiming
utility of a known Optioned Clone, as further described in the License
Agreement. Such Option shall be exercisable at any time during the Option Period
specified in Section 7.3.
7.1.2 Option Election.
---------------
Such Option shall be elected by BIOGEN by giving written notice to CURAGEN
within the Exclusive Evaluation Period for such Exclusive Data Set, which shall
specify in detail the Optioned Clone to be included within the terms of any such
Option and which shall be accompanied by the payment of any Option Fee as
specified in Section 7.2. Each Optioned Clone, and the term of the corresponding
Option Period, shall be listed on Appendix A hereto from time to time.
Notwithstanding the foregoing, for Project Data Sets, BIOGEN may request such an
Option after expiration of the Exclusive Evaluation Period, which Option shall
be granted by CURAGEN upon payment of the Option Fee specified in Section 7.2,
unless prohibited by agreements with third parties.
7.1.3 Reservation of Rights. Notwithstanding the foregoing, in any
---------------------
exclusive license granted pursuant to the exercise of an Option, CURAGEN shall
retain for itself the right to use the Optioned Clone or the protein derived
therefrom as part of a general library of nucleic acids, which library is used
for research purposes.
7.2 Option Fee. An Option Fee of [XXXXXX] per Optioned Clone shall be due
----------
upon the election of an Option with respect to any Clone from any Exclusive Data
Set; [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXX]
24
[Confidential Treatment Requested]
7.3 Option Period. Each Option shall remain in effect for a period of
-------------
[XXXXXXXXXXXX] from receipt by CURAGEN of BIOGEN's written notice of its
election of such Option and payment of any required Option Fee (the "Option
Period"); provided, however, that any Option Period may be extended for [XXX
XXXXXXXXXXXXXXXXXXXXXXXX] period upon payment by BIOGEN of [XXXXXXXXXXXXXX]
per Optioned Clone.
7.4 Option Exercise. During each Option Period, upon notice to CURAGEN
---------------
and upon payment of the corresponding license fee, BIOGEN shall have the right
to receive a license to the Optioned Clone under the terms and conditions set
forth in an executed License Agreement. The license fee for a license described
in Section 7.1.1, clause (a) shall be [XXXXXX] and the license fee for a license
described in Section 7.1.1, clause (b) or (c), shall be [XXXXXX]
Notwithstanding the foregoing, [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]The License Agreement shall be executed in
substantially the form attached hereto upon exercise of the first Option, unless
previously executed pursuant to Section 7.5, and shall be amended from time to
time in accordance with the terms hereof and thereof as additional Options are
exercised.
7.5 [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
7.6 Reversion of Rights. CURAGEN shall retain all rights to all Project
-------------------
Data, CURAGEN Data, CURAGEN Proprietary Material, Inventions and Patent Rights
not expressly granted to BIOGEN hereunder. Upon expiration of any Exclusive
Evaluation Period,
25
[Confidential Treatment Requested]
CURAGEN shall recover and retain all of CURAGEN's rights to the corresponding
Exclusive Data Set and related Inventions and Patent Rights thereon other than
such rights as BIOGEN may have as provided in Sections 2.1.4, 2.1.5, 2.4.3 and
2.6 or with respect to Optioned Clones. In the event that upon the expiration of
any Option Period the corresponding Option has not been exercised by BIOGEN, all
of CURAGEN's rights in the corresponding Optioned Clone and related Inventions
and Patent Rights thereon shall revert to CURAGEN. Notwithstanding the
foregoing, nothing contained in this Section 7.6 shall be deemed to limit any
rights of BIOGEN expressly provided in an executed License Agreement or an
executed subscription agreement. In addition, BIOGEN shall (a) upon the
expiration of each Exclusive Evaluation Period, without any further action on
its part, be deemed to have granted to CURAGEN an exclusive (except for uses by
BIOGEN permitted in Section 2.4.3), royalty-free license for all purposes under
BIOGEN's rights in Inventions or Patent Rights claiming (i) any Clones other
than [XXXXXXXXXXX] whose sequence or utility is determined in whole or in part
from the use of the corresponding Exclusive Data Set and which are not the
subject of any Option or License Agreement, or (ii) any uses of such Clones, and
(b) upon the expiration of each Option Period, without any further action on its
part, be deemed to have granted to CURAGEN a license as set forth in (a) above
with respect to each Optioned Clone for which an Option has not been exercised.
Prior to any disposition of rights as set forth above or in an executed License
Agreement, BIOGEN shall not assign, encumber or otherwise limit its ownership
interest in any Invention or Patent Right.
7.7 No Other Rights. BIOGEN shall receive no rights to Data Sets or
---------------
Clones under CURAGEN Patent Rights or Inventions except as expressly set forth
herein or in an executed License Agreement.
8. TERM AND TERMINATION
8.1 Term. Unless earlier terminated as provided in this Section 8, the
----
term of this Agreement shall be for five (5) years following the Effective Date
plus the length of any available Exclusive Evaluation Periods and any permitted
extensions thereof and the length of
26
[Confidential Treatment Requested]
any Options and any permitted extensions thereof, or until the date on which
BIOGEN no longer has access to Project Data Sets, whichever is later (the
"Term").
8.2 Termination.
-----------
(a) This Agreement and the options granted herein may be terminated by
either Party upon any breach by the other Party of any material obligation or
condition, effective thirty (30) days after giving written notice to the
breaching Party of such termination in the case of a payment breach and sixty
(60) days after giving written notice to the breaching Party of such termination
in the case of any other breach, which notice shall describe such breach in
reasonable detail. The foregoing notwithstanding, if the default or breach is
cured or shown to be non-existent within the aforesaid thirty (30) or sixty (60)
day period, the notice shall be deemed automatically withdrawn and of no effect.
(b) If either Party files for protection under bankruptcy laws, makes an
assignment for the benefit of creditors, appoints or suffers appointment of a
receiver or trustee over its property, files a petition under any bankruptcy or
insolvency act or has any such petition filed against it which is not discharged
within sixty (60) days of the filing thereof, then the other Party may terminate
this Agreement by notice to such Party.
8.3 Remedies. If either Party shall fail to perform or observe or
--------
otherwise breaches any of its material obligations under this Agreement, in
addition to any right to terminate this Agreement, the non-defaulting Party may
elect to obtain other relief and remedies available under law.
8.4 Surviving Provisions. Notwithstanding any provision herein to the
--------------------
contrary, the rights and obligations set forth in Sections 2.1.4, 2.1.6 and
2.3.3(b), Articles 4, 5, and 6, Sections 7.6 and 8.4, and Article 9 hereof, as
well as any rights and obligations otherwise accrued, shall survive the
expiration or termination of the Term of this Agreement.
9. MISCELLANEOUS
9.1 CURAGEN Representations and Covenants. CURAGEN represents and
warrants that: (a) the execution and delivery of this Agreement and the
performance of the transactions contemplated hereby have been duly authorized by
all appropriate CURAGEN
27
corporate action; (b) CURAGEN is under no obligation which is inconsistent with
this Agreement, (c) CURAGEN is not aware of any patent held by any third party
which would prevent CURAGEN's use of its technology in the performance of the
Research Program, and (d) CURAGEN has the full right and legal capacity to grant
the rights to BIOGEN pursuant to Article 7 without violating the rights of any
third party. CURAGEN covenants that (a) CURAGEN will obtain from its employees
and consultants rights of assignment with respect to all Inventions and (b)
CURAGEN will not enter into any agreement with any third party that is
inconsistent with the terms of this Agreement. Nothing in this Agreement shall
be interpreted as obligating either Party to commercialize technology made
hereunder or to perform any additional work beyond that set forth in the
Research Plan.
9.2 BIOGEN Representations. BIOGEN represents and warrants that: (a) the
----------------------
execution and delivery of this Agreement and the performance of the transactions
contemplated hereby have been duly authorized by all appropriate BIOGEN
corporate action; (b) BIOGEN is under no obligation which is inconsistent with
this Agreement, and (c) BIOGEN has the full right and legal capacity to grant
the rights to CURAGEN pursuant to Article 7 without violating the rights of any
third party. Nothing in this Agreement shall be interpreted as obligating either
Party to commercialize technology made hereunder or to perform any additional
work beyond that set forth in the Research Plan.
9.3 No Warranties.
-------------
(a) Nothing in this Agreement is or shall be construed as:
(i) a warranty or representation by CURAGEN as to the
validity or scope of any application or patent within the
Patent Rights;
(ii) a warranty or representation that anything made,
used, sold or otherwise disposed of under any license granted
pursuant to this Agreement is or will be free from infringement
of patents, copyrights, and other rights of third parties,
except as expressly set forth in Section 9.1.
(b) Except as expressly set forth in this Agreement, NEITHER PARTY MAKES
ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, OR OF NON-
28
INFRINGEMENT OF ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER RIGHTS, OR ANY OTHER
EXPRESS OR IMPLIED WARRANTIES.
9.4 Liability. NOTWITHSTANDING ANYTHING ELSE IN THIS AGREEMENT OR
---------
OTHERWISE, NEITHER PARTY WILL BE LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF
THIS AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL
OR EQUITABLE THEORY FOR (I) ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE
DAMAGES OR LOST PROFITS OR (II) COST OF PROCUREMENT OF SUBSTITUTE GOODS,
TECHNOLOGY OR SERVICES
9.5 Notices. Any notices, requests, deliveries, approvals or consents
-------
required or permitted to be given under this Agreement to BIOGEN or CURAGEN
shall be in writing and shall be personally delivered or sent by telecopy (with
written confirmation to follow via United States first class mail), overnight
courier providing evidence of receipt or certified mail, return receipt
requested, postage prepaid, in each case to the respective address specified
below (or to such address as may be specified in writing to the other Party
hereto):
CURAGEN: 000 Xxxx Xxxxx, 00xx Xxxxx
Xxx Xxxxx, XX 00000
Attn: Executive Vice President
Telecopy: (000) 000-0000
BIOGEN: 00 Xxxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Attn: Director, Marketing and Business Development
Telecopy: (000) 000-0000
with copies to: Vice President - General Counsel
Telecopy: (000) 000-0000
Such notices shall be deemed to have been sufficiently given on: (a) the
date sent if delivered in person or transmitted by telecopy, (b) the next
business day after dispatch in the case of overnight courier or (c) five (5)
business days after deposit in the U.S. mail in the case of certified mail.
9.6 Governing Law. This Agreement will be construed, interpreted and
-------------
applied in accordance with the laws of the State of Connecticut (excluding its
body of law controlling conflicts of law).
29
9.7 Limitations. Except as set forth elsewhere in this Agreement, neither
-----------
Party grants to the other Party any right or license to any of its intellectual
property.
9.8 Entire Agreement. This is the entire Agreement between the Parties
----------------
with respect to the subject matter hereof and supersedes all prior agreements
between the Parties with respect to the subject matter hereof. No modification
shall be effective unless in writing with specific reference to this Agreement
and signed by the Parties.
9.9 Waiver. The terms or conditions of this Agreement may be waived only
------
by a written instrument executed by the Party waiving compliance. The failure of
either Party at any time or times to require performance of any provision hereof
shall in no manner affect its rights at a later time to enforce the same. No
waiver by either Party of any condition or term shall be deemed as a continuing
waiver of such condition or term or of another condition or term.
9.10 Headings. Section and subsection headings are inserted for
--------
convenience of reference only and do not form part of this Agreement.
9.11 Assignment. This Agreement may not be assigned by either Party
----------
without the consent of the other, except that each Party may, without such
consent, assign this Agreement and the rights, obligations and interests of such
Party, in whole or in part, to any of its Affiliates, to any purchaser of all or
substantially all of its assets in the line of business to which this Agreement
pertains or to any successor corporation resulting from any merger or
consolidation of such Party with or into such corporations.
9.12 Force Majeure. Neither Party shall be liable for failure of or delay
-------------
in performing obligations set forth in this Agreement, and neither shall be
deemed in breach of its obligations, if such failure or delay is due to natural
disasters or any causes beyond the reasonable control of such Party. In event of
such force majeure, the Party affected thereby shall use reasonable efforts to
cure or overcome the same and resume performance of its obligations hereunder.
9.13 Construction. The Parties hereto acknowledge and agree that: (i) each
------------
Party and its counsel reviewed and negotiated the terms and provisions of this
Agreement and have contributed to its revision; (ii) the rule of construction to
the effect that any ambiguities are resolved against the drafting Party shall
not be employed in the interpretation of this Agreement; and (iii) the terms and
provisions of this Agreement shall be construed fairly as to all Parties
30
hereto and not in a favor of or against any Party, regardless of which Party was
generally responsible for the preparation of this Agreement.
9.14 Severability. If any provision(s) of this Agreement are or become
------------
invalid, are ruled illegal by any court of competent jurisdiction or are deemed
unenforceable under then current applicable law from time to time in effect
during the Term hereof, it is the intention of the Parties that the remainder of
this Agreement shall not be affected thereby provided that a Party's rights
under this Agreement are not materially affected. The Parties hereto covenant
and agree to renegotiate any such term, covenant or 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, illegal or unenforceable, it being the intent of the Parties that the
basic purposes of this Agreement are to be effectuated.
9.15 Status. Nothing in this Agreement is intended or shall be deemed to
------
constitute a partner, agency, employer-employee, or joint venture relationship
between the Parties.
9.16 Indemnification.
---------------
(a) BIOGEN shall indemnify, defend and hold harmless CURAGEN, its
Affiliates and their respective directors, officers, employees, and agents and
their respective successors, heirs and assigns (the "CURAGEN Indemnitees"),
against any liability, damage, loss or expense (including reasonable attorneys'
fees and expenses of litigation) incurred by or imposed upon the CURAGEN
Indemnitees, or any of them, in connection with any claims, suits, actions,
demands or judgments of third parties, including without limitation personal
injury matters (except to the extent such claims, suits, actions, demands or
judgments result from a material breach of this Agreement, or the negligence or
willful misconduct on the part of CURAGEN or are the subject matter of CURAGEN's
indemnification of BIOGEN as set forth in Section 9.16(b)) arising out of or
relating to any actions of BIOGEN under this Agreement including, without
limitation, the supply of samples for use in the Research Program.
(b) CURAGEN shall indemnify, defend and hold harmless BIOGEN, its
Affiliates and their respective directors, officers, employees, and agents and
their respective successors, heirs and assigns (the "BIOGEN Indemnitees"),
against any liability, damage, loss or expense (including reasonable attorneys'
fees and expenses of litigation) incurred by or imposed upon the BIOGEN
Indemnitees, or any of them, in connection with any claims, suits, actions,
demands or judgments of third parties, including without limitation personal
injury matters (except to the extent such claims, suits, actions, demands or
31
judgments result from a material breach of this Agreement, or the negligence or
willful misconduct on the part of BIOGEN) arising out of the performance of the
Research Program by CURAGEN, except to the extent such claims, suits, actions,
demands or judgments are based on the use of the samples or information provided
to CURAGEN by BIOGEN under this Agreement.
REMAINDER OF PAGE INTENTIONALLY LEFT BLANK
32
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed
by their duly authorized representative in two (2) originals.
BIOGEN, INC. CURAGEN CORPORATION
By: By:
/s/ Xxxxx X. Xxxxx /s/ Xxxxxxx Went
--------------------------------- -----------------------------------
Title: President and CEO Title: Executive Vice President
------------------------------ --------------------------------
33
APPENDIX A
Optioned Clones
00
XXXXXXXX X
Note
35
PROMISSORY NOTE
Up to $10,000,000.00 __________, 1997
FOR VALUE RECEIVED, the undersigned, CURAGEN CORPORATION (the "Borrower"),
having an address of 000 Xxxx Xxxxx Xxxxx, 00xx Xxxxx, Xxx Xxxxx, Xxxxxxxxxxx
00000, hereby promises to pay to BIOGEN, INC., having an address at 00 Xxxxxxxxx
Xxxxxx, Xxxxxxxxx, XX 00000 (the "Lender"), the principal sum of
TEN MILLION DOLLARS ($10,000,000)
or such lesser sum which may from time to time be advanced pursuant to the terms
of the section of the Research and Option Agreement dated October 1, 1997
between the Borrower and the Lender (the "Agreement") entitled "Section 3.2-Loan
Commitment". Capitalized terms used herein and not defined herein have the
meanings assigned to them in the Agreement.
Payments
--------
(a) The Borrower shall pay the accrued interest and principal balance of
this Note, which represents the Loan, in full within [XXXXXXXXXXXX] of the
last day of the Fifth Loan Year, or within [XXXXXXXXX] after any earlier
termination of the Research Program or the Agreement, whichever shall first
occur.
(b) This Note may be prepaid by Borrower at any time without premium or
penalty.
(c) Payments pursuant to paragraph (a) or (b) shall be paid in cash or, at
the option of Borrower, in CuraGen Common Stock, valued at its then Fair Market
Value, as set forth in the Agreement.
Interest
--------
(a) Interest shall accrue on the outstanding principal balance hereunder at
a rate per annum equal to [XXXXXXXXXXXXXXXXXXXXXXXXXXX] shall be determined and
adjusted in accordance with Section 3.2(c) and 3.2(e) of the Agreement. Interest
shall accrue and be paid semi-annually commencing on the six-month anniversary
date of the first advance under the Loan and continuing every six months
thereafter until all amounts due hereunder have been paid in full.
(b) Payments pursuant to paragraph (a) shall be made in cash or, at the
option of Borrower, in CuraGen Common Stock, valued at its then Fair Market
Value, as set forth in the Agreement.
[Confidential Treatment Requested]
Recording of Advances and Repayments
------------------------------------
The advances described in the Agreement and made by the Lender to the
Borrower, and all repayments made on the account of principal thereof, shall be
recorded by the Lender on the Schedule attached hereto which is a part of this
Note; provided, however, that the failure of the Lender so to record on this
Note (or any error in recording on this Note) shall not affect the Borrower's
obligations hereunder.
Subordination
-------------
This Note shall be Subordinated to [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
General
-------
The Borrower hereby waives presentment, demand, protest or notice of
any kind in connection with this Note. No failure on the part of the Lender in
exercising any right or remedy hereunder, and no single, partial or delayed
exercise by the Lender of any right or remedy shall preclude the full and timely
exercise by the Lender at any time of any right or remedy of the Lender
hereunder without notice. No course of dealing or other conduct, no oral
agreement or representation made by the Lender or usage of trade shall operate
as a waiver of any right or remedy of the Lender. This Note and the Agreement
contain the entire agreement between the parties with respect to the subject
matter hereof, and supersedes every course of dealing, other conduct, oral
agreement or representation previously made by the Lender. In the event that any
court of competent jurisdiction shall determine that any provision, or portion
thereof, contained in this Note shall be unenforceable in any respect, then such
provision shall be deemed limited to the extent that such court deems it
enforceable, and the remaining provisions of this Note shall nevertheless remain
in full force and effect.
None of the terms or provisions of this Note may be excluded, modified, or
amended except by a written instrument duly executed on behalf of both the
Borrower and the Lender expressly referring hereto and setting forth the
provision so excluded, modified or amended. No waiver or forbearance of any of
the rights and remedies of the Lender hereunder shall be effective unless made
specifically in a writing signed by the Lender, and any such waiver or
forbearance shall be effective only in the specific instance and for the
specific purpose for which given.
This Note is the "Note" referred to in the Agreement and is entitled to all
of the rights and benefits referred to therein.
This note is delivered to the Lender at its principal office in
Cambridge, Massachusetts, shall be governed by, and construed and enforced in
accordance with, the laws of the state of
- 2 -
[Confidential Treatment Requested]
Connecticut, without regard to its principles of conflicts of laws and shall
take effect as a sealed instrument.
IN WITNESS WHEREOF, the Borrower has caused this Note to be executed as an
instrument under seal by its duly authorized officer as of the date first above
written.
Witness: CURAGEN CORPORATION
by:
------------------------- -------------------------------
(Signature)
----------------------------
(Print or type name)
its:
----------------------------
(Title or Capacity)
- 3 -
Schedule to Promissory Note
dated October ___, 1997
from CURAGEN CORPORATION
to BIOGEN, INC.
in the amount of up to $10,000,000
Biogen CuraGen
Date Amount Drawn Amount Repaid Acknowledgement Acknowledgement
---- ------ ----- ------ ------ --------------- ---------------
- 4 -
APPENDIX C
Form of License Agreement
40
LICENSE AGREEMENT
This License Agreement ("Agreement") is made effective as of _________,
_____ (the "Effective Date") by and between BIOGEN, INC., a Massachusetts
corporation having its principal business office at 00 Xxxxxxxxx Xxxxxx,
Xxxxxxxxx, XX 00000 ("BIOGEN"), and CURAGEN CORPORATION, a Delaware corporation
with its principal place of business at 000 Xxxx Xxxxx Xxxxx, 00xx Xxxxx, Xxx
Xxxxx, Xxxxxxxxxxx 00000 ("CURAGEN"). BIOGEN and CURAGEN are each hereafter
referred to individually as a "Party" and together as the "Parties".
WHEREAS, BIOGEN wishes to obtain a license to certain inventions made by
CURAGEN as provided in the Research and Option Agreement between the Parties
hereto dated as of _______, 1997 (the "Research Agreement");
WHEREAS, CURAGEN has agreed to provide such license under the terms and
conditions set forth herein.
NOW, THEREFORE, in consideration of the mutual covenants contained herein,
and for other good and valuable consideration, the receipt and adequacy of which
are hereby acknowledged, the Parties hereby agree as follows:
1. DEFINITIONS
Whenever used in the Agreement with an initial capital letter, the terms
defined in this Section 1 shall have the meanings specified.
1.1 "Affiliate" shall mean any corporation, firm, limited liability
company, partnership or other entity which directly or indirectly controls or is
controlled by or is under common control with a Party to this Agreement.
"Control" means ownership, directly or through one or more Affiliates, of fifty
percent (50%) or more of the shares of stock entitled to vote for the election
of directors, in the case of a corporation, or fifty percent (50%) or more of
the equity interests in the case of any other type of legal entity, status as a
general partner in any partnership,
1
or any other arrangement whereby a Party controls or has the right to control
the Board of Directors or equivalent governing body of a corporation or other
entity.
1.2 "Clone" shall mean a segment of DNA representing a whole or partial
gene whose sequence or utility is determined from the use of one or more Data
Sets.
1.3 "CURAGEN Background Inventions" shall mean all patent rights and
know-how of CURAGEN, other than those relating primarily to Inventions, which
CURAGEN has the right to license as of the Effective Date or at any time during
the term hereof and which would be infringed by the development, manufacture,
use, sale or importation of a Licensed Product; provided, however, that CURAGEN
Background Inventions shall expressly exclude any patent rights or know-how
specifically relating to Clones or genes not licensed by BIOGEN pursuant to this
Agreement and any patent rights or know-how arising from any CURAGEN
collaboration with a third party, except to the extent permitted thereby.
1.4 "CURAGEN Data" shall mean, with respect to a Licensed Clone, all
information pertaining to such Licensed Clone obtained by CURAGEN from the
processing of specified CURAGEN samples, including QC data, expression data,
xxxxxxxx xxxx and any other information obtained or generated by CURAGEN in the
performance of the CURAGEN Project relating to such Licensed Clone.
1.5 "CURAGEN Data Set" shall mean all CURAGEN Data resulting from a
discrete CURAGEN Project.
1.6 "CURAGEN Project" shall mean a particular project undertaken by CURAGEN
outside the Research Program to process and analyze a specified set of samples
which do not contain BIOGEN Proprietary Material, and as to which CURAGEN is
free to grant rights to BIOGEN hereunder.
1.7 "CURAGEN Project Invention" shall mean any discovery, invention,
know-how or trade secret conceived or made by employees of CURAGEN (i) in the
performance of a CURAGEN Project that results in CURAGEN Data that becomes part
of an Exclusive Data Set,
2
that is based on, incorporates or makes material use of the corresponding
CURAGEN Data or (ii) relating to a Lead.
1.8 "CURAGEN Proprietary Material" shall mean, with respect to a Licensed
Clone, all substances made by CURAGEN in the performance of the Research Project
relating to such Licensed Clone other than mRNA pools extracted from BIOGEN
Proprietary Material. CURAGEN Proprietary Material shall also mean, with respect
to a Licensed Clone, all substances made by CURAGEN in the performance of the
CURAGEN Project relating to such Licensed Clone, including mRNA pools. CURAGEN
Proprietary Materials shall include, without limitation, QEA fragments and
materials derived or constructed from QEA fragments, including, without
limitation, fragment and full length cDNA clones.
1.9 "Data Set," which may be either a Project Data Set or a CURAGEN Data
Set, with respect to a Licensed Clone, shall mean all Project Data resulting
from the discrete Research Project relating to the Licensed Clone or all CURAGEN
Data resulting from the discrete CURAGEN Project relating to the Licensed Clone,
respectively.
1.10 [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
1.11 "Exclusive Data Set" shall mean any Project Data Set during the
corresponding Exclusive Evaluation Period as provided in Section 2.4 of the
Research Agreement or any CURAGEN Data Set during the corresponding Exclusive
Evaluation Period as provided in Section 2.5.2 of the Research Agreement.
1.12 "Exclusive Evaluation Period" shall have the meaning set forth in
Section 2.4 or 2.5.2 of the Research Agreement.
1.13 "Extended License" shall have the meaning set forth in Section 2.3.
1.14 "Invention," as to each Licensed Clone, shall mean any CURAGEN Project
Invention or Research Project Invention that is based on, incorporates or makes
material use of the Project Data or CURAGEN Data corresponding to the Licensed
Clone.
3
[Confidential Treatment Requested]
1.15 [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXX]
1.16 "Lead" shall mean a lead compound discovered or developed by CURAGEN
outside of the Research Program using a Licensed Clone or the protein expressed
thereby as a target, which lead compound is accepted by BIOGEN for use pursuant
to the terms of this Agreement.
1.17 "Licensed Clone" shall have the meaning set forth in Section 2.1.
1.18 "Licensed Product," as to each Licensed Clone, shall have the meaning
set forth in the relevant subsection of Section 2.1.
1.19 "Net Sales" shall mean [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX.
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
4
[Confidential Treatment Requested]
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXX]
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXX]
1.20 "Optioned Clone" shall have the meaning set forth in Section 7.1 of
the Research Agreement.
1.21 "Patent Rights," as to each Licensed Clone, mean the rights and
interests in and to issued patents and pending patent applications in any
country, including, but not limited to, all provisional applications,
substitutions, continuations, continuations-in-part, divisions, and renewals,
all letters patent granted thereon, and all reissues, reexaminations and
extensions thereof, whether owned solely or jointly by a Party or licensed in by
a Party, with the right to sublicense, now or in the future, wherein at least
one claim of such patent right is to an Invention. "CURAGEN Patent Rights" shall
mean Patent Rights owned solely or jointly by CURAGEN or licensed in by CURAGEN.
1.22 "Project Data" shall mean all information obtained by CURAGEN from the
processing of BIOGEN Proprietary Material in a particular Research Project,
including QC data,
5
[Confidential Treatment Requested]
expression data, xxxxxxxx xxxx and any other information obtained or generated
by CURAGEN in the performance of the Research Project relating to such Licensed
Clone.
1.23 "Project Data Set" shall mean all Project Data resulting from a
discrete Research Project.
1.24 "Research Program" shall mean the Research Program to be performed by
CURAGEN under the Research Agreement.
1.25 "Research Project" shall mean a particular project to process and
analyze a specified set of samples in the Research Program.
1.26 "Research Project Invention" shall mean any discovery, invention,
know-how or trade secret conceived or made by employees of CURAGEN or BIOGEN or
jointly by employees of both, (a) in the performance of a Research Project
hereunder, or (b) in the course of evaluating any Exclusive Data Set, in each
case that is based on, incorporates or makes material inventive use of the
corresponding Project Data or CURAGEN Data.
1.27 "Sublicensee" shall mean any non-Affiliate third party expressly
sublicensed by BIOGEN under the license granted to BIOGEN hereunder, to make,
have made, use, have used, offer to sell, sell, have sold, import or have
imported any Licensed Product.
1.28 "Territory" shall mean the world.
1.29 "Valid Claim(s)" shall mean an unexpired claim of (i) any issued
patent within Patent Rights which has not been finally declared invalid or
unenforceable by a patent office or by a court or other body of competent
jurisdiction in any unappealed or unappealable decision and which has not been
lost through an interference or opposition proceeding or (ii) any pending patent
application within Patent Rights which has not been finally rejected by a patent
office of competent jurisdiction in any unappealed or unappealable decision and
which has not been pending for more than seven (7) years.
6
2. LICENSE GRANT
2.1. License Grant. Upon exercise of an Option pursuant to Section 7.4 of
-------------
the Research Agreement for any Optioned Clone, BIOGEN shall elect one of the
following license types and the Parties shall indicate such election on Schedule
I attached hereto and shall complete the information on Schedule I for such
Optioned Clone and sign such Schedule I. Such Optioned Clone shall thereafter be
deemed a Licensed Clone. Additionally, upon written request of BIOGEN made
pursuant to Section 7.5 of the Research Agreement for any [XXXXXXXXXXX], BIOGEN
shall elect one of the following license types and the Parties shall indicate
such election on Schedule I attached hereto and shall complete the information
on Schedule I for such [XXXXXXXXXXXXXX] and sign such Schedule I. Such [XXXXXXX
XXXXX] shall thereafter be deemed a Licensed Clone.
(a) For each Licensed Clone listed on Schedule I for which a Section 2.1(a)
exclusive license is elected subject to the rights reserved to CURAGEN in
Section 2.5 below, CURAGEN hereby grants to BIOGEN an exclusive license (even as
to CURAGEN) in the Territory, to develop, make, have made, use, have used, sell,
have sold, offer for sale, import and have imported products (i) incorporating
or derived from such Licensed Clone or the protein expressed thereby, (ii)
discovered or developed using any such Licensed Clone or the protein expressed
thereby as a target or (iii) discovered or developed using a Lead which was
itself discovered or developed using such Licensed Clone or the protein
expressed thereby as a target ("Licensed Products"), for any and all human uses,
under (x) all Patent Rights, Inventions, and CURAGEN Proprietary Material
pertaining to such Licensed Clone or the uses thereof, including but not limited
to Patent Rights claiming whole or partial sequences or utility and (y) all
Patent Rights and know-how of CURAGEN which CURAGEN has the right to license to
BIOGEN relating to Leads discovered or developed using the Licensed Clone or the
protein expressed thereby as a target. Such license shall be perpetual unless
terminated as set forth herein.
(b) For each Licensed Clone listed on Schedule I for which a Section 2.1(b)
exclusive license is elected and which was "known" by third parties prior to the
exercise of the corresponding Option as determined pursuant to subsection (d)
below, subject to the rights reserved to CURAGEN in Section 2.5 below, CURAGEN
hereby grants to BIOGEN an
7
[Confidential Treatment Requested]
exclusive license (even as to CURAGEN) in the Territory, to develop, make, have
made, use, have used, sell, have sold, offer for sale, import and have imported
products (i) incorporating or derived from such Licensed Clone or the protein
expressed thereby, (ii) discovered or developed using any such Licensed Clone or
the protein expressed thereby as a target or (iii) discovered or developed using
a Lead which was itself discovered or developed using such Licensed Clone or the
protein expressed thereby as a target ("Licensed Products"), for any and all
human uses, under (x) all Patent Rights, Inventions, and CURAGEN Proprietary
Material pertaining to such Licensed Clone or the uses thereof, including but
not limited to Patent Rights claiming whole or partial sequences or utility and
(y) all Patent Rights and know-how of CURAGEN which CURAGEN has the right to
license to BIOGEN relating to Leads discovered or developed using the Licensed
Clone or the protein expressed thereby as a target. Such license shall be
perpetual unless terminated as set forth herein.
(c) For each Licensed Clone listed on Schedule I for which a Section 2.1(c)
non-exclusive license is elected, CURAGEN hereby grants to BIOGEN a
non-exclusive license in the Territory to use such Licensed Clone or the protein
expressed thereby as a target for discovering or developing small molecule drugs
and to develop, make, have made, use, have used, sell, have sold, offer for
sale, import and have imported any small molecule discovered or developed by
BIOGEN using such Licensed Clone or the protein expressed thereby as a target
("Licensed Products"), for any and all human uses, under all Patent Rights,
Inventions, and CURAGEN Proprietary Materials pertaining to such Licensed Clone
or the uses thereof, including but not limited to Patent Rights claiming whole
or partial sequences or utility. Such license shall be perpetual unless
terminated as set forth herein.
(d) The Parties shall mutually agree in good faith on whether any Licensed
Clone is "known" by third parties prior to the exercise of an Option, based
primarily on the availability of the whole or substantially whole coding domains
identical to such Licensed Clone in publicly available literature or databases.
Licensed Clones which are "known" only as a result of either a previous Research
Project or a CURAGEN Project from which BIOGEN received access to an Exclusive
Data Set from which the Licensed Clone was optioned, and are not "known" to
third
8
parties other than through any disclosure of research results related to such
Research Project or CURAGEN Project, shall not be deemed "known" for the
purposes hereof.
(e) A Licensed Product will be deemed to be discovered or developed using a
Licensed Clone or the protein expressed thereby as a target if the Licensed
Clone or the whole or partial sequence thereof or the protein expressed thereby
is utilized in any material way in the discovery, development, modification or
testing of the Licensed Product, or of analogs thereof or of molecules used in
the discovery, development or modification thereof.
2.2 Non-exclusive License. CURAGEN hereby grants to BIOGEN a non-exclusive
---------------------
license, coterminus with each license grant in Section 2.1, under CURAGEN
Background Inventions solely to the extent necessary to allow BIOGEN to practice
the license granted in Section 2.1 and for no other purpose.
2.3 Extended License. In the event that (a) CURAGEN is the owner of any
----------------
patent or patent application resulting from any activities other than the
Research Program that claims (i) any Licensed Clone, (ii) the protein expressed
by such Licensed Clone, (iii) any product discovered or developed using any such
Licensed Clone or the protein expressed thereby as a target, or (iv) a human
gene functionally equivalent to such Licensed Clone [XXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] and (b) CURAGEN is not utilizing
the invention or inventions claimed in such patent or application in a research
or development project then being actively planned or conducted by CURAGEN
(alone or in collaboration with any third party), and (c) CURAGEN has the right
to grant a license thereunder to BIOGEN, then any license granted to BIOGEN
under Section 2.1(a) or (b) shall include a license to such patent or patent
applications (an "Extended License").
2.4 Due Diligence. BIOGEN shall use commercially reasonable efforts, at
-------------
least equivalent to those efforts which BIOGEN uses with respect to its own
products, to develop, test, obtain regulatory approval of, market and sell
Licensed Products with respect to each Licensed Clone; provided, however, that
BIOGEN shall not be required hereby to be actively developing [XXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] at any
one time. Failure to use
9
[Confidential Treatment Requested]
diligent efforts as set forth herein for a given Licensed Clone shall give
CURAGEN the right, but not the obligation, to terminate BIOGEN's license
hereunder with respect to such Licensed Clone.
2.5 Reservation of Rights. Notwithstanding anything in this Agreement to
---------------------
the contrary, CURAGEN hereby retains for itself the right to use each Licensed
Clone and the proteins derived therefrom for as part of a general library of
nucleic acids, which library is used for research purposes.
2.6 Sublicenses. BIOGEN shall have the right to grant sublicenses to all or
-----------
any portion of its rights under any license granted herein to any Affiliate or
Sublicensee, provided, however, that BIOGEN shall remain obligated to ensure
payment of royalty and milestone obligations as set forth in Article 3.
3. CONSIDERATION
3.1 License Fees. Upon exercise of an Option pursuant to Section 7.1.2 of
------------
the Research Agreement for any Optioned Clone, BIOGEN shall pay to CURAGEN the
license fee specified in the Research Agreement which shall be as set forth
below:
License Type $ (thousands)
------------ -------------
Exclusive license under Section 2.1(a) [XXX]
Exclusive license under Section 2.1(b) [XXX]
Non-exclusive license under Section 2.1(c) [XXX]
No license fees shall be due with respect to [XXXXXXXXXXXX] licensed during the
Exclusive Evaluation Period of the [XXXX] [XXXXXX]. Additionally, [XXXXXXXX]
fees shall be due with respect to the [XXXXXXXXX] Optioned Clones which are
licensed hereunder.
3.2 Milestone Payments for Therapeutic or Prophylactic Products.
-----------------------------------------------------------
10
[Confidential Treatment Requested]
3.2.1 Milestone Payments under Exclusive License. BIOGEN shall make the
------------------------------------------
following milestone payments to CURAGEN for each therapeutic or prophylactic
Licensed Product under an exclusive license under Section 2.1(a) or Section
2.1(b):
(a) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] within ten (10) days following
the date BIOGEN or an Affiliate or Sublicensee files the first
Investigational New Drug application (or foreign equivalent) with the
FDA (or equivalent foreign regulatory agency) for the Licensed
Product ("IND");
(b) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] within ten (10) days following
the date BIOGEN or an Affiliate or Sublicensee commences the first
Phase III or Phase II/III clinical trial in any country for the
Licensed Product;
(c) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] within ten (10) days following
the date BIOGEN or an Affiliate or Sublicensee submits the first
Biologics License Application, Product License Application, New Drug
Application or other application for approval to sell the Licensed
Product to the FDA (or equivalent foreign regulatory agency) for the
Licensed Product;
(d) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] within ten (10) days following
the date BIOGEN or an Affiliate or Sublicensee receives FDA (or
equivalent foreign regulatory agency) approval of the Licensed
Product for commercial sale; and
(e) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] within
forty-five (45) days following the end of the first calendar year in
which annual gross sales of such Licensed Product exceed [XXXXX
XXXXXXXX] provided that such event has occurred prior to the end of
the fifth full calendar year following first commercial sale in the
United States or Europe of such Licensed Product.
3.2.2 Milestone Payments under Non-exclusive License. BIOGEN shall make the
----------------------------------------------
following milestone payments to CURAGEN for each therapeutic or prophylactic
Licensed Product covered by a non-exclusive license under Section 2.1(c):
11
[Confidential Treatment Requested]
(a) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] within ten (10)
days following the date BIOGEN or an Affiliate or Sublicensee files
the first Investigational New Drug application (or foreign
equivalent) with the FDA (or equivalent foreign regulatory agency)
for the Licensed Product ("IND");
(b) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] within ten (10) days
following the date BIOGEN or an Affiliate or Sublicensee commences
the first Phase III or Phase II/III clinical trial in any country for
the Licensed Product;
(c) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] within ten (10)
days following the date BIOGEN or an Affiliate or Sublicensee submits
the first Biologics License Application, Product License Application,
NDA or other application for approval to sell the Licensed Product to
the FDA (or equivalent foreign regulatory agency) for the Licensed
Product;
(d) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] within ten (10) days following
the date BIOGEN or an Affiliate or Sublicensee receives FDA (or
equivalent foreign regulatory agency) approval of the Licensed
Product for commercial sale; and
(e) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] within ten (10) days following
the end of the first calendar year in which annual gross sales of
such Licensed Product exceed [XXXXXXXXXXX] provided that such event
has occurred prior to the end of the fifth full calendar year
following first commercial sale in the United States or Europe of
such Licensed Product.
3.2.3 [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
---------------
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
[XXXXXXXXXXXXXXX]
3.3 Milestone Payments for Diagnostic Products. BIOGEN shall make the
------------------------------------------
following milestone payment to CURAGEN for each diagnostic Licensed Product
under an exclusive license under Section 2.1(a) or Section 2.1(b):
12
[Confidential Treatment Requested]
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] within ten (10)
days following the date BIOGEN or an Affiliate or Sublicensee
receives FDA (or equivalent foreign regulatory agency)
approval of the Licensed Product for commercial sale.
Notwithstanding the foregoing, the milestone payment set forth above shall
not be due with respect to any Licensed Product with a substantially similar
purpose and format to one for which such milestone has already been paid to
CURAGEN.
3.4 Royalties on Licensed Products from Research Project Inventions.
---------------------------------------------------------------
BIOGEN shall pay to CURAGEN a royalty on Net Sales of Licensed Products if the
sequence and/or utility of the relevant Licensed Clone is a Research Project
Invention or if the Licensed Product results from a Research Project Invention
or a Lead using a Licensed Clone which is a Research Project Invention as
follows:
(a) If the Licensed Product is: (1) a recombinant protein form of a
naturally occurring protein or a modified form or fragment thereof ("Protein
Product"), (2) a product involving insertion of nucleic acid into a human host
in order to induce cells in such host to express the protein encoded by such
nucleic acid for therapeutic benefit, or a product involving ex vivo insertion
of nucleic acid into human cells where such cells are then reimplanted into a
human to express the protein encoded by such nucleic acid for therapeutic
benefit ("Gene Therapy Product"), (3) a product designed to activate the
expression of an endogenous gene ("Gene Activation Product"), (4) a product
which is an oligonucleotide which binds to mRNA in vivo to inhibit or block
-------
protein production ("Anti-sense/ribozyme Product"), or (5) an antibody to the
protein encoded by a Licensed Clone ("Antibody Product"), the royalty rate on
Net Sales of such Licensed Product shall be as follows:
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXX]
13
[Confidential Treatment Requested]
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXX]
(b) If the Licensed Product is a small molecule discovered or developed
using a Licensed Clone or the protein expressed thereby as a target, which
target is non-exclusively licensed by BIOGEN pursuant to the provisions of
Section 2.1(c), the royalty rate on Net Sales of such Licensed Product shall be:
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXX]
(c) If the Licensed Product is a small molecule discovered or developed
using a Licensed Clone or the protein expressed thereby as a target (and is not
derived from, or a chemical, structural or functional analog of, a Lead), which
target is exclusively licensed by BIOGEN pursuant to the provisions of Sections
2.1(a) or (b), the royalty rate on Net Sales of
14
[Confidential Treatment Requested]
such Licensed Product shall be negotiated in good faith by the Parties prior to
the commencement of pre-clinical regulatory testing of such Licensed Product;
provided, however, that in no event shall the negotiated royalty rates be less
than those set forth in Section 3.4(b) above.
(d) If the Licensed Product is derived from, or is a chemical, structural
or functional analog of, a Lead identified by CURAGEN and provided to BIOGEN
pursuant to an exclusive license granted pursuant to the provisions of Section
2.1 (a) or (b), the royalty rate on Net Sales of such Licensed Product shall be:
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
(e) If the Licensed Product is a diagnostic product or any product other
than one whose royalty rate is set forth in Section 3.4(a), (b), (c) or (d)
above, then the royalty rate on Net Sales of such Licensed Product shall be:
2% if covered by a Valid Claim of a CURAGEN Patent Right;
15
[Confidential Treatment Requested]
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXX]
Notwithstanding the foregoing, in no event shall BIOGEN be obligated
pursuant to this subsection (e) to pay to CURAGEN more than [XXXXXXXXXXXXXXXXX]
of the running royalties received by BIOGEN or its Affiliates from a Sublicensee
with respect to any such Licensed Product.
(f) Royalties due to CURAGEN pursuant to subsections (a), (b), (c), (d)
or (e) above for a given Licensed Product [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] may be reduced by (i) [XXXXXXXXXXXXXXXXX] of
any royalties paid to third parties by BIOGEN on net sales of such Licensed
Product under licenses that are required [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] and
(ii) [XXXXXXXXXXXXX] of any royalties in excess of a total of [XXXXXXXXXX
XXXX] paid to third parties by BIOGEN on net sales of such Licensed Product
under licenses [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]. Royalties due
to CURAGEN pursuant to subsections (a), (b), (c), (d) or (e) above for a given
Licensed Product [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] of any royalties paid to third parties by
BIOGEN on net sales of such Licensed Product under licenses [XXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]. [XXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
16
[Confidential Treatment Requested]
3.5 Royalties on Licensed Products from CURAGEN Project Inventions.
--------------------------------------------------------------
BIOGEN shall pay to CURAGEN a royalty on Net Sales of Licensed Products if (i)
the sequence and/or utility of the relevant Licensed Clone is a CURAGEN Project
Invention or if the Licensed Product results from a CURAGEN Project Invention or
a Lead developed using a Licensed Clone which is a CURAGEN Project Invention, or
(ii) the manufacture, use or sale of the Licensed Product is covered by an
Extended License, as follows:
(a) If the Licensed Product is: (1) a recombinant protein form of a
naturally occurring protein or a modified form or fragment thereof ("Protein
Product"), (2) a product involving insertion of nucleic acid into a human host
in order to induce cells in such host to express the protein encoded by such
nucleic acid for therapeutic benefit, or a product involving ex vivo insertion
of nucleic acid into human cells where such cells are then reimplanted into a
human to express the protein encoded by such nucleic acid for therapeutic
benefit ("Gene Therapy Product"), (3) a product designed to activate the
expression of an endogenous gene ("Gene Activation Product"), (4) a product
which is an oligonucleotide which binds to mRNA in vivo to inhibit or block
-------
protein production ("Anti-sense/ribozyme Product"), or (5) an antibody to the
protein encoded by a Licensed Clone ("Antibody Product"), the royalty rate on
Net Sales of such Licensed Product shall be as follows:
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXX]
(b) If the Licensed Product is a small molecule discovered or developed
using a Licensed Clone or the protein expressed thereby as a target, which
target is non-exclusively licensed by BIOGEN pursuant to the provisions of
Section 2.1(c), the royalty rate on Net Sales of such Licensed Product shall be:
17
[Confidential Treatment Requested]
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXX]
(c) If the Licensed Product is a small molecule discovered or developed
using a Licensed Clone or the protein expressed thereby as a target (and is not
derived from, or a chemical, structural or functional analog of, a Lead), which
target is exclusively licensed by BIOGEN pursuant to the provisions of Sections
2.1(a) or (b), the royalty rate on Net Sales of such Licensed Product shall be
negotiated in good faith by the Parties prior to the commencement of
pre-clinical regulatory testing of such Licensed Product; provided, however,
that in no event shall the negotiated royalty rates be less than those set forth
in Section 3.5(b) above.
(d) If the Licensed Product is derived from, or is a chemical, structural
or functional analog of, a Lead identified by CURAGEN and provided to BIOGEN
pursuant to an exclusive license granted pursuant to the provisions of Section
2.1 (a) or (b), the royalty rate on Net Sales of such Licensed Product shall be:
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXX]
18
[Confidential Treatment Requested]
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
(e) If the Licensed Product is a diagnostic product or any product other
than one whose royalty rate is set forth in Section 3.5(a), (b), (c) or (d)
above, then the royalty rate on Net Sales of such Licensed Product shall be:
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
Notwithstanding the foregoing, in no event shall BIOGEN be obligated
pursuant to this subsection (e) to pay to CURAGEN more than [XXXXXXXXXXXXXXXXX]
of the running royalties received by BIOGEN or its Affiliates from a Sublicensee
with respect to any such Licensed Product.
(f) Royalties due to CURAGEN pursuant to subsections (a), (b), (c), (d)
or (e) above for a given Licensed Product [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] may be reduced by (i) [XXXXXXXXXXXXXXXXXX] of
any royalties paid to third parties by BIOGEN on net sales of such Licensed
Product under licenses that are required [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] and
(ii) [XXXXXXXXXXXXX] of any royalties in excess of a total of [XXXXXXXXXXX
XXX] paid to third parties by BIOGEN on net sales of such Licensed Product under
licenses [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]. Royalties due to CURAGEN
pursuant to subsections (a), (b), (c), (d) or
19
[Confidential Treatment Requested]
(e) above for a given Licensed Product [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] of any royalties paid
to third parties by BIOGEN on net sales of such Licensed Product under licenses
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXX]
3.6 One Royalty. Only one royalty, calculated at the highest applicable
-----------
royalty rate hereunder, shall be payable to CURAGEN hereunder for each sale of a
Licensed Product.
3.7 Payment Terms.
-------------
(a) Royalty payments shall be made to CURAGEN in United States Dollars
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXX] Each royalty payment shall be accompanied by a
report summarizing the total Net Sales for each Licensed Product [XXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXX]
(b) All royalties shall be payable in full in the United States in United
States Dollars, regardless of the countries in which sales are made. For the
purpose of computing Net Sales for Licensed Products sold in a currency other
than United States dollars, such currency shall be converted into United States
dollars at the exchange rate for buying U.S. dollars set forth in The Wall
--------
Street Journal for the last business day of the calendar quarter.
--------------
3.8 Royalty Term. BIOGEN shall pay royalties with respect to each
------------
Licensed Product on a country by country basis until [XXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] Following such
period, BIOGEN shall have a fully paid-up, irrevocable license in such country
under the relevant Patent Rights and Inventions and CURAGEN Background
Inventions, to make, have made, use,
20
[Confidential Treatment Requested]
have used, sell, have sold, offer for sale, import and have imported such
Licensed Product in such country.
3.9 Overdue Royalties. Royalties not paid within the time period set
-----------------
forth in this Article 3 shall bear interest at a rate of [XXXXXXXXXXXXXXXXXX
XXXXXXX] from the due date until paid in full.
3.10 Records Retention. Audits. BIOGEN, its Affiliates and Sublicensees
-------------------------
shall keep for three (3) years from the date of each payment of royalties
complete and accurate records of sales by BIOGEN and its Affiliates and
Sublicensees of each Licensed Product in sufficient detail to allow the accruing
royalties to be determined accurately. CURAGEN shall have the right for a period
of three (3) years after receiving any report or statement with respect to
royalties due and payable to appoint an independent certified public accountant
reasonably acceptable to BIOGEN to inspect the relevant records of BIOGEN and
its Affiliates and Sublicensees to verify such report or statement. BIOGEN and
its Affiliates and Sublicensees shall each make its records available for
inspection by such independent certified public accountant during regular
business hours at such place or places where such records are customarily kept,
upon reasonable notice from CURAGEN, solely to verify the accuracy of the
reports and payments. Such inspection right shall not be exercised more than
once in any calendar year nor more than once with respect to sales of any
Licensed Product in any given payment period. CURAGEN agrees to hold in strict
confidence all information concerning royalty payments and reports, and all
information learned in the course of any audit or inspection, except to the
extent necessary for CURAGEN to reveal such information in order to enforce its
rights under this Agreement or if disclosure is required by law, regulation or
judicial order. The results of each inspection, if any, shall be binding on both
Parties. CURAGEN shall pay for such inspections, except that in the event there
is any upward adjustment in aggregate royalties payable for any year shown by
such inspection of more than [XXXXXXXXXXXXXX] of the amount paid, BIOGEN shall
pay for such inspection.
3.11 Tax Withholding. CURAGEN agrees that any tax burden levied by any
---------------
countries foreign to the United States covered by this Agreement on receipt by
CURAGEN of royalties from BIOGEN under this Agreement shall be borne by CURAGEN.
In the event that
21
[Confidential Treatment Requested]
such tax is required to be withheld by BIOGEN, its Affiliates, licensees or
Sublicensees, it shall deliver to CURAGEN a statement including the amount of
tax withheld and justification therefor, and such other information as may be
necessary for United States foreign tax credit purposes.
4. TREATMENT OF CONFIDENTIAL INFORMATION
4.1 Confidential Information. During the term of this Agreement, each
------------------------
Party may disclose to the other proprietary technical and business information
(collectively, "Confidential Information"). For a period of [XXXXXXXXXX] after
the receipt of any such Confidential Information, the receiving Party shall keep
confidential all such Confidential Information of the other Party and will not
disclose such Confidential Information of the other Party to third parties by
publication or otherwise. Each Party further agrees not to use Confidential
Information of the other Party for any purpose other than exercising any rights
granted to it or reserved by it hereunder. Notwithstanding the foregoing, it is
understood and agreed that the receiving Party's obligations of confidentiality
and nonuse herein shall not apply to any information which:
(a) is, at the time of disclosure by the disclosing Party
hereunder, or thereafter becomes, a part of the public domain or
publicly known or available through no fault or negligence of the
receiving Party or any of its Affiliates; or
(b) was otherwise in the receiving Party's lawful possession prior
to disclosure by the disclosing Party, as demonstrated by the
receiving Party's written records; or
(c) is lawfully disclosed to the receiving Party or any of its
Affiliates on a non-confidential basis by a third party who is not in
violation of an obligation of confidentiality to the disclosing Party
relative to such information.
4.2 Press Release and Regulatory Filings. The Parties shall mutually
------------------------------------
agree on a press release announcing the execution of this Agreement and on any
confidential treatment request to be filed with the Securities and Exchange
Commission with respect to this Agreement.
22
[Confidential Treatment Requested]
Once any written statement is approved for disclosure by both Parties, either
Party may make subsequent public disclosures of the contents of such statement
without the further approval of the other Party.
5. PROVISIONS CONCERNING THE FILING, PROSECUTION AND
MAINTENANCE OF PATENT RIGHTS
5.1 Patent Filing. During the term of this Agreement, with respect to any
-------------
Patent Rights or Inventions licensed hereunder:
(a) Upon inclusion of a Licensed Clone or Lead under the terms of this
Agreement, CURAGEN and BIOGEN shall meet to discuss the feasibility of filing
requests for divisional patent applications in order to create Patent Rights
relating solely to Licensed Clones or Leads which are exclusively licensed
hereunder and not to other Clones or Inventions. CURAGEN shall cause such
actions to be taken if the Parties reasonably agree that such actions are
feasible and desirable.
(b) BIOGEN shall have the right to prepare, file, prosecute, obtain and
maintain, at its expense, all Patent Rights relating solely to Licensed Clones
or Leads which are exclusively licensed hereunder. CURAGEN agrees to provide
reasonable assistance and cooperation to BIOGEN to facilitate such filing,
prosecution and maintenance. BIOGEN agrees that any such preparation, filing,
prosecution and maintenance shall be conducted with reasonable diligence and
that CURAGEN shall be kept fully informed of the progress thereof and provided
with copies of all material documents pertaining thereto. CURAGEN shall,
whenever possible, be given the opportunity to review and comment in advance on
any patent filings or other correspondence with the patent office during such
periods and BIOGEN shall consider incorporating any comments provided by CURAGEN
in good faith.
(c) Except as provided in (b) above, CURAGEN shall have the first right
(but not the obligation) to prepare, file, prosecute, obtain and maintain patent
applications and patents on Inventions relating to the Licensed Clones or Leads
which are licensed hereunder at its sole expense. BIOGEN agrees to provide
reasonable assistance and cooperation to CURAGEN to
23
facilitate such filing, prosecution and maintenance. CURAGEN agrees that any
such preparation, filing, prosecution and maintenance shall be conducted with
reasonable diligence and that BIOGEN shall be kept fully informed of the
progress thereof and provided with copies of all material documents pertaining
thereto during the term of this agreement. BIOGEN shall, whenever possible, be
given the opportunity to review and comment in advance on any patent filings or
other correspondence with the patent office during such periods and CURAGEN
shall consider incorporating any comments provided by BIOGEN in good faith.
(d) CURAGEN may elect not to exercise its first right to prepare, file,
prosecute, obtain and maintain patent applications and patents on Inventions as
described in Section 5.1(c) above at any time for any such patent applications
and patents by giving written notice thereof to BIOGEN. Such notice shall
specifically identify the patent application(s) and/or patent(s) for which
CURAGEN wishes to relinquish such first right. Following the receipt of such
notice, BIOGEN shall have the right to prepare, file, prosecute, obtain and
maintain the patent application(s) and patent(s) identified in the notice, at
its sole expense, on behalf of the owner of the Invention, subject to the rights
granted herein, during the term of this Agreement.
(e) The Parties shall mutually agree before permitting any patent
application or patent within Patent Rights exclusively licensed hereunder to
lapse as well as before authorizing any amendment to any patent application or
patent within such Patent Rights that would irrevocably limit the lawful scope
of the Patent Rights.
(f) BIOGEN may elect not to exercise its right to prepare, file, prosecute,
obtain and maintain patent applications and patents on Inventions or Leads as
described in Section 5.1(b) above at any time for any such Patent Rights by
giving written notice thereof to CURAGEN. Such notice shall specifically
identify the patent application(s) and/or patent(s) for which BIOGEN wishes to
relinquish such right. Following the receipt of such notice, CURAGEN shall have
the right to prepare, file, prosecute, obtain and maintain the patent
application(s) and patent(s) identified in the notice, at its sole expense, and
CURAGEN shall thereafter be deemed the sole owner of any such application or
patent, and any such patents and patent applications shall be removed from
operation of this Agreement.
(g) No Party shall have any obligation under this Agreement to pay any fees
or costs: (i) for bringing a lawsuit or other action to enforce any of the
Patent Rights against an actual or
24
suspected infringement or (ii) for any other Party to obtain for its own benefit
independent business or legal advice concerning any of the Patent Rights.
5.2 Notice of Infringement. If, during the term of this Agreement or the
----------------------
term of any license hereunder, either Party learns of any infringement or
threatened infringement by a third party of the patents within Patent Rights,
such Party shall promptly notify the other Party and shall provide such other
Party with available evidence of such infringement.
5.3 Infringement. BIOGEN shall have the first right (but not the
------------
obligation), at its own expense, to bring suit (or other appropriate legal
action) against any actual or suspected infringement of the Patent Rights
licensed hereunder provided that BIOGEN has an exclusive license to the
infringed claim(s) of any such Patent Right pursuant to Article 2. If BIOGEN
does not take such action within one hundred twenty (120) days after written
notice from CURAGEN of the infringement, CURAGEN shall have the right (but not
the obligation), at its own expense, to bring suit against such infringement.
Any amount recovered, whether by judgment or settlement, shall first be applied
to reimburse the costs and expenses (including attorneys' fees) of the Party
bringing suit, then to the costs and expenses (including attorneys' fees), if
any, of the other Party. Any amounts remaining shall be allocated [XXXXXXXXXXX
XXXXXX] to the Party bringing suit and [XXXXXXXXXX] to the other Party or
shall be allocated one-half to each Party if the suit is brought jointly.
5.4 Cooperation. Each Party shall, at the expense of the other Party,
-----------
execute all papers and perform such other acts as may be reasonably required to
maintain any infringement suit brought in accordance with Section 5.3 above
(including giving legal consent for bringing such suit, and agreeing to be named
as a plaintiff or otherwise joined in such suit), and at its option and expense,
may be represented in such suit by counsel of its choice.
6. TERM AND TERMINATION
6.1. Termination Provisions.
----------------------
(a) This Agreement and the licenses granted herein may be terminated by
CURAGEN upon any breach by BIOGEN of any material obligation or condition,
effective thirty (30) days
25
[Confidential Treatment Requested]
after giving written notice to BIOGEN of such termination in the case of a
payment breach and sixty (60) days after giving written notice to BIOGEN of such
termination in the case of any other breach, which notice shall describe such
breach in reasonable detail; provided, however, that a breach of Section 2.4
shall only give rise to the termination rights specified therein. The foregoing
notwithstanding, if the default or breach is cured or shown to be non-existent
within the aforesaid thirty (30) or sixty (60) day period, the notice shall be
deemed automatically withdrawn and of no effect.
(b) If either Party files for protection under bankruptcy laws, makes an
assignment for the benefit of creditors, appoints or suffers appointment of a
receiver or trustee over its property, files a petition under any bankruptcy or
insolvency act or has any such petition filed against it which is not discharged
within sixty (60) days of the filing thereof, then the other Party may terminate
this Agreement by notice to such Party.
6.2 Effect of Termination.
---------------------
(a) Upon termination of this Agreement under Section 6.1, all relevant
licenses and sublicenses granted by CURAGEN to BIOGEN hereunder shall terminate
automatically and BIOGEN shall promptly transfer to CURAGEN all related Licensed
Clones, Leads, Data Sets and CURAGEN Proprietary Material in its possession
without retaining any copies thereof, as well as any full-length xxxxxxxx xxxx
relating to such Licensed Clone(s) and a summary of any safety information
generated by or at the direction of BIOGEN with respect to products derived from
such Licensed Clone(s) or Leads. In addition, upon any termination pursuant to
Section 6.1(a), BIOGEN shall be deemed without any further action to have
granted to CURAGEN an exclusive, worldwide, royalty-free license (including the
right to grant sublicenses), under BIOGEN's ownership interest in any Inventions
and Patent Rights covering or related to the relevant Licensed Clone(s) or Leads
to develop, have developed, make, have made, use, have used, offer for sale,
sell, have sold, import and have imported any and all products in all fields.
(b) Documentation. At the request of CURAGEN, BIOGEN shall execute and
-------------
deliver such bills of sale, assignments and licenses and other documents, if
any, as may be
26
necessary to fully vest in CURAGEN all right, title and interest to which it is
entitled as aforesaid pursuant to this Section 6.2.
(c) Payment Obligations. BIOGEN shall have no obligation to make any
milestone or royalty payment to CURAGEN that has not accrued prior to the
effective date of such termination, but shall remain liable for all obligations
accruing prior to termination.
6.3 Termination by BIOGEN. BIOGEN may terminate this Agreement, and the
---------------------
rights and obligations hereunder, or may remove any Licensed Clone and the
licenses related thereto from operation of this Agreement, in its sole
discretion at any time by giving written notice thereof to CURAGEN. Such
termination shall be effective [XXXXXXXXXXXXXXXX] following the date such notice
is received by CURAGEN and shall have all consequences as set forth in Section
6.2 above, but only with respect to the specified Licensed Clone(s), as if this
Agreement had been terminated pursuant to Section 6.1(a).
6.4 Remedies. If either Party shall fail to perform or observe or otherwise
--------
breaches any of its material obligations under this Agreement, in addition to
any right to terminate this Agreement, the non-defaulting Party may elect to
obtain other relief and remedies available under law.
6.5 Surviving Provisions. Notwithstanding any provision herein to the
--------------------
contrary, the rights and obligations set forth in Article 4, Sections 6.2 and
6.4, and Article 7 hereof, as well as any rights or obligations otherwise
accrued, shall survive the expiration or termination of the term of this
Agreement.
7. MISCELLANEOUS
7.1 CURAGEN Representations. CURAGEN represents and warrants that: (a) the
-----------------------
execution and delivery of this Agreement and the performance of the transactions
contemplated hereby have been duly authorized by all appropriate CURAGEN
corporate action; (b) CURAGEN is under no obligation which is inconsistent with
this Agreement; and (c) CURAGEN has the full right and legal capacity to grant
the rights to BIOGEN pursuant to Article 2 above without violating the rights of
any third party.
27
[Confidential Treatment Requested]
7.2 BIOGEN Representations. BIOGEN represents and warrants that: (a) the
----------------------
execution and delivery of this Agreement and the performance of the transactions
contemplated hereby have been duly authorized by all appropriate BIOGEN
corporate action; and (b) BIOGEN is under no obligation which is inconsistent
with this Agreement.
7.3 No Warranties.
-------------
(a) Nothing in this Agreement is or shall be construed as:
(i) a warranty or representation by CURAGEN as to the validity or
scope of any application or patent within the Patent Rights;
(ii) a warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in this Agreement is
or will be free from infringement of patents, copyrights, and other
rights of third parties.
(b) Except as expressly set forth in this Agreement, NEITHER PARTY MAKES
ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, THAT ANY LICENSED PRODUCT WILL BE SUCCESSFULLY
DEVELOPED OR MARKETED, OR THAT THE DEVELOPMENT, MANUFACTURE, SALE, IMPORTATION
OR USE OF THE LICENSED PRODUCT(S) WILL NOT INFRINGE ANY PATENT, COPYRIGHT,
TRADEMARK, OR OTHER RIGHTS, OR ANY OTHER EXPRESS OR IMPLIED WARRANTIES.
7.4 Liability. NOTWITHSTANDING ANYTHING ELSE IN THIS AGREEMENT OR
---------
OTHERWISE, NEITHER PARTY WILL BE LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF
THIS AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL
OR EQUITABLE THEORY FOR (I) ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE
DAMAGES OR LOST
28
PROFITS OR (II) COST OF PROCUREMENT OF SUBSTITUTE GOODS, TECHNOLOGY OR SERVICES
7.5 Notices. Any notices, requests, deliveries, approvals or consents
-------
required or permitted to be given under this Agreement to BIOGEN or CURAGEN
shall be in writing and shall be personally delivered or sent by telecopy (with
written confirmation to follow via United States first class mail), overnight
courier providing evidence of receipt or certified mail, return receipt
requested, postage prepaid, in each case to the respective address specified
below (or to such address as may be specified in writing to the other Party
hereto):
CURAGEN: 000 Xxxx Xxxxx, 00xx Xxxxx
Xxx Xxxxx, XX 00000
Attn: Executive Vice President
Telecopy: (000) 000-0000
BIOGEN: 00 Xxxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Attn: Director, Marketing and Business Development
Telecopy: (000) 000-0000
with copies to: Vice President - General Counsel
Telecopy: (000) 000-0000
Such notices shall be deemed to have been sufficiently given on: (a) the
date sent if delivered in person or transmitted by telecopy, (b) the next
business day after dispatch in the case of overnight courier or (c) five (5)
business days after deposit in the U.S. mail in the case of certified mail.
7.6 Governing Law. This Agreement will be construed, interpreted and
-------------
applied in accordance with the laws of the State of Connecticut (excluding its
body of law controlling conflicts of law).
7.7 Limitations. Except as set forth elsewhere in this Agreement, neither
-----------
Party grants to the other Party any right or license to any of its intellectual
property.
29
7.8 Entire Agreement. This is the entire Agreement between the Parties with
----------------
respect to the subject matter herein. No modification shall be effective unless
in writing and signed by the Parties.
7.9 Waiver. The terms or conditions of this Agreement may be waived only by
------
a written instrument executed by the Party waiving compliance. The failure of
either Party at any time or times to require performance of any provision hereof
shall in no manner affect its rights at a later time to enforce the same. No
waiver by either Party of any condition or term shall be deemed as a continuing
waiver of such condition or term or of another condition or term.
7.10 Headings. Section and subsection headings are inserted for convenience
--------
of reference only and do not form part of this Agreement.
7.11 Assignment. This Agreement may not be assigned by either Party without
----------
the consent of the other, except that each Party may, without such consent,
assign this Agreement and the rights, obligations and interests of such Party,
in whole or in part, to any of its Affiliates, to any purchaser of all or
substantially all of its assets in the line of business to which this Agreement
pertains or to any successor corporation resulting from any merger or
consolidation of such Party with or into such corporations.
7.12 Force Majeure. Neither Party shall be liable for failure of or delay
-------------
in performing obligations set forth in this Agreement, and neither shall be
deemed in breach of its obligations, if such failure or delay is due to natural
disasters or any causes beyond the reasonable control of such Party. In event of
such force majeure, the Party affected thereby shall use reasonable efforts to
cure or overcome the same and resume performance of its obligations hereunder.
7.13 Construction. The Parties hereto acknowledge and agree that: (i) each
------------
Party and its counsel reviewed and negotiated the terms and provisions of this
Agreement and have contributed to its revision; (ii) the rule of construction to
the effect that any ambiguities are resolved against the drafting Party shall
not be employed in the interpretation of this Agreement; and (iii) the terms and
provisions of this Agreement shall be construed fairly as to all Parties
30
hereto and not in a favor of or against any Party, regardless of which Party was
generally responsible for the preparation of this Agreement.
7.14 Severability. If any provision(s) of this Agreement are or become
------------
invalid, are ruled illegal by any court of competent jurisdiction or are deemed
unenforceable under then current applicable law from time to time in effect
during the term hereof, it is the intention of the Parties that the remainder of
this Agreement shall not be affected thereby provided that a Party's rights
under this Agreement are not materially affected. The Parties hereto covenant
and agree to renegotiate any such term, covenant or 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, illegal or unenforceable, it being the intent of the Parties that the
basic purposes of this Agreement are to be effectuated.
7.15 Status. Nothing in this Agreement is intended or shall be deemed to
------
constitute a partner, agency, employer-employee, or joint venture relationship
between the Parties.
7.16 Indemnification.
---------------
(a) BIOGEN shall indemnify, defend and hold harmless CURAGEN, its
Affiliates and their respective directors, officers, employees, and agents and
their respective successors, heirs and assigns (the "CURAGEN Indemnitees"),
against any liability, damage, loss or expense (including reasonable attorneys'
fees and expenses of litigation) incurred by or imposed upon the CURAGEN
Indemnitees, or any of them, in connection with any claims, suits, actions,
demands or judgments of third parties, including without limitation personal
injury and product liability matters (except to the extent that such claims,
suits, actions, demands or judgments result from a material breach of this
Agreement, or the negligence or willful misconduct on the part of CURAGEN or are
the subject matter of CURAGEN'S indemnification of BIOGEN as set forth in
Section 7.16(b)) arising out of or relating to any actions of BIOGEN or any
Affiliate, licensee, sublicensee, distributor or agent of BIOGEN in the
development, testing, production, manufacture, promotion, import, sale or use by
any person of any Licensed Product manufactured or sold by BIOGEN or by an
Affiliate, licensee, sublicensee, distributor or agent of BIOGEN.
31
(b) CURAGEN shall indemnify, defend and hold harmless BIOGEN, its
Affiliates and their respective directors, officers, employees, and agents and
their respective successors, heirs and assigns (the "BIOGEN Indemnitees"),
against any liability, damage, loss or expense (including reasonable attorneys'
fees and expenses of litigation) incurred by or imposed upon the BIOGEN
Indemnitees, or any of them, in connection with any claims, suits, actions,
demands or judgments of third parties, including without limitation personal
injury matters (except to the extent that such claims, suits, actions, demands
or judgments result from a material breach of this Agreement, or the negligence
or willful misconduct on the part of BIOGEN) arising directly out of the use by
BIOGEN or CURAGEN of CURAGEN'S technology under the Research Agreement, except
to the extent such claims, suits, actions, demands or judgments are based on the
use of the samples or information provided to CURAGEN by BIOGEN under the
Research Agreement.
32
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed
by their duly authorized representative in two (2) originals.
BIOGEN, INC. CURAGEN CORPORATION
By: By:
------------------------------ ------------------------------
Title: Title:
----------------------------- -----------------------------
33
SCHEDULE I
(To be completed for each Licensed Clone)
Licensed Clone:
---------------
Type of License:
----------------
Project Data Set
----------------
or
--
CURAGEN Data Set
----------------
Pertaining to Licensed Clone:
-----------------------------
CURAGEN Proprietary
-------------------
Material Pertaining to
----------------------
Licensed Clone:
---------------
CURAGEN Patent Rights
---------------------
Pertaining to Licensed Clone:
-----------------------------
Rights under
------------
Extended License:
-----------------
Signed this day of
------ -------------, -----
CURAGEN CORPORATION
By:
--------------------------------------
Name:
Title:
BIOGEN, INC.
By:
--------------------------------------
Name:
Title:
34
APPENDIX D
----------
Terms of Subscription Agreements
QEA/Gene Calling
----------------
Subscriber will receive secure access to CuraGen's QEA/GeneCalling subscription
database through the GeneScape( data base and software. Access will be provided
for up to [XXX] users on equipment to be provided by Subscriber.
CURAGEN will support and maintain the software provided for such access and will
use commercially reasonable efforts to update and maintain the database and to
keep it reasonably available for use.
Options and Licenses to clones identified using the database shall be provided
on terms substantially similar to those contained in this Agreement and the
License Agreement.
MIM/Path Calling
----------------
Subscriber will receive access to the MIM/PathCalling database through the
GeneScape(R) data base and software. Access will be provided for up to [XXX]
users on equipment to be provided by Subscriber.
CURAGEN will support and maintain the software provided for such access and will
use commercially reasonable efforts to update and maintain the database and to
keep it reasonably available for use.
Options and Licenses to clones identified using the database shall be provided
on terms substantially similar to those contained in this Agreement and the
License Agreement.
GeneTools
---------
Pursuant to any subscription agreement as described above Subscriber will also
receive secure access to the GeneTools database through the GeneScape(R)
software. Access will be provided for up to [XXX] users on equipment to be
provided by Subscriber.
35
[Confidential Treatment Requested]
