EXHIBIT 10.20
[*#*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED
IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION PURSUANT TO RULE 406
OF THE SECURITIES ACT OF 1933, AS AMENDED.
UNIVERSITY OF COLORADO MATERIALS TRANSFER AGREEMENT
Parties
-------
This is an Agreement between the Regents of the University of Colorado, a body
corporate, contracting on behalf of the University of Colorado Health Sciences
Center ("UCHSC"), and Myogen, a Delaware corporation with a principal place of
business at the Bioscience Park at Xxxxxxxxxx, Xxxx 000, 0xx Xxxxx Xxxxx Xxxx,
Xxxxxx, Xxxxxxxx, 00000-0000 ("Recipient").
Materials
---------
Biological materials to which this Agreement applies: one or more samples, to be
specified by Recipient, from the Human Cardiac Tissue Bank of the Department of
Cardiology at the UCHSC ("Biological Materials"), and any related information or
material supplied in connection therewith.
UCHSC owns and is in possession of Biological Materials and has a right to
provide said biological Materials to Recipient as provided under this Agreement.
Grant
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UCHSC is pleased to provide Recipient with Biological Materials subject to the
following terms:
Terms
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1. (a) Recipient must [*#*] by UCHSC to meet the obligations of this Agreement,
[*#*] displayed in Attachment A.
(b) Payments required under Article 1(a) above and detailed in Attachment A
satisfy the requirements of Article V of the Intellectual Property License
Agreement between Recipient and the University Technology Corporation and
executed on or about the same date as this Agreement.
(c) Nothing in this Agreement requires UCHSC to provide Biological Materials
to Recipient in amounts that would prohibit or substantially hinder UCHSC from
carrying on its own research.
2. Recipient agrees that Biological Materials may be used solely in Recipient's
facilities, or such other party's facilities as the Recipient and UCHSC shall
agree to in writing, and that Recipient will follow all applicable NIH
guidelines.
3. Recipient must maintain control of Biological Materials and may not transfer
control to third parties without the prior written consent of UCHSC.
4. (a) Nothing in this Agreement grants Recipient rights under any patents or in
any know how of UCHSC.
(b) UCHSC places no restrictions other than those specified in this Agreement
on Recipient's use of Biological Materials.
Page 1 of 4
(c) UCHSC will not make claims to test data, results, lab notes, reports or
other works created or prepared without use of UCHSC funds, facilities, or
personnel acting in their capacity as UCHSC employees.
5. Biological Materials ARE PROVIDED WITHOUT WARRANTY OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED.
RECIPIENT AGREES THAT UCHSC AND ITS EMPLOYEES AND AGENTS HAVE NO LIABILITY IN
CONNECTION WITH BIOLOGICAL MATERIALS PROVIDED UNDER THIS AGREEMENT OR THEIR USE
BY RECIPIENT UNDER THIS AGREEMENT.
6. This Agreement will terminate on the earliest of the following dates: (i)
five years from the date of the first signature below; (ii) when Recipient
determines that it has obtained all required Biological Materials and states so
in writing; (iii) when UCHSC's supply of Biological Materials becomes exhausted;
(iv) when all other business agreements, such as patent licenses, between
Recipient and UCHSC or its agents have terminated; (v) immediately after any
continuous fifteen (15) month period in which Recipient fails to provide the
support specified in Article 1. In the event this Agreement terminates pursuant
to clause (i) of this Section 6, Recipient will have the first option to renew
this Agreement under substantially similar terms.
7. (a) While this Agreement is in force, UCHSC may not provide Biological
Materials or other samples from the Human Cardiac Tissue Bank to any commercial
or for-profit entity.
(b) UCHSC may provide samples from the Human Cardiac Tissue Bank to third
party non-profit research or educational institutions at any time but only for
research and education purposes. Such third parties must agree not to transfer
Biological Materials to any other entity.
As a condition for supplying Biological Materials to such non-profit parties,
UCHSC will require one of the two following conditions, at UCHSC's sole choice:
(i) "[Third-party non-profit] agrees to use heart tissue samples supplied by
UCHSC under this Agreement only in a collaborative research project with
UCHSC and if UCHSC makes a reasonable determination that inventions made
under the collaborative project relate to the business activities or business
plans of Myogen Corporation, then [Third-party non-profit] agrees to join
UCHSC in offering to Myogen a first right of refusal on such inventions," or
(ii) "[Third-party non-profit] understands that UCHSC has entered into a
commercial relationship with Myogen, Inc. and [Third-party non-profit] agrees
to grant Myogen a first right of refusal to any inventions in the fields of
human cardiac diagnostics and human cardiac therapeutics made with the use of
tissue samples supplied by UCHSC under this Agreement."
8. This Agreement sets forth the entire agreement and understanding between the
parties regarding the subject matter herein and cannot be changed or amended
except by written agreement executed by both parties.
9. Any notice or communication permitted or required hereunder must be in
writing.
Page 2 of 4
[*#*]CONFIDENTIAL TREATMENT REQUESTED
10. All waivers to this Agreement must be in writing. The failure of either
party to insist upon strict performance of any provision of this Agreement, or
to exercise any right provided for herein, shall not be deemed to be a waiver
for the future of such provision or right, and no waiver or any provision or
right shall affect the right of the waiving party to enforce any other provision
or right herein.
11. This Agreement will be governed by and interpreted in accordance with the
laws of the State of Colorado as those laws are applied to contracts entered
into and to be performed entirely in Colorado by Colorado residents. Venue for
purposes of filing any legal action arising out of or in connection with this
Agreement shall lie in Denver, Colorado which shall be deemed to be a convenient
forum.
12. If any provision of this Agreement is determined to be unenforceable for any
reason, the remaining provisions hereof shall be unaffected and remain in full
force and effect.
13. This Agreement may be executed in several counterparts, all of which shall
constitute one agreement. This Agreement may be executed and delivered by
facsimile.
THE AUTHORIZED SIGNATURES BELOW VERIFY AGREEMENT BETWEEN THE PARTIES.
FOR UCHSC:
/s/ Xxx Xxxxxxx Date: 8/24/98
--------------------------------------------- --------
Xxx Xxxxxxx, DDS, Ph.D.
Executive Vice Chancellor
Campus Box A095,
University of Colorado
Health Sciences Center
Xxxxxx, XX 00000
/s/ Xxxxxx X. Xxxxxxx Date: 8/26/98
--------------------------------------------- --------
Xxxxxx X. Xxxxxxx, M.D., Chairman
Department of Medicine
University of Colorado
Health Sciences Center
FOR RECIPIENT
By: J. Xxxxxxx Xxxxxxx Date: 9-4-98
--------------------------------------------- --------
J. Xxxxxxx Xxxxxxx, President and CEO
Myogen, Inc.
Bioscience Park at Xxxxxxxxxx
Xxxxxxxx 000, 0xx Xxxxx Xxxxx Wing
Xxxxxx, XX 00000-0000
Page 3 of 4
[*#*]CONFIDENTIAL TREATMENT REQUESTED
ATTACHMENT A
[*#*]
1. [*#*]
2. [*#*]
3. [*#*]
4. [*#*]
TOTAL DIRECT COSTS [*#*]
Indirect costs associated with the above direct costs are under negotiation and
will be established to the mutual satisfaction of both parties in a future
amendment to this agreement.
Page 4 of 4
[*#*]CONFIDENTIAL TREATMENT REQUESTED
AMENDMENT NO. 1 TO
UNIVERSITY OF COLORADO MATERIALS TRANSFER AGREEMENT
This Amendment No. 1 to the University of Colorado Materials Transfer Agreement
is made and entered into as of January 4, 2001 by and between the Regents of the
University of Colorado, a body corporate, acting on behalf of the University of
Colorado Health Sciences Center ("UCHSC") and Myogen, Inc. ("MYOGEN").
RECITALS
WHEREAS:
A. UCHSC and MYOGEN entered into a Materials Transfer Agreement effective as of
September 4, 1998 (MTA).
B. UCHSC and MYOGEN wish to amend the terms of the MTA to revise the conditions
upon which both parties may make samples available to third parties, as set
forth below.
NOW, THEREFORE, it is hereby agreed as follows:
1. Pursuant to Section 2 and 3 of the MTA, MYOGEN may provide samples of
Materials to third parties for chemical analysis, when the information from such
analysis may be commercialized by Myogen or by third parties under an agreement
with Myogen.
In the event that a third party is provided commercial rights to the data
derived from the chemical and/or genetic analysis of Materials, Myogen will use
its best efforts to negotiate a cost free subscription to the commercial
database of such third party containing data derived from the chemical and/or
genetic analysis of Materials. The subscription would preferably be without
restriction on UCHSC's use of the subscription database(s) for the purposes of
grant or contract preparation and submittal to a non-profit or government
agency, and publication of the University's own research results. In the event
that Myogen cannot provide UCHSC with access to the commercial database of such
third party under the terms described above, Myogen will make data that Myogen
receives from third party analysis, available to UCHSC for purposes of grant or
contract preparation and submittal to a non-profit or government agency.
2. Section 7 of the MTA shall be deleted in its entirety and the following shall
be substituted in it s place:
7. While this MTA is in force,
(a) UCHSC may not provide Biological Materials or other samples from the
Human Cardiac Tissue Bank to any commercial or for-profit entity.
(b) UCHSC may provide samples from the Human Cardiac Tissue Bank to third
party nonprofit research or education institutions at any time but only for
research and educational purposes. Such third parties must agree not to further
transfer Biological Materials to any other entity.
[*#*]CONFIDENTIAL TREATMENT REQUESTED
(c) UCHSC may conduct research on samples from the Human Cardiac Tissue
Bank sponsored by for-profit entities as long as such research is not in
competition with Myogen's business plan.
3. Except as expressly provided in this AMENDMENT, all other terms, conditions,
and provisions of the MTA shall continue in full force and effect as provided
therein.
IN WITNESS WHEREOF, MYOGEN and UCHSC have entered into this AMENDMENT effective
as of the date first set forth above.
FOR UCHSC:
/s/ Xxxxx Xxxxxxx Date:
------------------------------------------ ---------------
Xxxxx Xxxxxxx
President
University Technology Corporation
As Agent of University of Colorado
/s/ Xxxxxx X. Xxxxxxx Date: 2/5/01
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Xxxxxx X. Xxxxxxx, M.D., Chairman
Department of Medicine
University of Colorado Health Sciences Center
FOR MYOGEN:
/s/ J. Xxxxxxx Xxxxxxx Date: January 5, 2001
------------------------------------------ ---------------
J. Xxxxxxx Xxxxxxx, Ph.D.
President & CEO
Myogen, Inc.
[*#*]CONFIDENTIAL TREATMENT REQUESTED
