EXHIBIT 10.34
[CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTIONS OF THIS AGREEMENT HAVE
BEEN REDACTED AND HAVE BEEN SEPARATELY FILED WITH THE COMMISSION]
COLLABORATIVE RESEARCH AND DEVELOPMENT AGREEMENT
By and Between
HOECHST RESEARCH & TECHNOLOGY DEUTSCHLAND GMBH & CO KG
and
NANOGEN, INC.
December 3, 1998
TABLE OF CONTENTS
Page
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1. Definitions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1
2. Research Program. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6
3. Payment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .7
4. Reports and Records . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
5. Confidentiality and Non-disclosure. . . . . . . . . . . . . . . . . . . . . . 10
6. Intellectual Property Licenses. . . . . . . . . . . . . . . . . . . . . . . . 10
7. Intellectual Property and Patent Rights . . . . . . . . . . . . . . . . . . . 11
8. Term and Termination. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
9. Representations and Warranties. . . . . . . . . . . . . . . . . . . . . . . . 14
10. Disclaimers . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
11. Insurance . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
12. Notices . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
13. Dispute Resolution. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
14. Miscellaneous . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
EXHIBITS
Exhibit A HR&T Patent Applications
Exhibit B Nanogen Patent Applications
Exhibit C Annual Budget
Exhibit D Program Inventions
Exhibit E Research Program
Exhibit F CPR Procedures
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COLLABORATIVE RESEARCH AND DEVELOPMENT AGREEMENT
THIS COLLABORATIVE RESEARCH AND DEVELOPMENT AGREEMENT is dated as of
December 3, 1998 by and between HOECHST RESEARCH & TECHNOLOGY DEUTSCHLAND
GMBH & CO KG, a German company, having a place of business at X-00000
Xxxxxxxxx xx Xxxx, Xxxxxxx (hereinafter, "HR&T"), and NANOGEN, INC., a
Delaware corporation, having its principal office and place of business at
00000 Xxxxxxx Xxxxxx Xxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000 (hereinafter,
"Nanogen").
W I T N E S S E T H :
WHEREAS, Nanogen has developed certain technology related to
electronically addressable microchip oligonucleotide arrays ("Arrays"),
including Nanogen's Automated Programmable Electronic Matrix ("APEX")
technology; and
WHEREAS, HR&T has developed certain technology related to combinatorial
and/or modular nanotechnology, including its Exponential Library by
Association of Sublibraries ("XXXXX") and its pRNA (and related
oligonucleotide analog) technology; and
WHEREAS, HR&T and Nanogen have previously entered into a Letter
Agreement dated December 4, 1997 (the "Letter Agreement"); and
WHEREAS, in accordance with the terms of the Letter Agreement (including
the paragraphs under the headings "Purpose of Collaboration" and "Agreement
Field"), HR&T and Nanogen wish to perform certain research and development
activities as contemplated therein.
NOW THEREFORE, in consideration of the mutual covenants and undertakings
contained herein, the parties hereby agree as follows:
1. DEFINITIONS. As used in this Agreement:
1.1 "Agreement" shall mean this Agreement and any exhibits,
appendices, attachments or addenda hereto, and any renewals or extensions of
this Agreement.
1.2 "HR&T Intellectual Property" shall mean and include all
patentable and unpatentable inventions, ideas, discoveries, improvements,
design rights, semiconductor mask works, works of authorship, trade secrets,
know-how and any equivalents thereof which are in existence as of the
Effective Date or thereafter, as are necessary to make, have made, use or
sell a Product and are owned by HR&T, including, but not limited to, HR&T's
XXXXX and pRNA technologies disclosed in the HR&T patent applications set
forth in Exhibit A hereto (amended with each new HR&T patent application
necessary to make, have made, use or sell a Product).
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1.3 "HR&T Patent Rights" shall mean all patents and patent
applications owned by HR&T which are in existence as of the Effective Date or
thereafter, including the patent applications set forth in Exhibit A hereto
(amended with each new HR&T patent application necessary to make, have made,
use or sell a Product), and which contain a claim necessary to make, have
made, use or sell a Product, including all divisionals, continuations,
continuations-in-part, re-examinations, reissues, and all foreign equivalents
of any of the foregoing in whole or in part.
1.4 "HR&T Program Inventions" shall mean all Program Inventions made
or conceived by employees or others acting solely on behalf of HR&T;
PROVIDED, however, that HR&T Program Inventions shall not include Program
Inventions which utilize both APEX and XXXXX and/or pRNA technology.
1.5 "Effective Date" shall mean January 1, 1998.
1.6 "Executive Committee" shall mean a committee which shall (i) be
responsible for overseeing the Research Management Committee, (ii) set
strategic goals under this Agreement and the Letter Agreement, (iii) approve
annual budgets for the Research Program (the annual budget for the first year
and a proposed annual budget for the second year of the Research Program are
set forth in Exhibit C hereto), (iv) set research milestones and (v) decide
when milestones have been completed. The Executive Committee shall consist
of three (3) members appointed by Nanogen and three (3) members appointed by
HR&T. All decisions of the Executive Committee must be by unanimous consent
of all members of the Executive Committee.
1.7 "Joint Program Inventions" shall mean (i) all Program Inventions
made or conceived by employees or others acting on behalf of HR&T jointly
with employees or others acting on behalf of Nanogen and (ii) all Program
Inventions which utilize both APEX and XXXXX and/or pRNA technology.
1.8 "Nanogen Intellectual Property" shall mean and include all
patentable and unpatentable inventions, ideas, discoveries, improvements,
design rights, semiconductor mask works, works of authorship, trade secrets,
know-how and any equivalents thereof which are in existence as of the
Effective Date or thereafter, are necessary to make, have made, use or sell a
Product and are owned by Nanogen, including, but not limited to, Nanogen's
APEX technology disclosed in the Nanogen patents and patent applications set
forth in Exhibit B hereto (amended with each new patent application necessary
to make, have made, use or sell a Product).
1.9 "Nanogen Patent Rights" shall mean all patents and patent
applications owned by Nanogen which are in existence as of the Effective Date
or thereafter, including the patents and patent applications set forth in
Exhibit B hereto (amended with each new patent application necessary to make,
have made, use or sell a Product), and which contain a claim necessary to
make, have made, use or sell a Product, including all divisionals,
continuations, continuations-in-part, re-examinations, reissues, and all
foreign equivalents of any of the foregoing in whole or in part.
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1.10 "Nanogen Program Inventions" shall mean all Program Inventions
made or conceived by employees or others acting solely on behalf of Nanogen;
PROVIDED, however, that Nanogen Program Inventions shall not include Program
Inventions which utilize both APEX and XXXXX and/or pRNA technology.
1.11 "Primary Filing Countries" shall mean the United States, Canada,
European Community Countries and Japan.
1.12 "Products" shall mean products or applications utilizing jointly
developed technology and incorporating both Nanogen's APEX technology as
disclosed in Exhibit B hereto and HR&T's XXXXX and/or pRNA technology as
disclosed in Exhibit A hereto.
1.13 "Program Inventions" shall mean and include all patentable and
unpatentable inventions, ideas, discoveries, improvements, design rights,
semiconductor mask works, works of authorship, trade secrets, know-how and
any equivalents thereof, and any patent applications or patents based
thereon, made or conceived during and as a result of the Research Program,
all of which shall be identified in Exhibit D to this Agreement, which
Exhibit shall be amended from time to time as warranted.
1.14(a) "Reimbursable Costs" shall mean all direct and indirect costs
incurred by Nanogen in performing its obligations under this Agreement, which
may include without limitation, as applicable:
(i) salaries and wages,
(ii) payroll taxes,
(iii) contract labor,
(iv) fringe benefits,
(v) expenses incurred in occupying facilities (including
leasehold improvements) and equipment-related expenses, excluding
depreciation and amortization expenses,
(vi) recruitment and relocation,
(vii) communications expense,
(viii) supplies,
(ix) development and prototype materials,
(x) freight and transportation,
(xi) training and education,
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(xii) travel expenses,
(xiii) data processing costs,
(xiv) patent, trademark and license fees and filing,
prosecution and maintenance expenses for Nanogen Intellectual Property
as set forth in Exhibit B,
(xv) insurance,
(xvi) professional services,
(xvii) depreciation and amortization of facilities (including
leasehold improvements) and equipment,
(xviii) a financing charge for capital acquisitions made by
Nanogen for use in performing work under this Agreement,
(xix) outside purchased services,
(xx) sales and use taxes (including such taxes applicable to
the acquisition, use, transfer or deemed transfer of property),
(xxi) periodic lease and rental payments under capital or
financing leases,
(xxii) costs of applying for regulatory approvals on Products
approved by the Executive Committee, and fees payable to governmental
agencies, including the United States Food and Drug Administration
(the "FDA") and comparable foreign regulatory authorities, including
expenses resulting from generation of chemical, toxicological,
microbiological and pharmacological data and techniques, clinical data
and product formulations and specifications, and
(xxiii) periodic and special reports, including reports to
the Research Management Committee.
(b) In determining Reimbursable Costs, Nanogen will employ the
following accounting policies:
(i) General use capital equipment, facilities and leasehold
improvements will be assigned an estimated economic useful life and
salvage value, if any, and depreciation and amortization will be
computed using the straight-line method. Depreciation and
amortization will be allocated to Reimbursable Costs under this
Agreement directly or through overhead rates applied to direct head
count.
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(ii) Such capital equipment purchased pursuant to agreement
between both parties for use in connection with this Agreement will be
charged directly against the budget in the quarter the expense was
incurred.
(iii) Total facilities expenses of Nanogen, excluding
leasehold improvement amortization allocated to specific functional
areas and net of any sublease revenues, will be allocated to
Reimbursable Costs under this Agreement based on the ratio of direct
personnel engaged in work under this Agreement to the total Nanogen
head count.
(iv) General and administrative expenses of Nanogen will be
allocated to this Agreement directly or based on the ratio of total
Reimbursable Costs to total operating expenses of Nanogen, excluding
(in both instances) general and administrative expenses subject to
such allocation, as agreed between the Controllers of both parties.
(v) All other indirect expenses not covered in Paragraphs (i)
through (iv) of this Paragraph 1.14(b) which are in support of the
Research Program will be allocated to Reimbursable Costs under this
Agreement through overhead rates applied to Nanogen direct head count,
as agreed between the Controllers of both parties.
(vi) Notwithstanding the foregoing, for purposes of this
Agreement, Reimbursable Costs shall not include direct and indirect
costs for start-up of commercial manufacturing, installation of
commercial production lines and commercial product manufacturing
operations. These costs shall be addressed in connection with the
contemplated joint venture agreement between the parties.
(c) The term "capital acquisition" as used herein shall mean that
portion of capital equipment, facilities, leasehold improvements or other
property, whenever acquired by Nanogen, which are capitalized on Nanogen's
accounting records and which are either: (i) purchased directly by Nanogen;
(ii) financed by Nanogen under a conditional sale contract; (iii) financed by
Nanogen through a secured loan; or (iv) assets constructed in-house by
Nanogen. Assets acquired under capital or financing leases will not be
considered capital acquisitions for purposes of this Paragraph.
(d) With respect to capital acquisitions financed by Nanogen with
specific borrowing, the financing charge referred to above will be in the
amount and at the time of the actual financing costs incurred by Nanogen.
With respect to capital acquisitions not financed by Nanogen with specific
borrowing, the financing charge will be based on the prime lending rate in
effect from time to time at Citibank N.A., New York, New York, plus two (2)
percentage points, to the extent permitted by applicable law, applied to
Nanogen's net book value. "Net book value" is defined as the gross capital
acquisition value excluding capital acquisitions financed by Nanogen with
specific borrowing, less related accumulated depreciation and amortization.
The financing charge for each billing period will be prorated
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to the extent depreciation or amortization of the capital acquisitions has
been allocated to work other than work under this Agreement during such
period. The financing charge will be calculated monthly based on the net
book value at the end of the preceding fiscal month.
1.15 "Research Management Committee" shall mean a committee which
shall be responsible for preparing the Research Program and supervising,
managing and monitoring the progress of the Research Program, for conducting
marketing studies and for facilitating the open exchange of information
between the parties. The Research Management Committee shall consist of two
(2) employees of HR&T and two (2) employees of Nanogen, at least one of whom
from each company shall be at the research director level (or equivalent) or
higher. Decisions that are not taken unanimously by the Research Management
Committee are to be referred to the Executive Committee for resolution.
1.16 "Research Program" shall mean the cumulative endeavors of the
parties to produce Products in accordance with the specifications,
timetables, milestones, reports and deliverables, as set forth in Exhibit E
hereto, as it may be amended from time to time. The Research Program shall
be divided into two phases, the "Research Phase", which shall mean all
research activities up to and including the development of a prototype and
the "Product Development Phase, which shall mean all post-prototype
development activities relating to the development of Products, for
commercialization."
2. RESEARCH PROGRAM.
2.1 Each of HR&T and Nanogen shall use reasonable efforts to perform
their respective activities in accordance with the Research Program. Subject
to the terms and conditions of this Agreement, HR&T and Nanogen are free to
independently develop, market and sell any products other than Products.
2.2 Each of HR&T and Nanogen shall promptly notify the other party,
in writing, through the Research Management Committee, of the existence of
any new Program Inventions.
2.3 The Research Management Committee shall meet from time to time,
but at least once every three (3) months during the term of this Agreement,
alternating between the headquarters of HR&T and Nanogen or at a mutually
agreed location, to: (a) review progress and ongoing resource allocation and
budgeting matters of the Research Program; (b) amend the Research Program as
agreed by the parties; (c) disclose Program Inventions which have not
previously been disclosed in accordance with Paragraph 2.2; and (d) review
the status of patent filings with respect to Program Inventions and, if
necessary in view of such review, propose amendments to Appendix A of this
Agreement. All decisions taken by the Research Management Committee must be
by unanimous consent of all the members of the Research Management Committee.
In order to facilitate the disclosure of Program Inventions and the review
of the status of patent filings with respect to Program Inventions, patent
attorneys for HR&T and Nanogen may participate in all such meetings.
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2.4 Within five (5) business days following each meeting pursuant to
Paragraph 2.3, the Research Management Committee shall cause to be prepared a
written summary of such meeting, which summary shall include, at a minimum:
(a) a list of all Program Inventions which have come into existence since the
Effective Date or since the previous meeting, whichever is applicable; (b)
all patent filings with respect to Program Inventions since the Effective
Date or since the previous meeting, whichever is applicable; and (c) a report
regarding the progress of the Research Program, which shall include the
tracking of the Research Program to budget and a report on any material
budgetary implications for changes to the Research Program. Such written
summary shall be provided to the Executive Committee.
2.5 The Executive Committee shall meet from time to time, but at
least once every three (3) months during the term of this Agreement,
alternating between the headquarters of HR&T and Nanogen, a mutually agreed
location or by telephonic or video conference, to: (a) receive a report on
the progress of the Research Program by the Research Management Committee;
(b) review the strategic goals pursuant to the Letter Agreement and this
Agreement; (c) approve annual budgets under the Research Program and review
the progress of the Research Program against the budget; (d) establish,
review and revise milestones where appropriate, and (e) determine the level
of progress toward achievement of milestones and determine milestone
completion. Within five (5) business days after each meeting, the Executive
Committee shall cause minutes to be prepared and distributed to each party
accurately documenting such meeting.
2.6 Nanogen and HR&T may, upon reasonable notice during normal
business hours, (a) consult informally, during such visits and by telephone,
with personnel of the other party performing work on the Research Program,
and (b) with the other party's prior approval, which approval shall not be
unreasonably withheld, visit the sites of any tests or experiments being
conducted by such other party in connection with the Research Program, but
only to the extent in each case as such trials or other experiments relate to
the Research Program. On such visits an employee of the host company
conducting the research or development activities shall accompany the
employee(s) of the visiting party. If requested by the visiting party, the
other party shall cause appropriate individuals working on the Research
Program to be available for meetings at the location of the facilities where
such individuals are employed at times reasonably convenient to the party
responding to such request. All information revealed to representatives of
the HR&T and Nanogen during the visits and consultations provided for in this
Paragraph 2.5 shall be treated as confidential information in accordance with
Paragraph 5 of this Agreement.
3. PAYMENT.
3.1 HR&T shall pay *** of its own research and development costs and
shall pay *** of Nanogen's Reimbursable Costs incurred in performing its
obligations under this Agreement (the "Fee"). Nanogen's Reimbursable Costs
shall not exceed *** per year per full time equivalent researchers and staff
assigned to the Research Program. Neither party makes any warranty that these
--------------------------------
*** Confidential material redacted and separately filed with the Commission.
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costs and fees will be sufficient to complete the Research Program. The Fee
shall be payable by HR&T to Nanogen as follows:
(a) The initial annual budget and a proposed budget for the second year
of the Research Program are attached as Exhibit C. Annually thereafter
during the term hereof, the Research Management Committee shall develop a
budget for the Research Program, including anticipated quarterly expenditures
by each party. The Research Management Committee shall submit each such
subsequent budget to the Executive Committee for its review and approval at
least forty-five (45) days prior to commencement of the next annual period.
The Executive Committee shall review such budget and inform the Research
Management Committee of its determination with respect to same within thirty
(30) days following its receipt of same. If the budget is not approved, the
Research Management Committee shall confer with the Executive Committee to
attempt to develop a mutually acceptable budget. If the Executive Committee
cannot resolve the dispute, then such dispute shall be resolved in accordance
with the provisions of Paragraph 13 hereof.
(b) The Fee shall be payable to Nanogen in quarterly installments
commencing on January 1, 1998. Each quarterly installment shall be due not
later than five (5) business days following the first day of each quarter.
Should a major positive balance arise due to underuse of the budget, this
will be balanced with the fourth quarter payment in each year. All
installments shall be based upon an estimate of the Reimbursable Costs
expected to be incurred by Nanogen during its next quarterly period beginning
on such date, up to a maximum of Nanogen's budgeted amount for such quarter.
Such estimate shall be set forth in an invoice prepared by Nanogen in
reasonable detail, signed by a duly authorized officer of Nanogen and
submitted to the Research Management Committee at least twenty (20) days
prior to the beginning of the quarterly period with respect to which such
payment is to be made. Each such invoice shall be due and payable in full by
HR&T prior to the beginning of such quarterly period. Beginning with the
second invoice under this Agreement, such invoice shall include a
reconciliation and adjustment for the period covered by the preceding invoice
to reflect any difference between actual Reimbursable Costs incurred by
Nanogen and estimated Reimbursable Costs for such period, up to a maximum of
Nanogen's budgeted amount for such quarter. Any amounts in excess of the
budgeted amount shall be subject to the review and approval of the Executive
Committee.
3.2 If HR&T fails to make prompt and timely payment, Nanogen may give
written notice thereof, and unless HR&T within fifteen (15) days following
receipt of such notice makes such payment, Nanogen may at any time thereafter
until HR&T makes such payment suspend the research and development services
under this Agreement on written notice to HR&T.
3.3 In the event Nanogen, in course of its research under this
Agreement, is required to lease equipment which Nanogen would ordinarily not
otherwise be required to lease, and HR&T agrees to such lease, HR&T will be
responsible for such lease payments.
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4. REPORTS AND RECORDS.
4.1 Nanogen and HR&T shall provide to the Research Management Committee
within forty-five (45) days following the end of each quarterly period
beginning with the end of the first period on March 31, 1998, a report in
such reasonable detail as the Research Management Committee may request
setting forth:
(a) the Reimbursable Costs incurred by Nanogen and the costs incurred
by HR&T in performing its obligations under the Research Program during such
period;
(b) the work performed by such party during such period; and
(c) the status of the research and development of the Products at the
end of the period.
4.2 Nanogen shall keep and maintain, in accordance with generally
accepted accounting principles and practices, proper and complete records and
books of account documenting all Reimbursable Costs. Each party agrees to
permit either nationally recognized certified public accountants or
Controllers from the other party to verify on a once annually basis the
Reimbursable Costs or costs billed or incurred pursuant to this Agreement;
and Nanogen shall provide annually a certification by nationally recognized
certified public accountants or its internal Controller as to Reimbursable
Costs billed to HR&T in that year. HR&T will keep confidential, and will not
disclose to any third party, except such disclosures as may be required by
law, without the prior written consent of Nanogen, information in statements
delivered to HR&T or obtained by HR&T through access of its independent
certified public accounting firm or Controller to the books and records of
Nanogen. HR&T shall provide similar access and similar certifications to
Nanogen regarding its costs incurred under the Research Program and Nanogen
shall similarly keep such information confidential.
5. CONFIDENTIALITY AND NON-DISCLOSURE. That certain Mutual
Confidential Disclosure Agreement effective as of February 20, 1997 between
HR&T and Nanogen, as amended (the "Confidentiality Agreement"), shall remain
in full force and effect.
6. INTELLECTUAL PROPERTY LICENSES.
6.1 (a) HR&T hereby grants solely during the term of this Agreement to
Nanogen, a worldwide, royalty-free, nonexclusive license in and to HR&T
Intellectual Property and HR&T Patent Rights, solely to use in research and
development activities pursuant to the Research Program under this Agreement.
(b) HR&T recognizes that Nanogen has conducted considerable research
and development activities in connection with its permeation layer technology
and has protected certain of its advancements with intellectual property.
HR&T is willing, as part of this Agreement, to conduct additional research
activities directed toward Nanogen's permeation layer. To the extent HR&T
invents any new inventions or any improvements to Nanogen's inventions
relating to permeation layers with utility on Nanogen's Arrays which would
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constitute HR&T Intellectual Property or HR&T Patent Rights or HR&T Program
Inventions, HR&T will grant to Nanogen a worldwide, royalty-free license to
practice such intellectual property (without the right to sublicense unless
it applies to a Nanogen product). Nanogen will be licensed to practice such
intellectual property in connection with any of its other joint venture
arrangements or corporate collaborations subject to a 2% of net sales royalty
payable to any joint venture or other joint relationship involving Nanogen
and HR&T.
(c) Nanogen hereby grants solely during the term of this Agreement, to
HR&T, a worldwide, royalty-free, nonexclusive license in and to Nanogen
Intellectual Property and Nanogen Patent Rights, solely to use in research
and development activities pursuant to the Research Program under this
Agreement.
6.2 Except as provided therein, the licenses granted in accordance with
Paragraphs 6.1(a) and (b) do not include a right to grant sublicenses.
6.3 In the event that any substantial and continuing infringement of
any of the HR&T Patent Rights or Nanogen Patent Rights licensed hereunder
comes to the attention of either party hereto, such party shall promptly
notify the Executive Committee, which Committee will determine an appropriate
action in accordance with its authority.
7. INTELLECTUAL PROPERTY AND PATENT RIGHTS.
7.1 During the term of this Agreement, the entire right, title and
interest in all Program Inventions shall be owned jointly by HR&T and Nanogen
and may be used only as they mutually agree.
7.2 Each party hereto promptly shall disclose to the other party the
making, conception or reduction to practice of Program Inventions by
employees or others acting on behalf of such party. Each of Nanogen and HR&T
hereby represents and warrants that all employees and others acting on its
respective behalf in performing its obligations under this Agreement shall be
obligated under a binding written agreement to assign to it, or as it shall
direct, all Program Inventions made or developed by such employees or others.
7.3 Promptly following any disclosure of Program Inventions pursuant to
Paragraph 2.2 and Paragraph 7.2, the Research Management Committee, in
consultation with patent attorneys for HR&T and Nanogen, shall discuss and
determine, in good faith, whether patent applications should be prepared and
filed for such disclosed Program Inventions.
7.4 If patent applications are to be prepared and filed pursuant to
Paragraph 7.3, then the Research Management Committee shall discuss and
determine, in good faith, for each of such Program Inventions, which of the
parties shall be responsible for the preparation, filing, prosecution and
maintenance of such patent applications in the Primary Filing Countries.
Each of such patent applications shall become part of the Program Inventions,
and Exhibit D shall be amended accordingly to evidence such Program
Inventions.
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7.5 (a) If the Research Management Committee determines that a
particular patent application be filed in a country or countries in addition
to the Primary Filing Countries, then the Research Management Committee shall
determine which party shall be responsible for the filing, prosecution and
maintenance of such patent application, and such patent application shall be
part of the Program Inventions.
(b) If the Research Management Committee determines not to file a
particular patent application in a country or countries in addition to the
Primary Filing Countries, either party, alone, after written waiver by the
other party, may file such particular patent application in such country or
countries and shall pay, without right to reimbursement thereof, all costs
and expenses for filing, prosecution and maintenance of patent application
filed in such country or countries, and notwithstanding the provisions of
Paragraph 6.1, that party shall own, exclusively, all right, title and
interest in such patent application.
(c) If the other party of Paragraph 7.5(b) does not provide such
written waiver, then any such particular patent application shall be treated
as if the Research Management Committee had made a declaration to file the
particular patent application in a country or countries in addition to the
Primary Filing Countries in accordance with Paragraph 7.5(a).
7.6 Each party shall keep the Research Management Committee currently
informed of the filing and progress of all material aspects of the
prosecution of all such patent applications and of the issuance of patents,
and shall consult with the Research Management Committee concerning any
decisions which would affect the scope of any issued claims and other
prosecutorial details, including the potential abandonment of any application.
7.7 Upon request, each party shall execute and deliver to the other
party all descriptions, applications, assignments and other documents and
instruments as are necessary or proper to carry out the provisions of
Paragraphs 7.1, 7.2, 7.3, 7.4, 7.5 and 7.6 without further compensation,
except as otherwise provided in Paragraph 1.15, and the parties shall
cooperate with and assist each other or their nominees in all reasonable ways
and at all reasonable times, including, but not limited to, testifying in all
legal proceedings, signing all lawful papers and in general performing all
lawful acts reasonable, necessary or proper, to aid the other party in
obtaining, maintaining, defending and enforcing all lawful patent, copyright,
trade secret, know-how and the like in the Primary Filing Countries and
elsewhere.
7.8 Except as otherwise provided in this Agreement, under no
circumstances shall either party, as a result of this Agreement, obtain any
ownership interest or other right in any technology, know-how, trade secrets,
patents, pending patent applications or products of the other party,
including items owned, controlled or developed by the other, or transferred
by the other to such party at any time pursuant to this Agreement. Upon
termination of this Agreement unless otherwise provided in another agreement
between HR&T and Nanogen, (i) all HR&T Program Inventions, Nanogen Program
Inventions and Joint Program Inventions, which consist solely of improvements
to HR&T Intellectual Property, shall be the sole property of HR&T, (ii) all
Nanogen Program Inventions, HR&T Program Inventions and Joint Program
Inventions, which consist solely of improvements to Nanogen Intellectual
Property, shall be the sole property of Nanogen, and (iii) Nanogen, at its
option, shall have the right for
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120 days after the date of termination of this Agreement to negotiate with
HR&T to enter into a license for HR&T's rights to any Program Invention not
included within the provisions of clause (i) or (ii) above. If Nanogen
chooses to exercise such option, HR&T and Nanogen shall negotiate in good
faith to enter into a license for such Program Invention or Inventions. Any
such license shall provide that Nanogen will pay a reasonable royalty to HR&T
for the license rights to such Program Invention or Inventions. In
determining what is a reasonable royalty rate, HR&T's relative contribution
to such Program Invention or Inventions shall be taken into account. It is
understood and agreed by the parties hereto that this Agreement does not
grant to either party any license or other right, other than the licenses
granted in Paragraph 6.1, the assignments granted in Paragraph 7.1 and the
licenses granted in this Paragraph 7.8.
7.9 (a) During the term of this Agreement, Nanogen and HR&T each
acknowledge each other's interest in publishing certain of its results to
obtain recognition within the scientific community and to advance the state
of scientific knowledge. Each party also recognizes the mutual interest in
obtaining valid patent protection and protecting business interests.
Consequently, each party, its employees or consultants wishing to make a
publication (including any oral disclosure made without obligation of
confidentiality) relating to work performed by such party as part of the
Research Program (the "Publishing Party") shall transmit to the Research
Management Committee a copy of the proposed written publication at least
forty-five (45) days prior to submission for publication, or an outline of
such oral disclosure at least fifteen (15) days prior to presentation. The
Research Management Committee shall have the right (i) to propose
modifications to the publication for patent reasons and (ii) to request a
reasonable delay in publication in order to protect patentable information.
(b) If the Research Management Committee requests such a delay, the
Publishing Party shall delay submission or presentation of the publication
for a period of ninety (90) days to enable patent applications protecting
each party's rights in such information to be filed in accordance with this
Article 7. Upon the expiration of forty-five (45) days, in the case of
proposed written disclosures, or fifteen (15) days, in the case of proposed
oral disclosures, from transmission to the Research Management Committee, the
Publishing Party shall be free to proceed with the written publication or the
presentation, respectively, unless the Research Management Committee has
requested the delay described above.
8. TERM AND TERMINATION.
8.1 The Research and Development Collaboration between Nanogen and HR&T
shall continue on its terms for a guaranteed period of three (3) years from
its effective date of January 1, 1998.
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8.2 All records required to be maintained pursuant to Paragraph 4.2
shall be retained for a period of at least five (5) years following the
termination of this Agreement.
9. REPRESENTATIONS AND WARRANTIES.
9.1 HR&T hereby represents and warrants to Nanogen that it has full
authority and power to enter into this Agreement, that it has secured any and
all necessary approvals, permits or consents deemed necessary or advisable
for the consummation of the transactions contemplated hereby and that, upon
execution by HR&T and Nanogen, this Agreement shall immediately be a valid
and binding obligation of HR&T, enforceable in accordance with its terms.
9.2 Nanogen hereby represents and warrants to HR&T that it has full
authority and power to enter into this Agreement, that it has secured any and
all necessary approvals, permits or consents deemed necessary or advisable
for the consummation of the transactions contemplated hereby and that, upon
execution by HR&T and Nanogen, this Agreement shall immediately be a valid
and binding obligation of Nanogen enforceable in accordance with its
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terms and that the execution, delivery and performance of its obligations
under this Agreement will not cause Nanogen to breach or violate any
agreement between Nanogen and Becton, Xxxxxxxxx and Company and its
affiliated entities.
9.3 HR&T hereby represents and warrants to Nanogen that: (a) it is the
owner of the entire right, title and interest to the HR&T Intellectual
Property and HR&T Patent Rights, and (b) to HR&T's knowledge, the HR&T Patent
Rights or the HR&T Intellectual Property has not infringed, and is not now
infringing, any valid third party rights and HR&T has not received any notice
of infringement from any third party respecting the HR&T Patent Rights or the
HR&T Intellectual Property.
9.4 Nanogen hereby represents and warrants to HR&T that: (a) it is the
owner of the entire right, title and interest to the Nanogen Intellectual
Property and the Nanogen Patent Rights and (b) to Nanogen's knowledge, the
Nanogen Patent Rights or the Nanogen Intellectual Property has not infringed,
and is not now infringing, any valid third party rights and Nanogen has not
received any notice of infringement from any third party respecting the
Nanogen Patent Rights or the Nanogen Intellectual Property.
10. DISCLAIMERS. THE PARTIES EACH HEREBY DISCLAIM ANY AND ALL
REPRESENTATIONS AND WARRANTIES, EXPRESS OR IMPLIED, WITH RESPECT TO THEIR
RESPECTIVE RESEARCH AND DEVELOPMENT EFFORTS HEREUNDER, INCLUDING, WITHOUT
LIMITATION, (A) WHETHER ANY PRODUCT CAN BE SUCCESSFULLY DEVELOPED BY EITHER
OF THE PARTIES, (B) WHETHER THE PRODUCTS AS DEVELOPED BY EITHER OF THE
PARTIES HEREUNDER CAN BE COMMERCIALLY MARKETED, (C) THE ACCURACY,
PERFORMANCE, UTILITY, RELIABILITY, TECHNOLOGICAL OR COMMERCIAL VALUE,
COMPREHENSIVENESS, MERCHANTABILITY OR SUITABILITY FOR ANY PARTICULAR PURPOSE
WHATSOEVER OF ANY PRODUCT, AND (D) WHETHER ANY PRODUCTS MANUFACTURED WILL NOT
INFRINGE ANY THIRD-PARTY PATENT, COPYRIGHT OR SIMILAR RIGHT.
11. INSURANCE. The parties shall each, at all times during the term of
this Agreement, carry and maintain such insurance as each believes to be
commercially reasonable against risks from actions contemplated under this
Agreement. Such insurance shall be with insurers of recognized
responsibility and may be carried under blanket policies maintained by each
of the parties.
12. NOTICES. Any notice, request, demand, waiver, consent, approval,
or other communication which is required or permitted hereunder shall be in
writing and shall be deemed given only if delivered personally, by facsimile
(upon receipt of appropriate written confirmation) or sent by registered or
certified mail, return receipt requested, or by overnight courier service,
postage prepaid as follows:
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If to Nanogen:
Nanogen, Inc.
00000 Xxxxxxx Xxxxxx Xxxxx
Xxx Xxxxx, Xxxxxxxxxx 00000
Attn: Chief Executive Officer
Facsimile - (000) 000-0000
with a copy to:
Nanogen, Inc.
00000 Xxxxxxx Xxxxxx Xxxxx
Xxx Xxxxx, Xxxxxxxxxx 00000
Attn: General Counsel
Facsimile - (000) 000-0000
and if to HR&T:
Hoechst Research & Technology Deutschland GmbH & Co KG
D-65926 Frankfurt am Main
Attn: President
Facsimile - 001-49-69-309-588
with a copy to:
or to such other address as the addressee may have specified in a notice duly
given to the sender as provided herein. Such notice, request, demand,
waiver, consent, approval or other communication will be deemed to have been
given as of the date so received (in case of personal delivery, facsimile or
overnight courier service delivery) or upon refusal to accept delivery
thereof.
13. DISPUTE RESOLUTION. Every reasonable effort will be made by the
parties hereto to resolve disputes arising hereunder with litigation as a
last resort. Any dispute arising out of or relating to this Agreement which
is not resolved by the Executive Committee or is not within the purview of
the Executive Committee shall be submitted to the Chief Executive Officer of
Nanogen and the President of HR&T for resolution. If those officers cannot
resolve the dispute with twenty (20) days of submission of such dispute, then
within ten (10) days thereafter, either party may, but shall not be obligated
to, initiate nonbinding mediation of the controversy or claim under the
Center for Public Resources Model ADR Procedures for Mediation of Business
Disputes attached hereto as Exhibit F (the "CPR Procedures"). Once the
mediation is initiated by one party, the other party agrees to participate in
and conduct mediation in accordance with the CPR Procedures in good faith and
not to pursue other remedies while such mediation is proceeding. If neither
party initiates mediation within ten (10) days of the officers referenced
above failing to resolve the dispute, or if the dispute has not been resolved
by such mediation within sixty (60) days following initiation of mediation,
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either party may pursue all available remedies. All applicable statutes of
limitations and defenses based upon the passage of time shall be tolled while
the negotiation and mediation procedures set forth in this Paragraph 13 are
pending. The parties will take such action, if any, as may be reasonably be
required to effectuate such tolling. Notwithstanding the foregoing, the
remedy at law for any breach of the provisions of this Agreement may be
inadequate, and, accordingly, an aggrieved party seeking equitable relief or
remedies for such a breach shall have the right and is hereby granted the
privilege, in addition to all other remedies at law or in equity, to proceed
directly in a court of competent jurisdiction to seek temporary or
preliminary equitable relief. Each party shall pay its own costs incurred in
attempting to resolve a dispute pursuant to the mediation procedures set
forth in this Paragraph 13 without the right to recover such costs from the
other party and shall share equally the cost of mediation.
14. MISCELLANEOUS.
14.1 This Agreement and the Confidentiality Agreement together
constitute the entire understanding among the parties with respect to the
subject matter hereof and supersede and replace all prior agreements,
understandings, writings and discussions between the parties relating to said
subject matter. However, it is the understanding of both parties that the
terms laid down for a joint venture or other joint arrangement in the Letter
Agreement shall survive until a definitive agreement for such an arrangement
has been reached.
14.2 This Agreement may be amended only by a written instrument executed
by the parties hereto. The failure of any 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 any party of any
condition or term in any one or more instances shall be construed as a
further or continuing waiver of such condition or term or any other condition
or term.
14.3 The terms and provisions contained in this Agreement are for the
sole benefit of the parties and their successors and assigns, and they shall
not be construed as conferring and are not intended to confer any rights on
any other persons.
14.4 Any delays in or failure of performance by any party under this
Agreement shall not be considered a breach of this Agreement if and to the
extent caused by occurrences beyond the reasonable control of the party
affected, including but not limited to acts of God; acts, regulations, or
laws of any government; strikes or other considered acts of workers; fires;
floods; explosions; riots; wars; rebellion; and sabotage; and any time for
performance hereunder shall be extended by the actual time of delay caused by
such occurrence.
14.5 This Agreement shall not be assignable by either party, nor shall
any of its obligations hereunder be delegated to a third party, without the
prior written consent of the other party, which consent shall not be
unreasonably withheld or delayed. In the event that the other party does not
respond to a request from a party for consent to an assignment or delegation
within fifteen (15) days following written notice requesting such consent,
such party's shall be deemed to be granted. In addition, a condition to any
assignment or delegation hereunder shall be that the successor in interest
expressly agrees in writing to
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assume the assigning or delegating party's obligations hereunder. All of the
terms and provisions of this Agreement shall be binding upon and inure to the
benefit of and be enforceable by the respective permitted successors and
assigns. No such assignment shall release the assigning party from its
obligations hereunder. Notwithstanding the foregoing, the consent of the
other party shall not be required in connection with a merger involving
either HR&T or Nanogen or with respect to an assignment of this Agreement in
connection with, as the case may be, the acquisition, sale of all or
substantially all of the assets of HR&T or Nanogen, or a change of control or
similar transaction.
14.6 If any provision(s) of this Agreement are or become invalid, or 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 hereto that the
remainder of this Agreement shall not be affected thereby. It is further the
intention of the parties that in lieu of each such provision which is
invalid, illegal, or unenforceable, there be substituted or added as part of
this Agreement, a provision which shall be as similar as possible in economic
and business objectives as intended by the parties to such invalid, illegal,
or unenforceable provision, but which shall be valid, legal, and enforceable,
and shall be mutually agreed by the parties.
14.7 This Agreement shall be governed by and construed in accordance
with the laws of the State of California without regard to its choice of laws
principles. This Agreement shall be construed and interpreted without
application of any principle or rule to the effect that ambiguities are to be
construed against the party responsible for drafting the agreement. The
headings contained herein are for reference purposes only and shall not in
any way affect the meaning of this Agreement.
14.8 This Agreement may be executed in any number of counterparts, each
of which shall be deemed an original, but all of which together shall
constitute one instrument.
IN WITNESS WHEREOF, the parties have executed this Agreement through
duly authorized representatives as of the Effective Date.
NANOGEN, INC. HOECHST RESEARCH & TECHNOLOGY
DEUTSCHLAND GMBH & CO KG
By /s/ Xxxxxx X. Xxxxxxxx By /s/ Xx. Xxxxxx Xxxxxxx
------------------------------------ ---------------------------------
Xxxxxx X. Xxxxxxxx President
Chairman and Chief Executive Officer
By /s/ Xx. Xxxx-Xxxxxxx Xxxxx
---------------------------------
Research Operations Director
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EXHIBIT A
NANOGEN'S "APEX" PATENTS AND PATENT APPLICATIONS
TITLE APPLICATION NO. DATE
----- --------------- ----
Active Programmable Electronic
Devices for Molecular Biological
Analysis and Diagnostics (203/218) USP 5,605,662 Issued: 02/25/97
*** *** ***
Molecular Biological Diagnostic
Systems Including Electrodes (209/062) USP 5,632,957 Issued: 05/27/97
Apparatus and Methods for Active
Programmable Matrix Devices (216/054) USP 5,849,486 Issued: 12/15/98
*** *** ***
----------------------------------------
*** Confidential material redacted and separately filed with the Commission.
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EXHIBIT B
C.R. & T'S "XXXXX" AND "PRNA" PATENT APPLICATIONS
TITLE APPLICATION NO. DATE
----- --------------- ----
*** *** ***
----------------------------------------
*** Confidential material redacted and separately filed with the Commission.
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EXHIBIT C
TOTAL PROGRAM (YEAR 1)
Personnel of Hoechst *** Nanogen ***
Materials of Hoechst *** Nanogen ***
----------------------------------------
*** Confidential material redacted and separately filed with the Commission.
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MATERIAL COSTS
TDM/PROJECT YEAR:
SYNTHESIS
Equipment (Synthesizer. . .) *** (Depreciation over *** Years)
Analytics ***
Chemicals ***
---
Total ***
PERMEATION LAYER
Equipment (Spin Coater. . .) *** (Depreciation over *** Years)
Materials (Chemicals) ***
---
Total ***
DIRECT READ-OUT
Equipment ***
---
TOTAL *** (*** TUS$)
----------------------------------------
*** Confidential material redacted and separately filed with the Commission.
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EXHIBIT C (CR&T)
PERSONNEL
TASK HEADCOUNT
---- ---------
SYNTHESIS
PhD, Organic Chemists ***
Postdocs, Lab Technicians ***
PERMEATION LAYER
PhD's Organic Chemist,
Physicist ***
PhD (Japan) ***
Postdocs, Lab Technicians ***
DIRECT ELECTRONIC READ-OUT
PhD's (Japan) ***
Lab Technicians ***
PhD Biophysical-Chemist ***
PROGRAM MANAGEMENT ***
Total Headcount ***
-------------------------------------
*** Confidential material redacted and separately filed with the Commission.
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SHEET 1
EXHIBIT C (NANOGEN)
PERSONNEL/NANOGEN
TASK YEAR 1 YEAR 2
---- -------- --------
CHIP
Process engineer *** ***
Software engineer *** ***
Test engineer *** ***
Test Tech *** ***
Packaging Engineer *** ***
Packaging Tech *** ***
INSTRUMENT
Electrical engineer *** ***
Software engineer *** ***
Mechanical engineer *** ***
PERMEATION LAYER
Chemical engineer *** ***
ASSAY DEVELOPMENT
Physical chemist *** ***
Biochemist *** ***
PROGRAM MANAGEMENT
Program Manager *** ***
TOTAL HEADCOUNT *** ***
------------------------------------
*** Confidential material redacted and separately filed with the Commission.
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SHEET 1
MATERIALS COSTS/NANOGEN
TASK YEAR 1 YEAR 2
---- ------ ------
CHIP
Design $*** $***
Masks $*** $***
Wafer fab $*** $***
Test $*** $***
Packaging $*** $***
TOTAL $*** $***
INSTRUMENTS
Read-out $***
Probe placement $***
TOTAL $*** $***
PERMEATION LAYER/CHEMISTRY
Perm Layer $***
Attachment Chem. $***
TOTAL $*** $***
ASSAY
Reagents $*** $***
TOTAL PROGRAM $*** $***
-----------------------------------
*** Confidential material redacted and separately filed with the Commission.
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