CONFIDENTIAL
EXHIBIT 10.18
Paradigm Genetics, Inc. has omitted from this Exhibit 10.18 portions of the
Agreement for which Paradigm Genetics, Inc. has requested confidential treatment
from the Securities and Exchange Commission. The portions of the Agreement for
which confidential treatment has been requested have been filed separately with
the Securities and Exchange Commission. Such omitted portions have been marked
with an asterisk.
Alliance Agreement
Between
LION bioscience XX
Xxxxxxxxx Xxx. 00
00000 Xxxxxxxxxx-Xxxxxxxxxx Xxxxxxx
represented by its managing board
-called "LION" hereinafter-
and
Paradigm Genetics Inc.
000 Xxxxxxxxx Xxxxx, Xxxxxxxx Two
Research Xxxxxxxx Xxxx, Xxxxx Xxxxxxxx 00000-0000, XXX
Represented by the CEO Xxxx Xxxxx, Ph.D.
- called "PGI" hereinafter-
- collectively called "Parties" hereinafter-
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Confidential
ALLIANCE AGREEMENT
This agreement is entered into by and between Lion bioscience AG, hereinafter
"LION", of Xxxxxxxxx Xxx. 00, 00000 Xxxxxxxxxx-Xxxxxxxxxx, Xxxxxxx, with offices
at 000 Xxxxxxxx Xxxxxx, 00/xx/ Xxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx 00000, and
Paradigm Genetics, Inc., hereinafter "PGI", of 000 Xxxxxxxxx Xxxxx, Xxxxxxxx 0,
Xxxxxxxx Xxxxxxxx Xxxx, Xxxxx Xxxxxxxx 00000.
WHEREAS, PGI is in the business of genomic research and has know-how,
facilities, experience and personnel in the field of genomics, particularly
functional genomics relating to life sciences;
WHEREAS, LION has know-how, facilities, experience and personnel in the
field of developing, marketing and distributing bioinformatics software tools
and services; and
WHEREAS, LION and PGI desire to conduct collaborative development and sales
and marketing in the area of bioinformatics for functional genomics for certain
life sciences.
NOW, THEREFORE, in consideration of the mutual covenants and conditions
herein, the parties agree as follows:
1. Scope of Relationship. a) LION and PGI shall undertake a collaboration
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("COLLABORATION") in the area of Bioinformatics for Functional
Genomics (the "FIELD"). For the purposes of this Agreement,
"Functional Genomics" means functional genomics in the areas of crop
production ("Crop Production"), nutrition, industrial products and
foods for human health; "Crop Production" means any business activity
resulting in the production or enhanced production of crops, food,
animal feed or industrial feed stocks. "Bioinformatics" means database
architecture, information storage and retrieval, software, data
analysis and query tools and data display and user interface.
b) The COLLABORATION consists of the activities to be conducted by
PGI and LION pursuant to the Product Development Plan and the
Marketing Plan.
c) The Product Development Plan consists of i) the development of
New Software Products that are useful for Functional Genomics and
for use in the generation of, or with, a Metabolic Profiling
Database on plants and fungi and ii) development of a Metabolic
Profiling Database for the FIELD and
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the Health Care Market in accordance with the Plan attached
hereto as Exhibit A.
d) The Sales & Marketing Program consists of i) the sales and
marketing of New Software Products that are useful for Functional
Genomics and for use in the generation of, or with, a Metabolic
Profiling Database on plants and fungi and ii) the sales and
marketing of a Metabolic Profiling Database for the FIELD and the
Health Care Market in accordance with the Plan attached hereto as
Exhibit B. In addition, a mutually agreed upon business plan will
be completed by April 1, 2001.
e) The COLLABORATION shall be under the direction and supervision of
a Joint Collaboration Committee consisting of an R & D
representative and a Business representative from both PGI and
LION as listed in the attached Exhibit C (each respectively a
"REPRESENTATIVE" and collectively the "JOINT COLLABORATION
COMMITTEE"). A party may change a designated REPRESENTATIVE by
notice to the other party. All decisions relating to the
COLLABORATION, as well as any modification of the Product
Development Plan or the Marketing Plan, shall be effective only
upon mutual agreement of all REPRESENTATIVES. In the event that
the REPRESENTATIVES are unable to agree, the matter shall be
referred to the persons designated in Article 22b. In addition,
the scope of the COLLABORATION may be modified upon mutual
written consent of the Parties.
2. Meetings and Reports. a) Designees of LION and PGI shall meet
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regularly to discuss the COLLABORATION, set specific objectives,
define timelines and acceptance criteria, and evaluate and report
progress. It is mutually agreed that PGI and LION will allocate
efforts to projects based on the alignment with each party's business
strategy. Participants of such meetings shall be determined by the
REPRESENTATIVES. Meetings shall take place at a location that is
mutually agreed upon by both parties. Each party shall be responsible
for its out-of-pocket expenses associated with attendance at such
meetings.
b) PGI and LION shall produce a written summary of meetings of the
JOINT COLLABORATION COMMITTEE and a final written report
summarizing the results of the PRODUCT DEVELOPMENT PLAN within
sixty (60) days of its completion. The final report shall
include, but not be limited to, all data, conclusions, results,
observations, a detailed description of all procedures, and the
like. All such reports may be utilized by both parties in the
FIELD. All reports shall constitute CONFIDENTIAL INFORMATION (as
defined below) subject to provisions of Article 6.
3. Consideration from PGI to LION. In consideration of the services
------------------------------
provided by LION and the rights obtained by PGI under this agreement,
PGI shall provide LION with:
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a) a minimum two full time employee (FTE) effort, as described in
the attached Product Development Plan as Exhibit A, for the co-
development of New Software Products and the Metabolic Profiling
Database pertaining to this COLLABORATION. If appropriate, LION
employees will work within PGI facilities under the appropriate
confidentiality and non-disclosure agreements.
b) The current architectural schema for the FunctionFinder(TM)
software solely to assist in the Product Development Plan covered
under this agreement. LION will not use this schema for any other
purpose, nor will LION market, sell or distribute this schema or
any modified form of the schema to any third party without
written consent of PGI.
c) Access to certain relevant Development Data for the Product
Development Plan. LION will not market, sell or distribute these
data, or copies of these data, to any third party. "Development
Data" for the purposes of this Agreement means data that is
useful in the Development Plan to develop New Software Products
and the Metabolic Profiling Database.
d) Certain metabolic profiling data from plants and fungi to be used
for the sole purpose of marketing and supporting the Metabolic
Profiling Database. All plant and fungal metabolic profiling data
shall remain the sole property of PGI. No license is granted to
LION for this or any other data for any other activity.
e) All data to be used as part of this COLLABORATION which will be
structured to be compatible with user interfaces designed by LION
(for example, bioSCOUT(TM)) provided LION continues to use SRS
and as long as LION provides PGI with timely updates on
requirements.
f) Payments for any development which is carried out by LION for the
benefit of PGI, which is not part of the Product Development Plan
for the development of New Software Products or that is not used
in the generation of the Metabolic Profiling Database. The rate
of payment will be at a consultancy rate of $ [____] *
/person/day. Travel and subsistence expenses will also be
charged.
_____________________________________________________________________________
* Confidential treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
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g) A royalty of [___] * of the Net Sales of any Metabolic Profiling
Database, which is licensed as a database by PGI under mutually
agreed upon terms, as between PGI and LION, in the FIELD and the
Health Care Market. This royalty shall be paid in US dollars
within 30 days of the end of each quarter after sales have
occurred. For purposes of this subsection g), "Net Sales" are the
total revenue received for a license to the Metabolic Profiling
Database before taxes and net of refunds, credits or discounts.
If the Metabolic Profiling Database is sold as a part of a
package of products, databases and/or services the royalty shall
reflect the relative value of the Metabolic Profiling Database to
the total contract value and PGI and LION shall negotiate the
royalty rate in good faith.
h) Recommendation for LION products. PGI will market its functional
genomics data, databases and products resulting from its internal
discovery efforts. PGI and LION will market the Metabolic
Profiling Database in the FIELD and in the Health Care Market. If
a customer is interested in solutions to bioinformatics problems,
PGI will mention that LION is the provider of choice for
bioinformatics software for functional genomics. PGI will attempt
to facilitate a favorable viewing of LION products and services.
However, PGI is free to work with any customer it finds,
independent of other agreements the customer may have with the
competitors of LION. PGI agrees to protect the confidential
information of LION to at least the same degree as set forth in
the rules for confidentiality in the Letter of Intent dated
January 19, 2000.
i) PGI will not enter into an agreement with any third party to co-
develop bioinformatics software or the Metabolic Profiling
Database covered under this agreement with the intention of
marketing these tools in the FIELD with the exception of foods
for human health. "Third Party" for this subsection i) means an
entity other than the entity having a preexisting relationship
with either party or an entity that provides a product or tools
for which LION has no reasonable alternative or comparable
product.
j) A royalty of [___] * of the Net Sales of any New Software
Product, which is sold by PGI under mutually agreed upon terms,
as between PGI and LION. This royalty shall be paid in US dollars
within 30 days of the end of each quarter after sales have
occurred. For purposes of this subsection j), "Net Sales" are the
total revenue received for a license to the New Software Product
before taxes and net of refunds, credits or discounts.
_____________________________________________________________________________
* Confidential treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
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If the New Software Product is sold as a part of a package of
products, databases and/or services the royalty shall reflect the
relative value of the New Software Product to the total contract
value and PGI and LION shall negotiate the royalty rate in good
faith.
k) For new bioinformatics software which is co-developed pursuant to
the COLLABORATION but is not a New Software Product, the revenue
split between PGI and LION will be based on the percentage of the
value contributed by each party to any new bioinformatics
software.
4. Consideration from LION to PGI. In consideration of the services
------------------------------
provided by PGI and the rights obtained by LION under this Agreement,
LION shall provide PGI with:
a) In addition to the terms and conditions of the license agreements
dated October 26, 1999 and June 14, 2000, continued updates and
support for SRS, bioSCOUT(TM) and arraySCOUT(TM) and associated
software modules at prices no greater than those previously
negotiated between the parties and no higher than licensed to
other commercial entities in arms length transactions. LION will
provide PGI with software development kits for SRS,
arraySCOUT(TM) and bioSCOUT(TM) tools.
b) At commercially reasonable terms available to other customers,
LION shall provide to customers of PGI a license to SRS,
bioSCOUT, arraySCOUT and other tools required to use the
Metabolic Profiling Data Analysis and Display Software and
Metabolic Profiling Database. PGI will not independently market,
sell or distribute the license or kits without the written
consent of LION.
c) A minimum two full time employee (FTE) effort, as described in
the Product Development Plan attached as Exhibit A, for the co-
development of New Software Product and the Metabolic Profiling
Database pursuant to this COLLABORATION. If appropriate, PGI
employees will work within LION facilities under the appropriate
confidentiality and non-disclosure agreements. Furthermore, LION
will provide training and access to early phase products (-test
site) that are appropriate for PGI.
d) The marketing of SRS, bioSCOUT(TM) and other bioinformatics
software tools to industry. If the customer is in the Functional
Genomics markets, LION will mention that PGI is the provider of
choice for functional genomics. LION will attempt to facilitate a
favorable viewing of PGI products and services. However, LION is
free to work with any customer it finds, independent of that
customer's interest in working with PGI and independent of other
agreements the customer may have with competitors of PGI.
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e) LION will not enter into an agreement with any third party to co-
develop bioinformatics software or the Metabolic Profiling
Database covered under this agreement with the intention of
marketing these tools in the FIELD with the exception of foods
for human health. "Third Party" for this subsection means an
entity other than the entity having a preexisting relationship
with either party or an entity that provides a product or tools
for which PGI has no reasonable alternative or comparable
product.
f) A royalty of [___] * of the Net Sales of any Metabolic Profiling
Database, which is sold as a database by LION under mutually
agreed upon terms, as between PGI and LION, in the FIELD or
Health Care Market. This royalty shall be paid in US dollars
within 30 days of the end of each quarter after sales have
occurred. For purposes of this subsection f), "Net Sales" are the
total revenue received for a license to the Metabolic Profiling
Database before taxes and net of refunds, credits or discounts.
If the Metabolic Profiling Database is sold as a part of a
package of products, databases and/or services the royalty shall
reflect the relative value of the Metabolic Profiling Database to
the total contract value and PGI and LION shall negotiate the
royalty rate in good faith.
g) A royalty of [___] * of the Net Sales of any New Software
Product, which is licensed by LION under mutually agreed upon
terms, as between PGI and LION. This royalty shall be paid in US
dollars within 30 days of the end of each quarter after sales
have occurred. For purposes of this subsection g), "Net Sales"
are the total revenue received for a license to the
Bioinformatics Software Tool before taxes and net of refunds,
credits or discounts. If the New Software Product is sold as a
part of a package of products, databases and/or services the
royalty shall reflect the relative value of the New Software
Product to the total contract value and PGI and LION shall
negotiate the royalty rate in good faith.
5. Grants, Licenses and Options. a) Under the SRS license agreement
-----------------------------
dated October 26, 1999 and the bioSCOUT(TM) and arraySCOUT(TM)
licenses dated June 14, 2000, LION has granted to PGI annual
licenses to use these products. Following the first sale of a New
Software Product or a Metabolic Profiling Database at a price to
be agreed between LION and PGI, LION will grant to PGI a non-
exclusive license to use SRS, bioSCOUT(TM) and arraySCOUT(TM)
from the date of the annual license renewals.
_____________________________________________________________________________
* Confidential treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
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b) The granted non-exclusive licenses, pursuant to article 5(a),
shall survive the termination of this Agreement provided that the
royalties received or sales revenues retained by LION pursuant to
articles 3(g), 3(j), 4(e) and 4(f) exceed the annual list price
of the software for the year in which such royalties or sale
revenues are received. However, the non-exclusive licenses
granted pursuant to article 5(a) do not include new versions of
the software or technical support.
c) LION is free to use, market, sell, license and distribute any
product or service not specifically covered under this
COLLABORATION without interference from PGI. PGI is free to sell
and distribute any product or service not specifically covered
under this COLLABORATION without interference from LION.
d) (i) LION herewith grants PGI a non-exclusive, world-wide, royalty
free License to use and market the New Software Product and the
Know-How related to the New Product Software solely for the
purposes of this Agreement, without the right to sublicense, and
subject to all terms and conditions hereof; and (ii) LION
herewith also grants PGI and its affiliates an irrevocable, non-
exclusive, world-wide, royalty-free License to use New Software
Products and the Know-How related to the New Software Products
for internal purposes without the right to sublicense.
e) (i) PGI herewith grants LION a non-exclusive, world-wide,
royalty-free License to use and market the Metabolic Profiling
Database and the Know-How related to the Metabolic Profiling
Database solely for the purposes of this Agreement, without the
right to sublicense, and subject to all terms and conditions
hereof; and (ii) PGI herewith also grants LION and its affiliates
an irrevocable, non-exclusive, world-wide, royalty-free License
to use the Metabolic Profiling Database and the Know-How related
to the Metabolic Profiling Database for internal purposes without
the right to sublicense.
6. Confidentiality. In view of the parties' proprietary rights and
----------------
interests concerning their facilities and technology, PGI and LION
agree that during the term of and any subsequent extension of this
Agreement and for a period of five (5) years thereafter, each party
shall hold in confidence any CONFIDENTIAL INFORMATION (as defined
below): a) received by one party ("Receiving Party") from the other
party ("Disclosing Party"), or 2) that results from the COLLABORATION
under this Agreement ("New Information") except as required under
clause 5 for the purpose of the sale and marketing of the results of
the COLLABORATION. "CONFIDENTIAL INFORMATION" includes, but is not
limited to, confidential or proprietary information, business plan
information, reports, materials, know-how, data, both technical and
non-technical, procedures, databases, documents, specifications,
techniques, assays, results, product development, conclusions, and the
like (including the terms of
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this Agreement). Each party shall not disclose CONFIDENTIAL
INFORMATION to any third party or use such CONFIDENTIAL INFORMATION
for any purpose, except as provided herein, without the prior written
approval of the other party. The parties shall have no obligations
with respect to any portion of such CONFIDENTIAL INFORMATION which:
a) is or later becomes generally available to the public by use,
publication or the like through no fault of the Receiving Party;
b) is obtained from a third party who had the legal right to
disclose the same to the Receiving Party;
c) the Receiving Party already possesses, as evidenced by written
records, predating receipt thereof from the Disclosing Party; or
d) is independently developed by the Receiving Party without
reference to the CONFIDENTIAL INFORMATION, provided such
independent development can reasonably be documented by the
Receiving Party by written records.
7. Publication. PGI and LION recognize the importance to present or
-----------
publish scientific articles and the importance to protect CONFIDENTIAL
INFORMATION from premature disclosure to third parties. However, LION
agrees to obtain written permission from PGI prior to submission of
any such presentation or article for publication that contains PGI's
CONFIDENTIAL INFORMATION or prior to disclosure of PGI's CONFIDENTIAL
INFORMATION to third parties. PGI agrees to obtain written permission
from LION prior to submission of any such presentation or article for
publication that contains LION's CONFIDENTIAL INFORMATION or prior to
disclosure of LION's CONFIDENTIAL INFORMATION to third parties. Each
party agrees to provide to the REPRESENTATIVE of the other party all
such presentations or articles or disclosures of CONFIDENTIAL
INFORMATION to the third parties at least sixty (60) days prior to
submission of such presentations or articles for publication or prior
to the intended disclosure of CONFIDENTIAL INFORMATION to third
parties. The receiving REPRESENTATIVE will notify the party within
thirty (30) days following receipt of the contents of the proposed
publication or disclosure of any comments they may have. The parties
agree to remove any CONFIDENTIAL INFORMATION contained in such
proposed presentations, articles or disclosures and the parties agree
to delay such disclosures, presentations or articles for publication
for up to ninety (90) days in order to file a patent application if it
is determined that the presentations or articles for publication or
disclosure contain CONFIDENTIAL INFORMATION with potentially
patentable subject matter.
8. Property Rights. a) Intellectual property developed by one or both
---------------
Parties relating to or incorporating LION's core-software-
products (including but
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not limited to SRS, bioSCOUT(TM), arraySCOUT(TM),
genomeSCOUT(TM), pathSCOUT(TM), miSCOUT(TM)) shall belong to LION
("LION Intellectual Property").
b) Subject to Section 8a intellectual property relating to the
Metabolic Profiling Database developed by one or both parties
during the Product Development Plan shall be owned by PGI ("PGI
Intellectual Property").
c) Intellectual property relating to New Software Products developed
by one or both parties during the COLLABORATION shall be owned by
LION ("LION Intellectual Property").
d) Intellectual property relating to Functional Genomics developed
by one or both parties pursuant to the Product Development Plan
shall be owned by PGI ("PGI Intellectual Property").
e) Subject to Sections 8a, 8b, 8c and 8d, other intellectual
property developed by one more employees of both Parties pursuant
to the Product Development Plan shall be jointly owned by LION
and PGI ("Joint Intellectual Property"). Each owner of a jointly
owned patent shall have the rights to use such Joint Intellectual
Property pursuant to the rights granted in this Agreement.
f) Subject to Sections 8a, 8b, 8c, 8d and 8e any intellectual
property developed solely by one or more employees of PGI, shall
be owned by PGI ("PGI Intellectual Property").
g) Subject to Sections 8a, 8b, 8c, 8d and 8e any intellectual
property developed solely by one or more employees of LION, shall
be owned by LION ("LION Intellectual Property").
h) PGI shall be responsible for all costs associated with the
preparation, filing, prosecution and maintenance of all PGI
Intellectual Property and 50% of the costs for Joint Intellectual
Property. LION shall be responsible for all costs associated with
the preparation, filing, prosecution and maintenance of all LION
Intellectual Property and 50% of the costs of Joint Intellectual
Property.
9. Term. a) This agreement shall be effective beginning November 1, 2000
-----
and shall remain in effect until December 31, 2005 unless terminated
earlier or unless the goals of the Development Plan have been achieved
earlier as mutually agreed by both Parties. This Agreement may be
extended upon the mutual written agreement of both parties.
b) A party may terminate this Agreement upon or after the breach of
any material provision of this Agreement, if the breaching party
has not cured such breach within ninety (90) days after notice
thereof from the other party.
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Any licenses granted hereunder to the non-breaching party shall
survive a termination of this Agreement under this Article 9b and
shall remain in full force and effect under the terms and
conditions of the associated license agreement so long as such
non-breaching party shall continue to comply with its obligations
under this Agreement to the breaching party in respect of such
licenses (including without limitation, any reporting, payment,
funding, development, commercialization, or royalty obligations)
as if this Agreement had not been terminated. A termination for
breach as provided in this Article 9b shall not affect any
licenses granted to third parties prior to such breach unless the
granting of the license constitutes a breach of this Agreement.
10. Termination. This Agreement shall terminate upon the expiration of
------------
the term of Article 9 or for any reason prior thereto by either party
after giving thirty (30) days notice.
11. Notices. Unless otherwise stated, any notice or reports required to be
--------
given under the terms of this Agreement may be given by certified
letter addressed to the other party and addressed to the party at the
following address. Any notice so given shall be deemed to have been
served when hand delivered to the other Party or at the expiration of
seven (7) days from the time of posting.
For LION: Xx. Xxxxxxxxx xxx Xxxxxx
LION bioscience XX
Xxxxxxxxx Xxx. 00
00000 Xxxxxxxxxx-Xxxxxxxxxx
Xxxxxxx
with a copy to:
Xx. Xxxxxxxx Xxxxxxxxx, CEO
Lion Bioscience Inc.
000 Xxxxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
For PGI: Xxxx Xxxxx, CEO
Paradigm Genetics, Inc.
000 Xxxxxxxxx Xxxxx, Xxxxxxxx 2
Research Xxxxxxxx Xxxx, Xxxxx Xxxxxxxx 00000
12. Publicity. During the term of this Agreement, neither party hereto
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will use the name of the other party in publicity or advertising
without the written approval of the other party, such approval not to
be unreasonably withheld. However, nothing in this Article or
elsewhere in this Agreement or from including the existence and nature
of this Agreement in the routine reporting of its activities.
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13. Liability. Each party hereto agrees to be responsible and assume
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liability for its own wrongful or negligent acts or omissions, or
those of its officers, agents, or employees to the full extent allowed
by law and further agrees to indemnify and hold harmless the other
party against any action brought against the other party to the extent
that such action is based on such wrongful or negligent acts or
omissions. Further, each party warrants and represents that it
possesses adequate liability insurance, which will remain in effect
for the entire term of this Agreement, for the protection of itself
and its officers, employees and agents, while acting within the scope
of their employment by the party.
a) Indemnification of LION. PGI shall indemnify, defend and hold
-----------------------
harmless LION against any action to the extent that such action
is based on a claim that LION's use of the Metabolic Profiling
Database, the Documentation, the Updates, the Know How or any
part thereof under this Contract infringes an enforceable patent
or copyright, or misappropriates or infringes upon a trade secret
or other intellectual property right and PGI shall pay all costs
(including reasonable attorney's fees) awarded or agreed to in
settlement by PGI in such action; provided that PGI is given
notice within fifteen (15) calendar days of the date the LION
knows of such a claim, unless the failure to give such notice
shall not, in the reasonable opinion of PGI, materially prejudice
PGI's defense thereof. PGI shall control the defense in any such
action and at its discretion may enter into a stipulation of
discontinuance and settlement thereof. The foregoing indemnity
shall not apply in respect of any infringement or
misappropriation claim if such infringement or misappropriation
claim is based on: (a) use of a superseded or altered release of
the Metabolic Profiling Database if the infringement would have
been avoided by the use of a current unaltered release of the
Metabolic Profiling Database which PGI provides to LION, (b) the
modification or alteration of the Metabolic Profiling Database or
the source code by LION if such infringement would have been
avoided by use of the Metabolic Profiling Database without such
modification or alteration, or (c) the combination, operation or
use of the New Software Product with software, hardware or other
materials not furnished by PGI if such infringement would have
been avoided by the use of the New Software Product without such
software, hardware or other materials. In the event that portions
of the Software are held or are believed by PGI to infringe, PGI
may, in its sole discretion, terminate the license for the
infringing New Software Product. This Section states PGI's entire
liability and LION's exclusive remedy for infringement or
misappropriation.
b) Indemnification of PGI. LION shall indemnify, defend and hold
----------------------
harmless PGI against any action to the extent that such action is
based on a claim that PGI's use of the New Software Products, the
Documentation, the Updates, the Know How or any part thereof
under this Contract infringes an enforceable patent or copyright,
or misappropriates or infringes upon a trade secret or other
intellectual property right and LION shall pay all costs
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(including reasonable attorney's fees) awarded or agreed to in
settlement by LION in such action; provided that LION is given notice
within fifteen (15) calendar days of the date the PGI knows of such a
claim, unless the failure to give such notice shall not, in the
reasonable opinion of LION, materially prejudice LION's defense
thereof. LION shall control the defense in any such action and at its
discretion may enter into a stipulation of discontinuance and
settlement thereof. The foregoing indemnity shall not apply in respect
of any infringement or misappropriation claim if such infringement or
misappropriation claim is based on: (a) use of a superseded or altered
release of a New Software Product if the infringement would have been
avoided by the use of a current unaltered release of the New Software
Product which LION provides to PGI, (b) the modification or alteration
of a New Software Product or the source code thereof by PGI if such
infringement would have been avoided by use of the New Software
Product without such modification or alteration, or (c) the
combination, operation or use of a New Software Product with software,
hardware or other materials not furnished by LION if such infringement
would have been avoided by the use of the New Software Product without
such software, hardware or other materials. In the event that portions
of the New Software Product are held or are believed by LION to
infringe, LION may, in its sole discretion, terminate the license for
the infringing New Software Product. This Section states LION's entire
liability and PGI's exclusive remedy for infringement or
misappropriation.
c) Limitation of Liability. EXCEPT WITH RESPECT TO THE PARTIES'
-----------------------
OBLIGATIONS UNDER SECTIONS 6, 13(a) AND 13(b) HEREOF, NEITHER LION NOR
PGI SHALL HAVE ANY LIABILITY TO THE OTHER PARTY WITH RESPECT TO ITS
OBLIGATIONS UNDER THIS AGREEMENT OR OTHERWISE FOR CONSEQUENTIAL,
EXEMPLARY, SPECIAL, INCIDENTAL OR PUNITIVE DAMAGES EVEN IF IT HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. EXCEPT WITH RESPECT TO THE
PARTIES' OBLIGATIONS UNDER SECTIONS 6, 13(a) AND 13(b) HEREOF, THE
LIABILITY OF LION OR PGI TO THE OTHER PARTY FOR ANY REASON AND UPON
ANY CAUSE OF ACTION SHALL BE LIMITED TO USD TWO HUNDRED & FIFTY
THOUSAND DOLLARS ($250,000). THIS LIMITATION APPLIES TO ALL CAUSES OF
ACTION IN THE AGGREGATE, INCLUDING WITHOUT LIMITATION TO BREACH OF
CONTRACT, BREACH OF WARRANTY, NEGLIGENCE, STRICT LIABILITY,
MISREPRESENTATIONS, AND OTHER TORTS. BOTH PARTIES UNDERSTAND AND AGREE
THAT THE REMEDIES AND LIMITATIONS HEREIN ALLOCATE THE RISKS OF PRODUCT
AND SERVICE NONCONFORMITY BETWEEN THE PARTIES AS AUTHORIZED BY THE
UNIFORM COMMERCIAL CODE AND BY OTHER APPLICABLE LAWS. THE AGREEMENTS
HEREIN REFLECT, AND ARE SET IN RELIANCE UPON, THIS
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ALLOCATION OF RISK AND THE LIMITATION OF DAMAGES SET FORTH IN THIS
CONTRACT.
14. Independent Contractor. In the performance of all services hereunder,
----------------------
neither party is authorized or empowered to act as agent for the other
for any purpose and shall not on behalf of the other enter into any
contract, warranty, or representation as to any matter. Neither party
shall be bound by the acts of the other.
15. Warranties. The parties warrant and represent that they have the
----------
right to enter into this Agreement. Both parties further warrant and
represent that the terms of this Agreement are not inconsistent with
other contractual obligations, expressed or implied that they may
have.
16. Amendments. No modification to this Agreement shall be effective
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unless made in writing and signed by a duly authorized representative
of each party.
17. Entire Agreement. This agreement constitutes the entire Agreement
----------------
between the parties with respect to the subject matter hereof and
supercedes all prior agreements and understandings between the parties
(whether written or oral) relating to said subject matter.
18. Survival of Terms. The terms of Articles 3, 4, 5, 6, 7, 8, 11, 13,
-----------------
19, 20 and 22 any shall survive any termination of this Agreement
pursuant to Article 10.
19. No Implied License. Neither Party by this Agreement grants to the
------------------
other any license, express or implied, to any technology, know-how,
inventions, improvements, trade secrets or materials that it
possesses, except for research purposes necessary to conduct the
Product Development Plan. Upon the termination of the Product
Development Plan, the Parties' intellectual property rights with
respect to the results of the Product Development Plan shall be as set
forth in Article 6 and 8, and neither Party shall have any implied
license to any other technology, know-how, inventions, improvements,
trade secrets or materials of the other Party.
20. Assignment. Neither Party shall assign or transfer an interest in
----------
this Agreement, nor assign any claims for money due or to become due
during this Agreement, other than to an Affiliated Company, without
prior written approval of the other party. Subject to the foregoing,
the Agreement shall inure to the benefit of and shall be binding upon
the successors and permitted assigns of the Parties. For the purposes
of this Section 20, "Affiliated Company" means a corporation or other
entity which controls, is controlled by, or is under common control
with a party to this Agreement. A corporation or other entity shall be
deemed to control another corporation or entity if it owns, directly
or indirectly, more than fifty percent (50%) of the voting shares or
other interest, or has the power to elect
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CONFIDENTIAL
more than half the directors, of such other corporation or entity.
21. Compliance with Laws. Each Party agrees that it will comply with all
--------------------
applicable federal, state, and local laws, codes, regulations, rules
and orders in the performance and direction of the work under this
Agreement.
22. Governing Law, Dispute Resolution, Arbitration. a) This Agreement and
----------------------------------------------
all of the obligations contained herein, including possible claims for
damages arising from the withdrawal of one of the parties from the
Agreement, shall be construed in accordance with the laws of the State
of Delaware in The United States of America under exclusion of the UN
law on sales. Place of jurisdiction shall be Delaware.
b) LION and PGI shall deal with each other in good faith. The
parties agree in the event of a dispute between them arising
from, concerning or in any way relating to this Agreement, the
REPRESENTATIVES shall undertake good faith efforts to amicably
resolve such dispute, the matter shall be referred to
[_______________________] * or another designated representative
of LION, and to [_____________] * or another designated
representative of PGI, for further review and resolution.
c) In the event that a dispute is unable to be resolved, pursuant to
Section 21.b, within ninety (90) days, the parties agree that any
and all disputes arising directly or indirectly out of or
relating in any way to this Agreement shall be submitted to
binding arbitration pursuant to the Rules then in effect of the
American Arbitration Association (AAA). One arbitrator shall hold
arbitration. Arbitration shall be held in the English language.
The arbitrator shall decide the matters submitted to him based
upon the evidences presented and the terms of this Agreement. The
arbitrator shall issue a written decision which shall state the
reasons of the decision and which shall include findings of fact
and conclusions of law. The decision of the arbitration shall be
final, non-appealable and binding upon the parties and their
respective successors and permitted assigns.
23. Force Majeure. Neither party shall be held liable or responsible to
-------------
the other party nor be deemed to have defaulted under or breached this
Agreement for failure or delay in fulfilling or performing any term of
this Agreement to the extent, and for so long as, such failure or
delay is caused by or results from causes beyond the reasonable
control of the affected party including but not limited to fire,
floods, embargoes, war, acts of war (whether war be declared or not),
insurrections, riots, civil commotion, strikes, lockouts or other
labor disturbances, acts of God or acts, omissions, or delays in
acting by any governmental authority of the other party.
_____________________________________________________________________________
* Confidential treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
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CONFIDENTIAL
24. Severability of Clauses. If any provision or provisions of this
-----------------------
Agreement are deemed illegal, invalid, or unenforceable in any state
or country, to the extent of such illegality, invalidity or
unenforceability, be deemed severed and shall not affect the legality,
validity or enforceability of any other provision hereof. The invalid
provision or the gap shall be filled by an appropriate provision which
to the extent legally possible, comes closest to the Parties' intent
of what the Parties would have laid down had they been aware of the
invalidity or gap in order to meet the spirit and purpose of this
Agreement.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
dates set forth below.
PGI LION
By: /s/ Xxxx X. Xxxxx By: /s/ Xxxxxxxxx xxx Xxxxxx
--------------------------- --------------------------
Title: CEO, President Title: Chief Executive Officer
------------------------ -----------------------
Date: November 22, 2000 Date: November 14, 2000
------------------------- ------------------------
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CONFIDENTIAL
EXHIBIT A
Product Development Plan
The parties shall agree on a business plan and mechanism for
marketing/commercialization of the Bioinformatics Software Tools and Metabolic
Profiling Database co-developed by LION and PGI.
1. Bioinformatics Software Tools
This software will analyze and display biochemical profile data and will be
integrated into LION's proprietary SRS/bioSCOUT(TM) system for ease of use.
a) Milestones and Support for Metabolic Profiling Data Analysis and
Display Software
i) LION agrees to support this co-development activity with at least
2 Full Time Employees with the goal of developing [___________] *
of biochemical profiling tools by 1 June 2001. [___________] *
will be able to [________________] * and [______________________]
* for biochemical profile data obtained at PGI.
ii) PGI agrees to support this co-development activity with at least
2 Full Time Employees with the goal of developing [___________] *
of biochemical profiling tools by 1 June 2001. [___________] *
will be able to [________________] * and [______________________]
* for biochemical profile data obtained at PGI.
b) A detailed project scope is: The [___________________________________]
[_________________] * provides non-specialist users in the context of
this tool, particularly biologists and geneticists who are not
specialists in analytical chemistry, a powerful tool for the discovery
of novel [_____________________] [__________] * that arise from the
introduction of mutations in the genome of a target organisms. The
[______________] * platform produces qualitative and quantitative
information on the detectable [_______________________] *. Genetically
characterized specimens are subjected to [_____________] * , followed
by [______________] * to produce [_______] * that enable the
identification of [__________________________________________________]
[_______________] * processes [___] * data from the [_________] *
through [__________] * and [__________] * processes to a finished data
[________] * for
_____________________________________________________________________________
* Confidential treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
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data [________] * by the end user with [____________________________]
[_______] *. The overall scope of the software system is to provide a
graphical user interface for access to [_________________________] *
and data processing pipelines to fulfill the following major
objectives:
i) Enable non-specialist users to compare [__________________]
* between and among specimens, treatments or experiments.
ii) Enable non-specialist users to predict the
[__________________] * in individual specimens based on
known genetic manipulation of the genome.
iii) Enable non-specialist users to list [___________] * that
show significant changes in [_______________] *.
iv) Enable non-specialist users to display [________________] *
for specific samples or experiments.
v) Enable non-specialist users to plot groups of [_________] *
that are related [__________] * or on the [___________] * by
indicating the levels all the [__________] * in the group by
specimen or experiment.
vi) Enable non-specialists users to add novel [______________] *
and edit [____________] *.
c) A detailed list of intermediate milestones will be determined by the
Joint Collaboration Committee by January 1, 2001.
2. Metabolic Profiling Database
The Metabolic Profiling Database shall consist of [____________] * data from
[______] * and [_____] * linked to [________] * and accessible through a
graphical user interface. Metabolic profiling will help find [___________] * by
quickly relating changes in [______] * and [_________________] * to
[___________] * changes that are relevant to the disease.
_____________________________________________________________________________
* Confidential treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
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CONFIDENTIAL
EXHIBIT B
Marketing Plan
The parties shall agree on a plan and mechanism for marketing/commercialization
of products and services co-developed by LION and PGI.
1. Marketing Milestones
a) LION agrees to provide PGI with one potential [________________]
[___________] * by [___________] *. LION agrees to introduce PGI
to one eventual [_______________] * whereby the relationship
between PGI and the [____________] * is consummated by
[__________] *.
b) PGI agrees to provide LION with one potential [_______________] *
by [__________________] *. PGI agrees to introduce PGI to one
eventual [____________] * whereby the relationship between LION
and the [_________]* is consummated by [______________] *.
2. Sharing of Company Contacts
a) The following is intended: LION agrees to provide PGI with a list
of [________________________] * within [____________] * of the
signing of the Alliance agreement. This customer list will
include [______________] * and [__________________] *.
b) PGI agrees to provide LION with a list of [______________] *
within [____________________] * of the signing of the Alliance
agreement. This customer list will include [___________________]
* and [________________]*.
_____________________________________________________________________________
* Confidential treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
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CONFIDENTIAL
EXHIBIT C
JOINT COLLABORATION COMMITTEE
LION R & D: [______________] *
[______________] *
LION Business: [_____________] *
PGI R & D: [______________] *
[______________] *
PGI Business: [_____________] *
_____________________________________________________________________________
* Confidential treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
20
