Exhibit 10.4
RESEARCH COLLABORATION AGREEMENT
GEMINI RESEARCH LIMITED
AND
CELERA GENOMICS
SEPTEMBER 1, 1999
Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
TABLE OF CONTENTS
PAGE
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Article 1 Definitions ...................................................... 1
1.1 "Additional Association Discovery" ................................... 1
1.2 "Association Discovery" .............................................. 2
1.3 "Celera Gene" ........................................................ 2
1.4 "Celera Consensus DNA Sequence" ...................................... 2
1.5 "Celera Human Genome Database" ....................................... 2
1.6 "Celera Know-How" .................................................... 2
1.7 "Celera Marker" ...................................................... 2
1.8 "Celera Patents" ..................................................... 2
1.9 "Celera Technology" .................................................. 2
1.10 "Control", "Controls", or "Controlled" ............................... 2
1.11 "DNA Samples" ........................................................ 3
1.12 "Gemini Consensus DNA Sequence" ...................................... 3
1.13 "Gemini Gene" ........................................................ 3
1.14 "Gemini Know-How" .................................................... 3
1.15 "Gemini Marker" ...................................................... 3
1.16 "Gemini Material"..................................................... 3
1.17 "Gemini Patents" ..................................................... 3
1.18 "Gemini Technology" .................................................. 3
1.19 "Genes" .............................................................. 3
1.20 "GeneFind(TM)" ....................................................... 3
1.21 "Joint Gene" ......................................................... 3
1.22 "Joint Know-How" ..................................................... 4
1.23 "Joint Marker" ....................................................... 4
1.24 "Joint Patents" ...................................................... 4
1.25 "Joint Technology" ................................................... 4
1.25 "Markers" ............................................................ 4
1.27 "Nominated Locus" .................................................... 4
1.28 "Nominated Trait" .................................................... 4
1.29 "Non-Associated Gene" ................................................ 4
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TABLE OF CONTENTS
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1.30 "Party" .............................................................. 4
1.31 "Patents" ............................................................ 4
1.32 "PHENOBASE(TM)" ...................................................... 5
1.33 "Research Committee" ................................................. 5
1.34 "Research Program" ................................................... 5
1.35 "Third Party" or "Third Parties" ..................................... 5
Article 2 Research Program ................................................ 5
2.1 Formation of Research Committee: Decision Making ..................... 5
2.2 Conduct of Research Program .......................................... 5
2.3 Designation of Nominated Traits and Nominated Loci ................... 6
2.3 Research Responsibilities ............................................ 6
2.5 Determination of Associations ........................................ 7
2.6 Transfer of Information and Materials ................................ 7
2.7 Use and Handling of Materials ........................................ 7
Article 3 Exclusivity; Covenants ......................................... 7
3.1 Nominated Locus Information .......................................... 7
3.2 Independent Programs ................................................. 8
3.3 Joint Technology Exclusivity ......................................... 8
Article 4 Licenses; Limitations On Use .................................... 8
4.1 Research License to Celera ........................................... 8
4.2 Research License to Gemini ........................................... 8
4.3 Use of Joint Genes and Joint Markers ................................. 8
4.4 Assignment of Non-Association Genes .................................. 9
4.5 SNP License .......................................................... 9
4.6 No Other License ..................................................... 9
4.7 No Other Uses of Technology, Material and Information ................ 9
4.8 Unaffected Rights of Celera and Gemini ............................... 9
Article 5 Inventorship And Ownership Of Intellectual Property ............. 10
5.1 Inventorship ......................................................... 10
5.2 Gemini Ownership ..................................................... 10
ii.
TABLE OF CONTENTS
(CONTINUED)
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5.3 Celera Ownership ..................................................... 10
5.4 Ownership of Joint Gene and Joint Marker ............................. 10
5.5 Ownership of Joint Technology ........................................ 10
5.6 Prosecution of Patents within Joint Genes and Joint Marker ........... 10
5.7 Prosecution of Patents within Joint Technology ....................... 10
5.8 Assistance in Prosecution and Maintenance; Execution of Documents .... 12
5.9 Infringement of Joint Patents by Third Parties ....................... 12
5.10 Infringement of Third Party Rights .................................. 13
5.11 Exclusion of Rights ................................................. 13
Article 6 Commercialization of Joint Technology .......................... 13
6.1 Licensing by Parties ................................................. 13
6.2 Licensing of Additional Association Discoveries ...................... 14
6.3 Third Party License Obligations ...................................... 14
6.4 Licensing under Prior Obligation ..................................... 15
6.5 Commercialization Committee .......................................... 15
6.6 Revenue Sharing ...................................................... 15
Article 7 Confidentiality ................................................ 16
7.1 Confidential Information ............................................. 16
7.2 Confidentiality ...................................................... 16
7.3 Authorized Disclosure ................................................ 17
7.4 Limitations on Disclosure ............................................ 17
7.5 Public Announcement .................................................. 17
7.6 Employees; Agents .................................................... 18
7.7 Equitable Remedies ................................................... 18
Article 8 Representations, Warranties And Covenants ...................... 18
8.1 Mutual Representations and Warranties ................................ 18
8.2 Disclaimer of Warranties ............................................. 18
Article 9 Indemnification ................................................ 18
9.1 Indemnification ...................................................... 18
Article 10 Term And Termination ........................................... 19
iii.
TABLE OF CONTENTS
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10.1 Term ................................................................ 19
10.2 Termination for Material Breach ..................................... 19
10.3 Termination for Lack of Sequence Information ........................ 19
10.4 Survival ............................................................ 19
10.5 Assignment Upon Termination ......................................... 19
10.6 Return of Confidential Information .................................. 19
10.7 Accrued Rights and Obligation ....................................... 20
Article 11 Dispute Resolutions ........................................... 20
11.1 General ............................................................. 20
11.2 Negotiations ........................................................ 20
11.3 Legal Proceedings ................................................... 20
11.4 Arbitration of Certain Matters ...................................... 20
Article 12 General Provisions ............................................ 22
12.1 Notices ............................................................. 22
12.2 Further Actions ..................................................... 23
12.3 No Trademark Rights ................................................. 23
12.4 Force Majeure ....................................................... 23
12.5 Legal Compliance .................................................... 23
12.6 Entirety of Agreement ............................................... 23
12.7 Non-Waiver .......................................................... 23
12.8 Disclaimer of Agency ................................................ 23
12.9 Severability ........................................................ 23
12.10 Affiliates; Assignment .............................................. 24
12.11 Headings ............................................................ 24
12.12 Limitation of Liability ............................................. 24
12.13 Governing Law ....................................................... 24
12.14 Counterparts ........................................................ 24
iv.
RESEARCH COLLABORATION AGREEMENT
This RESEARCH COLLABORATION AGREEMENT (the "Agreement") is made as of
September 1st, 1999 (the "Effective Date"), by and between GEMINI RESEARCH
LIMITED, a corporation organized under the laws of England and Wales ("Gemini"),
having a principal place of business at 1621 Science Park, Xxxxxx Xxxx,
Xxxxxxxxx, XX0 0XX, Xxxxxx Xxxxxxx, and PE COPORATION, a Delaware corporation,
through its Business Unit of CELERA GENOMICS, ("Celera"), having a principal
place of business at 00 Xxxx Xxxx Xxxxx, Xxxxxxxxx, XX 00000. Celera and Gemini
may be referred to herein individually as a "Party" and collectively as the
"Parties".
RECITALS
A. Gemini and Celera desire to collaborate on a research program to
discover genes and markers that are associated with phenotype trait in a
specific genomic region, and such trait and region shall be selected by the
Parties.
B. In connection with such collaborative research program, it is
contemplated that Gemini shall provide clinical samples in the form of purified
DNA and information pertaining to such phenotype traits of interest contained in
Gemini's proprietary GeneFind(TM) and PHENOBASE(TM) databases, and Celera shall
provide consensus DNA sequence information, computationally derived predictions
of gene structure and function, and generic markers in a specific genomic
region.
C. The Parties will jointly conduct genotyping and jointly perform data
analysis for the purpose of identifying associations for genes and markers with
a specific phenotype trait.
D. The Parties intend to commercialize the results of their collaborative
research activities by jointly licensing their rights in genes and markers
associated with a specific phenotype trait discovered through such collaborative
research program to third parties for development and commercialization,
pursuant to mutually agreed-upon separate written agreements.
NOW, THERFORE, in consideration of the foregoing premises and the mutual
covenants set forth below, and for other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, Gemini and Celera
hereby agree as follows:
ARTICLE 1
DEFINITIONS
As used herein, the following terms shall have the meanings as defined
below. The definition of a term in singular shall include that term in the
plural form, and vice versa:
1.1 "Additional Association Discovery" means any Gene or fragments of
nucleotide sequence within the Nominated Locus that, pursuant to Section 2.5, is
identified by the Research Committee as being associated with any phenotypic or
disease trait within PHENOBASE(TM), other than a Nominated Trait, and/or any and
all Markers that, pursuant to Section 2.5, are
1.
identified by the Research Committee as being linked to any phenotypic or
disease trait within PHENOBASE(TM), other than a Nominated Trait, during the
course of the Research Program using Joint Genes, Joint Markers, and/or Celera
Technology and Gemini Technology.
1.2 "Association Discovery" means any Gene or fragments of nucleotide
sequence within the Nominated Locus that, pursuant to Section 2.5, is identified
by the Research Committee as being associated with Nominated Trait, and/or any
and all Markers that, pursuant to Section 2.5, are identified by the Research
Committee as being linked to a Nominated Trait during the course of the Research
Program using Joint Genes, Joint Markers and/or Celera Technology and Gemini
Technology.
1.3 "Celera Gene" means any full-length gene (e.g. cDNA or genomic DNA)
within a Nominated Locus that is identified and Controlled by Celera prior to
such gene being identified in the Research Program and prior to such gene its
chromosomal position being placed in the public domain by a Third Party.
1.4 "Celera Consensus DNA Sequence" means the respective non-redundant
assembled primary nucleotide sequence of genomic DNA in a Nominated Locus that
is Controlled by Celera.
1.5 "Celera Human Genome Database" means any human consensus DNA sequence
that is Controlled by Celera.
1.6 "Celera Know-How" means all information, whether patentable or not,
excluding Celera's interest in the Joint Technology, that is necessary and
directly applicable for the conduct of the Research Program and that during the
term of this Agreement (i) is Controlled by Celera and (ii) is not generally
known or available to the public. "Celera Know-How" shall include, without
limitation, Celera Consensus DNA Sequence, Celera Genes and Celera Markers
provided by Celera hereunder.
1.7 "Celera Marker" means any genetic marker within a Nominated Locus
(e.g. single nucleotide polymorphisms ("SNPs") and/or microsatellite
polynucleotide repeat markers ("Microsatellites") that are located within a
Nominated Locus) that is identified and Controlled by Celera prior to such
marker being identified in the Research Program and prior to such marker and its
chromosomal position being placed in the public domain by a Third Party.
1.8 "Celera Patents" means all Patents, excluding Joint Patents, that
claim Celera Know-How, as of the Effective Date and/or during the Research
Program that are Controlled by Celera and that would, but for the grant of a
license thereunder, be infringed by the conduct of the Research Program or by
practicing the subject matter in the Joint Patents.
1.9 "Celera Technology" mean the Celera Know-How and the Celera Patents.
1.10 "Control", "Controls" or "Controlled" means, with respect to
particular material, information or intellectual property right, that the Party
owns or has a license to such material, information or intellectual property
right, with the ability to grant to the other Party a license or sublicense to
such material, information or intellectual property right as provided for in the
Agreement without violating an agreement with a Third Party.
2.
1.11 "DNA Samples" means clinical samples of purified human DNA in
Gemini's possession and Control.
1.12 "Gemini Consensus DNA Sequence" means the respective non-redundant
assembled primary nucleotide sequence of gnomic DNA in a Nominated Locus that is
Controlled by Gemini.
1.13 "Gemini Gene" means any full-length gene (e.g. cDNA or genomic DNA)
within a Nominated Locus that is identified and Controlled by Gemini prior to
such gene being identified in the Research Program and prior to such gene and
its chromosomal position being placed in the public domain by a Third Party.
1.14 "Gemini Know-How" means all information, whether patentable or not,
excluding Gemini's interest in the Joint Technology, that is necessary and
directly applicable for the conduct of the Research Program and that during the
term of this Agreement: (i) is Controlled by Gemini and (ii) is not generally
known or available to the public. "Gemini Know-How" shall include, without
limitation, all information contained in GeneFind(TM), PHENOBASE(TM) or any
other databases under Gemini's control, Gemini Consensus DNA Sequence, Gemini
Genes and Gemini Markers, in each case that in provided by Gemini hereunder.
1.15 "Gemini Marker" means any genetic marker within a Nominated Locus
(e.g. single nucleotide polymorphisms ("SNPs") and/or microsatellite
polynucleotide repeat markers ("Microsatellites") that are located within a
Nominated Locus) that is identified and Controlled by Gemini prior to such
marker being identified in the Research Program and prior to such marker and its
chromosomal position being placed in the public domain by a Third Party.
1.16 "Gemini Material" means DNA Samples and other materials, other than
Gemini Know-How, provided by Gemini to Celera hereunder for use in the Research
Program.
1.17 "Gemini Patents" means all Patents, excluding Joint Patents, that
claim Gemini Know-How and/or Gemini Material, as of the Effective Date and/or
during the Research Program that are Controlled by Gemini and that would, but
for the grant of a license thereunder, be infringed by the conduct of the
Research Program or by practicing the subject matter in the Joint Patents.
1.18 "Gemini Technology" means the Gemini Know-How and the Gemini Patents.
1.19 "Genes" means any and all of Celera Gene(s), Gemini Gene(s) and Joint
Gene(s).
1.20 "GeneFind(TM)" means the version of Gemini's proprietary database of
loci generated from microsatellite genotyping in nonidentical twin pairs and
disease-affected sibships, existing as of the Effective Date, and any additions,
modifications or improvements thereof during the term of the Research Program.
1.21 "Joint Gene" means any full-length gene (e.g. cDNA or genomic DNA)
within Nominated Locus that is identified by Celera and/or Gemini in the course
of the performance of the Research Program after the election of such Nominated
Locus and prior to such gene and its
3.
chromosomal position being placed in the public domain by a Third Party, but
excluding Non-Association Genes. For clarity, "Joint Genes" shall exclude Celera
Genes, Gemini Genes and Non-Association Genes.
1.22 "Joint Know-How" means all information or inventions not generally
known or available that (a) includes, comprises, is based on or relates to any
Association Discovery or any Additional Association Discovery and (b) is made,
conceived or reduced to practice in the course of performance of the Research
Program by either or both Parties, and shall include in particular, but not
without limitation, the information showing the association or other
relationship between an Association Discovery and a Nominated Trait, or an
Additional Discovery and the relevant phenotypic or disease trait (as
applicable) discovered in the course of the Research Program. For clarity,
"Joint Know-How" shall exclude non-Association Genes.
1.23 "Joint Marker" means any genetic marker within a Nominated Locus
(e.g. single nucleotide polymorphisms ("SNPs") and/or microsatellite
polynucleotide repeat markers ("Microsatellites") that are located within a
Nominated Locus) that is identified by Celera and/or Gemini in the course of the
performance of the Research Program after the election of such Nominated Locus
and prior to such marker and its chromosomal position being placed in the public
domain by a Third Party. For clarity, "Joint Markers" shall exclude Celera
Markers, Gemini Markers and Non-Association Genes.
1.24 "Joint Patents" means all Patents that claim an invention within the
Joint Know-How.
1.25 "Joint Technology" means the Joint Know-How and Joint Patents.
1.26 "Markers" means any and all Celera Marker(s), Gemini Marker(s) and
Joint Markers.
1.27 "Nominated Locus" means *
1.28 "Nominated Trait" means a phenotypic trait that is within
PHENOBASE(TM), that is selected by the Parties pursuant to Section 2.3, and that
is relevant to a particular disease condition.
1.29 "Non-Association Gene" means any Joint Gene or Joint Marker that,
pursuant to Section 2.5, the Research Committee has determined is unlikely to be
an Association Discovery. Non-Association Genes shall be deemed to be Celera
Genes or Celera Markers, as the case may be.
1.30 "Party" means either of Gemini or Celera, and "Parties" means both of
Gemini and Celera.
1.31 "Patents" means all foreign and domestic patent applications
(including, without limitation, all provisional, divisional, substitution,
continuation and continuation in-part applications, and all foreign counterparts
thereof) and all foreign and domestic patents
Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
4.
(including without limitation, extensions, reissues, reexaminations, renewals,
inventors certificates and foreign counterparts thereof).
1.32 "PHENOBASE(TM)" means the version of Gemini's proprietary human
clinical database existing as of Effective Date, and any additions,
modifications or improvements thereof during the term of the Research Program.
1.33 "Research Committee" shall have the meaning set forth in Section 2.1.
1.34 "Research Program" means the research collaboration conducted by the
Parties pursuant to this Agreement as defined in Article 2.
1.35 "Third Party" or Third Parties" means any individual, partnership,
joint venture, corporation, trust, estate, unincorporated organization,
government or any department or agency thereof, or any other entity other than
the Parties.
2.1 Research Program
Formation of Research Committee: Decision Making. Within ten (10) days
after the Effective Date, the Parties shall establish a Research Committee
having a total of four (4) members. The Research Committee shall have
responsibility for strategic oversight of the Research Program and the
implementation thereof. Gemini and Celera each shall select and have the right
to replace up to two (2) representatives to serve as members of the Research
Committee, each of whom shall have senior management responsibilities for the
Party appointing such member. Either Party may designate a substitute committee
member to participate in the event one of the Party's regular committee members
is unable to be present at a meeting. The Research Committee shall meet, on a
bi-monthly basis commencing from its formation, and from time to time during the
term of this Agreement as otherwise agreed by the Parties. The Research
Committee shall make decisions on the basis of unanimous consensus after a
discussion of the matters as to which decisions are being made.
2.2 Conduct of Research Program. Within sixty (60) days after the
formation of the Research Committee, the Research Committee shall agree upon a
Research Program governing each party's activities during the remainder of 1999
and for the year 2000. As part of the Research Program, the Parties shall
jointly agree upon the definition and criteria for determining the association
and linkage to be used in the process described in Section 2.5. In addition, the
Research Program shall detail the Parties' responsibilities, the necessary
process to narrow the Nominated Locus to a size mutually agreed upon by the
Research Committee and a process to provide sequence coverage to the narrowed
interval (if the sequence is not present in the Celera Human Genome Database).
Such Research Program shall be in writing and shall be approved by the Parties.
As outlined in this Article 2 and subject to the terms and conditions set forth
in this Agreement, Celera and Gemini shall conduct the Research Program to
discover genes and markers in the Nominated Locus that are associated with a
Nominated Trait, for the purpose of licensing right in the Association Discovery
to Third Parties. The Research Program shall be under the direction and
supervision of the Research Committee. All work assignments to be
5.
carried out by the Parties shall be subject to Sections 6.1, 6.2, 6.3 and 6.4.
The Research Committee shall coordinate the Parties' efforts under the Research
Program and facilitate communication between the Parties. In the event the
Research Committee is unable to agree upon a particular matter within the
Research Program, then such matter shall be submitted for resolution as provided
in Article 11, except as expressly provided otherwise in this Agreement. If
within ninety (90) days after formation of Research Committee, the Parties are
unable to agree on a Research Program, either Party may terminate this
Agreement. Celera and Gemini shall conduct the Research Program in a prudent and
skillful manner and shall comply with all applicable laws, governmental
regulations and guidelines including, without limitation, current NIH guidelines
and any regulations or guidelines pertaining to research with recombinant DNA.
2.3 Designation of Nominated Traits and Nominated Loci. As part of the
Research Program, the Research Committee shall select * From time to time
thereafter, the Research Committee may designate * Nominated Locus and
Nominated Traits to be included in the Research Program. Disagreements under
this Section 2.3 shall not be subject to arbitration pursuant to Section 11.4.
2.4 Research Responsibilities. For purposes of the Research Program:
(a) Upon selection of each Nominated Locus, both Parties will
commence with the experiments according to the Research Program to narrow the
size of the Nominated Locus to a size agreed upon by the Research Committee.
Within thirty (30) days of achieving such narrowed interval, Celera will provide
Gemini with the complete Celera Consensus DNA Sequence information within such
interval from the Celera Human Genoma Database. In the event such information in
the current Celera Genoma Database does not comprise the entire consensus DNA
sequence information for the narrowed interval within Nominated Locus, Celera
shall then do the necessary sequencing of such locus pursuant to the Research
Program as provided for in Section 2.2 in order to complete such sequence
information. The delivery date of such complete Celera Consensus DNA Sequence
information will be extended for a limited period, by mutual agreement, to allow
Celera a reasonable opportunity to complete such directed sequencing in the
narrowed interval within the Nominated Locus. In the event that at the end of
such period, Celera has completed sequencing at least * but less than * of
the entire consensus DNA sequence information for the region, then upon Celera's
request, the Research Committee shall promptly agree upon an extension of the
time for delivery of such complete consensus DNA sequence information. In no
event shall such extension exceed sixty (60) days. Celera will utilize
computational methods to identify Joint Genes and Joint Markers in the Nominated
Locus. Gemini will provide DNA Samples (in forms and quantities to be set forth
in the Research Program), and each Party will provide the other party its
Know-How as is reasonably necessary for conducting work under the Research
Program, including without limitation, consensus DNA sequence, Celera Genes,
Celera Markers, Gemini Genes and Gemini Markers and related information from
GeneFind(TM)and PHENOBASE(TM).
(b) Gemini will be responsible for determining the genotype of the
DNA Samples provided pursuant to Section 2.4 as to Microsatellites within the
Nominated Locus, and Celera will be responsible for determining the genotype of
the DNA Samples provided pursuant
Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
6.
to Section 2.4 as to SNPs within the Nominated Locus as outlined in the Research
Program. The Research Committee shall determine the scope and time duration for
any genotyping activities. Responsibilities, if any, for genotyping of markers
other than Microsatellites and SNPs shall be determined by the Research
Committee. Upon completion of any such genotyping activities, each Party agrees
to deliver the genotype information to the other Party.
(c) Gemini and Celera will collaborate to generate and analyze
linkage data between Markers and Genes in the Nominated Locus for the Nominated
Trait in order to make Association Discoveries.
2.5 Determination of Associations. Either Party may request that the
Research Committee make a determination either: (a) based upon the genotyping
data obtained pursuant to Section 2.4(b) and the analysis under Section 2.4(c),
that a particular Gene or Marker, that has been identified under the Research
Program as potentially associated with the Nominated Trait (or another
phenotypic of disease trait), is an Association Discovery or an Additional
Association Discovery, or (b) that it is unlikely, to a reasonable degree of
certainty based on the results of the Research Program and other information
available to the Research Committee, that a particular Joint Gene or Joint
Marker is an Association Discovery. The Research Committee shall meet to make
the requested determination within thirty (30) days of such request. If the
Research Committee is unable to make a determination, it will prepare a workplan
for additional studies to be conducted by the Parties in order to allow the
requested determination, and the Parties will conduct such studies as determined
by the Research Committee. Upon receiving the results from the workplan, the
Research Committee will reconvene to make the requested determination. If the
Research Committee determines, upon a particular request, that the Gene or
Marker covered by such request is associated with the Nominated Trait or another
phenotypic or disease trait (as applicable), then such Gene or Marker shall be
deemed an Association Discovery or an Additional Association Discovery, as
applicable. If the Research Committee determines that it is reasonably clear
that a Joint Gene or Joint Marker is not an Association Discovery, such Gene or
Marker will be designated as a Non-Association Gene.
2.6 Transfer of Information and Material. Subject to the provisions of
Article 7, from time to time during the Research Program, each Party shall
provide to the other Party copies of any and all results, information, data and
tangible materials that result from the performance of the Research Program.
2.7 Use and Handling of Materials. All materials transferred by either
Party under this Agreement are provided solely for use in conducting the
Research Program and no other purpose. The parties acknowledge that materials
transferred under this Agreement are experimental in nature and each Party shall
use such transferred material with prudence and appropriate caution, since not
all of the materials' characteristics are known.
ARTICLE 3
EXCLUSIVITY; COVENANTS
3.1 Nominated Locus Information.
7.
(a) Save as permitted in Article 6, Gemini shall not provide to any
Third Party any information related to the Nominated Locus and/or the Nominated
Trait (insofar as it relates to the Nominated Locus), unless and until such
information becomes publicly available or Celera consents to the disclosure of
such information. In addition, Gemini shall not engage with any Third Party in
any project or work related to the Nominated Locus and/or the Nominated Trait
(insofar as it relates to the Nominated Locus).
(b) Subject to Sections 3.3 and 4.5 and save as permitted in Article
6, Celera shall not utilize any Gemini Know-How or Gemini Material in any
research or development work outside the Research Program without Gemini's prior
written consent, or, with respect to any Gemini Know-How, unless and until any
such Gemini Know-How is in the public domain.
(c) Save as permitted in Article 6, Gemini shall not utilize any
Celera Know-How in any research or development work outside of the Research
Program without Celera's prior written consent or unless any such Celera
Know-How is in the public domain.
3.2 Independent Programs. Except as provided in Section 3.1, each Party
may engage in and promote independent research programs, including the promotion
by Celera of its databases and services and promotion by Gemini of its
GeneFind(TM), PHENOBASE(TM) and other gene discovery programs.
3.3 Joint Technology Exclusivity. Except as permitted in Sections 6.1,
6.2, 6.3 or 6.4 or pursuant to the terms of a separate written agreement between
the Parties, neither Party shall pursue or engage in, either alone or with a
Third Party, the research, development, or commercialization of any invention
within the Joint Technology. However, Celera shall retain the right to use or
dislose the DNA sequence of Association Discoveries and Additional Association
Discoveries independently, so long as no such use involves, is based upon, uses,
pratices or relies in any manner or to any extent on any other Joint Technology.
ARTICLE 4
LICENSES; LIMITATIONS ON USE
4.1 Research License to Celerea. Subject to the terms of this Agreement,
Gemini grants to Celera a royalty-free, worldwide, nonexclusive license under
the Gemini Technology solely for Celera to perform its responsibilities under
the Research Program.
4.2 Research License to Gemini. Subject to the terms of this Agreement,
Celera grants to Gemini a royalty-free, worldwide, nonexclusive license under
the Celera Technology solely for Gemini to perform its responsibilities under
the Research Program.
4.3 Use of Joint Genes and Joint Markers. Gemini may use any and all
Joint Genes and/or Joint Markers solely for the purpose of performing its
responsibilites under the Research Program, and may not make any other use
thereof except as permitted in Section 6.1, 6.2 or 6.3. Gemini shall have no
right to assign, license or transfer any Celera Know-How and/or Patents that
claim such Joint Genes and Joint Markers to any Third Party, except as permitted
in Sections 6.1, 6.2 or 6.3.
8.
4.4 Assignment of Non-Association Genes. Gemini shall assign Celera its
complete right, title and interest in and to any Non-Association Genes and in
any Patents claiming Non-Association Genes.
4.5 SNP License. Subject to the terms of this Agreement, Gemini grants
to Celera a fully paid-up, royalty-free, worldwide, exclusive license to
Gemini's interest in the Joint Technology that specifically and solely
relates to single nucleotide polymorphism allele frequencies, to use such
allele frequency information for all purposes.
4.6 No Other Licenses.
(a) Except as expressly stated in this Agreement, nothing in this
Agreement, the licenses and assignment granted to Celera in Section 4.1, 4.4 and
4.5, nor the transfer to Celera of Gemini Material, Gemini Technology or Joint
Technology shall be deemed to grant or convey any other rights to Celera in, or
affect the legal title to, the Joint Technology, the Joint Genes, the Joint
Markers, the Gemini Technology ort the Gemini Material to Celera.
(b) Except as expressly stated in this Agreement, nothing in this
Agreement, the license granted to Gemini in Section 4.2, nor the transfer to
Gemini of Celera Technology or Joint Technology hereunder shall be deemed to
grant or convey any other rights to Gemini in, or affect the legal title to, the
Joint Technology, the Joint Genes, the Joint Markers or the Celera Technology.
4.7 No Other Uses of Technology, Material and Information.
(a) Celera shall not use the Joint Technology, the Gemini
Technology, or the Gemini Material for any purpose other than performance of the
Research Program, including, without limitation, any profit-making or commercial
purpose, in the absence of a separate written agreement between the Parties to
develop and/or commercialize the Joint Technology, as provided in Article 6.
(b) Gemini shall not use the Joint Technology, the Joint Genes, the
Joint Markers or the Celera Technology for any other purpose other than
performance of the Research Program, including, without limitation, any
profit-making or commercial purpose, in the absence of a separate written
agreement between the Parties to develop and/or commercialize the Joint
Technology, as provided in Article 6.
4.8 Unaffected Rights of Celera and Gemini.
(a) Gemini is free to use or distribute the Gemini Material or the
Gemini Technology to other commercial or non-commercial entities or persons and
to grant licenses under such Gemini Technology or Gemini material to such
entities or persons, except as prohibited by Section 3.1.
(b) Celera is free to use or distribute the Celera Technology, Joint
Genes and/or Joint Markers to other commercial or non-commercial entities or
persons and to grant licenses under such Celera Technology, Joint Genes and/or
Joint Markers to such entities or persons, except as prohibited by Section 3.1.
9.
ARTICLE 5
INVENTORSHIP AND OWNERSHIP OF INTELLECTUAL PROPERTY
5.1 Inventorship. Inventorship of inventions and other intellectual
property rights conceived and/or reduced to practice in connection with the
Research Program shall be determined in accordance with the patent laws of the
United States. The Parties shall reasonably cooperate in making all necessary
assignments and executing all necessary documents, an shall ensure that their
employees and agents make all necessary assignments and execute all necessary
documents, to protect the ownership rights set forth in this Article 5.
5.2 Gemini Ownership. Celera acknowledges and agrees that Gemini shall
retain ownership of all Gemini Material and Gemini Technology, subject to the
licenses granted under this Agreement and that Gemini shall have the sole right
to file, prosecute and maintain Patents claiming any inventions therein, at
Gemini's sole expense.
5.3 Celera Ownership. Gemini acknowledges and agrees that Celera shall
retain ownership of all Celera Technology, subject to the licenses granted to
Gemini under this Agreement, and that Celera shall own all information
concerning allele frequency of SNPs arising from the Research Program (and all
rights arising from such information) and that Celera shall have the sole right
to file, prosecute and maintain Patents claiming any inventions in any of the
foregoing, at Celera's sole expense.
5.4 Ownership of Joint Gene and Joint Marker. Joint Genes and Joint
Markers and all intellectual property rights herein shall be owned jointly by
the Parties, subject to the license and assignment provision in Sections 6.3,
6.4 and 10.5.
5.5 Ownership of Joint Technology. Joint Technology, including without
limitation all Association Discoveries and Additional Association Discoveries,
and all itellectual property rights therein shall be owned jointly by the
Parties, subject to the licenses granted under this Agreement.
5.6 Prosecution of Patents within Joint Genes and Joint Markers.
(a) With respect to each invention within Joint Genes and Joint
Markers that may be patentable, Celera shall have the obligation of filing,
prosecuting and maintaining the Patents claiming such invention. Patents to such
Joint Genes and/or Joint Markers shall be jointly assigned to Celera and Gemini.
(b) Celera shall be responsible for paying all costs and expenses of
filing, prosecuting and maintaining the Patents pursued by Celera under Section
5.6(a) above.
5.7 Prosecution of Patents within Joint Technology.
(a) With respect to each invention within Joint Technology that may
be patentable, Celera shall have the first right, but not the obligation, of
filing, prosecuting and maintaining the Patents claiming such invention. Upon
notification of an intent to file patent
10.
application claiming Joint Technology, Gemini will have fifteen (15) days to
inform Celera whether Gemini consents such filing.
(i) If Gemini consents to such filing within such fifteen (15)
day period, Celera shall reasonably consult with Gemini regarding such filing
and prosecution efforts, keep Gemini reasonably informed of the prosecution
(including without limitation by providing copies of all patent applications,
amendments and correspondence from U.S. and foreign patent offices) so as to
allow Gemini a reasonable amount of time to review such information, seek the
comments of Gemini on proposed applications, amendments, and responses to office
actions and make commercially reasonable efforts to accommodate such comments of
Gemini.
(ii) If Gemini does not consent within such fifteen (15) day
period or Gemini fails to respond within such period, Celera shall have the
right to proceed with the filing and prosecution of one or more patent
applications for such invention at its own expense and for its own benefit. If
Celera undertakes such filing and prosecution, Gemini shall promptly assign all
of its right, title and interest in and to such invention and any intellectual
property rights arising therefrom or any intellectual property rights to Celera
Genes or Celera Markers that may dominate the practicing of such invention to
Celera. Thereafter, Celera shall have the sole right, at its discretion, to
commercialize such invention and all intellectual property rights arising
therefrom, without obligation and free of the requirement of Article 6.
(b) Gemini may request that Celera take all necessary action to file
and prosecute a patent application on any particular invention within the Joint
Technology and shall provide one hundred twenty (120) days notice prior to any
critical date if possible. Upon such request, Celera shall have fifteen (15)
days to inform Gemini whether Celera will proceed with the requested filing or
prosecution, or if Celera will forego the same.
(i) If Celera elects to proceed, it shall take all
commercially reasonable efforts to accomplish such filing and prosecution and
proceed as set forth in Section 5.7(a).
(ii) If Celera elects not to proceed within such fifteen (15)
period, Gemini shall have the right to proceed with the filing and prosecution
of one or more patent applications for such invention at its own expense and for
its own benefit. If Gemini undertakes such filing and prosecution, Celera shall
promptly assign all of its right, title and interest in and to such invention
and any intellectual property rights arising therefrom to Gemini. Thereafter,
Gemini shall have the sole right, at its discretion to commercialize such
invention and all intellectual property rights arising therefrom, without
obligation to Celera and free of the requirements of Article 6.
(c) Celera shall be responsible for paying all costs and expenses of
filing, prosecuting and maintaining the Patents pursued by Celera under Section
5.7(a) and 5.7(b)(i) above. Except for Patents claiming single nucleotide
polymorphism allele frequencies and/or the use of such allele frequency
information (which shall be the sole responsibility of Celera), Gemini shall
reimburse Celera, based on invoices submitted at the end of each calendar
quarter, for one-half of the actual out-of-pocket expense incurred by Celera in
such filing,
11.
prosecution and maintenance of all such Patents. However, as to any particular
Patent in a country or countries, Gemini may decline, by written notice, to pay
its share of any such costs and expenses as to such Patent incurred after except
of such notice, and upon such notice; (i) Gemini shall have no further
obligation with respect to such Patent in such countries; (ii) Celera shall have
the right, in its sole discretion, to continue the prosecution and maintenance
of such Patent in the applicable countries at its own expense and for its own
benefit and (iii) Gemini shall promptly assign all of its right, title and
interest in and to such Patent in such countries. Thereafter, Celera shall have
the sole right, at its discretion, to commercialize such Patent in such
countries, without obligation to Gemini and free of the requirements of Article
6 with respect thereto.
5.8 Assistance in Prosecution and Maintenance; Execution of Documents.
Each Party shall reasonably assign the other Party in the filing, prosecution
and maintenance by the other Party (or both Parties jointly, as the case may be)
of Patents under section 5.7, including, without limitation, executing any
necessary powers of attorney. The Parties shall keep one another informed of the
progress of such prosecution by providing copies of all correspondence between
their patent counsel and the patent offices of the countries where such
applications were filed. Each Party shall promptly execute any documents or
instruments in connection with any assignments of its right, title and interest
in and to any invention within the Joint Technology and intellectual property
rights arising therefrom to the other Party under Section 5.7.
5.9 Infringement of Joint Patents by Third Parties.
(a) Each Party shall promptly notify the other in writing of any
alleged or threatened infringement of Joint Patents of which it becomes aware.
For all such joint Patents that are filed under Section 5.7(a)(i) or Section
5.7(b)(i), the Parties shall proceed as set forth in subsections (b) through (c)
below with respect to such Third Party infringement. As to any Joint Patent
which is filed under Section 5.7(a)(ii) or Section 5.7(b)(ii), the Party that
owns such Joint Patent shall have sole rights, at its sole discretion, to
enforce such patent.
(b) Celera shall have the first right, but not the obligation, to
bring, at its own expense, an appropriate action against any person or entity
directly contributorily infringing a Joint Patent. Gemini shall cooperate
reasonably with Celera in such action, including consenting to be a named Party
to such action and the furnishing of a power of attorney. Gemini shall have the
right to participate in any such action against a Third Party infringer through
counsel of its own choice and at its own expense.
(c) Within ninety (90) days of the discovery of any alleged or
threatened infringement, or receipt of the notice in Section 5.9(a), Celera
shall notify Gemini whether it intends to institute an infringement suit of take
other reasonable action to protect the relevant Joint Patent. If Celera elects
not to take action, or fails within ninety (90) days to so notify Gemini that it
intends to take action, then Gemini shall have the right to institute such suit
or take other appropriate action at its own expense, in its own name, Calera's
name, or both. In such event, Celera hereby agrees to cooperate reasonably with
Gemini in any such effort, including by consenting to be named Party to such
action and the furnishing of a power of attorney.
12.
(d) In the event that the above provisions of (a) and (b) are not
enforceable under the applicable laws, the Parties shall meet and discuss in
good faith how to respond to the infringement.
(e) Regardless of which Party brings the action, any recovery
obtained by settlement or otherwise shall be distributed as follows: (i) when
both Parties participate in the action, the Party bringing such action in the
absence of an agreement to the contrary first ensure that any reasonable
expenses incurred in assisting in such action (including counsel fees) by both
Parties are reimbursed, and (ii) thereafter, the net recovery shall be shared
between the Parties according to the ratio of their respective contributions to
the litigation costs. Both parties must consent in advance to any settlement,
which consent shall not be unreasonably withheld. When only one of the Parties
brings and prosecutes the action, such Party shall retain all recovery.
5.10 Infringement of Third Party Rights.
(a) in the event that any activity of either Party under the
Research Program or a product thereof becomes the subject of a claim for patent
or other proprietary right infringment by a Third Party ("Research Program
Infringement Claim"), the Parties shall promptly confer to discuss the claim.
(b) The Parties shall reasonably cooperate in conducting the defense
of any Research Program Infringemnet Claim. The Parties shall share equally
all reasonable costs and expenses of such defense, and both parties must
consent to any settlement of such defense, which consent shall not be
unreasonably withheld.
5.11 Exclusion of Rights.
(a) Nothing in this Agreement is intended or shall be interpreted as
granting to Gemini or any Third Party any right or interest in any intellectual
property (i) invented, discovered, developed, or otherwise created by any
business unit or affiliate of PE Corporation other than the Celera Genomics
Business Unit or (ii) acquired or licensed by PE Corporation through or for the
benefit of any business unit or affiliates of PE Corporation other than solely
for the Celera Genomics Business Unit.
(b) Nothing in this Agreement is intended to or shall be interpreted
as granting to Celera or any Third Party any right or interest in any
intellectual property (i) invented, discovered, developed, or otherwise created
by Gemini Holdings plc or any affiliate of Gemini Holdings plc other than Gemini
or (ii) acquired or licensed by Gemini Holding plc or any affiliate of Gemini
Holdings plc other than solely for the benefit of Gemini.
ARTICLE 6
COMMERCIALIZATION OF JOINT TECHNOLOGY
6.1 Licensing by Parties. The Parties intend to commercialize the Joint
Technology, (except for Patents prosecuted and maintained under Section
5.7(a)(ii) or Section 5.7(b)(ii) and inventions claimed thereby) by granting
licenses within appropriate fields of use to Third Parties
13.
to any intellectual property rights under such Joint Technology, associated
Joint Genes and/or Joint Markers (including without limitations all potential
investigative, diagnostic or therapeutic uses thereof) and any requisite Celera
Patents and Gemini Patents that would be infringed by the practice of such Joint
Technology but for the grant of such licenses, for development and
commercialization on terms to be mutually agreed by the Parties. Such
commercialization efforts shall be undertaken by the Commercialization Committee
established pursuant to Section 6.5. The Commercialization Committee shall have
responsibility for implementing and coordinating commercialization of any
specific Association Discovery and any specific Additional Association Discovery
(in each case, except as provided in Section 6.3 and 6.4), and/or any other
Joint Technology that either Party requests in writing be commercialized,
including without limitation the preparation of a plan to achieve the licensing
of such Joint Technology, the marketing of such license rights to such Joint
Technology, the pursuit of commercialization opportunities therefore, and the
negotiation of joint licensing agreements between the Parties and one or more
Third Party licenses as to such Joint Technology, associated Joint Genes and/or
Joint Markers and requisite Celera Patents and Gemini Patents, subject to each
Party's approval. The Commercialization Committee shall make diligent good faith
commercially reasonable efforts to exploit all such Joint Technology that either
Party requests to be commercialized.
6.2 Licensing of Additional Association Discoveries. If, prior to the
making of a particular Additional Association Discovery, and not in specific
contemplation or anticipation of making collaboration, a Party has entered into
a collaboration for a specific phenotypic trait other than a Nominated Trait
with a Third Party that would, in accordance with a written agreement between
such Party and such Third Party, include such Additional Association Discovery,
then such Party shall be entitled to license such Additional Associated
Discovery, any intellectual property rights therein, and any other Joint
Technology relating thereto or Patents claiming Joint Genes or Joint Makers, to
such Third Party, provided that such Party shall share all revenues received on
account of such license pursuant to Section 6.6. The license to the Third Party
shall be on terms and conditions negotiated by the Commercialization Committee
(unless certain terms or conditions are required by the written agreement with
such Third Party). Each Party shall list in Appendix A of this Agreement any
existing collaborations giving rise to any such Third Party rights, but
excluding the identity of any such Third Party. Such list shall be updated
quarterly.
6.3 Third Party License Obligations. If the Parties agree to the grant of
a license to a Third Party pursuant to Section 6.1 or a Party grants a license
as permitted under Section 6.2, each Party will grant the appropriate license to
such Third Party under its interest in the Joint Technology and under its
interest in Patents claiming Joint Genes, Association Discoveries, Additional
Association Discoveries and/or Joint Markers (to the extent that, but for such
license, such Patents would be infringed by the exercise of the development and
commercialization rights granted to such Third Party under the Joint
Technology). In addition, with respect to any written agreement with such Third
Party pursuant to Sections 6.1 and 6.2, (i) Gemini shall grant to such Third
Party a license under Gemini Patents that would, but for the grant of such
license, be infringed by the exercise of the development and commercialization
rights granted in such agreement to such Third Party under the Joint Technology,
and (ii) Celera shall grant to such Third Party a license under Celera Patents
that would, but for the grant of such license, be
14.
infringed by the exercise of the development and commercialization rights
granted in such agreement to such Third Party under the Joint Technology.
6.4 Licensing under Prior Obligations. Celera has entered into a
relationship with a Third Party which obligates Celera to offer the Third
Party an option to obtain an exclusive license to Celera's interest in
certain Celera Genes, related Celera Markers, Joint Genes, related Joint
Markers and/or Joint Technology within the fields of *. If Celera has
knowledge of any such Celera Genes, Celera Markers, Joint Genes, Joint
Markers and/or Joint Technology and any use thereof within such fields that
is subject to a Third Party obligation and conflicts with the Research
Program, Celera shall inform Gemini promptly. In the event such Third Party
exercises its rights to an exclusive license to any such Celera interest in
Joint Technology as contemplated under this Section, Celera and Gemini shall
share revenues received from such Third Party pursuant to Section 6.6.
6.5 Commercialization Committee. Within thirty (30) days after a request
by either Party to undertake the commercialization of Joint Technology, the
Parties shall establish a Commercialization Committee having a total of four (4)
members. Gemini and Celera each shall select and have the right to replace up to
two (2) representatives to serve as members of the Commercialization Committee,
each of whom shall have senior management responsibilities for the Party
appointing such member. Either Party may designate a substitute for a committee
member to participate in the event one of the Party's regular committee members
is unable to be present at a meeting. The Commercialization Committee shall
operate by consensus and shall seek to make decisions on the basis of consensus
after a discussion of the matters as to which decisions are being made. In the
event the Commercialization Committee is unable to agree upon a particular
matter, then such matter shall be submitted for resolution to an executive
officer of each Party for resolution by good faith discussion. If such matter is
not resolved by such officers within thirty (30) days of submission, and the
matter relates directly to the commercialization of a particular item of Joint
Technology, then the matter will be submitted to an independent expert in the
pharmaceutical (or other appropriate related) industry acting as an expert and
not as an arbitrator, the identity of whom shall be agreed upon by the
Commercialization Committee (or failing such agreement, by the independent
experts, where one such expert is identified and nominated by each of the
Parties in their respective discretion) who shall resolve the matter by
determining objectively what is the best means of commercializing the applicable
Joint Technology on a stand alone basis disregarding the individual subjective
needs or preferences of the Parties. In the absence of manifest error, such
determination shall be conclusive.
6.6 Revenue Sharing. The Parties will share all revenues, including but
not limited to research funding, upfront license fees, milestone fees and
royalty payments, received on account of Third Party licenses granted pursuant
to Section 6.1, 6.2 or 6.3 and as follows:
(a) the Parties will first be reimbursed, on a pro-rata
apportionment, for the cost of genotype determination work carried out under the
Research Program pursuant to Section 2.4(b) as follows:
Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
15.
(i) the fully-burdened cost of genotyping *. The cost of
genotyping shall be periodically reviewed by the Research Committee. Any
appropriate adjustment shall be made upon the approval by the Research
Committee.
(ii) the fully-burdened cost of Celera's re-sequencing
pursuant to the Research Program at costs reviewed and approved by the Research
Committee.
(iii) any unforeseen costs reasonably incurred by either Party
pursuant to the Research Program, provided such costs are reviewed by the
Research Committee.
(b) the Parties will also be reimbursed for the costs associated
with seeking Third Party commercialization of the Joint Technology. Such
reimbursement must be approved by the Commercialization Committee.
(c) the Parties will * the remainder of any such revenues as
follows: the Party receiving any such revenues will promptly give notice of such
receipt to the other Party. Within thirty (30) days of such receipt, the
receiving Party shall provide to the other Party a calculation of reimbursement
due to each Party pursuant to Section 6.5(a) and (b) and shall remit all amounts
owing to the other Party as reimbursement or share of remaining revenue.
ARTICLE 7
CONFIDENTIALITY
7.1 Confidential information. All confidential or proprietary information
disclosed by a Party under this Agreement shall be deemed "Confidential
Information" of such Party, including without imitation the following: the
existence if this Agreement; the transactions contemplated hereby and any
proposed or actual termination hereof (except as provided in Section 7.5), Joint
Technology (which shall be deemed Confidential Information of both Parties),
Joint Genes and Joint Markers (which shall be deemed Confidential Information of
Celera), Gemini Material and Gemini Technology (which shall be deemed
Confidential Information of Gemini), and Celera Technology (which shall be
deemed Confidential Information of Celera), and information received from Third
Parties in confidence.
7.2 Confidentiality. Except to the extent expressly authorized by this
Agreement or as otherwise agreed in writing by the Parties, each Party agrees
that, for the term of this Agreement and for five (5) years thereafter, it shall
keep confidential and shall not publish or otherwise disclose and shall not use
for any purpose other than as provided for in this Agreement any Confidential
Information of the other Party (and/or furnished to it by the other Party
pursuant to this Agreement) or any of the Joint Technology, unless the receiving
Party can demonstrate by competent proof that such Confidential Information:
(a) was already known to the receiving Party, other than under an
obligation of confidentiality, at the time of disclosure by the other Party, as
shown by pre-existing records;
Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
16.
(b) was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the receiving Party;
(c) became generally available to the public or otherwise part of
the public domain after its disclosure and other than through any act or
omission of the receiving Party in breach of such Agreement;
(d) was disclosed to the receiving Party by a Third Party, other
than in connection with a breach of an obligation to the other Party; or
(e) was independently discovered or developed by the receiving Party
without the use of Confidential Information belonging to the disclosing Party of
use of Joint Technology by persons who had no knowledge of or access thereto, as
shown by independent records.
7.3 Authorized Disclosure. Each Party may disclose Confidential
Information belonging to the other Party to the extent such disclosure is
reasonably necessary to:
(a) in the case of Joint Technology only, to license Third Parties
under Association Discoveries or Additional Association Discoveries pursuant to
Section 6.1 and 6.2:
(b) to fulfill an obligation under Section 6.3;
(c) consult with a Party's own legal advisors who are under
obligation to maintain the information in strict confidence beyond anything
which has already publicly disclosed by the Parties hereto;
(d) assert or enforce a party's rights under this Agreement;
and, in any event, with the consent of the other Party (which consent shall not
be unreasonably withheld).
7.4 Limitations on Disclosure. Notwithstanding the provisions of Sections
7.2 and 7.3, in the event a Party is required to make a disclosure of the other
Party's Confidential Information, it will make all commercially reasonable
efforts to give advance notice to the other Party of such disclosure requirement
and shall use commercially reasonable efforts to secure confidential treatment
of such information, including cooperation with the other Party to obtain a
protective order of the other Party's confidential Information. In any event,
the Parties agree to take all reasonable action to avoid disclosure of
Confidential Information hereunder.
7.5 Public Announcement. The Parties shall make an initial public
announcement as to the Agreement in a form mutually agreed by the Parties. Prior
to making any subsequent public announcements regarding this Agreement or the
transactions contemplated herein, each Party agrees to provide the other Party
with a reasonable opportunity to review and comment upon such proposed
announcement. Written agreement between the Parties shall be required prior to
any such subsequent public announcement and such agreement shall not be
unreasonably withheld.
17.
7.6 Employees; Agents. Each Party shall ensure that each of its employees,
consultants or other agents who has access to Confidential Information of the
other Party is bound to obligations of confidentiality and non-use as to such
Confidential Information at least equivalent in scope to those set forth in
Sections 7.1, 7.2 and 7.3.
7.7 Equitable Remedies. Each Party hereby acknowledges and agrees that in
the event of any breach of this Agreement, including, without limitation, the
actual or threatened disclosure or transfer of the other Party's Confidential
Information, without the prior express written consent of such other Party, such
other Party may suffer an irreparable injury, such that no remedy at law will
afford it adequate protection against, or appropriate compensation for, such
injury. Accordingly, each Party hereby agrees that the other Party may be
entitled to specific performance of the obligations under this Agreement, as
well as such further injunctive relief as may be granted by a court of competent
jurisdiction.
ARTICLE 8
REPRESENTATIONS, WARRANTIES AND COVENANTS
8.1 Mutual Representations and Warranties. Each Party hereby represents
and warrants:
(a) Such Party is duly organized and validly existing under the laws
of the state or country of its incorporation and has full corporate power and
authority to enter into this Agreement and to carry out the provisions hereof.
(b) Such Party is duly authorized to execute and deliver this
Agreement and to perform its obligations hereunder.
(c) This Agreement is a legal and valid obligation binding upon it
and enforceable in accordance with its terms. The execution, delivery and
performance of this Agreement by such Party does not, to the best of such
Party's knowledge after reasonable inquiry, conflict with any agreement,
instrument or understanding, oral or written, to which it is a Party or by which
it may be bound (except for Celera's relationship with a Third Party described
in Section 6.4), nor violate any law or regulation of any court, governmental
body or administrative or other agency having jurisdiction over it.
8.2 Disclaimer of Warranties. MATERIALS AND INFORMATION PROVIDED UNDER
THIS AGREEMENT ARE PROVIDED WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED. NEITHER PARTY
REPRESENTS OR WARRANTRS THAT THE USE OF ITS MATERIAL OR INFORMATION WILL NOT
INFRINGE ANY PATENT OR OTHER PROPRIETATRY RIGHT.
ARTICLE 9
INDEMNIFICATION
18.
9.1 Indemnification. Gemini and Celera shall each indemnify, hold harmless
and defend the other against any and all Third Party claims, suits, losses,
damage, costs, fees and expenses including its reasonable attorney fees
("Claims") resulting from the receiving Party's use of materials or information
as applicable transferred under this Agreement in accordance with the Agreement,
except to the extent that such Claim results from the gross negligence or
willful misconduct of, or a breach of this Agreement by the indemnified Party,
its directors, officers, employees, independent contractors or agents.
ARTICLE 10
TERM AND TERMINATION
10.1 Term. Unless earlier terminated pursuant to Sections 10.2 or 10.3,
this Agreement shall have a term of two (2) years from the Effective Date.
10.2 Termination for Material Breach. Either Party shall have the right to
terminate this Agreement for a material breach of this Agreement if the other
Party has not cured such breach within sixty (60) days following notice of
termination to the other Party.
10.3 Termination for Lack of Sequence Information. Gemini shall have the
right to terminate this Agreement if Celera fails to provide Gemini with the
complete consensus DNA sequence information in the Nominated Locus within the
thirty (30) day period set forth in Section 2.4(a) or such longer specified
period agreed to pursuant to Section 2.4(a).
10.4 Survival. Upon expiration or termination of this Agreement in
accordance with Section 10.1, Section 10.2 or Section 10.3, the following
provision shall remain in full force and effect: Sections 3.1 (Nominated Locus
Information), 3.3 (Joint Technology Exclusivity), 4.5 (SNP License), 4.6 (No
Other License), 4.7 (No Other Uses if Technology, Material and Information), and
4.8 (Unaffected Rights of Celera and Gemini), and Article 5 (Inventorship and
Ownership of Intellectual Property), 6 (Commercialization of Joint Technology),
7 (Confidentiality), 10 (Term and Termination) 11 (Dispute Resolution) and 12
(General Provisions).
10.5 Assignment Upon Termination. In the event this Agreement expires in
accordance with Section 10.1, is terminated in accordance with Section 10.2 (due
to a material breach by Gemini) or is terminated in accordance with Section
10.3 (Termination for Lack of Sequence Information), Gemini shall assign Celera
its complete interest in any Joint Genes and Joint Markers, subject to any
license granted pursuant to Sections 6.1, 6.2, 6.3 and 6.4 to Joint Genes and
Joint Markers.
10.6 Return of Confidential Information. Promptly upon any termination or
expiration of this Agreement, each Party will deliver to the other Party all
Confidential Information of the other Party, including any remaining material of
the other Party and any replications, progeny, derivatives, analogs or clones
thereof, all copies, replications and versions of all the Confidential
Information of the other Party in written, graphic, electronic or other form in
such Party's possession, except that each Party may retain one copy of all
Confidential Information received for archival purposes and each Party may
retain Joint Technology. Upon
19.
termination or expiration of this Agreement, each Party shall not use, allow to
be used, sell, transfer, disclose or otherwise provide access to any
Confidential Information of the other Party (except for Joint Technology) or any
replications, progeny, derivatives, analogs, clones or copies thereof, in
written graphic, electronic or other form.
10.7 Accrued Rights and Obligations. Termination on expiration of this
Agreement shall not affect any accrued rights or obligations of either Party.
ARTICLE 11
DISPUTE RESOLUTION
11.1 General. The Parties recognize that dispute as to certain matters may
from time to time arise during the term of this Agreement which relate to either
Party's rights and/or obligations hereunder or thereunder. It is the objective
of the Parties to establish procedures to facilitate the resolution of disputes
arising under this Agreement in an expedient manner by mutual cooperation. To
accomplish this objective, the Parties agree to follow the procedures set forth
in Article 11 if and when a dispute arises under this Agreement.
11.2 Negotiations. Unless otherwise specifically provided in this
Agreement, disputes among the Parties will be resolved by reference first to
their respective executive officers designated below or their successors, for
attempted resolution by good faith negotiations within fifteen (15) days after
notice is received. Said designated officers are as follows:
For Celera: Dr. Xxxxx Xxxxxxx
For Gemini: Dr. Xxxx Xxxxx
In the event the designated executive officers (or a comparable replacement
thereof) are not able to resolve such dispute, either Party may at anytime after
the fifteen (15) day period seek to resolve the dispute through means provided
in Section 11.3, except for issues that are required to be resolved pursuant to
Section 11.4.
11.3 Legal Proceedings. Any claim or controversy arising out of or related
to this Agreement or any breach hereof that is not resolved by the designated
committee and/or officer, or pursuant to Section 11.4 as appropriate, as
provided in this Agreement shall be submitted to a New York state or United
States federal court of competent jurisdiction, in either case sitting within
the boundaries of the United States District Court, Southern District of New
York, and the Parties hereby consent to the jurisdiction and venue of such court
for such claims and controversies. The parties each recognize their right to a
jury trial and hereby expressly waive such right and agree to submit any claim
or controversy arising out of or related to this contract or any breach hereof
to a trial by judge. Notwithstanding the foregoing, disputes regarding the
validity, scope or enforceability of patents shall be submitted to a court of
competent jurisdiction in the country where such patent has issued.
11.4 Arbitration of Certain Maters. Except as provided in paragraph (C)
below, any dispute controversy or claim arising out of or relating to the
validity, construction, enforceability or performance of this Agreement,
including disputes relating to alleged breach or to termination
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of this Agreement, other than disputes which are expressly prohibited herein
from being resolved by this mechanism, shall be settled by binding arbitration
as provided in this Section 11.4.
(a) A Party that intends to begin arbitration shall provide written
notice (the "Arbitration Request") to the other Party informing such other Party
of such intention and the issues to be resolved.
(b) Within ten (10) business days after providing the Arbitration
Request, the other Party may, by written notice to the Party initiating
arbitration, add additional issues to be resolved.
(c) Any dispute regarding the validity or enforceability of a Celera
Patent, Gemini Patent or Joint Patent relating to a Gene, Marker, Association
Discovery or Additional Association Discovery shall be submitted to a court of
competent jurisdiction in the country in which such Patent exists.
(d) Rules. The arbitration shall be administered by JAMS/Endispute
and conducted pursuant to the Comprehensive Rules for Commercial, Real Estate
and Construction Cases of JAMS/Endispute. Notwithstanding those rules, the
following provisions shall apply to the arbitration hereunder:
(i) Arbitrator; Proceedings; Award. The arbitration shall be
conducted by a single arbitrator with significant relevant experience in the
biotechnology and/or pharmaceutical (or other appropriate related) industry
("the Arbitrator"). No Party shall engage in ex parte contact with the
Arbitrator. The Parties intend to conclude the arbitration proceeding in no more
than eighteen (18) months from its beginning to the xxxx of the Arbitrator. The
Parties intend that each Party will have the opportunity to conduct complete
discovery with respect to all material issues involved in a dispute within the
framework provided above. The Arbitrator shall render an opinion setting forth
findings of fact and conclusions of law with the reason therefore stated. A
transcript of the evidence adduced at the hearing shall be made and, upon
request, shall be made available to each Party. The Arbitrator shall, in
rendering its decision, apply the substantive law of the State of New York,
without regard to its conflict of laws provisions, except that the
interpretation of and enforcement of this Section 11.4 shall be governed by the
United States Arbitration Act, 9 U.S.C. xx.xx 1-14, 201-208. The Arbitrator
shall apply the United States Federal Rules of Evidence to the hearing. The
proceeding shall take place in within New York City, New York. Each Party shall
bear its own legal fees, except that the fees of the Arbitrator and
JAMS/Endispute shall be paid by the losing Party, which shall be designated by
the Arbitrator, or split equally between the Parties if the Arbitrator is unable
to designate a losing Party. The Arbitrator is empowered to award any remedy
allowed by law, including money damages, prejudgment interest and attorney's
fees, and to grant final, complete, interim, or interlocutory relief.
Notwithstanding the foregoing, however, the Arbitrator may not award any
special, consequential, punitive, incidental or indirect damages arising out of
this Agreement, however caused, under any theory of liability.
(ii) Confidentiality. The arbitration proceeding, its
existence, the dispute submitted to arbitration, and the arbitrator's decision
shall be confidential and deemed Confidential Information of each Party, except
as required in connection with the enforcement of
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such award or as otherwise required by applicable law, and the Arbitrator shall
issue appropriate protective orders to safeguard such Confidential Information.
(iii) Authority of U.S. District Court. The United States
District Court, Southern District of New York, may enter judgment upon any
award. The Parties consent to the jurisdiction of such Court for the enforcement
of these provisions. In the event such Court lacks jurisdiction, then any court
having jurisdiction of this matter may enter judgment upon any award and provide
the same relief, and undertake the same review, as specified herein.
(iv) Provisional Remedies. Each Party has the right before or
during the arbitration to seek and obtain from the appropriate court provisional
remedies such as attachment, preliminary injunction, replevin, etc. to avoid
irreparable harm, maintain the status quo, or preserve the subject matter of the
arbitration.
ARTICLE 12
GENERAL PROVISIONS
12.1 Notices. Any notices required or permitted hereunder shall be given
to the appropriate Party at the address specified below or at such other address
as the Party shall specify in writing. Such notices shall be deemed given upon
personal delivery, one (1) day after the date such notice is provided by
overnight delivery service, three (3) day after the date of mailing when sent by
certified or registered mail, postage prepaid, or upon the date such notice is
transmitted by facsimile, provided that the Party providing such notice promptly
confirms receipt of such transmission with the other party by telephone. All
notices shall be addressed as follows:
If a Gemini : With a copy to:
Gemini Research Limited Cooley Xxxxxx LLP
162 Science Park 0000 Xx Xxxxxx Xxxx
Xxxxxx Xxxx Xxxx Xxxx, Xxxxxxxxxx 00000
Xxxxxxxxx, XX0 0XX Xxxxxx Xxxxxx
Xxxxxx Xxxxxxx Attn: Xxxxxxx X. Xxxx, Esq.
Attn: CEO Telephone: (000) 000-0000
Telephone: 00-0000-000-000 Fax (000) 000-0000
Fax: 00-0000-000-000
If to Celera:
Celera Genomics
00x Xxxx Xxxx Xxxxx
Xxxxxxxxx, XX 00000
Attn: Dr. Xxxxx Xxxxxxx (Executive
Vice President, Chief Business
Officer)
Telephone: 000-000-0000
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Fax: 240-453- 3800
Cc: Legal Department
Any Party may, by written notice to the other, designate a new address or
fax number to which notices to the Party giving the notice shall thereafter be
mailed or faxed.
12.2 Further Actions. Each Party agrees to execute, acknowledge and
deliver such further instruments and to o all such other acts may be necessary
or appropriate in order to carry out the purpose and intent of this Agreement.
12.3 No Trademark Rights. Except as otherwise provided herein or agreed to
in advance in writing, no right, express or implied, is granted by this
Agreement to use in any manner the names "Celera" or "Gemini", or any other
trade name or trademark of Celera or Gemini or the names of employees thereof,
for any purpose.
12.4 Force Majeure. No party shall be liable for any delay or failure of
performances to the extent such delay or failure is caused by circumstances
beyond its reasonable control and that by the exercise of due diligence it is
unable to prevent, provided that the Party claiming excuse uses its best efforts
to overcome the same.
12.5 Legal Compliance. The Parties shall review in good faith and
cooperate in taking such actions to ensure compliance of this Agreement with all
applicable laws, including without limitations, European Union Competition Law
and US Antitrust Law.
12.6 Entirety of Agreement. This Agreement is the entire agreement and
understanding of the Parties relating to the subject matter contained herein and
merges all prior discussions and agreements between them, and no Party shall be
bound by any representation other than as expressly stated in this Agreement, or
by a written amendment to this Agreement signed by authorized representatives of
each of the Parties.
12.7 Non-Waiver. The failure of the Party in any one or more instances to
insist upon strict performances of any of the terms and conditions of this
Agreement shall not be construed as a waiver or relinquishment, to any extent,
of the right to assert or rely upon any such term or conditions on any future
occasion.
12.8 Disclaimer of Agency. This Agreement shall no constitute any Party
the legal representative of agent of another, nor shall any Party have the right
or authority to assume, create, or incur any Third Party liability or obligation
of any kind, express or implied, against or in the name of or on behalf of
another except as expressly set forth this Agreement.
12.9 Severability. If any provision or part thereof of this Agreement is
declared invalid by any court of competent jurisdiction, or any government or
other agency having jurisdiction over either Celera or Gemini deems any
provision or part thereof to be contrary to any antitrust or competitive laws,
then such declaration shall not affect the remainder of the provision or other
provisions. To the extent possible the Parties shall revise such invalidated
provision or part thereof in a manner that will render such provision valid
without impairing the Parties' original interest.
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12.10 Affiliates; Assignment. A Party may discharge any obligations and
exercise any rights hereunder through any company or other entity controlled by,
controlling or under common control with such Party (an "Affiliate") provided
such Affiliate is not a competitor of the other Party. References to a Party
shall include any Affiliate of that Party to whim such an assignment or
delegation has been made or ratified. Except as provided in this Sections 12.10,
neither Party shall delegate duties of performance or assign, in whole or in
part, rights or obligations under this Agreement without the prior written
consent of the other Party, and any attempted delegation or assignment without
such written consent shall be of no force or effect, except that each Party
shall have the right to so delegate and assign to the surviving entity pursuant
to a merger or acquisition of such Party, or to the acquirer of substantially
all assets of such Party. Subject to the restrictions contained in the preceding
sentence, this Agreement shall be binding upon the successors and assigns of the
Parties.
12.11 Headings. The headings contained in this Agreement have been added
for convenience only and shall not be construed as limiting or used in the
interpretation of this Agreement.
12.12 Limitation of Liability. No Party shall be liable to another for
indirect, incidental, consequential or special damages, including but not
limited to lost profits, arising from or relating to any breach of this
Agreement, regardless of any notice of the possibility of such damages. Nothing
in this Section is intended to limit or restrict the indemnification rights or
obligations of any Party.
12.13 Governing Law. This Agreement shall be governed by the laws of New
York, as those laws are applied to contracts entered into and to be performed
entirely in New York by New York residents, excluding its choice of law rules
and except as otherwise provided in Section 11.4 with respect to arbitrations.
12.14 Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be an original and all of which shall
constitute together the same document.
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IN WITNRESS WHEREOF, the parties have by duly authorized persons, executed
this Agreement, as of the date first above written.
GEMINI RESEARCH LIMITED PE CORPORATION
By: /s/ Xxxx Xxxxx By: /s/ Xxxxx Xxxxxxx
--------------------------- ------------------------------------
(signature) (signature)
Name: Xxxx Xxxxx Name: Xxxxx Xxxxxxx, Ph.D.
Title: Chief Executive Officer Title: E.V.P. and Chief Business Officer
Date: Date:
-------------------------- ---------------------------------
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