EXHIBIT 10.27
RESTATED COLLABORATION AGREEMENT
THIS RESTATED COLLABORATION AGREEMENT (this "Agreement"), dated as of
November 27, 2000, is made between ABGENIX, INC., a Delaware corporation
("ABX"), having a place of business at 0000 Xxxxxxxxx Xxxxxx, Xxxxxxx,
Xxxxxxxxxx 00000, and CURAGEN CORPORATION, a Delaware corporation ("CuraGen"),
having a place of business at 000 Xxxx Xxxxx Xxxxx, Xxx Xxxxx, Xxxxxxxxxxx
00000, with respect to the following facts:
RECITALS
A. The parties entered into the Collaboration Agreement effective as of
December 8, 1999 (the "Original Agreement").
B. The parties desire to amend the Original Agreement in certain respects,
and for convenience to restate the Original Agreement, on the terms and
conditions set forth below.
NOW THEREFORE, in consideration of the foregoing premises and the mutual
covenants set forth below, the parties amend the Original Agreement and agree as
follows:
1. DEFINITIONS
For purposes of this Agreement, the terms set forth in this Article 1 shall
have the respective meanings set forth below:
1.1 "ABX In-License" shall mean a license, sublicense or other
agreement under which ABX acquired rights to the ABX Patent Rights or ABX Know-
How.
1.2 "ABX Know-How" shall mean, collectively, all inventions,
discoveries, data, information, methods, techniques, technology and other
results, whether or not patentable but which are not generally known, regarding
ABX Technology and Information. All ABX Know-How shall be Confidential
Information of ABX.
1.3 "ABX Licensed Antigens" shall mean all ABX Optioned Antigens for
which ABX has exercised an option to obtain a commercial license pursuant to
Article 7 below, and "ABX Licensed Antigen" shall mean any one of the ABX
Licensed Antigens.
1.4 "ABX Optioned Antigens" shall mean all antigens which are selected
from the Eligible Antigens by ABX pursuant to Article 5 below, for which CuraGen
has the right to grant ABX the commercial license under Article 7 below, and
which are not Licensed Antigens, and "ABX Optioned Antigen" shall mean any one
of the ABX Optioned Antigens.
1.5 "ABX Patent Rights" shall mean, collectively, (a) all patents and
patent applications listed on Exhibit A and any foreign counterparts claiming
priority thereof; (b) all patent applications heretofore or hereafter filed in
any country which claim (and only to the extent they claim) ABX Technology and
Information or the use thereof; (c) all patents that have issued or in the
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
future issue from any of the foregoing patent applications, including without
limitation utility models, design patents and certificates of invention; and (d)
all divisionals, continuations, continuations-in-part, reissues, renewals,
supplemental protection certificates, extensions or additions to any such
patents and patent applications.
1.6 "ABX Product" shall mean, with respect to any ABX Licensed Antigen,
any product comprising (a) an Antibody which binds to such ABX Licensed Antigen;
or (b) Genetic Material that encodes such an Antibody wherein, in respect of
each ABX Product, said Genetic Material does not encode multiple antibodies.
1.7 "ABX Technology and Information" shall mean, collectively,
[_____________________________].
1.8 "Affiliate" shall mean, with respect to any person or entity, any
other person or entity which controls, is controlled by or is under common
control with such person or entity. A person or entity shall be regarded as in
control of another entity if it owns or controls at least fifty percent (50%) of
the equity securities of the subject entity entitled to vote in the election of
directors (or, in the case of an entity that is not a corporation, for the
election of the corresponding managing authority).
1.9 "Antibody" shall mean a composition comprising (a) a whole
antibody, or any fragment thereof, derived from the XenoMouse Animals hereunder;
or (b) a whole antibody, or any fragment thereof, which is derived from a whole
antibody or any fragment thereof, which itself is derived from the XenoMouse
Animals hereunder or which is derived from the Genetic Material encoding or
derived from, or the amino acid sequences of or derived from, a whole antibody
or any fragment thereof, which itself is derived from the XenoMouse Animals
hereunder.
1.10 "Antibody Cells" shall mean all cells that contain, express, or
secrete antibodies or Genetic Materials that encode antibodies.
1.11 "Antibody Equivalent" shall mean [______________________].
1.12 "Antigen Specific Materials and Information" shall mean with
respect to an Antigen, collectively, [_________________________].
1.13 "Antigens" shall mean, collectively, the Research Antigens,
Eligible Antigens, Optioned Antigens and Licensed Antigens, and "Antigen" shall
mean any one of the Antigens.
1.14 "BLA" shall mean a Biologics License Application, Product License
Application, New Drug Application, or similar application for marketing approval
of a product for use in the Therapeutic Field submitted to the FDA, or its
foreign equivalent.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
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1.15 "Commercial Field" shall mean, collectively, the Therapeutic Field
and the Diagnostic Field.
1.16 "Confidential Information" shall mean, with respect to a party,
all information of any kind whatsoever, and all tangible and intangible
embodiments thereof of any kind whatsoever, which is disclosed by such party to
the other party pursuant to this Agreement, and (if disclosed in writing or
other tangible medium) is marked or identified in writing as confidential at the
time of disclosure to the receiving party or (if otherwise disclosed or if not
so marked or identified in writing) is identified as confidential at the time of
disclosure to the receiving party and is summarized and identified as
confidential in writing or by electronic means within thirty (30) days after
such disclosure. Notwithstanding the foregoing, Confidential Information of a
party shall not include information which, and only to the extent, the receiving
party can establish by written documentation or electronic records (a) has been
publicly known prior to disclosure of such information by the disclosing party
to the receiving party; (b) has become publicly known without fault on the part
of the receiving party, subsequent to disclosure of such information by the
disclosing party to the receiving party; (c) has been received by the receiving
party at any time from a source, other than the disclosing party, rightfully
having possession of and the right to disclose such information free of
confidentiality obligations; (d) has been otherwise known by the receiving party
free of confidentiality obligations prior to disclosure of such information by
the disclosing party to the receiving party; or (e) has been independently
developed (as demonstrated by contemporaneous written or electronic evidence
maintained in the ordinary course of business of the receiving party) by
employees or agents of the receiving party without access to or use of such
information disclosed by the disclosing party to the receiving party.
1.17 "CuraGen Databases" shall mean, collectively, all data,
information and materials (other than Research Program Technology and
Information) related to human Genetic Materials and the expression products
thereof which as of the Effective Date are contained in CuraGen's SeqCalling
Database or which at any time during the term of this Agreement are added
thereto. For purposes hereof, the CuraGen SeqCalling Database shall include
without limitation the following data, information, and materials possessed,
acquired or developed by CuraGen as of the Effective Date or at any time during
the term of this Agreement, the acquisition or development of which has not been
sponsored or directed by a commercial Third Party to whom rights in such data,
information, and materials have been granted in advance: (i) xxxxxxxx xxxx with
respect to human Genetic Materials (including expressed sequences) and
expression products thereof; (ii) the tissue or cellular distribution relating
to such Genetic Materials, their expression and expression products; (iii)
literature publications and patent status (i.e., information related to CuraGen
filing dates, priority of claim(s) and any related patents and patent
applications, and any information known by CuraGen regarding Third Party patents
and patent applications) related to such Genetic Materials and expression
products; (iv) the biological function of such Genetic Materials and expression
products; (v) clones, expression products, proteins, cell lines and vectors
related to such Genetic Materials and expression products, and (vi) all of the
data, information, and materials described in the foregoing clauses (i) to (v)
with respect to any homologs of such Genetic Materials and expression products.
As of the Effective Date, the CuraGen SeqCalling Database includes
[_______________________________].
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
3
1.18 "CuraGen Exclusive Antigen" shall mean an antigen (other than a
Research Antigen) or Research Antigen that is designated by CuraGen as a CuraGen
Exclusive Antigen in accordance with Section 4.8.
1.19 "CuraGen Know-How" shall mean, collectively, all inventions,
discoveries, data, information, methods, techniques, technology and other
results, whether or not patentable but which are not generally known, regarding
CuraGen Technology and Information. All CuraGen Know-How shall be Confidential
Information of CuraGen.
1.20 "CuraGen Licensed Antigen" shall mean all CuraGen Optioned
Antigens for which CuraGen has exercised an option to obtain a commercial
license pursuant to Article 7 below, and "CuraGen Licensed Antigen" shall mean
any one of the CuraGen Licensed Antigens.
1.21 "CuraGen Optioned Antigens" shall mean all antigens which are
selected from the Eligible Antigens by CuraGen pursuant to Article 5 below, for
which ABX has the right to grant CuraGen the commercial license under Article 7
below, and which are not Licensed Antigens, and "CuraGen Optioned Antigen" shall
mean any one of the CuraGen Optioned Antigens.
1.22 "CuraGen Patent Rights" shall mean, collectively, (a) all patent
applications heretofore or hereafter filed in any country which claim (and only
to the extent they claim) CuraGen Technology and Information or the use thereof;
(b) all patents that have issued or in the future issue from any of the
foregoing patent applications, including without limitation utility models,
design patents and certificates of invention; and (c) all divisionals,
continuations, continuations-in-part, reissues, renewals, supplemental
protection certificates, extensions or additions to any such patents and patent
applications.
1.23 "CuraGen Product" shall mean, with respect to any CuraGen Licensed
Antigen, any product comprising (a) an Antibody which binds to such CuraGen
Licensed Antigen, or (b) Genetic Material that encodes such an Antibody wherein,
in respect of each CuraGen Product, said Genetic Material does not encode
multiple antibodies.
1.24 "CuraGen Technology and Information" shall mean, collectively,
[______________________________].
1.25 "Derived" or "derived" shall mean obtained, developed, created,
synthesized, designed, derived or resulting from, based upon or otherwise
generated (whether directly or indirectly, or in whole or in part).
1.26 "Diagnostic Field" shall mean the use of Products for the
following human medical purposes: the detection, diagnosis and monitoring of any
disease, predisposition, state or condition in humans or the selection of a
particular patient(s) to receive a particular therapeutic treatment(s).
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
4
1.27 "Effective Date" shall mean December 8, 1999.
1.28 "Eligible Antigen" shall mean a Research Antigen which satisfies
the criteria of Exhibit B as determined by the JMC pursuant to Section 3.2 below
or the arbitrator pursuant to Section 3.5 below, and which is not an Optioned
Antigen.
1.29 "Excluded ABX Technology" shall mean, collectively,
[____________________________].
1.30 "Excluded CuraGen Technology" shall mean, collectively,
[____________________________].
1.31 "FDA" shall mean the United States Food and Drug Administration or
its successor agency.
1.32 "First Commercial Sale" shall mean, with respect to each Product
in each country, the date of first commercial sale (other than for purposes of
obtaining regulatory approval) of such Product by a party hereto, its
Sublicensee or their respective Affiliates to an unaffiliated Third Party in
such country.
1.33 "Gene Therapy" shall mean the treatment or prevention of a disease
by means of Ex Vivo or In Vivo delivery (via viral or nonviral gene transfer
systems) of compositions comprising either (a) Genetic Material that encodes an
Antibody, wherein such Antibody serves a material function in the treatment or
prevention of such disease; (b) Genetic Material that encodes a moiety other
than an Antibody, wherein the moiety serves a material function in the treatment
or prevention of such disease and wherein such composition incorporates an
Antibody (or Genetic Material that encodes such Antibody), which Antibody is
used as a targeting vehicle for the composition; or (c) Genetic Material that
encodes an Antibody that serves a material function in the treatment or
prevention of such disease, wherein such composition also incorporates an
Antibody (or Genetic Material that encodes such Antibody) which Antibody is used
as a targeting vehicle for the composition. "Ex Vivo" delivery shall mean the
introduction, outside of the body of a human, of such compositions into a cell,
tissue, organoid, or organ, followed by the administration of the cell, tissue,
organoid, or organ which contains such introduced compositions into the body of
the same (autologous) or different (allogeneic) human, without limitation as to
the formulation, anatomic site, or route of administration or the use of
encapsulation or other devices for such administration. "In Vivo" delivery shall
mean the introduction of such compositions into an individual, without
limitation as to the formulation, anatomic site, or route of administration or
the use of encapsulation or other devices for such administration.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
5
1.34 "Genetic Material" shall mean a nucleic acid, including DNA, RNA,
and nucleic acid complementary and reverse complementary to such nucleotide
sequences or nucleic acid, whether coding or noncoding and whether intact or a
fragment.
1.35 "GenPharm Cross License Agreement" shall mean that certain Cross
License Agreement entered into by and between ABX, JTI, XT, Cell Genesys, Inc.,
and GenPharm International, Inc., effective as of March 26, 1997, as the same
may be amended from time to time.
1.36 "Human Antibody Equivalent" shall mean [_______________________].
1.37 "IND" shall mean an Investigational New Drug application filed
with the FDA, or any similar filing with any foreign regulatory authority, to
commence human clinical testing of any Product in any country.
1.38 "JMC" shall mean the joint management committee comprising
representatives of ABX and CuraGen described in Section 3.1 below.
1.39 "JTI" shall mean Japan Tobacco Inc., a Japanese corporation.
1.40 Licensed Antigens" shall mean, collectively, the ABX Licensed
Antigens and CuraGen Licensed Antigens, and "Licensed Antigen" shall mean any
one of the Licensed Antigens.
1.41 "Licensed ABX Intellectual Property" shall mean ABX's rights in
the ABX Patent Rights, ABX Know-How, Research Program Patent Rights and Research
Program Know-How; provided, however, that the Licensed ABX Intellectual Property
(a) is all to the extent and only to the extent that ABX has the right to grant
(sub)licenses thereunder (including without limitation to the extent permitted
under the applicable ABX In-Licenses); (b) is expressly subject to the ABX In-
Licenses; and (c) shall exclude the Excluded ABX Technology.
1.42 "Licensed CuraGen Intellectual Property" shall mean CuraGen's
rights in the CuraGen Patent Rights, CuraGen Know-How, Research Program Patent
Rights and Research Program Know-How; provided, however, that the Licensed
CuraGen Intellectual Property (a) is all to the extent and only to the extent
that CuraGen has the right to grant (sub)licenses thereunder; and (b) shall
exclude the Excluded CuraGen Technology.
1.43 "Licensed Intellectual Property" shall mean, collectively, the
Licensed ABX Intellectual Property and the Licensed CuraGen Intellectual
Property.
1.44 "Net Sales" shall mean, with respect to a Product, the gross sales
price charged by a party, its Sublicensees and their respective Affiliates for
sales of such Product to non-Affiliate customers, less
[_____________________________].
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
6
1.45 "Non-Mining Antigen" shall mean an antigen first developed,
identified or acquired by CuraGen, (other than through research efforts in
connection with the CuraGen Databases), whether from hypothesis driven research
or otherwise, that (i) CuraGen reasonably believes is not the subject of any
Third Party intellectual property rights (or the parties mutually believe, as
evidenced by written agreement, that a license to all applicable Third Party
intellectual property rights can be reasonably obtained), (ii) CuraGen
reasonably believes could be subject (or the parties mutually believe, as
evidenced by written agreement, that the antibodies to which could be subject)
to a proprietary position of CuraGen, (iii) CuraGen reasonably believes would be
available hereunder as a Research Antigen, and (iv) CuraGen reasonably believes
is reasonably likely to have potential as a target for antibody-based
therapeutics.
1.46 "Non-Mining Research Antigen" shall mean a Research Antigen that
is a Non-Mining Antigen.
1.47 "Optioned Antigens" shall mean, collectively, the ABX Optioned
Antigens and CuraGen Optioned Antigens, and "Optioned Antigen" shall mean any
one of the Optioned Antigens.
1.48 "Patent Claim" shall mean a claim of a pending patent application
or issued and unexpired patent included within the Licensed Intellectual
Property which has not been held unenforceable or invalid by a court or other
governmental agency of competent jurisdiction, unappealable or unappealed within
the time allowed for appeal and which has not been admitted to be invalid or
unenforceable through reissue, disclaimer or otherwise.
1.49 "Person" shall mean an individual, corporation, partnership,
limited liability company, trust, business trust, association, joint stock
company, joint venture, pool, syndicate, sole proprietorship, unincorporated
organization, governmental authority or any other form of entity not
specifically listed herein.
1.50 "Phase I Clinical Trial" shall mean a human clinical trial in any
country that is intended to initially evaluate the safety and/or pharmacological
effect of a Product in subjects, or that would otherwise satisfy requirements of
21 CFR 312.21(a), or its foreign equivalent.
1.51 "Phase II Clinical Trial" shall mean a human clinical trial in any
country that is intended to initially evaluate the effectiveness of a Product
for a particular indication or indications in patients with the disease or
indication under study, or that would otherwise satisfy requirements of 21 CFR
312.21(b) , or its foreign equivalent.
1.52 "Phase III Clinical Trial" shall mean a pivotal human clinical
trial in any country the results of which could be used to establish safety and
efficacy of a Product as a basis for a marketing approval application submitted
to the FDA, or that would otherwise satisfy requirements of 21 CFR 312.21(c), or
its foreign equivalent.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
7
1.53 "PMA" shall mean a Pre-Market Approval Application, 510(k) notice
or similar application for marketing approval of a product for use in the
Diagnostic Field submitted to the FDA, or its foreign equivalent.
1.54 "Products" shall mean, collectively, the ABX Products and the
CuraGen Products, and "Product" shall mean any one of the Products.
1.55 "Program Year" shall mean any period commencing on the Effective
Date or any anniversary thereof, and continuing through the first anniversary
thereof, during the term of the Research Program.
1.56 "Research Antigens" shall mean, collectively, the antigens which
are selected by the JMC, ABX or CuraGen pursuant to Section 4.3 below for use in
the Research Program, for which ABX and CuraGen have the right to grant the
other party the commercial license under Article 7 below, and which are not
Optioned Antigens or Licensed Antigens, and "Research Antigen" shall mean any
one of the Research Antigens.
1.57 "Research Field" shall mean the use of materials derived from
XenoMouse Animals that are immunized with Research Antigens solely for the
creation, identification, analysis, research, characterization and preclinical
development of potential Products for use in the Commercial Field.
1.58 "Research Program" shall mean the collaborative research program
described in Section 4.4 below
1.59 "Research Program Know-How" shall mean, collectively, all
inventions, discoveries, data, information, methods, techniques, technology and
other results, whether or not patentable but which are not generally known,
regarding Research Program Technology and Information or the use thereof.
1.60 "Research Program Technology and Information" shall mean, with
respect to an Antigen, collectively, [_____________________________].
1.61 "Research Program Patent Rights" shall mean, collectively, (a) all
patent applications hereafter filed in any country which claim Research Program
Technology and Information or the use thereof; (b) all patents that have issued
or in the future issue from any of the foregoing patent applications, including
without limitation utility models, design patents and certificates of invention;
and (c) all divisionals, continuations, continuations-in-part, reissues,
renewals, supplemental protection certificates, extensions or additions to any
such patents and patent applications.
1.62 "Royalty Commencement Date" shall mean, with respect to each
Product in each country, the date of the First Commercial Sale of such Product
in such country.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
8
1.63 "Sublicense" shall mean, with respect to a Product, an agreement
or arrangement pursuant to which a (sub)license or distribution right regarding
such Product has been granted to a Sublicensee.
1.64 "Sublicense Income" shall mean, with respect to a Product, the
aggregate cash consideration, and the fair market value of the non-cash
consideration, received by a party or its Affiliate in connection with the
Sublicense of such Product, excluding consideration received (a) in
reimbursement of such party's or its Affiliate's cost to perform research,
development or similar services conducted for such Product after the grant of
such Sublicense, (b) in reimbursement of patent or other out-of-pocket expenses
on such Product, or (c) in consideration for the purchase of any securities of
such party or its Affiliates at a price equal to no more than 120% of the then
fair market value of such securities).
1.65 "Sublicensee" shall mean a Third Party that is granted (a) a
(sub)license under the Licensed Intellectual Property to develop, make, use,
offer for sale, sell or import a Product in the Commercial Field; or (b) a right
to distribute a Product in the Commercial Field, provided that such Third Party
is responsible for marketing and promotion of such Product within the applicable
territory.
1.66 "Technology and Information" shall mean, collectively, the ABX
Technology and Information, CuraGen Technology and Information and Research
Program Technology and Information.
1.67 "Therapeutic Field" shall mean the use of Products for the
following human medical purposes: the prevention or treatment of any disease,
state or condition in humans.
1.68 "Third Party" shall mean any Person other than ABX, CuraGen and
their respective Affiliates.
1.69 "XenoMouse Animals" shall mean the transgenic mice capable of
producing human antibodies when immunized by ABX with an antigen.
1.70 "XT" shall mean Xenotech, L.P., a California limited partnership.
1.71 "XT Master Research License and Option Agreement" shall mean that
certain Master Research License and Option Agreement entered into by and among
XT, JTI and Cell Genesys, Inc. effective as of June 28, 1996, and subsequently
assigned to ABX by Cell Genesys, Inc., as the same may be amended from time to
time.
1.72 "XT/ABX Product License Agreement" shall mean a license agreement
between XT and ABX entered into pursuant to the XT Master Research and License
Agreement granting to ABX a license (with the right to grant sublicenses) to
commercialize Products in one or more territories.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
9
2. REPRESENTATIONS AND WARRANTIES
Each party hereby represents and warrants to the other party as follows:
2.1 Existence. Such party is duly organized, validly existing and in
---------
good standing under the laws of the state in which it is organized.
2.2 Authorization and Enforcement of Obligations. Such party: (a) has
--------------------------------------------
the requisite power and authority and the legal right to enter into this
Agreement and to perform its obligations hereunder; and (b) has taken all
requisite action on its part to authorize the execution and delivery of this
Agreement and the performance of its obligations hereunder. This Agreement has
been duly executed and delivered on behalf of such party, and constitutes a
legal, valid, binding obligation enforceable against such party in accordance
with its terms except as enforcement may be limited by equitable remedies or
defenses and applicable bankruptcy laws.
2.3 No Consents. All necessary consents, approvals and authorizations
-----------
of all governmental authorities and other persons required to be obtained by
such party in connection with this Agreement have been obtained.
2.4 No Conflict. The execution and delivery of this Agreement and the
-----------
performance of such party's obligations hereunder (a) do not conflict with or
violate any requirement of applicable laws or regulations; and (b) do not
conflict with, or constitute a default under, any contractual obligation of it.
2.5 ABX In-Licenses. ABX has made available to counsel to CuraGen
---------------
correct copies of ABX In-Licenses, as in effect on the Effective Date.
2.6 Disclaimer. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS
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AGREEMENT, NEITHER PARTY MAKES ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES OF
ANY KIND REGARDING TECHNOLOGY AND INFORMATION, PRODUCTS OR LICENSED INTELLECTUAL
PROPERTY EITHER EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, NONINFRINGEMENT OR VALIDITY.
ALL TECHNOLOGY AND INFORMATION IS PROVIDED "AS IS."
3. JOINT MANAGEMENT COMMITTEE
3.1 Composition. The JMC shall comprise three (3) named representatives
-----------
of CuraGen and three (3) named representatives of ABX. Each party shall notify
the other party in writing of its initial representatives to the JMC within ten
(10) days after the Effective Date, and may substitute one or more
representatives from time to time effective upon written notice to the other
party.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
10
3.2 Responsibilities. The JMC shall be responsible for (a) selecting
antigens from the CuraGen Databases as Research Antigens; (b) monitoring and
reporting the progress of the Research Program; (c) recommending to the parties
any modifications to the Research Program with respect to any or all of the
Research Antigens; (d) facilitating open and frequent exchange of information
between the parties regarding the Research Program; (e) reviewing the data and
information regarding Research Antigens and determining whether a Research
Antigen satisfies the criteria set forth in Exhibit B; and (f) making selections
of Eligible Antigens under Article 5 below; and (g) discussing and making
recommendations regarding the application of CuraGen's capacity and resources to
generate potential antibody targets other than from the CuraGen Databases.
3.3 Meetings. The JMC shall meet in person (unless otherwise agreed on
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a meeting-by-meeting basis) not less than once each calendar quarter during the
term of the Research Program, on such dates and at such times and places as
agreed to by CuraGen and ABX, alternating between Fremont, California and New
Haven, Connecticut, or such other locations as the parties mutually agree. For
all other meetings, the JMC may meet by telephonic or video conference or in
person, as the parties mutually agree. Each party shall have the right to have
one (or such greater number as the parties mutually agree) employee or agent who
is not a member of the JMC attend each meeting of the JMC as a non-voting
observer. Each party shall be responsible for all its own personnel, travel and
related expenses relating to JMC meetings. The first meeting of the JMC shall
take place at the offices of Abgenix as soon as practicable after the Effective
Date, but in no event later than thirty (30) days after the Effective Date.
3.3.1 Within thirty (30) days following each JMC meeting, the
party hosting the meeting (or entitled to host the meeting, if held by
telephonic or video conference or at a location other than Fremont, California
or New Haven, Connecticut) shall prepare and provide to the other party mutually
acceptable, reasonably detailed written minutes describing (a) all matters
reviewed or considered by the JMC; (b) all discussions regarding potential and
actual Antigens; and (c) all determinations and actions of the JMC and the
reasons therefor. Such minutes shall be the Confidential Information of both ABX
and CuraGen; provided, however, that to the extent that such minutes relate to
the Optioned Antigens and Licensed Antigens of a party they shall be the
Confidential Information solely of such party.
3.3.2 Not less than ten (10) days prior to each regularly
scheduled quarterly meeting of the JMC, each party shall provide the other party
with all data and information, not previously disclosed to the other party,
regarding the activities of such party to identify potential Research Antigens
and all other activities of such party under the Research Program.
3.3.3 Not less than ten (10) days prior to each regularly
scheduled meeting of the JMC, CuraGen shall provide ABX with (a) a reasonably
detailed written report describing the activities under all of CuraGen's
internal research programs for the generation of, or that actually generate,
potential antibody targets (other than from the CuraGen Databases) and the
results thereof, together with CuraGen's capacity and resources (and its
projected capacity and resources) to conduct such research activities and the
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
11
utilization thereof, and (b) copies of all data and information available to
CuraGen, that was not previously provided to ABX, regarding each Non-Mining
Antigen (other than CuraGen Exclusive Antigens, Optioned Antigens and Licensed
Antigens) that previously has been disclosed to ABX and antibodies thereto.
3.3.4 Not less than five (5) days prior to each regularly
scheduled meeting of the JMC, each party shall provide the other party with a
list of the potential antigens of interest, identified from those antigens
proposed by the parties under Section 4.2, that such party desires to discuss at
such JMC meeting for potential use in the Research Program.
3.4 Actions. ABX and CuraGen each shall be entitled to cast one vote on
-------
matters before the JMC. Decisions of the JMC shall be made by unanimous
approval.
3.5 Disagreements. All disagreements within the JMC shall be resolved
-------------
in the following manner:
3.5.1 Promptly upon receipt of written notice (a "Dispute Notice")
from one party to the other of a disagreement to be resolved under this
Paragraph 3.5, the JMC representatives of each party promptly shall present the
disagreement to the chief executive officer of such party.
3.5.2 The chief executive officers of each party thereafter shall
meet to discuss each party's view and to explain the basis for their respective
positions of such disagreement, and in good faith shall attempt to resolve such
disagreement among themselves.
3.5.3 If, within thirty (30) days after receipt of a Dispute
Notice as to whether a Research Antigen satisfies the criteria of Exhibit B, the
chief executive officers of each party cannot resolve such disagreement, then
upon written notice from one party to the other party, such disagreement shall
be settled as follows. Within forty five (45) days after receipt of such Dispute
Notice, the parties shall attempt to mutually agree upon a single independent
Third Party arbitrator, who shall be a scientific professional in the antibody
field, to resolve such disagreement. If the parties are unable to mutually agree
upon one such person, then each party shall appoint one independent Third Party
scientific professional in the antibody field prior to the expiration of such
forty five (45) day period, and within sixty (60) days after receipt of such
Dispute Notice, such person(s) shall select a single independent Third Party
arbitrator, who shall be a scientific professional in the antibody field, to
resolve such disagreement. Each party shall present all information presented to
the JMC and all other information as such party reasonably desires regarding
such disagreement. Within ninety (90) days after receipt of such Dispute Notice,
such arbitrator shall determine whether such Research Antigen satisfies the
criteria of Exhibit B and provide written notice to the parties regarding such
determination.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
12
4. RESEARCH ANTIGEN IDENTIFICATION AND RESEARCH
4.1 Maintenance and Enhancement of CuraGen Databases; Disclosure of
---------------------------------------------------------------
Non-Mining Antigens. CuraGen shall continue to seek appropriate samples of human
-------------------
tissues and to analyze Genetic Material therefrom using CuraGen's proprietary
methods and techniques, as well as publicly available methods and techniques, to
identify human sequences and gene assemblies, and expression products thereof,
that are not found in publicly available databases. CuraGen shall engage in the
foregoing efforts for as long as, and to the extent that, CuraGen reasonably
believes that, in its prudent business judgment, such efforts are yielding an
appropriate return of expressed sequences that are not found in publicly
available databases. CuraGen shall update the CuraGen Databases at least once
every month to incorporate (i) the data, information and materials generated by
the foregoing efforts that have not been sponsored or directed by a commercial
Third Party to whom rights in such data, information, and materials have been
granted prior to November 27, 2000, and (ii) those publicly available ESTs that
CuraGen determines in its prudent judgment have sufficient reliability. Promptly
upon physically cloning or acquiring a full-length gene encoding a potential
Non-Mining Antigen, CuraGen shall give to ABX written notice of such gene and
antigen including the applicable DNA sequence, the Clone ID number (if any is
known), the name(s) by which such antigen is known and any other information
available to CuraGen regarding such gene, antigen or their function or use.
4.2 Searches for Research Antigens. During the term of the Research
------------------------------
Program, CuraGen shall have primary responsibility for the screening of the
CuraGen Databases and shall conduct searches thereof to identify and recommend
to the JMC potential antigens of interest hereunder. CuraGen shall recommend to
the JMC [___] antigens of interest (whether or not the genes encoding such
antigens are contained in the CuraGen Databases) that, based on the data and
information in the CuraGen Databases and such other data and information as
CuraGen may have acquired or developed, (i) CuraGen reasonably believes is not
the subject of any Third Party intellectual property rights (or the parties
mutually believe, as evidenced by written agreement, that a license to all
applicable Third Party intellectual property rights can be reasonably obtained),
(ii) CuraGen reasonably believes could be subject (or the parties mutually
believe, as evidenced by written agreement, that the antibodies to which could
be subject) to a proprietary position of CuraGen, (iii) CuraGen reasonably
believes would be available hereunder as Research Antigen, and (iv) CuraGen
reasonably believes is reasonably likely to have potential as a target for
antibody-based therapeutics. CuraGen will use its best efforts to recommend to
the JMC at least [_______________] such antigens of interest from the CuraGen
Databases. ABX shall have the right, but not the obligation, to recommend to the
JMC antigens of interest from the CuraGen Databases and the Non-Mining Antigens
that ABX reasonably believes, are not the subject of any Third Party
intellectual property rights, would be available hereunder as Research Antigens
and are reasonably likely to have potential as targets for antibody-based
therapeutics.
4.2.1 During the six (6) month period after the Effective Date,
CuraGen may restrict its screening of the CuraGen Databases to searches for
potential antigens of interest that are useful in the field of
[____________________________________________________].
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
13
4.2.2 From and after the date six (6) months after the Effective
Date and during the term of the Research Program, CuraGen shall provide ABX,
upon its request, with access to and use of the CuraGen Databases solely (i) to
conduct research to identify potential Research Antigens, (ii) to research and
develop Antibodies to Research Antigens and (iii) to research, develop, make,
have made, use, import, offer to sell and sell ABX Products in accordance this
Agreement. Such access shall be both remote access at ABX's facilities and
direct access at CuraGen's facilities. CuraGen hereby grants ABX the
nonexclusive license (or sublicense, as the case may be) under CuraGen's patent
rights, copyrights and other intellectual property rights in the CuraGen
Databases and all methods and techniques utilized by CuraGen to produce,
maintain, access and search the CuraGen Databases solely to use the CuraGen
Databases for such purposes.
4.2.3 CuraGen shall provide ABX with all the most current
software, documentation and information available to CuraGen as reasonably
necessary or useful to enable ABX to fully utilize the CuraGen Databases and
formulate and conduct searches thereof as provided in Sections 4.2.3, 4.2.5 and
4.2.6. CuraGen shall provide not less than three (3) ABX employees with all
training and technical assistance as reasonably necessary or useful to enable
ABX to fully utilize the CuraGen Databases and formulate and conduct searches
thereof as provided in Sections 4.2.3, 4.2.5 and 4.2.6.
4.2.4 At the reasonable request of ABX at any time after the date
six (6) months after the Effective Date and during the term of the Research
Program, CuraGen additionally shall permit up to three (3) ABX employees to
participate in the formulation and conduct of searches, and other use, of the
CuraGen Databases by CuraGen employees directed toward the collaborative search
for and identification of potential Research Antigens.
4.2.5 CuraGen shall permit up to three (3) ABX employees access to
CuraGen's facilities and equipment at all times during normal business hours at
any time after the date six (6) months after the Effective Date and during the
term of the Research Program to conduct searches of and use the CuraGen
Databases on behalf of ABX.
4.2.6 During each visit by ABX employees to utilize the CuraGen
Databases, at the request of ABX, CuraGen shall provide such ABX employees in
person access to one or more CuraGen employees skilled in the formulation of
searches and search criteria and in the use of the CuraGen Databases to provide
prompt on site technical assistance to enable such ABX employees to fully
utilize the CuraGen Databases and formulate and conduct searches thereof.
4.2.7 ABX shall not permit any ABX employee who has direct access
to a non-public database of a Third Party to have direct access to the CuraGen
Databases. For purposes hereof, "direct access" to a database shall mean first-
person access to the data contained in such database and the proprietary search
methods, tools, algorithms, and software associated with it; provided, however,
that access to the results of searches run by another person or access to the
data in a database, without the means to search such data by the proprietary
search methods, tools, algorithms, and software associated with such database,
shall not constitute "direct access" to a database.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
14
4.2.8 At the reasonable request of ABX at any time during the term
of the Research Program, CuraGen shall conduct searches of the CuraGen Databases
based on criteria selected by ABX and shall provide the results thereof to ABX.
4.2.9 During the Research Program, CuraGen shall operate and
maintain research programs (that are not directed to the CuraGen Databases),
with reasonable capacity and resources dedicated thereto, for the identification
of potential antibody targets in the [________________] that will be available
for use in the Research Program. During the Research Program, CuraGen shall use
its best efforts to identify and recommend to the JMC [________________] Non-
Mining Antigens per Program Year until such time as the JMC has selected
[_________________] Non-Mining Research Antigens (other than antigens selected
as Research Antigens under Section 4.3.2 and (CuraGen Exclusive Antigens) in the
aggregate.
4.3 Research Antigen Selection.
--------------------------
4.3.1 During the term of the Research Program, based upon the data
and information provided by the parties regarding potential antigens of
interest, the JMC shall select at any JMC meeting, from those antigens proposed
by the parties under Section 4.2, potential antigens of interest for use in the
Research Program. With respect to each potential antigen which is selected, by
the action of the JMC, for use under the Research Program, within thirty (30)
days after the date of such JMC meeting, each party shall notify the other party
in writing if such party does not have the right to grant the other party a
commercial license under Article 7 below for such antigen. Subject to Section
4.3.6, unless a party timely notifies the other party in writing that it does
not have the right to grant the other party a commercial license under Article 7
below for such antigen, such antigen thereafter shall be a Research Antigen.
4.3.2 During the term of the Research Program, CuraGen shall have
the right to select at any JMC meeting, from those antigens proposed by the
parties under Section 4.2, potential antigens of interest for use in the
Research Program. CuraGen shall not select any antigen (other than antigens
designated as CuraGen Exclusive Antigens at the time of selection) for which it
does not have the right to grant ABX a commercial license under Article 7 below
for such antigen. With respect to each potential antigen which is selected, by
CuraGen but not by the action of the JMC, for use under the Research Program,
within thirty (30) days after the date of such JMC meeting, ABX shall notify
CuraGen in writing if ABX does not have the right to grant CuraGen a commercial
license under Article 7 below for such antigen. Subject to Section 4.3.6, unless
ABX timely notifies CuraGen in writing that it does not have the right to grant
CuraGen a commercial license under Article 7 below for such antigen, such
antigen thereafter shall be a Research Antigen.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
15
4.3.3 During the term of the Research Program, ABX shall have the
right to select at any JMC meeting, from those antigens proposed by the parties
under Section 4.2, potential antigens of interest for use in the Research
Program. ABX shall not select any antigen for which it does not have the right
to grant CuraGen a commercial license under Article 7 below for such antigen.
With respect to each potential antigen which is selected, by ABX but not by the
action of the JMC, for use under the Research Program, within thirty (30) days
after the date of such JMC meeting, CuraGen shall notify ABX in writing if
CuraGen does not have the right to grant ABX a commercial license under Article
7 below for such antigen. Subject to Section 4.3.6, unless CuraGen timely
notifies ABX in writing that it does not have the right to grant ABX a
commercial license under Article 7 below for such antigen, such antigen
thereafter shall be a Research Antigen.
4.3.4 In addition to the rights of the parties to select antigens
under Sections 4.3.1, 4.3.2 and 4.3.3 above, during the term of the Research
Program, ABX shall have the right to select at any JMC meeting additional
potential antigens of interest, from those proposed by the parties under Section
4.2, for use in the Research Program. ABX shall not select any antigen for which
it does not have the right to grant CuraGen a commercial license under Article 7
below for such antigen. With respect to each potential antigen which is
selected, by ABX but not by the action of the JMC, for use under the Research
Program, within thirty (30) days after the date of such JMC meeting, CuraGen
shall notify ABX in writing if CuraGen does not have the right to grant ABX a
commercial license under Article 7 below for such antigen. Subject to Section
4.3.6, unless CuraGen timely notifies ABX in writing that it does not have the
right to grant ABX a commercial license under Article 7 below for such antigen,
such antigen thereafter shall be a Research Antigen.
4.3.5 If fewer than [___________] antigens (other than Non-Mining
Antigens) in the aggregate have become Research Antigens pursuant to Sections
4.3.1, 4.3.2, and 4.3.3 by the fifth anniversary of the Effective Date other
than as a result of a lack of diligence by CuraGen, CuraGen shall have the right
to select at any JMC meeting thereafter additional potential antigens of
interest, from those antigens proposed by the parties under Section 4.2 (other
than Non-Mining Antigens), for use in the Research Program; provided, however,
that the total number of antigens for which CuraGen may exercise its rights
pursuant to this Section 4.3.5 shall equal (i) [___________] minus (ii) the
aggregate number of antigens (other than Non-Mining Antigens) that have become
Research Antigens pursuant to Sections 4.3.1, 4.3.2, and 4.3.3 on or prior to
the fifth anniversary of the Effective Date. CuraGen shall act in a reasonable
and prudent manner in the exercise of the foregoing right. In addition, CuraGen
shall not select any antigen for which it does not have the right to grant ABX a
commercial license under Article 7 below for such antigen (other than in the
case of antigens that are designated as CuraGen Exclusive Antigens at the time
of selection). With respect to each potential antigen which is selected, by
CuraGen but not by the action of the JMC, for use under the Research Program,
within thirty (30) days after the date of such JMC meeting, ABX shall notify
CuraGen in writing if ABX does not have the right to grant CuraGen a commercial
license under Article 7 below for such antigen. Unless ABX timely notifies
CuraGen in writing that it does not have the right to grant CuraGen a commercial
license under Article 7 below for such antigen, such antigen thereafter shall be
a Research Antigen.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
16
4.3.6 Notwithstanding anything to the contrary in this Agreement,
(a) not more than two hundred fifty (250) antigens in the aggregate may become
Research Antigens under Sections 4.3.1, 4.3.2, 4.3.3 and 4.3.5 above; (b) not
more than [___________] antigens may become Research Antigens under Section
4.3.2 above in the aggregate, of which not more than [___________] may be
Non-Mining Antigens; (c) not more than [___________] antigens may become
Research Antigens under Section 4.3.2 above in any one Program Year; (d) not
more than [___________] antigens may become Research Antigens under Section
4.3.3 above in the aggregate, of which not more than [__________] may be
Non-Mining Antigens; and (e) not more than [___________] antigens may become
Research Antigens under Section 4.3.3 above in any one Program Year. No
antigen for use in the prevention, treatment, detection, diagnosis or monitoring
of any disease or condition other than [________] in humans may become a
Research Antigen prior to the date six (6) months after the Effective Date,
without CuraGen's approval.
4.3.7 Notwithstanding anything to the contrary in this Agreement,
if a party gives written notice to the other party at any time stating that such
party does not have the right to grant the other party a commercial license
under Article 7 below for a Research Antigen, then effective thirty (30) days
after the receipt by the other party of such notice, such antigen shall cease to
be a Research Antigen and both parties shall destroy all Antigen Specific
Materials and Information pertaining to such antigen. A party shall give such
written notice to the other party promptly upon the occurrence of the event
giving rise to such party's not having the right to grant the other party a
commercial license under Article 7, to the extent such party has the right to do
so.
4.4 Research Program.
----------------
4.4.1 Research Plan. During the term of the Research Program, each
party shall use its commercially reasonable efforts to perform its obligations
set forth in Exhibit C within the time schedules contemplated therein. The JMC
may recommend changes to the allocation of responsibilities set forth in Exhibit
C, from time to time; provided, however, that such changes shall only be
effective if in a written amendment duly executed by both parties. Other than
the activities specified in Exhibit C as being the responsibility of one party
or another, the JMC shall allocate the responsibility for each such activity
between the parties, taking into account the skills of each party, in an effort
to divide the resources and internal costs reasonably required to be dedicated
by each party to the conduct of such activities [_______________]. In the event
that any activities with respect to Research Antigens (other than CuraGen
Exclusive Antigens), other than those specified in Exhibit C as being the
responsibility of one party or another, require any payments to a Third Party
for goods or services (e.g., specific animal models), such payments shall be
shared [_______________], provided that all such goods and services and payments
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
17
therefor are approved by the JMC prior to incurring any such expense.
Notwithstanding anything to the contrary in this Agreement, all activities with
respect to Research Antigens that are CuraGen Exclusive Antigens, other than the
generation and biochemical characterization of Antibodies as described and
allocated to ABX in Exhibit C, shall be the sole and exclusive responsibility of
CuraGen, at its sole cost and expense. With respect to each Research Antigen,
during the term of the Research Program, each party may conduct, in its sole
discretion, such additional preclinical research in the Research Field as such
party reasonably desires to evaluate its interest in such Research Antigen,
provided that, the preceding right shall not apply to ABX in the case of
Research Antigens that are CuraGen Exclusive Antigens, and provided further that
prior to commencing such additional preclinical research with respect to
Research Antigens that are not CuraGen Exclusive Antigens, such party shall give
prior written notice to the other party of the nature and scope of such
additional preclinical research regarding such Research Antigen and shall
provide the other party with all results of such research, which research shall
be deemed to have been part of the Research Program. Each party shall provide
the personnel, materials, equipment and other resources required to conduct its
obligations hereunder; provided, however, that CuraGen shall transfer to ABX all
information and materials available to CuraGen that are useful in the conduct of
all assays conducted by or on behalf of CuraGen in connection with the Research
Program. ABX shall reimburse CuraGen for all reasonable out-of-pocket expenses
incurred in effecting such transfer. CuraGen grants to ABX the nonexclusive,
worldwide license (without the right to grant sublicenses) to practice and use
all such assays both (a) for use in the Research Program, and (b) for research
purposes (unrelated to the Research Program or CuraGen) related to the research
and development of antigens and/or antibodies. ABX shall make the antibody
generation/isolation technologies of Immgenics, Inc. available for use by ABX in
the performance of its obligations under Exhibit C. Each party shall perform its
obligations hereunder in accordance with high scientific and professional
standards, and in compliance in all material respects with the requirements of
applicable laws and regulations. Each party shall provide reasonable assistance
required by the other party in connection with the performance of the Research
Program. Each party shall have the right, at reasonable times during normal
business hours and upon reasonable notice, to visit the facilities of the other
party where the other party is conducting its obligations under the Research
Program to observe such activities.
4.4.2 Access. Without limiting the generality of Section 4.4.1,
------
each party shall permit up to three (3) employees of the other party access to
such party's facilities, upon reasonable advance notice, at all times during
normal business hours during the term of the Research Program Term to work with
the employees of such party in the development and use of assays pursuant to the
Research Program. Each party shall provide such employees of the other party in
person access to one or more employees of such party skilled in the development
and use of such assays to enable such employees of such other party to utilize
such assays and develop similar assays for use in the Research Program and, in
the case of ABX, as contemplated under Section 4.4.1; provided, however, except
as otherwise provided in Section 4.4.1, that no license (or sublicense, as the
case may be) to any intellectual property relating to such assays is granted
hereby, whether expressly or by implication.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
18
4.4.3 Term of the Research Program. Unless this Agreement is
----------------------------
earlier terminated, the term of the Research Program shall commence on the
Effective Date and shall continue through the sixth anniversary of the Effective
Date.
4.5 Research Records and Reports.
----------------------------
4.5.1 Research Records. Each party shall maintain records, in
----------------
sufficient detail and in good scientific manner appropriate for patent purposes,
which shall be complete and accurate and shall fully and properly reflect all
work done and results achieved in the performance of the activities under the
Research Program. Each party shall have the right, during normal business hours
and upon reasonable notice, to inspect and copy all such records of the other
party to the extent reasonably required for the performance of its obligations
under this Agreement. Each party shall maintain such records and the information
of the other party contained therein in confidence in accordance with Article 11
below.
4.5.2 Research Reports and Information. Each party shall keep the
--------------------------------
other informed of the progress of its own activities under the Research Program.
At a minimum, within thirty (30) days following the last day of each calendar
quarter during the term of the Research Program, each party shall prepare, and
provide to the other party, a reasonably detailed written summary report which
shall describe the work performed by such party to date under the Research
Program.
4.6 Exclusivity.
-----------
4.6.1 Except as otherwise expressly permitted under this
Agreement, during the term of the Research Program, CuraGen shall not,
[_________________________].
4.6.2 For a period commencing on November 27, 2000, and ending on
the earlier of (i) the [_______________] anniversary of the Effective Date, and
(ii) the effective date of a termination of the Research Program and the
options, licenses and rights of ABX under this Agreement by CuraGen pursuant to
Section 14.2.3 upon an uncured material breach of a material obligation by ABX,
CuraGen shall not [____________________________________]
(a) [_____________________________________________].
(b) [_____________________________________________].
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
19
(c) [__________________________________________________].
(d) [__________________________________________________].
(e) [__________________________________________________].
4.6.3 Except as otherwise expressly permitted under this
Agreement, for a period ending on the earlier of(a) the [_________] anniversary
of the Effective Date, and (b) the effective date of a termination of the
Research Program and the options, licenses and rights of ABX under this
Agreement by CuraGen pursuant to Section 14.2.3 upon an uncured material breach
of a material obligation by ABX, CuraGen shall not, and shall not grant any
license (or sublicense, as the case may be), immunity or other right to any
Person to, research, develop, make, have made, use, import, offer to sell or
sell any Antibody Equivalent to an Antigen (or any mutein or fragment thereof)
for use in the Commercial Field from and after the date on which a XenoMouse
Animal was first immunized with such Antigen; provided, however, that the
foregoing limitation shall not apply to antigens as to which ABX has notified
CuraGen that it does not have the right to grant CuraGen a commercial license
under Article 7 unless ABX has agreed to pay CuraGen the amounts provided
hereunder upon the development and commercialization of an antibody product
targeting such antigen as if it were an ABX Product hereunder in return for the
licenses from CuraGen for such product as if it were an ABX Product hereunder.
For the avoidance of doubt, nothing in this Agreement shall preclude CuraGen
from granting any license (or sublicense, as the case may be), immunity or other
right to any Person to research, develop, make, have made, use, import, offer to
sell or sell any Antibody Equivalent to an antigen contained in the CuraGen
Databases (or any mutein or fragment thereof) for any purpose other than for use
in the prevention, treatment, detection, diagnosis or monitoring of, or the
determination of a predisposition for, or the selection of a particular
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
20
patient(s) to receive a particular therapeutic treatment(s) for,
[_______________], unless and until a XenoMouse Animal has been immunized with
such antigen under this Agreement.
4.6.4 Except as otherwise expressly permitted under this
Agreement, during the term of this Agreement, ABX shall not, and shall not grant
any license (or sublicense, as the case may be), immunity or other right to any
Person to, research, develop, make, have made, use, import, offer to sell or
sell any Antibody Equivalent to a CuraGen Optioned Antigen (or any mutein or
fragment thereof), for so long as such antigen remains a CuraGen Optioned
Antigen, or a CuraGen Licensed Antigen (or any mutein or fragment thereof) for
use in the Commercial Field.
4.6.5 Except as otherwise expressly permitted under this
Agreement, during the term of this Agreement, CuraGen shall not, and shall not
grant any license (or sublicense, as the case may be), immunity or other right
to any Person to, research, develop, make, have made, use, import, offer to sell
or sell any Antibody Equivalent to an ABX Optioned Antigen (or any mutein or
fragment thereof), for so long as such antigen remains an ABX Optioned Antigen,
or an ABX Licensed Antigen (or any mutein or fragment thereof) for use in the
Commercial Field.
4.6.6 For a period commencing on November 27, 2000, and ending on
December 27, 2000, CuraGen shall not enter into any agreement with any other
Person under which [___________________________________________________]
4.7 Research Program Licenses.
-------------------------
4.7.1 Subject to the terms and conditions of this Agreement, ABX
hereby grants to CuraGen a nonexclusive license (or sublicense, as the case may
be) under the Licensed ABX Intellectual Property, without right to grant
Sublicenses, in the Research Field solely to conduct its obligations under the
Research Program and to conduct additional preclinical research as permitted
under Section 4.4.1. Except as expressly set forth in this Agreement or
otherwise expressly agreed in writing by the parties, CuraGen shall not use the
Licensed ABX Intellectual Property or any ABX Technology and Information or any
Research Program Technology and Information for any use other than those uses
expressly licensed under this Section 4.7.1.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
21
4.7.2 Subject to the terms and conditions of this Agreement,
CuraGen hereby grants to ABX a nonexclusive license (or sublicense, as the case
may be) under the Licensed CuraGen Intellectual Property, without right to grant
Sublicenses, in the Research Field solely to conduct its obligations under the
Research Program and to conduct additional preclinical research as permitted
under Section 4.4.1. Except as expressly set forth in this Agreement or
otherwise expressly agreed in writing by the parties, ABX shall not use the
Licensed CuraGen Intellectual Property or any CuraGen Technology and Information
or any Research Program Technology and Information for any use other than those
uses expressly licensed under this Section 4.7.2.
4.8 CuraGen Exclusive Antigens.
--------------------------
4.8.1 Right to Designate.
------------------
(a) CuraGen shall earn the right (a "Designation Right") to
designate one (1) Non-Mining Antigen as a CuraGen Exclusive Antigen, in
accordance with the process described in Section 4.8.2, after [______________]
Non-Mining Antigens (other than CuraGen Exclusive Antigens) have been selected
as Research Antigens under Section 4.3. Thereafter, CuraGen shall earn another
Designation Right for a Non-Mining Antigen (i) after [_______________________]
Non-Mining Antigens (other than CuraGen Exclusive Antigens) have been selected
as Research Antigens under Section 4.3, and (ii) after [_____________________]
Non-Mining Antigens (other than CuraGen Exclusive Antigens) have been selected
as Research Antigens under Section 4.3. For the avoidance of doubt, it is
acknowledged [_______________________________________________________________].
(b) CuraGen shall earn the right (a "Designation Right") to
designate one (1) antigen (other than a Non-Mining Antigen) as a CuraGen
Exclusive Antigen, in accordance with the process described in Section 4.8.2,
after [________________________] antigens (other than Non-Mining Antigens and
CuraGen Exclusive Antigens) have been selected as Research Antigens under
Section 4.3. For the avoidance of doubt, it is acknowledged [________________].
4.8.2 Designation Process.
-------------------
(a) CuraGen shall have the right to designate any antigen that has
been included on a list furnished under Section 3.3.4 as a CuraGen Exclusive
Antigen as the first order of business at a JMC meeting, provided that such
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
22
designation is made prior to the discussion or any action by the JMC relating to
such antigen. CuraGen shall not have the right to designate under Section
4.8.1(b) more than [________] antigens (that are not Non-Mining Antigens) in the
aggregate as CuraGen Exclusive Antigens, or to designate under Section 4.8.1(a)
more than [____________________] Non-Mining Antigens in the aggregate as CuraGen
Exclusive Antigens. Any antigen (whether or not a Non-Mining Antigen) designated
as a CuraGen Exclusive Antigen under this Section 4.8 shall be counted against
the number of antigens that CuraGen is entitled to select under Section 4.3.2.
In addition, (i) CuraGen may not designate more than [_____] Non-Mining Antigens
as CuraGen Exclusive Antigens in any Program Year based on Designation Rights
earned under Section 4.8.1(a) on the basis of Non-Mining Antigens designated as
Research Antigens by CuraGen pursuant to Section 4.3.2; and (ii) CuraGen may not
designate more than [_______] antigens other than Non-Mining Antigens as CuraGen
Exclusive Antigens in any Program Year based on Designation Rights earned under
Section 4.8.1(b) on the basis of antigens other than Non-Mining Antigens
designated as Research Antigens by CuraGen pursuant to Section 4.3.2.
(b) The parties acknowledge that [______________________________].
(c) If CuraGen fails (or, by operation of the limitation of
Section 4.8.1(a), is unable) to exercise its right to designate a Non-Mining
Antigen as a CuraGen Exclusive Antigen in the same Program Year in which the
Designation Right was earned under Section 4.8.1(a), CuraGen may carry forward
such unused Designation Right to subsequent Program Years; provided, however,
that CuraGen may not exercise the unused Designation Right to designate more
than [_______] Non-Mining Antigens as CuraGen Exclusive Antigens in any one (1)
subsequent Program Year (other than the [______] Program Year).
(d) If CuraGen fails (or, by operation. of the limitation of
Section 4.8.1(b), is unable) to exercise its right to designate an antigen
(other than a Non-Mining Antigen) as a CuraGen Exclusive Antigen in the same
Program Year in which the right was earned under Section 4.8.1(b), CuraGen may
carry forward such unused Designation Right to the subsequent Program Years;
provided, however, that CuraGen may not exercise the unused Designation Right to
designate more than [_________] antigen (other than a Non-Mining Antigen) as a
CuraGen Exclusive Antigen in any [____] subsequent Program Year (other than the
[____] Program Year).
(e) Once an antigen is designated as a CuraGen Exclusive Antigen
and, provided that within thirty (30) days after the date of the JMC meeting in
which such CuraGen Exclusive Antigen is designated by CuraGen, ABX does not
notify CuraGen in writing that ABX does not have the right to grant CuraGen a
commercial license under Article 7 below for such antigen, (i) such antigen
shall be a Research Antigen, but shall not be part of the Pool (as defined in
Section 5.2); (ii) CuraGen shall have the exclusive right to select such
Research Antigen as an Optioned Antigen or Licensed Antigen regardless of
whether such Research Antigen is an Eligible Antigen; and (iii) ABX shall have
no right to select such Research Antigen as an Optioned Antigen or Licensed
Antigen.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
23
4.8.3 Selection of CuraGen Exclusive Antigens as Optioned
Antigens. CuraGen shall have the right to select any Research Antigen that is a
CuraGen Exclusive Antigen as an Optioned Antigen regardless of whether such
CuraGen Exclusive Antigen is an Eligible Antigen. CuraGen shall make any such
selection by giving express written notice to ABX at any time during the first
[____] years after the Effective Date. CuraGen's right to make such
selections under this Section 4.8.3 shall be outside, and in addition to, the
selection process for Optioned Antigens under Section 5.2.
4.8.4 If ABX notifies CuraGen in writing that ABX does not have
the right to grant CuraGen a commercial license under Article 7 below for an
antigen that CuraGen designates as a CuraGen Exclusive Antigen, then such
antigen shall not count against the quantity limitations on CuraGen Exclusive
Antigens set forth in this Section 4.8.
4.8.5 Co-Development Rights in CuraGen Exclusive Antigens.
[_____________________________________________________________________________].
5. SELECTION OF OPTIONED ANTIGENS
5.1 Eligible Antigens. Not less than ten (10) days prior to each
-----------------
regularly scheduled meeting of the JMC, each party shall provide the other party
with a dossier for each Research Antigen that it proposes to be considered as a
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
24
potential Eligible Antigen. Such dossier shall contain all information
reasonably available to such party demonstrating whether such Research Antigen
satisfies the criteria set forth in Exhibit B. At such regularly scheduled
meeting of the JMC, the JMC shall consider whether such Research Antigen
satisfies the criteria set forth in Exhibit B. A Research Antigen shall be an
Eligible Antigen at such time as it is determined to satisfy the criteria set
forth in Exhibit B, as determined by the JMC under Section 3.2 above or the
arbitrator under Section 3.5 above. Notwithstanding anything to the contrary in
this Agreement, if a party gives written notice to the other party at any time
stating that such party does not have the right to grant the other party a
commercial license under Article 7 below for an Eligible Antigen, then effective
thirty (30) days after the receipt by the other party of such notice, such
antigen shall cease to be an Eligible Antigen and both parties shall destroy all
Antigen Specific Materials and Information pertaining to such Eligible Antigen.
5.2 Selection of Optioned Antigens. During the first eight (8) years
------------------------------
after the Effective Date, each party shall have the right, in its sole
discretion, to select Optioned Antigens from the list of Eligible Antigens at
the time in question (the "Pool") as follows:
5.2.1 [______________________________].
5.2.2 [______________________________].
5.2.3 [______________________________].
5.2.4 [______________________________].
5.2.5 [______________________________].
5.2.6 [______________________________].
5.2.7 [______________________________].
5.2.8 [______________________________].
5.2.9 With respect to each Eligible Antigen which is selected by
CuraGen as a CuraGen Optioned Antigen pursuant to this Section 5.2, ABX shall
notify CuraGen in writing, within thirty (30) days of receipt of the notice of
selection from CuraGen, if ABX does not have the right to grant CuraGen a
commercial license under Article 7 below for such Eligible Antigen. Unless ABX
timely notifies CuraGen in writing that ABX does not have the right to grant
CuraGen a commercial license under Article 7 below for such antigen, ABX shall
use its good faith efforts to nominate such Eligible Antigen under the XTIABX
Master Research and License Agreement and to obtain the right thereunder to
obtain an XT/ABX Product License Agreement with respect to CuraGen Products to
such Eligible Antigen. If ABX is successful in nominating such Eligible Antigen
and in obtaining the right to obtain an XT/ABX Product License Agreement for
CuraGen Products to such Eligible Antigen, the ABX shall give prompt written
notice to CuraGen. Effective upon such notice, such Eligible Antigen shall be a
CuraGen Optioned Antigen.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
25
5.2.10 With respect to each Eligible Antigen which is selected by
ABX as an ABX Optioned Antigen pursuant to this Section 5.2, CuraGen shall
notify ABX in writing, within thirty (30) days of receipt of the notice of
selection from ABX, if CuraGen does not have the right to grant ABX a commercial
license under Article 7 below for such Eligible Antigen. Unless CuraGen timely
notifies ABX in writing that CuraGen does not have the right to grant ABX a
commercial license under Article 7 below for such antigen, such Eligible Antigen
thereafter shall be an ABX Optioned Antigen upon the expiration of such thirty
(30) day period.
5.2.11 At such time as an Eligible Antigen becomes an Optioned
Antigen of one of the parties (the "Optioning Party"), the other party shall
deliver to the Optioning Party all Antigen Specific Materials and Information in
its possession pertaining to such Optioned Antigen and all related Confidential
Information of such other party, and such Antigen Specific Materials and
Information and Confidential Information shall thereafter be the Confidential
Information of the Optioning Party.
6. RESEARCH FIELD LICENSES FOR OPTIONED ANTIBODIES
6.1 Research Field Licenses.
-----------------------
6.1.1 Subject to the terms and conditions of this Agreement, ABX
hereby grants to CuraGen a nonexclusive license (or sublicense, as the case may
be) under the Licensed ABX Intellectual Property, without right to grant
Sublicenses, (a) to research, develop, make and use (but not to transfer, sell,
lease, offer to sell or lease, or otherwise transfer title to or an interest in)
Antibody Cells that contain, express or secrete Antibodies to the CuraGen
Optioned Antigens solely for use in the Research Field, and (b) to research,
develop, make and use (but not to transfer, sell, lease, offer to sell or lease,
or otherwise transfer title to or an interest in) Antibodies that bind to the
CuraGen Optioned Antigens and Genetic Material that encodes such Antibodies,
solely for use in the Research Field for the research and development of
potential CuraGen Products. Except as expressly agreed in this Agreement or
otherwise expressly agreed in writing by the parties, CuraGen shall not use the
Licensed ABX Intellectual Property, the ABX Technology and Information or the
Research Program Technology and Information for any use other than those uses
expressly licensed under this Section 6.1.1.
6.1.2 Subject to the terms and conditions of this Agreement,
CuraGen hereby grants to ABX a nonexclusive license (or sublicense, as the case
may be) under the Licensed CuraGen Intellectual Property, without right to grant
Sublicenses, (a) to research, develop, make and use (but not to transfer, sell,
lease, offer to sell or lease, or otherwise transfer title to or an interest in)
Antibody Cells that contain, express or secrete Antibodies to the ABX Optioned
Antigens solely for use in the Research Field, and (b) to research, develop,
make and use (but not to transfer, sell, lease, offer to sell or lease, or
otherwise transfer title to or an interest in) Antibodies that bind to the ABX
Optioned Antigens and Genetic Material that encodes such Antibodies, solely for
use in the Research Field for the research and development of potential ABX
Products. Except as expressly agreed in this Agreement or otherwise expressly
agreed in writing by the parties, ABX shall not use the Licensed CuraGen
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
26
Intellectual Property, the CuraGen Technology and Information or the Research
Program Technology and Information for any use other than those uses expressly
licensed under this Section 6.1.2.
6.1.3 The licenses (or sublicenses, as the case may be) granted
under this Section 6.1 shall terminate with respect to each Optioned Antigen on
the first anniversary of the date on which such antigen became an Optioned
Antigen; provided, however, if a party has timely exercised its option under
Article 7 below to obtain a license (or sublicense, as the case may be) for
Products to such Optioned Antigen, such license (or sublicense, as the case may
be) shall remain in effect for Products to such Optioned Antigen for the term of
the applicable license (or sublicense, as the case may be) under Article 7
below. If a party does not timely exercise its option under Article 7 below to
obtain a license (or sublicense, as the case may be) for Products to an Optioned
Antigen and the other party does not timely exercise its standby option under
Section 7.1.2 or 7.2.2, as the case may be, for Products to such Optioned
Antigen, such Antigen shall cease to be an Optioned Antigen but shall be
restored as an Eligible Antigen.
6.2 Research and Preclinical Development.
------------------------------------
6.2.1 As between ABX and CuraGen, ABX shall have the sole right
and responsibility, at its sole expense, to conduct research and preclinical
development of Antibodies that bind to the ABX Optioned Antigens and Genetic
Material that encodes such Antibodies for use in the research and development of
potential ABX Products in the Research Field.
6.2.2 As between ABX and CuraGen, CuraGen shall have the sole
right and responsibility, at its sole expense, to conduct research and
preclinical development of Antibodies that bind to the CuraGen Optioned Antigens
and Genetic Material that encodes such Antibodies for use in the research and
development of potential CuraGen Products in the Research Field.
6.2.3 Each party shall conduct such research and preclinical
development in accordance with high scientific and professional standards, and
in compliance in all material respects with the requirements of applicable laws
and regulations.
7. COMMERCIAL FIELD LICENSES FOR LICENSED ANTIGENS
7.1 CuraGen Products.
----------------
7.1.1 Options for CuraGen Optioned Antigens. Subject to the terms
and conditions of this Agreement, ABX hereby grants to CuraGen exclusive, non-
transferable options to obtain a license (or sublicense, as the case may be)
under Section 7.1.3 below for CuraGen Products to each CuraGen Optioned Antigen,
with each such option being exercisable in accordance with the provisions of
this Section 7.1.1 until the earliest of(a) the first anniversary of the date on
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
27
which such antigen became a CuraGen Optioned Antigen; (b) such time as ABX no
longer would be obligated to grant a license (or sublicense, as the case may be)
under Section 7.1.3 below for such CuraGen Products, and (c) the eighth
anniversary of the Effective Date.
(a) If CuraGen desires to exercise its option for CuraGen Products
to such CuraGen Optioned Antigen, CuraGen shall so notify ABX in writing.
(b) As soon as reasonably practicable after receipt of such
notice, ABX shall exercise its option under the XT/ABX Master Research and
License Agreement to obtain the XT/ABX Product License Agreement for CuraGen
Products to such CuraGen Optioned Antigen. ABX shall notify CuraGen at such time
as ABX has obtained the XT/ABX Product License Agreement for CuraGen Products to
such CuraGen Optioned Antigen. Effective upon such notice, such CuraGen Optioned
Antigen shall be a CuraGen Licensed Antigen, and the exclusive license (or
sublicense, as the case may be) grant under Section 7.1.3 below for CuraGen
Products to such CuraGen Licensed Antigen shall then be effective.
(c) CuraGen's option for CuraGen Products to any CuraGen Optioned
Antigen is subject to ABX successfully obtaining an XT/ABX Product License
Agreement for CuraGen Products to such CuraGen Optioned Antigen.
7.1.2 Standby Options for ABX Optioned Antigens. If ABX fails to
timely exercise its option under Section 7.2.1 below for any ABX Optioned
Antigen, within ten (10) days after the written request by CuraGen, ABX shall
provide CuraGen with copies of, or access to, all data and information of ABX
regarding such ABX Optioned Antigen and Antibodies thereto. Except as otherwise
expressly provided in this Agreement or the parties otherwise expressly agree in
writing, CuraGen shall have the right to use such data and information for the
sole purpose of evaluating its interest in exercising its option under this
Section 7.1.2 for such ABX Optioned Antigen. Subject to the terms and conditions
of this Agreement, ABX hereby grants to CuraGen exclusive, non-transferable
options to obtain a license (or sublicense, as the case may be) under Section
7.1.3 below for CuraGen Products to each ABX Optioned Antigen for which ABX
xxxx
gggkkkkk
fails to timely exercise its option under Section 7.2.1 below, with each such
option being exercisable in accordance with the provisions of this Section 7.1.2
commencing on the expiration of ABX's option under Section 7.2.1 below until the
earliest of(a) the date six (6) months thereafter, (b) such time as ABX no
longer would be obligated to grant a license (or sublicense, as the case may be)
under Section 7.1.3 below for such CuraGen Products, and (c) the eighth
anniversary of the Effective Date.
(a) If CuraGen desires to exercise its option for (2ura(Jen
products to such ABX Optioned Antigen, CuraGen shall so notify ABX in writing.
(b) Within thirty (30) days after receipt of such notice, ABX
shall notify CuraGen in writing if ABX does not have the right to grant CuraGen
the license (or sublicense, as the case may be) under Section 7.1.3 below for
CuraGen products to such ABX Optioned Antigen. If ABX does not have such a
right, ABX shall have no obligation to grant CuraGen the license (or sublicense,
as the case may be) under Section 7.1.3 below for CuraGen Products to such ABX
Optioned Antigen.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
28
(c) Unless ABX timely notifies CuraGen in writing that it does not
have such a right, ABX shall use its good faith efforts to nominate such ABX
Optioned Antigen under the XT/ABX Master Research and License Agreement and
obtain the right thereunder to obtain an XT/ABX Product License Agreement with
respect to CuraGen Products to such ABX Optioned Antigen.
(d) If ABX is successful in nominating such ABX Optioned Antigen
and in obtaining the right to obtain an XT/ABX Product License Agreement for
CuraGen Products to such ABX Optioned Antigen, then ABX shall give prompt
written notice to CuraGen and as soon as reasonably practicable thereafter shall
exercise its option under the XT/ABX Master Research and License Agreement to
obtain the XT/ABX Product License Agreement for CuraGen Products to such ABX
Optioned Antigen. ABX shall notify CuraGen at such time as ABX has obtained the
XT/ABX Product License Agreement for CuraGen Products to such ABX Optioned
Antigen. Effective upon such notice, such antigen shall be a CuraGen Licensed
Antigen, and the exclusive license (or sublicense, as the case may be) grant
under Section 7.1.3 below for CuraGen Products to such CuraGen Licensed Antigen.
(e) CuraGen's option for CuraGen Products to any ABX Optioned
Antigen is subject to ABX successfully obtaining the right under the XT/ABX
Master Research and License Agreement to obtain an XT/ABX Product License
Agreement for CuraGen Products to such ABX Optioned Antigen.
7.1.3 Commercial Field License. Subject to the terms and
------------------------
conditions of this Agreement, ABX hereby grants to CuraGen an exclusive
worldwide license (or sublicense, as the case may be) (with the right to grant
Sublicenses) under Licensed ABX Intellectual Property to research, develop,
make, have made, use, import, offer to sell and sell CuraGen Products in the
Commercial Field. CuraGen shall provide ABX with a copy of each Sublicense
promptly after executing the same; provided, however, that CuraGen shall have
the right to redact any confidential financial terms or confidential research,
development or commercialization plans from the copy provided to ABX. Any
Sublicense shall be subject and subordinate to the terms and conditions of this
Agreement, and CuraGen shall remain responsible for all payments due to ABX
hereunder.
7.2 ABX Products.
------------
7.2.1 Options for ABX Optioned Antigens. Subject to the terms and
conditions of this Agreement, CuraGen hereby grants to ABX exclusive, non-
transferable options to obtain a license (or sublicense, as the case may be)
under Section 7.2.3 below for ABX Products to each ABX Optioned Antigen, with
each such option being exercisable in accordance with the provisions of this
Section until the earliest of (a) the first anniversary of the date on which
such antigen became a ABX Optioned Antigen, (b) such time as CuraGen no longer
would be obligated to grant a license (or sublicense, as the case may be) under
Section 7.2.3 below for such ABX Products, and (c) the eighth anniversary of the
Effective Date.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
29
(a) If ABX desires to exercise its option for ABX Products to such
ABX Optioned Antigen, ABX shall so notify CuraGen in writing.
(b) Effective upon such notice, such antigen shall be an ABX
Licensed Antigen, and the exclusive license (or sublicense, as the case may be)
grant under Section 7.2.3 below for ABX Products to such ABX Licensed Antigen
shall be effective.
7.2.2 Standby Options for CuraGen Optioned Antigens. If CuraGen
---------------------------------------------
fails to timely exercise its option under Section 7.1.1 above for any CuraGen
Optioned Antigen, within ten (10) days after the written request by ABX, CuraGen
shall provide ABX with copies of, or access to, all data and information of
CuraGen regarding such CuraGen Optioned Antigen and Antibodies thereto. Except
as otherwise expressly provided in this Agreement or the parties otherwise
expressly agree in writing, ABX shall have the right to use such data and
information for the sole purpose of evaluating its interest in exercising its
option under this Section 7.2.2 for such CuraGen Optioned Antigen. Subject to
the terms and conditions of this Agreement, CuraGen hereby grants to ABX non-
exclusive, non-transferable options to obtain a license (or sublicense, as the
case may be) under Section 7.2.3 below for ABX Products to each CuraGen Optioned
Antigen for which CuraGen fails to timely exercise its option under Section
7.1.1 above, with each such option being exercisable in accordance with the
provisions of this Section 7.2.2 commencing on the expiration of CuraGen's
option under Section 7.1 .1 above until the earliest of (a) the date six (6)
months thereafter, (b) such time as CuraGen no longer would be obligated to
grant a license (or sublicense, as the case may be) under Section 7.2.3 below
for such ABX Products, and (c) the eighth anniversary of the Effective Date.
(a) If ABX desires to exercise its option for ABX products to such
CuraGen Optioned Antigen, ABX shall so notify CuraGen in writing.
(b) Within thirty (30) days after receipt of such notice, CuraGen
shall notify ABX in writing if CuraGen does not have the right to grant ABX the
license (or sublicense, as the case may be) under Section 7.2.3 below for ABX
products to such CuraGen Optioned Antigen. If CuraGen does not have such a
right, CuraGen shall have no obligation to grant ABX the license (or sublicense,
as the case may be) under Section 7.2.3 below for ABX Products to such CuraGen
Optioned Antigen.
(c) Unless CuraGen timely notifies ABX in writing that it does not
have such a right, effective upon the expiration of such thirty (30) day period,
such antigen shall be an ABX Licensed Antigen, and the exclusive license (or
sublicense, as the case may be) grant under Section 7.2.3 below for ABX Products
to such ABX Licensed Antigen shall be effective upon the expiration of such
thirty (30) day period.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
30
7.2.3 Commercial Field License. Subject to the terms and
------------------------
conditions of this Agreement, CuraGen hereby grants to ABX an exclusive
worldwide license (or sublicense, as the case may be) (with the right to grant
Sublicenses) under Licensed CuraGen Intellectual Property to research, develop,
make, have made, use, import, offer to sell and sell ABX Products in the
Commercial Field. ABX shall provide CuraGen with a copy of each Sublicense
promptly after executing the same; provided, however, that ABX shall have the
right to redact any confidential financial terms or confidential research,
development or commercialization plans from the copy provided to CuraGen. Any
Sublicense shall be subject and subordinate to the terms and conditions of this
Agreement, and ABX shall remain responsible for all payments due to CuraGen
hereunder.
7.3 No Other Rights. No rights other than those expressly set forth in
---------------
this Agreement are granted to either party hereunder, and no additional rights
shall be granted to either party by implication, estoppel or otherwise.
7.4 Further Restrictions.
--------------------
7.4.1 Notwithstanding anything to the contrary in this Agreement,
neither a party, nor its Sublicensees hereunder nor their respective Affiliates
shall submit an IND for, or otherwise commence human clinical testing of, any
Product to any Antigen unless and until such party has obtained a commercial
license under this Article 7 for Products to such Antigen.
7.4.2 For purposes of this Agreement, if(a) JT or ABX has
nominated an antigen pursuant to the XT Master Research and License Agreement,
(b) XT has granted a license pursuant to the XT Master Research and License
Agreement with respect to an antigen, (c) ABX has an obligation to so nominate
an antigen or XT or ABX has an obligation to so grant a license (or sublicense,
as the case may be), (d) ABX has otherwise granted exclusive rights to
antibodies to an antigen to a Third Party without breach of the exclusivity
provisions of Section 4.6, or (e) ABX has an active research and development
program ongoing for antibodies to an antigen (that was not provided by CuraGen
hereunder) that is independent of its efforts hereunder and does not and did not
involve access to, or otherwise make use of, the CuraGen Databases, then ABX
shall not have the right to grant CuraGen a license (or sublicense, as the case
may be) hereunder to use such antigen in the Research Field or a license (or
sublicense, as the case may be) regarding the related CuraGen Products in the
Commercial Field.
7.4.3 For purposes of this Agreement, if CuraGen has granted
exclusive rights to antibodies to an antigen to a Third Party without breach of
the exclusivity provisions of Section 4.6, then CuraGen shall not have the right
to grant ABX a license (or sublicense, as the case may be) hereunder to use such
antigen in the Research Field or a license (or sublicense, as the case may be)
regarding the related ABX Products in the Commercial Field.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
31
8. PAYMENTS
--------
8.1 Research Funding. CuraGen shall pay to ABX aggregate research
----------------
funding of [______________________________]. Such research funding shall be
payable in twenty (20) equal quarterly installments of
[______________________________] each, due on or before each of January 3, 2000,
and each March 8, June 8, September 8 and December 8 thereafter, until the last
such payment on September 8, 2004.
8.2 Certain Fees.
------------
8.2.1 Each party shall pay to the other party a non-refundable,
non-creditable technology access fee of [______________________________] for
each Eligible Antigen it selects under Article 5 above that becomes an Optioned
Antigen within ten (10) days after such Eligible Antigen becomes an Optioned
Antigen.
8.2.2 Each party shall pay to the other party a non-refundable,
non-creditable exercise fee of [______________________________] for each
Optioned Antigen for which it exercised an option to obtain a commercial license
under Article 7 above within ten (10) days after such Optioned Antigen becomes a
Licensed Antigen.
8.2.3 With respect to each Licensed Antigen for which a party
exercised an option to obtain a commercial license under Article 7 above, but
for which it was not required to pay an option fee under Section 8.2.1 above
because it was not selected as an Optioned Antigen by such party under Article 5
above, such party shall pay to the other party, in lieu of the amounts set forth
in Sections 8.2.1 and 8.2.2, a non-refundable, non-creditable exercise fee of
[______________________________] for such Licensed Antigen within ten (10) days
after such antigen becomes a Licensed Antigen.
8.3 Milestone Payments.
------------------
8.3.1 In the Therapeutic Field. Subject, in the case of
Sublicenses, to Section 8.4.3(c) below, within thirty (30) days following the
achievement of each of the following milestones with respect to each CuraGen
Product for use in the Therapeutic Field, on a CuraGen Product-by-CuraGen
Product basis, CuraGen shall give written notice to ABX thereof and shall pay to
ABX the corresponding milestone payments described below. Subject, in the case
of Sublicenses, to Section 8.4.3(a) below, within thirty (30) days following the
achievement of each of the following milestones with respect to each ABX Product
for use in the Therapeutic Field, on an ABX Product-by-ABX Product basis, ABX
shall give written notice to CuraGen thereof and shall pay to CuraGen the
corresponding milestone payments described below.
[_______] [______________________________]
[_______] [______________________________]
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
32
[_______] [______________________________]
[_______] [______________________________]
[_______] [______________________________]
If, at the time when any milestone payment listed in this Section 8.3.1,
with respect to a Product for use in the Therapeutic Field, is due from a party,
such party has not paid all other milestone payments (if any) previously listed
in this Section 8.3.1 with respect to such Product, then at such time such party
shall pay all such unpaid milestone payments (if any) previously listed in this
Section 8.3.1 with respect to such Product. If, at the time of the First
Commercial Sale by a party, its Affiliate or their respective Sublicensee of a
Product for use in the Therapeutic Field, such party has not paid all milestone
payments (if any) listed in this Section 8.3.1 with respect to such Product,
then at such time such party shall pay all such unpaid milestone payments (if
any) listed in this Section 8.3.1 with respect to such Product. If at any time a
party abandons the development of a Product after the payment to the other party
of one or more milestone payments under this Section 8.3.1 and subsequently
commences or continues the development of another Product directed to the same
Licensed Antigen as the abandoned Product, then such party shall have no
obligation to pay to the other party a milestone payment upon the occurrence of
a milestone event for the subsequent Product for which such party previously has
paid to the other party a milestone payment under this Section 8.3.1 for the
abandoned Product.
8.3.2 In the Diagnostic Field. Subject, in the case of
-----------------------
Sublicenses, to Section 8.4.3(d) below, within thirty (30) days following the
achievement of each of the following milestones with respect to each CuraGen
Product for use in the Diagnostic Field, on a CuraGen Product-by-CuraGen Product
basis, CuraGen shall give written notice to ABX thereof and shall pay to ABX the
corresponding milestone payments described below. Subject, in the case of
Sublicenses, to Section 8.4.3(b) below, within thirty (30) days following the
achievement of each of the following milestones with respect to each ABX Product
for use in the Diagnostic Field, on an ABX Product-by-ABX Product basis, ABX
shall give written notice to CuraGen thereof and shall pay to CuraGen the
corresponding milestone payments described below.
[_______] [______________________________]
[_______] [______________________________]
[_______] [______________________________]
If, at the time when any milestone payment listed in this Section 8.3.2,
with respect to a Product for use in the Diagnostic Field, is due from a party,
such party has not paid all other milestone payments (if any) previously listed
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
33
in this Section 8.3.2 with respect to such Product, then at such time such party
shall pay all such unpaid milestone payments (if any) previously listed in this
Section 8.3.2 with respect to such Product. If, at the time of the First
Commercial Sale by a party, its Affiliate or permitted (sub)licensee of a
Product for use in the Diagnostic Field, such party has not paid all milestone
payments (if any) listed in this Section 8.3.2 with respect to such Product,
then at such time such party shall pay all such unpaid milestone payments (if
any) listed in this Section 8.3.2 with respect to such Product. If at any time a
party abandons the development of a Product after the payment to the other party
of one or more milestone payments under this Section 8.3.2 and subsequently
commences or continues the development of another Product directed to the same
Licensed Antigen as the abandoned Product, then such party shall have no
obligation to pay to the other party a milestone payment upon the occurrence of
a milestone event for the subsequent Product for which such party previously has
paid to the other party a milestone payment under this Section 8.3.2 for the
abandoned Product.
8.4 Royalties.
---------
8.4.1 Notice of Royalty Commencement Date. Within thirty (30) days
-----------------------------------
following the Royalty Commencement Date for each CuraGen Product in each
country, CuraGen shall give written notice to ABX thereof. Within thirty (30)
days following the Royalty Commencement Date for each ABX Product in each
country, ABX shall give written notice to CuraGen thereof.
8.4.2 Royalties on Net Sales.
(a) Subject, in the case of Sublicenses, to Sections 8.4.3(a) and
(b) below, ABX shall pay to CuraGen royalties equal to
[_______________________________].
(b) Subject, in the case of Sublicenses, to Sections 8.4.3(c) and
(d) below, CuraGen shall pay to ABX royalties equal to
[_______________________________].
8.4.3 Royalties on Sublicense Income.
(a) In the event that ABX grants a Sublicense with respect to any
ABX Product for use in the Therapeutic Field, ABX shall notify CuraGen in
writing, within fifteen (15) days of the grant of such Sublicense, whether ABX
elects to pay to CuraGen (i) the milestone payments set forth in Section 8.3.1
upon the occurrence with respect to such ABX Product of the milestone events set
forth therein and the royalties set forth in Section 8.4.2 based on Net Sales of
such ABX Product or (ii) the following payments and royalties equal to the
following percentage of Sublicense Income received by ABX and its Affiliates in
connection with such Sublicense for each ABX Product for use in the Therapeutic
Field:
[_________] [________________________________]
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
34
[_________] [________________________________]
[_________] [________________________________]
Notwithstanding the foregoing, the royalties owing by ABX under this
Section 8.4.3(a) in any calendar quarter, with respect to Net Sales by such
Sublicensee and its Affiliates of any ABX Product for use in the Therapeutic
Field, shall not be less than [____________________] of Net Sales by such
Sublicensee and its Affiliates of such ABX Product in such calendar quarter.
Once made, the election of the basis of payment hereunder may not be changed,
and ABX shall pay the amounts determined in accordance with its election.
(b) In the event that ABX grants a Sublicense with respect to any
ABX Product for use in the Diagnostic Field, ABX shall notify CuraGen in
writing, within fifteen (15) days of the grant of such Sublicense, whether ABX
elects to pay to CuraGen (i) the milestone payments set forth in Section 8.3.2
upon the occurrence with respect to such ABX Product of the milestone events set
forth therein and the royalties set forth in Section 8.4.2 based on Net Sales of
such ABX Product or (ii) the following payments and royalties equal to the
following percentage of Sublicense Income received by ABX and its Affiliates in
connection with such Sublicense for each ABX Product for use in the Diagnostic
Field:
[_________] [________________________________]
[_________] [________________________________]
[_________] [________________________________]
Notwithstanding the foregoing, the royalties owing by ABX under this
Section 8.4.3(b) in any calendar quarter, with respect to Net Sales by such
Sublicensee and its Affiliates of any ABXProduct for use in the Diagnostic
Field, shall not be less than [______________________] of Net Sales by such
Sublicensee and its Affiliates of such ABX Product in such calendar quarter.
Once made, the election of the basis of payment hereunder may not be changed,
and ABX shall pay the amounts determined in accordance with its election.
(c) In the event that CuraGen grants a Sublicense with respect to
any CuraGen Product for use in the Therapeutic Field, CuraGen shall notify ABX
in writing, within fifteen (15) days of the grant of such Sublicense, whether
CuraGen elects to pay to ABX (i) the milestone payments set forth in Section
8.3.1 upon the occurrence with respect to such CuraGen Product of the milestone
events set forth therein and the royalties set forth in Section 8.4.2 based on
Net Sales of such CuraGen Product or (ii) the following payments and royalties
equal to the following percentage of Sublicense Income received by CuraGen and
its Affiliates in connection with the Sublicense for each CuraGen Product for
use in the Therapeutic Field:
[_________] [________________________________]
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
35
[_________] [________________________________]
[_________] [________________________________]
Notwithstanding the foregoing, the royalties owing by CuraGen under this
Section 8.4.3(c) in any calendar quarter, with respect to Net Sales by such
Sublicensee and its Affiliates of any CuraGen Product for use in the Therapeutic
Field, shall not be less than the [________________] of Net Sales by such
Sublicensee and its Affiliates of such CuraGen Product in such calendar quarter,
[________________________________________]. Once made, the election of the
basis of payment hereunder may not be changed, and CuraGen shall pay the amounts
determined in accordance with its election.
(d) In the event that CuraGen grants a Sublicense with respect to
any CuraGen Product for use in the Diagnostic Field, CuraGen shall notify ABX in
writing, within fifteen (15) days of the grant of such Sublicense, whether
CuraGen elects to pay to ABX (i) the milestone payments set forth in Section
8.3.2 upon the occurrence with respect to such CuraGen Product of the milestone
events set forth therein and the royalties set forth in Section 8.4.2 based on
Net Sales of such CuraGen Product or (ii) the following payments and royalties
equal to the following percentage of Sublicense Income received by CuraGen and
its Affiliates in connection with the Sublicense for such CuraGen Product for
use in the Diagnostic Field:
[_________] [________________________________]
[_________] [________________________________]
[_________] [________________________________]
Notwithstanding the foregoing, the royalties owing by CuraGen under this
Section 8.4.3(d) in any calendar quarter, with respect to Net Sales by such
Sublicensee and its Affiliates of any CuraGen Product for use in the Diagnostic
Field, shall not be less than the [_____________] of Net Sales by such
Sublicensee and its Affiliates of such CuraGen Product in such calendar quarter,
[________________________________________________]. Once made, the election of
the basis of payment hereunder may not be changed, and CuraGen shall pay the
amounts determined in accordance with its election.
(e) Length of Royalty Obligations. Each party's obligations to pay
royalties (including without limitation percentages of Sublicense Income) with
respect to each Product in each country shall commence on the Royalty
Commencement Date for such Product in such country, and shall continue for such
Product in such country until [________________].
8.4.4 Discounting. If a party, its Sublicensees or their
-----------
respective Affiliates sells a Product to a Third Party who also purchases other
products or services from such party, its Sublicensees or their respective
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
36
Affiliates, and such party, its Sublicensees or their respective Affiliates
discounts the purchase price of such Product to a greater degree than it
generally discounts the price of its other products or services to such
customer, then in such case the Net Sales for the sale of such Product to such
Third Party shall equal the arm's length pnce that Third Parties would generally
pay for the Product alone when not purchasing any other product or service from
such party, its Sublicensee or their respective Affiliates. For purposes of this
provision "discounting" includes establishing the list price at a lower-than-
normal level.
9. ACCOUNTING AND RECORDS
9.1 Royalty Reports and Payments. Commencing with the first calendar
----------------------------
quarter in which the Royalty Commencement Date for a Product occurs, CuraGen in
the case of CuraGen Products, and ABX in the case of ABX Products (the "Payor")
shall make written reports to the other party (the "Payee") within sixty (60)
days after the end of each calendar quarter, stating in each such report the
number, description, and aggregate Net Sales of such Product sold during the
calendar quarter, and the calculation of the royalties and other amounts payable
under Article 8 above. Concurrently with the making of such reports, the Payor
shall pay to the Payee all royalties payable under Article 8 above.
9.2 Records; Inspection. The Payor shall keep (and cause its
-------------------
Affiliates, Sublicensees and Sublicensees' Affiliates to keep) complete, true
and a00ccurate books of account and records for the purpose of determining the
royalties payable to the Payee under this Agreement. Such books and records
shall be kept at the principal place of business of the Payor, its Sublicensee
or their respective Affiliates, as the case may be, for at least three years
following the end of the calendar quarter to which they pertain. Such records of
the Payor and its Affiliates shall be open for inspection during such three-year
period by independent accountants chosen by the Payee, and subject to the
approval of the Payor, which approval shall not be unreasonably withheld or
delayed, (which accountants, in the case of ABX, may also represent XI) for the
purpose of verifying the royalty statements. The Payor shall require each of its
Sublicensees to maintain similar books and records and to open such records for
inspection during the same three-year period by a representative of the Payor
reasonably satisfactory to the Payee on behalf of, and as required by, the Payee
for the purpose of verifying the royalty statements. All such inspections may be
made no more than once each calendar year at reasonable times mutually agreed by
the Payor and the Payee. The independent accountants chosen by the Payee will be
obliged to execute a reasonable confidentiality agreement prior to commencing
any such inspection. Inspections conducted under this Section 9.2 shall be at
the expense of the Payee, unless a variation or error producing an increase
exceeding five percent (5%) of the amount stated for any period is established
in the course of any such inspection, whereupon all costs relating to the audit
of such period will be paid by the Payor.
9.3 Payment Method. All payments by the Payor to the Payee hereunder
--------------
shall be in United States Dollars in immediately available funds and shall be
made by wire transfer from a United States bank located in the United States to
such bank account as designated by the Payee to the Payor.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
37
9.4 Currency Conversion. If any currency conversion shall be required
-------------------
in connection with the calculation of royalties hereunder, such conversion shall
be made using the selling exchange rate for conversion of the foreign currency
into United States Dollars, quoted for current transactions reported under the
heading "Currency Trading -- Exchange Rates" in The Wall Street Journal in the
United States for the last business day of the calendar quarter to which such
payment pertains. If The Wall Street Journal ceases to be published, then the
rate of exchange to be used shall be that reported in such other business
publication of national circulation in the United States as the parties
reasonably agree.
9.5 Late Payments. Any payments due from the Payor that are not paid on
-------------
the date such payments are due under this Agreement shall bear interest at the
lesser of(i) the Prime Rate as reported under the heading "Money Rates" in The
Wall Street Journal in the United States on the date such payment is due, plus
an additional two percent (2%), or (ii) the maximum rate permitted by applicable
law, in each case calculated on the number of days such payment is delinquent.
This Section 9.5 shall in no way limit any other remedies available to any
party. If The Wall Street Journal ceases to be published, then the prime rate to
be used shall be that reported in such other business publication of national
circulation in the United States as the parties reasonably agree.
9.6 Withholding Taxes. Each party shall be entitled to deduct from the
-----------------
royalties owing to the other party hereunder the amount of any withholding
taxes, value-added taxes or other taxes, levies or charges with respect to such
amounts, other than United States taxes, payable by such party, or any taxes
required to be withheld by such party, to the extent such party pays to the
appropriate governmental authority on behalf of the other party such taxes,
levies or charges. The withholding party shall use reasonable efforts to
minimize any such taxes, levies or charges required to be withheld on behalf of
the other party by such party. The withholding party promptly shall deliver to
the other party proof of payment of all such taxes, levies and other charges,
together with copies of all communications from or with such governmental
authority with respect thereto, and shall reasonably assist the other party in
obtaining a refund thereof (to the extent permitted under applicable law) or to
obtain a foreign tax credit therefor.
10. DILIGENCE
10.1 Diligence Obligation of CuraGen.
-------------------------------
10.1.1 CuraGen shall use commercially reasonable efforts to
actively research, develop and obtain regulatory approvals as expeditiously as
reasonably practicable to market in major markets throughout the world at least
one CuraGen Product to each CuraGen Licensed Antigen, and following such
approval to maximize N~t Sales of such CuraGen Product.
10.1.2 Without limiting Section 10.1.1, CuraGen, its Sublicensees
or their respective Affiliates shall file an JIND with the FDA for at least one
CuraGen Product to each CuraGen Licensed Antigen within three (3) years after
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
38
the effective date of the applicable XT/ABX Product License Agreement. After the
filing of an IND for at least one CuraGen Product to a CuraGen Licensed Antigen,
CuraGen, its Sublicensees or their respective Affiliates, shall have an active
IND and actively and diligently conduct clinical trials in pursuit of regulatory
approval for at least one such CuraGen Product in the United States until at
least one such CuraGen Product may be sold commercially in the United States.
10.1.3 During the term of this Agreement and for a period of five
(5) years thereafter, CuraGen shall keep complete and accurate records of its
activities conducted under this Agreement regarding the commercialization of
CuraGen Products and the results thereof. Within thirty (30) days after the end
of each semi-annual period during the term of this Agreement, CuraGen shall
prepare and provide ABX with a reasonably detailed written report of such
activities and results, through such date.
10.2 Diligence Obligation of ABX.
---------------------------
10.2.1 ABX shall use commercially reasonable efforts to actively
research, develop and obtain regulatory approvals as expeditiously as reasonably
practicable to market in major markets throughout the world at least one ABX
Product to each ABX Licensed Antigen, and following such approval to maximize
Net Sales of such ABX Product.
10.2.2 Without limiting Section 10.2.1, ABX, its Sublicensees or
their respective Affiliates shall file an IND with the FDA for at least one ABX
Product to each ABX Licensed Antigen within three (3) years after the effective
date of the applicable XT/ABX Product License Agreement. After the filing of an
IND for at least one ABX Product to a ABX Licensed Antigen, ABX, its
Sublicensees or their respective Affiliates, shall have an active IND and
actively and diligently conduct clinical trials in pursuit of regulatory
approval for at least one such ABX Product in the United States until at least
one such ABX Product may be sold commercially in the United States.
10.2.3 During the term of this Agreement and for a period of five
(5) years thereafter, ABX shall keep complete and accurate records of its
activities conducted under this Agreement regarding the commercialization of ABX
Products and the results thereof. Within thirty (30) days after the end of each
semi-annual period during the term of this Agreement, ABX shall prepare and
provide CuraGen with a reasonably detailed written report of such activities and
results, through such date.
10.3 Standards of Performance. The development and commercialization of
------------------------
a Product hereunder by a party, its Sublicensees and their respective Affiliates
shall be performed in accordance with high scientific and professional
standards, and in compliance in all material respects with the requirements of
applicable laws and regulations. ABX, its Sublicensees and their respective
Affiliates shall be solely responsible for providing the personnel, materials,
equipment, and other resources for the development and commercialization of ABX
Products hereunder. CuraGen, its Sublicensees and their respective Affiliates
shall be solely responsible for providing the personnel, materials, equipment,
and other resources for the development and commercialization of CuraGen
Products hereunder.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
39
10.4 Gene Therapy Applications. Each party's intention as of the
-------------------------
Effective Date is to commercialize a Product hereunder for an application other
than Gene Therapy before commercializing a Product hereunder for a Gene Therapy
application. It is understood, however, that either party may or may not also
intend to develop and sell Products for use in Gene Therapy, and that such Gene
Therapy application may ultimately be commercialized before a Product is
commercialized hereunder for a non-Gene Therapy application.
11. CONFIDENTIALITY
11.1 Confidential Information. During the term of this Agreement and
------------------------
for a period of five (5) years following the expiration or earlier termination
hereof, each party shall maintain in confidence the Confidential Information of
the other party, and shall not disclose, use or grant the use of the
Confidential Information of the other party except on a need-to-know basis to
such party's directors, officers employees, consultants and collaborators, and
to the Third Party licensors of the Licensed Intellectual Property, to the
extent such disclosure is reasonably necessary or required in connection with
such party's activities as expressly authorized by this Agreement. To the extent
that disclosure by a party to any Person is authorized by this Agreement, prior
to disclosure, a party shall obtain written agreement of such Person to hold in
confidence and not disclose, use or grant the use of the Confidential
Information of the other party except as expressly permitted under this
Agreement. Each party shall notify the other promptly upon discovery of any
unauthorized use or disclosure of the other party's Confidential Information.
Upon the expiration or earlier termination of this Agreement, each party shall
return to the other party all tangible items regarding the Confidential
Information of the other party and all copies thereof, except for Confidential
Information pertaining to any Licensed Antigen and related Products for which,
and for so long as, such party retains a license (or sublicense, as the case may
be) hereunder; provided, however, that each party shall have the right to retain
one (1) copy for its legal files for the sole purpose of determining its
obligations hereunder.
11.2 Terms of Agreement. Neither party shall disclose any terms or
------------------
conditions of this Agreement to any Third Party without the prior consent of the
other party; provided, however, that either party may disclose the terms or
conditions of this Agreement, (a) on a need-to-know basis to its legal and
financial advisors to the extent such disclosure is reasonably necessary in
connection with such party's activities as expressly permitted by this Agreement
or for the conduct of its business; (b) to the Third Party licensors of the
Licensed Intellectual Property; (c) to a Third Party in connection with (i) an
equity investment or other form of financing in such party by a Third Party;
(ii) a merger, consolidation or similar transaction entered into by such party;
or (iii) the sale of all or substantially all of the assets of such party; and
(d) as may, in the reasonable opinion of such party's counsel, be required by
applicable law, regulation or court order, including without limitation, a
disclosure in connection with such party's filing of a registration statement or
other filing with the United States Securities and Exchange Commission (in which
event such party will first consult with the other party, to the extent
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
40
reasonably practicable, with respect to such disclosure). Notwithstanding the
foregoing, (i) the parties will jointly issue a press release in mutually agreed
form promptly after execution hereof and (ii) prior to execution of this
Agreement CuraGen and ABX shall agree upon the substance of information that can
be used to describe the terms of this transaction, and CuraGen and ABX may
disclose such information, as modified by mutual agreement from time to time,
without the other party's consent.
12. TECHNOLOGY, INFORMATION AND INTELLECTUAL PROPERTY
-------------------------------------------------
12.1 Ownership.
---------
12.1.1 ABX shall solely own all right, title and interest in the
ABX Technology and Information and in all patent rights and other intellectual
property rights therein. CuraGen shall not (and shall not attempt or purport to)
file or prosecute any patent application in any country which claims or purports
to claim the ABX Technology and Information, unless the parties otherwise
expressly agree in writing. ABX shall solely own all right, title and interest
in the Excluded ABX Technology and in all patent rights and other intellectual
property rights therein. CuraGen shall not (and shall not attempt or purport to)
file or prosecute any patent application in any country which claims or purports
to claim the Excluded ABX Technology.
12.1.2 CuraGen shall solely own all right, title and interest in
the CuraGen Technology and Information and in all patent rights and other
intellectual property rights therein. ABX shall not (and shall not attempt or
purport to) file or prosecute any patent application in any country which claims
or purports to claim the CuraGen Technology and Information, unless the parties
otherwise expressly agree in writing. CuraGen shall solely own all right, title
and interest in the Excluded CuraGen Technology and in all patent rights and
other intellectual property rights therein. ABX shall not (and shall not attempt
or purport to) file or prosecute any patent application in any country which
claims or purports to claim the Excluded CuraGen Technology.
12.1.3 ABX shall solely own all right, title and interest in
Research Program Technology and Information conceived, reduced to practice or
otherwise derived solely by Persons on behalf of ABX, together with all patent
rights and other intellectual property rights therein and, subject to the
provisions of this Agreement, shall have the right to freely exploit, transfer,
license, or encumber its rights thereto. CuraGen shall solely own all right,
title and interest in Research Program Technology and Information conceived,
reduced to practice or otherwise derived solely by Persons on behalf of CuraGen,
together with all patent rights and other intellectual property rights therein
and, subject to the provisions of this Agreement, shall have the right to freely
exploit, transfer, license, or encumber its rights thereto. The parties jointly
shall own all right, title and interest in Research Program Technology and
Information conceived, reduced to practice or otherwise derived jointly by
Persons on behalf of ABX and by Persons on behalf of CuraGen, together with all
patent rights and other intellectual property rights therein. Each party shall
have the right, subject to the provisions of this Agreement, to freely exploit,
transfer, license or encumber its rights in any jointly-owned Research Program
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
41
Technology and Information (and all patent rights and other intellectual
property rights therein) without the consent of, or payment or accounting to,
the other party.
12.1.4 The transfer of physical possession of any Technology and
Information owned by, and the physical possession and use of any Technology and
Information by, CuraGen or ABX, as the case may be, shall not be (nor be
construed as) a sale, lease, offer to sell or lease, or other transfer of title
of such Technology and Information to CuraGen or ABX, as the case may be.
12.1.5 During the term of this Agreement, neither party shall
(and neither party shall attempt or purport to) assign, sell, have sold, lease,
offer to sell or lease, otherwise transfer title to, or otherwise distribute or
license, sublicense or otherwise commercialize or exploit, any Research Program
Technology and Information, except as otherwise set forth-herein or the parties
otherwise expressly agree in writing.
12.2 Assignment and Disclosure. Each party shall cause all employees
-------------------------
and others conducting work on its behalf under this Agreement to promptly
disclose to the other party all Technology and Information in which the other
party has an ownership interest, and to assign any and all right, title and
interest in all Technology and Information and all patent rights and other
intellectual property rights therein in accordance with this Agreement. Each
party shall maintain records in sufficient detail and in good scientific manner
appropriate for patent purposes to properly reflect all work done and results
achieved in conducting its work hereunder, and shall respond to reasonable
requests of the other party for information regarding Technology and Information
in which the other party has an ownership interest.
12.3 Research Program Patent Rights.
------------------------------
12.3.1 Prosecution and Maintenance.
---------------------------
(a) Subject to the provisions of Section 12.3.1(d) below, ABX
shall have the right (but not the obligation), at its sole expense, to prepare,
file, prosecute and maintain the ABX Patent Rights.
(b) CuraGen shall have the right (but not the obligation), at its
sole expense, to prepare, file, prosecute and maintain the CuraGen Patent
Rights.
(c) Subject to the provisions of Section 12.3.1(d) and (e) below,
(i) ABX shall have the right (but not the obligation), at its sole expense, to
prepare, file, prosecute and maintain the Research Program Patent Rights owned
solely by ABX; (ii) CuraGen shall have the right (but not the obligation), at
its sole expense, to prepare, file, prosecute and maintain the Research Program
Patent Rights owned solely by CuraGen; and (iii) CuraGen shall have the right
(but not the obligation) to prepare, file, prosecute and maintain the Research
Program Patent Rights owned jointly by the parties, and ABX shall reimburse
CuraGen on demand for one-half the reasonable expenses thereof.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
42
(d) Upon the effective date of a commercial license under Article
7 for CuraGen Products to a CuraGen Licensed Antigen, and for so long as such
license remains in effect, (i) CuraGen shall have the right (but not the
obligation) to assume control of the preparation, filing, prosecution and
maintenance of the Research Program Patent Rights that specifically and solely
claim such CuraGen Licensed Antigen or the use thereof (ii) CuraGen shall have
the right (but not the obligation) to assume control of the preparation, filing,
prosecution and maintenance of the ABX Patent Rights that specifically and
solely claim the use of such CuraGen Antigen or Antibodies to such CuraGen
Licensed Antigen or the use thereof; (iii) CuraGen shall reimburse ABX on demand
for all previously unreimbursed expenses of the preparation, filing, prosecution
and maintenance of such ABX Patent Rights and Research Program Patent Rights;
and (iv) CuraGen shall be solely responsible for the expenses of the
preparation, filing, prosecution and maintenance of such ABX Patent Rights and
Research Program Patent Rights thereafter. in the event there are any Research
Program Patent Rights or ABX Patent Rights with such claims and other claims,
ABX shall file such divisional or other applications, to the extent legally
permitted, as may be necessary to separate such claims into a separate
application, which CuraGen shall then have the right to control as aforesaid. If
the claims cannot be so separated ABX will take no action with respect to any
such claim that would materially narrow the scope thereof without CuraGen's
express written consent, which consent shall not be unreasonably withheld or
delayed.
(e) Upon the effective date of a commercial license under Article
7 for ABX Products to an ABX Licensed Antigen, and for so long as such license
remains in effect, (i) ABX shall have the right (but not the obligation) to
assume control of the preparation, filing, prosecution and maintenance of the
Research Program Patent Rights that specifically and solely claim such ABX
Licensed Antigen or the use thereof; (ii) ABX shall have the right (but not the
obligation) to assume control of the preparation, filing, prosecution and
maintenance of the CuraGen Patent Rights that specifically and solely claim
antibodies to such ABX Licensed Antigen or the use thereof; (iii) ABX shall
reimburse CuraGen on demand for all previously unreimbursed expenses of the
preparation, filing, prosecution and maintenance of such Research Program Patent
Rights and CuraGen Patent Rights; and (iv) ABX shall be solely responsible for
the expenses of the preparation, filing, prosecution and maintenance of such
Research Program Patent Rights and CuraGen Patent Rights thereafter. In the
event there are any Research Program Patent Rights or CuraGen Patent Rights with
such claims and other claims, CuraGen shall file such divisional or other
applications, to the extent legally permitted, as may be necessary to separate
such claims into a separate application, which ABX shall then have the right to
control as aforesaid. If the claims cannot be so separated CuraGen will take no
action with respect to any such claim that would materially narrow the scope
thereof without ABX's express written consent, which consent shall not be
unreasonably withheld or delayed.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
43
(f) With respect to each patent application and patent within the
Licensed Intellectual Property Rights or Research Program Patent Rights that
specifically and solely claims a Licensed Antigen, an Antibody to a Licensed
Antigen or the use thereof and with respect to each other patent and patent
application within the Research, Program Patent Rights owned jointly by the
parties, the controlling party shall (i) provide the non-controlling party with
any patent application filed by the controlling party prior to filing in order
to provide the non-controlling party with an opportunity to comment thereon, and
consider in good faith reasonable comments by the non-controlling party thereon;
(ii) provide the non-controlling party with any patent application filed by the
controlling party promptly after such filing; and (iii) provide the non-
controlling party promptly with copies of all substantive communications
received from or filed in patent office(s) with respect to such filings and
consider in good faith reasonable comments by the non-controlling party thereon.
(g) The non-controlling party shall assist the controlling party,
upon the controlling party's request, and to the extent commercially reasonable,
in preparing, filing or maintaining the patent applications and patents within
the Research Program Patent Rights and Licensed Intellectual Property Rights.
12.3.2 Enforcement.
-----------
(a) Subject to the provisions of Section 12.3.2(e) below, ABX
shall have the right (but not the obligation), at its sole expense, to control
the enforcement of the ABX Patent Rights; provided, however, that CuraGen shall
have the right (but not the obligation), at its sole expense, to control the
enforcement of those ABX Patent Rights (if any) for which CuraGen assumes
control of the preparation, filing, prosecution and maintenance under Section
12.3.1(d) above.
(b) Subject to the provisions of Section 12.3.2(e) below, CuraGen
shall have the right (but not the obligation), at its sole expense, to control
the enforcement of the CuraGen Patent Rights; provided, however, that ABX shall
have the right (but not the obligation), at its sole expense, to control the
enforcement of those CuraGen Patent Rights (if any) for which ABX assumes
control of the preparation, filing, prosecution and maintenance under Section
12.3.1(e) above.
(c) Subject to the provisions of Section 12.3.2(e) below, the
controlling party identified under Section 12.3.1 above shall have the first
right (but not the obligation), at its sole expense, to enforce the Research
Program Patent Rights.
(d) With respect to each patent within the Licensed Intellectual
Property Rights or Research Program Patent Rights that specifically and solely
claims a Licensed Antigen, an Antibody to a Licensed Antigen or the use thereof,
the controlling party shall keep the non-controlling party informed and consider
in good faith the reasonable comments of the non-controlling party, both prior
to and during any such enforcement. The non-controlling party shall assist the
controlling party, upon request and at the controlling party's sole expense, and
to the extent commercially reasonable, in taking any action to enforce such
Licensed Intellectual Property Rights or Research Program Patent Rights to the
extent the non-controlling party has the right to do so.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
44
(e) If the controlling party fails to xxxxx an infringement of
any patent within the Licensed Intellectual Property Rights or Research Program
Patent Rights that specifically and solely claims a Licensed Antigen, an
Antibody to a Licensed Antigen or the use thereof, or to file an action to xxxxx
such infringement, within ninety (90) days after a written request from the non-
controlling party to do so, or if the controlling party discontinues the
prosecution of any such action after filing patent, the non-controlling party at
its expense may, in its discretion, undertake such action as it determines
appropriate to enforce the Research Program Patent Rights. In such case, the
controlling party shall assist the non-controlling party, upon request and at
the non-controlling party's sole expense, and to the extent commercially
reasonable, in taking any action to enforce such patent within the Licensed
Intellectual Property Rights or Research Program Patent Rights to the extent the
controlling party has the right to do so.
(f) All monies recovered upon the final judgment or settlement of
any such action regarding the Licensed Intellectual Property Rights or Research
Program Patent Rights that specifically and solely claims a Licensed Antigen, an
Antibody to a Licensed Antigen or the use thereof shall be used (i) first, to
reimburse the costs and expenses (including reasonable attorneys' fees and
costs) of the controlling party and the non-controlling party, and (ii) the
remainder, [____________________________________].
12.4 Patent Marking. Each party shall xxxx, and shall cause its
--------------
Sublicensees and their respective Affiliates to xxxx all Products, sold pursuant
to this Agreement by such party, its Sublicensees and their respective
Affiliates in accordance with the requirements of applicable laws and
regulations in the country or countries of manufacture and sale thereof.
12.5 Limitation. Notwithstanding any other provision in this Article
----------
12, (a) ABX shall not be obligated to prepare, file, prosecute, and maintain
patents and patent applications, or to bring or pursue enforcement proceedings
or defend declaratory judgment actions regarding the Licensed ABX Intellectual
Property if, and to the extent that, ABX is not entitled to do so under one or
more ABX In-Licenses, and (b) any rights conveyed under this Article 12
permitting CuraGen to prepare, file, prosecute and maintain certain patents and
patent applications, or to bring and pursue enforcement proceedings, or defend
declaratory judgment actions, regarding the Licensed ABX Intellectual Property,
shall be subject to all applicable ABX In-Licenses, and are conveyed only to the
extent permitted under such agreements.
12.6 Use and Transfer Restrictions. Each party shall use the Technology
-----------------------------
and Information owned by the other party solely for purposes of conducting its
obligations or exercising its rights under this Agreement, at its facilities,
under commercially and scientifically reasonable containment conditions, and not
for any other commercial, business or other use or purpose, without the prior
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
45
express written consent of the other party. Except as otherwise provided in this
Agreement, (a) a party shall not transfer or provide access to the Technology
and Information owned by the other party to any Affiliate or Third Party; (b) a
party shall not transfer or transport the Technology and Information owned by
the other party from its facilities to any other location; (c) a party shall
limit access to the Technology and Information owned by the other party to those
of its employees working on its premises, to the extent such access is
reasonably necessary to conduct its obligations or exercise its rights under
this Agreement; and (d) a party shall not (and shall not attempt or purport to)
assign, sell, have sold, lease, offer to sell or lease, otherwise transfer title
to, or otherwise distribute or license, sublicense or otherwise commercialize or
exploit, any Technology and Information owned by the other party or any interest
therein.
12.7 Grant Backs.
-----------
12.7.1 It is the intent of the parties that this Agreement shall
not restrict ABX's freedom to practice and commercialize the Licensed ABX
Intellectual Property, the XenoMouse Animals and the ABX Technology and
Information, except as expressly set forth herein. CuraGen hereby grants to ABX
a royalty-free, perpetual, irrevocable, exclusive, worldwide license (with the
right to grant sublicenses) under CuraGen's rights in the Research Program
Patent Rights and Research Program Know-How to research, develop, make, have
made, use, offer for sale, sell and import Human Antibody Equivalents and
products comprising Human Antibody Equivalents (other than CuraGen Products) for
all uses. CuraGen hereby grants to ABX a royalty-free, perpetual, irrevocable,
nonexclusive worldwide license (with the right to grant sublicenses) under
CuraGen's rights in the Research Program Patent Rights and Research Program
Know-How to research, develop, make and use Antibody Equivalents (other than
Human Antibody Equivalents) solely in connection with the research, development,
making, having made, using, offering for sale, selling and importing of Human
Antibody Equivalents and products comprising Human Antibody Equivalents (other
than CuraGen Products) for all uses. CuraGen hereby grants to ABX a royalty-
free, perpetual, irrevocable, nonexclusive, worldwide license (with the right to
grant sublicenses) under those certain one or more CuraGen Patent Rights, which
have a common claim of priority and relate to the same antigen and in which the
claims within such CuraGen Patent Rights are supported by information or data
derived from the use of the ABX Technology and Information and/or Research
Program Technology and Information, solely in connection with the research,
development, making, having made, using, offering for sale, selling and
importing of Human Antibody Equivalents and products comprising Human Antibody
Equivalents (other than CuraGen Products) for all uses.
12.7.2 It is the intent of the parties that this Agreement shall
not restrict CuraGen's freedom to practice and commercialize the Licensed
CuraGen Intellectual Property, the CuraGen Databases, and the CuraGen Technology
and Information, except as expressly set forth herein. ABX hereby grants to
CuraGen a royalty-free, perpetual, irrevocable, exclusive, worldwide license
(with the right to grant sublicenses) under ABX's rights in the Research Program
Patent Rights and Research Program Know-How to research, develop, make, have
made, use, offer for sale, sell and import Antibody Equivalents (other than
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
46
Human Antibody Equivalents) and compositions other than Antibody Equivalents,
and products (other than ABX Products) comprising Antibody Equivalents (other
than Human Antibody Equivalents) and compositions other than Antibody
Equivalents, for all uses; provided, however, that ABX reserves, for itself and
its sublicensees, the right under ABX's rights in the Research Program Patent
Rights and Research Program Know-How to exercise its license rights granted
under Section 12.7.1 above. ABX hereby grants to CuraGen a royalty-free,
perpetual, irrevocable, nonexclusive, worldwide license (with the right to grant
sublicenses) under those certain one or more ABX Patent Rights, which have a
common claim of priority and relate to the same antigen and in which the claims
within such ABX Patent Rights are supported by information or data derived from
the use of the CuraGen Technology and Information and/or Research Program
Technology and Information, solely in connection with the research, development,
making, having made, using, offering for sale, selling and importing of Antibody
Equivalents (other than Human Antibody Equivalents) and compositions other than
Antibody Equivalents, and products (other than ABX Products) comprising Antibody
Equivalents (other than Human Antibody Equivalents) and compositions other than
Antibody Equivalents, for all uses.
13. INDEMNIFICATION
13.1 ABX. ABX shall indemnify and hold harmless CuraGen, and its
----
directors, officers, employees and agents, from and against all losses,
liabilities, damages and expenses, including reasonable attorneys' fees and
costs (collectively, "Liabilities"), resulting from any claims, demands, actions
or other proceedings by any Third Party arising from (a) the material breach of
any representation, warranty or covenant by ABX under this Agreement, (b) any
use, handling or storage by ABX, its Sublicensees (other than CuraGen) and their
respective Affiliates of the CuraGen Technology and Information or the Research
Program Technology and Information, (c) the manufacture, use, sale, handling or
storage by ABX, its Sublicensees (other than CuraGen) and their respective
Affiliates of ABX Products (without regard to culpable conduct), or (d) any use
by ABX, its Sublicensees (other than CuraGen) and their respective Affiliates of
the Confidential Information of CuraGen; provided, however, that ABX shall not
be obligated to indemnify or hold harmless CuraGen for such Liabilities to the
extent that such Liabilities arise from the gross negligence or willful
misconduct of CuraGen.
13.2 CuraGen. CuraGen shall indemnify and hold harmless ABX, and its
-------
directors, officers, employees and agents, from and against all Liabilities
resulting from any claims, demands, actions or other proceedings by any Third
Party arising from (a) the material breach of any representation, warranty or
covenant by CuraGen under this Agreement, (b) any use, handling or storage by
CuraGen, its Sublicensees (other than ABX) and their respective Affiliates of
the ABX Technology and Information or the Research Program Technology and
Information, (c) the manufacture, use, sale, handling or storage by CuraGen, its
Sublicensees (otheE than ABX) and their respective Affiliates of CuraGen
Products (without regard to culpable conduct), or (d) any use by CuraGen, its
Sublicensees (other than ABX) and their respective Affiliates of the
Confidential Information of ABX; provided, however, that CuraGen shall not be
obligated to indemnify or hold harmless ABX for such Liabilities to the extent
that such Liabilities arise from the gross negligence or willful misconduct of
ABX.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
47
13.3 Procedure. If a party (an "Indemnitee") intends to claim
---------
indemnification under this Article 13, it shall promptly notify the indemnifying
party (the "Indemnitor") in writing of any claim, demand, action or other
proceeding for which the Indemnitee intends to claim such indemnification, and
the Indemnitor shall have the right to participate in, and, to the extent the
Indemnitor so desires, to assume the defense thereof with counsel mutually
satisfactory to the parties; provided, however, that an Indemnitee shall have
the right to retain its own counsel, with the fees and expenses to be paid by
the Indemnitor, if representation of such Indemnitee by the counsel retained by
the Indemnitor would be inappropriate due to actual or potential differing
interests between such Indemnitee and any other party represented by such
counsel in such proceeding. The indemnity agreement in this Article 13 shall not
apply to amounts paid in settlement of any claim, demand, action or other
proceeding if such settlement is effected without the consent of the Indemnitor,
which consent shall not be withheld or delayed unreasonably. The failure to
deliver written notice to the Indemnitor within a reasonable time after the
commencement of any such action, if prejudicial to its ability to defend such
action, shall relieve such Indemnitor of any liability to the Indemnitee under
this Article 13, but the omission so to deliver written notice to the Indemnitor
shall not relieve it of any liability that it may have to any party claiming
indemnification otherwise than under this Article 13. The party claiming
indemnification under this Article 13, its employees and agents, shall
reasonably cooperate with the Indemnitor and its legal representatives in the
investigation of any claim, demand, action or other proceeding covered by this
indemnification.
13.4 Insurance. Each party shall maintain insurance, including product
---------
liability insurance, with respect to the research, development, manufacture and
sale of Products hereunder by such party, its Sublicensees and their respective
Affiliates in such amount as such party customarily maintains with respect to
the research, development, manufacture and sale of its other products. Each
party shall maintain such insurance for so long as such party, its Sublicensees
and their respective Affiliates continues to research, develop, manufacture or
sell any Products hereunder, and thereafter for so long as such party
customarily maintains insurance covering the research, development, manufacture
and sale of its other products.
14. TERM AND TERMINATION
14.1 Term. The term of this Agreement shall commence on the Effective
----
Date and, unless earlier terminated, shall continue in full force and effect
until the expiration of the parties' respective royalty obligations pursuant to
this Agreement.
14.2 Termination.
-----------
14.2.1 If CuraGen breaches its obligations under Section 8.2, 8.3
or 8.4 above, or materially breaches its obligations under Section 10.1 above,
with respect to any Antigen or to CuraGen Products to any CuraGen Licensed
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
48
Antigen, and such breach shall have continued for ten (10) days, in the case of
breaches under Section 8.2, 8.3, or 8.4, or for thirty (30) days, in the case of
material breaches under Section 10.1, after written notice of such breach was
provided to CuraGen by ABX, ABX shall have the right at its option to terminate
the licenses (or sublicenses, as the case may be) under this Agreement with
respect to such Antigen or to CuraGen Products to such CuraGen Licensed Antigen
(as applicable) effective at the end of such ten (10) day or thirty (30) day
period, as the case may be, without otherwise affecting the other licenses (or
sublicenses, as the case may be) granted under this Agreement or the other
remaining provisions of this Agreement. In the event of such termination by ABX,
the Antigen which was the subject of the termination shall be subject to ABX's
standby option under Section 7.2.2, CuraGen's obligation to provide data and
information under Section 7.2.2 shall apply to all data and information in
existence at the time of the termination, the six-month period in which to
exercise such option shall commence on the date of termination, and no payment
shall be due under Section 8.2.3 upon the exercise by ABX of such option.
14.2.2 If ABX breaches its obligations under Section 8.2, 8.3 or
8.4 above, or materially breaches its obligations under Section 10.2 above, with
respect to any Antigen or to ABX Products to any ABX Licensed Antigen, and such
breach shall have continued for ten (10) days, in the case of breaches under
Section 8.2, 8.3, or 8.4, or for thirty (30) days, in the case of material
breaches under Section 10.2, after written notice of such breach was provided to
ABX by CuraGen, CuraGen shall have the right at its option to terminate the
licenses (or sublicenses, as the case may be) under this Agreement with respect
to such Antigen or to ABX Products to such ABX Licensed Antigen (as applicable)
effective at the end of such ten (10) day or thirty (30) day period, as the case
may be, without otherwise affecting the other licenses (or sublicenses, as the
case may be) granted under this Agreement or the other remaining provisions of
this Agreement. In the event of such termination by CuraGen, the Antigen which
was the subject of the termination shall be subject to CuraGen's standby option
under Section 7.1.2, ABX's obligation to provide data and information under
Section 7.1.2 shall apply to all data and information in existence at the time
of the termination, the six-month period in which to exercise such option shall
commence on the date of termination, and no payment shall be due under Section
8.2.3 upon the exercise by CuraGen of such option.
14.2.3 If a party shall have materially breached any of its
material obligations hereunder (other than under Sections 8.2, 8.3, 8.4, 10.1
and 10.2 above), and such breach shall have continued for thirty (30) days after
written notice of such breach was provided to the breaching party by the
nonbreaching party, the nonbreaching party shall have the right (at its option),
effective at the end of such thirty (30) day period, to terminate the Research
Program and all options, licenses, and rights to obtain additional options and
licenses granted to the breaching party under this Agreement; provided, however,
that any commercial licenses previously granted to the breaching party under
Article 7 above (and any related continuing research licenses to the breaching
party under Section 6.1 above), all licenses granted to the breaching party
under Section 12.7 above, and all options, licenses, and rights to obtain
additional options and licenses granted to the nonbreaching party under this
Agreement shall survive any such termination by the nonbreaching party under
this Section 14.2.3.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
49
14.3 Effect of Expiration or Termination.
14.3.1 Expiration or termination of this Agreement shall be
without prejudice to any rights which shall have accrued to the benefit of a
party prior to such expiration or termination. Without limiting the foregoing,
the license rights granted under Section 4.4.1 and the provisions of Sections
4.6.3 and 8.1 and Articles 9, 11, 12, 13, 14 and 15 shall survive any expiration
or termination of this Agreement.
14.3.2 In the event of termination of the Research Program and
the options, licenses and rights of ABX under this Agreement by CuraGen pursuant
to Section 14.2.3 upon an uncured material breach of a material obligation by
ABX, then the payments remaining to be paid to ABX under Section 8.1 shall be
reduced [______________________]. Such reduction shall be applied against the
payments remaining to be paid to ABX under Section 8.1 on a last-to-be-paid
first-reduced basis.
14.3.3 In the event of expiration of this Agreement prior to the
fifth anniversary of the Effective Date, termination of this Agreement for any
reason, or termination of the Research Program and the options, licenses and
rights of CuraGen by ABX pursuant to Section 14.2.3 above, then all payments
remaining to be paid to ABX under Section 8.1 shall be immediately due and
payable on or before the date thirty (30) days following the effective date of
such expiration or termination.
14.3.4 Following the expiration under Section 8.4.3(e) of
CuraGen's obligation to pay royalties to ABX hereunder with respect to a CuraGen
Product (provided that CuraGen's option, license or other rights with respect to
such CuraGen Product have not been previously terminated), CuraGen shall have a
fully-paid up, non-exclusive license (or sublicense, as the case may be) (with
the right to grant sublicenses) under the ABX Know-How and Research Program
Know-How solely to make, have made, use, offer for sale, sell and import such
CuraGen Product for use in the Commercial Field. Following the expiration under
Section 8.4.3(e) of ABX's obligation to pay royalties to CuraGen hereunder with
respect to an ABX Product (provided that ABX's option, license or other rights
with respect to such ABX Product have not been previously terminated), ABX shall
have a fully-paid up, non-exclusive license (or sublicense, as the case may be)
(with the right to grant sublicenses) under the CuraGen Know-How and Research
Program Know-How solely to make, have made, use, offer for sale, sell and import
such ABX Product for use in the Commercial Field.
14.3.5 Upon termination of this Agreement, or upon termination of
the licenses (or sublicenses, as the case may be) hereunder for any CuraGen
Product, CuraGen, its Sublicensees and their respective Affiliates shall have
the right to sell or otherwise dispose (consistent with all applicable laws and
regulations and subject to Articles 8 and 9 above) of the stock of any CuraGen
Product then on hand. Upon termination of this Agreement, or upon termination of
the licenses (or sublicenses, as the case may be) hereunder for any ABX Product,
ABX, its Sublicensees and their respective Affiliates shall have the right to
sell or otherwise dispose (consistent with all applicable laws and regulations
and subject to Articles 8 and 9 above) of the stock of any ABX Product then on
hand.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
50
14.3.6 Upon termination of this Agreement by ABX, or upon
termination by ABX of the licenses (or sublicenses, as the case may be)
hereunder for any CuraGen Product, any Sublicense granted by CuraGen hereunder
shall survive, provided that upon request by ABX, such Sublicensee promptly
agrees in writing that such Sublicensee shall be bound by the terms of such
Sublicense for the benefit of ABX and ABX shall have all of the rights of
CuraGen under such Sublicense, but ABX shall not be bound by any obligation of
CuraGen thereunder except to the extent it is already bound to an equivalent
obligation hereunder. Upon termination of this Agreement by CuraGen, or upon
termination by CuraGen of the licenses (or sublicenses, as the case may be)
hereunder for any ABX Product, any Sublicense granted by ABX hereunder shall
survive, provided that upon request by CuraGen, such Sublicensee promptly agrees
in writing that such Sublicensee shall be bound by the terms of such Sublicense
for the benefit of CuraGen and CuraGen shall have all of the rights of ABX under
such Sublicense, but CuraGen shall not be bound by any obligation of ABX
thereunder except to the extent it is already bound to an equivalent obligation
hereunder.
14.3.7 Except as otherwise expressly agreed in writing by the
parties, promptly upon the expiration or earlier termination of the Research
Program, each party shall destroy all remaining Research Program Technology and
Information and Antigen Specific Materials and Information; in each case except
to the extent such party retains an option or license (or sublicense, as the
case may be) thereto hereunder; that survives such expiration or termination.
14.3.8 Except as otherwise expressly agreed in writing by the
parties, promptly upon the expiration or earlier termination of this Agreement,
(a) CuraGen shall destroy or return to ABX (as ABX `shall direct) all remaining
ABX Technology and Information;
(b) ABX shall destroy or return to CuraGen (as CuraGen shall
direct) all remaining CuraGen Technology and Information; and (c) each party
shall destroy all remaining Research Program Technology and Information and
Antigen Specific Materials and Information; in each case except to the extent
such party retains a license (or sublicense, as the case may be) thereto
hereunder; that survives such expiration or termination.
14.3.9 Except as otherwise expressly agreed in writing by the
parties, promptly upon the termination of the license (or sublicense, as the
case may be)s granted to CuraGen hereunder regarding any Antigen, CuraGen shall
destroy or return to AB-X (as ABX shall direct) all remaining ABX Technology and
Information regarding such Antigen, Antibodies to such Antigens and Products to
such Antigen, and shall destroy all remaining Research Program Technology and
Information and Antigen Specific Materials and Information regarding such
Antigen, Antibodies to such Antigens and Products to such Antigen.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
51
14.3.10 Except as otherwise expressly agreed in writing by the
parties, promptly upon the termination of the license (or sublicense, as the
case may be)s granted to ABX hereunder regarding any Antigen, ABX shall destroy
or return to CuraGen (as CuraGen shall direct) all remaining CuraGen Technology
and Information regarding such Antigen, Antibodies to such Antigens and Products
to such Antigen, and shall destroy all remaining Research Program Technology and
Information and Antigen Specific Materials and Information regarding such
Antigen, Antibodies to such Antigens and Products to such Antigen.
15. MISCELLANEOUS
15.1 Governing Laws. This Agreement shall be governed by, interpreted
--------------
and construed in accordance with the laws of the State of Delaware, without
regard to conflicts of law principles.
15.2 Waiver. No waiver by any party hereto of any breach or default of
------
any of the covenants or agreements herein set forth shall be deemed a waiver as
to any subsequent and/or similar breach or default.
15.3 Assignments. Neither this Agreement nor any right or obligation
-----------
hereunder may be assigned or delegated, in whole or part, by either party
without the prior express written consent of the other; provided, however, that
either party may, without the written consent of the other, assign this
Agreement and its rights and delegate its obligations hereunder in connection
with the transfer or sale of all or substantially all of its business, or in the
event of its merger, consolidation, change in control or similar transaction.
Any permitted assignee shall assume all obligations of its assignor under this
Agreement. Any purported assignment in violation of this Section 15.3 shall be
void.
15.4 Independent Contractors. The relationship of the parties hereto
-----------------------
is that of independent contractors. The parties hereto shall not be deemed to be
agents, partners or joint venturers of the others for any purpose as a result of
this Agreement or the transactions contemplated thereby.
15.5 Further Actions. Each party agrees to execute, acknowledge and
---------------
deliver such further instruments and to do all such other acts as may be
necessary or appropriate in order to carry out the purposes and intent of this
Agreement.
15.6 Notices. All requests and notices required or permitted to be
-------
given to the parties hereto shall be given in writing, shall expressly reference
the section(s) of this Agreement to which they pertain, and shall be delivered
to the other party, effective on receipt, at the appropriate address as set
forth below or to such other addresses as may be designated in writing by the
parties from time to time during the term of this Agreement.
If to ABX:
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
52
Abgenix, Inc.
0000 Xxxxxxxxx Xxxxxx
Xxxxxxx, Xxxxxxxxxx 00000
Attn: President
with a copy to:
Xxxx Xxxx Xxxx & Freidenrich LLP
0000 Xxxxxxxxx Xxxxx, Xxxxx 0000
Xxx Xxxxx, Xxxxxxxxxx 00000-0000
Attn: Xxxx X. Xxxxxx
If to CuraGen:
CuraGen Corporation
000 Xxxx Xxxxx Xxxxx
Xxx Xxxxx, Xxxxxxxxxxx 00000
Attn: President
with a copy to:
Mintz, Levin, Cohn, Ferris, Glovsky & Popeo, P.C.
Xxx Xxxxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Attn: Xxxxxxx X. Xxxxxx
15.7 No Implied Licenses. Only licenses (or sublicenses, as the case
-------------------
may be) and rights granted expressly herein shall be of legal force and effect.
No license (or sublicense, as the case may be) or other right shall be created
hereunder by implication, estoppel or otherwise. By way of clarification and not
limitation, no license (or sublicense, as the case may be) is granted hereunder
to CuraGen to have in its possession any XenoMouse Animals or to conduct
immunizations thereof.
15.8 Compliance with Laws. Each party shall use the Technology and
--------------------
Information of the other party and the Research Program Technology and
Information in compliance in all material respects with all applicable laws,
guidelines and regulations which are applicable to such Technology and
Information or the use thereof, including without limitation any biosafety
procedures and all safety precautions accompanying such Technology and
Information. Except as otherwise expressly agreed in this Agreement or otherwise
expressly agreed in writing by the parties, neither party shall administer the
Technology and Information of the other party or the Research Program Technology
and Information to humans under any circumstances.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
53
15.9 Export Laws. Notwithstanding anything to the contrary contained
-----------
herein, all obligations of ABX and CuraGen are subject to prior compliance with
United States export regulations and such other United States laws and
regulations as may be applicable, and to obtaining all necessary approvals
required by the applicable agencies of the government of the United States. Each
party shall be responsible for obtaining such approvals as required of it, and
shall use efforts consistent with prudent business judgment to obtain such
approvals. Each party shall cooperate reasonably with the other party and
provide reasonable assistance to the other party as may be reasonably necessary
to obtain any required approvals.
15.10 Force Majeure. Nonperformance of a party (other than for the
-------------
payment of money) shall be excused to the extent that performance is rendered
impossible by strike, fire, earthquake, flood, governmental acts or orders or
restrictions, failure of suppliers, or any other reason where failure to
perform, is beyond the reasonable control and not caused by the negligence,
intentional conduct or misconduct of the nonperforming party.
15.11 No Consequential Damages. IN NO EVENT SHALL A PARTY HERETO BE
------------------------
LIABLE FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF THIS
AGREEMENT OR THE EXERCISE OF ITS RIGHTS HEREUNDER, INCLUDING WITHOUT LIMITATION
LOST PROFITS ARISING FROM OR RELATING TO ANY BREACH OF THIS AGREEMENT,
REGARDLESS OF ANY NOTICE OF SUCH DAMAGES. NOTHING IN THIS SECTION 15.11 IS
INTENDED TO LIMIT OR RESTRICT THE INDEMNIFICATION RIGHTS OR OBLIGATIONS OF
EITHER PARTY.
15.12 Third Party Rights. Notwithstanding anything to the contrary in
------------------
this Agreement, the grant of rights by ABX under this Agreement shall be subject
to and limited in all respects by the terms of the applicable ABX In-License(s)
pursuant to which ABX acquired any Licensed ABX Intellectual Property, and all
rights or sublicenses granted under this Agreement shall be limited to the
extent that ABX may grant such rights and sublicenses under such ABX In-
Licenses. Additionally, and without limiting the foregoing, the rights granted
to CuraGen hereunder, including without limitation any grant of "exclusive"
rights, shall be subject to the rights granted to or retained by GenPharm under
the GenPharm Cross License Agreement.
15.13 Complete Agreement. This Agreement constitutes the entire
------------------
agreement between the parties regarding the subject matter hereof, and all prior
representations, understandings and agreements regarding the subject matter
hereof (including without limitation, the Original Agreement and the letter
dated July 5, 2000, from Xxxxxxxxxxx XxXxxx to Xxxxxxx Xxxxx) either written or
oral, expressed or implied, are superseded and of no effect.
15.14 Counterparts. This Agreement may be executed in counterparts,
------------
each of which shall be deemed to be an original and both together shall be
deemed to be one and the same agreement.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
54
15.15 Headings. The captions to the several Articles and Sections
--------
hereof are not a part of this Agreement, but are included merely for convenience
of reference only and shall not affect its meaning or interpretation.
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
55
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
by their respective duly authorized officers as of the day and year first above
written.
ABGENIX, INC.
By: /s/ Xxxxxxx X. Xxxxx
----------------------------------
(Signature)
Xxxxxxx X. Xxxxx
----------------------------------
(Printed Name)
Chief Business Officer
----------------------------------
(Title)
CURAGEN CORPORATION
By: /s/ Xxxxxxxxxxx X. XxXxxx
----------------------------------
(Signature)
Xxxxxxxxxxx X. XxXxxx
---------------------
(Printed Name)
Executive Vice President
------------------------
(Title)
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
56
EXHIBIT A
[__________________]
1. [__________________________]
A. [___________________________________________________]:
[_____] [________] [_______] [________] [________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
[__________] [____________] [_____________] [_______________] [____________________]
-----------------------------------------------------------------------------------------------------------------------
B. [__________________________________________________________________]:
[______________________________________________________________________].
D. [__________________________________________________________________]:
[______________________________________________________________________].
E. [__________________________________________________________________]:
[______________________________________________________________________].
II. [_______________________________]
A. [______________________________________________________________________].
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
57
B. [______________________________________________________________________].
C. [________________________________________________________________]:
[____________________________________________________________________].
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
58
EXHIBIT B
ELIGIBLE ANTIGEN CRITERIA
A Research Antigen shall become an Eligible Antigen if it meets the following
criteria:
1. [_______________________________________________________________].
2. [_______________________________________________________________].
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
59
EXHIBIT C
RESEARCH PLAN
CURAGEN/ABGENIX RESEARCH PLAN
[ATTACHED]
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
60
EXHIBIT D
THIRD PARTY AGREEMENTS
Collaboration Agreements between CuraGen and
[_________________________________]
[_________________________________]
[_________________________________]
[_________________________________]
[_________________________________]
[_________________________________]
TRADOCS:1445129.1(%Z2H01!.DOC)
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential Investment under Rule 406 of the Securities Act.
61
