EXHIBIT 10.18
COLLABORATIVE RESEARCH AND LICENSE AGREEMENT
This Collaborative Research and License Agreement is made and effective as
of October 18, 1999 (the "Effective Date"), by and between 3-Dimensional
Pharmaceuticals, Inc., a corporation having its principal place of business at
Eagleview Corporate Center, 000 Xxxxxxxx Xxxxx, Xxxxx 000, Xxxxx, XX 00000,
X.X.X. ("3DP"), and Hoechst Schering AgrEvo GmbH, a corporation having its
principal place of business at Xxxxxxxx. 00, X-00000 Xxxxxx, Xxxxxxx ("AgrEvo").
3DP and AgrEvo may be referred to herein as a "Party" or, collectively as
Parties
WHEREAS, 3DP is engaged in discovery research for a variety of biologically
active compounds and the development of technologies to facilitate such
research, and 3DP has developed patented and other proprietary systems for
generating chemical compounds having desired biological and other properties;
WHEREAS, AgrEvo is engaged in research and development of biologically
active compounds and the development of technology for various agrochemical and
related purposes;
WHEREAS, 3DP and AgrEvo desire to enter into a collaborative research and
development agreement to discover, identify, and evaluate compounds that have
certain biological and other properties, and AgrEvo may develop, own, patent,
manufacture, distribute, market and sell worldwide products containing one or
more of such compounds;
NOW, THEREFORE in consideration of the various promises and understandings
set forth herein, the Parties agree as follows:
1. DEFINITIONS
Unless otherwise specifically provided herein, the following terms shall have
the following meanings and may be used in the singular or plural, as indicated
by their context:
1.1 "Accessible Compound Library" means a computer database that is proprietary
to 3DP which describes small organic compounds that are generated using the
DirectedDiversity Software Tools and are not obtained from any public source.
1.2 "Active Compound" means a 3DP Screening Compound that has been synthesized
by 3DP and that has been selected by AgrEvo for development or optimization
according to Section 2.3.
1.3 "Affiliate" of a Party means: (i) any corporation or other business entity
owning or directly or indirectly controlling at least fifty percent (50%) of the
stock or other ownership interest normally entitled to vote for election of
directors of a Party, and (ii) any corporation or other business entity owned or
directly or indirectly controlled by a Party, or by a corporation defined by
subparagraph (i) above, through ownership of at least fifty percent (50%) of
stock or other ownership interest normally entitled to vote for election of
directors.
1.4 "Agreement" shall mean the present agreement including its appendices.
1.5 "Compound Patents" means any Patents that claim: (i) an Active Compound
and/or a Research Program Compound; and/or any precursor, intermediate or
starting material used to make the Active Compound and/or the Research Program
Compound and/or any related compounds of any of the foregoing that are claimed
in the Compound Patents; or (ii) methods of making or using any compositions
containing any of the compounds specified in subparagraph i) above.
1.6 "Confidential Information" means any and all knowledge, information, data
material, experience or reports by one Party to the other under this Agreement
including inventions, compounds, know-how, data and materials relating to the
Research Program or to the licensed Products, and shall include without
limitation research, technical, manufacturing, marketing, financial, personnel
and other business information and plans, whether in oral, written, graphic or
electronic form.
1.7 "Directed Diversity Software Tools" or "Software" means certain software
tools proprietary to 3DP and used to generate combinatorial libraries, calculate
compound property descriptors, compare mapping and visualize compound libraries,
and support multi-objective selection strategies for compound optimization.
1.8 "Effective Date" means the effective date of this Agreement as set forth in
its first paragraph.
1.9 "Field" means plant management, pest management (including fungi) and
animal health, including but not limited to the use of herbicides, plant trait
modifiers, plant growth regulators, pesticides, fungicides, animal health care,
home and garden products, and environmental health products. The term "Field"
expressly excludes human diagnostic and human therapeutic products.
1.10 "Licensed Product" means any commercial product comprising: (1) an Active
Compound or a Research Program Compound; or (2) a compound synthesized by AgrEvo
and covered by a Compound Patent, provided that the compound synthesized by
AgrEvo results from Optimization Synthesis performed at 3DP on an Active
Compound selected for optimization by 3DP pursuant to Sections 2.5 and 5.
-2-
1.11 "Net Sales" means the gross invoiced sales price charged to third parties
in an arms length transaction for all Licensed Products sold by AgrEvo, its
Affiliates and sublicensees in the Field in the Territory after deduction of the
following items: (i) customary trade, quantity and case discounts, wholesaler-
charge backs, or rebates (including rebates to governmental agencies); provided
that such discounts, charge backs and rebates are not applied disproportionately
with respect to particular products sold; (ii) customary credits or allowances
for rejection or return of previously sold Licensed Products; (iii) any direct
tax or government charge (other than an income tax) levied on the sale, use,
transportation or delivery of a Licensed Product and borne by the seller
thereof; and (iv) any charge for freight or insurance if separately stated.
Combination Products: Where Licensed Product is sold in the form of a
Combination Product containing one or more active ingredients in addition to an
Active Compound, Research Program Compound or a compound synthesized by AgrEvo
and covered by a Compound Patent, provided that the compound synthesized by
AgrEvo results from Organization Synthesis performed at 3DP on an Active
Compound selected for optimization by 3DP pursuant to Sections 2.6 and 5.3
(hereinafter, "Licensed Compounds"), Net Sales for such Combination Product will
be calculated by multiplying actual Net Sales of such Combination Product by the
fraction A/(A+B) where A is the net invoice price to third parties of product
containing such Licensed Compound, if sold separately. If, on a country-by-
country basis, the other active component or components in the combination are
not sold separately and where B is the net invoice price to third parties of
product containing the additional ingredients, if sold separately in said
country, Net Sales for the purpose of determining royalties on the Combination
Product shall be calculated by multiplying actual Net Sales of such Combination
Product by the fraction A/C where A is the invoice price of Product containing
the Licensed Compound, if sold separately, and C is the invoice price of the
Combination Product. If, on a country-by-country basis, neither the Product nor
the other active component or components of the Combination Product is sold
separately in said country, Net Sales for the purposes of determining royalties
of the combination Product shall be reasonably allocated between the Product and
the other active components based upon their relative value as determined by the
Parties hereto in good faith.
1.12 "Optimization Synthesis" means at least [**] interactive rounds of SAR
generation, selection synthesis and testing.
1.13 "Patents" means all patent applications or issued patents, including
provisionals, divisionals, continuations, continuations-in-part, reissues and
extensions derived therefrom in any country.
1.14 "Probe library" means the collection of discrete, structurally diverse
small organic molecules synthesized at the Effective Date from the Accessible
Compound Libraries, including additional compounds synthesized subsequently.
1.15 "Research Program" means the collaborative research activities conducted
by 3DP and AgrEvo, as described in Article 2 of this Agreement.
**Certain portions of this Exhibit have been omitted upon a request of
confidential treatment that has been filed with the Commission. The omitted
portions have been filed seperately with the Commission.
-3-
1.16 "Research Program Compound" means a compound that has been synthesized by
3DP in the course of the Research Program, e.g., in the course of optimizing an
Active Compound.
1.17 "Research Program Patents" means any Patents, other than Compound Patents
and 3DP Technology Patents, that claim inventions made by either Party in the
course of the Research Program.
1.18 "Research Program Term" means an initial period of two (2) years from the
Effective Date in which the Parties have agreed to conduct collaborative
research pursuant to the Research Program. This Research Program Term may be
extended pursuant to Sections 2.8 and 6.2 or may be shortened pursuant to
Section 12.4 of this Agreement.
1.19 "Research Steering Committee"or"Committee"means the committee to be formed
pursuant to Article 3 of this Agreement.
1.20 "ThermoFluor Protein Characterization and Screening Technology" or
"ThermoFluor Technology" means a parallel, microscale [**] that provides a
fluorescent signal readout useful for target characterization, assay
development, and compound library screening.
1.21 "Territory" means the entire world.
1.22 "3DP Screening Library" means a collection of [**] compounds, selected
from the Probe Library and from the Accessible Compound Library, provided by 3DP
to AgrEvo for screening pursuant to Section 2.2 of this Agreement "3DP Screening
Compound" means a compound present in the 3DP Screening Library.
1.23 "3DP Technology" means U.S. Patents No. 5,463,564; 5,574,656; 5,684,711
and 5,901,069, associated know-how and other intellectual property rights of 3DP
that cover the use of DirectedDiversity Accessible Compound Libraries,
DirectedDiversity Software Tools and ThermoFluor Protein Characterization and
Screening Technology, and other related technology developed by 3DP during the
course of this Agreement.
1.24 "3DP Technology Patents" mean Patents covering 3DP Technology.
1.25 "Valid Claim" means a claim of a Patent that has not lapsed or become
abandoned or been declared invalid or unenforceable by a court or agency of
competent jurisdiction from which no appeal can be or has been taken.
2. COLLABORATIVE RESEARCH PROGRAM
2.1 Research Program. The goal of the Research Program is to identify and
optimize compounds of commercialization in the Field. The Parties agree to
collaborate in drafting a specific research plan, to be approved by the Research
Steering Committee pursuant to Section 3.1 of this Agreement, and agree to use
their reasonable efforts to achieve the goal of the Research Program.
**Certain portions of this Exhibit have been omitted upon a request of
confidential treatment that has been filed with the Commission. The omitted
portions have been filed seperately with the Commission.
-4-
2.2 3DP Screening Compounds. 3DP will supply 3DP Screening Compounds to AgrEvo
to be screened at AgrEvoin in [**] according to section 2.4 with the aim to
identify Active Compounds for potential use in the Field under the following
terms or other terms agreed to by the Research Steering Committee on behalf of
the Parties:
(a) 3DP will supply the 3DP Screening Library to AgrEvo through approximately
monthly deliveries that cumulatively contains [**] compounds that are jointly
selected by the Research Steering Committee from the Probe Library and
Accessible Compound Libraries designated by 3DP.
(b) 3DP will deliver samples of 3DP Screening Compounds to AgrEvo at a rate of
approximately [**] compounds per month until the entire 3DP Screening Library
has been delivered to AgrEvo. Each 3DP Screening Compound sample will contain
approximately [**] mg of compound as a [**] solution in 96 deep well plates in
DMSO, each deep well plate containing 88 compounds. 3DP agrees to use
commercially reasonable efforts to deliver the initial [**] 3DP Screening
Compounds within four (4) weeks from the Effective Date. If requested by the
Research Steering Committee, reasonable additional amounts of the Screening
Library Compounds will be provided by 3DP to AgrEvo for screening purposes. 3DP
shall be reimbursed by AgrEvo at 3DP's costs for providing such additional
amounts of the Screening Library Compounds, if providing such additional amounts
of compounds requires the services of FTEs outside of the Research Program.
(c) 3DP will supply an electronic record of structures of 3DP Screening
Compounds as delivered. AgrEvo agrees to restrict access to inspection of these
structures to its employees on a need to know basis for AgrEvo's research
activities, unless and until otherwise agreed to in writing by 3DP.
2.3 Screening at AgrEvo. AgrEvo will conduct screening tests on the 3DP
Screening Compounds and Research Program Compounds. Within [**] months
of receipt of a given 3DP Screening Compound, AgrEvo will declare if it is
interested in further research on such a compound. In case of interest, such a
compound shall be designated as an Active Compound by AgrEvo. AgrEvo's general
criteria for the designation of an Active Compound shall be discussed at the
Research Steering Committee.
2.4 Screening at 3DP. Upon request of AgrEvo, 3DP shall perform enzymology or
ThermoFluor Protein Characterization assays on molecular targets supplied by
AgrEvo as required for screening of 3DP Screening Compounds and/or Research
Program Compounds. As approximate performance objectives, it is estimated that
[**] will be required to set up a new enzymologicolassay; [**] will be required
to perform an enzymologicalassay on up to [**] compounds; and [**] will be
required and run a ThermoFluor(R) Protein Characterization assay on up to [**]
compounds. 3DP shall promptly report the results of such screening
to AgrEvo. In the event that AgrEvo requests 3DP to conduct assays on a larger
number of molecular targets than can be conducted by the FTE commitment
hereunder, AgrEvo shall negotiate in good faith to increase FTE support.
**Certain portions of this Exhibit have been omitted upon a request of
confidential treatment that has been filed with the Commission. The omitted
portions have been filed seperately with the Commission.
-5-
2.5 Research on Active Compounds. AgrEvo may conduct further research pursuant
to this Agreement on Active Compounds. If AgrEvo decides that the activity of an
Active Compound is not sufficient to direct further development, it may select,
at its sole discretion, such a compound for optimization. Optimization may be
carried out either by 3DP or AgrEvo. Notwithstanding the foregoing, in deciding
which Party carries out the optimization of a given Active Compound the members
of 3DP in the Research Steering Committee shall have a first right of refusal to
perform such optimization at 3DP. For purposes of clarification, once 3DP
exercises its right to optimize an Active Compound, 3DP shall have the
obligation to perform such optimization, and 3DP shall have the right to
continue optimizing compounds that result from previous rounds of optimization
performed at 3DP. It is understood, however, that 3DP shall not be obligated to
perform optimization work that either exceeds the capacity of the FTE's
allocated to the Research Program, or the term of the Research Program.
2.6 Synthesis at 3DP. 3DP will provide chemical and biochemical support
services for the optimization of Active Compounds as stipulated in Section 2.5
and/or prepare new libraries of Research Program Compounds for screening
according to Sections 2.3 and 2.4. The optimization services to be provided by
3DP shall include the following, with specific FTE allocations to be determined
by the Research Steering Committee.
(a) Optimization of Active Compounds obtained from screens performed at AgrEvo
through iterative rounds of SAR generation, selection, synthesis and testing (at
AgrEvo or 3DP) of compounds selected from 3DP Accessible Compound Libraries. The
Research Program compounds derived from the optimization of Active Compounds
under this subparagraph shall not be considered as part of the 3DP Screening
Library to be provided to AgrEvo under Paragraph 2.2(a). [As an approximate
performance objective, it is estimated that [**] will be required to select,
synthesize, and perform quality control tests on [**] new compounds derived
from established Accessible Compound Libraries (depending on synthesis
routes).]
(b) Design and production chemistry development for new libraries for screening
purposes according to Section 2.3 and 2.4 and/or new libraries based on Active
Compounds obtained from screens performed at AgrEvo or 3DP. Such new libraries
and the Research Program Compounds contained therein shall not be considered as
part of the 3DP Screening Library to be provided to AgrEvo under Paragraph
2.2(a) [As an approximate performance objective, it is estimated that [**]
will be required to develop, scope and verify a new combinational synthesis
for such a library.]
(c) ThermoFluor Protein Characterization assays performed to support
optimization programs on molecular targets supplied by AgrEvo as required for
the progress of the Research Program. [As an approximate performance
objective, it is estimated that [**] will be required to set up and run a
ThermoFluor(R) assay on up to [**] compounds.]
2.7 Notwithstanding the Confidentiality Obligations of Article 8, and except
for the use of DirectedDiversity Software Tools by AgrEvo as described in
Article 4 and the use of the ThermoFluor Workstation as described in Section
5.8, 3DP hereby agrees that research, optimization and development undertaken by
AgrEvo pursuant to the terms of this Agreement may be undertaken for AgrEvo by
any Affiliate or Affiliates of AgrEvo, provided that such Affiliate or
Affiliates agree(s) to be bound by the obligations accepted by AgrEvo under this
Agreement.
**Certain portions of this Exhibit have been omitted upon a request of
confidential treatment that has been filed with the Commission. The omitted
portions have been filed seperately with the Commission.
-6-
2.8 AgrEvo shall have the option to extend the Research Program for additional
one-year terms, on ninety (90) days written notice prior to the end of the
initial or extended term, with a minimum support obligation of [**]. For any
ongoing project that is started but not completed before the expiration of a
term, the parties shall negotiate in good faith an appropriate extension of
the existing term which is less than one year in order to complete such
project.
3. RESEARCH STEERING COMMITTEE
3.1 Research Steering Committee. The Research Program will be managed by a
Research Steering Committee ("Committee"). AgrEvo and 3DP shall each designate
three (3) employees, to be selected by their respective R&D management, to form
this Committee. One of the AgrEvo members shall be designated as the
chairperson. In the event of a tie vote, the chairperson shall cast the
deciding vote, except with respect to the first right of refusal of 3DP to
perform such optimization at 3DP as stipulated in Section 2.5. From time-to-
time, the Research Steering Committee may designate additional qualified
representatives of AgrEvo and 3DP to perform specific Committee-related tasks.
The Research Steering Committee shall be responsible for:
(a) Reviewing and approving a research plan, and monitoring the progress of
research; and
(b) Reviewing the research plan on a quarterly basis, and amending the research
plan from time to time;
(c) Discussing general criteria for designating Active Compounds.
(d) Tracking the development and status of Active Compounds and Research
Program Compounds.
(e) Adjusting the objectives and program priorities of the FTEs allocated to
the Research Program on a quarterly and a project-by-project-basis; and
(f) Reviewing and approving publications and other like disclosures related to
the subject matter of the Research Program.
3.2 Meetings of the Research Steering Committee. The Research Steering
Committee shall meet quarterly, alternating at the facilities of AgrEvo and 3DP,
unless meeting locations are otherwise agreed to by the Committee.
4. DIRECTEDDIVERSITY SOFTWARE TOOLS
The use of DirectedDiversity Software Tools by AgrEvo, as covered by this
Article 4, and support obligations of 3DP, may be extended by AgrEvo to its
Affiliate, AgrEvo UK Limited (Chesterford Park), if AgrEvo UK Limited agrees
in writing to be bound by the provisions of this Agreement. In the event of the
proposed merger of the life science activities of Hoechst Aktiengesellschaft
and Rhone Poulenc SA, the merged entity will be entitled to [**]
**Certain portions of this Exhibit have been omitted upon a request of
confidential treatment that has been filed with the Commission. The omitted
portions have been filed seperately with the Commission.
-7-
[**] if such research sites agree in writing to be bound by the provisions of
this Agreement.
4.1 Use of DirectedDiversity Software Tools. 3DP will provide DirectedDiversity
Software Tools and support to AgrEvo for in-house use by AgrEvo only in the
Field according to Section 4.3.
4.2 DirectedDiversity Software Tools and Support. 3DP will supply the
following Software modules and technical support to AgrEvo:
[**]
4.3 Workstation for DirectedDiversity Software Tools. DirectedDiversity
Software Tools will be implemented on a Xxxxxxx XX Xxxxxxxxxxx. 0XX agrees to
furnish up to [**] singleseat Windows NT DirectedDiversity code installations at
sites to be defined by AgrEvo. 3DP shall provide up to [**] days of on-site
consultation at 3DP to one to three (1-3) AgrEvo scientists per year. Licenses
to DirectedDiversity Software Tools shall be renewable on a yearly basis
provided that the Research Program is in effect. After the expiration or
termination of the Research Program, 3DP agrees to negotiate in good faith with
AgrEvo for AgrEvo's continued use of the Directed Diversity Software Tools. In
the absence of such a further agreement, and upon 3DP's written request, AgrEvo
agrees to return the DirectedDiversity Software Tools promptly to 3DP. 3DP
agrees to use commercially reasonable efforts to install the DirectedDiversity
Software Tools within eight (8) weeks from the Effective Date.
4.4 Limitations on Use of Software. The DirectedDiversity Software Tools are
provided to AgrEvo pursuant to this Agreement and, notwithstanding anything else
in this Agreement to the contrary, they may not be transferred or assigned to,
or used by or on behalf of any third parties. AgrEvo may make no more than one
(1) copy of the Software, which may be used for backup purposes only. AgrEvo
may not, directly or indirectly, decompile, disassemble, reverse engineer or
otherwise attempt to derive source code for the Software, and may not modify,
enhance, create derivative works based on, or otherwise change the Software,
AgrEvo may not sell, assign, lease, sublicense, or otherwise transfer, disclose,
or grant access to the Software or any copy thereof to any third party, without
the written consent of 3DP, which may be withheld in 3DP's sole discretion.
Except as expressly permitted by this Agreement, AgrEvo may not place or install
any portion of the Software on any electronic media, including but not limited
to, local or wide area networks, multiple processing units, multiple site
arrangements, service or software rental bureaus, list servers, electronic
bulletin boards, World Wide Web sites or any other server that is Internet-
enabled.
4.5 Proprietary Rights, Protection of Confidentiality. AgrEvo acknowledges
that 3DP owns all right, title and interest in and to the Software or any
portion thereof. AgrEvo acknowledges that the Software contains confidential
and proprietary information and trade secrets of 3DP whether or not the
Software, or any portion thereof, is or may be copyright or copyrightable and/or
patented or patentable, and that the Software is disclosed to AgrEvo in the
strictest confidence. AgrEvo hereby agrees to maintain the Software in
confidence using the same degree of care as
**Certain portions of this Exhibit have been omitted upon a request of
confidential treatment that has been filed with the Commission. The omitted
portions have been filed seperately with the Commission.
-8-
AgrEvo takes to safeguard its own proprietary information and trade secrets, but
in no event shall AgrEvo use less than a reasonable degree of care, and to
refrain from disclosing the Software to third parties.
4.6 Warranties as to the Software. 3DP warrants that, to 3DP's knowledge, based
upon its review of the results of a reasonable search of relevant issued U.S.
patents, as of the Effective Date, the use of the 3DP DirectDiversity Technology
as permitted by this Agreement, will not violate the rights of third parties in
the U.S. In the event that 3DP has reason to change this view after the
Effective Date and during the term of the Research Program, 3DP shall promptly
inform AgrEvo and provide full justification therefor. 3DP guarantees the
operability of the software at the AgrEvo Workstation and that the Software has
been written following the accepted rules of programming.
4.7 Limitation of Warranties and liabilities as to the Software. 3DP SHALL NOT
BE LIABLE FOR ANY INDIRECT, SPECIAL, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE
DAMAGES, ARISING OUT OF OR IN CONNECTION WITH THE LICENSE GRANTED HEREIN OR USE
OF THE SOFTWARE; INCLUDING WITHOUT LIMITATION, LOSS OF DATA, LOSS OF INCOME OR
PROFIT, OR OTHER LOSSES SUSTAINED AS A RESULT OF INJURY TO ANY PERSON OR LOSS OR
DAMAGE TO PROPERTY; OR CLAIMS OF THIRD PARTIES.
5. LICENSE AND ALLOCATION OF RIGHTS
5.1 Research Program License for 3DP Technology. 3DP hereby grants to AgrEvo a
worldwide, non-exclusive, irrevocable license under the 3DP Technology during
the term of the Research Program to conduct the Research Program.
Notwithstanding anything in this Agreement to the contrary, AgrEvo may not use
3DP Technology outside the Field. This license is provided to AgrEvo and those
of its Affiliates who agree to be bound by the provisions of this Agreement and
may not be assigned, sublicensed or used on behalf of any third parties without
written permission from 3DP. Notwithstanding the foregoing, the use of the
DirectedDiversity Software Tools by AgrEvo is limited by the provisions of
Article 4 and Section 5.7, and the use of the ThermoFluor Workstation is limited
by the provisions of Section 5.8.
5.2 Rights to Exclusive Screening. AgrEvo shall have the exclusive right to
screen each 3DP Screening Compound for use in the Field pursuant to Section 2.3
for one [**] from its date of receipt by AgrEvo. Subject to Section 5.3, after
the [**] exclusivity period, 3DP shall regain all rights to a minimum of [**] of
the total compounds supplied to AgrEvo in the 3DP Screening Library. With regard
to 3DP Screening Compounds for which 3DP regains rights pursuant to this Section
5.2, AgrEvo also hereby grants to 3DP a fully paid-up, royalty free worldwide
license in the Field, with the right to sublicense under any Compound Patents
and under Research Program Patents to make, have made, use, sell, have sold,
import and have imported patented products.
**Certain portions of this Exhibit have been omitted upon a request of
confidential treatment that has been filed with the Commission. The omitted
portions have been filed seperately with the Commission.
-9-
5.3 Rights to Nonexclusive Screening. Notwithstanding the provisions of Section
5.2, after the period outlined in Section 5.2, AgrEvo shall have the
nonexclusive right to screen any remaining amount of all 3DP Screening Compounds
for use in the Field. If, as a result of such nonexclusive screening, AgrEvo is
interested in the optimization for subsequent development of a 3DP Screening
Compound, and provided 3DP is not contractually prohibited from granting
development and commercialization rights to AgrEvo for such a compound, 3DP
shall have the first right of refusal to optimize for subsequent development
such a compound under terms and conditions to be negotiated in good faith by the
Parties, taking into account the terms and conditions of this Agreement.
5.4 Rights to Exclusive Optimization and Development. 3DP shall not provide
any Active Compound nor any Research Program Compound to any third party for use
in the Field, unless AgrEvo has declared in writing that it is not interested in
the further development of such Active Compound or Research Program Compound.
5.5 Ownership of Compound Patents by AgrEvo and License to 3DP. AgrEvo shall
own all Compound Patents. AgrEvo hereby grants to 3DP a fully paid-up, royalty
free worldwide, exclusive license outside of the Field, with the right to
sublicense under such Compound Patents and under Research Program Patents to
make, have made, use, sell, have sold, import and have imported patented
products. AgrEvo shall have the right to enforce the Compound Patents in the
Field, and 3DP shall have the right to enforce the Compound Patents outside of
the Field, as described in Section 9.5. Notwithstanding the foregoing, this
license shall not permit 3DP to sell or license for uses outside of the Field,
the specific Active Compounds and Research Program Compounds that are
commercially developed by AgrEvo.
5.6 Other 3DP Patents. In case a compound resulting from the Research Program
and developed by AgrEvo is covered by a patent or patent application of 3DP, 3DP
hereby grants to AgrEvo irrevocable worldwide, exclusive license in the Field
under such patent to make, have made, use, sell, have sold, import and have
imported licensed Products, under the conditions stipulated in Article 6,
provided that 3DP is not contractually prohibited from granting such an
exclusive license.
5.7 Research License to DirectedDiversity Software Tools Outside of the
Research Program. 3DP hereby also grants to AgrEvo a worldwide, nonexclusive
license under the 3DP Technology to utilize the DirectedDiversity Software Tools
within the Field but outside of the Research Program. The license conveyed by
this Section 5.7 is granted to AgrEvo pursuant to the terms and conditions of
Articles 4 and 6 of this Agreement, and may not be assigned or sublicensed or
used on behalf of third parties without written permission from 3DP.
-10-
5.8 ThermoFluor Protein Characterization and Screening Technology. At AgrEvo's
option, 3DP agrees to lease to AgrEvo a ThermoFluor Workstation and associated
analysis software [**]. 3DP hereby also grants to AgrEvo a nonexclusive license
under the 3DP Technology to utilize the ThermoFluor Protein Characterization and
Screening Technology within the Field also outside of the Research Program. The
license conveyed by this Section 5.8 is granted, pursuant to the terms and
conditions of Article 6 of this Agreement, to AgrEvo and its Affiliate, as such
Affiliate is defined in Article 4, and may not be assigned or sublicensed or
used on behalf of third parties without written permission from 3DP.
6. FINANCIAL TERMS
6.1 3DP Technology Licensing Fee ($ U.S. Dollars). In consideration of the
rights granted and services provided by 3DP under this Agreement, AgrEvo agrees
to pay the following sums to 3DP: (a) [**] due within four (4) weeks of the
Effective Date of this Agreement provided that AgrEvo has received the inital
[**] 3DP Screening Library Compounds as provided in Paragraph 2.2(b); (b) [**]
within three (3) weeks of delivery by 3DP of the first [**] 3DP Screening
Compounds; (c) [**] within three (3) weeks of delivery by 3DP of the second [**]
3DP Screening Compounds; and (d) [**] annual fee due on installation and on
each anniversary thereafter, for each single-seat DirectedDiversity(R)
workstation installation described in Section 4.3.
6.2 3DP Optimization Services and Allocated FTE Costs. Allocated FTE costs will
be supported by AgrEvo at the rate of [**] for the initial two (2) year term
of the Research Program, to be paid quarterly in advance. 3DP agrees to
allocate [**] three (3) months from the Effective Date of this Agreement.
After the first [**] of the program, the total FTE allocation shall be [**].
In the event that the term of the Research Program is extended pursuant to
Sections 2.8 and 5.3, AgrEvo shall support FTE costs to be negotiated in good
faith by the Parties.
6.3 Development Milestone Payments. Development milestone payments are to be
paid for each compound advanced for commercial development as a result of the
collaboration according to the following schedule: (a) [**] on selection of an
Active Compound or Research Program Compound for thirty (30) or ninety (90)
days oral toxicology studies on rodents; and (b) [**] on selection of an
Active Compound or Research Program Compound for chronic toxicology studies on
rodents.
6.4 Performance Incentive Payment. AgrEvo agrees to pay [**] to 3DP on the
selection in any three (3) year period of three (3) Active Compounds and/or
Research Program Compounds for chronic toxicology studies on rodents.
6.5 Royalty on Licensed Products. In consideration of the grant of rights
under Article 5 of this Agreement, AgrEvo agrees to pay 3DP a royalty of [**]
on the first [**] of annual Net Sales of each Licensed Product, combined for
all uses in the Field. AgrEvo further agrees to pay 3DP a royalty of [**] on
the amount of annual Net Sales in excess of [**] of each Licensed Product,
combined for all uses in the Field. Notwithstanding the foregoing, royalties
pursuant to this Section 6.5 shall be due only for Net Sales of Licensed
Products to the extent that they fall within the scope of a Valid Claim of the
Compound Patents. No royalties shall be due on Net Sales of a Licensed
Product, to the extent that it is covered by a Compound Patent application
that AgrEvo chooses not to file or pursue, but that 3DP does choose to file or
pursue as described in Section 9.3(a), more than five (5) years from the time
that the application was first filed in that country unless and until the
Compound Patent actually issues in that country.
6.6 Additional Support for DirectedDiversity(R) Software Tools. The annual fee
for the DirectedDiversity(R) workstations pursuant to Section 6.1 shall
include on-site consulting at 3DP for [**] per year. Additional consulting at
3DP or AgrEvo shall be available during the term of the Research Program at [**]
(reasonable travel and lodging expenses to be borne by AgrEvo).
6.7 ThermoFluor(R) Technology Financial Terms. Upon request by AgrEvo made
during the initial term of the Research Program, 3DP agrees to grant AgrEvo [**]
to be delivered to AgrEvo for use in the Field. The [**] fee shall be [**] and
shall be paid on the following schedule. [**] at the commencement of the [**];
and [**]. AgrEvo may [**].
6.8 Mode of Payment. All payments to 3DP shall be made against invoice within
thirty (30) days net in United States Dollars in the requisite amount to one
account to be named by 3DP. As to the royalty payments, the amount of Net Sales
in any country in the Territory shall be converted into U.S. Dollars, by
applying the buying rate for the application day of conversion as published by
Wall Street Journal on the last business day of applicable quarter.
6.9 Taxes.
(a) General. Any existing or future taxes, duties, fees or other charges which
are incurred in connection with the conclusion and execution of this Agreement
shall be borne by AgrEvo if they are incurred in the Federal Republic of Germany
and by 3DP if they are incurred in the U.S.
(b) German Income Tax. 3DP becomes with the license fee income a non-resident
taxpayer in Germany, and AgrEvo has to deduct and pay the income tax at a rate
of 25% of the license income (Section 50(a)(4) no.3 EStG). According to the
Double Tax Treaty between the U.S. and the Federal Republic of Germany, licensee
fees derived and beneficially owned by a resident of a Contracting State shall
be taxable only in that State, which means that 3DP shall only be taxed in the
U.S. This does not apply, if 3DP carries on business in Germany through a
permanent establishment or performs independent personal services from a fixed
base and the property raising the license fee is part of these activities (Art.
12). The exemption from the 25% rate has to be applied for at the Bundesamt fur
Finanzen, Bonn/Germany. AgrEvo will assist 3DP in this procedure and send the
application form to 3DP in advance to provide sufficient time to prepare and
file the application but in no event less than 60 days before the filing
deadline. AgrEvo is exempted from the duty to deduct and pay only from that
point in time, when AgrEvo has received the exemption assessment from the
Bundesamt fur Finanzen. The application should be made immediately after signing
the contract. Payments from this agreement should be done after AgrEvo has
received the exemption assessment. If payments will be done before this point in
** Certain portions of this Exhibit have been omitted upon a request of
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
-11-
time, AgrEvo will deduct and pay the amount of 25% of the license income, but
then AgrEvo will assist 3DP with the refund application.
(c) VAT. In general, 3DP becomes a VAT player on the license fees received from
AgrEvo. AgrEvo would have to deduct and pay the VAT (actual rate: 16%). This can
be avoided, if 3DP does not allocate VAT in its invoices submitted to AgrEvo,
and AgrEvo, if VAT would be allocated, could be refunded (Section 52 UstDV,
Nullregelung ("Zero Regulation")). AgrEvo shall confirm the non-deduction of VAT
to 3DP.
7. AGREVO OBLIGATIONS
7.1 Development. The development of any compound from the Research Program
(Active Compound, Research Program Compound or a compound resulting from
optimization work by AgrEvo) is at the sole discretion of AgrEvo. The above
notwithstanding, in developing and commercializing such a compound AgrEvo will
use its reasonable efforts, comparable to those extended to its in-house
development of products of similar importance and/or commercial value.
7.2 Annual Progress Reports. AgrEvo shall provide 3DP with written annual
reports after the end of each calendar year during the term of this Agreement to
report on AgrEvo's progress in developing Active Compounds and Research Program
Compounds. The obligation to submit such progress reports shall end upon the
commencement of Net Sales.
7.3 Annual Sales Reports. Following first Net Sales, AgrEvo shall provide 3DP
with written annual reports on Net Sales within ninety (90) days after the end
of each calendar year during the term of this Agreement.
7.4 Records Retention. AgrEvo, its Affiliates and sublicensees shall keep
complete, accurate and correct records of Net Sales in sufficient and
appropriate detail to determine the amount of royalties due to 3DP. Such
records shall be available for inspection and maintained for a period of three
(3) years after the payment of any such royalty. AgrEvo shall permit such books
and records to be examined at a reasonable time during normal business hours by
a certified public accountant chosen by 3DP and reasonably acceptable to AgrEvo
for the purposes only of verifying the report and payments required by this
Agreement. Such investigation shall be at the expense of 3DP unless it reveals
a discrepancy in 3DP's favor of more than ten per cent, in which event it shall
be at AgrEvo's expense.
7.5 Compliance with Applicable Law. AgrEvo agrees to comply with all
applicable federal, state and local laws that relate to the manufacture, use and
sale of Licensed Products. 3DP shall comply with all applicable federal, state
and local laws that relate to its activities under this Agreement.
8. CONFIDENTIAL INFORMATION
-12-
8.1 Confidentiality Obligations. The Parties agree that, for the term of this
Agreement and for five years thereafter, the "Receiving Party" shall keep
completely confidential and shall not publish or otherwise disclose and shall
not use for any purpose (except as expressly permitted hereunder) any
Confidential Information furnished to it by the "Disclosing Party" pursuant to
this Agreement (including without limitation, know-how), except to the extent
that it can be established by the Receiving Party that such Confidential
Information:
(a) was already known to the Receiving Party, other than under an obligation of
confidentiality from the Disclosing Party; at the time of disclosure;
(b) was generally available to the public or otherwise part of the public
domain at the time of its disclosure to the Receiving Party;
(c) became generally available to the public or otherwise part of the public
domain after its disclosure and other than through any act or omission of the
Receiving Party in breach of this Agreement;
(d) was subsequently lawfully disclosed to the Receiving Party by a third
party; or disclosure was compelled by governmental administrative agency or
judicial requirements. The Receiving Party shall notify the Disclosing Party of
such action prior to disclosure.
The obligations of confidentiality and non-use set forth in this Section 8.1
shall also apply to biological material and chemical compounds and associated
information (including without limitation know-how) disclosed by one Party to
the other prior to or during the term of this Agreement.
8.2 Written Assurance. Each Party shall limit the disclosure of Confidential
Information that it receives from the other Party to those employees and
consultants who have a reasonable need to know such Confidential Information in
connection with the activities contemplated under this Agreement. Each party
also agrees to inform its employees and consultants who perform substantial work
on the Research Program of the obligations of confidentiality specified in
Paragraph 8.1 and all such persons shall be bound by the terms of
confidentiality set forth therein. The Parties shall ensure that all employees
and consultants who are inventors on any patents arising under work carried out
under the Research Program will assign to such Party or Parties all inventions
made by such persons during the course of performing the Research Program. Each
Party may disclose the other's Confidential Information to the extent such
disclosure is reasonably necessary in filing or prosecuting patent applications,
prosecuting or defending litigation, complying with applicable governmental
regulations, making a permitted sublicense of its rights hereunder or otherwise
in performing its obligations or exercising its rights hereunder, provided that
if a Party is required to make any such disclosure of another Party's secret or
Confidential Information, it will give at least thirty (30) day written, advance
notice to the latter Party of such disclosure requirement. However, to the
extent such disclosure is not required by law, a Party shall provide the Party
whose Information is being disclosed, an opportunity to identify Confidential
Information that shall not be disclosed.
-13-
8.3 Permitted Disclosures
(a) Notwithstanding the foregoing, or any other provision in this Agreement to
the contrary, and subject to Section 12.7 herein, 3DP may describe the financial
terms of this Agreement in confidence, in connection with capital raising or due
diligence activities. Furthermore, AgrEvo acknowledges that 3DP may be obligated
to disclose terms of this Agreement and make public a copy of this Agreement in
the event it becomes a public company as required by applicable U.S. law.
(b) Notwithstanding the forgoing, AgrEvo shall be free to disclose Confidential
Information to those of its Affiliates that agree to be bound by the terms of
this Agreement.
9. INVENTIONS AND PATENTS
9.1 Ownership. As stipulated in Article 5, all Research Program Patents shall
be individually or jointly owned depending on the relative inventive
contributions of each Party. All 3DP Technology Patents or improvements thereto
made in the course of the Research Program shall be owned by 3DP regardless of
inventorship. All Compound Patents shall be owned by AgrEvo regardless of
inventorship.
9.2 Disclosure of Inventions. The Parties agree to disclose, on a timely
basis, all inventions and discoveries made in the course of the Research Program
to the Research Steering Committee.
9.3 Filing of Patent Applications.
(a) Compound Patents. AgrEvo has the right but not the obligation to file and
pursue Compound Patents. If AgrEvo chooses to do so, then 3DP shall not file or
pursue any patent directed to the same invention. If AgrEvo chooses not to do
so, then 3DP shall have the right but not the obligation to file and pursue such
Compound Patents at 3DP's expense. This right includes the right to file in
countries where AgrEvo has not sought patent protection.
If necessary, 3DP will assist AgrEvo in complying with all formal and
substantive requirements for filing such Compound Patents free of charge. If
AgrEvo intends to abandon a Compound Patent in any country it shall inform 3DP
thereof in advance and, upon, request of 3DP, shall assign said patent in said
county to 3DP at 3DP's expense.
(b) Research Program Patents. AgrEvo has the right but not the obligation to
file and pursue Research Program Patents that are owned solely by AgrEvo. 3DP
has the right but not the obligation to file and pursue Research Program Patents
that are owned solely by 3DP. Where there is co-inventorship and thus co-
ownership of Research Program Patents, the Parties will decide who is in the
best position to file, and shall regularly provide each other with copies of all
filings and other materials submissions and correspondence with the patent
offices, in sufficient time to allow for review and comment. The Parties shall
consult in good faith as to the territorial
-14-
scope of filing jointly owned Research Program Patents and on the preparation,
prosecution and maintenance and jointly owned Research Program Patents.
(c) 3DP Technology Patents. 3DP shall have the sole responsibility and
discretion as to the filing and prosecution of any 3DP Technology Patents to the
extent that they claim 3DP Technology.
9.4 Patent Expenses. AgrEvo shall bear the costs of prosecuting and
maintaining Compound Patents, owned by AgrEvo. 3DP shall bear the costs of
prosecuting and maintaining any patents owned by 3DP. The Parties agree to
share the reasonable cost of prosecuting and maintaining jointly owned Research
Program Patents. However, either party may chose to assign any of such Compound
Patents or jointly owned Research Program Patents to the other party and have no
further obligations for costs for such patent rights and no further license
rights with respect to Compound Patents.
9.5 Enforcement of Compound Patents.
If either Party considers that a Valid Claim of any of the Compound Patents or
Research Program Patents is being infringed by a third Party in the Field, it
shall notify the other Party and provide it with any evidence of such
infringement which is reasonably available. AgrEvo shall have the right but not
the obligation at its own expense, to attempt to remove such infringement by
commercially appropriate steps, including suit. If required by law, 3DP shall
join such suit as a party, at AgrEvo's reasonable expense. In the event AgrEvo
does not take commercially appropriate steps with respect to such infringement
that is likely to have a material adverse effect on the sale of Licensed
Products, within six months following notice of such infringement, 3DP shall
have the right to do so at its expense and shall retain any recovery, provided
that AgrEvo shall not be required to enforce such Compound Patents against more
than one entity or in more than one country at any one time.
Any amounts recovered by AgrEvo pursuant to this Section 9.5, whether by
settlement or judgment, shall be reported as Net Sales for the purpose of
calculating royalties to 3DP, after deduction of AgrEvo's reasonable expenses
[e.g. attorney fees] in making such recovery.
AgrEvo shall have the right to enforce the Compound Patents in the Field, and
3DP shall have the right to enforce the Compound Patents outside of the Field.
However, neither AgrEvo or 3DP or any of their Affiliates and sublicensees, may
enforce Compound Patents without first consulting in good faith with the other
Parties and taking into account the reasonable concerns of all parties.
The Party not enforcing the Compound Patents and Research Program Patents shall
provide reasonable assistance to the other Party, including providing access to
relevant documents and other evidence and making its employees available,
subject to the enforcing Party's reimbursement of any reasonable out-of-pocket
expenses incurred by the other Party.
-15-
9.6 Third Party Patent Rights. If any warning letter or other notice of
infringement is received by a Party, or action, suit or proceeding is brought
against a Party alleging infringement of a patent of any third party in the
manufacture, use or sale of a Licensed Products or the conduct of the Research
Program, the Parties shall promptly discuss the best way to respond. Each party
shall be responsible for responding for its own activities.
10. DISPUTE RESOLUTION
10.1 Dispute Resolution. Any dispute concerning or arising out of this
Agreement or concerning the existence or validity hereof, shall be determined by
the following procedure.
(a) Both Parties understand and appreciate that their long term mutual interest
will be best served by affecting a rapid and fair resolution of any claims or
disputes which may a risk out of services performed under this contract or from
any dispute concerning the terms of this Agreement. Therefore, both Parties
agree to use their best efforts to resolve all such disputes as rapidly as
possible on a fair and equitable basis. Toward this end both Parties agree to
develop and follow a process for presenting, rapidly assessing, and settling
claims on a fair and equitable basis which takes into account the precise
subject and nature of the dispute.
(b) If any dispute or claim arising under this Agreement cannot be readily
resolved by the Parties pursuant to the process described above, the Parties
agree to refer the matter to a panel consisting of the Chief Executive Officer
("CEO") of 3DP and the AgrEvo Board member responsible for research for review
and a non-binding resolution. A copy of the terms of this Agreement, agreed upon
facts (and areas of disagreement), and concise summary of the basis for each
side's contentions will be provided to the panel described above which shall
review the same, confer, and attempt to reach a mutual resolution of the issue.
(c) If the matter has not been resolved utilizing the foregoing process, and
the Parties are unwilling to accept the non-binding decision of the indicated
panel, either, or both Parties may elect to pursue definitive resolution through
binding arbitration, which the Parties agree to accept in lieu of litigation or
other legally available remedies (with the exception of injunctive relief where
such relief is necessary to protect a Party from irreparable harm pending the
outcome of any such arbitration proceeding). Binding arbitration shall be
settled in accordance with the Rules of Conciliation and Arbitration of the
International Chamber of Commerce by a panel of three arbitrators chosen in
accordance with said Rules. This Agreement shall be governed by and construed in
accordance with the substantive laws of the State of Delaware without regard to
the conflicts of laws provision thereof. The arbitration will be held in
Wilmington, Delaware if initiated by AgrEvo, or in Frankfurt am Main, Germany,
if initiated by 3DP. Judgment upon the award rendered may be entered in any
court having jurisdiction and the Parties hereby consent to the said
jurisdiction and venue, and further irrevocably waive any objection which either
Party may have now or hereafter to the laying of venue of any proceedings in
said courts and to any claim that such proceedings have been brought in an
inconvenient forum, and further irrevocably agrees that judgment or order in any
such proceedings shall be conclusive and binding upon the Parties and may be
enforced in the courts of any other jurisdiction thereof.
-16-
11. INDEMNIFICATION
11.1 Indemnification by AgrEvo. AgrEvo shall indemnify, defend and hold 3DP
and its agents, employees and directors (the "3DP Indemnitees") harmless from
and against any and all liability, damage, loss, cost or expense (including
reasonable attorney's fees) arising out of third party claims or suits relates
to (a) AgrEvo's performance of its obligations under this Agreement; or (b) the
manufacture, use or sale or other commercialization of Licensed Products by
AgrEvo and its Affiliates sublicensees, distributors and agents, except to the
extent such claims or suits result from the breach of any of the material
provisions of this Agreement, negligence or willful misconduct of the 3DP
Indemnitees. Upon the assertion of any such claim or suit, the 3DP Indemnitees
shall promptly notify AgrEvo thereof and AgrEvo shall appoint counsel reasonably
acceptable to the 3DP Indemnitees to represent the 3DP Indemnitees with respect
to any claim or suit for which indemnification is sought. The 3DP Indemnitees
shall not settle any such claim or suit without the prior written consent of
AgrEvo, which consent shall not unreasonably be withheld, unless they shall have
first waived their rights to indemnification hereunder.
11.2 Indemnification with respect to U.S. Civil Action No. 98-583 by 3DP. 3DP
shall indemnify, defend and hold AgrEvo and its agents, employees and directors
harmless from and against any and all liability, damage, loss, cost or expense
(including reasonable attorney's fees) arising out of claims in relation to
Civil Action No. 98-583 in the U.S. District Court in Delaware, as stipulated in
Section 13.5, with respect to 3DP's activities pursuant to Section 2.4 of this
Agreement.
11.3 Indemnification by 3DP. 3DP shall indemnify, defendant hold AgrEvo and
its agents, employees and directors (the "AgrEvo Indemnitees') harmless from and
against any and all liability, damage, loss, cost or expense (including
reasonable attorney's fees) arising out of third party claims or suits related
to 3DP's performance to its obligations under this Agreement except to the
extent that such claims or suits result from the breach of any of the material
provisions of this Agreement, negligence or willful misconduct of the AgrEvo
Indemnitees. Upon the assertion of any such claim or suit, the AgrEvo
Indemnitees shall promptly notify 3DP thereof and 3DP shall appoint counsel
reasonably acceptable to the AgrEvo Indemnitees to represent the AgrEvo
Indemnitees with respect to any claim or suit for which indemnification is
sought. The AgrEvo Indemnitees shall not settle any such claim or suit without
the prior written consent of 3DP, which consent shall not unreasonably be
withheld, unless they shall have first waived their rights to indemnification
hereunder.
12. TERM AND TERMINATION
12.1 Effective Date. This Agreement shall commence upon the Effective Date.
12.2 Term of the Research Program. The initial term of the Research Program
shall be two (2) years unless it is extended pursuant to Section 2.8.
-17-
12.3 Termination. This Agreement shall terminate upon the expiration of the
last-to-expire of the Compound Patents and jointly owned Research Program
Patents, unless earlier terminated pursuant to this Article 12.
12.4 Termination for Breach. Failure by a Party to comply with any of the
material obligations contained herein or failure of 3DP to comply essentially
with the requirements of the Research Program shall entitle the Party not in
default to give notice to have the default cured. If such default is not cured
within sixty (60) days after the receipt of such notice, or diligent steps not
taken to cure if by its nature such default could not be cured within sixty (60)
days, the Party not in default shall be entitled, without prejudice to any of
its other rights conferred on it by this Agreement, and in addition to any other
remedies available to it by law or in equity, to terminate this Agreement
provided however, that such right to terminate shall be stayed in the event
that, during such 60 day period, the Party alleged to have been in default shall
have: (i) initiated arbitration in accordance with Section 10.1, above with
respect to the alleged default, and (ii) diligently and in good faith co-
operated in the prompt resolution of such arbitration proceedings.
The right of a Party to terminate this Agreement as provided above shall not be
affected in any way by its waiver or failure to take action with respect to any
prior default.
12.5 Insolvency or Bankruptcy. Either Party may, in addition to any other
remedies available by law or in equity, terminate this Agreement by written
notice to the other Party in the event the latter Party shall have become
insolvent or bankrupt, or shall have an assignment for the benefit of its
creditors, or there shall have been appointed a trustee or receiver of the other
Party or for all or a substantial part of its property or any case or proceeding
shall have been commenced or other action taken by or against the other Party in
bankruptcy or seeking reorganization, liquidation, dissolution, winding-up,
arrangement or readjustment of its debts or any other relief under any
bankruptcy, insolvency, reorganization or other similar act or law of any
jurisdiction now or hereafter in effect, or there shall have been issued a
warrant of attachment, execution, distraint or similar process against any
substantial part of the property of the other Party, and any such event shall
have continued for ninety (90) days undismissed, unbonded and undischarged.
12.6 Consequence of Termination. Upon termination or expiration of the
Research Program Portion of this Agreement, each Party shall promptly return all
relevant records and materials in its possession or control containing the other
Party's Confidential Information and to which the former Party does not have
rights hereunder -- except for one copy for documentation and proof purposes.
The obligations of confidentiality specified in Sections 4.5, 8.1 and 8.2
continue and remain in force even if this Agreement is terminated. Accrued
financial obligations pursuant to Article 6 shall be due and payable upon
termination.
12.7 Change of Control. If 3DP acquires, is acquired by, merges with or
otherwise combines with a company that has substantial activities in the Field
and is a significant competitor of AgrEvo in the Field, AgrEvo has the option to
terminate this Agreement upon written notice to 3DP or to require 3DP to take
reasonable actions necessary to ensure that any of AgrEvo's confidential
information, trade secrets or proprietary information is not disclosed to
personnel within such company directly involved in such competitive activities.
-18-
13. REPRESENTATION AND WARRANTIES
13.1 Authority. Each Party represents and warrants that it has the full right,
power and authority to execute, deliver and perform this Agreement.
13.2 No Conflicts. Each Party represents and warrants that the execution,
delivery and performance of this Agreement does not conflict with, or constitute
a breach or default under any of its charter or organizational documents, any
law, order, judgment or governmental rule or regulation applicable to it, or any
material agreement, contract, commitment or instrument to which it is a party.
13.3 No Existing Third Party Rights. The Parties represent and warrant that
their obligations under this Agreement are not encumbered by any rights granted
by either Party to any third parties. Notwithstanding the foregoing, 3DP
represents to AgrEvo that 3DP has entered into contractual relationship with
X.X. XxXxxx de Nemours & Co. and with Heska Corporation that 3DP warrants will
not encumber this Agreement and the Research Program as presently contemplated
by the Parties.
13.4 Continuing Representations. The representations and warranties of each
Party contained in this Article 13 shall survive the execution and delivery of
this Agreement and shall remain and correct at all times during the term of this
Agreement with the same effect as if made on as of such latter date.
13.5 Warranty as to Third Party Patents. 3DP warrants that, to 3DP's knowledge,
based upon its review of the results of a reasonable search of relevant issued
U.S. patents, as of the Effective Date, the conduct of the Research Program,
including the use of the 3DP DirectedDiversity Technology as permitted by this
Agreement, will not violate any Valid Claims of third parties in the U.S.
Notwithstanding the foregoing, 3DP hereby advises AgrEvo that Scriptgen
Pharmaceuticals, Inc. has filed suit against 3DP in the U.S. District Court in
Delaware, Civil Action No. 98-583 (GNS), alleging that 3DP's ThermoFluor
Technology infringes certain U.S. patent rights of Scriptgen. In the event that
3DP has reason to change this view after the Effective Date and during the term
of the Research Program, 3DP shall promptly inform AgrEvo and provide full
justification therefor.
13.6 No Warranty as to Commercial Success. 3DP offers no warranty that use of
the 3DP DirectedDiversity Technology under this Agreement will result in the
discovery or the successful commercialization of a Licensed Product for in the
Field.
13.7 No Other litigation. Other than Civil Action 98-583 set forth in
Paragraph 13.5, 3DP warrants and represents that it is not presently involved in
any other legal proceedings involving the alleged infringement of any third
party's intellectual property rights.
14. MISCELLANEOUS PROVISIONS
-19-
14.1 Accrued Rights; Surviving Obligations Termination, relinquishment or
expiration of this Agreement for any reasons shall be without prejudice to any
rights which shall have accrued to the benefit of a Party prior to such
termination, or expiration. Such termination, relinquishment or expiration
shall not relieve a Party from obligations which are expressly indicated to
survive termination or expiration of this Agreement. Without limiting the
foregoing, Sections 4.7, 5.2 (license to 3DP), 5.5, 5.6, 7.4 and 9.5, and
Articles 8, 10, 11 and 14 of this Agreement shall survive the expiration or
termination of this Agreement
14.2 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.
14.3 Independent Contractor. Both Parties are independent contractors under
this Agreement. Nothing contained in this Agreement is intended nor is to be
construed so as to constitute AgrEvo or 3DP as partners or joint ventures with
respect to this Agreement. Neither Party shall have any express or implied
right or authority to assume or create any obligation s on behalf of or in the
name of the other Party or to bind the other Party to any other contract,
agreement, or understanding with any Third Party.
14.4 Force Majeure. The failure of a Party to perform any obligation under
this Agreement by reason of acts of God, acts of governments, riots, wars,
strikes, accidents or deficiencies in materials or other causes of a similar
magnitude beyond its control shall not be deemed to be a breach of this
Agreement
14.5 No Trademark Rights. No right, expressed or implied, is granted by this
Agreement to a Party to use in any manner the name or any other trade name or
trademark of a Party in connection with the performance of this Agreement
14.6 Public Announcements. A joint press release to announce the signing of
this Agreement is attached as Appendix A to this Agreement, and the Parties
agrees to coordinate the dissemination of this press release. The Parties shall
consult with each other and reach mutual written agreement before making any
other public announcement concerning this Agreement or the subject matter
hereof. Notwithstanding the foregoing, the Parties may disclose the existence
and general nature of this Agreement. However, neither Party shall use the name
of the other Party for promotional purposes. AgrEvo shall have the right to
review all filings, to the extent that they describe the terms of this Agreement
or the arrangements with AgrEvo reflected herein, prior to their submittal by
3DP to the SEC, including all proposed redacted copies of this Agreement. 3DP
shall give due respect to any reasonable and timely request by AgrEvo with
respect thereto, including confidential treatment of selected portions of this
Agreements.
14.7 Entire Agreement of the Parties; Amendments. This Agreement constitutes
and contains the entire understanding and agreement of the Parties respecting
the subject matter hereof and cancels and supersedes any all prior negotiations,
correspondence, understandings and agreements between the Parties, whether oral
or written, regarding such subject matter. No
-20-
waiver, modification or amendment of any provision of this Agreement shall be
valid or effective unless made in writing and signed by a duly authorized
officer of each Party.
14.8 Severability. If any provision of this Agreement becomes or is declared
by a court of competent jurisdiction to be illegal, unenforceable or void, this
Agreement shall continue in full force and effect without said provision, so
long as the Agreement, talking into account said voided provision(s), continues
to provide the Parties with the same practical economic benefits as the
Agreement containing said voided provision(s) did on the date of this Agreement.
If, after taking into account said voided provision(s), the Parties are unable
to realize the practical economic benefit contemplated on the date of this
Agreement, the Parties shall negotiate in good faith to amend this Agreement to
reestablish the practical benefit provided the Parties on the date of this
Agreement.
14.9 Captions. The captions to this Agreement are for convenience only, and
are to be of no force or effect in construing or interpreting any of the
provisions of this Agreement.
14.10 Applicable Law. This Agreement shall be governed by and interpreted in
accordance with the laws of the State of Delaware without reference to its
conflicts of laws provisions.
14.11 Notices and Deliveries. Any formal notices, request, delivery, approval
or consent required or permitted to be given under this Agreement shall be in
writing and shall be deemed to have been sufficiently given when it is received,
whether delivered in person, transmitted by facsimile with contemporaneous
confirmation, or delivery by registered letter (or its equivalent) or delivery
by certified overnight courier service, to the Party to which it is directed at
its address shown below or such other address as such Party shall have last
given by notice to the other parties.
If to AgrEvo:
Hoechst Schering AgrEvo GmbH
Xxxxxxx Xxxxx, X 000
X-00000 Xxxxxxxxx am Main
Germany
Attention: Head of Research, Agrochemicals
with a copy to:
Hoechst Schering AgrEvo GmbH
Patent & License Department, K 801
D-65926 Frankfurt am Main
Germany
Attention: Head of Patents
-21-
If to 3DP:
3-Dimensional Pharmaceuticals, Inc.
Eagleview Corporate Center
000 Xxxxxxxx Xxxxx, Xxxxx 000 Xxxxx, XX 00000
Attention: CEO
with a copy to:
Xxxxxx, Xxxxx & Xxxxxxx LLP
0000 Xxxxxx Xxxxxx
Xxxxxxxxxxxx, XX 00000
Attention: Xxxxx X. Xxxx, Esq.
14.12 No Consequential Damages. IN NO EVENT SHALL EITHER PARTY NOR ANY OF ITS
RESPECTIVE AFFILIATES BE LIABLE TO THE OTHER PARTY OR ANY OF ITS AFFILIATES FOR
SPECIAL, INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES, WHETHER IN CONTRACT,
WARRANTY, TORT, NEGLIGENCE, STRICT LIABILITY OR OTHERWISE, including, but not
limited to, loss of profits or revenue, or claims of customers of any of them or
other third parties for such or other damages.
14.13 Assignment. Except for the research license granted pursuant to Section
5.1 and AgrEvo's access to 3DP DirectedDiversity Technology pursuant to the
confidentiality provisions under Article 8, which shall be limited to the
current sites of AgrEvo or such Affiliate as have agreed to be bound by the
provisions of this Agreement accepted by AgrEvo, this Agreement may be assigned
by either Party in connection with the sale or transfer of substantially all of
its assets that relate to this Agreement, subject in the case of 3DP, to the
provisions of Section 12.7. The above notwithstanding, this Agreement and any
rights and obligations herein shall be freely transferable or assignable by: (1)
AgrEvo to the successor company of AgrEvo resulting from the intended merger of
Hoechst Aktiengesellschaft and Rhone Poulenc S.A.; and (2) 3DP to a subsidiary
that is reasonably acceptable to AgrEvo.
14.14 Advice of Counsel. AgrEvo and 3DP have each consulted with counsel of
their choice regarding this Agreement, and each acknowledges and agrees that
this Agreement shall not be deemed to have been drafted by one party or another
and will be construed accordingly.
-22-
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, each copy of which shall for all purposes be deemed to be an original.
3 DIMENSIONAL HOECHST SCHERING
PHARMACEUTICALS, INC. AGREVO GMB
By: /s/ Xxxxx U' Xxxxxxxx, Ph.D. By: /s/ Dr. Wengenmayer /s/ Xx. Xxxxxx
--------------------------------- -----------------------------------
Name: Xxxxx U'Xxxxxxxx, Ph.D. Name: Dr. Wengenmayer Xx. Xxxxxx
Title: Chief Executive Officer Title: Head of Research, Patents,
Frankfurt Agrochemicals
By: /s/ F. Xxxxxxx Xxxxxxx, Ph.D.
-----------------------------
Name: F. Xxxxxxx Xxxxxxx, Ph.D.
Title: President and Chief Scientific
Officer
-23-
EXHIBIT 10.26
Appendix A
----------
Confidential Draft (Dated October 8, 1999)
Xxxxxxxx'x version
JOINT PRESS RELEASE FOR IMMEDIATE PUBLISHING
For 3DP, Contact: For AgrEvo, Contact:
Business F. Xxxxxx Xxxxxxxx
Xxxxxxx X. Xxxxxx AgrEvo Corporate Communication
Chief Financial Officer + 49 69 305-40033
000-000-0000
Media
Xxxxx Xxxxxxx
Xxxxx Xxxxxxx & Associates
000-000-0000
3-Dimensional Pharmaceuticals and AgrEvo
Announce Agrochemical Discovery Collaboration
Exton, PA and Frankfurt am Main, Germany - October 19, 1999 -- 3-Dimensional
Pharmaceuticals, Inc. (3DP) and Hoechst Schering AgrEvo GmbH today announced a
strategic collaboration in which 3DP's DirectedDiversity technology will be used
to discover and refine innovative new agrochemicals.
3DP will provide libraries of diverse compounds to AgrEvo, and will make
available its DirectedDiversity Technology to optimize active compounds
identified from screening the compound libraries. AgrEvo will receive the
exclusive right to commercialize agricultural products discovered during the
course of the collaboration. 3DP will retain rights for non-
agrochemical uses of compounds developed through the collaboration.
"3DP's technology brings together a unique blend of powerful computational
tools, combinatorial chemistry and high-throughput screening techniques", said
Xx. Xxxxxxxxx Wengenmayer, Head of Research, Agrochemicals, AgrEvo. "We believe
it has the potential to make a significant contribution to our research and
development efforts."
F. Xxxxxxx Xxxxxxx, Ph.D., 3DP President and Chief Scientific Officer,
noted that 3DP scientists are looking forward to working with their colleagues
at AgrEvo. "We are confident 3DP's technology will enhance AgrEvo's discovery
efforts and will help speed the time to market for new agrochemical products.
This is a multi-million dollar agreement in which 3DP will receive payment for
delivery of compounds, research and development funding, license fees and
royalties on resulting products. Equally important is the continued market
validation of our proprietary technology brought by this collaboration with one
of the world's leading companies in agricultural biotechnology and chemistry."
DirectedDiversity is a patented, computer-aided, iterative process for
generating chemical compounds with a prescribed set of physical, chemical and/or
biological properties. A key feature of the technology is that
DirectedDiversity Accessible Compound Libraries are initially generated and
indexed using a comprehensive set of more than 200 molecular descriptors to
allow rapid retrieval of compounds with user-selectable ranges of structural and
chemical properties. 3DP to date has developed Accessible Libraries totaling
over 1.5 billion compounds, virtually any of which can be synthesized through
automated chemistry. To prime its drug and chemical discovery process, 3DP has
synthesized DirectedDiversity Probe
-2-
Libraries that include diverse selections of over 150,000 compounds from the
Accessible Libraries.
AgrEvo is a global leader in biotechnology, seeds, crop protection and
environmental health. The company markets globally a range of products for
enhancing crop production, together with applications for urban pest control.
AgrEvo operates in more than 70 countries with approximately 8,600 employees.
3-Dimensional Pharmaceuticals, Inc. is a leading innovator in drug
discovery. The company has developed a proprietary technology platform known as
DiscoverWorks(TM), which uniquely integrates structure-based drug design,
combinatorial chemistry and high-throughput screening. DiscoverWorks reduces
discovery costs, increases the rate of success and enhances the ultimate
commercial value of a drug development pipeline. 3DP is using its proprietary
technology both in collaboration with other companies and in its own research
programs, which currently target orally active small-molecule pharmaceuticals to
treat cardiovascular disease and cancer.
-3-
