Exhibit 10.12
[Xxxxxxxx-Xx Xxxxx Letterhead]
November 2, 1995
Xx. Xxxxxx X. Xxxxxxx
President and Chief
Executive Officer
ScriptGen Pharmaceuticals
Medford, Massachussetts 02155
Re: September 22, 1995 Heads of Agreement between ScriptGen and
Xxxxxxxx-Xx Xxxxx Inc.(Xxxxx)
Dear Xx. Xxxxxxx:
This letter amends the above Heads, as agreed to in your October 30,
1995 telephone conference with [***] and [***]. I understand that two
amendments were discussed, specifically that Roche would pay ScriptGen [***]
before the end of the year, and that Roche would have the option to replace
[***] of Roche's choice. Accordingly, the amendments below are made to the
Heads.
The first three lines of Paragraph 7 of the Heads (ending with the word
"individually") is replaced with the following language:
"ROCHE shall pay SCRIPTGEN the sum of [***] during the SCREENING
period. A first payment of [***] (PAYMENT 1) will be made to
SCRIPTGEN before December 31, 1995, at a time convenient to ROCHE. After
this date, [***] subsequent payments [***] of [***] each
shall individually" (the remainder of paragraph 7 remains unchanged).
The following language is added to the end of Paragraph 3 [***]:
", or may have another activity of interest to be designated by ROCHE."
The following language is added to Paragraph 4, line 1 (after the word
"activity"):
"designated by ROCHE, for example the activity"
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS EXHIBIT. THE
CONFIDENTIAL PORTIONS HAVE BEEN REDACTED AND ARE DENOTED BY [***]. THE
CONFIDENTIAL PORTIONS HAVE BEEN SEPARATELY FILED WITH THE SECURITIES AND
EXCHANGE COMMISSION.
The following language is added to Paragraph 4, line 3 (after the words
"another TARGET"):
"designated by ROCHE [***], or an additional TARGET"
The following language is added to the second paragraph of Paragraph 9,
after the word [***]:
"or the TARGET designated by ROCHE to [***],"
In addition, Paragraph 8 is corrected to refer to "TARGET" instead of
"ROCHE TARGET".
Thank you for your cooperation in making these amendments.
Please sign both originals of this letter on behalf of ScriptGen, retain
one, and return one fully executed original to Xxxxxxx Xxxx.
Sincerely,
/s/ Xxxxxxx Xxxxxxxxx
XXXXXXXX-XX XXXXX INC.
Xx. Xxxxxxx Xxxxxxxxx
Vice President
AGREED AND ACCEPTED:
SCRIPTGEN PHARMACEUTICALS
By: /s/ Xxxxxx X. Xxxxxxx
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Date: 11/6/95
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HEADS OF AGREEMENT
1. PARTIES
This document sets forth the principal terms of a basic understanding
between Xxxxxxxx-Xx Xxxxx Inc. (hereinafter "ROCHE") and Scriptgen
Pharmaceuticals, Inc. (hereinafter "SCRIPTGEN")
2. DEFINITIONS
FIELD shall mean the treatment of [***].
LIBRARY shall mean ROCHE's proprietary collection of approximately [***]
compounds suitable for screening for a biological activity designated by ROCHE.
COMPOUND shall mean a compound which is part of the LIBRARY.
ROCHE PRODUCT shall mean a COMPOUND or derivative or analogue thereof
identified under this agreement as a candidate for use in the FIELD.
TECHNOLOGY shall mean SCRIPTGEN's proprietary ATLAS system for screening
for interaction with a given target protein, and does not include the target
protein.
TARGET shall mean a protein which is selected and provided by ROCHE to be
added to TECHNOLOGY to make it possible to use TECHNOLOGY as a screen for a
compound having the activity of interacting with that protein.
SCREENING shall mean the screening of the LIBRARY by SCRIPTGEN under this
agreement.
NET SALES shall mean the gross sales of the ROCHE PRODUCT to third
parties by ROCHE or by its licensees or subsidiaries less deductions of
returns (including withdrawals and recalls), rebates (price reductions,
including Medicaid and similar types of rebates e.g. chargebacks), volume
(quantity) discounts, discounts granted at the time of invoicing, sales taxes
and other taxes directly linked to and included in the gross sales amount as
computed in the central Roche's Swiss Francs Sales Statistics for the
countries concerned, whereby the amount of such sales in foreign currencies
is converted into U.S. Dollars. From the so adjusted gross sales there shall
be a lump sum deduction of [***] for those sales related deductions which are
not accounted for on a product-by-product basis (e.g. outward freights,
transportation insurance, packaging materials for dispatch of goods, custom
duties, discounts granted later than at the time of invoicing, cash discounts
and other direct sales expenses).
3. BACKGROUND
SCRIPTGEN possess expertise in screening for compounds which interact with
a target protein. ROCHE possesses expertise in the discovery, development, and
marketing of pharmaceutical agents, and owns the LIBRARY, a selected number of
COMPOUNDS in which ROCHE has reason to believe may be effective in [***].
4. PURPOSE
ROCHE wishes to have identified COMPOUNDS which have the desired
activity of interfering with [***] and SCRIPTGEN is willing to screen the
LIBRARY with TECHNOLOGY, using [***] which is a TARGET, or another TARGET
desired.
5. CONDITION
ROCHE will enter into a final agreement with SCRIPTGEN based on the
understandings set forth herein, however the obligation of ROCHE to enter
into said final agreement is contingent on XXXXX'x concluding arrangements
with [***] to obtain [***] for use in SCREENING as described in paragraph 3
above.
6. SCREENING PERIOD
SCREENING will begin upon on the date of receipt by SCRIPTGEN of [***],
and will be completed [***] after said date of receipt.
7. PAYMENT
ROCHE shall pay SCRIPTGEN the sum of [***] during the SCREENING period.
A first payment of [***] (PAYMENT 1) will be due [***] after the commencement
of SCREENING. Five (5) subsequent payments (PAYMENTS 2-6) OF [***] each shall
individually fall due [***] after the date on which ROCHE receives SCREENING
results for a group of approximately [***] COMPOUNDS. For example, PAYMENT 2
shall be due after ROCHE receives results for the first group of [***]
COMPOUNDS, PAYMENT 3 shall be due after ROCHE receives results for the second
group of [***] COMPOUNDS, PAYMENT 4 shall be due after ROCHE receives results
for the third group of [***] COMPOUNDS, PAYMENT 5 shall be due after ROCHE
receives results for the fourth group of [***] COMPOUNDS, and PAYMENT 6 shall
be due after ROCHE receives results for the fifth and final group of [***]
COMPOUNDS. [***] COMPOUNDS may be considered approximate for an individual
group but shall not include less than [***] COMPOUNDS or more than [***]
COMPOUNDS.
8. ROCHE'S UNDERTAKINGS
ROCHE shall provide SCRIPTGEN with the LIBRARY, which will be
considered ROCHE confidential material. ROCHE will provide the LIBRARY in a
quantity and condition which ROCHE reasonably believes is sufficient to
complete SCREENING with ROCHE TARGET within the SCREENING PERIOD as
contemplated hereunder.
9. SCRIPTGEN'S UNDERTAKINGS
As soon as reasonably possible, SCRIPTGEN shall begin SCREENING with
TARGET. SCRIPTGEN shall promptly (to be defined) [***] SCRIPTGEN will make
available sufficient resources including personnel, facilities and equipment
to perform SCREENING with TARGET during the SCREENING period.
[***] shall reimburse [***] for any actual out-of-pocket expenses
incurred [***] The parties must agree in writing to the amount of [***]
SCRIPTGEN agrees not to [***] without XXXXX'x express written consent.
SCRIPTGEN agrees that [***] are proprietary to ROCHE and are to be
treated as confidential and not used by SCRIPTGEN for any purpose other than
as provided in this Agreement.
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10. COMMERCIALIZATION
X. XXXXX, at its sole discretion, may develop and market or license to third
parties any ROCHE PRODUCT anywhere in the world and without any obligations, to
SCRIPTGEN other than those payments provided below.
B. In consideration of XXXXX'x payments under this agreement, any results and
inventions, patentable or not, and any resulting patent filings emanating
therefrom with regard to COMPOUNDS shall be owned exclusively by ROCHE, no
matter with which party the inventors of such inventions may be affiliated.
SCRIPTGEN agrees [***] disclose any such results or inventions to ROCHE and
further agrees to assign any right, title, or interest in and to any such
invention in the U.S. and in all foreign countries to ROCHE. The parties
agree to cooperate in the filing and prosecution of such patent filings, at
XXXXX'x expense and request. Roche agrees to reasonably compensate SCRIPTGEN
for any costs related to such cooperation.
11. FEES AND ROYALTIES
ROCHE will make milestone payments to SCRIPTGEN for any ROCHE PRODUCT
being developed by ROCHE as follows:
[***]
ROCHE will also pay a royalty to SCRIPTGEN which is [***] of NET SALES, which
royalty shall be
[***]
12. ADDITIONAL PROVISIONS
The full Agreement shall contain customary and usual provisions for
agreements of this nature for pharmaceutical products including further
definitions, confidentiality, warranties, indemnification, assignment, royalty
computation and reports, reporting inventions, patent provisions, term and
termination and survival provisions and the like.
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13. PUBLICITY
No public announcement or other disclosure to other parties concerning the
existence of or the terms of this understanding or of the final agreement
entered into based on this understanding shall be made, either directly or
indirectly, by either party to this understanding or to said final agreement,
except to a third party bound by a confidentiality agreement and as may be
required by any laws or government regulations or by the rules of any stock
exchange of any country, without first informing the other party of the proposed
announcement or other disclosure within a reasonable time prior to release and
obtaining the other party's written approval of the nature and text of such
announcement or disclosure.
IN WITNESS WHEREOF, ROCHE and SCRIPTGEN have executed this Heads of
Agreement on the later of the two dates written below.
SCRIPTGEN PHARMACEUTICALS, INC. XXXXXXXX-XX XXXXX INC.
By: /s/ Xxxxxx X. Xxxxxxx By: /s/ Xxxxxxx Xxxxxxxxx
---------------------------- -----------------------------
Title: President & CEO Title: Vice President
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Date: 8/22/95 Date: 9/22/95
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