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EXHIBIT 10.8(c)
AMENDMENT NO. 3 TO COLLABORATION AGREEMENT
This Amendment No. 3 to Collaboration Agreement (the "Amendment No. 3")
effective as of January 1, 1999, is entered into by and between Symyx
Technologies ("Symyx") and Xxxxx XX ("Xxxxx"), and amends that certain
Collaboration Agreement entered into by Bayer and Symyx effective as of March 1,
1998, as previously amended by Amendment No. 1 to Collaboration Agreement
effective as of May 1, 1998 and Amendment No. 2 to Collaboration Agreement
effective as of November 1, 1998 (the "Collaboration Agreement").
1. All capitalized terms not defined in this Amendment No. 3 shall have
the meanings given to them in the Collaboration Agreement.
2. Section 2.2.1 is amended by the addition of new Section 2.2.1(c):
(c) Addition of [******] Project.
(i) Effective as of January 1, 1999, the Research Program
shall include the [******] Field, which is defined as
set forth in Exhibit E.
(ii) FTEs and Experiments. During each calendar year
quarter from January 1, 1999 to December 31, 2001,
Symyx shall, in its discretion taking into
consideration what is required to achieve the
objectives of the Project Plan for the [******]
Field, either (i) utilize [******] FTEs to conduct
the research in the [******] Field or [******]. Each
FTE utilized by Symyx shall be qualified for the
activities assigned to him or her. [******]
(iii) Bayer agrees to pay Symyx (i) Research Expenses for
research activities in the [******] Field as set
forth in Section 6.2.1(c), (ii) royalties with
respect to Products in accordance with Section 6.15,
and (iii) a technology access payment in accordance
with Section 6.16.
(iv) Following termination of research activities within
the [******] Field, the corresponding Research Field
Committee will prepare a summary of Program
Technology generated in the course of the research
activities for the [******] Field.
3. Section 2.4 is amended to read in its entirety as follows:
2.4 Research Program Term
2.4.1 Initial Term.
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the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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(a) [******]
(b) [******]
2.4.2 Extension of Research Program Term. Both parties
intend to identify and propose additional Projects
(including appropriate product driven targets) that
will justify the extension of the Research Program,
and agree that not less than six (6) months before
expiration of the Initial Research Term and any
Extended Research Term, the Executive Committee will
meet to discuss possible Projects for extension of
the Research Program. Upon written agreement of the
parties, the Research Program Term (for activities in
the Research Program other than research in the
[******] Field) may be extended up to three (3) years
(the "Extended Research Term"). Except as the parties
may otherwise agree, the funding for activities
(other than research activities in the [******]
Field) in the Research Program during the Extended
Research Term, if any, shall be not less than
[******] from March 1, 2000 to February 28, 2001, not
less than [******] from March 1, 2001 to February 28,
2002, and not less than [******] from March 1, 2002
to February 28, 2003.
4. Add the following new Section 2.9 to Article 2:
2.9 Other [******] Research by Symyx. It is understood that Symyx
will conduct research activities outside the Research Program
("Other [******] Research") during the Research Program Term
for itself and/or Third Parties for the purpose of [******].
In the event some Symyx employees work on both the Research
Program and the Other [******] Research, Symyx shall use good
faith commercially reasonable efforts to avoid potential
conflicts or overlaps between the Research Program and Other
[******] Research and misappropriation of any Confidential
Information. It is understood that the library compounds are
regularly used by Symyx and that Symyx can use and screen the
library compounds for any use on its own behalf or for Third
Parties, including without limitation for Other [******]
Research, except to the extent that Symyx has granted to Bayer
exclusive rights to screen and optimize the library compounds
in the [******] Field as set forth in Section 5.1.1.
5. Add the following new Section 2.10 to Article 2:
2.10 [******]
6. Section 4.1 is amended to provide in its entirety as follows:
4.1 Program Technology.
4.1.1 All Fields Except [******] Field. Except as provided
in Sections 4.1.2 and 4.3, title to all inventions
and other intellectual property made by employees or
agents of Bayer and Symyx in the course of and in
connection with the Research Program shall be deemed
owned jointly by Symyx and Bayer,
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the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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excluding Combinatorial Chemistry Technology. It is
understood that, except as otherwise expressly
provided in this Agreement, both Bayer and Symyx may
use, sublicense, commercialize, or otherwise exploit
all such jointly-owned technology without the consent
of, or obligation to account to, the other party.
4.1.2 [******] Field. Bayer shall own any inventions or
discoveries conceived and reduced to practice and
other intellectual property otherwise developed
solely by personnel of Bayer or Bayer's Affiliates in
the course of the Research Program relating to the
[******] Field ("Bayer [******] Inventions"). Symyx
shall own any inventions or discoveries conceived and
reduced to practice and other intellectual property
otherwise developed solely by Symyx personnel in the
course of the Research Program Program relating to
the [******] Field ("Symyx [******] Inventions").
Bayer and Symyx shall jointly own any inventions or
discoveries conceived and/or reduced to practice in
the course of the Research Program relating to the
[******] Field where personnel of Symyx and of Bayer
have each made inventive contributions to such
inventions which would result in them being
determined to be joint inventors in accordance with
United States patent law and other intellectual
property otherwise developed jointly by personnel of
Symyx and Bayer ("Joint [******] Inventions").
7. Section 5.1.2 is amended to provide in its entirety as follows:
5.1.2 Bayer Out of Field License. Except with respect to
Program Technology conceived or reduced to practice
or otherwise developed in connection with the
research conducted in the [******] Field in
connection with the Research Program, Symyx agrees to
grant and hereby grants to Bayer an exclusive,
worldwide, royalty-free license, with the right to
sublicense, under Symyx's interest in Program
Technology which was invented solely by Bayer
employees and agents, to use such Program Technology
outside of the Field and to develop, make, have made,
import, use, offer for sale, and sell products other
than for use in the applicable Field.
8. Section 5.1.3 is amended to provide in its entirety as follows:
5.1.3 Symyx Out of Field License. Except with respect to
Program Technology conceived or reduced to practice
or otherwise developed in connection with the
research conducted in the [******] Field in
connection with the Research Program, Bayer agrees to
grant and hereby grants to Symyx an exclusive,
worldwide, royalty-free license, with the right to
sublicense, under Bayer's interest in Program
Technology which was invented solely or jointly by
Symyx employees and agents, to use such Program
Technology outside of the Field and to develop, make,
have made, import, use, offer for sale, and sell
products other than for use in the applicable Field.
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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Bayer, Bayer's Affiliates, Symyx, and Symyx's
Affiliates shall each have the right to use Joint
[******] Inventions for internal research purposes
outside of the scope of the [******] Field; provided,
however, that Symyx shall have the sole right to
grant and authorize licenses and sublicenses under
such Joint [******] Inventions to third parties
outside of the scope of the [******] Field. It is
further understood and agreed that Symyx shall have
the right to grant third parties licenses under Joint
[******] Inventions outside of the scope of the
[******] Field that are exclusive even as to Bayer
and Symyx, and it is specifically understood and
agreed that Symyx may grant exclusive licenses under
such Joint [******] Inventions outside of the
[******] Field to certain third parties in connection
with the Other [******] Research described in Section
2.9, and that Symyx shall not be required to pay any
amounts to Bayer hereunder in connection with such
licenses.
9. Section 5.2 is amended to provide in its entirety as follows:
5.2 Bayer Right of First Negotiation. Subject to Symyx's
obligations to third parties, Bayer will have a right of first
negotiation to negotiate with Symyx to acquire an exclusive,
worldwide, royalty-bearing license under Symyx's interest in
Program Technology with the right to sublicense, to develop,
make, have made, import, use, offer for sale and sell products
other than Products, as follows: (i) Symyx will provide notice
if it wishes to pursue a particular product using Program
Technology solely or jointly invented by Symyx employees, and
in such event within sixty (60) days the parties shall
commence negotiations; (ii) such negotiations shall continue
for six (6) months from the date of such notice, or such
longer period as the parties may agree; (iii) if Symyx and
Bayer do not reach agreement within such six (6) month period,
or such longer period as the parties may agree, Symyx may
develop or commercialize such products (other than Products)
with a third party or pursue such product itself without
obligation to Bayer. However, notwithstanding any other
provision of this Agreement, Bayer shall not have a right of
first negotiation with respect to Program Technology that is
identified, discovered or reduced to practice in connection
with the [******] Project or the research in the [******]
Field, and Bayer agrees (i) not to perform research or use any
Lead Compound from the [******] Project other than in
connection with [******] and (ii) not to perform research or
use any Lead Compound from the research in the [******] Field
other than in connection with [******], unless Symyx provides
written consent.
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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10. Section 5.6 is amended to read in its entirety as follows:
5.6 Combinatorial Chemistry Access & Bayer/Symyx Interface
5.6.1 Access to Combinatorial Chemistry. The parties agree
that on a case by case basis, Bayer may make a
written request to purchase and/or license a piece of
equipment used within the Research Program. In the
event that Symyx receives such a request and may
license and/or sell such equipment without violating
any obligations Symyx may have to third parties,
Symyx agrees for a period of ninety (90) days after
receipt of such notice to negotiate the terms and
conditions of such a sale and/or license including,
when applicable, Symyx resources needed to assemble
such equipment. It is understood and agreed that
neither Symyx nor Bayer is obligated to accept or
agree upon the terms of such a proposed sale and/or
license. The transfer of equipment and/or technology
contained in such a license will include terms for
training and transfer of know-how necessary to
operate the equipment. In addition, it is understood
that Symyx has, at its own expense, been developing
and intends to continue to develop [******]
(collectively, the "Discovery Tools"), and that Symyx
will offer some or all of these Discovery Tools to
Bayer and/or Bayer Affiliates, either through sale of
equipment and supplies and/or licenses to
intellectual property or some other means selected at
Symyx's discretion. Symyx agrees to negotiate in good
faith with Bayer to enter into a written agreement
setting forth mutually agreeable terms and conditions
on which Symyx will license and/or sell Discovery
Tools on a non-exclusive basis. It is understood and
agreed that the terms for sale of Discovery Tools by
Symyx to Bayer are to be mutually agreed in writing
and this Agreement does not itself obligate Symyx to
sell or Bayer to purchase such Discovery Tools, or
obligate either Symyx or Bayer to accept or agree to
terms and conditions of any such sale and/or license.
5.6.2 [******]
11. Section 5.1 is amended by addition of the following new Section 5.1.4:
5.1.4 [******]
12. Section 6.2.1 is amended by the addition of new Section 6.2.1(c) as
follows:
(c) [******]
13. Article 6 is amended by the addition of new Section 6.15:
6.15 Royalties for [******] Field.
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the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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(a) The parties agree the royalty model set forth in
Section 6.3 shall apply to the [******] Field, and
the parties shall determine the applicable Added
Value Royalty Rate in accordance with Section 6.3.3
(b) [******]
14. Article 6 is amended by the addition of new Section 6.16:
6.16 [******]
16. Article 6 is amended by the addition of new Section 6.17:
6.17 Special Bayer Compounds. In the event Bayer wishes to include
a compound identified by Bayer independently into a Field
within the Research Program ("Special Bayer Compound"), Bayer
shall notify Symyx in writing without revealing the identity
of the compound. In the event that Symyx receives such
notification, Symyx agrees for a period of ninety (90) days
after receipt of such notice to negotiate special royalty
terms and conditions applicable only to the Special Bayer
Compound under which Bayer would agree to include the Special
Bayer Compound within the appropriate Field of the Research
Program. It is understood and agreed that neither Symyx nor
Bayer is obligated to accept or agree upon the terms of such a
proposed royalty readjustment and the parties must agree in
writing before a Special Bayer Compound is included in the
Research Program. This procedure will be followed on a
case-by-case basis.
17. Exhibit E attached to this Amendment No. 3 is hereby incorporated into
the Collaboration Agreement as Exhibit E.
18. Except as specifically modified or amended hereby, the Collaboration
Agreement, as modified or amended by Amendment No. 1 to Collaboration
Agreement and Amendment No. 2 to Collaboration Agreement, shall remain
in full force and effect and, as modified or amended, is hereby
ratified, confirmed and approved. No provision of this Amendment No. 3
may be modified or amended except expressly in a writing signed by both
parties nor shall any terms be waived except expressly in a writing
signed by the party charged therewith. This Amendment No. 3 shall be
governed in accordance with the laws of the State of California,
without regard to principles of conflicts of laws.
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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IN WITNESS WHEREOF, each of the parties has executed this Amendment No. 3 as of
the date indicated on this Amendment No. 3.
XXXXX XX SYMYX TECHNOLOGIES
By: /s/ XXXXXX XXXXXX /s/ XXX XXXXXXXXXX
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Name: Prof. Xx. Xxxxxx Xxx Xxxxxxxxxx
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Title: President & COO
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Date: Xxxxx 0, 0000 Xxxxx 2, 1999
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By: /s/ X.X. XXXXXXXXXX
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Name: Prof. Xx. Xxxx-Xxxxxxx Xxxxxxxxxx
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Title: Head of Central Research
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Date: March 5, 1999
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