Exhibit 10.14
COMPOUND TESTING AND DEVELOPMENT AGREEMENT
between
SCRIPTGEN PHARMACEUTICALS, INC.
and
MONSANTO COMPANY
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.
COMPOUND TESTING AND DEVELOPMENT AGREEMENT
This Agreement, dated as of November 17, 1997, is between Scriptgen
Pharmaceuticals, Inc. ("Scriptgen"), a Delaware corporation, and Monsanto
Company ("Monsanto"), a Delaware corporation.
RECITALS
WHEREAS, Scriptgen has certain assays to detect activity of compounds
in the field of anti-infectives for use as human pharmaceuticals and to
counterscreen for other activity;
WHEREAS, Monsanto desires to have certain of its compounds screened by
such assays for anti-infective activity within the field of agricultural and
in planta applications and Scriptgen has heretofore begun development of an
assay for such use;
WHEREAS, Monsanto has expertise and synthesis capabilities for the
preparation of derivative compounds or homologues, which may be useful for
developing leads;
WHEREAS, in exchange for such screening, Monsanto will pay Scriptgen
certain fixed fees, and Monsanto will make certain milestone and royalty
payments to Scriptgen if such screening leads to further development by
Monsanto of a compound for commercial use within the field of agricultural,
and in planta applications, subject to the terms and conditions of this
Agreement; and
WHEREAS, Monsanto will grant a license to Scriptgen for the purpose of
performing screening and development of such Monsanto compounds for use in
the field of human anti-infectives, and in exchange Scriptgen will make
certain milestone and royalty payments to Monsanto if such screening leads to
further development by Scriptgen of a compound for commercial use within the
field of human anti-infectives, subject to the terms and conditions of this
Agreement;
NOW, THEREFORE, in consideration of the mutual covenants set forth in this
Agreement, the parties hereby agree as follows:
1. Definitions.
"Additional Equipment" shall mean a certain amount of scientific
equipment required to complete the work contemplated under this Agreement as set
forth in Section 3.3.
"Advanced Field Trials" shall mean advanced testing trials conducted
by or for Monsanto in a manner representative of actual agricultural or
industrial practices including (i) determining the performance or safety of a
Development Compound or (ii) greenhouse, growth chamber or laboratory testing
using a radio-labeled analog of an active compound and associated testing,
advanced toxicity, environmental fate, and toxicity on non-target species
including mammals and/or assembling field information necessary to obtain an
EUP.
"Agreement" shall mean this Compound Testing and Development
Agreement.
"Assays" shall mean individually or together (i) the [***]
assay(s) in development by Scriptgen from material isolated from the [***]
provided to Scriptgen by Monsanto, or such other species as determined by the
Research Committee, (ii) the [***] assay(s) based on a similar target [***]
from human cells, (iii) the [***] assay(s) from relevant human pathogens, and
(iv) certain other [***] assays designed to detect activity solely within the
Scriptgen Field.
"Compound" shall mean any chemical molecule that is provided by
Monsanto to Scriptgen in the [***] for screening and development as described
below.
"Confidential Information" shall have the meaning set forth in
Section 8.1.
"Derivative Compound" shall mean a chemical compound structurally
derived in one or more steps from a Compound or another Derivative Compound by a
process of modification (either through manipulation of a compound or synthesis
from structural information provided hereunder) or partial substitution of at
least one component wherein at least one structural feature is retained at each
process step. The number of intermediate steps or compounds is not relevant to
the classification of a compound as a Derivative Compound. A compound need not
have structural similarity to another Compound or Derivative Compound in order
to be classified as a Derivative Compound.
"Development Compound" shall mean any Compound or Derivative
Compound which exhibits [***] in the Monsanto Field or Scriptgen Field and with
respect to which the Research Committee has elected to conduct Preliminary Field
Trials, with respect to Monsanto, or phase I clinical trials with respect to
Scriptgen.
"Development Homolog" shall mean any Derivative Compound that
exhibits substantial homology with a Development Compound, as determined by the
Research Committee.
"Disclosing Party" shall mean that Party disclosing Confidential
Information to the other Party under Section 8.
"Effective Date" shall mean the date of execution of this Agreement
by the Parties hereto, at which time this Agreement shall become effective.
"EPA" shall mean the Environmental Protection Agency (or its foreign
equivalent responsible for approval of commercial use of Development Compounds).
"EUP or Experimental Use Permit" shall mean a permit for field
application issued by the EPA prior to label approval or the foreign equivalent
thereof.
2
"Monsanto Field" shall mean all uses or applications of a
Development Compound not included within the Scriptgen Field.
"Monsanto Patent Rights" shall mean all [***] thereof owned by
Monsanto pursuant to Section 5.1 and [***]
"Net Sales Premium":
(a) for a Royalty Bearing Product which is sold as a
separate product not in combination with another product or service, Net
Sales Premium shall mean the gross invoice price of such Royalty Bearing
Product.
(b) for a Royalty Bearing Product which is sold as a bundled
product in combination with at least one other (the "Base Product") product
or service,
(i) in the event the Royalty Bearing Product is itself
also sold in material quantities to a third party as a separate product not
in combination with any other product or service, Net Sales Premium for the
bundled Royalty Bearing Product shall be the weighted average selling price
of the Royalty Bearing Product when sold to a third party as a separate
product multiplied by the number of units of the bundled Royalty Bearing
Product that are sold,
(ii) in the event the Royalty Bearing Product is itself
not sold in material quantities to a third party as a separate product not in
combination with any other product or service, the Parties shall determine a
mutually agreeable method of calculation which fairly recognizes the value
added by the Royalty Bearing Product to the Base Product.
In each case of determining Net Sales Premium, the gross invoice
price for sales of Royalty Bearing Products shall be net of discounts allowed
in amounts customary in the trade; reasonable and customary quantities of
samples; returns; and customer charges, sales, taxes, and transportation
costs separately invoiced.
"Open Pool" shall have the meaning assigned in Section 3.5.
"Party" means Scriptgen or Monsanto or their respective Primary
Affiliates.
"Parties" means Scriptgen and Monsanto and their respective Primary
Affiliates.
"Preliminary Field Trials" shall mean, with respect to any
Development Compound, preliminary testing first conducted by or for Monsanto to
determine efficacy conducted under anticipated use conditions, generally in an
external environment. Preliminary Field Trials does not include primary testing,
which includes greenhouse, growth chamber or
3
laboratory testing including associated testing for environmental fate,
toxicity, and toxicity on non-target species including mammals.
"Primary Affiliate" shall mean, with respect to Monsanto or
Scriptgen, as the case may be, any corporation 50% or more of whose outstanding
equity securities entitled to vote in the election of Directors is owned
directly or indirectly by Monsanto or Scriptgen, as the case may be, and any
entity which is not a corporation 50% or more of whose net assets or profits is
owned directly or indirectly by Monsanto or Scriptgen, as the case may be.
"Product Team" shall mean a group of Monsanto employees formed to
facilitate product development analysis following successful completion of
Advanced Field Trials.
"Receiving Party" shall mean that Party receiving Confidential
Information under Section 8.1.
"Research Committee" shall have the meaning set forth in Section
2.1.
"Research Period" shall mean the period during the term of this
Agreement.
"Restricted Pool" shall have the meaning assigned in Section 3.5.
"Royalty-Bearing Product" shall mean [***].
"Royalty Period" shall mean, with respect to each Royalty-Bearing
Product, every calendar quarter, or partial calendar quarter, commencing with
[***] and ending at the end of the quarter during which [***] provided that
if the Royalty-Bearing Product utilizes intellectual property rights licensed
hereunder, then the Royalty Period shall terminate [***].
"Scriptgen Field" shall mean [***].
"Scriptgen Patent Rights" shall mean all [***] thereof owned by
Scriptgen pursuant to Section 5.1 and [***].
"Secondary Affiliate" shall mean, with respect to Monsanto or
Scriptgen, as the case may be, any corporation 20% or more of whose outstanding
equity securities entitled to vote in the election of Directors is owned
directly or indirectly by Monsanto or Scriptgen, as the case
4
may be, and any entity which is not a corporation 20% or more of whose net
assets or profits is owned directly or indirectly by Monsanto or Scriptgen, as
the case may be.
"Significant Functional Activity": In the Monsanto field,
Significant Functional Activity shall mean [***]. In the Scriptgen field,
Significant Functional Activity shall mean [***].
"Sublicensee" shall mean any third party (not including a Secondary
Affiliate) licensed by a Party to make, use (except where the implied right to
use accompanies the sale to the third party of any Royalty-Bearing Product by a
Party or its Secondary Affiliates or Sublicensees), sell, import, export,
advertise, promote and otherwise commercialize any Royalty-Bearing Product.
"Target" shall mean any biological system or biologically derived or
relevant system within the Assays as well as biological targets used for
purposes of toxicity testing, relevant to the respective field of each Party.
"Valid Claim" shall mean a claim of [***] or other tribunal of
competent jurisdiction in any unappealable or unappealed decision the time for
appeal of which has expired.
The above definitions are intended to encompass the defined terms in
both the singular and plural tenses.
2. Management of Research Program.
2.1. Composition of Research Committee. The Parties hereby establish a
Research Committee comprised of four (4) members, with two (2)
representatives appointed by each Party. The initial members of the Research
Committee shall be as follows:
Scriptgen Representatives Monsanto Representatives
------------------------- ------------------------
[***] [***]
A Party may change one or more of its representatives to the Research Committee
at any time upon notice to the other Party. Each Party will designate one of its
representatives as its team leader.
5
2.2. Duties of the Research Committee. The Research Committee shall direct
and administer the screening undertaken pursuant to this Agreement. The Research
Committee shall review test reports provided by Scriptgen [***]
2.3. Meetings of the Research Committee. The Research Committee shall
[***], or at such other times and locations as the Research Committee
determines. If a designated representative of a Party cannot attend any
meeting of the Research Committee, such Party may designate a different
representative for that meeting without notice to the other Party, and the
substitute member will have full power to vote on behalf of the permanent
member. All actions and decisions of the Research Committee will require the
unanimous consent of all of its members. If the Research Committee fails to
reach agreement upon any matter, the dispute will be resolved in accordance
with the procedures set forth in Section 12.5 below. [***] following each
quarterly meeting of the Research Committee, the Research Committee shall
prepare and delivers to both Parties, a written report describing the
decisions made, conclusions and actions agreed upon.
2.4. Visits to Facilities. Members of the Research Committee shall have
reasonable access to the facilities of each Party where activities under this
Agreement are in progress, but only during normal business hours and with
reasonable prior notice. Each Party shall bear its own expenses in connection
with such site visits.
2.5 Reports to Research Committee. Scriptgen shall deliver to the Research
Committee quarterly reports disclosing the Targets screened for the previous
quarter and planned for [***] in the Scriptgen Field and Monsanto Field in the
following quarter.
3. Fees and Delivery of Compounds
3.1 Fee for Work Performed. In consideration for the work performed by
Scriptgen for Monsanto in developing certain [***] assays prior to the
Effective Date, Monsanto has paid to Scriptgen the sum of [***].
3.2 Fee. In partial consideration for Scriptgen's efforts in screening
the Compounds in the Assays, Monsanto shall pay to Scriptgen a total of [***]
in the aggregate, payable [***] Monsanto may, in its sole discretion, pay any
or all of such amounts in advance. In the event of termination of this
Agreement pursuant to Section 11.2, and if the total of the [***] payable
hereunder has not been paid, the remainder of such amount shall be paid at
the time of such termination.
3.3 Capital Costs. In recognition of the additional scientific equipment
required by Scriptgen to perform its obligations hereunder (as set forth on
Exhibit A, "Additional Equipment"), subject to the terms and conditions herein
Monsanto shall reimburse Scriptgen for the price paid by Scriptgen for such
equipment (net of any discounts or allowances), not to
6
exceed [***] Prior to acquiring or making a commitment to acquire any Additional
Equipment, Scriptgen shall present to Monsanto a notice containing a detailed
list of such items proposed for acquisition, the vendor from whom Scriptgen
proposes to acquire the Additional Equipment, and the price at which Scriptgen
proposes to acquire the Additional Equipment. Monsanto shall have ten (10) days
from the date of receipt of such notice to present to Scriptgen alternative
vendors and lower prices for the acquisition of such Additional Equipment. If
alternative vendors and lower prices are identified by Monsanto, and all other
material terms of the equipment and the purchase are equal to those originally
proposed by Scriptgen, then Scriptgen shall acquire such Additional Equipment
from the alternative vendors. All Additional Equipment shall be the sole
property of Scriptgen.
3.4 Delivery. Monsanto shall provide to Scriptgen, Compounds for
screening in the Assays [***] after the execution of this Agreement. Prior to
the first delivery of Compounds, Scriptgen shall execute a Materials Transfer
Agreement in the form attached as Exhibit B hereto. [***] Monsanto will work
in good faith to provide [***] of such individual compounds. No more than
[***] or such lower percentage as agreed upon by the Research Committee, may
contain mixtures. Mixtures will be indicated as such in the shipment
documentation and will contain at least [***] of each major component.
Monsanto will work in good faith to provide [***] of individual compounds
from any mixture deemed to have sufficient activity to warrant continued
investigation, as determined by the Research Committee. If the Research
Committee cannot agree upon the number of mixture samples that are to be
screened, then [***]. Monsanto will cooperate, in good faith, to provide
additional samples and/or procedures for synthesis and/or origin of samples,
for xxxxx identified as containing active materials. The provisions of this
Article 3.4 may be modified by the Research Committee.
3.5 Number of Compounds. Monsanto shall provide [***] Compounds to
Scriptgen for screening pursuant to this Agreement. [***] of the Compounds
shall be available for further development and commercialization by Monsanto
or Scriptgen in the Monsanto Field or Scriptgen Field pursuant to this
Agreement [***] No more than [***] may be Compounds which [***] At the time
of delivery of the Compounds Monsanto shall [***].
3.6 Disclosure. [***] Monsanto will [***] upon delivery to Scriptgen.
If Scriptgen [***] Monsanto may subsequently [***]. Scriptgen shall
concurrently disclose [***]. All such disclosed information shall be treated
as Confidential Information by both Parties. The Research Committee shall
thereafter [***]. Monsanto shall thereafter [***].
If Scriptgen detects [***], Scriptgen may subsequently request that the
Research Committee designate such Compound and up to [***] Scriptgen shall
concurrently disclose [***]. All such disclosed information shall be treated
as Confidential Information by both Parties. The Research Committee shall
[***] Scriptgen shall thereafter [***] Scriptgen shall not [***]
If Scriptgen detects [***] then the Research Committee will endeavor
to identify a series of [***] that would allow each Party to further develop
that Compound in its respective field.
3.7 Sharing Derivatives. Monsanto will use commercially reasonable
efforts to provide to Scriptgen [***] produced hereunder for use by
Scriptgen in screening in the Scriptgen Field pursuant to the license set
forth in Section 4.1(a)(iii) provided that Scriptgen recognizes that the
availability of Derivative Compounds for testing by Scriptgen may be limited
by (i) existing agreements between Monsanto and third parties, or (ii)
insufficient amounts available after Monsanto has undertaken commercially
reasonable efforts to obtain additional amounts. Scriptgen will give to
Monsanto [***] produced hereunder by Scriptgen for use by Monsanto in
screening in the Monsanto Field pursuant to the license set forth in Section
4.1(b). Thereafter, Scriptgen shall have a license, with the right to
sublicense, to permit the screening of such compounds in the Monsanto Field
by any other party. The further development of any Derivative Compounds by
Monsanto or Scriptgen so delivered by either Monsanto or Scriptgen shall be
subject to the provisions of this Agreement in the same manner as any
Derivative Compound produced by that Party for its own use in screening
within its respective Field pursuant to the terms of this Agreement.
7
4. License Grants; Diligence.
4.1. Evaluation Licenses.
(a) Licenses Granted to Scriptgen. Monsanto hereby grants to
Scriptgen (i) a non-exclusive, worldwide, royalty-free license (without the
right to sublicense) to test [***] in the Monsanto Field and in the Scriptgen
Field, (ii) a non-exclusive, worldwide, royalty-free license (without the
right to sublicense) to test [***] in the Monsanto Field only, and (iii) an
exclusive worldwide, royalty-free license (without the right to sublicense) to
test [***] if available pursuant to the terms of this Agreement, against [***]
Such license in Section 4.1(a)(iii) shall be exclusive for a time sufficient
for Scriptgen to test the initial efficacy and safety of the use of such
Derivative Compounds in the Scriptgen Field, which time shall not exceed [***]
from the date of receipt of such Compounds by Scriptgen. Scriptgen agrees
not to analyze in any manner, the chemical structures, origin, or composition
of the Compounds or Derivative Compounds from the [***].
(b) Licenses Granted to Monsanto. Scriptgen hereby grants to
Monsanto an exclusive, worldwide, royalty-free license (without the right to
sublicense) to test Derivative Compounds against Targets in the Monsanto
Field. Such license in Section 4.1(b) shall be exclusive for a time
sufficient for Monsanto to test the initial efficacy and safety of the use of
such Derivative Compounds in the Monsanto Field, which time shall not exceed
[***] from the date of receipt of such Compounds by Monsanto.
4.2. Commercialization Licenses.
(a) Licenses Granted to Scriptgen. Upon the identification of [***]
and the determination by the Research Committee that such Compound or any
Homolog thereof should properly be designated as a [***] Monsanto, without
any further action, shall be deemed to have granted to Scriptgen, under
Monsanto Patent Rights, an exclusive (including to the exclusion of
Monsanto), worldwide, royalty-bearing license (with the right to grant
sublicenses) (i) to develop (including the making of Derivative Compounds),
have developed, make, or have made Royalty-Bearing Products incorporating or
using any Monsanto Patent Rights covering the composition, manufacture or use
of such Development Compound for use, distribution and sale in the Scriptgen
Field, and (ii) to distribute for sale and sell in the Scriptgen Field
Royalty-Bearing Products incorporating or using any Monsanto Patent Rights
covering the composition, manufacture or use of such [***] and (iii) to use
in the Scriptgen Field Royalty-Bearing Products incorporating or using any
Monsanto Patent Rights covering the composition, manufacture or use of such
Development Compound.
(b) Licenses Granted to Monsanto. Upon the identification of
[***] and the determination by the Research Committee that such Compound or
any Homolog thereof should properly be designated as a [***], Scriptgen,
without any further action, shall be deemed to have granted to Monsanto,
under Scriptgen Patent Rights, an exclusive (including to the exclusion of
Scriptgen), worldwide, royalty-bearing license (with the right to grant
sublicenses) (i) to develop (including the making of Derivative Compounds),
have developed, make, or have made Royalty Bearing Products incorporating or
using any Scriptgen Patent Rights covering the composition, manufacture or
use of such [***] for use, distribution and sale in the Monsanto Field, and
(ii) to distribute for sale and sell in the Monsanto Field Royalty-Bearing
Products incorporating or using any Scriptgen Patent Rights covering the
composition, manufacture or use of such [***] and (iii) to use in the
Monsanto Field Royalty-Bearing Products incorporating or using any Scriptgen
Patent Rights covering the composition, manufacture or use of such [***].
8
(b) Limitation of Licenses. No provision of this Agreement shall be deemed
to grant any license to a Compound or Derivative Compound to Scriptgen outside
of the Scriptgen Field.
4.3. Termination of Licenses. The licenses granted by Scriptgen to
Monsanto pursuant to Sections 4.1 and 4.2 shall continue in perpetuity unless
this Agreement is terminated by Scriptgen pursuant to Sections 11.4 or 11.5. The
licenses granted by Monsanto to Scriptgen pursuant to Sections 4.1 and 4.2 shall
continue in perpetuity unless this Agreement is terminated by Monsanto pursuant
to Sections 11.4 or 11.5.
4.4. Commercialization of Development Compounds. Monsanto shall have the
sole and absolute discretion to make all decisions relating to the research,
development, marketing and other commercialization activities with respect to
any Development Compound or any Royalty-Bearing Product derived therefrom in the
Monsanto Field. Scriptgen shall have the sole and absolute discretion to make
all decisions relating to the research, development, marketing and other
commercialization activities with respect to any Development Compound or any
Royalty-Bearing Product derived therefrom in the Scriptgen Field.
5. Intellectual Property Rights.
5.1 Intellectual Property Ownership. Regardless of whether such patents,
inventions and/or discoveries are made by Monsanto or Scriptgen: (a) all
compound patents and composition of matter patents and all know-how and
intellectual property rights relating to the Compounds or Derivative Compounds
outside of the Scriptgen Field shall belong to Monsanto; (b) all compound
patents and composition of matter patents and all know-how and intellectual
property rights relating to the Compounds or Derivative Compounds inside the
Scriptgen Field shall belong to Scriptgen; (c) all method of making patents and
use patents and associated other intellectual property rights relating to the
Compounds or Derivative Compounds inside of the Scriptgen Field shall belong to
Scriptgen; (d) all method of making patents and use patents and associated other
intellectual property rights relating to the Compounds or Derivative Compounds
outside of the Scriptgen Field shall belong to Monsanto; and (e) know-how not
covered by (a), (b), (c) or (d) above will be owned by the party which develops
the know-how, and know-how jointly developed will be jointly owned.
9
5.2 Filing Patents.
(a) Monsanto shall have the sole and exclusive right to file
and maintain all compound patents, composition of matter patents, method
of making patents and method of use patents relating to the Compounds or
Derivative Compounds outside of the Scriptgen Field. Scriptgen shall have
the sole and exclusive right to file and maintain all compound patents,
composition of matter patents, method of making patents and method of use
parents relating to the Compounds or Derivative Compounds in the Scriptgen
Field.
(b) Patent application drafting, filing and prosecution for
jointly owned inventions will be carried out by Monsanto; provided that if
Monsanto is not interested in filing or prosecuting any patent application
or maintaining a patent for a joint invention arising from the activities
undertaken pursuant to this Agreement, Monsanto shall notify Scriptgen in
a written form. Scriptgen shall then be entitled to file or prosecute the
patent application or maintain the patent, as the case may be, at its own
responsibility and own expense. The party filing the patent shall bear all
costs of filing, prosecution and maintenance of such patent applications
and resulting patents. The non-filing party shall be kept informed of all
substantive matters relating to the preparation and prosecution of patent
applications related to any and all joint inventions. The filing party
will promptly provide the other party with copies of all material
prosecution and maintenance documentation and correspondence so that the
non-filing party will be currently and promptly informed of the continuing
prosecution and maintenance of material patent applications relating to
joint inventions.
5.3. Cooperation of the Parties. Each Party agrees to cooperate fully in
the preparation, filing, and prosecution of any patent rights under this
Agreement. Such cooperation includes, but is not limited to:
(a) executing all papers and instruments, or using reasonable
efforts to cause its employees or agents, to execute such papers and
instruments, so as to effectuate the ownership of intellectual property
rights set forth in Section 5.1 above and to enable the other Party to
apply for and to prosecute patent applications in any country;
(b) promptly informing the other Party of any matters coming
to such Party's attention that may affect the preparation, filing, or
prosecution of any such patent applications; and
(c) undertaking no actions that are potentially deleterious to
the preparation, filing, or prosecution of such patent applications.
5.4. Infringement by Third Parties. Scriptgen and Monsanto shall each
promptly notify the other in writing of any alleged or threatened infringement
by a third party of any Monsanto Patent Rights or Scriptgen Patent Rights of
which they become aware.
10
(a) Each Party shall promptly report in writing to the other
Party during the term of this Agreement any known infringement or
suspected infringement of any Monsanto Patent Rights or Scriptgen Patent
Rights in the Monsanto Field or the Scriptgen Field, respectively,
covering a Development Compound or a Royalty Bearing Product by a third
party of which it becomes aware, and shall provide the other Party with
all available evidence supporting said infringement or suspected
infringement.
(b) Except as provided in paragraph (d) below, Monsanto shall
have the right to initiate an infringement or other appropriate suit
against any third party who at any time has infringed, or is suspected of
infringing, any Monsanto Patent Rights or Scriptgen Patent Rights covering
a Development Compound or a Royalty Bearing Product. Monsanto shall give
Scriptgen sufficient advance notice of its intent to file said suit and
the reasons therefor, and shall provide Scriptgen with an opportunity to
make suggestions and comments regarding such suit. Monsanto shall keep
Scriptgen properly informed, and shall from time to time consult with
Scriptgen regarding the status of any such suit and shall provide
Scriptgen with copies of all documents filed in such suit.
(c) Monsanto shall have the sole and exclusive right to select
counsel for any suit referred to in paragraph (b) above and shall pay all
expenses of the suit, including without limitation attorneys' fees and
court costs. Any damages, royalties, settlement fees or other
consideration received by Monsanto shall be divided between Monsanto and
Scriptgen based on the relative value that the intellectual property
rights of a Party which are the subject of the suit have to the value of
the intellectual property rights of the other Party which are also the
subject of the suit, if any, with respect to the infringing product sold,
after all expenses of the litigation are deducted. If necessary, Scriptgen
shall join as a party to the suit but shall be under no obligation to
participate except to the extent that such participation is required as
the result of being a named party to the suit. Scriptgen shall offer
reasonable assistance to Monsanto in connection therewith at no charge to
Monsanto. Scriptgen shall have the right to participate and be represented
in any such suit by its own counsel at its own expense. Monsanto shall not
settle any such suit involving rights of Scriptgen without obtaining the
prior written consent of Scriptgen, provided that Scriptgen shall not
withhold its consent to any settlement which will provide an unconditional
release of Scriptgen and its Secondary Affiliates and which does not have
a material adverse effect on Scriptgen or Scriptgen's business.
(d) In the event that Monsanto elects not to initiate an
infringement or other appropriate suit pursuant to paragraph (b) above,
Monsanto shall promptly advise Scriptgen of its intent not to initiate
such suit, and Scriptgen shall have the right, at the expense of
Scriptgen, of initiating an infringement or other appropriate suit against
any third party who at any time has infringed, or is suspected of
infringing, any Monsanto Patent Rights or Scriptgen Patent Rights covering
a Development Compound or a Royalty Bearing Product. In exercising its
rights pursuant to this paragraph (d), Scriptgen shall have the sole and
exclusive right to select counsel for any suit referred to in paragraph
(b) above and shall pay all expenses of the suit, including without
limitation attorneys' fees and court costs. Any damages, royalties,
settlement fees or other consideration received
11
by Scriptgen shall be [***] if any, with respect to the infringing product
sold, after all expenses of the litigation are deducted. If necessary,
Monsanto shall join as a party to the suit but shall be under no
obligation to participate except to the extent that such participation is
required as the result of being a named party to the suit. At Scriptgen's
request, Monsanto shall offer reasonable assistance to Scriptgen in
connection therewith at no charge to Scriptgen. Monsanto shall have the
right to participate and be represented in any such suit by its own
counsel at its own expense. Scriptgen shall not settle any such suit
involving rights of Monsanto without obtaining the prior written consent
of Monsanto, provided that Monsanto shall not withhold its consent to any
settlement which will provide an unconditional release of Monsanto and its
Secondary Affiliates and which does not have a material adverse effect on
Monsanto or Monsanto's business.
5.5 Claimed Infringement. In the event that any action, suit or proceeding
is brought against Scriptgen, Monsanto or any Secondary Affiliate, licensee or
Sublicensee of Scriptgen or Monsanto, alleging the infringement of the
intellectual property rights of a third party by reason of the discovery,
development, manufacture, use, sale, importation or offer for sale of a
Development Compound or a Royalty Bearing Product by Monsanto or its Secondary
Affiliates or its or their licensees or Sublicensees, Monsanto will have the
obligation to defend itself and its Secondary Affiliates and Scriptgen and its
Secondary Affiliates and the licensees and Sublicensees of Scriptgen and
Monsanto, in such action, suit or proceeding at Monsanto's expense. Scriptgen
shall have the right to separate counsel at its own expense in any such action
or proceeding and Monsanto will reimburse Scriptgen for all reasonable
expenditures incurred in connection therewith.
In the event that any action, suit or proceeding is brought against
Scriptgen, Monsanto or any Secondary Affiliate, licensee or Sublicensee of
Scriptgen or Monsanto, alleging the infringement of the intellectual property
rights of a third party by reason of the discovery, development, manufacture,
use, sale, importation or offer for sale of a Development Compound or a Royalty
Bearing Product by Scriptgen or its Secondary Affiliates or its or their
licensees or Sublicensees, Scriptgen will have the obligation to defend itself
and its Secondary Affiliates and Monsanto and its Secondary Affiliates and the
licensees and Sublicensees of Scriptgen and Monsanto, in such action, suit or
proceeding at Scriptgen's expense. Monsanto shall have the right to separate
counsel at its own expense in any such action or proceeding and Scriptgen will
reimburse Monsanto for all reasonable expenditures incurred in connection
therewith.
Notwithstanding any other provision of this Agreement, in the event that a
third party shall bring (i) any action, suit or proceeding against Monsanto or
any Secondary Affiliate, licensee or Sublicensee of Monsanto and (ii) any
action, suit or proceeding against Scriptgen or any Secondary Affiliate,
licensee or Sublicensee of Scriptgen, both of which actions, suits or
proceedings arise from or relate to the same facts or circumstances, Monsanto
and Scriptgen shall each have the sole and exclusive right, at their own
expense, to select counsel to represent it or its
12
Secondary Affiliate, licensee or Sublicensee with respect to any such action,
suit or proceeding. Expenses, costs and damages imposed on Monsanto or Scriptgen
in such action, suit or proceeding shall be shared by Monsanto and Scriptgen
based on the relative fault of each party as determined at the final outcome of
such suit, action or proceeding.
The Parties will cooperate with each other in the defense of any such
suit, action or proceeding. The Parties will give each other prompt written
notice of the commencement of any such suit, action or proceeding or claim or
infringement and will furnish each other a copy of each communication relating
to the alleged infringement, but the failure to do so shall not affect the
Parties obligations under this Section and under Section 9 except to the extent
a Party is actually damaged thereby. Neither shall not compromise, litigate,
settle or otherwise dispose of any such suit, action or proceeding which
involves the use of patent rights of the other Party without that Other Party's
advice and prior written consent, provided that such other Party shall not
unreasonably withhold its consent to any settlement which will provide an
unconditional release of that other Party and which does not have a material
adverse effect on that other Party's business.
6. Ownership of Compounds.
Monsanto shall have all ownership rights to Compounds and Derivative
Compounds, to the extent not licensed to Monsanto by a third party.
7. Payments, Reports, and Records.
7.1. Monsanto Milestone Payments. In partial consideration of the
rights granted Monsanto under this Agreement, Monsanto shall pay Scriptgen
the following amounts [***] after each occurrence of the following milestones:
Payment Milestone
------- ---------
[***] [***]
[***] [***]
------------------
[***]
13
[***] [***]
[***] [***]
Such milestone payments shall be [***] and shall not be [***]. Monsanto
shall [***].
7.2. Scriptgen Milestone Payments. In partial consideration of the
rights granted Scriptgen under this Agreement, Scriptgen shall pay Monsanto
the following amounts within thirty (30) days after each occurrence of the
following milestones:
Payment Milestone
------- ---------
[***] [***]
[***] [***]
[***] [***]
[***] [***]
Such milestone payments shall be [***] and shall not be [***] Scriptgen shall
[***].
7.3. Royalties.
(a) In consideration of the licenses granted to Monsanto by
Scriptgen hereunder, for sales by Monsanto of Royalty-Bearing Products for
which a Valid Claim held by Monsanto under Monsanto Patent Rights or Joint
Patent Rights is in effect on a country-by-country basis, Monsanto shall pay
to Scriptgen a royalty of [***] of Royalty-Bearing Products in the
Monsanto Field containing [***] provided that in the event that
Monsanto shall make sales of Royalty Bearing Products for [***]
------------------------
[***]
14
(b) In consideration of the licenses granted to Scriptgen by
Monsanto hereunder, for sales by Scriptgen of Royalty-bearing Products for
which a Valid Claim held by Scriptgen with respect to Scriptgen patent Rights
or Joint Patent Rights is in effect on a country-by-country basis, Scriptgen
shall pay to Monsanto a royalty of [***] of Royalty-Bearing Products in the
Scriptgen Field containing [***] provided that in the event that Scriptgen
shall make sales of Royalty Bearing Products for [***].
(c) No royalty shall accrue on sales among [***] Royalties shall
only accrue on sales by [***] and shall be payable [***].
7.4. Reports and Payments. Within [***] after the conclusion of each
Royalty Period, each Party shall deliver to the other a report containing the
following information:
(a) [***] of Royalty-Bearing Products by [***] during the
applicable [***],
(b) adjustments and calculation of [***] for the applicable [***]
and
(c) total [***] together with the [***].
All such reports shall be maintained in confidence. If no royalties are due
for any reporting period, the report shall so state. Concurrent with this
report, the reporting party shall [***]. All amounts payable under this
Section will first be calculated in the currency of sale and then converted
into U.S. dollars in accordance with Section 7.5, and such amounts shall be
paid [***].
15
7.5 Invoices; Payments in U.S. Dollars. With the exception of royalty
payments due under Section 7.3, each selling Party shall submit invoices to
the other Party for each payment due hereunder, and the other Party shall pay
such invoices within [***] of receipt thereof. All payments due under this
Agreement shall, except as provided in Section 7.6 below, be payable in
United States dollars, and if not paid within [***] of their due date, shall
[***]. Conversion of foreign currency to U.S. dollars shall be made at the
conversion rate existing in the United States (as reported in The Wall Street
Journal) on the last working day of the calendar quarter preceding the
applicable calendar quarter. Such payments shall be without deduction of [***].
7.6. Payments in Other Currencies. If by law, regulation, or fiscal
policy of a particular country, conversion into United States dollars or
transfer of funds of a convertible currency to the United States is
restricted or forbidden, the selling Party shall give prompt written notice
of such restriction, which notice shall satisfy the [***] payment deadline
described in Section 7.5. Each Party shall pay any amounts due through whatever
lawful methods the non-selling Party reasonably designates; provided,
however, that if the non-selling Party fails to designate such payment method
within [***] after the non-selling Party is notified of the restriction, then
the Selling Party may deposit such payment in local currency to the credit of
the non-selling Party in a recognized banking institution selected by the
selling Party and identified by written notice to the non-selling Party, and
such deposit shall fulfill all obligations of the selling Party to the
non-selling Party with respect to such payment.
7.7 Records. Each Party and its Secondary Affiliates shall maintain
complete and accurate records of Royalty-Bearing products made, used or sold
by them or their Sublicensees under this Agreement, and any amounts payable to
the other Party in relation to such Royalty-Bearing Products, which records
shall contain [***]. The selling Party shall retain such records relating to a
given Royalty Period for at least [***] after the conclusion of that Royalty
period. Each Party (acting as the "Auditing Party") shall have the right, at
its own expense, to [***] inspect such records of the other Party (the
"Audited Party") during normal business hours for the sole purpose of
verifying any reports and payments delivered under this Agreement. Such
accountant shall not disclose to the Auditing Party any information other
than information relating to accuracy of reports and payments delivered under
this Agreement and shall provide the Audited Party with a copy of any report
given to the Auditing Party. The Parties shall reconcile any underpayment or
overpayment within [***] after the accountant delivers the results of the
audit. In the event that any audit performed under this Section reveals an
underpayment in excess of [***] in any Royalty Period, the Audited Party
shall bear the full cost of such audit. Each Party may exercise its rights
under this Section only once every year and only with reasonable prior notice
to the other party. Each Party shall use commercially reasonable efforts to
ensure that the other Party will have access to records of Royalty-Bearing
Products sold by its Secondary Affiliates.
16
8. Confidential Information.
8.1. Definition of Confidential Information. Confidential Information
shall mean any technical or business information, whether orally or in writing,
furnished by the Disclosing Party to the Receiving Party in connection with this
Agreement. Such Confidential Information may include, without limitation, the
existence and terms of this Agreement, the identity of a compound, the use of a
compound, trade secrets, know-how, inventions, technical data or specifications,
testing methods, business or financial information, research and development
activities, product and marketing plans, and customer and supplier information,
including, but not limited to, such items that become known to a Party during
visits to the facilities of the other Party.
8.2. Obligations. The Receiving Party agrees that it shall:
(a) maintain all Confidential Information in strict
confidence, except that the Receiving Party may disclose or permit the
disclosure of any Confidential Information to its, and its Primary
Affiliates, directors, officers, employees, consultants, and advisors who
are obligated to maintain the confidential nature of such Confidential
Information and who need to know such Confidential Information for the
purposes set forth in this Agreement;
(b) use all Confidential Information solely for the purposes
set forth in, or as permitted by, this Agreement; and
(c) allow its Primary Affiliates, directors, officers,
employees, consultants, and advisors to reproduce the Confidential
Information only to the extent necessary to effect the purposes set forth
in this Agreement, with all such reproductions being considered
Confidential Information.
Each Party shall be responsible for any breaches of this Section 8.2 by any of
its directors, officers, employees, consultants, and advisors.
8.3. Exceptions. The obligations of the Receiving Party under Section 8.2
above shall not apply to any specific Confidential Information to the extent
that the Receiving Party can demonstrate that such Confidential Information:
(a) was in the public domain prior to the time of its
disclosure under this Agreement;
(b) entered the public domain after the time of its disclosure
under this Agreement through means other than an unauthorized disclosure
resulting from an act or omission by the Receiving Party or its Primary
Affiliates, directors, officers, employees, consultants, advisors or
agents;
17
(c) was independently developed or discovered by the Receiving
Party without use of the Confidential Information, and which can be
demonstrated by written record;
(d) is or was disclosed to the Receiving Party at any time,
whether prior to or after the time of its disclosure under this Agreement,
by a third party having no fiduciary relationship with the Disclosing
Party and having no obligation of confidentiality to the Disclosing Party
with respect to such Confidential Information; or
(e) is required to be disclosed to comply with applicable laws
or regulations (such as disclosure to the SEC, the EPA, the FDA, or the
United States Patent and Trademark Office or to their foreign
equivalents), or to comply with a court or administrative order, provided
that the Disclosing Party receives prior written notice of such disclosure
and that the Receiving Party takes all reasonable and lawful actions to
obtain confidential treatment for such disclosure and, if possible, to
minimize the extent of such disclosure.
8.4. Survival of Obligations. The obligations set forth in this Article
shall remain in effect after termination or expiration of this Agreement for a
period of [***]
9. Representations and Warranties.
9.1. Authorization. Each Party represents and warrants to the other that
it has the legal right and power to enter into this Agreement, to extend the
rights and licenses granted to the other in this Agreement, and to fully perform
its obligations hereunder, and that the performance of such obligations will not
conflict with its charter documents or any agreements, contracts, or other
arrangements to which it is a party.
9.2. Non-Infringement. Each Party represents that to its knowledge the
conduct of its business as it is currently being conducted or as it is proposed
to be conducted pursuant to this Agreement does not conflict with or infringe on
the intellectual property of any other person, and each Party has not received
any claim or notice from any person to such effect which is still pending. Each
Party has no knowledge of any claim or fact that would give rise to a claim that
any of their respective Patents is invalid or unenforceable. To their knowledge,
each Party's Patents are not infringed by any third party.
10. Indemnification.
10.1. Indemnification. Each Party (the "Indemnitor") shall indemnify,
defend, and hold harmless the other Party and its Primary Affiliates and their
directors, officers, employees, and agents and their respective successors,
heirs and assigns (the "Indemnitees"), against any liability, damage, loss, or
expense (except to the extent otherwise provided in Section 5.5) incurred by or
imposed upon the Indemnitees or any one of them in connection with any claims,
settlements, suits, actions, demands, or judgments arising out of (i) any theory
of product liability (including, but not limited to, actions in the form of
tort, warranty, or strict liability) concerning any product
18
(or any process or service) that is made, used, or sold by the Indemnitor
pursuant to any right or license granted under this Agreement and (ii)
infringement of third party rights, including claims relating to compounds
produced by a party pursuant to methods of making disclosed to that party by the
other party; provided, however, that such indemnification right shall not apply
to any liability, damage, loss, or expense to the extent directly attributable
to the negligent activities, reckless misconduct, or intentional misconduct of
the Indemnitees. An indemnified party shall not be entitled to indemnification
for the settlement of any claim pursuant to this Agreement unless it obtains the
prior written consent of the indemnifying party to such settlement.
10.2. Procedures. Any Indemnitee that intends to claim indemnification
under Section 10.1 shall promptly notify the appropriate Indemnitor of any claim
in respect of which the Indemnitee intends to claim such indemnification, and
the Indemnitor shall assume the defense thereof with counsel mutually
satisfactory to the Parties; provided, however, that an Indemnitee shall have
the right to retain its own counsel, with the fees and expenses of no more than
law firm representing all Indemnitees in the proceeding or related proceeding,
to be paid by the Indemnitor, if representation of such Indemnitee by the
counsel retained by the Indemnitor would be inappropriate due to actual or
potential differing interests between such Indemnitee and any other party
represented by such counsel in such proceedings. The indemnity agreement in
Section 10.1. shall not apply to amounts paid in settlement of any loss, claim,
liability or action if such settlement is effected without the consent of the
Indemnitor. The failure to deliver notice to the Indemnitor within a reasonable
time after the commencement of any such action, if prejudicial to its ability to
defend such action, shall relieve the Indemnitor of any liability to the
Indemnitee under Section 10.1. Each party and its Primary Affiliates and their
employees and agents shall cooperate fully with the other party and its legal
representatives in the investigation of any action, claim or liability covered
by this indemnification.
11. Term and Termination.
11.1. Term. This Agreement shall commence on the Effective Date and
shall expire, with respect to the royalty obligations hereunder, on a country
by country basis when the Royalty Period for that country ends, or unless
earlier terminated as provided in this Article 11.
11.2. Termination by the Parties Upon Completion of Screening. Upon
completion of the compound screening, the Parties agree that only that
portion of this Agreement shall be deemed to have been terminated.
11.3. Termination by the Parties Upon Mutual Consent. This Agreement
may be terminated at any time by mutual written agreement of the Parties.
11.4. Breach of Payment Obligations. In the event that a Party fails
to make timely payment of any amounts due under this Agreement within [***]
business days after demand therefor, the other Party may terminate this
agreement upon [***] prior written notice given following the time interest
begins to accrue pursuant to Section 7.5, unless the non-paying Party cures
such breach by paying all past-due amounts within such thirty-day notice
period,
19
provided that a Party shall be entitled to use such cure provision no more than
once in any 12 month period.
11.5. Material Breach. In the event that either Party commits a material
breach of any of its obligations under this Agreement (other than as provided in
Section 11.3) and such Party fails (i) to remedy that breach within ninety (90)
days after receiving written notice thereof from the other Party or (ii) to
commence dispute resolution pursuant to Section 12.5, within ninety (90) days
after receiving written notice of that breach from the other Party, the other
Party may immediately terminate this Agreement upon written notice to the
breaching Party.
11.6. Disposition of Confidential Information. In the event of termination
or expiration of this Agreement, the Parties shall return or destroy all forms
of Confidential Information provided to them under this Agreement, within thirty
(30) days after such termination or expiration, provided that each party may
retain one copy of such Confidential Information for the sole purpose of use in
any litigation resulting from this Agreement or the activities undertaken
pursuant to this Agreement.
11.7. Effect of Termination. Termination of this Agreement shall not
relieve the parties of any obligation accruing prior to such termination. The
provisions of Article 4, Article 5, Article 6 and Article 7 (with respect only
to milestone payments and royalties accrued at the time of termination but not
yet paid), Article 8, Article 9, Article 10 and Article 12 shall survive the
expiration or termination of this Agreement. Termination of this Agreement
pursuant to Sections 11.2, 11.3, or 11.4 shall not limit any other rights and
remedies of the terminating party.
12. Miscellaneous.
12.1. Relationship of Parties. Nothing in this Agreement is intended or
shall be deemed to constitute a partnership, agency, employer-employee or joint
venture relationship between the parties. No party shall incur any debts or make
any commitments for the other, except to the extent, if at all, specifically
provided herein.
12.2. Publicity. Neither party shall use the name of the other party or
reveal the existence of or terms of this Agreement in any publicity or
advertising without the prior written approval of the other party, except that
(i) either party may use the text of a written statement approved in advance by
both parties without further approval, and (ii) either party shall have the
right to identify the other party and to disclose the terms of this Agreement as
required by applicable securities laws or other applicable law or regulation,
provided that the receiving party takes reasonable and lawful actions to
avoid/minimize the degree of such disclosure.
12.3. Non-Solicitation. During the term of this Agreement and thereafter
for a period of two (2) years, each Party agrees not to seek to persuade or
induce any employee of the other Party to discontinue his or her employment with
that Party, or to hire any such employee.
12.4. Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of New York.
20
12.5 Dispute Resolution Procedures.
(a) The parties hereby agree that they will attempt in good
faith to resolve any controversy, claim or dispute ("Dispute") arising out
of or relating to this Agreement promptly by negotiations. Any such
Dispute which is not settled by the parties within [***] days after notice
of such Dispute is given by one party to the other in writing shall be
referred to the President of Scriptgen and the Vice President, Discovery
of Monsanto who are authorized to settle such Disputes on behalf of their
respective companies ("Senior Executives"). The Senior Executives will
meet for negotiations within [***] days of the end of the [***]
negotiation period referred to above, at a time and place mutually
acceptable to both Senior Executives. If the Dispute has not been resolved
within [***] days after the end of the [***] negotiation period referred
to above (which period may be extended by mutual agreement), unless
otherwise specifically provided for herein, any Dispute will be settled
first by non-binding mediation and thereafter by arbitration as described
in subsections (b) and (c) below.
(b) Any Dispute which is not resolved by the parties within
the time period described in subsection (a) shall be submitted to an
alternative dispute resolution process ("ADR"). Within [***] after the
expiration of the [***] period set forth in subsection (a), each party
shall select for itself a representative with the authority to bind such
party and shall notify the other party in writing of the name and title of
such representative. Within [***] days after the date of delivery of such
notice, the representatives shall schedule a date for engaging in
non-binding ADR with a neutral mediator or dispute resolution firm
mutually acceptable to both representatives. Any such mediation shall be
held in Boston, Massachusetts if brought by Monsanto and St. Louis,
Missouri if brought by Scriptgen. Thereafter, the representatives of the
parties shall engage in good faith in an ADR process under the auspices of
such individual or firm. If the representatives of the parties have not
been able to resolve the Dispute within [***] days after the conclusion of
the ADR process, or if the representatives of the parties fail to schedule
a date for engaging in non-binding ADR within the [***] day period set
forth above, the Dispute shall be settled by binding arbitration as set
forth in subsection (c) below. If the representatives of the parties
resolve the dispute within the [***] day period set forth above, then such
resolution shall be binding upon the parties. If either party fails to
abide by such resolution, the other party can immediately refer the matter
to arbitration under Section 13.5(c).
(c) If the parties have not been able to resolve the Dispute
as provided in subsections (a) and (b) above, the Dispute shall be finally
settled by binding arbitration. Any arbitration hereunder shall be
conducted under rules of the American Arbitration Association. The
arbitration shall be conducted before three arbitrators chosen according
to the following procedure: each of the parties shall appoint one
arbitrator and the two so nominated shall choose the third, provided that
in the case of a dispute as to decisions of the Research Committee each
party shall designate one (1) neutral having the following
21
minimum scientific qualifications: a Ph.D. degree in chemistry or life
sciences and/or an M.D. degree plus at least ten (10) years of relevant
business or scientific research experience. These two(2) neutrals shall
select a third neutral having the same minimum scientific qualifications
within fourteen (14) days of the appointment of the first two (2)
neutrals. None of the neutrals shall be an employee, director or
shareholder of either Party or any of their subsidiaries, Secondary
Affiliates or otherwise have a materially conflicting interest in the
outcome of such proceeding. If the arbitrators chosen by the parties
cannot agree on the choice of the third arbitrator within a period of
thirty (30) days after their appointment, then the third arbitrator with
such requisite qualifications shall be appointed by the Court of
Arbitration of the American Arbitration Association. Any such arbitration
shall be held in Boston, Massachusetts if brought by Monsanto and St.
Louis, Missouri if brought by Scriptgen or such other location as the
arbitrators may agree. The arbitrators shall have the authority to grant
specific performance, and to allocate between the parties the costs of
arbitration in such equitable manner as they determine. The arbitral award
(i) shall be final and binding upon the parties; and (ii) may be entered
in any court of competent jurisdiction.
(d) Nothing contained in this Section or any other provisions
of this Agreement shall be construed to limit or preclude a party from
bringing any action in any court of competent jurisdiction for injunctive
or other provisional relief to compel the other party to comply with its
obligations hereunder before or during the pendency of mediation or
arbitration proceedings. The parties hereby irrevocably consent to submit
to the jurisdiction of the federal courts located within the Commonwealth
of Massachusetts and the state of Missouri and agree that venue is proper
in any such court and will not seek to alter or contest such venue.
12.6. Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, and all of which
together shall be deemed to be one and the same instrument.
12.7. Headings. All headings in this Agreement are for convenience only
and shall not affect the meaning of any provision hereof.
12.8. Binding Effect. This Agreement shall inure to the benefit of and be
binding upon the Parties, their Primary Affiliates, and their respective lawful
successors and assigns.
12.9. Assignment. This Agreement may not be assigned by either party
without the prior written consent of the other party, except that either party
may assign this Agreement to a successor in connection with the merger,
consolidation, spin-off or sale of all or substantially all of its assets or
that portion of its business pertaining to the subject matter of this Agreement.
Monsanto has the right to extend its rights and benefits under this Agreement to
any Primary Affiliate.
12.10. Notices. All notices, requests, demands and other communications
required or permitted to be given pursuant to this Agreement shall be in writing
and shall be deemed to have
22
been duly given upon the date of receipt if delivered by hand, recognized
international overnight courier, confirmed facsimile transmission, or registered
or certified mail, return receipt requested, postage prepaid to the following
addresses or facsimile numbers:
If to Monsanto: If to Scriptgen:
Monsanto Company Scriptgen, Inc.
000 Xxxxxxxxxxxx Xxxxxxx Xxxxx 000 Xxxxxx Xxxxxx
Xx. Xxxxx, Xxxxxxxx 00000 Xxxxxxx, XX 00000
Attention: Xxxxx Xxxxxx Attention: Xxxxx X. Xxxxxx
[***] [***]
with a copy to: with a copy to:
[***]
Xxxxx Xxxx LLP Xxxxxxxxxxx Xxxxxxxxx
One Metropolitan Sq., Suite 3600 Xxxxxx, XxXxxxxxx & Xxxx, XXX
Xx. Xxxxx, Xxxxxxxx 00000 One International Place
Attention: Xxxxx X. Xxxxxxxx III Xxxxxx, Xxxxxxxxxxxxx 00000-0000
[***] [***]
Either party may change its designated address and facsimile number by notice to
the other party in the manner provided in this Section.
12.11. Amendment and Waiver. This Agreement may be amended, supplemented,
or otherwise modified only by means of a written instrument signed by both
parties. Any waiver of any rights or failure to act in a specific instance shall
relate only to such instance and shall not be construed as an agreement to waive
any rights or fail to act in any other instance, whether or not similar.
12.12. Severability. In the event that any provision of this Agreement
shall, for any reason, be held to be invalid or unenforceable in any respect,
such invalidity or unenforceability shall not affect any other provision hereof,
and the parties shall negotiate in good faith to modify the Agreement to
preserve (to the extent possible) their original intent.
12.13. Entire Agreement. This Agreement and the attached Exhibits A and B
constitute the entire agreement between the parties with respect to the subject
matter hereof and supersede all prior agreements or understandings between the
parties relating to the subject matter hereof.
12.14. Force Majeure. Neither party shall be held liable or responsible to
the other party, nor be deemed to be in breach of this Agreement, for failure or
delay in fulfilling or performing any provisions of this Agreement when such
failure or delay is caused by or results from any cause whatsoever outside the
reasonable control of the party concerned including, but not limited to, fire,
explosion, breakdown of plant, strike, lock-out, labor disputes, casualty or
accident, lack
23
or failure of transportation facilities, flood, lack or failure of sources of
supply or of labor, raw materials or energy, civil commotion, embargo, any law,
regulation, decision, demand or requirement of any national or local government
or authority. The party claiming relief shall, without delay, notify the other
party by registered airmail or by telefax of the interruption and cessation
thereof and shall use its best efforts to remedy the effects of such hindrance
with all reasonable dispatch. The onus of proving that any such Force Majeure
event exists shall rest upon the party so asserting. During the period that one
party is prevented from performing its obligations under this Agreement due to a
Force Majeure event, the other party may, in its sole discretion, suspend any
obligations that relate thereto. Upon cessation of such Force Majeure event the
parties hereto shall use their best efforts to make up for any suspended
obligations. If such Force Majeure event is anticipated to continue, or has
existed for nine (9) consecutive months or more, this Agreement may be forthwith
terminated by either party by registered airmail or by telefax. In case of such
termination the terminating party will not be required to pay to the other party
any indemnity whatsoever.
24
IN WITNESS WHEREOF, the undersigned have duly executed and delivered this
Agreement as a sealed instrument effective as of the date first above written.
MONSANTO COMPANY SCRIPTGEN PHARMACEUTICALS, INC.
By: /s/ Xxx X. XxXxxxxxxx By: /s/ Xxxxx X. Xxxxxx
-------------------------------- ----------------------------------
Name: Xxx X. XxXxxxxxxx, Ph.D. Name: Xxxxx X. Xxxxxx
Title: Manager, Technology Alliances Title: Senior Director of Operations
25
EXHIBIT A
ADDITIONAL EQUIPMENT
[***]
26
EXHIBIT B
FORM OF MATERIALS TRANSFER AGREEMENT
This Agreement, dated as of _______, __, _____, is between Scriptgen
Pharmaceuticals, Inc. ("Scriptgen"), a Delaware corporation, and Monsanto
Company ("Monsanto"), a Delaware corporation and ________________, a
___________________ ("Recipient").
WHEREAS, Monsanto and Scriptgen have entered into a Compound Testing
And Development Agreement pursuant to which Monsanto and Scriptgen have
agreed to provide the other with certain compounds for screening on the terms
and subject to the conditions set forth in such agreement and to perform
certain other compound development activities; and
WHEREAS, pursuant to the Compound Testing And Development Agreement,
Scriptgen and Monsanto are permitted to deliver such compounds to third parties
such as Recipient, provided such parties execute and deliver this Agreement to
__________________.
NOW, THEREFORE, in consideration of the premises and the mutual covenants
and conditions contained herein and for other good and valuable consideration,
the receipt and sufficiency of which is hereby acknowledged, the parties hereto
agree as follows:
1. SUPPLY OF MATERIALS: Within ____ days after receiving an original of
this Agreement executed by all parties, [Monsanto/Scriptgen] will supply
Recipient with the compounds set forth on Exhibit 1 (the "Materials"). Upon
written request, [Monsanto/Scriptgen] may provide the Recipient with additional
quantities of such Materials or with additional compounds, which compounds shall
also be considered Materials for the purposes of this Agreement.
2. USE AND TRANSFER RESTRICTIONS: Recipient acknowledges and agrees that
the Materials may be proprietary to and owned by Monsanto and/or Scriptgen and
are or may be covered by claims of U.S. and international patents or patent
applications of Monsanto and/or Scriptgen Recipient agrees to use the Materials
solely to screen them for _______________________ use. Recipient agrees (i) not
to transfer such Materials to any third party without the prior written consent
of [Monsanto/Scriptgen], (ii) to permit access to the Materials only to its
employees and consultants requiring such access, (iii) to inform such employees
and consultants of the proprietary nature of the Materials, (iv) to take
reasonable precautions, at least as stringent as those observed by Recipient to
protect its own proprietary materials, to ensure that such employees and
consultants observe the obligations of Recipient pursuant to this Section and
(v) to execute and deliver any documents of assignment or conveyance that may be
necessary to effectuate the ownership rights of Monsanto and/or Scriptgen in the
Materials. Upon the expiration of this Agreement, Recipient shall, at the
instruction of the party providing the Materials, either destroy or return any
unused Materials.
3. COMPLIANCE WITH LAW: Recipient agrees to comply with all federal,
state, and
27
local laws and regulations applicable to the use, testing, storage, disposal,
and transfer of the Materials. Recipient assumes sole responsibility for any
violation of such laws or regulations by Recipient or any of its affiliates or
sublicensees.
4. TERMINATION: This Agreement shall commence on the date last written
below and continue for a period of ____ months. Sections 3, 6 and 7 shall
survive termination of this Agreement.
5. NO WARRANTIES: Any Materials delivered pursuant to this Agreement are
understood to be experimental in nature and may have hazardous properties.
Recipient should assume that the Materials are dangerous and should use
appropriate precautions. NEITHER MONSANTO NOR SCRIPTGEN MAKES ANY
REPRESENTATIONS, OR EXTENDS ANY WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED, WITH RESPECT TO THE COMPOUNDS. THERE ARE NO EXPRESS OR IMPLIED
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE
USE OF THE MATERIALS WILL NOT INFRINGE ANY PATENT RIGHTS OF OTHERS.
6. ASSIGNMENT OF INVENTIONS: Recipient agrees promptly to disclose to
[Monsanto/Scriptgen] any and all ideas, concepts, discoveries, inventions,
developments, improvements, trade secrets, technical data, know-how or other
materials that are conceived, devised, invented, developed or reduced to
practice or tangible medium by Recipient, or any of its agents, employees or
contractors, or under its direction, during the term of this Agreement and which
arise out of its screening or evaluation of the Materials (hereinafter
"Inventions"). Recipient hereby assigns to [Monsanto/Scriptgen] all of its
right, title and interest in and to the Inventions and any and all related
patent rights, copyrights and applications and registrations therefor. During
and after the expiration of this Agreement, Recipient shall cooperate with
[Monsanto/Scriptgen], at [Monsanto/Scriptgen] expense, in obtaining proprietary
protection for the Inventions and shall execute all documents which
[Monsanto/Scriptgen] shall reasonably request in order to perfect
[Monsanto/Scriptgen] rights in the Inventions. To the extent the terms of this
Agreement conflict or are inconsistent with the terms of the Compound Testing
and Development Agreement, the Compound Testing and Development Agreement shall
control, provided that such outcome will not result in the breach of an
agreement with a third party holding a right to or interest in the Materials.
7. INDEMNIFICATION: Recipient assumes all liability for, and agrees to
indemnify, defend, and hold harmless Scriptgen and Monsanto and their respective
directors, officers, representatives, employees, and agents against, all losses,
expenses (including without limitation any legal fees and expenses), claims,
demands, damages, judgments, suits, or other actions arising from the use,
testing, storage, or disposal of the Materials by Recipient and its agents,
employees or contractors, or from any breach of its obligations under Section 2
of this Agreement.
8. MISCELLANEOUS: This Agreement shall not be assigned or otherwise
transferred by Recipient without the prior written consent of Scriptgen and
Monsanto. This Agreement shall be governed by the laws of the State of New York.
This Agreement constitutes the entire
28
understanding of the parties and supersedes all prior agreements, written or
oral, with respect to the subject matter hereof.
ACCEPTED AND AGREED:
Scriptgen Pharmaceuticals, Inc.
/s/ Xxxxx X. Xxxxxx
-----------------------------------------
Name: Xxxxx X. Xxxxxx
Title: Senior Director of Operations
Date: 11/17/97
ACCEPTED AND AGREED:
-----------------------------------------
Name:
Title:
Date:
ACCEPTED AND AGREED:
Monsanto Company
/s/ Xxx X. XxXxxxxxxx
-----------------------------------------
Name: Xxx X. XxXxxxxxxx
Title: Manager, Technology Alliances
Date: 11/13/97
29
