CONFIDENTIAL TREATMENT Exhibit 10.25
LIBRARY SAMPLE EVALUATION AGREEMENT
This Library Sample Evaluation Agreement (the "Agreement"), effective
as of September 11, 1996 (the "Effective Date"), is made by and between
Pharmacopeia, Inc., a Delaware corporation having a principal place of business
at 000 Xxxxxxx Xxxx Xxxx, Xxxxxxxxx, Xxx Xxxxxx 00000 ("Pharmacopeia"), and
Cubist Pharmaceuticals, Inc., a Delaware corporation having a principal place of
business at 00 Xxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx 00000 ("Cubist").
BACKGROUND
A. Pharmacopeia has developed novel proprietary methods for the
generation of encoded compound libraries. Pharmacopeia believes that its
proprietary technology, by rapidly producing diverse and targeted compound
libraries, will accelerate the drug discovery process and increase productivity
of drug discovery programs.
B. Cubist wishes to obtain from Pharmacopeia samples of combinatorial
libraries to be screened by Cubist against certain agreed targets, and
Pharmacopeia is willing to provide such samples to Cubist for such purpose, on
the terms and conditions set forth herein.
NOW THEREFORE, it is agreed by and between the parties as follows:
1. DEFINITIONS
1.1 "Columbia License" means that certain License Agreement effective
as of July 16, 1993, as amended and restated as of October 6, 1995, entered by
and between Pharmacopeia, Inc., the Trustees of Columbia University in the City
of New York and the Cold Spring Harbor Laboratory.
1.2 "Confidential Information" means (i) any proprietary or
confidential information or material in tangible form disclosed hereunder that
is marked as "Confidential" at the time it is delivered to the receiving party,
or (ii) proprietary or confidential information disclosed orally hereunder which
is identified as confidential or proprietary when disclosed and such disclosure
of confidential information is confirmed in writing within thirty (30) days by
the disclosing party.
1.3 "Library Compound" means any compound contained in a Library
Sample.
1.4 "Library Sample" means a sample of compounds selected from a
Pharmacopeia compound library and transferred to Cubist pursuant to this
Agreement.
1.5 "Licensed Patents" means any patent applications that claim any
compound in the library from which the Library Sample is derived; any
substitutions, divisions, continuations, and continuations-in-part of the
preceding patent applications; any foreign counterparts of the preceding
applications; and any patents issuing on the preceding applications, including
registrations, revalidations, reissues, reexaminations, extensions or other
governmental actions which extend claims or durations of such patents; in each
case, which is owned or controlled, in whole or part, by license, assignment or
otherwise by Pharmacopeia during the term of this Agreement, and subject to any
limitations and prohibitions of such license or sublicense. It is understood
that the Licensed Patents shall not include any intellectual property owned or
licensed by Pharmacopeia relating to creation or use of combinatorial libraries,
tag and/or marker compound engineering and encoding, and/or high throughput
screening assays (hereinafter the "Excluded Technology").
1.6 "Screening Period" means the four (4) month period following the
date of shipment by Pharmacopeia of each Library Sample to Cubist or such longer
period as may be established under Section 2.3.2 below.
1.7 "Target" means any molecular target set for on Exhibit B hereto,
and any other molecular targets agreed in writing by Cubist and Pharmacopeia.
2. LIBRARY SAMPLE
2.1 Library Sample. Subject to the terms and conditions of this
Agreement, Pharmacopeia shall provide four copies of the Library Sample to
Cubist for screening by Cubist against the Targets as set forth in more detail
on Exhibit A. The Library Sample shall be available delivery to Cubist as soon
as practicable following Cubist's payment of the Library Sample Access Fee
pursuant to Section 5.1.
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2.2 Limited Use. The Library Sample shall be used by Cubist solely to
conduct screening of the Targets. It is understood and agreed that Cubist shall
not*************************************************************************.
Cubist will not ***************************************************************
*******************************************************************************
**********. Cubist will not transfer the Library Sample or any of the Library
Compounds to any third party without Pharmacopeia's prior written consent.
Cubist agrees that it will not ***********************************************
**********************************.
2.3 Screening by Cubist.
2.3.1 Target Exclusivity. To provide Cubist a period of
exclusivity for screening of the Library Sample against the Targets,
Pharmacopeia agrees that until the termination of the Screening Period, as such
period may be extended, Pharmacopeia shall not knowingly deliver to any third
party any compound from the Library Sample for screening against any of the
Targets; provided, Pharmacopeia may itself screen or provide to third parties
compounds from such Library Sample, or the library from which it was derived,
for screening against any molecular target which is not a Target hereunder at
such time.
2.3.2 Extentions of Screening Period. Cubist may request that
Pharmacopeia extend the Screening Period for an additional period (after the
initial four (4) month Screening Period) by notifying Pharmacopeia no later than
thirty (30) days prior to the date on which such Screening Period will expire.
It is understood and agreed that if Pharmacopeia, in its sole discretion, does
not so extend the Screening Period, Cubist shall have no further rights to
screen the Library Sample. The length of any such additional period will be as
agreed by the parties.
2.4 Rearrays. After joint review of the screening data and upon mutual
agreement, Pharmacopeia shall rearray (at one compound per well) those xxxxx
identified by the parties as containing compounds with activity against any of
the Targets.
2.5 Additional Library Sample. If Cubist screens the initial Library
Sample but does not identify any Library Compound with respect to which it
wishes to negotiate with Pharmacopeia for a further agreement pursuant to
Section 4.1, Cubist may request up to four copies of a further Library Sample
with notice to Pharmacopeia during the Screening Period. Pharmacopeia then shall
provide to Cubist a further
* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
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Library Sample drawn from a different Pharmacopeia library, and Cubist may
screen such further Library Sample, subject to the terms and conditions herein.
Pursuant to this Section 2.5, Cubist may receive Library Samples from
************** additional Pharmacopeia compound libraries. Upon shipment of such
further Library Sample, Cubist's right to negotiate a further agreement with
respect to any Library Compound in a previous Library Sample shall terminate.
2.6 Additional Targets. At any time during the Screening Period, Cubist
may provide Pharmacopeia notice that Cubist wishes to drop a Target from this
Agreement and designate an additional target as a Target for all purposes of
this Agreement. Within fifteen (15) days of receipt of such notice, Pharmacopeia
shall, at its sole discretion, accept or deny the designation of each such
proposed target as a Target by notice to Cubist. Upon Pharmacopeia's notice of
such acceptance, if any, Cubist's right to negotiate a further agreement with
respect to such dropped Target shall terminate.
2.7 Ownership of Library Samples. Pharmacopeia, shall retain all right,
title and interest in and to the Library Sample and Library Compounds, and all
Pharmacopeia intellectual property rights related thereto.
3. LICENSE
3.1 Screening License. Subject to the terms and conditions of this
Agreement, Pharmacopeia grants to Cubist a non-exclusive, non-transferable
license, under the applicable Licensed Patents solely to screen the Library
Sample to identify Library Compounds with activity against one or more of the
Targets.
3.2 Columbia Sublicense. Subject to the terms and conditions of this
Agreement and Columbia License, if necessary, Pharmacopeia will grant to Cubist
a non-exclusive, non-transferable sublicense under the Columbia License solely
to screen the Library Sample to identify Library Compounds with activity against
one or more of the Targets.
3.3 Retained Rights. No right or license in or to intellectual property
rights of Pharmacopeia relating to the Library Sample or Library Compounds (or
otherwise) is granted nor implied hereunder, except for the sole purpose of
conducting the screening. Pharmacopeia retains rights not expressly granted to
Cubist in Section 3.1 above, including without limitation, the right make, have
made and use Library Compounds in the
* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
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Library Sample for its own research purposes. It is understood and agreed that
the license granted to Cubist in Section 3.1 above does not include the right to
create, make or have made combinatorial libraries, tags, markers or other
encoding compositions, or use methods or processes relating to the preceding.
4. FURTHER AGREEMENTS
4.1 Negotiation of Further Agreement. If Cubist determines that one or
more Library Compounds have biological activity with respect to a Target and
wishes to negotiate with Pharmacopeia a further agreement relating to such
Library Compounds, Cubist may notify Pharmacopeia thereof during the Screening
Period. In such event, the parties shall negotiate in good faith the terms of a
further agreement for a period of ************************* from Pharmacopeia's
receipt of such notice, or such longer period as the parties may agree (the
"Negotiation Period"). The nature of such further agreement may be a license,
collaboration or any other form as may be agreed by the parties. If the parties
fail to enter into a further written agreement with respect to a particular
Library Compounded during the Negotiation Period, Cubist shall acquire no right
to such Library Compound.
4.2 No Decodes. Until the parties reach definitive agreement pursuant
to Section 4.1, or unless otherwise agreed in writing by the parties,
Pharmacopeia shall not knowingly decode any Library Compound identified by
Cubist to Pharmacopeia as having activity with respect to any Target.
4.3 Screening By Pharmacopeia. If Cubist notifies Pharmacopeia as
provided in Section 4.1, but the parties fail to enter into a further agreement,
following the first anniversary of the end of the Screening Period, Pharmacopeia
may screen and allow others to screen the Library Sample and the library from
which it was derived against any Target; provided, Pharmacopeia may disclose to
third parties that the Library Sample has been screen against such a Target, but
shall not disclose to third parties that Cubist screened the Library Sample or
the results of such screening.
4.4 No Notice of Library Compound Activity. If Cubist fails to provide
Pharmacopeia notice pursuant to Section 4.1 that it wishes to negotiate a
further agreement with respect to any Library Compound in a particular Library
Sample during the Screening Period, following the end of such Screening Period
Pharmacopeia may screen and allow third
* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
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parties to screen, such Library Sample and the library from which it was derived
for activity against any Target, without further obligation to Cubist, and may
commercialize any Library Compound therein itself or with third parties.
4.5 Third Party Rights. It is understood that Pharmacopeia is in the
business of providing combinatorial libraries to third parties, and that
Pharmacopeia may grant such third parties rights to acquire licenses for
compounds in or derived from compounds in such libraries prior to the execution
of any further agreement between the parties hereto. Accordingly, any rights
granted to Cubist in a further agreement between the parties hereto shall be
limited to the extent that (i) a third party (either alone or jointly with
Pharmacopeia) has filed a patent application with respect to such a compound
prior to the filing by Cubist (either alone or jointly with Pharmacopeia) of a
patent application with respect to such a compound, (ii) Pharmacopeia has
previously granted a third party a license or other rights with respect to such
a compound, or (iii) as shown by contemporaneous documentation, Pharmacopeia has
previously decided to develop a particular compound on its own behalf. It is
further understood that compounds provided to third parties in the course of
Pharmacopeia's other business activities may result in third party patent
applications and patents, including patent applications and patents owned by
such third parties, or owned jointly by Pharmacopeia and such third parties,
which could affect the rights Cubist may wish to acquire from Pharmacopeia with
respect to any Library Compound.
5. PAYMENTS
5.1 Library Sample Access Fee. Within thirty (30) days of the Effective
Date, Cubist shall pay to Pharmacopeia a fee of ***************
**********************************.
5.2 Payment Method. All payments due under this Agreement shall be made
to an account designated by Pharmacopeia. All payments hereunder shall be made
in U.S. dollars. Any payments that are not paid on the date such payments area
due under this Agreement shall bear interest to the extent permitted by
applicable law at the prime rate as reported by the Chase Manhattan Bank, New
York, New York, on the date such payment is due, plus an additional two percent
(2%), calculated on the number of days such payment is delinquent.
5.3 Tax Matters. Any sales taxes, use taxes, transfer taxes or
similar governmental charges required to be paid in connection with the
* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
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transfer of the Library Sample shall be the sole responsibility of Cubist. In
the event that Pharmacopeia is required to pay any such amounts, Cubist shall
promptly remit payment to Pharmacopeia of such amounts.
6. CONFIDENTIALITY
6.1 Confidential Information. Except as expressly provided herein, the
parties agree that, for the term of this Agreement and for five (5) years
thereafter, the receiving party shall not disclose and except as expressly
provided in this Article 6, shall not use for any purpose other than the
performance of this Agreement, any Confidential Information furnished to it by
the disclosing party hereto pursuant to this Agreement except to the extent that
it can be established by the receiving party by competent proof that such
information:
(a) was already known to the receiving party, other than under
an obligation of confidentiality, at the time of disclosure;
(b) was generally available to the public or otherwise part of
the public domain the time of its disclosure to the receiving party;
(c) became generally available to the public or otherwise part
of the public domain after its disclosure and other than through any act or
omission of the receiving party breach of this Agreement;
(d) was independently developed by the receiving party as
demonstrated by documented evidenced prepared contemporaneously with such
independent development; or
(e) was subsequently lawfully disclosed to the receiving party
by a person other than a party.
6.2 Permitted Use and Disclosures. Each party hereto may use or
disclose Confidential Information disclosed to it by the other party to the
extent such use or disclosure is reasonably necessary and permitted in the
exercise of the rights granted hereunder, prosecuting or defending litigation,
or complying with applicable governmental regulations or court orders or
otherwise submitting information to tax or other governmental authorities,
provided that if a party is required make any such disclosure of another party's
Confidential Information, other than pursuant to a confidentiality agreement, it
will give reasonable advance notice to the other party of such disclosure and,
save to the extent inappropriate in the case of patent applications, will use
its reasonable efforts to secure
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confidential treatment of such Confidential Information in consultation with the
other prior to its disclosure (whether through protective orders or otherwise)
and disclose only the minimum necessary to comply with such requirements.
6.3 Nondisclosure of Terms. Each of the parties hereto agrees not to
disclose to any third party the terms of this Agreements without the prior
written consent of the other party hereto, except to such party's attorneys,
advisors, investors and other on a need to know basis under circumstances that
reasonably ensure the confidentiality thereof, or to the extent required by law.
7. INDEMNIFICATION
7.1 Cubist. Cubist agrees to indemnify, defend and hold Pharmacopeia
and its directors, officers, employees and agents (the "Pharmacopeia
Indemnitees") harmless from and against any losses, costs, claims, damages,
liabilities or expense (including reasonable attorneys' and professional fees
and court and other expenses of litigation) arising out of or in connection with
third party claims relating to the use of the Library Sample under this
Agreement, except to the extent due to the negligence or intentional misconduct
of Pharmacopeia.
7.2 Pharmacopeia. Pharmacopeia agrees to indemnify, defend and hold
Cubist and its Affiliates and their respective directors, officers, employees
and agents (the "Cubist Indemnitees") harmless from and against any losses,
costs, claims, damages, liabilities or expense (including reasonable attorneys'
fees and court and other expenses of litigation) arising out of or in connection
with third party claims relating to the preparation and delivery of the Library
Sample, except to the extent due to the negligence or intentional misconduct of
Cubist.
8. TERM AND TERMINATION
8.1 Term. The term of this Agreement shall begin as of the Effective
Date and, unless terminated earlier as provided in this Article 8, continue in
full force and effect until the later of (i) the end of the Screening Period, as
it may be extended, or (ii) the end of the Negotiation Period.
8.2 Termination for Cause. Either party may terminate this Agreement in
the event the other party shall have materially breached or
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defaulted in the performance of any of its obligations hereunder, and such
default shall have continued for ****************** after written notice thereof
was provided to the breaching party by the nonbreaching party. Any termination
shall become effective at the end of such *********** period unless the
breaching party (or any other party on its behalf) has cured any such breach or
default prior to the expiration of the *************** period or has commenced
the cure within such *********** period and thereafter uses its best efforts to
complete the cure as soon as practicable; provided, in the case of a failure to
pay any amount due hereunder, such default may be the basis of a termination
************ following the date that notice of such default was provided to the
breaching party.
8.3 Termination Upon Bankruptcy or Insolvency. If voluntary or
involuntary proceedings by or against a party are instituted in bankruptcy under
any insolvency law, or a receiver or custodian is appointed for such party, or
proceedings are instituted by or against such party for corporate reorganization
or the dissolution of such party, which proceedings, if involuntary, shall not
have been dismissed within sixty (60) days thereafter, the other party may
immediately terminate this Agreement effective upon notice of such termination.
8.4 Termination by Cubist. Cubist shall have the right to terminate
this Agreement on sixty (60) days prior written notice to Pharmacopeia.
8.5 Effect of Breach or Termination.
8.5.1 Accrued Obligations. Termination of this Agreement for
any reason shall not release any party hereto from any liability which, at the
time of such termination, has already accrued to the other party or which is
attributable to a period prior to such termination nor preclude either party
from pursuing all rights and remedies it may have hereunder or at law or in
equity with respect to any breach of this Agreement.
8.5.2 Return of Materials. Upon any termination of this
Agreement, Cubist and Pharmacopeia shall promptly return to the other party all
Confidential Information of the other (except for one (1) copy which may be
retained solely for archival purposes), and Cubist shall return to Pharmacopeia
or destroy any remaining Library Compounds.
8.5.3. Survival. Sections 2.7. 4.2, 4.3, 5.3, 8.5 and 8.6, and
Articles 6, 7 and 9 of this Agreement shall survive the expiration or
termination of this Agreement for any reason.
* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
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9. MISCELLANEOUS
9.1 Governing Law. This Agreement and any dispute arising from the
performance breach hereof shall be governed by and construed and enforced in
accordance with, the laws of state of New Jersey without reference to conflicts
of laws principles.
9.2 No Implied Licenses. Only the licenses granted pursuant to the
express terms of the Agreement shall be of any legal force or effect. No license
rights shall be created by implication, estoppel or otherwise.
9.3 Waiver. It is agreed that no waiver by any party hereto of any
breach or default of any of the covenants or agreements herein set forth shall
be deemed a waiver as to any subsequent and/or similar breach or default.
9.4 Assignment. This Agreement shall not be assignable by either party
to any third party hereto without the written consent of the other party, except
either party may assign this Agreement, without such consent, to an entity that
acquires all or substantially all of the business or assets of such party to
which this Agreement pertains, whether by merger, reorganization, acquisition,
sale, or otherwise. This Agreement shall be binding upon and accrue to the
benefit of the parties hereto and their successors and any permitted assigns.
9.5 Independent Contractors. The relationship of the parties hereto is
that of independent contractors. The parties hereto are not deemed to be agents,
partners or joint venturers of the others for any purpose as a result of this
Agreement or the transactions contemplated thereby.
9.6 Disclaimer of Warranties. THE LIBRARY SAMPLE PROVIDED HEREUNDER IS
PROVIDED AS-IS. PHARMACOPEIA MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES
OF ANY KIND, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO THE LICENSED PATENTS,
LIBRARY SAMPLE, THE LIBRARY COMPOUNDS, OR ANY CONFIDENTIAL INFORMATION DISCLOSED
PURSUANT TO ARTICLE 6, INCLUDING, BUT NOT LIMITED TO, ANY WARRANTY OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, VALIDITY OF THE LICENSED
PATENTS, OR NONFRINGEMENT BY THE PRECEDING OF ANY INTELLECTUAL PROPERTY RIGHTS
OR THIRD PARTIES.
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9.7 Notices. All notices, requests and other communications hereunder
shall be in writing and shall be personally delivered or by registered or
certified mail, return receipt requested, postage prepaid, in each case to the
respective address specified below, or such other address as may be specified in
writing to the other parties hereto and shall be deemed to have been given upon
receipt:
Pharmacopeia: Pharmacopeia, Inc.
000 Xxxxxxx Xxxx Xxxx
Xxxxxxxxx, Xxx Xxxxxx 00000
Attn: Chief Executive Officer
Cubist: Cubist Pharmaceuticals, Inc.
00 Xxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
Attn: Chief Executive Officer
9.8 Severability. In the event that any provision of this Agreement
becomes or is declared by a court of competent jurisdiction to be illegal,
unenforceable or void, this Agreement shall continue in full force and effect
without said provision.
9.9 No Consequential Damages. IN NO EVENT SHALL ANY PARTY TO THIS
AGREEMENT HAVE ANY LIABILITY TO THE OTHER FOR ANY SPECIAL, INDIRECT,
CONSEQUENTIAL OR INCIDENTAL DAMAGES ARISING UNDER THIS AGREEMENT UNDER ANY
THEORY OF LIABILITY.
9.10 Complete Agreement. This Agreement with its Exhibits, constitutes
the entire agreement between the parties with respect to the subject matter
hereof, and all prior agreements respecting the subject matter hereof, either
written or oral, express or implied, shall be abrogated, canceled, and are null
and void and of no effect. No amendment or change hereof or addition hereto
shall be effective or binding on either of the parties hereto unless reduced to
writing and executed by the respective duly authorized representatives of
Pharmacopeia and Cubist.
9.11 Dispute Resolution. Any dispute under this Agreement which is not
settled by mutual consent shall be finally settled by binding arbitration,
conducted in accordance with the Commercial Arbitration Rules of the American
Arbitration Association by one (1) arbitrator appointed in accordance with said
rules. The arbitration shall be held in
00
Xxx Xxxx, Xxx Xxxx. The costs of the arbitration, including administrative and
arbitrators' fees, shall be shared equally by the parties, and each party shall
bear its own costs and attorneys' and witness' fees. The decision of the
arbitrator shall be written, final and non-appealable and may be enforced in any
court of competent jurisdiction.
9.12 Counterparts. This Agreement may be executed in counterparts, each
of which shall be deemed to be an original and all of which together shall be
deemed to be one and the same agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed by their authorized representatives and delivered as of the
Effective Date.
CUBIST PHARMACEUTICALS, INC. PHARMACOPEIA, INC.
By: /s/ Xxxx Xxxxxx By: /s/ Xxxxxx X. Xxxxxxx
----------------------- ----------------------------
Name: Xxxx Xxxxxx, Ph.D. Name: Xxxxxx X. Xxxxxxx, Ph.D.
----------------------- ----------------------------
Title: UP Corporate Development Title: Chairman and Chief
Executive Officer
----------------------- ----------------------------
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EXHIBIT A
1. Each copy of the Library Sample provided by Pharmacopeia to
Cubist shall consist **********************************************************
**********************.
2. After Cubist has completed screening the Library
Sample,***********************************************************************
***********************************************************************.
3. Pharmacopeia will*****************************************
*******************************************************************************
*******************************************************************************
*********************************************************************.
4. The production process is*********************************
*******************************************************************************
*****************************************************************************
***.
5. Pharmacopeia shall not ***********************************
*******************************************************************************
*******************************************************************************
*******************************************************************************
********.
* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
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EXHIBIT B
The Targets include:
1. ************************************************
2. ************************************************
* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
