Confidential Treatment Requested
by Affymetrix, Inc.
COLLABORATION AGREEMENT
INCYTE PHARMACEUTICALS, INC.
and
AFFYMETRIX, INC.
Page 1
CONFIDENTIAL
COLLABORATION AGREEMENT
THIS AGREEMENT is made as of the 11th day of November, 1996 (the "Effective
Date") by and between Affymetrix, Inc. ("AFFX"), a California corporation
having its principal place of business at 0000 Xxxxxxx Xxxxxxxxxx, Xxxxx Xxxxx,
Xxxxxxxxxx 00000, and Incyte Pharmaceuticals, Inc. ("INCYTE"), a Delaware
corporation having its principal place of business 0000 Xxxxxx Xxxxx, Xxxx Xxxx,
Xxxxxxxxxx 00000.
WHEREAS, AFFX has research, development, and manufacturing capabilities and
facilities, and has developed and has certain rights to DNA probe array based
technology and inventions, know-how and materials concerning computer analysis
technology, and software for the measurement of expression of genes, the
analysis of genotypes and phenotypes, the compilation of information relating
to the field of genomics, and the resulting compiled information;
WHEREAS, INCYTE has performed research and developed inventions, know-how,
and materials concerning its proprietary high-throughput automated cDNA
sequencing, computer analysis technology and software development for the
discovery of genes, the analysis of genotypes, and the analysis of the
expression profile of gene transcripts present in a given cell or tissue type,
and has compiled and is compiling and owns certain information pertaining to the
field of genomics in proprietary databases made available on a commercial
basis;
WHEREAS INCYTE and AFFX desire to enter into an agreement whereby 1) AFFX
will supply DNA probe arrays containing INCYTE's proprietary gene sequence
and/or gene expression information which may be provided on a commercial basis
to third parties, for generation of genomic information, and 2) the Parties will
generate databases containing such information to be provided on a commercial
basis to third parties;
WHEREAS, AFFX and INCYTE have agreed that AFFX will make its GeneChip-TM-
Technology available and that INCYTE will make its gene sequences and
bioinformatics capabilities available for generation of such DNA probe arrays
and databases of information, commercialized for the mutual benefit of both AFFX
and INCYTE;
NOW, THEREFORE, for and in consideration of the mutual covenants contained
herein, INCYTE and AFFX do hereby agree as follows:
Page 2
CONFIDENTIAL
1.0 DEFINITIONS
1.1 "AFFILIATE": shall mean any corporation, firm, partnership, or other legal
entity, which is, as of the Effective Date, directly or indirectly owned or
under common ownership by a Party to the extent of which the common stock
or other equity ownership thereof is one hundred percent (100%) owned by a
Party; provided however, that where local laws require a minimum percentage
of local ownership, the status of the Affiliate will be established if a
Party directly or indirectly owns or controls one hundred percent (100%)
of the maximum ownership percentage that may, under such local laws, be
owned or controlled by foreign interests.
1.2 "AFFX TECHNOLOGY": shall mean all Technology of AFFX relating to AFFX
probe array technology, including but not limited to DNA probe arrays
which is proprietary to AFFX at the time provided to INCYTE and which, on
the Effective Date of this Agreement or at any time during the term of this
Agreement, AFFX owns or has a right to grant license; provided, however,
that AFFX Technology shall exclude LifeChip Inventions and software
developed by INCYTE.
1.3 "ANNOTATION INFORMATION": shall mean information associated with
individual cDNAs in each and/or all of the Incyte Database Product(s) as
applicable, including, but not limited to, Gene Expression Profiles,
homology information, and gene cluster identifiers which are developed
outside of the performance of this Agreement.
1.4 "CONFIDENTIAL INFORMATION": shall mean technical and business information
belonging to the disclosing party including, where appropriate and without
limitation, any information, business, financial and scientific data,
transcript and nucleic acid xxxxxxxx xxxx, xxxx associations, patent
disclosures, patent applications, structures, models, techniques,
processes, compositions, compounds, hardware configurations, apparatus and
the like, and software in various stages of development or any software
product (source code, object code or otherwise), including its audiovisual
components (menus, screens, structure and organization) and any human or
machine readable form of the program, and any writing or medium in which
the program or information therein is stored, written or described,
including, without limitation, diagrams, flow charts, designs, drawings,
specifications, models, data, bug reports and customer information and the
like, disclosed in written form and identified as confidential, or
disclosed in or oral form and confirmed in writing within 30 days of oral
disclosure.
1.5 "DNA SEQUENCE(S)": shall mean the nucleotide sequences provided by INCYTE
to AFFX and shall not include sequences which are not part of Incyte
Database Product(s), except with permission of AFFX.
Page 3
CONFIDENTIAL
[ * ] Confidential Treatment Requested
by Affymetrix, Inc.
1.6 "DNA SEQUENCE SET(S)": shall mean a set of DNA Sequences selected by
INCYTE using INCYTE Database Information which includes gene sequences
and/or associations of genes which are not in the public domain at the time
that the LifeChip is designed and are provided by INCYTE to AFFX for
LifeChip Project(s), including any minimally relevant subset thereof which
is not in the public domain at the time the LifeChip is designed. DNA
Sequence Set(s) constitute proprietary INCYTE Materials. DNA Sequence
Set(s) specifically excludes other sets of DNA sequences which are supplied
to AFFX by third parties without knowledge of DNA Sequence Set(s), and
which independent supply of such information can be documented by AFFX.
1.7 "EFFECTIVE DATE": shall mean the date first written above.
1.8 "GENE EXPRESSION PROFILE(S)": shall mean a listing of cDNAs by name with
each cDNA assessed by a homology score to be:
[ * ]
This profile, resulting from a given RNA transcript image analysis in the
Incyte Database, includes transcript abundance and certain annotation
information regarding such cDNA derived from Incyte and public databases,
but does not include any DNA sequence information.
1.9 "GENECHIP-TM- READER": shall mean a current Molecular Dynamics GeneChip
Scanner fluorescent reader supplied by AFFX to INCYTE pursuant to this
Agreement for use with and only with GeneChips, including associated
software for use with such instruments. Incyte may update such reader to
an HP reader when available commercially under standard terms and
conditions at AFFX' cost.
1.10 "INCYTE DATABASE PRODUCT(S)": shall mean any or all of INCYTE's products
including but not limited to gene expression, mapping, microbial, and
nucleotide sequence databases and related software and documentation which
are developed outside of the LifeChip Projects or LifeChip Products.
1.11 "INCYTE DATABASE INFORMATION": shall mean all or any part of the
Annotation Information, Gene Expression Profiles, DNA Sequence Sets and DNA
Sequence information in each and/or all of the Incyte Database Product(s).
Page 4
CONFIDENTIAL
1.12 "INCYTE MATERIALS": shall mean all materials developed by INCYTE,
including but not limited to: cDNA templates, partial cDNAs and their
corresponding full length cDNAs, and gene products and proteins encoded
therefrom.
1.13 "INCYTE TECHNOLOGY": shall mean all Technology of INCYTE including
Database Information and Incyte Database Products, software developed by
INCYTE for analysis and storage of data generated using LifeChip Products
and not charged as Operating Expenses, DNA sequence information, DNA
Sequence(s), DNA Sequence Set(s), Annotation Information, information
relating to gene products and/or proteins relating thereto and INCYTE
applications thereof, and INCYTE information relating thereto, and INCYTE's
high throughput DNA sequencing or analysis technology, including transcript
imaging technologies, proprietary to INCYTE at the time provided to AFFX
which, on the Effective Date of this Agreement or at any time during the
term of this Agreement, INCYTE owns or has a right to grant license;
provided, however, that INCYTE Technology shall exclude LifeChip
Inventions.
1.14 "INVENTION": shall mean any patentable discovery or invention conceived of
or reduced to practice in the course of a LifeChip Program, including but
not limited to novel processes, methods, formulas and techniques.
1.15 "LIFECHIP(S)": shall mean DNA probe arrays generated pursuant to this
Agreement and utilizing any INCYTE Technology and/or proprietary Incyte
Materials along with probe array technology provided by AFFX.
1.16 "LIFECHIPDB(S)": is defined in Section 2.1 of this Agreement
1.17 "LIFECHIP INVENTION": shall mean all Inventions first conceived or first
reduced to practice by a Party or the Parties during and under a LifeChip
Project, including: 1) those Inventions arising from novel processes,
methods, formulas and techniques which may be used in conjunction with
nucleic acid based array technology, including but not limited to sample
preparation techniques, hybridization solutions, and detection methods and
probe array production techniques ("Technology Inventions"), and 2) all
other Inventions, including but not limited to those inventions comprising
novel genetic sequences, alleles, polymorphisms, and mutations identified
with LifeChips, gene expression data generated using LifeChips, software
analysis techniques, therapeutic compounds identified utilizing data
generated with LifeChips, and novel therapeutic uses of known compounds
identified through use of LifeChips ("Gene Inventions"). For purposes of
clarity, inventions conceived and reduced to practice other than as
described above shall not be LifeChip Inventions.
1.18 "LIFECHIP MANAGEMENT COMMITTEE": is defined in Section 2.3 of this
Agreement.
Page 5
CONFIDENTIAL
[ * ] Confidential Treatment Requested
by Affymetrix, Inc.
1.19 "LIFECHIP PROJECTS": shall mean the design and construction of LifeChips,
generation of LifeChipDbs, and provision of LifeChip Services.
1.20 "LIFECHIP PROJECT TEAM": shall mean employees of a Party assigned by that
Party to perform work under LifeChip Projects. Such work includes the
design and production of LifeChips, generation of data for LifeChipDbs, and
performance of Lifechip Services. The kind and number of personnel on the
LifeChip Project Team will be determined by the LifeChip Project Management
Committee. All members of the LifeChip Project Team shall be aware of and
agree to the terms and conditions of this Agreement regarding
confidentiality.
1.21 "LIFECHIP PRODUCT(S)": shall mean any or all of LifeChip(s) (if agreed at
a future date by the Parties), LifeChipDb(s), and/or LifeChip Services.
1.22 "LIFECHIPDB(S)": is defined in Section 2.1 of this Agreement.
1.23 "LIFECHIP SERVICE(s)": is defined in Section 2.1 of this Agreement.
1.24 "OPERATING EXPENSES": shall mean direct expenses incurred by AFFX and
INCYTE solely in the generation, marketing and distribution of LifeChip
Products as specified below. Direct expenses will be determined based on
actual costs consisting of: actual salaries, benefits, related payroll
taxes, reagents, chemicals, lab supplies and any other LifeChip
Product-related expenses accounted for on a Generally Accepted Accounting
Principles ("GAAP") basis. Expenses will be approved by the Project
Management Committee quarterly in advance.
Operating Expenses for LifeChips shall mean [ * ] charged by AFFX per
LifeChip or less as provided in Section 2.6(b).
Operating Expenses for LifeChip Database(s) and LifeChip Service(s)
shall mean expenses incurred by INCYTE or AFFX solely in the
generation, marketing and distribution of LifeChip Databases and
LifeChip Services. Direct expenses will be determined based on actual
costs consisting of: actual salaries, benefits, related payroll taxes,
reagents, chemicals, lab supplies and any other LifeChip
Product-related expenses accounted for on a Generally Accepted
Accounting Principles ("GAAP") basis.
Operating Expenses for LifeChip Inventions shall mean AFFX and INCYTE
patent costs associated with the filing, maintenance, licensing and
litigation of patents under LifeChip Inventions. All significant
(above $500) patent costs
Page 6
CONFIDENTIAL
[ * ] Confidential Treatment Requested
by Affymetrix, Inc.
for LifeChip Inventions must be approved first by the LifeChip
GeneChip Project Management Committee prior to being incurred.
1.25 "PARTY": shall mean AFFX or INCYTE and, when used in the plural, shall
mean AFFX and INCYTE.
1.26 "TECHNOLOGY": shall mean (i) all trade secrets, whether or not patentable,
copyrightable or trademarkable; (ii) all rights in and to any and all
patents, patent applications, continuations, continuations-in-part,
divisionals, reissue applications, and any equivalent of such applications;
(iiii) all copyrighted or copyrightable material; (iv) all trademarked or
trademarkable material. Technology shall include, without limitation, all
data, documents, substances, processes, materials, formulas, algorithms,
tools, source code, software and hardware configurations, drawings,
specifications, engineering and laboratory notebooks, devices, equipment,
prototypes, models, methods, procedures, and any other tangible
manifestation of said proprietary rights and technical information which
now exist or come into control or proprietary possession of the party.
2.0 LIFECHIP PROGRAM
2.1 PURPOSE: To create LifeChip(s) which 1) will be made available upon
mutual agreement on a commercial basis to third parties, and 2) will be
utilized by INCYTE to provide research services on a commercial basis to
third parties ("LifeChip Services"), and 3) will be used by INCYTE to
create commercial databases of genomic information to be provided on a
commercial basis to third parties ("LifeChipDb(s)").
2.2 LIFECHIP PROJECTS: INCYTE and AFFX will mutually agree upon a minimum of
[ * ] LifeChip Projects to be undertaken during and under this Agreement.
The [ * ] initially planned LifeChip Projects and the initial chip
specification for all projects are set forth in Attachment A of this
Agreement. The workplan for the LifeChip Projects is set forth in
Attachment B of this Agreement. The Parties expect to cooperate in at least
[ * ] LifeChip Projects during the first six months of this Agreement.
2.3 LIFECHIP MANAGEMENT COMMITTEE: The LifeChip Projects will be managed by a
Project Management Committee which shall be responsible for planning and
overseeing the LifeChip Projects. The Management Committee shall be
composed of three representatives from each of AFFX and INCYTE.
Page 7
CONFIDENTIAL
2.4 EXPENSES: Unless otherwise agreed or as provided herein, INCYTE and AFFX
will each be responsible for their own expenses hereunder.
2.5 INCYTE CONTRIBUTIONS:
(a) GENE SEQUENCES: INCYTE will 1) in cooperation with AFFX, identify and
define LifeChip Projects, and 2) provide DNA Sequence Sets from its
Incyte Database Product(s) for such identified LifeChip Projects at
no cost to AFFX on a non-exclusive basis for use in generating
LifeChips for LifeChip Projects. INCYTE and AFFX will, in
cooperation, utilize such sequences provided by INCYTE to design probe
arrays for LifeChip Projects.
(b) During the term of this Agreement, INCYTE will, after AFFX designs
probes for a particular LifeChip design, allow the use of all genes
represented on such chips in LifeChip Products .
(c) STAFFING AND OTHER RESOURCES: INCYTE will designate scientists to
work on the LifeChip Projects under the Workplan, and shall designate
a Project Director to conduct the activities allocated to INCYTE under
the Workplan. INCYTE will use reasonably diligent efforts to identify
and procure tissue and cell samples to generate data for LifeChip
Projects.
(d) MARKETING: INCYTE will 1) market the LifeChipDbs and LifeChip
Services to third parties in cooperation with AFFX, and 2) if mutually
agreeable to both Parties, cooperate with AFFX for AFFX to market the
LifeChips to third parties, each according to a marketing plan to be
agreed by the LifeChip Management Committee. Subject to approval of
INCYTE, consistent with Section 3.5 of this Agreement, AFFX and INCYTE
agree to develop a plan to provide LifeChip Products to third parties
other than Incyte Database subscribers.
2.6 AFFX CONTRIBUTION:
(a) TECHNOLOGY ACCESS: During the term of this Agreement, AFFX will
provide access to AFFX Technology relevant to the LifeChip Projects
to INCYTE for LifeChip Projects at no cost to INCYTE.
(b) LIFECHIPS: During the term of this Agreement, AFFX will provide
LifeChips to INCYTE for LifeChip Projects in numbers and within a
timeframe consistent with that which AFFX provides GeneChips to other
customers. Such LifeChips will be for single use only and will be
charged against
Page 8
CONFIDENTIAL
[ * ] Confidential Treatment Requested
by Affymetrix, Inc.
[ * ] AFFX warrants that no material profit will be derived
from the LifeChips provided to INCYTE under this Agreement. If there
is a significant reduction in AFFX cost which would result in such a
profit, then AFFX will reduce the price of the LifeChips provided to
INCYTE under this Agreement accordingly.
(c) During the term of this Agreement, AFFX will, after designing probes
for a particular LifeChip design, 1) continue to manufacture such
LifeChips for LifeChip Projects, and 2) allow INCYTE to include all
data from such LifeChip(s) in LifeChip Products.
(d) GENECHIP READERS: AFFX will provide INCYTE with at least one (1)
GeneChip Reader within thirty (30) days of the Effective Date for
analysis of LifeChips at INCYTE's facilities for use in conjunction
with LifeChip Projects. AFFX will provide INCYTE with at least one (1)
additional GeneChip Reader upon delivery of the first probe arrays
delivered to INCYTE pursuant to this Agreement. Such GeneChip Readers
shall be provided by AFFX under AFFX's normal terms and conditions,
charged as Operating Expenses under this Agreement at no greater than
the amount charged to other third parties for a similar instrument.
AFFX will provide product support for GeneChip Readers at INCYTE
consistent with the level of support provided to any other third party
customer. Upgrades will be provided at AFFX cost during the term of
this Agreement. GeneChip Readers shall be available to LifeChip
customers under terms and conditions which are at least as favorable
as those terms and conditions provided by AFFX for GeneChip Readers to
third parties under conditions which, taken as a whole, are similar to
those herein.
3.0 COMMERCIALIZATION OF LIFECHIP PRODUCTS
3.1 PROFITS:: "Operating Profits" shall be calculated quarterly in arrears by
subtracting Operating Expenses for the period, as defined herein, from
revenues from LifeChip Products for the same period. For revenue from
LifeChip Products, excluding GeneChip-TM-Readers, INCYTE and AFFX will share
Operating Profits equally after reimbursing both parties pro rata for
expenses incurred from the Effective Date until the date such Operating
Profits are recorded.
3.2. RECORDS AND ACCOUNTING: The Parties agree to keep relevant accounting
records of net revenues and operating expenses for a period of at least
three years after
Page 9
CONFIDENTIAL
[ * ] Confidential Treatment Requested
by Affymetrix, Inc.
revenues are recognized or expenses incurred, sufficient in detail to
enable the verification of revenues and Operating Expenses calculated
hereunder. Both Parties will provide accounting for revenues and Operating
Expenses from LifeChip Projects no later than seven days after the end of
each calendar year quarter to enable both Parties to account for this
collaboration in their quarterly financial statements. Once a year a
nationally recognized, independent certified public accountant mutually
acceptable to AFFX and INCYTE, will audit these records solely to the
extent necessary to verify such calculations, and satisfy both Parties'
need to undergo an annual audit of their respective financial statements as
required by the Securities and Exchange commission, provided that such
accountant has entered into a confidentiality agreement limiting the use
and disclosure of such information to purposes germane to this Section 3.0.
Audit results of any such examinations shall be made available to both AFFX
and INCYTE. The expense of such examination will be shared equally, unless
such examination reveals a discrepancy of [ * ] or greater in either Party's
favor, then the expenses shall be paid by the Party that has overcharged
collaborative expenses.
3.3 DETAILED ACCOUNTING PROCEDURE: Detailed accounting procedures will be
mutually agreed upon by the Parties within six months of the Effective Date
and no later than the receipt of the first revenues.
3.4 PRICING STRUCTURES FOR LIFECHIP PRODUCTS: Pricing structures for LifeChip
Products sold by either Party to third parties will be determined by the
LifeChip Project Management Committee prior to manufacture of any
LifeChips. Prices of the LifeChip Products to third parties shall be
consistent with prices of other AFFX product offerings. Pricing structures
for LifeChip Products sold by either Party to third parties may be changed
during this Agreement by mutual consent of the Parties. Pricing of the
LifeChipDbs shall be based on an independently attributable value of the
Database. Attachment C provides an overall pricing structure for the
LifeChip Products.
3.5 DISTRIBUTION: INCYTE and AFFX will agree to designate third parties which
may receive LifeChip Products. INCYTE shall perform all LifeChip Services
at INCYTE or INCYTE Affiliates' facilities, and INCYTE shall generate and
provide access to all LifeChipDbs. To ensure adequate customer service for
hardware, AFFX will retain the right to sell LifeChips (and associated
instruments) to designated third parties, if any, through a marketing
system to be agreed upon by the LifeChip Management Committee, which will
ensure that Incyte approves in advance all LifeChip orders, and AFFX can
effectively provide and service LifeChips to customers. All LifeChip
Products will bear the trademarks of both parties. The LifeChip trademark
will be co-owned, and will be used only for LifeChip Products
Page 10
CONFIDENTIAL
unless agreed in writing by the Parties. The sale of LifeChips to third
parties shall be pursuant to AFFX standard genomics terms and conditions of
sale. All use of trademarks of the others will allow for reasonable
quality control and trademark use approval of the other to ensure for
trademark protection of the Parties.
3.6 LIFECHIP ACCESS: Initially, AFFX and INCYTE agree to offer LifeChip
Products solely to Incyte Database subscribers. At such time as any
LifeChip Product is offered to a non-Incyte Database subscriber, INCYTE
shall have the sole right to determine 1) reasonable access of such
non-Incyte Database subscriber to INCYTE Materials, and 2) reasonable
payment terms and conditions for commercial access to any INCYTE Materials
to non-Incyte Database subscribers.
3.7 INCYTE acknowledges that AFFX may provide AFFX Technology to any third
party for any purpose, except that which would prevent AFFX from fulfilling
its obligations under this Agreement), and that such third party customers
and collaborators may use AFFX Technology for any purpose. Nothing in this
Agreement prevents AFFX from independently providing AFFX Technology to
third parties including Incyte Database subscribers. However, it is
explicitly understood that 1) provision of any and all LifeChip Products by
AFFX shall occur solely during and under this Agreement, and 2) that AFFX
may not provide any INCYTE Technology or any INCYTE Materials to any third
party except as LifeChips to LifeChip customers under this Agreement,
except AFFX may provide probe arrays using DNA sequences and/or DNA
sequence sets (which may also be included in INCYTE Materials and/or INCYTE
Technology) when AFFX can demonstrate that the INCYTE Materials and/or
INCYTE Technology:
(a) was in its possession prior to receipt; or
(b) was in the public domain at the time of receipt; or
(c) becomes part of the public domain through no fault of the AFFX; or
(d) is lawfully received by AFFX from a third party having a right to
disclose it to AFFX; or
(e) is independently discovered or developed without use of of INCYTE
Materials or INCYTE Technology, as can be documented by written
records created at the time of such independent discovery or
development.
3.8 AFFX acknowledges that Incyte may provide INCYTE Materials and/or INCYTE
Technology, including DNA Sequence Sets, to any third party for any
purpose, except that which would prevent INCYTE from fulfilling its
obligations under this Agreement, and that such third party customers and
collaborators may use Incyte Materials for any purpose. Nothing in this
Agreement prevents INCYTE from independently providing INCYTE Technology to
third parties including LifeChip
Page 11
CONFIDENTIAL
[ * ] Confidential Treatment Requested
by Affymetrix, Inc.
customers. However, it is explicitly understood that INCYTE may not provide
any AFFX Technology to any third party except as LifeChip Products except
INCYTE may provide any technology to third parties when INCYTE can
demonstrate that such technology:
(a) was in its possession prior to receipt; or
(b) was in the public domain at the time of receipt; or
(c) becomes part of the public domain through no fault of the AFFX; or
(d) is lawfully received by INCYTE from a third party having a right to
disclose it to INCYTE; or
(e) is independently discovered or developed without use of of AFFX
Materials or INCYTE Technology, as can be documented by written
records created at the time of such independent discovery or
development.
4.0 INTELLECTUAL PROPERTY
4.1 Each Party shall promptly report to the other Party all LifeChip
Inventions.
4.2 The Parties undertake that they shall do all things which are reasonably
necessary or desirable to establish, maintain and assert any rights or
interest of the Parties, including the execution of all documents necessary
or desirable so that title or other rights can be established and
maintained and so that any patent filings permitted hereunder can be made,
prosecuted and maintained.
4.3 TECHNOLOGY INVENTIONS: All Technology Inventions shall be co-owned by the
Parties. AFFX shall have primary responsibility for filing, prosecution and
maintenance of Technology Inventions. AFFX shall bear all costs incurred in
acquiring patent rights for Technology Inventions AFFX shall have the
primary responsibility for licensing Technology Inventions to third
parties. All patent decisions and all licensing terms and conditions will
be mutually agreed by the Parties. All patents arising from Technology
Inventions will be licensed in separately from other AFFX patents, i.e. not
a package license, [ * ]
4.4 GENE INVENTIONS: All Gene Inventions shall be co-owned by the Parties.
INCYTE shall have primary responsibility for filing, prosecution and
maintenance of Gene Inventions. INCYTE shall bear all costs incurred in
acquiring patent rights for Gene Inventions. INCYTE shall have the primary
responsibility for licensing Gene Inventions to third parties. All patent
decisions and all licensing terms and conditions will be mutually agreed by
the Parties. All patents arising from Gene Inventions xxxx
Xxxx 12
CONFIDENTIAL
[ * ] Confidential Treatment Requested
by Affymetrix, Inc.
be licensed in separately from other INCYTE patents, i.e. not a package
license, [ * ]
4.5 Except as otherwise provided under the terms of this Agreement, AFFX and
INCYTE will each retain all proprietary rights to their respective AFFX
Technology and INCYTE Technology. Nothing in this Agreement grants either
Party any rights to patents, patent applications, copyrights, trade
secrets, or other proprietary rights of the other Party, except as
expressly provided herein, even if background patents are required to
practice any patents arising from Inventions developed hereunder. INCYTE
acknowledges that AFFX may hold patents and pending patent applications
which cover compositions, methods and uses of the AFFX Technology. Except
as provided herein, AFFX retains all rights to AFFX Technology. AFFX
acknowledges that INCYTE may hold patents and pending patent applications
which cover compositions, methods and uses of the INCYTE Technology.
Except as provided herein, INCYTE retains all rights to INCYTE Technology.
4.6 INCYTE reserves the right under the Incyte Technology to access for its own
benefit, and to grant access to third parties to the Incyte Database
Product(s), including without limitation the Annotation Information and the
DNA Sequence Information including, but not limited to any DNA sequence
which may be in a DNA Sequence Set, provided that this right shall not
include the right to use AFFX Technology except as provided herein.
4.7 AFFX reserves the right under AFFX Technology to access for its own
benefit, and to grant access and licenses to third parties to the
GeneChip-TM-Technology, provided that this right shall not include the right
to use proprietary INCYTE Materials and/or INCYTE Technology except as
provided herein.
5.0 CONFIDENTIALITY
5.1 The Parties acknowledge that during the course of this Agreement they will
each receive from the other Confidential Information, including the
specific terms of this Agreement, which is proprietary to the disclosing
Party. Except as otherwise contemplated by this Agreement, or unless by
mutual written agreement, the Parties agree, for the term of this Agreement
and for ten (10) years thereafter, to hold in confidence and not disclose,
use (except pursuant and in pursuit of this Agreement), or deliver to any
person, firm, corporation or entity, Confidential Information which a Party
receives from the other Party, except for that which such Party can
demonstrate:
Page 13
CONFIDENTIAL
(a) was in its possession prior to receipt; or
(b) was in the public domain at the time of receipt; or
(c) becomes part of the public domain through no fault of the recipient;
or
(d) is lawfully received by the recipient from a third party having a
right to disclose it to the recipient; or
(e) is independently discovered or developed without use of Materials or
Technology received from the other Party, as can be documented by
written records created at the time of such independent discovery or
development or;
(f) is required to be disclosed in a judicial or administrative proceeding
or to an administrative agency after all reasonable legal remedies or
steps for maintaining such information in confidence have been
utilized, in which case, the disclosing Party will notify the other
Party of disclosure.
5.2 All Incyte Database Information is confirmed to be INCYTE Confidential
Information and shall not be subject to the 10 year limitation above.
5.3 INCYTE will not reverse engineer any of the LifeChips or GeneChip Readers
or associated hardware or software. AFFX will provide INCYTE with machine
executable code software for the generation of gene expression data in a
defined file format. INCYTE may use this information and software for
LifeChip Projects only. Any resulting software developed by INCYTE shall be
owned by INCYTE and be provided to AFFX and AFFX customers under a separate
licensing agreement on a non-exclusive basis. Such software will be
available to AFFX, if it is commercially available any third party, under
terms and conditions which are consistent with other INCYTE product
offerings. AFFX may make additional software or data structures available
to INCYTE that is useful in data processing upstream to the generation of
gene expression data. All software created by INCYTE based on or using such
AFFX software or data structures for the purposes of such upstream data
processing will be owned by INCYTE and will be made available on a
non-exclusive basis to AFFX and its customers royalty free.
5.4 PUBLICATION: Publications are expected to be generated as part of this
project and form an important component of the project for both Parties.
Publication of any data arising from LifeChip Projects shall require the
consent of both Parties. Confidential Information or Materials of the other
Party shall not be included in any publication without first obtaining
written approval from the Party to include such Confidential Information or
Materials. The Parties agree to acknowledge contributions, as
scientifically appropriate, of each Party.
6.0 REPRESENTATIONS AND WARRANTIES; COVENANTS
Page 14
CONFIDENTIAL
6.1 REPRESENTATIONS AND WARRANTIES: Each Party represents and warrants to the
other Party that:
(a) it has the corporate power and authority and the legal right to enter
into this Agreement and to perform its obligations hereunder;
(b) the execution and delivery of this Agreement and the performance of
the transactions contemplated hereby have been duly authorized by all
necessary corporate action of such Party;
(c) the execution and delivery of this Agreement and the performance by
such Party of any of its obligations under this Agreement do not and
will not (i) conflict with, or constitute a breach or violation of,
any other contractual obligation to which it is a party, any judgment
of any court or governmental body applicable to such Party or its
properties or, to such Party's knowledge, any statute, decree, order,
rule or regulation of any court or governmental agency or body
applicable to such Party or its properties, and (ii) with respect to
the execution and delivery of this Agreement, require any consent or
approval of any governmental authority or other person;
(d) each Party shall to the best of its knowledge without undertaking a
special investigation, disclose to the other Party any material
adverse proceedings, claims or action that arise, relating to their
Technology which would materially interfere with that Party's
performance of its obligations under this Agreement;
(e) each Party's employees have executed or will execute agreements
whereby all right, title and interest in any technology and
invention(s) will be assigned to their respective employers.
6.2 COMPLIANCE WITH LAW: AFFX and INCYTE each represent and warrant that it
shall comply with all applicable laws, regulations and guidelines in
connection with that Party's performance of its obligations and rights
pursuant to this Agreement. Without limiting the generality of the
foregoing, each Party shall be responsible for compliance with all
applicable product safety, product testing, product labeling, package
marking, and product advertising laws and regulations with respect to its
own activities and products. Further, AFFX and INCYTE shall each comply
with the regulations of the United States and any other relevant nation
concerning any export or other transfer of technology, services, or
products. INCYTE and AFFX shall comply with all safety and environmental
rules of the other Party when at the facilities of the other Party.
Page 15
CONFIDENTIAL
[ * ] Confidential Treatment Requested
by Affymetrix, Inc.
6.3 DISCLAIMERS:
(a) EXCEPT AS EXPLICITLY STATED HEREIN, THE PARTIES MAKE NO
REPRESENTATIONS OR WARRANTIES OF ANY KIND WITH RESPECT TO THEIR
RESPECTIVE AFFX TECHNOLOGY, INCYTE TECHNOLOGY, OR LIFECHIP INVENTIONS,
EITHER EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION, WARRANTIES OR
VALIDITY, ENFORCEABILITY, SCOPE, AND MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE. EXCEPT AS EXPLICITLY STATED HEREIN, ALL
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WARRANTIES OF
MERCHANTABILITY, NOVELTY OR FITNESS OF GENE PRODUCTS, LIFESEQ
DATABASE INFORMATION OR GENECHIPS FOR ANY PARTICULAR PURPOSE, ARE
EXCLUDED. LIFECHIPS ARE PROVIDED BY AFFX AS-IS. INCYTE MAKES NO
WARRANTY THAT THE DATABASE INFORMATION DOES NOT CONTAIN ERRORS.
(b) EXCEPT AS EXPLICITLY STATED HEREIN NEITHER PARTY WILL BE LIABLE FOR
CONSEQUENTIAL OR INCIDENTAL DAMAGES OF ANY NATURE ARISING FROM SUCH
PARTY'S ACTIVITIES UNDER THIS AGREEMENT; PROVIDED, HOWEVER, THAT THIS
LIMITATION SHALL NOT LIMIT THE INDEMNIFICATION OBLIGATION OF SUCH
PARTY UNDER SECTION 8.2 BELOW FOR CONSEQUENTIAL OR INCIDENTAL DAMAGES
RECOVERED BY A THIRD PARTY.
7.0 TERM AND TERMINATION
7.1 Either Party may terminate this Agreement after one year upon 30 days
written notice to the other Party.
7.2 Upon termination of this Agreement, INCYTE may purchase its GeneChip
Readers from AFFX for no greater than [ * ] unless termination is for
breach by INCYTE.
7.3 After termination of this Agreement, AFFX will return all LifeChips to
INCYTE for sole use in generating and selling LifeChip Products. [ * ] In
the event of termination for breach of INCYTE, AFFX may destroy all
LifeChips.
Page 16
CONFIDENTIAL
[ * ] Confidential Treatment Requested
by Affymetrix, Inc.
7.4 During this Agreement and for a period of 5 years thereafter, AFFX
Technology will be made available to INCYTE under reasonable commercial
terms to be negotiated unless a) AFFX Technology is no longer available on
a non-exclusive basis to third parties, or b) INCYTE has infringed on the
intellectual property rights of AFFX, and such infringement can be
documented by AFFX. During this Agreement and for a period of 5 years
thereafter the LifeSeq Database will be made available to AFFX under
reasonable commercial terms to be negotiated unless a) the LifeSeq
Database is no longer available on a non-exclusive basis to third parties,
or b) AFFX has infringed on the intellectual property rights of INCYTE, and
such infringement can be documented by INCYTE.
7.5 Relevant provisions of this Agreement regarding confidentiality,
intellectual property, representations and warranties (Sections 4, 5,
and 6) shall survive termination of this Agreement.
8.0 INDEMNITY
8.1 INDEMNITY: [ * ]
AFFX acknowledges and agrees that with respect to the nature of INCYTE's
Technology, there can be no adequate remedy at law for any breach of
INCYTE's obligations with regard to the confidentiality and distribution
of INCYTE Materials and INCYTE Technology, and that any such breach may
result in irreparable harm to INCYTE, and therefore, that upon any such
breach INCYTE shall be entitled to appropriate equitable relief in addition
to whatever remedies it might have at law, including injunctive relief,
specific performance or such other relief as Incyte may request to enjoin
or otherwise restrain any act prohibited hereby, [ * ]
INCYTE acknowledges and agrees that with respect to the nature of AFFX'
Page 17
CONFIDENTIAL
[ * ] Confidential Treatment Requested
by Affymetrix, Inc.
Technology, there can be no adequate remedy at law for any breach of AFFX
obligations with regard to the confidentiality and distribution of AFFX
Technology, and that any such breach may result in irreparable harm to
AFFX, and therefore, that upon any such breach AFFX shall be entitled to
appropriate equitable relief in addition to whatever remedies it might have
at law, including injunctive relief, specific performance or such other
relief as Incyte may request to enjoin or otherwise restrain any act
prohibited hereby, [ * ]
8.2 PROCEDURE: A Party (the "Indemnitee") that intends to claim
indemnification under this Section 8 shall promptly notify the other Party
(the "Indemnitor") of any loss, liability, damage, expense, claim, demand,
action or other proceeding in respect of which the Indemnitee or any of its
affiliates intend to claim such indemnification, and the Indemnitor shall
have the right to participate in, and, to the extent the Indemnitor so
desires, jointly with any other Indemnitor similarly noticed, to assume the
defense thereof with counsel selected by the Indemnitor and reasonably
satisfactory to the Indemnitee; provided, however, that an Indemnitee shall
have the right to retain its own counsel, with the fees and expenses to be
paid by the Indemnitee, 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
this Section 8 shall not apply to amounts paid in settlement of any loss,
liability, damage, expense, claim, demand, action or other proceeding if
such settlement is effected without the consent of the Indemnitor, which
consent shall not be withheld unreasonably. 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 such Indemnitor of any liability to the Indemnitee under this
Section 8, but the omission so to deliver notice to the Indemnitor will not
relieve it of any liability that it may have to any Indemnitee otherwise
than under this Section 8. The Indemnitor may not settle the action or
otherwise consent to an adverse judgment in action or other proceeding that
materially diminishes the rights or interests of the Indemnitee without the
express written consent of the Indemnitee. The Indemnitee under this
Section 8 and its employees and agents, shall cooperate fully with the
Indemnitor and its legal representatives in the investigation of any
action, claim or liability covered by this indemnification.
Page 18
CONFIDENTIAL
9.0 MISCELLANEOUS PROVISIONS
9.1 PRE-ARBITRATION: No arbitration with reference to this Agreement shall
arise until the following procedures have been satisfied. In the event of
any dispute with respect to the interpretation of any provision of this
Agreement or with respect to the performance of either party under this
Agreement, written notice shall be provided, specifying the terms of
disagreement in reasonable detail, and referring to this Paragraph of this
Agreement. Upon receipt of such notice, the chief executive officers of
INCYTE and AFFX shall enter into good faith negotiations for the purpose of
resolving such disagreement. If mutual agreement is not reached within
sixty (60) days after receipt of such written notice, then the parties
agree to submit to arbitration.
9.2 ARBITRATION: Any controversy arising under or related to this Agreement,
or any disputed claim by either Party against the other under this
Agreement, excluding any dispute relating to patent validity or
infringement arising under this Agreement, shall be settled by arbitration
in accordance with the Commercial Arbitration Rules of the American
Arbitration Association. Upon request of either Party, arbitration will be
by a) a third party arbitrator mutually agreed upon in writing by AFFX and
INCYTE within thirty (30) days of such arbitration request; or b) an
appointed member of the American Arbitration Association. The Parties shall
be entitled to discovery in like manner as if the arbitration were a civil
suit in the California Federal court. Judgment upon the award rendered by
the arbitrator may be entered in any court having jurisdiction thereof.
If the claim is filed by a Party, the venue for arbitration shall be Palo
Alto, CA. Each Party shall pay its own expenses in connection with the
arbitration proceeding, while the expenses and fees of the arbitrator shall
be shared equally by AFFX and INCYTE.
9.3 COMPLIANCE: INCYTE and AFFX agree that their respective activities under
this Agreement will be carried out in compliance with all applicable laws,
regulations and guidelines.
9.4 RELATIONSHIP BETWEEN THE PARTIES: INCYTE and AFFX recognize and agree that
each is operating as an independent contractor and not as an agent of the
other. Nothing in this Agreement is intended or shall be deemed to
constitute a partnership, agency, distributorship, 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.
9.5 PUBLIC ANNOUNCEMENTS: Except as may otherwise be required by law or
regulation, or in connection with a registration of securities, neither
party shall make any public
Page 19
CONFIDENTIAL
announcement concerning this Agreement or the subject matter hereof without
first submitting a copy of the proposed announcement to the other Party for
review. The other party shall have seven (7) business days to review such
announcement and provide its comments and suggestions and to provide its
consent to the publication of such announcement, such consent not to be
unreasonably withheld or delayed.
PUBLICITY:
(a) INCYTE shall not use the names likenesses, or logos of AFFX or any
AFFX products in any press releases, general publications,
advertising, marketing, promotional or sales literature without prior
written consent from an officer of AFFX.
(b) AFFX shall not use the names likenesses, or logos of INCYTE or any
INCYTE products, including the Incyte Database, in any press releases,
general publications, advertising, marketing, promotional or sales
literature without prior written consent from an officer of INCYTE.
9.6 SEVERABILITY: In the event any one or more of the provisions of this
Agreement should for any reason be held by any court or authority having
jurisdiction over this Agreement or either of the Parties to be invalid,
illegal or unenforceable, such provision or provisions shall be validly
reformed to as nearly as possible approximate the intent of the Parties
and, if unenforceable, shall be divisible and deleted in such jurisdiction;
elsewhere, this Agreement shall not be affected so long as the Parties are
still able to realize the principal benefits bargained for in this
Agreement.
9.7 ENTIRE AGREEMENT: This Agreement constitutes and contains the entire
understanding and agreement of the Parties and cancels and supersedes any
and all prior negotiations, correspondence, understandings and agreements,
whether verbal or written, between the Parties respecting the subject
matter hereof. No waiver, modification or amendment of any provision of
this Agreement shall be valid or effective unless made in writing and
signed by a duly authorized officer of each of the Parties.
9.8 NOTICES: All notices and other communications to be given hereunder shall
be given in writing by registered or certified mail, postage prepaid,
return receipt requested, or by overnight courier, mail-gram, telex or
facsimile to the respective parties at the following addresses, unless such
addresses are changed and the other Party is notified of the change in
writing:
Affymetrix, Inc.
Page 20
CONFIDENTIAL
0000 Xxxxxxx Xxxxxxxxxx
Xxxxx Xxxxx, XX 00000
FAX: 000-000-0000
Attention: Xxxxxxx P.A. Xxxxx, Ph.D., President and COO
Incyte Pharmaceuticals, Inc.
0000 Xxxxxx Xxxxx
Xxxx Xxxx, XX 00000
FAX: 000-000-0000
Attention: Xxx X. Xxxxxxxxx, President and CEO
9.9 APPLICABLE LAW: This Agreement shall be construed, interpreted, and
applied with the laws of the State of California.
9.10 NO ASSIGNMENT: Neither Party shall have the right to assign or transfer,
directly or indirectly, in whole or in part, this Agreement or its rights
or obligations hereunder, whether voluntarily, by operation of law, change
in control or otherwise, without the prior express written consent of the
other Party which may be withheld for any reason whatsoever. For purposes
of this Section 9.10, a "change in control" of a party shall mean the
change in the beneficial ownership of fifty (50%) or more of the
outstanding voting securities of such Party, whether in one or a series of
transactions.
Any assignment not in accordance with the above shall be void.
9.11 ATTORNEY'S FEES: In any litigation or arbitration relating to or arising
out of this Agreement, the prevailing Party shall be entitled to its
reasonable attorneys' fees, including expert witness costs, and all costs
of proceedings incurred in such litigation, in addition to any other relief
it may be awarded.
9.12 ENVIRONMENTAL AND SAFETY: Each Party agrees to abide by and become
familiar with the safety and environmental rules of the other when
performing its obligations pursuant to this Agreement at the facilities of
the other Party.
9.12 FORCE MAJEURE: Force Majeure shall mean an Act of God, flood, fire,
explosion, earthquake, strike, lockout, casualty or accident, war, civil
commotion, act of public enemies, blockage or embargo, or any injunction,
law, order, proclamation, regulation, ordinance, demand or requirement of
any government or any subdivision,
Page 21
CONFIDENTIAL
authority representative thereof, or the inability to procure or use
materials, labor, equipment, transportation or energy sufficient to meet
manufacturing needs without the necessity of allocation, or any other cause
whatsoever, whether similar or dissimilar to those enumerated above, which
are beyond the reasonable control of such Party, which the Party affected
has used its reasonable best efforts to avoid, and which prevent, restrict
or interfere with the performance by a Party of its obligations hereunder.
The Party affected by Force Majeure shall give notice to the other Party
promptly in writing and whereupon shall be excused from those obligations
hereunder, to the extent of such prevention, restriction or interference,
provided that the affected party shall use its commercially reasonable
efforts to avoid or remove such cause(s) of non-performance and shall
continue performance whenever such cause(s) is removed.
IN WITNESS WHEREOF, the Parties hereto have executed this Agreement in duplicate
originals by their duly authorized officers or representatives.
AFFYMETRIX, INC. INCYTE PHARMACEUTICALS, INC.
By: /s/ Xxxxxxx P.A. Xxxxx By: /s/ Xxxxxx X. Xxxxx
------------------------- ------------------------------
Xxxxxxx P. A. Xxxxx, Ph.D. Xxxxxx X. Xxxxx, Ph.D.
Title: PRESIDENT & COO Title:EXECUTIVE VICE PRESIDENT & CSO
------------ - ------- --------- ---- --------- - ---
Date: November 14, 1996 Date: November 11, 1996
------------------------ -----------------------------
Page 22
CONFIDENTIAL
[ * ] Confidential Treatment Requested
by Affymetrix, Inc.
ATTACHMENT A
------------
INITIAL LIFECHIP PROJECTS
-------------------------
[ * ]
Page 23
CONFIDENTIAL
[ * ] Confidential Treatment Requested
by Affymetrix, Inc.
ATTACHMENT B
------------
WORKPLAN
--------
[ * ]
Page 24
CONFIDENTIAL
[ * ] Confidential Treatment Requested
by Affymetrix, Inc.
ATTACHMENT C
------------
PRICING STRATEGY
----------------
[ * ]
Page 25
CONFIDENTIAL
