Exhibit 10.19
RESEARCH COLLABORATION AGREEMENT
GEMINI RESEARCH LIMITED
AND
CURAGEN CORPORATION
MARCH 23, 2000
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Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
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TABLE OF CONTENTS
PAGE
ARTICLE 1 DEFINITIONS .......................................................2
1.1 "Affiliate" .......................................................2
1.2 "Association Discovery" ...........................................2
1.3 "Control", "Controls" or "Controlled" .............................2
1.4 "CuraGen Know-How" ................................................3
1.5 "CuraGen Patents" .................................................3
1.6 "CuraGen SNP" .....................................................3
1.7 "CuraGen Technology" ..............................................3
1.8 "Disease Associated Gene" .........................................3
1.9 "DNA Samples" .....................................................3
1.10 "Druggable Gene" ..................................................4
1.11 "Gemini Know-How" .................................................4
1.12 "Gemini Loci Gene" ................................................4
1.13 "Gemini Loci SNP" .................................................4
1.14 "Gemini Material" .................................................4
1.15 "Gemini Patents" ..................................................4
1.16 "Gemini Technology" ...............................................5
1.17 "Gemini Trait" ....................................................5
1.18 "Joint Know-How" ..................................................5
1.19 "Joint Patents" ...................................................5
1.20 "Joint Technology" ................................................5
1.21 "Party" ...........................................................5
1.22 "Patents" .........................................................5
i.
TABLE OF CONTENTS
(CONTINUED)
PAGE
1.23 "Research Committee" ..............................................6
1.24 "Research Program" ................................................6
1.25 "Third Party" or "Third Parties" ..................................6
1.26 "Validated Gene ...................................................6
ARTICLE 2 RESEARCH PROGRAM ..................................................7
2.1 Formation of Research Committee: Decision Making ..................7
2.2 Conduct of Research Program .......................................8
2.3 Designation of Gemini Traits ......................................8
2.4 Research Responsibilities ........................................10
2.5 Determination of Associations ....................................11
2.6 Transfer of Information and Material .............................12
2.7 Use and Handling of Materials ....................................12
ARTICLE 3 EXCLUSIVITY; COVENANTS ...........................................13
3.1 Other Party Technology ...........................................13
3.2 Unaffected Rights of CuraGen and Gemini ..........................14
3.3 Joint Technology Exclusivity .....................................14
3.4 Gemini Trait and CuraGen SNP Exclusivity .........................14
3.5 General Exclusivity ..............................................15
ARTICLE 4 LICENSES .........................................................15
4.1 Research License to CuraGen ......................................15
4.2 Research License to Gemini .......................................15
4.3 No Other Licenses ................................................15
ii.
TABLE OF CONTENTS
(CONTINUED)
PAGE
ARTICLE 5 INVENTORSHIP AND OWNERSHIP OF INTELLECTUAL
PROPERTY .........................................................16
5.1 Inventorship .....................................................16
5.2 Gemini Ownership .................................................16
5.3 CuraGen Ownership ................................................16
5.4 Ownership of Joint Technology ....................................17
5.5 Prosecution of Patents within Joint Technology ...................17
5.6 Assistance in Prosecution and Maintenance: Execution
of Documents .....................................................19
5.7 Infringement of Joint Patents by Third Parties ...................20
5.8 Infringement of Third Party Rights ...............................21
ARTICLE 6 COMMERCIALIZATION OF JOINT TECHNOLOGY ............................22
6.1 Licensing by Parties .............................................22
6.2 Self Commercialization ...........................................23
6.3 Third Party License Obligations ..................................24
6.4 Commercialization Committee ......................................25
6.5 Revenue Sharing ..................................................26
6.6 ****************** ...............................................26
ARTICLE 7 CONFIDENTIALITY ..................................................27
7.1 Confidential Information .........................................27
7.2 Confidentiality ..................................................28
7.3 Authorized Disclosure ............................................29
7.4 Limitations on Disclosure ........................................29
7.5 Public Announcement ..............................................29
iii.
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Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
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TABLE OF CONTENTS
(CONTINUED)
PAGE
7.6 Employees; Agents ................................................30
7.7 Equitable Remedies ...............................................30
ARTICLE 8 REPRESENTATIONS, WARRANTIES AND COVENANTS ........................30
8.1 Mutual Representations and Warranties ............................30
8.2 Disclaimer of Warranties .........................................31
ARTICLE 9 INDEMNIFICATION ..................................................31
9.1 Indemnification ..................................................32
ARTICLE 10 TERM AND TERMINATION .............................................32
10.1 Term .............................................................32
10.2 Early Termination ................................................32
10.3 Extension ........................................................32
10.4 Termination for Material Breach ..................................32
10.5 Survival .........................................................32
10.6 Return of Confidential Information ...............................32
10.7 Accrued Rights and Obligations ...................................33
ARTICLE 11 DISPUTE RESOLUTION ...............................................33
11.1 General ..........................................................33
11.2 Negotiations .....................................................33
11.3 Legal Proceedings ................................................34
11.4 Arbitration of Certain Matters ...................................34
ARTICLE 12 GENERAL PROVISIONS ...............................................36
12.1 Notices ..........................................................37
12.2 Further Actions ..................................................37
iv.
TABLE OF CONTENTS
(CONTINUED)
PAGE
12.3 No Trademark Rights ..............................................38
12.4 Force Majeure ....................................................38
12.5 Legal Compliance .................................................38
12.6 Entirety of Agreement ............................................38
12.7 Non-Waiver .......................................................38
12.8 Disclaimer of Agency .............................................38
12.9 Severability .....................................................39
12.10 Affiliates; Assignment ...........................................39
12.11 Headings .........................................................39
12.12 Limitation of Liability ..........................................40
12.13 Governing Law ....................................................40
12.14 Counterparts .....................................................40
v.
RESEARCH COLLABORATION AGREEMENT
This RESEARCH COLLABORATION AGREEMENT (the "Agreement") is made as of
March 23, 2000 (the "Effective Date"), by and between GEMINI RESEARCH
LIMITED, a corporation organized under the laws of England and Wales
("Gemini"), having a principal place of business at 000 Xxxxxxx Xxxx, Xxxxxx
Xxxx, Xxxxxxxxx, XX0 0XX, Xxxxxx Xxxxxxx, and CURAGEN CORPORATION, a Delaware
corporation, ("CuraGen"), having a principal place of business at 000 Xxxx
Xxxxx Xxxxx, Xxx Xxxxx, XX 00000. CuraGen and Gemini may be referred to
herein individually as a "Party" and collectively as the "Parties".
RECITALS
A. Gemini and CuraGen desire to collaborate on a research program to
discover associations between single nucleotide polymorphisms in the human
genome and human disease or surrogate clinical parameters to be selected by
the Parties.
B. In connection with such collaborative research program, it is
contemplated that Gemini shall provide clinical samples in the form of
purified DNA and associated clinical information pertaining to the selected
phenotypic traits, and CuraGen shall provide the single nucleotide
polymorphisms.
C. Genotyping of clinical samples shall be conducted by CuraGen, with
costs shared as set forth herein, and the Parties shall jointly perform data
analysis (including validation work) for the purpose of identifying
associations for the single nucleotide polymorphisms with selected
phenotypic traits.
D. The Parties intend to commercialize the results of their
collaborative research activities by jointly licensing to third parties, or
by individually commercializing, their rights in the associations of single
nucleotide polymorphisms with specific phenotypic traits that are
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discovered through such collaborative research program, for purposes of
development and commercialization, pursuant to separate written agreements
negotiated as set forth herein.
NOW, THEREFORE, in consideration of the foregoing premises and the
mutual covenants set forth below, and for other good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged,
Gemini and CuraGen hereby agree as follows:
ARTICLE 1
DEFINITIONS
As used herein, the following terms shall have the meanings as defined
below. The definition of a term in singular form shall include that term in
the plural form, and vice versa:
1.1 "AFFILIATE" shall mean any corporation, firm, limited liability
company, partnership or other entity which directly or indirectly controls or
is controlled by or is under common control with a Party to this Agreement.
"Control" means ownership, directly or through one or more Affiliates, of
fifty percent (50%) or more of the shares of stock entitled to vote for the
election of directors, in the case of a corporation, or fifty percent (50%)
or more of the equity interests in the case of any other type of legal
entity, status as a general partner in any partnership, or any other
arrangement whereby a Party controls or has the right to control the Board of
Directors or equivalent governing body of a corporation or other entity.
1.2 "ASSOCIATION DISCOVERY" means an association between a CuraGen SNP
and a Gemini Trait that, pursuant to Section 2.5, is the subject of an
"Association Discovery Notice" issued by the Research Committee during the
course of the Research Program.
1.3 "CONTROL", "CONTROLS" or "CONTROLLED" means, with respect to
particular material, information or intellectual property right, that the
Party owns or has a license to such material, information or intellectual
property right, with the ability to grant to the other Party a
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license or sublicense to such material, information or intellectual property
right as provided for in this Agreement without violating an agreement with a
Third Party.
1.4 "CURAGEN KNOW-HOW" means all information, whether patentable or
not, and excluding CuraGen's interest in the Joint Technology, that is
necessary and directly applicable for the conduct of the Research Program and
that during the term of this Agreement (i) is Controlled by CuraGen and (ii)
is not generally known or available to the public. "CuraGen Know-How" shall
include, without limitation, CuraGen SNPs provided by CuraGen hereunder.
1.5 "CURAGEN PATENTS" means all Patents, excluding Joint Patents, that
claim CuraGen Know-How, that are Controlled by CuraGen as of the Effective
Date and/or during the Research Program and that would, but for the grant of
a license thereunder, be infringed by the conduct of the Research Program or
by practicing the subject matter in the Joint Patents.
1.6 "CURAGEN SNP" means one of the single nucleotide polymorphisms in
the human genome provided by CuraGen pursuant to Section 2.2 for purposes of
identifying Association Discoveries pursuant to this Agreement.
1.7 "CURAGEN TECHNOLOGY" means the CuraGen Know-How and the CuraGen
Patents.
1.8 "DISEASE ASSOCIATED GENE" means genes, or substantial fragments of
genes, that contain SNPs and that have been found to be differentially
expressed in CuraGen animal models or implicated in a disease category by
other CuraGen research. Without limiting the generality of the foregoing, any
gene or gene fragment for which CuraGen provides a Predicted Disease
Association will be a Disease Associated Gene for purposes of this Agreement.
1.9 "DNA SAMPLES" means clinical samples of purified human DNA in
Gemini's possession and Control provided by Gemini hereunder.
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1.10 "DRUGGABLE GENE" means genes, or substantial fragments of genes,
that contain SNPs and that encode for proteins that can be drugs or drug
targets, including, without limitation, ***** *****
1.11 "GEMINI KNOW-HOW" means all information, whether patentable or not,
and excluding Gemini's interest in the Joint Technology, that is necessary
and directly applicable for the conduct of the Research Program and that
during the term of this Agreement: (i) is Controlled by Gemini and (ii) is
not generally known or available to the public. "Gemini Know-How" shall
include, without limitation, all clinical information and other information
contained in any databases under Gemini's Control that is provided by Gemini
hereunder.
1.12 "GEMINI LOCI GENE" means a gene or gene fragment which Gemini has
reasonably demonstrated to be located in a region of a human chromosome
associated with a Gemini Trait. A "High Quality" Gemini Loci Gene means a
Gemini Loci Gene in which the region in which the gene has been demonstrated
to be located **** ****
1.13 "GEMINI LOCI SNP" means a CuraGen SNP in a Gemini Loci Gene
identified by CuraGen pursuant to the second sentence of Section 2.2.
1.14 "GEMINI MATERIAL" means DNA Samples and other materials, other than
Gemini Know-How, provided by Gemini to CuraGen hereunder for use in the
Research Program.
1.15 "GEMINI PATENTS" means all Patents, excluding Joint Patents, that
claim Gemini Know-How and/or Gemini Material, that are Controlled by Gemini
as of the Effective Date and/or during the Research Program and that would,
but for the grant of a license thereunder, be
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Confidential Treatment Requested and the Restated
Material has been separately filed with the Commission
infringed by the conduct of the Research Program or by practicing the subject
matter in the Joint Patents.
1.16 "GEMINI TECHNOLOGY" means the Gemini Know-How and the Gemini
Patents.
1.17 "GEMINI TRAIT" means a human disease or surrogate clinical
parameter included in Exhibit 1 for which phenotype information is provided
by Gemini, that is selected by the Research Committee pursuant to Section 2.3.
1.18 "JOINT KNOW-HOW" means all information or inventions not generally
known or available to the public that (a) includes, comprises, is based on or
relates to any Association Discovery and (b) is made, conceived or reduced to
practice in the course of performance of the Research Program by either or
both Parties, and shall include in particular, but without limitation, the
information showing the association between a CuraGen SNP and a Gemini Trait
discovered in the course of the Research Program.
1.19 "JOINT PATENTS" means all Patents that claim an invention within
the Joint Know-How.
1.20 "JOINT TECHNOLOGY" means the Joint Know-How and the Joint Patents.
1.21 "PARTY" means either of Gemini or CuraGen, and "Parties" means both
of Gemini and CuraGen.
1.22 "PATENTS" means all foreign and domestic patent applications
(including, without limitation, all provisional, divisional, substitution,
continuation and continuation in-part applications, and all foreign
counterparts thereof) and all foreign and domestic patents (including,
without limitation, extensions, reissues, reexaminations, renewals,
supplementary protection certificates, inventors certificates and foreign
counterparts thereof).
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1.23 "Predicted Disease Association" means an hypothesis that a
particular gene or substantial fragment of a gene is implicated in a
particular disease or disease category (including, without limitation,
metabolic/endocrine/cardiovascular disease, bone disease, respiratory disease,
dermatology, immunology, rheumatology, CNS disorders, oncology, or renal
disease) such that a CuraGen SNP in such gene or gene fragment may be the
subject of a Association Discovery with a Gemini Trait associated with that
disease category. A Predicted Disease Association must be supported by
reasonable scientific evidence, including without limitation, evidence
generated by Taqman, northern blot, electronic northern blot, map position,
in situ analysis, antisense experiments, antibody generation, protein-protein
interaction, homology modeling or other structure-function prediction
technique, or any other generally recognized technology for disease
association.
1.24 "Research Committee" shall have the meaning set forth in Section
2.1.
1.25 "Research Program" means the research collaboration conducted by
the Parties pursuant to this Agreement as defined in Article 2.
1.26 "Third Party" or "Third Parties" means any individual partnership,
joint venture, corporation, trust, estate, unincorporated organization,
government or any department or agency thereof, or any other entity other
than the Parties and their Affiliates.
1.27 "Validated Gene" means a Disease Associated Gene which has been
shown to be implicated in a disease category in an animal disease model or
has been shown to be implicated in a disease by a physiological response to a
knock-out or knock-in, by modulation by a chemical entity, through an
antisense construct or by any other generally accepted target validation
methodology.
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ARTICLE 2
RESEARCH PROGRAM
2.1 Formation of Research Committee: Decision Making. Within ten (10)
days after the Effective Date, the Parties shall establish a Research
Committee having a total of four (4) members. The Research Committee shall
have responsibility for strategic oversight of the Research Program and of
implementation thereof. Gemini and CuraGen each shall select and have the
right to replace up to two (2) representatives to serve as members of the
Research Committee, each of whom shall have senior management
responsibilities for the Party appointing such member. Either Party may
designate a substitute committee member to participate in the event one of
that Party's regular committee members is unable to be present at a meeting.
The Research Committee shall meet, on every two months commencing from its
formation, and from time to time during the term of this Agreement as
otherwise agreed by the Parties. Regular meetings will alternate between New
Haven, Connecticut, U.S.A. and Cambridge, England and any meeting may be held
by teleconference or videoconference upon agreement of both parties. The
Research Committee shall make decisions on the basis of unanimous consensus
after a discussion of the matters as to which decisions are being made. In
the event the Research Committee is unable to agree upon a particular
matter, then such matter shall be submitted for resolution to an executive
officer of each Party for resolution by good faith discussion. If such matter
is not resolved by such officers within thirty (30) days of submission, then
the matter will be submitted to an independent expert in the pharmaceutical
or biotechnology (or other appropriate related) industry acting as an expert
and not as an arbitrator, the identity of whom shall be agreed upon by the
Research Committee (or failing such agreement, by two independent experts,
where one such expert is identified and nominated by
7
each of the Parties in their respective discretion) who shall resolve the
matter by determining objectively what is the best course of action on a
stand alone basis disregarding the individual subjective needs or preferences
of the Parties. In the absence of manifest error, such determination shall be
conclusive. Such matters are not subject to dispute resolution through
arbitration or litigation under Article 11.
2.2 CONDUCT OF RESEARCH PROGRAM. CuraGen shall provide to the Research
Committee not less than *** CuraGen SNPs. Such CuraGen SNPs will be provided
at a rate of at least **** per calendar quarter. Such SNPs will be
accompanied by any Predicted Disease Association and will be prioritized
according to the likely commercial potential of each CuraGen SNP as
reasonably determined by CuraGen, and Gemini shall provide to the Research
Committee a list of human diseases or surrogate clinical parameters therefor.
In addition, Gemini may, but is not obligated to, submit to CuraGen up to
**** Gemini Loci Genes at a rate of no more than *** per calendar quarter,
and CuraGen will search its databases for SNPs in such genes. Any SNPs found
in such searches shall be added to the CuraGen SNPs. Within **** days of the
Effective Date, the Research Committee shall agree upon a Research Program
governing each party's activities under this Agreement. Such Research Program
shall be in writing and shall be approved by the Parties. The Research
Committee shall update the Research Program through the remainder of the
initial term of this Agreement on or before November 1, 2000. Within ****
days of submission of a CuraGen SNP or a Gemini Loci Gene, the Research
Committee shall accept or reject the SNP or gene for inclusion in the
Research Program. As outlined in this Article 2 and subject to the terms and
conditions set forth in this Agreement, CuraGen and Gemini shall conduct the
Research Program to discover Association Discoveries, using DNA samples and
associated clinical information provided by Gemini, for the
8 Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
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purpose of licensing rights in such Association Discoveries to Third Parties
or commercializing such rights themselves. The Research Program shall be
under the direction and supervision of the Research Committee. All work
assignments to be carried out by the Parties shall be subject to Sections 6.1
and 6.2. The Research Committee shall coordinate the Parties' efforts under
the Research Program and facilitate communication between the Parties. In the
event the Research Committee is unable to agree upon a particular matter,
then such matter shall be submitted for resolution to an executive officer of
each Party for resolution by good faith discussion. If such matter is not
resolved by such officers within thirty (30) days of submission, then the
matter will be submitted to an independent expert in the pharmaceutical or
biotechnology (or other appropriate related) industry acting as an expert and
not as an arbitrator, the identity of whom shall be agreed upon by the
Research Committee (or failing such agreement, by two independent experts,
where one such expert is identified and nominated by each of the Parties in
their respective discretion) who shall resolve the matter by determining
objectively what is the best course of action on a stand alone basis
disregarding the individual subjective needs or preferences of the Parties.
In the absence of manifest error, such determination shall be conclusive.
CuraGen and Gemini shall conduct the Research Program in a prudent and
skillful manner and shall comply with all applicable laws, governmental
regulations and guidelines including, without limitation, current NIH
guidelines and any regulations or guidelines pertaining to research with
recombinant DNA.
2.3 DESIGNATION OF GEMINI TRAITS. As part of the Research Program, the
Research Committee shall (i) select from Exhibit 1 one or more Gemini Traits
with the goal of identifying at least one Association Discovery and (ii)
select the CuraGen SNPs to be used initially in order to identify Association
Discoveries. From time to time thereafter, the Research Committee may
9
designate one or more additional Gemini Traits to be included in the Research
Program and/or CuraGen SNPs to be used in the Research Program. Gemini shall
have the right to resolve disagreements under this Section 2.3 relating to
selection of CuraGen SNPs and CuraGen shall have the right to resolve
disagreements under this Section 2.3 relating to selection of Gemini Traits.
Disagreements under this Section 2.3 shall not be subject to arbitration
pursuant to Section 11.4 or legal proceedings pursuant to Section 11.3.
2.4 RESEARCH RESPONSIBILITIES. For purposes of the Research Program:
(a) CuraGen will provide at least **** SNPs and Gemini will
provide at least **************** DNA Samples (in forms and quantities to be
set forth in the Research Program, limited to a maximum cumulative quantity
of **** per DNA Sample) within **** days after approval of the Research Program,
and each Party will provide the other party its Know-How as is reasonably
necessary for conducting work under the Research Program.
(b) CuraGen and/or one or more Third Parties selected by CuraGen,
and reasonably acceptable to Gemini, shall be responsible for determining the
genotype of the DNA Samples provided pursuant to Section 2.4(a) with respect
to CuraGen SNPs as outlined in the Research Program. The Research Committee
shall determine the scope and time duration for any genotyping activities.
Upon completion of any such genotyping activities, the genotype information
shall be delivered to both Parties.
(c) Gemini and CuraGen will collaborate to generate and analyze
clinical and genetic data arising from CuraGen SNPs and Gemini Traits in
order to make Association Discoveries. Both Parties shall have equal access
to all relevant data, including without limitation, SNP Predicted Disease
Association data, genotyping data, physiological data, clinical data and
patient data, and each party will make its data available to the other.
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Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
(d) CuraGen shall initially bear the cost of genotyping activities
under Section 2.4(a), but shall be reimbursed for **** of such costs by Gemini
as set forth in Section 6.5. Except as set forth in the preceding sentence,
the Parties contemplate that the costs of each Party for activities under
this Section 2.4 will be ******* and the Research Program shall reflect this
****. Any costs incurred in using Third Parties selected by the Research
Committee to perform work pursuant to Section 2.4(b) shall be **** by the
Parties as they are incurred.
2.5 DETERMINATION OF ASSOCIATES. During the term of the
Research Program and for three (3) months thereafter, either Party may
request that the Research Committee make a determination either; (a) based
upon the genotyping data obtained pursuant to Section 2.4(b) and the analysis
under Section 2.4(c), that a particular CuraGen SNP, whose potential
association with a Gemini Trait has been identified under the Research
Program, is an Association Discovery, or (b) that it is unlikely, to a
reasonable degree of certainty based on the results of the Research Program
and other information available to the Research Committee, that a particular
CuraGen SNP has an association with such Gemini Trait. The Research Committee
shall meet to make the requested determination within thirty (30) days of such
request. If the Research Committee is unable to make a determination, it will
prepare a workplan for additional studies to be conducted by the Parties in
order to allow the requested determination, and the Parties will conduct such
studies as determined by the Research Committee. Upon receiving the results
from the workplan, the Research Committee will reconvene to make the
requested determination. If the Research Committee determines, upon a
particular request, that there is an association between the CuraGen SNP and
the Gemini Trait covered by such request, then the Research Committee will
issue a written notice (an "Association Discovery Notice") signed by at
least one
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Confidential Treatment Requested and the Redacted
Material has been separately filed with the Committee
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Research Committee member from Gemini and one Research Committee member from
CuraGen which specifically identifies the linkage association, and
such linkage association shall thereupon be deemed an Association Discovery.
Alternatively, the Research Committee may make a determination that it is
reasonably clear that there is no association between such CuraGen SNP and
such Gemini Trait (a "Negative Determination"). In the event the Research
Committee is unable to agree upon either an Association Discovery Notice or a
Negative Determination after receiving the results from the workplan, such
matter shall be submitted for resolution to an executive officer of each
Party for resolution by good faith discussion. If such matter is not resolved
by such officers within thirty (30) days of submission, then the matter will
be submitted to an independent expert with expertise in the area of disease
genetics acting as an expert and not as an arbitrator, the identity of whom
shall be agreed upon by the Research Committee (or failing such agreement, by
two such independent experts, where one such expert is identified and
nominated by each of the Parties in their respective discretion) who shall
resolve the matter objectively on a stand alone basis disregarding the
individual subjective needs or preferences of the Parties. In the absence of
manifest error, such determination shall be conclusive. Such matters are not
subject to dispute resolution through arbitration or litigation under Article
11.
2.6 TRANSFER OF INFORMATION AND MATERIAL. Subject to the provisions of
Article 7, from time to time during the Research Program, each Party shall
provide to the other Party copies of any and all results, information, data
and tangible materials that result from the performance of the Research
Program.
2.7 USE AND HANDLING OF MATERIALS. All materials transferred by either
party under this Agreement are provided solely for use in conducting the
Research Program and no other
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purpose. The parties acknowledge that materials transferred under this
Agreement are experimental in nature and each Party shall use such
transferred material with prudence and appropriate caution, since not all of
the materials' characteristics are known.
ARTICLE 3
EXCLUSIVITY; COVENANTS
3.1 OTHER PARTY TECHNOLOGY.
(a) CuraGen shall not utilize any Gemini Technology or Gemini
Material for any purpose other than performance of the Research Program,
including, without limitation, for any profit-making or commercial purpose,
except as set forth in a separate written agreement between the parties to
develop and/or commercialize the Joint Technology, as provided in Article 6,
without Gemini's prior express written consent, or, with respect to any
Gemini Technology and subject to Section 4.3(a), unless and until any such
Gemini Know-How is in the public domain through no act or omission of
CuraGen, its employees, or agents, or any such Gemini Parent has expired or
been canceled.
(b) Gemini shall not utilize any CuraGen Technology for any
purpose other than performance of the Research Program, including, without
limitation, for any profit-making or commercial purpose, except as set forth
in a separate written agreement between the parties to develop and/or
commercialize the Joint Technology, as provided in Article 6, without
CuraGen's prior express written consent, or, with respect to any CuraGen
Technology and subject to Section 4.3(b), unless and until any such CuraGen
Know-How is in the public domain through no act or omission of Gemini, its
employees or agents, or any such CuraGen Patent has expired or been canceled.
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3.2 UNAFFECTED RIGHTS OF CURAGEN AND GEMINI.
(a) Gemini is free to use or distribute the Gemini Material or the
Gemini Technology to other commercial or non-commercial entities or persons
and to grant licenses under such Gemini Technology or Gemini Material to such
entities or persons, except as prohibited by Sections 3.1 and 3.4.
(b) CuraGen is free to use or distribute the CuraGen Technology to
other commercial or non-commercial entities or person and to grant licenses
under such CuraGen Technology to such entities or persons, except as
prohibited by Section 3.1 and 3.4.
(c) Except as provided in Sections 3.1, 3.3 and 3.4. each Party
may engage in and promote independent research programs, including, without
limitation, the promotion by CuraGen of its databases and services and
promotion by Gemini of its gene discovery programs.
3.3 JOINT TECHNOLOGY EXCLUSIVITY. Except as permitted in this Section
3.3. or Sections 6.1 and 6.2 or pursuant to the he terms of a separate written
agreement between the parties, neither Party shall pursue or engage in, either
alone or with a Third Party, the research, development, or commercialization
of any invention within the Joint Technology. However CuraGen shall retain
the right to use or disclose the DNA sequence of CuraGen SNPs independently
(subject to Section 3.4) and Gemini shall retain the right to use, disclose
or provide the Gemini Material, PROVIDED, HOWEVER, that no such use,
disclosure, or provision by either Party involves, is based upon, uses,
practices or relies in any manner of to any extent on any other Joint
Technology, as shown by independent, contemporaneous, written records.
3.4 GEMINI TRAIT AND CURAGEN SNP EXCLUSIVELY. Neither party shall,
either on its own or with a Third Party, conduct activities with the purpose
of identifying associations between any CuraGen SNP provided pursuant to
Section 2.2 and any Gemini Trait, other than
14
pursuant to this Agreement, unless the Research Committee has made a Negative
Determination pursuant to Section 2.5 with respect to such CuraGen SPN and
such Gemini Trait.
3.5 GENERAL EXCLUSIVITY. Prior to ***** (i) CuraGen will not enter into
any agreement with a Third Party pursuant to which activities with the
purpose of ********************************************************************
**************************************************** and (ii) Gemini will not
enter into any agreement with a Third Party pursuant to which activities for
the purpose of ***************************************************************
******************************************************************************
****************. The foregoing shall not prohibit an agreement pursuant to
which a single SNP or group of SNPs in a single gene or in a specified
pathway are investigated to identify linkage associations.
ARTICLE 4
LICENSES
4.1 Research License to CuraGen. Subject to the terms of this Agreement,
Gemini grants to CuraGen a royalty-free, worldwide, nonexclusive license
under the Gemini Technology solely for CuraGen to perform its
responsibilities under the Research Program.
4.2 RESEARCH LICENSE TO GEMINI. Subject to the terms of this Agreement,
CuraGen grants to Gemini a royalty-free, worldwide nonexclusive license under
the CuraGen Technology solely for Gemini to perform its responsibilities under
the Research Program.
4.3 NO OTHER LICENSES.
(a) Except as expressly stated in this Agreement, nothing in this
Agreement, the license granted to CuraGen in Section 4.1. nor the transfer to
CuraGen of Gemini Material.
15
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Confidential Treatment Requested and the Redacted
Material has been separately filed with the Committee
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Gemini Technology or Joint Technology hereunder shall be deemed to grant or
convey any other rights to CuraGen in, or affect the legal title to, the
Joint Technology, the Gemini Technology or the Gemini Material.
(b) Except as expressly stated in this Agreement, nothing in this
Agreement, the license granted to Gemini in Section 4.2, nor the transfer to
Gemini of CuraGen Technology or Joint Technology hereunder shall be deemed to
grant or convey any other rights to Gemini in, or affect the legal title to,
the Joint Technology or the CuraGen Technology.
ARTICLE 5
INVENTORSHIP AND OWNERSHIP OF INTELLECTUAL PROPERTY
5.1 INVENTORSHIP. Inventorship of inventions and other intellectual
property rights conceived and/or reduced to practice in connection with the
Research Program shall be determined in accordance with the patent laws of
the United States. The Parties shall reasonably cooperate in making all
necessary assignments and executing all necessary documents, and shall ensure
that their employees and agents make all necessary assignments and execute
all necessary documents, to perfect the ownership rights set forth in this
Article 5.
5.2 GEMINI OWNERSHIP. CuraGen acknowledges and agrees that Gemini shall
retain ownership of all Gemini Material and Gemini Technology, subject to the
licenses granted to CuraGen under this Agreement, and that Gemini shall have
the sole right to file, prosecute and maintain Patents claiming any
inventions therein, at Gemini's sole expense.
5.3 CURAGEN OWNERSHIP. Gemini acknowledges and agrees that CuraGen shall
retain ownership of all CuraGen Technology, subject to the licenses granted
to Gemini under this Agreement, and that CuraGen shall have the sole right to
file, prosecute and maintain Patents claiming any inventions therein, at
CuraGen's sole expense.
16
5.4 OWNERSHIP OF JOINT TECHNOLOGY. Joint Technology, including without
limitation all Association Discoveries, and all intellectual property rights
therein shall be owned jointly by the Parties, subject to the licenses
granted under this Agreement.
5.5 PROSECUTION OF PATENTS WITHIN JOINT TECHNOLOGY.
(a) With respect to each invention within Joint Technology that
comprises, is based on, or relates to an Association Discovery involving a
Gemini Loci SNP that may be patentable, Gemini shall have the first right,
but not the obligation, of filing, prosecuting and maintaining the Patents
claiming such invention. With respect to each invention in Joint Technology
that comprises, is based on, or relates to an Association Discovery involving
any CuraGen SNP other than a Gemini Loci SNP that may be patentable, CuraGen
shall have the first right, but not the obligation, of filing, prosecuting
and maintaining Patents claiming such invention. The Party with the first
right is referred to in this Article as the "Filing Party." Upon notification
by the Filing Party of an intent to file a patent application claiming Joint
Technology, the other Party ("Other Party") will have fifteen (15) days to
inform the Filing Party whether the Other Party consents to such filing.
(b) (i) If the Other Party consents to such filing within such
thirty (30) day period, the Filing Party shall reasonably consult with the
Other Party regarding such filing and prosecution efforts, keep the Other
Party reasonably informed of the prosecution (including without
limitation by providing copies of all patent applications, amendments and
correspondence from U.S. and foreign patent offices) so as to allow the Other
Party a reasonable amount of time to review such information, seek the
comments of the Other Party on proposed applications, amendments, and
responses to office actions and reasonably consider such comments of the
Other Party.
17
(ii) If the Other Party does not consent within such thirty
(30) day period or the Other Party fails to respond within such period, the
Filing Party shall have the right to proceed with the filing and prosecution
of one or more patent applications for such invention at its own expense and
for its own benefit. If the Filing Party undertakes such filing and
prosecution, the Other Party shall promptly assign all of its right, title
and interest in and to such invention and any intellectual property rights
arising therefrom to the Filing Party, and the Filing Party shall have the
sole right, at its discretion, to commercialize such invention and all
intellectual property rights arising therefrom, without obligation to the
Other Party and free of the requirements of Article 6.
(c) The Other Party may request that the Filing Party take all
necessary action to file and prosecute a patent application on any particular
invention within the Joint Technology for which the Filing Party has the
first right under Section 5.5(a) and shall provide one hundred twenty (120)
days notice prior to any critical date if possible. Upon such request, the
Filing Party shall have thirty (30) days to inform the Other Party whether or
not the Filing Party will proceed with the requested filing or prosecution.
(i) If the Filing Party elects within such thirty (30) day
period to proceed, it shall take all commercially reasonable efforts to
accomplish such filing and prosecution and proceed as set forth in Section
5.5(a).
(ii) If the Filing Party elects within such thirty (30) day
period not to proceed, the Other Party shall have the right to proceed with
the filing and prosecution of one or more patent applications for such
invention at its own expense and for its own benefit. If the Other Party
undertakes such filing and prosecution, the Filing Party shall promptly
assign all of its right, title and interest in and to such invention and any
intellectual property rights arising
18
therefrom to the Other Party. Thereafter, the Other Party shall have the sole
right, at its discretion, to commercialize such invention and all intellectual
property rights arising therefrom, without obligation to the Filing Party and
free of the requirements of Article 6.
(d) The Filing Party shall be responsible for paying all costs and
expenses of filing, prosecuting and maintaining the Patents pursued by the
Filing Party under Section 5.5(a) and (b)(i) and Section 5.5(c)(i) above. The
Other Party shall promptly reimburse the Filing Party, based on invoices
submitted at the end of each calendar quarter, for one-half of the actual
out-of-pocket costs and expense incurred by the Filing Party in such filing,
prosecution and maintenance of all such Patents. However, as to any
particular Patent in a country or countries, the Other Party may decline, by
written notice, to pay its share of any such costs and expenses as to such
Patent incurred after receipt of such notice, and upon such notice: (i) the
Other Party shall have no further obligation with respect to such Patent in
such countries; (ii) the Filing Party shall have the right, in its sole
discretion, to continue the prosecution and maintenance of such Patent in the
applicable countries at its own expense and for its own benefit and (iii) the
Other Party shall promptly assign all of its right, title and interest in and
to such Patent in such countries. Thereafter, the Filing Party shall have the
sole right, at its discretion, to commercialize such Patent in such countries,
without obligation to the Other Party and free of the requirements of Article
6 with respect thereto.
5.6 ASSISTANCE IN PROSECUTION AND MAINTENANCE; EXECUTION OF DOCUMENTS.
Each Party shall reasonably assist the other Party in the filing, prosecution
and maintenance by the other Party (or both Parties jointly, as the case may
be) of Patents under Section 5.5, including, without limitation, executing any
necessary powers of attorney. The Parties shall keep one another informed of
the progress of such prosecution by providing copies of all correspondence
19
between their patent counsel and the patent offices of the countries where
such applications were filed. Each Party shall promptly execute any documents
or instruments in connection with any assignment of its right, title and
interest in and to any invention within the Joint Technology and intellectual
property rights arising therefrom to the other Party under Section 5.5.
5.7 INFRINGEMENT OF JOINT PATENTS BY THIRD PARTIES.
(a) Each Party shall promptly notify the other in writing of any
alleged or threatened infringement of Joint Patents of which it becomes
aware. For all such Joint Patents that are filed under Section 5.5(a) and
(b)(i) or Section 5.5(c)(i), the Parties shall proceed as set forth in
subsections (b) through (e) below with respect to such Third Party
infringement. As to any Joint Patent which is filed under Section 5.5(a)
and (b)(ii) or Section 5.5(c)(ii), the Party that owns such Joint Patent
shall have sole rights, at its sole discretion, to enforce such patent.
(b) The Filing Party with respect to any such Joint Patent, shall
have the first right, but not the obligation, to bring, at its own expense,
an appropriate action against any person or entity directly or contributorily
infringing a Joint Patent. The Other Party shall cooperate reasonably with
the Filing Party in such action, including consenting to be a named Party to
such action and the furnishing of a power of attorney. The Other Party shall
have the right to participate in any such action against a Third Party
infringer through counsel of its own choice and at its own expense.
(c) Within ninety (90) days of the discovery of any alleged or
threatened infringement, or receipt of the notice in Section 5.7(a), the
Filing Party shall notify the Other Party whether it intends to institute an
infringement suit or take other reasonable action to protect the relevant
Joint Patent. If the Filing Party elects not to take action, or fails within
such ninety (90) days to so notify the Other Party that it intends to take
action, then the Other Party shall
20
have the right to institute such suit or take other appropriate action at its
own expense, in its own name, the Filing Party's name, or both. In such
event, the Filing Party hereby agrees to cooperate reasonably with the Other
Party in any such effort, including by consenting to be a named Party to such
action and the furnishing of a power of attorney.
(d) In the event that the above provisions of (a) and (b) are not
enforceable under the applicable laws, the Parties shall meet and discuss in
good faith how to respond to the infringement.
(e) Regardless of which Party brings the action, any recovery
obtained by settlement or otherwise shall be disbursed as follows: (i) when
both Parties participate in the action, the Party bringing such action shall
in the absence of an agreement to the contrary first ensure that any
reasonable expenses incurred in assisting in such action (including counsel
fees) by both Parties are reimbursed, and (ii) thereafter, the net recovery
shall be shared between the Parties according to the * sharing of revenues
that would apply under Section 6.6 if the recovery were Third Party Revenues.
Both parties must consent in advance to any settlement, which consent
shall not be unreasonably withheld. When only one of the Parties brings
and prosecutes the action, such Party shall retain all recovery.
5.8 INFRINGEMENT OF THIRD PARTY RIGHTS.
(a) In the event that any activity of either Party under the
Research Program or a product thereof becomes the subject of a claim for
patent or other proprietary right infringement by a Third Party asserted
against either Party ("Research Program Infringement Claim"), the Parties
shall promptly confer to discuss the claim.
(b) The Parties shall reasonably cooperate in conducting the
defense of any Research Program Infringement Claim. The Parties shall share
equally all reasonable costs and
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Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
------------------------------------------------------
expenses of such defense, and both parties must consent to any settlement of
such defense, which consent shall not be unreasonably withheld.
ARTICLE 6
COMMERCIALIZATION OF JOINT TECHNOLOGY
6.1 LICENSING BY PARTIES. The Parties intend to commercialize the Joint
Technology, (except for Patents prosecuted and maintained under Section
5.5(a) and (b)(ii) or Section 5.5(c)(ii) and inventions claimed thereby)
either by commercialization themselves or by granting licenses within
appropriate fields of use to Third Parties to any intellectual property
rights under such Joint Technology (including without limitation all
potential investigative, diagnostic or therapeutic uses thereof) and any
requisite CuraGen Patents and Gemini Patents that would be infringed by the
practice of such Joint Technology but for the grant of such licenses. Gemini
shall have responsibility for implementing and coordinating commercialization
of any Association Discovery involving a Gemini Loci SNP. CuraGen shall have
responsibility for implementing and coordinating commercialization of any
Association Discovery involving any CuraGen SNP other than a Gemini Loci SNP.
The Parties will have joint responsibility for commercializing any other
Joint Technology that either Party requests in writing be commercialized. The
Party (or Parties) with responsibility for commercialization (the
"Commercializing Party") shall take commercially reasonable actions to
achieve commercialization, including without limitation, the preparation of
a plan to achieve the licensing or self commercialization of such Association
Discovery, the marketing of such license rights to such Association
Discovery, the pursuit of commercialization opportunities therefor, and the
negotiation of joint licensing agreements between the Parties and one or more
Third Party licensees for Joint Technology and requisite CuraGen Patents and
Gemini Patents relating
22
to such Association Discovery. The Commercializing Party shall keep the other
Party reasonably informed about all negotiations and, where reasonable in its
judgement, include the other Party in meetings and negotiations with
prospective licensees. If the Commercializing Party presents a license to the
other Party, the other Party shall be obligated to execute such license,
unless the other Party believes that the license has been negotiated in bad
faith, in which event the matter shall be resolved pursuant to Section 11.4.
The Parties will agree upon procedures and responsibilities for any Joint
Technology for which they have joint responsibility for commercialization.
6.2 SELF COMMERCIALIZATION. The Commercializing Party may, in the
exercise of its reasonable business judgement, determine to commercialize
itself (in whole or in part) the rights to a particular Association
Discovery. In such event, it will give written notice to the Other Party (a
"Self Commercialization Notice") and the Parties will negotiate in good faith
a Commercialization Agreement pursuant to which (i) the other Party will
grant the Commercializing Party a license to its interest in Joint Technology
and any CuraGen Technology or Gemini Technology (as the case may be)
necessary or useful for development and commercialization of the Association
Discovery, and (ii) the Commercializing Party will pay royalties to the other
Party at a rate that is intended to produce the same net rate for the other
Party ***********************************************************************
*****************************************************************************
*****************************************************************************
************************************************************************** If
the Parties are unable to agree on any terms of such Commercialization
Agreement within ninety (90) days after the Self Commercialization Notice,
the remaining issues shall be submitted for
23 ------------------------------------------------------
Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
------------------------------------------------------
resolution to an executive officer of each Party for resolution by good faith
discussion. If such matter is not resolved by such officers within thirty
(30) days of submission, then the matter will be submitted to an independent
expert with expertise and experience in licensing of diagnostic or
therapeutic products (as appropriate), acting as an expert and not as an
arbitrator, the identity of whom shall be agreed upon by the Parties (or
failing such agreement, by two such independent experts, where one such
expert is identified and nominated by each of the Parties in their respective
discretion) who shall resolve the matter by determining commercially
reasonable terms for such Commercialization Agreement consistent with the
principle set forth above, disregarding the individual subjective needs or
preferences of the Parties. In the absence of manifest error, such
determination shall be conclusive.
6.3 THIRD PARTY LICENSE OBLIGATIONS. In the case of a grant of a license
to a Third Party pursuant to Section 6.1, each Party will grant the
appropriate license to such Third Party under its interest in the Joint
Technology (to the extent that, but for such license, any such Patents or
other rights would be infringed or misappropriated by the exercise of the
development and commercialization rights granted to such Third Party under
the Joint Technology). In addition, with respect to any written agreement
with such Third Party pursuant to Section 6.1, (i) Gemini shall grant to such
Third Party a license under Gemini Patents that would, but for the grant of
such license, be infringed by the exercise of the development and
commercialization rights granted in such agreement to such Third Party under
the Joint Technology, and (ii) CuraGen shall grant to such Third Party a
license under CuraGen Patents that would, but for the grant of such license,
be infringed by the exercise of the development and commercialization rights
granted in such agreement to such Third Party under the Joint Technology.
24
6.4 COMMERCIALIZATION COMMITTEE. If the Joint Technology from any
Association Discovery has not been commercialized within two years of the
Association Discovery Notice, the Party that is not the Commercializing Party
may request that further commercialization efforts be the responsibility of a
joint Commercialization Committee. Within thirty (30) days after such
request, the Parties shall establish a Commercialization Committee having a
total of four (4) members. Gemini and CuraGen each shall select and have the
right to replace up to two (2) representatives to serve as members of the
Commercialization Committee, each of whom shall have senior management
responsibilities for the Party appointing such member. Either Party may
designate a substitute for a committee member to participate in the event one
of that Party's regular committee members is unable to be present at a
meeting. The Commercialization Committee shall operate by consensus and shall
seek to make decisions on the basis of consensus after a discussion of the
matters as to which decisions are being made. In the event the
Commercialization Committee is unable to agree upon a particular matter, then
such matter shall be submitted for resolution to an executive officer of each
Party for resolution by good faith discussion. If such matter is not resolved
by such officers within thirty (30) days of submission, and the matter
relates directly to the commercialization of a particular item of Joint
Technology, then the matter will be submitted to an independent expert in the
pharmaceutical (or other appropriate related) industry acting as an expert
and not as an arbitrator, the identity of whom shall be agreed upon by the
Commercialization Committee (or failing such agreement, by the independent
experts, where one such expert is identified and nominated by each of the
Parties in their respective discretion) who shall resolve the matter by
determining objectively what is the best means of commercializing the
applicable Joint Technology on a stand alone basis disregarding the
individual subjective needs or preferences of the Parties. In the absence of
25
manifest error, such determination shall be conclusive. Such matters are not
subject to dispute resolution through arbitration or litigation under Article
11.
6.5 REVENUE SHARING. The Parties will share all revenues, including but
not limited to up front license fees, milestone fees and royalty payments
(but not including research funding), received on account of Third Party
licenses granted pursuant to Sections 6.1 and 6.3 ("Third Party Revenues") as
follows:
The Parties will share the remainder of any such revenues ****
************************************* the Party receiving any such revenues
will promptly give notice of such receipt to the other Party. Within thirty
(30) days of such receipt, shall remit all amounts owing to the other Party
as reimbursement or share of remaining revenue, except that all amounts to be
retained by Gemini or paid by CuraGen to Gemini shall instead be paid to
CuraGen until CuraGen has been reimbursed from such payment for ********** of
the cost of genotype determination work carried out under the Research
Program pursuant to Section 2.4(b)
6.6 ************************** The Third Party Revenues will be shared
as follows, *****************************************************************
*************************************:
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Material has been separately filed with the Commission
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ARTICLE 7
CONFIDENTIALITY
7.1 CONFIDENTIAL INFORMATION. All confidential or proprietary information
disclosed by a Party under this Agreement shall be deemed "Confidential
Information" of such Party, including without limitation the following: the
existence of this Agreement, the transactions contemplated hereby and any
proposed or actual termination hereof (except as provided in Section 7.5). Joint
Technology (which shall be deemed Confidential Information of both Parties),
CuraGen SNPs (which shall be deemed Confidential Information of CuraGen), Gemini
Material
------------------------------------------------------------
27 Confidential Treatment Requested and the Reducted
Material has been separately filed with the Commission
------------------------------------------------------------
and Gemini Technology (which shall be deemed Confidential Information of Gemini)
and information received from Third Parties in confidence.
7.2 CONFIDENTIALITY. Except to the extent expressly authorized by this
Agreement or as otherwise agreed in writing by the Parties, each Party agrees
that, for the term of this Agreement and for five (5) years thereafter, it shall
keep confidential and shall not publish or otherwise disclose and shall not use
for any purpose other than as provided for in this Agreement any Confidential
Information of the other Party (and/or furnished to it by the other Party
pursuant to this Agreement) or any of the Joint Technology, unless the receiving
Party can demonstrate by competent proof that such Confidential Information:
(a) was already know to the receiving Party, other than under an
obligation of confidentiality, at the time of disclosure by the other Party, as
shown by contemporaneous written records;
(b) was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the receiving Party;
(c) became generally available to the public or otherwise part of the
public domain after it disclosure and other than through any act or omission of
the receiving Party, or any of its employees or agents, in breach of this
Agreement;
(d) was disclosed to the receiving Party by a Third Party, other than
in connection with a breach of an obligation of confidentiality to the other
Party; or
(e) was independently discovered or developed by the receiving Party
without the use of Confidential Information belonging to the disclosing Party or
use of Joint Technology by persons who had no knowledge of or access thereto, as
shown by contemporaneous independent written records.
28
7.3 AUTHORIZED DISCLOSURE. Each Party may disclose Confidential
Information belonging to the other Party only to the extent such disclosure is
reasonably necessary to:
(a) in the case of Joint Technology only, to license Third Parties
under Association Discoveries pursuant to Sections 6.1 and 6.2;
(b) consult with a Party's own legal and patent advisors who are under
obligation to maintain the information in strict confidence beyond anything
which has already publicly disclosed by the Parties hereto;
(c) assert or enforce a Party's rights under this Agreement; and, in
any event, with the consent of the other Party (which consent shall not be
unreasonably withheld).
(d) to comply with applicable law or regulation or requirements of any
stock exchange or interdealer quotation system;
7.4 LIMITATIONS ON DISCLOSURE. Notwithstanding the provisions of
Sections 7.2 and 7.3, in the event a Party is required to make a disclosure
of the other Party's Confidential Information, it will make all commercially
reasonable efforts to give advance notice to the other Party of such
disclosure requirement and shall use commercially reasonable efforts to
secure confidential treatment of such information, including cooperating with
the other Party to obtain a protective order of the other Party's
Confidential Information. In any event, the Parties agree to take all
reasonable actin to avoid disclosure of Confidential Information hereunder.
7.5 PUBLIC ANNOUNCEMENT. The Parties shall make an initial public
announcement as to the Agreement in a form mutually agreed by the Parties. Each
party may thereafter make subsequent public announcements of information
contained in the initial public announcement or any subsequent public
announcement made in accordance herewith. Prior to making any other
29
subsequent public announcements regarding this Agreement or the transactions
contemplated herein, each Party agrees to provide the other Party with a
reasonable opportunity to review and comment upon such proposed announcement.
Written agreement between the Parties shall be required prior to release of any
such subsequent public announcement and such agreement shall not be unreasonably
withheld.
7.6 EMPLOYEES; AGENTS. Each Party shall ensure that each of its employees,
consultants or other agents who has access to Confidential Information of the
other Party is bound to obligations of confidentiality and non-use as to such
Confidential Information at least equivalent in scope to those set forth in
Sections 7.1, 7.2 and 7.3
7.7 EQUITABLE REMEDIES. Each Party hereby acknowledges and agrees that in
the event of any breach of this Agreement, including, without limitation, the
actual or threatened disclosure or transfer of the other Party's Confidential
Information, without the prior express written consent of such other Party, such
other Party may suffer an irreparable injury, such that no remedy at law will
afford it adequate protection against, or appropriate compensation for such
injury. Accordingly, each Party hereby agrees that the other Party may be
entitled to specific performance of the obligations under this Agreement, as
well as such further injunctive relief as may be granted by a court of competent
jurisdiction.
ARTICLE 8
REPRESENTATIONS, WARRANTIES AND COVENANTS
8.1 MUTUAL REPRESENTATIONS AND WARRANTIES. Each Party hereby represents
and warrants:
30
(a) Such Party is duly organized and validly existing under the laws
of the state or country of its incorporation and has full corporate power and
authority to enter into this Agreement and to carry out the provisions hereof.
(b) Such Party is duly authorized to execute and deliver this
Agreement and to perform its obligations hereunder.
(c) This Agreement is a legal and valid obligation binding upon it
and enforceable in accordance with its terms. The execution, delivery and
performance of this Agreement by such Party does not, to the best of such
Party's knowledge after reasonable inquiry, conflict with any agreement,
instrument or understanding, oral or written, to which it is a Party or by
which it may be bound, nor violate any law or regulation of any court,
governmental body or administrative or other agency having jurisdiction over
it.
8.2 DISCLAIMER OF WARRANTIES. MATERIALS, TECHNOLOGY AND INFORMATION
PROVIDED UNDER THIS AGREEMENT ARE PROVIDED WITHOUT ANY WARRANTY, EXPRESS OR
IMPLIED, INCLUDING WITHOUT LIMITATION ANY WARRANTY OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE OR NON-INFRINGEMENT OF ANY PATENT OR OTHER
PROPRIETARY RIGHT.
ARTICLE 9
INDEMNIFICATION
9.1 INDEMNIFICATION. Gemini and CuraGen shall each indemnify, hold
harmless and defend the other against any and all Third Party claims, suits,
losses, damage, costs, fees and expenses including its reasonable attorney
fees ("Claims") resulting from the receiving Party's use of materials or
information as applicable transferred under this Agreement in accordance with
this Agreement, except to the extent that such Claim results from the
negligence or willful
31
misconduct of, or a breach of this Agreement by the indemnified Party, its
directors, officers, employees, independent contractors or agents.
ARTICLE 10
TERM AND TERMINATION
10.1 TERM. Unless earlier terminated pursuant to Section 10.2 or 10.3 or
extended pursuant to Section 10.4, the Research Program shall have a term of
two (2) years from the Effective Date. This Agreement shall continue
indefinitely unless terminated pursuant to Section 10.2 or 10.3.
10.2 EARLY TERMINATION. Either Party may terminate this Agreement by
written notice to the Other Party given within sixty (60) days after the
first anniversary of the Effective Date if CuraGen has failed to deliver at
least * by such first anniversary date.
10.3 EXTENSION. This Agreement will automatically be extended for an
additional year after the second anniversary of the Effective Date if CuraGen
has completed genotyping in accordance with the Research Program for at least
* and * has been issued by the Research Committee.
10.4 TERMINATION FOR MATERIAL BREACH. Either Party shall have the right
to terminate this Agreement for a material breach of this Agreement if the
other Party has not cured such breach within sixty (60) days following written
notice of termination to the other Party.
10.5 SURVIVAL. Upon expiration or termination of this Agreement in
accordance with Sections 10.1 or 10.2, the following provisions shall remain
in full force and effect: Sections 4.3, 8.2, 10.3, 10.6, 10.7 and Articles
3,5,6,7,9,11 and 12.
10.6 RETURN OF CONFIDENTIAL INFORMATION. Promptly upon any termination or
expiration of this Agreement, each Party will deliver to the other Party all
Confidential
32
Information of the other Party, including any remaining material of the other
Party and any replications, progeny, derivatives, analogs or clones thereof,
all copies, replications and versions of all the Confidential Information of
the other Party in written, graphic, electronic or other form in such Party's
possession, except that each Party may retain one copy of all Confidential
Information received for archival purposes and each Party may retain Joint
Technology. Upon termination or expiration of this Agreement, each Party
shall not use, allow to be used, sell, transfer, disclose or otherwise
provide access to any Confidential Information of the other Party (except for
Joint Technology) or any replications, progeny, derivatives, analogs, clones
or copies thereof, in written, graphic, electronic or other form.
10.7 ACCRUED RIGHTS AND OBLIGATIONS. Termination or expiration of this
Agreement shall not affect any accrued rights or obligations of either Party.
ARTICLE 11
DISPUTE RESOLUTION
11.1 GENERAL. The Parties recognize that disputes as to certain matters
may from time to time arise during the term of this Agreement which relate to
either Party's rights and/or obligations hereunder or thereunder. It is the
objective of the Parties to establish procedures to facilitate the resolution
of disputes arising under this Agreement in an expedient manner by mutual
cooperation. To accomplish this objective, the Parties agree to follow the
procedures set forth in this Article 11 if and when a dispute arises under
this Agreement.
11.2 NEGOTIATIONS. Unless otherwise specifically provided in this
Agreement, disputes among the Parties will be resolved by reference first to
their respective executive officers designated below or their successors, for
attempted resolution by good faith negotiations within fifteen (15) days
after such notice is received. Said designated officers are as follows:
33
For CuraGen: Xx. Xxxxxxxx Xxxxxxxx
For Gemini: Dr. Xxxx Xxxxx
In the event the designated executive officers (or a comparable replacement
thereof) are not able to resolve such dispute, either Party may at anytime
after the fifteen (15) day period seek to resolve the dispute through the
means provided in Section 11.3, except for issues that are required to be
resolved pursuant to Section 11.4.
11.3 LEGAL PROCEEDINGS. Any claim or controversy arising out of or
related to this Agreement or any breach hereof that is not resolved by the
designated committee and/or officer, or pursuant to Section 11.4 as provided
in this Agreement, shall be submitted to a court of competent jurisdiction in
New York, New York, U.S.A. The parties each recognize their right to a jury
trial and hereby expressly waive such right and agree to submit any claim or
controversy arising out of or related to this contract or any breach hereof
to a trial by a judge. Notwithstanding the foregoing, disputes regarding the
validity, scope or enforceability of patents shall be submitted to a court of
competent jurisdiction in the country where such patent has issued.
11.4 ARBITRATION OF CERTAIN MATTERS. Except as provided in paragraph (c)
below, any dispute, controversy or claim arising out of or relating to the
validity, construction, enforceability or performance of this Agreement,
including disputes relating to alleged breach or to termination of this
Agreement, other than disputes which are expressly prohibited herein from
being resolved by this mechanism, shall be settled by binding arbitration as
provided in this Section 11.4.
(a) A Party that intends to begin arbitration shall provide written
notice (the "Arbitration Request") to the other Party informing such other
Party of such intention and the issues to be resolved.
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(b) Within ten (10) business days after providing the Arbitration
Request, the other Party may, by written notice to the Party initiating
arbitration, add additional issues to be resolved.
(c) Any dispute regarding the scope, validity or enforceability of a
CuraGen Patent, Gemini Patent or Joint Patent relating to an Association
Discovery shall be submitted to a court of competent jurisdiction in the
country in which such Patent exists.
(d) RULES. The arbitration shall be administered by JAMS and
conducted pursuant to the Comprehensive Rules for Commercial, Real Estate and
Construction Cases of JAMS. Notwithstanding those rules, the following
provisions shall apply to the arbitration hereunder:
(1) ARBITRATOR; PROCEEDINGS; AWARD. The arbitration shall be
conducted by a single arbitrator with significant relevant experience in the
biotechnology and/or pharmaceutical (or other appropriate related) industry
("the Arbitrator"). No Party shall engage in ex parte contact with the
Arbitrator. The Parties intend to conclude the arbitration proceeding in no
more than eighteen (18) months from its beginning to the award of the
Arbitrator. The Parties intend that each Party will have the opportunity to
conduct complete discovery with respect to all material issues involved in a
dispute within the framework provided above. The Arbitrator shall render an
opinion setting forth findings of fact and conclusions of law with the reason
therefor stated. A transcript of the evidence adduced at the hearing shall be
made and, upon request shall be made available to each Party. The Arbitrator
shall, in rendering its decision, apply the substantive law of the State of
New York, without regard to its conflict of laws provisions, except that the
interpretation of and enforcement of this Section 11.4 shall be governed by
the United States Arbitration Act.9 U.S.C. SECTION 1-14, 201-208. The
Arbitrator shall
35
apply the United States Federal Rules of Evidence to the hearing. The
proceeding shall take place in within New York, New York. Each Party shall
bear its own legal fees, except that the fees of the Arbitrator and JAMS
shall be paid by the losing Party, which shall be designated by the
Arbitrator, or split equally between the Parties if the Arbitrator is unable
to designate a losing Party. The Arbitrator is empowered to award any remedy
allowed by law, including money damages, prejudgment interest and attorneys'
fees, and to grant final, complete, interim, or interlocutory relief.
Notwithstanding the foregoing, however, the Arbitrator may not award any
special, consequential, punitive, incidental or indirect damages arising out
of this Agreement, however caused, under any theory of liability.
(ii) CONFIDENTIALITY. The arbitration proceeding, its
existence, the dispute submitted to arbitration, and the Arbitrator's
decision shall be confidential and deemed Confidential Information of each
Party, except as required in connection with the enforcement of such award or
as otherwise required by applicable law, and the Arbitrator shall issue
appropriate protective orders to safeguard such Confidential Information.
(iii) AUTHORITY OF COURT. Any court having competent
jurisdiction may enter judgment upon any award. The Parties consent to the
jurisdiction of any such Court for the enforcement of these provisions.
(iv) PROVISIONAL REMEDIES. Each Party has the right before or
during the arbitration to seek and obtain from the appropriate court
provisional remedies such as attachment, preliminary injunction, replevin,
etc. to avoid irreparable harm, maintain the status quo, or preserve the
subject matter of the arbitration.
ARTICLE 12
GENERAL PROVISIONS
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12.1 NOTICES. Any notices required or permitted hereunder shall be
given to the appropriate Party at the address specified below or at such
other address as the Party shall specify in writing. Such notice shall be
deemed given upon personal delivery, one (1) day after the date such notice
is provided by overnight delivery service providing evidence of delivery,
three (3) days after the date of mailing when sent by certified or registered
mail, postage prepaid, or upon the date such notice is transmitted by
facsimile, provided that the Party providing such notice promptly confirms
receipt of such transmission with the other Party by telephone. All notices
shall be addressed as follows:
If to Gemini: With a copy to:
Gemini Research Limited Xxxxxx Godward LLP
162 Science Park 0000 Xx Xxxxxx Xxxx
Xxxxxx Xxxx Xxxx Xxxx, Xxxxxxxxxx 00000
Xxxxxxxxx, XX0 0XX Xxxxxx Xxxxxx
Xxxxxx Xxxxxxx Attn: Barclay J. Karnb, Esq.
Attn: CEO Telephone: (000) 000-0000
Telephone: 00-0000-000-000 Fax: (000) 000-0000
Fax: 00-0000-000-000
If to CuraGen: With a copy to:
CuraGen Corporation Mintz, Levin, Cohn, Ferris, Glovsky
000 Xxxx Xxxxx Xxxxx and Popeo, P.C.
Xxx Xxxxx, XX 00000 Xxx Xxxxxxxxx Xxxxxx
XXX Xxxxxx, XX 00000
Attn: CEO USA
Telephone: (000) 000-0000 Attn: Xxxxxxx X. Xxxxxx, Esq.
Fax: (000) 000-0000 Telephone: (000) 000-0000
Fax: (000) 000-0000
Any Party may, by written notice to the other, designate a new address or fax
number to which notices to the Party giving the notice shall thereafter be
mailed or faxed.
12.2 FURTHER ACTIONS. Each Party agrees to execute, acknowledge and
deliver such further instruments and to do all such other acts as may be
necessary or appropriate in order to carry out the purposes and intent of
this Agreement.
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12.3 NO TRADEMARK RIGHTS. Except as otherwise provided herein or agreed
to in advance in writing, no right, express or implied, is granted by this
Agreement to use in any manner the names "CuraGen" or "Gemini", or any other
trade name or trademark of CuraGen or Gemini or the names of any employees
thereof, for any purpose.
12.4 FORCE MAJEURE. No Party shall be liable for any delay or failure
of performance to the extent such delay or failure is caused by circumstances
beyond its reasonable control and that by the exercise of due diligence it is
unable to prevent, provided that the Party claiming excuse uses its best
efforts to overcome the same.
12.5 LEGAL COMPLIANCE. The Parties shall review in good faith and
cooperate in taking such actions to ensure compliance of this Agreement with
all applicable laws, including without limitation, European Union
Competition Law and US Antitrust Law.
12.6 ENTIRETY OF AGREEMENT. This Agreement is the entire agreement and
understanding of the Parties relating to the subject matter contained herein
and merges all prior discussions and agreements between them, and no Party
shall be bound by any representation other than as expressly stated in this
Agreement, or by a written amendment to this Agreement signed by authorized
representatives of each of the Parties.
12.7 NON-WAIVER. The failure of a Party in any one or more instances to
insist upon strict performance of any of the terms and conditions of this
Agreement shall not be construed as a waiver or relinquishment, to any
extent, of the right to assert or rely upon any such terms or conditions on
any future occasion.
12.8 DISCLAIMER OF AGENCY. This Agreement shall not constitute any
Party the legal representative of agent of another, nor shall any Party have
the right or authority to assume,
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12.12 LIMITATION OF LIABILITY. No Party shall be liable to another for
indirect, incidental, consequential or special damages, including but not
limited to lost profits, arising from or relating to any breach of this
Agreement, regardless of any notice of the possibility of such damages.
Nothing in this Section is intended to limit or restrict the indemnification
rights or obligations of any Party.
12.13 GOVERNING LAW. This Agreement shall be governed by the laws of
New York, as those laws are applied to contracts entered into and to be
performed entirely in New York, excluding its choice of law rules and except
as otherwise provided in Section 11.4 with respect to arbitrations.
12.14 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be an original and all of which shall
constitute together the same document.
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IN WITNESS WHEREOF, the parties have by duly authorized persons,
executed this Agreement, as of the date first above written.
GEMINI RESEARCH LIMITED CURAGEN CORPORATION
By: /s/ Xxxx Xxxxx By: /s/ Xxxxxxxxxxx X. XxXxxx
------------------------------ ----------------------------
(signature) (signature)
Name: Xxxx Xxxxx Name: Xxxxxxxxxxx X. XxXxxx
---------------------------- --------------------------
Title: Chief Executive Officer Title: Executive Vice President
---------------------------- --------------------------
Date: March 23, 2000 Date: March 23, 2000
---------------------------- --------------------------
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EXHIBIT 1
[Redacted]
Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
