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EXHIBIT 10.31
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
LEAD OPTIMIZATION AGREEMENT
BETWEEN
ARRAY BIOPHARMA CORPORATION
AND
ICOS CORPORATION
DECEMBER 22, 1998
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LEAD OPTIMIZATION AGREEMENT
THIS LEAD OPTIMIZATION AGREEMENT (the "Agreement") is entered
into and made effective as of December 22, 1998 (the "Effective Date"), by and
between ARRAY BIOPHARMA INC, a Delaware corporation having its principal offices
located at 0000 00xx Xxxxxx, Xxxxxxx, XX 00000 ("Array") and ICOS CORPORATION, a
Delaware corporation having its principal offices located at 00000 00xx Xxxxxx
X.X., Xxxxxxx, Xxxxxxxxxx 00000 ("ICOS").
WHEREAS, Array has skills, expertise and experience in
multi-parallel synthesis and purification methods, developing and preparing
chemical libraries suitable for high throughput biological screening assays and
medicinal chemistry;
WHEREAS, as of the Effective Date, ICOS and its Affiliates
have developed and own, among other things, certain know how and intellectual
property rights, assays, methods and lead compounds that may be potential drug
candidates directed to the Optimization Targets, (collectively "ICOS
Technology");
WHEREAS, ICOS desires to utilize Array skills, expertise and
experience to assist ICOS in optimizing such lead compounds for the Optimization
Targets;
WHEREAS, the parties wish to collaborate in an optimization
program in this regard against Optimization Targets;
WHEREAS, the Optimization Program will focus on an initial
Optimization Target as set forth below, and the Parties intend to work on
multiple Optimization targets in a serial and parallel manner as set forth
herein below;
NOW, THEREFORE, the Parties agree as follows:
1. DEFINITIONS
1.1 "Active Target" means an Optimization Target for which
ICOS has provided reasonable written notice to Array as described in Section 3.1
of this Agreement, that such Optimization Target shall be included in the
Optimization Program and for which an Optimization Plan shall be produced. For
the purpose of this definition reasonable notice shall be thirty (30) days
unless the party's have agreed to a shorter period of notice either by written
agreement or by the Parties performance.
1.2 "Affiliate" of a Party means any corporation or other
business entity controlled by, controlling or under common control with, such
Party. For this purpose "control" shall mean direct or indirect beneficial
ownership of more than fifty percent (50%) of the voting securities or income
interest in such corporation or other business, or if not meeting the preceding
requirements, any company owned or controlled by or owning or controlling such
Party at the maximum control or ownership right permitted in the country where
such company exists.
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requirements, any company owned or controlled by or owning or controlling such
Party at the maximum control or ownership right permitted in the country where
such company exists.
1.3 "Array Compound" means a chemical compound that is
proprietary to Array, or whose use or manufacture is proprietary to Array.
1.4 "Array Patents" means all Patents which claim any Array
Technology and that are Controlled by Array during the Exclusivity Period, but
shall exclude any claims of an Optimization Patent. For purposes of this
definition, "controlled" shall mean the ability to grant a license or sublicense
as provided for in Section 7.1 below.
1.5 "Array Technology" means certain know-how, intellectual
property or patents (i) developed, licensed and/or owned by Array, prior to the
Effective Date or (ii) developed licensed and/or owned by Array outside of the
Optimization Program and used by Array in the Optimization Program, or (iii)
developed during the Optimization Program and not having solely specific or
novel application to the Optimization Program (i.e. such know-how, intellectual
property, or patents having application outside of the development, manufacture,
use, sale, or importation of Optimization Compounds or Products). Array
Technology shall not include [ * ] or [ * ].
1.6 "Confidential Information" shall mean:
(a) all information and materials received by
either Party from the other Party pursuant
to this Agreement which is confidential
under Section 9;
(b) all information and materials received by
either Party from the other Party in
connection with the Optimization Program
during the Optimization Period, including,
without limitation, structures of lead
compounds provided by ICOS to Array, to the
extent the same is confidential under
Section 9; and
(c) the financial terms of this Agreement and
the identity of the Optimization Targets, to
the extent the same are confidential under
Section 9.
1.7 "Daughter Libraries" shall mean the compound libraries
which are designed and synthesized as a part of the Optimization Program by
Array.
1.8 "Derivative" shall [ * ].
1.9 "Exclusivity Period" means [ * ].
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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1.10 "Field" means all indications for any Optimization Target
against which an Optimization Compound or Products may be directed.
1.11 "FTE" shall mean a full-time equivalent employee of Array
having the skills, support, services and resources to fulfill Array's
obligations under this Agreement. For purposes of this Agreement, the FTEs shall
include [ * ].
1.12 "Optimization Compound(s)" means a compound (or
compounds) which is synthesized by Array following the Effective Date in the
course of performing the Optimization Program for the purpose of screening
against an Active Target.
1.13 "Optimization Patent" means a Patent claiming and
disclosing the composition of an Optimization Compound or the manufacture
thereof, for which Array has made an inventive contribution to the subject
invention in the course of performing the Optimization Program, as determined
under U.S. Patent law. Notwithstanding the foregoing, Optimization Patents shall
only include Patents to the extent the same (i) is entitled to a first effective
filing date for priority purposes (i.e., for priority purposes under 35 USC, or
the corresponding laws of the country in which such Patent is filed) after the
Effective Date and (ii) claims subject matter reduced to practice (either actual
or constructive) prior to the date six (6) months after the end of the
Optimization Period.
1.14 "Optimization Period" means the term of the Optimization
Program as provided in Section 8 of this Agreement.
1.15 "Optimization Plan" means the Optimization Plan to be
prepared by Array approved and accepted by ICOS, which describes in agreed
detail the research activities to be performed by Array for each Active Target.
1.16 "Optimization Program" means the research and activities
to be conducted under this Agreement as described in the Optimization Plan and
as set forth in Sections 2.1 and 2.2 of this Agreement.
1.17 "Optimization Target" means any one of the [ * ]
described in Appendix B, at execution of this Agreement, or as substituted by
mutual written agreement of the Parties, and unless otherwise specified may
include Active Targets, and shall in each case be selected from Appendix B.
1.18 "Party" means Array or ICOS, as the case may be,
including their respective permitted assigns of this Agreement under Section 12
below.
1.19 "Patent" means (a) valid and enforceable U.S. or non U.S.
Patent, and any non-U.S. equivalent, including any extension (including
Supplemental Protection Certificates), registration, confirmation, reissue,
continuation, divisionals, continuation-in-part, reexamination or renewal
thereof, or (b) pending applications for any of the foregoing.
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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1.20 "Product(s)" means any product containing an Optimization
Compound or Derivative with such compound as the active ingredient or one of the
active ingredients, which is the subject of one or more claims under an
Optimization Patent and which is granted regulatory approval by the governing
health regulatory authority of the applicable country for marketing in the
Field.
1.21 "Project Team" shall have the meaning set forth in
Section 2.1(c).
1.22 "Restored Active Target" means an Active Target which has
ceased to be an Active Target either by agreement of the Parties or by operation
of the Optimization Program, and which, by reasonable written notice has been
again designated as an Active Target. For the purposes of this definition
reasonable notice shall be thirty (30) days unless the Party's have agreed to a
shorter period of notice either by written agreement or by parties performance.
1.23 "Territory" means the entire world.
1.24 "Third Party" means an entity other than Array or ICOS or
their respective Affiliates.
2. OPTIMIZATION PROGRAM
2.1 Array Responsibilities. Array shall with due diligence
provide the following services and resources to ICOS and conduct the following
activities in accordance with the Optimization Plan:
(a) During the Optimization Period, Array shall
(i) review data and information regarding
the Active Target and lead compounds
provided by ICOS; (ii) based on such data
and information design Daughter Libraries
and optimize the lead compounds supplied by
ICOS; and (iii) synthesize compounds as
provided in Section 5.3 below.
(b) During the Optimization Period, Array shall
keep ICOS regularly informed of its
activities performed in connection with the
Optimization Program, including, without
limitation, providing ICOS with data and
information (and, upon ICOS's written
request, reasonable quantities of samples
pursuant to Section 5.3) regarding the
status of Array's work on Optimization
Compounds under the Optimization Plan.
(c) Subject to Sections 2.3, 3 and 6, and at all
times during the Optimization Period, Array
shall [ * ].
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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2.2 ICOS Responsibilities. ICOS shall provide the following
resources to Array and conduct the following activities under the Optimization
Program as more fully described in the Optimization Plan:
(a) ICOS shall make payment to Array under the
Optimization Program as set forth in Section
6, provide screening, biological and
structural data and information including
leads and/or screening hits and assay
methods relating to Optimization Compounds
to Array necessary for Array to perform its
duties under this Agreement, and will assume
scientific, financial and administrative
responsibility for screening and biological
support activities, drug development and
regulatory filings during and after the term
of the Optimization Program on the terms set
forth below.
(b) During the Optimization Period, ICOS shall
provide Array with: (i) lead compounds
and/or structures of such lead compounds for
the Active Target, and (ii) data and
information regarding Optimization Compounds
and the Active Target assays developed by
ICOS under the Optimization Program.
2.3 Conduct of Optimization Program. The Parties hereby agree
that the Optimization Program shall be carried out in accordance with the
Optimization Plan and this Agreement, as amended from time to time. ICOS shall
review the Optimization Plan on a regular and an ongoing basis and may make
written changes to the Optimization Plan so long as such changes are mutually
agreed to in writing by Array.
2.4 Third Party Licenses. Each Party shall be solely
responsible for any Third Party license fees required to perform its obligations
under this Agreement.
3. TARGETS
3.1 Active Target. The initial Active Target shall be as
specified in Appendix B or as specified by reasonable written notice from ICOS
to Array. There shall be only [ * ] designated as the Active Target unless Array
and ICOS have mutually agreed in writing to there being specific additional
Optimization Targets simultaneously designated as Active Targets together with
additional terms and conditions, if any.
3.2 Restored Active Target. Any Optimization Target which has
ceased to be an Active Target due to the later designation of another
Optimization Target as an Active Target, may always be restored to the status of
an additional Active Target provided that negotiation has taken place between
the Parties regarding reasonable scheduling and consideration.
3.3 Disclosure of Active Target Information. ICOS agrees not
to disclose to Array any Confidential Information relating to an Optimization
Target, or lead compounds
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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therefor until such Optimization Target is designated as the Active Target in
accordance with Section 3.1 above.
4. EXCLUSIVITY
4.1 Active Target Exclusivity. During the Optimization Period,
Array shall not knowingly work on or provide information regarding any
Optimization Target with or to any Third Parties, thereafter during the
Exclusivity Period, Array shall not knowingly work on or provide information
regarding any Optimization Target which has been designated as an Active Target
during the Optimization Period with or to any Third Parties, in each case except
(a) as provided for in Section 10.2 with regard to any Public Statements, and
(b) with respect to any Third Parties who are collaborators or proposed
collaborators of Array, Array shall have the right, consistent with its
corporate policy (but without identifying any Optimization Target), to notify
any such Third Party of its decision and/or inability to work on such
Optimization Target with that Third Party. For the purposes of this Section 4.1,
"knowingly" shall mean actual knowledge or imputed knowledge that the corporate
entity or its directors and officers knew or should have known.
4.2 Optimization Compounds. Optimization Compounds, their
structures and best methods of synthesis and manufacture developed during the
Optimization Program shall be made available only to ICOS for research or
application to any Optimization Target, within or outside the Collaboration,
during the Optimization Period, and Array shall not work on or provide
information regarding such Optimization Compound to any Third Party, except to
take any steps necessary to protect ICOS's exclusivity hereunder.
4.3 Duration of Exclusivity for Optimization Targets.
Notwithstanding any other provision of this Agreement, it is understood and
agreed that once an Optimization Program has been initiated for any Active
target Array's obligations under Section 4.1 shall continue until ICOS has
released Array from the effect of this Section 4.3 by written notice or the end
of the Exclusivity Period, whichever occurs first.
5. OPTIMIZATION COMPOUNDS
5.1 Intellectual Property Rights: [ * ]. Subject to Section
7.2 and except as set forth in this Section 5.1, ICOS shall have exclusive
rights in all Optimization Patents and the subject matter contained therein and
all intellectual property and know-how (whether or not patentable) embodied in
Optimization Compounds and Products and methods specifically directed to the
manufacture of Optimization Compounds and methods of use of Products, in each
case resulting from the Optimization Program; to the extent possible such
exclusive rights shall be achieved by Array assigning its interest, if any, in
such Patents and intellectual property and know-how to ICOS and where such
assignment is not legally possible ICOS shall receive an exclusive license or
sublicense to the maximum extent of Array's rights. ICOS shall file, maintain
and prosecute all Patents arising out of, or comprising, the rights and
interests granted in this Section 5.1 and Array shall do everything reasonably
necessary to assist ICOS in filing such Patents. Prior to the filing of any such
Patent applications or during the pendency of such applications, Array shall
assign to ICOS or its designee all intellectual property
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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rights it may have, to the extent granted in this Section 5.1, in the
Optimization Patents and the subject matter disclosed and claimed therein which
are necessary for the development and commercialization of such Optimization
Compounds by ICOS or its designee. Notwithstanding anything in this Section 5.1
to the contrary, nothing in this Section 5.1, or the operation thereof, shall be
deemed to grant to ICOS any rights in or to any Array Technology.
5.2 Structural Information. Array shall not disclose the
structure of any Optimization Compound, Derivative or Product (to the extent
such structure is not publicly available) to any Third Party nor identify such
structure, if publicly available, with its collaboration with ICOS without
ICOS's written permission, unless required to do so by law, in which case Array
shall promptly notify ICOS of such required disclosure and will use its
reasonable efforts to assist ICOS to secure confidential treatment of such
structure prior to any disclosure.
5.3 Supply of Optimization Compounds. Aliquots of at [ * ] of
any Optimization Compound that has been synthesized will be prepared and given
to ICOS together with their structures and all known and developed best methods
of synthesis and manufacture. Array shall replenish once during the Exclusivity
Period that amount upon ICOS's reasonable request, and ICOS shall reimburse
Array for any cost thereof not otherwise reimbursed under Section 6 below for
any reasonably requested replenishment in excess of a total of [ * ] milligrams.
To the extent that Optimization Compounds are not available in a timely and
sufficient quantify to allow the earliest start of necessary large scale
preclinical or other studies such unavailability of Optimization Compounds shall
not be cited as a lack of due diligence provided that the Parties have made
commercially reasonable attempts, and continue such attempts, during the
Exclusivity Period to provide such unavailable Optimization Compounds in
required quantities in an expedient manner.
6. CONSIDERATION
6.1 Optimization Program Funding.
(a) Research Support for Project Team. At all
times during the Optimization Period, ICOS
shall make payments to Array for direct
research support for its Project Team, which
shall initially consist of [ * ] of Array,
unless determined otherwise under Section
6.1(b). The total amount payable per FTE
shall be U.S. [ * ] per FTE per annum. All
payments for direct research support shall
be paid by ICOS to Array, quarterly in
advance, and adjusted as necessary in
subsequent quarters, of such amounts as are
equal to the product of (i) the number of
FTEs ([ * ] FTEs unless determined otherwise
under Section 6.1(b)) allocated to the
Optimization Program for the calendar
quarter to which each such payment applies,
multiplied by (ii) U.S. [ * ] (i.e., the
quarterly amount per FTE on the basis of
U.S. [ * ] per annum).
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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(b) Expansion or Contraction of Project Team.
ICOS may request that Array expand or
contract its Project Team during the
Optimization Period in order to match the
work on Active Targets; provided that the
Project Team shall not be less than [ * ]
except by agreement of Array. In such event,
the Parties shall promptly confer as the
appropriate number of FTEs to constitute the
Project Team, as mutually agreed, at cost to
ICOS [ * ], to be paid as specified in
Section 6.1(a).
6.2 Milestone Payments. Within [ * ] days of the occurrence of
a development milestone triggered by the activities of ICOS or its Affiliates,
or Third Parties acting under authority from ICOS or its Affiliates, ICOS shall
pay Array the related milestone payment in U.S. dollars as set forth in Appendix
A. Such payments shall apply once only to each milestone reached by any
Optimization Compound or Derivative for each Optimization Target. Such milestone
payments shall be due with respect to each Optimization Compound or Derivative
to meet such milestone (each a "Milestone Compound"); [ * ].
6.3 Taxes. All income and other taxes levied or accruing to
Array under this Agreement shall be paid by Array, including taxes levied
thereon as income to Array. If provision is made in law or regulation for
withholding, such tax shall be deducted from the payment made by ICOS to the
proper taxing authority and a receipt of payment of the tax secured and promptly
delivered to Array. Each Party agrees to assist the other Party reasonably in
claiming exemption from such deductions or withholdings under any double
taxation or similar agreement or treaty from time to time in force.
6.4 Title to, and ownership of tangible property. Without
limiting ICOS' rights under Sections 5.1 and 7 of this Agreement, it is
understood and agreed that each Party retains title to any tangible property
delivered to the other Party under this Agreement.
7. LICENSE GRANTS; OUTLICENSE
7.1 Array License Grant to ICOS. Subject to the terms and
conditions of this Agreement, Array hereby grants to ICOS a non-exclusive,
royalty-free, fully paid up except as to payment of respective milestones under
Section 6.2, worldwide license, with the right to sublicense to use Array
Technology and under the Array Patents, in each case solely to make, have made,
use, have used, sell, have sold, import and export Optimization Compounds or
Products in the Field.
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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7.2 ICOS Sublicense. ICOS shall have the right to transfer,
assign or sublicense to a Third Party ICOS's rights under Sections 5.1 and 7.1
above or Optimization Patents covering the Products.
7.3 No Other Licenses. No right or license is granted to ICOS
hereunder under technology or intellectual property of Array, by implication,
estoppel or otherwise, except as specifically and expressly granted under
Sections 5.1, 5.2 and 7.1 of this Agreement. No right or license is granted to
ARRAY hereunder in any Optimization Compound or Derivative, including compounds
in Daughter Libraries.
8. TERM AND TERMINATION OF THE AGREEMENT
8.1 Term, Renewals and Extensions. The term of this Agreement
and Optimization Program shall commence upon the Effective Date of this
Agreement, and unless earlier terminated as provided in this Agreement, shall
expire on the second anniversary thereafter provided, however, that the term
shall be automatically extended for a further one (1) year unless either party
provides written notice sixty (60) days or more prior to such second anniversary
canceling such extension. Unless terminated early pursuant to Section 8.2 below,
the Optimization Period may be renewed for additional periods upon mutual
agreement of the Parties; provided that neither Party shall be obligated to
approve any such renewal.
8.2 Termination by ICOS. ICOS may terminate this Agreement
effective at any time after the first anniversary of the Effective Date, in its
sole discretion, upon [ * ] prior written notice.
8.3 Termination by ICOS or Array. If either Party materially
breaches this Agreement and fails to remedy that breach within [ * ] days of
receiving written notice thereof from the other Party, or makes an assignment of
substantially all of its assets for the benefit of its creditors or goes into
liquidation, insolvency, bankruptcy, receivership or reorganization proceedings,
whether voluntarily or compulsorily which is not dismissed by a court of
competent jurisdiction within [ * ] days, then the other Party may at any time,
by notice in writing or by telefax, terminate this Agreement and the
Optimization Program. Within [ * ] days following termination for the
Optimization Program and/or research related to any Optimization Target under
this Agreement, Array shall prepare a detailed, final written report to ICOS,
and provide any remaining supply of Optimization Compounds in synthesis to date,
for each Target or part of the Optimization Program being terminated.
8.4 Effect of Termination on Licensees. In the event of any
termination of this Agreement pursuant to Section 8.3 where such termination
shall not have been caused by the action or inaction on the part of any
respective licensee of ICOS or Array, or by any breach by such licensee of its
obligations under its license from ICOS or Array, as appropriate, such
termination of this Agreement shall be without prejudice to the rights of each
non-breaching licensee and such licensee shall be deemed to be a direct licensee
hereunder; provided that such licensee agrees in writing to be bound by the
applicable provisions of this Agreement, including, without limitation, the
payment of milestone payments pursuant to Section 6.2.
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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9. CONFIDENTIAL INFORMATION
9.1 Nondisclosure. During the term of this Agreement and for a
period of [ * ] years after termination or expiration thereof, each Party (the
"Receiving Party") will maintain all Confidential Information received from the
other Party (the "Disclosing Party") in trust and confidence and will not
disclose any such Confidential Information to any Third Party or use any such
Confidential Information for any purpose except (i) as expressly authorized by
this Agreement, (ii) as required by law or court order, after as much advance
notice as is practical to the Disclosing Party, (iii) to its consultants,
subcontractors, agents or financing sources who need to know and who are bound
by equivalent written confidentiality obligations. The Receiving Party will use
at least the same standard of care as it uses to protect proprietary or
confidential information of its own to ensure that its Affiliates, employees,
agents, consultants and other representatives do not disclose or make any
unauthorized use of the Confidential Information of the Disclosing Party. The
Receiving Party will promptly notify the Disclosing Party upon discovery of any
unauthorized use or disclosure of the Disclosing Party's Confidential
Information.
9.2 Exceptions. Confidential Information shall not include any
information which the Receiving Party can prove by competent evidence: (a) is
now, or hereafter becomes, through no act or failure to act on the part of the
Receiving Party, generally known or available; (b) is known by the Receiving
Party at the time of receiving such information, as evidenced by its written
records; (c) is hereafter disclosed to the Receiving Party by a Third Party, as
a matter of right and without restriction on disclosure; (d) is independently
developed by the Receiving Party without the aid, application or use of
Confidential Information of the Disclosing Party; or (e) is the subject of a
written permission to disclose provided by the Disclosing Party.
10. PUBLICATIONS AND PUBLIC STATEMENTS
10.1 Publications. ICOS and Array will treat matters of
authorship of scientific abstracts, manuscripts or publications in a proper
collaborative spirit, giving credit where it is due. Without affecting
obligations under Section 9 above, Array shall not publish any information with
respect to Optimization Compounds or Derivatives during the Exclusivity Period
without the prior written permission of ICOS. ICOS agrees to provide to Array,
on a Confidential Basis, any publication, except patent prosecution documents
with respect to Optimization Compounds at least two (2) weeks prior to
submission for publication during the Exclusivity Period.
10.2 Public Statements. Neither Party shall use the name of
the other Party in any public statement, prospectus, annual report or press
release or other public communication (collectively "Public Statements") (except
to the extent that use of the name is required for disclosure by the SEC rules
or other government rules or regulations) without the prior written approval of
the other Party, which may not be unreasonably withheld or delayed; provided,
however, that both Parties shall endeavor in good faith to give the other Party
a minimum of two (2) business days to review such Public Statements; provided,
further, that, upon approval of any such Public Statement, both Parties may
disclose to Third Parties the information contained in such Public Statement
without the further approval of the other; and provided, further, that if a
Party
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does not approve such Public Statement, either Party may still use the name of
the other Party in any Public Statement without the prior written approval of
the other Party, if such Party is advised by counsel that such disclosure is
required to comply with applicable law.
11. INDEMNIFICATION
11.1 Product Liability. ICOS hereby agrees to save, defend and
hold Array and its officers, directors, employees, consultants, and agents
harmless from and against any and all suits, claims, actions, demands,
liabilities, expenses and losses, including reasonable legal expenses and
attorneys' fees ("Losses") resulting directly or indirectly from any claim
alleging physical injury or death or otherwise arising out of the
administration, utilization and/or ingestion of Optimization Compounds or
Products manufactured, used or sold by or under the authority of ICOS, its
Affiliates or licensees except to the extent such Losses result from the
negligence (whether active, passive or imputed), breach of this Agreement or
willful misconduct of Array.
11.2 Procedures. If Array (the "Indemnified Party") seeks
indemnification under this Section 11, it shall inform ICOS (the "Indemnifying
Party") of a claim as soon as reasonably practicable after it receives notice of
the claim, shall permit the Indemnifying Party to assume direction and control
of the defense of the claim (including the right to settle any claim brought
against the Indemnified Party upon prior written consent, which shall not be
unreasonably withheld), and shall give reasonable cooperation (at the expense of
the Indemnifying Party) in the defense of such claim.
12. ASSIGNABILITY
12.1 Generally. This Agreement may not be assigned by either
Party without the prior written consent of the other Party, and which shall not
to be unreasonably withheld; provided, however, that either Party may assign
this Agreement, in whole or in part, to an Affiliate or to a successor of a
Party in connection with the merger, consolidation or sale of all or
substantially all of such Party's assets or that portion of its business
pertaining to the subject matter of this Agreement (and upon doing so will
promptly notify the other Party in writing) (each such transaction being
referred to as an "Acquisition"); provided that the assigning Party remains
fully liable as obligated hereunder.
12.2 Technology of Acquirer. In the event of an Acquisition,
it is understood and agreed that no intellectual property rights or technology
of the acquirer shall be included within the subject matter licensed hereunder,
to the extent that such intellectual property or technology was owned or
controlled by the acquirer as of the date of the Acquisition, or was created or
obtained after the date of the Acquisition other than by employees of Array in
the course of performing the Optimization Program.
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13. DISPUTE RESOLUTION PROCEDURES
13.1 Senior Executives Discussions. If a dispute arises
between Array and ICOS or with respect to matters other than the management of
the Optimization Program, either during or after the Optimization Period, such
dispute will be referred to the appropriate senior management in the area of the
dispute. If such senior management are unable to resolve such dispute, such
dispute will be referred to the Executive Vice President of Operations of ICOS
and the Chief Operating Officer of Array
13.2 Injunctive Relief. Nothing contained in this Section 13
or any other provisions of this Agreement shall be construed to limit or
preclude a Party from bringing any action in any court of competent jurisdiction
for injunctive or other relief or to compel the other Party to comply with its
obligations hereunder.
14. NOTICES
Any notice required or permitted to be given hereunder shall
be deemed sufficient if sent by facsimile letter or overnight courier, or
delivered by hand to ICOS or Array at the respective addresses and facsimile
numbers as set forth below or at such other address and facsimile number as
either Party hereto may designate. If sent by facsimile letter, notice shall be
deemed given when the transmission is completed if the sender has a confirmed
transmission report. If a confirmed transmission report does not exist, then the
notice will be deemed given when the notice is actually received by the person
to whom it is sent. If delivered by overnight courier, notice shall be deemed
given when it has been signed for. If delivered by hand, notice shall be deemed
given when received.
if to Array, to: Array BioPharma Corporation
0000 00xx Xxxxxx
Xxxxxxx, Xxxxxxxx 00000
if to ICOS, to: ICOS Corporation
00000 00xx Xxxxxx, X.X.
Xxxxxxx, Xxxxxxxxxx 00000
Attention: Legal Department
Fax number: (000) 000-0000
15 SURVIVAL
The provisions of Sections 4.1, 4.3, 5.1, 5.2, 5.3, 6.2, 6.4, 7.1, 7.2,
7.3, 8.4, 9, 10, 11, 12, and 15 shall survive the expiration and any termination
of this Agreement. In addition, Section l shall survive the expiration or any
termination of this Agreement to the extent necessary to define terms in any
other surviving Section. Notwithstanding the foregoing if Array terminates this
Agreement under Section 8.3 then Section 7.1 shall not survive such termination
by Array.
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16. ADDITIONAL TERMS
16.1 Entire Agreement. This Agreement constitutes the entire
understanding between the Parties with respect to the subject matter hereto and
supersedes and replaces all previous negotiations, understandings,
representations, writings and contract provisions and rights relating hereof.
16.2 Amendment; No Waiver. No provision of this Agreement may be
amended except to the extent expressly allowed herein, revoked or waived except
by a writing signed and delivered by an authorized officer of each Party. Any
waiver on the part of either Party of any breach or any right or interest
hereunder shall not imply the waiver of any subsequent breach or waiver of any
other right or interest.
16.3 Validity. The invalidity or unenforceability of any provision of
this Agreement shall not affect the validity or enforceability of any other
provision of this Agreement, each of which shall remain in full force and
effect.
16.4 Headings. The descriptive headings and numberings are inserted
for convenience of reference only and are not intended to be part of or to
affect the meaning of or interpretation of this Agreement.
16.5 Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, and all of which
together shall be deemed to be one and the same instrument.
16.6 Governing Law. This Agreement shall be governed by and construed
and enforced in accordance with the laws of the State of Washington, without
regard to conflicts of laws and principles.
16.7 Further Assurances. At any time and from time to time after the
Effective Date, the Parties shall each do, execute, acknowledge and deliver, and
cause to be done, executed, acknowledged or delivered, all such further acts,
transfers, conveyances, or assignments as may be reasonably required to carry
out the transactions contemplated by this Agreement.
17. REPRESENTATIONS AND WARRANTIES
17.1 Authorization. All action on the part of each of Array, ICOS and
their respective officers, and directors necessary for the authorization,
execution and delivery of this Agreement and the performance of all obligations
of Array and ICOS, respectively, hereunder has been taken.
17.2 Rights to Intellectual Property. Each Party warrants that it has
the power to grant all of the rights granted and make such required assignments,
and to assume all of the obligations required, under this Agreement.
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17.3 Disclaimer of Warranties. EXCEPT AS OTHERWISE EXPLICITLY PROVIDED
IN THIS SECTION 17, ARRAY AND ICOS EXPRESSLY DISCLAIM ANY WARRANTIES OR
CONDITIONS, EXPRESS, IMPLIED, STATUTORY OR OTHERWISE, WITH RESPECT TO THE
OPTIMIZATION PROGRAM, OPTIMIZATION COMPOUNDS, DERIVATIVES, PRODUCTS, ARRAY
TECHNOLOGY, ARRAY PATENTS OR OPTIMIZATION PATENTS, INCLUDING, WITHOUT
LIMITATION, ANY WARRANTY OF MERCHANTABILITY, NON-INFRINGEMENT, OR FITNESS FOR A
PARTICULAR PURPOSE.
IN WITNESS WHEREOF, the parties have executed this Agreement to be
effective as of the Effective Date.
ARRAY BIOPHARMA, INC. ICOS CORPORATION
By: /s/ Xxxxx Xxxxxxx, Ph. D. By: /s/ W. Xxxxxxx Xxxxxxxx, Ph. D.
------------------------------------ -------------------------------
Xxxxx Xxxxxxx, Ph.X. X. Xxxxxxx Xxxxxxxx, Ph.D.
V. P. of Business Development Vice President, Scientific
Director and Chief Operating Officer Director
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APPENDIX A
Milestones and Payments
(in U.S. Dollars)
[ * ]
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APPENDIX B
Optimization Targets
[ * ]
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
17
