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EXHIBIT 10.41
CONFIDENTIAL TREATMENT REQUESTED
by LXR Biotechnology Inc.
located at 0000 Xxxxxx Xxx Xxxxx
Xxxxxxxx, Xxxxxxxxxx 00000
RESEARCH & DEVELOPMENT AGREEMENT
THIS AGREEMENT is made the 18th day of April, 1997 ("Agreement Date")
BETWEEN:
1 Full Name: Oxford Asymmetry Limited
Address: 000 Xxxxxx Xxxx, Xxxxxxxx, Xxxxxxxxxxx XX00 0XX,
Xxxxxx Xxxxxxx
Telephone: x00 0000 000000, Fax: x00 0000 000000
("OA"); and
2 Full Name: LXR Biotechnology Inc.
Address: 0000 Xxxxxx Xxx Xxxxx, Xxxxxxxx, Xxxxxxxxxx
00000-0000, XXX
Telephone: x0 000 000 0000, Fax: x0 000 000 0000
("LXR")
WHEREAS, OA is a company with expertise in the field of research and development
into novel methods to synthesize sophisticated organic chemical compounds; and
WHEREAS, LXR desires to obtain the benefit of OA's expertise in order to develop
analogues of [**] and develop chemical libraries.
OA and LXR hereby agree as follows:
1. DEFINITIONS
In this Agreement the following expressions shall have the following
meanings:
1.1 "Agreement" means this Research and Development Agreement
together with the Research Programme in Appendix A ("Research
Programme") and the Payment Schedule in Appendix B ("Payment
Schedule").
1.2 "Services" means the services to be carried out by OA under
the Research Plan as described in the Research Programme.
1.3 "OA's Personnel" means OA's directors and employees and any
other persons engaged upon the Research Programme under the
direction of OA.
1.4 "LXR's Personnel" means LXR's directors and employees and any
other person under the direction of LXR having access to the
substance and results of the Research Programme.
1.5 "Confidential Information" has the meaning given to it in
clause 7.1 of this Agreement.
1.6 "Technical Information" has the meaning given to it in clause
7.3 of this Agreement.
1.7 "Intellectual Property Rights" means patents, patent
applications, copyright, know how and other intellectual
property rights.
1.8 "Specifications" means the specifications, if any, identified
in the Research Programme.
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1.9 "Product" means any product to be manufactured or produced by
OA for LXR as set out in the Research Programme.
1.10 "Parties" means OA and LXR.
1.11 The "LXR Dedicated Team" means the two Ph.D.'s and one
technician at Oxford Asymmetry dedicated to providing the
Services. The composition of the LXR Dedicated Team may be
altered by written agreement between the Parties provided the
resulting cost is the monetary equivalent of the original LXR
Dedicated Team.
1.12 "Field of Use" means human pharmaceutical applications.
1.13 "Affiliates" means (a) any company or other legal entity which
directly or indirectly controls the party concerned and (b)
any company or other legal entity which is directly or
indirectly controlled by a company or other legal entity
referred to in (a) above.
2. THE SERVICES
2.1 OA shall provide the Services and LXR shall pay to OA the
payments specified in Appendix B and any royalties pursuant to
clause 5.2 subject to the provisions of this Agreement.
2.2 LXR shall use its reasonable endeavours to deliver the Initial
Data specified in the Research Programme to OA by 21st April
1997.
2.3 OA shall use its reasonable endeavours to:-
(i) commence the Services on or before 21st April 1997;
and
(ii) complete the Services on or before 20 April 1998.
2.4 OA shall ensure that OA's Personnel exercise all reasonable
skill, care and diligence in the performance of the Services,
and will comply with all applicable laws and regulations.
2.5 OA shall ensure that all OA's Personnel involved with the
Services are technically competent and suitably qualified to
carry out the parts of the Services assigned to them.
2.6 OA shall appoint Dr. Xxxx Xxxxxx as Programme Manager together
with the LXR Dedicated Team and LXR shall appoint Xx. Xxxxxx
Xxxxxxx as Designated Supervisor for the Research Programme.
The Programme Manager and the Designated Supervisor shall be
the principal point of contact between the parties for all
matters relating to this Agreement. OA may change the
Programme Manager and the LXR Dedicated Team and LXR may
change the Designated Supervisor by giving notice in writing
to the other party.
2.7 No variation to the Services shall be made without the written
agreement of the duly authorized representative of each Party
to such variation.
3. INFORMATION AND REPORTS
3.1 OA shall keep LXR fully informed of the progress of the
Services by providing progress reports to the Designated
Supervisor at the end of each month until the Services are
completed.
3.2 OA shall ensure the Programme Manager is reasonably available
for telephone and face-to-face discussions with LXR's
Personnel. If LXR requests the LXR Dedicated Team to attend
any meetings other than those on OA premises, in addition to
those sums specified in Appendix B, OA shall be reimbursed for
reasonable travel expenses. If LXR requests OA Personnel other
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than the LXR Dedicated Team to attend meetings other than
those on OA premises, OA shall be reimbursed for reasonable
travel expenses and be paid at OA's standard time charge rates
for such expenses incurred and time spent by OA Personnel
attending any such meetings.
4. INVOICES AND PAYMENT
4.1 When due, OA shall submit an invoice to LXR for each of the
payments in accordance with Appendix B together with such
documentary substantiation as LXR may reasonably request.
4.2 LXR shall pay OA's invoices within 30 days of invoice date.
4.3 In the event that LXR fails to pay OA's invoices within 30
days of the invoice date OA shall be entitled to suspend
performance of the Services until OA receives the sums due
plus interest at the rate of 1.5% per month or part thereof in
respect of the period by which LXR is late in making payment.
Following suspension of performance of the Services for this
reason OA may vary any subsequent dates in the Research
Programme and/or the date for completion of the Services
specified in clause 2.3.
5. RIGHT TO EXPLOIT THE "PRODUCTS"
5.1 LXR and/or any of its Affiliates shall have the right to
develop and/or patent any Product supplied under this
Agreement (or any analogue or derivative of any Product
conceived as a result of screening or testing a Product) as a
potential product within the Field of Use. In such
circumstances, LXR shall notify OA in writing of its intention
to develop and/or patent such Product (or analogue/derivative
thereof) and the potential application. OA hereby undertakes
to execute and do all things necessary to vest the title and
interest in such Products (together with the Intellectual
Property Rights relating thereto) in LXR.
5.2 In the event that LXR develops any Product (or
analogue/derivative thereof) and a member of OA's Personnel
would be considered as an inventor of the Product (or
analogue/derivative thereof) under the law of inventorship as
set forth under the laws of the United States, LXR shall pay
to OA a royalty on net sales of such Product equal to [**];
provided that such Product (or analogue/derivative thereof) is
patentable and was not claimed in a United States patent
application filed by LXR or its Affiliates with a priority
date on or before April 21, 1997. In the event that the
Product (or analogue/derivative thereof) is not patentable LXR
shall pay to OA a royalty on net sales of such Product equal
to [**]. Such royalties shall be the subject of a definitive
agreement between OA and LXR which will include other clauses
and provisions typical in similar agreements between similar
parties.
5.3 Where OA has Intellectual Property Rights related to the
method of making or the composition of matter of any Product
for which it receives notice under Clause 5.1, OA shall grant
to LXR a license under any such Intellectual Property Rights
owned by OA (and in respect of which OA is free to grant such
license) to the extent that such license is necessary to
enable LXR to make, use, offer to sell, sell or import such
Product (or analogue/derivative thereof).
6. INTELLECTUAL PROPERTY RIGHTS
6.1 It is hereby expressly agreed that the Parties shall each
retain all Intellectual Property Rights relating to the
Products that they respectively hold prior to the date of this
Agreement, including without limitation all patent
applications and other forms of patent protection undertaken
by the Parties in respect of the Products prior to the date of
this Agreement.
6.2 All Intellectual Property Rights relating to the use of the
Products in the Field of Use shall vest in LXR.
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6.3 All Intellectual Property Rights relating to chemical
processes and technology used to synthesize the Products
arising from the performance of the Services shall vest in OA.
6.4 All Intellectual Property Rights relating to composition of
matter and application claims outside the field of human
pharmaceuticals for compounds arising from the performance of
the Services shall be jointly owned by the Parties.
6.5 It is hereby agreed between the parties that if OA or any of
its Affiliates wish to file a patent application in respect of
a Product after the date of this Agreement, OA shall
immediately notify LXR in writing and the Parties shall meet
to discuss the patent protection to be applied for.
6.6 It is hereby further agreed that, unless agreed between the
Parties in writing, LXR shall at its sole option have the
right to patent the Products within the Field of Use.
6.7 OA hereby agrees that it shall take no action (which includes,
for the avoidance of doubt, the filing of any patent
applications in respect of Products provided to LXR under this
Agreement, and which fall within the Field of Use) which would
have the effect of frustrating LXR's ability to develop
Products and apply for patents in the manner contemplated in
Clause 5.1.
6.8 Subject to the agreement of LXR to compensate OA for any loss
arising from the disclosure of any Technical Information which
is valuable for purposes not covered by the royalty
arrangement described in clause 5.2, and which is identified
as such by OA, and which is made public in connection with
this clause, at the written request and expense of LXR, OA
shall, and shall procure that OA's Personnel shall, do all
things reasonably requested by LXR to apply for and obtain
effective patent protection anywhere in the world in respect
of any invention arising from the performance of the Services
including the execution of appropriate documents. For the
avoidance of doubt, LXR shall reimburse OA for all reasonable
costs incurred by OA and shall pay OA at OA's standard time
charge rates for time spent by OA Personnel in complying with
the provisions of this clause.
7. CONFIDENTIAL INFORMATION
7.1 In this Agreement, subject to clause 7.4 below, "Confidential
Information" (whether oral, written or in any other form)
includes but is not limited to:-
(i) any and all information concerning
transactions, dealings, projects, plans,
proposals and other business affairs of LXR
and of OA;
(ii) any and all Technical Information disclosed
by LXR to OA's Personnel;
(iii) any and all Technical Information used in
and/or developed by OA's Personnel in the
course of or in connection with the
Services.
7.2 The Parties shall procure that OA's Personnel and LXR's
Personnel shall:-
(i) not disclose any Confidential Information to
any person other than OA's Personnel and/or
LXR's Personnel who have entered into
legally binding confidentiality obligations
substantially similar in scope to those set
out in this clause 7;
(ii) not use any Confidential Information for any
purpose other than in accordance with this
Agreement; and
(iii) take all reasonable steps necessary to
prevent the unauthorised disclosure
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and/or use of any Confidential Information.
7.3 In this Agreement the expression "Technical Information" shall
include, but not be limited to, improvements, inventions,
developments, techniques, processes, methods, specifications,
procedures, data, results, trade secrets and know-how, all as
the same may be used in and/or arise from the performance of
the Services.
7.4 In this Agreement the expression "Confidential Information"
shall not include any information which:-
(i) is in the public domain other than through
any breach of this Agreement;
(ii) either Party can prove by documentary
evidence was already in the possession of
that Party prior to the date of this
Agreement;
(iii) is the subject of an order to disclose by a
Court having the right and power to make
such an order;
(iv) is received from a third party not under an
obligation of confidentiality to either
Party; or
(v) is required to be disclosed to any
regulatory authority when applying for a
licence to conduct clinical or other trials
or studies or for regulatory, marketing or
pricing approval (provided such disclosure
to any such authority shall be made subject
to conditions of confidentiality no less
onerous that those contained in Clause 7).
7.5 Confidential information exchanged prior to the date of this
Agreement shall be governed by the Non-disclosure Agreement
entered into between LXR and OA on November 25, 1996.
8. WARRANTIES, INDEMNITIES AND EXCLUSION OF LIABILITY
8.1 WARRANTIES
LXR warrants that it has disclosed to OA all information which
is known to LXR and which is relevant to the Research
Programme including but not limited to any actual or potential
health and safety hazards.
8.2 INDEMNITIES
8.2.1 LXR shall fully indemnify, and keep fully indemnified,
OA against any and all losses, costs and/or expenses
(including without limitation legal costs and
expenses) incurred by OA which arise directly out of
any claim or allegation that performance of the
Services constitutes infringement of any third party
intellectual property rights.
8.3 EXCLUSION OF LIABILITY
8.3.1 In addition to any express warranties and/or
indemnities given by OA in this Agreement and/or its
liability to perform its obligations under this
Agreement, OA shall, subject to the normal rules
concerning remoteness of damage, only be responsible
for:
(i) liability for death or personal injury
caused by OA or its employees when providing
the Services if it is established that such
death or personal injury has arisen as a
direct result of the negligence of OA or its
employees;
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(ii) liability for damage to tangible physical
property caused by OA or its employees when
providing the Services if it is established
that such damage to property has arisen as a
direct result of the negligence of OA or its
employees to a maximum of pound sterling
1,000,000 per claim or series of claims.
8.3.2 In any event, OA's liability under or in connection
with this Agreement, whether in contract tort or
other wise (except as provided in sub clause 8.3.1
above), shall not exceed the total of the sums paid
by LXR under this Agreement up to the date of the
claim.
8.3.3 The express terms of this Agreement are in lieu of
all warranties, conditions, terms, undertakings and
obligations implied by statute, common law, custom,
trade usage, course of dealing or otherwise, all of
which are hereby excluded to the fullest extent
permitted by law, and, in any event, OA shall have no
liability under or in connection with this Agreement
for indirect, special or consequential losses, wasted
or lost management time or time of other employees or
for loss of profits or contracts.
9. TERMINATION
9.1 TERMINATION EVENTS
9.1.1 Having paid all sums invoiced by OA in accordance
with clause 4 of the Agreement up to the date of
termination LXR shall have the right to terminate the
Research Programme at any time by giving notice in
writing and making a prepayment to OA of an amount
equal to [**]of the next succeeding payment in
accordance with Appendix B not previously invoiced by
OA in accordance with clause 4 of this Agreement and
[**]of all subsequent payments listed in Appendix B.
9.1.2 If either Party shall be in breach of any of the
provisions of this Agreement, and should such breach
continue for 60 days after the same shall have been
notified to the Party in breach then the other Party
may at its option terminate this Agreement or suspend
the performance of its obligations under this
Agreement by giving the Party in breach immediate
notice of termination or suspension. Suspension by
one Party of performance shall not preclude such
Party later terminating this Agreement pursuant to
this Clause 9.1.2.
9.1.3 In the event that:-
i) either Party becomes insolvent, or an order
is made or a resolution passed for the
winding up of either party other than for
the purposes of a solvent scheme of
reconstruction or amalgamation or internal
reorganisation; or
ii) an administrator, administrative receiver or
receiver is appointed in respect of either
Party's assets and/or business; or
iii) as a result of financial difficulties either
party makes any voluntary arrangement with
its creditors; or
iv) as a consequence of debt and/or
maladministration, either Party takes or
suffers any similar or analogous action to
those listed in i), ii) or iii) above.
then the other Party shall be entitled to
terminate this Agreement by giving
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immediate written notice of termination.
9.2 CONSEQUENCES OF TERMINATION
9.2.1 Termination shall be without prejudice to any other
right or remedy the Parties may have arising on or
before the date of termination
9.2.2 Following termination of this Agreement clauses 1,
4.2, 5, 6, 7, 8, 11.2,11.3,11.4,11.5,11.6,11.7
and11.8 shall remain in full force and effect.
9.2.3 Following termination of this Agreement in accordance
with 9.1.1 or in accordance with 9.1.2 and 9.1.3 when
LXR is in default OA's obligations under clauses 5,
6.2, 6.4, 6.5, 6.6, 6.7 and 6.8 shall cease.
10. FORCE MAJEURE
10.1 If either Party is affected by any circumstances beyond its
reasonable control (including, without limitation, any strike,
lock out or other form of industrial action) it shall
forthwith notify the other Party of the nature and extent
thereof.
10.2 Neither Party shall be deemed to be in breach of this
Agreement, or otherwise be liable to the other, by reason of
any delay in performance, or non-performance, of any of its
obligations hereunder to the extent that such delay or
non-performance is due to any such circumstance as is
described in sub-clause 1 of this clause of which it has
notified the other Party; and the time for performance of that
obligation shall be extended accordingly.
10.3 If any of the circumstances described in sub-clause 1 of this
clause notified as aforesaid prevails for a continuous period
in excess of six months, the Parties hereto shall enter into
bona fide discussions with a view to alleviating its effects,
or to agreeing upon such alternative arrangements as may be
fair and reasonable in all the circumstances.
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11.1 ASSIGNMENT AND SUB-CONTRACTING
11.1.1 LXR shall have the right to assign all of its rights
and obligations under this Agreement, provided that
it gives advance written notice to OA.
11.1.2 This Agreement is personal to OA. OA shall not assign
or sub-contract any or any part of its obligations
under this Agreement without the prior written
consent of LXR.
11.2 RELATIONSHIP OF THE PARTIES
Nothing in this Agreement shall create, evidence or imply any
agency, partnership or joint venture between the Parties.
Neither Party shall act or describe itself as the agent of the
other Party nor shall it represent that it has authority to
make commitments on behalf of the other Party.
11.3 WAIVER
Failure or delay by either Party to exercise any right or
remedy under this Agreement shall not
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be deemed to be a waiver of that right or remedy, or prevent
it from exercising that or any other right or remedy on that
occasion or on any other occasion.
11.4 SEVERANCE
If any provision of this Agreement is found by a court or
other competent authority to be void and/or unenforceable such
provision shall be deemed to be deleted from this Agreement
and the remaining provisions of this Agreement shall continue
in full force and effect. The Parties shall attempt to
substitute for any invalid or unenforceable provision a valid
and enforceable provision which achieves to the greatest
extent possible the economic, legal and commercial objectives
of the invalid or unenforceable provision.
11.5 CLAUSE HEADINGS
The headings used in this Agreement are for convenience only
and shall not affect its interpretation.
11.6 ENTIRE AGREEMENT AND AMENDMENTS
This Agreement constitutes the entire agreement and
understanding of the Parties relating to the subject matter of
this Agreement and supersedes all prior oral and written
agreements, understandings or arrangements between them
relating to such subject matter. The Parties acknowledge that
they are not relying on any agreement, understanding,
arrangement, warranty representative or term which is not set
out in this Agreement. No variation, amendment, modification
or supplement to this Agreement shall be valid unless made in
writing and signed by the duly authorised representative of
each Party.
11.7 NOTICES
Any notice given under this Agreement shall be in writing and
shall be sent (1) by pre-paid first class post or (2) by fax
confirmed by pre-paid first class post to the address set out
in this Agreement or to such other address as may from time to
time be notified to the Party giving notice by the other
Party. Such notice shall be deemed to have been received:
11.7.1 in the case of first class pre-paid post, on the
fifth day following the day of posting; or
11.7.2 in the case of facsimile, on acknowledgement by the
recipient facsimile receiving equipment on a business
day provided that such acknowledgement occurs before
17.00 hours local time of the recipient on the
business day of acknowledgement and in any other case
on the business day next following the business day
of acknowledgement.
11.8. GOVERNING LAW AND DISPUTES
The construction validity and performance of this Agreement
shall be governed in all respects by English Law and each
Party hereby submits to the exclusive jurisdiction of the
English Courts.
11.9 COUNTERPARTS
This Agreement may be executed in any number of counterparts and by the
different Parties hereto by separate counterparts, each of which when
so executed shall be an original, and all of which shall constitute one
and the same instrument.
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11.10 COSTS
Each Party shall bear its own legal costs, legal fees, and
other expenses incurred in the preparation and execution of
the Agreement.
SIGNED for and on behalf of OA by: /s/ Xxxxx Xxxxx
-----------------------
Dr. Xxxxx Xxxxx
Managing Director
SIGNED for and on behalf of LXR by: /s/ L. Xxxxx Xxxxx
-----------------------
Dr. L. Xxxxx Xxxxx
Chief Executive Officer
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RESEARCH PROGRAMME
(Appendix A to Research And Development Agreement)
Contents:-
. [**]
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PAYMENT SCHEDULE
(Appendix B to Research And Development Agreement)
Payments become due on the following dates:
April 21, 1997 $162,500
July 21, 1997 $162,500
January 2, 1998 $162,500
February 2, 1998 $162,500
