CuraGen Corporation has omitted from this Exhibit 10.21 portions of the
Agreement for which CuraGen Corporation has requested confidential treatment
from the Securities and Exchange Commission. The portions of the Agreement for
which confidential treatment has been requested are marked with X's in brackets
and such confidential portions have been filed separately with the Securities
and Exchange Commission.
Exhibit 10.21
CURAGEN-GLAXO WELLCOME PHARMACOGENOMICS RESEARCH and LICENSE AGREEMENT
Effective as of the date of complete mutual execution of this document, (the
"Effective Date"), GlaxoWellcome, Inc., having an address of Five Xxxxx Drive,
PO Box 13398, Research Triangle Park, North Carolina 27709-3398, U.S.A., ("GW"),
and CuraGen Corporation, having an address of 000 Xxxx Xxxxx Xxxxx, 00xx Xxxxx,
Xxx Xxxxx, Xxxxxxxxxxx 00000, ("CURAGEN") agree as follows:
ARTICLE I
BACKGROUND
1.00 CURAGEN has developed and represents that it is the sole owner of
functional genomics technologies known as Quantitative Expression Analysis
technology, GeneScape(R) software, GeneCalling(R) bioinformatics software, and
the Rodent SeqCalling(TM) database. CURAGEN offers a Pharmacogenomics Program
that includes GeneScape(R), GeneCalling(R) and CuraShop(TM). CURAGEN also offers
a Subscription Program that includes the Rodent SeqCalling(TM) database.
Collectively, the Pharmacogenomics Program and the Subscription Program are
offered as the Pharmacogenomics Collaboration.
1.01 GW and CURAGEN wish to initiate the performance of such Pharmacogenomics
Collaboration in order to enable and expedite the discovery of information and
the development of novel and improved pharmaceutical and diagnostic products.
-1-
1.02 GW wishes to obtain certain commercial rights to inventions made in the
performance of the Pharmacogenomics Collaboration pursuant to this Agreement,
including background inventions needed to commercially benefit from such
licenses.
1.03 Therefore, this Agreement witnesses that in consideration of the mutual
covenants, terms and conditions set forth in this Agreement and other good and
valuable consideration, the receipt and sufficiency of which is acknowledged,
that the Parties agree as follows.
ARTICLE II
DEFINITIONS
2.00 Terms used in this Agreement (other than the names of parties and article
headings) that are set forth with an initial capital letter have the meanings
established for such terms in the succeeding paragraphs of this Article II, or
as otherwise specifically defined hereinafter.
2.01 "Affiliate" shall mean any person, 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" or "Controlled" 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, or the
ability to cause the direction of the management or policies of a corporation or
other entity.
2.02 "Confidential Information" shall be interpreted in accordance with the
provisions of Article V, below.
2.03 "GW Product(s)" shall mean
2
(a) "Human Therapeutic(s)", which shall include all therapeutic
modalities, including but not limited to small molecules, vaccines,
aptamers, antisense, oligonucleotides, gene therapies and monoclonal
antibodies that are discovered, developed and/or optimized using:
(i) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXX.]
Notwithstanding any provision in this Section, Human Therapeutics
shall not include Protein Therapeutic Products.
(b) "GW Diagnostic Product(s)", which shall mean products that are used or
sold for diagnostic purposes, including patient selection, disease
and/or predisposition to disease identification, and treatment
guidance and/or monitoring,
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
2.04 "Proprietary Material" shall mean samples provided by GW to CURAGEN for
the purposes of performing the Pharmacogenomics Program and shall also be deemed
to include the [XXXXXXX] and other substances actually contained in such
samples.
2.05 "CURAGEN Background Inventions" shall mean all patent rights and know-how
of CURAGEN which would be infringed by GW's development, manufacture, use, sale
or importation of a GW Product. Specifically excluded from CURAGEN Background
Inventions
3
are patent rights and know-how which cover the making, using or selling of a
product for which CURAGEN has pre-clinical data prior to GW's request to license
such patent rights and know-how.
2.06 "CURAGEN Product(s)" shall mean all products or uses not identified as GW
Products, including but not limited to:
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
2.07 "CURAGEN Proprietary Material" shall mean all substances made by CURAGEN
in the performance of the Pharmacogenomics Program other than mRNA pools
extracted from GW Proprietary Material.
2.08 "Data Exclusivity Period" shall, with respect to any particular Project
Data Set, mean one of three (3) defined periods as follows:
(a) "Primary Data Exclusivity Period" shall mean a [XXXX] period of time
commencing on the first day of the calendar quarter following the
calendar quarter in which the particular Project Data Set is completed
pursuant to 3.01(c), during which time, GW shall have exclusive access
to such Project Data Set;
(b) "Extended Data Exclusivity Period" shall mean a [XXXXXXX] extension of
the Primary Data Exclusivity Period, during which time, GW shall have
exclusive access to such Project Data Set; and
(c) "[XXXXXX] Data Exclusivity Period" shall mean the extension of an
Extended Data Exclusivity Period [XXXXXX], during which time, GW shall
have exclusive access to such Project Data Set.
4
2.09 "FTE" is an acronym that stands for Full Time Equivalent, which shall mean
the equivalent of a full year of effort on a full time basis of a researcher
possessing skills and experience necessary to carry out applicable tasks under
the Pharmacogenomics Program.
2.10 "Material or Materiality" shall mean a use or usage that is so essential
to the conduct of an experiment that the experiment would not have been done
without such use.
2.11 "Net Sales" shall mean
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX.]
2.12 "Party or Parties" shall respectively refer to GW and CURAGEN.
2.13 "Patent Rights" means the rights and interests in and to issued patents
and pending patent applications without limitation to any country, including,
but not limited to, all provisional applications, substitutions, continuations,
continuations-in-part, divisions, and renewals, all letters patent granted
thereon, and all reissues, reexaminations and extensions thereof, whether owned
solely or jointly by a Party or licensed in by a Party, with the right to
sublicense, now or in the future, wherein at least one claim of such patent
right is to a Pharmacogenomics Project Invention.
2.14 "Project Data" shall mean all data and any other information obtained or
generated by CURAGEN in the performance of a Pharmacogenomics Project in the
Pharmacogenomics Program.
2.15 "Project Data Set" shall mean all Project Data resulting from a discrete
Pharmacogenomics Project.
5
2.16 "Joint Planning Committee" or "JPC" shall have the meaning set forth in
Article III.
2.17 "Pharmacogenomics Plan" shall mean the written description of the research
to be performed by CURAGEN and GW under this Agreement, as presented in the form
shown in GeneScape(R).
2.18 "Pharmacogenomics Project" shall mean (i) a particular project to process
and analyze a specified set of samples as anticipated in a Pharmacogenomics
Plan, or (ii) any other project mutually agreed to by the JPC.
2.19 "Pharmacogenomics Project Invention" shall mean any discovery, invention,
know-how or trade secret conceived or made by employees of CURAGEN or GW or
jointly by employees of both, (i) in the performance of a Pharmacogenomics
Project hereunder, or in the course of evaluating or utilizing any Project Data
Sets; or (ii) as the result of access to Subscription Database Data, in each
case that is based on, incorporates or makes Material inventive use of the
corresponding Project Data Set or Subscription Database Data.
2.20 "Pharmacogenomics Program" shall mean the collection of Pharmacogenomics
Projects to be performed by CURAGEN under this Agreement as described in the
Pharmacogenomics Plan and amendments thereto.
2.21 "Pharmacogenomics Collaboration" shall mean, collectively, the
Pharmacogenomics Program and, if applicable, the Subscription Program.
2.22 "Pharmacogenomics Collaboration Term" shall have the meaning set forth in
Article III.
2.23 "Subscription Program" shall mean the access to CURAGEN's proprietary
databases under this Agreement.
2.24 "Subscription DataBase" shall mean CURAGEN's Rodent SeqCalling(TM)
database.
2.25 "Subscription DataBase Data" shall mean all data in the Subscription
DataBase.
6
2.26 "License Term" shall have the meaning set forth in Article VIII.
2.27 "Territory" shall mean all countries of the world.
2.28 "Valid Claim(s)" shall mean an unexpired claim of (i) any issued patent
within Patent Rights which has not been finally declared invalid or
unenforceable by a patent office or by a court or other body of competent
jurisdiction in any unappealed or unappealable decision and which has not been
lost through an interference or opposition proceeding or (ii) any pending patent
application within Patent Rights which has not been finally rejected by a patent
office of competent jurisdiction in any unappealed or unappealable decision and
which has not been pending for more than seven (7) years.
ARTICLE III
RESEARCH PROGRAM
3.00 Basic Provisions of the Pharmacogenomics Collaboration.
------------------------------------------------------
(a) The objective of the Pharmacogenomics Program will be for CURAGEN to
generate and deliver to GW Project Data Sets by performing
Pharmacogenomics Projects. CURAGEN shall use commercially reasonable
efforts to perform such tasks as are set forth in the Pharmacogenomics
Plan. CURAGEN shall devote an average of at least [XXXX] FTEs per
year to the Pharmacogenomics Program over its duration (the "Staffing
Level") unless GW and CURAGEN have agreed on a change in the Staffing
Level as provided in (b) below;
(b) GW may request an increase in the Staffing Level of up to a of total
[XXXXX] additional FTEs during the first three (3) years of this
Agreement [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] to be devoted to the
Pharmacogenomics Program, subject to the agreement of CURAGEN.
CURAGEN will use commercially reasonable efforts to increase the
staffing level to be effective at the semi-annual anniversary of the
Effective Date following such
7
a request. Once the Staffing Level is increased, it may not be
decreased during the following [XXXXXX] period without the consent of
CURAGEN; and
(c) The objective of the Subscription Program will be for CURAGEN to use
commercially reasonable efforts to provide GW with access to the
Subscription Database.
3.01 Collaborative Efforts and Reports.
---------------------------------
(a) The Parties agree that the successful execution of the
Pharmacogenomics Program will require the collaborative use of both
Parties' areas of expertise. The Parties shall keep the JPC fully
informed about the status of the portions of the Pharmacogenomics
Collaboration they respectively perform. In particular, without
limitation, each Party shall furnish to the JPC quarterly written
reports within thirty (30) days after the end of each quarterly
period, describing the progress of its activities in reasonable
detail, including (I) a summary of the progress of any ongoing
Pharmacogenomics Projects, (II) a summary of uses of Project Data and
Subscription DataBase Data, including but not limited to
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX], and (III) a
description of Project Data Sets from completed Pharmacogenomics
Projects. At any time, upon the reasonable request of GW, CURAGEN
will provide an update of the status of Pharmacogenomics Projects to
GW;
(b) Scientists at CURAGEN and GW shall cooperate in the performance of the
Pharmacogenomics Program and, subject to any confidentiality
obligations to third parties, shall exchange information and materials
(including GW Proprietary Material) as necessary to carry out the
Pharmacogenomics Program. Each Party will attempt to accommodate any
reasonable request of the other Party to send or receive personnel for
purposes of collaborating or exchanging information under the
Pharmacogenomics Program. Such visits and/or access will have defined
8
purposes and be scheduled in advance. The requesting Party will bear
the reasonable travel and lodging costs of any such personnel;
(c) CURAGEN will give written notice to GW and the JPC upon Completion of
the Project Data Set from each Pharmacogenomics Project. "Completion"
of a Project Data Set shall occur upon [XXXXXXXXXXXX XXXXXX
XXXXXXXXXXXXXXXXX]; and
(d) CURAGEN shall set up and maintain, throughout the Pharmacogenomics
Collaboration Term, a secure partition of its GeneScape(R) database
and software for use by GW exclusively for the purposes of performing
the Pharmacogenomics Collaboration, and shall provide online
electronic mail and telephone help during normal business hours in the
use thereof to GW. CURAGEN and GW shall jointly set up and maintain a
secure connection to said partition of the GeneScape(R) database and
software in order to give GW on-line access thereto. GW shall have no
rights to use the GeneScape(R) and software except as expressly set
forth herein. In the event a dedicated line or lines is or are needed
to provide access, GW shall be responsible for all costs associated
therewith.
3.02 Training. -
--------
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX.]
3.03 Pharmacogenomics Plans. - The Pharmacogenomics Plan for the first six (6)
----------------------
months of the Pharmacogenomics Program shall be agreed upon by the Parties
within thirty (30) days of the Effective Date and shall include the initial
Pharmacogenomics Projects and plans to implement access to the GeneScape(R)
database and software for GW. Every [XXXXX] during the Pharmacogenomics
Collaboration Term [XXXXXXXXXXXXXXXX], the Pharmacogenomics
9
Plan shall be updated by the Parties to cover the next three (3) months and
shall be approved by the JPC no later than thirty (30) days before the end of
each semi-annual period. The Pharmacogenomics Plan shall set forth specific
Pharmacogenomics Projects for the period covered by the Pharmacogenomics Plan.
The JPC will consider adjustments in the Pharmacogenomics Plan at any time upon
the request of GW or CURAGEN.
3.04 Exclusivity.- To the extent consistent with the rights and obligations of
-----------
CURAGEN that are expressly set forth in this Agreement, nothing contained in
this Agreement shall in any other way restrict CURAGEN's right to perform
research or collaborate with third parties and to grant to third parties the
right to exploit the results of any such research or collaborations without
restrictions.
3.05 Joint Planning Committee. - The JPC will be responsible for the planning
------------------------
and monitoring of the Pharmacogenomics Collaboration. In particular, the
activities of the JPC shall include:
(a) Approving Pharmacogenomic Projects and their associated
Pharmacogenomics Plans and establishment of prioritization criteria
for specific Pharmacogenomics Projects, including explicit
determination of experimental initiation and Completion;
(b) Supervision of workflow, including experimental sample transfer,
sample analysis and data quality control, database posting, data
analysis and summarization, software installation (access), training
and maintenance;
(c) Monitoring of sample throughput, specific project and overall
Pharmacogenomics Collaboration progress, including resolving issues
and determining future Pharmacogenomic Plans and timelines;
(d) Ensuring compliance with the terms of the Agreement;
(e) Ensuring timely disclosure of Pharmacogenomics Project Inventions and
the development and implementation of patenting strategies; and
10
(f) Assigning tasks and responsibilities taking into account each Party's
respective specific capabilities and expertise in order in particular
to avoid duplication and enhance efficiency and synergies.
3.06 JPC Membership. - CURAGEN and GW each shall appoint, in their sole
--------------
discretion, three members to the JPC, which shall include a Co-Chair to be
designated by GW and a Co-Chair to be designated by CURAGEN. Substitutes or
alternates for the Co-Chairs or other JPC members may be appointed at any time
by notice in writing to the other Party. The Parties may mutually agree to
change the size of the JPC as long as there shall be an equal number of
representatives of each Party on the JPC. The initial Co-Chairs and other JPC
members shall be designated by the Parties within twenty (20) days of the
Effective Date. CURAGEN shall appoint a Project Coordinator, who shall be
reasonably satisfactory to GW, to serve as the principal liaison with GW for the
Pharmacogenomics Program. Such Project Coordinator will be one of CURAGEN's
members of the JPC.
3.07 JPC Meetings. - The JPC shall meet at least quarterly, with such meetings
------------
to be held, alternately, in New Haven, Connecticut, and GW's RTP facilities
unless the Parties agree otherwise. Any additional meetings shall be held at
places and on dates selected by the Co-Chairs of the JPC. In addition, the JPC
may act without a formal meeting by a written memorandum signed by the Co-Chairs
of the JPC. Whenever any action by the JPC is called for hereunder during a
time period in which the JPC is not scheduled to meet, the Co-Chairs of the JPC
shall cause the JPC to take the action in the requested time period by calling a
special meeting or by action without a meeting. Subject to the obligations set
forth in Article V, representatives of each Party or of its Affiliates, in
addition to the members of the JPC, may attend JPC meetings at the invitation of
either Party with the prior approval of the other Party, which shall not be
unreasonably withheld.
3.08 Minutes of JPC Meetings. - The JPC shall keep accurate minutes of its
-----------------------
deliberations which record all proposed decisions and all actions recommended or
taken. Drafts of the minutes shall be delivered to the Co-Chairs of the JPC
within twenty (20) days after the meeting. The
11
Party hosting the meeting shall be responsible for the preparation and
circulation of the draft minutes. Draft minutes shall be edited by the Co-Chairs
and shall be issued in final form only with their approval and agreement as
evidenced by their signatures on the minutes.
3.09 Quorum; Voting; Decisions. - At each JPC meeting, at least two (2)
-------------------------
member(s) appointed by each Party present in person or by telephone shall
constitute a quorum and decisions shall be made by majority vote. Each JPC
member shall have one vote on all matters before the JPC, provided that the
member or members of each Party present at an JPC meeting shall have the
authority to cast the votes of any of such Party's members on the JPC who are
absent from the meeting. Notwithstanding the foregoing, the objective of the
Parties to this Agreement is that decisions of the JPC shall be made by
consensus. However, except as otherwise set forth herein, in the event that the
JPC is unable to resolve any matter before it as set forth above, such matter
shall be resolved in good faith by GW management.
3.10 Expenses. - CURAGEN and GW shall each bear all expenses of their
--------
respective JPC members related to their participation on the JPC and attendance
at JPC meetings.
3.11 Pharmacogenomics Collaboration Term. - The Pharmacogenomics Collaboration
-----------------------------------
shall expire Five (5) years after the Effective Date unless earlier terminated
by either Party pursuant to the provisions in Article X.
[XXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXX] At expiration, CURAGEN shall deliver to GW all raw and
processed Project Data Sets in an appropriate format to be analyzed by GW
independent of GeneScape(R).
3.12 Primary Exclusivity Period for Project Data Sets. - During the Primary
-------------------------------------------------
Data Exclusivity Period for a particular Project Data Set, GW shall have a
[XXXXXX], exclusive license and access to explore the utility and usefulness of
such Project Data Set in its internal R&D programs for the purpose of pursuing
the development of GW Products . Under such
12
license, CURAGEN and GW: (a) shall not use such Project Data Set for any purpose
other than conducting the Pharmacogenomics Program hereunder and (b) shall keep
such Project Data Set and related Pharmacogenomics Project Inventions and Patent
Rights confidential and will not disclose or transfer the same to third parties
by publication or otherwise, without the prior written consent of the other
Party except as necessary to pursue patent protection. Notwithstanding the above
CURAGEN shall have the right to explore the utility and usefulness of such
Project Data Sets in its internal R&D programs for the purpose of pursuing the
development of CURAGEN Products. CURAGEN shall use efforts no less than what it
uses in the ordinary conduct of its business to limit disclosure of data or
information resulting from CURAGEN's exploration of the Project Data Sets for
its internal R&D programs to the extent that such disclosures might compromise
GW's intellectual property rights.
3.13 Extended Data Exclusivity Period for Project Data Sets. - GW may elect to
---------------------------------------------------------
extend the Primary Data Exclusivity Period for any Project Data Set for an
additional [XXXXXXXXXXX] period ("Extended Data Exclusivity Period") after
expiration of the initial Primary Data Exclusivity Period by giving written
notice to CURAGEN and making a payment of [XXXXXXXXXXXXXXXX] per Project Data
Set to CURAGEN prior to expiration of the then current Primary Data Exclusivity
Period for such Project Data Set or at such time thereafter as mutually agreed
to by the Parties. The obligations under such Extended Data Exclusivity Period
shall be the same as for the Primary Data Exclusivity Period.
3.14 [XXXXX] Exclusivity Period for Project Data Sets. - GW may elect to
------------------------------------------------
extend the Extended Data Exclusivity Period for any Project Data Set [XXXXXXX]
("[XXXX] Data Exclusivity Period") after expiration of the Extended Data
Exclusivity Period by giving written notice to CURAGEN and making a payment of
[XXXXXXXXXXXXXXXXXXX] per Project Data Set to CURAGEN prior to expiration of the
then current Extended Data Exclusivity Period for such Project Data Set or at
such time thereafter as mutually agreed to by the Parties. The obligations
under such [XXXXXXXXX] Data Exclusivity Period shall be the same as for the
Extended Data Exclusivity Period.
13
3.15 Expiration of any Data Exclusivity Period. - Upon the expiration of the
--------------------------------------------
last to expire Data Exclusivity Period for any particular Project Data Set, GW's
access and license to such Project Data Set shall convert from exclusive to non-
exclusive, and CURAGEN shall have the right, at its sole option, to use such
Project Data Sets for any purpose including but not limited to making the data
available to third parties subject to Section 3.16 of this Agreement and any
commercial licenses granted to GW herein, and not inconsistent with any other
obligations expressly set forth in this Agreement.
3.16 Data Annotations. - Should CURAGEN elect to provide Project Data Sets to
----------------
third parties pursuant to 3.15 above, CURAGEN shall not be permitted to identify
the Project Data Set as being from GW or annotate the Project Data Set with the
date of sample submission by GW to CURAGEN. Notwithstanding the above, CURAGEN
shall be free to annotate such Project Data Sets with one or more of the
following descriptors provided by GW:
[XXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXX]
3.17 Subscription Database Data Access. - During the first three years of the
---------------------------------
Pharmacogenomics Collaboration Term, GW shall have [XXXX], non-exclusive access
and license to explore the utility and usefulness of the Subscription Database
Data. Under such license, GW: (a) [XXXXXXXXXXX]; and (b) shall keep such
Subscription Database Data and related Pharmacogenomics Project Inventions and
Patent Rights confidential and will not disclose or transfer the same to third
parties by publication or otherwise, without the prior written consent of
CURAGEN, except as necessary to pursue patent protection.
3.18 Software License. - Access to the GeneScape(R) database and software
----------------
hereunder, or any components thereof, is hereby granted according to the
following terms:
(a) The GeneScape(R) database, software and display screens are protected
by copyright, patent, trade secret and other intellectual property
laws. CURAGEN hereby grants to GW and its employees a non-exclusive
non-transferrable license
14
to access the GeneScape(R) database and software solely for the
purposes of the Pharmacogenomics Collaboration and during the
Pharmacogenomics Collaboration Term. GW shall not copy the
GeneScape(R) database, software or display screens except as occurs
during the normal course of CURAGEN-provided access. GW shall not
reverse engineer, decompile, or disassemble the GeneScape(R) software
or display screens. The GeneScape(R) database and software embody
trade secrets of CURAGEN that are considered Confidential Information
of CURAGEN and subject to the confidentiality provisions hereof; and
(b) If at any time during the term of this Agreement GW reasonably
determines that an escrow of the CURAGEN software is necessary in the
event of a CURAGEN bankruptcy proceeding, GW shall give written notice
to CURAGEN requesting this escrow and CURAGEN shall, at CURAGEN's
expense, put into a secure escrow (to be agreed by the Parties at the
relevant time) copies of any relevant source code and documentation.
ARTICLE IV
FINANCIAL TERMS
4.00 Pharmacogenomics Collaboration Funding. - In consideration of CURAGEN's
--------------------------------------
performance under the terms of this Agreement during the first, second and third
years of the Pharmacogenomics Collaboration, GW will pay CURAGEN a research
payment of [XXXXXXXXXXXXXXX] per year per FTE in the Staffing Level. The first
such payment for the first year shall equal Two Million Seven Hundred Fifty
Thousand Dollars ($2,750,000) and shall be made within thirty (30) days of the
Effective Date of this Agreement. Thereafter, GW shall pay CURAGEN semi-
annually, in advance, for each FTE in the Staffing Level until expiration or
termination of the Pharmacogenomics Collaboration Term. For the fourth year,
the FTE cost shall be adjusted based on [XXXXXXXXXXXXXXXXXXXXXXXXXX]. For the
15
fifth year, the FTE cost shall be further adjusted based on [XXXXXXXXXXXXX]. GW
will fund its own activities under the Pharmacogenomics Collaboration.
4.01 Subscription Program Fees. -It is understood and agreed by the Parties
--------------------------
that all Subscription Program Fees will be [XXXXXXXXXXX] for the first three
years of the Pharmacogenomics Collaboration Term. Subscription Program Fees
will be negotiated in good faith in the event GW elects to retain access to the
Subscription Database in years four and five of the Pharmacogenomics
Collaboration Term. [XXXXXXXXXXXXXXXXX] CURAGEN shall be free to offer access
to said Subscription Databases to third parties at any time on any terms not
inconsistent with its obligations to GW under the terms of this Agreement.
ARTICLE V
TREATMENT OF CONFIDENTIAL INFORMATION
5.00 Confidential Information. - During the course of the Pharmacogenomics
-------------------------
Collaboration each Party may disclose to the other proprietary technical and
business information, (collectively, "Confidential Information"). Except as
expressly permitted hereunder, the receiving Party shall keep confidential all
such Confidential Information of the other Party and will not disclose such
Confidential Information of the other Party to third parties by publication or
otherwise. Each Party shall take reasonable steps to ensure that all of its
employees and consultants shall protect and use Confidential Information of the
other Party only in accordance with the terms hereof. Each Party further agrees
not to use Confidential Information of the other Party for any purpose other
than as expressly permitted hereunder. Such obligations of confidentiality and
non-use shall remain in effect for a period of [XXXXXX] years after the receipt
of any such Confidential Information or, in the case of Confidential Information
related to a license granted pursuant to Article XIII or IX, upon the expiration
of this Agreement, whichever event is later. Notwithstanding the foregoing, it
is understood and agreed that the receiving Party's obligations of
confidentiality and nonuse herein shall not apply to any information which:
16
(a) is, at the time of disclosure by the disclosing Party hereunder, or
thereafter becomes, a part of the public domain or publicly known or
available through no fault or negligence of the receiving Party or any
of its Affiliates; or
(b) was otherwise in the receiving Party's lawful possession prior to
disclosure by the disclosing Party, as demonstrated by the receiving
Party's written records; or
(c) is lawfully disclosed to the receiving Party or any of its Affiliates
on a non-confidential basis by a third party who is not in violation
of an obligation of confidentiality to the disclosing Party relative
to such information; or
(d) was required by law to be disclosed; or
(e) was independently developed by the receiving Party or an Affiliate
without the use of any of the disclosing Party's Confidential
Information.
5.01 Publications. - It is expected that each Party may wish to publish the
-------------
results of its research under this Agreement. Contributions by the other Party
shall be acknowledged in any publication by the publishing Party. In order to
safeguard intellectual property rights, the Party wishing to publish or
otherwise publicly disclose the results of its research hereunder shall first
submit a draft of the proposed manuscripts to the JPC for review, comment and
consideration of appropriate patent application preparation activity at least
[XXXXXXX] days prior to any submission for publication or other public
disclosure. The JPC will advise the Party seeking publication as to whether a
patent application will be prepared and filed or whether trade secret protection
should be pursued. The JPC will, in cooperation with both Parties, determine
the appropriate timing and content of any such publications. The JPC can, in its
discretion, request that the publishing Party delay publication for up to an
additional [XXXXX] days for the purpose of preparation of an appropriate
patent application(s).
5.02 Press Release and Regulatory Filings. - The Parties shall mutually agree
------------------------------------
on a press release announcing the execution of this Agreement and on any
confidential treatment request to be filed with the Securities and Exchange
Commission with respect to this Agreement. Once any written statement is
approved for disclosure by both Parties, either Party may make subsequent
17
public disclosures of the contents of such statement without the further
approval of the other Party. Nothing in this Agreement shall be construed to
prohibit either party from disclosing factual information or data relating to
this Agreement which may be required by law to be disclosed. The Parties shall
make a commercially reasonable effort to make a press release within five (5)
days of the Effective Date of this Agreement.
ARTICLE VI
INTELLECTUAL PROPERTY RIGHTS
6.00 GW Proprietary Material. - GW Proprietary Material shall remain the
-----------------------
property of GW and CURAGEN shall use such GW Proprietary Material only for the
purpose of conducting the Pharmacogenomics Program hereunder and shall not
transfer GW Proprietary Material to any other person or entity.
6.01 Data. - All data generated by CURAGEN in the course of the
-----
Pharmacogenomics Collaboration and all data currently residing in any of the
Subscription Databases subscribed to herein, as well as data subsequently
generated and added thereto, shall be owned by CURAGEN. The Parties' rights to
use Project Data Sets and the Subscription Databases shall be subject to the
provisions of Articles VIII and IX of this Agreement.
6.02 Inventions, Notification. Each Party shall provide the other with clearly
-------------------------
defined written descriptions of what each Party considers to be subject matter
that is potentially capable of intellectual property protection. Each Party
shall thereafter notify the other Party within sixty (60) days of any
Pharmacogenomics Project Inventions.
6.03 Inventions, Ownership. Inventorship of any invention shall be determined
----------------------
in accordance with the patent laws of the United States. Ownership of any
inventions shall vest with the employers of the inventors. Inventions that are
solely owned by GW under this provision shall be subject to the licenses granted
by GW to CURAGEN in this Agreement. Inventions that
18
are solely owned by CURAGEN under this provision shall be subject to the
licenses granted by CURAGEN to GW in this Agreement. Inventions that are jointly
owned by GW and CURAGEN under this provision shall be subject to each co-owner's
license grant obligations to each other in this Agreement.
6.04 Inventions, Inventor Assignments. - GW and CURAGEN warrant to each other
--------------------------------
that their employees, non-employee contractors, and non-employee research
collaborators are under obligation to assign their rights to GW or CURAGEN, as
the case may be, with respect to Pharmacogenomics Project Inventions. GW and
CURAGEN agree to use commercially reasonable efforts to obtain, maintain and
secure such assignments. The Parties' rights and interests, including
commercialization rights, shall be subject to the provisions of Articles XIII
and IX.
6.05 Inventions, Property Rights to Biological Materials. GW will obtain the
----------------------------------------------------
necessary permission of any third party donor of materials before delivering
such materials to CURAGEN for analysis and experimentation.
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
X.]
6.06 Use of Third Party Materials. [XXXXXXXXXXXXXXXXXXXXXXXXXXXXX
-----------------------------
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXX]
6.07 Conflict with Preexisting CURAGEN Projects. [XXXXXXXXXXXXXXXXXX
--------------------------------------------
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXX]
19
ARTICLE VII
PROVISIONS CONCERNING THE FILING, PROSECUTION AND
MAINTENANCE OF PATENT RIGHTS
7.00 GW Inventions. GW shall have sole responsibility for the preparation,
--------------
filing and maintenance of patent applications on Pharmacogenomic Project
Inventions solely owned by GW. GW shall have discretion as to maintaining its
applications. If GW elects not to pursue a given application for such
Pharmacogenomic Project Inventions, GW shall give notice to CURAGEN, who shall
have the option of taking over responsibility for said application.
7.01 CURAGEN Inventions. - CURAGEN shall have sole responsibility for the
-------------------
preparation, filing and maintenance of patent applications on Pharmacogenomic
Project Inventions solely owned by CURAGEN. CURAGEN shall have discretion as to
maintaining its applications. If CURAGEN elects not to pursue a given
application for such Pharmacogenomic Project Inventions, CURAGEN shall give
notice to GW, who shall have the option of taking over responsibility for said
application.
7.02 Jointly Owned Inventions. GW shall have sole responsibility for the
-------------------------
preparation, filing and maintenance of patent applications on Pharmacogenomic
Project Inventions that are jointly owned by CURAGEN and GW. Such jointly owned
patent applications shall not be abandoned by GW without the express consent of
CURAGEN, who shall have the right to assume responsibility for any such
application that GW wishes to abandon.
ARTICLE VIII
LICENSE TO GW
8.00 GW Products -- During The Data Exclusivity Period. - For the duration of
--------------------------------------------------
the Data Exclusivity Period for a particular Project Data Set, CURAGEN hereby
grants to GW an exclusive license throughout the Territory, to the extent
CURAGEN has the right to grant such license, under CURAGEN's rights in and to
Pharmacogenomics Project Inventions and Patent
20
Rights related to such Project Data Sets, [XXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXX].
8.01 GW Products -- After The Data Exclusivity Period. - After expiration of
-------------------------------------------------
the last to expire Data Exclusivity Period for a particular Project Data Set,
CURAGEN's license to GW as set forth in Section 8.00 of this Agreement shall
convert to a non-exclusive license throughout the Territory.
8.02 Non-GW Diagnostic Products. - For the duration of the Data Exclusivity
---------------------------
Period for a particular Project Data Set, CURAGEN hereby grants to GW
[XXXXXXXXXXXXXX XXXXXX XXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXX]
8.03 Unblocking Licenses. - Upon grant of a license pursuant to Sections 8.00,
--------------------
8.01 or 8.02 above, CURAGEN shall grant to GW a non-exclusive, fully paid,
irrevocable license throughout the Territory, to the extent CURAGEN has the
right to grant such license, under CURAGEN's rights in and to CURAGEN Background
Inventions, solely to the extent necessary to allow GW to practice the licenses
granted herein and for no other purpose. The term of this Unblocking License
shall be co-extensive with the term of the corresponding licenses granted above.
8.04 Sublicenses. - GW shall have the right to grant sublicenses under any
-----------
portion of the licenses granted by CURAGEN to GW Products in Section 8.00 above,
provided, however, that GW remains obligated to ensure any future sub-licensee's
performance of GW's royalty and milestone obligations to CURAGEN as set forth
herein. For [XXXXXXXXXX] licensed pursuant to Section 8.00 above, if GW elects
to license or sell or otherwise provide a third party access to such
[XXXXXXXXXXXXXXX] for purposes other than the development of GW Products for GW
as provided for in Section 8.00 above, GW and CURAGEN shall enter into good
faith negotiations to develop and execute a business strategy to exploit such
[XXXXXXXXXXXXXX].
21
8.05 Milestone Payments For Human Therapeutics related to the Use of XXXX. -
--------------------------------------------------------------------
[XXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXX], GW shall pay CURAGEN a one-time payment of
[XXXXXXXXXXXXX] per [XXXXX] upon the entry of the [XXXXXXXXXXX XXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXX XXXXXXX XXXXXXXXXXXXXXXX]. In any event,
GW shall not be liable for such payments in the event the discovered Target
and/or the discovered association of the Target with a disease is in the public
domain at Completion.
8.06 Milestone Payments for Human Therapeutics related to the Use of
----------------------------------------------------------------
[XXXXXXX]. - GW shall pay CURAGEN [XXXXXXXXXXX], upon the first entry of a Human
----------
Therapeutic product into [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXX]
8.07 Milestone Payments For GW Diagnostics Products. For GW Diagnostic
-----------------------------------------------
Products, [XXXXXXXXXXXXXXXXXXXXXXXXXX].
8.08 Royalty Payments For Human Therapeutics related to the Use of [XXXX]. -
--------------------------------------------------------------------
For GW Products for which a milestone payment was due and payable under Section
8.05 above, the royalty shall be [XXXX] percent ([XXXX]%).
8.09 Royalty Payments For Human Therapeutics related to the Use of [XXXXXXX]. -
------------------------------------------------------------------------
For GW Products for which a milestone payment was due and payable under Section
8.06 above, GW shall pay CURAGEN a royalty of [XXXX] percent ([XXXX]%) of Net
Sales in the Territory.
8.10 Royalty Payments For Contributions In Diagnostics. - For GW Diagnostic
--------------------------------------------------
Products, GW shall pay CURAGEN a royalty of [XXXX] percent ([XXXX]%) of net
sales in the Territory, provided that such royalty will be corrected for
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXX.]
22
8.11 Remittance of Royalty Payments. - Royalty payments shall be made to
-------------------------------
CURAGEN in United States Dollars quarterly within forty-five (45) days following
the end of each calendar quarter for which royalties are due. Each royalty
payment shall be accompanied by a report summarizing the total Net Sales for
each GW Product during the relevant three-month period and the calculation of
royalties, if any, due thereon.
8.12 Foreign Currency Conversions. - All royalties shall be payable in full in
----------------------------
the United States in United States Dollars, regardless of the countries in which
sales are made. For the purpose of computing Net Sales for GW Products sold in
a currency other than United States Dollars, such currency shall be converted
into United States Dollars at the exchange rate for buying U.S. Dollars set
forth in The Wall Street Journal for the last business day of the calendar
quarter.
8.13 License Term Subject To Royalty Payments.- The term of any license granted
----------------------------------------
hereunder, which is subject to the obligation to pay royalties to CURAGEN by GW,
its Affiliates or sublicensees, with respect to each GW Product, shall be on a
country by country basis until
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]. In the event that a GW
product is being sold in a particular country by GW, its Affiliates or
sublicensees, pursuant only to a license to a Pharmacogenomics Project
Invention, the term shall be for [XXXXXX] years from the first commercial sale
of such Licensed Product in that country. Following such period, GW shall have
a fully paid-up, irrevocable license in such country under the relevant Patent
Rights, Pharmacogenomics Project Inventions and/or CURAGEN Background Inventions
in such country.
8.14 Overdue Royalties. - Royalties not paid within the time period set forth
-----------------
in this Article VIII shall bear interest at a rate of [XXXX] percent ([XXXX]%)
per month from the due date until paid in full.
8.15 Records Retention. Audits. - GW, its Affiliates and sublicensees shall
--------------------------
keep, for [XXXX] from the date of each payment of royalties, complete and
accurate records of sales by GW and its Affiliates and sublicensees of each GW
Product in sufficient detail to allow the accruing royalties to be determined
accurately. CURAGEN shall have the right for a period of
23
[XXXXXXX] after receiving any report or statement with respect to royalties due
and payable to appoint an independent certified public accountant reasonably
acceptable to GW to inspect the relevant records of GW and its Affiliates and
sublicensees to verify such report or statement. GW and its Affiliates and
sublicensees shall each make its records available for inspection by such
independent certified public accountant during regular business hours at such
place or places where such records are customarily kept, upon reasonable notice
from CURAGEN, solely to verify the accuracy of the reports and payments. Such
inspection right shall not be exercised more than once in any calendar year nor
more than once with respect to sales of any GW Product in any given payment
period. CURAGEN agrees to hold in strict confidence all information concerning
royalty payments and reports, and all information learned in the course of any
audit or inspection, except to the extent necessary for CURAGEN to reveal such
information in order to enforce its rights under this Agreement or if disclosure
is required by law, regulation or judicial order. CURAGEN shall pay for such
inspections.
8.16 Tax Withholding. - CURAGEN agrees that any tax burden levied by any
---------------
countries outside of the United States covered by this Agreement on royalty
income to CURAGEN of royalties from GW under this Agreement shall be borne by
CURAGEN. In the event that such tax is required to be withheld by GW, its
Affiliates, licensees or sublicensees, GW shall deliver to CURAGEN a statement
including the amount of tax withheld and justification therefor, and such other
information as may be necessary for United States foreign tax credit purposes.
8.17 Notice of Infringement. - If, during the term of License Agreement, either
----------------------
Party learns of any infringement or threatened infringement by a third party of
the patents within Patent Rights, such Party shall promptly notify the other
Party and shall provide such other Party with available evidence of such
infringement.
8.18 Infringement Litigation. - GW shall have the first right (but not the
-----------------------
obligation), at its own expense, to bring suit (or other appropriate legal
action) against any actual or suspected infringement of the Patent Rights
licensed hereunder provided that GW has an exclusive license to the infringed
claim(s) of any such Patent Right. If GW does not take such action within one
hundred twenty (120) days after written notice from CURAGEN of the infringement,
24
CURAGEN shall have the right (but not the obligation), at its own expense, to
bring suit against such infringement. Any amount recovered, whether by judgment
or settlement, shall first be applied to reimburse the costs and expenses
(including attorneys' fees) of the Party bringing suit, then to the costs and
expenses (including attorneys' fees), if any, of the other Party. Any amounts
remaining shall be allocated to each party in accordance with each Party's
damages incurred on account of such infringement, calculated in accordance with
United States laws pertaining to patent damages.
8.19 Cooperation. - Each Party shall, at the expense of the other Party,
-----------
execute all papers and perform such other acts as may be reasonably required to
maintain any infringement suit brought in accordance with Section 8.18 above
(including giving legal consent for bringing such suit, and agreeing to be named
as a plaintiff or otherwise joined in such suit), and at its option and expense,
may be represented in such suit by counsel of its choice.
8.20 Conditions Subsequent. - GW's obligations to remit milestone payments and
---------------------
royalties under this Agreement are contingent upon completion by GW of a
satisfactory review of the patents of CURAGEN for compliance with GW's
understanding that CURAGEN has sufficient ownership, authority, permission or
right to grant the licenses contemplated by this Agreement, and that GW's
practice of the patents of CURAGEN will not infringe the proprietary rights of
any third party. Such review will be completed by GW no later than [XXXXX]
following the Effective Date of this Agreement. To the extent GW finds any
deficiencies in CURAGEN's ownership, authority or permissions to grant the
licenses contemplated by this Agreement, GW will promptly, within said
[XXXXXXX] period, notify CURAGEN of any and all steps GW believes need to be
taken to perfect CURAGEN's right to grant such licenses, and will promptly,
whether or not within said [XXXXXX] period, indicate to CURAGEN when GW is
satisfied that any such steps have been completed.
25
ARTICLE IX
GRANTBACKS to CURAGEN
9.00 Patent License Grant-back to CURAGEN. - GW hereby grants to CURAGEN, under
-------------------------------------
GW's rights in and to Pharmacogenomics Project Inventions and Patent Rights
related thereto, a [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX.]
9.01 Data Set Exclusivity Grant-back to CURAGEN. - Upon expiration of the last
-------------------------------------------
to expire Data Exclusivity Period related to a particular Project Data Set, GW
hereby grants back to CURAGEN under GW's rights in and to Pharmacogenomics
Project Inventions and Patent Rights related to such Project Data Set, a fully
paid up, non-exclusive license in the Territory to develop, make, have made,
use, have used, sell, have sold, offer for sale, import and have imported such
Pharmacogenomics Project Inventions and Patent Rights for any purpose. Such
license shall include the right to grant sublicenses at CURAGEN's sole
discretion.
9.02 Unblocking Licenses Grant-back to CURAGEN. - Upon grant of a license
---- -----------------------------------------
pursuant to Sections 9.00 or 9.01 above, GW grants to CURAGEN, a fully paid up,
non-exclusive license in the Territory to any background inventions solely to
the extent necessary to allow CURAGEN to practice the licenses granted to
CURAGEN herein and for no other purpose. In the event GW has not previously
acquired transferable rights for such background inventions, GW shall use best
efforts to obtain such rights on CURAGEN's behalf. For the purposes of this
Agreement, best efforts shall mean efforts that are no less than what GW would
make to acquire such rights for itself. GW does not warrant or undertake that
it will be successful at obtaining such rights.
9.03 Research License Grant-back to CURAGEN. - GW grants back to CURAGEN under
---------------------------------------
GW's rights in Pharmacogenomics Project Inventions and Patent Rights related
thereto, a fully-paid non-exclusive license to make, have made, use or import
any such licensed Pharmacogenomics Project Inventions, Patent Rights and CURAGEN
Proprietary Materials for internal research purposes. Nothing in this Section
9.03 shall limit any license otherwise granted to CURAGEN.
26
9.04 [XXXXXXXXXXXXXXXXXXXXXXX. - XXXXXXXXXXXXXXXXXXXX
------------------------
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
ARTICLE X
TERMINATION
10.0 Early Termination. - Either Party may terminate the Pharmacogenomics
-----------------
Collaboration without cause at its sole discretion upon three (3) months prior
written notice to the other Party , however neither party shall be able to
terminate this Agreement prior to fifteen (15) months after the Effective Date
of the Agreement.
10.01 Effects of Early Termination Upon Rights. - Any termination of the
-----------------------------------------
Pharmacogenomics Program under Section 10.00 shall be without prejudice to the
rights of either Party against the other, then accruing or otherwise accrued
under this Agreement. Upon any such termination, all Proprietary Materials
provided hereunder shall be destroyed or returned to the providing Party.
Notwithstanding any provision in this Section 10.01 to the contrary:
(i) Where termination is by GW not for cause - CURAGEN shall complete
processing of GW samples submitted prior to notification. Any
Primary Data Exclusivity Period in effect at such termination
shall automatically and immediately convert to non-exclusive,
provided that GW may elect to extend the Data Exclusivity Period
as per Section 3.13 and 3.14 within ten (10) days of such
conversion. All Extended Data Exclusivity Periods and Perpetual
Data Exclusivity Periods shall not be effected by such
termination.
27
(ii) Where termination is by CURAGEN not for cause - CURAGEN shall
complete processing of GW samples submitted prior to
notification. GW will be entitled to add at no additional cost
to GW [XXXXX] of exclusivity to any Primary Data Exclusivity
Period and any Extended Data Exclusivity Period in effect at such
termination. Any funds paid to CURAGEN under Section 4.00 that
remain after CURAGEN completes processing of GW samples under
this subsection shall be refunded to GW within sixty (60) days of
completion of sample processing.
10.02 Post-Termination Access To GeneScape. In the event the Pharmacogenomics
-------------------------------------
Collaboration is terminated under Section 10.00, GW shall be entitled to retain
access to GeneScape(R) for up to [XXXXXXXX] after the date of termination. All
provisions governing the use of GeneScape(R) shall survive such termination. At
the end of the [XXXXXXXXX] extension, CURAGEN shall deliver to GW all raw and
processed Project Data Sets in an appropriate format to be analyzed by GW
independent of GeneScape(R).
10.03 Termination with Cause. - This Agreement and licenses granted by one
----------------------
Party to the other hereunder may be terminated upon any breach by the other
Party of any material obligation or condition, effective thirty (30) days after
giving written notice to the breaching Party of such termination in the case of
a payment breach and sixty (60) days after giving written notice to the
breaching Party of such termination in the case of any other breach, which
notice shall describe such breach in reasonable detail. The foregoing
notwithstanding, if the default or breach is cured or shown to be non-existent
within the aforesaid thirty (30) or sixty (60) day period, the notice shall be
deemed automatically withdrawn and of no effect.
10.04. Termination Following Bankruptcy. - If either Party files for protection
---------------------------------
under bankruptcy laws, makes an assignment for the benefit of creditors,
appoints or suffers appointment of a receiver or trustee over its property,
files a petition under any bankruptcy or insolvency act or has any such petition
filed against it which is not discharged within sixty (60) days of the filing
thereof, then the other Party may terminate this Agreement by notice to such
Party.
28
10.05 Effect of Termination under Section 10.03. - Upon termination of this
-----------------------------------------
Agreement under Section 10.03 by either Party, all relevant licenses granted by
the terminating Party to the breaching Party hereunder shall terminate
automatically. In addition, upon any termination pursuant to Section 10.03, the
breaching Party shall be deemed without any further action to have granted to
the terminating Party an exclusive, worldwide, [XXXXX] license (including the
right to grant sublicenses), under the breaching Party's ownership interest in
any Pharmacogenomics Project Inventions and Patent Rights licensed hereunder for
any use in all fields. At the request of the terminating Party, the breaching
Party shall execute and deliver such bills of sale, assignments and licenses and
other documents, if any, as may be necessary to fully vest in the terminating
Party all right, title and interest provided for in this Section. In the event
the breaching Party is GW, then all Data Exclusivity Periods then in effect
shall automatically convert from exclusive to non-exclusive status, except as
provided for in Section 6.06. In the event that CURAGEN is the breaching Party,
then all Primary Data Exclusivity Periods and Extended Data Exclusivity Periods
shall automatically convert to [XXXXXX] Data Exclusivity Periods.
10.06 Payment Obligations. - GW shall remain liable for all obligations
--------------------
accruing prior to termination.
10.07 Remedies. If either Party shall fail to perform or observe its material
--------
obligations, or otherwise breaches any of its material obligations under this
Agreement, in addition to any right to terminate this Agreement, the non-
defaulting Party shall not be deemed to have waived any other relief or remedies
available under law or equity.
10.09 Surviving Provisions. - Notwithstanding any provision herein to the
--------------------
contrary, the rights and obligations set forth in Article V hereof, as well as
any rights and obligations otherwise accrued, shall survive the normal
expiration or early termination of this Agreement.
29
ARTICLE XI
MISCELLANEOUS
11.00 CURAGEN Representations and Covenants. - CURAGEN represents and warrants
-------------------------------------
that: (a) the execution and delivery of this Agreement and the performance of
the transactions contemplated hereby have been duly authorized by all
appropriate CURAGEN corporate actions; (b) CURAGEN is under no obligation which
is inconsistent with this Agreement, except as specifically set forth herein;
(c) CURAGEN has the full right and legal capacity to grant the rights to GW
recited pursuant to Article VIII without violating the rights of any third
party; and that (d) CURAGEN's GeneScape(R) software is "Year 2000" compliant.
CURAGEN covenants that (a) CURAGEN will obtain from its employees and
consultants rights of assignment with respect to all Pharmacogenomics Project
Inventions; and (b) CURAGEN will not, without GW's prior written consent, enter
into any agreement with any third party that would prevent CURAGEN's performance
of CURAGEN's obligations to GW under this Agreement. Nothing in this Agreement
shall be interpreted as obligating GW to perform any additional work beyond that
set forth in the Pharmacogenomics Plan.
11.01 GW Representations and Covenants. - GW represents and warrants that: (a)
--------------------------------
the execution and delivery of this Agreement and the performance of the
transactions contemplated hereby have been duly authorized by all appropriate GW
corporate action; (b) GW is under no obligation which is inconsistent with this
Agreement; and (c) GW has the full right and legal capacity to grant the rights
to CURAGEN recited pursuant to Article IX without violating the rights of any
third party, except as provided for in Section 6.06. GW covenants that (a) GW
will obtain from its employees and consultants rights of assignment with respect
to all Pharmacogenomics Project Inventions; and (b) GW will not, without
CURAGEN's prior written consent, enter into any agreement with any third party
that is inconsistent with the terms of GW's obligations to CURAGEN under this
Agreement.
11.02 No Infringement As of the Effective Date, CURAGEN represents that it has
---------------
neither been notified of infringement, nor sued for infringement by any third
party relating to CURAGEN proprietary technology that would be used in the
course of GW's participation in the Pharmacogenomics Collaboration.
30
11.03 No Warranties.
-------------
(a) Nothing in this Agreement is or shall be construed as:
(i) a warranty or representation by CURAGEN as to the validity or
scope of any application or patent within the Patent Rights;
(ii) a warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted pursuant to this
Agreement is or will be free from infringement of patents,
copyrights, and other rights of third parties.
(b) Except as expressly set forth above in this Agreement,
NEITHER PARTY MAKES ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES
OF ANY KIND, EITHER EXPRESS OR IMPLIED. THERE ARE NO EXPRESS OR
IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS, OR FITNESS FOR A
PARTICULAR PURPOSE, OR OF NON-INFRINGEMENT OF ANY PATENT,
COPYRIGHT, TRADEMARK, OR OTHER RIGHTS, OR ANY OTHER EXPRESS OR
IMPLIED WARRANTIES.
11.04 Liability. - NOTWITHSTANDING ANYTHING ELSE IN THIS AGREEMENT OR
---------
OTHERWISE, NEITHER PARTY WILL BE LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF
THIS AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL
OR EQUITABLE THEORY FOR (I) ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE
DAMAGES OR LOST PROFITS OR (II) COST OF PROCUREMENT OF SUBSTITUTE GOODS,
TECHNOLOGY OR SERVICES, PROVIDING HOWEVER, THAT CURAGEN WILL BE LIABLE FOR
DIRECT DAMAGES PROXIMATELY CAUSED BY FAILURE OF PERFORMANCE OF ITS OBLIGATIONS
UNDER THIS AGREEMENT AND BOTH PARTIES WILL BE LIABLE FOR DIRECT DAMAGES
PROXIMATELY CAUSED BY FAILURE OF THE VERACITY OF THEIR REPRESENTATIONS AND
WARRANTIES CONTAINED IN THIS AGREEMENT.
31
11.05 Notices. - Any notices, requests, deliveries, approvals or consents
-------
required or permitted to be given under this Agreement to GW or CURAGEN shall be
in writing and shall be personally delivered or sent by facsimile (with written
confirmation to follow via United States first class mail), overnight courier
providing evidence of receipt or certified mail, return receipt requested,
postage prepaid, in each case to the respective address specified below (or to
such address as may be specified in writing to the other Party hereto):
If to CURAGEN: 000 Xxxx Xxxxx Xxxxx, 00xx Xxxxx
Xxx Xxxxx, XX 00000
Attn: Executive Vice President
Facsimile No. (000) 000-0000
If to GW: Five Xxxxx Drive
XX Xxx 00000
Xxxxxxxx Xxxxxxxx Xxxx, XX 00000-0000
Attn: Company Secretary
Facsimile No. (000) 000-0000
Such notices shall be deemed to have been sufficiently given on: (a)
the date sent if delivered in person, (b) the next business day after dispatch
in the case of transmission by facsimile or overnight courier or (c) five (5)
business days after deposit in the U.S. mail in the case of certified mail.
11.06 Arbitration - Any dispute arising out of or relating to this Agreement,
-----------
or any alleged breach of this Agreement, shall be settled by binding arbitration
in accordance with the Rules of the American Arbitration Association ("AAA"),
except as modified by this Section 11. Each arbitration shall be conducted by
three arbitrators, consisting of one arbitrator chosen by each party and the
third arbitrator chosen by the first two. In the event that the first two
arbitrators are not able to agree upon and choose a third arbitrator, the third
arbitrator shall be appointed in accordance with the AAA Rules. The arbitration
proceeding shall be conducted in the English language in New York, N.Y., unless
the Parties agree to conduct the arbitration in another location. The
arbitration shall be binding and not appealable to any court in any
jurisdiction. The prevailing party may enter the arbitration decision in any
court having competent jurisdiction.
11.07 Currency - The Parties agree that, unless otherwise indicated, all
--------
monetary amounts referred to in this Agreement are in United States currency.
32
11.08 Further Assurances - The Parties agree to execute such further documents
------------------
and to do such further acts as may be necessary to implement and carry out the
intent of this Agreement.
11.09 Limitations - Except as set forth elsewhere in this Agreement, neither
-----------
Party grants to the other Party any right or license to any of its respective
intellectual property.
11.10 Waiver. - The terms or conditions of this Agreement may be waived only by
------
a written instrument executed by the Party waiving compliance. The failure of
either Party at any time or times to require performance of any provision hereof
shall in no manner affect its rights at a later time to enforce the same. No
waiver by either Party of any condition or term shall be deemed as a continuing
waiver of such condition or term or of another condition or term.
11.11 Assignment. - This Agreement may not be assigned by either Party without
----------
the consent of the other, except that each Party may, without such consent,
assign this Agreement and the rights, obligations and interests of such Party,
in whole or in part, to any of its Affiliates, to any purchaser of all or
substantially all of its assets in the line of business to which this Agreement
pertains or to any successor corporation resulting from any merger or
consolidation of such Party with or into such corporations.
11.12 Force Majeure. - Neither Party shall be liable for failure of or delay in
-------------
performing obligations set forth in this Agreement, and neither shall be deemed
in breach of its obligations, if such failure or delay is due to natural
disasters or any causes beyond the reasonable control of such Party. In event
of such force majeure, the Party affected thereby shall use reasonable efforts
to cure or overcome the same and resume performance of its obligations
hereunder.
11.13 Construction. - The Parties hereto acknowledge and agree that: (i) each
------------
Party and its counsel reviewed and negotiated the terms and provisions of this
Agreement and have contributed to its revision; (ii) the rule of construction to
the effect that any ambiguities are resolved against the drafting Party shall
not be employed in the interpretation of this Agreement; and (iii) the terms and
provisions of this Agreement shall be construed fairly as to all Parties hereto
and not in favor of or against any Party, regardless of which Party was
generally responsible for the preparation of this Agreement.
33
11.14 Severability. - If any provision(s) of this Agreement are or become
------------
invalid, are ruled illegal by any court of competent jurisdiction or are deemed
unenforceable under then current applicable law from time to time in effect
during the Term hereof, it is the intention of the Parties that the remainder of
this Agreement shall not be affected thereby provided that a Party's rights
under this Agreement are not materially affected, in which circumstance the
Parties hereto covenant and agree to renegotiate any such term, covenant or
application of this Agreement in good faith in order to provide a reasonably
acceptable alternative to the term, covenant or condition of this Agreement or
the application thereof that is invalid, illegal or unenforceable, it being the
intent of the Parties that the basic purposes of this Agreement are to be
effectuated.
11.15 Status. - Nothing in this Agreement is intended to, or shall be deemed
------
to, constitute a partnership, agency, employer-employee, or joint venture
relationship between the Parties.
11.16 GW Indemnification of CURAGEN. - GW shall indemnify, defend and hold
------------------------------
harmless CURAGEN, its Affiliates and their respective directors, officers,
employees, and agents and their respective successors, heirs and assigns (the
"CURAGEN Indemnitees"), against any liability, damage, loss or expense
(including reasonable attorneys' fees and expenses of litigation) incurred by or
imposed upon the CURAGEN Indemnitees, or any of them, in connection with any
claims, suits, actions, demands or judgments of third parties, including without
limitation personal injury matters (except to the extent such claims, suits,
actions, demands or judgments result from a material breach of this Agreement,
or the negligence or willful misconduct on the part of CURAGEN) arising out of
or relating to any actions of GW under this Agreement including, without
limitation, the supply of samples for use in the Pharmacogenomics Program.
11.17 CURAGEN Indemnification of GW. - CURAGEN shall indemnify, defend and hold
------------------------------
harmless GW, its Affiliates and their respective directors, officers, employees,
and agents and their respective successors, heirs and assigns (the "GW
Indemnitees"), against any liability, damage, loss or expense (including
reasonable attorneys' fees and expenses of litigation) incurred by or imposed
upon the GW Indemnitees, or any of them, in connection with any claims, suits,
actions, demands or judgments of third parties, including without limitation
personal injury matters (except to the extent such claims, suits, actions,
demands or judgments
34
result from a material breach of this Agreement, or the negligence or willful
misconduct on the part of GW) arising out of the performance of the
Pharmacogenomics Program by CURAGEN, except to the extent such claims, suits,
actions, demands or judgments are based on the use of the samples or information
provided to CURAGEN by GW under this Agreement.
11.18 Governing Law. - The Parties agree that this Agreement shall be governed
--------------
and construed in accordance with the laws of the State of North Carolina.
11.19 Entire Agreement. - The Parties agree that the provisions contained in
-----------------
this Agreement constitute the entire agreement between the Parties with respect
to the subject matter and supersede all previous communications, representations
and agreements (whether verbal or written) between the Parties with respect to
the subject matter hereof, including, without limitation, the Term Sheet of
October 6, 1998.
11.20 Captions and Headings. - The Parties agree that the captions and
----------------------
headings appearing in this Agreement have been inserted for reference and as a
matter of convenience and in no way define, limit or enlarge the scope or
meaning of this Agreement or any provision.
11.21 Amendments. - Any amendment to this Agreement shall only be effective if
-----------
the amendment is in writing and is signed by all of the Parties to this
Agreement.
11.22 Counterparts. - This Agreement may be executed in facsimile counterparts,
-------------
each of which shall be deemed to be an original and both of which together shall
constitute one and the same Agreement.
35
IN WITNESS WHEREOF, the Parties have caused this Agreement to be
executed by their duly authorized representatives in two (2) originals on the
dates indicated by the signators.
CURAGEN CORPORATION GLAXO WELLCOME, INC.
By: /s/ Xxxxxxx X. Went By: /s/ Xxxxx Xxxxxx
--------------------------- ---------------------------------
Name: Xxxxxxx X. Went Name: Xxxxx Xxxxxx
------------------------- -------------------------------
Title Executive Vice President Title: Executive Director, Science &
------------------------ -----------------------------
Technology
----------
Date: 11/18/98 Date: 11/9/98
------------------------- ------------------------------
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