EXHIBIT 10.30
ADVANCED PHOTON SOURCE
ARGONNE NATIONAL LABORATORY
================================================================================
MEMORANDUM OF UNDERSTANDING
BETWEEN THE ADVANCED PHOTON SOURCE
AND THE
STRUCTURAL GENOMIX COLLABORATIVE ACCESS TEAM
FOR THE CONSTRUCTION AND OPERATION OF BEAMLINES
AT THE ADVANCED PHOTON SOURCE
1. PURPOSE
The purpose of this Memorandum of Understanding (MOU) between the Advanced
Photon Source (APS) and the Structural GenomiX Collaborative Access Team
(SGX-CAT) is to provide SGC-CAT with access to sector number 31 for the
construction and operation of beamlines.
2. PREREQUISITES
SGC-CAT has met the four prerequisites for signing of this MOU:
o Approval of the SGC-CAT proposal in accordance with the recommendations
of the Proposal Evaluation Board.
o Approval of the Conceptual Designs of the SGC-CAT beamlines.
o Approval of the SGC-CAT Management Plan, the elements of which are
subject to revision by mutual agreement of the parties as the project
matures.
o Receipt of appropriate documentation with respect to the funding intent
of Structural GenomiX Inc.
3. UNDERSTANDING BETWEEN THE ADVANCED PHOTON SOURCE AND SGC-CAT
During its tenure, SGC-CAT will develop and operate sector number 31, and it
will occupy the corresponding Laboratory/Office Module segment. SGC-CAT's tenure
begins on the date this MOU is signed, and will continue in accordance with the
provisions of the Advanced Photon Source User Policies and Procedures.
The APS and SGC-CAT will operate in accordance with the following:
o The Advanced Photon Source User Policies and Procedures.
o The SGC-CAT Management Plan.
o The SGC-CAT Conceptual Design for the beamlines and insertion device.
o The Collaborative Access Team User Agreement for the Advanced Photon
Source that will be executed with Structural GenomiX Inc.
4. SIGNATURES
/s/Xxxxx X. D'Amica 7/26/00 /s/Xxxxx X. Moncton
---------------------------------------- ------------- ---------------------------------- --------------
Xxxxx X. X'Xxxxx Date Xxxxx X. Moncton Date
Director Asociate Laboratory Director
SGX-CAT for the APS
WITNESSED BY:
/s/Xxxx X. Xxxxx 7/26/00 /s/Xxx Xxxxxx 7/26/00
---------------------------------------- -------------- ---------------------------------- --------------
Xxxx X. Xxxxx Date Xxx Xxxxxx Date
Interim Laboratory Director President and CEO
Argonne National Laboratory Structural GenomiX Inc.
/s/Xxxxx Xxxxxxxxxxx 7/26/00 /s/Don Xxxxxxx Xxxxxx 7/26/00
---------------------------------------- -------------- ---------------------------------- --------------
Xxxxx Xxxxxxxxxxx Date Don Xxxxxxx Xxxxxx Date
Professor of Biochemistry and President
Molecular Biophysics University of Chicago
Columbia University
/s/Xxxx Xxxxxxxxxx
---------------------------------------- --------------
Xxxx Xxxxxxxxxx Date
Secretary of Energy
U.S. Department of Energy
Collaborative Access Team
User Agreement
for the
Advanced Photon Source
at
Argonne National Laboratory
Argonne, Illinois
This User Agreement is entered into by The University of Chicago, an Illinois
not-for-profit corporation, operator of Argonne National Laboratory and herein
also called "Argonne," acting under Prime Contract No. W-31-109-ENG-38, as
amended, with the United States Government (called "Government"), represented by
the U.S. Department of Energy (called "Department"); and Structural GenomiX,
Inc., an institutional member of the Structural GenomiX Collaborative Access
Team (SGX-CAT) and herein called "User."
In consideration of the mutual benefits flowing from this Agreement, the parties
agree as follows:
A. DESCRIPTION OF WORK
After securing prior Argonne approval, User shall be permitted to
install beamlines and other equipment in designated areas of the
Advanced Photon Source (APS) facility and in accordance with
APS-approved designs, schedules, management plans, and safety
practices; and to use those beamlines and supporting APS and Argonne
facilities to perform experiments in accordance with APS-approved
proposals and safety practices. Independent Investigators, selected by
SGX-CAT in accordance with an APS-approved Independent Investigator
Access Plan, shall be permitted to use designated SGX-CAT beamlines and
supporting APS and Argonne facilities to perform research in accordance
with APS-approved safety practices. The duration of each Independent
Investigator's access to the designated beamline(s) will be specified
by SGX-CAT. This Agreement shall apply to all future experiments which
are totally funded by User and performed at APS facilities. This
Agreement shall be incorporated by reference in each Supplemental
Agreement which contains a nonproprietary statement describing an
experiment authorized to be performed at the APS.
B. PERSONNEL RELATIONSHIPS
User shall be responsible for the acts or omissions of its employees
and agents and of all other persons that User allows to participate in
the activities under this Agreement except Independent Investigators,
who are bound by another User Agreement.
Individuals identified above for whom User is responsible and who are
not actual employees of User shall be considered "employees" of User
ONLY for the purposes of ownership of intellectual property in
accordance with Attachment A. Such individuals will execute the
Acknowledgment therefor.
2
C. PAYMENT OF EXPENSES
Before commencing activities at the Argonne APS Facility, User shall
establish an account at Argonne to enable the purchase of goods and
services from Argonne. User shall be responsible for all authorized
expenses incurred by Argonne in providing services and supplies to or
on behalf of User and for all actual services and supplies used by
User's employees and guests at the APS facility. At the time when the
account is established, Argonne shall notify User of the mechanism for
making payment. At that time and as Argonne's provisional and direct
overhead rates which are established consistent with Argonne and DOE
pricing policy are revised, User will be informed of those rates.
Whenever Argonne adjusts its provisional rates to actual rates, the
User account will be charged or credited accordingly. User shall pay in
advance for capital equipment items and construction activities
purchased through Argonne.
D. RIGHTS IN PATENTS, TECHNICAL DATA, AND COPYRIGHTS
With respect to rights in patents, technical data, and copyrights, the
terms and conditions of Attachment A shall apply to this Agreement.
E. INDEMNITY AND LIABILITY
Except to the extent of their negligence or intentional misconduct,
neither the Government, the Department, The University of Chicago, nor
persons acting on their behalf will be responsible for any injury to or
death of persons or other living things or damage to or destruction of
property or for any other loss, damage or injury of any kind whatsoever
resulting from the performance of services or furnishings of materials
hereunder.
NEITHER THE GOVERNMENT, THE DEPARTMENT, THE UNIVERSITY OF CHICAGO, NOR
PERSONS ACTING ON THEIR BEHALF MAKES ANY WARRANTY, EXPRESS OR IMPLIED
(1) WITH RESPECT TO THE ACCURACY, COMPLETENESS OR USEFULNESS OF ANY
INFORMATION FURNISHED HEREUNDER, (2) THAT THE USE OF ANY SUCH
INFORMATION MAY NOT INFRINGE PRIVATELY OWNED RIGHTS, (3) THAT THE
SERVICES, MATERIALS, OR INFORMATION FURNISHED HEREUNDER WILL NOT RESULT
IN INJURY OR DAMAGE WHEN USED FOR ANY PURPOSE, AND (4) THAT THE
SERVICES, MATERIALS OR INFORMATION FURNISHED HEREUNDER WILL ACCOMPLISH
THE INTENDED RESULTS OR ARE SAFE FOR ANY PURPOSE INCLUDING THE INTENDED
PURPOSE.
Neither the Government, the Department, The University of Chicago, nor
persons acting on their behalf will be responsible, irrespective of
causes, for failure to perform the services or furnish the materials or
information hereunder at any particular time or in any specific manner.
Notwithstanding the foregoing, The University of Chicago's only rights
to terminate this Agreement are set forth in Article I. below.
To the extent permitted by law and to the extent of its negligence or
intentional misconduct, User agrees to indemnify and save harmless the
Government, the Department, The University of Chicago, and persons
acting on their behalf from (1) all liability, including costs and
expenses incurred, resulting from the User's use or disclosure of any
information in whatever form, furnished hereunder, and (2) all
liability to any persons including the User for injury to or death of
persons or other living things or injury to or destruction of property
arising out of performance by the Government, the Department,
3
The University of Chicago, or persons acting on their behalf under this
Agreement, or arising out of the use of the services performed,
materials supplied, or information given hereunder by any person
including the User, and not directly resulting from the fault or
negligence of the Government, the Department, The University of
Chicago, or persons acting on their behalf. The foregoing provisions
shall have no application to public liability for nuclear incident as
defined and provided for in the Atomic Energy Act of 1954, as amended.
To the extent permitted by law, User agrees to indemnify the
Government, the Department, The University of Chicago, and persons
acting on their behalf against liability of any kind (including costs
and expenses incurred) for the use, by or at the direction of User, of
any invention or discovery and for the infringement of any Letters
Patent (not including liability, arising pursuant to Section 183, Title
35 (1952), U.S. Code, prior to the issuance of Letters Patent)
occurring in the performance of this Agreement.
User will be held liable for costs and expenses resulting from loss,
damage, destruction, misuse, or alteration to or of Government property
to the extent that such loss, damage, destruction, misuse, or
alteration is caused or contributed to by the intentional or negligent
act of User or its employees or representatives.
F. SAFETY AND HEALTH
User shall take all reasonable precautions in the installation of
equipment and performance of experiments to protect the safety and
health of others and to protect the environment, and shall comply with
all applicable safety and health regulations and requirements of APS,
Argonne, and the Department. In the event that User fails to comply
with said regulations or requirements, Argonne may, without prejudice
to any other legal or contractual rights, issue an order stopping all
or any part of User's activities at the APS.
G. THIRD-PARTY CONTRACTS
Contracts between User and third parties for work on Argonne premises
including, but not limited to, construction, installation, maintenance,
and repair, will be subject to prior approval by the Department and
Argonne. The Department and Argonne may require the insertion of
specific terms and conditions into such contracts.
H. OWNERSHIP AND DISPOSITION OF PROPERTY
Property purchased with Argonne funds remains the property of Argonne
unless the cost is fully reimbursed by User, in which case it becomes
the property of User. Property purchased with User funds remains the
property of User unless User formally transfers ownership of that
property to Argonne. When this Agreement and all extensions thereof
have terminated, User will have 60 days to remove its property from the
APS facility at User's expense. Any User-owned property that is not
removed from the APS facility by the end of this 60-day period will
become the properly of Argonne or may be removed by Argonne at the
expense of User.
4
I. TERM OF THIS USER AGREEMENT
This Agreement shall be effective on the date it is executed by the
last party to sign it and shall continue through the period ending five
years after SGX-CAT receives Approval to Operate its insertion device
beamline, at which time this Agreement shall extend automatically for
successive periods of one year each, unless sixty (60) days before the
beginning of any such one-year period The University of Chicago
notifies User in writing that this agreement shall not be extended. The
foregoing is subject to the following:
1. User may terminate this Agreement effective any time with
thirty (30) days prior written notice.
2. The University of Chicago may terminate this Agreement in the
event of a breach of this Agreement by User, provided that The
University of Chicago has first notified User of such breach
and has given User thirty (30) days to cure said breach.
User: Structural GenomiX, Inc.
By Xxxxx Xxxxx Title E.V.P.
------------------------------------------------------- -----------------------------------------------
(Name of Authorized Officer, typed)
Signature /s/ Xxxxx Xxxxx Date 5/15/01
--------------------------------------------------------------- ---------------------------------
Argonne:
Associate Laboratory Director for
By Xx. Xxxxx X. Moncton Title the Advanced Photon Source
------------------------------------------------------- -----------------------------------------------
(Name of Authorized Officer)
Signature /s/ [Illegible] for DEM Date 5/15/01
--------------------------------------------------------------- ---------------------------------
Note: Each "employee" of User who will participate in activities at Argonne
under this Agreement must execute an Acknowledgment of the Agreement.
ATTACHMENT A
1. Patent Rights - User Facilities (Class Waiver)
(a) Definitions
(1) "User" means the person or entity with which this Agreement is made.
(2) "Subject Invention" means any invention or discovery of the User,
conceived or first actually reduced to practice in the course of or under this
Agreement, and includes any art, method, process, machine, manufacture, design
or composition of matter or any new and useful improvement thereof, or any
variety of plants, whether patented or unpatented under the Patent Laws of the
United States of America or any foreign country.
(3) "Facility Operator" means the operating contractor which manages and
operates the Government-owned, contractor-operated facility where the work under
this Agreement is to be performed.
(4) "Patent Counsel" means the DOE Patent Counsel assisting the Facility
Operator.
(b) Rights of the User
(1) Election to Retain Rights.
Subject to the provisions of Paragraph (c)(2) of this clause, the User
may retain the entire right, title and interest in any patent application filed
in any country on a Subject Invention reported and elected in accordance with
paragraph (d) of this clause and in any resulting patent secured by the User.
Where appropriate, the filing of patent applications by the User is subject to
DOE security regulations and requirements.
(2) Minimum License.
The User reserves an irrevocable, nonexclusive, paid-up license in
each patent application filed in any country on a Subject Invention and any
resulting patent in which the User does not elect to retain title or in which
the Government acquires title. The license shall extend to the User's domestic
subsidiaries and affiliates, if any, within the corporate structure of which the
User is a part and shall include the right to grant sublicenses of the same
scope to the extent the User was legally obligated to do so at the time this
Agreement was entered into. The license shall be transferable only with approval
of DOE except when transferred to the successor of that part of the User's
business to which the invention pertains.
(c) Rights of Government
(1) Assignment to the Government.
The User agrees to assign to the Government, upon request, the entire
right, title, and interest in any country to each Subject Invention of the User
except to the extent that Rights are retained by the User under Paragraph (b)(2)
of this clause, where the User:
(i) Does not elect pursuant to this clause to retain such rights; or
(ii) Fails to have a patent application filed in that country on the
Subject Invention or decides not to continue prosecution or not to pay any
maintenance fees covering the invention; or
Attachment A -- p.2
(iii) At any time, the User no longer desires to retain title.
(2) Terms and Conditions of Waived Rights.
(i) To preserve the Government's residual Rights to Subject
Inventions, the User shall take all actions in reporting, electing, filing on,
prosecuting and maintaining invention Rights promptly, but in any event, in
sufficient time to satisfy domestic and foreign statutory and regulatory time
requirements, or, if the User decides not to take appropriate steps to protect
the invention rights, it shall notify DOE in sufficient time to permit the
Government to file, prosecute and maintain patent applications and any resulting
patents prior to the end of such domestic or foreign statutory or regulatory
time requirements.
(ii) The User shall convey or assure the conveyance of any executed
instruments necessary to vest in the Government the rights set forth in this
clause.
(iii) With respect to any Subject Invention in which the User retains
title, the Government shall have a nonexclusive, nontransferable, irrevocable,
paid-up license to practice or have practiced for or on behalf of the United
States the Subject Invention throughout the world.
(iv) The User shall provide the Government a copy of any application
filed on a Subject Invention promptly after such application is filed, including
its serial number and filing date.
(v) The User agrees to submit on request periodic reports no more
frequently than annually on the utilization of a Subject Invention or on efforts
at obtaining such utilization that are being made by the User or its licensees
or assignees. Such reports shall include information regarding the status of
development, date of first commercial sale or use, gross royalties received by
the User, and such other data and information as DOE may reasonably specify. The
User also agrees to provide additional reports as may be requested by DOE in
connection with any march-in proceeding undertaken by DOE in accordance with
paragraph (c)(2)(vii) of this clause. To the extent data or information supplied
under this paragraph is considered by the User, its licensee or assignee to be
privileged and confidential and is so marked, DOE agrees that, to the extent
permitted by 35 USC 202(c)(5), it will not disclose such information to persons
outside the Government.
(vi) Notwithstanding any other provision of this clause, the User
agrees that neither it nor any assignee will grant to any person the exclusive
right to use or sell any Subject Invention in the United States unless such
person agrees that any products embodying the Subject Invention or produced
through the use of the Subject Invention will be manufactured substantially in
the United States. However, in individual cases, the requirement for such an
Agreement may be waived by DOE upon a showing by the User or its assignee that
reasonable but unsuccessful efforts have been made to grant licenses on similar
terms to potential licensees that would be likely to manufacture substantially
in the United States or that under the circumstances domestic manufacture is not
commercially feasible.
(vii) The User agrees that with respect to any Subject Invention in
which it has acquired title, DOE has the right in accordance with the procedures
in 37 CFR 401.6 and any supplemental regulations of DOE to require the User, an
assignee or exclusive licensee of a Subject Invention to grant a nonexclusive,
partially exclusive, or exclusive license in any field of use to a responsible
applicant or applicants upon terms that are reasonable under the circumstances,
and if the User, assignee, or exclusive licensee refuses such a request, DOE has
the right to grant such a license itself if DOE determines that:
Attachment A -- p.3
(1) Such action is necessary because the User or assignee has not
taken, or is not expected to take within a reasonable time, effective steps to
achieve practical application of the Subject Invention in such field of use;
(2) Such action is necessary to alleviate health or safety needs which
are not reasonably satisfied by the User, assignee, or their licensees;
(3) Such action is necessary to meet requirements for public use
specified by federal regulations and such requirements are not reasonably
satisfied by the User, assignee or licensee; or
(4) Such action is necessary because the Agreement required by
paragraph (c)(2)(vi) of this clause has not been obtained or waived or because a
licensee of the exclusive right to use or sell any Subject Invention in the
United States is in breach of such Agreement.
(d) Invention Identification, Disclosures, and Reports
The User shall furnish the Patent Counsel a written report containing full
and complete technical information concerning each Subject Invention of the User
within 6 months after conception or first actual reduction to practice (or such
longer period as may be authorized by Patent Counsel for good cause shown in
writing by User), whichever occurs first, in the course of or under this
Agreement, but in any event prior to any on sale, public use or public
disclosure of the Subject Invention known to the User. The report shall identify
the Agreement and inventor and shall be sufficiently complete in technical
detail and appropriately illustrated by sketch or diagram to convey to one
skilled in the art to which the Subject Invention pertains a clear understanding
of the nature, purpose, operation, and to the extent known, the physical,
chemical, biological, or electrical characteristics of the Subject Invention.
The report should also include any election of patent rights under this clause.
When an invention is reported under this paragraph (d), it shall be presumed to
have been made in the manner specified in Section (a)(1) and (2) of 42 USC 5908
and protectable when marked as confidential under 35 USC 205.
(e) Limitation of Rights
Nothing contained in this patent rights clause shall be deemed to give the
Government any rights with respect to any invention other than a Subject
Invention except as set forth in the Facilities License of paragraph (f).
(f) Facilities License
In addition to the rights of the parties with respect to inventions or
discoveries conceived or first actually reduced to practice in the course of or
under this Agreement, the User agrees to and does hereby grant to the Government
an irrevocable, nonexclusive paid-up license in and to any inventions or
discoveries regardless of when conceived or actually reduced to practice or
acquired by the User, which at any time through completion of this Agreement are
owned or controlled by the User and are incorporated in the facility as a result
of this Agreement to such an extent that the facility is not restored to the
condition existing prior to the Agreement (1) to practice or to have practiced
by or for the Government at the facility, and (2) to transfer such license with
the transfer of that facility. The acceptance or exercise by the Government of
the aforesaid rights and license shall not prevent the Government at anytime
from contesting the enforceability, validity or scope of, or title to, any
rights or patents herein licensed.
Attachment A -- p.4
2. Rights in Technical Data - Short Form
(a) Definitions
(1) The definitions of terms set forth in 48 CFR 52.227-14 apply to the
extent these terms are used herein.
(2) "Contracting Officer" means the DOE entity having contract authority
over the Facility and Facility Operator.
(b) Allocation of Rights
(1) The Government shall have:
(i) Unlimited rights in technical data first produced in the
performance of this Agreement; unlimited rights in technical data not first
produced in the performance of this Agreement which is incorporated in technical
data delivered under this Agreement or which is not removed from the facility at
the termination of this Agreement;
(ii) The right of the Contracting Officer or his representatives to
inspect at all reasonable times up to three years after final payment under this
Agreement all technical data first produced in the performance of this Agreement
(for which inspection the User or its subcontractor shall afford proper
facilities to DOE); and
(iii) The right to have any technical data first produced in the
performance of this Agreement delivered to the Government as the Contracting
Officer may from time to time direct during the progress of the work, or in any
event as the Contracting Officer shall direct upon completion or termination of
this Agreement.
(2) The User shall have:
The right to use for its private purposes, subject to patent, security
or other provisions of this Agreement, technical data it first produces in the
performance of this Agreement provided the data requirements of this Agreement
have been met as of the date of the private use of such data. The User agrees
that to the extent it receives or is given access to proprietary data or other
technical, business or financial data in the form of recorded information from
DOE or a DOE User or subcontractor, the User shall treat such data in accordance
with any restrictive legend contained thereon, unless use is specifically
authorized by prior written approval of the Contracting Officer.
(c) Copyrighted Material
(1) The User agrees to, and does hereby grant to the Government, and to its
officers, agents, servants and employees acting within the scope of their
duties:
(i) A royalty-free, nonexclusive, irrevocable license to reproduce,
translate, publish, use, and dispose of and to authorize others so to do, all
copyrightable material first produced or composed in the performance of this
Agreement by the User, its employees or any individual or concern specifically
employed or assigned to originate and prepare such material; and
(ii) A license as aforesaid under any and all copyrighted or
copyrightable works not first produced or composed by the User in the
performance of this Agreement but which are incorporated in the material
furnished under the Agreement, provided that such license
Attachment A -- p.5
shall be only to the extent the User now has, or prior to completion or final
settlement of the Agreement may acquire, the right to grant such license without
becoming liable to pay compensation to others solely because of such grant.
(2) The User agrees that it will not knowingly include any material
copyrighted by others in any written or copyrightable material furnished or
delivered under this Agreement without a license as provided for in subparagraph
(l)(ii) hereof, or without the consent of the copyright owner, unless it obtains
specific written approval of the Contracting Officer for the inclusion of such
copyrighted material.
3. Notice and Assistance Regarding Patent and Copyright Infringement
(a) The User shall report to the Government, promptly and in reasonable written
detail, each notice or claim of patent or copyright infringement based on the
performance of this Agreement of which the User has knowledge.
(b) In the event of any claim or suit against the Government on account of any
alleged patent or copyright infringement arising out of the performance of this
Agreement or out of the use of any supplies furnished or work or services
performed hereunder, the User shall furnish to the Government when requested by
the Government, all evidence and information in possession of the User
pertaining to such suit or claim. Such evidence and information shall be
furnished at the expense of the Government except where the User has agreed to
indemnify the Government.
