PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED BASED ON A REQUEST FOR
CONFIDENTIAL TREATMENT
Exhibit 10.22
COLLABORATION AGREEMENT
THIS COLLABORATION AGREEMENT (this "Agreement") is entered into as of June
27, 2000, by and among DELTAGEN, INC. ("Deltagen"), a Delaware corporation with
a place of business at 0000 Xxxxxxxx Xxxxxx, Xxxxx Xxxx, XX 00000, U.S.A., and
GLAXO GROUP LIMITED ("GGL") and GLAXO RESEARCH AND DEVELOPMENT LIMITED ("GWRD"),
each incorporated in England with a place of business at Glaxo Xxxxxxxx Xxxxx,
Xxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxx XX0 ONN, United Kingdom.
NOW, THEREFORE, in consideration of the promises and the mutual covenants
and conditions set forth in this Agreement, the parties agree as follows:
ARTICLE 1
DEFINITIONS
1.1 "Affiliate" shall mean, with respect to a party to this Agreement, any
entity directly or indirectly controlling or controlled by or in common control
with such party, where "control" is defined as the ownership of at least *** of
the equity or beneficial interests of such entity, or the right to vote for or
appoint a majority of the board of directors or other governing body of such
entity.
1.2 "Access Term" shall mean, with respect to each Phenotype Set delivered to
Glaxo Wellcome hereunder, the period commencing on the date on which Glaxo
Wellcome *** and ending on the *** for such Phenotype Set.
1.3 "Competent Jurisdiction" shall mean any of the following jurisdictions:
***.
1.4 "Confidential Information" shall mean, the content of this Agreement, the
Deltagen Proprietary Information, the DeltaBase Functionality and, with respect
to a party, all data and/or information of any kind whatsoever (including
without limitation, data, databases, compilations, formulae, schemata, models,
patent disclosures, procedures, processes, projections, protocols, results of
experimentation and testing, specifications, strategies and techniques), and all
tangible and intangible embodiments thereof of any kind whatsoever (including
without limitation, apparatus, compositions, documents, drawings, machinery,
patent applications, records, laboratory and research notebooks, memoranda and
reports), which are disclosed by such party to the other party and is marked,
identified as or otherwise acknowledged to be confidential at the time of
disclosure to the other party. Notwithstanding the foregoing, the obligations
of the parties with respect to Confidential Information set forth in Article 7
below shall not apply to data and/or information which the other party can
establish by written documentation (a) to have been publicly known prior to
disclosure of such data and/or information by the disclosing party to the other
party, (b) to have become publicly known, without fault on the part of the other
party, subsequent to disclosure of such data and/or information by the
disclosing party to the other party, (c) to have been received by the other
party at any time from a source, other than the
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
disclosing party, rightfully having possession of and a right to disclose such
data and/or information, (d) to have been otherwise known by the other party
prior to disclosure of such data and/or information by the disclosing party to
the other party, or (e) to have been independently developed by the employees or
agents of the other party without access to or the use of such data and/or
information disclosed by the disclosing party to the other party.
1.5 "Data Set" shall mean the collective group of Phenotype Sets designated by
Deltagen for inclusion in DeltaBase and delivered to Glaxo Wellcome hereunder in
a given *** of DeltaBase Information under Section 3.2.1 below.
1.6 "DeltaBase" shall mean Deltagen's database consisting of DeltaBase
Information and DeltaBase Functionality.
1.7 "DeltaBase Access Plan" shall mean the plan mutually agreed to by the
parties hereto, substantially in the form of Exhibit A, which establishes
mechanisms for Glaxo Wellcome to document access to the DeltaBase and ensure
compliance with the parameters of such access.
1.8 "DeltaBase Functionality" shall mean the DeltaBase software and
documentation provided to Glaxo Wellcome hereunder; provided, however, that the
DeltaBase Functionality shall exclude all Third Party hardware and software,
including the Third Party hardware and software listed on Exhibit B.
1.9 "DeltaBase Information" shall mean the *** and related data and/or
information, generated or developed by or on behalf of Deltagen from or relating
to *** and entered into one or more databases *** or as to which ***, to be
provided under a subscription to DeltaBase on a nonexclusive basis to DeltaBase
subscribers generally (including Glaxo Wellcome). Notwithstanding the
foregoing, DeltaBase Information shall not include data or information generated
or developed by or on behalf of Deltagen that is for its or its Affiliates' use,
for use on an exclusive basis by one or more specific Third Parties, and not
intended by Deltagen for inclusion in DeltaBase.
1.10 "Deltagen Patent Rights" shall mean patents and/or patent applications
owned by *** to Deltagen, as of the Effective Date or during the Access Term,
which comprise (a) with respect to ***, any claims covering making, having made,
using, selling, offering for sale, importing or otherwise commercializing *** or
(b) with respect to a ***, any claim covering (i) ***, or uses thereof; or (ii)
***, or uses thereof; and including any divisions, continuations, re-issues,
re-examinations, extensions or other governmental actions which extend any of
the subject matter of such patent applications or patents; provided that
Deltagen Patent Rights shall exclude the Excluded Patent Rights.
1.11 "Deltagen Proprietary Information" shall mean DeltaBase Information that
is confidential and/or proprietary to Deltagen and/or its Affiliates or
licensor(s); provided however, that Deltagen Proprietary Information shall
exclude any data or information that, at the time of first disclosure by
Deltagen, was (a) publicly known prior to such disclosure or (b) already in the
possession of Glaxo Wellcome or (c) generated or developed by or for Glaxo
Wellcome independently and entirely without access to or any reference to or use
of any Deltagen Information, unless such independently generated or developed
data or information or its
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-2-
generation, development or use, absent the rights and licenses granted by this
Agreement, would infringe any of the Deltagen Patent Rights.
1.12 "Derivative Work" shall mean any and all modifications, improvements,
enhancements, translations, abridgments and the like to ***, and includes,
without limitation, (a) for copyrightable or copyrighted material, any
modification, translation including translation into other computer languages,
port, abridgment, condensation, expansion, correction, addition, extension,
adaptation, extraction, or other form in which such material may be recast,
transformed, or adapted which if prepared without a license to do so would
result in copyright infringement; (b) for patentable or patented material, any
improvement thereon; and (c) for material which is protected by trade secret,
any new material derived from such existing trade secret material, including new
material which may be protected by copyright, patent and/or trade secret laws.
1.13 "Derived" or "derived" shall mean obtained, developed, created, tested,
identified, discovered, synthesized, designed, or resulting from, based upon or
otherwise generated (whether directly or indirectly, or in whole or in part).
1.14 "Designated Gene" shall mean a Target Gene ***.
1.15 "Designated Mutated Gene" shall mean the Mutated Gene that corresponds to
a Designated Gene.
1.16 "Diagnostic Product" shall mean any product, other than a database,
that is (1) for use in (a) the *** in humans (including, without limitation,
the ***), (b) the selection of *** in humans, and (c) the *** in humans and (2)
is derived from the use of, or makes any use of any (i)*** (ii) ***, (iii)
*** (iv) Deltagen Proprietary Information or (v) Deltagen Patent Rights.
1.17 "Effective Date" shall mean the date on which Glaxo Wellcome receives the
first Data Set from Deltagen, which shall be no later than September 1, 2000.
1.18 "ES Cell Line" shall mean, with respect to a Designated Gene, the
embryonic stem cell line used to produce a line of Knockout Mice containing
within their genome the corresponding Designated Mutated Gene.
1.19 "Excluded Patent Rights" shall mean (a) the patents and/or patent
applications owned by, *** Deltagen claiming (i) *** (ii) any product,
formulation or composition, or the use of any product, formulation or
composition, *** (iii) *** or (iv) *** (except that claims described by
sub-clauses (a)(iii) and (a)(iv) above shall not be considered Excluded Patent
Rights and shall be included within the definition of Deltagen Patent Rights,
***; and (b) any divisions, continuations, continuations-in-part, reissues,
reexaminations, extensions or other governmental actions which extend any of the
subject matter of the patent applications or patents in (a) above.
1.20 "Extended Access Term" shall mean, with respect to each Phenotype Set
delivered to Glaxo Wellcome hereunder, the period commencing on the expiration
of the Initial Access Term for such Phenotype Set, and ending on *** of such
Initial Access Term for such Phenotype Set under Section 3.1.5 below.
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-3-
1.21 "FDA" shall mean the US Food & Drug Administration.
1.22 "***" with respect to Knockout Mice is defined in Section 5.1.1.
1.23 "Glaxo Wellcome" shall mean, collectively, GGL, GWRD and their respective
Affiliates.
1.24 "Health Registration" shall mean, with respect to a Product, approval for
marketing and sale of that Product by the requisite governmental or regulatory
authority ***.
1.25 "Initial Access Term" shall mean, with respect to each Phenotype Set
delivered to Glaxo Wellcome hereunder, the period commencing on the date on
which Glaxo Wellcome first receives such Phenotype Set, and ending on the later
of (a) *** the date on which Glaxo Wellcome first ***, or (b) the *** of the
Effective Date.
1.26 "Installation Sites" shall mean the site(s) where the DeltaBase is
installed pursuant to this Agreement and shall in the first instance be limited
to:
*** (the "First Installation Site")
and subsequently to any other research facilities of Glaxo Wellcome nominated by
Glaxo Wellcome and agreed to in writing by Deltagen.
1.27 "Knockout Mice" or "Knockout Mouse" shall mean, with respect to a ***,
mice or a mouse containing ***.
1.28 "Lead Optimization" shall mean the process of ***.
1.29 "Major Market Country" shall mean any of the following countries: ***.
1.30 "Material Transfer Agreement" shall mean a material transfer agreement in
the form set out in Exhibit F or a modified version thereof with all changes
thereto approved by Deltagen in writing.
1.31 "Mutated Gene" shall mean a *** chosen or targeted by Deltagen and used by
Deltagen in the generation of Knockout Mice, ***.
1.32 "Person" shall mean an individual, corporation, partnership, limited
liability company, trust, business trust, association, joint stock company,
joint venture, pool, syndicate, sole proprietorship, unincorporated
organization, governmental authority or any other form of entity not
specifically listed herein.
1.33 "Phenotype Set" shall mean, with respect to a distinct *** and entered
into one or more databases comprising DeltaBase. During the applicable Access
Term, ***.
1.34 "Pre-clinical Candidate Selection" shall mean the point at which ***.
1.35 "Proof Of Concept" shall mean the *** by or for Glaxo Wellcome.
1.36 "Product(s)" shall mean, collectively, ***. Notwithstanding anything to
the contrary in
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-4-
this Agreement, ***.
1.37 "Research Partner" shall mean a Person (whether it is in the public or
private sector) that (a) is a university or other academic non-profit entity at
which research is sponsored by Glaxo Wellcome *** Glaxo Wellcome *** of Products
for the sole benefit of Glaxo Wellcome and (b) receives any (i) *** (ii) ***
(iii) ***or (iv) *** under this Agreement; provided, however, no Research
Partner shall be entitled to receive *** unless and until such Research Partner
executes a Material Transfer Agreement and is subject to the obligations of
confidentiality and restrictions on use contained in this Agreement. Upon
reasonable request, Glaxo Wellcome will provide Deltagen with a written list of
all past and current Research Partners receiving such information pursuant to
this Agreement.
1.38 "Target Gene" shall mean a gene or sequence that is described, referenced
or otherwise included in the DeltaBase Information by Deltagen.
1.39 "Therapeutic Product" shall mean any product developed or generated by or
on behalf of Glaxo Wellcome which is (a) comprised of or includes *** active
ingredients and (b) *** (c) derived from the use of, or makes any use of any (i)
*** (ii) ***(iii) *** (iv) DeltaBase Information; or (v) Deltagen Patent Rights.
1.40 "Third Party" shall mean any Person other than Deltagen, Glaxo Wellcome
and their respective Affiliates and/or Research Partners.
1.41 "Valid Claim" shall mean any claim of any particular patent that (a) is
part of the Deltagen Patent Rights; and (b) is issued or granted by any
Competent Jurisdiction; and (c) has not been finally declared unpatentable or
invalid at the completion of post-grant opposition proceedings including any
appeal therefrom; and (d) is unexpired and has not been held unenforceable,
unpatentable or invalid by a court or other governmental body having legal
competency to hear the matter and proper jurisdiction and venue in a decision
that is unappealable, or unappealed within the time allowed for appeal; and (e)
has not been rendered unenforceable through disclaimer or otherwise or been lost
through an interference proceeding.
1.42 "Valid Reach-Through Claim" shall mean a Valid Claim ***.
ARTICLE 2
REPRESENTATIONS AND WARRANTIES; CERTAIN COVENANTS
2.1 Mutual Representations and Warranties. Each party hereby represents and
warrants to the other party as follows:
2.1.1 Corporate Existence. Such party is a corporation duly
organized, validly existing and in good standing under the laws of the
jurisdiction in which it is incorporated.
2.1.2 Authorization and Enforcement of Obligations. Such party (a)
has the requisite power and authority and the legal right to enter into
this Agreement and to perform its obligations hereunder, and (b) has taken
all necessary action on its part to authorize the execution and delivery
of this Agreement and the performance of its obligations hereunder. This
Agreement has been duly executed and delivered on behalf of such party,
and constitutes a legal, valid,
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-5-
binding obligation, enforceable against such party in accordance with its
terms.
2.1.3 Consents. All necessary consents, approvals and authorizations
of all governmental authorities and other Persons required to be obtained
by such party in connection with its execution of this Agreement have been
obtained.
2.1.4 No Conflict. The execution and delivery of this Agreement and
the performance of such party's obligations hereunder (a) do not conflict
with or violate any requirement of applicable laws or regulations and (b)
do not conflict with, or constitute a default under, any contractual
obligation of such party.
2.2 Deltagen Representation, Warranty, and Covenant.
2.2.1 Deltagen hereby represents and warrants to Glaxo Wellcome that:
2.2.1.1 As of the Effective Date, Deltagen is the owner of the Deltagen
Patent Rights and, ***, has the right to grant the licenses
thereunder contemplated hereby.
2.2.1.2 When operated with the recommended Third Party hardware and
software listed on Exhibit B, the DeltaBase Functionality shall ***.
2.2.1.3 When operated with the recommended Third Party hardware and
software listed on Exhibit B, the DeltaBase Functionality will not
produce errors in processing date and/or time data in connection with
the year 2000 change, will successfully and correctly transition and,
with respect to the correct system date, will remain operational and
properly functioning into and beyond the year 2000, and will
accurately and correctly process any and all date and/or time data
from, into and between the twentieth and twenty-first centuries, when
the DeltaBase Functionality is used with accurate date and/or time
data in accordance with its documentation, provided that all other
products used with the DeltaBase Functionality properly exchange date
and/or time data with the DeltaBase Functionality.
2.2.1.4 The DeltaBase Information and the Phenotype Sets *** and shall
*** to generate and develop the data and information contained
therein.
2.2.1.5 ***, the DeltaBase Functionality shall not include any so-called
"computer virus," "worm," or "Trojan horse" or other similar
malicious computer code.
2.3 In the event of the breach of any representation or warranty by Deltagen
under Section 2.2, Glaxo Wellcome shall provide prompt written notice thereof to
Deltagen describing in reasonably specific detail the nature of the alleged
breach. With respect to *** (a) in the case where *** or (b) in all other
cases, ***.
2.4 Deltagen shall notify Glaxo Wellcome of *** against or owed ***, or any
***, known to Deltagen, relating to the applicable Deltagen Patent Rights which
Deltagen believes will *** Glaxo Wellcome hereunder.
2.5 For purposes of this Agreement, *** and *** (or phrases to similar effect)
shall mean, in
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-6-
each case, the knowledge of employees of Deltagen *** with respect to such
subject matter as any reasonably diligent company would perform in the normal
course of its own business operations.
2.6 DISCLAIMER OF WARRANTIES.
2.6.1 DELTAGEN MAKES NO REPRESENTATIONS OR WARRANTIES, EXPRESS OR
IMPLIED, WITH RESPECT TO THE *** OR OTHER RESULTS OF THE ***.
2.6.2 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS ARTICLE 2,
DELTAGEN MAKES NO REPRESENTATIONS OR WARRANTIES, EXPRESS OR IMPLIED, WITH
RESPECT TO ***, THE ***, THE DELTABASE, THE KNOCK-OUT MICE, THE ***, OR
DELTAGEN PATENT RIGHTS, INCLUDING WITHOUT LIMITATION ANY WARRANTY OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR NONINFRINGEMENT OF
THE PATENT RIGHTS OR OTHER INTELLECTUAL PROPERTY RIGHTS OF ANY OTHER
PERSON.
2.7 Third Party Licenses. Without limiting the generality of the foregoing in
Section 2.6, Glaxo Wellcome hereby acknowledges that Glaxo Wellcome will be
required to obtain (sub)licenses to use *** software and *** in order to use the
DeltaBase Functionality in accordance with this Agreement.
2.8 Governmental Consents and Approvals. Each party shall be responsible,
at its own expense, for complying with all applicable laws and obtaining all
applicable governmental and regulatory approvals, consents, permits and
licenses to perform its duties and responsibilities under this Agreement. In
particular:-(a) Deltagen shall perform its obligations in conformance with
(i) the Content Criteria, (ii) generally accepted industry standards for
non-clinical research and laboratory animal care and welfare as reasonably
implemented by Deltagen in its facilities and operations, and (iii) if and to
the extent applicable, all other local, state and federal laws, rules,
regulations, and ordinances including, but not limited to, the federal ***
including, but not limited to, *** and the regulations of the *** and (b)
Glaxo Wellcome shall be responsible for complying with such laws and
obtaining all such governmental and regulatory approvals, consents, permits
and licenses in connection with the ***, as well as in connection with access
to and the receipt, storage, and use of such materials by Glaxo Wellcome in
accordance with this Agreement. The parties will consult and cooperate each
other with respect to their respective compliance with this Section 2.8.
ARTICLE 3
DELTABASE ACCESS
3.1 Access to the DeltaBase.
3.1.1 Access. Subject to the terms and conditions of this Agreement,
Deltagen shall provide Glaxo Wellcome with access in accordance with
Exhibit A to the DeltaBase at the Installation Sites during the applicable
Access Term for each Phenotype Set delivered to Glaxo Wellcome hereunder.
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-7-
3.1.2 Installation, Maintenance and Support. Deltagen shall install
the DeltaBase at the First Installation Site on a mutually acceptable
date, and thereafter shall during the Access Term *** Glaxo Wellcome.
Deltagen shall install, and during the Access Term maintain and support,
the DeltaBase at additional Installation Sites at Deltagen's then current
rates for installation, maintenance and support, ***. Deltagen shall
perform such installation, maintenance and support in accordance with the
Installation Maintenance and Support Plan attached as Exhibit C. Deltagen
and its duly authorized representatives shall have the sole right and
responsibility for such installation, maintenance and support of the
DeltaBase and shall install, maintain and support DeltaBase using
commercially reasonable standards of care ***. Glaxo Wellcome shall be
solely responsible at its sole cost for, and shall, obtain the recommended
Third Party hardware and software listed on Exhibit B. Glaxo Wellcome
shall appoint one (1) Glaxo Wellcome employee resident at each
Installation Site who shall be both (a) the primary person to contact
Deltagen and (b) the primary contact for Deltagen, for all communications
regarding the installation, maintenance and support of the DeltaBase at
such Installation Site. Glaxo Wellcome shall notify Deltagen in writing
promptly upon such appointment and thereafter upon any changes in such
appointments.
3.1.3 Installation Site. Except as expressly provided herein, Glaxo
Wellcome's use of the DeltaBase shall be limited to the Installation
Sites. DeltaBase shall be installed on the hard disk of a single
designated file server at the Installation Sites, but may not be copied
for individual clients of such server. Glaxo Wellcome shall be entitled
to designate *** of DeltaBase (i) for back-up and retrieval purposes only
and (ii) a test server to enable integration of DeltaBase into Glaxo
Wellcomes own computer system. In no event shall Glaxo Wellcome install
or use the DeltaBase in a manner which would allow unauthorized access.
3.1.4 Training. Deltagen shall provide Glaxo Wellcome with ***
training by *** Deltagen employees regarding the use of the DeltaBase.
Deltagen additionally shall provide Glaxo Wellcome with *** of training at
***, regarding the use of the DeltaBase. The number of employees to
receive such training ***. ***. Deltagen shall provide Glaxo Wellcome
with such additional training services in such manner, at such rates as
shall be mutually agreed between the parties, ***.
3.1.5 Extended Access Term. Glaxo Wellcome will provide Deltagen with
written notice of its election under the following subsections of this
Section 3.1.5, not later than *** prior to the expiration of the then
Access Term. Failure to provide such notice shall be deemed an election
not to extend the Access Term. Following receipt of such notice, Deltagen
will invoice Glaxo Wellcome as appropriate.
3.1.5.1 With respect to each Phenotype Set delivered to Glaxo
Wellcome hereunder, Glaxo Wellcome shall have the right to
extend its period of access to such Phenotype Set for additional
*** periods commencing on the expiry of the Initial Access Term
or relevant Extended Access Term as the case may be, by
notifying Deltagen of its desire to do so as described above
and paying to Deltagen an amount equal to *** for each ***
period with respect to such Phenotype Set by the *** in which
Glaxo Wellcome receives the invoice.
3.1.5.2 With respect to all Phenotype Sets in a Data Set delivered
to Glaxo Wellcome in a
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-8-
single quarterly installment, Glaxo Wellcome shall have the right to
extend its access to all Phenotype Sets in such Data Set for
additional one *** periods, commencing on the expiry of the Initial
Access Term or relevant Extended Access Term as the case may be, by
notifying Deltagen of its desire to do so as described above. Glaxo
Wellcome shall pay to Deltagen an amount equal to *** for each Data
Set *** in each Data Set for each *** period with respect to all
Phenotype Sets in such Data Set. Payments due hereunder shall be paid
by the *** in which Glaxo Wellcome receives the invoice.
3.1.5.3 With respect to all Phenotype Sets delivered to Glaxo Wellcome
during the Initial Access Term, Glaxo Wellcome shall have the right
to extend its access to all such Phenotype Sets for additional ***
periods, commencing on the expiry of the Initial Access Term or
relevant Extended Access Term as the case may be, by notifying
Deltagen of its desire to do so as described above and paying to
Deltagen an amount equal to *** for each *** period with respect to
all Phenotype Sets delivered to Glaxo Wellcome during the Initial
Access Term by the *** in which Glaxo Wellcome receives the invoice.
3.2 DeltaBase Information.
3.2.1 Delivery of Phenotype Sets. During each of the *** of the
Access Term, Deltagen shall deliver to Glaxo Wellcome *** Data Sets as
part of the DeltaBase Information. The Data Sets delivered to Glaxo
Wellcome on a *** in each year shall include up to a total of ***
Phenotype Sets per year delivered at the rate of *** Phenotype Sets per
***. If available (and subject to section 3.1.5.2) and if Glaxo Wellcome
so elects and Deltagen agrees, Glaxo Wellcome may receive Data Sets with
*** per Data Set ***. If available and if Glaxo Wellcome so elects and
Deltagen agrees, Glaxo Wellcome may receive Phenotype Sets that are
designated by Deltagen for inclusion in DeltaBase and delivery to
DeltaBase subscribers under a DeltaBase subscription, *** per year, by
paying to Deltagen *** per *** by the *** in which Glaxo Wellcome receives
the invoice.
3.2.2 Quality Assurance. Glaxo Wellcome shall have a period of ***
after the receipt of each Data Set by Glaxo Wellcome hereunder to ***
described in Exhibit D as varied with the consent of both parties (the
"Content Criteria"). In the event that any Data Set *** the Content
Criteria, Glaxo Wellcome shall provide written notice to Deltagen *** in
reasonable detail. If Deltagen does not agree that ***, then the matter
will be addressed by the *** and, if necessary, according to the ***.
With respect to each ***, Deltagen shall, within *** after its receipt of
such notice, (a) in the case where *** is the result of or relates to ***,
***, mutually agree with Glaxo Wellcome upon a *** or (b) in all other
cases, ***. If Glaxo Wellcome does not provide written notice of *** with
respect to such Data Set pursuant to this Section 3.2.2 within such ***
period, such Data Set shall be *** with the Content Criteria.
3.2.3 Supplemental DeltaBase Information. During the Access Term for
each Phenotype Set, Deltagen shall additionally provide to Glaxo Wellcome
*** with respect to *** to Glaxo Wellcome hereunder that are *** and
provided under a subscription to DeltaBase on a nonexclusive basis ***
(including Glaxo Wellcome ). Deltagen, at its sole discretion, also may
from time to time release to its DeltaBase subscribers (including Glaxo
Wellcome) as
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-9-
part of the general DeltaBase subscription, ***. Deltagen shall send all
DeltaBase Information to Glaxo Wellcome on a reasonably suitable medium
(being either Magneto Optical Disk, Tape or CD ROM) under such means
agreed to by the parties. Notwithstanding the foregoing, such updates and
supplements shall not include information or data generated or developed
by or on behalf of Deltagen that is for its or its Affiliates' use, for
use on an exclusive basis by one or more specific Third Parties, and not
intended by Deltagen for inclusion in DeltaBase.
3.3 DeltaBase Access Plan. Glaxo Wellcome shall comply with the DeltaBase
Access Plan at all times during the Access Term.
3.4 Ownership and Use of DeltaBase.
3.4.1 Ownership. Notwithstanding anything to the contrary herein, as
between Deltagen and Glaxo Wellcome, Deltagen shall retain all right,
title and interest in and to the DeltaBase, including without limitation,
the DeltaBase Information and all worldwide intellectual property rights
therein and thereto.
3.4.2 Permitted Use
3.4.2.1 Subject to the terms and conditions of this Agreement (including
without limitation prompt payment of all fees due hereunder), Glaxo
Wellcome may:- (a) *** use (i) the DeltaBase Information solely to
conduct internal research and (ii) the DeltaBase Functionality solely
to search and access the DeltaBase Information, in each case for the
sole benefit of Glaxo Wellcome, ***.
3.4.2.2 Glaxo Wellcome shall not disclose, broker, license or otherwise
grant rights in, sell, assign, or transfer the DeltaBase or any
portion thereof or any interest therein to any Third Party. Glaxo
Wellcome shall not authorize or permit any unauthorized access,
copying, alteration or installation of the DeltaBase or any portion
thereof.
3.4.2.3 Glaxo Wellcome shall not, in part or in whole, reverse engineer,
decompile, reproduce, publicly display, adapt, modify, prepare
Derivative Works based upon, or distribute copies (in whatever form,
whether tangible or intangible, by any means whatsoever whether now
known or hereafter invented) of the DeltaBase for any purpose except
to make the *** pursuant to section 3.1.3 *** . Glaxo Wellcome also
shall have the right to ***. Any such *** shall be subject to the
same terms and conditions that apply to DeltaBase under this
Agreement. Deltagen shall have no obligation to support any such ***.
Notwithstanding anything to the contrary in this Agreement, the right
of Glaxo Wellcome *** under this Section 3.4.2.3 shall not diminish
or otherwise impair Deltagen's right, title and interest in
DeltaBase. ***, subject to Deltagen's ownership of and prior rights
in the DeltaBase Information included or incorporated therein or on
which such *** is based. In no event, however, shall this Section
3.4.2.3 be interpreted to allow ***, or any compilation of databases
that include any DeltaBase Proprietary Information (modified or
unmodified) for sale, licensing or other commercialization.
3.4.3 Records on use of DeltaBase. Glaxo Wellcome shall maintain
records *** of Glaxo Wellcome's access to and use of the ***. Glaxo
Wellcome shall maintain such records during the Access Term and for a
period of *** thereafter. Such records shall be in sufficient detail
and in a
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-10-
format to enable Deltagen to monitor compliance with the terms and
conditions of this Agreement, including without limitation, the DeltaBase
Access Plan. Upon Deltagen's reasonable request ***, Glaxo Wellcome shall
permit a Deltagen designee (at Deltagen's cost) to have access during
ordinary business hours to such records as may be reasonably necessary to
verify compliance with the terms of this Agreement regarding use of the
DeltaBase for any year not more than *** prior to the date of such
request. Glaxo Wellcome shall be given not less than *** prior advance
notice of any request for access. Such designee shall be bound by
obligations of confidentiality no less than those contained in this
Agreement and shall disclose to Deltagen only whether Glaxo Wellcome is in
compliance with the applicable terms and conditions of this Agreement. If
such audit reveals that Glaxo Wellcome is in material non-compliance with
this Agreement, then Glaxo Wellcome shall pay or reimburse the costs of
and fees for such audit.
3.4.4 Unauthorized Disclosure or Use. Glaxo Wellcome shall notify
Deltagen immediately in the event of any actual or suspected unauthorized
disclosure or use, loss, or theft of the DeltaBase or any part thereof,
and shall take all steps reasonably requested by Deltagen to investigate
and terminate any of the foregoing. Notwithstanding this obligation,
subject to the terms and conditions of this Agreement, Deltagen confirms
that during the Access Term, Glaxo Wellcome shall have the right to use
the DeltaBase solely for Glaxo Wellcome's internal use by authorized
personnel of Glaxo Wellcome at the Installation Site in secure work
facilities in accordance with the terms and conditions of this Agreement
and the DeltaBase Access Plan set out in Exhibit A. Glaxo Wellcome shall
have no access to or right to use the DeltaBase except at the Installation
Site under the terms and conditions of this Agreement.
3.4.5 Record and Reports. Glaxo Wellcome shall keep complete and
accurate records of its activities conducted under this Agreement and the
results thereof sufficient to permit Deltagen to confirm the accuracy of
Glaxo Wellcome's payment obligations under this Agreement. In addition to
the reports provided pursuant to other Sections of this Agreement for
billing purposes, within *** during the Access Term and after the end of
the Access Term, Glaxo Wellcome shall prepare and provide Deltagen with an
annual written report of the activities conducted under this Agreement
pursuant to Exhibit E and each year Glaxo Wellcome shall prepare and
provide to the Escrow Agent the reports set forth in Exhibit E.
3.5 Subscription Fee. In consideration for the right to access DeltaBase
hereunder, Glaxo Wellcome shall pay to Deltagen the following nonrefundable and
noncreditable amounts on the following dates:
3.5.1 With respect to the first Data Set delivered to Glaxo Wellcome
hereunder, *** for ***, which shall be paid as follows: (a) *** which
Glaxo Wellcome receives the invoice or such Data Set, whichever is later,
and (b) *** within *** days following receipt by Glaxo Wellcome of the
Data Set or invoice, whichever is later, provided that payment under
clause (b) of this Section 3.5.1 shall be subject to Section 3.5.3.
3.5.2 With respect to each subsequent Data Set delivered to Glaxo
Wellcome hereunder, *** for *** which shall be paid as follows: (a) *** in
which Glaxo Wellcome receives the invoice or such Data Set, whichever is
later, and (b) *** within *** following receipt by Glaxo Wellcome of the
Data Set or invoice, whichever is later, provided that payment under
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-11-
clause (b) of this Section 3.5.2 shall be subject to Section 3.5.3.
3.5.3 If Glaxo Wellcome gives notice within the requisite *** day
period under Section 3.2.2 that each Data Set, as delivered, ***, then
Glaxo Wellcome *** as the case may be, *** with the Data Set in question
but *** for each *** or the *** (b) with respect to ***, whichever is
lesser. Amounts, if any, *** will be paid promptly upon ***. Glaxo
Wellcome's *** certain payments under this Section 3.5.3 shall not affect
its obligation to make full and timely *** of all other amounts due under
this Agreement. Any disputes under this section shall be dealt with in
accordance with Article 12.
ARTICLE 4
RIGHTS AND LICENSES
4.1 Rights and Licenses Granted. Subject to the terms and conditions of this
Agreement (including, without limitation, Section 11.5 and the prompt payment of
all fees due under this Article 4), Deltagen hereby grants to Glaxo Wellcome (a)
the right to access and use the DeltaBase and use the Deltagen Proprietary
Information, subject to the terms of this Agreement and for the purposes
contemplated hereby, and (b) a non-exclusive world-wide license under Deltagen
Patent Rights to ***.
4.2 License Fees. Glaxo Wellcome shall pay the following license fees to
Deltagen:-
4.2.1 *** promptly upon *** with respect to each *** developed or
generated by or for Glaxo Wellcome.
4.2.2 *** promptly upon *** with respect to each *** derived from the
use of a *** where; (a) *** of the ***, , through any ***, the *** or the
product of *** and; (b) the *** and; (c) the *** describes or covers a ***
the ***; and (d) the ***.
4.2.3 (a) *** promptly upon *** with respect to each *** derived from
the use of a *** and (b) *** promptly upon the obtaining of the *** with
respect to any *** derived from the use of *** where; (i) a *** of the ***
is *** through any ***, *** *** the product of the ***; (ii) *** and;
(iii) the *** describes or covers ***; and (iv) the ***.
4.2.4 *** promptly upon the *** with respect to a ***.
4.2.5 (a) *** promptly upon the obtaining of the *** with respect to
each ***.
4.3 Clarification of Payment Obligations. It is understood between Glaxo
Wellcome and Deltagen that:
4.3.1 If a particular *** specific to *** is (a) the subject of ***
and/or (b) is the subject of *** and Glaxo Wellcome decides to proceed
instead with one or more other directly related *** specific to the same
***, then Glaxo Wellcome shall, with respect to each such ***.
4.3.2 The timing of the obtaining of *** by Deltagen is not related to
or coupled with the timing of any of the payment events set forth in
Section 4.2. For example, a given Product not previously subject thereto
may become subject to Section 4.2.3(b) and/or Section 4.2.5
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-12-
due to the ***. In such circumstances, Glaxo Wellcome promptly shall pay
to Deltagen the highest applicable license fees due under whichever of
Sections 4.2.2 through 4.2.5 then apply with respect to that Product, ***,
it being the intent that Deltagen always be paid the maximum license fees
due under Section 4.2 but that in such cases *** under Sections 4.2.2
through 4.2.5 shall be payable.
4.3.3 For the purposes of this Agreement, *** will be differentiated
from one another, based on whether or not they are, or would be, covered
by a *** (or the relevant competent authority); provided, however, that a
given product, formulation or composition grouping will be considered a
*** even if *** are or would be required *** (or the relevant competent
authority), if *** are solely due to and/or (b) ***. For the avoidance of
doubt, if a given ***, or if two or more products, formulations or
compositions ***, then, subject to the proviso to the preceding sentence,
each will be considered a separate *** for purposes of this Agreement.
4.3.4 Payments made pursuant to Section 4.2 are non-creditable, ***,
and are non-refundable. Without limiting the generality of the preceding
sentence, no credit or refund of amounts paid or payable pursuant to
Sections 4.2.2 through 4.2.5 based on the existence of a ***
***. However, the parties agree *** *** for payment under Sections 4.2.2
through 4.2.5 ***.
4.4 Due Date. Glaxo Wellcome shall make the payments referred to in Section
4.2 by the *** in which Glaxo Wellcome receives the invoice from Deltagen. Glaxo
Wellcome will report in writing to Deltagen each *** and each *** promptly, and
in any event within thirty (30) days thereafter, so that Deltagen can issue the
corresponding invoice hereunder and receive payment without delay.
4.5 Acknowledgment. The parties expressly agree that, provided that Glaxo
Wellcome has paid in full all amounts due and otherwise is not in default
hereunder, and subject to the applicable provisions of Article 9, nothing
contained in this Agreement shall restrict in any way whatsoever Glaxo
Wellcome's use and exploitation, either during the Access Term or after the
expiry of the Access Term, of *** in accordance with this Agreement.
4.6 *** by Glaxo Wellcome or its Research Partners and that contain in their
genome *** of a Knockout Mouse shall be subject to all of the restrictions and
provisions of this Agreement applicable to Knockout Mice ***.
ARTICLE 5
USE OF *** KNOCKOUT MICE
5.1 Transfer to Glaxo Wellcome.
5.1.1 With respect to each ***, if during the applicable Access Term
Glaxo Wellcome provides written notice to Deltagen of its desire to use
Knockout Mice containing *** Gene, Deltagen shall transfer to Glaxo
Wellcome *** of the *** of such Knockout Mouse *** after receiving such
notice from Glaxo Wellcome. In general, Deltagen intends to *** for each
line of Knockout Mice and ***. However, if Deltagen in its ordinary course
of business *** of a line of a Knockout Mouse, then Deltagen shall notify
Glaxo Wellcome of this fact and, at Glaxo Wellcomes option, either; (a)
provide Glaxo Wellcome *** Glaxo Wellcome (at Glaxo
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-13-
Wellcome's cost) to ***, or Knockout Mice ***, solely for use by Glaxo
Wellcome on the terms and conditions of this Agreement or (b) *** of
Knockout Mice or *** (as jointly determined by the parties) for such
Designated Mutated Gene at costs mutually agreed upon by the parties which
shall be *** as the costs set out in this Section 5. The use of Knockout
Mice or *** maintained or obtained by Glaxo Wellcome pursuant to the
preceding sentence shall be subject to all the terms and conditions of
this Agreement.
5.1.2 Glaxo Wellcome may request *** in its notice pursuant to Section
5.1.1; provided, however, Glaxo Wellcome acknowledges that Deltagen
maintains *** only and that the availability to Glaxo Wellcome ***. In
the event of a request by Glaxo Wellcome for ***, Section 5.1.1 shall not
apply and the parties instead will negotiate, reasonably and in good
faith, the quantity, time schedule and amount to be paid for the delivery
of such Knockout Mice. Once such terms are mutually agreed, Deltagen will
send a confirming written notice to Glaxo Wellcome. Glaxo Wellcome may
elect to revert back to *** by written notice received by Deltagen at any
time prior to its dispatch of such confirming notice.
5.2 Use. Except as expressly provided herein, Glaxo Wellcome, directly or
indirectly through Research Partners, shall use *** and Knockout Mice solely
during the applicable Access Term (subject to Section 9.1) and solely for Glaxo
Wellcome's internal research purposes.
5.3 Transfer Fees.
5.3.1 In partial consideration of Deltagen's resources and efforts
expended in connection with the transfer to Glaxo Wellcome ***, Knockout
Mice or other means of supply under Section 5.1 above, Glaxo Wellcome
shall pay to Deltagen the following amounts at the times set forth
herein:
---------------------------------------------------------------------
By the *** in which Glaxo *** per ***
Wellcome receives the *** for a
requested line of Knockout Mice,
or Deltagen s invoice, whichever
is later
---------------------------------------------------------------------
By the *** the month in which As mutually agreed pursuant to
Glaxo Wellcome receives a Section 5.1.2
requested line of Knockout Mice
pursuant to Section 5.1.2 or
Deltagen s invoice, whichever is
later
---------------------------------------------------------------------
By the *** the month in which *** per ***
Glaxo Wellcome receives
Deltagen s invoice after
advising Deltagen of each
commencement of the first
screening activities using each
line of Knockout Mice
---------------------------------------------------------------------
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-14-
---------------------------------------------------------------------
By the *** in which Glaxo *** per ***
Wellcome receives Deltagen s
invoice after advising Deltagen
of the *** line of Knockout Mice
***
---------------------------------------------------------------------
5.3.2 Payments made pursuant to Section 5.3 are non-creditable and are
non-refundable. Payments under this Section 5.3 are in addition to any
applicable payment under Sections 4.2 or 6.3, notwithstanding that such
payments may relate to the same ***, Knockout Mouse and/or Product.
5.3.3 Glaxo Wellcome will report in writing to Deltagen quarterly, ***
using each line of Knockout Mice and each *** Knockout Mice ***, so that
Deltagen can issue the corresponding invoice hereunder and receive payment
without delay. Such reports will be as accurate and complete as reasonably
possible, except that annually, Glaxo Wellcome will internally audit the
activities giving rise to payment under Section 5.3.1 and will certify in
writing to Deltagen, concurrently with the annual deposit into escrow
pursuant to Section 3.4.5, the amounts due under Section 5.3.1 for each
category of payment. If required, the parties will make appropriate
adjustment to true-up the payments made pursuant to Glaxo Wellcome's
monthly reports against the amount shown on such annual certification.
5.3.4 In the event that Glaxo Wellcome *** Knockout Mice *** in any
***, the parties shall meet to discuss if ***, on a going forward basis
for the remainder *** , ***, if any, achieved by Deltagen based on the ***
by Glaxo Wellcome and ***.
5.4 Certain Restrictions. The transfer of ***, Knockout Mice and any other
means of supply under Section 5.1 above to Glaxo Wellcome is made expressly
subject to the following terms and conditions:
5.4.1 Except as expressly allowed by this Agreement, all Knockout Mice
and their progeny and *** shall remain in the sole control of Glaxo
Wellcome and Glaxo Wellcome shall not (and shall not attempt or purport
to) transfer such Knockout Mice, *** or mice to any Third Party.
5.4.2 Glaxo Wellcome shall not, directly or indirectly, use or attempt
to use the Knockout Mice ***, or any materials or information derived
therefrom to reverse-engineer or perform any genetic manipulation on the
Knockout Mice ***.
5.4.3 Glaxo Wellcome shall not use or authorize or enable any Research
Partner to use the Knockout Mice or *** and mice produced therefrom for
any purpose other than internal research purposes for the sole benefit of
Glaxo Wellcome.
5.4.4 Glaxo Wellcome shall not (and shall not attempt or purport to)
authorize or enable any Research Partner to assign, sell, have sold,
lease, offer to sell or lease, distribute, license, sublicense or
otherwise transfer title to or an interest the Knockout Mice and their
progeny or ***.
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-15-
5.4.5 Subject to all the terms and conditions of this Agreement, Glaxo
Wellcome may *** to any given Research Partner (which shall, for this
purpose, include such Research Partner's respective Affiliates) within any
twelve (12) month period. *** with respect to any such Research Partner
shall require prior consultation with, and the prior written approval of,
Deltagen (***). All Knockout Mice *** shall be provided to Research
Partners solely pursuant to an executed Material Transfer Agreement and
then solely to conduct internal research at the location identified
therein during the applicable Access Term and solely for the sole benefit
of Glaxo Wellcome.
ARTICLE 6
USE OF ***
6.1 Transfer to Glaxo Wellcome.
6.1.1 With respect to each ***, if during the applicable Access Term
Glaxo Wellcome provides written notice to Deltagen of its desire to obtain
*** containing such ***, Deltagen shall transfer to Glaxo Wellcome ***
containing such *** within thirty (30) days after receiving such notice
from Glaxo Wellcome.
6.2 Use. Except as expressly provided herein, Glaxo Wellcome, directly or
indirectly through Research Partners, ***, and all ***, solely during the
applicable Access Term and solely for Glaxo Wellcome's internal research
purposes.
6.3 Transfer Fees.
6.3.1 In partial consideration of Deltagen's resources and efforts
expended in connection with the transfer to Glaxo Wellcome of *** under
Section 6.1 above, Glaxo Wellcome shall pay to Deltagen the following
amounts at the times set forth herein:
--------------------------------------------------------------------------
By the *** *** per *** in which Glaxo Wellcome receives *** from
each *** or Deltagen's invoice whichever is
later
--------------------------------------------------------------------------
By the *** in which Glaxo Wellcome receives *** per ***
Deltagen's invoice after advising Deltagen
of commencement of the ***
--------------------------------------------------------------------------
By the *** in which an invoice is received *** per ***
after GW has advised Deltagen that it has
undertaken the ***
--------------------------------------------------------------------------
6.3.2 Payments made pursuant to Section 6.3.1 are non-creditable and
are non-refundable. Payments under this Section 6.3 are in addition to
any applicable payment under Sections 4.2
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-16-
or 5.3, notwithstanding that such payments may relate to the same ***,
Knockout Mouse and/or Product.
6.3.3 Glaxo Wellcome will report in writing to Deltagen, quarterly the
commencement of *** and each undertaking of the *** promptly, so that
Deltagen can issue the corresponding invoice hereunder and receive payment
without delay. Such reports will be as accurate and complete as reasonably
possible, except that annually, Glaxo Wellcome will internally audit the
activities giving rise to payment under Section 6.3.1 and will certify in
writing to Deltagen, concurrently with the annual deposit into escrow
pursuant to Section 3.4.5, the amounts due under Section 6.3.1 for each
category of payment. If required, the parties will make appropriate
adjustment to true-up the payments made pursuant to Glaxo Wellcome's
monthly reports against the amount shown on such annual certification.
6.3.4 In the event that Glaxo Wellcome ***, the parties shall meet to
discuss if ***, on a going forward basis for the remainder ***, if any,
achieved by Deltagen based on the *** by Glaxo Wellcome and ***.
6.4 Certain Restrictions. The transfer of the *** under Section 6.1 to Glaxo
Wellcome is made expressly subject to the following terms and conditions:
6.4.1 Except as expressly allowed under this agreement, all *** shall
remain in the sole control of Glaxo Wellcome and Glaxo Wellcome shall not
(and shall not attempt or purport to) transfer any *** to any Third Party.
6.4.2 Glaxo Wellcome shall not, directly or indirectly, use or attempt
to use the *** to reverse-engineer or perform any genetic manipulation on
the Knockout Mice ***. For the avoidance of any doubt Glaxo Wellcome ***.
6.4.3 Glaxo Wellcome shall not use the *** or any *** for any purpose
other than internal research purposes for the sole benefit of Glaxo
Wellcome.
6.4.4 Glaxo Wellcome shall not (and shall not attempt or purport to)
authorize or enable any Research Partner to assign, sell, have sold,
lease, offer to sell or lease, distribute, license, sublicense or
otherwise transfer title to or an interest in the *** any ***.
6.4.5 Subject to all the terms and conditions of this Agreement, Glaxo
Wellcome may *** to any given Research Partner within any twelve (12)
month period*** with respect to any Research Partner (which shall, for
this purpose, include its respective Affiliates) shall require prior
consultation with, and the prior written approval of, Deltagen (***). All
Knockout Mice, ***, shall be provided to Research Partners solely pursuant
to an executed Material Transfer Agreement and then solely to conduct
internal research at the location identified therein during the applicable
Access Term and solely for the sole benefit of Glaxo Wellcome.
ARTICLE 7
CONFIDENTIALITY
7.1 Confidential Information. During the term of this Agreement, and for a
period of fifteen (15) years following the expiration or earlier termination
hereof, each party shall maintain in
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-17-
confidence all Confidential Information disclosed by the other party, and shall
not use, disclose or grant the use of the Confidential Information except on a
need-to-know basis to those directors, officers, employees, consultants,
clinical investigators, contractors, agents, distributors or permitted
assignees, to the extent such disclosure is reasonably necessary in connection
with such party's activities as expressly authorized by this Agreement. To the
extent that disclosure is authorized by this Agreement, then prior to such
authorized disclosure, each party hereto shall obtain agreement of any such
Person to hold in confidence and not make use of the Confidential Information
for any purpose other than those permitted by this Agreement. Each party shall
notify the other promptly upon discovery of any unauthorized use or disclosure
of the other party's Confidential Information.
7.2 Terms of this Agreement. Except as otherwise provided in Section 7.1
above, neither party shall disclose any terms or conditions of this Agreement to
any Third Party without the prior consent of the other party. Notwithstanding
the foregoing, prior to execution of this Agreement, the parties shall agree
upon the substance of information that can be used to describe the terms of this
transaction, and each party may disclose such information, as modified by mutual
agreement from time to time, without the other party's consent.
7.3 Permitted Disclosures. The confidentiality obligations contained in this
Article 7 shall not apply to:- (a) the extent that the receiving party (the
"Recipient") is required (a) to disclose information by law, order or regulation
of a governmental agency or a court of competent jurisdiction, or (b) to
disclose information to any governmental agency for purposes of ***, provided in
either case that the Recipient shall provide written notice thereof to the other
party and sufficient opportunity to object to any such disclosure or to request
confidential treatment thereof.
7.3.1 Glaxo Wellcome shall be entitled to *** generated by Glaxo
Wellcome from Glaxo Wellcome's use of DeltaBase, the Knockout Mice and the
*** under this Agreement, provided always that *** do not contain any
information or data contained in DeltaBase or other Confidential
Information of Deltagen. Glaxo Wellcome will notify Deltagen of the name
of the ***, to allow Deltagen to satisfy itself that such publications do
not contain any DeltaBase Information or Confidential Information of
Deltagen. If Deltagen does not provide Glaxo Wellcome with comments upon
any *** at least ten (10) days prior to ***, then those *** shall be
deemed to have been approved by Deltagen. Glaxo Wellcome may submit the
last form of *** approved (or deemed approved) by Deltagen to third
parties for *** without requiring any further comments from Deltagen. ***
publications shall be re-submitted to Deltagen for its review and approval
as described in this Section 7.3.1. Any *** intended by Research Partners
shall be subject to the provisions of section 10 of Exhibit F.
7.3.2 Promptly upon their execution of this Agreement, the parties
will issue the joint press release in the form attached as Exhibit G.
Otherwise, neither party shall make any public announcement concerning
this Agreement or the subject matter hereof, except as required by
applicable law, without first submitting a copy of the proposed
announcement to the other party for review and obtaining their consent
thereto, such consent not to be unreasonably withheld or delayed.
ARTICLE 8
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-18-
INDEMNIFICATION
8.1 Indemnity.
8.1.1 Glaxo Wellcome shall indemnify and hold Deltagen harmless, from
and against all losses, liabilities, damages and expenses suffered by
Deltagen (including reasonable attorneys' fees and costs) resulting from
all claims, demands, actions and other proceedings by any Third Party to
the extent arising from (a) a material breach of any representation,
warranty or covenant of Glaxo Wellcome under this Agreement, (b) the use
of the DeltaBase, Knockout Mice or *** by or for Glaxo Wellcome, (c) the
development, manufacture, possession, distribution, use, testing, sale or
other disposition of any Product (without regard to culpable conduct), or
(d) the *** or its Research Partners in the performance of its
obligations, and its permitted activities, under this Agreement.
8.1.2 Deltagen shall indemnify and hold Glaxo Wellcome harmless, from
and against all losses, liabilities, damages and expenses suffered by
Glaxo Wellcome (including reasonable attorneys' fees and costs) resulting
from all claims, demands, actions and other proceedings by any Third Party
to the extent arising from (a) a material breach of any representation,
warranty or covenant of Deltagen under this Agreement , or (b) *** *** in
the performance of its obligations to be performed under this Agreement.
8.2 Procedure. A party (the "Indemnitee") that intends to claim
indemnification under this Article 8 shall promptly notify the other party (the
"Indemnitor") of any claim, demand, action or other proceeding for which the
Indemnitee intends to claim such indemnification. The Indemnitor shall have the
right to participate in, and to the extent the Indemnitor so desires jointly
with any other indemnitor similarly notified, to assume the defense thereof with
counsel selected by the Indemnitor; provided, however, that the Indemnitee shall
have the right to retain its own counsel, with the fees and expenses to be paid
by the Indemnitor, if representation of the Indemnitee by the counsel retained
by the Indemnitor would be inappropriate due to actual or potential differing
interests between the Indemnitee and any other party represented by such counsel
in such proceedings. The indemnity obligations under this Article 8 shall not
apply to amounts paid in settlement of any claim, demand, action or other
proceeding if such settlement is effected without the prior express written
consent of the Indemnitor, which consent shall not be unreasonably withheld or
delayed. The failure to deliver notice to the Indemnitor within a reasonable
time after notice of any such claim or demand, or the commencement of any such
action or other proceeding, if prejudicial to its ability to defend such claim,
demand, action or other proceeding, shall relieve such Indemnitor of any
liability to the Indemnitee under this Article 8 with respect thereto, but the
omission so to deliver notice to the Indemnitor shall not relieve it of any
liability that it may have to the Indemnitee otherwise than under this
Article 8. The Indemnitor may not settle or otherwise consent to an adverse
judgment in any such claim, demand, action or other proceeding, that diminishes
the rights or interests of the Indemnitee without the prior express written
consent of the Indemnitee, which consent shall not be unreasonably withheld or
delayed. The Indemnitee, its employees and agents, shall reasonably cooperate
with the Indemnitor and its legal representatives in the investigation of any
claim, demand, action or other proceeding covered by this Article 8.
8.3 Insurance. Each party shall maintain with a reputable insurance company
such
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-19-
comprehensive general liability insurance coverage with respect to their
respective obligations and liabilities under this Agreement as it determines
reasonable and appropriate for its respective business and activities.
ARTICLE 9
TERMINATION
9.1 Term. The term of this Agreement shall commence on the Effective Date and
continue thereafter unless terminated earlier pursuant to this Article 9. This
Agreement in so far as it relates to Glaxo Wellcome's access to and use of
Knockout Mice, *** and DeltaBase shall expire on the expiry of the Access Term.
Subject to Section 9.6.2, the right of Glaxo Wellcome to develop, make, have
made, use, offer for sale, sell, import and keep Products under *** shall
continue in full force and effect notwithstanding ***; provided always that
Glaxo Wellcome complies with all the payment and other applicable and relevant
provisions of this Agreement.
9.2 Termination for Cause. A party may terminate this Agreement upon or after
the breach of any material provision of this Agreement (which shall include,
without limitation, any material breach by Deltagen of *** and any material
breach by Glaxo Wellcome of its *** by the other party, if the breaching party
has not cured such breach within *** after written notice thereof from the other
party. Notwithstanding the foregoing, in the case of a failure to pay any
undisputed amounts due hereunder the period of cure of any such default shall be
*** and, unless payment is made within such period, the termination shall become
effective at the end of such *** period.
9.3 Termination on Notice. Glaxo Wellcome shall be entitled to terminate this
Agreement, without the necessity of good cause, upon the service on Deltagen, at
any time during the *** next following the first anniversary of the Effective
Date, of written notice of termination pursuant to this Section 9.3 plus
payment, concurrently with such notice, of an amount equal to *** under Section
3.2.1) plus all of Glaxo Wellcome's unpaid payment obligations incurred up to
the date of termination. Termination pursuant to this Section 9.3 shall be
effective *** Deltagen's receipt of such notice.
9.4 Termination on Insolvency. Either party may terminate this Agreement upon
the other party (a) passing a resolution for its winding-up or a court of
competent jurisdiction making an order for that party's winding-up or
dissolution or (b) the making of an administration order in relation to that
party or (c) the appointment of a receiver over, or an encumbrancer taking
possession of or selling an asset of, that party or (d) the other party making
an arrangement or composition with its creditors generally or making an
application to a court of competent jurisdiction for protection from its
creditors generally.
9.5 ***.
9.5.1 Either party may terminate this Agreement for good reason,
determined reasonably and in good faith, in the event that the other party
completes any transaction for the sale or transfer to a Third Party of
substantially all of the other party's business (by asset or stock sale,
merger or otherwise). For the purposes of this Section 9.5.1, "***"
includes if such Third Party is ***. Deltagen expressly consents to the
merger between Glaxo Wellcome and
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-00-
XxxxxXxxxx Xxxxxxx and that, if completed, the provisions of this
Agreement shall apply to the newly merged entity, provided that the newly
merged entity executes an assumption agreement, in form reasonably
satisfactory to Deltagen, pursuant to which the newly merged entity
assumes all of Glaxo Wellcomes obligations and liabilities hereunder upon
identical terms and conditions to those set out in this Agreement.
9.5.2 Glaxo Wellcome may terminate this Agreement without the
necessity of good reason, in the event that Glaxo Wellcome completes any
transaction for the sale or transfer to a Third Party of substantially all
of such party's business (by asset or stock sale, merger or otherwise).
9.5.3 For the avoidance of doubt, this Section 9.5 does not apply to
an initial public offering or any other public sale of securities, a
corporate reorganization, the sale of securities in a financing or
re-financing, or any other similar transaction.
9.5.4 A termination pursuant to this Section 9.5 by a party shall
occur, if at all, by prompt written notice to the other party (a) in the
case of a termination under section 9.5.1, within thirty (30) days after
receipt of written notice from the other party of the pendency or
completion of the pertinent transaction and (b) in the case of a
termination under Section 9.5.2, within five (5) days after the completion
of the pertinent transaction.
9.6 Effect of Expiration and Termination.
9.6.1 Termination or expiration of this Agreement shall not relieve
either party hereto from any obligation to make payment or other liability
accruing prior to such termination or expiration, nor preclude either
party from pursuing any rights and remedies it may have hereunder in law
or equity which accrued or are based upon any event occurring prior to
such termination or expiration.
9.6.2 Upon termination of this Agreement by Glaxo Wellcome pursuant to
Sections 9.3 or 9.5 or any termination by Deltagen pursuant to Sections
9.2 or 9.4, all rights and licenses granted by or under this Agreement, in
respect of Products for which Glaxo Wellcome has not completed all its
payment obligations as set out in this Agreement that have come due prior
to such termination date, shall immediately terminate and Glaxo Wellcome
shall, and shall cause its Research Partners to, (i) immediately
discontinue all access to and use of the DeltaBase, the Knockout Mice,
***; (ii) purge the DeltaBase from all computers within its possession or
control and otherwise remove the DeltaBase from the Installation Sites;
(iii) return to Deltagen or destroy the DeltaBase (except for one (and
only one) copy in object code form which may be retained, uninstalled, by
counsel to Glaxo Wellcome on magnetic media solely for legal archive
purposes), all remaining Knockout Mice, ***, and all information, data,
progeny, materials, and other compositions derived therefrom and copies
thereof; and (iv) for each Installation Site and on behalf of Glaxo
Wellcome and its Research Partners generally, provide an express written
certification by a responsible officer of GWRD that items (i) through
(iii) above have been fully complied with within thirty (30) days after
the date of such termination or expiration. For the avoidance of any doubt
*** (under which Glaxo Wellcome has completed all of such relevant
payments), shall continue in full force and effect *** but subject to
Glaxo Wellcomes continued compliance with all the terms and conditions of
this Agreement as they apply to ***.
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-21-
9.6.3 Upon any termination by Glaxo Wellcome pursuant to Sections 9.2
or 9.4 or by Deltagen pursuant to Section 9.5.1, all rights and licenses
granted by or under this Agreement, in respect of *** for which Glaxo
Wellcome has either completed or chooses to continue its payment
obligations as set out in Section ***, will continue on the terms and
conditions set forth in this Agreement (including regarding payment), but
shall be *** received by Glaxo Wellcome through the date of such
termination. The survival of such *** pursuant to this Section 9.6.3
shall remain subject to Section 9.6.2 upon subsequent termination of this
Agreement as so limited, by the applicable party.
9.6.4 The provisions of Articles 1, 7, 8, 9, 10 (excluding Section
10.2), 12 and 14; the provisions of Sections 2.6, 2.7, 2.8, 3.4.1,
3.4.2.2, 3.4.2.3, 3.4.3, 3.4.5, 4.4, 4.6, 5.4, 6.4 11.1 and 11.5; and, to
the extent applicable, all provisions regarding payment due hereunder
shall survive any expiration or termination of this Agreement.
ARTICLE 10
MISCELLANEOUS
10.1 Compliance with Law. Glaxo Wellcome shall be responsible for compliance
with all applicable product safety, product testing, product labeling, package
marking, and product advertising laws and regulations with respect to its own
activities and products (including Products). Further, Glaxo Wellcome shall
comply with the laws and regulations of the United States and any other relevant
nation concerning any export or transfer of technology, services or products.
10.2 Joint Committee. Within ten days after the Effective Date, GWRD, on behalf
of Glaxo Wellcome, and Deltagen each shall designate their respective
representatives on a Joint Committee; each party shall nominate *** to serve on
the Joint Committee and may replace said representative(s) from time-to-time by
written notice to the other party. On an annually rotating basis, one of the
party's representatives shall be the Chair of the Joint Committee and one of the
other party's representatives shall be the Secretary of the Joint Committee,
with ***. The Joint Committee shall meet at the minimum on a *** basis during
the Access Term, unless the parties agree otherwise, and shall be (a)
responsible for the supervision of the installation of the DeltaBase and the
procedures relating to access to the DeltaBase by Glaxo Wellcome in accordance
with this Agreement and (b) an initial forum for the *** under this Agreement.
Each party shall bear their own costs and expenses incurred in supporting the
Committee and meetings shall take place as decided at each meeting of the
Committee. All actions by the Joint Committee shall require the unanimous vote
of all representatives, and the Joint Committee shall have quorum requirement of
at least one (1) representative of each party present and voting. Subject to the
last sentence of Section 10.5, actions and decisions by *** vote of the Joint
Committee shall be binding on both parties; provided, however, that although the
Joint Committee may, subject to Section 10.9, waive the application of a
particular provision of this Agreement to a particular situation on a case-by-
case basis, it shall not have the power or the authority to amend this Agreement
and any such amendment shall be effective only upon full execution of a formal
instrument of amendment pursuant to Section 10.5. In the event that the
Committee does not reach agreement in relation to any decisions the matter shall
be resolved by further negotiation or, if applicable, dispute resolution in
accordance with Article 12. Meetings shall take place at such location and may
be held in person, by telephone or by video conference, as the Joint
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-22-
Committee may agree.
10.3 Notices. Any consent, notice or report required or permitted to be given
or made under this Agreement by one of the parties to the other shall be in
writing and addressed to such other party at its address indicated below, or to
such other address as the addressee shall have last furnished in writing to the
addressor, and shall be effective upon receipt by the addressee.
If to Deltagen: Deltagen, Inc.
0000 Xxxxxxxx Xxxxxx
Xxxxx Xxxx, XX 00000
U.S.A.
Attention: President
With a copy to: General Counsel, at the same address
-23-
If to Glaxo Wellcome: Glaxo Group Limited
Glaxo Xxxxxxxx Xxxxx
Xxxxxxxx Xxxxxx
Xxxxxxxxx
XX
XX0 ONN
Attention: The Company Secretary
10.4 Assignment. Except as otherwise expressly provided under this Agreement,
neither this Agreement nor any right or obligation hereunder may be assigned or
otherwise transferred (whether voluntarily, by operation of law or otherwise),
without the prior express written consent of the other party; * * *. Any
permitted assignee shall assume all obligations of its assignor under this
Agreement. Any purported assignment or transfer in violation of this Section
10.4 shall be void.
10.5 Applicable Law. This Agreement shall be governed by and construed in
accordance with the laws of * * *, without regard to the conflicts of law
principles thereof.
10.6 Entire Agreement. This Agreement contains the entire understanding of the
parties with respect to the subject matter hereof. All express or implied
representations, agreements and understandings, either oral or written,
heretofore made are expressly superseded by this Agreement. This Agreement may
be amended, or any term hereof modified, only by a written instrument duly
executed by both parties.
10.7 Headings. The captions to the several Articles and Sections hereof are
not a part of this Agreement, but are merely guides or labels to assist in
locating and reading the several Articles and Sections hereof.
10.8 Independent Contractors. Each party hereby acknowledges that the parties
shall be independent contractors and that the relationship between the parties
shall not constitute a partnership, joint venture or agency. Neither party
shall have the authority to make any statements, representations or commitments
of any kind, or to take any action, which shall be binding on the other party,
without the prior consent of the other party to do so.
10.9 Waiver. The waiver by a party of any right hereunder, or of any failure
to perform or breach by the other party hereunder, shall not be deemed a waiver
of any other right hereunder or of any other breach or failure by the other
party hereunder whether of a similar nature or otherwise.
10.10 Force Majeure. A party shall neither be held liable or responsible to the
other party, nor be deemed to have defaulted under or breached this Agreement,
for failure or delay in fulfilling or performing any obligation under this
Agreement (other than an obligation for the payment of money) to the extent, and
for so long as, such failure or delay is caused by or results from causes beyond
the reasonable control of such party including but not limited to fire, floods,
embargoes, war, acts of war (whether war be declared or not), insurrections,
riots, civil commotion, strikes, lockouts or other labor disturbances, acts of
God or acts, omissions or delays in acting by any governmental authority or the
other party.
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-24-
10.11 Other Activities. Except as otherwise expressly provided in this
Agreement, nothing in this Agreement shall preclude either party from conducting
other programs (either for its own benefit or with or for the benefit of any
other Person) to conduct research, or to develop or commercialize products or
services, for use in any field.
10.12 LIMITATION OF LIABILITY. EXCEPT AS PROVIDED OTHERWISE IN THIS AGREEMENT
IN ARTICLE 8 OR IN THE EVENT OF A MATERIAL BREACH OF SECTIONS 3.3 OR 3.4.2 OR A
BREACH OF ARTICLE 7, IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY
FOR CONSEQUENTIAL, INCIDENTAL, INDIRECT, SPECIAL OR EXEMPLARY DAMAGES OF ANY
KIND, INCLUDING WITHOUT LIMITATION LOSS OF PROFITS, SAVINGS OR REVENUE, OR THE
CLAIMS OF THIRD PARTIES, WHETHER OR NOT ADVISED OF THE POSSIBILITY OF SUCH
LIABILITY OR LOSS, HOWSOEVER CAUSED, AND ON ANY THEORY OF LIABILITY, RELATING TO
OR IN CONNECTION WITH THIS AGREEMENT.
10.13 Joint and Several Liability. GGL and GWRD shall be jointly and severally
liable for all obligations and liabilities of Glaxo Wellcome and its Research
Partners under this Agreement.
10.14 Counterparts. This Agreement may be executed in two or more counterparts,
each of which shall be deemed an original, but all of which together shall
constitute one and the same instrument.
ARTICLE 11
INTELLECTUAL PROPERTY
11.1 Ownership of Intellectual Property Rights.
11.1.1 With the exception of the rights and licenses to Glaxo
Wellcome pursuant to Article 4 and subject to Section 11.1.2, Deltagen
shall solely own and retain all rights, title and interests and all
intellectual property and intellectual property rights in and to Deltagen
Patent Rights, DeltaBase, Knockout Mice, * * *, together with all
Derivative Works thereof and all results, modifications and inventions
thereto or arising therefrom made or derived by or on behalf of Deltagen.
11.1.2 Subject to the prior rights of Deltagen under Section 11.1.1 and
any of Deltagen's other intellectual property and intellectual property
rights, including any rights it may have in Derivative Works as noted in
Section 11.1.4, Glaxo Wellcome shall solely own and retain all rights,
title and interests in and to any * * * and all results, modifications and
inventions made by or on behalf of Glaxo Wellcome arising from its access
to the Deltagen Proprietary Information and/or research using Knockout
Mice, * * * in accordance with this Agreement including, * * * provided
hereunder or any Products that may arise from such research.
11.1.3 Subject to the prior rights of Deltagen under Section 11.1.1 and
any of Deltagen's other intellectual property and intellectual property
rights, including any rights it may have in * * * as noted in Section
11.1.4, the parties shall jointly own any * * * and results, inventions
and modifications that (a) are co-invented (in the case of patentable
subject matter), jointly * * *) and/or jointly or co-developed/created (in
the case of trade secrets), in each case as determined under applicable
law, and (b) arise from Glaxo Wellcome's access to and use of
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-25-
the Deltagen Proprietary Information and/or research using Knockout
Mice ***. In the event of any such joint ownership of intellectual
property and intellectual property rights, the parties shall negotiate
in good faith about how best to exploit such intellectual property
rights.
11.1.4 Glaxo Wellcome's sole or joint ownership rights in any * * * and
results, modifications and inventions described in Sections 11.1.2 or
11.1.3 shall not affect Deltagen's or a third party's ownership of and
prior rights in the underlying work from or on which such * * * or
results, modifications and inventions is derived.
11.2 Infringements. In the event that Glaxo Wellcome becomes aware of a
product or activity which it believes to infringe a Valid Claim of the Deltagen
Patent Rights* * * but shall promptly advise Deltagen of all relevant facts and
circumstances known to it in connection with such infringement. Deltagen * * *
during the Access Term (and whilst any licences granted pursuant to Section 4.1
remain in effect) of (a) * * * and (b) of all infringements, claims, judgments
or settlements against or owed by Deltagen, or any claims or arbitration,
mediation and/or litigation * * *.
11.3 Patent Prosecution. Deltagen shall at its sole discretion and expense,
have the sole right (but not the obligation) to prosecute, maintain, abandon
and enforce any and all of the Deltagen Patent Rights as and to the extent
solely Deltagen determines appropriate. Deltagen shall * * * that is part of
the Deltagen Patent Rights and covering a *** or a Knockout Mouse, ***
provided hereunder. Upon request, Deltagen will reasonably inform Glaxo
Wellcome, in confidence if applicable, * * *.
11.4 No Challenge. In consideration of * * * to, challenge or contest or seek
to invalidate or otherwise block any of the Deltagen Patent Rights or the
issuance or enforcement of any patent or Valid Claim of the Deltagen Patent
Rights. If, following the expiry of the Access Term, Glaxo Wellcome or any Third
Party on behalf of Glaxo Wellcome acts in contravention of this Section 11.4,
Deltagen shall be entitled to terminate *** pursuant to Section 4.1 which is
covered by the Deltagen Patent Right which Glaxo Wellcome seeks to challenge or
contest.
11.5 No Implied Licenses. Notwithstanding anything to the contrary in this
Agreement, Deltagen retains all of its right, title and interest in and to the
Deltagen Patent Rights, the DeltaBase, the Excluded Patent Rights, * * *, the
Knockout Mice, * * * and all other intellectual property rights of Deltagen, the
* * * Glaxo Wellcome shall be limited to those expressly set forth in this
Agreement, and no grants or licenses of rights to Glaxo Wellcome, its Research
Partners or any Third Party shall be implied. Except as expressly permitted
hereby, Glaxo Wellcome shall not use, practice, modify, reproduce, distribute,
or otherwise transfer or exploit any of the DeltaBase, the Deltagen Patent
Rights, the Excluded Patent Rights, * * *, the Knockout Mice, * * * or any other
intellectual property rights of Deltagen, in whole or in part.
ARTICLE 12
DISPUTE RESOLUTION
12.1 Mediation.
12.1.1 Any dispute, controversy or claim arising out of or relating to
this Agreement, or the interpretation, breach, termination or validity
hereof, shall be resolved in the first instance
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-26-
through consultation. Such consultation shall begin promptly after one
party has delivered to the other party a written request for such
consultation.
12.1.2 If within 30 days following the date on which a request for
consultation described in Section 12.1.1 is given the dispute cannot be
resolved, the parties shall seek to settle it by mediation in accordance
with the Centre for Dispute Resolution ("CEDR") Model Mediation Procedure
(the "Model Procedure"). To initiate a mediation a party must give notice
in writing to the other party to the dispute requesting a mediation
pursuant to this Section 12.1.2. A copy of the request shall also be sent
to CEDR. The mediation shall be before a single, jointly agreed upon,
mediator. If the parties are unable to select a mutually agreeable
mediator within * * * after the initiation of mediation, then
participation in such mediation is not required and Section 12.3 shall
apply.
12.1.3 The mediation shall take place at a time and neutral location
selected by the mediator after due consultation with the parties.
Statements made during the mediation and all submissions to the mediator
shall be confidential and shall be treated as settlement discussions and
not be admissible in evidence in any court proceeding. Any applicable
statute of limitations shall be tolled during the period from the
initiation of mediation proceedings until thirty (30) days after the
cessation thereof.
12.1.4 The procedure in the Model Procedure will be amended to take
account of any relevant provisions in this Agreement and any other
agreement which the parties may enter into in relation to the conduct of
the mediation.
12.1.5 The commencement of a mediation shall be within twenty eight
(28) days of the service of the notice set out in Section 12.1.2, and
subject to Sections 12.2 and 12.3 neither party shall commence with court
proceedings until they have attempted to settle the dispute by mediation
in accordance with this Article 12.
12.2 Equitable Remedies. Nothing in this Article 12 shall prevent or limit a
party from seeking an injunction or other equitable relief to prevent breaches
of Article 7 or, in the case of actions brought by Deltagen, to restrain Glaxo
Wellcome or a Research Partner from use of DeltaBase, or any Knockout Mouse, ***
in a manner or to an extent not authorized by this Agreement.
12.3 Court Proceedings. If a mediation cannot commence because the parties are
unable to agree jointly on a mediator (see the last sentence of Section 12.1.2),
or if a meditation commences but the dispute(s), controversy(ies) or claim(s) in
question are not fully resolved by the mediation process within * * *
thereafter, then either party is fully free to pursue through court proceedings
any or all rights and remedies it may have.
ARTICLE 13
MOST FAVOURED NATION
13.1 More favorable Terms. In the event that Deltagen enters into an agreement
with any of its subscribers to DeltaBase that * * * to Deltagen, * * *, which
are * * * to Deltagen, * * *, set out in this Agreement, then Deltagen and Glaxo
Wellcome shall enter into a separate confidentiality agreement and Deltagen
shall notify named individuals within Glaxo Wellcome
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-27-
promptly of the * * * and Glaxo Wellcome shall have * * * to determine whether
to * * * or not. In particular, if the * * * provided under a DeltaBase
subscription is * * *, Deltagen shall (as described above) notify Glaxo Wellcome
of the * * * so that Glaxo Wellcome may decide whether * * * of this Section 13
or not.
ARTICLE 14
WITHHOLDING TAX
14.1 Payment Without Deduction. All payments due under this Agreement will be
made in full without deduction for or on account of any present or future taxes
or duties of whatever nature that may be imposed, except as provided in Section
14.2
14.2 Withholding Taxes. Glaxo Wellcome * * * from amounts otherwise due
hereunder if and as compelled by applicable law and shall remit the amount
withheld to the appropriate taxing authorities on Deltagen's behalf and the
remainder to Deltagen. Glaxo Wellcome will provide Deltagen with a written
receipt or a tax deduction certificate from the tax authority for all taxes so
withheld. Glaxo Wellcome will cooperate with Deltagen in obtaining exemption
from such withholding and in minimizing or avoiding any such tax withholding
requirement, as available under applicable law.
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-28-
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first set forth above.
DELTAGEN, INC.
By: /S/ Xxxxxxx Xxxxxxxx
------------------------
Title: President and Chief Executive Officer
-------------------------------------
GLAXO GROUP LIMITED
By: /s/ X. X. Xxxxxxxx
---------------------------
Title: Assistant Corporate Secretary
-------------------------------
GLAXO RESEARCH AND DEVELOPMENT LIMITED
By: /s/ X. X. Xxxxxxxx
-----------------------
Title: Corporate Secretary
---------------------
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EXHIBIT E
ESCROW AGREEMENT
The parties have established the following escrow procedures to facilitate (a) a
means by which the parties can fulfill their obligations under this Agreement
and (b) a means of notification to Deltagen that certain payments under this
Agreement are to be made by Glaxo Wellcome to Deltagen, while providing for
increased anonymity of Glaxo Wellcome's research and development activities.
1. Within * * * after Glaxo Wellcome's receipt of each Phenotype Set Glaxo
Wellcome shall perform the following actions in this Section 1. With
respect to each Target Gene in each such Phenotype Set, Glaxo Wellcome
shall generate a unique Glaxo gene identification number ("Glaxo Gene ID
Number") that corresponds to each Deltagen gene identification number
("Deltagen Gene ID Number") for each Target Gene. Glaxo Wellcome shall
then make a deposit into escrow in its annual escrow deposit of a written
key in tabular form that lists each Glaxo Gene ID Number paired and
identified with the corresponding Deltagen Gene ID Number. Glaxo Wellcome
shall also provide Deltagen in writing each year in an annual report with
each set of Glaxo Gene ID Numbers deposited into escrow, identifying the
Phenotype Set corresponding to such Glaxo Gene ID numbers. Upon such
deposit into escrow, Glaxo Wellcome shall then have the right to use the
DeltaBase Information with respect to such Designated Gene for use in
accordance with the terms and conditions of this Agreement. Any use of
such DeltaBase Information not in conformance with this Agreement is
expressly prohibited.
2. Glaxo Wellcome shall make a deposit into escrow in its annual escrow
deposit of each Glaxo Gene ID Number intended to be used in the conduct of
research or development by Glaxo Wellcome. Such deposit shall also
include the first date of use or planned use of such Target Gene. Any
escrow deposits shall be made by Glaxo Wellcome to an escrow agent
mutually agreed to in writing between the parties ("Escrow Agent"). Such
Escrow Agent shall be a reputable law firm based in London. The Escrow
Agent may be changed upon the written request of a party and the
acceptance of the other party, which acceptance shall not be unreasonably
withheld.
3. Promptly upon PRE-CLINICAL CANDIDATE SELECTION under Section 4.2 of this
Agreement, Glaxo Wellcome shall make a deposit into escrow in its annual
escrow deposit of the Deltagen Gene ID Number corresponding to each Target
Gene with respect to which Glaxo Wellcome commences PRE-CLINICAL CANDIDATE
SELECTION under Section 4.2 of this Agreement. Glaxo Wellcome shall also
notify Deltagen in writing each year in an annual report of the Glaxo Gene
ID number for each such Target Gene.
4. With respect to each payment of * * * under Section 5.3.1 of this
Agreement, Glaxo Wellcome shall make a deposit into escrow in its annual
escrow deposit of the Deltagen Gene ID Number corresponding to Target
Gene/Knockout Mouse line that is the subject of such payment. Glaxo
Wellcome shall also notify Deltagen in writing each year in an annual
report of the Glaxo Gene ID number for each such Target Gene/Knockout
Mouse line.
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
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5. With respect to each payment of * * * for (a) * * * and (b) * * * with
respect to each ***, under Section 6.3.1 of this Agreement, Glaxo
Wellcome shall, in its annual escrow deposit, make a deposit into
escrow of the Deltagen Gene ID Number corresponding to Target Gene/ES
Cell line that is the subject of such payment. Glaxo Wellcome shall
also notify Deltagen in writing each year in an annual report of the
Glaxo Gene ID number for each such Target Gene/ES Cell line.
6. All information or data deposited with the Escrow Agent shall be deposited
via electronic mail using a public key cryptography system reasonably
acceptable to Glaxo Wellcome and Escrow Agent. The Escrow Agent will
promptly copy the received decrypted information onto a CD-ROM, recorded
with the date and time and reasonably explaining the purpose of the
deposit as it relates to the specific escrow deposit requirements under
this Agreement. A back-up copy of such information shall be maintained in
a fireproof safe (or other similar fireproof method) by the Escrow Agent.
The Escrow Agent shall notify Deltagen in writing (with a written copy to
Glaxo Wellcome) each time an escrow deposit is made by Glaxo Wellcome.
7. In the event that Deltagen reasonably believes in good faith that payments
are due and payable under this Agreement and Glaxo Wellcome has not paid
such payments to Deltagen, Deltagen shall have the right to request from
Glaxo Wellcome, * * *, a written declaration of intent to make such
payments. Such request may include a request that Glaxo Wellcome prepare
a reasonably detailed written accounting of the Glaxo Gene ID Numbers and
a summary of the current status of research or development with respect to
the disputed payment(s). Glaxo Wellcome shall have * * * to respond in
writing to Deltagen's request. If Deltagen is not reasonably satisfied
with the response, Glaxo Wellcome shall, within * * * written notice from
Deltagen, make a deposit into escrow of the written accounting and
summary. Deltagen shall have the right to have an independent third party
reasonably acceptable to Glaxo Wellcome, perform an audit of the files and
deposited materials of the Escrow Agent corresponding to the disputed
payment. Such third party shall report to Deltagen only whether Glaxo
Wellcome is in compliance with the applicable terms and conditions of this
Agreement.
8. The fees of the Escrow Agent will be borne by * * *.
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-31-
EXHIBIT F
FORM OF MATERIAL TRANSFER AGREEMENT
NB. The parties acknowledge that this draft shall form the basis of any MTA and
that any material changes requested by a Third Party shall require the prior
approval of both Glaxo Wellcome and Deltagen.
THIS * * * MATERIALS TRANSFER AGREEMENT (this "Agreement") dated as of
___________, 200__ (the "Effective Date"), is entered into between Glaxo
Research and Development Limited, a United Kingdom limited company ("Glaxo
Wellcome"), having a place of business at Glaxo Wellcome Medicines Xxxxxxxx
Xxxxxx, Xxxxxxxx Xxxx, Xxxxxxxxx, XX0 0XX Xxxxxx Xxxxxxx, and
_____________________________, a _________________________ (the "Research
Partner", located at __________________________. The parties hereby agree as
follows:
1. For purposes of this Agreement, the "Materials" shall mean the * **
materials listed in Exhibit A, together with (a) all * * *, and (b) all *
* * and (c) any information that is required to be provided to the
Research Partner concerning the use of the * * * materials.
2. Glaxo Wellcome is willing to transfer to the Research Partner the
Materials and permit the Research Partner to access the Materials on the
terms and conditions of this Agreement.
3. The Research Partner shall use the Materials for the sole purpose of
conducting the research (the "Research") described in Exhibit B for Glaxo
Wellcome, and not for any other purpose or for or the benefit of any other
person or entity. The Research Partner shall not use the Materials in any
research that is subject to consulting or licensing obligations to another
corporation or a government agency. Nothing herein shall be construed to
grant any rights to the Research Partner under any patent, patent
application or other intellectual property rights, other than for the sole
purpose of conducting the Research. The Research Partner shall use the
Materials in compliance with (i) generally accepted * * * standards for
non-clinical research and laboratory animal care and welfare as reasonably
implemented by the Research Partner in its facilities and operations, and
(ii) * * *. THE RESEARCH PARTNER UNDERSTANDS THAT THE MATERIALS ARE FOR
RESEARCH USE ONLY AND HAVE NOT BEEN APPROVED FOR HUMAN USE. THE RESEARCH
PARTNER SHALL NOT ADMINISTER THE MATERIALS TO HUMANS IN ANY MANNER OR
FORM.
4. The Research Partner shall not transfer or disclose the Materials to any
person or entity, other than Glaxo Wellcome, not under the direct control
of the Research Partner.
5. As between the Research Partner and Glaxo Wellcome, all right, title and
interest in and to all Materials shall be solely owned by Glaxo Wellcome.
The Research Partner hereby irrevocably assigns to Glaxo Wellcome or its
designee, any right, title and interest it may otherwise acquire in or to
the Materials. Glaxo Wellcome shall retain, and Research Partner hereby
assigns to Glaxo Wellcome all right, title and interest in and to any and
all
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-32-
discoveries, inventions and other subject matter, whether patentable or
not (collectively, "Inventions"), conceived, reduced to practice or
otherwise discovered by the Research Partner in connection with its use of
the Materials as permitted under this Agreement, and all intellectual
property rights therein. Research Partner agrees to promptly report to
Glaxo Wellcome all Inventions.
6. Upon completion of the Research, the Research Partner shall cease all use
and make no further use of the Materials. The Research Partner shall take
all reasonable steps including but not limited to those steps taken to
protect information and other property of its own of a confidential
nature, to insure that the Materials and information received from Glaxo
Wellcome are not disclosed, duplicated or in any manner delivered or
disseminated to others.
7. The Research Partner hereby acknowledges that the Materials are
experimental in nature and are provided "AS IS" AND WITHOUT ANY
REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED, INCLUDING WITHOUT
LIMITATION ANY IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR ANY
PARTICULAR PURPOSE OR ANY WARRANTY THAT THE USE OF THE MATERIALS WILL NOT
INFRINGE OR VIOLATE ANY PATENT OR OTHER PROPRIETARY RIGHTS OF ANY THIRD
PARTY.
8. In no event shall Glaxo Wellcome, Deltagen, Inc., a Delaware corporation
("Deltagen") or their respective Affiliates be liable for any use of the
Materials by the Research Partner, including any use developed by the
Research Partner. The Research Partner shall indemnify and hold harmless
Glaxo Wellcome, Deltagen and their respective officers, directors,
employees and agents against any and all losses, liabilities, damages and
expenses (including reasonable attorneys' fees and costs) incurred in
connection with any claims, demands, actions or other proceedings which
may arise from or be connected with any use, handling or storage of the
Materials by the Research Partner.
9. The Research Partner shall not enforce (or attempt to purport to enforce)
against Glaxo Wellcome, Deltagen or their respective Affiliates,
Deltagen's subscribers to all or any part of the DeltaBase (that provide a
similar covenant to Glaxo Wellcome) or licensees of any intellectual
property rights of Deltagen (that provide a similar covenant to Glaxo
Wellcome) any patent that claims (or purports to claim) (a) any mice
(including * * * mice), (b) any * * * (including * * * mice), (c) any * *
* (including * * * genes), (d) any * * *, (e) any * * * with respect to
such mice, * * *, (f) any methods or processes regarding database
generation or information processing, or (g) any research or development
use of such mice, * * *, database generation, information processing or
information.
10. The Research Partner will provide Glaxo Wellcome with regular updates of
progress and a report describing the results of the proposed investigations. No
publications reporting studies using the Materials shall be published or
otherwise disclosed unless such proposed publications are sent to Glaxo Wellcome
and Deltagen for review and approval 90 days prior to their proposed submission
date for publication or such other disclosure. If Glaxo Wellcome and/or Deltagen
determines that the proposed publication contains possible patentable subject
matter or Glaxo Wellcome and/or Deltagen confidential information, Glaxo
Wellcome or Deltagen may
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-33-
delay the publication, while adequate protection is obtained and/or confidential
information is deleted. Authorship will be determined by the relative
contributions of each party to the work performed using the Materials. All these
publications will acknowledge Glaxo Wellcome and/or Deltagen as the source of
the Materials.
11. The Materials are subject to a non exclusive license agreement between
Glaxo Wellcome (and/or its Affiliate) and Deltagen and constitute wholly or in
part the proprietary property of Deltagen. Consequently, Deltagen shall be
considered to be a third party beneficiary of this Agreement.
12. This Agreement represents the entire agreement between the parties
regarding the subject matter hereof and shall supersede all previous
communications, representations, understandings and agreements, whether oral or
written, by or between the parties with respect to the Materials.
13. This Agreement shall have effect for a period of * * * from the date of
signature and shall then terminate unless extended for a further period or
periods by the written agreement of both parties. Clauses 3, 4, 5, 6 and 7
shall survive termination of this Agreement. On termination any remaining
Materials will be destroyed or returned to Glaxo Wellcome as Glaxo Wellcome
decides.
14. This Agreement shall be governed by and construed in accordance with the
laws of England and Wales and the parties hereto submit to the exclusive
jurisdiction of the English courts.
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-34-
IN WITNESS WHEREOF, the parties have entered into this Agreement as of the
date first written above.
----------------------------------
By:
-----------------------------
Title:
----------------------------
GLAXO RESEARCH AND DEVELOPMENT LIMITED
By:
-----------------------------
Title:
-----------------------------
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-35-
EXHIBIT A
MATERIALS
[TO BE COMPLETED]
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
EXHIBIT B
RESEARCH
[TO BE COMPLETED]
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
-37-
EXHIBIT G
AGREED FORM OF PRESS RELEASE
The parties agree that a suitable and mutually agreed upon press release shall
be made by Deltagen or Glaxo Wellcome as soon as possible after execution of
this Collaboration Agreement. If the press release is to be made by Glaxo,
Glaxo shall have the right to delay the press release until the expiration of
the "quiet period" that Deltagen is subject to with respect to its initial
public offering process.
[***] Confidential Treatment Requested. The confidential portions have been
filed separately with the Securities & Exchange Commission.
38
