EXHIBIT 10.64
CONFIDENTIAL TREATMENT
CONFIDENTIAL
SCREENING SERVICE AGREEMENT
This Screening Service Agreement ("Agreement") dated as of December 7, 2001
(the "Effective Date") is between Cetek Corporation (hereinafter "Cetek") having
a place of business at 000 Xxxxx Xxxx Xxxxxx, Xxxxxxxxxxx, Xxxxxxxxxxxxx, 00000
and Cubist Pharmaceuticals, Inc. (hereinafter "Cubist") having a place of
business at 00 Xxxxxx Xxx., Xxxxxxxxx, Xxxxxxxxxxxxx, 00000.
Cetek and Cubist hereby agree to the following:
1. Cetek has developed confidential and proprietary technology, including
know-how, patents, patent applications, trade secrets, methods, processes,
techniques, products, materials, compositions, equipment, information, data,
results of tests or studies and expertise developed or owned by or licensed to
Cetek, relating to primary high throughput screening, dereplication of natural
product hits, deconvolution of combinatorial chemical libraries, and secondary
assays of chemical compounds to ascertain chemical properties using various
instruments (hereinafter "Cetek Proprietary Technology").
2. Cubist has developed confidential and proprietary technology including
know-how, patents, patent applications, trade secrets, methods, processes,
techniques, products, materials, compositions, equipment, information, data,
results of tests or studies and expertise developed or owned by or licensed to
Cubist, relating to primary high throughput screening, dereplication of natural
product hits, targets, assays, peptides and a compound library including natural
product extracts and synthetic compounds (hereinafter "Cubist Proprietary
Technology").
3. Cetek will provide Cubist with screening and dereplication services
utilizing only Cetek Proprietary Technology (the "Screening Services"). All
information and materials exchanged by the parties in the course of performing
the Screening Services and deemed confidential by the disclosing party shall be
marked "confidential" (hereinafter "Confidential Information").
4. Within [ * ] days of the Effective Date, the parties shall each appoint
three (3) persons to serve on the Screening Management Committee ("SMC"). During
the term of the Agreement, the SMC shall agree on (a) the schedule for
performing the work contemplated by the Screening Services Plan; (b) such other
matters as are delegated to it pursuant to the Screening Services Plan; and (c)
any changes, variations, modifications or refinements of the Screening Services
Plan they deem appropriate to effectuate the purposes of this Agreement,
provided however, that in the event the members of the SMC are unable to reach
agreement on a course of action, then the SMC shall adopt the course of action
advocated by the Cubist members of the SMC. The members of the SMC will
communicate on a regular basis by any appropriate means (telephone, email, FAX,
meeting) and will convene in person or by teleconference no less than four (4)
times per year, at locations and times to be agreed upon.
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5. Cubist shall pay to Cetek the following milestone payments upon the
achievement of the corresponding milestone event
EVENT PAYMENT
(a) Completion by [ * ] $ [ * ]
(b) Acceptance by the [ * ] of as many [ * ]: $ [ * ]
NEW: [ * ]
[ * ].
UNIQUE:
[ * ].
REVERSIBLE:
[ * ].
POTENT:
(c) Completion by [ * ] of each of the [ * ]
$ [ * ]
(d) Identification by [ * ]: $ [ * ]
- [ * ]
- [ * ]
- [ * ]
- [ * ]
- [ * ]
- [ * ]
- [ * ]
- [ * ]
(e) Submission by [ * ] $ [ * ]
(f) Enrollment by [ * ] $ [ * ]
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(g) Enrollment by [ * ] $ [ * ]
* [ * ]
** [ * ]
Cubist shall notify Cetek no later than [ * ] days after the achievement of any
of the milestones described above with respect to each compound. Such notice
shall be followed within [ * ] days by payment in full of any amounts due Cetek
for the achievement of such milestone.
6. Additional analysis and research beyond the screening services described
in this Agreement may be carried out upon mutual written agreement between the
parties. The parties agree that any negotiations shall be conducted in good
faith and shall be commercially reasonable.
7. Cetek shall promptly provide [ * ].
8. Each party represents to the other that:
(a) Such party is and at all times during the term of this Agreement
shall remain a corporation duly organized, validly existing and in good standing
under the laws of its jurisdiction of organization.
(b) The execution and delivery of this Agreement has been duly
authorized by all requisite corporate action. This Agreement is and shall remain
a valid and binding obligation of such party, enforceable in accordance with its
terms, subject to laws of general application relating to bankruptcy, insolvency
and the relief of debtors.
(c) Such party carries, with financially sound and reputable
insurers, insurance coverage (including workers' compensation, errors and
omissions, professional liability and comprehensive liability coverage) with
respect to the conduct of its business against loss from such risks and in such
amounts as is customary for well insured companies engaged in similar
businesses.
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(d) Such party has no contractual or other obligation or restriction
which is inconsistent with its execution or performance of this Agreement.
9. Cetek warrants and represents to Cubist as follows:
(a) that all Screening Services will be performed in a timely,
expert and professional manner in accordance with the highest industry standards
and all applicable laws, and that it will comply with all business conduct,
regulatory, health and safety guidelines, of any governmental authority,
provided, however, that the inability of Cetek to develop one or more target
assays or to identify compounds as contemplated by this Agreement shall not be
deemed a breach of this Agreement it being acknowledged by the parties hereto
that the research and development activity contemplated by this Agreement is
experimental in nature and that success cannot be guaranteed.
(b) to the best of Cetek's knowledge, it has sufficient legal and/or
beneficial title under its intellectual property rights necessary to perform the
activities contemplated under this Agreement.
10. Cubist warrants and represents to Cetek as follows:
(a) that Cubist will inform Cetek of any actual or potential
toxicity or other possible hazardous property or handling condition for all
compounds and other materials furnished by Cubist to Cetek under this Agreement.
(b) to the best of Cubist's knowledge, it has sufficient legal
and/or beneficial title under its intellectual property rights to all targets,
screening libraries, compounds and other materials furnished by Cubist to Cetek
under this Agreement.
11. Cetek will defend, indemnify, save and hold Cubist harmless from and
against any third party claims, demands, suits, actions, causes of actions,
losses, damages, fines and liabilities, including reasonable attorney' fees
(hereinafter "Losses") arising out of (1) the breach by Cetek of this Agreement
or (2) the Screening Services, and will pay any costs and damages which, by
final judgment, after exhaustion of all reasonable appeals, may be assessed
against Cubist, except that Cetek shall not be obligated to indemnify Cubist for
losses to the extent they result from the gross negligence or willful misconduct
of Cubist.
12. Cubist will defend, indemnify, save and hold Cetek harmless from and
against any third party claims, demands, suits, actions, causes of actions,
losses, damages, fines and liabilities, including reasonable attorney' fees
(hereinafter "Losses") arising out of (1) the breach by Cubist of this Agreement
or (2) the development, manufacture, use or sale of any product resulting from
an identified compound, and will pay any costs and damages which, by final
judgment, after exhaustion of all reasonable appeals, may be assessed against
Cetek, except that Cubist shall not be obligated to indemnify Cetek for losses
to the extent they result from the gross negligence or willful misconduct of
Cetek.
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13. Cetek and Cubist shall each hold the other's Confidential Information,
including Cetek Proprietary Technology and Cubist Proprietary Technology and the
results of the Screening Services, disclosed to it in confidence and shall use
the same level of care to prevent any unauthorized use or disclosure of such
Confidential Information or results of the Screening Services as it exercises in
protecting its own Information of a similar nature. Cetek and Cubist will limit
internal dissemination of Confidential Information to those employees or
affiliates whose duties justify their need to know such Information.
14. The confidentiality obligations of this Agreement shall not apply to:
(a) Information which at the time of disclosure is in the public
domain: or
(b) Information which, after its disclosure, becomes part of the
public domain by publication or otherwise, except in breach of this Agreement;
or
(c) Information which Cetek or Cubist can establish by reasonable
proof was in its possession at the time of disclosure or was subsequently and
independently developed by employees of Cetek or Cubist who had no knowledge of
the Information disclosed; or
(d) Information which Cetek or Cubist shall receive from a third
party, provided however that the third party has the right to disclose the
Information to Cetek or Cubist, respectively, or
(e) Information which is required by law to be disclosed.
15. The confidentiality obligations under this Agreement shall expire [ * ]
from the Effective Date of this Agreement.
16. Cetek shall have no right to publish or otherwise publicly disclose,
during or after the completion of this Screening Services Agreement, Results (as
defined in Section 17 below) generated during the conduct of the screening
services.
17. Cubist shall retain its sole ownership of all Cubist Proprietary
Technology, including materials and compositions provided to Cetek hereunder.
Cubist shall exclusively own all results and data, derivatives of Cubist
materials and compositions, and discoveries and inventions pertaining to or
resulting from the Screening Services that relate to materials or Confidential
Information provided by Cubist (hereinafter "Results"), and such Results shall
be "works made for hire". Results shall not include any Cetek Proprietary
Technology or improvements to Cetek Proprietary Technology arising during the
course of this Agreement Cubist shall have the exclusive right to use all such
Results in the course of its business, and shall have the right to publish such
Results. No right or license or option for any Cubist Proprietary Technology or
Results is granted to Cetek under this Agreement.
18. Cetek has or shall obtain agreements with all employees, consultants and
advisors who participate in rendering the services which impose confidentiality
obligations on such personnel consistent with the terms hereunder, and which
effectively vest in Cetek any and all rights which
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such personnel might otherwise have in the result of their work and are adequate
to permit Cetek to transfer such rights to Cubist under Paragraph 20 of this
Agreement.
19. Cetek shall not engage in any activities or use any third party
facilities or intellectual property in performing services under this Agreement
which could result in claims of ownership to any results of services being made
by such third party.
20. Cetek assigns and agrees to assign to Cubist all of Cetek's right, title
and interest in and to any and all Results produced under this Agreement, other
than Cetek Proprietary Technology. During and after the term of this Agreement,
Cetek will cooperate fully in obtaining patent and other proprietary protection
for the results and data, all in the name of Cubist and at Cubist's cost and
expense, and, without limitation, shall execute and deliver all requested
applications, assignments and other documents, and take such other measures as
Cubist shall reasonably request in order to perfect and enforce Cubist's rights
in the Results.
21. Cetek shall retain its sole ownership of all Cetek's Proprietary
Technology, including all improvements or discoveries relating thereto, arising
during the course of this Agreement. Nothing in this agreement shall grant to
Cubist any right, license or option to utilize Cetek's Proprietary Technology
for any purpose other than interpreting the Results and for the assessment of
the feasibility of a further collaboration between Cubist and Cetek.
22. Cubist acknowledges that Cetek is in the business of developing and
screening assays for its own account and for other third parties utilizing Cetek
Proprietary Technology, and that Cetek will continue to perform services similar
to services provided under this Agreement for its own account and for third
parties. Subject to the provisions of this Agreement regarding Cubist's
exclusive ownership of Cubist Proprietary Technology and Results and provisions
regarding the confidentiality of Cubist Proprietary Technology and Results,
nothing in this Agreement shall limit or prohibit Cetek from utilizing Cetek
Proprietary Technology in the performance of services for its own account or for
third parties.
23. This Agreement shall commence as of the Effective Date and, unless sooner
terminated as provided hereunder, shall terminate when Cubist has no further
payment obligations to Cetek under this Agreement.
24. Either party may terminate this Agreement at its sole discretion at any
time with [ * ] day advance notice, by giving written notice to the other party,
and such termination shall be effective [ * ] days after such notice is received
by the other. After receipt by Cetek of such notice of termination, it will stop
work hereunder and return to Cubist any materials provided to Cetek in
connection with the Screening Services as well as any Results generated prior to
the date of termination.
25. Cubist may terminate its research and development efforts with respect to
a particular active compound or the entire Agreement at any time, provided,
however, that in the event Cubist terminates its research or development efforts
with regard to a particular active compound that has satisfied lead optimization
criteria defined in Section 5(c) above for any of the following reasons: (i)
Cubist is purchased by, purchases, or merges with a third party and such third
party
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is developing a compound for the same target as the relevant active compound is
being developed or (ii) Cubist acquires the right from a third party to
commercialize a compound that acts solely on the same target as such active
compound, then [ * ].
26. The obligations set forth in Paragraphs 5, and 11 - 21 hereof shall
survive the expiration or termination of this Agreement.
27. This Agreement, and the rights and obligation hereunder, may not be
assigned or transferred by either party without the prior written consent of the
other party, except that either party may assign its respective rights and
transfer its respective duties hereunder to an affiliate, to any assignee of all
or substantially all of its business, or in the event of a merger or
consolidation with or into another corporation.
28. This Agreement shall be construed and interpreted in accordance with the
laws of the Commonwealth of Massachusetts.
29. This Agreement constitutes the entire understanding of the parties with
respect to the subject matter hereof and shall not be modified except by
subsequent mutual written agreement.
IN WITNESS WHEREOF, each of the parties hereto have caused this Agreement to be
executed as a sealed instrument by its duly authorized representative, effective
as of the date first written above.
CETEK CORPORATION CUBIST PHARMACEUTICALS, INC.
/s/ Xxxxx Xxxxxx /s/ Xxxxx Xxxxxxxx
------------------------ --------------------------------
Name: Xxxxx Xxxxxx Name: Xxxxx Xxxxxxxx, Ph.D
Title: President Title: Chairman, President & CEO
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* Confidential Treatment Requested. Omitted portions filed with the Commission.
