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Exhibit 10.5
*TEXT OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION. CONFIDENTIAL TREATMENT REQUESTED UNDER 17 C.F.R. SECTIONS
200.80(b)(4), 200.83 AND 240.24b-2.
EXTENSION OF JOINT COLLABORATION AGREEMENT
This Extension Of Joint Collaboration Agreement (the "Extension") is
made this 10th day of April, 1997 by and between Houghten Pharmaceuticals, Inc.
("Houghten") and RiboGene, Inc. ("RiboGene").
RECITALS
Whereas, Houghten and RiboGene are parties to that certain Joint
Collaboration Agreement dated April 12, 1995 (the "Agreement"), the Screening
Term (as defined in the Agreement) of which is due to expire on April 12, 1997,
and
Whereas, Houghten and RiboGene would like to extend the Screening Term
for an additional one year period.
NOW, THEREFORE, for and in consideration of the premises, and the
mutual covenants contained herein, the parties agree as follows:
1. Screening Term. The definition of Screening Term set forth in
Section 1.24 of the Agreement is hereby amended in its entirety as follows:
"1.24. "Screening Term" shall mean the period during
which Active Screening may be conducted commencing on the
Effective Date and terminating three (3) years from the
Effective Date unless earlier terminated as provided herein
or unless extended by mutual agreement.''
2. Other Terms. Except as set forth above, all other defined
terms, conditions and provisions of the Agreement shall apply to this Extension
and the Agreement shall remain in full force and effect.
3. Multiple Counterparts. This Extension may be executed in
multiple counterparts, each of which shall be deemed an original for all
purposes.
IN WITNESS WHEREOF, the parties have executed this Extension as of the
date first above written.
HOUGHTEN PHARMACEUTICALS, INC. RIBOGENE, INC.
By: /s/ [sig] By: /s/ [sig]
-------------------------------- --------------------------------
Name: /s/ [sig] Name: /s/ XXXXX X. XXXXXX
-------------------------------- --------------------------------
Title: Vice President Title: Vice President of Research
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JOINT COLLABORATION AGREEMENT
THIS JOINT COLLABORATION AGREEMENT (the "Agreement") dated as of April
12, 1995 (the "Effective Date"), is entered into between HOUGHTEN
PHARMACEUTICALS, INC., a Delaware corporation ("HPI"), and RIBOGENE, INC. a
California corporation ("RIBOGENE").
WITNESSETH:
WHEREAS, HPI has rights to proprietary synthesis and screening
technologies which, when applied, may reduce the time and development expense of
identifying potentially useful compounds for therapeutic and/or diagnostic
purposes.
WHEREAS, RiboGene has Assays for direct screening of compounds which
have potential to identify therapeutic and/or diagnostic products.
WHEREAS, both HPI and RiboGene desire to enter into a joint screening
and development agreement with respect to the identification of compounds
therefrom under the terms and conditions specified herein.
NOW, THEREFORE, in consideration of the foregoing premises and the
mutual representations, covenants and warranties herein contained, the parties
hereby agree as follows:
ARTICLE I
DEFINITIONS
1.1 "Active Screening" shall mean the activity of RiboGene screening
Combinatorial Libraries, Iteration Mixtures, and/or Confirmatory Samples using
the Assays to identify potential Candidates during the Screening Phase of this
Agreement.
1.2 "Affiliate" shall mean any corporation or other entity which
controls, is controlled by, or is under common control with, a party to this
Agreement. A corporation or other entity shall be regarded as in control of
another corporation or entity if it owns or directly or indirectly controls more
than fifty percent (50%) of the voting stock or other ownership interest of the
other corporation or entity, or if it possesses, directly or indirectly, the
power to direct or cause the direction of the management and policies of the
corporation or other entity.
1.3 "Assays" shall mean the RiboGene Assays described in Exhibit A, as
well as those assays which may be added by mutual agreement.
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1.4 "Candidate" shall mean each fully sequenced compound identified
by RiboGene after completion of the Interation Process, or each compound
identified by RiboGene after completion of the Scanning Process, any of which
compounds demonstrate activity in an Assay justifying further investigation as
a Joint Compound in the Development Phase of the Collaboration Program or as a
Developing Party Compound.
1.5 "Collaboration Program" shall mean the overall program described
in Section 3.1 hereto consisting of both the Screening Phase and the
Development Phase.
1.6 "Combinatorial Libraries" shall mean the following libraries as
well as any other libraries which may hereafter be added to such definition by
mutual agreement of the parties:
[*]
1.7 "Confirmatory Sample" shall mean a [*] (i) a compound identified
from the Initial Screening of a Combinatorial Library by the Scanning Process,
or (ii) a fully sequenced compound identified from the completion of the
Iteration Process.
1.8 "Developing Party Compound" shall mean a Candidate upon which one
party decides to conduct further development and research pursuant to the
provisions hereof (the "Developing Party") after the other party has decided
not to continue with or participate in such development and research.
1.9 "Development Phase" shall mean that the phase of the Collaboration
Program described in Sections 3.4 and 3.6 hereof.
1.10 "Development Term" shall be the term during which the Development
Phase activities with respect to a Joint Compound/or the developing party's
development of a Developing Party Compound shall occur commencing on the date
the parties or developing party decide to enter into said activities or
development respectively, and terminating when neither party has a Joint
Compound or Developing Party Compound under development.
1.11 "FDA" shall mean the United States Food and Drug Administration.
1.12 "HPI Proprietary Rights" shall mean all rights owned or licensed
to HPI regarding the Materials, and HPI's rights to Joint Compounds including
without limitation (except as limited and provided elsewhere in this agreement)
(i) compounds derived from the described Materials and Joint Compounds, (ii)
methods of making the compounds, Materials and Joint Compounds, (iii) patents,
patent applications and patent rights and divisions, continuations, renewals,
reissues
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and extensions of the foregoing now existing, hereafter filed, issued or
acquired; and (iv) rights relating to the protection of trade secrets and
confidential information.
1.13 "Initial Screening" shall mean the first screening of each
Combinatorial Library by RiboGene.
1.14 "Iteration Mixture" shall mean the mixture of compounds ordered by
RiboGene [*] of a defined chemical component and provided by HPI at the
intervening stages of the Iteration Process [*].
1.15 "Iteration Process" shall mean, with respect to [*] each stage of
the HPI screening and synthesis process after the Initial Screening, pursuant to
which each possible combination of mixtures [*] from such Combinatorial Library
[*] (ii) screened by RiboGene, and (iii) evaluated at each stage and reassayed
when necessary by RiboGene [*]
1.16 "Interest" shall mean the percentage which either party will be
entitled to receive of any revenues which may be generated as a result of the
parties' jointly owned intellectual property with respect to a Joint Compound or
Developing Party Compound, for example by licensing or sale of such property or
of Products containing such Joint Compound or Developing Party Compound. The
Interests of the respective parties in any particular Joint Compound or
Developing Party Compound will be determined as described in Exhibit D.
1.17 "Joint Compound" shall mean a Candidate, upon which the parties
jointly, after reviewing the Research Committee's recommendations, decide to
conduct further development and research and share the expenses of development
as provided in Exhibit D.
1.18 "Materials" shall include all of the Combinatorial Libraries,
Iteration Mixtures, specific iteration mixtures and Confirmatory Samples
furnished by HPI during the Screening Phase.
1.19 "Product" shall mean any product for the treatment or prevention
of disease, or other conditions in humans, or the diagnosis of disease, for the
specified Targets which incorporates a Joint Compound or Developing Party
Compound in its entirety or as modified or which is the result directly or
indirectly of discovery or identification using the Iteration Process or
Scanning Process, the manufacture or use of which is covered by, of which, but
for the Agreement would infringe any HPI Proprietary Rights or RiboGene
Proprietary Rights.
1.20 "Research Committee" shall mean that entity organized and acting
pursuant to Article 5 or this Agreement.
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1.21 "RiboGene Proprietary Rights" shall mean all rights owned or
licensed to RiboGene with respect to rights to the Assays, use of the Assays for
screening purposes, methods for screening compounds in the Assays, and rights to
Joint Compounds including, without limitation, (except as limited and provided
elsewhere in this agreement) (i) patents, patent application and patent rights
and all divisions, continuations, renewals, reissues and extensions of the
foregoing now existing, hereafter filed, issued or acquired, and (ii) rights
relating to the protection of trade secrets and confidential information.
1.22 "Screening" shall mean the testing by RiboGene of each of the
mixtures which constitute a Combinatorial Library or Iteration Mixture, or of
individual compounds to determine the activities of each in Assays.
1.23 "Screening Phase" shall mean that phase of the Collaboration
Program described in Sections 3.2 and 3.3 hereof.
1.24 "Screening Term" shall mean the period during which Active
Screening may be conducted commencing on the Effective Date and terminating
two (2) years from the Effective Date unless earlier terminated as provided
herein or unless extended by mutual agreement.
1.25 "Scanning Process" shall mean with respect to a positional
scanning library listed at Section 1.7(g) and described in Exhibit C, the
process of identifying and verifying Candidates by conducting an Initial
Screening and the screening of Confirmatory Samples.
1.26 "Targets" [*] identified in Exhibit A as it exists at the
time at the execution of this Agreement or as may be modified by mutual
agreement hereafter.
1.27 "Third Party Obligations" shall mean obligations to pay
milestones, royalties or other fees to a third party by a party under a
licensing or other agreement for use of (i) an Assay, (ii) the Screening
process used hereunder, or (iii) any compounds or Products discovered or for
which uses are identified as a result of this Collaboration Agreement.
ARTICLE 2
REPRESENTATIONS AND WARRANTIES
Each party hereby represents and warrants to the other party as follows:
2.1 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
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been duly executed and delivered on behalf of such party, and constitutes a
legal, valid, binding obligation, enforceable against such party in accordance
with its terms.
2.2 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 or any contractual
obligation of such party, and (b) do not conflict with, or constitute a default
or require any consent under, any contractual obligation of such party.
2.3 NON-INFRINGEMENT. To the best of its knowledge, the performance
of such party's obligations or granting of rights to the other party hereunder
shall not infringe patent rights, copyrights, trademarks or trade secrets of any
third party.
2.4 THIRD PARTY OBLIGATIONS. Such party is not subject to any Third
Party Obligations except as set forth in Exhibit F hereto.
ARTICLE 3
SCREENING AND DEVELOPMENT PROGRAMS
3.1 PURPOSE AND SCOPE. The general purposes of the Collaboration
Program are twofold and to be addressed in two phases: (i) to utilize the HPI
Combinatorial Libraries, Iteration Mixtures and Confirmatory Samples to conduct
screenings of the compounds in the various Combinatorial Libraries during the
Screening Phase with one or more of the Assays to identify Candidates, and (ii)
to select Joint Compounds chosen from the Candidates which may have utility to
treat one or more of the Targets and during the Development Phase to develop
Products incorporating the Joint Compounds (or analogs or derivatives thereof)
for one or more of the Targets.
3.2 SCREENING PHASE GENERAL RESPONSIBILITIES. Each party shall, at
its own expense, have the following responsibilities during the Screening Phase:
3.2.1 HPI shall provide, by mutual agreement, any of its
current and future Combinatorial Libraries (when such
future Combinatorial Libraries are available), and other
reasonable amounts of other Materials requested by
RiboGene, including Iteration Mixtures, specific
iteration mixtures identified at the screening of a
stage of the Iteration Process prior to identification
of a Candidate, and Confirmatory Samples to enable
RiboGene to conduct the Active Screening.
3.2.2 RiboGene shall by mutual agreement screen the Materials
with a view to identifying potential Candidates and
recommend to the Research Committee which Candidates
should become Joint Compounds.
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3.3 SCREENING PHASE ACTIVITIES.
3.3.1 INITIAL SCREENING. RiboGene shall screen each
Combinatorial Library delivered to RiboGene by HPI with the Assays to identify
one or more compound mixtures [*]
3.3.2 ITERATION PROCESS. For active compounds identified from
an Initial Screening of any Combination Libraries, [*] RiboGene shall place an
order with HPI for related Iteration Mixtures to begin the Iteration Process.
Upon receipt of such order, HPI shall cause to be synthesized and provide to
RiboGene such Iteration Mixtures, which RiboGene shall screen using the
applicable Assays.
3.3.3 SCANNING PROCESS. For active compounds identified from
an Initial Screening of the [*] Combinatorial Library, RiboGene shall place an
order with HPI for Confirmatory Samples to continue the Scanning Process. Upon
receipt of such order, HPI shall cause to be prepared and deliver the
Confirmatory Samples.
3.3.4 RESEARCH DURATION. The Active Screening portion of the
Screening Phase shall be performed during the Screening Term.
3.3.5 DELIVERY. HPI shall deliver the Materials as soon as
practicable following receipt of a written order, but in no event later than
forty-five (45) days from the receipt of such order.
3.4 DEVELOPMENT PHASE RESPONSIBILITIES. Once a Candidate is, or
Candidates are, identified and both parties, after reviewing the Research
Committee's recommendations, have given written notice pursuant to Section 3.5
to proceed with respect to such Candidate or Candidates becoming Joint
Compounds, then the Development Phase shall commence with respect to those Joint
Compounds. Each party shall have, in addition to any other responsibility
assigned by the Research Committee or by mutual agreement of the parties, the
below specified responsibilities with respect to those Joint Compounds:
3.4.1 HPI shall:
(a) Expend reasonable efforts to modify Joint
Compounds [*]
(b) Provide reasonable amounts of Joint Compounds or
modified Joint Compounds [*]
3.4.2 RiboGene shall:
(a) Expend reasonable efforts to test Joint
Compounds and Modified Joint Compounds [*]
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(b) Proceed under guidance of the Research
Committee with pharmacological testing of
Joint Compounds and modified Joint Compounds.
(c) Take the lead in filing and prosecution of
patent applications as authorized by the
Research Committee.
3.5 JOINT COMPOUND NOTICE. A party must given written notice of its
intent to participate in the Development Phase with respect to a Candidate to
the other party with a copy to the Research Committee within thirty (30) days
after receipt of the Research Committee's written recommendation. Failure to
give such written notice within said thirty (30) days shall be deemed a
decision not to participate.
3.6 DEVELOPMENT PHASE ACTIVITIES. In addition to the activities
described in Section 3.4 above, the Development Phase shall consist of any and
all activities agreed to by the parties upon recommendation of the Research
Committee which are necessary to fully develop Products for commercialization
with costs to be shared as generally described in Exhibit D. Additional
provisions concerning the Development Phase shall be based on the guidelines
set forth in Exhibit D. A party may agree to participate in the Development
Phase with respect to one or more Candidates and decide not to participate with
respect to other Candidates.
3.7 DEVELOPING PARTY COMPOUNDS. With respect to Developing Party
Compounds, responsibilities for development, including the discretion to
continue, shall be solely the responsibility of the developing party. Sections
3.4 (except with respect to the notice provision) and 3.6 shall not be
applicable, but provisions in Exhibit D shall be applicable, as provided
therein. [*] HPI shall grant a license, or sublicense, if available, subject to
any necessary third party approval and license requirements, as well as then
existing third party rights, to RiboGene under the HPI Proprietary Rights to
make, have made, use and sell Products incorporating a Developing Party Compound
or derivatives thereof for the Target if RiboGene is the developing party. If
HPI is the developing party of a Developing Party Compound, then HPI shall have
access to the RiboGene Assay(s) with respect to such Developing Party Compound
and RiboGene shall grant an exclusive license or sublicense, if available, to
HPI under the RiboGene Proprietary Rights to make, have made, use and sell
Products incorporating a Developing Party Compound or derivatives thereof. The
non-developing party will use reasonable efforts to perform any remaining
obligations in a timely manner for the developing party. So long as HPI or its
sublicenses is diligently pursuing development of a Developing Party Compound,
RiboGene will not make the Assay used to identify the Developing Party Compound
or any usage therefor available to a third party for purposes of screening
combinatorial libraries similar to the Combinatorial Libraries at least for the
Targets of the Developing Party Compound, unless RiboGene is required to do so
by a third party agreement existing at the time that HPI became the developing
party of the Developing Party Compound.
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ARTICLE 4
LICENSE OF SCREENING RIGHTS TO RIBOGENE
4.1 LICENSE. HPI hereby grants to RiboGene, under the HPI
Proprietary Rights, during the Screening Term, a non-transferable license to
screen the Materials against the Assays in accordance with this Agreement.
4.2 USAGE RIGHTS. The Materials are provided to RiboGene pursuant
to Article 4 solely for the purpose of screening by only RiboGene using the
Assays as provided in this Agreement, and any other use or attempted transfer of
such Materials will be a material breach of this Agreement. RiboGene understands
and acknowledges that the Materials and [*] compounds contained therein are for
research use only and shall not be administered to humans in any manner or form.
4.3 LIMITATIONS. Nothing herein shall be deemed to grant any
rights or other interests in favor of RiboGene with respect to the HPI
Proprietary Rights other than as expressly set forth in this Agreement.
RiboGene shall have no rights with respect to any compounds contained in the
Combinatorial Libraries or Iteration Mixtures or derivatives of any of them
which do not become Candidates. Any rights with respect thereto shall remain
with HPI.
ARTICLE 5
RESEARCH COMMITTEE
5.1 CREATION OF THE RESEARCH COMMITTEE. The parties hereby agree
to the creation of a Research Committee of four (4) persons to facilitate the
collaboration called for herein. The Research Committee shall consist of two
(2) representatives nominated by each party. One (1) representative nominated
by each party shall be a senior scientific officer of such party, who shall be
the senior representative and chief coordinator for such party. Each party
shall be free to change its representatives on notice to the other or to send a
substitute representative to any Research Committee meeting. The Chief
Scientific Officer, or equivalent, of each party, if not otherwise designated as
a member of the Research Committee, shall have the right to attend Research
Committee meetings.
5.2 REGULAR MEETINGS. During the Screening Phase, the
Research Committee shall meet face to face at least once each three (3) months
and have telephonic meetings monthly in the months when there are no face to
face meetings. If both parties agree to participate in the Development Phase,
the Research Committee shall have similar meetings at similar intervals with
respect to Joint Compounds in the Development Phase. However, if both parties
do not agree to participate in the Development Phase with respect to a
particular Candidate or one party ceases to participate after commencement of
the Development Phase with respect to a Joint Compound while the other party
continues development, the Research Committee shall have no further
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responsibility with respect to that Candidate, Joint Compound or Developing
Party Compound. The Research Committee shall be disbanded when no Candidates,
Joint Compounds or Products are in the Development Phase, and the Screening
Phase has been totally discontinued or completed. Any meetings may be called by
either party on fourteen (14) days notice to the other and, unless otherwise
agreed, shall alternate between the offices of the parties. To the extent
practicable, each party shall disclose to the other proposed agenda items in
advance of the meeting. The senior representative of the party hosting the
meeting shall chair that meeting and shall have the right to vote or otherwise
make decisions on behalf of that party. Each party shall pay all of its own
costs and expenses incurred in connection with such meetings.
5.3 RESPONSIBILITIES OF THE RESEARCH COMMITTEE. During the duration
of the Collaborating Program, the Research Committee shall be the primary
vehicle for interaction between the parties. The Research Committee shall serve
at the behest of the parties in order to assist in the management of the
Collaboration Program, recommend scientific priorities for both the Screening
and Development Phases, and review and advise scientific direction and
settlement of operating issues. Without limiting the foregoing, the Research
Committee shall be responsible for: (i) amending research and development plans
agreed to with respect to the Collaboration Program; (ii) monitoring the
progress of the Collaboration Program; (iii) recommending work plans and
budgets for each Joint Compound and Product, subject to both parties' approval,
for the Development Phase; (iv) recommending whether patents should be filed;
(v) evaluating the potential of Joint Compounds; (vi) advising which Candidates
should become Joint Compounds; and (vii) preparing with the cooperation of both
parties the progress reports described in Section 6.3. All decisions by the
Research Committee shall require agreement by the senior representative of both
parties present at the meeting, and each party shall act in good faith in
attempting to reach agreement on such decisions. Any disputes shall be resolved
in accordance with Article 10 of this Agreement.
ARTICLE 6
DEVELOPMENT AND PROGRESS REPORTING
OF JOINT COMPOUNDS
6.1 CONDUCT OF RESEARCH AND DEVELOPMENT. RiboGene and HPI shall
work diligently and use reasonable good faith efforts to identify and develop
Joint Compounds and to commercialize Products pursuant to the following
restrictions:
6.1.1 The parties shall be entitled to exercise prudent and
reasonable business judgement in meeting the obligations of this Section 6.1.
6.1.2. The parties shall use commercially reasonable efforts to
obtain all necessary governmental approvals for the manufacture, use and sale of
Products except for Products incorporating Developing Party Compounds in which
instance the developing party has the discretion to decide when to proceed.
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6.2 DISCLOSURE.
6.2.1 Within thirty (30) days after completion of Initial
Screening, completion of each stage of the Iteration Process or the
Confirmatory Sample screening of the Scanning Process, but in no event less
frequently than quarterly, RiboGene shall deliver a written report to the
senior representative of each party to the Research Committee in reasonable
specific detail, setting forth the results of the Active Screening.
6.2.2 The parties will make available and, upon request,
disclose to each other and the Research Committee, all information relating to
the Joint Compounds discovered or synthesized pursuant to the Collaboration
Program. All information which is significant with respect to the Collaboration
Program will be disclosed to the other party promptly after it is learned or
its significance is appreciated. Each party shall keep complete accounts and
records (including such lab notebooks, clinical data and other research records
as are customarily maintained in connection with drug discovery and
development) relating to its research and development activities under the
Screening Phase.
6.2.3 The parties will exchange reports quarterly presenting a
meaningful summary of their research and development activities, and each party
will make presentations thereof, in addition to those made to or by the Research
Committee, as reasonably requested by the other party but not in excess of twice
per year. Each party will also communicate informally and through the Research
Committee to inform the other parties of research and development performed
under the Collaboration Program. Each party will provide the other with raw
data in original form or photocopies thereof for any and all work carried out
under this Agreement as reasonably requested by the other party. The parties
agree to cooperate with each other to facilitate the understanding and use of
information exchanged pursuant to this Section 6.2. All information contained in
reports made pursuant to this Agreement or otherwise communicated between the
parties will be maintained under obligations of confidentiality under Article 14
of this Agreement.
6.2.4. To ensure compliance with Third Party Obligations of a
party hereto, complete and accurate records regarding the use of technology
licensed by a third party to a party hereunder shall be maintained which records
shall reflect what third party technology was utilized, if any, in connection
with discovery of a Joint Compound, Developing Party Compound, or Product
hereunder. Both parties shall have access to such records in order to reasonably
satisfy the reporting requirements to third parties.
6.3 PROGRESS REPORTING. In addition to other reports required
under Section 6.2, not later than January 15th and July 15th of each calendar
year, the Research Committee shall prepare a written progress report covering
activities under the Collaboration Program, the development and testing of all
Joint Compounds and the obtaining of the governmental approvals necessary for
marketing. Such progress reports shall include but not be limited to the
following topics:
o Summary of work completed
o Activities related to sublicenses
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- Summary of work in progress
- Current schedule of anticipated events or milestones
- Market plans for the introduction of Products, and
- Activities relating to obtaining governmental approvals
necessary for marketing Products.
The form of such progress reports shall be determined by the
Research Committee and shall be in such form to provide information necessary to
satisfy reporting obligations to third parties whose technology is being
utilized under the Collaboration Program. The parties shall take precautions to
protect confidentiality as intended by Article 14 in meeting the reporting
obligations to third parties. With respect to Developing Party Compounds and
Products not subject to Research Committee supervision, the developing party
shall still be required to prepare the reports for the other party.
ARTICLE 7
COMMERCIALIZATION OF PRODUCTS BY PARTIES
7.1 JOINT COMMERCIALIZATION. If the parties jointly decide to
proceed with the commercialization of Candidates into Joint Compounds and/or
Products incorporating such Joint Compounds, or derivatives thereof, the parties
intend to share profits and losses proportionally based on the contribution each
party has agreed to make to the total costs of the Development Phase with
respect to those Joint Compounds and/or Products. The parties shall negotiate in
good faith a commercialization agreement which, in addition to the provisions
described in Exhibit D, shall reflect among other matters each party's Interest,
Third Party Obligations, reporting requirements, procedures for
commercialization and which party is entitled to carry the lead in decision
making with respect to product development.
7.2 ONE PARTY DEVELOPMENT. If, after completion of the Screening
Phase with respect to a Candidate, only one party, pursuant to Section 3.5,
responds affirmatively in writing that the party desires to continue with the
development of that Candidate, then that party must notify the other party in
writing of its intent to proceed on its own to develop the Candidate as a
Developing Party Compound within six (6) months after the other party gave, or
failed to give, written notice of its intent not to participate in the
Development Phase with respect to such Candidate. The Candidate may then become
a Developing Party Compound subject to the applicable provisions of Exhibit D.
The party wishing to develop must give both written notice of its intent to
proceed and actually commence development during that six (6) month period for
the Candidate to become a Developing Party Compound or that party may not
individually decide to develop a Candidate as a Developing Party Compound
without again presenting the opportunity for joint development through written
notice to the other party. If the other party does not give written notice of
its intent to participate in the joint development within thirty (30) days
thereafter, the party desiring to develop may do so subject to the same
above-stated commencement of development limitations. The developing party shall
be responsible for all commercial decisions with respect to a Developing Party
Compound.
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7.3 ABANDONED CANDIDATES. If the parties do not jointly decide to
proceed with the development of a Candidate as a Joint Compound or if neither
party gives written notice to the other of its intent to develop such Candidate
as a Developing Party Compound pursuant to Section 7.2 hereof, such Candidate
shall be deemed "abandoned" for the purposes of this Agreement. If a Candidate
is abandoned, (i) HPI may make such Candidate available to third parties, and
(ii) RiboGene shall cease using or developing such Candidate. If HPI derives
any revenues or other benefit from its use, licensing or sale of any abandoned
Candidate which is used against the Targets, then RiboGene shall share equally
in such revenues or benefit, provided HPI was not required to put forth
significant additional effort with respect to the development of such abandoned
Candidate after the abandonment. In such instance where HPI put in significant
additional effort, the parties shall agree in good faith how the derived
revenues or benefit shall be divided to reflect HPI's additional effort in the
development. Except as set forth above, RiboGene shall have no interest in any
abandoned Candidate.
ARTICLE 8
OWNERSHIP; PATENTS
8.1 OWNERSHIP.
8.1.1 HPI PROPRIETARY RIGHTS AND RIBOGENE PROPRIETARY
RIGHTS. RiboGene acknowledges and agrees that RiboGene has no rights in or to
the HPI Proprietary Rights, other than the license rights specifically granted
herein. HPI acknowledges that HPI has no rights in or to RiboGene Proprietary
Rights except as may be granted herein. Notwithstanding the above, and except
as provided in Section 4.3, the parties agree that Candidates, Joint Compounds
and Products incorporating Joint Compounds or derivatives thereof shall be
jointly owned, and that the nondeveloping party shall have the rights granted
herein in a Developing Party Compound and Products incorporating a Developing
Party Compound or derivatives thereof.
8.1.2 OWNERSHIP OF INVENTIONS. Subject to the provisions of
this Agreement, the right, title and interest in all inventions, discoveries,
improvements or other technology directed at a Developing Party Compound, Joint
Compound or Product incorporating such Developing Party Compound or Joint
Compound or derivatives thereof with respect to the Targets and all processes
or uses relating thereto, whether or not patentable (collectively, the
"Inventions"), together with all patent applications or patents based thereon,
made during or as a result of the screening hereunder shall be owned jointly by
the parties and the rights to any Net Distributions as defined in Section D of
Exhibit D arising from such Inventions shall be based on the Interest of each
party. Each party shall promptly disclose to the other party the conception or
reduction to practice of Inventions by employees or other acting on behalf of
such. Each party hereby represents and agrees that all employees and other
persons acting on its behalf in performing its obligations under the Agreement
shall be obligated under a binding written agreement or applicable law to
assign to such party or its Affiliate all Inventions made or developed by such
employee or other person.
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8.1.3 OWNERSHIP OF RESEARCH DATA. Each party shall jointly own
all data and information generated or collected by the activities under this
Collaboration Program; however, use and reference to such data and information
may be restricted as provided elsewhere herein.
8.2 PATENTS. The Research Committee shall recommend upon which Joint
Compounds, Products and Inventions the parties should file one or more joint
patent applications. The parties shall jointly determine whether or not to file
such joint patent applications after receiving the Research Committee
recommendation. RiboGene shall file, with each party to share out-of-pocket
expenses according to their Interest, patent applications for Joint Compounds
and Products, and HPI shall provide reasonable cooperation relative thereto. If
RiboGene fails to use commercially reasonable efforts to pursue this obligation,
then HPI may file and/or prosecute the patent at joint expense of the parties
also according to their Interest. The developing party may file, at its sole
discretion and own expense, patent applications for Developing Party Compounds
in both parties' names and the nondeveloping party shall provide reasonable
cooperation relative thereto. A nondeveloping party shall not file or prosecute
patent applications with respect to Developing Party Compounds.
8.3 ENFORCEMENT OF PATENT RIGHTS.
8.3.1 Each party shall use good faith and commercially
reasonable efforts (i) to enforce its own Proprietary Rights against infringers,
and (ii) to consult with the other party both prior to and during said
enforcement. Upon learning of significant and continuing infringement of such
rights belonging to the other party by a third party in a manner that may have a
bearing on the collaboration hereunder, HPI or RiboGene, as the case may be,
promptly shall provide notice to the other party in writing of the fact and
shall supply the other party with all evidence possessed by the notifying party
pertaining to and establishing said infringement(s). Whenever rights to Products
hereunder are affected which are not covered under joint patent applications,
the party whose Proprietary Rights are allegedly being infringed shall have six
(6) months from the date of receipt of notice under this Section 8.3 to xxxxx
the infringement, or to file suit against at least one of the infringers, at its
sole expense, following consultation with the other party. The party whose
Proprietary Rights are allegedly being infringed shall not be obligated to bring
or maintain more than one such suit at any time with respect to claims directed
to any one method of manufacture or composition of matter.
8.3.2 If a joint patent application or a patent based thereon
allegedly is being infringed, HPI and RiboGene shall cooperate in seeking to
xxxxx the infringement or in bringing suit against the alleged infringing party.
Unless the parties mutually agree otherwise, expenses shall be apportioned based
on each party's Interest in the Product in connection with which the patent
infringement is alleged. All monies recovered upon final judgment or settlement
of any such suit shall be shared by HPA and RiboGene pro rata based on each
party's percentage of monetary contributions to prosecution of the abatement of
the infringement or the suit against the infringing party. Thus, if a party
fails to pay its prescribed share of the expenses, that party's share of the
settlement shall be reduced accordingly. Notwithstanding the foregoing, HPI and
RiboGene shall fully cooperate with each other in the planning and execution of
any action to enforce the Proprietary Rights affected hereunder. A party holding
more than a fifty percent
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(50%) Interest in a Joint Compound, a Developing Party Compound or Product may
xxx on its own behalf if the other party refuses to participate.
8.4 ASSIGNMENTS. Each party to which any portion of the Inventions
vests other than as intended and set forth in this Article 8 shall, to the
extent required by the intent or provisions herein, immediately assign to the
other party such portion of the right, title, and interest therein to carry out
the intentions herein. Each party agrees to cooperate with the other and take
all reasonable additional actions and execute such agreements, instruments, and
documents as may be reasonably required to perfect the others's ownership
interest in accordance with the intent of this Article 8 including, without
limitation, the execution of necessary and appropriate instruments of
assignment.
ARTICLE 9
SALE OF LICENSE OF INTEREST
9.1 SCREENING PHASE.
9.1.1 If both parties decide to jointly sell their interests
with respect to a compound or Candidate which is still in the Screening Phase,
the parties agree that the net proceeds from any sale shall be divided equally
without consideration of Third Party Obligations. A party shall pay from its
share of the net proceeds all Third Party Obligations such party may owe. In
arriving at net proceeds, all reasonable out-of-pocket transaction costs (e.g.
attorney fees) shall be deducted from gross proceeds and paid directly to the
person or entity owed or reimbursed to the party who has paid the person or
entity for such costs.
9.1.2 If the parties jointly license their interests in any
Candidates or partially sequenced compounds during the Screening Phase, the
parties agree that any revenues received with respect to such licensing shall
be equally shared as described in Paragraph 9.1.1 including, without limitation,
any initial payment, milestone fees or royalties.
9.2 DEVELOPMENT PHASE. During the Development Phase, either party,
at any time with respect to Candidates for which both parties are actively
participating in such phase, may initiate discussions to buy out the other
party's interest or sell its own rights in any one or more Developing Party
Compound, Joint Compound or Product. However, neither party shall be obligated
to sell or buy the other's interest either partially or in total. The parties
agree that a sale or license of any Joint Compound or Product to a third party
shall be governed by the terms described in Exhibit D hereto.
9.3 DEVELOPING PARTY COMPOUND. The sale or license of a Developing
Party Compound or any Product incorporating a Developing Party Compound shall
be governed by Sections C.3 and D of Exhibit D.
9.4 DISCLOSURE OBLIGATION. Each party will be obligated to
immediately advise the other party when it becomes aware of, or is approached
by, a prospective third party buyer of, or
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licensee for, a Joint Compound or Product, and the proposed terms of any offer
tendered by such third party. The parties shall jointly consider any proposal.
9.5 MILESTONE AND ROYALTY OBLIGATIONS. In the case of a sale or
license of a Joint Compound or a Product incorporating a Joint Compound or
derivative thereof, the net proceeds after deducting reasonable out-of-pocket
expenses (e.g. attorney fees) incurred in connection with that transaction
shall be shared based on each party's Interest in such Joint Compound or
Product. Each party shall be required to pay its own Third Party Obligations
from the gross proceeds provided, however, in no event shall a party's net
proceeds, after accounting for that party's Third Party Obligations, be less
than the amounts determined under Section D.2 of Exhibit D. In the case of a
Developing Party Compound, the existing Third Party Obligations described in
Exhibit F shall be paid from the gross revenues received and the net proceeds
shall be divided per Exhibit D.
9.6 PROVISIONS TO INCORPORATE. Any sale or license envisioned
under this Article 9 may require the incorporation of certain reporting, due
diligence, indemnification and other provisions in order for HPI and/or
RiboGene to comply with certain requirements of third party licensing
agreements. The parties agree that such provisions shall be included in any
sales or license when necessary.
ARTICLE 10
DISPUTE RESOLUTION; VENUE AND CHOICE OF LAW
10.1 DISPUTE RESOLUTION. If a disagreement, dispute, controversy or
claim should arise out of or relating to the interpretation of or performance
under, this Agreement, or the breach, or invalidity thereof, the parties will
attempt in good faith to resolve their differences before resorting to the
termination procedures provided in Article 11 of this Agreement by submitting
such dispute to the Chief Executive Officers of the parties (or their
designees) for consideration for a period of thirty (30) days. If the parties
do not resolve such dispute during that thirty (30) day period, the parties
agree to then endeavor to settle the dispute by mediation administered by the
American Arbitration Association (AA) under its Commercial Mediation Rules
before resorting to binding arbitration. Thereafter, either party shall be
free to initiate binding arbitration. Any arbitration hereunder shall be
conducted under the Commercial Arbitration Rules of the AA. California
Arbitration Law shall govern, except in the event a stay is sought pursuant to
California Code of Civil Procedure Section 1281.2(c) in which event the parties
agree the issue shall be resolved under the United States Arbitration Act.
Each such arbitration shall be conducted by a single, neutral arbitrator
appointed in accordance with such rules. The arbitrator is to be appointed
within thirty (30) days after submission to arbitration with the hearing to
commence as soon as practicable thereafter but in no event more than sixty (60)
days after the arbitrator's appointment. Any such arbitration shall be held in
San Diego, California. The arbitrator shall have the authority to grant
specific performance, and to allocate between the parties the costs of
arbitration in such equitable manner as the arbitrator may determine. Judgment
upon the award so rendered may be entered in any court having jurisdiction or
application may be made to such court for judicial acceptance of any award and
an order of enforcement, as the case may be. In no event shall a
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demand for arbitration be made after the date when institution of a legal or
equitable proceeding based upon such claim, dispute or other matter in question
would be barred by the applicable statute of limitations. Neither party, nor the
arbitrator, may disclose the existence, content or results of the arbitration,
without the prior written consent of the other party. Notwithstanding the
foregoing, each party shall be entitled to institute judicial proceedings
against the other party outside arbitration to enforce the instituting party's
rights hereunder through specific performance, injunction, declaratory judgment
or similar equitable relief.
10.2 GOVERNING LAW, JURISDICTION AND VENUE. This Agreement is made in
accordance with and shall be governed and construed under the laws of the State
of California, without regard to the principles of conflicts of laws rules. In
any legal action relating to this Agreement, each party consents to the exercise
of jurisdiction over it by a state or federal court in California and that if a
party brings an action other than an action to enforce an arbitration decision,
it shall be instituted in San Diego if first instituted by RiboGene and in San
Francisco if first instituted by HPI. In any action or proceeding outside of
binding arbitration to enforce rights under this Agreement, the prevailing party
shall be entitled to recover costs and expenses including, without limitation,
attorney's fees.
ARTICLE 11
TERM AND TERMINATION
11.1 TERM. This Agrement shall remain in full force and effect from
the Effective Date and, unless otherwise terminated by operation of law or by
acts of the parties in accordance with the terms of this Agreement, or unless
extended by mutual agreement of the parties, shall remain in effect until the
expiration of the latest of (a) the Screening Term, (b) the Development Term, or
(c) a party's obligations to make payments required pursuant to this Agreement.
This Section does not extend the Screening Term.
11.2 EARLY TERMINATION. If a party breaches any material obligation
of this Agreement, including failure to make any payment when due and payable
hereunder, and such party fails to cure such breach within ten (10) days of
written notice concerning untimely payments provided for herein or sixty (60)
days after receipt of written notice concerning any other failure, the
nonbreaching party may terminate this Agreement by providing written notice to
the breaching party. Additionally, either party may terminate this Agreement
upon the insolvency of, or filing of either a voluntary petition by, or an
involuntary petition against (if not dismissed within sixty (60) days after
filing), the other party.
11.3 EFFECT OF TERMINATION. Upon termination of this Agreement prior
to its term set forth in Section 11.1 above, the screening activities set forth
in Article 3 shall cease. Notwithstanding any termination, the provisions of
Articles 2, 7, 8, 9, 10, and 12 through 15 shall survive to the extent
obligations have accrued thereunder prior to termination and including without
limitation the obligation of a party to make the payments provided for herein. A
party shall have
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the right to continue to pursue any Developing Party Compound which that party
is developing at its own expense, even in the event of termination of this
Agreement.
ARTICLE 12
INDEMNIFICATION, LIABILITY, INFRINGEMENT
12.1 INDEMNITY. Each party (the "Indemnifying Party") shall defend
the other party and such other party's Affiliates, officers, directors,
shareholders, employees and agents (collectively, the "Indemnified Parties" for
purposes of this Section 12.1) against any claims made against the Indemnified
Parties by third parties to the extent that such claims arise out of the
negligent, reckless or intentionally wrongful acts or omissions of, this
Agreement. A licensor of enabling technology shall also be included as an
Indemnified Party if the party licensed by such licensor is required by the
terms of the licensing agreement to include an indemnity in its sublicenses but
only to the extent that the technology licensed under such agreement is
utilized in performance of this Agreement. The Indemnifying Party shall either
settle such claims or pay all damages and costs finally awarded against the
Indemnified Parties by a court of competent jurisdiction as a result of such
claims. The Indemnifying Party shall have no liability for any such claim if
the Indemnified Parties do not notify the Indemnifying Party promptly in
writing of the claim, give the Indemnifying Party the exclusive control of the
defense and settlement thereof, and provide reasonable assistance in connection
therewith, at the Indemnifying Party's expense. A party hereto who is the
Indemnified Party may, at its option and own expense, have its own counsel and
participate in any proceedings even though the defense of such proceedings are
under the control of the Indemnifying Party.
12.2 ADDITIONAL INDEMNITY FOR SOLELY DEVELOPED PRODUCTS. The
Developing Party shall defend the nondeveloping party and its Affiliates,
officers, directors, shareholders, employees and agents (collectively, the
"Nondeveloping Indemnified Parties" for purposes of this Section 12.2) against
any claims made against the Nondeveloping Indemnified Parties by third parties
to the extent that such claims arise out of the manufacture, use or sale of
any Developing Party Compound and any Product incorporating a Developing Party
Compound including without limitation (i) the infringement or alleged
infringement of a third party's intellectual property rights, (ii) the inherent
property of any such Developing Party Compound, (iii) the development or
manufacture of any Developing Party Compound by Developing Party, its
Affiliates, or sublicensees, or (iv) the use of any such Developing Party
Compound or Product incorporating a Developing Party Compound manufactured,
used or sold by the Developing Party, its Affiliates or sublicensees by any
human regardless of whether such use was contemplated by the Parties
(collectively, the "Liabilities"); and shall either settle such claims or pay
all damages and costs finally awarded against the Nondeveloping Indemnified
Parties by a court of competent jurisdiction as a result of such claims out of
the gross proceeds derived from the sale or license of such Developing Party
Compound and each Product incorporating such Developing Party Compound. Except
with respect to claims and suits based on strict liability related to the
inherent property of a Developing Party Compound and each Product incorporating
such Developing
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Party Compound, the parties shall share the Liabilities which exceed the gross
proceeds ("Excess Liabilities") derived from the sale or license of such
Developing Party Compound and Product based on their respective Interests
therein. Excess Liabilities related to strict liability shall be paid solely by
the Developing Party. The Developing Party shall have no liability for any such
claim (i) unless it receives prompt written notification of such claim, is given
exclusive control of the defense and settlement thereof, and is provided with
all reasonable assistance in connection therewith by the Indemnified Parties, at
the Developing Party's expense, or (ii) to the extent that such claim arises out
of the nondeveloping party's breach of this Agreement, negligence or willful
misconduct. A licensor of enabling technology shall also be included as a
Nondeveloping Indemnified party if the party licensed by such licensor is
required by the terms of the licensing agreement to include any indemnity in its
sublicenses but only to the extent that the technology licensed under such
agreement is utilized in performance of this Agreement. A party hereto who is
the Nondeveloping Indemnified Party may, at its option and own expense, have its
own counsel and participate in any proceedings even though the defense of such
proceedings are under the control of the Indemnifying Party.
12.3 RIGHT TO REIMBURSEMENT. Without limiting the right of the
parties under Sections 12.1 and 12.2, a party which is entitled to
indemnification against a claim under either Sections 12.1 or 12.2, and is not
provided such defense or indemnification by the other party, shall have the
right to defend itself in such claim and obtain reimbursement from the other
party for its reasonable legal fees and other costs incurred in defending itself
in such suits, and for any payments or amounts which it pays as a result of
settlements made or judgments awarded in any suit based on such claim. Such
right of reimbursement shall be in addition to all other remedies which the
party defending itself under this Section 12.3 possesses with respect to the
other party.
12.4 LIABILITY AND INDEMNIFICATION FOR PRODUCTS INCORPORATING JOINT
COMPOUNDS.
12.4.1 Subject to the provision of Section 12.4.2 through 12.4.4
and pursuant to Section 9.1.1, the parties shall subtract from the gross
proceeds from the sale or licensing of any Product to a third party or by one of
the parties hereto which incorporates a Joint Compound the amount of any and all
liabilities, damages, losses, costs and expenses, including attorney's fees, and
further subtracting without limitation any product liabilities resulting from
(i) the infringement or alleged infringement of a third party's intellectual
property rights (ii) the inherent properties of any such Joint Compound, (iii)
the development or manufacture of any Joint Compound by either party or any of
their respective Affiliates, or (iv) the use of any such Product manufactured,
used or sold by either party or their Affiliates by any human being regardless
of whether such use was contemplated by the Parties (collectively, the Joint
Compound "Liabilities") arising from any suit or claim by a third party alleging
personal injury or property damage based on the development, use, manufacture,
promotion or sale of any such Product.
12.4.2 Notwithstanding the provisions of Section 12.4.1 above,
HPI shall indemnify and hold RiboGene and its Affiliates, officers, directors,
shareholders and agents harmless from and against Joint Compound Liabilities to
the extent such Joint Compound Liabilities are finally determined by a court of
competent jurisdiction (or by specific reference in a
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settlement agreement to which both Parties have consented) to have arisen from
the breach of this Agreement by HPI, willful misconduct or gross negligence (but
not the strict liability or liabilities resulting from the inherent properties
of any Joint Compound) of HPI or its Affiliates relating to the use, manufacture
or sale of any Product which incorporates a Joint Compound.
12.4.3 Notwithstanding the provisions of Section 12.4.1 above,
RiboGene shall indemnify and hold HPI and its Affiliates, officers, directors,
shareholders and agents harmless from and against Joint Compound Liabilities to
the extent such Joint Compound Liabilities are finally determined by a court of
competent jurisdiction (or by specific reference in a settlement agreement to
which both Parties have consented) to have arisen from the breach of this
Agreement by RiboGene, willful misconduct or gross negligence (but not the
strict liability or liabilities resulting from the inherent properties of any
Joint Compound) of RiboGene or its Affiliates relating to the use, manufacture
or sale of any Product which incorporates a Joint Compound.
12.4.4 Each Party shall notify the other promptly upon receipt
of any notice of any product liability claim or lawsuit subject to this Section
12.4. Such notice shall be a condition to any indemnity provided for herein. The
party responsible for distributing a Product which incorporates a Joint Compound
which is the subject of such claim, shall be responsible for defending such
claim except as to any claim for which such party expects to seek indemnity from
the other party under Section 12.4.2 or 12.4.3 above, in which case the latter
party shall defend such claim. HPI or RiboGene, as the case may be, may at their
election and expense participate in any such litigation controlled by the other
party. The party defending such claim or suit may settle any such claim or suit
only with the written consent of the other party, which shall not be
unreasonably withheld.
12.5 INSURANCE. Each party shall maintain product liability insurance
with respect to its development, manufacture and sale of Products, in such
amount as it customarily maintains with respect to its development, manufacture
and sale of other comparable products, and shall name the other party as an
additional insured party. Notwithstanding the above, the insurance will at a
minimum meet the requirements both parties have to their respective licensors
with respect to technology licensed from said licensors and utilized in
performance of this Agreement, and, if required, shall name such licensors as
additional insured parties. Each party shall maintain such insurance while it
develops, manufactures or sells Products, and thereafter shall maintain such
insurance in effect for a reasonable period after the cessation of sale or other
distribution of such Product. Each party shall provide a copy of the policy
providing such product liability insurance to the other party promptly after
such policy becomes effective, and shall thereafter notify such other party
promptly after any change in the terms of such policy.
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ARTICLE 13
DISCLAIMER OF WARRANTIES; FURTHER ACTION
13.1 DISCLAIMER BY HPI. THE LICENSED COMBINATORIAL LIBRARIES,
ITERATION MIXTURES AND CONFIRMATORY SAMPLES ARE PROVIDED BY HPI "AS IS" AND
WITHOUT WARRANTY OF ANY KIND, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION
THE WARRANTIES OF DESIGN, MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR
WARRANTIES ARISING FROM A COURSE OF DEALING, USAGE OR TRADE PRACTICES; AND, TO
THE BEST OF HPI's KNOWLEDGE THE PERFORMANCE OF ITS OBLIGATIONS HEREUNDER DOES
NOT INFRINGE UPON INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES. IN NO EVENT
WILL HPI OR ANY OF ITS LICENSORS WHOSE TECHNOLOGY IS UTILIZED BY THE PARTIES IN
THE PERFORMANCE OF THIS AGREEMENT BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THE LICENSE RIGHTS BY RIBOGENE
HEREUNDER.
13.2 DISCLAIMER BY RIBOGENE. THE ASSAYS ARE PROVIDED BY RIBOGENE
"AS IS" AND WITHOUT WARRANTY OF ANY KIND, EXPRESS OR IMPLIED, INCLUDING WITHOUT
LIMITATION THE WARRANTIES OF DESIGN, MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE OR WARRANTIES ARISING FROM A COURSE OF DEALING, USAGE OR TRADE
PRACTICES; AND, TO THE BEST OF RIBOGENE'S KNOWLEDGE THE PERFORMANCE OF ITS
OBLIGATIONS HEREUNDER DOES NOT INFRINGE UPON INTELLECTUAL PROPERTY RIGHTS OF
THIRD PARTIES. IN NO EVENT WILL RIBOGENE OR ANY OF ITS LICENSORS WHOSE
TECHNOLOGY IS UTILIZED BY THE PARTIES IN THE PERFORMANCE OF THIS AGREEMENT BE
LIABLE FOR ANY INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES RESULTING FROM
EXERCISE OF THE LICENSE RIGHTS BY HPI HEREUNDER.
13.3 COMPLIANCE WITH LAW. Each party and its respective authorized
sublicensees shall comply with all applicable laws, regulations, and
governmental orders in connection with their activities hereunder, including
without limitation all research and development activities and the manufacture,
use and sale of Products. Without limiting the foregoing, each party and its
respective authorized employees shall observe all applicable United States and
foreign laws with respect to the transfer of Products and related technical
data to foreign countries, including without limitation, the International
Traffic in Arms Regulation and Export Administration Regulations.
13.4 ADDITIONAL DOCUMENTS. Each party agrees to execute such
further papers or agreements as may be necessary to effect the purposes of this
Agreement.
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ARTICLE 14
CONFIDENTIALITY
RiboGene and HPI acknowledge that they have executed a separate Mutual
Nondisclosure Agreement, a copy of which is attached as Exhibit E, and the
parties intend that such Mutual Nondisclosure Agreement shall be effective with
respect to all disclosures and discoveries under this Agreement.
ARTICLE 15
MISCELLANEOUS
15.1 WAIVER. No waiver by either party hereto of any breach or
default of any of the covenants or agreements herein set forth shall be deemed
a waiver as to any subsequent or similar breach or default.
15.2 ASSIGNMENT. This Agreement shall be binding upon and inure to
the benefit of the parties hereto and their permitted successors and assigns;
provided, however, that neither party shall assign any of its rights and
obligations hereunder except as incident to the merger, consolidation,
reorganization, or acquisition of stock or assets affecting a majority of the
assets or voting control of the assigning party. HPI or RiboGene may assign
their respective rights and/or obligations to any of their respective
Affiliates.
15.3 NOTICES. Any notice or other communication required or
permitted to be given to either party hereto shall be in writing and shall be
deemed to have been properly given and to be effective on the date of delivery
if delivered in person or by facsimile or five (5) days after mailing by
registered or certified mail, postage paid, to the other party at the following
address:
In the case of HPI: Houghten Pharmaceuticals, Inc.
0000 Xxxxxxx Xxxxxxx Xxxxx
Xxx Xxxxx, XX 00000
Attention: President
Phone: 619/000-0000
Fax: 619/000-0000
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In the case of RiboGene: RiboGene, Inc.
00000 Xxxxx Xxxx.
Xxxxxxx, XX 00000
Attention: President
Phone: 510/000-0000
Fax: 510/000-0000
Either party may change its address for communications by a notice to the other
party in accordance with this Section.
15.4 AMENDMENT. No amendment or modification hereof shall be valid
or binding upon the parties unless made in writing and signed by both parties.
15.5 PUBLIC ANNOUNCEMENT AND DISCLOSURE. In consideration of the
terms hereof, HPI and RiboGene may agree to make a public announcement of the
collaboration. The content shall be agreed upon by both parties Even if no
public announcement is agreed upon, either party may disclose the existence of
this Agreement to investors and prospective investors. No other announcement,
public release or notice of any kind may be issued without the written consent
of both parties, which consent shall not be unreasonably withheld.
Notwithstanding the above, either party may disclose previously disclosed
non-confidential information without the consent of the other. A party shall
not disclose the names of the other party's licensors of technology utilized in
the performance of this Agreement without the written consent of the other
party.
15.6 FORCE MAJEURE. Any delays in performance by any party under
this Agreement (other than a party's failure to pay money to the other party)
shall not be considered a breach of this Agreement if and to the extent caused
by occurrences beyond the reasonable control of the party affected, including
but not limited to acts of God, embargoes, governmental restrictions, strikes or
other concerted acts of workers, fire, flood, explosion, riots, wars, civil
disorder, rebellion or sabotage. The party suffering such occurrence shall
immediately notify the other party and any time for performance shall be
extended by the actual time of delay caused by the occurrence.
15.7 INDEPENDENT CONTRACTORS. In making and performing this
Agreement, RiboGene and HPI act and shall act at all times as independent
contractors and nothing contained in this Agreement shall be construed or
implied to create an agency, partnership or employer and employee relationship
between HPI and RiboGene. At no time shall one party make commitments or incur
any charges or expenses for, or in the name of, the other party.
15.8 SEVERABILITY. If any term, condition or provision of this
Agreement is held to be unenforceable for any reason, it shall, if possible, be
interpreted rather than voided, in order to achieve the intent of the parties
to this Agreement to the extent possible. In any event, all other terms,
conditions and provisions of this Agreement shall be deemed valid and
enforceable to the full extent.
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15.9 CUMULATIVE RIGHTS. The rights, powers and remedies hereunder
shall be in addition to, and not in limitation of, all rights, powers and
remedies provided at law or in equity, or under any other agreement between the
parties. All of such rights, powers and remedies shall be cumulative, and may
be exercised successively or cumulatively.
15.10 ENTIRE AGREEMENT. This Agreement and any and all Exhibits
referred to herein embody the entire understanding of the parties with respect
to the subject matter hereof and supersedes all previous communications,
representations or understandings, either oral or written, between the parties
relating to the subject matter hereof.
IN WITNESS WHEREOF, both RiboGene and HPI have executed this Agreement,
in duplicate originals, by their respective officer hereunto duly authorized,
as of the day and year hereinabove written.
HOUGHTEN PHARMACEUTICALS, INC. RIBOGENE, INC.
By: /s/ XXXXXX X. XXXXXXXXX By: /s/ XXXXXXX X. XXXXXXXXX
----------------------------- -----------------------------
Xxxxxx X. Xxxxxxxxx Xxxxxxx X. Xxxxxxxxx
President and CEO Chairman, President and CEO
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EXHIBIT A
ASSAYS TO BE PERFORMED BY RIBOGENE
The Assays will be based on translational targets and shall include some or all
of the following:
[*]
----------------------------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
26
EXHIBIT B
[*]
----------------------------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
27
[*]
----------------------------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
28
EXHIBIT C
[*]
[*]
----------------------------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
29
EXHIBIT D
DEVELOPMENT PHASE PROVISIONS
The following provisions, in addition to applicable provisions of the Joint
Collaboration Agreement to which this Exhibit D is attached, shall govern the
Development Phase and the development of Developing Party Compounds unless and
until such provisions are incorporated in substance, amended or superseded by
the terms of a subsequent agreement. Each Joint Compound, Product and
Developing Party Compound shall be treated separately in the application of
these provisions.
A. FUNDING.
At such time as both parties agree to commence the Development Phase
with respect to a particular Candidate becoming a Joint Compound, the parties,
after reviewing the Research Committee's recommendations as to a budget and
otherwise, shall agree on the percentage contribution to be made by each party
to the funding of the budget with respect to that Joint Compound in the
Development Phase. Until amended as herein provided, all costs incurred in
connection with such Joint Compound and development of the Product in the
Development Phase shall then be apportioned between the parties based on these
agreed-to percentage contributions and each party's Interest in that Joint
Compound and/or Products incorporating such Joint Compound or derivatives
thereof shall be based on that party's overall contribution to the Development
Phase for such Joint Compound and/or Product. Either party ("Proposing Party")
may at any time during the Development Phase with respect to that Joint Compound
and/or Product with at least three months notice, advise the other party
("Non-Proposing Party") of its wish to increase or decrease the percentage
contribution. The Non-proposing Party is under no obligation to accept any
proposal that would cause an increase in the Proposing Party's percentage
contribution. In the event that the Proposing party wishes to decrease its
percentage contribution to that Joint Compound and/or Product, the Non-proposing
party may (1) increase the future payments it makes to the Development Phase for
that Joint Compound and/or Product against budget to make up part or all of the
decreased contribution for the budget from the Proposing party in which instance
the Interest of each party would be adjusted monthly to reflect the overall
percentage contribution of each party to the Development Phase for that Joint
Compound and/or Product; (2) reduce its own contribution against budget so as to
reflect the Proposing Party's reduction without altering the overall percentage
contribution of both parties with the budget to be adjusted accordingly to
reflect such reduction; or (3) propose cessation of the funding altogether,
resulting in either a cessation of the Development Phase for that Joint Compound
and/or Product or an attempted sale or license of the rights of both parties in
the Development Phase for that Joint Compound and/or Product. Notwithstanding
any provision to the contrary, neither party's Interest may be devalued to less
[*] in a Candidate, Developing Party Compound, Joint Compound and/or Product
even if one party chooses not to, or fails to, make any percentage contribution
to the Development Phase for that Candidate, Developing Party Candidate, Joint
Compound and/or Product.
----------------------------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
30
B. VALUATION OF CONTRIBUTION.
1. [*]
2. [*]
3. [*]
4. [*]
----------------------------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
31
[*]
5. [*]
6. [*]
C. SALE OR LICENSE OF INTEREST.
[*]
1. [*]
2. [*]
----------------------------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
32
[*]
3. [*]
D. DISTRIBUTION OF REVENUE
1. [*]
----------------------------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
33
2. [*]
3. [*]
E. INSURANCE.
Effective as of such time as any Product enters human clinical trials,
the parties with respect to that Product (with the costs to be shared
based on each party's participation in cost sharing as set forth in
Section A), or through their sublicensee(s), shall insure their
activities under this Agreement and obtain, keep in force and maintain
insurance, including without limitation product liability insurance, in
amounts sufficient to cover their obligations under this Article E and
consistent with reasonable business practice in the industry. Without
limiting the foregoing, coverage shall in no event be less than the
following:
Comprehensive or Commercial Form General Liability Insurance
(contractual liability included) with limits as follows:
1. Each occurrence $1,000,000
2. Products/Completed Operations Aggregate $5,000,000
3. Personal and Advertising Injury $1,000,000
4. General Aggregate (commercial form only) $5,000,000
----------------------------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
34
It should be expressly understood, however, that the coverages and limits
referred to under the above shall not in any way limit each party's liability.
Certificates of insurance evidencing compliance with all requirements shall be
requested. Such certificates shall:
1. Provide for thirty (30) day advance written notice to the other
party of any modification;
2. Indicate that both parties have been endorsed as insureds under
the coverages referred to under the above; and
3. Include a provision that the coverages will be primary and will
not participate with nor will be excess over any valid and
collectable insurance or program of self-insurance carried or
maintained by either party.
35
EXHIBIT E
MUTUAL NONDISCLOSURE AGREEMENT
This MUTUAL NONDISCLOSURE AGREEMENT ("Agreement") is made effective as
of the 1st day of October, 1993, by and between HOUGHTEN PHARMACEUTICALS, INC.,
a Delaware corporation, and RiboGene, Inc., to assure the protection and
preservation of the confidential and/or proprietary nature of information to be
disclosed or made available between the parties in connection with certain
negotiations or discussions.
WHEREAS, in order to pursue these discussions, the parties have agreed
to mutual disclosures of certain data and other information which are of a
proprietary and confidential nature (as defined in paragraph 2 below and
referred to herein as "Confidential Information").
NOW, THEREFORE, in reliance upon and in consideration of the following
undertakings, and for other good and valuable consideration, the receipt of
which is hereby acknowledged, the parties to this Agreement hereby agree as
follows:
1. Subject to the limitations set forth in Paragraph 2,
Confidential Information shall be deemed to include any information, process,
technique, compound, library, method of synthesis, program, design, drawing,
formula or test data relating to any research project, work in process,
development, engineering, manufacturing, marketing, servicing, financing or
personnel matter relating to the disclosing party, its present or future
products, sales, suppliers, customers, employees, investors, or business,
whether in oral, written graphic or electronic forms.
2. The term "Confidential Information" shall not be deemed to
include information which, to the extent that the recipient of Confidential
Information can establish by competent written proof:
a. at the time of disclosure is in the public domain;
b. after disclosure, becomes part of the public domain by
publication or otherwise, except by (i) breach of this
Agreement by the recipient or (ii) disclosure by any
person or affiliate company to whom Confidential
Information was disclosed under this Agreement;
c. was (i) in recipient's possession in documentary form at
the time of disclosure by the disclosing party or (ii)
subsequently and independently developed by recipient's
employees who had no knowledge of or access to the
Confidential Information;
-1-
36
d. recipient shall receive from a third party who has the
lawful right to disclose the Confidential Information
and who shall not have obtained the Confidential
Information either directly or indirectly from the
disclosing party; or
e. disclosure is required by law or regulation.
In the event that Confidential Information is required to be
disclosed pursuant to subsection (e), the party required to make disclosure
shall notify the other to allow that party to assert whatever exclusions or
exemptions may be available to it under such law or regulation.
3. Each party shall maintain in trust and confidence and not
disclose to any third party or use for any unauthorized purpose any Confidential
Information received from the other party. Each party may use such Confidential
Information only to extent required to perform the evaluation. Confidential
Information shall not be used for any purpose or in any manner that would
constitute a violation of any laws or regulations, including, without
limitation, the export control laws of the United States. No other rights or
licenses to trademarks, inventions, copyrights, or patents are implied or
granted under this Agreement.
4. Confidential Information supplied shall not be reproduced in any
form except as required to perform evaluation.
5. The responsibilities of the parties are limited to using their
reasonable and best efforts to protect the Confidential Information from
unauthorized use or disclosure. Both parties shall advise their employees or
agents who might have access to such Confidential Information of the
confidential nature thereof. No Confidential Information shall be disclosed to
any officer, employee or agent of either party who does not have a need to know
such information to perform the evaluation.
6. All Confidential Information (including copies thereof) shall
remain the property of the disclosing party, and shall be returned to the
disclosing party after the receiving party's need for it has expired, or upon
request of the disclosing party, and in any event, upon completion or
termination of this Agreement.
7. This Agreement shall continue in full force and effect for so
long as the parties continue to exchange Confidential Information. This
Agreement may be terminated at any time upon ten (10) days' written notice to
the other party. The termination of this Agreement shall not relieve either
party of the obligations imposed by this Agreement with respect to Confidential
Information disclosed prior to the effective date of such termination and the
provisions hereof shall survive the termination of this Agreement for a period
of three (3) years from the date of such termination.
8. This Agreement shall be governed by the laws of the State of
California's those laws are applied to contracts entered into and to be
performed in California.
9. Neither party shall reveal the fact that Confidential
Information has been disclosed pursuant to this Agreement or that either party
is making an evaluation. It is understood that disclosure pursuant to this
Agreement is not a public disclosure or sale or offer for sale of any product,
but is made for the limited purpose of evaluation.
10. This agreement contains the entire agreement of the parties and
may not be changed, modified, amended or supplemented except by a written
instrument signed by both parties. The
- 2 -
37
unenforceability of any provision on this Agreement shall not affect the
enforceability of any other provision of this Agreement. Neither this
Agreement nor the disclosure of any Confidential Information pursuant to this
Agreement by any party shall restrict such party from disclosing any of its
Confidential Information to any third party.
11. Each party hereby acknowledges and agrees that in the event of any
breach of this Agreement by the other party, including, without limitation, the
actual or threatened disclosure of a disclosing party's Confidential Information
without the prior express written consent of the disclosing party, the
disclosing party will suffer an irreparable injury, such that no remedy at law
will afford it adequate protection against, or appropriate compensation for,
such injury. Accordingly, each party hereby agrees that the other party shall be
entitled to specific performance of a receiving party's obligations under this
Agreement, as well as such further injunctive relief as may be granted by a
court of competent jurisdiction.
AGREED TO AS OF THE FIRST DATE ABOVE:
HOUGHTEN PHARMACEUTICALS, INC. Company: RiboGene, Inc.
3550 General Atomics Court ----------------------------
Xxx Xxxxx, XX 00000 Address: 00000 Xxxxx Xxxxxxxxx
-----------------------------
Xxxxxxx, XX 00000
-----------------------------
By: /s/ XXXXXXX X. XXXXX By: /s/ XXXXXXX X. XXXXX
----------------------- --------------------------------
Name: XXXXXXX X. XXXXX Name: XXXXXXX X. XXXXX
----------------------- --------------------------------
(Print Name) (Print Name)
Title: Title: Vice President, Business
---------------------- Development
---------------------------------
-3-
38
EXHIBIT F
THIRD PARTY OBLIGATIONS
[*]
B. HPI
1. Chiron Corporation and its affiliate Chiron Mimotopes Pty. Ltd.
("Chiron")
a. [*]
----------------------------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
39
[*]
[*]
2. [*]
[*]
[*]
[*]
[*]
[*]
----------------------------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
40
HPI Activity
[*]
----------------------------
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
