<PAGE>
AS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION ON MARCH 17, 1998
REGISTRATION NO. 333-38051
- -------------------------------------------------------------------------------
- -------------------------------------------------------------------------------
SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
---------------
AMENDMENT NO. 9
TO
FORM S-1
REGISTRATION STATEMENT
UNDER
THE SECURITIES ACT OF 1933
---------------
CURAGEN CORPORATION
(EXACT NAME OF REGISTRANT AS SPECIFIED IN ITS CHARTER)
DELAWARE 8731 06-1331400
(STATE OR OTHER (PRIMARY STANDARD INDUSTRIAL (I.R.S. EMPLOYER
JURISDICTION OF CLASSIFICATION CODE NUMBER) IDENTIFICATION NO.)
INCORPORATION OR
ORGANIZATION)
555 LONG WHARF DRIVE, 11TH FLOOR
NEW HAVEN, CONNECTICUT 06511
(203) 401-3330
(203) 401-3333 FACSIMILE
(ADDRESS, INCLUDING ZIP CODE, AND TELEPHONE NUMBER, INCLUDING AREA CODE, OF
REGISTRANT'S PRINCIPAL EXECUTIVE OFFICES)
---------------
JONATHAN M. ROTHBERG, PH.D.
CHIEF EXECUTIVE OFFICER, PRESIDENT AND
CHAIRMAN OF THE BOARD
CURAGEN CORPORATION
555 LONG WHARF DRIVE, 11TH FLOOR
NEW HAVEN, CONNECTICUT 06511
(203) 401-3330
(203) 401-3333 FACSIMILE
(NAME, ADDRESS, INCLUDING ZIP CODE, AND TELEPHONE NUMBER, INCLUDING AREA CODE,
OF AGENT FOR SERVICE)
---------------
COPIES TO:
JONATHAN L. KRAVETZ, ESQ. KEITH F. HIGGINS, ESQ.
STANFORD N. GOLDMAN, JR., ESQ. ROPES & GRAY
MINTZ, LEVIN, COHN, FERRIS, ONE INTERNATIONAL PLACE
GLOVSKY AND POPEO, P.C. BOSTON, MASSACHUSETTS 02110
ONE FINANCIAL CENTER (617) 951-7000
BOSTON, MASSACHUSETTS 02111 (617) 951-7050 FACSIMILE
(617) 542-6000
(617) 542-2241 FACSIMILE
---------------
APPROXIMATE DATE OF COMMENCEMENT OF PROPOSED SALE TO THE PUBLIC: As soon as
practicable after this Registration Statement becomes effective.
If any of the securities being registered on this Form are to be offered on
a delayed or continuous basis pursuant to Rule 415 under the Securities Act of
1933, as amended (the "Securities Act"), check the following box. [_]
If this Form is filed to register additional securities for an offering
pursuant to Rule 462(b) under the Securities Act, check the following box and
list the Securities Act registration statement number of the earlier effective
registration statement for the same offering. [_]
If this Form is a post-effective amendment filed pursuant to Rule 462(c)
under the Securities Act, check the following box and list the Securities Act
registration statement number of the earlier effective registration statement
for the same offering. [_]
If this Form is a post-effective amendment filed pursuant to Rule 462(d)
under the Securities Act, check the following box and list the Securities Act
registration statement number of the earlier effective registration statement
for the same offering. [_]
If delivery of the prospectus is expected to be made pursuant to Rule 434,
please check the following box. [_]
---------------
THE REGISTRANT HEREBY AMENDS THIS REGISTRATION STATEMENT ON SUCH DATE OR
DATES AS MAY BE NECESSARY TO DELAY ITS EFFECTIVE DATE UNTIL THE REGISTRANT
SHALL FILE A FURTHER AMENDMENT WHICH SPECIFICALLY STATES THAT THIS
REGISTRATION STATEMENT SHALL THEREAFTER BECOME EFFECTIVE IN ACCORDANCE WITH
SECTION 8(A) OF THE SECURITIES ACT OF 1933 OR UNTIL THIS REGISTRATION
STATEMENT SHALL BECOME EFFECTIVE ON SUCH DATE AS THE SECURITIES AND EXCHANGE
COMMISSION, ACTING PURSUANT TO SAID SECTION 8(A), MAY DETERMINE.
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<PAGE>
PART II
INFORMATION NOT REQUIRED IN PROSPECTUS
ITEM 13. OTHER EXPENSES OF ISSUANCE AND DISTRIBUTION
The following table sets forth all expenses, other than underwriting
discounts and commissions, payable by the Company in connection with the sale
of the Common Stock being registered. All amounts are estimated except the
registration fee.
<TABLE>
<S> <C>
Commission Registration Fee................................... $ 12,121
NASD filing fee............................................... 5,000
Nasdaq National Market listing fee............................ 83,500
Printing and engraving expenses............................... 200,000
Legal fees and expenses....................................... 565,000
Accounting fees and expenses.................................. 225,000
Blue sky fees and expenses (including legal fees)............. 5,000
Transfer agent and registrar fees and expenses................ 2,000
Miscellaneous................................................. 2,379
----------
TOTAL....................................................... $1,100,000
==========
</TABLE>
ITEM 14. INDEMNIFICATION OF DIRECTORS AND OFFICERS.
The amendment and restatement of the Company's Certificate of Incorporation
(the "Restated Certificate") provides that the Company shall indemnify to the
fullest extent authorized by the Delaware General Corporation Law ("DGCL"),
each person who is involved in any litigation or other proceeding because such
person is or was a director or officer of the Company or is or was serving as
an officer or director of another entity at the request of the Company,
against all expense, loss or liability reasonably incurred or suffered in
connection therewith. The Restated Certificate provides that the right to
indemnification includes the right to be paid expenses incurred in defending
any proceeding in advance of its final disposition; provided, however, that
such advance payment will only be made upon delivery to the Company of an
undertaking, by or on behalf of the director or officer, to repay all amounts
so advanced if it is ultimately determined that such director is not entitled
to indemnification. If the Company does not pay a proper claim for
indemnification in full within 60 days after a written claim for such
indemnification is received by the Company, the Restated Bylaws authorize the
claimant to bring an action against the Company and prescribe what constitutes
a defense to such action.
Section 145 of the DGCL permits a corporation to indemnify any director or
officer of the corporation against expenses (including attorney's fees),
judgments, fines and amounts paid in settlement actually and reasonably
incurred in connection with any action, suit or proceeding brought by reason
of the fact that such person is or was a director or officer of the
corporation, if such person acted in good faith and in a manner that he or she
reasonably believed to be in, or not opposed to, the best interests of the
corporation, and, with respect to any criminal action or proceeding, if he or
she had no reason to believe his or her conduct was unlawful. In a derivative
action, (i.e., one brought by or on behalf of the corporation),
indemnification may be made only for expenses, actually and reasonably
incurred by any director or officer in connection with the defense or
settlement of such an action or suit, if such person acted in good faith and
in a manner that he reasonably believed to be in, or not opposed to, the best
interests of the corporation, except that no indemnification shall be made if
such person shall have been adjudged to be liable to the corporation, unless
and only to the extent that the court in which the action or suit was brought
shall determine that the defendant is fairly and reasonably entitled to
indemnity for such expenses despite such adjudication of liability.
Pursuant to Section 102(b)(7) of the DGCL, Article Tenth of the Restated
Certificate eliminates the liability of a director or the corporation or its
stockholders for monetary damages for such breach of fiduciary duty as a
director, except for liabilities arising (i) from any breach of the director's
duty of loyalty to the corporation or its stockholders, (ii) from acts or
omissions not in good faith or which involve intentional misconduct or a
knowing
II-1
<PAGE>
violation of law, (iii) under Section 174 of the DGCL, or (iv) from any
transaction from which the director derived an improper personal benefit.
The Company has obtained primary and excess insurance policies insuring the
directors and officers of the Company against certain liabilities that they
may incur in their capacity as directors and officers. Under such policies,
the insurers, on behalf of the Company, may also pay amounts for which the
Company has granted indemnification to the directors or officers.
Additionally, reference is made to the Underwriting Agreement filed as
Exhibit 1.1 hereto, which provides for indemnification by the Underwriters of
the Company, its directors and officers who sign the Registration Statement
and persons who control the Company, under certain circumstances.
ITEM 15. RECENT SALES OF UNREGISTERED SECURITIES.
In the three years preceding the filing of this Registration Statement, the
Company has sold the following securities that were not registered under the
Securities Act.
(a) Issuances of Capital Stock.
On May 9, 1995, the Company issued an aggregate of 19,575 shares of its
Common Stock to two investors in exchange for financial advisory services
rendered by such investors to the Company having a value of $45,218.75.
On December 29, 1995, the Company sold an aggregate of 100,000 shares of its
Common Stock to two investors at $1.00 per share in exchange for payments of
an aggregate of $100,000 by such investors upon the exercise of warrants to
purchase Common Stock.
On March 30, 1996, the Company sold 100,000 shares of its Common Stock to
one investor at $1.52 per share in exchange for payment of $152,000 by such
investor upon the exercise of a warrant to purchase Common Stock.
On December 27, 1996, the Company sold 307,167 shares of its Series A
Convertible Preferred Stock at a purchase price of $5.86 per share to
Genentech, Inc. in a private placement for $1,800,000.
In March 1997, the Company issued 17,073 and 22,673 shares of its Common
Stock to Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. and Pennie &
Edmonds LLP, respectively, at $4.10 per share in exchange for legal services
rendered on behalf of the Company and having an aggregate value of
$162,958.60.
On March 27, 1997, the Company sold an aggregate of 175,000 shares of its
Series B Redeemable Preferred Stock at a purchase price of $10.00 per share to
five investors in a private placement for $1,750,000 in cash. In connection
with this private placement, the Company issued five-year warrants to purchase
358,361 shares of Common Stock at an exercise price of $5.86 per share.
On March 27, 1997, the Company sold an aggregate of 2,011,468 shares of its
Series C Convertible Preferred Stock at a purchase price of $5.86 per share to
eleven investors in a private placement for $11,787,202.48. In connection with
this private placement, the Company also issued three-year warrants to
purchase 366,894 shares of Common Stock at an exercise price of $9.00 per
share to two investors who each purchased 1,706,485 and 127,986 shares of
Series C Convertible Preferred Stock, respectively.
On April 10, 1997, the Company sold 291,875 shares of its Common Stock to
Connecticut Innovations Incorporated in exchange for the cancellation of a
$600,000 principal amount promissory note (plus accrued interest thereon) upon
the exercise of a warrant to purchase Common Stock.
II-2
<PAGE>
On May 16, 1997, the Company sold 1,000,000 shares of its Series D
Convertible Preferred Stock at a purchase price of $7.50 per share to Pioneer
Hi-Bred International, Inc. in a private placement for $7,500,000.
On June 25, 1997, the Company sold 100,000 shares of its Series E
Convertible Preferred Stock at a purchase price of $10.00 per share to Biogen,
Inc. in a private placement for $1,000,000.
In October 1997, the Company agreed to sell $5,000,000 of its Common Stock
to Biogen, Inc. in a private placement concurrent with this offering at a
price per share equal to the price per share at which the Common Stock is sold
in this Offering.
In November 1997, the Company agreed to sell $5,000,000 of its Common Stock
to Genentech, Inc. in a private placement concurrent with this offering at a
price per share equal to the price per share at which the Common Stock is sold
in this Offering.
In November 1997, the Company agreed to sell $1,000,000 of its Common Stock
to the University of Florida Research Foundation, Inc. in a private placement
concurrent with this offering at a price per share equal to the price per
share at which the Common Stock is sold in this Offering.
(b) Certain Grants and Exercises of Stock Options.
Pursuant to the 1993 Stock Option and Incentive Award Plan (the "1993 Stock
Plan"), as of December 31, 1997, the Company has granted options to purchase
an aggregate of 1,028,884 shares of Common Stock, of which options to purchase
an aggregate of 347,611 shares of Common Stock are exercisable at a weighted
average exercise price of $3.32 per share. As of December 31, 1997, no options
pursuant to the foregoing have been exercised.
Pursuant to the 1997 Employee, Director and Consultant Stock Plan (the "1997
Stock Plan"), as of December 31, 1997, the Company has granted options to
purchase an aggregate of 65,000 shares of Common Stock at a price per share
equal to the initial public offering price, of which options to purchase an
aggregate of 21,668 shares of Common Stock are exercisable. As of December 31,
1997, no options pursuant to the foregoing have been exercised.
In addition to the options granted under the 1993 Stock Plan and the 1997
Stock Plan, as of December 31, 1997, the Company has issued options to
purchase an aggregate of 570,000 shares of Common Stock pursuant to individual
agreements with Company employees and consultants, of which options to
purchase an aggregate of 349,500 shares of Common Stock are exercisable at a
weighted average exercise price of $1.40 per share. As of December 31, 1997,
no options pursuant to the foregoing have been exercised.
No underwriters were involved in the foregoing offers and sales of
securities. Such offers and sales were made in reliance upon an exemption from
the registration provisions of the Securities Act set forth in Section 4(2)
thereof relative to sales by an issuer not involving any public offering or
the rules and regulations thereunder, or, in the case of options to purchase
Common Stock, Rule 701 under the Securities Act. All of the foregoing
securities are deemed restricted securities for purposes of the Securities
Act.
ITEM 16. EXHIBITS AND FINANCIAL STATEMENT SCHEDULES.
(a) Exhibits
<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION
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<C> <S>
@1.1 Form of Underwriting Agreement
@3.1 Amended and Restated Certificate of Incorporation of the Registrant
@3.2 Certificate of Amendment of Restated Certificate of Incorporation of
the Registrant and Certificate of Amendment of Certificate of
Designation, Preferences, and Rights of Series E Preferred Stock of
the Registrant.
</TABLE>
II-3
<PAGE>
<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION
------- -----------
<C> <S>
@3.3 Amended and Restated Certificate of Incorporation of the Registrant
@3.4 Bylaws of the Registrant
@3.5 Amended and Restated Bylaws of the Registrant
@4.1 Article Fourth of the Amended and Restated Certificate of
Incorporation of the Registrant (see Exhibit 3.3)
@4.2 Form of Common Stock Certificate
@5.1 Opinion of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. with
respect to the legality of the securities being registered
@10.1 Lease Agreement (New Haven), dated December 23, 1996, between the
Registrant and Fusco Harbour Associates, LLC
@10.2 Standard Form of Office Lease, as amended (Branford), dated February
11, 1993 and April 26, 1996, between the Registrant and Branford
Office Venture
@10.3 Sid Martin Biotechnology Development Institute Incubator License
Agreement, dated July 15, 1997, between the Registrant and the
University of Florida Research Foundation, Inc.
@10.4 1997 Employee, Director and Consultant Stock Plan
@10.5 1993 Stock Option and Incentive Award Plan
@10.6 Amendment to 1993 Stock Option and Incentive Plan, dated May 12, 1997
@10.7 Employment Letter, dated February 20, 1997, between the Registrant and
Gregory T. Went, Ph.D.
@10.8 Employment Letter, dated July 18, 1997, between the Registrant and
David M. Wurzer
@10.9 Employment Letter, dated August 21, 1997, between the Registrant and
Peter A. Fuller, Ph.D.
@10.10 Employment Letter, dated August 22, 1997, between the Registrant and
Stephen F. Kingsmore, M.B., Ch.B.
+10.11 Option and Exclusive License Agreement, dated October 4, 1996, between
the Registrant and Wisconsin Alumni Research Foundation
+10.12 Standard Non-Exclusive License Agreement--Brumley, dated July 1, 1996,
between the Registrant and Wisconsin Alumni Research Foundation
@+10.13 Collaborative Research and License Agreement, dated May 16, 1997,
between the Registrant and Pioneer Hi-Bred International, Inc.
@+10.14 Research and Option Agreement, dated October 1, 1997, between the
Registrant and Biogen, Inc.
@+10.15 Research and Option Agreement, dated November 20, 1997, between the
Registrant and Genentech, Inc.
@+10.16 Notice of Grant Award and Grant Application to Department of Health
and Human Services for Automated Sequencing System for Human Genome
Project, dated March 25, 1995
@10.17 ATP Agreement for Integrated Microfabricated DNA Analysis Device for
Diagnosis of Complex Genetic Disorders, dated February 1995
@10.18 ATP Agreement for Molecular Recognition Technology for Precise Design
of Protein-Specific Drugs, dated March 2, 1995
@10.19 ATP Agreement for Programmable Nanoscale Engines for Molecular
Separation, dated May 6, 1997
@10.20 Material Transfer and Screening Agreement, dated January 15, 1998,
between the Registrant and ArQule, Inc.
@11.1 Schedule of Computation of Net Loss Per Share
@21.1 Subsidiaries of the Registrant
@23.1 Consent of Deloitte & Touche LLP
@23.2 Consent of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
(included in Exhibit 5.1)
@23.3 Consent of Pennie & Edmonds LLP
@24.1 Power of Attorney of Messrs. Went, Wurzer and DeVita
@24.2 Power of Attorney of Messrs. Booth, Patricelli and Vincent
27.1 Financial Data Schedule
</TABLE>
- --------
@ Previously filed.
+ Confidential treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
II-4
<PAGE>
(b) Financial Statement Schedules
All schedules are omitted because they are not required, are not applicable
or the information is included in the financial statements or notes thereto.
ITEM 17. UNDERTAKINGS.
The undersigned registrant hereby undertakes to provide to the Underwriters
at the closing specified in the Underwriting Agreement, certificates in such
denominations and registered in such names as required by the Underwriters to
permit prompt delivery to each purchaser.
Insofar as indemnification for liabilities arising under the Securities Act
may be permitted to directors, officers and controlling persons of the
Registrant pursuant to the foregoing provisions, or otherwise, the Registrant
has been advised that in the opinion of the Securities and Exchange Commission
such indemnification is against public policy as expressed in the Securities
Act and is, therefore, unenforceable. In the event that a claim for
indemnification against such liabilities (other than the payment by the
Registrant of expenses incurred or paid by a director, officer or controlling
person of the Registrant in the successful defense of any action, suit or
proceeding), is asserted by such director, officer or controlling person in
connection with the securities being registered, the Registrant will, unless
in the opinion of its counsel the matter has been settled by controlling
precedent, submit to a court of appropriate jurisdiction the question whether
such indemnification by it is against public policy as expressed in the
Securities Act and will be governed by the final adjudication of such issue.
The undersigned registrant hereby undertakes that:
(1) For purposes of determining any liability under the Securities Act,
the information omitted from the form of prospectus filed as part of this
registration statement in reliance upon Rule 430A and contained in a form
of prospectus filed by the registrant pursuant to Rule 424(b)(1) or (4) or
497(h) under the Securities Act shall be deemed to be part of this
registration statement as of the time it was declared effective.
(2) For the purposes of determining any liability under the Securities
Act, each post-effective amendment that contains a form of prospectus shall
be deemed to be a new registration statement relating to the securities
offered therein, and the offering of such securities at that time shall be
deemed to be the initial bona fide offering thereof.
The undersigned registrant hereby undertakes to provide to the Underwriters
at the Closing specified in the Underwriting Agreement, certificates in such
denominations and registered in such names as required by the Underwriters to
permit prompt delivery to each purchaser.
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<PAGE>
SIGNATURES
PURSUANT TO THE REQUIREMENTS OF THE SECURITIES ACT OF 1933, AS AMENDED, THE
REGISTRANT HAS DULY CAUSED THIS AMENDMENT NO. 9 TO THE REGISTRATION STATEMENT
TO BE SIGNED ON ITS BEHALF BY THE UNDERSIGNED, THEREUNTO DULY AUTHORIZED, IN
THE CITY OF BOSTON, MASSACHUSETTS ON THIS 17TH DAY OF MARCH, 1998.
CuraGen Corporation (Registrant)
/s/ Jonathan M. Rothberg
By: __________________________________
JONATHAN M. ROTHBERGCHIEF
EXECUTIVE OFFICER, PRESIDENT
ANDCHAIRMAN OF THE BOARD
PURSUANT TO THE REQUIREMENTS OF THE SECURITIES ACT OF 1933, AS AMENDED, THIS
AMENDMENT NO. 9 TO THE REGISTRATION STATEMENT HAS BEEN SIGNED BELOW BY THE
FOLLOWING PERSONS IN THE CAPACITIES AND ON THE DATES INDICATED.
<TABLE>
<S> <C>
SIGNATURE TITLE
DATE
/s/ Jonathan M. Rothberg Chief Executive March 17, 1998
- ------------------------------------ Officer, President
JONATHAN M. ROTHBERG and Chairman of
the Board
(principal
executive officer)
* Executive Vice March 17, 1998
- ------------------------------------ President and a
GREGORY T. WENT Director
* Executive Vice March 17, 1998
- ------------------------------------ President,
DAVID M. WURZER Treasurer and
Chief Financial
Officer (principal
financial and
accounting
officer)
* Director March 17, 1998
- ------------------------------------
VINCENT T. DEVITA, M.D.
* Director March 17, 1998
- ------------------------------------
RICHARD H. BOOTH
* Director March 17, 1998
- ------------------------------------
ROBERT E. PATRICELLI
* Director March 17, 1998
- ------------------------------------
JAMES L. VINCENT
</TABLE>
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<PAGE>
*By executing his name hereto, Jonathan M. Rothberg is signing this document
on behalf of the persons indicated above pursuant to powers of attorney duly
executed by such persons and filed with the Securities and Exchange
Commission.
By: /s/ Jonathan M. Rothberg
----------------------------------
JONATHAN M. ROTHBERG
(ATTORNEY-IN-FACT)
II-7
<PAGE>
EXHIBIT INDEX
<TABLE>
<CAPTION>
EXHIBIT NO. DESCRIPTION
----------- -----------
<C> <S>
@1.1 Form of Underwriting Agreement
@3.1 Amended and Restated Certificate of Incorporation of the
Registrant
@3.2 Certificate of Amendment of Restated Certificate of Incorporation
of the Registrant and Certificate of Amendment of Certificate of
Designation, Preferences, and Rights of Series E Preferred Stock
of the Registrant.
@3.3 Amended and Restated Certificate of Incorporation of the
Registrant
@3.4 Bylaws of the Registrant
@3.5 Amended and Restated Bylaws of the Registrant
@4.1 Article Fourth of the Amended and Restated Certificate of
Incorporation of the Registrant (see Exhibit 3.3)
@4.2 Form of Common Stock Certificate
@5.1 Opinion of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
with respect to the legality of the securities being registered
@10.1 Lease Agreement (New Haven), dated December 23, 1996, between the
Registrant and Fusco Harbour Associates, LLC
@10.2 Standard Form of Office Lease, as amended (Branford), dated
February 11, 1993 and April 26, 1996, between the Registrant and
Branford Office Venture
@10.3 Sid Martin Biotechnology Development Institute Incubator License
Agreement, dated July 15, 1997, between the Registrant and the
University of Florida Research Foundation, Inc.
@10.4 1997 Employee, Director and Consultant Stock Plan
@10.5 1993 Stock Option and Incentive Award Plan
@10.6 Amendment to 1993 Stock Option and Incentive Plan, dated May 12,
1997
@10.7 Employment Letter, dated February 20, 1997, between the Registrant
and Gregory T. Went, Ph.D.
@10.8 Employment Letter, dated July 18, 1997, between the Registrant and
David M. Wurzer
@10.9 Employment Letter, dated August 21, 1997, between the Registrant
and Peter A. Fuller, Ph.D.
@10.10 Employment Letter, dated August 22, 1997, between the Registrant
and Stephen F. Kingsmore, M.B., Ch.B.
+10.11 Option and Exclusive License Agreement, dated October 4, 1996,
between the Registrant and Wisconsin Alumni Research Foundation
+10.12 Standard Non-Exclusive License Agreement--Brumley, dated July 1,
1996, between the Registrant and Wisconsin Alumni Research
Foundation
@+10.13 Collaborative Research and License Agreement, dated May 16, 1997,
between the Registrant and Pioneer Hi-Bred International, Inc.
@+10.14 Research and Option Agreement, dated October 1, 1997, between the
Registrant and Biogen, Inc.
@+10.15 Research and Option Agreement, dated November 20, 1997, between
the Registrant and Genentech, Inc.
@+10.16 Notice of Grant Award and Grant Application to Department of
Health and Human Services for Automated Sequencing System for
Human Genome Project, dated March 25, 1995
@10.17 ATP Agreement for Integrated Microfabricated DNA Analysis Device
for Diagnosis of Complex Genetic Disorders, dated February 1995
@10.18 ATP Agreement for Molecular Recognition Technology for Precise
Design of Protein-Specific Drugs, dated March 2, 1995
@10.19 ATP Agreement for Programmable Nanoscale Engines for Molecular
Separation, dated May 6, 1997
@10.20 Material Transfer and Screening Agreement, dated January 15, 1998,
between the Registrant and ArQule, Inc.
@11.1 Schedule of Computation of Net Loss Per Share
@21.1 Subsidiaries of the Registrant
@23.1 Consent of Deloitte & Touche LLP
@23.2 Consent of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
(included in Exhibit 5.1)
@23.3 Consent of Pennie & Edmonds LLP
@24.1 Power of Attorney of Messrs. Went, Wurzer and DeVita
@24.2 Power of Attorney of Messrs. Booth, Patricelli and Vincent
27.1 Financial Data Schedule
</TABLE>
- --------
@ Previously filed.
+ Confidential treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
<PAGE>
Exhibit 10.11
-------------
CuraGen Corporation has omitted from this Exhibit 10.11 portions of the
Agreement for which CuraGen Corporation has requested confidential treatment
from the Securities and Exchange Commission. The portions of the Agreement for
which confidential treatment has been requested are marked with X's in brackets
and such confidential portions have been filed separately with the Securities
and Exchange Commission.
Agreement No.95-0191
OPTION AND EXCLUSIVE LICENSE AGREEMENT
--------------------------------------
This Agreement is made effective the 4th day of October, 1996, by and
between Wisconsin Alumni Research Foundation (hereinafter called "WARF"), a
nonstock, nonprofit Wisconsin corporation, and CuraGen Corporation (hereinafter
called "CuraGen"), a corporation organized and existing under the laws of
Delaware;
WHEREAS, WARF owns certain inventions that are described in the "Licensed
Patents" defined below, and WARF is willing to grant a license to CuraGen under
any one or all of the Licensed Patents and CuraGen desires a license under all
of them;
NOW, THEREFORE, in consideration of the mutual covenants and agreements set
forth below, the parties covenant and agree as follows:
Section 1. Definitions.
-----------
For the purpose of this Agreement, the Appendix A definitions shall apply.
Section 2. Grant.
-----
A. Option.
------
(i) WARF hereby grants to Curagen and its Affiliates an option
to obtain set out in this Agreement in the Licensed Field and Licensed Territory
under the option shall expire on October 4, 1999.
(ii) In order to exercise its option under this Section 2A,
CuraGen must not WARF in writing, prior to the expiration of the option, that
CuraGen is exercising its option and include with such notification a
development plan and the License Fee due under Section 3 C. Upon such exercise
of the option, the license granted under Section 2B will become effective.
B. License.
-------
Upon CuraGen's exercise of the option in Section 2A, WARF will hereby grant
to CuraGen an exclusive license, limited to the Licensed Field and the Licensed
Territory, under the Licensed Patents to make, have made, use, sell, offer for
sale, and import Products.
C. Sublicenses.
-----------
(i) Upon CuraGen's exercise of the option in Section 2A,
CuraGen may grant written, nonexclusive sublicenses to third parties. Any
agreement granting a sublicense shall state that the sublicense is subject to
the termination of this Agreement. CuraGen shall have the same responsibility
for the activities of any sublicensee as if the activities were directly those
of CuraGen.
1 of 11
<PAGE>
(ii) In respect to sublicenses granted by CuraGen under this
Section 2C, CuraGen shall pay to WARF an amount equal to what CuraGen would have
been required to pay to WARF had CuraGen sold the amount of Products sold by
such sublicensee.
Section 3. Consideration.
--------------
A. Development.
------------
Upon CuraGen's exercise of the option in Section 2A, CuraGen agrees to use
diligent efforts in the exercise of its reasonable business judgment to develop,
produce and market Products, and to pursue the development plan set forth in the
Gantt Chart submitted by CuraGen upon exercise of the option in Section 2A, and
thereafter will provide WARF with an annual letter describing the progress made
therein. WARF agrees to keep such letter confidential pursuant to Section 13.
B. Option Fee.
-----------
CuraGen agrees to pay to WARF an option fee of [XXXXXX] upon execution of
this Agreement. Such option fee will be credited against the license fee due
under Section 3C upon exercise of the option.
C. License Fee.
------------
Upon exercise of its option granted in Section 2A, CuraGen agrees to pay to
WARF a license fee of [XXXXXXX].
D. Royalty.
--------
If CuraGen exercises its option in Section 2A, in addition to the Section
3C license fee, CuraGen or its sublicensee(s) agree to pay to WARF as "earned
royalties" a royalty calculated as a percentage of the Selling Price of Products
made, used or sold by CuraGen and its Affiliates or its sublicensee(s) in the
United States subject however to any credits permitted hereunder. If the Product
is made and sold outside the United States, no royalties shall be payable on
such Products. The royalty is deemed earned as of the date the Product is
actually sold and paid for. The royalty shall remain fixed while this Agreement
is in effect at a rate of [XXXXXXXXXXXXXXXXXXXXX] of the Selling Price.
E. Minimum Royalty.
----------------
CuraGen further agrees to pay to WARF a minimum royalty for each calendar
year or part thereof during which this Agreement is in effect, starting in the
third calendar year after exercise of the option, against which any earned
royalty paid for the same calendar year will be credited. The minimum royalty
shall be [XXXXXX] per calendar year. The minimum royalty for a given year shall
be due at the time payments are due for the calendar quarter ending on December
31. It is understood that the minimum royalties will apply on a calendar year
basis, and that sales of Products requiring the payment of earned royalties made
during a prior or subsequent calendar year shall have no effect on the annual
minimum royalty due WARF for any given calendar year.
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[Confidential treatment requested]
<PAGE>
F. Accounting: Payments.
--------------------
(i) Amounts owing to WARF under Sections 2C and 3D shall be
paid on a quarterly basis, with such amounts due and received by WARF on or
before the sixtieth day following the end of the calendar quarter ending on
March 31, June 30, September 30 or December 31 in which such amounts were
earned. The balance of any amounts which remain unpaid more than sixty (60)days
after they are due to WARF shall accrue interest until paid at the rate of the
lesser of one percent (1%) per month or the maximum amount allowed under
applicable law. However, in no event shall this interest provision be construed
as a grant of permission for any payment delays.
(ii) Except as otherwise directed, all amounts owing to WARF
under this Agreement shall be paid in U.S. dollars to WARF at the address
provided in Section 15(a). All royalties owing with respect to Selling Prices
stated in currencies other than U.S. dollars shall be converted at the rate
shown in the Federal Reserve Noon Valuation - Value of Foreign Currencies on the
day preceding the payment.
(iii) A full accounting showing how any amounts owing to WARF
under Sections 2C and 3D have been calculated shall be submitted to WARF on the
date of each such payment. Such accounting shall be on a per-country and product
line, model or tradename basis and shall be summarized on the form shown in
Appendix B of this Agreement. In the event no payment is owed to WARF, a
statement setting forth that fact shall be supplied to WARF.
Section 4. Certain Warranties of WARF.
---------------------------
A. WARF warrants that except as otherwise provided under Section 12
of this Agreement with respect to U.S. Government interests, it is the owner of
the Licensed Patents and has the right to grant the option and upon exercise of
such option the licenses granted to CuraGen in this Agreement. However, nothing
in this Agreement shall be construed as:
(i) a warranty or representation by WARF as to the validity or
scope of any of Licensed Patents;
(ii) a warranty or representation that anything made, used, sold
or otherwise disposed of under the license granted in this Agreement will or
will not infringe patents of third parties; or
(iii) an obligation to bring or prosecute actions or suits
against third parties for infringement of Licensed Patents:
B. EXCEPT AS EXPRESSLY SET FORTH HEREIN, WARF MAKES NO REPRESENTATIONS,
EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, AND ASSUMES NO
RESPONSIBILITIES WHATSOEVER WITH RESPECT TO USE, SALE, OR OTHER DISPOSITION BY
CURAGEN, ITS SUBLICENSEES OR THEIR VENDEES OR OTHER TRANSFEREES OF PRODUCTS
INCORPORATING OR MADE BY USE OF INVENTIONS LICENSED UNDER THIS AGREEMENT.
3 of 11
<PAGE>
Section 5. Recordkeeping.
-------------
A. CuraGen and its sublicensee(s) shall keep books and records
sufficient to verify the accuracy and completeness of CuraGen's and its
sublicensee(s)'s accounting referred to above, including without limitation
inventory, purchase and invoice records relating to the Products or their
manufacture. Such books and records shall be preserved for a period not less
than five years after they are created during and after the term of this
Agreement.
B. CuraGen and its sublicensee(s) shall take all steps necessary so
that WARF may within thirty days of its request review and copy all the books
and records at a single U.S. location to verify the accuracy of CuraGen's and
its sublicensee(s)'s accounting. Such review shall be made not more than once
each calendar year, upon reasonable notice and during regular business hours, at
the expense of WARF by a Certified Public Accountant to whom CuraGen has no
reasonable objection.
C. If a royalty payment deficiency is determined, CuraGen or its sub
licensee(s) shall. pay the royalty deficiency outstanding within thirty (30)
days of receiving written notice thereof, plus interest on outstanding amounts
as described in Section 3F(i).
Section 6. Term and Termination.
--------------------
A. The term of this Agreement shall begin on the effective date of
this Agreement and continue until the expiration of the option granted in
Section 2A or, if the option is exercised, until the expiration of the last to
expire of the Licensed Patents.
B. CuraGen may terminate this Agreement at any time by giving at
least sixty (60) days' prior written and unambiguous notice of such termination
to WARF.
C. In the event either party shall materially breach any of the
terms, conditions and agreements contained in this Agreement to be kept,
observed and performed by it, then the other party may terminate this Agreement,
at its option and without prejudice to any of its other legal and equitable
rights and remedies, by giving the party who committed the breach sixty (60)
days notice in writing, particularly specifying the breach, unless the notified
party within such sixty (60) day period shall have rectified the breach.
D. Upon the termination of this Agreement, CuraGen shall remain
obligated to provide an accounting for and to pay royalties earned up to the
date of the termination and any minimum royalties shall be prorated as of the
date of termination by the number of days elapsed in the applicable calendar
year.
Section 7. Assignability.
-------------
This Agreement may not be transferred or assigned by either party without
the prior written consent of the other party, except that CuraGen may freely
assign this Agreement to an Affiliate or to an entity acquiring substantially
all of its business to which Products relate.
4 of 11
<PAGE>
Section 8. Enforcement.
------------
Upon CuraGen's exercise of the option in Section 2A, the following
provisions shall take effect.
A. In the event that either party believes there is infringement of
any Licensed Patent under this Agreement, the party shall provide the other
party with notification thereof. During the term of this Agreement, CuraGen
shall have the right, but not the obligation, to prosecute at its own expense
any such infringement of the Licensed Patents. Before filing any such legal
action against such infringement, CuraGen shall have obtained the opinion of
outside counsel that such infringement is occurring and shall have provided WARF
with a copy of such opinion. If CuraGen elects to prosecute such infringement,
the total cost of any infringement action shall be borne by CuraGen and CuraGen
shall keep any recovery or damages for past infringement derived therefrom. WARF
agrees to cooperate with CuraGen in connection with said action and shall have
the right to join in such action upon prompt notification to CuraGen.
B. If CuraGen is unwilling or: unable to bring a suit against any
alleged infringer, then, and in those events only, WARF shall have the right,
but not the obligation, to prosecute at its own expense any infringement of the
Licensed Patents. If WARF elects to prosecute any such infringement, the total
cost of any infringement action shall be borne by WARF and WARF shall keep any
recovery or damages for patent infringement derived therefrom.
Section 9. Patent Marking.
--------------
Upon CuraGen's exercise of the option in Section 2A, CuraGen shall insure
that it and its sublicensee(s) apply patent markings that meet all requirements
of U.S. law, 35 U.S.C. 287, with respect to all Products subject to this
Agreement.
Section 10. Product Liability Conduct of Business.
--------------------------------------
Upon CuraGen's exercise of the option in Section 2A, the following
provisions shall take effect.
A. CuraGen shall, at all times during the term of this Agreement and
thereafter, indemnify, defend and hold WARF and the inventors of the Licensed
Patents harmless against all claims and expenses, including legal expenses and
reasonable attorneys fees, arising out of the death of or injury to any person
or persons or out of any damage to property and against any other claim,
proceeding, demand, expense and liability of any kind whatsoever (other than
patent infringement claims) resulting from the production, manufacture, sale,
use, lease, consumption or advertisement of Products arising from any right or
obligation of CuraGen or any sublicensee hereunder. Notwithstanding the above,
WARF at all times reserves the right to retain counsel of its own to defend
WARF's interests.
B. CuraGen warrants that it now maintains and will continue to
maintain liability insurance coverage appropriate to the risk involved in
marketing the products subject to this Agreement and that such insurance
coverage lists WARF and the inventors of the Licensed Patents as additional
insureds. Within ninety (90) days after CuraGen's exercise of the option in
Section 2A and thereafter annually between January 1 and January 31 of each
year, CuraGen will
5 of 11
<PAGE>
present evidence to WARF that the coverage is being maintained with WARF and its
inventors listed as additional insureds if the Licensed Product has an in vivo
effect. In addition, CuraGen shall provide WARF with at least 30 days prior
written notice of any change in or cancellation of the insurance coverage.
Section 11. Use of Names.
-------------
CuraGen and its sublicensee(s) shall not use WARF's name, the name of any
inventor of inventions governed by this Agreement, or the name of the University
of Wisconsin in sales promotion, advertising, or any other form of publicity
without the prior written approval of the entity or person whose name is being
used. Notwithstanding the foregoing, CuraGen may state in written materials that
CuraGen has obtained an option or a license, as appropriate, from WARF to the
technology which is the subject of this Agreement.
Section 12. United States Government Interests.
-----------------------------------
It is understood that if the United States Government (through any of its
agencies or otherwise) has funded research, during the course of or under which
any of the inventions of the Licensed Patents were conceived or made, the United
States Government is entitled, as a right, under the provisions of 35 U.S.C. (S)
200-212 and applicable regulations. of Chapter 3,7. of the Code of Federal
Regulations, to a nonexclusive'; nontransferable, `irrevocable paid-up license
to practice or have practiced the invention of such Licensed Patents for
governmental purposes. Any license granted to CuraGen in this Agreement shall be
subject to such right.
Section 13. Confidential Information.
-------------------------
The following provisions relate to restrictions on the disclosure and use
of Confidential Information by the parties:
A. Confidentiality. CuraGen and WARF each agree to treat as
---------------
confidential and to use only in the conduct of its business, all Confidential
Information disclosed to it by the other party.
B. Non-Disclosure and Non-Use. CuraGen and WARF each agrees not to
--------------------------
disclose any of the Confidential Information received from the other party to
any unauthorized third party and not to use any of the Confidential Information
except in the conduct of its business until the later of (a) five years from the
effective date of this Agreement; or (b) two years from the effective date of
termination.
C. Release from Restrictions. All information which is
-------------------------
characterized as Confidential Information shall cease to be confidential and
CuraGen and/or WARF shall be released from their respective obligations under
Sections 13A and 13B hereof on the date when, through no fault or omission of
the party seeking such release, such information becomes (a) disclosed in
published literature; (b) generally available to industry; or (c) obtained by
the party seeking such release from a third party without binder of secrecy,
provided. however that such third party has no confidentiality obligations to
- --------- -------
the other party.
6 of 11
<PAGE>
Section 14. Miscellaneous.
--------------
This Agreement shall be construed in accordance with the internal laws of
the State of Wisconsin. If any provisions of this Agreement are or shall come
into conflict with the laws or regulations of any jurisdiction or any
governmental entity having jurisdiction over the parties or this Agreement,
those provisions shall be deemed automatically deleted, if such deletion is
allowed by relevant law, and the remaining terms and conditions of this
Agreement shall remain in full force and effect. If such a deletion is not so
allowed or if such a deletion leaves terms thereby made clearly illogical or
inappropriate in effect, the parties agree to substitute new terms as similar in
effect to the present terms of this Agreement as may be allowed under the
applicable laws and regulations. The parties hereto are independent contractors
and not joint ventures or partners.
Section 15. Notices.
--------
Any notice required to be given pursuant to the provisions of this
Agreement shall be in writing and shall be deemed to have been given at the
earlier of the time when actually received as a consequence of any effective
method of delivery, including but not limited to hand delivery, transmission by
telecopier, or delivery by a professional courier service or the time when sent
by certified or registered mail addressed to the party for whom intended at the
address below or at such changed address as the party shall have specified by
written notice, provided that any notice of change of address shall be effective
only upon actual receipt.
(a) Wisconsin Alumni Research Foundation
Attn: Managing Director
614 Walnut Street
Madison, Wisconsin 53705
(b) CuraGen Corporation
Attn: Jonathan M. Rothberg, Ph.D.
322 East Main Street
Branford, Connecticut 06405
Section 16. Integration.
-----------
This Agreement constitutes the full understanding between the parties with
reference to the subject matter hereof, and no statements or agreements by or
between the parties, whether orally or in writing, made prior to or at the
signing hereof, shall vary or modify the written terms of this Agreement.
Neither party shall claim any amendment, modification, or release from any
provisions of this Agreement by mutual agreement, acknowledgement, or otherwise,
unless such mutual agreement is in writing, signed by the other party, and
specifically states that it is an amendment to this Agreement.
Section 17. Benefits.
---------
All terms and provisions of this Agreement shall bind and inure to the
benefit of the parties hereto, and upon their respective successors and assigns
as those are permitted under the terms of this Agreement.
7 of 11
<PAGE>
Section 18. Contract Formation and Authority.
---------------------------------
The persons signing on behalf of WARF and CuraGen hereby warrant and
represent that they have authority to execute this Agreement on behalf of the
party for whom they have signed.
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement on
the dates indicated below.
WISCONSIN ALUMNI RESEARCH FOUNDATION
/s/ Richard H. Leazer Date: November 13, 1996
- ----------------------
Richard H. Leazer, Managing Director
CURAGEN CORPORATION
/s/ Jonathan M. Rothberg Date: October 30, 1996
- -------------------------
Jonathan M. Rothberg, President
Reviewed by WARF's Attorney:
/s/ Attorney Date: October 3, 1996
- ------------
(WARF's attorney shall not be deemed a signatory to this Agreement.)
8 of 11
<PAGE>
APPENDIX A
A. "Licensed Patents" shall refer to and mean [XXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXX], and reissues and extensions of such patent; and
United States and foreign patents granted thereon, and reissues and extensions
thereof.
B. "Affiliates" shall mean any corporation, company, partnership, joint
venture or other entity which controls, is controlled or under common control
with CuraGen or WARF as the case may be. For the purposes of this definition,
control shall mean the direct or indirect ownership of at least fifty percent
(50%) or, if less than fifty percent (50%), the maximum percentage as allowed by
applicable law of (a) the stock shares entitled to vote for the election of
directors; or (b) ownership interest.
C. "Products" shall refer to and mean [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXX]. For the purposes of calculating the selling Price; "Products" shall
include [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
D. "Selling Price" shall mean, in the case of Products that are sold, the
invoice price to the retail customer of Products (regardless of uncollectible
accounts) less any discounts, shipping costs, allowances because of returned
Products, or sales taxes. In the event of a sale to a previous purchaser of
Products of a component that incorporates the technology of the Licensed
Patents, the "Selling Price" will be the price of solely the component.
E. "Licensed Field" shall be limited to the field of electrophoresis
apparatuses and components of such apparatuses.
F. "Licensed Territory" shall be worldwide.
G. "Confidential Information" shall mean this Agreement, the Development
Plan and Development Reports, and any and all books, records, opinions of
counsel and business information required to be supplied to WARF by CuraGen
under the terms of this Agreement.
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[Confidential treatment requested]
<PAGE>
APPENDIX B
WARF ROYALTY REPORT
-------------------
Licensee:_______________________________ Agreement No.___________________
INVENTOR:_______________________________ P#: P
-----------------------------
Period Covered: From: / 199 THROUGH: / / 199
-------------------- ------------------------
Prepared By:___________________________ DATE:__________________________
Approved By:___________________________ DATE:__________________________
If license covers several major product LINES, please prepare a separate
report for each line. Then combine all product lines into a summary report.
Report Type: [_] Single Product Line Report:
[_] Multiproduct Summary Report Page I of ______ PAGES
[_] Product Line Detail. Line:______TRADENAME:_______PAGE:______
Report Currency:[_] U.S. Dollars ID Other
==============================================================================
County Gross Less Net Royalty Period Royalty Amount
Sales Allowances Sales Rate This Year Last Year
- ------------------------------------------------------------------------------
U.S.A.
- ------------------------------------------------------------------------------
Canada
- ------------------------------------------------------------------------------
Europe:
- ------
- ------------------------------------------------------------------------------
- ------------------------------------------------------------------------------
- ------------------------------------------------------------------------------
- ------------------------------------------------------------------------------
- ------------------------------------------------------------------------------
- ------------------------------------------------------------------------------
Japan
- ------------------------------------------------------------------------------
Other:
- -----
- ------------------------------------------------------------------------------
- ------------------------------------------------------------------------------
- ------------------------------------------------------------------------------
==============================================================================
TOTAL:
==============================================================================
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<PAGE>
Total Royalty:_____________Conversion Rate: ____________ Royalty in U.S.
Dollars:_____________
The following royalty forecast is non-binding and for WARF's internal planning
purposes only
Royalty Forecast Under This Agreement: Next Quarter:______ Q2_____ Q3:______
Q4______:
- --------------------------------------------------------------------------------
On a separate page, please indicate the reasons for returns or other
adjustments if significant.
Also note any unusual occurrences that affected royalty amounts during this
period.
To assist WARF's forecasting, please comment on any significant expected
trends in sales volume.
- --------------------------------------------------------------------------------
11 of 11
<PAGE>
Exhibit 10.12
-------------
CuraGen Corporation has omitted from this Exhibit 10.12 portions of the
Agreement for which CuraGen Corporation has requested confidential treatment
from the Securities and Exchange Commission. The portions of the Agreement for
which confidential treatment has been requested are marked with X's in brackets
and such confidential portions have been filed separately with the Securities
and Exchange Commission.
Agreement No. 96-0126
STANDARD NONEXCLUSIVE LICENSE AGREEMENT - BRUMLEY TECHNOLOGY
------------------------------------------------------------
This Agreement is made effective the 1st day of July, 1996, by and between
Wisconsin Alumni Research Foundation (hereinafter called "WARF"), a nonstock,
nonprofit Wisconsin corporation, and CuraGen Corporation(hereinafter called
("CuraGen"), a corporation organized and existing under the laws of Delaware;
WHEREAS, WARF owns certain inventions that are described in the "Licensed
Patents" defined below and the Technology, and WARF is willing to grant a
license to CuraGen under any one or all of the Licensed Patents and/or the
Technology and CuraGen desires a license under all of them.
NOW, THEREFORE, in consideration of the mutual covenants and agreements set
forth below, the parties covenant and agree as follows:
Section 1. Definitions.
-----------
For the purpose of this Agreement, the Appendix A definitions shall apply.
Section 2. Grant.
-----
A. License.
-------
WARF hereby grants to CuraGen a nonexclusive license, limited to the
Licensed Field and the Licensed Territory, under the Licensed Patents and under
the Technology to make, have made, use, sell, offer for sale, and import
Products.
B. Standstill.
----------
WARF agrees it will not grant any other party a license under the Licensed
Patents in the Licensed Field in the Licensed Territory through August 30, 2002
if CuraGen pays the following standstill fees:
<TABLE>
<CAPTION>
Standstill Fees Date
--------------- ----
<S> <C>
[XXXXXXX] [XXXXXXX]
[XXXXXXX] [XXXXXXX]
[XXXXXXX] [XXXXXXX]
[XXXXXXX] [XXXXXXX]
[XXXXXXX] [XXXXXXX]
</TABLE>
In the event CuraGen elects not to pay any or all of the standstill fees, the
standstill provision shall expire and WARF may license other parties under the
Licensed Patents in the Licensed Field and the Licensed Territory. WARF agrees
to discuss and reasonably negotiate extension of the standstill period beyond
the August 30, 2002 expiration date. Upon termination of the
[Confidential treatment requested]
<PAGE>
standstill provision set forth in this Section 2B, all other terms of this
Agreement shall remain in full force and effect
Section 3. Consideration.
-------------
A. Development.
-----------
CuraGen agrees to use diligent efforts in the exercise of its reasonable
business judment to develop, produce and market Products, and to pursue the
development plan set forth in the Gantt Chart submitted by CuraGen upon
execution of this Agreement and attached as Appendix C, and will provide WARF
with an annual letter describing the progress made therein. WARF agrees to keep
such letter confidential pursuant to Section 12.
B. License Fee.
-----------
CuraGen agrees to pay to WARF a license fee of [XXXXXXXX]. The first
installment shall be due and payable on or before August 30, 1996. The second
installment shall be due and payable on or before August 30, 1997. The final
installment shall be due and payable on or before August. 30, 1998.
C. Royalty.
-------
(i) In addition to the Section 3B license fee, CuraGen agrees
to pay to WARF as earned royalties" a royalty calculated as a percentage of the
Selling Price of Products in accordance with the terms and conditions of this
Agreement subject however to any credits permitted hereunder. The royalty is
deemed earned as of the date the Product is actually sold and paid for. The
royalty shall remain fixed while this Agreement is in effect at a rate of
[XXXXXXXX] of the Selling Price.
(ii) Notwithstanding the foregoing, WARF hereby grants to
CuraGen the right to sell as many as [XXXXXXXX].
D. Offset Against Royalties.
------------------------
In the event that CuraGen or its Affiliate(s) cannot manufacture or sell a
particular Product without infringing the patent of a third party, CuraGen shall
have the right to negotiate with the third party for a license under the third
party's patent rights; and then CuraGen shall have the right to reduce CuraGen
`s royalty payments to WARF by up to [XXXXXXXXXXXXXXXXX] of the amount which
CuraGen is obligated to pay such third party for such patent license. However,
in no event shall this offset for third party licensing costs exceed [XXXXX
XXXXXXXXXXXX] of the royalties owed to WARF in any given calendar year.
2
[Confidential Treatment Requested]
<PAGE>
E. Accounting: Payments.
--------------------
(i) Amounts owing to WARF under Section 3C shall be paid on
a quarterly basis, with such amounts due and received by WARF on or before the
sixtieth day following the end of the calendar quarter ending on March 31, June
30, September 30 or December 31 in which such amounts were earned. The balance
of any amounts which remain unpaid more than sixty (60) days after they are due
to WARF shall accrue interest until paid at the rate of the lesser of one
percent (1%) per month or the maximum amount allowed under applicable law.
However, in no event shall this interest provision be construed as a grant of
permission for any payment delays.
(ii) Except as otherwise directed, all amounts owing to WARF
under this Agreement shall be paid in U.S. dollars to WARF at the address
provided in Section 14(a). All royalties owing with respect to Selling Prices
stated in currencies other than U.S. dollars shall be converted at the rate
shown in the Federal Reserve Noon Valuation - Value of Foreign Currencies on the
day preceding the payment.
(iii) A full accounting showing how any amounts owing to WARF
under Section 3C have been calculated shall be submitted to WARF on the date of
each such payment. Such accounting shall be on a per-country and product line,
model or tradename basis and shall be summarized on the form shown in Appendix C
of this Agreement. In the event no payment is owed to WARF, a statement setting
forth that fact shall be supplied to WARF.
Section 4. Certain Warranties of WARF.
--------------------------
A. WARF warrants that except as otherwise provided under Section
11 of this Agreement with respect to U.S. Government interests, it .is the owner
of the Licensed Pa tents and has the right to grant the licenses granted to
CuraGen in this Agreement. However, nothing in this Agreement shall be construed
as:
(i) any of Licensed Patents; a warranty or representation
by WARF as to the validity or scope of
(ii) a warranty or representation that anything made, used,
sold or otherwise disposed of under the license granted in this Agreement will
or will not infringe patents of third parties; or
(iii) an obligation to furnish any know-how not provided in
Licensed Patents or any services other than those specified in this Agreement.
B. EXCEPT AS EXPRESSLY SET FORTH HEREIN, WARF MAKES NO
REPRESENTATIONS, EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED,
AND ASSUMES NO RESPONSIBILITIES WHATSOEVER WITH RESPECT TO USE, SALE, OR OTHER
DISPOSITION BY CURAGEN OR ITS VENDEES OR OTHER
3
<PAGE>
TRANSFEREES OF PRODUCTS INCORPORATING OR MADE BY USE OF INVENTIONS LICENSED
UNDER THIS AGREEMENT.
Section 5. Recordkeeping.
-------------
A. CuraGen shall keep books and records sufficient to verify the
accuracy and completeness of CuraGen's accounting referred to above, including
without limitation inventory, purchase and invoice records relating to the
Products or their manufacture. Such books and records shall be preserved for a
period not less than five years after they are created during and after the term
of this Agreement.
B. CuraGen shall take all steps necessary so that WARF may within
thirty days of its request review and copy all the books and records at a single
U.S. location to verify the accuracy of CuraGen's accounting. Such review shall
be made not more than once each calendar year, upon reasonable notice and during
regular business hours, at the expense of WARF by a Certified Public Accountant
to whom CuraGen has no reasonable objection.
C. deficiency outstanding outstanding amounts as If a royalty
payment deficiency is determined, CuraGen shall pay the royalty within thirty
(30) days of receiving written notice thereof, plus interest on described in
Section 3E(i).
Section 6. Term: Termination.
-----------------
A. The term of this license shall begin on the effective date of
this Agreement and continue until the expiration of the last to expire of the
Licensed Patents.
B. CuraGen may terminate this Agreement at any time by giving at
least sixty (60) days' prior written and unambiguous notice of such termination
to WARF.
C. In the event either party shall materially breach any of the
terms, conditions and agreements contained in this Agreement to be kept,
observed and performed by it, then the other party may terminate this Agreement,
at its option and without prejudice to any of its other legal and equitable
rights and remedies; by giving the party who committed the breach sixty (60)
days notice in writing, particularly specifying the breach, unless the notified
party within such sixty (60) day period shall have rectified the breach.
D. Upon the termination of this Agreement, CuraGen shall remain
obligated to provide an accounting for and to pay royalties earned up to the
date of the termination and any minimum royalties shall be prorated as of the
date of termination by the ., number of days elapsed in the applicable calendar
year.
4
<PAGE>
Section 7. Assignability.
-------------
This Agreement may not be transferred or assigned by either party without
the prior written consent of the other party, except that CuraGen may freely
assign this Agreement to an Affiliate or to an entity acquiring substantially
all of its business to which Products relate.
Section 8. Patent Marking.
--------------
CuraGen shall insure that it applies patent markings that meet all
requirements of U.S. law, 35 U.S.C. 287, with respect to all Products subject to
this Agreement.
Section 9. Product Liability: Conduct of Business.
--------------------------------------
A. CuraGen shall, at all times during the term of this Agreement
and thereafter, indemnify, defend and hold WARF, and the inventors of the
Licensed Patents and the authors and inventors of the Technology harmless
against all claims and expenses, including legal expenses and reasonable
attorneys fees, arising out of the death of or injury to any person or persons
or out of any damage to property and against any other claim, proceeding,
demand, expense and liability of any kind whatsoever (other than patent
infringement claims) resulting from the production, manufacture, sale, use,
lease, consumption or advertisement of Products arising from any right or
obligation of CuraGen hereunder. WARF at all times reserves the right to select
and retain counsel of its own to defend WARF's interests.
B. CuraGen warrants that it now maintains and will continue to
maintain liability insurance coverage appropriate to the risk involved in
marketing the products subject to this Agreement and that such insurance
coverage lists WARP and the inventors of the Licensed Patents and the authors
and inventors of the Technology as additional insureds. Within ninety (90) days
after the execution of this Agreement and thereafter annually between January 1
and January 31 of each year, CuraGen will present evidence to WARF that the
coverage is being maintained with WARF and its inventors listed as additional
insureds if the Licensed Product has an in vivo effect. In addition, CuraGen
shall provide WARF with at least 30 days prior written notice of any change in
or cancellation of the insurance coverage.
Section 10. Use of Names.
------------
CuraGen shall not use WARF's name, the name of any inventor or author of
inventions or technology governed by this Agreement, or the name of the
University of Wisconsin in sales promotion, advertising, or any other form of
publicity without the prior written approval of the entity or person whose name
is being used. Notwithstanding the foregoing, CuraGen may state in written
materials that CuraGen has obtained a license from WARF to the technology which
is the subject of this Agreement.
5
<PAGE>
Section 11. United States Government Interests.
----------------------------------
It is understood that the United States Government (through any of its
agencies or otherwise) has funded research, during the course of or under which
any of the inventions of the Licensed Pa' tents were conceived or made, the
United States Government is entitled, as a right, under the provisions of 35
U.S.C. (S) 200-212 and applicable regulations of Chapter 37 of the Code of
Federal Regulations, to a nonexclusive, nontransferable, irrevocable, paid-up
license to practice or have practiced the invention of such Licensed Patents for
governmental purposes. Any license granted to CuraGen in this Agreement shall be
subject to such right.
Section 12. Confidential Information.
------------------------
The following provisions relate to restrictions on the disclosure and use
of Confidential Information by the parties:
A. Confidentiality. CuraGen and WARF each agree to treat as
confidential and to use only in the conduct of its business, all Confidential
Information disclosed to it by the other party.
B. Non-Disclosure and Non-Use. CuraGen and WARF each agrees not to
disclose any of the Confidential Information received from the other party to
any unauthorized third party and not to use any of the Confidential Information
except in the conduct of its business until the later of (a) five years from the
effective date of this Agreement; or (b) two years from the effective date of
termination.
C. Release from Restrictions. All information which is
characterized as Confidential Information shall cease to be confidential and
CuraGen and/or WARF shall be released from their respective obligations under
Sections 1 2A and 1 2B hereof on the date when, through no fault or omission of
the party seeking such release, such information becomes (a) disclosed in
published literature; (b) generally available to industry; `or `(c) obtained by
the party seeking such release from a third party without binder of secrecy,
provided, however, that such third party has no confidentiality obligations to
the other party.
Section 13. Miscellaneous.
-------------
This Agreement shall be construed in accordance with the internal laws of
the State of Wisconsin. If any provisions of this Agreement are or shall come
into conflict with the laws or regulations of any jurisdiction or any
governmental entity having jurisdiction over the parties or this Agreement,
those provisions shall be deemed automatically deleted, if such deletion is
allowed by relevant law, and the remaining terms and conditions of this
Agreement shall remain in ,full force and effect. If such a deletion is not so
allowed or if such a deletion leaves terms thereby made clearly illogical or
inappropriate in effect, the parties agree to substitute new terms as similar in
effect to the present terms of this Agreement as may be allowed under the
applicable laws and regulations. The parties hereto are independent contractors
and not joint venturers or partners.
6
<PAGE>
Section 14. Notices.
-------
Any notice required to be given pursuant to the provisions of this
Agreement shall be in writing and shall, be deemed to have been given at, the
earlier of the time when actually received as a' consequence of any effective
method of delivery, including but not limited to hand delivery, transmission by
telecopier, or delivery by a professional courier service or the time when sent
by certified or registered mail addressed to the party for whom intended at the
address below or at such changed address as the party shall have specified by
written notice, provided that any notice of change of address shall be effective
only upon actual receipt.
(a) Wisconsin Alumni Research Foundation
Attn: Managing Director
614 Walnut Street
Madison, Wisconsin 53705
(b) CuraGen Corporation
Attn: Jonathan M. Rothberg, Ph.D.
322 East Main Street
Branford, Connecticut 06405
Section 15. Integration.
-----------
This Agreement constitutes the full understanding between the parties with
reference to the subject matter hereof, and no statements or agreements by or
between the parties, whether orally or in writing, made prior to or at the
signing hereof, shall vary or modify the written terms of this Agreement.
Neither party shall claim any amendment, modification, or release from any
provisions of this Agreement by mutual agreement, acknowledgement, or otherwise,
unless such mutual agreement is in writing, signed by the other party, and
specifically states that it is an amendment to this Agreement.
Section 16. Benefits.
--------
All terms and provisions of this Agreement shall bind and inure to the benefit
of the parties hereto, and upon their respective successors and assigns as those
are permitted under the terms of this Agreement.
Section 17. Contract Formation and Authority.
--------------------------------
The persons signing on behalf of WARF and CuraGen hereby warrant and
represent that they have authority to execute this Agreement on behalf of the
party for whom they have signed.
7
<PAGE>
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement on
the dates indicated below.
WISCONSIN ALUMNI RESEARCH FOUNDATION
By: /s/ Richard H. Leazer Date: August 20, 1996
------------------------------------
Richard H. Leazer, Managing Director
CURAGEN CORPORATION
By: /s/ Jonathan M. Rothberg Date: August 13, 1996
------------------------------------
Jonathan M. Rothberg, President
________________________________________________________________________________
Reviewed by WARF's Attorney:
/s/ Elizabeth L. R. Donley
- ----------------------------------------
Elizabeth L. R. Donley, Esq.
August 17, 1996
(WARF's attorney shall not be deemed a signatory to this Agreement.)
8
<PAGE>
APPENDIX A
A. "Licensed Patents" shall refer to and mean those patents and patent
applications listed on Appendix B hereto, and reissues and extensions of such
patents, and continuations, continuations-in-part, divisions, and renewals of
such applications; and United States and foreign patents granted thereon, and
reissues and extensions thereof.
B. "Affiliates" shall mean any corporation, company, partnership, joint
venture or other entity which controls, is controlled or under common' control
with CuraGen or WARF as the case may be. For the purposes of this definition,
control shall mean the direct or indirect ownership of at least fifty percent
(50%) or, if less than fifty percent (50%), the maximum percentage as allowed by
applicable law of (a) the stock shares entitled to vote for the election of
directors; or (b) ownership interest.
C. "Products" shall refer to and mean [XXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
D. "Date of First Commercial Sale" shall mean the date when cumulative
sales to the retail market of Products exceeds [XXXXXXXXX].
E. "Selling Price" shall mean, in the case of Products that are sold, the
invoice price to the retail customer of Products (regardless of uncollectible
accounts) less any discounts, shipping costs, allowances because of returned
Products, or `sales taxes. In the event of a sale to a previous purchaser of
Products of a component that incorporates the technology of the Licensed
Patents, the "Selling Price" will be the price of solely the component.
F "Licensed Field" shall be limited to the field of electrophoresis
apparatuses and components of such apparatuses.
G. "Licensed Territory" shall be worldwide.
H. "Confidential Information" shall mean this Agreement, the Development
Plan and Development Reports, and any and all books, records and business
information required to be supplied to WARF by CuraGen under the terms of this
Agreement.
9
[Confidential Treatment Requested]
<PAGE>
APPENDIX B
LICENSED PATENTS AND PATENT APPLICATIONS
----------------------------------------
<TABLE>
<CAPTION>
REFERENCE PATENT ISSUE APPLIC. SERIAL
NUMBER COUNTRY NUMBER DATE NUMBER
- --------------------------------------------------------------------------------
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
<S> <C> <C> <C> <C>
XXXXXXXX XXXX XXXXXXXXX XXXXXXX
XXXXXXXX XXXX XXXXXXXXX XXXXXXX
XXXXXXXX XXXXXX XXXXXXX
XXXXXXXX XXX XXXXXXXXXX
XXXXXXXX XXXXX XXXXXXXX
</TABLE>
10
[Confidential Treatment Requested]
<PAGE>
WARF ROYALTY REPORT
-------------------
CuraGen:____________________________ Agreement No.:_________________
Inventor:___________________________ P#: P
-------------------------------------
Period Covered: From: / /199 Through: / /199
------------- --------------------------
Prepared By: _____________ Date: _______________________________
Approved By: _____________ Date: _______________________________
If license covers several major lines, please
prepare a separate report for each line.
Then combine all product lines into a summary
report.
Report Type: Single Product Line Report:______________________________
Multiproduct Summary Report. Page 1 of ____ Pages
Product Line Detail. Line:________ Tradename:_______
Page:____________
Report Currency: U.S. Dollars Other______________________________________
<TABLE>
<CAPTION>
==============================================================================================
Gross * Less: Net Royalty Period Royalty Amount
Country Sales Allowances Sales Rate
==============================================================================================
<S> <C> <C> <C> <C> <C> <C>
This Year Last Year
- ----------------------------------------------------------------------------------------------
U.S.A.
- ----------------------------------------------------------------------------------------------
Canada
==============================================================================================
Europe
- ------
- ----------------------------------------------------------------------------------------------
- ----------------------------------------------------------------------------------------------
- ----------------------------------------------------------------------------------------------
- ----------------------------------------------------------------------------------------------
- ----------------------------------------------------------------------------------------------
- ----------------------------------------------------------------------------------------------
==============================================================================================
Japan
==============================================================================================
Other
- -----
==============================================================================================
- ----------------------------------------------------------------------------------------------
- ----------------------------------------------------------------------------------------------
- ----------------------------------------------------------------------------------------------
==============================================================================================
TOTAL:
==============================================================================================
</TABLE>
Total Royalty:______________ Conversion Rate:_______________ Royalty in U.S.
Dollars: $______________
The following royalty forecast is non-binding and for WARF's internal
planning purposes only:
Royalty Forecast Under This Agreement: Next Quarter:_____Q2:_____Q3:_____Q4:___
________________________________________________________________________________
* On a separate page, please indicate the reasons for returns or other
adjustments if significant.
Also note any unusual occurrences that affected royalty amounts during this
period.
To assist WARF's forecasting, please comment on any significant expected trends
in sales volume.
________________________________________________________________________________
<PAGE>
APPENDIX D
DEVELOPMENT PLAN
----------------
[XXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
<TABLE>
<CAPTION>
XXXX XXXX XXXX
<S> <C> <C> <C>
XXXXXXXXX XX XX XX XX XX XX XX XX XXXXXXXXXXXXXX
XXXXX
XXXXXXXXXXXXXXXXX X
XXXXXX
XXXXXXXXXXXXXXXXXX
X
XXXXXXXXXXXXXXXXXXXXX X
XXXXXXXXXXXXXXXXXXXXXX X
XXXXXXXXXXXXXXXXX X XXXXXX XXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXX X XXXXXX XXXXXXXXXXXXXXX
</TABLE>
[Confidential Treatment Requested]
<TABLE> <S> <C>
<PAGE>
<ARTICLE> 5
<LEGEND>
THIS SCHEDULE CONTAINS SUMMARY FINANCIAL INFORMATION EXTRACTED FROM THE CURAGEN
CORPORATION DECEMBER 31, 1997 FINANCIAL STATEMENTS AND IS QUALIFIED IN ITS
ENTIRETY BY REFERENCE TO SUCH FINANCIAL STATEMENTS.
</LEGEND>
<S> <C>
<PERIOD-TYPE> 12-MOS
<FISCAL-YEAR-END> DEC-31-1997
<PERIOD-START> JAN-01-1997
<PERIOD-END> DEC-31-1997
<CASH> 17,417,161
<SECURITIES> 0
<RECEIVABLES> 588,314
<ALLOWANCES> 0
<INVENTORY> 0
<CURRENT-ASSETS> 19,260,089
<PP&E> 8,656,032
<DEPRECIATION> (1,735,836)
<TOTAL-ASSETS> 26,519,029
<CURRENT-LIABILITIES> 4,521,417
<BONDS> 0
0
1,459,196
<COMMON> 85,801
<OTHER-SE> 12,137,178
<TOTAL-LIABILITY-AND-EQUITY> 26,519,029
<SALES> 0
<TOTAL-REVENUES> 5,896,543
<CGS> 0
<TOTAL-COSTS> 0
<OTHER-EXPENSES> 9,742,546
<LOSS-PROVISION> 0
<INTEREST-EXPENSE> 684,537
<INCOME-PRETAX> (7,222,010)
<INCOME-TAX> 0
<INCOME-CONTINUING> (7,222,010)
<DISCONTINUED> 0
<EXTRAORDINARY> 0
<CHANGES> 0
<NET-INCOME> (7,222,010)
<EPS-PRIMARY> (.92)
<EPS-DILUTED> (.92)
</TABLE>
