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UNITED STATES
SECURITIES AND EXCHANGE COMMISSION
Washington, D.C. 20549
FORM 10-Q/A
AMENDMENT NO. 1
[X] QUARTERLY REPORT PURSUANT TO SECTION 13 or 15(d) OF THE SECURITIES EXCHANGE
ACT OF 1933
For the quarterly period ended June 30, 1999
or
[_] TRANSITION REPORT PURSUANT TO SECTION 13 or 15(d) OF THE SECURITIES EXCHANGE
ACT OF 1934
For the transition period from ____ to ____
________________
Commission File Number 0-23223
CURAGEN CORPORATION
(Exact name of registrant as specified in its charter)
Delaware 06-1331400
(State or other jurisdiction of (I.R.S. Employer
incorporation or organization) Identification No.)
555 Long Wharf Drive, 11th Floor, New Haven, 06511
Connecticut
(Address of principal executive offices) (Zip Code)
Registrant's telephone number, including area code: (203) 401-3330
Indicate by check mark whether the registrant (1) has filed all reports required
to be filed by Section 13 or 15(d) of the Securities Exchange Act of 1934 during
the preceding 12 months (or for such shorter period that the registrant was
required to file such reports), and (2) has been subject to such filing
requirements for the past 90 days. Yes [X] No [_]
The number of shares outstanding of the Registrant's Common Stock and Non-Voting
Common Stock as of October 20, 1999 was 15,880,827 and 977,636, respectively.
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CURAGEN CORPORATION
Part II - Other Information
Item 6. Exhibits and Reports on this Form 10-Q
CuraGen Corporation hereby amends its report on Form 10-Q for the quarterly
period ended June 30, 1999 filed with the Securities and Exchange Commission on
August 13, 1999 by substituting the following Exhibit 10.1, Agreement Between
COR Therapeutics, Inc. and the Registrant dated May 1, 1999, for the one that
appears in the original filing. The purpose of this Amendment No. 1 is to
include in Exhibit 10.1 the portions thereof for which CuraGen Corporation no
longer requests Confidential Treatment.
Item 6. Exhibits and Reports on Form 8-K
A. Exhibits
Exhibit 10.1* - Agreement Between COR Therapeutics, Inc. and the
Registrant dated May 1, 1999.
_________________
* Confidential Treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
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SIGNATURES
Pursuant to the requirements of the Securities Exchange Act of 1934, the
registrant has duly caused this report to be signed on its behalf by the
undersigned thereunto duly authorized.
Dated: March 2, 2000 CuraGen Corporation
By: /s/ Jonathan M. Rothberg
------------------------
Jonathan M. Rothberg, Ph.D.
Chief Executive Officer, President and
Chairman of the Board
By: /s/ David M. Wurzer
-------------------
David M. Wurzer
Executive Vice-President, Treasurer
and Chief Financial Officer, (principal
financial and accounting officer of the
registrant)
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CURAGEN CORPORATION
EXHIBIT INDEX
No.
- ---
10.1* Agreement Between COR Therapeutics, Inc. and the Registrant dated May
1, 1999.
_________________
* Confidential Treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
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TABLE OF CONTENTS
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ARTICLE I - BACKGROUND........................................................................................... 1
ARTICLE II - DEFINITIONS......................................................................................... 2
2.00 - Terms.................................................................................................... 2
2.01 - Affiliate................................................................................................ 2
2.02 - Completion............................................................................................... 2
2.03 - Confidential Information................................................................................. 2
2.04 - COR Commercial Field..................................................................................... 3
2.05 - COR Product(s)........................................................................................... 3
2.06 - COR Proprietary Material................................................................................. 3
2.07 - CURAGEN Background Inventions............................................................................ 3
2.08 - CURAGEN Commercial Field................................................................................. 3
2.09 - CURAGEN Products......................................................................................... 3
2.10 - CURAGEN Collaboration Intellectual Property Rights....................................................... 4
2.11 - CURAGEN Proprietary Material............................................................................. 4
2.12 - Discovered Products...................................................................................... 4
2.13 - Discovery Tools.......................................................................................... 4
2.14 - Exclusive Evaluation Period or EEP....................................................................... 4
2.15 - FTE...................................................................................................... 5
2.16 - IND...................................................................................................... 5
2.17 - Inhibitory Antibody...................................................................................... 5
2.18 - License Term............................................................................................. 5
2.19 - New Indication Products.................................................................................. 5
2.19 - Net Sales................................................................................................ 5
2.20 - Optimization............................................................................................. 6
2.21 - Optimized Products....................................................................................... 6
2.22 - Optioned Protein Therapeutic Products.................................................................... 6
2.23 - Party or Parties......................................................................................... 6
2.24 - Patent Rights............................................................................................ 6
2.25 - Project Scope............................................................................................ 7
2.26 - Project Year............................................................................................. 7
2.27 - Protein Therapeutic Products............................................................................. 8
2.28 - Research Collaboration................................................................................... 8
2.29 - Research Collaboration Term.............................................................................. 8
2.30 - Research Plan............................................................................................ 8
2.31 - Research Project......................................................................................... 8
2.32 - Research Project Data.................................................................................... 9
2.33 - Research Project Data Set................................................................................ 9
2.34 - Research Project Invention............................................................................... 9
2.35 - Small Molecule........................................................................................... 9
2.36 - Steering Committee....................................................................................... 9
2.37 - Target................................................................................................... 10
2.38 - Territory................................................................................................ 10
2.39 - Third Party.............................................................................................. 10
2.40 - Valid Claim(s)........................................................................................... 10
ARTICLE III - RESEARCH COLLABORATION............................................................................. 10
3.00 - Basic Provisions of the Research Collaboration........................................................... 10
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3.01 - Collaborative Efforts and Reports........................................................................ 11
3.02 - Training................................................................................................. 12
3.03 - Research Plans and Research Projects..................................................................... 12
3.04 - Non-Exclusivity.......................................................................................... 13
3.05 - Steering Committee....................................................................................... 13
3.06 - Composition of Steering Committee........................................................................ 14
3.07 - Steering Committee Meetings.............................................................................. 14
3.08 - Minutes of Steering Committee Meetings................................................................... 15
3.09 - Quorum; Voting, Decisions................................................................................ 15
3.10 - Expenses................................................................................................. 15
3.11 - Research Collaboration Term.............................................................................. 15
3.12 - Conflict with Preexisting CURAGEN Projects............................................................... 16
ARTICLE IV - DATA ACCESS; SOFTWARE ACCESS AND RESEARCH LICENSE................................................... 16
4.00 - COR's Access to Research Project Data Sets and Research Project Inventions............................... 16
4.01 - CURAGEN's Access to Research Project Data Sets and Research Project Inventions........................... 19
4.02 - Software License......................................................................................... 20
ARTICLE V - FUNDING OF RESEARCH COLLABORATION.................................................................... 21
5.00 - FTE Fees, Initial Term................................................................................... 21
5.01 - Access Fees - Initial Term............................................................................... 21
5.02 - Post-Term Access Fees.................................................................................... 21
ARTICLE VI - TREATMENT OF CONFIDENTIAL INFORMATION............................................................... 22
6.00 - Confidential Information................................................................................. 22
6.01 - Publications............................................................................................. 23
6.02 - Press Release and Regulatory Filings..................................................................... 23
ARTICLE VII - INTELLECTUAL PROPERTY RIGHTS AND THE FILING, PROSECUTION AND MAINTENANCE OF PATENT RIGHTS......... 24
7.00 - COR Proprietary Material................................................................................. 24
7.01 - Data..................................................................................................... 24
7.02 - Inventions............................................................................................... 24
7.03 - Filing Prosecution and Maintenance of Patent Rights for Research Project Inventions Owned Solely by COR.. 24
7.04 - Filing, Prosecution and Maintenance of Patent Rights for Research Project Inventions Owned Solely by
CURAGEN.................................................................................................. 25
7.05 - Filing, Prosecution and Maintenance of Patent Rights for Jointly Owned Research Project Inventions....... 25
7.06 - Preventing Loss of Patent Rights......................................................................... 25
ARTICLE VIII - COMMERCIAL LICENSES TO COR........................................................................ 27
8.00 - COR Products............................................................................................. 27
8.01 - Sublicenses.............................................................................................. 28
8.02 - Royalty Payments......................................................................................... 29
8.03 - Milestone Payments....................................................................................... 30
8.04 - Remittance of Payments................................................................................... 32
8.05 - Foreign Currency Conversions............................................................................. 32
8.06 - Taxes Withheld........................................................................................... 32
8.07 - License Term............................................................................................. 32
8.08 - Overdue Payments......................................................................................... 33
8.09 - Records Retention. Audits............................................................................... 33
ARTICLE IX - COMMERCIAL LICENSES TO CURAGEN...................................................................... 34
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9.00 License to CURAGEN for CURAGEN Products.................................................................... 34
9.01 License to CURAGEN where COR has Non-Exclusive Rights...................................................... 34
9.02 Unblocking Licenses to CURAGEN............................................................................. 34
ARTICLE X - NOTIFICATION OF PRODUCTS, RIGHT OF FIRST NEGOTIATION................................................. 35
10.00 - Notification of Product Information..................................................................... 35
10.01 - Notification of IND Filing.............................................................................. 36
10.02 - Right of First Negotiation.............................................................................. 36
ARTICLE XI - TERMINATION......................................................................................... 37
11.00 - Termination............................................................................................. 37
11.01 - Effects of Termination under Article 110.00 Upon Rights of the Parties.................................. 37
11.02 - Termination with Cause.................................................................................. 37
11.03 - Termination Following Bankruptcy........................................................................ 38
11.04 - Effect of Termination under Article 11.02............................................................... 39
11.05 - Obligations............................................................................................. 39
11.06 - Remedies................................................................................................ 39
11.07 - Surviving Provisions.................................................................................... 39
ARTICLE XII - MISCELLANEOUS...................................................................................... 40
12.00 - CURAGEN Representations and Covenants................................................................... 40
12.01 - COR Representations and Covenants....................................................................... 40
12.02 - Entire Agreement........................................................................................ 41
12.03 - No Warranties........................................................................................... 41
12.04 - Liability............................................................................................... 42
12.05 - Notices................................................................................................. 42
12.06 - Dispute Resolution and Arbitration...................................................................... 43
12.07 - Currency................................................................................................ 44
12.08 - Further Assurances...................................................................................... 44
12.09 - Limitations............................................................................................. 44
12.10 - Waiver.................................................................................................. 44
12.11 - Assignment.............................................................................................. 44
12.12 - Force Majeure........................................................................................... 45
12.13 - Construction............................................................................................ 45
12.14 - Severability............................................................................................ 45
12.15 - Status.................................................................................................. 46
12.16 - COR Indemnification of CURAGEN.......................................................................... 46
12.17 - CURAGEN Indemnification of COR.......................................................................... 46
12.18 - Governing Law........................................................................................... 47
12.19 - Captions and Headings................................................................................... 47
12.20 - Amendments.............................................................................................. 47
12.21 - Counterparts............................................................................................ 47
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CuraGen Corporation has omitted from this Exhibit 10.1 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.
Exhibit 10.1
AGREEMENT
Agreement made as of the 1st day of May, 1999, ( "Effective Date"), between
COR Therapeutics Inc., a Delaware corporation, having its principal place of
business at 256 East Grand Avenue, South San Francisco, CA 94080 ("COR") and
CuraGen Corporation, a Delaware corporation, having its principal place of
business at 555 Long Wharf Drive, 11/th/ Floor, New Haven, Connecticut 06511
("CURAGEN").
ARTICLE I - BACKGROUND
WHEREAS, CURAGEN has developed a comprehensive suite of functional genomics
technologies and processes (including SeqCalling(TM), GeneCalling(R) and
PathCalling(TM)); and bioinformatics software (including GeneScape(R) and
CuraTools(TM)) (collectively "Discovery Tools");
WHEREAS, COR and CURAGEN wish to initiate a collaboration to use the
Discovery Tools in order to enable and expedite the discovery of information and
the development of novel human health products (the "Research Collaboration");
WHEREAS, COR wishes to obtain access to the data created in the Research
Collaboration and certain rights to inventions made in the performance of the
Research Collaboration pursuant to this Agreement;
NOW THEREFORE, in consideration of the foregoing premises, COR and CURAGEN agree
to undertake the foregoing, under the terms and conditions set forth in this
Agreement.
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ARTICLE II - DEFINITIONS
2.00 - Terms
Terms used in this Agreement (other than the names of parties and article
headings) that are set forth with an initial capital letter have the meanings
established for such terms in the succeeding paragraphs of this Article II, or
as otherwise specifically defined hereinafter.
2.01 - Affiliate
Affiliate shall mean any person, corporation, firm, limited liability
company, partnership or other entity, which directly or indirectly Controls or
is Controlled by or is under common Control with a Party. "Control" or
"Controlled" means ownership, directly or through one or more Affiliates, of
fifty percent (50%) or more of the shares of stock entitled to vote for the
election of directors, in the case of a corporation, or fifty percent (50%) or
more of the equity interests in the case of any other type of legal entity,
status as a general partner in any partnership, or any other arrangement whereby
a Party controls or has the right to control the Board of Directors or
equivalent governing body of a corporation or other entity, or the ability to
cause the direction of the management or policies of a corporation or other
entity.
2.02 - Completion
With respect to a Research Project Data Set, Completion shall mean the date
upon which (i) substantially all the electrophoresis data contemplated in the
associated Research Plan is entered into GeneScape(R) and made available for
viewing by COR and (ii) notice is given to COR and the Steering Committee
pursuant to Section 3.01(c).
2.03 - Confidential Information
Shall have the meaning set forth in Article 6.00 and shall be interpreted
in accordance with the provisions of Article VI, below.
2
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2.04 - COR Commercial Field
Shall mean the use of COR Products for the prevention, treatment or cure of
disease in humans. The COR Commercial Field shall not include any use for
diagnostic purposes.
2.05 - COR Products
Shall mean [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
2.06 - COR Proprietary Material
Shall mean samples provided by COR to CURAGEN for the purpose of performing
the Research Collaboration and shall also be deemed to include the nucleic acids
and other substances actually contained in such samples.
2.07 - CURAGEN Background Inventions
Shall mean all inventions claimed in an issued patent or patent application
owned or controlled by CURAGEN and all know-how related to such inventions,
other than CURAGEN Collaboration Intellectual Property Rights, which inventions
or know-how would be infringed by COR's developing, making, having made, using,
selling, offering for sale, or importing of a COR Product but for this
Agreement.
2.08 - CURAGEN Commercial Field
Shall mean all fields of use other than the COR Commercial Field.
2.09 - CURAGEN Products
Shall mean [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXX].
3
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2.10 - CURAGEN Collaboration Intellectual Property Rights
Shall mean all intellectual property rights owned or controlled by CURAGEN,
including, but not limited to, patents, trademarks, copyrights, know-how and
trade secrets, that (i) are directly derived from CURAGEN's activities in the
Research Collaboration and relate to Research Project Inventions, including
without limitation, CURAGEN's rights and interests in Patent Rights, or (ii)
relate to CURAGEN Collaborator Inventions (as defined in Section 4.01(b)).
2.11 - CURAGEN Proprietary Material
Shall mean all substances made by CURAGEN in the performance of the
Research Collaboration other than nucleic acid pools extracted from COR
Proprietary Material.
2.12 - Discovered Products
Shall mean products for the prevention, treatment or cure of disease in
humans that are directly derived from a Research Project designed to identify or
lead to a Target and in which the active ingredient is a Small Molecule or
Inhibitory Antibody, provided that such products, or their discovery,
development, production, use, sale or importation, (i) infringe a Valid Claim of
the Patent Rights, and/or (ii) incorporate or make material use of any Research
Project Data Set and/or Research Project Invention.
2.13 - Discovery Tools
Shall have the meaning set forth in the first WHEREAS clause.
2.14 - Exclusive Evaluation Period or EEP
Shall mean, with respect to a COR Product, the period of exclusive access
pursuant to Article 4.00 to the Research Project Data Set from which such COR
Product arose.
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2.15 - FTE
Is an acronym that stands for Full Time Equivalent, which shall mean the
equivalent of a full year of effort on a full time basis (not less than 40 hours
per week) of a researcher possessing skills and experience necessary to carry
out applicable tasks under the Research Collaboration.
2.16 - IND
Shall mean an application filed with the appropriate regulatory authorities
of any country seeking approval to commence human clinical trials of a COR
Product.
2.17 - Inhibitory Antibody
Shall mean an immunoglobulin molecule that specifically interacts with a
target antigen. [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
2.18 - New Indication Products
Shall mean products developed, manufactured or sold by COR (i) for which an
indication outside the Project Scope is discovered through the material use of
any Research Project Data Set and/or Research Project Invention resulting from a
Research Project designed for Optimization of a prospective product in Phase II
or Phase III clinical trials or which is already approved for marketing, or (ii)
whose use for an indication described in clause (i) infringes a Valid Claim of
the Patent Rights.
2.19 - Net Sales
Shall mean [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
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XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
2.20 - Optimization
Shall mean selection, optimization or testing of a prospective product
(including the identification of toxicities or side effects) using expression
information.
2.21 - Optimized Products
Shall mean products for the treatment, prevention or cure of disease in
humans that are directly derived from a Research Project designed for
Optimization of such products, and in which the active ingredient is a Small
Molecule or Inhibitory Antibody, provided that such products, or their
discovery, development, production, use, sale or importation, (i) infringe a
Valid Claim of the Patent Rights, and/or (ii) incorporate or make material use
of any Research Project Data Set and/or Research Project Invention.
2.22 - Optioned Protein Therapeutic Products.
Shall mean Protein Therapeutic Products as to which COR and CuraGen have
entered into a Co-Development Agreement pursuant to COR's exercise of the right
of first negotiation as provided in Article 10.
2.23 - Party or Parties
Shall mean COR or CURAGEN or both, as appropriate.
2.24 - Patent Rights
6
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Means the rights and interests in and to issued patents and pending patent
applications without limitation to any country, including, but not limited to,
all provisional applications, substitutions, continuations, continuations-in-
part, divisions, and renewals, all letters patent granted thereon, and all
reissues, reexaminations and extensions thereof, and Supplemental Protection
Certificates relating thereto whether owned solely or jointly by a Party or
licensed in by a Party, with the right to grant sublicenses, now or in the
future, which claim a Research Project Invention.
2.25 - Project Scope
Shall have the meaning set forth in Article 3.03(b).
2.26 - Project Year
Shall mean a twelve-month period beginning on May 1 and ending on the
following April 31.
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2.27 - Protein Therapeutic Products
Shall mean novel therapeutic protein products, provided that such products
are first discovered during the course of performance of the Research
Collaboration, and provided further that such products, or their discovery,
development, production, use, sale or importation, (i) infringe a Valid Claim of
the Patent Rights, and/or (ii) incorporate or make direct and material use of
any Research Project Data Set or Research Project Invention.
2.28 - Research Collaboration
Shall mean the collection of Research Projects to be performed by the
Parties under this Agreement as described in the Research Plan and amendments
thereto.
2.29 - Research Collaboration Term
Shall have the meaning set forth in Article 3.11.
2.30 - Research Plan
Shall mean the written description of the research to be performed by
CURAGEN and COR under an individual Research Project, as presented in the form
shown in GeneScape(R). Any such Research Plan shall be attached hereto as an
Addendum to this Agreement and shall include the responsibilities of CURAGEN and
COR in connection with such Research Project as well as the estimated completion
thereof.
2.31 - Research Project
Shall mean (i) a particular project to process and analyze a specified set
of samples relevant to the discovery or development of a COR Product; (ii)
SeqCalling(TM) projects designed to sequence genomic or cDNA relevant to the
discovery or development of a COR Product; or (iii) any other project mutually
agreed to by the Parties. Each Research Project shall have a clearly identified
Project Scope.
8
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2.32 - Research Project Data
Shall mean all data and any other information obtained (other than from
COR) or generated by CURAGEN in the performance of a Research Project in the
Research Collaboration.
2.33 - Research Project Data Set
Shall mean the specific collection of all Research Project Data resulting
from a discrete Research Project.
2.34 - Research Project Invention
Shall mean any invention made or discovered by or on behalf of a party to
this Agreement through the material use of any Research Project Data Set and any
other discovery, invention, know-how or trade secret conceived, made or reduced
to practice in the performance of the Research Collaboration by or on behalf of
a party to this Agreement, including any discovery, invention, know-how or trade
secret conceived, made or reduced to practice by employees of CURAGEN or COR (or
an Affiliate of COR), or jointly by employees of both, as well as any non-
employees working for COR (or an Affiliate of COR) on its behalf or for CURAGEN
on CURAGEN's behalf, in the performance of the Research Collaboration.
2.35 - Small Molecule
Shall mean [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
2.36 - Steering Committee
Shall mean the steering committee to be established as provided in Article
3.05.
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2.37 - Target
Shall mean any [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
2.38 - Territory
Shall mean all countries of the world.
2.39 - Third Party
Shall mean any person, corporation, firm, limited liability company,
partnership, or other entity, which is not a Party or an Affiliate of a Party.
2.40 - Valid Claim(s)
Shall mean an unexpired claim of any issued patent within Patent Rights
which has not been finally declared invalid or unenforceable by a patent office
or by a court or other body of competent jurisdiction in any unappealed or
unappealable decision and which has not been lost through an interference or
opposition proceeding.
ARTICLE III - RESEARCH COLLABORATION
3.00 - Basic Provisions of the Research Collaboration
(a) The objective of the Research Collaboration will be for the Parties to
perform Research Projects, which shall include efforts by CURAGEN to generate
Research Project Data Sets using the Discovery Tools and the delivery of such
Research Project Data Sets to COR and the analysis and use of such Research
Project Data Sets by COR and CURAGEN to discover and Optimize COR Products.
(b) CURAGEN shall, unless otherwise mutually agreed, devote [XXX] to the
Research Collaboration during each Project Year of the Research Collaboration
Term. COR
10
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may, at any time during the initial term of this Agreement, increase the total
number of FTEs to a maximum of [XXXX] per year at the FTE rate set forth in
Article V. COR may request such an increase in the number of FTEs to be
effective within ninety (90) days of such request. CURAGEN shall use
commercially reasonable efforts to promptly provide such increased FTEs.
3.01 - Collaborative Efforts and Reports
(a) The Parties agree that the successful execution of the Research
Collaboration will require the collaborative use of both Parties' area of
expertise. The Parties shall keep the Steering Committee fully informed about
the status of the portions of the Research Collaboration they respectively
perform. In particular, without limitation, each Party shall furnish to the
Steering Committee quarterly written reports within thirty (30) days after the
end of each quarterly period, describing the progress of its activities in
reasonable detail, including (i) a summary of the progress of any ongoing
Research Projects, (ii) a summary of uses of Research Project Data, including
but not limited to COR's activities with regard to transfer of any such Research
Project Data to COR's databases outside of the GeneScape(R) database, and (iii)
a description of Research Project Data Sets from completed Research Projects. At
any time, upon the reasonable request of COR, CURAGEN will provide an update of
the status of ongoing Research Projects to COR.
(b) Scientists at CURAGEN and COR shall cooperate in the performance of
the Research Collaboration and, subject to any confidentiality obligations to
third parties, shall exchange information and materials (including COR
Proprietary Material) as necessary to carry out the Research Collaboration. Each
Party will attempt to accommodate any reasonable request of the other Party to
send or receive personnel for purposes of collaborating or exchanging
information under the Research Collaboration. Such visits and/or access will
have defined purposes and be scheduled in advance. Each Party will bear its own
travel and lodging costs related to such meetings.
(c) CURAGEN will given written notice to COR and the Steering Committee
promptly after the Research Project Data Set for a Research Project is made
available for viewing by COR.
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(d) CURAGEN shall set up and maintain, throughout the Research
Collaboration Term, a secure partition of its GeneScape(R) database and software
for use by COR and CURAGEN exclusively for the purposes of performing the
Research Collaboration, and shall provide online electronic mail and telephone
help during normal business hours in New Haven, Connecticut in the use thereof
to COR. CURAGEN and COR shall jointly set up and maintain a secure connection to
said partition of the GeneScape(R) database and software in order to give COR
on-line access thereto. COR shall have no rights to use the GeneScape(R)
database and software except as expressly set forth herein and shall have no
rights to provide access to the GeneScape(R) database and/or other CURAGEN
software or databases to Third Parties without the prior written consent of
CURAGEN. In the event the Parties agree that a dedicated line or lines is or are
needed to provide access, COR shall be responsible for all costs associated
therewith.
3.02 - Training
COR will assign one COR individual to become "COR's internal expert" on the
use of GeneScape(R) with the intent of having those individuals be the primary
contacts with CURAGEN and having those individuals be available to provide
internal training and support to COR users. CURAGEN shall provide commercially
reasonable training to such internal experts, in a single training program to
the extent reasonably practicable, at no additional cost to COR. CURAGEN will
also provide training at CURAGEN's facilities to other COR personnel involved in
Research Projects upon request of COR, with the time involved in such training
being charged against COR's FTE allocation.
3.03 - Research Plans and Research Projects
(a) An initial Research Plan for the Research Collaboration shall be
agreed upon by the Parties no later than thirty (30) days after the Effective
Date and shall include the initial Research Projects, a regular schedule on
which samples are expected to be periodically provided by COR to CURAGEN for use
in the Research Collaboration, a regular schedule on which Research Project Data
Sets are expected to be delivered to COR, and plans to implement access to the
GeneScape(R) database and software for COR. Periodically during the Research
12
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Collaboration Term (no less than on a quarterly basis) or at any time on request
of either COR or CURAGEN, the Research Plan shall be updated by the Parties,
either directly or through the Steering Committee, to reflect changes thereto as
well as progress made to date on such plan and such revised Research Plan shall
be approved by the Steering Committee no later than thirty (30) days following
their receipt thereof. Nothing in this Agreement shall be interpreted as
obligating CURAGEN to perform any additional work beyond that set forth in any
approved Research Plan.
(b) Consistent with the Research Plan, COR shall propose Research Projects
to CURAGEN. Each proposal for a Research Project shall specify the biological
samples to be provided by COR, the drug or drug candidate (if any) to be tested,
the purpose of the Research Project, the intended indication and intervention
strategy sought to be achieved as a result of the Research Project
(collectively, the "Project Scope") and whether the Research Project is intended
to result in Discovered Products, Optimized Products or both.
3.04 - Non-Exclusivity
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
3.05 - Steering Committee
A Steering Committee will be established by the Parties as provided below
and will be responsible for the planning and monitoring of the Research
Collaboration. In particular, the activities of the Steering Committee shall
include:
(a) Approving Research Projects proposed by COR and their associated
Research Plans and establishing prioritization criteria for specific Research
Projects, including determination of proposed dates for initiation of
experiments and Completion;
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(b) Monitoring workflow, including sample transfer, sample analysis and
data quality control, database posting, data analysis and summarization,
software installation access, training and maintenance;
(c) Monitoring of sample throughput, specific Research Project progress
and overall Research Collaboration progress;
(d) Ensuring timely disclosure of Research Project Inventions and the
development and implementation of patenting strategies; and
(e) Assigning tasks and responsibilities taking into account each Party's
respective specific capabilities and expertise in order to avoid duplication and
enhance efficiency and synergies.
3.06 - Composition of Steering Committee
Within thirty (30) days following the execution of this Agreement, a
Steering Committee shall be established for the purpose set forth in Article
3.05. The Steering Committee shall be composed of an equal number (but no more
than three) representatives from each of CURAGEN and COR. One representative of
COR will chair the Steering Committee. Except as set forth below, a Steering
Committee member may delegate his/her duties to another employee of his/her
organization. Each Party shall have the right to replace its representatives at
any time during the term of this Agreement by providing written notice to the
other Party. Other employees of COR or CURAGEN may attend meetings of the
Steering Committee on invitation of either Party.
3.07 - Steering Committee Meetings
The Steering Committee shall meet at least quarterly, with such meetings to
be held, alternately, in New Haven, Connecticut, and at COR's facilities in
South San Francisco, California, unless the Parties agree otherwise. Meetings
may also be held by conference telephone or videoconference upon mutual
agreement.
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3.08 - Minutes of Steering Committee Meetings
The Steering Committee shall keep accurate minutes of its deliberations
which shall include all proposed decisions and all actions recommended or taken.
Drafts of minutes shall be delivered to the members of the Steering Committee
within ten (10) days after any meeting. The Party hosting the meeting shall be
responsible for the preparation and circulation of the draft minutes. Draft
minutes shall be edited by the Steering Committee members and shall be issued in
final form only with the approval and agreement of the Steering Committee as
evidenced by the signature on the minutes of a designated representative of each
of CURAGEN and COR.
3.09 - Quorum; Voting, Decisions
At each Steering Committee meeting, at least two (2) members appointed by
each Party present in person or by telephone shall constitute a quorum and
decisions shall be made by majority vote. Each Steering Committee member shall
have one vote on all matters before the Steering Committee, provided that the
member or members of each Party present at a Steering Committee meeting shall
have the authority to cast the votes of any of such Party's members on the
Steering Committee who are absent from the meeting. Notwithstanding the
foregoing, the objective of the Parties to this Agreement is that decisions of
the Steering Committee shall be made by consensus. However, except as otherwise
set forth herein, in the event that the Steering Committee is unable to resolve
any matter before it as set forth above, such matter shall be resolved in good
faith by the Chief Executive Officer of COR.
3.10 - Expenses
CURAGEN and COR shall each bear all expenses of their respective Steering
Committee members related to their participation on the Steering Committee and
attendance at Steering Committee meetings.
3.11 - Research Collaboration Term
The initial term of the Research Collaboration hereunder shall be for a
period of eighteen (18) months from May 1, 1999, with an option to extend the
same for three (3) additional twelve
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(12) month terms upon ninety (90) days prior notification by COR. The term of
the Research Collaboration, as extended pursuant to this Article, is referred to
herein as the "Research Collaboration Term."
3.12 - Conflict with Preexisting CURAGEN Projects
(a) CURAGEN acknowledges that the performance of Research Projects
identified on Exhibit 3.12 attached hereto are material to COR's decision to
enter this Agreement. Both Parties acknowledge, however, that due to a
preexisting duty or obligation of CURAGEN to a Third Party, CURAGEN may be
restricted in the performance of or entirely unable to perform, a given Research
Project proposed by COR. COR hereby agrees that CURAGEN may satisfy its
obligations hereunder with respect to any such proposed Research Project other
than the Research Projects identified on Exhibit 3.12 attached hereto, by
submitting to COR a letter signed by an officer of CURAGEN certifying that such
a proposed Research Project is subject to a preexisting duty or obligation by
CURAGEN to a Third Party and cannot be undertaken because of such duty or
obligation.
(b) Both Parties also acknowledge that it is also possible that, even if
CURAGEN is free to perform a given Research Project, Research Project Inventions
arising from such Research Project may have previously been discovered by others
or licensed by CURAGEN to others and therefore Patent Rights covering such
Research Project Inventions may not be obtainable.
ARTICLE IV - DATA ACCESS; SOFTWARE ACCESS AND RESEARCH LICENSE
4.00 - COR's Access to Research Project Data Sets and Research Project
Inventions
(a) COR Access to Research Project Data Sets.
----------------------------------------
(i) Subject to CURAGEN's license and right of access as set forth in
Article 4.01, for a period beginning on Completion of a
particular Research Project Data Set and concluding on the last
day of the calendar quarter in which the one year anniversary of
such Completion occurs (the
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<PAGE>
"Exclusivity Period"), COR shall have exclusive access to such
Research Project Data Set for the purpose of discovering and
developing COR Products for use in the COR Commercial Field. In
addition, CURAGEN grants to COR a fully paid, worldwide, sole
and exclusive license under CURAGEN's interest in the Research
Project Inventions relating to such Research Project Data Set
during such Exclusivity Period to use such Research Project
Inventions for the purpose of discovering and developing COR
Products for use in the COR Commercial Field.
(ii) COR may extend the Exclusivity Period granted by Article
4.00(a)(i) for any Research Project Data Set and CURAGEN's
interest in the Research Project Inventions relating thereto for
up to [XXX] additional [XXXXX] periods by written notice to
CURAGEN [XXXXXX] to the end of the then current Exclusivity
Period and upon payment with such notice of an extension fee of
[XXXXXXXXXXXXXXXXXXXXX] of extension.
(iii) If, upon expiration of the second extension of exclusivity
pursuant to Article 4.00(a)(ii) for a Research Project Data Set,
COR desires permanent and sole exclusive access to such Research
Project Data Set for the purpose of discovering and developing
COR Products for use in the COR Commercial Field, a permanent
exclusive license to CURAGEN's interest in Research Project
Inventions related to such Research Project Data Set for the
purpose of discovering and developing COR Products for use in
the COR Commercial Field, and an exclusive commercial license
pursuant to Article 8.00(b) for COR Products for use in the COR
Commercial Field under CURAGEN Collaboration Intellectual
Property Rights arising from the specific Research Project to
which such Research Project Data Set relates, COR shall give
written notice to CURAGEN, specifying the Research Project Data
Set involved. Such notice shall be accompanied by payment of the
fee specified below per Research Project Data Set based on
17
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the type of COR Product intended to result from the relevant
Research Project as described below.
[XXXXXXXXXXXXXXXXX] [XXXXXXXXX]
[XXXXXXXXXXXXXXXXXX] [XXXXXXXX]
[XXXXXXXXXXXXXXXXX] [XXXXXXXXXXX]
Upon receipt of such notice and payment by CURAGEN, COR's license
under Article 8.00(b) shall become effective for the CURAGEN
Collaboration Intellectual Property Rights arising from the
specific Research Project to which such Research Project Data Set
relates and COR's access under Article 4.00(a) to the specified
Research Project Data Set and license to the relevant Research
Project Inventions shall become permanent and exclusive for the
purpose of discovering and developing COR Products for use in the
COR Commercial Field. Should COR elect not to exercise such
option and take an exclusive license as set forth above,
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
(b) In the event COR elects, or is required, to disclose any Research
Project Data or any Research Project Inventions to any Third Party, COR shall
use commercially reasonable efforts to avoid any disclosures that might
compromise CURAGEN's intellectual property rights in such Research Project Data
or Research Project Inventions or CURAGEN's development or commercialization of
CURAGEN Products.
(c) COR shall: (x) not use Research Project Data Sets for any purpose
other than as expressly provided for above; and (y) keep such Research Project
Data Sets and related Research Project Inventions confidential, except as needed
to apply for and maintain intellectual property protection and/or to exercise
the licenses granted pursuant to this Article 4.00 and Article 8.00,
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<PAGE>
including efforts relating to obtaining regulatory approval of the testing,
manufacture and/or sale of COR Products. In addition, COR may make such Research
Project Data Set available to bona fide collaborators for the purpose of
discovering COR Products for the benefit of COR, [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
4.01 - CURAGEN's Access to Research Project Data Sets and Research Project
Inventions
(a) Notwithstanding the rights granted to COR pursuant to Article 4.00,
during the Research Collaboration Term and thereafter, CURAGEN shall have
exclusive access to the Research Project Data Sets for the purpose of
discovering, developing and commercializing CURAGEN Products for use in the
CURAGEN Commercial Field. COR grants to CURAGEN a fully paid, worldwide, sole
and exclusive license under COR's interest in the Research Project Data Sets and
the Research Project Inventions to use all Research Project Data Sets, the
Research Project Data therein and related Research Project Inventions for the
purpose of discovering, developing and commercializing CURAGEN Products for use
in the CURAGEN Commercial Field.
(b) During the period of exclusivity of COR's access to any Research
Project Data Set pursuant to Article 4.00, CURAGEN shall: (x) not use such
Research Project Data Set for any purpose other than as provided for above; and
(y) keep such Research Project Data Set and related Research Project Inventions
confidential, except as needed to apply for and maintain intellectual property
protection and/or to exercise the licenses granted pursuant to this Article 4.01
or Article IX, including efforts relating to obtaining regulatory approval of
the testing, manufacture and/or sale of CURAGEN Products. In addition, CURAGEN
may make such Research Project Data Set available to bona fide collaborators for
the purpose of discovering CURAGEN Products for the benefit of CURAGEN, provided
however that CURAGEN shall only grant such access subject to the obligation of
such collaborators to grant to CURAGEN an exclusive, worldwide, fully paid and
royalty free license under any inventions made by such
19
<PAGE>
collaborators that are directly derived from such Research Project Data Set
("CURAGEN Collaborator Inventions") to develop, make, have made, use, sell,
offer for sale, import and have imported products for which the active
ingredient is a Small Molecule or Inhibitory Antibody, for use in the COR
Commercial Field.
(c) Upon the expiration of the period of exclusivity of COR's access to
any Research Project Data Set pursuant to Article 4.00, CURAGEN shall have non-
exclusive access to such Research Project Data Set for the purpose of
discovering, developing and commercializing COR Products for use in the COR
Commercial Field. In addition, COR shall, at such time, be deemed to have
granted to CURAGEN a fully paid, worldwide, non-exclusive license under COR's
interest in the Research Project Data Sets and the Research Project Inventions
to use such Research Project Data Sets, the Research Project Data therein and
related Research Project Inventions for the purpose of discovering, developing
and commercializing COR Products for use in the COR Commercial Field and for all
other purposes, including without limitation making such Research Project Data
Set available to Third Parties.
(d) In the event CURAGEN elects, or is required, to disclose any Research
Project Data or Research Project Inventions to any third party, CURAGEN shall
use commercially reasonable efforts to avoid any disclosures that might
compromise COR's intellectual property rights in such Research Project Data or
Research Project Inventions or COR's development or commercialization of COR
Products.
4.02 - Software License
Access to the software contained in the Discovery Tools hereunder, or any
components thereof, is hereby granted according to the following terms:
(a) Such software and display screens are protected by copyright, patent,
trade secret and other intellectual property laws. CURAGEN hereby grants to COR
a non-exclusive non-transferable license to access such software solely for the
purposes of performing the Research Collaboration and during the Research
Collaboration Term. COR shall not copy such software or display screens except
as occurs during the normal course of CURAGEN-provided access.
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<PAGE>
COR shall not reverse engineer, decompile or disassemble such software or
display screens. Such software embodies trade secrets of CURAGEN that are
considered Confidential Information or CURAGEN and subject to the
confidentiality provisions hereof.
(b) Any access to databases or other software of CURAGEN after the
expiration of the Research Collaboration Term shall be provided only pursuant to
written agreement of the Parties, unless otherwise provided herein.
ARTICLE V - FUNDING OF RESEARCH COLLABORATION
5.00 - FTE Fees, Initial Term
In consideration of CURAGEN's performance of the Research Collaboration,
during the Research Collaboration Term, COR will pay CURAGEN an amount equal to
[XXXXXXXXX] per year per FTE. As set forth in Article 3.00(b), unless otherwise
agreed, [XXXX] per Project Year will be used during the Research Collaboration
Term, resulting in a total payment for FTEs [XXXXXXXXXXXXX] per year. This
amount will be paid to CURAGEN quarterly in advance on or before the first day
of the first month of each quarterly period of each Project Year.
5.01 - Access Fees - Initial Term
In addition to the above FTE payments, COR shall pay to CURAGEN
[XXXXXXXXXX] per year, which payment shall provide COR with access to the
Discovery Tools during the Research Collaboration Term. Payments shall be made
quarterly in advance, on or before the first day of the first month of each
quarterly period of each Project Year.
5.02 - Post-Term Access Fees
In the event that COR desires to have continued access to GeneScape(R)
following the expiration of the Research Collaboration Term for the purposes of
analyzing Research Project Data Sets, COR shall be permitted such access solely
for such purpose after first providing written notice to CURAGEN, and upon
payment of the Gene Scape(R) access fee which shall, in such event, be
[XXXXXXXXXXXXXX] per Project Year, payable annually in advance.
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<PAGE>
ARTICLE VI - TREATMENT OF CONFIDENTIAL INFORMATION
6.00 - Confidential Information
During the course of the Research Collaboration each Party may disclose to
the other proprietary technical and business information, (collectively,
"Confidential Information"). Except as expressly permitted hereunder, the
receiving Party shall keep confidential all Confidential Information of the
other Party and will not disclose such Confidential Information of the other
Party to third parties by publication or otherwise. Each Party shall take
reasonable steps to ensure that all of its employees and consultants shall
protect and use Confidential Information of the other Party only in accordance
with the terms hereof. Each Party further agrees not to use Confidential
Information of the other Party for any purpose other than as expressly permitted
hereunder. Such obligations of confidentiality and non-use shall remain in
effect for a period of ten (10) years after the receipt of any such Confidential
Information or, in the case of Confidential Information related to a license
granted pursuant to Article IV, VIII or IX, upon the termination or expiration
of the relevant provisions of this Agreement, whichever event is later.
Notwithstanding the foregoing, the receiving Party's obligations of
confidentiality and nonuse herein shall not apply to any information which:
(a) is, at the time of disclosure by the disclosing Party hereunder, or
thereafter becomes, a part of the public domain or publicly known or available
through no fault or negligence of the receiving Party or any of its Affiliates;
or
(b) was otherwise in the lawful possession of the receiving Party or any
of its Affiliates prior to disclosure by the disclosing Party, as demonstrated
by the receiving Party's written records relative to such information; or
(c) is lawfully disclosed to the receiving Party or any of its Affiliates
on a non-confidential basis by a third party who is not in violation of an
obligation of confidentiality to the disclosing Party relative to such
information; or
(d) was required by law to be disclosed; or
22
<PAGE>
(e) was independently developed by the receiving Party or an Affiliate
without the use of any of the disclosing Party's Confidential Information; or
(f) is required to be disclosed by a governmental or judicial order.
6.01 - Publications
It is expected that each Party may wish to publish the results of its
research under this Agreement. Contributions by the other Party shall be
acknowledged in any publication by the publishing Party. In order to safeguard
intellectual property rights, the Party wishing to publish or otherwise publicly
disclose material which describes or otherwise discloses the other Party's
proprietary technology shall first submit a draft of any proposed manuscript to
the Steering Committee for review, comment and consideration of appropriate
patent application preparation activity at least sixty (60) days prior to any
submission for publication or other public disclosure. The Steering Committee
will advise the Party seeking publication as to whether a patent application
will be prepared and filed or whether trade secret protection should be pursued.
The Steering Committee will, in cooperation with both Parties, determine the
appropriate timing and content of any such publications. The Steering Committee
can, in its discretion, request that the publishing Party delay publication for
up to an additional sixty (60) days for the purpose of preparation of an
appropriate patent application(s). If the Steering Committee is no longer
functioning, its responsibilities under this Article 6.01 will be assigned to a
committee consisting of one person designated by COR and one person designated
by CURAGEN.
6.02 - Press Release and Regulatory Filings
The Parties shall mutually agree on a press release announcing the
execution of this Agreement. Once any written statement is approved for
disclosure by both Parties, either Party may make subsequent public disclosures
of the contents of such statement without the further approval of the other
Party. Nothing in this Agreement shall be construed to prohibit either party
from disclosing factual information or data relating to this Agreement which may
be required by law or the rules of any listing stock exchange or interdealer
quotation system to be disclosed, or disclosing such information to investors,
prospective investors, other sources of financing,
23
<PAGE>
potential acquirers or merger partners, or financial advisors, subject to
appropriate binders of confidentiality as permitted by law or otherwise.
ARTICLE VII - INTELLECTUAL PROPERTY RIGHTS AND THE FILING, PROSECUTION AND
MAINTENANCE OF PATENT RIGHTS
7.00 - COR Proprietary Material
COR Proprietary Material shall remain the property of COR. CURAGEN shall
use such COR Proprietary Material only for the purpose of conducting the
Research Collaboration hereunder and shall not transfer or disclose COR
Proprietary Material to any Third Party.
7.01 - Data
All Research Project Data Sets shall be owned by COR. The Parties' rights
to use Research Project Data Sets shall be governed by the provisions of this
Agreement.
7.02 - Inventions
Each Party shall promptly disclose to the other Party all Research Project
Inventions. Ownership of all Research Project Inventions, and Patent Rights
based thereon, shall vest (a) with COR for all inventions having solely COR
employees or representatives as inventors, (b) with CURAGEN for all inventions
having solely CURAGEN employees or representatives as inventors and (c) jointly
for all inventions having both COR and CURAGEN employees or representatives as
inventors. Inventorship will be determined by U.S. patent law.
7.03 - Filing Prosecution and Maintenance of Patent Rights for Research Project
Inventions Owned Solely by COR
COR shall, at COR's expense, have sole responsibility hereunder to file,
prosecute and maintain patents on all Research Project Inventions owned solely
by COR. CURAGEN agrees to provide reasonable assistance and cooperation to COR
to facilitate such filing, prosecution and maintenance. COR agrees that any
such preparation, filing, prosecution and maintenance shall be conducted
diligently and that CURAGEN shall be kept fully informed of the progress thereof
24
<PAGE>
and provided with copies of all material documents pertaining thereto for COR
owned Research Project Inventions prosecuted by COR and licensed to CURAGEN
hereunder. CURAGEN shall be informed within thirty (30) days of the issuance of
any such patent.
In the event COR elects to discontinue patent protection for any Research
Projection Invention, or part thereof, subject to this Article 7.03, CURAGEN may
assume the prosecution of any such patent application at its own expense and for
COR's benefit.
7.04 - Filing, Prosecution and Maintenance of Patent Rights for Research Project
Inventions Owned Solely by CURAGEN
CURAGEN shall, at CURAGEN's expense, have sole responsibility hereunder to
file, prosecute and maintain patents on all Research Project Inventions owned
solely by CURAGEN. COR agrees to provide reasonable assistance and cooperation
to CURAGEN to facilitate such filing, prosecution and maintenance. CURAGEN
agrees that any such preparation, filing, prosecution and maintenance shall be
conducted diligently and that COR shall be kept fully informed of the progress
thereof and provided with copies of all material documents pertaining thereto
for CURAGEN owned Research Project Inventions prosecuted by CURAGEN and licensed
to COR hereunder. COR shall be informed within thirty (30) days of the issuance
of any such patent.
7.05 - Filing, Prosecution and Maintenance of Patent Rights for Jointly Owned
Research Project Inventions.
Patent Rights on jointly owned Research Project Inventions will be filed,
prosecuted and maintained by independent patent counsel mutually selected by the
Parties. Decisions with respect to such filing, prosecution and maintenance
shall be jointly made by the Parties.
7.06 - Preventing Loss of Patent Rights
The Parties shall mutually agree prior to either Party taking any action
which would (a) permit any patent application or patent within the Patent Rights
to lapse; or (b) amend any patent application or patent within the Patent Rights
so as to irrevocably limit or materially change the
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<PAGE>
lawful scope of such Patent Rights; provided, however, that such obligation
shall not apply to any Patent Rights being prosecuted by one party in which the
other party has no rights (either by ownership or license) hereunder.
7.07 - Notice of Infringement
If, during the term of this Agreement, either Party learns of any
infringement or threatened infringement by a Third Party of the patents within
Patent Rights which affects rights licensed to COR or CURAGEN hereunder, such
Party shall promptly notify the other Party and shall provide such other Party
with available evidence of such infringement.
7.08 - Infringement Litigation
COR shall have the first right (but not the obligation), at its own
expense, to bring suit (or other appropriate legal action) against any actual or
suspected infringement of the Patent Rights owned by COR. CURAGEN shall have the
first right (but not the obligation), at its own expense, to bring suit (or
other appropriate legal action) against any actual or suspected infringement of
the Patent Rights owned by CURAGEN. With respect to Patent Rights that are
jointly owned, COR shall have the first right (but not the obligation), at its
own expense, to bring suit (or other appropriate legal action) against any
actual or suspected infringement of the Patent Rights by a Third Party product
in the COR Commercial Field and CURAGEN shall have the first right (but not the
obligation), at its own expense, to bring suit (or other appropriate legal
action) against any actual or suspected infringement of the Patent Rights by a
Third Party product in the CURAGEN Commercial Field. If the Party given the
first right does not take such action with respect to a jointly owned Patent
Right within one hundred twenty (120) days after written notice from the other
Party of the infringement, then the other Party shall have the right (but not
the obligation), at its own expense, to bring suit against such infringement.
The Party bringing the suit shall have the right to settle such suit. Any amount
recovered, whether by judgment or settlement, shall first be applied to
reimburse the costs and expenses (including attorneys' fees) of the Party
bringing suit, then to the costs and expenses (including attorneys fees), if
any, of the other Party. Any amounts remaining shall be allocated to each party
in
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accordance with each Party's damages incurred on account of such infringement,
calculated in accordance with United States laws pertaining to patent damages.
7.09 - Cooperation
Each Party shall, at the expense of the Party bringing any suit, execute
all papers and perform such other acts as may be reasonably required to maintain
any infringement suit brought in accordance with Article 7.08 above (including
giving legal consent for bringing such suit, and agreeing to be named as a
plaintiff or otherwise joined in such suit), and at its option and expense, may
be represented in such suit by counsel of its choice.
ARTICLE VIII - COMMERCIAL LICENSES TO COR
8.00 - COR Products
(a) Subject to Article 8.00(c), CURAGEN grants to COR a royalty bearing
worldwide, non-exclusive license under CURAGEN Collaboration Intellectual
Property Rights and a non-exclusive license under CURAGEN Background Inventions
for which CURAGEN has the right to grant licenses or sublicenses to develop,
make, have made, use, sell, offer for sale, import and have imported COR
Products for use in the COR Commercial Field. It is agreed that CURAGEN shall
not be obligated to seek sublicense rights for Background Inventions not
otherwise granted by CURAGEN's licensors.
(b) Subject to Article 8.00(c), effective upon the exercise of each option
under Article 4.00(a)(iii) and payment of the fee specified therein, CURAGEN
grants to COR a royalty bearing, worldwide, sole and exclusive license under
CURAGEN Collaboration Intellectual Property Rights covering the specific
Research Project Inventions to which the relevant Research Project Data Set
relates, to develop, make, have made, use, sell, offer for sale and import and
have imported COR Products for use in the COR Commercial Field.
(c) At any time COR identifies a COR Product, COR shall give written
notice to CURAGEN and shall describe and identify such COR Product in such
notice. Upon receipt of such notice, the licenses granted by Articles 8.00(a)
and (b) shall become effective for such COR
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<PAGE>
Product and the access rights and licenses granted by Article 4.00 shall extend
to commercialization of such COR Product; provided, however, that the licenses
granted by Articles 8.00(a) and (b) shall not include rights under any CURAGEN
Background Inventions (i) that have been previously licensed, at the time such
notice is received by CURAGEN, to Third Parties for the type of product
identified by COR in such notice except to the extent permitted by any such
previously granted license or (ii) which cover the making, using or selling of a
product for which CURAGEN has preclinical data at the time such notice is
received by CURAGEN.
8.01 - Sublicenses
COR shall have the right to grant sublicenses under any portion of the
exclusive licenses granted by CURAGEN in Article 8.00 above; provided, however,
that COR remains obligated to ensure any sublicensee's performance, including
the payment of milestones and royalties to CURAGEN pursuant to this Article.
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<PAGE>
8.02 - Royalty Payments
(a) Discovered Products that are within the relevant Project Scope. COR
--------------------------------------------------------------
shall pay CURAGEN a royalty on Net Sales in the Territory of each Discovered
Product that is within the Project Scope of the Research Project from which it
arose equal to (i) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXX].
(b) Discovered Products that are not within the relevant Project Scope.
------------------------------------------------------------------
COR shall pay CURAGEN a royalty on Net Sales in the Territory of each Discovered
Product that is not within the Project Scope of the Research Project from which
it arose equal to (i) [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
(c) Optimized Products. COR shall pay CURAGEN a royalty of [XXX] of Net
------------------
Sales in the Territory of each Optimized Product.
(d) New Indication Products. COR shall pay CURAGEN a royalty on Net Sales
-----------------------
in the Territory of each New Indication Product as follows: (i) [XXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]. Determination of whether the sale of a
New Indication Product triggers a royalty obligation to CURAGEN shall be made in
accordance with the following procedures: COR will make a good faith
determination of the sales volume of New Indication Products using such methods
and practices as are reasonably available to it consistent with its customary
monitoring of COR product sales, and will remit to CURAGEN royalty payments on
such sales of New Indication Products consistent with the
29
<PAGE>
provisions of this Agreement, including providing a royalty statement pursuant
to Article 8.04. In the event that CURAGEN disputes the amount of royalties paid
by COR with respect to New Indication Products, CURAGEN must first exhaust its
audit rights under this Agreement in accordance with Article 8.09. If such
dispute is not resolved through the audit process, CURAGEN may seek resolution
of such dispute according to Article 12.06(b), subject to the following:
(1) The parties may present expert testimony in any arbitration
proceeding brought pursuant to Article 12 in the form of
indication survey evidence or such other evidence or expert
testimony as the offering party wishes to present.
(2) In rendering a decision, the arbitrator may adjust the royalties
due on the New Indication Product sales at issue in such
proceeding either upward or downward in accordance with the
evidence presented at the arbitration by the parties.
In the event the Parties do not otherwise agree on the final royalty for any New
Indication Product, the matter shall be resolved pursuant to Article 12.06.
(e) Highest Royalty Payable. In the event that a COR Product is subject to
-----------------------
more than one royalty pursuant to this Article 8.02, only the highest applicable
royalty shall be paid.
8.03 - Milestone Payments
(i) COR shall make the following milestone payments to CURAGEN for each
Discovered Product at the time of filing of the IND for such Discovered Product:
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<PAGE>
(a) For Discovered Products within the relevant Project Scope:
---------------------------------------------------------
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
(b) For Discovered Products not within the relevant Project Scope:
-------------------------------------------------------------
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]
(ii) COR shall make the following milestone payments to CURAGEN for each
Optimized Product:
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
(iii) COR shall make the highest applicable milestone payment set forth
below to CURAGEN for each New Indication Product upon receipt of marketing
approval:
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
(iv) All such payments shall be made to CURAGEN within thirty (30) days of
the relevant date. For each COR Product which may be tested or sold in any
country without an IND filing or without clinical trials or marketing approval,
any milestone payable upon IND filing for such COR Product shall be payable upon
the commencement of clinical trials (or upon the first submission of an
application for regulatory approval of sale if no clinical trials are required
or upon first commercial sale if no application for regulatory approval of sale
is required), any milestone payable on commencement of a particular phase of
clinical trials will be payable on submission of an application for regulatory
approval of sale or if no such submission is required then upon first commercial
sale, and any milestones payable on marketing approval for such COR Product will
be payable upon first commercial sale of such COR Product in any country in the
world.
(v) Payment Limitations. For a given COR Product, COR will make each
-------------------
payment under Article 8.03 only once for a given COR Product directed to a
particular Target for a particular clinical indication.
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8.04 - Remittance of Payments
The royalties due under this Article VIII shall be calculated quarterly as
of March 31, June 30, September 30, and December 31 and shall be paid within
sixty (60) days after the end of the quarterly period in which such royalties
are accrued. With each such quarterly payment, COR shall furnish CURAGEN a
royalty statement setting forth on a country-by-country and COR Product-by-COR
Product basis, the relevant sales information, including at least the quantity
of each COR Product sold in each country, total Net Sales of each COR Product in
each country, the calculation of Net Sales and the royalty payable to CURAGEN.
8.05 - Foreign Currency Conversions
All payments to be made under this Agreement, including the royalties
payable to CURAGEN by COR, shall be paid by COR in the United States in U.S.
dollars regardless of the countries in which sales are made. Payment shall be
made by wire transfer or other mutually acceptable means to a bank account
designated by CURAGEN. Whenever, for the purpose of calculating royalties,
conversion from any foreign currency shall be required to determine Net Sales,
the amount of such sales in foreign currencies shall be converted into U.S.
dollars, using the rate of exchange for buying U.S. dollars set forth in the
Wall Street Journal for the last business day of the calendar quarter.
8.06 - Taxes Withheld
Any income or other tax that COR is required by a government agency to
withhold and pay on behalf of CURAGEN with respect to the royalties payable
under this Agreement shall be deducted from and offset against said royalties
prior to remittance to CURAGEN; provided, however, that in regard to any tax so
deducted, COR shall give or cause to be given to CURAGEN such assistance as may
reasonably be necessary to enable CURAGEN to claim exemption therefrom or credit
therefor, and in each case shall furnish CURAGEN proper evidence of the taxes
paid on CURAGEN's behalf.
8.07 - Duration of Royalties
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The term of any royalty obligation hereunder shall, with respect to each
COR Product, be on a country-by-country basis until the later of
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
8.08 - Overdue Payments
Payments not made within the time periods set forth in this Article VIII
shall bear interest at a rate of one percent (1%) per month (or the highest rate
allowed by law, if lower) from the due date until paid in full.
8.09 - Records Retention. Audits
COR, its Affiliates, licensees and sublicensees shall keep, for three (3)
years from the date of each payment of royalties, complete and accurate records
of sales by COR and its Affiliates, licensees, and sublicensees of each COR
Product in sufficient detail to allow the accruing royalties to be determined
accurately. CURAGEN shall have the right for a period of three (3) years after
receiving any report or statement with respect to royalties due and payable to
appoint an independent certified public accountant reasonably acceptable to COR
to inspect the relevant records of COR and its Affiliates, licensees and
sublicensees to verify such report or statement. COR and its Affiliates,
licensees, and sublicensees shall each make its records available for inspection
by such independent certified public accountant during regular business hours at
such place or places where such records are customarily kept, upon reasonable
notice from CURAGEN, solely to verify the accuracy of the reports and payments.
Such inspection right shall not be exercised more than once in any calendar year
nor more than once with respect to sales of any COR Product in any given payment
period. CURAGEN agrees to hold in strict confidence all information concerning
royalty payments and reports, and all information learned in the course of any
audit or inspection, except to the extent necessary for CURAGEN to reveal such
information in order to enforce its rights under this Agreement or if disclosure
is required by law, regulation or judicial order. CURAGEN shall pay for such
inspections.
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In the event that such audit shall indicate that in any calendar year the
royalties which should have been paid by COR are greater than those which were
actually paid by COR, then COR shall promptly pay the underpaid amount to
CURAGEN and, if the royalties which should have been paid are at least five
percent (5%) greater than the amount actually paid, shall also reimburse CURAGEN
for the cost of such audit.
ARTICLE IX - COMMERCIAL LICENSES TO CURAGEN
9.00 License to CURAGEN for CURAGEN Products
COR hereby grants to CURAGEN, under COR's rights in and to (i) Research
Project Data Sets, the Research Project Data therein, Research Project
Inventions, and Patent Rights related thereto, and (ii) COR Collaborator
Inventions a fully paid, worldwide, sole and exclusive license to develop, make,
have made, use, have used, sell, have sold, offer for sale, import and have
imported CURAGEN Products for use in the CURAGEN Commercial Field. Such license
shall include the right to grant sublicenses.
9.01 License to CURAGEN where COR has Non-Exclusive Rights
COR hereby grants to CURAGEN, under COR's rights in and to Research Project
Data Sets, the Research Project Data therein, Research Project Inventions, and
Patent Rights related thereto for which COR's rights are not exclusive pursuant
to Article IV and Article VIII, a fully paid, worldwide, non-exclusive license
to develop, make, have made, use, have used, sell, have sold, offer for sale,
import and have imported COR Products. Such license shall include the right to
grant sublicenses.
9.02 Unblocking Licenses to CURAGEN
In connection with the grant of a license to CURAGEN pursuant to Article
9.00 and 9.01 above, upon written request of CURAGEN, COR shall grant to
CURAGEN, a fully paid, worldwide, non-exclusive license to any COR Background
Inventions for which COR has the right to grant licenses or sublicenses, solely
to the extent necessary to allow CURAGEN to practice the licenses granted to
CURAGEN herein, provided however that COR shall not be
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obligated to seek sublicense rights not otherwise granted by COR's licensors. As
used in this Article 9.02, "COR Background Inventions" shall mean all inventions
claimed in an issued patent or patent application owned or controlled by COR and
all know-how related to such inventions, which would be infringed by CURAGEN's
developing, making, having made, using, selling, offering for sale, or importing
of a CURAGEN Product or a COR Product.
ARTICLE X - NOTIFICATION OF PRODUCTS, RIGHT OF FIRST NEGOTIATION
10.00 - Notification of Product Identification
(a) At any time COR identifies a COR Product or Protein Therapeutic
Product, COR shall promptly give written notice to CURAGEN. At any time COR
identifies a product whose discovery, development, manufacture, use or sale
incorporates or makes use of any Research Project Data Set and/or Research
Project Invention which COR does not believe is material, COR shall also
promptly give written notice to CURAGEN, specifying the actual incorporation or
use and the basis for COR's belief that it is not material. At any time CURAGEN
identifies a COR Product directly derived from a Research Project Data Set for
which the Exclusivity Period remains in effect or a Protein Therapeutic Product,
CURAGEN shall promptly give written notice to COR. Any such notice shall
describe and identify such COR Product or Protein Therapeutic Product in
reasonable detail.
(b) If CURAGEN disagrees with COR's determination of material use of a
Product Data Set or Research Project Invention in a notice given under Article
10.00, the provisions of Article 12.06 shall apply.
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10.01 - Notification of IND Filing
(a) COR shall give written notice to CURAGEN of the filing of an IND for
any COR Product. Such notice shall describe and identify the COR Product for
which the IND was filed and shall include COR's conclusion as to (i) whether the
COR Product is a Discovered Product, Optimized Product or New Indication
Product, and (ii) which royalty rate and milestones are applicable to such COR
Product under Articles 8.02 and 8.03.
(b) If CURAGEN disagrees with COR's determination of whether a product is
a Discovery Product, an Optimized Product or a New Indication Product or which
royalty rate and milestones are applicable to such COR Product under Articles
8.02 and 8.03, the provisions of Article 12.06 shall apply.
10.02 - Right of First Negotiation
(a) For each [XXX] FTEs that COR funds hereunder during any consecutive
twelve (12) month period of the Research Collaboration Term, COR shall have a
right of first negotiation to co-develop with CURAGEN [XXXXXX] on terms to be
negotiated in good faith by the Parties as set forth below. For example, if COR
funds [XXXXXX], COR will have a right of first negotiation for [XXXXXXXXXXX].
(b) The availability of such right of first negotiation shall commence
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXX].
(i) Upon receipt of such notice under Article 10.02(b), the Party
receiving the notice ("Receiving Party") shall have sixty (60) days after
receipt of the notice to provide a written response to the Party giving the
notice ("Notifying Party") as to whether or not it wishes to enter into
negotiations concerning co-development of such Protein Therapeutic Product.
(ii) If CURAGEN is the Notifying Party and does not receive a response
from COR within such sixty (60) day period, or if [XXXXXXXXXXXXXXXXXXXXXXXXX
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<PAGE>
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
[XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX].
(iii) If COR is the Notifying Party, the parties shall negotiate the
possible co-development of such Protein Therapeutic Product in good faith for
the period of ninety (90) days. If no agreement is reached, the provisions of
this Article 10.02 shall continue to apply with respect to such Protein
Therapeutic Product for the balance of the relevant two (2) year period.
ARTICLE XI - TERMINATION
11.00 - Termination
COR may terminate the Research Collaboration without cause at its sole
discretion upon six (6) months prior written notice to CURAGEN; provided,
however, that neither party shall have the right to terminate the Research
Collaboration prior to the expiration of the first eighteen (18) months of the
Research Collaboration Term.
11.01 - Effects of Termination Under Article 11.00 Upon Rights of the Parties
Any termination of the Research Collaboration under Article 11.00 shall be
without prejudice to the rights of any Party then accruing or otherwise accrued
under this Agreement. Upon any such termination, all remaining COR Proprietary
Materials or CURAGEN Proprietary Materials provided to the other Party hereunder
shall be destroyed or returned to the providing Party, except to the extent any
such materials are subject to a surviving license or right of use hereunder.
11.02 - Termination with Cause
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This Agreement and the rights and licenses granted by one Party to the
other hereunder may be terminated upon any material breach by the other Party of
any material obligation or condition, effective thirty (30) days after giving
written notice to the breaching Party of such termination in the case of a
payment breach and sixty (60) days after giving written notice to the breaching
Party of such termination in the case of any other material breach, which notice
shall describe such breach in reasonable detail. The foregoing notwithstanding,
if the default or breach is cured or shown to be non-existent within the
aforesaid thirty (30) or sixty (60) day period, the notice shall be deemed
automatically withdrawn and of no effect.
11.03 - Termination Following Bankruptcy
If either Party files for protection under bankruptcy laws, makes an
assignment for the benefit of creditors, appoints or suffers appointment of a
receiver or trustee over all or substantially all of its property, files a
petition under any bankruptcy or insolvency act or has any such petition filed
against it which is not discharged within sixty (60) days of the filing thereof,
then the other Party may terminate this Agreement by notice to such Party.
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11.04 - Effect of Termination under Article 11.02
Upon termination of this Agreement under Article 11.02 by a Party, all
relevant licenses granted by the terminating Party to the breaching Party
hereunder shall terminate automatically. In addition, upon any termination
pursuant to Article 11.02, the breaching Party shall be deemed without any
further action to have forfeited its rights to commercialize any products which
are COR Products (if the breaching Party is COR) or CURAGEN Products or COR
Products (if the breaching Party is CURAGEN).
11.05 - Obligations
All Parties shall remain liable for all obligations accruing prior to the
date of termination.
11.06 - Remedies
If either Party shall fail to perform or observe its material obligations,
or otherwise breaches any of its material obligations under this Agreement, in
addition to any right to terminate this Agreement, the non-defaulting Party
shall have the right to any other relief or remedies available under law or
equity.
11.07 - Surviving Provisions
Notwithstanding any provision herein to the contrary, the rights and
obligations set forth in Articles 4.00, 4.01 and Articles VI, VII, VIII, IX, X,
XI and XII, shall survive the normal expiration or early termination of this
Agreement; provided, however, that if this Agreement is terminated due to breach
by COR, COR shall have no continuing rights under Article 4.00, Article VIII, or
Article X, and if this Agreement is terminated due to breach by CURAGEN, CURAGEN
shall have no continuing rights under Article 4.01 or Article IX.
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<PAGE>
ARTICLE XII - MISCELLANEOUS
12.00 - CURAGEN Representations and Covenants
CURAGEN represents and warrants that: (a) the execution and delivery of
this Agreement and the performance of the transactions contemplated hereby have
been duly authorized by all appropriate CURAGEN corporate actions; (b) CURAGEN
is under no obligation which is inconsistent with this Agreement, except as
specifically set forth herein; (c) CURAGEN has the full right and legal capacity
to grant the rights to COR set forth in Section 4.02 and Article VIII; and that
(d) CURAGEN's GeneScape(R) software is "Year 2000" compliant to the extent that
CURAGEN is responsible for creation of the GeneScape(R) executable code, i.e.,
the GeneScape(R) executable code created by CURAGEN will properly record, store
and process dates, and calculate spans of time between dates, on and following
January 1, 2000. (However, COR acknowledges that the GeneScape(R) system is
dependent on software from a variety of vendors including but not limited to:
(a) the Solaris Operating System (and associated compilers); (b) the Oracle
relational database system; and (c) the Oracle Web Server. While CURAGEN is
making reasonable effort to insure that the externally supplied software on
which CURAGEN depends is Year 2000 compliant, CURAGEN does not warrant against a
GeneScape(R) failure as a result of non-compliance on the part of one or more of
its external suppliers. CURAGEN also does not warrant the compliance of other
providers that may affect COR's ability to use GeneScape(R), including those
portions of the internet beyond CURAGEN's control and the computing platform and
web browsing software in use by COR. CURAGEN covenants that (a) CURAGEN will
obtain from its employees and consultants rights of assignment with respect to
all Research Project Inventions; and (b) CURAGEN will not, without COR's prior
written consent, enter into any agreement with any third party that would
prevent CURAGEN's performance of CURAGEN's obligations to COR under this
Agreement.
12.01 - COR Representations and Covenants
COR represents and warrants that: (a) the execution and delivery of this
Agreement and the performance of the transactions contemplated hereby have been
duly authorized by all appropriate COR corporate actions; (b) COR is under no
obligation which is inconsistent with
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this Agreement; and (c) COR has the full right and legal capacity to grant the
rights to CURAGEN set forth to Article IX. COR covenants that (a) COR will
obtain from its employees and consultants rights of assignment with respect to
all Research Project Inventions; and (b) COR will not, without CURAGEN's prior
written consent, enter into any agreement with any third party that would
prevent COR's performance of COR's obligations to CURAGEN under this Agreement.
12.02 - Entire Agreement
The provisions contained in this Agreement constitute the entire agreement
between the Parties with respect to the subject matter and supersede all
previous communications, representations and agreements (whether verbal or
written) between the Parties with respect to the subject matter hereof,
including, without limitation, the Confidential Disclosure Agreement dated April
23, 1998 between the Parties.
12.03 - No Warranties
(a) Nothing in this Agreement is or shall be construed as:
(i) a warranty or representation by either Party as to the validity
or scope of any application or patent;
(ii) a warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted pursuant to this
Agreement is or will be free from infringement of patents,
copyrights, and other rights of Third Parties.
(b) Except as expressly set forth above in this Agreement,
NEITHER PARTY MAKES ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES OF ANY
KIND, EITHER EXPRESS OR IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY, FITNESS, FITNESS FOR A PARTICULAR PURPOSE, OR OF NON-
INFRINGEMENT OF ANY PATENT,
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COPYRIGHT, TRADEMARK, OR OTHER RIGHTS, OR ANY OTHER EXPRESS OR IMPLIED
WARRANTIES.
12.04 - Liability
NOTWITHSTANDING ANYTHING ELSE IN THIS AGREEMENT OR OTHERWISE, NEITHER PARTY
WILL BE LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF THIS AGREEMENT UNDER ANY
CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL OR EQUITABLE THEORY FOR
(I) ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE DAMAGES OR LOST PROFITS
OR (II) COST OF PROCUREMENT OF SUBSTITUTE GOODS, TECHNOLOGY OR SERVICES.
12.05 - Notices
Any notices, requests, deliveries, approvals or consents required or
permitted to be given under this Agreement to COR or CURAGEN shall be in writing
and shall be personally delivered or sent by facsimile (with written
confirmation to follow via United States first class mail), overnight courier
providing evidence of receipt or certified mail, return receipt requested,
postage prepaid, in each case to the respective address specified below (or to
such address as may be specified in writing to the other Party hereto):
If to CURAGEN: 555 Long Wharf Drive, 11/th/ Floor
New Haven, CT 06511
Attn: Vice President, Business Development
Fax: (203) 401-3333
With a copy to: Mintz, Levin, Cohn, Ferris,
Glovsky and Popeo, P.C.
One Financial Center
Boston, MA 02111
Attn: Jeffrey M. Wiesen, Esq.
Fax: (617) 542-2241
If to COR: 256 East Grand Avenue
South San Francisco, CA 94080
Attn: President
Fax: (650) 244-9208
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Such notices shall be deemed to have been sufficiently given on: a) the date
sent if delivered in person, b) the next business day after dispatch in the case
of transmission by facsimile or overnight courier or c) five (5) business days
after deposit in the US mail in the case of certified mail.
12.06 - Dispute Resolution and Arbitration
(a) If CURAGEN disagrees with COR's determination with respect to material
use of a Project Data Set or Research Project Invention in a notice given under
Article 10.00 or with COR's determination of the type of COR Product or which
royalty rate or milestone payment is applicable for any COR Product under
Articles 8.02 and 8.03 in a notice given under Article 10.01, then CURAGEN will
have a period of 6 months, beginning from the receipt of the notice under
Article 10.00 or Article 10.01, to notify COR of the dispute. The Parties will
each designate one representative who will negotiate in good faith for a period
of 120-days to resolve the dispute. The 120-day negotiation period will begin
30 days after CURAGEN notifies COR in writing of the dispute. If the Parties
fail to resolve the dispute during such 120-day period, then the issue will be
resolved by binding arbitration as set forth in Article 12.06(b).
(b) Any dispute that is not resolved pursuant to Article 12.06(a) and any
other dispute arising out of or relating to this Agreement, or any alleged
breach of this Agreement, shall be settled by binding arbitration in accordance
with the Rules of the American Arbitration Association ("AAA"), except as
modified by this Article 12. Each arbitration shall be conducted by three
arbitrators, consisting of one arbitrator chosen by each party and the third
arbitrator chosen by the first two so chosen. No arbitrator shall be affiliated
with either Party. In the event that the first two arbitrators are not able to
agree upon and choose a third arbitrator, the third arbitrator shall be
appointed in accordance with the Commercial Arbitration Rules of the AAA. The
arbitration proceeding shall be conducted in the English language in either New
Haven, Connecticut, if initiated by COR, or in South San Francisco, California,
if initiated by CURAGEN, unless the Parties agree to conduct the arbitration in
another location. The arbitration shall be binding and not appealable to any
court in any jurisdiction. The prevailing
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Party may enter the arbitration decision in any court having competent
jurisdiction. The losing Party shall pay the costs of arbitration.
12.07 - Currency
Unless otherwise indicated, all monetary amounts referred to in this
Agreement are in United States currency.
12.08 - Further Assurances
The Parties agree to execute such further documents and to do such further
acts as may be necessary to implement and carry out the intent of this
Agreement.
12.09 - Limitations
Except as expressly set forth in this Agreement, neither Party grants to
the other Party any right or license to any of its respective intellectual
property.
12.10 - Waiver
The terms or conditions of this Agreement may be waived only by a written
instrument executed by the Parties hereto. The failure of any Party at any time
or times to require performance of any provision hereof shall in no manner
affect its rights at a later time to enforce the same. No waiver by any Party of
any condition or term shall be deemed as a continuing waiver of such condition
or term or of another condition or term.
12.11 - Assignment
This Agreement may not be assigned by either Party without the consent of
the other, except that each Party may, without such consent, assign this
Agreement and the rights, obligations and interests of such Party, in whole or
in part, to any of its Affiliates, to any purchaser of all or substantially all
of its assets in the line of business to which this Agreement pertains or to any
successor corporation resulting from any merger or consolidation of such Party
with or into such corporations.
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12.12 - Force Majeure
Neither Party shall be liable for failure of or delay in performing
obligations set forth in this Agreement, and neither shall be deemed in breach
of its obligations, if such failure or delay is due to natural disasters or any
causes beyond the reasonable control of such Party. In the event of such force
majeure, the Party affected thereby shall use reasonable efforts to cure or
overcome the same and resume performance of its obligations hereunder.
12.13 - Construction
The Parties hereto acknowledge and agree that: (i) each Party and its
counsel reviewed and negotiated the terms and provisions of this Agreement and
have contributed to its revision; (ii) the rule of construction to the effect
that any ambiguities are resolved against the drafting Party shall not be
employed in the interpretation of this Agreement; and (iii) the terms and
provisions of this Agreement shall be construed fairly as to all Parties hereto
and not in favor of or against any Party, regardless of which Party was
generally responsible for the preparation of this Agreement.
12.14 - Severability
If any provision(s) of this Agreement are or become invalid, are ruled
illegal by any court of competent jurisdiction or are deemed unenforceable under
then current applicable law from time to time in effecting during the Term
hereof, it is the intention of the Parties that the remainder of this Agreement
shall not be affected thereby provided that a Party's rights under this
Agreement are not materially affected, in which circumstance the Parties hereto
covenant and agree to renegotiate any such term, covenant or application of this
Agreement in good faith in order to provide a reasonably acceptable alternative
to the term, covenant or condition of this Agreement or the application thereof
that is invalid, illegal or unenforceable, it being the intent of the Parties
that the basic purposes of this Agreement are to be effectuated.
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12.15 - Status
Nothing in this Agreement is intended to, or shall be deemed to, constitute
a partnership, agency, employer-employee, or joint venture relationship between
the Parties. Neither Party shall have the right to bind the other Party or to
act on behalf of the other Party.
12.16 - COR Indemnification of CURAGEN
COR shall indemnify, defend and hold harmless CURAGEN, its Affiliates and
their respective directors, officers, employees, and agents and their respective
successors, heirs and assigns (the "CURAGEN Indemnitees"), against any and all
liability, damage, loss or expense (including reasonable attorneys' fees and
expenses of litigation) incurred by or imposed upon the CURAGEN Indemnitees, or
any of them, in connection with any claims, suits, actions, demands or judgments
of third parties, including without limitation personal injury matters, arising
out of or relating to (i) the performance of the Research Collaboration by COR
(including, without limitation, the supply of samples for use in the Research
Collaboration) (ii) the development, manufacture, use or sale of any COR
Product, or (iii) COR's breach of any of its representations to CURAGEN set
forth in Section 12.01.
12.17 - CURAGEN Indemnification of COR
CURAGEN shall indemnify, defend and hold harmless COR, its Affiliates and
their respective directors, officers, employees, and agents and their respective
successors, heirs and assigns (the "COR Indemnitees"), against any liability,
damage, loss or expense (including reasonable attorneys' fees and expenses of
litigation) incurred by or imposed upon the COR Indemnitees, or any of them, in
connection with any claims, suits, actions, demands or judgments of third
parties, including without limitation personal injury matters, arising out of or
relating to (i) the performance of the Research Collaboration by CURAGEN (except
to the extent such claims, suits, actions, demands or judgments are based on the
use of the samples or information provided to CURAGEN by COR under this
Agreement); (ii) the development, manufacture, use or sale of any CURAGEN
Product, or (iii) CURAGEN's breach of any of its representations to COR set
forth in Section 12.00.
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12.18 - Governing Law
This Agreement shall be governed and construed in accordance with the laws
of the State of Connecticut, without application of its principles of conflict
of law.
12.19 - Captions and Headings
The captions and headings appearing in this Agreement have been inserted
for reference and as a matter of convenience and in no way define, limit or
enlarge the scope or meaning of this Agreement or any provision.
12.20 - Amendments
Any amendment to this Agreement shall only be effective if the amendment is
in writing and is signed by all the Parties to this Agreement.
12.21 - Counterparts
This Agreement may be executed in facsimile counterparts, each of which
shall be deemed to be an original and all of which together shall constitute one
and the same Agreement.
[Remainder of Page Intentionally Left Blank]
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed
as of the date first set forth above by their duly authorized representatives in
two (2) originals.
COR THERAPEUTICS INC.
By: /s/ Charles J. Homcy, M.D.
Name
and Title: Charles J. Homcy, M.D. - Executive Vice President Research and
--------------------------------------------------------------
Development
-----------
Date: May 1, 1999
-----------
CURAGEN CORPORATION
By: /s/ Peter A. Fuller, Ph.D.
--------------------------
Name
and Title: Peter A. Fuller, Ph.D., Vice President, Business Development
------------------------------------------------------------
Date: May 1, 1999
-----------
48
