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Exhibit 10.5
RESEARCH COLLABORATION AGREEMENT
BETWEEN
GEMINI RESEARCH LIMITED
AND
RAPIGENE, INC.
Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
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TABLE OF CONTENTS
Page
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1.
Definitions ............................................................... 1
Research Collaboration .................................................... 3
Research Plan ....................................................... 3
Project Leaders ..................................................... 3
Research Funding .................................................... 3
Recordkeeping ....................................................... 4
Ownership of and Rights to Associations ................................... 4
Joint Ownership ..................................................... 4
Grant of License in Gemini Field .................................... 4
Grant of License in Rapigene Field .................................. 4
Nonexclusive License to Associations Outside the Parties' Fields .... 5
Reservation and Clarification of Rights ............................. 5
Gemini Grant of Right of First Negotiation to Chiroscience .......... 5
Payment Obligations ....................................................... 6
Payment Obligations ................................................. 6
Payments and Related Reports ........................................ 7
Withholding Tax ..................................................... 7
Maintenance and Examination of the Books and Records ................ 7
Patent Rights ............................................................. 8
Patent Applications ................................................. 8
Infringement ........................................................ 9
Confidentiality ........................................................... 9
Confidentiality of Disclosed Information ............................ 10
Information Under the Research Plan ................................. 11
Publicity; Publications; Use of Name and Trademarks ....................... 11
Publicity Related to This Agreement ................................. 11
Publication ......................................................... 11
Use of Name and Trademarks .......................................... 12
Indemnification ........................................................... 12
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Research Collaboration Activities .................................... 12
Post-Research Plan Development and Commercialization ................. 12
Warranties and Covenants .................................................. 13
Term and Termination ...................................................... 14
Miscellaneous ............................................................. 15
Agency ............................................................... 15
Limitation of Liability .............................................. 15
Assignment ........................................................... 15
Further Actions ...................................................... 15
Force Majeure ........................................................ 15
Notices .............................................................. 16
Amendment; Approval .................................................. 17
Waiver ............................................................... 17
Counterparts ......................................................... 17
Descriptive Headings ................................................. 17
Governing Law; Venue ................................................. 17
Severability ......................................................... 17
Compliance with Law .................................................. 18
Entire Agreement of the Parties ...................................... 18
Exhibit 1. Research Collaboration Plan
ii
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RESEARCH COLLABORATION AGREEMENT
THIS RESEARCH COLLABORATION AGREEMENT (the "Agreement") is made and
entered into as of 21st September, 1998 (the "Effective Date"), by and between
Rapigene, Inc., a Delaware corporation ("Rapigene"), and Gemini Research
Limited, a corporation of the United Kingdom ("Gemini").
RECITALS
WHEREAS, Gemini has developed and is continuing to develop an extensive
clinical/genetic database valuable in the identification and location of both
primary and secondary genes involved in diseases and conditions;
WHEREAS, Rapigene has developed and is continuing to develop a system
incorporating DNA hybridization buffers and DNA tags that can speed the
identification of single-nucleotide polymorphisms ("SNPs") and facilitate the
identification and understanding of the genetic components of common human
diseases and conditions; and
WHEREAS, through this Agreement, Gemini and Rapigene desire, using
Gemini's database and Rapigene's system, to identify associations between
genotypes and obesity;
NOW THEREFORE, the parties agree as follows:
AGREEMENT
1. Definitions. As used in this Agreement, the following terms shall
have the following meanings:
1.1 "Affiliate" means a corporation, partnership, trust or other
entity that directly, or indirectly through one or more
intermediaries, controls, is controlled by or is under common
control with a party to this Agreement. For such purposes,
"control" or "controlled by" and "under common control with"
shall mean the possession of the power to direct or cause the
direction of the management and policies of an entity, whether
through the ownership of voting stock or partnership interest,
by contract or otherwise. In the case of a corporation, the
direct or indirect ownership of more than fifty percent (50%)
of its outstanding voting shares shall in any event be deemed
to confer control, it being understood that the direct or
indirect ownership of a lesser percentage than such shares
shall not necessarily preclude the existence of control.
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1.2 "Association" means any statistically significant correlation
between any genotypes and any phenotypes that are discovered
in the performance of the research collaboration described in
the Research Plan conducted under this Agreement.
1.3 "Gemini Field" has the meaning set forth in Section 3.2.
1.4 "Obesity" means the disease state or propensity towards the
disease state resulting in an accumulation of body fat
sufficient to endanger the health of the individual as
measured by the following phenotypes: (i) Body Mass
Index (BMI), and (ii) Total Fat Mass.
1.5 "Rapigene Field" has the meaning set forth in Section 3.3.
1.6 "Net Revenue" means (i) the gross amount of all license fees,
milestone payments and other amounts or value received by a
party or its Affiliate from a non-Affiliate third party in
exchange for its transfer of some or all of its rights to
Associations in its Field (respectively, the Gemini Field or
the Rapigene Field), including without limitation, all fees
and royalties paid by a non-Affiliate sublicensee to a party
or a party's Affiliate pertaining to Associations in a party's
Field or products containing or derived from such
Associations; and (ii) all Net Sales by a party or its
Affiliate pertaining to products containing or derived from
Associations in a party's Field. Any revenue of a party or its
Affiliate derived from a combination of (a) the licensing or
other transfer of rights to Associations within a party's
Field or the sale of products containing or derived from such
Associations, with (b) rights in other intellectual property
rights or other material owned or controlled by a party or its
Affiliate (including Associations outside a party's Field, as
described in Section 3.4), shall be allocated in good faith by
such party between revenue based on the value of the rights
described in clause (a) above (which shall be deemed to be Net
Revenue) and the value of the other rights transferred, which
shall be excluded from Net Revenue. Further, amounts received
by a party for the issuance of equity at fair market value or
actual research and development funding for research conducted
by a party involving, but independent of, the transfer of
rights described in clause (a) above shall not be deemed Net
Revenue, provided that all value provided for the transfer of
such rights shall be included in Net Revenue.
1.7 "Net Sales" means the gross amount invoiced by Gemini or
Rapigene, or their respective Affiliates, for the sale of
products containing or derived from Associations in their
respective Fields
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(respectively, the Gemini Field or the Rapigene Field) to
non-Affiliated third parties, less (to the extent included in gross
invoiced sales): (a) customary trade, cash and quantity discounts
actually allowed and taken; (b) allowances actually given for
returned or rejected products; (c) actual charges for bad debts; (d)
freight and insurance if included in the price; (e) government
mandated and other rebates; and (f) value added tax, sales, use or
turnover taxes, excise taxes and customs duties included in the
invoiced price.
1.8 "Research Plan" means the plan attached hereto as Exhibit 1, as
modified from time-to-time by mutual written agreement of the
parties.
1.9 "SNP" means single-nucleotide polymorphism.
2. Research Collaboration.
2.1 Research Plan. The Research Collaboration Plan (the "Research Plan")
is attached as Exhibit 1 hereto and incorporated herein by
reference. The Research Plan is subject to modification by mutual
written agreement of the parties. Gemini and Rapigene will each
endeavor in good faith to perform the tasks allocated to it under
the Research Plan in timely fashion, with the objective of
identifying Associations relating to Obesity; provided, that neither
party warrants or guarantees that its activities will achieve the
objective of the Research Plan. All studies, research and testing
done by or on behalf of the parties pursuant to the Research Plan
shall be performed in strict compliance with all applicable laws and
regulations governing the conduct of such activities.
2.2 Project Leaders. Each party shall select and identify to the other
party a Project Leader who shall serve as a liaison to the other
party throughout the performance of research under the Research
Plan. The Project Leaders shall plan, coordinate and manage the
overall project and serve as the principal points of communication
between the parties. The parties' Project Leaders will communicate
as frequently as they deem appropriate and will periodically
exchange written and other reports regarding their progress in
performing their tasks under the Research Plan. They shall also
endeavor to resolve any issues or disputes that may arise between
the parties expeditiously and amicably.
2.3 Research Funding. Each party shall bear its own costs and expenses
incurred in connection with the tasks performed by it under the
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Research Plan; provided, that Gemini will reimburse Rapigene for
Rapigene's out-of-pocket costs incurred in acquiring the * to be
used by Rapigene in the performance of its tasks under the Research
Plan, such reimbursement to be due from Gemini within thirty (30)
days of Gemini's receipt of an invoice from Rapigene for such *
2.4 Recordkeeping. Each party shall record, to the extent practical, all
information relating to its performance of tasks under the Research
Plan in standard laboratory notebooks, which shall be signed, dated
and witnessed. Each party shall require its employees and
consultants to disclose any inventions relating to the Research Plan
in writing promptly after conception.
3. Ownership of and Rights to Associations.
3.1 Joint Ownership. All Associations, identified by either party in the
course of performing tasks under the Research Plan shall be jointly
owned by Gemini and Rapigene, subject to the license grants set
forth below.
3.2 Grant of License in Gemini Field. Rapigene hereby grants to
Gemini an exclusive, worldwide, royalty-bearing, transferable
license, with the right to grant sublicenses, to any
Association(s) relating to Obesity discovered in the performance
of the Research Plan, and any patent rights and other
intellectual property rights pertaining to such Association(s),
but solely for use in the Gemini Field. The Gemini Field is
limited to therapeutic and prophylactic compositions and methods
identified or discovered using or derived from Associations
between genotypes and Obesity discovered in the performance of
research under the Research Plan and the use of such Associations
to develop products for the treatment or prevention of Obesity.
Gemini's license is subject to its payment obligations under
Section 4.
3.3 Grant of License in Rapigene Field. Gemini hereby grants Rapigene
an exclusive, worldwide, royalty-bearing, transferable license,
with the right to grant sublicenses, to any Association(s)
relating to Obesity, discovered in the performance of the
Research Plan and any patent rights and other intellectual
property rights pertaining to such Association(s), but solely for
use in the Rapigene Field. The Rapigene Field is limited to
diagnostic and prognostic compositions and methods identified or
discovered using or derived from Associations between genotypes
and Obesity discovered in the performance of research under the
Research Plan and the use of such Associations to develop
products for the diagnosis or prognosis of Obesity. Rapigene's
license is subject to its payment obligations under Section 4.
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Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
<PAGE>
3.4 Nonexclusive License to Associations Outside the Parties' Fields. While
not anticipated by either party that data generated under the Research
Plan would result in Associations other than relating to Obesity
discovered in the course of research under the Research Plan, each
party hereby grants the other party a non-exclusive, transferable,
worldwide, paid-up, royalty-free license, with the right to grant
sublicenses, to any such Associations, any patent rights and other
intellectual property rights pertaining to such Associations, and any
products containing or derived from such Associations. For the sake of
clarification, the grant of rights in this Section 3.4 includes,
without limitation, Associations between any genotypes and any diseases
to which obesity relates, excluding the condition of Obesity itself.
3.5 Reservation and Clarification of Rights. For the sake of clarification,
and subject to each party's exclusive rights in its respective Field as
described in Sections 3.2 and 3.3 above, Gemini and Rapigene each reserves
the right to use the candidate genes and the SNPs analyzed in the course
of the Research Plan (to the extent allowable and not in contradiction to
any obligations to a third party that may exist, e.g. restrictions on use
based on Informal Consents) for any and all other purposes outside the
other party's exclusive Field, with no monetary or other obligations to
the other party. Except as expressly provided in this Agreement, nothing
in this Agreement shall be construed as providing a license of one party's
proprietary technology to the other party or as limiting either party's
right to use or otherwise license its own proprietary technology or
intellectual property.
3.6 Gemini Grant of Right of First Negotiation to Chiroscience. (a) Gemini
hereby grants to Chiroscience Group plc, an Affiliate of Rapigene, a
right of negotiation to acquire rights with respect to Associations in
the Gemini Field, described above in Section 3.2, if Gemini decides, in
its discretion, to commercialize such rights with or license such rights
to a third party. If Gemini intends to begin negotiations with a third
party to enter into a development, licensing or marketing arrangement
(collectively, an "Arrangement") regarding Associations in the Gemini
Field or products based on or derived therefrom, it shall give written
notice to Chiroscience and
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Rapigene of its interest in entering into such an Agreement together
with sufficient information regarding its intentions as is reasonably
necessary for Chiroscience to make an informed decision regarding such
an Arrangement; PROVIDED, that Gemini need only provide Chiroscience
with information then available to Gemini. Chiroscience shall have
sixty (60) days after receipt of such notice and information to decide
whether or not it wishes to pursue negotiations with Gemini for such
collaboration. If Chiroscience decides to pursue such a collaboration
with Gemini and so notifies Gemini during the 60-day period, the
parties shall negotiate in good faith during the remainder of such
60-day period and for an additional 45-day period to reach a definitive
agreement based upon mutually agreed economic and other principles.
Though Gemini shall have an obligation to negotiate in good faith with
Chiroscience, it shall have no obligation to accept any offer made by
Chiroscience. In the event Chiroscience declines to pursue negotiations
with Gemini, or does not reply to Gemini's notice within the 60-day
period, or the parties fail to reach an agreement within such period and
the additional 45-day period thereafter, Gemini shall have no further
obligations to Chiroscience with respect to the subject of this
Section 3.6
(b) If Gemini receives a bona fide offer from a third party to enter
into an Arrangement regarding Associations in the Gemini Field or
products based on or derived therefrom, it shall give written notice to
Chiroscience and Rapigene of its interest in entering into such an
Arrangement together with sufficient information regarding its
intentions as is reasonably necessary for Chiroscience to make an
informed decision regarding such an Arrangement and whether to compete
with such bona fide third party offer in order for Chiroscience to
obtain rights under such an Arrangement.
4. Payment Obligations
4.1 Payment Obligations. In consideration of Rapigene's grant of the
exclusive license to Gemini in the Gemini Field, as provided in
Section 3.2, and Gemini's grant of the exclusive license to
Rapigene in the Rapigene Field, as provided in Section 3.3, each
party agrees to pay the other party *
4.2 Payments and Related Reports. Not later than forty-five (45) days
following the end of each calendar quarter in which a party realizes
Net Revenue, it shall pay the amount due the other party based on
such Net Revenue, such payment to be accompanied by a report in
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Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
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writing showing the period to which such payment applies, the total amount
of Net Revenue during such period, supporting data and any appropriate
explanation confirming and clarifying the calculation of Net Revenue, and
the deductions, if any from the amount invoiced to arrive at the Net
Sales component of Net Revenue. All payments to by made by either party to
the other shall be made in U.S. Dollars within the United States to a bank
account designated by the party to receive such payment. Where Net Revenue
is received in a country other than the United States, the conversion from
the currency in such country shall be made by using the average of the
daily official rates of exchange for each day of the quarter in which such
capital in Net Revenue was received using the exchange rates published in
the Foreign Exchange column of the Wall Street Journal, or another
qualified source that is mutually agreeable to the parties.
4.3 Withholding Tax. Payments to a party hereunder shall be net of any
withholding tax legally applicable to the party receiving such
payments, provided evidence of payment of any such tax is properly
provided to such party.
4.4 Maintenance and Examination of the Books and Records. Each party
shall maintain and cause its Affiliates to maintain books of account
and adequate records of all transfers of rights to Associations in a
party's Field and the sale of all products containing or derived
from such Associations and all royalty reports of sublicensees. The
other party shall have the right, by an independent public
accounting firm reasonably acceptable to the party whose books and
records are being examined, to retain such firm at its own expense
to examine pertinent books and records of the party owing the
payment and its Affiliates, including royalty reports of
sublicensees, at all reasonable times (but not more often than once
each calendar year) for the purpose of determining and reporting to
the other party the correctness of payments made hereunder. If an
error is found in the statement of a payment due that is more than
five percent (5%) of the amount stated in such accounting, then the
party owing such payment will reimburse the other party for the
reasonable cost of examining the books and records of the party
owing the payment and its Affiliates.
5. Patent Rights.
5.1 Patent Applications. The Project Leaders (each consulting with
whomever he or she deems appropriate) shall jointly determine
whether patent protection is appropriate for Associations identified
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in the course of or as a result of the performance of the Research
Plan. If they determine that patent protection is appropriate, the
responsibility for the preparation, filing, prosecution and
maintenance of patent rights shall be shared equally by Gemini and
Rapigene, the administration of such responsibility to be through a
patent committee comprised of four (4) members: two (2) appointed by
Gemini and two (2) appointed by Rapigene. The patent committee shall
meet as necessary and appropriate, by telephone conference call or
otherwise. Each party shall bear its own costs in participating in
patent committee meetings. If the patent committee decides to seek
patent protection for a particular invention resulting from the
performance of research under the Research Plan, Rapigene and Gemini
agree to select mutually acceptable counsel to prepare and file the
patent application(s) and to share equally in expenses incurred in
connection with the application(s), prosecution and maintenance of
said patent, subject to the following exceptions:
(i) If a particular patent application relates solely to one
party's Field as described in Section 3.2 or Section 3.3, then
such patent application shall be filed jointly in the names of
Gemini and Rapigene, with the expenses incurred in connection
with such filing and its prosecution and maintenance to be
borne solely by the party controlling the Field to which the
patent application pertains; and
(ii) If one party deems it appropriate to seek patent protection
for an invention and the other party does not, then the party
deeming patent protection appropriate shall notify the other
party in writing of its decision to file and prosecute such
patent application(s) claiming such invention and, prior to
filing any such application, shall provide the other party
with a draft of the patent application in the form the party
intends to file. The other party shall have sixty (60) days
from its receipt of such notice and draft application to
decide either to participate in such process as provided
above, or to relinquish its rights to such invention,
including within its Field. If the receiving party fails to
notify in writing the party seeking patent protection, within
sixty (60) days of its receipt of the notice and draft
application, of its decision to participate in the patent
application process
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for such invention, then such party shall be deemed forever to
have relinquished its rights in parents to such invention. The
party seeking patent protection may then proceed, at its sole
expense, to file and prosecute patent applications claiming
such invention in the name of both parties (the initial
application to be substantially in the form provided to the
other party for review), and the other party shall assign all
of its right, title and interest in and to such patent
applications and any patents issuing therefrom to the party
filing them.
5.2 Infringement. Each party shall promptly notify the other of any
potential infringement by a third party of jointly owned patent
rights. The parties agree to cooperate in taking necessary and
reasonable legal action to protect jointly owned patent rights. If
the infringement is solely in one or the other party's Field, as
provided in Sections 3.2 and 3.3, the party whose Field is solely
affected shall control the legal action, at its expense, and shall
retain any recovery for its benefit, such recovery, minus all costs
and expenses incurred in obtaining it, being included as Net
Revenue. If the infringement affects both parties' Fields, or
affects both parties' rights under Section 3.4, the parties shall
share, on a 50/SO basis, the control and expense of any such action
and any recovery therefrom. If one party elects not to participate
in such action, the other party may, in its discretion, proceed at
its sole expense, in which case it shall retain the entirety of any
recovery from such action, which recovery shall not be included as
Net Revenue.
6. Confidentiality.
6.1 Confidentiality of Disclosed Information. Except to the extent
expressly authorized by this Agreement or otherwise agreed in
writing pursuant to the terms of the Nondisclosure Agreement between
Gemini and Rapigene dated 7 August 1998, the parties agree that, for
the Term of this Agreement and for three (3) years thereafter, the
receiving party shall keep confidential and shall not publish or
otherwise disclose or use for any purpose other than as provided for
in this Agreement any confidential information furnished to it by
the other party pursuant to this Agreement and identified in writing
as confidential at the time of disclosure or within twenty (20) days
thereafter ("Confidential Information"), except to the extent that
it can be established by the receiving party that such Confidential
Information:
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(a) was already known by the receiving party, other than under an
obligation of confidentiality, at the time of disclosure to the
receiving party;
(b) was generally available to the public or otherwise part of the
public domain at the time of disclosure to the receiving party;
(c) became generally available to the public or otherwise part of the
public domain after the time of disclosure to the receiving party
other than through any act or omission of the receiving party in
breach of this Agreement;
(d) was disclosed to the receiving party, other than under an obligation
of confidentiality, by a third party not obligated to the disclosing
party not to disclose such information to others; or
(e) is required by law to be disclosed, provided that the receiving
party shall provide written notice to the disclosing party and
lawful assistance reasonably requested to object to such disclosure
or to request confidential treatment thereof.
For the sake of clarification, Confidential Information does not include
the candidate genes and SNPs to be analyzed under the Research Plan.
6.2 Information Under the Research Plan. Each party agrees to maintain
in confidence the information generated by either party in the
performance of the Research Plan under this Agreement for a period
of no less than ninety (90) days from receipt by the non-disclosing
party of a written description prepared by the disclosing party of
the information generated. This 90-day period shall be used to
evaluate the information to be disclosed for patentable subject
matter and to file one or more patent applications in the event
patentable invention is to be disclosed and discuss appropriate
manners of protecting subject matter for which patent protection
will not be sought.
7. Publicity; Publications; Use of Name and Trademarks.
7.1 Publicity Related to This Agreement. As mutually agreed between the
parties, one party shall propose to the other a draft public
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announcement of this Agreement which the other party shall promptly
review and revise as it reasonably deems appropriate. Upon mutual
agreement as to the content of such announcement, but not prior to
such mutual agreement, the parties shall release such agreed
announcement simultaneously.
7.2 Publication Gemini and Rapigene each acknowledge the other party's
interest in publishing certain of the results of the work performed
under this Agreement to obtain recognition within the scientific
community and to advance the state of scientific knowledge. Both
parties also recognize their mutual interests in obtaining valid
patent protection or other appropriate intellectual property
protection for work performed under this Agreement. Consequently,
either party, its employees or consultants, wishing to make a
publication regarding the results of the work performed under this
Agreement shall provide the other party with the opportunity to
review the proposed publication at least thirty (30) days prior to
the date of the intended submission for publication and, upon either
party's written request, shall delay submission for an additional
period reasonably determined by the parties to be sufficient to
permit the filing of appropriate patent application(s) for any
patentable subject matter disclosed in such publication. In
addition, in acknowledgement that certain confidential information
of a party or certain results of the work performed under this
Agreement, while possibly not of a patentable subject matter, could
provide significant assistance to a competitor if published, the
parties agree that either party may, by reasonable request set forth
in writing, request that any such sensitive information or results
be removed from the proposed publication, and the person(s)
proposing to submit the publication shall comply with such
reasonable requests. Unless the parties mutually agree otherwise,
the parties will acknowledge the contribution of the other on any
publications or other public disclosures related to work performed
under this Agreement. As appropriate, representatives of each party
shall be named as co-authors of any scientific publications
publishing results of the work performed under this Agreement, each
party to designate its representatives to be listed as co-authors,
including third-party collaborators as applicable. Authorship shall
be determined based on scientific contribution as generally accepted
in the scientific field.
7.3 Use of Name and Trademarks. Unless specifically authorized by this
Agreement, neither party shall use in any manner the names or
trademarks of the other party without the express written consent of
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such party.
8. Indemnification.
8.1 Research Collaboration Activities. Each party shall be solely
responsible for the activities undertaken by its employees, agents
and consultants in connection with performing its tasks under the
Research Plan, and each party (the indemnifying party) shall defend,
indemnify and hold the other party and its Affiliates and their
respective directors, officers, employees, shareholders and agents
(the "Indemnified Parties") harmless from and against any and all
liabilities, losses, damages, judgments, awards, costs and expenses
(including reasonable investigative and attorneys' fees) that the
Indemnified Parties may incur, suffer or be required to pay,
resulting from or arising in connection with any claims, actions or
suits arising out of activities undertaken in connection with the
Research Plan by or on behalf of the indemnifying party.
8.2 Post-Research Plan Development and Commercialization. With respect
to any and all research and development activities and activities of
a commercial nature that are undertaken by or on behalf of a party
(the "Commercializing Party") (alone or in conjunction with third
parties) following the completion of, or outside the scope of,
research conducted under the Research Plan, including, without
limitation, the development and commercialization of a product in
the Commercializing Party's Field, as described in Section 3.2 or
3.3, or as otherwise permitted in Section 3.4, it is understood and
agreed that the Commercializing Party for such development and
commercialization of such product, or the Commercializing Party's
Affiliates and sublicensees, shall have full control over the
testing and post-approval use of such product (including, without
limitation, full control over any and all research, development,
testing, clinical trials, manufacture (including packaging and
labeling), promotion, marketing, distribution and sale of such
product), and that the non-Commercializing Party shall have no such
control. It is further understood and agreed that the
Commercializing Party for the development and commercialization of
such product, or its Affiliates and sublicensees, shall be the sole
sponsor of any and all applications for clinical testing and
marketing approvals for such product that are submitted to
regulatory authorities in all countries of the world. Accordingly,
it is agreed that the non-Commercializing Party shall not be liable
for liabilities, losses, damages, costs, or expenses that may result
from the farther research, development, testing or post-
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approval use or commercialization of such product conducted by or on
behalf of the Commercializing Party or its Affiliates and
sublicensees, and the Commercializing Party shall defend, indemnify
and hold the non-Commercializing Party and its Affiliates and their
respective directors, officers, employees, shareholders and agents
(the "Indemnified Parties") harmless from and against any and all
liabilities, losses, damages, costs and expenses (including
reasonable investigative and attorneys' fees) that the Indemnified
Parties may incur, suffer or be required to pay, resulting from or
arising in connection with any claims, actions or suits arising from
the research, development, testing or post-approval use or
commercialization of a product developed and/or commercialized by or
on behalf of the Commercializing Party or its Affiliates and
sublicensees.
8.3 The Indemnified Party shall notify the indemnifying party promptly
in writing of any claims, actions or suits against it of the sort
described above and shall cooperate reasonably with the indemnifying
party, at the indemnifying party's expense, in the defense of any
such claims, actions and suits, which defense shall be controlled by
the indemnifying party.
9. Warranties and Covenants.
9.1 Each party represents and warrants to the other party that it has
the legal power, authority and right to enter into this Agreement
and to perform all of its respective obligations set forth herein,
including those obligations set forth in Exhibit 1.
9.2 Each party represents and warrants to the other party that it is not
a party, and shall not become a party, to any agreement, arrangement
or understanding with any third party that prevents it from
fulfilling any of its material obligations under the terms of this
Agreement.
9.3 Each party covenants to the other party that it will not permit any
material acts or fail to take any action that would be in conflict
with its obligations under this Agreement.
9.4 Each party promises to comply in all materials respects with the
terms of the licenses granted to it under this Agreement and with
all laws, rules and regulations applicable to the research to be
conducted under this Agreement and to the development, manufacture,
distribution, import, export, sale and other distribution of
products pursuant to this Agreement.
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9.5 Each party represents and warrants that it has the ability to
undertake the scientific activities required under this Agreement
and that the performance of the scientific activities so required
will not infringe on the rights of any third parties; provided, as
reiterated in Section 2.1 above, neither party warrants that its
performance of activities under this Agreement will achieve the
objectives of the Research Plan.
9.6 EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, NEITHER PARTY MAKES
ANY OTHER WARRANTIES, EXPRESS OR IMPLIED, TO THE OTHER PARTY, AND
EACH PARTY DISCLAIMS ALL WARRANTIES OF MERCHANTIBILITY AND FITNESS
FOR A PARTICULAR PURPOSE.
10. Term and Termination. This Agreement and research under the Research Plan
shall terminate twelve (12) months from the Effective Date of this
Agreement, unless extended by mutual written agreement of the parties.
Either party may also terminate this Agreement due to the other party's
material breach of this Agreement, if such breach continues for forty-five
(45) days following the non-breaching party's written notice of breach to
the breaching party. Failure to pay Net Revenue when due shall constitute
breach of this Agreement and all licenses granted under this Agreement
shall be terminated upon such breach. The provisions of Sections 3,4,5,6,
7, 8, 9 and 11.11 shall survive the expiration or termination of this
Agreement.
11. Miscellaneous.
11.1 Agency. Neither party is, nor shall be deemed to be, an employee,
agent, co-venturer or legal representative of the other party for
any purpose. Neither party shall be entitled to enter into any
contracts in the name of, or on behalf of the other party, nor shall
either party be entitled to pledge the credit of the other party in
any way or hold itself out as having the authority to do so.
11.2 Limitation of Liability. Subject to, and without limiting, each
party's indemnification obligations under Section 8, neither party
shall be liable to the other party under any contract, tort, strict
liability or other legal or equitable theory for any special,
incidental, consequential or punitive damages, even if it has been
advised of the possibility of such damages.
11.3 Assignment. Neither party can assign this Agreement nor any interest
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hereunder without the prior written consent of the other party;
provided, however, that either party can assign this Agreement at
any time to any Affiliate or to any successor by merger or sale of
substantially all of its business unit to which this Agreement
relates, in a manner such that the assignor (if it continues as a
separate entity) shall remain liable and responsible for the
performance and observance of all its duties and obligations
hereunder. This Agreement shall be binding upon the successors and
permitted assignees of the parties, and the name of a party
appearing herein shall be deemed to include the names of such
party's successors and permitted assignees to the extent necessary
to carry out the intent of this Agreement. Any assignment not in
accordance with this Section shall be void.
11.4 Further Actions. Each party agrees to execute, acknowledge and
deliver such further instruments, and to do all such other acts, as
may be necessary or appropriate in order to carry out the purposes
and intent of this Agreement.
11.5 Force Majeure. Neither party shall be liable to the other for loss
or damages nor shall have any right to terminate this Agreement for
any default or delay attributable to any force majeure event,
including but not limited to acts of God, acts of government, fire,
flood, earthquake, strikes, labor disputes, and the like, if the
party affected shall give prompt notice of any such cause to the
other party. The party giving such notice shall thereupon be excused
from such of its obligations hereunder as it is thereby disabled
from performing for so long as it is so disabled and for thirty (30)
days thereafter; provided, however, that such affected party
commences and continues to take reasonable and diligent actions to
cure such cause. Notwithstanding the foregoing, nothing in this
Section 11.5 shall excuse or suspend a party's obligation to make
any payment due hereunder in the manner and at the time provided. If
a party's performance cannot be resumed within one hundred twenty
(120) days of its suspension, this Agreement may be terminated by
the other party upon thirty (30) days' advance written notice.
11.6 Notices. All notices and other communications required or permitted
hereunder shall be in writing and shall be deemed effectively given
and received (a) upon personal delivery; (b) on the fifth day
following mailing by registered or certified mail, return receipt
requested, postage prepaid, addressed to the recipient at its
address as listed below (or at such other address for a party as a
party shall
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specify by notice in accordance with this Section; provided, that
notices of a change of address shall be effective only upon receipt
thereof); or (c) upon confirmed delivery by overnight commercial
courier service to the recipient at its address as listed below (or
at such other address for a party as a party shall specify by notice
in accordance with this Section):
If to GEMINI, addressed to: Gemini Research Limited
162 Science Park
Milton Road
Cambridge, CB4 4GH, England
Attention: Chief Executive Officer
With copies to: Gemini's General Counsel and
its Project Leader
If to RAPIGENE, addressed to: Rapigene, Inc.
1631 220th Street SE
Bothell, WA 98021 USA
Attention: Chief Executive Officer
With copies to: Rapigene's General Counsel and its Project
Leader
11.7 Amendment; Approval. No amendment, modification or supplement of any
provision of the Agreement shall be valid or effective unless made
in writing and signed by a duly authorized officer of each party. No
approval provided for in this Agreement shall be valid or effective
unless confirmed in writing.
11.8 Waiver. No provision of the Agreement shall be waived by any act,
omission or knowledge of a party or its agents or employees except
by an instrument in writing expressly waiving such provision and
signed by a duly authorized officer of the waiving party.
11.9 Counterparts. This Agreement may be executed in any number of
counterparts, each of which shall be deemed an original, but all of
which together shall constitute one instrument.
11.10 Descriptive Headings. The descriptive headings of this Agreement are
for convenience only, and shall be of no forte or effect in
construing or interpreting any of the provisions of this Agreement.
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11.11 Governing Law; Venue. This Agreement shall be governed by and
interpreted in accordance with the substantive laws of the State of
Washington and the United States of America, without regard to
choice-of-law rules. Exclusive venue of any legal action commenced
by either party to enforce its rights hereunder shall be and remain
in New York City, unless the parties mutually agree otherwise in
writing.
11.12 Severability. Whenever possible, each provision of this Agreement
will be interpreted in such manner as to be effective and valid
under applicable law, but if any provision of this Agreement is held
to be prohibited by or invalid under applicable law, such provision
will be ineffective only to the extent of such prohibition or
invalidity, without invalidating the remainder of the Agreement. In
the event of such invalidity, the parties shall seek to agree on an
alternative enforceable provision that preserves the original
purpose of this Agreement.
11.13 Compliance with Law. Nothing in this Agreement shall be deemed to
permit either party to export, re-export or otherwise transfer any
information or material transferred hereunder or products
manufactured therefrom without compliance with all applicable laws,
rules and regulations.
11.14 Entire Agreement of the Parties. This Agreement, including Exhibit 1
attached hereto, constitutes and contains the complete, final and
exclusive understanding and agreement of the parties hereto, and
cancels and supersedes any and all prior negotiations,
correspondence, understandings and agreements, whether oral or
written, between the parties respecting the subject matter hereof.
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IN WITNESS WHEREOF, Gemini and Rapigene have caused this Agreement to be duly
executed as of the Effective Date set forth above.
GEMINI RESEARCH LIMITED RAPIGENE, INC.
By: /s/ Paul Kelly By: /s/ Christine Soden
-------------------------------- -------------------------------------
Name: Paul Kelly Name: Christine Soden
------------------------------ -----------------------------------
Title: Chief Executive Officer Title: Chief Financial Officer
----------------------------- ----------------------------------
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Exhibit 1
RESEARCH COLLABORATION PLAN
The project will identify and analyze single nucleotide polymorphisms
(SNPs) in * candidate genes relating to Obesity, with the goal of identifying
Associations between genotypes and Obesity. A maximum of * SNPs will be
selected, depending on allele frequencies. * The parties anticipate that the
time period necessary to perform the tasks listed under this Research
Collaboration Plan ("Plan") will require twelve (12) months to perform *
*
*
Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
