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*Confidential Treatment Requested
EXHIBIT 10.12
COLLABORATIVE DEVELOPMENT AGREEMENT
This Collaborative Development Agreement (the "Agreement") effective as of June
21, 2000 (the "Effective Date") outlines the terms and conditions pursuant to
which Third Wave Technologies, Inc. ("TWT") is willing to develop and transfer
to Novartis Pharmaceuticals Corporation (together with Novartis Pharma AG,
Novartis AG and all of its affiliates including GNF "Novartis") 10,000 unique
genotyping assays based on TWT's proprietary Invader(R) assay platform (each
such assay an "Assay") for detection of certain single nucleotide polymorphisms
(SNPs) mutually designated by the parties to be approximately evenly spaced over
the human genome. Each assay shall be specific for one SNP.
1. Invader SNP Assays: Each Assay (FRET-detection format) will be comprised
of the following:
A. Primary Probe Set including a SNP-specific Primary Invader Probe and
Primary Probes for each allele of the SNP for which TWT will perform:
(i) oligonucleotide probe design, (ii) probe synthesis, (iii) probe
purification (as necessary) and (iv) probe set quality control and
packaging; and
B. Standard Invader Reagent Set including: (i) purified Secondary
Signal/target probe complex oligonucleotide, (ii) Cleavase enzyme, and
(iii) buffers. All together in each well of a 384-well microtiter plate.
2. Transfer: TWT will transfer each of the 10,000 Assays to Novartis FOB
(UCC) TWT's facilities Madison, WI, in accordance with a mutually agreed
schedule. Each Assay so transferred will be in 384-well format and
include materials sufficient to perform 384 genotype determinations in
accordance with TWT's standard protocols therefor. It being understood
that the total number of determinations to be transferred hereunder will
be 3,840,000. TWT will use its best efforts to transfer the first 5,000
Assays to Novartis within 6 months of the Effective Date and the
remaining 5,000 Assays within 1 year of the Effective Date.
3. Payment:
A. Initiation Payment. In consideration of TWTs development of the
Assays, Novartis will pay to TWT $475,000.00 within 10 days of the
Effective Date which total amount will be creditable against 1/2 of the
amounts due on transfer of the Assays below.
B. Assay Payments. In consideration of TWT transferring the Assays,
Novartis will pay to TWT [****] per genotyping determination ([****] per
384 determinations) plus any costs incident to the transfer initially
paid by TWT but to be borne by Novartis hereunder, within 30 days of
receipt of the invoice therefor. It being understood that the total
payments for Assays hereunder will be [****].
4. Use: All Assays will be used by Novartis solely for its own internal R&D
applications on a world-wide basis.
5. Intellectual Property:
A. General. All right, title and interest in and to all Assays
transferred hereunder will remain vested in TWT. Novartis will own all
right, title and interest in and to all Inventions. "Invention" means
any and all discoveries, inventions, information and other subject
matter (whether patentable or not) made in the course of Novartis' use
of the Assays hereunder and all intellectual property rights therein.
B. Improvements. Novartis hereby grants to TWT a non-exclusive, fully
paid-up, worldwide right and license, with the right to grant and
authorize sublicenses, in and to improvements, "Improvement" means any
Invention which comprise an improvement, modification, or derivative of
the Assays, including without limitation, improvements and enhancements
to: (i) assay ease of use methodologies, including sample preparation
methods or procedures; (iii) detection methods and protocols; (iv) data
collection or analysis; (v) multiplexing methods; or (vi) automation or
miniaturization methodologies, techniques and equipment.
C. Diagnostic Rights. Novartis hereby grants to TWT a first right of
refusal to obtain an exclusive, worldwide license for all Diagnostic
Applications to any Patent Rights claiming an Invention that Novartis
wishes to license to a third party for Diagnostic Applications. For such
purposes the parties agree as follows: (i) Novartis will promptly
provide to TWT a copy of each US patent application within the Patent
Rights that Novartis proposes to license to a third party for Diagnostic
Applications, referencing this paragraph 5 together with such other
information as TWT may reasonably request, (ii) TWT will have 45 days
after receipt of the application and information described in clause (i)
to notify Novartis of its interest in negotiating such license, (iii) if
TWT so notifies Novartis, the parties will negotiate in good faith for a
period of not less than 90 days the terms and conditions of such license
under the Patent Rights, (iv) thereafter, Novartis may offer such
license under the Patent Rights to third parties on the same terms and
conditions as offered to TWT, provided that Novartis offer any more
favorable terms or conditions to TWT first. "Diagnostic Applications"
means all applications the purpose of which is to report a patient
result, including without limitation, detection, diagnosis,
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prognosis or predisposition of disease states and therapeutic monitoring
applications, in each case whether or not such applications require
regulatory approval in any particular jurisdiction; and "Patent Rights"
means all US patent applications and foreign counterpart patent
applications claiming an Invention, all divisions, continuations,
continuations-in-part, substitutions, patents of additions thereof and
all patents issuing on any of the foregoing, together with all
registrations, reissues, reexaminations or extensions of any kind with
respect to any of the foregoing patents.
D. Other. Except as expressly provided herein, nothing herein is to be
construed as granting a license from one party to the other, under any
patent or other intellectual property rights owned by such party.
6. Confidentiality: For a period of five (5) years from the date of this
Agreement, each of Novartis and TWT agrees that the receiving party
shall not publish or otherwise disclose and shall not use for any
purpose any information furnished to it by the other party hereto
pursuant to this Agreement which if disclosed in tangible form is marked
"Confidential" or with other similar designation to indicate its
confidential or proprietary nature, or if disclosed orally is confirmed
as confidential or proprietary by the party disclosing such information
at the time of such disclosure ("Confidential Information"). Without
limiting the foregoing, it is understood that the Assays will be deemed
to be Confidential Information of TWT whether or not marked as such and
that any patent application furnished by Novartis to TWT pursuant to
paragraph 5 shall be deemed to be Confidential Information of Novartis,
whether or not marked as such. Notwithstanding the foregoing, it is
understood and agreed that Confidential Information shall not include
information that, in each case as demonstrated by written documentation:
(a) was already known to the receiving party, other than under an
obligation of confidentiality, at the time of disclosure; (b) was
generally available to the public or otherwise part of the public domain
at the time of its disclosure to the receiving party; (c) became
generally available to the public or otherwise part of the public domain
after its disclosure and other than through any act or omission of the
receiving party in breach of this Agreement; or (d) was subsequently
lawfully disclosed to the receiving party by a person other than a party
hereto or developed by the receiving party without reference to any
information or materials disclosed by the disclosing party.
Notwithstanding the foregoing provisions of this paragraph 6 above, each
party hereto may disclose the other's Confidential Information to the
extent such disclosure is reasonably necessary, in filing or prosecuting
patent applications, prosecuting or defending litigation, complying with
applicable governmental regulations, submitting information to tax or
other governmental authorities, or in exercising its rights hereunder
(including granting any permitted sublicenses), provided that if a party
is legally required to make any such disclosure of another party's
Confidential Information, to the extent it may legally do so, it will
give reasonable advance written notice to the latter party of such
disclosure and, save to the extent inappropriate in the case of patent
applications, will use its reasonable efforts to secure confidential
treatment of such Confidential Information prior to its disclosure
(whether through protective orders or otherwise), This paragraph 6 will
survive expiration or termination of this Agreement.
7. Term and Termination. This Agreement will be effective as of the
Effective Date and will remain in effect for 14 months and may be
extended by mutual written agreement of the parties hereto. Either party
may terminate this Agreement on 60 days written notice in the event that
the other party is in material breach of the Agreement and the other
party fails cure during such 60-day period. In the event that Agreement
is terminated by Novartis as a result of TWT's breach, TWT will repay
the amount paid under paragraph 3A less amounts credited for Assays
transfered. In the event of expiration or termination of this Agreement
the provisions of paragraphs 4, 5, 6 and 8 will survive. For avoidance
of doubt, it is understood that Novartis' right to use information
arising out of its use of the Assays is perpetual.
8. General: This Agreement will be governed by and construed in accordance
with, the laws of the State of New York, without reference to conflicts
of laws principles. This Agreement sets forth the entire agreement
between the parties with respect to the subject matter herein and
supersedes all previous or contemporaneous understandings with respect
thereto. Nonperformance of any party will be excused to the extent that
performance is rendered impossible by strike, fire, earthquake, flood,
governmental acts or orders or restrictions, failure of suppliers, or
any other reason where failure to perform is beyond the reasonable
control of the nonperforming party. This Agreement may be amended or any
right or obligation waived only with a written document signed by
authorized representatives of the parties. Novartis may not assign or
otherwise transfer its rights and obligations hereunder without the
prior written approval of TWT. TWT and Novartis agree not to disclose to
any third party the financial terms of this Agreement without the prior
written consent of the other party hereto, except to advisors, investors
and others on a need-to-know basis under circumstances that reasonably
ensure the confidentiality thereof, or to the extent required by law.
Notwithstanding the foregoing, within five (5) days after execution
hereof, the parties will agree upon and issue a press release describing
the collaboration of the parties.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to he duly
executed and effective as of the Effective Date.
THIRD WAVE TECHNOLOGIES, INC. NOVARTIS PHARMACEUTICALS CORPORATION
By: /s/ LANCE FORS By: /s/ R. M. CALIFRE
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Name: Lance Fors Name: R. M. Califre
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Title: President & CEO Title: SVP R&D OPS
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