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EXHIBIT 10.36
DISCOVERWORKS(TM)
NONEXCLUSIVE LICENSE AND PURCHASE AGREEMENT
THIS DISCOVERWORKS(TM) NONEXCLUSIVE LICENSE AND PURCHASE AGREEMENT is made as of
July 7, 2000, by and between 3-Dimensional Pharmaceuticals, Inc., a Delaware
corporation having its principal place of business at Eagleview Corporate
Center, 665 Stockton Drive, Suite 104, Exton, PA 19341 ("3DP"), and Bristol-
Myers Squibb Company, a Delaware corporation having its principal place of
business at Route 206 & Province Line Road, P.O. Box 4000, Princeton, New Jersey
08543 ("BMS"). Either 3DP or BMS may be referred to herein as a "Party" or,
collectively, they may be referred to as the "Parties."
RECITALS
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WHEREAS, 3DP has developed and patented certain technology known as
DirectedDiversity(R), which generates and identifies chemical compounds having
desired biological, chemical and other properties;
WHEREAS, 3DP has developed and patented certain technology and processes known
as ThermoFluor(R) Protein Characterization and Screening Technology, which
provides a useful readout for target characterization and compound library
screening;
WHEREAS, BMS is engaged in research and development of biologically active
compounds for the treatment of human disease;
WHEREAS, BMS wishes to license certain DirectedDiversity(R) patent rights and
ThermoFluor(R) technology from 3DP for DiscoverWorks(TM), on a nonexclusive
basis;
WHEREAS, BMS also wishes to purchase from 3DP certain ThermoFluor(R)
instruments; and
WHEREAS, the Parties desire to enter into this Agreement to set forth the
licensing and purchase terms for such rights;
NOW, THEREFORE, in consideration of the various promises and undertakings set
forth herein, and intending to be legally bound, the Parties agree as follows:
ARTICLE 1
DEFINITIONS
The terms in this Agreement with initial letters capitalized, whether used in
the singular or the plural, shall have the meaning set forth below or, if not
listed below, the meaning designated in places throughout this Agreement.
1.1 "Affiliate" means with respect to either Party, any corporation or
other business entity, which controls, is controlled by, or is under
common control with such
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
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Party. A corporation or other entity shall be regarded as in control
of another corporation or entity if it owns or directly or indirectly
controls at least fifty (50%) of the voting stock or other ownership
interest of the other corporation or entity (or alternatively, if it
owns the maximum such ownership interest permitted by law), or if it
possesses, directly or indirectly, the power to direct or cause the
direction of the management and policies of the corporation or other
entity or the power to elect or appoint at least fifty (50%) of the
members of the governing body of the corporation or other entity.
1.2 "Agreement" means this DiscoverWorks(TM) Nonexclusive License and
Purchase Agreement including its Exhibits, as may be amended from time
to time.
1.3 "BMS Site" means only (a) the BMS pharmaceutical research and
development facilities located in Lawrenceville, New Jersey, U.S.A.;
Hopewell, New Jersey, U.S.A.; Wallingford, Connecticut, U.S.A.;
Candiac, Quebec, Canada; (b) [**] in the United States, Canada or a
country in the European Union, [**], excepting [**] that has been [**]
and [**] prior to the practice of any license granted hereunder [**]
and (c) [**] in the United States, Canada or a country in the European
Union, [**] prior to the practice of any license granted hereunder.
1.4 "Collaboration Agreement" means the DiscoverWorks(TM) Drug Discovery
Collaboration Agreement entered into between the Parties and dated of
even date herewith.
1.5 "Confidential Information" means all technical and/or commercial
information that has or could have commercial value or other utility
in a Party's business, or the unauthorized disclosure of which could
be detrimental to the Party's interests, including information,
inventions, data, and materials relating to the DirectedDiversity(R)
Patent Rights or to the ThermoFluor(R) Technology, and Know-how, and
shall include, without limitation, whether in oral, written, graphic
or electronic form, research, technical, manufacturing, marketing,
financial, personnel and other business information and plans;
chemical, pharmacological, toxicological, clinical, analytical and
quality control data; case report forms, data and analysis; and
reports or summaries and information contained in and submissions to
and information from ethical committees and regulatory authorities,
except to the extent that the Party receiving the Confidential
Information (the "Receiving Party") from the other Party (the
"Disclosing Party") can establish that such Confidential Information:
(a) was already known to the Receiving Party, other than under a
continuing obligation of confidentiality to the Disclosing Party; (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 original disclosure to the Receiving Party,
and other than through any act or omission of the Receiving Party in
breach of this Agreement; (d) was subsequently lawfully disclosed to
the Receiving Party by a Third Party; (e) can be shown by written
records to have been independently developed by or for the Receiving
Party without benefit of the Confidential Information received from
the Disclosing Party, and without breach of any of the provisions of
this Agreement;
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
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or (f) the Disclosing Party has specifically agreed, in writing, that
the Receiving Party may disclose such Confidential Information.
1.6 "DirectedDiversity(R) Field" means the research, development and
commercialization of chemical compounds for use in pharmaceutical and
diagnostic products.
1.7 "DirectedDiversity(R) Patent Rights" means 3DP's U.S. and Canadian
patent applications or issued patents, as well as those for one or
more countries of the European Patent Community, all of which are
identified in EXHIBIT A, including any divisionals, continuations,
reissues, and reexaminations thereof, any patents issuing therefrom,
and any extensions and supplementary protection certificates based
thereon.
1.8 "DiscoverWorks"(TM) means the technology platform consisting of the
DirectedDiversity(R) Patent Rights and the ThermoFluor(R) Technology.
1.9 "Effective Date" means the later of: (a) the date of this Agreement as
set forth above; or (b) the date which all of the following documents
between the Parties have been executed: this Agreement, the GPCR
License and User Agreement, the DiscoverWorks(TM) Drug Discovery
Collaboration Agreement, and the PERT Internal Use License and Option
Agreement.
1.10 "FTE" means a full time equivalent scientific employee (i.e., one
full-time, or multiple part-time employees aggregating to one full-
time employee) employed by 3DP and assigned to work on the development
of or training on Instruments with such time and effort to constitute
one employee working on development of or training on Instruments on a
full time basis consistent with normal business and scientific
practice (at least forty (40) hours per week of dedicated effort; on
an annual basis, such weekly effort for at least forty-eight (48)
weeks per year). In no event, does an FTE include a subcontractor.
1.11 "Improvement" means any inventions and/or discoveries that result in
improvements or enhancements to the ThermoFluor(R) Technology or to
previous Improvements, made by 3DP or BMS, whether patented or
unpatented, conceived or first reduced to practice during the term of
this Agreement.
1.12 "Instrument" means a ThermoFluor(R) I Instrument or a ThermoFluor(R)
II Instrument, or any successor to or modification of either.
1.13 "Intellectual Property" means any and all patents, copyrights, design
rights, mask work rights, trademarks, service marks, as well as any
registrations and applications to register any such rights, rights in
the nature of any of the aforementioned rights, trade secrets, Know-
how, and any other intellectual or
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
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industrial property rights of any kind whatsoever in the United
States, Canada or the European Patent Community.
1.14 "Know-how" means unpatented technical and other information which is
not in the public domain, including information comprising or relating
to concepts, discoveries, inventions, data, designs, formulae, ideas,
methods, models, assays, research plans, procedures, designs for
experiments and tests, and results of experimentation and testing
(including results of research or development), processes (including
manufacturing processes, specifications and techniques), and
laboratory records.
1.15 "Manufactured Cost" shall mean the fully-allocated standard cost of:
(i) the direct raw materials cost of materials actually used in the
manufacture of an Instrument; (ii) the direct labor cost for producing
the Instrument; (iii) the direct operating costs of buildings,
resources and equipment dedicated to, as well as allocated
depreciation and repairs and maintenance for the building and
equipment actually used in, such production; and (iv) any quality and
in-process control in producing the Instrument.
1.16 "Object Code" means machine-executable computer software code in
binary form.
1.17 "Scriptgen Patent Rights" means the U.S. and Canadian patent
applications or issued patents as well as those for one or more
members of the European Patent Community, all of which are identified
in EXHIBIT B, including any divisionals, continuations, continuations-
in-part, reissues, reexaminations and renewals thereof, any patents
issuing therefrom, and extensions and supplementary protection
certificates based thereon, filed or granted to Scriptgen
Pharmaceuticals, Inc.
1.18 "Source Code" means computer software source code for the
ThermoFluor(R) Software.
1.19 "ThermoFluor(R) Field" means the research, development and
commercialization of chemical compounds for use in therapeutic and
diagnostic products, except that during the period from the Effective
Date until March 7, 2003, it shall not include the use of any proteins
to discover or develop a drug that exerts a therapeutic effect in
hepatitis C infection, nor include other anti-viral targets, except in
connection with Improved Hits, as defined in the Collaboration
Agreement.
1.20 "ThermoFluor(R) I Instrument" means the current production format
instrument produced by 3DP and/or contractors (or such modifications
or improvements developed and implemented by 3DP prior to the initial
installations at BMS), based on [**] well sample plates, and requiring
approximately [**] hours to cycle each plate.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
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1.21 "ThermoFluor(R) II Instrument" means an instrument that produces:
(a) detection sensitivity and intraplate detection precision at
least equivalent to the performance of ThermoFluor(R) I
Instruments;
(b) support for reading [**] microtitre plates, allowing a
[**];
(c) approximately a [**] decrease in target protein consumption
per well relative to ThermoFluor(R) I Instruments; and
(d) a remote communications interface and a mechanical
interface which will allow integration with a plate stacker
or a larger automated screening system.
1.21 "ThermoFluor(R) Patent Rights" means 3DP's U.S., Canadian and European
Patent Community ("EPC") patent applications or patents issued in the
United States, Canada, and one or more countries of the EPC, as
identified in EXHIBIT C, including any divisionals, continuations,
reissues and reexaminations thereof, any patents issuing therefrom,
and extensions based thereon.
1.22 "ThermoFluor(R) Software" means computer Object Code required for
processing raw fluorescent image data and reducing such data to
protein melting point values and melting point shifts, associated
thermodynamic parameters, and ligand binding constants and includes a
Graphical User Interface for setting experimental run parameters
(unless otherwise implemented through a programmable logic controller
integrated as part of the Instruments) and flexibly viewing and
manipulating data, and runs in a Windows NT Environment and writes
output data tables.
1.23 "ThermoFluor(R) Technology" means the ThermoFluor(R) Patent Rights,
the ThermoFluor(R) Software, the proprietary 3DP Know-how used to
evaluate ligand-binding parameters, and other Intellectual Property
related thereto.
1.24 "Third Party" means any person or entity other than a Party or any of
its Affiliates.
1.25 "Update" means any bug fix, improvement, enhancement, update or
upgrade, and any successor version of the ThermoFluor(R) Software
created by 3DP in the normal course of its business.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
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ARTICLE 2
DIRECTEDDIVERSITY(R) PATENT LICENSE
2.1 Nonexclusive DirectedDiversity(R) Patent License. Subject to the terms
and conditions of this Agreement, 3DP hereby grants BMS and its
Affiliates a nontransferable, nonsublicensable, nonexclusive,
nonroyalty-bearing license at the BMS Sites under the
DirectedDiversity(R) Patent Rights solely in direct support of BMS's
and its Affiliates' internal pharmaceutical research and development
activities in the DirectedDiversity(R) Field which shall be deemed to
include any research and development activities being undertaken [**]
during the term of the Agreement.
2.2 Limitations on DirectedDiversity(R) Patent Rights License Grant.
Including, without limitation, in connection with activities expressly
permitted under Section 2.1:
2.2.1 BMS and its Affiliates may not operate under the
DirectedDiversity(R) Patent Rights on behalf of any Third
Parties such as, for example, in connection with providing
research or development services to any Third Party on a
contractual basis;
2.2.2 Subject to the provisions of Section 12.4, BMS and its
Affiliates may not assign or sublicense its license to the
DirectedDiversity(R) Patent Rights to any Third Party; and
2.2.3 BMS and its Affiliates may not provide services to any Third
Party with respect to DirectedDiversity(R) Patent Rights.
2.3 3DP Retained Rights. Any rights of 3DP not expressly granted to BMS
and its Affiliates under the provisions of this Article 2 shall be
retained by 3DP, including, without limitation, 3DP's right to exploit
the DirectedDiversity(R) Patent Rights for any application within or
outside the DirectedDiversity(R) Field.
2.4 License Fee.
2.4.1 In consideration of the license grants provided for in this
Article 2 for the four named BMS Sites[**], BMS agrees to pay
to 3DP a nonrefundable license fee of [**] within thirty (30)
days of the Effective Date.
2.4.2 In consideration of the license grants provided for in this
Article 2 for[**], BMS shall pay to 3DP a nonrefundable license
fee of [**] within thirty (30) days of BMS notifying 3DP that
it intends to practice the DirectedDiversity(R) Patent Rights
at such BMS Site.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
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ARTICLE 3
INSTRUMENTS
3.1 ThermoFluor(R) I Instruments.
3.1.1 BMS will purchase, within [**] of the Effective Date, at least
[**] ThermoFluor(R) I Instruments from 3DP, at a cost of [**]
with payment of [**] due upon order, and [**] due upon
delivery.
3.1.2 The cost per ThermoFluor(R) I Instruments shall be indexed
annually to the U.S. Consumer Price Index (CPI) and adjusted
for each ThermoFluor(R) Instrument ordered beginning with the
first quarter of the year 2001.
3.1.3 3DP shall, at BMS's request, deliver up to the first [**] of
such purchased ThermoFluor(R) I Instruments within [**] from
the date such ThermoFluor(R) I Instruments are ordered.
Additional ThermoFluor(R) I Instruments shall be delivered to
BMS on a schedule mutually agreed upon by the Parties after
such [**] period.
3.2 ThermoFluor(R) II Instruments.
3.2.1 BMS may purchase ThermoFluor(R) II Instruments from 3DP at
3DP's Manufactured Cost of each ThermoFluor(R) II Instrument,
plus [**], per ThermoFluor(R) II Instrument.
3.2.2 As of the Effective Date of the Agreement, pursuant to the
terms of the Collaboration Agreement, [**] of the FTEs being
funded by BMS, according to the provisions of the Collaboration
Agreement, shall work at 3DP on the development of [**] or
until the [**] of the Agreement, whichever is the sooner, but
in no event sooner, than the [**]. These services shall be
compensated by BMS, as provided in the Collaboration Agreement.
3.2.3 ThermoFluor(R) II Instruments shall be delivered to BMS on a
schedule mutually agreed upon by the Parties.
3.3 Other Instruments. BMS shall have the right to define criteria and/or
specifications to 3DP for an Instrument that is neither strictly a
ThermoFluor(R) I Instrument nor strictly a ThermoFluor(R) II
Instrument, and if 3DP is able to provide such an Instrument, the
parties will negotiate in good faith on a price and delivery schedule
that will apply to such an Instrument.
3.4 Fees.
3.4.1 In consideration of the rights granted in this Article 3 for
the BMS Sites described in Sections 1.3(a) and 1.3(b), BMS
agrees to pay to 3DP a nonrefundable fee of [**] within thirty
(30) days of the Effective Date.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
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3.4.2 In consideration of the rights granted in this Article 3 for
each BMS Site described in Section 1.3(c), BMS shall pay to 3DP
a nonrefundable fee of [**] within thirty (30) days of the
Effective Date.
3.4.3 If BMS purchases more than [**] Instruments, BMS shall pay 3DP
an additional fee of [**] per Instrument, for each Instrument
purchased beyond the initial [**] Instruments.
3.4.4 BMS may request that 3DP supply integrated sample handling
robotics for Instruments sold to BMS. Supply by 3DP of
integrated sample handling robotics for any Instrument shall be
at an agreed upon cost for each Instrument.
3.5 Most Favored [**] Provisions. If, during the Term of this Agreement
[**] at the same time, all other conditions being equal, 3DP shall
grant the equivalent favorable financial terms to BMS for the same
time period, [**], and such more favorable financial terms, with due
consideration of both [**].
3.6 Nonexclusive ThermoFluor(R) Technology License. Subject to the terms
and conditions of this Agreement, 3DP hereby grants BMS and its
Affiliates a nontransferable, nonsublicensable, nonexclusive,
nonroyalty-bearing license at the BMS Sites under: (a) the
ThermoFluor(R) Technology and (b) any Improvements to the
ThermoFluor(R) Technology or any Improvements thereto made by or for
3DP [**] or for which 3DP otherwise acquires the right to grant such a
license [**], and under all patent, copyright, trademark, trade secret
and other Intellectual Property rights inherent therein and
appurtenant thereto; which license shall be solely for BMS's and its
Affiliates' internal business purposes of using the Instruments
within, and subject to the use restrictions in, the ThermoFluor(R)
Field which shall be deemed to include any research and development
activities being undertaken [**] over the term of the Agreement.
3.7 Grantback Rights to Improvements to the ThermoFluor(R) Technology. For
a period of [**] from the Effective Date, BMS and its Affiliates agree
that each will promptly make full written disclosure to 3DP of any and
all Improvements that BMS or its Affiliates conceives or makes or has
made to the ThermoFluor(R) Technology and to any Improvements thereto.
BMS and its Affiliates hereby grant to 3DP, or its designee, a semi-
exclusive (exclusive except as to BMS and its Affiliates), perpetual,
non-royalty-bearing license, including the right to transfer and
sublicense such license, to all of BMS's and its Affiliates' worldwide
right, title, and interest in and to any and all Improvements, solely
for use with applications involving ThermoFluor(R) Technology and/or
Instruments, and under all patent, copyright, trademark, trade secret
and other Intellectual Property rights inherent therein and
appurtenant thereto.
3.8 Transfer of Improvements to BMS. For a period of [**] after the
Effective Date, 3DP agrees that it will promptly make full written
disclosure to BMS of any and all Improvements that 3DP conceives or
makes or has made to the ThermoFluor(R) Technology and to any
improvements thereto and/or which 3DP has the right to provide
hereunder, and 3DP will facilitate the transfer of such
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
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Improvements to BMS. Such transfer shall occur no later than six (6)
months after such Improvements have been validated by 3DP.
3.9 Ownership; 3DP Retained Rights. 3DP shall solely (as to BMS) own all
Intellectual Property rights in the ThermoFluor(R) Technology and
Improvements it makes or has made or receives rights thereto (other
than to Improvements made exclusively by BMS or jointly by BMS and
3DP). BMS does not acquire any rights in the ThermoFluor(R)
Technology or Improvements made exclusively by 3DP thereto, other than
those license rights expressly specified in this Agreement. Any
Improvement made jointly by 3DP and BMS shall be owned jointly by 3DP
and BMS.
3.10 Nonexclusive Scriptgen Patent Rights Sublicense. Subject to the terms
and conditions of this Agreement, 3DP hereby grants BMS and its
Affiliates a nontransferable, nonsublicensable, nonexclusive, non-
royalty-bearing sublicense at the BMS Sites under the Scriptgen Patent
Rights solely for BMS's and its Affiliates' internal business purposes
of using the Instruments within, and subject to the use restrictions
in, the ThermoFluor(R) Field which shall be deemed to include any
research and development activities being undertaken [**] during the
term of this Agreement.
3.11 Limitations on ThermoFluor(R) Technology License and the Scriptgen
Patent Rights Sublicense. Except as permitted under Sections 3.5 and
3.9:
3.11.1 BMS and its Affiliates may not operate under the
ThermoFluor(R) Technology and/or the Scriptgen Patent Rights
on behalf of any Third Party, such as, for example, in
connection with providing research or development services to
any Third Party on a contractual basis.
3.11.2 BMS and its Affiliates may not sublicense or assign the
Scriptgen Patent Rights and may not transfer or share the
ThermoFluor(R) Technology with any Third Party.
3.11.3 BMS and its Affiliates may not provide services to any Third
Party with respect to the ThermoFluor(R) Technology or the
Scriptgen Patent Rights.
3.11.4 Notwithstanding the purchase of the Instruments or the license
grants in Sections 3.5 and 3.9, in no event shall BMS or its
Affiliates be permitted to use the Instruments, the
ThermoFluor(R) Technology or the Scriptgen Patent Rights with
any [**].
3.11.5 No rights to manufacture, modify or develop Instruments are
granted by this Agreement.
3.12 ThermoFluor(R) Software Restrictions. Except as may be permitted
pursuant to the terms of the escrow agreement entered into among 3DP,
BMS and the Escrow Agent pursuant to Section 4.4, BMS shall not: (a)
exceed the scope of the license
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
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granted in this Article 3; (b) reverse engineer, decompile,
disassemble or otherwise attempt to learn the source code, structure,
algorithms or ideas underlying the ThermoFluor(R) Software; (c) tamper
with, alter, adjust, add to, copy or disseminate the ThermoFluor(R)
Software; (d) modify, translate or create derivative works based on
the ThermoFluor(R) Software without the prior written consent of 3DP;
(e) possess or use the ThermoFluor(R) Software or any portion thereof,
other than in machine-readable Object Code; or (f) remove any
copyright, trademark, patent or other proprietary notices which appear
on the ThermoFluor(R) Software or copies thereof.
3.13 Packaging and Delivery.
3.13.1 Unless BMS reasonably requests otherwise, all Instruments
purchased by BMS shall be packed for shipment and stored in
accordance with 3DP's then-standard commercial practices. It
is BMS's obligation to notify 3DP of any special packaging
requirements, which requirements 3DP shall use reasonable
efforts to comply with at BMS's sole expense.
3.13.2 All deliveries of the Instruments by 3DP to BMS under this
Agreement shall be F.O.B., 3DP's distribution center for the
Instruments. Title and risk of loss, delay or damage shall
pass from 3DP to BMS at the time of delivery of each shipment
of the Instruments to the originating carrier at 3DP's
manufacturing or storage facility. Deliveries will be made
"Freight Collect" with all freight insurances, duties,
customs, import fee, brokerage charges, documentation, and
related costs to be paid by BMS.
3.13.3 Upon receipt of each Instrument, BMS agrees to inspect,
promptly and thoroughly, such Instruments for any damage or
defects in materials and workmanship. In the event that any
Instrument is damaged or contains defects in materials or
workmanship, BMS shall promptly provide 3DP with written
notice thereof. Such notice must be received by 3DP within
thirty (30) business days after the date BMS receives the
Instruments and must specify, with particularity, the manner
in which the Instrument is damaged or defective. In the
absence of such notification within said period of time, BMS
shall be deemed to have accepted the Instruments as undamaged
and without defects, and all claims with respect thereto,
except for claims of defects that could not reasonably have
been discovered by a thorough inspection of the Instruments,
shall be deemed waived by BMS, irrespective of whether the
facts giving rise to such claims shall have been discovered.
3.13.4 Notwithstanding anything to the contrary in this Agreement or
otherwise, BMS's sole remedy and 3DP's sole responsibility
with respect to any Instrument that is damaged or defective,
as a result of any 3DP action or negligence, or any other
liability, shall be to repair or replace the damaged
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
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or defective Instrument, or to refund the price paid by BMS
therefor. 3DP shall be obligated to pay for or to reimburse
BMS for any freight or insurance costs associated with the
return to 3DP of any Instruments that are damaged or
defective, provided that such return and the method thereof is
authorized in advance by 3DP.
3.14 Instrument Warranty. 3DP warrants to BMS good title to each Instrument
at the time of delivery thereof to BMS.
3.15 Disclaimer. EXCEPT AS SET FORTH IN SECTION 3.13, 3DP PROVIDES THE
THERMOFLUOR(R) SOFTWARE AND INSTRUMENTS "AS IS" AND WITHOUT WARRANTY,
AND 3DP DISCLAIMS ANY AND ALL OTHER WARRANTIES, CONDITIONS, OR
REPRESENTATIONS (EXPRESS OR IMPLIED, STATUTORY, ORAL OR WRITTEN),
INCLUDING, BUT NOT LIMITED TO, ANY AND ALL IMPLIED WARRANTIES OF
CONDITION, PERFORMANCE, SATISFACTORY QUALITY, TITLE, NONINFRINGEMENT,
MERCHANTABILITY, OR FITNESS OR SUITABILITY FOR ANY PURPOSE (WHETHER OR
NOT 3DP KNOWS, HAS REASON TO KNOW, HAS BEEN ADVISED, OR IS OTHERWISE
IN FACT AWARE OF ANY SUCH PURPOSE), WHETHER ALLEGED TO ARISE BY LAW,
BY REASON OF CUSTOM OR USAGE IN THE TRADE, OR BY COURSE OF DEALING.
ARTICLE 4
OBLIGATIONS OF THE PARTIES
4.1 Efforts. Each party shall use good faith, commercially-reasonable
efforts to perform its responsibilities under this Agreement. As used
herein, the term "commercially-reasonable efforts" will mean efforts
consistent with such Party's prudent scientific and business judgment
in accordance with its internal practices as applied to other programs
of similar scientific and commercial potential.
4.2 Training; Support; Maintenance. 3DP will provide up to [**] days of
training, by telephone, or for BMS Sites in the United States,
personal training at such BMS Site (with BMS promptly reimbursing 3DP
for out-of-pocket business travel and living expenses related to such
travel, and scheduling each visit to use at least one full day of
training at a BMS Site) to BMS per each Instrument purchased by BMS,
up to a maximum of [**] days, until the [**] anniversary of the
Effective Date. 3DP will provide additional training and support as
requested by BMS at a cost to be negotiated by the Parties in good
faith. The Parties acknowledge that service and maintenance on the
Instruments purchased by BMS may be provided through a contract with a
Third Party.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
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4.3 Updates. 3DP shall provide Updates to the ThermoFluor(R) Software to
BMS without additional charge to BMS, as they are released by 3DP from
time to time, until the fourth anniversary of the Effective Date.
4.4 Disclosure of Results; Reports. BMS shall supply to 3DP, at a minimum,
quarterly written reports presenting a meaningful summary of the work
performed under the ThermoFluor(R) Technology, as well as with the
Instruments.
4.5 Escrow of Source Code. Promptly after the Effective Date, 3DP shall
deposit with a Third Party, mutually-acceptable to the Parties (the
"Escrow Agent"), a copy of the ThermoFluor(R) Source Code. Pursuant to
an agreement to be entered into among 3DP, BMS and the Escrow Agent,
the Escrow Agent shall release such Source Code to BMS in the event
3DP: (i) files a petition for bankruptcy; (ii) has such a petition
filed against it which has not been dismissed within ninety (90) days;
(iii) becomes insolvent; (iv) makes an assignment for the benefit of
creditors or other equitable arrangement or composition; (v) ceases
doing business; or (vi) ceases to support or maintain the
ThermoFluor(R) Software. 3DP shall bear all costs and expenses with
respect to such escrow arrangement. Following the initial deposit, 3DP
shall be obligated to notify BMS of any update to the Source Code held
in escrow at least every calendar quarter through the fourth
anniversary of the Effective Date.
ARTICLE 5
PAYMENT TERMS
5.1 Mode of Payment. All payments to 3DP hereunder shall be made by wire
transfer of United States Dollars in the requisite amount to such bank
account as 3DP may designate by timely notice to BMS. Payments shall
be free and clear of any taxes, fees or charges, to the extent
applicable.
5.2 Late Payments. All amounts payable by BMS hereunder, shall be paid by
BMS to 3DP in full, without any right of set-off or deduction. BMS
shall pay interest on all amounts past due at the annual rate of one
percent (1%) over the prime rate of interest reported in The Wall
Street Journal for the date such amount was due.
ARTICLE 6
CONFIDENTIALITY
6.1 Confidentiality Obligations. The Parties agree that, for the term of
this Agreement and for ten (10) years thereafter, each Party, as a
Receiving Party, that receives Confidential Information from the other
Party, shall keep, and shall take
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
12
<PAGE>
steps, not fewer than it takes to protects its own valuable,
proprietary information, and not less than reasonable measures, to
attempt to ensure that its officers, directors and employees keep,
confidential, and shall not publish or otherwise disclose, and shall
not use for any purpose (except as expressly permitted hereunder) any
Confidential Information (including without limitation, Know-how)
furnished to it by its Disclosing Party pursuant to this Agreement.
6.2 Written Assurances and Permitted Uses of Confidential Information.
6.2.1 The Receiving Party may disclose the Disclosing Party's
Confidential Information to the extent the Receiving Party is
compelled to disclose such information by a judicial or
administrative authority of competent jurisdiction, including
but not limited to submitting information to tax authorities or
to comply with any discovery or similar request for production
of documents in litigation or similar alternative dispute
resolution proceedings, provided however, that in such case,
the Receiving Party shall timely give notice to the Disclosing
Party so that the Disclosing Party may seek a protective order
or other remedy from said authority. In any event, the
Receiving Party shall disclose only that portion of the
Confidential Information that, in the opinion of its legal
counsel, is legally required to be disclosed, and will exercise
reasonable efforts to ensure that any such information so
disclosed will be accorded confidential treatment by said court
or tribunal.
6.2.2 The existence and the terms and conditions of this Agreement
which the Parties have not specifically agreed to disclose
pursuant to this Section 6.2 shall be treated by each Party as
Confidential Information of the other Party.
6.2.3 To the extent that it is reasonably necessary or appropriate to
fulfill its obligations to comply with the rules controlling
disclosure of material information during patent examination,
either Party may disclose Confidential Information received
from the other Party to the United States Patent & Trademark
Office or the Canadian or the European Patent Offices.
6.3 Permitted Disclosures for Business Development Purposes.
Notwithstanding the foregoing, or any other provision in this
Agreement to the contrary, 3DP may describe the financial terms of
this Agreement in confidence, in connection with capital raising or
financing activities; provided, however, any such recipient of such
Confidential Information shall agree in writing to keep such terms
confidential for the same time periods and to an equivalent extent as
3DP is required to keep Confidential Information confidential under
this Agreement. Furthermore, BMS acknowledges that 3DP may be
obligated to disclose terms of this Agreement and make public a copy
of this Agreement in the event it files a
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
13
<PAGE>
registration statement with respect to its shares or it becomes a
public company as required by applicable U.S. law; provided however,
the terms of this Agreement and the copy submitted to the applicable
governmental agency shall be redacted such that the extent of any such
disclosure shall be limited to that which in the reasonable opinion of
3DP's legal counsel is legally required to be disclosed.
ARTICLE 7
PATENT RIGHTS AND INFRINGEMENT
7.1 DirectedDiversity(R) Patent Rights and ThermoFluor(R) Patent Rights.
3DP agrees to use commercially-reasonable efforts to prepare, file,
prosecute and maintain the DirectedDiversity(R) Patent Rights and the
ThermoFluor(R) Patent Rights, at 3DP's expense, in a manner deemed
appropriate in 3DP's sole judgment, and use commercially-reasonable
efforts to decide whether to file, and, if so, to prepare, file,
prosecute and maintain any jointly-owned patent rights, as anticipated
in Section 3.8, at equally-shared expense, with due consideration of
BMS's input, but in a manner deemed appropriate in 3DP's sole
judgment. 3DP agrees to keep BMS materially advised of the status of
all relevant DirectedDiversity(R) Patent Rights and the ThermoFluor(R)
Patent Rights, and jointly-owned patent rights, upon reasonable
written request from BMS.
7.2 BMS Patent Rights. BMS agrees to keep 3DP materially advised of the
status of all patent rights filed by or granted to BMS and/or its
Affiliates which are based on, derived from, improvements of and/or
related to DirectedDiversity(R) Patent Rights and/or ThermoFluor(R)
Technology, and under which 3DP has rights, according to the
provisions of Section 2.2.
7.3 Cooperation. Each Party agrees to endeavor in good faith to coordinate
its efforts with the other Party in order to minimize or avoid
interference with the patent prosecution or rights of the other Party
with respect to patent rights under which the other Party has a
license.
7.4 Infringement by Third Parties. In the event that BMS becomes aware of
any infringement by one or more Third Parties of any of the patents
within DirectedDiversity(R) Patent Rights or within the ThermoFluor(R)
Patent Rights, or of any rights in the ThermoFluor(R) Software, BMS
shall promptly notify 3DP. 3DP shall respond to any such infringement
by Third Parties in a manner deemed appropriate by 3DP, in its sole
judgment.
7.5 Third Party Patent Rights. If any warning letter or other notice of
infringement is received by a Party, or action, suit or proceeding is
brought against a Party alleging infringement of a patent of any Third
Party with respect to operations under the DirectedDiversity(R) Patent
Rights or the ThermoFluor(R) Technology,
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
14
<PAGE>
the Parties shall promptly discuss and decide what response is in the
best interests of the Parties.
ARTICLE 8
REPRESENTATIONS AND WARRANTIES
8.1 Authority. Each Party represents and warrants that it has the full
right, power and authority to execute, deliver and perform its
obligations pursuant to this Agreement.
8.2 No Conflicts. Each Party represents and warrants that the execution,
delivery and performance of this Agreement does not conflict with, or
constitute a breach or default under any of its charter or
organizational documents, any law, order, judgment or governmental
rule or regulation applicable to it, or any material agreement,
contract, commitment or instrument to which it is a party.
8.3 No Unauthorized Operations Under DirectedDiversity(R) Patent Rights
and the ThermoFluor(R) Technology. BMS represents and warrants that it
will not operate, or permit another, about which it has knowledge and
with which it has a relationship, to operate, under the
DirectedDiversity(R) Patent Rights or the ThermoFluor(R) Technology at
any site that is not a BMS Site.
8.4 Patents. 3DP represents and warrants that Exhibit A and Exhibit C are
accurate and complete, and identify all patent rights owned by 3DP, as
of the Effective Date, which are believed necessary for the use of the
methods and technology claimed in the DirectedDiversity(R) Patent
Rights and the ThermoFluor(R) Patent Rights, in accordance with the
licenses granted hereunder. [**] 3DP has not conducted, and is not
obliged to conduct, either a search for, or an analysis of, United
States patents, Canadian patents and/or patents issued to members of
the European Patent Community, that may be infringed by the practice
of any Instrument, as anticipated in this Agreement, [**].
8.5 Disclaimer of Warranties. EXCEPT AS SET FORTH IN SECTION 3.13, 3DP
MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OR CONDITIONS OF
ANY KIND, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO THE
DIRECTEDDIVERSITY(R) PATENT RIGHTS, THE THERMOFLUOR(R) TECHNOLOGY, OR
THE INSTRUMENTS INCLUDING, BUT NOT LIMITED TO, WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
ARTICLE 9
TERM AND TERMINATION
9.1 Term. This Agreement shall commence upon the Effective Date and shall
expire upon the expiration of all of the licenses granted in Article 2
and Article 3. The license grant to BMS pursuant to Article 2 shall
terminate upon the expiration or lapse of the last-to-expire
DirectedDiversity(R) Patent Rights listed in Exhibit A,
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
15
<PAGE>
and the license grant to BMS pursuant to Article 3 shall terminate
upon the expiration or lapse of the last-to-expire ThermoFluor(R)
Patent Rights listed in EXHIBIT C.
9.2 Termination for Breach. The failure by a Party to comply with any of
the material obligations contained in this Agreement shall entitle the
other Party to give notice to the allegedly breaching Party to have
the default cured. If such default is not cured within sixty (60) days
after the receipt of such notice, or diligent and ongoing steps are
not taken to cure, if by its nature such default could not be cured
within sixty (60) days, the notifying Party shall be entitled, without
prejudice to any of its other rights conferred on it by this
Agreement, and in addition to any other remedies that may be available
to it, to terminate this Agreement, provided, however, that such right
to terminate shall be stayed in the event that, during such sixty (60)
day period, the Party alleged to have been in default shall have: (a)
initiated arbitration in accordance with the provisions of Section
10.1, below, with respect to the alleged default, and (b) diligently
and in good faith cooperated in the prompt resolution of such
arbitration proceedings.
9.3 No Waiver. The right of a Party to terminate this Agreement, as
provided in Section 9.2, shall not be affected in any way by its
waiver or failure to take action with respect to any prior default.
9.4 Insolvency or Bankruptcy.
9.4.1 Either Party may, in addition to any other remedies available
by law or in equity, terminate this Agreement by written notice
to the other Party in the event that the latter Party shall
have become insolvent or bankrupt, or shall have an assignment
for the benefit of its creditors, or there shall have been
appointed a trustee or receiver of the other Party or for all
or a substantial part of its property, or any case or
proceeding shall have been commenced or other action taken by
or against the other Party in bankruptcy or seeking
reorganization, liquidation, dissolution, winding-up,
arrangement or readjustment of its debts or any other relief
under any bankruptcy, insolvency, reorganization or other
similar act or law of any jurisdiction now or hereafter in
effect, or there shall have been issued a warrant of
attachment, execution, distraint or similar process against any
substantial part of the property of the other Party, and any
such event shall have continued for 90 days undismissed,
unbonded and undischarged.
9.4.2 All rights and licenses granted under or pursuant to this
Agreement by BMS or 3DP are, and shall otherwise be deemed to
be, for purposes of Section 365(n) of the U.S. Bankruptcy Code,
licenses of right to "Intellectual Property," as defined under
Section 101 of the U.S. Bankruptcy Code. The Parties agree that
the Parties, as licensees of such rights under this Agreement,
shall retain and may fully exercise all of their
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
16
<PAGE>
rights and elections under the U.S. Bankruptcy Code. The Parties
further agree that, in the event of the commencement of a
bankruptcy proceeding by or against either Party under the U.S.
Bankruptcy Code, the Party hereto which is not a party to such
proceeding shall be entitled to a complete duplicate of (or
complete access to, as appropriate) any such intellectual
property and all embodiments of such relevant intellectual
property, and same, if not already in their possession, shall be
promptly delivered to them (i) upon any such commencement of a
bankruptcy proceeding upon their written request therefor, unless
the Party subject to such proceedings elects to continue to
perform all of their obligations under this Agreement, or (ii) if
not delivered under (i) above, upon the rejection of this
Agreement by or on behalf of the Party subject to such proceeding
upon written request therefor by a nonsubject Party.
9.5 Survival of Obligations. The termination or expiration of this
Agreement shall not relieve the Parties of any obligations accruing
prior to such termination, and any such termination shall be without
prejudice to the rights of either Party against the other. The
provisions of Section 2.3, Section 3.6, Section 3.7, Section 3.8,
Section 3.13, Section 3.14, Section 4.5, Section 5.2, Article 6,
Section 8.5, Section 9.5, Article 10, Article 11 and Article 12
(except Section 12.5) shall survive any termination of this Agreement.
9.6 Return of Confidential Information. Upon termination of this Agreement
by 3DP pursuant to Section 9.2 or 9.4, BMS will promptly return all
3DP Confidential Information related to ThermoFluor(R) Technology
transferred to it under this Agreement, whether in oral, written,
graphic or electronic form, and will cease all use of ThermoFluor(R)
Technology; provided, however, that BMS shall thereafter continue to
have all rights to use any information or results obtained by BMS from
its use of ThermoFluor(R) Technology during the term of this
Agreement, and 3DP will return all BMS Confidential Information
received hereunder. Notwithstanding the provisions above in Section
9.6, BMS may retain and use 3DP Confidential Information related to
ThermoFluor(R) Technology solely with respect to the Instruments it
has purchased from 3DP hereunder, but not to build or modify any
Instrument, or any instrument performing the same or similar function
to an Instrument, and not to disclose to or use such information for
any Third Party.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
17
<PAGE>
ARTICLE 10
DISPUTE RESOLUTION
10.1 Dispute Resolution. Any dispute concerning or arising out of this
Agreement or concerning the existence or validity hereof, shall be
determined by the following procedure.
10.1.1 Both Parties understand and appreciate that their long term
mutual interest will be best served by affecting a rapid and
fair resolution of any claims or disputes which may arise out of
services performed under this Agreement or from any dispute
concerning the terms of this Agreement. Therefore, both Parties
agree to use their reasonable best efforts to resolve all such
disputes as rapidly as practicable on a fair and equitable
basis. Toward this end, both Parties agree to develop and follow
a process for presenting, rapidly assessing, and settling claims
on a fair and equitable basis that takes into account the
precise subject and nature of the dispute.
10.1.2 If any dispute or claim arising under this Agreement cannot be
readily resolved by the Parties pursuant to the process
described above, then the Parties agree to refer the matter to a
panel consisting of the Chief Executive Officer of 3DP, and the
Senior Vice President of Early Discovery and Applied Technology
for BMS, or a comparable position selected by either Party from
time to time, for review and a non-binding resolution. A copy of
the terms of this Agreement, agreed upon facts (and areas of
disagreement), and concise summary of the basis for each side's
contentions will be provided to both such representatives who
shall review the same, confer, and attempt to reach a mutual
resolution of the issue.
10.1.3 If the matter has not been resolved utilizing the foregoing
process, and the Parties are unwilling to accept the non-binding
decision of the indicated panel, either or both Parties may
elect to pursue definitive resolution through binding
arbitration, which the Parties agree to accept in lieu of
litigation or other legally-available remedies (with the
exception of injunctive relief where such relief is necessary to
protect a Party from irreparable harm pending the outcome of any
such arbitration proceeding). Binding arbitration shall be
settled in accordance with the Commercial Arbitration Rules of
the American Arbitration Association by a panel of three
arbitrators chosen in accordance with these Rules. This
Agreement shall be governed by and construed in accordance with
the substantive laws of the State of Delaware, without regard to
the conflicts of laws provisions of Delaware. The arbitration
will be held in Wilmington, Delaware. Judgment upon the award
rendered may be entered in any court having jurisdiction and the
Parties hereby consent to the said
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
18
<PAGE>
jurisdiction and venue, and further irrevocably waive any
objection which either Party may have now or hereafter to
the laying of venue of any proceedings in said courts and to
any claim that such proceedings have been brought in an
inconvenient forum, and further irrevocably agree that a
judgment or order in any such proceeding shall be conclusive
and binding upon the Parties and may be enforced in the
courts of any other jurisdiction.
ARTICLE 11
INDEMNIFICATION
11.1 Indemnification of 3DP. BMS shall indemnify and defend 3DP and
its Affiliates, and the directors, officers, employees, agents
and counsel of 3DP and such Affiliates, and the successors and
assigns of any of the foregoing (the "3DP Indemnitees"), and
hold the 3DP Indemnitees harmless from and against any and all
losses resulting from any claim, suit or proceeding brought by
one or more Third Parties against a 3DP Indemnitee, arising from
or occurring as a result of the operations by BMS under the
DirectedDiversity(R) Patent Rights or the ThermoFluor(R)
Technology or use of the Instruments, or the discovery,
evaluation, manufacture, import, use, offer for sale or sale of
products developed in whole or in part through the operations by
BMS under the DirectedDiversity(R) Patent Rights and the
ThermoFluor(R) Technology or use of the Instruments, except to
the extent any such claim, suit or proceeding results from the
breach of any of the provisions of this Agreement, gross
negligence or willful misconduct of 3DP.
11.2 Procedure. Any of the 3DP Indemnitees that intends to claim
indemnification under this Article 11 shall promptly notify BMS
(the "Indemnitor") in writing of any liability, damage, loss,
cost and/or expense (including reasonable attorneys' fees)
arising out of Third Party claims or lawsuits in respect of
which the 3DP Indemnitee intends to claim such indemnification,
and shall permit the Indemnitor to assume direction and control
of the defense of the claim (including the selection of counsel,
reasonably acceptable to the 3DP Indemnitee, and the right to
negotiate a settlement, at the discretion of the Indemnitor,
provided that such settlement does not impose any material
obligation or detriment on the 3DP Indemnitee), and shall
cooperate as requested (at the expense of the Indemnitor) in the
defense of the claim; provided, however, that a 3DP Indemnitee
shall have the right to retain its own counsel, with the fees
and expenses to be paid by such 3DP Indemnitee. The failure to
deliver written notice to the Indemnitor within a reasonable
time after the commencement of any such action, if prejudicial
to its ability to defend such action, shall relieve the
Indemnitor of any liability to the 3DP Indemnitee under this
Article 11. At the Indemnitor's request, the 3DP Indemnitee
under this Article 11, and its employees and agents, shall
cooperate
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
19
<PAGE>
fully with the Indemnitor and its legal representatives in the
investigation of any loss covered by this indemnification and
provide true, correct and complete information with respect
thereto.
ARTICLE 12
MISCELLANEOUS
12.1 Entire Agreement. This Agreement, and the DiscoverWorks Drug
Discovery Collaboration Agreement, the GPCR License And User
Agreement and the PERT Internal Use License and Option
Agreement, all entered into simultaneously with this Agreement,
constitute and contain the entire understanding and agreement of
the Parties respecting the subject matters of these respective
agreements, and cancel and supersede any and all prior
negotiations, correspondence, understandings and agreements
between the Parties, whether oral or written, regarding such
subject matters.
12.2 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.
12.3 Binding Effect. This Agreement and the rights granted herein
shall be binding upon and shall inure to the benefit of 3DP,
BMS, and their successors and permitted assigns.
12.4 Assignment. Neither Party shall assign this Agreement without
the prior written consent of the other Party; provided, however,
that either Party may assign this Agreement without the prior
written consent of the other Party in connection with the sale
or transfer of substantially all of its assets that relate to
this Agreement, or in the event of its merger or consolidation
or change of control or similar transaction. Any permitted
assignee shall assume all obligations of its assignor under this
Agreement.
12.5 Restrictions on Unsolicited Activities. In consideration of the
licenses granted hereunder, BMS agrees that for the term of this
Agreement, without the prior written consent of the board of
directors of 3DP, neither BMS nor any of its respective
Affiliates (including any person or entity directly or
indirectly, through one or more intermediaries, controlling one
of these entities, or controlled by one of these entities or
under common control with one of these entities) will (i)
purchase, offer or agree to purchase, or announce an intention
to purchase, directly or indirectly, any securities or assets of
3DP; (ii) make, or in any way participate, directly or
indirectly, in any "solicitation" of "proxies" to vote or
"consents" (as such terms are used in the rules and regulations
of the Securities
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
20
<PAGE>
and Exchange Commission), or seek to advise or influence any
person with respect to the voting of any voting securities of
3DP or any Affiliate thereof; (iii) initiate or support,
directly or indirectly, any stockholder proposal with respect to
3DP; (iv) directly or indirectly make any public announcement
with respect to, or submit a proposal for, or offer of (with or
without conditions) any extraordinary transaction involving 3DP
or its securities or assets, or any Affiliate thereof, or of any
successor to or person in control of 3DP or any of its
businesses, or any assets of 3DP any Affiliate or division
thereof, or of any such successor or controlling person; or (v)
form, join or in any way participate in a "group" as defined in
Section 13(d)(3) of the Exchange Act in connection with any of
the foregoing. Nothing contained in this Section 12.5 shall
prohibit the ownership by BMS of up to 1% of any class of
securities of 3DP which are registered pursuant to the Exchange
Act.
12.6 No Implied Licenses. No rights to any other patents, Know-how or
technical information, or other Intellectual Property rights,
other than as explicitly identified herein, are granted or
deemed granted by this Agreement. No right, expressed or
implied, is granted by this Agreement to a Party to use in any
manner the name or any other trade name or trademark of the
other Party in connection with the performance of this
Agreement.
12.7 No Waiver. No waiver, modification or amendment of any provision
of this Agreement shall be valid or effective unless made in
writing and signed by a duly authorized officer of each Party.
The failure of either Party to assert a right hereunder or to
insist upon compliance with any term or condition of this
Agreement shall not constitute a waiver of that right or excuse
a similar subsequent failure to perform any such term or
condition.
12.8 Force Majeure. The failure of a Party to perform any obligation
under this Agreement by reason of acts of God, acts of
governments, riots, wars, strikes, accidents or deficiencies in
materials or transportation or other causes of a similar
magnitude beyond its control shall not be deemed to be a breach
of this Agreement.
12.9 Independent Contractors. Both Parties are independent
contractors under this Agreement. Nothing contained in this
Agreement is intended nor is to be construed so as to constitute
3DP or BMS as partners or joint venturers with respect to this
Agreement. Neither Party shall have any express or implied right
or authority to assume or create any obligations on behalf of or
in the name of the other Party or to bind the other Party to any
other contract, agreement, or undertaking with any Third Party.
12.10 Notices and Deliveries. Any formal notices, request, delivery,
approval or consent required or permitted to be given under this
Agreement shall be in writing and shall be deemed to have been
sufficiently given when it is received, whether
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
21
<PAGE>
delivered in person, transmitted by facsimile with
contemporaneous confirmation, delivered by registered letter (or
its equivalent) or delivered by overnight courier service
(receipt required), to the Party to which it is directed at its
address shown below or such other address as such Party shall
have last given by notice to the other Parties.
If to BMS:
Bristol-Myers Squibb Company
Route 206 & Province Line Road
P.O. Box 4000
Princeton, New Jersey 08543
ATTN: Vice President and Senior Counsel
Pharmaceutical Research Institute
If to 3DP: with a copy to:
3-Dimensional Pharmaceuticals, Inc. Morgan, Lewis & Bockius LLP
Eagleview Corporate Center 502 Carnegie Center
665 Stockton Drive, Suite 104 Princeton, New Jersey 08540
Exton, PA 10341
ATTN: Chief Executive Officer ATTN: Randall B. Sunberg,
Esq.
12.11 Public Announcements. The Parties shall consult with each other
and reach mutual written agreement before making any public
announcement concerning this Agreement or its subject matter.
Notwithstanding the foregoing, the Parties may disclose the
existence and general nature of this Agreement and may make
disclosures for purposes of satisfying legal and regulatory
requirements in accordance with Article 6; however, neither
Party shall use the name of the other Party for promotional
purposes.
12.12 Headings. The captions to the sections in this Agreement are not
a part of this Agreement, and are included merely for
convenience of reference only and shall not affect its meaning
or interpretation.
12.13 Severability. If any provision of this Agreement becomes or is
declared by a court of competent jurisdiction to be illegal,
unenforceable or void, this Agreement shall continue in full
force and effect without said provision, so long as the
Agreement, taking into account said voided provision(s),
continues to provide the Parties with the same practical
economic benefits as the Agreement containing said voided
provision(s) did on the Effective Date. If, after taking into
account said voided provision(s), the Parties are unable to
realize the practical economic benefit contemplated on the
Effective Date, the Parties shall negotiate
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
22
<PAGE>
in good faith to amend this Agreement to reestablish the
practical economic benefit provided the Parties on the Effective
Date.
12.14 No Consequential Damages. IN NO EVENT SHALL EITHER PARTY OR ANY
OF ITS RESPECTIVE AFFILIATES BE LIABLE TO THE OTHER PARTY OR ANY
OF ITS AFFILIATES FOR SPECIAL, INDIRECT, INCIDENTAL OR
CONSEQUENTIAL DAMAGES, WHETHER IN CONTRACT, WARRANTY, TORT,
NEGLIGENCE, STRICT LIABILITY OR OTHERWISE, INCLUDING, BUT NOT
LIMITED TO, LOSS OF PROFITS OR REVENUE, OR CLAIMS OF CUSTOMERS
OF ANY OF THEM OR OTHER THIRD PARTIES FOR SUCH OTHER DAMAGES.
12.15 Applicable Law. This Agreement shall be governed by and
interpreted in accordance with the laws of the State of
Delaware, without reference to its conflicts of laws provisions.
12.16 Advice of Counsel. BMS and 3DP have each consulted with counsel
of their choice regarding this Agreement, and each acknowledges
and agrees that this Agreement shall not be deemed to have been
drafted by one party or another and will be construed
accordingly.
12.17 Counterparts. This Agreement may be executed in counterparts, or
facsimile versions, each of which shall be deemed to be an
original, and both of which together shall be deemed to be one
and the same agreement.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by
their respective duly authorized officers as of the date first above written,
each copy of which shall for all purposes be deemed to be an original.
3-DIMENSIONAL PHARMACEUTICALS, INC. BRISTOL-MYERS SQUIBB COMPANY
By: /s/ David C. U'Prichard By: /s/ Marilyn Hartig
Name: David C. U'Prichard, Ph.D. Name: Marilyn Hartig, Ph.D.
Title: Chief Executive Officer Title: VP, External Sciences
& Technology
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
23
<PAGE>
EXHIBIT A
DIRECTED DIVERSITY(R) PATENT RIGHTS
<TABLE>
<CAPTION>
Patent No. Issue Date
SKGF Ref. Title Serial Number Filing Date (if applicable) (if applicable)
------------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C> <C> <C>
1503.0010000 System and Method of Automatically 08/306,915 09/16/94 5,463,564 10/31/95
Generating Chemical Compounds with
Desired Properties
------------------------------------------------------------------------------------------------------------------------------
1503.0010001 System and Method of Automatically 08/535,822 09/28/95 5,574,656 11/12/96
Generating Chemical Compounds with
Desired Properties
------------------------------------------------------------------------------------------------------------------------------
1503.0010002 System and Method of Automatically 08/698,246 08/15/96 5,684,711 11/04/97
Generating Chemical Compounds with
Desired Properties
------------------------------------------------------------------------------------------------------------------------------
1503.0010003 System, Method and Computer Program 08/904,737 08/01/97 5,901,069 05/04/99
Product for At Least Partially
Automatically Generating Chemical
Compounds with Desired Properties
From a List of Potential Chemical
Compounds to Synthesize
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1503.001EP00 System and Method of Automatically 95933748.6 09/11/95 0781436 07/02/97
Generating Chemical Compounds with (Published) (Publication
Desired Properties date)
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1503.020EP01 System, Method and Computer Program 97948320.3 11/04/97 0935784 08/18/99
Product for Identifying Chemical (Published) (Publication
Compounds Having Desired Properties date)
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1503.020EP02 System, Method, and Computer Program 97946679.4 11/04/97 0935789 08/18/99
Product for the Visualization and (Published) (Publication
Interactive Processing and Analysis date)
of Chemical Data
</TABLE>
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
24
<PAGE>
<TABLE>
<CAPTION>
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1503.020PC03 System, Method, and Computer Program PCT/US99/09963 05/07/99 WO 99/57686 11/11/99
Product for Representing Proximity (Published) (Publication
Data in A Multi-dimensional Space date)
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<S> <C> <C> <C> <C> <C>
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</TABLE>
Exhibit A
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
25
<PAGE>
EXHIBIT B
Scriptgen Patent Rights
-----------------------
United States Patent No. 5, 585, 277
United States Patent No. 5, 679, 582
International Patent Application PCT/US96/19698
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
26
<PAGE>
EXHIBIT C
THERMOFLUOR(R) PATENT RIGHTS
<TABLE>
<CAPTION>
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Patent No. Issue Date
SKGF Ref. Title Serial Number Filing Date (if applicable) (if applicable)
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<S> <C> <C> <C> <C> <C>
1503.0110001 Microplate Thermal Shift Assay for Ligand 08/853,464 05/09/97 6,020,141 02/01/00
Development and Multi-variable Protein Chemistry
Optimization
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1503.0110002 Microplate Thermal Shift Assay for Ligand 08/853,459 05/09/97 6,036,920 03/14/00
Development and Multi-variable Protein Chemistry
Optimization
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1503.011EP03 Microplate Thermal Shift Assay and Apparatus for 97927628.4 05/09/97 0914608 05/12/99
Ligand Development and Multi-variable Protein (Published) (Publication
Chemistry Optimization date)
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1503.031PC01 High Throughput Method for Functionally PCT/US98/24035 11/12/98 WO 99/24050 05/20/99
(Now in Nat Phase) Classifying Proteins (Published) (Publication
date)
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</TABLE>
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
27
<PAGE>
EXHIBIT D.1
[**]
EXHIBIT D.2
[**]
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
28
