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EXHIBIT 10.35
DISCOVERWORKS(TM)
DRUG DISCOVERY COLLABORATION AGREEMENT
THIS DISCOVERWORKS(TM) DRUG DISCOVERY COLLABORATION 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"). 3DP and BMS may be referred to herein as a "Party" or,
collectively, as the "Parties."
WHEREAS, 3DP is engaged in discovery research for a variety of biologically-
active compounds and the development of technologies to facilitate such
research, and 3DP has developed and is patenting systems for identifying and
generating chemical compounds having desired pharmaceutical properties;
WHEREAS, BMS is a major pharmaceutical company engaged in research, development
and commercialization of biologically-active compounds for the treatment of
human diseases;
WHEREAS, 3DP and BMS desire to enter into a research and development
collaboration to identify Initial Hits, Improved Hits, Program Lead Compounds
and Pre-Clinical Lead Compounds (as such terms are defined herein) active
against selected targets, and suitable, if required, for medicinal chemistry
optimization, that may be developed and commercialized by BMS;
NOW, THEREFORE, in consideration of the various promises and undertakings set
forth herein, 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 "Active Compound" means a Program Lead Compound or a Pre-Clinical Lead
Compound identified in the course of the Research Program, or a
compound further optimized from such a Program Lead Compound or a Pre-
Clinical Lead Compound.
1.2 "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 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 percent (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
** 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 appoint at least fifty percent (50%) of the members of the
governing body of the corporation or other entity.
1.3 "Agreement" means this DiscoverWorks(TM) Drug Discovery Collaboration
Agreement, including its Exhibits, as may be amended from time to
time.
1.4 "Back-up Compound" means a compound identified in the course of the
Research Program which has activity against a Target in a Target
Field, that is intended to be reserved as a back-up for an Active
Compound or Licensed Product having activity against the same Target
in the same Target Field, and is not intended to be developed or
commercialized unless development and/or commercialization of such
Active Compound or Licensed Product is terminated.
1.5 "BMS" means Bristol-Myers Squibb Company, as identified above, and is
understood to include its Affiliates, when appropriate.
1.6 "Chemical Optimization" means the design, synthesis and identification
of Improved Hits, Program Lead Compounds and Pre-Clinical Lead
Compounds using DiscoverWorks Technology and other technologies
selected by the JSMC.
1.7 "Combination Product" means a Licensed Product that includes one or
more active ingredients other than an Active Compound.
1.8 "Confidential Information" means all technical and/or commercial
information that has or could have value or utility in a Party's
business, or the unauthorized disclosure of which could be detrimental
to the Party's interests, including information, inventions, Know-how,
data and materials relating to the Research Program or to the Licensed
Products, and shall include, without limitation, research, technical,
clinical development, manufacturing, marketing, financial, personnel
and other business information and plans, whether in oral, written,
graphic or electronic form, except to the extent that it can be
established by the Receiving Party (as defined in Section 7.1) that
such Confidential Information: (a) was already known to the Receiving
Party, other than under an obligation of confidentiality from the
Disclosing Party (as defined in Section 7.1); (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; (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 reference to the Confidential
Information received from the Disclosing Party and without breach of
any of the provisions of this Agreement; or (f) is information that
the Disclosing Party has specifically agreed in writing that the
Receiving Party may disclose.
** 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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1.9 "Contract Year" means a twelve (12)-month period beginning upon the
Effective Date or an anniversary thereof.
1.10 "DirectedDiversity(R) Technology" means the descriptions, figures and
claims of: (a) the Patent Rights identified in EXHIBIT A, and (b)
associated proprietary 3DP Know-how used to identify potential
therapeutic compounds.
1.11 "DiscoverWorks Technology" means DirectedDiversity(R) Technology and
ThermoFluor(R) Technology."
1.12 "ECN" or "Early Candidate Nomination" means documentation within
which an Active Compound is nominated for clinical development by BMS
pursuant to technical criteria established by the JMSC upon selection
of the Target against which such a compound is active, or as soon
thereafter as practical, and pursuant to the then-applicable internal
policies and procedures of BMS.
1.13 "Effective Date" means the later of: (a) the date of this Agreement
as set forth above; or (b) the date on which all of the following
documents between the Parties have been executed: this Agreement, the
GPCR License and User Agreement, the DiscoverWorks(TM) Nonexclusive
License and Purchase Agreement, and the PERT Internal Use License and
Option Agreement.
1.14 "Extended Research Term" means a period of time, mutually agreed upon
by the Parties, following conclusion of the Research Term (as defined
below), or of an earlier Extended Research Term, during which the
Research Program is conducted.
1.15 "Field" means the research, development and commercialization of
chemical compounds for use in therapeutic and diagnostic products,
except for use in the treatment or cure of [**].
1.16 "First Commercial Sale" means, with respect to a given Licensed
Product, the first sale for use or consumption by the public of such
Licensed Product in a country after all required approvals, including
marketing and pricing approvals, have been granted by the applicable
governmental drug regulatory agency of such country. "First
Commercial Sale" shall not include the sale of any Licensed Product
for use in clinical trials or for compassionate use prior to the
grant of an NDA.
1.17 "Focused Library" means a library of compounds selected from the 3DP
Synthetically Accessible Library and synthesized by 3DP using
DirectedDiversity(R) Technology.
1.18 "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 Research
Program (or on development of ThermoFluor(R) II Instruments under the
License Agreement, where applicable) with such time and effort to
constitute one employee working on
** 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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the Research Program (or under the License Agreement, where
applicable) 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, at least forty (40) hours per week of
dedicated effort for at least forty-eight (48) weeks per year). In no
event, does an FTE include a subcontractor.
1.19 "Improved Hit" means a compound resulting from the Chemical
Optimization of an Initial Hit that demonstrates improved
pharmacological and/or physical properties compared to those of the
corresponding Initial Hit, as determined and agreed upon by the JSMC.
1.20 "IND" means an application to be filed with the applicable regulatory
authority in a Major Country before the commencement of clinical
trials. In the U.S., IND means an Investigational New Drug
Application, or its equivalent, in the Food and Drug Administration
or successor agency.
1.21 "Initial Hit" means a compound in the 3DP Probe Library that [**],
as measured using ThermoFluor(R) Technology.
1.22 "Joint Steering and Management Committee" or "JSMC" shall have the
meaning and roles ascribed to it in Article 4.
1.23 "JRT" shall have the meaning ascribed to such term in Section 3.3.
1.24 "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),
laboratory records, chemical, pharmacological, toxicological,
clinical, analytical and quality control data, trial data, case
report forms, data analyses, reports or summaries and information
contained in submissions to, and information from, ethical committees
and regulatory authorities.
1.25 "License Agreement" means the DiscoverWorks Nonexclusive License and
Purchase Agreement entered into by the Parties and dated of even date
herewith.
1.26 "Licensed Product" means any commercial product containing an Active
Compound as an active ingredient.
1.27 "Major Country" means the United States, Japan, the United Kingdom,
France, Germany, Italy or Spain.
1.28 "NDA" means an application for the final approval required for
authorization for marketing of a Licensed Product in a Major Country
(including applicable regulatory, marketing and pricing
** 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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approval), in accordance with the applicable laws and regulations of a
given country. In the U.S., NDA means a New Drug Application, or its
equivalent, in the Food and Drug Administration or successor agency.
1.29 "Net Sales" means the aggregate gross invoiced price of Licensed
Product sold in the Territory by BMS, its Affiliates and any licensees
or sublicensees, to an independent Third Party, including but not
limited to distributors, in bona fide, arms-length transactions, after
deduction of the following items (to the extent actually incurred): (i)
customary trade, quantity and cash discounts, wholesaler-charge backs,
or rebates (including rebates to governmental agencies and government-
mandated and managed healthcare negotiated rebates); (ii) customary
credits or allowances for rejection or return of previously sold
Licensed Products; (iii) any direct tax, duties, tariffs, surcharges or
government charge (other than an income tax) levied on the sale,
importation, exportation, transportation or delivery of a Licensed
Product and borne by the seller thereof; (iv) retroactive price
reductions; and (v) any charge for freight, insurance or other
transportation charges, if separately stated. Such amounts shall be
determined from the books and records of BMS, its Affiliates and any
licensees or sublicensees, as the case may be, which books are
maintained in accordance with the generally accepted accounting
principles, consistently applied. Any sales for resale of Licensed
Products by BMS, its Affiliates or any licensees or sublicensees to
another Affiliate, licensee or sublicensee of BMS shall not result in
any Net Sales. In such case, Net Sales shall occur upon such other
Affiliate's, licensee's or sublicensee's sale of such Licensed Product
to an independent Third Party. Further, the disposition of Licensed
Products for, or the use of Licensed Products in, pre-clinical or
clinical trials, seeding or other market-focused trials or free samples
shall not result in any Net Sales.
In the event that all the active ingredients of a Combination Product
are also sold separately and in identical strengths to those contained
in the Combination Product, then Net Sales shall be calculated as set
forth above on the basis of the gross invoice price of a Licensed
Product containing the same weight of Active Compound sold
independently [ A ] divided by the sum of the gross invoice price of
each of the active ingredients contained in the Combination Product
sold independently [ B + A ], multiplied by the gross invoice price of
the Combination Product, as shown by the following formula:
Net Sales = [ A ]__ x [gross invoice price of the Combination Product]
---------
[ B + A ]
In the event that the Active Compound and/or any of the other active
ingredients of a Combination Product are not sold separately in
identical strengths to those contained in the Combination Product, then
the Parties agree to negotiate in good faith the calculation of Net
Sales with regard to such Combination Product based upon the relative
value of the active ingredients as determined by the Parties hereto in
good faith.
** 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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1.30 "Patent Rights" means all U. S. patent applications or issued
patents, including, but not limited to, provisionals, divisionals,
continuations, continuations-in-part, reissues, reexaminations, and
extensions derived therefrom, such as patent term restorations,
supplementary protection certificates, etc., as well as all foreign
patents (including PCTs) and foreign patent counterparts to the
foregoing.
1.31 "Pre-Clinical Lead Compound" means a further-optimized Program Lead
Compound that is the subject of any ECN and that the JSMC determines
possesses the pharmacological, toxicological, pharmacokinetic and
pharmaceutical properties from preliminary studies that are
indicative of a high probability for successful development, and that
the JSMC recommends for evaluation as a potential clinical candidate.
Pre-Clinical Lead Compounds will meet specific program objectives as
determined and defined by the JSMC.
1.32 "Program Lead Compound" means a compound that meets Target-specific
criteria, as determined by the JSMC, indicating that the compound is
suitable for optimization and has a high potential to lead to the
identification of a Pre-Clinical Lead Compound.
1.33 "Research Plan" means the detailed description of the research and
development activities of the Parties for particular Targets in the
performance of the Research Program, including an allocation of FTEs
to be used for various tasks and a timeline for such tasks. A draft
of the Research Plan is attached hereto as EXHIBIT C. The JSMC shall
finalize the Research Plan for the first Contract Year within 30 days
after the Effective Date. Thereafter, the Research Plan shall be
updated by the JSMC in writing as changes are made to the Research
Program on at least an annual basis.
1.34 "Research Program" means the collaborative discovery and optimization
activities of the Parties, as described in Article 2, that are
intended to lead to the discovery of Initial Hits, Improved Hits,
Program Lead Compounds and Pre-Clinical Lead Compounds.
1.35 "Research Program Know-how" means Know-how conceived or developed
during the conduct of the Research Program and relates to Improved
Hits, Program Lead Compounds, Pre-Clinical Lead Compounds and/or
Licensed Products.
1.36 "Research Program Patent Rights" means those Patent Rights that claim
discoveries or inventions that are conceived in the course of the
Research Program and reduced to practice during either the term of
the Research Program or a period of one-year following the
termination of the Research Program, regardless of their ownership.
1.37 "Research Term" means the period, from the Effective Date through the
third anniversary thereof, during which the Research Program is
conducted.
** 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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1.38 "Stage I" means the research activities undertaken by the Parties
pursuant to Article 2 as part of the Research Program.
1.39 "Stage II" means the research activities undertaken by the Parties
pursuant to Article 2 as part of the Research Program.
1.40 "Stage III" means the research activities undertaken by the Parties
pursuant to Article 2 as part of the Research Program.
1.41 "Synthetically Accessible Library" means 3DP's virtual compound
library from which 3DP Probe Libraries have been selected, and from
which Focused Libraries will be selected.
1.42 "Target" means a protein against which Initial Hits, Improved Hits,
Program Lead Compounds and Pre-Clinical Lead Compounds are to be
developed. Until March 7, 2003, Target shall not include the use of
any proteins to discover or develop a drug that exerts a therapeutic
effect in Hepatitis C infection, and no more than three Targets in
total may involve antiviral Targets.
1.43 "Target Field" with respect to each Target means the disease state(s)
that are a focus of a collaborative research effort by the Parties
pursuant to the Research Program with the objective of identifying
compounds with potential diagnostic and/or therapeutic utility for
the treatment/management of said disease state(s), as determined by
the JSMC pursuant to Section 2.1. For example, a program focused on
the discovery of a novel thrombin inhibitor would be within the
Target Field of anticoagulants. Therefore, other protease inhibitors
that are not anticoagulants would be outside the Target Field. For
purposes of this definition, anti-infectives shall be considered a
single Target Field.
1.44 "Territory" means the entire world.
1.45 "ThermoFluor(R) Technology" means (a) the Patent Rights identified in
EXHIBIT B, and (b) associated proprietary 3DP Know-how used to
evaluate ligand-binding parameters.
1.46 "Third Party" means an individual, corporation or other entity other
than a Party or any of its Affiliates.
1.47 "3DP Probe Library" means 3DP's collection of approximately [**]
small molecule chemical compounds that have been synthesized by 3DP
for the purpose of screening new Targets and against which Targets
are screened to identify Initial Hits.
1.48 "Valid Claim" means a claim of a Patent Right that has not lapsed or
become abandoned or been declared invalid or unenforceable by a court
or agency of competent jurisdiction from which no appeal can be or
has been taken.
** 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
RESEARCH PROGRAM
STAGE I -- INITIAL SCREENING AND CHEMICAL OPTIMIZATION
2.1 Supply of Targets. BMS shall supply 3DP with [**] Targets during each
Contract Year. The actual number of Targets to be provided to 3DP
under this Section shall be determined by the JSMC in connection with
preparation of the Research Plan for such Contract Year. Such Targets
shall be supplied in the form of [**]. During the [**] Contract Year
of the Research Program all Targets must be derived from [**]. After
the [**] Contract Year, Targets may be derived from any organism;
however, any Targets may be disapproved by 3DP solely in order to
avoid potential conflicts with respect to prior contractual
obligations and current internal 3DP programs. In connection with the
selection and approval of Targets to be included as part of the
Research Program, the JSMC shall determine the Target Field relating
to such Target.
2.2 Initial Screening and Initial Hits. Depending on the nature and source
of each Target, 3DP shall screen the Target against a screening
library, created from the 3DP Probe Library, totaling no more than
[**] compounds per Target that are selected by [**] to identify
Initial Hits. The JSMC may ask 3DP to screen [**] from the 3DP Probe
Library [**]. This additional screening, if any, shall be subject to
the overall disposition of Research Program FTE resources as
determined by the JSMC, and 3DP's screening capacity available to the
Research Program.
2.3 Initial Chemical Optimization. At the request of the JSMC, 3DP will
initially undertake [**] Chemical Optimization of Initial Hits for any
Target, synthesizing Focused Libraries containing up to [**] to be
screened against the Target, in order to identify Improved Hits. 3DP
will undertake additional rounds of Chemical Optimization of Initial
Hits, as requested by the JSMC, following the first [**] Chemical
Optimization, subject to the number of FTE's available under the
Research Program and 3DP's capacity available to the Research Program.
The precise number of such compounds in any such Focused Libraries,
the number of rounds of Chemical Optimization and the extent of any
additional screening of the 3DP Probe Libraries as described above in
each Contract Year will be determined by the JSMC, taking into
consideration the total number of Targets selected and approved by the
JSMC for evaluation in Stage I of the Research Program.
2.4 Site of Stage I Activities. All Research Program activities to be
conducted in Stage I of the Research Program shall be performed at
3DP.
2.5 Additional Targets and Extended Term for Research Program. An increase
in the number of Targets being screened by 3DP beyond [**] at any
given time during the Research Program, or an extension of the
Research Program beyond the initial three-year term may be requested
by BMS. In the case of such additional Targets, where possible, the
JSMC shall agree upon a reallocation of FTEs to be used under the
Research Program. Otherwise, or in the case of an
** 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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extension of the Research Term (as hereinafter defined), the Parties
shall negotiate in good faith for sixty (60) days to reach agreement
on a fair and equitable increase in the compensation to 3DP for such
additional Targets or extended Research Term.
STAGE II - PROGRAM LEAD COMPOUND IDENTIFICATION
2.6 Commencement of Stage II. Stage II shall commence upon the achievement
of a level of success in Stage I of the Research Program to be
determined by the JSMC.
2.7 Selection of Hits for Continued Optimization. The JSMC shall select
some or all of the Improved Hits on a Target-by-Target basis for
further rounds of Chemical Optimization in this Stage II of the
Research Program. Such Chemical Optimization may utilize, by mutual
agreement, DirectedDiversity(R) Technology and ThermoFluor(R)
Technology, or a suitable biochemical or biological high throughput
screen. Any portion of such optimization may be undertaken by either
3DP or BMS, as determined by the JSMC.
2.8 No Grant of License to DiscoverWorks Technology. Notwithstanding any
provision to the contrary in this Agreement, no license to any portion
of the DiscoverWorks Technology, including any related Know-how, is
hereby granted by 3DP to BMS under this Agreement or otherwise, except
as specifically provided for under the License Agreement.
2.9 Site of Stage II Activities. The JSMC shall determine the site of
Stage II activities.
2.10 Continued Optimization at 3DP. If Stage II is conducted on any Initial
Hit or Improved Hit at 3DP, 3DP will perform iterative rounds of
Chemical Optimization, subject to the number of FTE's available under
the Research Program and 3DP's capacity available to the Research
Program and as otherwise directed by the JSMC, until:
2.10.1 a Program Lead Compound is identified; or
2.10.2 a maximum of [**] total rounds of Chemical Optimization are
performed (including the rounds of initial Chemical
Optimization in Stage I of the Research Program); or
2.10.3 a maximum of [**] novel compounds contained in Focused
Libraries are synthesized and screened using ThermoFluor(R)
Technology or another high throughput screen in Stage II of
the Research Program from the Synthetically Accessible
Library.
STAGE III - PRE-CLINICAL LEAD COMPOUND IDENTIFICATION
2.11 Development by 3DP of Pre-Clinical Lead Compounds. For at least two
Targets screened during the Research Term, BMS agrees that a Program
Lead Compound may be further
** 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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optimized by 3DP to produce a Pre-Clinical Lead Compound(s), to
specifications and on a project timetable to be reasonably agreed upon
by both 3DP and BMS. [**] of such Targets may be selected by 3DP for
review and approval by the JSMC. Additional Targets shall be selected
by BMS for review and approval by the JSMC. For such Program Lead
Compounds to be further developed by 3DP, 3DP will be responsible for
selection and synthesis of compounds or libraries, and BMS will be
responsible for associated biological testing.
2.12 BMS Support for Pre-Clinical Lead Compounds. BMS shall provide
additional FTE support on a per Target basis, as determined by BMS, or
the FTE's currently being supported by BMS at that time shall be
reallocated, as determined by the JSMC, in order to allow for
execution of appropriate work by 3DP for Stage III activities. The
technical composition of this FTE team shall be determined by the
JSMC, consistent with 3DP's FTE allocation to the Research Program.
ARTICLE 3
RESEARCH AND DEVELOPMENT EFFORTS
3.1 Research 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.
3.2 Allocation and Support of FTEs. Throughout the term of the Research
Program, including any extensions thereof, 3DP shall assign the number
of FTE qualified scientists specified in the Research Plan to perform
the work set forth in the Research Plan and BMS will provide funding
to 3DP as set forth below during the term of the Research Program to
support qualified FTEs at 3DP. Both Parties acknowledge and agree
that, during the initial three-year term of the Research Program or
such shorter period as provided in the License Agreement, [**] of the
FTEs to be supported by BMS pursuant to Section 5.2 shall be
designated by the JSMC to [**] which are being licensed by 3DP to BMS
pursuant to the License Agreement. Other than the research funding
provided by BMS to 3DP under Article 5, and except as otherwise
specifically agreed in writing by 3DP and BMS, each Party shall be
responsible for all costs and expenses it incurs in its performance of
the Research Program.
3.3 Disclosure of Results; Reports. The JSMC will provide quarterly
written reports to the Parties presenting a meaningful summary of the
work performed on the Research Program. In addition, on reasonable
request by BMS, 3DP will make presentations of its activities under
this Agreement to inform BMS of the details of the work done under
this Agreement. Know-how and other information regarding the Research
Program disclosed by one Party to the other Party pursuant hereto may
be used only in accordance with the rights granted under this
Agreement. Within thirty (30) days following the end of each calendar
quarter, the Parties shall each exchange and provide to the JSMC a
written report summarizing in reasonable detail the work performed by
it under the Research Program during the preceding calendar quarter.
The JSMC shall direct the formation of a Joint Research Team ("JRT")
with equal membership from 3DP and BMS. The JRT shall be responsible
for the day-to-day scientific direction of the Research
** 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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Program. The JRT shall meet at least monthly and shall establish
appropriate electronic communication links for data transfer and team
discussions. The JRT shall submit monthly reports to the JSMC.
3.4 Insurance. Prior to the performance of any services under this
Agreement by 3DP, 3DP, at its own cost and expense, shall provide and
maintain insurance as described below with insurers rated A-, Class X
or better by A.M. Best Company: Commercial General Liability insurance
on an occurrence basis with a minimum limit for bodily injury,
property damage and personal injury of $2,000,000 per occurrence and
an aggregate amount of $5,000,000. Prior to the performance of any
services under this Agreement by 3DP, 3DP shall deliver to BMS
certificates of insurance evidencing the above coverage. BMS shall
maintain appropriate insurance with respect to its activities
hereunder, in amounts customary in the pharmaceutical industry.
3.5 Continuing Report Responsibility. For each compound identified as [**]
for as long as such compound remains in one of these categories under
the control of BMS or an Affiliate or sublicensee thereof, and for so
long as it is subject to the provisions of Section 5.6, Section 5.7 or
Section 5.8, BMS shall, on a quarterly basis, provide a summary report
of its activities, and/or those of its Affiliates and sublicensees,
toward the development, use and/or commercialization of such compound.
If appropriate, BMS shall also report that [**] under the Research
Program, and subject to the provisions of this Agreement, which is
actually being developed and/or commercialized by BMS and/or its
Affiliates and/or sublicensees. BMS will provide timely notice, in
good faith, of its [**] and/or its Affiliates' and sublicensees'
activities toward the development, use and/or commercialization of
[**] as well as the [**] under the Research Program that is [**] in
lieu of such [**].
3.6 Material Transfer. In order to facilitate the Research Program, either
Party (a "Supplying Party") may provide to the other Party (a
"Receiving Party") certain biological materials or chemical compounds
(collectively, the "Substances") owned by or licensed to the Supplying
Party (other than under this Agreement) and available for use by that
Supplying Party in furtherance of the Research Program. Except as
otherwise provided under this Agreement, all Substances delivered to
the Receiving Party shall remain the sole property of the Supplying
Party, shall be used only in furtherance of the Research Program and
solely under the control of the Receiving Party, shall not be used or
delivered to or for the benefit of any Third Party without the prior
written consent of the Supplying Party and shall not be used in
research or testing involving human subjects. Because not all of their
characteristics may be known, the Substances supplied under this
Section 3.6 must be used with prudence and appropriate caution in any
experimental work. THE SUBSTANCES ARE PROVIDED "AS IS" AND WITHOUT ANY
REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED, INCLUDING WITHOUT
LIMITATION ANY IMPLIED WARRANTY OF MERCHANTABILITY OR OF FITNESS FOR
ANY PARTICULAR PURPOSE OR ANY WARRANTY THAT THE USE OF THE SUBSTANCES
WILL NOT INFRINGE OR VIOLATE ANY PATENT OR OTHER PROPRIETARY RIGHTS OF
ANY THIRD PARTY.
3.7 Liability. Each Party shall be responsible for, and hereby assumes,
any and all risks of personal injury or property damage attributable
to the gross negligent or willful acts or omissions, during
** 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.
11
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the term of the Research Program, of that Party or its Affiliates, and
their respective directors, officers, employees and agents.
ARTICLE 4
RESEARCH PROGRAM GOVERNANCE
4.1 Joint Steering and Management Committee. 3DP and BMS agree to
establish a Joint Steering and Management Committee (the "JSMC"), and
shall each designate three members selected by their respective R&D
management to form the JSMC. The chairperson of the JSMC shall be
designated annually on an alternating basis between the Parties. The
initial chairperson shall be selected by BMS. The Party not
designating the chairperson shall designate one of its representative
members as secretary to the JSMC for such year. Each Party may replace
its representatives at any time, upon notice to the other Party. Any
member of the JSMC may designate a substitute to attend and perform
the functions of that member at any meeting of the JSMC. Each Party
may, in its discretion, invite non-member representatives of such
Party to attend meetings of the JSMC.
4.2 Responsibilities of the JSMC. The JSMC shall be responsible for:
4.2.1 Adopting, reviewing and amending the Research Plan to implement
the Research Program;
4.2.2 Establishing the JRT;
4.2.3 Monitoring the progress of research in the Research Program;
4.2.4 Reviewing and approving initial Targets and any subsequent
Target selection, and defining the Target Field for each such
Target;
4.2.5 Selecting of the technical criteria for nomination of a
compound for ECN upon adoption of a Target for the Research
Program, or as soon thereafter as practical;
4.2.6 Directing the Chemical Optimization efforts;
4.2.7 Agreeing on and adopting criteria for the designation of
Initial Hits, Improved Hits, Program Lead Compounds and Pre-
Clinical Lead Compounds;
4.2.8 Selecting Improved Hits to be advanced to Stage II;
4.2.9 Selecting Program Lead Compounds to be advanced for biological
testing; and
** 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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4.2.10 Reviewing and approving publications and other public
disclosures related to the subject matter of the Research
Program.
4.3 JSMC Meetings. During the Research Term, the JSMC shall meet in person
or by teleconference on a calendar quarter basis (provided that at
least two meetings per year shall be in person) or more frequently as
necessary and as may be agreed upon, with each Party bearing all
travel and related costs for its representatives. Thereafter, the JSMC
shall meet on an ad hoc basis as needed to perform the
responsibilities designated to the JSMC. In addition to periodic
meetings, the members of the JSMC shall communicate regularly by
electronic mail or facsimile, as deemed necessary or appropriate.
Minutes of the meetings of the JSMC will be generated and circulated
to its members within two weeks following the JSMC meeting
4.4 JSMC Decision-Making Process. Each Party shall have one vote in all
matters decided by the JSMC, and decisions by the JSMC shall be made
by consensus. The Parties shall attempt to resolve any disagreement
among members of the JSMC within the JSMC based on the efficient
achievement of the objectives of this Agreement. Any disagreement that
cannot be resolved by a majority vote of the JSMC shall be referred to
the Chief Executive Officer of 3DP or a comparable position selected
by 3DP from time to time, and the Senior Vice President of Early
Discovery and Applied Technology for BMS, or a comparable position
selected by BMS from time to time, for resolution as set forth below.
It is the intent of the Parties to resolve issues through the JSMC
whenever possible and to refer issues to the specified officers of 3DP
and BMS only when resolution through the JSMC cannot be achieved. In
the event that the specified officers of 3DP and BMS cannot reach
agreement within fifteen (15) days after a matter is referred to them
for resolution, then the specified officer of BMS shall make the
decision; provided, however, with respect to matters governed by
Section 4.5 of this Agreement, in the event that the specified
officers of 3DP and BMS cannot reach agreement within fifteen (15)
days after a matter is referred to them for resolution, the parties
will enter into dispute resolution in accordance with Article 13 of
this Agreement (it being agreed that the more formal dispute
resolution required pursuant to Article 13 will be followed even
though the personnel on the dispute resolution panel may be the same
personnel required to make decisions under this Section 4.4).
4.5 Allocation of FTEs to Screening and Development. In furtherance of the
provisions of Article 2, the Parties acknowledge and agree that the
JSMC's allocation of FTEs under the Research Program will change from
time to time to meet the needs of the Research Program and will
depend, in part, upon the Research Program's success in finding Pre-
Clinical Lead Compounds and the timing of such success. It is the
intent of the Parties to allocate the work being performed by the FTEs
to allow for the performance of all Stages of the Research Program in
a manner that is equitable to both Parties. Subject to the foregoing,
the Parties agree that to the extent feasible and desired by 3DP, up
to [**] of the Targets screened during the initial Research
** 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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Term that lead to Program Lead Compounds may be further optimized by
3DP to produce a Pre-Clinical Lead Compound.
4.6 Minutes of Meetings. Within two (2) weeks after each JSMC meeting, the
secretary of the JSMC shall prepare and distribute minutes of the
meeting, which shall provide a description in reasonable detail of the
discussions had at the meeting and a list of any actions, decisions or
determinations approved by the JSMC. The secretary shall be
responsible for circulation of all draft and final minutes. Draft
minutes shall be first circulated to the chairperson, edited by the
chairperson and then circulated in final draft form to all members of
the JSMC sufficiently in advance of the next meeting to allow adequate
review and comment prior to the meeting. Minutes shall be approved or
disapproved, and revised as necessary, at the next meeting Final
minutes shall be distributed to the members of the JSMC.
4.7 Management of Matters Outside the Jurisdiction of the JSMC. Matters
outside the scope of the Research Program and internal to each Party
are not under the purview of the JSMC. Such matters include, but are
not limited to the following: internal personnel policies and
programs; budgeting, finance, commercial and marketing strategies; and
business decisions. However, the Parties agree to communicate with
each other promptly on those matters which, while outside the scope of
the Research Program, nevertheless may reasonably be expected to
influence the conduct or term of the Research Program or the intended
commercialization of any Pre-Clinical Lead Compound(s).
ARTICLE 5
FINANCIAL TERMS
5.1 Technology Access Fee. BMS agrees to pay a nonrefundable technology
access fee of [**] within thirty (30) days after the Effective Date.
5.2 FTE Reimbursement Fees.
5.2.1 BMS agrees to pay 3DP in advance, on a calendar quarterly basis
for the staff allocated by 3DP for the services to be provided
under this Agreement. Such research funding shall be payable by
BMS to 3DP in four quarterly installments during the term of
the Research Program within 30 days of the start of the
calendar quarter. Any payment for a portion of a quarterly
period shall be made on a pro rata basis.
5.2.2 During the first six (6) months of the Research Term, BMS shall
pay 3DP for [**] FTEs. During the second six months of the
Research Term, BMS shall pay 3DP for [**] FTEs. During each of
the second and third years of the Term, BMS shall pay 3DP for
[**] FTEs. These services will be compensated by BMS at a rate
of [**] per FTE per year.
**Certain portions of this Exhibit have been omitted 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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5.3 Costs. Except as provided in this Section 5.3, or as may be agreed
from time to time by the Parties in writing, 3DP and BMS will each
bear all of its own expenses incurred in connection with the Research
Program. Notwithstanding the foregoing, depending on the total number
of Targets designated and the number of FTEs reasonably necessary to
meet the objectives of this Agreement, BMS and 3DP shall negotiate in
good faith with respect to the payment by BMS of additional
compensation to 3DP in a form to be agreed upon by the Parties, such
as a lump sum payment or quarterly support payments by BMS for
additional FTEs at 3DP; provided that BMS shall not be obligated to
fund any additional FTEs without BMS's prior written consent.
5.4 Extended Term Fees. The level of reimbursement for FTEs in any
Extended Research Term shall be negotiated in good faith by the
Parties.
5.5 Fees for Early Termination of the Research Program. If BMS terminates
the Research Program without cause, pursuant to the provisions of
Section 10.3, prior to the end of the Research Term, or prior to the
end of any Extended Research Term, BMS agrees to pay to 3DP the
balance of any financial support otherwise due for the initial
Research Term, or fifty percent (50%) of the balance of any financial
support otherwise due for the current Extended Research Term, as the
case may be.
5.6 Milestone Payments for Pre-Clinical Lead Compounds Developed by BMS
from Improved Hits Discovered by 3DP and Further Developed by BMS. BMS
shall pay 3DP the following milestones and royalty rate, in lieu of
those provided in Section 5.7 or Section 5.8, on any Pre-Clinical Lead
Compound developed by BMS from an Improved Hit discovered by 3DP and
thereafter developed by BMS:
5.6.1 Upon selection of such Pre-clinical Lead Compound (including
being the subject of an ECN), [**];
5.6.2 Upon submission of an IND, [**];
5.6.3 Upon commencement of Phase III clinical trials, [**];
5.6.4 Upon filing of a NDA, [**]; and
5.6.5 A royalty rate of [**] of Net Sales.
5.7 Milestone Payments for Pre-Clinical Lead Compounds Developed by BMS
from Program Lead Compounds Discovered by 3DP. BMS shall pay 3DP the
following milestones and royalty rate, in lieu of those provided in
Section 5.6 or 5.8, on any Pre-Clinical Lead Compound developed by BMS
from a Program Lead Compound identified by 3DP:
**Certain portions of this Exhibit have been omitted 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>
5.7.1 Upon selection of such Pre-clinical Lead Compound (including
being the subject of an ECN), [**];
5.7.2 Upon submission of an IND, [**];
5.7.3 Upon commencement of Phase III clinical trials, [**];
5.7.4 Upon filing of a NDA, [**]; and
5.7.5 A royalty rate of [**] of Net Sales.
5.8 Milestone Payments for Pre-Clinical Lead Compounds Developed by 3DP.
BMS shall pay 3DP the following milestones and royalty rate, in lieu
of those provided in Section 5.6 and 5.7 on any Pre-Clinical Lead
Compound developed by 3DP:
5.8.1 Upon selection of such Pre-Clinical Lead Compound, [**] for the
first compound selected for activity against a specific Target,
and [**] for each subsequent compound selected for activity
against the same Target;
5.8.2 Upon submission of an IND, [**] for the first compound selected
for activity against a specific Target, and [**] for each
subsequent compound selected for activity against the same
Target;
5.8.3 Upon commencement of Phase III clinical trials, [**] for the
first compound selected for activity against a specific Target,
and [**] for each subsequent compound selected for activity
against the same Target;
5.8.4 Upon filing of an NDA, [**] for the first compound selected for
activity against a specific Target, and [**] for each
subsequent compound selected for activity against the same
Target; and
5.8.5 A royalty rate of [**] of Net Sales on annual Net Sales up to
and including [**] and [**] of Net Sales on annual Net Sales in
excess of [**].
5.9 Milestone Payment Credit. In the event that any milestone payment is
made pursuant to Sections 5.6, 5.7 or 5.8 with respect to a Pre-
Clinical Lead Compound selected for development (an "Original
Compound"), where, after the payment of any such milestones, such
development terminates and, at any time after such termination, a
Back-up Compound is selected for development (a "Replacement
Compound"), then BMS shall be entitled to a credit against milestone
payments due with respect to the Replacement Compound, in the amount
equal to all
**Certain portions of this Exhibit have been omitted 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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<PAGE>
milestone payments actually paid with respect to the Original Compound
prior to termination of development of such Original Compound.
5.10 Royalty Reduction in the Absence of Patent Protection. The royalty
amounts set forth above shall be reduced by [**] on a country-by-
country basis at any such time that there are no Patent Rights
containing a Valid Claim with respect to the Active Compound which is
an ingredient of such Licensed Product in such country.
5.11 Royalty Period. The royalty payments set forth above shall be payable
for each Licensed Product on a product-by-product and country-by-
country basis from the time of First Commercial Sale of Licensed
Product in such country until the later of: (a) ten (10) years from
the time of First Commercial Sale of Licensed Product in such country;
or (b) until the last-to-expire or -lapse of Patent Rights containing
a Valid Claim with respect to the Active Compound which is an
ingredient of such Licensed Product in such country.
5.12 Royalty Conditions. The royalties under this Article 5 shall be
subject to the following conditions:
5.12.1 Only one royalty shall be due with respect to the same unit of
Licensed Product; and
5.12.2 No royalties shall be due upon the sale or other transfer
among BMS, its Affiliates or licensees, but in such cases the
royalty shall be due and calculated upon BMS's or its
Affiliate's or licensee's Net Sales of Licensed Product to the
first independent Third Party.
5.13 Third Party Patent Rights. In the event that during the term of the
royalty obligation for a Licensed Product under this Article 5, a
Third Party shall control an issued patent or patents in any country
covering the sale of a Licensed Product, and in the reasonable
judgment of BMS, it would be impractical or impossible for BMS (or its
Affiliates or licensees or sublicensees) to continue to sell the
Licensed Product without obtaining a royalty bearing license from such
Third Party, then, after giving 3DP notice and a reasonable
opportunity to comment thereon, and after taking due consideration of
3DP's comments, BMS shall be entitled to a credit against the
royalties due hereunder with respect to such country in an amount
equal to [**] of the royalty paid to such Third Party, said credit not
to exceed [**] of the royalty otherwise due under this Agreement,
arising from the sale of the Licensed Product in said country.
However, the foregoing royalty credit shall only be available when the
total royalty obligation owed by BMS (or its Affiliates or licensees
or sublicensees) to unaffiliated third parties exceeds [**] of Net
Sales of Licensed Product.
5.14 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 from time to time
**Certain portions of this Exhibit have been omitted 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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<PAGE>
designate by notice to BMS. Milestone payments shall be made within
sixty (60) days of occurrence of the relevant milestone event and
royalty payments for a given calendar quarter shall be made within
sixty (60) days following the end of the calendar quarter. Payments
shall be free and clear of any taxes (other than withholding and other
taxes imposed on 3DP), fees or charges, to the extent applicable. For
purposes of computing royalty payments for Net Sales made outside of
the United States, such royalties shall be converted into U.S.
Dollars, by applying the rate of exchange as used by BMS's global
accounting system which reflects the average exchange rate for the
applicable payment period.
5.15 Records Retention. With respect to any products for which royalties
are due pursuant to this Agreement, BMS and its Affiliates and any
licensees or sublicensees shall keep records, for two years, of such
Net Sales in sufficient detail to confirm the accuracy of the royalty
calculations hereunder. At the request of 3DP, BMS shall permit an
independent certified accountant of nationally recognized standing
appointed by 3DP and reasonably acceptable to BMS, at reasonable times
and upon reasonable notice, to examine these records solely to the
extent necessary to verify such calculations. Such investigation shall
be at the expense of 3DP unless it reveals a discrepancy in BMS's
favor of more than ten percent, in which event it shall be at BMS's
expense.
5.16 Taxes. The Party receiving royalties and other payments under this
Agreement shall pay any and all taxes levied on account of such
payment. If any taxes are required to be withheld by the paying Party,
it shall: (a) deduct such taxes from the remitting payment, (b) pay
the taxes, in a timely manner, to the proper taxing authority, and (c)
send proof of payment to the other Party and certify its receipt by
the taxing authority within sixty (60) days following such payment.
ARTICLE 6
OWNERSHIP; GRANT OF LICENSE RIGHTS
6.1 Ownership of Libraries.
6.1.1 3DP shall retain its ownership rights in the 3DP Probe Library
and the Synthetically Accessible Library and shall have
ownership rights as to BMS in any Focused Library developed by
3DP pursuant to this Agreement.
6.1.2 Notwithstanding the provisions of Section 6.1.1, all Focused
Library compounds shall be available to the Parties for
research and development activities contemplated by the
Research Program in the Field during the term of the Research
Program.
6.1.3 In the event that [**] based on [**] as part of the Research
Program, BMS shall have [**] and shall have [**] in such
compounds; however, BMS shall not [**] against the [**]
pursuant to this Agreement.
**Certain portions of this Exhibit have been omitted 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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<PAGE>
6.2 Ownership of Targets. BMS shall retain any proprietary rights BMS may
have in any Targets BMS provides to 3DP pursuant to this agreement
until [**] and 3DP shall have a right to use such Targets solely for
the purpose of performing its obligations under the Research Program
pursuant to the terms of this Agreement.
6.3 Ownership of Initial Hits. 3DP shall retain any proprietary rights,
title and interest in and appurtenant to the Initial Hits that it may
have had; however, [**]. In order for the activities in Section 2.3
to be undertaken, the JSMC may review data produced in the course of
the Research Program associated with such Initial Hits.
6.4 Ownership of Improved Hits. 3DP shall retain any proprietary rights,
title and interest in and appurtenant to the Improved Hits that it may
have had provided, however, BMS shall have an exclusive, worldwide
license, as to 3DP with the right to sublicense, to develop, make,
have made, use, and commercialize Improved Hits against the specified
Target of such Improved Hits. Such license and any sublicenses
thereunder, shall terminate, and 3DP shall regain its original rights,
when BMS ceases developing or commercializing any Improved Hit,
Program Lead Compound or Pre-Clinical Lead Compound against its
Target.
6.5 Ownership of Program Lead Compounds and Pre-Clinical Lead Compounds.
All right, title and interest in and appurtenant to each Program Lead
Compound and each Pre-Clinical Lead Compound shall be owned, as to
3DP, by BMS; provided, however, that if a Program Lead Compound or a
Pre-Clinical Lead Compound, as the case may be, is developed to its
respective status by 3DP, then 3DP shall have ownership rights as to
BMS, to such Program Lead Compound or such Pre-Clinical Lead Compound,
and BMS shall have an exclusive, worldwide license, as to 3DP, with
right to sublicense (subject to the provisions of Section 6.6.), to
develop, make, have made, use, and commercialize such Program Lead
Compound or such Pre-Clinical Lead Compound.
6.6 Development of Compounds Not Selected for Stage II or for Stage III.
In the event that [**] to negotiate in good faith with [**] on a
Target-by-Target basis, [**] against the applicable Target, and
commercialize such compound, including confidentiality,
indemnification, diligence requirements, and [**] in connection with
such rights, upon commercialization of a product containing such a
compound.
6.7 License to BMS under Patent Rights and Know-how. Subject to the other
provisions of this Agreement, 3DP hereby grants to BMS such rights
that it has to grant a worldwide, exclusive license, with right to
sublicense, to develop, make, have made, use, sell, offer for sale,
have sold, import and have imported Licensed Products, under any
Patent Rights owned by 3DP that would otherwise be infringed by BMS
but for this license, including Research Program Patent Rights, and
under the Know-how developed by 3DP relating to the Licensed Products,
including the Research Program Know-how.
6.8 Rights of 3DP to Focused Library Compounds after Termination of the
Research Program. After a period of [**] following termination of the
Research Program, 3DP shall have the unencumbered right, as to BMS, to
evaluate and/or develop compounds in any Focused Library that are not
being developed by either Party pursuant to this Agreement. However,
during the term of this Agreement as provided in Article 10, 3DP shall
not have the right to evaluate and/or develop compounds in any Focused
Library against any Target in respect of which BMS is developing,
manufacturing or selling a Licensed Product under this Agreement.
ARTICLE 7
CONFIDENTIAL INFORMATION
7.1 Confidentiality Obligations. The Parties agree that, for the term of
this Agreement and for ten (10) years thereafter, either Party (a
"Receiving Party") that receives Confidential Information from the
other Party (a "Disclosing Party") shall keep, and shall endeavor 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 furnished to it by its Disclosing Party pursuant to this
Agreement (including without limitation, Know-how). The obligations of
confidentiality and non-use set forth in this Section 7.1 shall also
apply to biological material and chemical compounds and associated
information (including, without limitation, Know-how) disclosed by one
Party to the other prior to or during the Term; provided however, that
such obligation of confidentiality and non-use shall not apply
**Certain portions of this Exhibit have been omitted 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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<PAGE>
to BMS with respect to compounds that are assigned to BMS or
exclusively licensed to BMS by 3DP.
7.2 Written Assurances and Permitted Uses of Confidential Information.
7.2.1 Each Party shall inform its employees and consultants who
perform substantial work on the Research Program, of the
obligations of confidentiality specified in Section 7.1 and all
such persons shall be bound by the terms of confidentiality set
forth therein.
7.2.2 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 give notice, in a timely fashion, 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.
7.2.3 To the extent it is reasonably necessary or appropriate to
fulfill its obligations and exercising its rights under this
Agreement, either Party may disclose Confidential Information
to its Affiliates on a need-to-know basis on condition that
such Affiliates agree to keep the Confidential Information
confidential for the same time periods and to the same extent
as such Party is required to keep the Confidential Information
confidential under this Agreement.
7.2.4 To the extent that it is reasonably necessary or appropriate to
fulfill its obligations, either Party may disclose Confidential
Information to the U.S. Patent and Trademark Office, the
foreign counterparts thereof, in order to comply with the rules
governing disclosure of material information during patent
examination.
7.2.5 The existence and the terms and conditions of this Agreement
which the Parties have not specifically agreed to disclose
pursuant to this Section 7.2 shall be treated by each Party as
Confidential Information of the other Party.
7.3 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
**Certain portions of this Exhibit have been omitted 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>
however, that any such recipient of such Confidential Information
shall agree in writing to keep such terms confidential for the same
time periods and to the same 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 registration statement with respect to its shares
or it becomes a public company as required by applicable U.S. law;
provided however, that the terms and 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 opinion of 3DP's legal counsel is legally required to be
disclosed.
7.4 Notification. Both Parties recognize that each may wish to publish the
results of their work relating to the Research Program. However, both
Parties also recognize the importance of acquiring patent protection
on Licensed Products. Consequently, neither Party shall make any
publication relating to any Licensed Product until Phase II clinical
trials with respect to such Licensed Product have commenced and,
thereafter, any proposed publication by either Party shall comply with
this Article 7. At least sixty (60) days before a manuscript is to be
submitted to a publisher, the publishing Party will provide the JSMC
with a copy of the manuscript. If the publishing Party wishes to make
an oral presentation, it will provide the JSMC with a copy of the
abstract (if one is submitted) at least sixty (60) days before it is
to be submitted. The publishing Party will also provide to the JSMC a
copy of the text of the presentation, including all slides, posters
and any other visual aids, at least sixty (60) days before the
presentation is made.
7.5 Review of Proposed Publications. The JSMC will review the manuscript,
abstract, text or any other material provided under Section 7.4 to
determine if patentable subject matter is disclosed. The JSMC will
notify the publishing Party within thirty (30) days of receipt of the
proposed publication if the JSMC determines that patentable subject
matter is or may be disclosed, or if the JSMC believes Confidential
Information or proprietary information is or may be disclosed. If it
is determined by the JSMC that patent applications should be filed,
the publishing Party shall delay its publication or presentation for a
period not to exceed 90 days from the JSMC's receipt of the proposed
publication to allow time for the filing of patent applications
covering patentable subject matter. In the event that the delay needed
to complete the filing of any necessary patent application will exceed
the ninety (90)-day period, the Parties will discuss the need for
obtaining an extension of the publication delay beyond the ninety
(90)-day period. If it is determined by the JSMC that confidential or
proprietary information is being disclosed, the JSMC will consult to
arrive at an agreement on mutually acceptable modifications to the
proposed publication to avoid such disclosure. The publishing Party of
any manuscript, text or oral presentation will acknowledge the other
Party for its contribution to the material being published or
presented and to the Research Program.
**Certain portions of this Exhibit have been omitted 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 8
PATENT RIGHTS AND INTELLECTUAL PROPERTY
8.1 Title to Patent Rights. Subject to the other provisions of this
Agreement, and any independent rights in others, the ownership of
Research Program Patent Rights shall be determined in accordance with
the principles of inventorship and ownership as prescribed by U.S.
patent law. Thus, the Parties contemplate that Research Program Patent
Rights may be jointly owned by both Parties or owned solely by one
Party.
8.2 Filing of Patent Applications and Expenses.
8.2.1 BMS has the right but not the obligation to pursue and maintain
Research Program Patent Rights that claim Licensed Products at
its own cost.
8.2.2 Where there is co-ownership of such Research Program Patent
Rights, BMS shall regularly provide 3DP with copies of all
patent office filings and other material submissions and
correspondence with various patent offices, in sufficient time
to allow for review and comment.
8.3 Enforcement of Issued Patent Rights. If either Party considers that a
Valid Claim of any of the issued Research Program Patent Rights
claiming the manufacture, use or sale of Licensed Products is being
infringed by a Third Party, it shall notify the other Party and
provide it with any evidence of such infringement which is reasonably
available. BMS shall have the right but not the obligation, at its own
expense, to attempt to remove such infringement by commercially
appropriate steps, including a lawsuit. If required by law, 3DP shall
join such suit as a Party, at BMS's expense. In the event BMS fails to
take commercially appropriate steps with respect to such infringement
within six (6) months following notice of such infringement, 3DP shall
have the right to do so at its expense, provided that BMS shall not be
required to enforce such Research Program Patent Rights against more
than one entity or in more than one country at any one time.
8.4 Recovery of Damages. Any amounts recovered by BMS pursuant to Section
8.3, whether by settlement or judgment shall be reported as Net Sales
for the purpose of calculating any applicable royalties to 3DP, after
deduction of BMS's reasonable expenses in making such recovery. If 3DP
enforces such Research Program Patent Rights pursuant to the
provisions of Section 8.3, then 3DP shall retain any amounts recovered
thereby.
8.5 Assistance. The Party not enforcing the Research Program Patent Rights
pursuant to Section 8.3, shall provide reasonable assistance to the
other Party, including providing access to relevant
**Certain portions of this Exhibit have been omitted 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>
documents and other evidence and making its employees available,
subject to the enforcing Party's reimbursement of any out-of-pocket
expenses incurred by the other Party.
8.6 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 in the manufacture, use or sale of a Licensed Product or in the
conduct of the Research Program, the Parties shall promptly discuss
and decide the best way to respond.
ARTICLE 9
INDEMNIFICATION
9.1 Indemnification by BMS. BMS shall indemnify, defend and hold 3DP and
its agents, employees and directors (the "3DP Indemnitees") harmless
from and against any and all liability, damage, loss, cost or expense
(including reasonable attorneys' fees) arising out of Third Party
claims or lawsuits related to (a) BMS's performance of its obligations
under this Agreement; or (b) product liability for bodily injury
and/or property damage related to BMS's development activities with
compounds identified under the Research Program and/or with Licensed
Products; or (c) the manufacture, use or sale of Licensed Products by
BMS and its Affiliates, sublicensees, distributors and agents, except
to the extent such claims or suits result from the breach of any of
the provisions of this Agreement, gross negligence or willful
misconduct of the 3DP Indemnitees. Upon the assertion of any such
claim or suit, the 3DP Indemnitees shall promptly notify BMS thereof
and shall permit BMS to assume direction and control of the defense of
the claim (including the selection of counsel and the right to settle
it at the sole discretion of BMS, provided that such settlement does
not impose any material obligation on the 3DP Indemnitees), and shall
cooperate as requested (at the expense of BMS) in the defense of the
claim.
9.2 Indemnification By 3DP. 3DP shall indemnify, defend and hold BMS and
its agents, employees and directors (the "BMS Indemnitees") harmless
from and against any and all liability, damage, loss, cost or expense
(including reasonable attorneys' fees) arising out of Third Party
claims or lawsuits related to 3DP's performance of its obligations
under this Agreement, except to the extent that such claims or suits
result from the breach of any of the provisions of this Agreement,
gross negligence or willful misconduct of the BMS Indemnitees. Upon
the assertion of any such claim or suit, the BMS Indemnitees shall
promptly notify 3DP thereof and shall permit 3DP to assume direction
and control of the defense of the claim (including the selection of
counsel and the right to settle it at the sole discretion of 3DP,
provided that such settlement does not impose any material obligation
on the BMS Indemnitees), and shall cooperate as requested (at the
expense of 3DP) in the defense of the claim.
**Certain portions of this Exhibit have been omitted 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>
ARTICLE 10
TERM AND TERMINATION
10.1 Term of Research Program. The Research Program shall commence upon
the Effective Date, and unless earlier terminated as provided herein,
shall expire on the third anniversary of the Effective Date, subject
to any extension thereto.
10.2 Term of Agreement. This Agreement shall commence upon the Effective
Date and shall terminate: (a) thirty (30) days after notice, in good
faith, by one Party to the other Party, following the termination or
expiration of the Research Term or any Extended Research Term, if no
compound, which was identified as an Initial Hit, or at least one
optimized or developed successor thereto, is being diligently
optimized, developed, commercialized and/or sold by BMS or 3DP, or
(b) upon the identification and commercialization of one or more
Licensed Products, upon expiration of the royalty period, as to each
Licensed Product in each country in the Territory, as provided in
Section 5.11.
10.3 Termination of the Research Program Without Cause. Subject to the
provisions of Section 5.5, BMS may terminate the Research Program
upon ninety (90)-days advance written notice during the Research Term
or any Extended Research Term.
10.4 Termination Due to Acquisition. During the Research Term or any
Extended Research Term, if any major pharmaceutical company, which in
the good faith determination of BMS, is a competitor of BMS closes on
an acquisition of 3DP (whether through merger, consolidation or
acquisition, directly or indirectly, of stock representing fifty
percent (50%) or more of the outstanding voting stock or other equity
securities of 3DP, sale of all or substantially all the assets of 3DP
or otherwise), BMS may terminate the Research Program, but not the
other provisions of this Agreement, effective thirty (30) days after
written notice is transmitted to 3DP, its parent, successor, or the
surviving or new entity, as the case may be, provided such notice
shall not be sent until the actual closing date of such transaction.
In such case, no termination fees shall be due, but BMS shall
continue to fund the Research Program until the effective date of its
termination.
10.5 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 have the default cured. If such default is not
cured within sixty (60) days after the receipt of such notice, or
diligent 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 the Research Program and/or 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
**Certain portions of this Exhibit have been omitted 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>
shall have: (a) initiated arbitration in accordance with Article 13,
below, with respect to the alleged default, and (b) diligently and in
good faith cooperated in the prompt resolution of such arbitration
proceedings.
10.6 No Waiver. The right of a Party to terminate the Research Program
and/or this Agreement, as provided in this Article 10, shall not be
affected in any way by its waiver or failure to take action with
respect to any prior default.
10.7 Insolvency or Bankruptcy.
10.7.1 Either Party may, in addition to any other remedies
available by law or in equity, terminate the Research
Program and/or this Agreement by written notice to the other
Party in the event 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 ninety (90) days
undismissed, unbonded and undischarged.
10.7.2 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 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 intellectual property, and same, if not
already in their possession, shall be promptly delivered to
them (a) 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 (b)
if not delivered under (a) 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.
**Certain portions of this Exhibit have been omitted 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>
10.8 Consequences of Termination of the Research Program.
10.8.1 In the event of termination of the Research Program by BMS
pursuant to the provisions of Sections 10.4, 10.5 and/or
10.7, 3DP shall (i) promptly transfer to BMS copies,
whether in written or electronic form, of all data,
reports, records and materials (including any Research
Program Know-how) in 3DP's possession or control which
relate to the Research Program; (ii) return to BMS all
relevant records and materials, whether in written or
electronic form, in 3DP's possession or control containing
Confidential Information of BMS; and (iii) furnish to BMS
all unused Substances provided to 3DP by BMS in connection
with the Research Program. Thereafter, BMS shall have no
further obligation to fund the Research Program, but the
remainder of the Agreement shall remain in force and effect
until expiration of the term of the Agreement, unless it is
sooner terminated as provided in this Agreement.
10.8.2 In the event of termination of the Research Program by 3DP
pursuant to this Article 10, or if BMS terminates the
Research Program pursuant to the provisions of Section
10.3, BMS shall (i) promptly transfer to 3DP copies,
whether in written or electronic form, of all data,
reports, records and materials (including any Research
Program Know-how) in BMS's possession or control which
relate to the Research Program; (ii) return to 3DP all
relevant records and materials, whether in written or
electronic form, in BMS's possession or control containing
Confidential Information of 3DP; and (iii) furnish to 3DP
all unused Substances provided to BMS by 3DP in connection
with the Research Program. Thereafter, the remainder of the
Agreement shall remain in force and effect until expiration
of the term of the Agreement, unless it is sooner
terminated as provided in this Agreement.
10.8.3 Either Party's termination of the Research Program pursuant
to Section 10.3, 10.4, 10.5 and/or 10.7 shall be without
prejudice to, and shall not affect, any of the Parties'
respective rights and obligations under this Agreement that
do not specifically relate to the Research Program. Without
limiting the generality of the foregoing, BMS's rights to
exploit the Licensed Products under any Research Program
Patent Rights and Research Program Know-how, if such
licenses are in operation, in accordance with the terms of
this Agreement, shall not be affected by any such
termination.
10.9 Consequences of Termination of this Agreement. Upon termination of
this Agreement, all remaining records and materials in a Party's
possession or control containing the other Party's Confidential
Information and to which the former Party does not retain rights
hereunder shall promptly be returned.
10.10 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
**Certain portions of this Exhibit have been omitted 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>
without prejudice to the rights of either Party against the other. The
provisions of Section 3.7, Section 5.15, Section 5.16, Section 6.1
through 6.5, Article 7, Article 8, Article 9, Section 10.8, Section
12.7, Article 13 and Article 14 (except Section 14.7) shall survive
any termination of this Agreement.
ARTICLE 11
DEVELOPMENT, REGULATORY AND COMMERCIALIZATION RESPONSIBILITIES
11.1 BMS Responsibilities. BMS shall be responsible for all development,
regulatory filings and related submissions that are made in
connection with the commercialization of Licensed Products developed
by BMS and all commercialization activities with respect to Licensed
Products, and shall do so at BMS's sole discretion and expense.
11.2 3DP Responsibilities. 3DP shall be responsible for all development,
regulatory filings and related submissions that are made in
connection with the commercialization of Licensed Products developed
by 3DP, and all commercialization activities with respect to Licensed
Products, and shall do so at 3DP's sole discretion and expense.
ARTICLE 12
REPRESENTATIONS AND WARRANTIES
12.1 Authority. Each Party represents and warrants that as of the
Effective Date it has the full right, power and authority to enter
into this Agreement and that this Agreement has been duly executed by
such Party and constitutes a legal, valid and binding obligation of
such Party, enforceable in accordance with its terms.
12.2 Commercially Reasonable Efforts. Each Party represents and warrants
that it will use good faith commercially reasonable and diligent
efforts to perform its obligations under this Agreement and/or
develop and to commercialize Licensed Products, consistent with sound
business judgment.
12.3 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.
**Certain portions of this Exhibit have been omitted 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>
12.4 No Existing Third Party Rights. Each Party represents and warrants
that its obligations under this Agreement are not encumbered by any
rights granted by such Party to any Third Parties that are or may be
inconsistent with the rights and licenses granted in this Agreement
12.5 Permitted Use of Targets. BMS represents and warrants that it has the
legal right to use and permit 3DP to use all Targets provided to 3DP
for Research Program activities under this Agreement.
12.6 Continuing Representations. The representations and warranties of
each Party contained in this Article 12 shall survive the execution
and delivery of this Agreement and shall remain true and correct at
all times during the Term with the same effect as if made on and as
of such later date.
12.7 Disclaimer of Warranties. 3DP MAKES NO REPRESENTATIONS AND EXTENDS NO
WARRANTIES OR CONDITIONS OF ANY KIND, EITHER EXPRESS OR IMPLIED, WITH
RESPECT TO THE 3DP DISCOVERWORKS(R) TECHNOLOGY, INCLUDING, BUT NOT
LIMITED TO, WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE. IN PARTICULAR, 3DP OFFERS NO REPRESENTATION OR WARRANTY THAT
THE USE OF ALL OR ANY PART OF THE 3DP DISCOVERWORKS(R) TECHNOLOGY
UNDER THIS AGREEMENT WILL RESULT IN THE DISCOVERY OR THE SUCCESSFUL
COMMERCIALIZATION OF A LICENSED PRODUCT FOR USE AGAINST THE TARGET IN
THE FIELD.
ARTICLE 13
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:
13.1 Dispute Resolution Process. 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 best efforts to resolve all such disputes as rapidly as
possible 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.
13.2 Dispute Resolution Panel. 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
**Certain portions of this Exhibit have been omitted upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
28
<PAGE>
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 officers who shall review the same, confer and attempt to
reach a mutual resolution of the issue.
13.3 Arbitration. 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. As set
forth in Section 14.15, 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 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 14
MISCELLANEOUS PROVISIONS
14.1 Entire Agreement. This Agreement, and the GPCR License and User
Agreement, the DiscoverWorks(TM) Nonexclusive License and Purchase
Agreement, the PERT Internal Use License and Option Agreement entered
into simultaneously with this Agreement, and each of the Exhibits
thereto constitute and contain the entire understanding and agreement
of the Parties respecting the subject matter of this Agreement and
cancels and supersedes any all prior negotiations, correspondence,
understandings and agreements between the Parties, whether oral or
written, regarding such subject matter.
14.2 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.
** 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.
29
<PAGE>
14.3 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.
14.4 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.
14.5 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.
14.6 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.
14.7 Restrictions on Unsolicited Activities. BMS agrees that, during the
Term of this Agreement, without the prior written consent of the board
of directors of 3DP, neither BMS nor any of its Affiliates will (i)
purchase, offer or agree to purchase, or announce an intention to
purchase, directly or indirectly, any securities or assets of 3DP or
its subsidiaries; (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
and Exchange Commission), or seek to advise or influence any person
with respect to the voting of any voting securities of 3DP; (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 subsidiary thereof, or of any
successor to or person in control of 3DP or any of its businesses, or
any assets of 3DP or any subsidiary 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
Securities Exchange Act of 1934, as amended (the "Exchange Act") in
connection with any of the foregoing. Nothing contained in this
Section 14.7 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; provided, however, that BMS hereby acknowledges that it
is aware that the United States securities laws prohibit any person
who has material non-public information about a company from
purchasing or selling securities of such company, or from
communicating 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.
30
<PAGE>
information to any other person under circumstances in which it is
reasonably foreseeable that such person is likely to purchase or sell
such securities.
14.8 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.
14.9 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.
14.10 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 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.
** 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.
31
<PAGE>
14.11 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 7;
however, neither Party shall use the name of the other Party for
promotional purposes.
14.12 Headings. The captions to the sections and articles 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.
14.13 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 in good faith to amend this
Agreement to reestablish the practical economic benefit provided the
Parties on the Effective Date.
14.14 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
OR OTHER DAMAGES.
14.15 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.
14.16 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.
14.17 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.
** 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.
32
<PAGE>
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.
33
<PAGE>
EXHIBIT A
DIRECTED DIVERSITY(R) PATENT RIGHTS
<TABLE>
<CAPTION>
-----------------------------------------------------------------------------------------------------------------------------------
Patent No. Issue Date
SKGF Ref. Title Serial Filing (if applicable) (if
Number Date 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
-----------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
-----------------------------------------------------------------------------------------------------------------------------------
1503.001AU00 System and Method of Automatically 36280/95 09/11/95 688598 09/17/98
Generating Chemical Compounds with Desired
Properties
----------------------------------------------------------------------------------------------------------------------------------
1503.001AU10 System and Method of Automatically 71886/98 01/12/98 710152 01/20/00
Generating Chemical Compounds with Desired
Properties
----------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
----------------------------------------------------------------------------------------------------------------------------------
1503.001EP00 System and Method of Automatically 95933748.6 09/11/95 0781436 07/02/97
Generating Chemical Compounds with Desired (Published) (Publication
Properties date)
----------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
----------------------------------------------------------------------------------------------------------------------------------
1503.001IL00 System and Method of Automatically 115292 09/14/95 115292 10/28/99
Generating Chemical Compounds with Desired
Properties
----------------------------------------------------------------------------------------------------------------------------------
</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.
34
<PAGE>
<TABLE>
<CAPTION>
-----------------------------------------------------------------------------------------------------------------------------------
Patent No. Issue Date
SKGF Ref. Title Serial Filing (if applicable) (if
Number Date applicable)
-----------------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C> <C> <C>
1503.001IL10 Computer Based System and Method of 125017 06/19/98 125017 10/28/99
Automatically Generating Chemical Compounds
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[**] [**] [**] [**]
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1503.001JP00 System and Method of Automatically 510247/1996 09/11/95 505832/1998 06/09/98
Generating Chemical Compounds with Desired (Published) (Publication
Properties date)
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1503.001PC00 System and Method of Automatically PCT/US95/ 09/11/95 WO 96/08781 03/21/96
(Now in Nat Generating Chemical Compounds with Desired
Phase) Properties 11365 (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.
35
<PAGE>
<TABLE>
<CAPTION>
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Patent No. Issue Date
SKGF Ref. Title Serial Filing (if applicable) (if
Number Date applicable)
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<S> <C> <C> <C> <C> <C>
1503.020EP01 System, Method and Computer Program 97948320.3 11/04/97 0935784 08/18/99
Product for Identifying Chemical Compounds (Published) (Publication
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 of date)
Chemical Data
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[**] [**] [**] [**]
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1503.020PC01 System, Method and Computer Program PCT/US97/ 11/04/97 WO 98/20437 05/14/98
(Now in Nat Product for Identifying Chemical Compounds 20918 (Published) (Publication
Phase) Having Desired Properties date)
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1503.020PC02 System, Method, and Computer Program PCT/US97/ 11/04/97 WO 98/20459 05/14/98
(Now in Nat Product for the Visualization and 20919 (Published) (Publication
Phase) Interactive Processing and Analysis of date)
Chemical Data
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1503.020PC03 System, Method, and Computer Program PCT/US99/ 05/07/99 WO 99/57686 11/11/99
Product for Representing Proximity Data in 09963 (Published) (Publication
A Multi-dimensional Space date)
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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.
36
<PAGE>
EXHIBIT B
THERMOFLUOR(R)PATENT RIGHTS
<TABLE>
<CAPTION>
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Patent No. Issue Date
SKGF Ref. Title Serial Filing (if applicable) (if
Number Date applicable)
-----------------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C> <C> <C>
1503.0110001 Microplate Thermal Shift Assay for 08/853,464 05/09/97 6,020,141 02/01/00
Ligand Development and
Multi-variable Protein Chemistry
Optimization
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1503.0110002 Microplate Thermal Shift Assay for 08/853,459 05/09/97 6,036,920 03/14/00
Ligand Development and
Multi-variable Protein Chemistry
Optimization
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1503.011EP03 Microplate Thermal Shift Assay and 97927628.4 05/09/97 0914608 05/12/99
Apparatus for Ligand Development (Published) (Publication
and Multi-variable Protein date)
Chemistry Optimization
</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.
37
<PAGE>
<TABLE>
<CAPTION>
-----------------------------------------------------------------------------------------------------------------------------------
Patent No. Issue Date
SKGF Ref. Title Serial Filing (if applicable) (if
Number Date applicable)
-----------------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C> <C> <C>
1503.011HU03 Microplate Thermal Shift Assay and P9902418 05/09/97 P9902418 11/29/99
Apparatus for Ligand Development (Published) (Publication
and Multi-variable Protein date)
Chemistry Optimization
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1503.011PC03 Microplate Thermal Shift Assay and PCT/US97/08 05/09/97 WO 97/42500 11/13/97
Apparatus for Ligand Development 154 (Published) (Publication
and Multi-variable Protein date)
Chemistry Optimization
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[**] [**] [**]
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1503.031PC01 High Throughput Method for PCT/US98/24 11/12/98 WO 99/24050 05/20/99
(Now in Nat Phase) Functionally Classifying Proteins 035 (Published) (Publication
date)
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[**] [**] [**] [**]
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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.
38
<PAGE>
EXHIBIT C
RESEARCH PLAN OUTLINE
[**]
** This page and portions of the next page of this Exhibit have been omitted
based upon a request for confidential treatment that has been filed with
the Commission. The omitted pages have been filed separately with the
Commission.
39
<PAGE>
Exhibit C
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[**] [**] 9/18
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[**] [**] 11/9
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** 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.
40
