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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 [**].
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 [**], Target shall not include the use of any
proteins to discover or develop a drug that exerts a therapeutic
effect in [**], and no more than [**] Targets in total may involve
[**] 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. [**];
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 [**]. 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. [**].
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, [**]. 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 [**]
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. [**].
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.
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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.
12
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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
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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.
16
<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.
17
<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 [**]
**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.
18
<PAGE>
6.2 Ownership of Targets. [**]
6.3 Ownership of Initial Hits. [**]
6.4 Ownership of Improved Hits. [**]
6.5 Ownership of Program Lead Compounds and Pre-Clinical Lead Compounds.
[**]
6.6 Development of Compounds Not Selected for Stage II or for Stage III.
[**]
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.
19
<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.
21
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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.
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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
-----------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
-----------------------------------------------------------------------------------------------------------------------------------
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)
----------------------------------------------------------------------------------------------------------------------------------
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)
---------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
---------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
---------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
---------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
---------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
---------------------------------------------------------------------------------------------------------------------------------
[**] [**]
---------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
----------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
----------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
---------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
</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>
-----------------------------------------------------------------------------------------------------------------------------------
Patent No. Issue Date
SKGF Ref. Title Serial Filing (if applicable) (if
Number Date applicable)
-----------------------------------------------------------------------------------------------------------------------------------
<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)
----------------------------------------------------------------------------------------------------------------------------------
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
---------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
---------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
---------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
---------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
---------------------------------------------------------------------------------------------------------------------------------
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)
---------------------------------------------------------------------------------------------------------------------------------
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
---------------------------------------------------------------------------------------------------------------------------------
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)
----------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
---------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
---------------------------------------------------------------------------------------------------------------------------------
[**] [**]
----------------------------------------------------------------------------------------------------------------------------------
</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)
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<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>
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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>
1503.011HU03 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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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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</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
[**]
** 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.
39
<PAGE>
Exhibit C
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[**] [**] 7/2
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[**] [**]
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[**] [**] 9/18
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[**] [**]
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[**] [**] 11/9
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[**] [**]
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[**] [**]
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[**] [**]
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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
<PAGE>
DISCOVERWORKS(TM)
NONEXCLUSIVE LICENSE AND PURCHASE AGREEMENT
THIS DISCOVERWORKS(TM) NONEXCLUSIVE LICENSE AND PURCHASE AGREEMENT is made as of
July 7, 2000, by and between 3-Dimensional Pharmaceuticals, Inc., a Delaware
corporation having its principal place of business at Eagleview Corporate
Center, 665 Stockton Drive, Suite 104, Exton, PA 19341 ("3DP"), and Bristol-
Myers Squibb Company, a Delaware corporation having its principal place of
business at Route 206 & Province Line Road, P.O. Box 4000, Princeton, New Jersey
08543 ("BMS"). Either 3DP or BMS may be referred to herein as a "Party" or,
collectively, they may be referred to as the "Parties."
RECITALS
--------
WHEREAS, 3DP has developed and patented certain technology known as
DirectedDiversity(R), which generates and identifies chemical compounds having
desired biological, chemical and other properties;
WHEREAS, 3DP has developed and patented certain technology and processes known
as ThermoFluor(R) Protein Characterization and Screening Technology, which
provides a useful readout for target characterization and compound library
screening;
WHEREAS, BMS is engaged in research and development of biologically active
compounds for the treatment of human disease;
WHEREAS, BMS wishes to license certain DirectedDiversity(R) patent rights and
ThermoFluor(R) technology from 3DP for DiscoverWorks(TM), on a nonexclusive
basis;
WHEREAS, BMS also wishes to purchase from 3DP certain ThermoFluor(R)
instruments; and
WHEREAS, the Parties desire to enter into this Agreement to set forth the
licensing and purchase terms for such rights;
NOW, THEREFORE, in consideration of the various promises and undertakings set
forth herein, and intending to be legally bound, the Parties agree as follows:
ARTICLE 1
DEFINITIONS
The terms in this Agreement with initial letters capitalized, whether used in
the singular or the plural, shall have the meaning set forth below or, if not
listed below, the meaning designated in places throughout this Agreement.
1.1 "Affiliate" means with respect to either Party, any corporation or
other business entity, which controls, is controlled by, or is under
common control with such
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
2
<PAGE>
Party. A corporation or other entity shall be regarded as in control
of another corporation or entity if it owns or directly or indirectly
controls at least fifty (50%) of the voting stock or other ownership
interest of the other corporation or entity (or alternatively, if it
owns the maximum such ownership interest permitted by law), or if it
possesses, directly or indirectly, the power to direct or cause the
direction of the management and policies of the corporation or other
entity or the power to elect or appoint at least fifty (50%) of the
members of the governing body of the corporation or other entity.
1.2 "Agreement" means this DiscoverWorks(TM) Nonexclusive License and
Purchase Agreement including its Exhibits, as may be amended from time
to time.
1.3 "BMS Site" means only (a) the BMS pharmaceutical research and
development facilities located in Lawrenceville, New Jersey, U.S.A.;
Hopewell, New Jersey, U.S.A.; Wallingford, Connecticut, U.S.A.;
Candiac, Quebec, Canada; (b) [**].
1.4 "Collaboration Agreement" means the DiscoverWorks(TM) Drug Discovery
Collaboration Agreement entered into between the Parties and dated of
even date herewith.
1.5 "Confidential Information" means all technical and/or commercial
information that has or could have commercial value or other utility
in a Party's business, or the unauthorized disclosure of which could
be detrimental to the Party's interests, including information,
inventions, data, and materials relating to the DirectedDiversity(R)
Patent Rights or to the ThermoFluor(R) Technology, and Know-how, and
shall include, without limitation, whether in oral, written, graphic
or electronic form, research, technical, manufacturing, marketing,
financial, personnel and other business information and plans;
chemical, pharmacological, toxicological, clinical, analytical and
quality control data; case report forms, data and analysis; and
reports or summaries and information contained in and submissions to
and information from ethical committees and regulatory authorities,
except to the extent that the Party receiving the Confidential
Information (the "Receiving Party") from the other Party (the
"Disclosing Party") can establish that such Confidential Information:
(a) was already known to the Receiving Party, other than under a
continuing obligation of confidentiality to the Disclosing Party; (b)
was generally available to the public or otherwise part of the public
domain at the time of its disclosure to the Receiving Party; (c)
became generally available to the public or otherwise part of the
public domain after its original disclosure to the Receiving Party,
and other than through any act or omission of the Receiving Party in
breach of this Agreement; (d) was subsequently lawfully disclosed to
the Receiving Party by a Third Party; (e) can be shown by written
records to have been independently developed by or for the Receiving
Party without benefit of the Confidential Information received from
the Disclosing Party, and without breach of any of the provisions of
this Agreement;
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
3
<PAGE>
or (f) the Disclosing Party has specifically agreed, in writing, that
the Receiving Party may disclose such Confidential Information.
1.6 "DirectedDiversity(R) Field" means the research, development and
commercialization of chemical compounds for use in pharmaceutical and
diagnostic products.
1.7 "DirectedDiversity(R) Patent Rights" means 3DP's U.S. and Canadian
patent applications or issued patents, as well as those for one or
more countries of the European Patent Community, all of which are
identified in EXHIBIT A, including any divisionals, continuations,
reissues, and reexaminations thereof, any patents issuing therefrom,
and any extensions and supplementary protection certificates based
thereon.
1.8 "DiscoverWorks"(TM) means the technology platform consisting of the
DirectedDiversity(R) Patent Rights and the ThermoFluor(R) Technology.
1.9 "Effective Date" means the later of: (a) the date of this Agreement as
set forth above; or (b) the date which all of the following documents
between the Parties have been executed: this Agreement, the GPCR
License and User Agreement, the DiscoverWorks(TM) Drug Discovery
Collaboration Agreement, and the PERT Internal Use License and Option
Agreement.
1.10 "FTE" means a full time equivalent scientific employee (i.e., one
full-time, or multiple part-time employees aggregating to one full-
time employee) employed by 3DP and assigned to work on the development
of or training on Instruments with such time and effort to constitute
one employee working on development of or training on Instruments on a
full time basis consistent with normal business and scientific
practice (at least forty (40) hours per week of dedicated effort; on
an annual basis, such weekly effort for at least forty-eight (48)
weeks per year). In no event, does an FTE include a subcontractor.
1.11 "Improvement" means any inventions and/or discoveries that result in
improvements or enhancements to the ThermoFluor(R) Technology or to
previous Improvements, made by 3DP or BMS, whether patented or
unpatented, conceived or first reduced to practice during the term of
this Agreement.
1.12 "Instrument" means a ThermoFluor(R) I Instrument or a ThermoFluor(R)
II Instrument, or any successor to or modification of either.
1.13 "Intellectual Property" means any and all patents, copyrights, design
rights, mask work rights, trademarks, service marks, as well as any
registrations and applications to register any such rights, rights in
the nature of any of the aforementioned rights, trade secrets, Know-
how, and any other intellectual or
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
4
<PAGE>
industrial property rights of any kind whatsoever in the United
States, Canada or the European Patent Community.
1.14 "Know-how" means unpatented technical and other information which is
not in the public domain, including information comprising or relating
to concepts, discoveries, inventions, data, designs, formulae, ideas,
methods, models, assays, research plans, procedures, designs for
experiments and tests, and results of experimentation and testing
(including results of research or development), processes (including
manufacturing processes, specifications and techniques), and
laboratory records.
1.15 "Manufactured Cost" shall mean the fully-allocated standard cost of:
(i) the direct raw materials cost of materials actually used in the
manufacture of an Instrument; (ii) the direct labor cost for producing
the Instrument; (iii) the direct operating costs of buildings,
resources and equipment dedicated to, as well as allocated
depreciation and repairs and maintenance for the building and
equipment actually used in, such production; and (iv) any quality and
in-process control in producing the Instrument.
1.16 "Object Code" means machine-executable computer software code in
binary form.
1.17 "Scriptgen Patent Rights" means the U.S. and Canadian patent
applications or issued patents as well as those for one or more
members of the European Patent Community, all of which are identified
in EXHIBIT B, including any divisionals, continuations, continuations-
in-part, reissues, reexaminations and renewals thereof, any patents
issuing therefrom, and extensions and supplementary protection
certificates based thereon, filed or granted to Scriptgen
Pharmaceuticals, Inc.
1.18 "Source Code" means computer software source code for the
ThermoFluor(R) Software.
1.19 "ThermoFluor(R) Field" means the research, development and
commercialization of chemical compounds for use in therapeutic and
diagnostic products, except that during the period from the Effective
Date until[**], it shall not include the use of any proteins to
discover or develop a drug that exerts a therapeutic effect in[**],
nor include other [**] targets, except in connection with Improved
Hits, as defined in the Collaboration Agreement.
1.20 "ThermoFluor(R) I Instrument" means the current production format
instrument produced by 3DP and/or contractors (or such modifications
or improvements developed and implemented by 3DP prior to the initial
installations at BMS), based on [**] well sample plates, and requiring
approximately [**] hours to cycle each plate.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
5
<PAGE>
1.21 "ThermoFluor(R) II Instrument" means an instrument that produces:
(a) detection sensitivity and intraplate detection precision at
least equivalent to the performance of ThermoFluor(R) I
Instruments;
(b) support for reading [**] microtitre plates, allowing a
[**];
(c) approximately a [**] decrease in target protein consumption
per well relative to ThermoFluor(R) I Instruments; and
(d) a remote communications interface and a mechanical
interface which will allow integration with a plate stacker
or a larger automated screening system.
1.21 "ThermoFluor(R) Patent Rights" means 3DP's U.S., Canadian and European
Patent Community ("EPC") patent applications or patents issued in the
United States, Canada, and one or more countries of the EPC, as
identified in EXHIBIT C, including any divisionals, continuations,
reissues and reexaminations thereof, any patents issuing therefrom,
and extensions based thereon.
1.22 "ThermoFluor(R) Software" means computer Object Code required for
processing raw fluorescent image data and reducing such data to
protein melting point values and melting point shifts, associated
thermodynamic parameters, and ligand binding constants and includes a
Graphical User Interface for setting experimental run parameters
(unless otherwise implemented through a programmable logic controller
integrated as part of the Instruments) and flexibly viewing and
manipulating data, and runs in a Windows NT Environment and writes
output data tables.
1.23 "ThermoFluor(R) Technology" means the ThermoFluor(R) Patent Rights,
the ThermoFluor(R) Software, the proprietary 3DP Know-how used to
evaluate ligand-binding parameters, and other Intellectual Property
related thereto.
1.24 "Third Party" means any person or entity other than a Party or any of
its Affiliates.
1.25 "Update" means any bug fix, improvement, enhancement, update or
upgrade, and any successor version of the ThermoFluor(R) Software
created by 3DP in the normal course of its business.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
6
<PAGE>
ARTICLE 2
DIRECTEDDIVERSITY(R) PATENT LICENSE
2.1 Nonexclusive DirectedDiversity(R) Patent License. Subject to the terms
and conditions of this Agreement, 3DP hereby grants BMS and its
Affiliates a nontransferable, nonsublicensable, nonexclusive,
nonroyalty-bearing license at the BMS Sites under the
DirectedDiversity(R) Patent Rights solely in direct support of BMS's
and its Affiliates' internal pharmaceutical research and development
activities in the DirectedDiversity(R) Field [**].
2.2 Limitations on DirectedDiversity(R) Patent Rights License Grant.
Including, without limitation, in connection with activities expressly
permitted under Section 2.1:
2.2.1 BMS and its Affiliates may not operate under the
DirectedDiversity(R) Patent Rights on behalf of any Third
Parties such as, for example, in connection with providing
research or development services to any Third Party on a
contractual basis;
2.2.2 Subject to the provisions of Section 12.4, BMS and its
Affiliates may not assign or sublicense its license to the
DirectedDiversity(R) Patent Rights to any Third Party; and
2.2.3 BMS and its Affiliates may not provide services to any Third
Party with respect to DirectedDiversity(R) Patent Rights.
2.3 3DP Retained Rights. Any rights of 3DP not expressly granted to BMS
and its Affiliates under the provisions of this Article 2 shall be
retained by 3DP, including, without limitation, 3DP's right to exploit
the DirectedDiversity(R) Patent Rights for any application within or
outside the DirectedDiversity(R) Field.
2.4 License Fee.
2.4.1 In consideration of the license grants provided for in this
Article 2 for the four named BMS Sites[**], BMS agrees to pay
to 3DP a nonrefundable license fee of [**] within thirty (30)
days of the Effective Date.
2.4.2 In consideration of the license grants provided for in this
Article 2 for[**], BMS shall pay to 3DP a nonrefundable license
fee of [**] within thirty (30) days of BMS notifying 3DP that
it intends to practice the DirectedDiversity(R) Patent Rights
at such BMS Site.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
7
<PAGE>
ARTICLE 3
INSTRUMENTS
3.1 ThermoFluor(R) I Instruments.
3.1.1 BMS will purchase, within [**] of the Effective Date, at least
[**] ThermoFluor(R) I Instruments from 3DP, [**].
3.1.2 The cost per ThermoFluor(R) I Instruments shall be indexed
annually to the U.S. Consumer Price Index (CPI) and adjusted
for each ThermoFluor(R) Instrument ordered beginning with the
first quarter of the year 2001.
3.1.3 3DP shall, at BMS's request, deliver up to the first [**] of
such purchased ThermoFluor(R) I Instruments within [**] from
the date such ThermoFluor(R) I Instruments are ordered.
Additional ThermoFluor(R) I Instruments shall be delivered to
BMS on a schedule mutually agreed upon by the Parties after
such [**] period.
3.2 ThermoFluor(R) II Instruments.
3.2.1 BMS may purchase ThermoFluor(R) II Instruments from 3DP at
3DP's Manufactured Cost of each ThermoFluor(R) II Instrument,
plus [**], per ThermoFluor(R) II Instrument.
3.2.2 As of the Effective Date of the Agreement, pursuant to the
terms of the Collaboration Agreement, [**]. These services
shall be compensated by BMS, as provided in the Collaboration
Agreement.
3.2.3 ThermoFluor(R) II Instruments shall be delivered to BMS on a
schedule mutually agreed upon by the Parties.
3.3 Other Instruments. BMS shall have the right to define criteria and/or
specifications to 3DP for an Instrument that is neither strictly a
ThermoFluor(R) I Instrument nor strictly a ThermoFluor(R) II
Instrument, and if 3DP is able to provide such an Instrument, the
parties will negotiate in good faith on a price and delivery schedule
that will apply to such an Instrument.
3.4 Fees.
3.4.1 In consideration of the rights granted in this Article 3 for
the BMS Sites described in Sections 1.3(a) and 1.3(b), BMS
agrees to pay to 3DP a nonrefundable fee of [**] within thirty
(30) days of the Effective Date.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
8
<PAGE>
3.4.2 In consideration of the rights granted in this Article 3 for
each BMS Site described in Section 1.3(c), BMS shall pay to 3DP
a nonrefundable fee of [**] within thirty (30) days of the
Effective Date.
3.4.3 If BMS purchases more than [**] Instruments, BMS shall pay 3DP
an additional fee of [**] per Instrument, for each Instrument
purchased beyond the initial [**] Instruments.
3.4.4 BMS may request that 3DP supply integrated sample handling
robotics for Instruments sold to BMS. Supply by 3DP of
integrated sample handling robotics for any Instrument shall be
at an agreed upon cost for each Instrument.
3.5 [**]
3.6 Nonexclusive ThermoFluor(R) Technology License. Subject to the terms
and conditions of this Agreement, 3DP hereby grants BMS and its
Affiliates a nontransferable, nonsublicensable, nonexclusive,
nonroyalty-bearing license at the BMS Sites under: (a) the
ThermoFluor(R) Technology and (b) any Improvements to the
ThermoFluor(R) Technology or any Improvements thereto made by or for
3DP [**], and under all patent, copyright, trademark, trade secret and
other Intellectual Property rights inherent therein and appurtenant
thereto; which license shall be solely for BMS's and its Affiliates'
internal business purposes of using the Instruments within, and
subject to the use restrictions in, the ThermoFluor(R) Field [**].
3.7 Grantback Rights to Improvements to the ThermoFluor(R) Technology. For
a period of [**] from the Effective Date, BMS and its Affiliates agree
that each will promptly make full written disclosure to 3DP of any and
all Improvements that BMS or its Affiliates conceives or makes or has
made to the ThermoFluor(R) Technology and to any Improvements thereto.
BMS and its Affiliates hereby grant to 3DP, or its designee, a semi-
exclusive (exclusive except as to BMS and its Affiliates), perpetual,
non-royalty-bearing license, including the right to transfer and
sublicense such license, to all of BMS's and its Affiliates' worldwide
right, title, and interest in and to any and all Improvements, solely
for use with applications involving ThermoFluor(R) Technology and/or
Instruments, and under all patent, copyright, trademark, trade secret
and other Intellectual Property rights inherent therein and
appurtenant thereto.
3.8 Transfer of Improvements to BMS. For a period of [**] after the
Effective Date, 3DP agrees that it will promptly make full written
disclosure to BMS of any and all Improvements that 3DP conceives or
makes or has made to the ThermoFluor(R) Technology and to any
improvements thereto and/or which 3DP has the right to provide
hereunder, and 3DP will facilitate the transfer of such
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
9
<PAGE>
Improvements to BMS. Such transfer shall occur no later than six (6)
months after such Improvements have been validated by 3DP.
3.9 Ownership; 3DP Retained Rights. 3DP shall solely (as to BMS) own all
Intellectual Property rights in the ThermoFluor(R) Technology and
Improvements it makes or has made or receives rights thereto (other
than to Improvements made exclusively by BMS or jointly by BMS and
3DP). BMS does not acquire any rights in the ThermoFluor(R)
Technology or Improvements made exclusively by 3DP thereto, other than
those license rights expressly specified in this Agreement. Any
Improvement made jointly by 3DP and BMS shall be owned jointly by 3DP
and BMS.
3.10 Nonexclusive Scriptgen Patent Rights Sublicense. Subject to the terms
and conditions of this Agreement, 3DP hereby grants BMS and its
Affiliates a nontransferable, nonsublicensable, nonexclusive, non-
royalty-bearing sublicense at the BMS Sites under the Scriptgen Patent
Rights solely for BMS's and its Affiliates' internal business purposes
of using the Instruments within, and subject to the use restrictions
in, the ThermoFluor(R) Field [**].
3.11 Limitations on ThermoFluor(R) Technology License and the Scriptgen
Patent Rights Sublicense. Except as permitted under Sections 3.5 and
3.9:
3.11.1 BMS and its Affiliates may not operate under the
ThermoFluor(R) Technology and/or the Scriptgen Patent Rights
on behalf of any Third Party, such as, for example, in
connection with providing research or development services to
any Third Party on a contractual basis.
3.11.2 BMS and its Affiliates may not sublicense or assign the
Scriptgen Patent Rights and may not transfer or share the
ThermoFluor(R) Technology with any Third Party.
3.11.3 BMS and its Affiliates may not provide services to any Third
Party with respect to the ThermoFluor(R) Technology or the
Scriptgen Patent Rights.
3.11.4 Notwithstanding the purchase of the Instruments or the license
grants in Sections 3.5 and 3.9, in no event shall BMS or its
Affiliates be permitted to use the Instruments, the
ThermoFluor(R) Technology or the Scriptgen Patent Rights with
any [**].
3.11.5 No rights to manufacture, modify or develop Instruments are
granted by this Agreement.
3.12 ThermoFluor(R) Software Restrictions. Except as may be permitted
pursuant to the terms of the escrow agreement entered into among 3DP,
BMS and the Escrow Agent pursuant to Section 4.4, BMS shall not: (a)
exceed the scope of the license
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
10
<PAGE>
granted in this Article 3; (b) reverse engineer, decompile,
disassemble or otherwise attempt to learn the source code, structure,
algorithms or ideas underlying the ThermoFluor(R) Software; (c) tamper
with, alter, adjust, add to, copy or disseminate the ThermoFluor(R)
Software; (d) modify, translate or create derivative works based on
the ThermoFluor(R) Software without the prior written consent of 3DP;
(e) possess or use the ThermoFluor(R) Software or any portion thereof,
other than in machine-readable Object Code; or (f) remove any
copyright, trademark, patent or other proprietary notices which appear
on the ThermoFluor(R) Software or copies thereof.
3.13 Packaging and Delivery.
3.13.1 Unless BMS reasonably requests otherwise, all Instruments
purchased by BMS shall be packed for shipment and stored in
accordance with 3DP's then-standard commercial practices. It
is BMS's obligation to notify 3DP of any special packaging
requirements, which requirements 3DP shall use reasonable
efforts to comply with at BMS's sole expense.
3.13.2 All deliveries of the Instruments by 3DP to BMS under this
Agreement shall be F.O.B., 3DP's distribution center for the
Instruments. Title and risk of loss, delay or damage shall
pass from 3DP to BMS at the time of delivery of each shipment
of the Instruments to the originating carrier at 3DP's
manufacturing or storage facility. Deliveries will be made
"Freight Collect" with all freight insurances, duties,
customs, import fee, brokerage charges, documentation, and
related costs to be paid by BMS.
3.13.3 Upon receipt of each Instrument, BMS agrees to inspect,
promptly and thoroughly, such Instruments for any damage or
defects in materials and workmanship. In the event that any
Instrument is damaged or contains defects in materials or
workmanship, BMS shall promptly provide 3DP with written
notice thereof. Such notice must be received by 3DP within
thirty (30) business days after the date BMS receives the
Instruments and must specify, with particularity, the manner
in which the Instrument is damaged or defective. In the
absence of such notification within said period of time, BMS
shall be deemed to have accepted the Instruments as undamaged
and without defects, and all claims with respect thereto,
except for claims of defects that could not reasonably have
been discovered by a thorough inspection of the Instruments,
shall be deemed waived by BMS, irrespective of whether the
facts giving rise to such claims shall have been discovered.
3.13.4 Notwithstanding anything to the contrary in this Agreement or
otherwise, BMS's sole remedy and 3DP's sole responsibility
with respect to any Instrument that is damaged or defective,
as a result of any 3DP action or negligence, or any other
liability, shall be to repair or replace the damaged
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
11
<PAGE>
or defective Instrument, or to refund the price paid by BMS
therefor. 3DP shall be obligated to pay for or to reimburse
BMS for any freight or insurance costs associated with the
return to 3DP of any Instruments that are damaged or
defective, provided that such return and the method thereof is
authorized in advance by 3DP.
3.14 Instrument Warranty. 3DP warrants to BMS good title to each Instrument
at the time of delivery thereof to BMS.
3.15 Disclaimer. EXCEPT AS SET FORTH IN SECTION 3.13, 3DP PROVIDES THE
THERMOFLUOR(R) SOFTWARE AND INSTRUMENTS "AS IS" AND WITHOUT WARRANTY,
AND 3DP DISCLAIMS ANY AND ALL OTHER WARRANTIES, CONDITIONS, OR
REPRESENTATIONS (EXPRESS OR IMPLIED, STATUTORY, ORAL OR WRITTEN),
INCLUDING, BUT NOT LIMITED TO, ANY AND ALL IMPLIED WARRANTIES OF
CONDITION, PERFORMANCE, SATISFACTORY QUALITY, TITLE, NONINFRINGEMENT,
MERCHANTABILITY, OR FITNESS OR SUITABILITY FOR ANY PURPOSE (WHETHER OR
NOT 3DP KNOWS, HAS REASON TO KNOW, HAS BEEN ADVISED, OR IS OTHERWISE
IN FACT AWARE OF ANY SUCH PURPOSE), WHETHER ALLEGED TO ARISE BY LAW,
BY REASON OF CUSTOM OR USAGE IN THE TRADE, OR BY COURSE OF DEALING.
ARTICLE 4
OBLIGATIONS OF THE PARTIES
4.1 Efforts. Each party shall use good faith, commercially-reasonable
efforts to perform its responsibilities under this Agreement. As used
herein, the term "commercially-reasonable efforts" will mean efforts
consistent with such Party's prudent scientific and business judgment
in accordance with its internal practices as applied to other programs
of similar scientific and commercial potential.
4.2 Training; Support; Maintenance. 3DP will provide up to [**] days of
training, by telephone, or for BMS Sites in the United States,
personal training at such BMS Site (with BMS promptly reimbursing 3DP
for out-of-pocket business travel and living expenses related to such
travel, and scheduling each visit to use at least one full day of
training at a BMS Site) to BMS per each Instrument purchased by BMS,
up to a maximum of [**] days, until the [**] anniversary of the
Effective Date. 3DP will provide additional training and support as
requested by BMS at a cost to be negotiated by the Parties in good
faith. The Parties acknowledge that service and maintenance on the
Instruments purchased by BMS may be provided through a contract with a
Third Party.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
12
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4.3 Updates. 3DP shall provide Updates to the ThermoFluor(R) Software to
BMS without additional charge to BMS, as they are released by 3DP from
time to time, until the fourth anniversary of the Effective Date.
4.4 Disclosure of Results; Reports. BMS shall supply to 3DP, at a minimum,
quarterly written reports presenting a meaningful summary of the work
performed under the ThermoFluor(R) Technology, as well as with the
Instruments.
4.5 Escrow of Source Code. Promptly after the Effective Date, 3DP shall
deposit with a Third Party, mutually-acceptable to the Parties (the
"Escrow Agent"), a copy of the ThermoFluor(R) Source Code. Pursuant to
an agreement to be entered into among 3DP, BMS and the Escrow Agent,
the Escrow Agent shall release such Source Code to BMS in the event
3DP: (i) files a petition for bankruptcy; (ii) has such a petition
filed against it which has not been dismissed within ninety (90) days;
(iii) becomes insolvent; (iv) makes an assignment for the benefit of
creditors or other equitable arrangement or composition; (v) ceases
doing business; or (vi) ceases to support or maintain the
ThermoFluor(R) Software. 3DP shall bear all costs and expenses with
respect to such escrow arrangement. Following the initial deposit, 3DP
shall be obligated to notify BMS of any update to the Source Code held
in escrow at least every calendar quarter through the fourth
anniversary of the Effective Date.
ARTICLE 5
PAYMENT TERMS
5.1 Mode of Payment. All payments to 3DP hereunder shall be made by wire
transfer of United States Dollars in the requisite amount to such bank
account as 3DP may designate by timely notice to BMS. Payments shall
be free and clear of any taxes, fees or charges, to the extent
applicable.
5.2 Late Payments. All amounts payable by BMS hereunder, shall be paid by
BMS to 3DP in full, without any right of set-off or deduction. BMS
shall pay interest on all amounts past due at the annual rate of one
percent (1%) over the prime rate of interest reported in The Wall
Street Journal for the date such amount was due.
ARTICLE 6
CONFIDENTIALITY
6.1 Confidentiality Obligations. The Parties agree that, for the term of
this Agreement and for ten (10) years thereafter, each Party, as a
Receiving Party, that receives Confidential Information from the other
Party, shall keep, and shall take
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
13
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steps, not fewer than it takes to protects its own valuable,
proprietary information, and not less than reasonable measures, to
attempt to ensure that its officers, directors and employees keep,
confidential, and shall not publish or otherwise disclose, and shall
not use for any purpose (except as expressly permitted hereunder) any
Confidential Information (including without limitation, Know-how)
furnished to it by its Disclosing Party pursuant to this Agreement.
6.2 Written Assurances and Permitted Uses of Confidential Information.
6.2.1 The Receiving Party may disclose the Disclosing Party's
Confidential Information to the extent the Receiving Party is
compelled to disclose such information by a judicial or
administrative authority of competent jurisdiction, including
but not limited to submitting information to tax authorities or
to comply with any discovery or similar request for production
of documents in litigation or similar alternative dispute
resolution proceedings, provided however, that in such case,
the Receiving Party shall timely give notice to the Disclosing
Party so that the Disclosing Party may seek a protective order
or other remedy from said authority. In any event, the
Receiving Party shall disclose only that portion of the
Confidential Information that, in the opinion of its legal
counsel, is legally required to be disclosed, and will exercise
reasonable efforts to ensure that any such information so
disclosed will be accorded confidential treatment by said court
or tribunal.
6.2.2 The existence and the terms and conditions of this Agreement
which the Parties have not specifically agreed to disclose
pursuant to this Section 6.2 shall be treated by each Party as
Confidential Information of the other Party.
6.2.3 To the extent that it is reasonably necessary or appropriate to
fulfill its obligations to comply with the rules controlling
disclosure of material information during patent examination,
either Party may disclose Confidential Information received
from the other Party to the United States Patent & Trademark
Office or the Canadian or the European Patent Offices.
6.3 Permitted Disclosures for Business Development Purposes.
Notwithstanding the foregoing, or any other provision in this
Agreement to the contrary, 3DP may describe the financial terms of
this Agreement in confidence, in connection with capital raising or
financing activities; provided, however, any such recipient of such
Confidential Information shall agree in writing to keep such terms
confidential for the same time periods and to an equivalent extent as
3DP is required to keep Confidential Information confidential under
this Agreement. Furthermore, BMS acknowledges that 3DP may be
obligated to disclose terms of this Agreement and make public a copy
of this Agreement in the event it files a
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
14
<PAGE>
registration statement with respect to its shares or it becomes a
public company as required by applicable U.S. law; provided however,
the terms of this Agreement and the copy submitted to the applicable
governmental agency shall be redacted such that the extent of any such
disclosure shall be limited to that which in the reasonable opinion of
3DP's legal counsel is legally required to be disclosed.
ARTICLE 7
PATENT RIGHTS AND INFRINGEMENT
7.1 DirectedDiversity(R) Patent Rights and ThermoFluor(R) Patent Rights.
3DP agrees to use commercially-reasonable efforts to prepare, file,
prosecute and maintain the DirectedDiversity(R) Patent Rights and the
ThermoFluor(R) Patent Rights, at 3DP's expense, in a manner deemed
appropriate in 3DP's sole judgment, and use commercially-reasonable
efforts to decide whether to file, and, if so, to prepare, file,
prosecute and maintain any jointly-owned patent rights, as anticipated
in Section 3.8, at equally-shared expense, with due consideration of
BMS's input, but in a manner deemed appropriate in 3DP's sole
judgment. 3DP agrees to keep BMS materially advised of the status of
all relevant DirectedDiversity(R) Patent Rights and the ThermoFluor(R)
Patent Rights, and jointly-owned patent rights, upon reasonable
written request from BMS.
7.2 BMS Patent Rights. BMS agrees to keep 3DP materially advised of the
status of all patent rights filed by or granted to BMS and/or its
Affiliates which are based on, derived from, improvements of and/or
related to DirectedDiversity(R) Patent Rights and/or ThermoFluor(R)
Technology, and under which 3DP has rights, according to the
provisions of Section 2.2.
7.3 Cooperation. Each Party agrees to endeavor in good faith to coordinate
its efforts with the other Party in order to minimize or avoid
interference with the patent prosecution or rights of the other Party
with respect to patent rights under which the other Party has a
license.
7.4 Infringement by Third Parties. In the event that BMS becomes aware of
any infringement by one or more Third Parties of any of the patents
within DirectedDiversity(R) Patent Rights or within the ThermoFluor(R)
Patent Rights, or of any rights in the ThermoFluor(R) Software, BMS
shall promptly notify 3DP. 3DP shall respond to any such infringement
by Third Parties in a manner deemed appropriate by 3DP, in its sole
judgment.
7.5 Third Party Patent Rights. If any warning letter or other notice of
infringement is received by a Party, or action, suit or proceeding is
brought against a Party alleging infringement of a patent of any Third
Party with respect to operations under the DirectedDiversity(R) Patent
Rights or the ThermoFluor(R) Technology,
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
15
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the Parties shall promptly discuss and decide what response is in the
best interests of the Parties.
ARTICLE 8
REPRESENTATIONS AND WARRANTIES
8.1 Authority. Each Party represents and warrants that it has the full
right, power and authority to execute, deliver and perform its
obligations pursuant to this Agreement.
8.2 No Conflicts. Each Party represents and warrants that the execution,
delivery and performance of this Agreement does not conflict with, or
constitute a breach or default under any of its charter or
organizational documents, any law, order, judgment or governmental
rule or regulation applicable to it, or any material agreement,
contract, commitment or instrument to which it is a party.
8.3 No Unauthorized Operations Under DirectedDiversity(R) Patent Rights
and the ThermoFluor(R) Technology. BMS represents and warrants that it
will not operate, or permit another, about which it has knowledge and
with which it has a relationship, to operate, under the
DirectedDiversity(R) Patent Rights or the ThermoFluor(R) Technology at
any site that is not a BMS Site.
8.4 Patents. 3DP represents and warrants that Exhibit A and Exhibit C are
accurate and complete, and identify all patent rights owned by 3DP, as
of the Effective Date, which are believed necessary for the use of the
methods and technology claimed in the DirectedDiversity(R) Patent
Rights and the ThermoFluor(R) Patent Rights, in accordance with the
licenses granted hereunder. [**].
8.5 Disclaimer of Warranties. EXCEPT AS SET FORTH IN SECTION 3.13, 3DP
MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OR CONDITIONS OF
ANY KIND, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO THE
DIRECTEDDIVERSITY(R) PATENT RIGHTS, THE THERMOFLUOR(R) TECHNOLOGY, OR
THE INSTRUMENTS INCLUDING, BUT NOT LIMITED TO, WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
ARTICLE 9
TERM AND TERMINATION
9.1 Term. This Agreement shall commence upon the Effective Date and shall
expire upon the expiration of all of the licenses granted in Article 2
and Article 3. The license grant to BMS pursuant to Article 2 shall
terminate upon the expiration or lapse of the last-to-expire
DirectedDiversity(R) Patent Rights listed in Exhibit A,
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
16
<PAGE>
and the license grant to BMS pursuant to Article 3 shall terminate
upon the expiration or lapse of the last-to-expire ThermoFluor(R)
Patent Rights listed in EXHIBIT C.
9.2 Termination for Breach. The failure by a Party to comply with any of
the material obligations contained in this Agreement shall entitle the
other Party to give notice to the allegedly breaching Party to have
the default cured. If such default is not cured within sixty (60) days
after the receipt of such notice, or diligent and ongoing steps are
not taken to cure, if by its nature such default could not be cured
within sixty (60) days, the notifying Party shall be entitled, without
prejudice to any of its other rights conferred on it by this
Agreement, and in addition to any other remedies that may be available
to it, to terminate this Agreement, provided, however, that such right
to terminate shall be stayed in the event that, during such sixty (60)
day period, the Party alleged to have been in default shall have: (a)
initiated arbitration in accordance with the provisions of Section
10.1, below, with respect to the alleged default, and (b) diligently
and in good faith cooperated in the prompt resolution of such
arbitration proceedings.
9.3 No Waiver. The right of a Party to terminate this Agreement, as
provided in Section 9.2, shall not be affected in any way by its
waiver or failure to take action with respect to any prior default.
9.4 Insolvency or Bankruptcy.
9.4.1 Either Party may, in addition to any other remedies available
by law or in equity, terminate this Agreement by written notice
to the other Party in the event that the latter Party shall
have become insolvent or bankrupt, or shall have an assignment
for the benefit of its creditors, or there shall have been
appointed a trustee or receiver of the other Party or for all
or a substantial part of its property, or any case or
proceeding shall have been commenced or other action taken by
or against the other Party in bankruptcy or seeking
reorganization, liquidation, dissolution, winding-up,
arrangement or readjustment of its debts or any other relief
under any bankruptcy, insolvency, reorganization or other
similar act or law of any jurisdiction now or hereafter in
effect, or there shall have been issued a warrant of
attachment, execution, distraint or similar process against any
substantial part of the property of the other Party, and any
such event shall have continued for 90 days undismissed,
unbonded and undischarged.
9.4.2 All rights and licenses granted under or pursuant to this
Agreement by BMS or 3DP are, and shall otherwise be deemed to
be, for purposes of Section 365(n) of the U.S. Bankruptcy Code,
licenses of right to "Intellectual Property," as defined under
Section 101 of the U.S. Bankruptcy Code. The Parties agree that
the Parties, as licensees of such rights under this Agreement,
shall retain and may fully exercise all of their
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
17
<PAGE>
rights and elections under the U.S. Bankruptcy Code. The Parties
further agree that, in the event of the commencement of a
bankruptcy proceeding by or against either Party under the U.S.
Bankruptcy Code, the Party hereto which is not a party to such
proceeding shall be entitled to a complete duplicate of (or
complete access to, as appropriate) any such intellectual
property and all embodiments of such relevant intellectual
property, and same, if not already in their possession, shall be
promptly delivered to them (i) upon any such commencement of a
bankruptcy proceeding upon their written request therefor, unless
the Party subject to such proceedings elects to continue to
perform all of their obligations under this Agreement, or (ii) if
not delivered under (i) above, upon the rejection of this
Agreement by or on behalf of the Party subject to such proceeding
upon written request therefor by a nonsubject Party.
9.5 Survival of Obligations. The termination or expiration of this
Agreement shall not relieve the Parties of any obligations accruing
prior to such termination, and any such termination shall be without
prejudice to the rights of either Party against the other. The
provisions of Section 2.3, Section 3.6, Section 3.7, Section 3.8,
Section 3.13, Section 3.14, Section 4.5, Section 5.2, Article 6,
Section 8.5, Section 9.5, Article 10, Article 11 and Article 12
(except Section 12.5) shall survive any termination of this Agreement.
9.6 Return of Confidential Information. Upon termination of this Agreement
by 3DP pursuant to Section 9.2 or 9.4, BMS will promptly return all
3DP Confidential Information related to ThermoFluor(R) Technology
transferred to it under this Agreement, whether in oral, written,
graphic or electronic form, and will cease all use of ThermoFluor(R)
Technology; provided, however, that BMS shall thereafter continue to
have all rights to use any information or results obtained by BMS from
its use of ThermoFluor(R) Technology during the term of this
Agreement, and 3DP will return all BMS Confidential Information
received hereunder. Notwithstanding the provisions above in Section
9.6, BMS may retain and use 3DP Confidential Information related to
ThermoFluor(R) Technology solely with respect to the Instruments it
has purchased from 3DP hereunder, but not to build or modify any
Instrument, or any instrument performing the same or similar function
to an Instrument, and not to disclose to or use such information for
any Third Party.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
18
<PAGE>
ARTICLE 10
DISPUTE RESOLUTION
10.1 Dispute Resolution. Any dispute concerning or arising out of this
Agreement or concerning the existence or validity hereof, shall be
determined by the following procedure.
10.1.1 Both Parties understand and appreciate that their long term
mutual interest will be best served by affecting a rapid and
fair resolution of any claims or disputes which may arise out of
services performed under this Agreement or from any dispute
concerning the terms of this Agreement. Therefore, both Parties
agree to use their reasonable best efforts to resolve all such
disputes as rapidly as practicable on a fair and equitable
basis. Toward this end, both Parties agree to develop and follow
a process for presenting, rapidly assessing, and settling claims
on a fair and equitable basis that takes into account the
precise subject and nature of the dispute.
10.1.2 If any dispute or claim arising under this Agreement cannot be
readily resolved by the Parties pursuant to the process
described above, then the Parties agree to refer the matter to a
panel consisting of the Chief Executive Officer of 3DP, and the
Senior Vice President of Early Discovery and Applied Technology
for BMS, or a comparable position selected by either Party from
time to time, for review and a non-binding resolution. A copy of
the terms of this Agreement, agreed upon facts (and areas of
disagreement), and concise summary of the basis for each side's
contentions will be provided to both such representatives who
shall review the same, confer, and attempt to reach a mutual
resolution of the issue.
10.1.3 If the matter has not been resolved utilizing the foregoing
process, and the Parties are unwilling to accept the non-binding
decision of the indicated panel, either or both Parties may
elect to pursue definitive resolution through binding
arbitration, which the Parties agree to accept in lieu of
litigation or other legally-available remedies (with the
exception of injunctive relief where such relief is necessary to
protect a Party from irreparable harm pending the outcome of any
such arbitration proceeding). Binding arbitration shall be
settled in accordance with the Commercial Arbitration Rules of
the American Arbitration Association by a panel of three
arbitrators chosen in accordance with these Rules. This
Agreement shall be governed by and construed in accordance with
the substantive laws of the State of Delaware, without regard to
the conflicts of laws provisions of Delaware. The arbitration
will be held in Wilmington, Delaware. Judgment upon the award
rendered may be entered in any court having jurisdiction and the
Parties hereby consent to the said
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
19
<PAGE>
jurisdiction and venue, and further irrevocably waive any
objection which either Party may have now or hereafter to
the laying of venue of any proceedings in said courts and to
any claim that such proceedings have been brought in an
inconvenient forum, and further irrevocably agree that a
judgment or order in any such proceeding shall be conclusive
and binding upon the Parties and may be enforced in the
courts of any other jurisdiction.
ARTICLE 11
INDEMNIFICATION
11.1 Indemnification of 3DP. BMS shall indemnify and defend 3DP and
its Affiliates, and the directors, officers, employees, agents
and counsel of 3DP and such Affiliates, and the successors and
assigns of any of the foregoing (the "3DP Indemnitees"), and
hold the 3DP Indemnitees harmless from and against any and all
losses resulting from any claim, suit or proceeding brought by
one or more Third Parties against a 3DP Indemnitee, arising from
or occurring as a result of the operations by BMS under the
DirectedDiversity(R) Patent Rights or the ThermoFluor(R)
Technology or use of the Instruments, or the discovery,
evaluation, manufacture, import, use, offer for sale or sale of
products developed in whole or in part through the operations by
BMS under the DirectedDiversity(R) Patent Rights and the
ThermoFluor(R) Technology or use of the Instruments, except to
the extent any such claim, suit or proceeding results from the
breach of any of the provisions of this Agreement, gross
negligence or willful misconduct of 3DP.
11.2 Procedure. Any of the 3DP Indemnitees that intends to claim
indemnification under this Article 11 shall promptly notify BMS
(the "Indemnitor") in writing of any liability, damage, loss,
cost and/or expense (including reasonable attorneys' fees)
arising out of Third Party claims or lawsuits in respect of
which the 3DP Indemnitee intends to claim such indemnification,
and shall permit the Indemnitor to assume direction and control
of the defense of the claim (including the selection of counsel,
reasonably acceptable to the 3DP Indemnitee, and the right to
negotiate a settlement, at the discretion of the Indemnitor,
provided that such settlement does not impose any material
obligation or detriment on the 3DP Indemnitee), and shall
cooperate as requested (at the expense of the Indemnitor) in the
defense of the claim; provided, however, that a 3DP Indemnitee
shall have the right to retain its own counsel, with the fees
and expenses to be paid by such 3DP Indemnitee. The failure to
deliver written notice to the Indemnitor within a reasonable
time after the commencement of any such action, if prejudicial
to its ability to defend such action, shall relieve the
Indemnitor of any liability to the 3DP Indemnitee under this
Article 11. At the Indemnitor's request, the 3DP Indemnitee
under this Article 11, and its employees and agents, shall
cooperate
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
20
<PAGE>
fully with the Indemnitor and its legal representatives in the
investigation of any loss covered by this indemnification and
provide true, correct and complete information with respect
thereto.
ARTICLE 12
MISCELLANEOUS
12.1 Entire Agreement. This Agreement, and the DiscoverWorks Drug
Discovery Collaboration Agreement, the GPCR License And User
Agreement and the PERT Internal Use License and Option
Agreement, all entered into simultaneously with this Agreement,
constitute and contain the entire understanding and agreement of
the Parties respecting the subject matters of these respective
agreements, and cancel and supersede any and all prior
negotiations, correspondence, understandings and agreements
between the Parties, whether oral or written, regarding such
subject matters.
12.2 Further Actions. Each Party agrees to execute, acknowledge and
deliver such further instruments and to do all such other acts
as may be necessary or appropriate in order to carry out the
purposes and intent of this Agreement.
12.3 Binding Effect. This Agreement and the rights granted herein
shall be binding upon and shall inure to the benefit of 3DP,
BMS, and their successors and permitted assigns.
12.4 Assignment. Neither Party shall assign this Agreement without
the prior written consent of the other Party; provided, however,
that either Party may assign this Agreement without the prior
written consent of the other Party in connection with the sale
or transfer of substantially all of its assets that relate to
this Agreement, or in the event of its merger or consolidation
or change of control or similar transaction. Any permitted
assignee shall assume all obligations of its assignor under this
Agreement.
12.5 Restrictions on Unsolicited Activities. In consideration of the
licenses granted hereunder, BMS agrees that for the term of this
Agreement, without the prior written consent of the board of
directors of 3DP, neither BMS nor any of its respective
Affiliates (including any person or entity directly or
indirectly, through one or more intermediaries, controlling one
of these entities, or controlled by one of these entities or
under common control with one of these entities) will (i)
purchase, offer or agree to purchase, or announce an intention
to purchase, directly or indirectly, any securities or assets of
3DP; (ii) make, or in any way participate, directly or
indirectly, in any "solicitation" of "proxies" to vote or
"consents" (as such terms are used in the rules and regulations
of the Securities
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
21
<PAGE>
and Exchange Commission), or seek to advise or influence any
person with respect to the voting of any voting securities of
3DP or any Affiliate thereof; (iii) initiate or support,
directly or indirectly, any stockholder proposal with respect to
3DP; (iv) directly or indirectly make any public announcement
with respect to, or submit a proposal for, or offer of (with or
without conditions) any extraordinary transaction involving 3DP
or its securities or assets, or any Affiliate thereof, or of any
successor to or person in control of 3DP or any of its
businesses, or any assets of 3DP any Affiliate or division
thereof, or of any such successor or controlling person; or (v)
form, join or in any way participate in a "group" as defined in
Section 13(d)(3) of the Exchange Act in connection with any of
the foregoing. Nothing contained in this Section 12.5 shall
prohibit the ownership by BMS of up to 1% of any class of
securities of 3DP which are registered pursuant to the Exchange
Act.
12.6 No Implied Licenses. No rights to any other patents, Know-how or
technical information, or other Intellectual Property rights,
other than as explicitly identified herein, are granted or
deemed granted by this Agreement. No right, expressed or
implied, is granted by this Agreement to a Party to use in any
manner the name or any other trade name or trademark of the
other Party in connection with the performance of this
Agreement.
12.7 No Waiver. No waiver, modification or amendment of any provision
of this Agreement shall be valid or effective unless made in
writing and signed by a duly authorized officer of each Party.
The failure of either Party to assert a right hereunder or to
insist upon compliance with any term or condition of this
Agreement shall not constitute a waiver of that right or excuse
a similar subsequent failure to perform any such term or
condition.
12.8 Force Majeure. The failure of a Party to perform any obligation
under this Agreement by reason of acts of God, acts of
governments, riots, wars, strikes, accidents or deficiencies in
materials or transportation or other causes of a similar
magnitude beyond its control shall not be deemed to be a breach
of this Agreement.
12.9 Independent Contractors. Both Parties are independent
contractors under this Agreement. Nothing contained in this
Agreement is intended nor is to be construed so as to constitute
3DP or BMS as partners or joint venturers with respect to this
Agreement. Neither Party shall have any express or implied right
or authority to assume or create any obligations on behalf of or
in the name of the other Party or to bind the other Party to any
other contract, agreement, or undertaking with any Third Party.
12.10 Notices and Deliveries. Any formal notices, request, delivery,
approval or consent required or permitted to be given under this
Agreement shall be in writing and shall be deemed to have been
sufficiently given when it is received, whether
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
22
<PAGE>
delivered in person, transmitted by facsimile with
contemporaneous confirmation, delivered by registered letter (or
its equivalent) or delivered by overnight courier service
(receipt required), to the Party to which it is directed at its
address shown below or such other address as such Party shall
have last given by notice to the other Parties.
If to BMS:
Bristol-Myers Squibb Company
Route 206 & Province Line Road
P.O. Box 4000
Princeton, New Jersey 08543
ATTN: Vice President and Senior Counsel
Pharmaceutical Research Institute
If to 3DP: with a copy to:
3-Dimensional Pharmaceuticals, Inc. Morgan, Lewis & Bockius LLP
Eagleview Corporate Center 502 Carnegie Center
665 Stockton Drive, Suite 104 Princeton, New Jersey 08540
Exton, PA 10341
ATTN: Chief Executive Officer ATTN: Randall B. Sunberg,
Esq.
12.11 Public Announcements. The Parties shall consult with each other
and reach mutual written agreement before making any public
announcement concerning this Agreement or its subject matter.
Notwithstanding the foregoing, the Parties may disclose the
existence and general nature of this Agreement and may make
disclosures for purposes of satisfying legal and regulatory
requirements in accordance with Article 6; however, neither
Party shall use the name of the other Party for promotional
purposes.
12.12 Headings. The captions to the sections in this Agreement are not
a part of this Agreement, and are included merely for
convenience of reference only and shall not affect its meaning
or interpretation.
12.13 Severability. If any provision of this Agreement becomes or is
declared by a court of competent jurisdiction to be illegal,
unenforceable or void, this Agreement shall continue in full
force and effect without said provision, so long as the
Agreement, taking into account said voided provision(s),
continues to provide the Parties with the same practical
economic benefits as the Agreement containing said voided
provision(s) did on the Effective Date. If, after taking into
account said voided provision(s), the Parties are unable to
realize the practical economic benefit contemplated on the
Effective Date, the Parties shall negotiate
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
23
<PAGE>
in good faith to amend this Agreement to reestablish the
practical economic benefit provided the Parties on the Effective
Date.
12.14 No Consequential Damages. IN NO EVENT SHALL EITHER PARTY OR ANY
OF ITS RESPECTIVE AFFILIATES BE LIABLE TO THE OTHER PARTY OR ANY
OF ITS AFFILIATES FOR SPECIAL, INDIRECT, INCIDENTAL OR
CONSEQUENTIAL DAMAGES, WHETHER IN CONTRACT, WARRANTY, TORT,
NEGLIGENCE, STRICT LIABILITY OR OTHERWISE, INCLUDING, BUT NOT
LIMITED TO, LOSS OF PROFITS OR REVENUE, OR CLAIMS OF CUSTOMERS
OF ANY OF THEM OR OTHER THIRD PARTIES FOR SUCH OTHER DAMAGES.
12.15 Applicable Law. This Agreement shall be governed by and
interpreted in accordance with the laws of the State of
Delaware, without reference to its conflicts of laws provisions.
12.16 Advice of Counsel. BMS and 3DP have each consulted with counsel
of their choice regarding this Agreement, and each acknowledges
and agrees that this Agreement shall not be deemed to have been
drafted by one party or another and will be construed
accordingly.
12.17 Counterparts. This Agreement may be executed in counterparts, or
facsimile versions, each of which shall be deemed to be an
original, and both of which together shall be deemed to be one
and the same agreement.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by
their respective duly authorized officers as of the date first above written,
each copy of which shall for all purposes be deemed to be an original.
3-DIMENSIONAL PHARMACEUTICALS, INC. BRISTOL-MYERS SQUIBB COMPANY
By: /s/ David C. U'Prichard By: /s/ Marilyn Hartig
Name: David C. U'Prichard, Ph.D. Name: Marilyn Hartig, Ph.D.
Title: Chief Executive Officer Title: VP, External Sciences
& Technology
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
24
<PAGE>
EXHIBIT A
DIRECTED DIVERSITY(R) PATENT RIGHTS
<TABLE>
<CAPTION>
Patent No. Issue Date
SKGF Ref. Title Serial Number Filing Date (if applicable) (if applicable)
------------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C> <C> <C>
1503.0010000 System and Method of Automatically 08/306,915 09/16/94 5,463,564 10/31/95
Generating Chemical Compounds with
Desired Properties
------------------------------------------------------------------------------------------------------------------------------
1503.0010001 System and Method of Automatically 08/535,822 09/28/95 5,574,656 11/12/96
Generating Chemical Compounds with
Desired Properties
------------------------------------------------------------------------------------------------------------------------------
1503.0010002 System and Method of Automatically 08/698,246 08/15/96 5,684,711 11/04/97
Generating Chemical Compounds with
Desired Properties
------------------------------------------------------------------------------------------------------------------------------
1503.0010003 System, Method and Computer Program 08/904,737 08/01/97 5,901,069 05/04/99
Product for At Least Partially
Automatically Generating Chemical
Compounds with Desired Properties
From a List of Potential Chemical
Compounds to Synthesize
------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------
1503.001EP00 System and Method of Automatically 95933748.6 09/11/95 0781436 07/02/97
Generating Chemical Compounds with (Published) (Publication
Desired Properties date)
------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------
1503.020EP01 System, Method and Computer Program 97948320.3 11/04/97 0935784 08/18/99
Product for Identifying Chemical (Published) (Publication
Compounds Having Desired Properties date)
------------------------------------------------------------------------------------------------------------------------------
1503.020EP02 System, Method, and Computer Program 97946679.4 11/04/97 0935789 08/18/99
Product for the Visualization and (Published) (Publication
Interactive Processing and Analysis date)
of Chemical Data
</TABLE>
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
25
<PAGE>
<TABLE>
<CAPTION>
------------------------------------------------------------------------------------------------------------------------------
1503.020PC03 System, Method, and Computer Program PCT/US99/09963 05/07/99 WO 99/57686 11/11/99
Product for Representing Proximity (Published) (Publication
Data in A Multi-dimensional Space date)
------------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C> <C> <C>
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------
</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
26
<PAGE>
EXHIBIT B
Scriptgen Patent Rights
-----------------------
United States Patent No. 5, 585, 277
United States Patent No. 5, 679, 582
International Patent Application PCT/US96/19698
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
27
<PAGE>
EXHIBIT C
THERMOFLUOR(R) PATENT RIGHTS
<TABLE>
<CAPTION>
------------------------------------------------------------------------------------------------------------------------------------
Patent No. Issue Date
SKGF Ref. Title Serial Number Filing Date (if applicable) (if applicable)
------------------------------------------------------------------------------------------------------------------------------------
<S> <C> <C> <C> <C> <C>
1503.0110001 Microplate Thermal Shift Assay for Ligand 08/853,464 05/09/97 6,020,141 02/01/00
Development and Multi-variable Protein Chemistry
Optimization
------------------------------------------------------------------------------------------------------------------------------------
1503.0110002 Microplate Thermal Shift Assay for Ligand 08/853,459 05/09/97 6,036,920 03/14/00
Development and Multi-variable Protein Chemistry
Optimization
------------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------------
[**] [**]
------------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------------
1503.011EP03 Microplate Thermal Shift Assay and Apparatus for 97927628.4 05/09/97 0914608 05/12/99
Ligand Development and Multi-variable Protein (Published) (Publication
Chemistry Optimization date)
-----------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------------
1503.031PC01 High Throughput Method for Functionally PCT/US98/24035 11/12/98 WO 99/24050 05/20/99
(Now in Nat Phase) Classifying Proteins (Published) (Publication
date)
------------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------------
[**] [**] [**] [**]
------------------------------------------------------------------------------------------------------------------------------------
</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
28
<PAGE>
EXHIBIT D.1
[**]
EXHIBIT D.2
[**]
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
29
<PAGE>
GPCR LICENSE AND USER AGREEMENT
THIS GPCR LICENSE AND USER AGREEMENT is made and entered into as of July 7,
2000, by and between 3-Dimensional Pharmaceuticals, Inc., a Delaware corporation
with an office at Eagleview Corporate Center, 665 Stockton Drive, Suite 104,
Exton, PA 19341 ("3DP"), and Bristol-Myers Squibb Company, a Delaware
corporation having a principal place of business at Route 206, 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."
BACKGROUND
WHEREAS, 3DP owns or controls certain proprietary rights and know-how relating
to certain GPCR Structures, GPCR Homology Models and related analysis
technologies; and
WHEREAS, 3DP has compiled and is compiling, and owns, certain information and
data regarding certain GPCR Structures and GPCR Homology Models in a proprietary
database which may be useful in the study of biological phenomena and design and
discovery of new pharmaceutical and diagnostic products; and
WHEREAS, BMS desires to obtain access to 3DP's Proteomica Database, and to
obtain certain licenses under certain of 3DP's proprietary rights and know-how,
to conduct research and development with respect to certain GPCR Structures that
have applicability in the development and commercialization of diagnostics and
pharmaceuticals.
NOW THEREFORE, in consideration of the covenants, representations and warranties
contained herein, and intending to be legally bound hereby, the Parties agree as
follows:
ARTICLE 1
DEFINITIONS
In addition to the capitalized terms defined throughout this Agreement, the
following terms when used herein shall have the respective meanings assigned to
them below:
1.1 "Access Term" means the period commencing on the commencement of
Contract Year One and ending on termination or expiration of this
Agreement, during which BMS shall have access to the Proteomica
Database under the terms and conditions of this Agreement.
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 other entity if it
owns or directly or indirectly controls at least 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
** 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.
<PAGE>
power to elect or appoint at least 50% of the members of the governing
body of the corporation or other entity.
1.3 "Agreement" means this GPCR License and User Agreement including its
Exhibits, as may be amended from time to time.
1.4 "BMS Preferred Target List" means the list of GPCR targets set forth
as Exhibit B, as such list may be amended from time to time by BMS in
---------
its sole determination.[**]
1.5 "BMS Site" means only (a) the BMS pharmaceutical research and
development facilities located in Lawrenceville, New Jersey, U.S.A.;
Hopewell, New Jersey, U.S.A.; Wallingford, Connecticut, U.S.A.;
Candiac, Quebec, Canada; (b) [**].
1.6 "Business Day" means any day, Monday through Friday, on which banking
institutions in New York, New York are open for business.
1.7 "Confidential Information" means all proprietary technical and/or
commercial information that has or could have commercial value or
other utility in a Party's business, or the unauthorized disclosure of
which could be detrimental to the Party's interests, including
information, inventions, know-how, data and materials relating to the
Database Information 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 7.4) that
such Confidential Information: (a) was already known to the Receiving
Party, other than under an obligation of confidentiality from the
Disclosing Party; (b) was generally available to the public or
otherwise part of the public domain at the time of its disclosure to
the Receiving Party; (c) became generally available to the public or
otherwise part of the public domain after its 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 the Receiving Party without
reference to the Confidential Information received from the Disclosing
Party (as defined in Section 7.4) 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. For the purposes of this Agreement, the BMS
Preferred Target List shall be presumed to be Confidential Information
of BMS and the Proteomica Database shall be presumed Confidential
Information of 3DP.
** 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.
2
<PAGE>
1.8 "Contract Year One" means the one year period commencing on the date
on which a Proteomica(TM) Database is installed at any BMS Site by 3DP
containing: [**]
1.9 "Contract Year Three" means the one-year period commencing immediately
following the end of Contract Year Two.
1.10 "Contract Year Two" means the one-year period commencing immediately
following the end of Contract Year One.
1.11 "Control" or "Controlled" means possession of the ability to grant a
license or sublicense of any patent rights, Know-how or other
intangible rights as provided for herein without violating the terms
of any contract or other agreement with a Third Party.
1.12 "Database Information" means all or any part of the information
associated with individual GPCR Structures and GPCR Homology Models in
the Proteomica(TM) Database, but does not include [**].
1.13 "Documentation" means all documentation, technical manuals, operator
and user manuals, flow diagrams, file descriptions and other written
information describing the functions, operational characteristics and
specifications of the software associated with the Proteomica(TM)
Database, or explaining how to install, use maintain and/or support
the Proteomica(TM) Database, as the same may be provided by 3DP and
amended by 3DP from time to time in connection with its release of any
maintenance updates and upgrades. The Parties acknowledge that all or
part of such documentation may be electronic.
1.14 "Effective Date" means the later of: (a) 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 3DP PERT
Internal Use License and Option Agreement, the DiscoverWorks(TM)
Nonexclusive License and Purchase Agreement, and the DiscoverWorks
Drug Discovery Collaboration Agreement.
1.15 "GPCR" means G-Protein Coupled Receptor.
1.16 "GPCR Class" means a collection of one or more GPCR Sequences
comprising a distinct subfamily of the entire GPCR family of gene
products, as defined in Exhibit A, that uses a classification based on
---------
[**].
1.17 "GPCR Higher Resolution Structure" means a GPCR Structure refined
against a data set of [**].
1.18 "GPCR Homology Model" means a three-dimensional structure of a GPCR
that is defined by a set of atomic x, y, z coordinates derived from an
experimentally
** 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.
3
<PAGE>
determined GPCR Structure, by comparison of the GPCR Sequence
associated with the experimentally determined GPCR Structure with a
Putative GPCR Sequence or different GPCR Sequence.
1.19 "GPCR Sequence" means the cDNA sequence that corresponds to the gene
for a GPCR that is characterized and defined by being the
physiological receptor for an endogenous ligand or exogenous compound.
1.20 "GPCR Structure" means a set of atomic x, y, z coordinates and (B)-
factors, in 3DP's Control, for an experimentally determined three-
dimensional structure of a gene product corresponding to a particular
GPCR Sequence, together with certain structure determination
statistics [**].
1.21 "GPCR Suite" means a collection of two or more GPCR Structures for a
particular GPCR that may preferably include representatives of the
following [**].
1.22 "Know-how" means unpatented technical and other information which is
not in the public domain relating to GPCR Structures in the Proteomica
Database, specifically limited to [**].
1.23 "Person" or "person" means any corporation, partnership, limited
liability company, joint venture, other entity or natural person.
1.24 "Proteomica Database" means 3DP's proprietary database containing
Database Information pertaining to one or more GPCR Structures for one
or more particular GPCRs and [**] GPCR Homology Models derived from
GPCR Structures.
1.25 "Putative GPCR Sequence" means a cDNA sequence that represents a gene
and, by virtue of sequence homology with cDNA sequences of known
GPCRs, is generally believed to express a gene product that is a
member of the GPCR family of gene products.
1.26 "Third Party" means any person or entity other than a Party.
1.27 "3DP Consulting Services" means 3DP's services to provide general
training in the use of the Proteomica(TM) Database and to provide
consultation to BMS at its request with regard to access and use of
data pertaining to particular GPCR Structures and GPCR Homology
Models.
1.28 "3DP Interfaces" means the software that provides (a) the content and
aggregation interface for the Proteomica(TM) Database (used in
conjunction with external browser software) and the functional modules
incorporated therein, (b) the associated analytic and data processing
engines used to process and analyze
** 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.
4
<PAGE>
the data, (c) the ad-hoc query tool, and (d) any maintenance updates
and upgrades developed, created or owned by 3DP during the term of
this Agreement and provided to BMS.
ARTICLE 2
OWNERSHIP; ACCESS TO THE PROTEOMICA DATABASE.
2.1 Access Grant. 3DP hereby grants to BMS and its Affiliates a non-
transferable, royalty-free, non-exclusive license, without the right
of sublicense, to have installed, use, execute and access the
Proteomica(TM) Database at BMS Sites solely for the purpose of BMS's
internal research use in the Field [**] for the Access Term. In
furtherance of this access grant, and in no event later than the
commencement of Contract Year One, 3DP shall provide the
Proteomica(TM) Database to BMS in machine readable form and the then-
current Know-how and Documentation.
2.2 Inclusion of GPCR Structures in Proteomica(TM) Database. [**].
2.3 Ownership of Proteomica(TM) Database. BMS hereby acknowledges that (a)
3DP has expended significant resources and efforts to develop the
Proteomica(TM) Database and the Database Information, (b) the
Proteomica(TM) Database represents a highly valuable and confidential
asset, and is a principal product of 3DP, (c) 3DP is willing to grant
BMS access to the Proteomica(TM) Database in reliance upon the
assurance by BMS that it shall use all reasonable efforts (including
not less than those efforts that BMS uses to protect its own
confidential information of like character) to protect the
Proteomica(TM) Database from unauthorized disclosure and use at each
BMS Site, and (d) the Proteomica(TM) Database is, and at all times
during the term of this Agreement shall remain, the sole and exclusive
property of 3DP.
2.4 Use at a BMS Site.
2.4.1 While 3DP anticipates that access to the Proteomica(TM)
Database shall be accomplished over extranet or other secure
internet access, if the Proteomica(TM) Database is installed
at any BMS Site, then the Proteomica(TM) Database shall only
be installed at the BMS Sites on designated 3DP approved
client computers, such approval not to be unreasonably
withheld or delayed.
2.4.2 BMS will install the Proteomica(TM) Database on approved
computers in a manner, and taking such security measures and
back-up procedures, as BMS uses internally for its own
internally-developed proprietary software and information
control.
** 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.
5
<PAGE>
2.4.3 All Proteomica(TM) Database access shall be consistent with
the terms set forth in Exhibit C.
---------
2.5 Use Restrictions. Except as permitted under Section 2.1 and 2.3:
2.5.1 BMS shall have the right to use the Proteomica(TM) Database
and Database Information solely for its own internal use by
Authorized Personnel of BMS and not as any part of providing
separate services or sublicenses to any Third Party
(including, without limitation, providing, directly or
indirectly, the same or similar services to any Third
Party). Such use shall only take place at a BMS Site in
accordance with the terms and conditions of this Agreement
for the Access Term. "Authorized Personnel" shall refer to
BMS employees, BMS temporary employees and BMS consultants
who have signed an agreement with BMS in which such person
acknowledges such person's obligation to protect the
Proteomica(TM) Database and Database Information.
2.5.2 BMS shall have no access to or right to use the
Proteomica(TM) Database except at any BMS Site under the
terms and conditions of this Agreement.
2.5.3 Except as otherwise agreed by 3DP in writing, and except as
provided in Section 2.5.4, BMS shall not (i) reverse
engineer, decompile, disassemble, re-engineer or otherwise
recreate or permit or assist others to recreate the
Proteomica(TM) Database or its structural framework or
distribute copies (by any means whatsoever whether now known
or hereafter invented) of the Proteomica(TM) Database,
including any substantial portion of the Database
Information from any field of the database, for any purpose
except as expressly permitted under this Agreement; (ii)
develop any products for commercial sale that are the same
or similar to the Proteomica(TM) Database and (iii) except
through the use of 3DP personnel, BMS shall not modify,
enhance or otherwise change the Proteomica(TM) Database.
2.5.4 BMS retains the right to create for its internal use
databases of protein structures that may include GPCR
structures. Any GPCR structures that have been obtained
through the Proteomica(TM) Database will be treated under
the same conditions of confidentiality.
2.5.5 BMS shall comply with all other use restrictions contained
in Exhibit C. Exhibit C shall be prepared by, and reasonably
--------- ---------
agreed upon, the Parties, and appended to this Agreement, as
soon as reasonably necessary prior to the first installation
of the Proteomica(TM) Database at a BMS Site.
2.6 Third Party Components. Unless stated otherwise and agreed to by the
Parties in writing, 3DP shall be responsible for securing all licenses
required from Third Parties for the incorporation of Third Party
Software Components for use in
** 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.
6
<PAGE>
conjunction with the Proteomica(TM) Database, and for paying all
license and other fees in connection therewith. As used herein, "Third
Party Software Components" means Third Party software tools that 3DP
either licenses in or otherwise approves for inclusion in the
Proteomica(TM) Database.
2.7 Loss, Theft, Unauthorized Disclosure or Use. BMS promptly shall notify
3DP of any loss, theft or unauthorized disclosure or use of the
Proteomica(TM) Database or the Database Information that comes to
BMS's attention.
2.8 3DP Retained Rights. Any rights of 3DP not expressly granted to BMS
under the provisions of this Agreement shall be retained by 3DP.
2.9 Pre-Release Prior to Publication of BMS GPCR Structures. In the event
that BMS intends to publish any GPCR Structures solved by BMS, BMS
shall make such GPCR Structures available to 3DP for inclusion in the
Proteomica(TM) Database as soon as reasonably practicable and in no
event later than [**] prior to any public release of such GPCR
Structures by BMS under Section 7.3. [**]
ARTICLE 3
PROGRAM DIRECTORS; DEVELOPMENT PROTEOMICA(TM) DATABASE
3.1 Program Directors.
3.1.1 Upon commencement of the Access Term, each Party will
provide the other, in writing, with the name of its "Program
Director." The Program Directors will act as the primary
liaison in coordinating the activities under this Agreement.
3.1.2 The Program Directors will serve to (i) oversee and
coordinate the installation and usage of the Proteomica(TM)
Database at the BMS Sites; (ii) monitor adherence to the
user terms and conditions set forth in this Agreement; and
(iii) require all employees and consultants who have access
to the Proteomica(TM) Database at a BMS Site to execute, and
monitor adherence to, the user terms and conditions set
forth in Exhibit C.
---------
3.1.3 The Program Directors shall meet with such frequency and at
such time and location as may be reasonably necessary to
accomplish installation of and access to the Proteomica(TM)
Database.
3.1.4 Each Party shall bear the costs and expenses of its
respective Program Director.
** 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.
7
<PAGE>
3.2 Proteomica(TM) Database Development. 3DP shall use commercially
reasonable efforts to develop the Proteomica(TM) Database in a manner
reasonably consistent with the following three year development
program:
3.2.1 In Contract Year One, [**].
3.2.2 In Contract Year Two, [**].
3.2.3 In Contract Year Three, [**].
3.2.4 3DP shall have sole discretion in all development decisions
relating to the Proteomica(TM) Database; provided, however,
3DP shall work with BMS and other subscribers of the
Proteomica(TM) Database to obtain meaningful input regarding
the further development of the Proteomica(TM) Database, in
terms of the choice of both GPCR Structures and GPCR
Homology Models.
3.3 Testing During the Course of the Proteomica(TM) Development Program.
BMS acknowledges that the 3DP Interface provided under this Agreement
may be pre-commercial release Beta versions, and that BMS's access may
be to a developmental test site for the Proteomica(TM) Database.
3.4 Installation. At dates and times mutually acceptable, 3DP agrees to
provide BMS with on-site access to the Proteomica(TM) Database at the
BMS Sites.
ARTICLE 4
PROTEOMICA DATABASE MAINTENANCE AND SUPPORT SERVICES
4.1 General Obligation. 3DP shall use commercially reasonable efforts to
provide BMS with maintenance and support services for the
Proteomica(TM) Database all as specified in this Article 4
("Maintenance and Support Services").
4.2 Correction of Nonconformities. BMS shall promptly notify 3DP, in
writing or by telephone (confirmed in writing), of any nonconformity
in the 3DP Interfaces. 3DP will respond to and correct any confirmed
nonconformities in the 3DP Interfaces within a reasonable time and as
prioritized by the Program Directors.
4.3 Maintenance Updates. 3DP shall provide BMS with any known solutions to
problems occurring with the 3DP Interfaces, including, without
limitation, any maintenance updates, at the time 3DP first releases
corresponding solutions and maintenance updates for 3DP Interface. BMS
agrees to accept all solutions and installations of maintenance
updates.
** 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.
8
<PAGE>
4.4 Training and Consulting Services. 3DP shall provide up to an aggregate
of [**] of (i) training and support services to qualified BMS
personnel during [**] pertaining to the operation and support of the
Proteomica(TM) Database, at no additional charge to BMS, and (ii)
Consulting Services (pursuant to Article 5). Any such training and
support will be provided at such times and in such places and in such
form as may be mutually agreeable to the Parties.
4.5 Remote Access. If necessary, each Party shall provide the other with
reasonable access, via modem, the Internet or some other remote
communications method mutually agreed-upon by the Parties, to such
Party's development, data and/or application servers for the sole and
limited purpose of assisting the other Party in fulfilling its
obligations under this Agreement. Said access shall be subject to
each Party's reasonable standards and procedures for the security of
computer systems and data.
4.6 Reuse of Developed Code. 3DP shall be free, at any time, to
incorporate software code written by 3DP in the course of implementing
the Proteomica(TM) Database in any product, including a standard
Proteomica(TM) Database, or a customized or modified version thereof.
No compensation shall be due to BMS for any such reuse of software
code written by 3DP in performing services for BMS hereunder.
ARTICLE 5
3DP CONSULTING SERVICES
5.1 Performance of Consulting Services. In addition to the training and
support services provided in Section 4.4, 3DP will provide BMS with
3DP Consulting Services as specifically set forth in work orders
agreed to in writing by the Parties and attached hereto from time to
time (each, a "Work Order"). Such Work Orders shall specify, at a
minimum, the scope of work to be performed, the timeline, any 3DP
Consulting Services' deliverables, any BMS participation or inputs
required, and fees due from BMS for such 3DP Consulting Services. 3DP
shall use commercially reasonable efforts to complete performance of
the relevant 3DP Consulting Services on or before the targeted date(s)
for completion set forth in the timeline.
5.2 Provision of 3DP Services. All 3DP Consulting Services required to be
delivered by 3DP to BMS under any Work Order shall be delivered to BMS
as specified in the applicable Work Order or as otherwise mutually
agreed to by the Parties in writing.
** 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.
9
<PAGE>
ARTICLE 6
FEES AND PAYMENTS
6.1 User Fees and Expenses. BMS will pay 3DP an "Annual User Fee" for
access to the Proteomica(TM) Database at BMS Sites described in
Sections 1.5(a) and 1.5(b), in accordance with the following schedule:
6.1.1 Within thirty (30) days of the Effective Date: $1,500,000
(U.S.)
6.1.2 Upon the commencement of Contract Year Two:
(a) [**].
(b) [**].
6.1.3 Upon the commencement of Contract Year Three:
(a) [**] or
(b) [**] or
(c) [**] or
(d) [**]
(e) [**]
6.1.4 Any payment to be made pursuant to Section 6.1.2 or 6.1.3
shall be due within thirty (30) days after the commencement
of Contract Year Two or Contract Year Three, as the case may
be.
6.2 Additional Site Fees. BMS will pay to 3DP an "Annual User Fee" for
access to the Proteomica(TM) Database at any BMS Site described in
Section 1.5(c) of [**] if BMS identifies such BMS Site during the
First Contract Year, and [**] of the then-current fee, according to
the provisions of Section 6.1.2 or Section 6.1.3, respectively, if BMS
identifies such BMS Site during Contract Year Two or Contract Year
Three. BMS shall make such payment to 3DP within 30 days of
identifying such BMS Site to 3DP, according to the provisions of
Section 1.5.
6.3 Additional Fees.
6.3.1 Maintenance and Support Fees. BMS will be responsible for
the expenses of 3DP personnel engaged in any training and
support or 3DP Consulting Services provided under 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.
10
<PAGE>
6.3.2 Installation/Integration Fees. BMS will be responsible for
the expenses associated with additional installations
required for BMS for the Proteomica(TM) Database after the
initial installation at each BMS
Site.
6.4 Mode of Payment. All payments to 3DP hereunder shall be made by wire
transfer of United States Dollars in the requisite amount to such bank
account as 3DP may designate by notice to BMS. Payments shall be free
and clear of any taxes, fees or charges, to the extent applicable.
6.5 Late Payments. All amounts payable by BMS hereunder, shall be paid by
BMS to 3DP in full, without any right of set-off or deduction. BMS
shall pay interest on all amounts past due at the rate of one percent
(1%) over the prime rate of interest reported in The Wall Street
Journal for the date such amount was due.
6.6 Taxes. Each Party shall pay all sales, use, personal property, and
other similar taxes associated with the license rights granted and/or
services provided to such Party hereunder, except taxes based on the
other Party's gross or net income, net worth or assets, which shall be
the sole responsibility of such other Party. If either Party claims an
exemption from any applicable sales or use taxes, the Parties shall
cooperate with each other, including, without limitation, in the
filing of appropriate certificates of tax exemption, (i) to ensure
that any withholding payments required to be made by the other Party
are reduced to the fullest extent permitted by law, and (ii) to seek
credit for withholding payments previously made by such other Party.
6.7 [**]
ARTICLE 7
PUBLICATION; CONFIDENTIALITY
7.1 Notification. Each Party recognizes that the other Party may wish to
publish the results of its work relating to GPCR Structures. However,
each Party also recognizes the importance of preserving the
proprietary nature of these GPCR Structures. Consequently, any
proposed publication relating to GPCR Structures by either Party shall
comply with this Section 7. At least 90 days before a manuscript is
to be submitted to a publisher, the publishing Party will provide to
the nonpublishing Party with a copy of the manuscript and any GPCR
Structures disclosed therein. If the publishing Party wishes to make
an oral presentation, it will provide the other Party with a copy of
the abstract (if one is submitted) at least 60 days before it is to be
submitted. The publishing Party will also provide to the other Party
a copy of the text of the presentation, including all slides, posters,
and any other visual aids, at least 60 days before the presentation is
made.
** 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
<PAGE>
7.2 Review of Proposed Publications. The other Party will review the
manuscript, abstract, text or any other material provided under
Section 7.1 to determine if any confidential or proprietary
information is being disclosed, then the Parties will consult to
arrive at an agreement on mutually acceptable modifications to the
proposed publication to avoid such disclosure.
7.3 GPCR Structure Disclosure. [**]
7.4 Confidentiality Obligations. The Parties agree that, for the term of
this Agreement and for 10 years thereafter, either Party that receives
Confidential Information (a "Receiving Party") from the other Party (a
"Disclosing Party") shall keep, and shall ensure that its officers,
directors and employees keep, completely 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 the Disclosing Party pursuant to this Agreement
(including, without limitation, know-how).
7.5 Written Assurances and Permitted Uses of Confidential Information.
7.5.1 The Receiving Party may disclose Confidential Information to
the extent the Receiving Party is compelled to disclose such
information by a court or other tribunal of competent
jurisdiction; provided however, that in such case the
Receiving Party shall immediately give notice to the
Disclosing Party so that the Disclosing Party may seek a
protective order or other remedy from said court or
tribunal. 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.
7.5.2 The existence and the terms and conditions of this Agreement
which the Parties have not specifically agreed to disclose
pursuant to this Section 7.5 shall be treated by each Party
as Confidential Information of the other Party.
7.5.3 If a Party is required to make any disclosure of the other
Party's Confidential Information, it will give at least
thirty (30) days written, advance notice to the latter Party
of such disclosure requirement. If a Party is required to
disclose Confidential Information to comply with applicable
laws or governmental regulations, 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, such Party may make such disclosure
provided it gives prompt notice to the other Party, and
provided it makes all reasonable efforts to comply with all
administrative or other
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
12
<PAGE>
procedures or to establish a reasonable protective or
similar order under which the confidential nature of the
information will be maintained.
7.6 Permitted Disclosures for Business Development Purposes.
Notwithstanding the foregoing, or any other provision in this
Agreement to the contrary, 3DP may describe the financial terms of
this Agreement in confidence, in connection with capital raising or
financing activities; provided, however, any such recipient of such
Confidential Information shall agree in writing to keep such terms
confidential for the same time periods and to 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, the terms of this Agreement and the copy
submitted to the applicable governmental agency shall be redacted such
that the extent of any such disclosure shall be limited to that which
in the opinion of 3DP's and BMS's legal counsel is legally required to
be disclosed.
ARTICLE 8
REPRESENTATIONS AND WARRANTIES
8.1 Authority. Each Party represents and warrants that as of the Effective
Date it has full right, power and authority to enter into this
Agreement, 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.
8.2 No Conflicts. Each Party represents and warrants that the execution,
delivery and performance of this Agreement does not conflict with, or
constitute a breach or default under any of its charter or
organizational documents, any law, order, judgment or governmental
rule or regulation applicable to it, or any material agreement,
contract, commitment or instrument to which it is a Party.
8.3 Disclaimer of Warranties. 3DP MAKES NO REPRESENTATIONS AND EXTENDS NO
WARRANTIES OR CONDITIONS OF ANY KIND, EITHER EXPRESS OR IMPLIED, WITH
RESPECT TO THE PROTEOMICA(TM) DATABASE OR THE DATABASE INFORMATION
INCLUDING, BUT NOT LIMITED TO, WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE.
8.4 Warranties Repeated at Installation. The representations and
warranties set forth in this Article 8 shall be true and correct on
the Effective Date, as well as on the date of installation of the
Proteomica(TM) Database.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
13
<PAGE>
ARTICLE 9
DISPUTE RESOLUTION
9.1 Dispute Resolution. Any dispute concerning or arising out of this
Agreement or concerning the existence or validity hereof, shall be
determined by the following procedure:
9.1.1 Both Parties understand and appreciate that their long term
mutual interest will be best served by affecting a rapid and
fair resolution of any claims or disputes which may arise out
of services performed under this Agreement or from any dispute
concerning the terms of this Agreement. Therefore, both Parties
agree to use their 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.
9.1.2 If any dispute or claim arising under this Agreement cannot be
readily resolved by the Parties pursuant to the process
described above, then the Parties agree to refer the matter to
a panel consisting of the Chief Executive Officer ("CEO") of
3DP and the Senior Vice President of Early Discovery and
Applied Technology for BMS, or a comparable position selected
by either Party from time to time, for review and a non-binding
resolution. A copy of the terms of this Agreement, agreed upon
facts (and areas of disagreement), and concise summary of the
basis for each side's contentions will be provided to both such
officers who shall review the same, confer, and attempt to
reach a mutual resolution of the issue.
9.1.3 If the matter has not been resolved utilizing the foregoing
process, and the Parties are unwilling to accept the non-
binding decision of the indicated panel, either or both Parties
may elect to pursue definitive resolution through binding
arbitration, which the Parties agree to accept in lieu of
litigation or other legally available remedies (with the
exception of injunctive relief where such relief is necessary
to protect a Party from irreparable harm pending the outcome of
any such arbitration proceeding). Binding arbitration shall be
settled in accordance with the Commercial Arbitration Rules of
the American Arbitration Association by a panel of three
arbitrators chosen in accordance with these Rules. This
Agreement shall be governed by and construed in accordance with
the substantive laws of the State of Delaware without regard to
the conflicts of laws provisions of Delaware. The arbitration
will be held in Wilmington, Delaware. Judgment upon the award
rendered may be entered in any court having jurisdiction and
the Parties hereby consent to the said
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
14
<PAGE>
jurisdiction and venue, and further irrevocably waive any
objection which either Party may have now or hereafter to the
laying of venue of any proceedings in said courts and to any
claim that such proceedings have been brought in an
inconvenient forum, and further irrevocably agree that a
judgment or order in any such proceeding shall be conclusive
and binding upon the Parties and may be enforced in the courts
of any other jurisdiction.
ARTICLE 10
TERM AND TERMINATION; SURVIVAL
10.1 Term. The term of the Agreement shall be from the Effective Date until
the expiration of Contract Year Three. Within six (6) months prior to
the expiration date, the Parties will negotiate in good faith to
provide BMS continued access to the Proteomica(TM) Database; such
negotiations will be based on the then prevailing pricing structure
for customer access to the Proteomica(TM) Database.
10.2 For Any Reason. Subject to the provisions of Section 10.3, BMS may
terminate this Agreement for any reason by providing sixty (60) days
written notice after the beginning of Contract Year Two.
10.3 Return of Confidential Information. Upon termination prior to
expiration of the term of this Agreement:
10.3.1 If the termination occurs before the receipt of payment under
Section 6.1.2, then BMS must return or destroy any Confidential
Information received from 3DP over the course of the term of
the Agreement and return the Proteomica(TM) Database and any
related Confidential Information.
10.3.2 If the termination occurs after the receipt of payment under
Section 6.1.2, then BMS may either:
10.3.2.1 [**]
10.3.2.2 [**]
10.3.3 [**.]
10.4 Termination for Material 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 written notice to have the default
cured. If such default (i) is not cured within 60 days after the
receipt of such notice or (ii) is not susceptible to cure within 60
days after receipt of such notice (unless such default, by its nature,
is incurable, in which case the Agreement may be terminated
immediately upon
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
15
<PAGE>
written notice) or (iii) diligent steps are not taken to cure if by
its nature such default could not be cured within 60 days, the
notifying Party shall be entitled, without prejudice to any of its
other rights conferred on it by this Agreement, and in addition to any
other remedies that may be available to it, to terminate this
Agreement. Such rights to terminate will be in addition to, and
without prejudice to the exercise of, any other remedies available in
law or equity.
10.5 Insolvency or Bankruptcy.
10.4.1 Either Party may, in addition to any other remedies available
by law or in equity, terminate this Agreement by written
notice to the other Party in the event 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 Exhibit,
execution, restraint or similar process against any
substantial part of the property of the other Party, and any
such event shall have continued for 90 days undismissed,
unbonded and undischarged.
10.4.2 All rights and licenses granted under or pursuant to this
Agreement by BMS or 3DP are, and shall otherwise be deemed to
be, for purposes of Section 365(n) of the U.S. Bankruptcy
Code, licenses of right to "Intellectual Property" as defined
under Section 101 of the U.S. Bankruptcy Code. The Parties
agree that the Parties as licensees of such rights under this
Agreement, shall retain and may fully exercise all of their
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 Parties under
the U.S. Bankruptcy Code, the Parties 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 (i) upon any such commencement
of a bankruptcy proceeding upon their written request
therefor, unless the Party subject to such proceedings elects
to continue to perform all of their obligations under this
Agreement or (ii) if not delivered under (i) above, upon the
rejection of this Agreement by or on behalf of the Party
subject to such proceeding upon written request therefor by a
nonsubject Party.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
16
<PAGE>
10.6 No Waiver. The right of a Party to terminate this Agreement shall not
be affected in any way by its waiver or failure to take action with
respect to any prior default.
10.7 Survival of Obligations. The termination or expiration of this
Agreement shall not relieve the Parties of any obligations accruing
prior to such termination, and any such termination shall be without
prejudice to the rights of either Party against the other. The
provisions of Article 7, Section 8.3, Article 9, Section 10.6, Section
10.7, Article 11 and Article 12 (except Section 12.5) shall survive
any expiration or termination of this Agreement.
ARTICLE 11
INDEMNIFICATION
11.1 Direct Indemnity. Each Party (the "indemnifying Party") shall
indemnify and hold the other Party, its trustees, officers, agents,
and employees (the "indemnified Parties"), harmless from and against
all losses, liabilities, damages and expenses (including attorney's
fees and costs) arising out of a breach of the indemnifying Party's
warranties or out of the negligence or willful misconduct of the
indemnifying Party in connection with activities under this Agreement
except to the extent such losses, liabilities, damages and expenses
(including attorney's fees and costs) resulted from the negligent or
willful misconduct of the indemnified Party. BMS acknowledges and
agrees that, with respect to the nature of the Proteomica(TM)
Database, there may be no adequate remedy at law for any breach of
BMS's obligations under the security provisions of this Agreement,
that any such breach may result in irreparable harm to 3DP, and
therefore, that upon any such breach, 3DP may be entitled to seek
appropriate equitable relief in addition to whatever remedies it might
have at law, including injunctive relief, specific performance or such
other relief as 3DP may request to enjoin or otherwise restrain any
act prohibited hereby, as well as the recovery of all costs and
expenses, including attorneys' fees incurred. 3DP shall be entitled to
indemnification by BMS from any losses, liabilities, damages and
expenses (including attorneys' fees and costs), in connection with
such unauthorized use or release of Confidential Information of 3DP.
3DP shall be entitled to indemnification by BMS from any losses,
liabilities, damages and expenses (including attorneys' fees and
costs) in connection with any Third Party infringement action arising
with respect to the Database Information as it may pertain to BMS's
use of such Database Information. BMS shall be entitled to
indemnification by 3DP from any losses, liabilities, damages and
expenses (including attorneys' fees and costs) in connection with any
Third Party infringement action arising with respect to BMS's use of
the Proteomica(TM) Database as it may pertain to claims that the
Proteomica(TM) Database infringes such Third Party's proprietary
rights.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
17
<PAGE>
11.2 Procedure. Upon the assertion of any such claim or suit, the
indemnified Party shall promptly notify the indemnifying Party thereof
and shall permit the indemnifying Party to assume direction and
control of the defense of the claim (including the selection of
counsel and the sole right to settle it at the sole discretion of the
indemnifying Party, provided that such settlement does not impose any
material obligation on the indemnified Parties), and shall cooperate
as requested (at the expense of the indemnifying Party) in the defense
of the claim.
ARTICLE 12
MISCELLANEOUS
12.1 Entire Agreement. This Agreement, and the DiscoverWorks(TM) Drug
Discovery Collaboration Agreement, the DiscoverWorks(TM) Non-exclusive
License and Purchase Agreement and the PERT Internal Use License and
Option Agreement all 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
matters of these respective Agreement and cancels and supersedes any
and all prior negotiations, correspondence, understandings and
agreements between the Parties, whether oral or written, regarding
such subject matters.
12.2 Further Actions. Each Party agrees to execute, acknowledge and deliver
such further instruments and to do all such other acts as may be
necessary or appropriate in order to carry out the purposes and intent
of this Agreement.
12.3 Binding Effect. This Agreement and the rights granted herein shall be
binding upon and shall inure to the benefit of 3DP, BMS and their
permitted assigns.
12.4 Assignment. Neither Party shall assign this Agreement without the
prior written consent of the other Party; provided, however, that
either Party may assign this Agreement without the prior written
consent of the other Party in connection with the sale or transfer of
substantially all of its assets that relate to this Agreement, or in
the event of its merger or consolidation or change of control or
similar transaction. Any permitted assignee shall assume all
obligations of its assignor under this Agreement.
12.5 Restrictions on Unsolicited Activities. In consideration of the
licenses granted hereunder, BMS agrees that for the term of this
Agreement, without the prior written consent of the board of directors
of 3DP, neither BMS nor any of its respective Affiliates (including
any person or entity directly or indirectly, through one or more
intermediaries, controlling one of these entities, or controlled by
one of these entities or under common control with one of these
entities) will (i) purchase, offer or agree to purchase, or announce
an intention to purchase, directly or indirectly, any securities or
assets of 3DP; (ii) make, or in any way
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
18
<PAGE>
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 or any Affiliate thereof; (iii) initiate or
support, directly or indirectly, any stockholder proposal with respect
to 3DP; (iv) directly or indirectly make any public announcement with
respect to, or submit a proposal for, or offer of (with or without
conditions) any extraordinary transaction involving 3DP or its
securities or assets, or any Affiliate thereof, or of any successor to
or person in control of 3DP or any of its businesses, or any assets of
3DP any Affiliate or division thereof, or of any such successor or
controlling person; or (v) form, join or in any way participate in a
"group" as defined in Section 13(d)(3) of the Exchange Act in
connection with any of the foregoing. Nothing contained in this
Section 12.5 shall prohibit the ownership by BMS of up to 1% of any
class of securities of 3DP which are registered pursuant to the
Exchange Act.
12.6 No Implied Licenses. No rights to any other patents, know-how or
technical information, or other intellectual property rights, other
than as explicitly identified herein, are granted or deemed granted by
this Agreement. No right, expressed or implied, is granted by this
Agreement to a Party to use in any manner the name or any other trade
name or trademark of the other Party in connection with the
performance of this Agreement.
12.7 No Waiver. No waiver, modification or amendment of any provision of
this Agreement shall be valid or effective unless made in writing and
signed by a duly authorized officer of each Party. The failure of
either Party to assert a right hereunder or to insist upon compliance
with any term or condition of this Agreement shall not constitute a
waiver of that right or excuse a similar subsequent failure to perform
any such term or condition.
12.8 Force Majeure. The failure of a Party to perform any obligation under
this Agreement by reason of acts of God, acts of governments, riots,
wars, strikes, accidents or deficiencies in materials or
transportation or other causes of a similar magnitude beyond its
control shall not be deemed to be a breach of this Agreement.
12.9 Independent Contractors. Both Parties are independent contractors
under this Agreement. Nothing contained in this Agreement is intended
nor is to be construed so as to constitute 3DP or BMS as partners or
joint venturers with respect to this Agreement. Neither Party shall
have any express or implied right or authority to assume or create any
obligations on behalf of or in the name of the other Party or to bind
the other Party to any other contract, agreement, or undertaking with
any Third Party.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
19
<PAGE>
12.10 Notices and Deliveries. Any formal notices, request, delivery,
approval or consent required or permitted to be given under this
Agreement shall be in writing and shall be deemed to have been
sufficiently given when it is received, whether delivered in person,
transmitted by facsimile with contemporaneous confirmation,
delivered by registered letter (or its equivalent) or delivered by
certified overnight courier service (receipt required), to the Party
to which it is directed at its address shown below or such other
address as such Party shall have last given by notice to the other
Parties.
If to BMS:
Bristol-Myers Squibb Company
Route 206 & Province Line Road
P.O. Box 4000
Princeton, New Jersey 08543
ATTN: Vice President and Senior Counsel,
Pharmaceutical Research Institute
If to 3DP: with a copy to:
3-Dimensional Pharmaceuticals, Inc. Morgan, Lewis & Bockius LLP
Eagleview Corporate Center 502 Carnegie Center
665 Stockton Drive, Suite 104 Princeton, New Jersey 08540
Exton, PA 10341
ATTN: Chief Executive Officer ATTN: Randall B. Sunberg, Esq.
12.11 Public Announcements. The Parties shall consult with each other and
reach mutual written agreement before making any public announcement
concerning this Agreement or its subject matter. Notwithstanding the
foregoing, the Parties may disclose the existence and general nature
of this Agreement and may make disclosures for purposes of
satisfying legal and regulatory requirements in accordance with
Article 7; however, neither Party shall use the name of the other
Party for promotional purposes.
12.12 Headings. The captions to the sections in this Agreement are not a
part of this Agreement, and are included merely for convenience of
reference only and shall not affect its meaning or interpretation.
12.13 Severability. If any provision of this Agreement becomes or is
declared by a court of competent jurisdiction to be illegal,
unenforceable or void, this Agreement shall continue in full force
and effect without said provision, so long as the Agreement, taking
into account said voided provision(s), continues to provide the
Parties with the same practical economic benefits as the Agreement
containing said voided provision(s) did on the Effective Date. If,
after taking into
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
20
<PAGE>
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.
12.14 Applicable Law. This Agreement shall be governed by and interpreted
in accordance with the laws of the State of Delaware without
reference to its conflicts of laws provisions.
12.15 Advice of Counsel. BMS and 3DP have each consulted with counsel of
their choice regarding this Agreement, and each acknowledges and
agrees that this Agreement shall not be deemed to have been drafted
by one Party or another and will be construed accordingly.
12.16 No Consequential Damages. IN NO EVENT SHALL EITHER PARTY OR ANY OF
ITS RESPECTIVE AFFILIATES BE LIABLE TO THE OTHER PARTY OR ANY OF ITS
AFFILIATES FOR SPECIAL, INDIRECT, INCIDENTAL OR CONSEQUENTIAL
DAMAGES, WHETHER IN CONTRACT, WARRANTY, TORT, NEGLIGENCE, STRICT
LIABILITY OR OTHERWISE, INCLUDING, BUT NOT LIMITED TO, LOSS OF
PROFITS OR REVENUE, OR CLAIMS OF CUSTOMERS OF ANY OF THEM OR OTHER
THIRD PARTIES FOR SUCH OTHER DAMAGES.
12.17 Counterparts. This Agreement may be executed in counterparts, or
facsimile versions, each of which shall be deemed to be an original,
and both of which together shall be deemed to be one and the same
agreement.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by
their respective duly authorized officers as of the Effective Date, 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.
21
<PAGE>
EXHIBIT A
---------
GPCR Sequence Subtypes
----------------------
[**]
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
22
<PAGE>
EXHIBIT B
---------
BMS Preferred GPCR Targets
--------------------------
[**]
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
23
<PAGE>
EXHIBIT C
---------
Database Access Terms
---------------------
Only authorized personnel from BMS shall be entitled to download GPCR
Structure or GPCR Homology Model coordinates from the Proteomica Database
solely for the purpose of modeling such GPCRs using software tools external
to the Proteomica Database. BMS shall maintain a list of such authorized
personnel, which may be inspected by 3DP upon reasonable cause, BMS
considering access to names of staff and their expertise to be proprietary
to BMS.
BMS shall not transfer the Proteomica Database or the Database Information,
or any portion thereof, from the BMS Sites.
Other terms to be added by mutual agreement of the parties.
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
24
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PERT
INTERNAL USE LICENSE AND OPTION AGREEMENT
THIS PERT INTERNAL USE LICENSE AND OPTION AGREEMENT is made as of July 7, 2000,
by and between 3-Dimensional Pharmaceuticals, Inc., a Delaware corporation
having a 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 a place of business at Route 206 & Province Line Road, P.O.
Box 4000, Princeton, New Jersey 08543 ("BMS"). Either 3DP or BMS may be
referred to herein as a "Party" or, collectively, they may be referred to as the
"Parties."
ARTICLE 1
DEFINITIONS
In addition to the capitalized terms defined throughout this Agreement, the
following terms when used herein shall have the respective meanings assigned to
them below:
1.1 "Affiliate" means, with respect to either Party, any corporation or
other business entity which controls, is controlled by, or is under
common control with such Party. A corporation or other entity shall be
regarded as in control of another corporation or other entity if it
owns or directly or indirectly controls at least 50% of the voting
stock or other ownership interest of the other corporation or entity
(or alternatively, if it owns the maximum such ownership interest
permitted by law), or if it possesses, directly or indirectly, the
power to direct or cause the direction of the management and policies
of the corporation or other entity, or the power to elect or appoint
at least 50% of the members of the governing body of the corporation
or other entity.
1.2 "Agreement" means this PERT Internal Use License and Option Agreement,
including its Exhibits, as may be amended from time to time.
1.3 "BMS Site" means only (a) the BMS pharmaceutical research and
development facilities located in Lawrenceville, New Jersey, U.S.A.;
Hopewell, New Jersey, U.S.A.; Wallingford, Connecticut, U.S.A.;
Candiac, Quebec, Canada; (b) [**].
1.4 "Confidential Information" means all commercial and/or technical
information that has or could have commercial value or other utility
in a Party's business, or the unauthorized disclosure of which could
be detrimental to the Party's interests, including information,
inventions, data and materials relating to the Licensed Patent Rights,
and Know-how, 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 the
Receiving Party can establish that such Confidential Information: (a)
was already known to the Receiving Party, other than under an
obligation of confidentiality to the Disclosing Party; (b) was
** 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
1
<PAGE>
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) the
Disclosing Party has specifically agreed in writing that the Receiving
Party may disclose such Confidential Information. For the purposes of
this Agreement, the 3DP PERT shall be presumed to be 3DP's
Confidential Information, unless 3DP specifically identifies in
writing one or more components of the 3DP PERT that it does not
consider to be its Confidential Information.
1.5 "Effective Date" means the later of: (a) 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 Nonexclusive License and
Purchase Agreement, and the DiscoverWorks Drug Discovery Collaboration
Agreement.
1.6 "Field" means the expression of recombinant proteins from human and
other species in mammalian and non-mammalian cell systems, and the
refolding of such expressed proteins, solely for use in pharmaceutical
and diagnostic research, and specifically excluding use in human
clinical trials, veterinary medicine product development and all
experiments conducted under GMP auspices, and excluding use for any
commercial production or commercialization of a protein product.
1.7 "Know-how" means unpatented technical and other information, belonging
to or controlled by 3DP, which is not in the public domain, including
aspects of 3DP PERT, Improvements and other information comprising or
relating to concepts, discoveries, inventions, data, designs,
formulae, ideas, methods, models, assays, research plans, procedures,
designs for experiments and tests, results of experimentation and
testing (including research or development results), processes
(including manufacturing processes, specifications and techniques),
and laboratory records.
1.8 "Improvements" means any inventions, discoveries, improvements or
enhancements made by either Party or their respective Affiliates,
which relate to the 3DP PERT or to previous Improvements.
1.9 "Licensed Patent Rights" means: (a) patent applications or issued
patents identified in Exhibit A, including any patent applications,
---------
divisionals, continuations, reissues and reexaminations thereof, (b)
any patents issuing from any of the patent applications described in
clause (a) or any patents covering any Improvements made by 3DP to the
inventions covered by the patents and patent applications described in
clause (a); and (c) any extensions and supplementary
** 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
2
<PAGE>
protection certificates based on, or the foreign equivalents of, any
of the foregoing in clauses (a) and (b); filed by or granted to 3DP in
the U.S., Canada, or one or more countries in the European Patent
Community.
1.10 "Third Party" means any person or entity other than a Party or any of
its Affiliates.
1.11 "3DP PERT" stands for "3DP Protein Expression and Refolding
Technology" and means (a) the 3DP proprietary technology that
facilitates high yield protein expression and high yield refolding of
complex proteins expressed in mammalian and non-mammalian cell
systems, that is covered at the time and place of the use by one or
more patent claims within Licensed Patent Rights, and/or (b) the
proprietary and nonproprietary methods, systems, instruments,
programs, technology, trade secrets and software, together with all
Know-how related thereto, necessary for the practice of the foregoing.
ARTICLE 2
LICENSE
2.1 Grant. Subject to the terms and conditions of this Agreement, 3DP
hereby grants BMS and its Affiliates a nontransferable,
nonsublicensable, nonexclusive, nonroyalty-bearing license in the
Field under: (a) the Licensed Patent Rights and Know-how, and (b) any
Improvements to the 3DP PERT or Improvements thereto made by or for
3DP during the [**] after the Effective Date, or for which 3DP
otherwise acquires the right to grant such a license during such [**]
period, and under all patent, copyright, trademark, trade secret and
other intellectual property rights inherent therein and appurtenant
thereto; to the extent necessary for BMS to use the 3DP PERT and
Improvements solely for research purposes in the Field [**] only at
the BMS Sites.
2.2 Access to Improvements. For a period of [**] from the Effective Date,
3DP, at no additional cost, will promptly make full written disclosure
to BMS of any and all Improvements that 3DP conceives or makes or has
made to the 3DP PERT and to any Improvements thereto, and/or which 3DP
has the right to provide hereunder, and 3DP will facilitate the
transfer of such Improvements to BMS. Such transfer shall occur no
later than six (6) months after such Improvements have been validated
by 3DP. If BMS desires to acquire a license to any such Improvement
from 3DP for commercial applications beyond the scope of the license
granted in Section 2.1, the Parties will negotiate in good faith the
terms under which 3DP may grant such license for such Improvement to
BMS.
2.3 Grantback Rights to Improvements. For a period of [**] from the
Effective Date, BMS and its Affiliates agree that each will promptly
make full written disclosure to 3DP of any and all Improvements that
BMS and/or its Affiliates conceives or makes to the 3DP PERT and to
any Improvements thereto. BMS
** 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
3
<PAGE>
and its Affiliates hereby grant to 3DP, or its designee, a semi-
exclusive (exclusive except as to BMS and its Affiliates), perpetual,
nonroyalty-bearing license, including the right to transfer and
sublicense such license, to all of BMS's and its Affiliates' worldwide
right, title, and interest in and to any and all such Improvements
solely for applications relating to 3DP PERT, under all patent,
copyright, trademark, trade secret and other intellectual property
rights inherent therein and appurtenant thereto, provided that such
license shall be subject to a retained right by BMS and its Affiliates
to use such Improvements solely for internal research purposes as
permitted in Section 2.1.
2.4 Limitations. Except as permitted under Section 2.1, this Agreement
does not grant BMS a license to:
2.4.1 transfer any part of the 3DP PERT to any Third Party; or
2.4.2 develop or sell an instrument, product or a service based on
any part of the 3DP PERT; or
2.4.3 provide services to any Third Party with respect to any part
of the 3DP PERT; or
2.4.4 distribute, license or otherwise make available to any Third
Party any data or database that is obtained from the use of
any part of the 3DP PERT.
2.5 Retained Rights. Any rights of either Party not expressly granted to
the other Party under the provisions of this Agreement shall be
retained by the former Party.
2.6 Covenants. BMS covenants that it will not install, have installed or
operate the 3DP PERT at any site that is not a BMS Site, and that it
will limit disclosure and/or use of the 3DP PERT to/by only those of
its employees or its Affiliates' employees necessary to accomplish the
research activities involving the 3DP PERT at the BMS Sites.
ARTICLE 3
OPTION
3.1 Grant. 3DP hereby grants BMS an option (the "Option") to negotiate, as
provided for herein, a commercial license to the 3DP PERT. Such
commercial license shall be nonexclusive, world-wide, and royalty-
bearing, with a limited right to sublicense, and will grant BMS the
right to develop, make, have made, use, have used, sell, have sold,
import, and have imported products made using the 3DP PERT. The term
of the Option shall begin on the Effective Date of this Agreement and
shall continue for[**].
** 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
4
<PAGE>
3.2 Exercise of Option. BMS shall provide written notice to 3DP of its
election to exercise the Option no later than ninety (90) days prior
to the expiration of the term of the Agreement. If BMS decides not to
exercise such Option at any time before the expiration of the term of
the Agreement, BMS shall promptly provide written notice to 3DP of
such decision.
3.3 Good Faith Negotiation. Upon receipt of written notice from BMS of its
intent to exercise the Option, the Parties shall negotiate in good
faith to achieve a definitive license agreement, including provisions,
among others, for confidentiality, indemnification, and diligent
marketing, as well as up-front license fees, royalties and milestone
payments.
ARTICLE 4
PAYMENT
4.1 3DP PERT License Fee.
4.1.1 Within thirty (30) days after execution of this Agreement,
in consideration for the Option granted above, and for the
licenses granted hereunder for the BMS Sites described in
Sections 1.3(a) and 1.3(b), BMS will pay to 3DP[**].
4.1.2 In consideration for the licenses granted hereunder[**].
4.2 Mode of Payment. Payment to 3DP hereunder shall be made by wire
transfer of United States Dollars, in the requisite amount, to such
bank account as 3DP may designate by timely notice to BMS. Payment
shall be free and clear of any taxes, fees or charges, to the extent
applicable.
ARTICLE 5
SERVICES
5.1 Training and Support. 3DP shall use commercially reasonable efforts to
provide up to [**] of training and support services to a limited
number of qualified BMS personnel for the 3DP PERT during the [**]
after the Effective Date, with such time to be divided equally on a
quarterly basis ("Services"). Such Services will be provided at such
times and in such places and in such form as may be mutually agreeable
to the Parties. BMS will be subject to additional fees, which shall be
reasonable and specified in advance, for any support or training
required beyond the Services.
5.2 Recording. In order to protect the patent rights, under applicable
U.S., Canadian or European Union law in any inventions conceived or
reduced to practice during the term of this Agreement as a result of
the use of the 3DP PERT, BMS agrees to
** 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
5
<PAGE>
maintain a policy which requires its employees to record and maintain
all data and information developed using the 3DP PERT in such a manner
as to enable the Parties to use such records to establish the earliest
date of invention and/or diligence to reduction to practice. At a
minimum, the policy shall require such individuals to record all
inventions generated by them in standard laboratory notebooks which
are dated and corroborated by non-inventors on a regular,
contemporaneous basis.
ARTICLE 6
PATENT RIGHTS AND INFRINGEMENT
6.1 Licensed Patent Rights. 3DP agrees to use commercially reasonable
efforts to prepare, file, prosecute and maintain the Licensed Patent
Rights, at 3DP's expense, in a manner deemed appropriate in 3DP's sole
judgment. 3DP agrees to keep BMS materially advised of the status of
all Licensed Patent Rights, upon reasonable written request from BMS.
6.2 BMS Patent Rights. BMS shall provide 3DP with copies of all material
correspondence with any patent authority, such that 3DP is apprised of
the status of all patent rights filed by or granted to BMS and/or its
Affiliates which are related to Improvements or to 3DP PERT, and under
which 3DP has rights, according to the provisions of Section 2.2.
6.3 Cooperation. Each Party agrees to endeavor in good faith to coordinate
its efforts with the other Party in order to minimize or avoid
interference with the patent prosecution or rights of the other Party
with respect to patent rights under which the other Party has a
license.
6.4 Infringement by Third Parties. In the event that BMS becomes aware of
any infringement by one or more Third Parties of any of the patent
rights within Licensed Patent Rights, BMS shall promptly notify 3DP.
3DP shall respond to any such infringement in a manner deemed
appropriate by 3DP, in its sole judgment.
6.5 Third Party Patent Rights. If any warning letter or other notice of
infringement is received by a Party, or action, suit or proceeding is
brought against a Party alleging infringement of a patent of any Third
Party, with respect to operations under the Licensed Patent Rights,
the Parties shall promptly discuss and decide what response is in the
best interests of the Parties.
ARTICLE 7
CONFIDENTIALITY
** 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
6
<PAGE>
7.1 Confidentiality Obligations. The Parties agree that, for the term of
this Agreement and for ten (10) years thereafter, either Party that
receives Confidential Information (a "Receiving Party") from the other
Party (a "Disclosing Party") shall keep, and shall take steps, not
fewer than it takes to protects its own valuable, proprietary
information, and not less than reasonable measures, to attempt to
ensure that its officers, directors and employees keep, confidential,
and shall not publish or otherwise disclose, and shall not use for any
purpose (except as expressly permitted hereunder) any Confidential
Information (including without limitation, Know-how) furnished to it
by its Disclosing Party pursuant to this Agreement.
7.2 Written Assurances and Permitted Uses of Confidential Information.
7.2.1 The Receiving Party may disclose the Disclosing Party's
Confidential Information to the extent the Receiving Party
is compelled to disclose such information by a judicial or
administrative authority of competent jurisdiction,
including but not limited to submitting information to tax
authorities or to comply with any discovery or similar
request for production of documents in litigation or similar
alternative dispute resolution proceedings, provided
however, that in such case, the Receiving Party shall timely
give notice to the Disclosing Party so that the Disclosing
Party may seek a protective order or other remedy from said
authority. In any event, the Receiving Party shall disclose
only that portion of the Confidential Information that, in
the opinion of its legal counsel, is legally required to be
disclosed, and will exercise reasonable efforts to ensure
that any such information so disclosed will be accorded
confidential treatment by said court or tribunal.
7.2.2 To the extent reasonably necessary or appropriate to fulfill
its obligations or exercise its rights hereunder, a Party
may disclose Confidential Information received from the
other Party to one or more of its Affiliates, on a need-to-
know basis, on condition that each such Affiliate agrees to
keep such Confidential Information confidential under
equivalent conditions required of its parent Party.
7.2.3 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.
7.2.4 To the extent that it is reasonably necessary or appropriate
to fulfill its obligations to comply with the rules
controlling disclosure of material information during patent
examination, either Party may disclose Confidential
Information received from the other Party to the applicable
patent authority.
** 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
7
<PAGE>
7.3 Publications. At least forty-five (45) days prior to submitting a
manuscript that contains a reference to or details of the 3DP PERT or
any Improvements for publication, BMS shall provide 3DP with such
manuscript for 3DP's reasonable review. BMS shall also promptly
provide 3DP with any updates or revisions to such manuscript. 3DP will
review each manuscript in a timely manner and shall release such
manuscript(s) to BMS, or may request BMS to make amendments or
substitutions to the manuscript, in order to delete 3DP's Confidential
Information. BMS will honor 3DP's reasonable request for such
amendment or substitution.
7.4 Permitted Disclosures for Business Development Purposes.
Notwithstanding the foregoing, or any other provision in this
Agreement to the contrary, 3DP may describe the financial terms of
this Agreement in confidence, in connection with capital raising or
financing activities; provided, however, any such recipient of such
Confidential Information shall agree in writing to keep such terms
confidential for the same time periods and to an equivalent extent as
3DP is required to keep Confidential Information confidential under
this Agreement. Furthermore, BMS acknowledges that 3DP may be
obligated to disclose terms of this Agreement and make public a copy
of this Agreement in the event it files a registration statement with
respect to its shares or it becomes a public company as required by
applicable U.S. law; provided however, the terms of this Agreement and
the copy submitted to the applicable governmental agency shall be
redacted such that the extent of any such disclosure shall be limited
to that which in the reasonable opinion of 3DP's legal counsel is
legally required to be disclosed.
ARTICLE 8
REPRESENTATIONS AND WARRANTIES
8.1 Authority. Each Party represents and warrants that it has the full
right, power and authority to execute, deliver and perform its
obligations pursuant to this Agreement, this Agreement has been duly
executed by such Party, and it constitutes a legal, valid and binding
obligation of such Party, enforceable in accordance with its terms.
8.2 No Conflicts. Each Party represents and warrants that the execution,
delivery and performance of this Agreement does not conflict with, or
constitute a breach or default under any of its charter or
organizational documents, any law, order, judgment or governmental
rule or regulation applicable to it, or any material agreement,
contract, commitment or instrument to which it is a party.
8.3 Intellectual Property. 3DP represents and warrants that Exhibit A is
accurate and complete, and identifies all patent rights owned by 3DP,
as of the Effective Date, which are believed necessary for the use of
the methods and technology claimed in the Licensed Patent Rights, in
accordance with the license granted hereunder. 3DP further warrants
that it has not received notice of any claim by a Third Party, which
asserts that the practice of the 3DP PERT, as anticipated in
** 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
8
<PAGE>
this Agreement, would infringe any claim of any valid, enforceable
United States, Canadian or the applicable patent of a country in the
European Union. 3DP has not conducted, and is not obliged to conduct,
either a search for, or an analysis of, United States or Canadian
patents, and/or patents to any countries in the European Patent
Community that may be infringed by the use of the 3DP PERT.
8.4 Disclaimer of Warranties. 3DP MAKES NO REPRESENTATIONS AND EXTENDS NO
WARRANTIES OR CONDITIONS OF ANY KIND, EITHER EXPRESS OR IMPLIED, WITH
RESPECT TO THE LICENSED PATENT RIGHTS OR OTHERWISE TO THE 3DP PERT,
INCLUDING, BUT NOT LIMITED TO, WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE.
ARTICLE 9
TERM AND TERMINATION
9.1 Term. This Agreement shall commence upon the Effective Date and shall
expire upon the expiration of all of the last-to-expire of the patents
within the Licensed Patent Rights.
9.2 For Any Reason. BMS may terminate this Agreement for any reason by
providing 3DP sixty (60)-days written notice.
9.3 Termination for Material Breach. The failure by a Party to comply with
any of the material obligations contained in this Agreement shall
entitle the other Party to give notice to the allegedly breaching
Party to have the default cured. If (i) such default is not cured
within sixty (60) days after the receipt of such notice, or (ii) such
default is not susceptible to cure within sixty (60) days after such
notice (unless such default, by its nature, is incurable, in which
case the Agreement may be terminated immediately by notice), or (iii)
diligent and ongoing steps are not taken to cure, if by its nature
such default could not be cured within sixty (60) days, the notifying
Party shall be entitled, without prejudice to any of its other rights
conferred on it by this Agreement, and in addition to any other
remedies that may be available to it, to terminate this Agreement,
provided, however, that such right to terminate shall be stayed in the
event that, during such sixty (60) day period, the Party alleged to
have been in default shall have: (a) initiated arbitration in
accordance with the provisions of Section 11.1, below, with respect to
the alleged default, and (b) diligently and in good faith cooperated
in the prompt resolution of such arbitration proceedings. Such rights
to terminate will be in addition to, and without prejudice to the
exercise of, any other remedies available in law or equity.
9.4 No Waiver. The right of a Party to terminate this Agreement, as
provided in Article 9, shall not be affected in any way by its waiver
or failure to take action with respect to any prior default.
** 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
9
<PAGE>
9.5 Insolvency or Bankruptcy.
9.5.1 Either Party may, in addition to any other remedies available
by law or in equity, terminate this Agreement by written
notice to the other Party in the event 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, restraint 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.
9.5.2 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 relevant
intellectual property, and same, if not already in their
possession, shall be promptly delivered to them (i) upon any
such commencement of a bankruptcy proceeding upon their
written request therefor, unless the Party subject to such
proceedings elects to continue to perform all of their
obligations under this Agreement, or (ii) if not delivered
under (i) above, upon the rejection of this Agreement by or on
behalf of the Party subject to such proceeding upon written
request therefor by a nonsubject Party.
9.6 Survival of Obligations. The termination or expiration of this
Agreement shall not relieve the Parties of any obligations accruing
prior to such termination, and any such termination shall be without
prejudice to the rights of either Party against the other. The
provisions of Article 7, Section 8.4, Section 9.6, Section 9.7,
Article 10, Article 11 and Article 12 (except Section 12.5) shall
survive any termination of this Agreement.
9.7 Return of Confidential Information. Upon termination or expiration of
this Agreement, BMS will promptly return all 3DP Confidential
Information
** 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
10
<PAGE>
transferred to it under this Agreement, whether in oral, written,
graphic or electronic form, and will cease all use of 3DP PERT;
provided, however, that BMS shall thereafter continue to have all
rights to use any information or results obtained by BMS from its use
of 3DP PERT during the term of this Agreement.
ARTICLE 10
INDEMNIFICATION
10.1 Indemnification of 3DP. BMS shall indemnify and defend 3DP and its
Affiliates, and the directors, officers, employees, agents and counsel
of 3DP and such Affiliates, and the successors and assigns of any of
the foregoing (the "3DP Indemnitees"), and hold the 3DP Indemnitees
harmless from and against any and all losses resulting from any claim,
suit or proceeding brought by one or more Third Parties against a 3DP
Indemnitee, arising from or occurring as a result of BMS's use of 3DP
PERT and/or its operations under the Licensed Patent Rights, or the
discovery, evaluation, manufacture, import, use, offer for sale or
sale of products developed in whole or in part through the use by BMS
of 3DP PERT, except to the extent any such claim, suit or proceeding
results from the breach of any of the provisions of this Agreement,
gross negligence or willful misconduct of 3DP. It is understood by
both Parties that the technology licensed hereunder is experimental,
that BMS is experienced in the handling of and appropriate precautions
to be practiced with experimental technology, and it will take all
appropriate precautions to prevent death, personal injury, illness,
and property damages related to the use thereof.
10.2 Procedure. Any of the 3DP Indemnitees that intends to claim
indemnification under this Article 10 shall promptly notify BMS (the
"Indemnitor") in writing of any loss in respect of which the 3DP
Indemnitee intends to claim such indemnification, and shall permit the
Indemnitor to assume direction and control of the defense of the claim
(including the selection of counsel and the sole right to settle it at
the sole discretion of the Indemnitor, provided that such settlement
does not impose any material obligation or detriment on the 3DP
Indemnitee), and shall cooperate as requested (at the expense of the
Indemnitor) in the defense of the claim; provided, however, that a 3DP
Indemnitee shall have the right to retain its own counsel, with the
fees and expenses to be paid by such 3DP Indemnitee. The failure to
deliver written notice to the Indemnitor within a reasonable time
after the commencement of any such action, if prejudicial to its
ability to defend such action, shall relieve the Indemnitor of any
liability to the 3DP Indemnitee under this Article 10. At the
Indemnitor's request, the 3DP Indemnitee under this Article 10, and
its employees and agents, shall cooperate fully with the Indemnitor
and its legal representatives in the investigation of any loss covered
by this indemnification and provide true, correct and complete
information with respect thereto.
** 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
<PAGE>
ARTICLE 11
DISPUTE RESOLUTION
11.1 Dispute Resolution. Any dispute concerning or arising out of this
Agreement or concerning the existence or validity hereof, shall be
determined by the following procedure:
11.11 Both Parties understand and appreciate that their long term
mutual interest will be best served by affecting a rapid and
fair resolution of any claims or disputes which may arise out
of services performed under this Agreement or from any dispute
concerning the terms of this Agreement. Therefore, both
Parties agree to use their reasonable best efforts to resolve
all such disputes as rapidly as practicable on a fair and
equitable basis. Toward this end, both Parties agree to
develop and follow a process for presenting, rapidly
assessing, and settling claims on a fair and equitable basis
that takes into account the precise subject and nature of the
dispute.
11.12 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 ("CEO") of
3DP, and the Senior Vice President of Early Discovery and
Applied Technology for BMS, or a comparable position selected
by either Party from time to time, for review and a non-
binding resolution. A copy of the terms of this Agreement,
agreed upon facts (and areas of disagreement), and concise
summary of the basis for each side's contentions will be
provided to both such officers who shall review the same,
confer, and attempt to reach a mutual resolution of the issue.
11.13 If the matter has not been resolved utilizing the foregoing
process, and the Parties are unwilling to accept the non-
binding decision of the indicated panel, either or both
Parties may elect to pursue definitive resolution through
binding arbitration, which the Parties agree to accept in lieu
of litigation or other legally-available remedies (with the
exception of injunctive relief where such relief is necessary
to protect a Party from irreparable harm pending the outcome
of any such arbitration proceeding). Binding arbitration shall
be settled in accordance with the Commercial Arbitration Rules
of the American Arbitration Association by a panel of three
arbitrators chosen in accordance with these Rules. This
Agreement shall be governed by and construed in accordance
with the substantive laws of the State of Delaware, without
regard to the conflicts of laws provisions of Delaware. The
arbitration will be held in Wilmington, Delaware. Judgment
upon the award rendered may be entered in any court having
jurisdiction and the Parties hereby consent to the said
jurisdiction and venue, and further irrevocably waive any
objection which either Party may have now or hereafter to the
laying of venue of any
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
12
<PAGE>
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 12
MISCELLANEOUS
12.1 Entire Agreement. This Agreement, and the DiscoverWorks(TM) Drug
Discovery Collaboration Agreement, the DiscoverWorks(TM) Nonexclusive
License and Purchase Agreement, and the GPCR License and User
Agreement, all entered into simultaneously with this Agreement,
constitute and contain the entire understanding and agreement of the
Parties respecting the subject matters of these respective agreements,
and cancel and supersede any and all prior negotiations,
correspondence, understandings and agreements between the Parties,
whether oral or written, regarding such subject matters.
12.2 Further Actions. Each Party agrees to execute, acknowledge and deliver
such further instruments and to do all such other acts as may be
necessary or appropriate in order to carry out the purposes and intent
of this Agreement.
12.3 Binding Effect. This Agreement and the rights granted herein shall be
binding upon and shall inure to the benefit of 3DP, BMS, and their
permitted assigns.
12.4 Assignment. Neither Party shall assign this Agreement without the
prior written consent of the other Party; provided, however, that
either Party may assign this Agreement without the prior written
consent of the other Party in connection with the sale or transfer of
substantially all of its assets that relate to this Agreement, or in
the event of its merger or consolidation or change of control or
similar transaction. Any permitted assignee shall assume all
obligations of its assignor under this Agreement.
12.5 Restrictions on Unsolicited Activities. In consideration of the
licenses granted hereunder, BMS agrees that for the term of this
Agreement, without the prior written consent of the board of directors
of 3DP, neither BMS nor any of its respective Affiliates (including
any person or entity directly or indirectly, through one or more
intermediaries, controlling one of these entities, or controlled by
one of these entities or under common control with one of these
entities) will (i) purchase, offer or agree to purchase, or announce
an intention to purchase, directly or indirectly, any securities or
assets of 3DP; (ii) make, or in any way participate, directly or
indirectly, in any "solicitation" of "proxies" to vote or "consents"
(as such terms are used in the rules and regulations of the Securities
and Exchange Commission), or seek to advise or influence any person
with respect to the voting of any voting securities of 3DP or any
Affiliate thereof; (iii)
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
13
<PAGE>
initiate or support, directly or indirectly, any stockholder
proposal with respect to 3DP; (iv) directly or indirectly make any
public announcement with respect to, or submit a proposal for, or
offer of (with or without conditions) any extraordinary transaction
involving 3DP or its securities or assets, or any Affiliate thereof,
or of any successor to or person in control of 3DP or any of its
businesses, or any assets of 3DP any Affiliate or division thereof,
or of any such successor or controlling person; or (v) form, join or
in any way participate in a "group" as defined in Section 13(d)(3)
of the Exchange Act in connection with any of the foregoing. Nothing
contained in this Section 12.5 shall prohibit the ownership by BMS
of up to 1% of any class of securities of 3DP which are registered
pursuant to the Exchange Act.
12.6 No Implied Licenses. No rights to any other patents, Know-how or
technical information, or other intellectual property rights, other
than as explicitly identified herein, are granted or deemed granted
by this Agreement. No right, expressed or implied, is granted by
this Agreement to a Party to use in any manner the name or any other
trade name or trademark of the other Party in connection with the
performance of this Agreement.
12.7 No Waiver. No waiver, modification or amendment of any provision of
this Agreement shall be valid or effective unless made in writing
and signed by a duly authorized officer of each Party. The failure
of either Party to assert a right hereunder or to insist upon
compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent
failure to perform any such term or condition.
12.8 Force Majeure. The failure of a Party to perform any obligation
under this Agreement by reason of acts of God, acts of governments,
riots, wars, strikes, accidents or deficiencies in materials or
transportation or other causes of a similar magnitude beyond its
control shall not be deemed to be a breach of this Agreement.
12.9 Independent Contractors. Both Parties are independent contractors
under this Agreement. Nothing contained in this Agreement is
intended nor is to be construed so as to constitute 3DP or BMS as
partners or joint venturers with respect to this Agreement. Neither
Party shall have any express or implied right or authority to assume
or create any obligations on behalf of or in the name of the other
Party or to bind the other Party to any other contract, agreement,
or undertaking with any Third Party.
12.10 Notices and Deliveries. Any formal notices, request, delivery,
approval or consent required or permitted to be given under this
Agreement shall be in writing and shall be deemed to have been
sufficiently given when it is received, whether 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
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
14
<PAGE>
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
<TABLE>
<CAPTION>
If to 3DP: with a copy to:
<S> <C>
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.
</TABLE>
12.11 Public Announcements. The Parties shall consult with each other and
reach mutual written agreement before making any public announcement
concerning this Agreement or its subject matter. Notwithstanding the
foregoing, the Parties may disclose the existence and general nature
of this Agreement and may make disclosures for purposes of
satisfying legal and regulatory requirements in accordance with
Article 6; however, neither Party shall use the name of the other
Party for promotional purposes.
12.12 Headings. The captions to the sections in this Agreement are not a
part of this Agreement, and are included merely for convenience of
reference only and shall not affect its meaning or interpretation.
12.13 Severability. If any provision of this Agreement becomes or is
declared by a court of competent jurisdiction to be illegal,
unenforceable or void, this Agreement shall continue in full force
and effect without said provision, so long as the Agreement, taking
into account said voided provision(s), continues to provide the
Parties with the same practical economic benefits as the Agreement
containing said voided provision(s) did on the Effective Date. If,
after taking into account said voided provision(s), the Parties are
unable to realize the practical economic benefit contemplated on the
Effective Date, the Parties shall negotiate in good faith to amend
this Agreement to reestablish the practical economic benefit
provided the Parties on the Effective Date.
12.14 No Consequential Damages. IN NO EVENT SHALL EITHER PARTY OR ANY OF
ITS RESPECTIVE AFFILIATES BE LIABLE TO THE OTHER
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
15
<PAGE>
PARTY OR ANY OF ITS AFFILIATES FOR SPECIAL, INDIRECT, INCIDENTAL OR
CONSEQUENTIAL DAMAGES, WHETHER IN CONTRACT, WARRANTY, TORT,
NEGLIGENCE, STRICT LIABILITY OR OTHERWISE, INCLUDING, BUT NOT
LIMITED TO, LOSS OF PROFITS OR REVENUE, OR CLAIMS OF CUSTOMERS OF
ANY OF THEM OR OTHER THIRD PARTIES FOR SUCH OTHER DAMAGES.
12.15 Applicable Law. This Agreement shall be governed by and interpreted
in accordance with the laws of the State of Delaware, without
reference to its conflicts of laws provisions.
12.16 Advice of Counsel. BMS and 3DP have each consulted with counsel of
their choice regarding this Agreement, and each acknowledges and
agrees that this Agreement shall not be deemed to have been drafted
by one party or another and will be construed accordingly.
12.17 Counterparts. This Agreement may be executed in counterparts, or
facsimile versions, each of which shall be deemed to be an original,
and both of which together shall be deemed to be one and the same
agreement.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by
their respective duly authorized officers as of the Effective Date, each copy of
which shall for all purposes be deemed to be an original.
<TABLE>
<CAPTION>
3-DIMENSIONAL PHARMACEUTICALS, INC. BRISTOL-MYERS SQUIBB COMPANY
<S> <C>
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
</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
16
<PAGE>
EXHIBIT A
---------
Licensed Patents
----------------
[**].
** Certain portions of this Exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission
17
