EXHIBIT 10.38
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, ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("3DP"), and ▇▇▇▇▇▇▇-▇▇▇▇▇ Squibb Company, a Delaware
corporation having a place of business at ▇▇▇▇▇ ▇▇▇ & ▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇.▇.
▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ("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.; ▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇, ▇.▇.▇.;
▇▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇; (b) [**] in the United States, Canada or a
country in the European Union, [**], excepting [**] that has been [**]
and [**] prior to BMS's installation of the 3DP PERT [**] and (c) [**]
in the United States, Canada or a country in the European Union, [**]
prior to the BMS's installation of the 3DP PERT at [**].
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
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
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 which shall be
deemed to include any research and development activities being
undertaken [**] over the term of the Agreement 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
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
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 for each
BMS Site described in Section 1.3(a), BMS will pay to 3DP a
fee of [**] within (30) days after BMS had identified such
BMS Site to 3DP as one at which it intends to install 3DP
PERT.
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
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
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
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
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
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
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
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
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
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
below or such other address as such Party shall have last given by
notice to the other Parties.
If to BMS:
▇▇▇▇▇▇▇-▇▇▇▇▇ Squibb Company
▇▇▇▇▇ ▇▇▇ & ▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇
▇.▇. ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
ATTN: Vice President and Senior Counsel
Pharmaceutical Research Institute
If to 3DP: with a copy to:
3-Dimensional Pharmaceuticals, Inc. ▇▇▇▇▇▇, ▇▇▇▇▇ & Bockius LLP
Eagleview Corporate Center 502 Carnegie Center
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇, ▇▇ ▇▇▇▇▇
ATTN: Chief Executive Officer ATTN: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, 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 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
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.
3-DIMENSIONAL PHARMACEUTICALS, INC. ▇▇▇▇▇▇▇-▇▇▇▇▇ SQUIBB COMPANY
By: /s/ ▇▇▇▇▇ ▇. U'▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
Name: ▇▇▇▇▇ ▇. U'▇▇▇▇▇▇▇▇, Ph.D. Name: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, 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
16
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
