Confidential
EXHIBIT 10.49
SECOND AMENDMENT
TO
COLLABORATIVE RESEARCH AND LICENSE AGREEMENT
This Second Amendment ("Second Amendment") is entered into by and
between Xxxxxxx-Xxxxx Squibb Pharmaceuticals Research Institute, a division of
X.X. Xxxxxx & Sons, Inc., a Delaware corporation, having offices at Route 206 at
Province Line Road, P.O. Box 4000, Princeton, New Jersey 08543-4000 ("BMS"), and
between Aurora Biosciences Corporation, a Delaware corporation having offices at
00000 Xxxxxxxxx Xxxx, Xxx Xxxxx, Xxxxxxxxxx 00000 ("Aurora").
WHEREAS, effective November 26, 1996, BMS and Aurora entered into a
Collaborative Research and License Agreement and a First Amendment entered into
on June 18, 1997 (which collectively are referred to as the "Research and
License Agreement");
WHEREAS, BMS and Aurora are obligated to develop in collaboration with
one another certain ESP screens under Section 3.1 of the Research and License
Agreement and desire to amend such obligations and expand the development of
Nonexclusive Screens under Section 3.1 of the Research and License Agreement;
and
WHEREAS, BMS and Aurora are, the licensee and licensor, respectively,
of certain Reporters under Section 5.1 of the Research and License Agreement and
desire to clarify and amend certain provisions relating to licensing certain
Patent Rights and technology for the benefit of both parties under the Research
and License Agreement.
NOW THEREFORE, in consideration of the above premises and of the
faithful performance of the covenants herein contained, the parties hereto agree
as follows:
1. All capitalized terms used in this Second Amendment shall have the
meaning ascribed to such term in the Research and License Agreement,
unless otherwise specifically defined herein.
The definition of "PLP" shall be amended to read as follows:
"PLP" means a ***.
Page 1
*** Confidential Treatment Requested
Newly defined terms, include:
"Second Amendment" as defined in the first paragraph of page one
herein.
"Second Amendment Effective Date" is defined as the date of the last
party to sign this Second Amendment below.
"Research and License Agreement" as defined in the recitals herein.
""Collaborative NSP Screen", "Successful Collaborative NSP Screen" and
"NSP Activities" shall have the meanings set forth in Section 3.2 of
Exhibit B hereof."
"Burdened Reporter System Technology", "Burdened Reporter System",
"Burdened Reporter" and "Burdened Patent Rights" as defined in Section
3.7.
"Stanford Patents" is defined as ***.
2. Section 3.1.1 of the Research and License Agreement shall be amended to
replace the first paragraph thereof with the new paragraph attached as
EXHIBIT A to this Second Amendment. In the last subparagraph (ii) of
Section 3.1.1 of the Research and License Agreement, ***. Exhibit 3.1.1
of the Research and License Agreement shall be amended throughout to
replace "ESP" with "ESP or XXX."
0. Section 3.2 of the Research and License Agreement shall be amended and
replaced in its entirety with a new Section 3.2 attached as EXHIBIT B
to this Second Amendment.
Page 2
*** Confidential Treatment Requested
4. Section 3.6 of the Research and License Agreement is amended in its
entirety and replaced with new Sections 3.6 and 3.7 attached as EXHIBIT
C to this Second Amendment.
5. Aurora, to the best of its knowledge, hereby represents and warrants to
BMS that:
a. As of the Second Amendment Effective Date, the ***.
b. As of the Second Amendment Effective Date, ***.
6. Section 5.1.2.4 is added to the Research and License Agreement, as
follows: "The right to use a Burdened Reporter System Technology,
Burdened Reporter System, Burdened Reporter or Burdened Patent Rights
(as such terms are defined in Section 3.7), where BMS and Aurora ***set
forth in Section 3.7 hereof."
7. Section 2.1.7.4 of the Research and License Agreement is amended to add
after the words "Nonexclusive Screens" the following: "(other than
Exclusive and Collaborative NSP Screens that were developed by Aurora
for BMS under this Agreement***, subject to such milestone and royalty
obligations as BMS may have under Section 3.2 hereof)" and delete ***.
8. Section 2.1.7.4.1 of the Research and License Agreement is amended by
replacing the words "milestone payments" with the words "milestone and
royalty payments".
9. Section 2.1.8.4 of the Research and License Agreement is amended to add
after the words "Nonexclusive Screens" the following: "(other than
Nonexclusive Screens that were developed by Aurora for BMS under this
Agreement, ***, subject to such milestone and royalty obligations as
BMS may have under Section 3.2 hereof)".
10. Section 2.1.8.4.1 of the Research and License Agreement is amended by
replacing the words "milestone payments" with the words "milestone and
royalty payments".
11. Sections 5.2.2, 10.1, 10.2 and 12.5.1 of the Research and License
Agreement are each amended by replacing the references to "3.2.5"
therein with "3.2.6".
Page 3
*** Confidential Treatment Requested
12. Section 12.5.1 of the Research and License Agreement is amended by
adding ", 3.6, 3.7," between "3.4" and "5.2".
13. Aurora provides ***attached as *** to the Second Amendment.
14. Exhibit 1.2 of the Research and License Agreement shall be amended and
replaced in its entirety as of the Second Amendment Effective Date with
a new Exhibit attached as EXHIBIT E to this Second Amendment. ***
Patent Rights covering compositions or uses of the Reporters and
Reporters Systems listed on Exhibit E *** and that are licensed,
sublicensed or ***.
15. Exhibit 11.2.1 of the Research and License Agreement shall be amended
and replaced in its entirety as of the Second Amendment Effective Date
with a new Exhibit attached as EXHIBIT F to this Second Amendment, but
only to the extent that the same relates to Aurora Reporter System
Patent Rights, ***. Aurora acknowledges that the use by BMS of the
Aurora Reporter System Patent Rights listed on Exhibit F or otherwise
existing as of the Second Amendment Effective Date in accordance with
the terms of the Research and License Agreement shall ***Patent Rights
covering compositions or uses of the Reporters and Reporters Systems
*** and that are licensed, sublicensed or ***.
16. The parties make the following representations and warranties to each
other:
(i) Each party hereby represents and warrants that such party (a) is
duly organized and validly existing under the laws of the state of its
incorporation and has full corporate power and authority to enter into
this Second Amendment and to carry out the provisions hereof; (b) has
the requisite power and authority and the legal right to own and
operate its property and assets, to lease the property and assets it
operates under lease, and to carry on its business as it is now being
conducted; and (c) is in compliance with all requirements of applicable
law, except to the extent that any noncompliance would not have a
material adverse effect on the properties, business, financial or other
condition of it and would not materially adversely affect its ability
to perform its obligations under the Research
and License Agreement, as amended by this Second Amendment.
Page 4
*** Confidential Treatment Requested
(ii) Each party hereby represents and warrants that such party (a) has
the requisite power and authority and the legal right to enter into the
Second Amendment and to perform its obligations and grant the rights
extended by it hereunder; and (b) has taken all necessary action on its
part to authorize the execution and delivery of the Second Amendment
and to authorize the performance of its obligations hereunder and the
grant of rights extended by it hereunder.
(iii) Each party hereby represents and warrants to the other that: (a)
this Second Amendment has been duly executed and delivered on its
behalf and is a legal and valid obligation binding upon it and is
enforceable in accordance with its terms; (b) the execution, delivery
and performance of this Second Amendment and the Research and License
Agreement, as modified by this Second Amendment, by such party does not
conflict with any agreement, instrument or understanding, oral or
written, to which it is a party or by which it may be bound, nor
violate any law or regulation of any court, governmental body or
administrative or other agency having authority over it; and (c) all
necessary consents, approvals and authorizations of all governmental
authorities and other persons required to be obtained by it in
connection with the execution, delivery and performance of the Second
Amendment and the Research and License Agreement, as modified by this
Second Amendment, have been obtained.
17. Except as herein amended and extended, the parties confirm and ratify
that the terms and conditions of the Research and License Agreement
remain in full force and effect. Except as may be specifically
referenced herein, all changes to the Research and License Agreement
made in this Second Amendment shall be effective as of the date that
this Second Amendment is signed by the last party to sign below.
Page 5
*** Confidential Treatment Requested
IN WITNESS WHEREOF, the parties have caused this Second Amendment to be executed
in multiple counterparts by their duly authorized representatives.
Xxxxxxx-Xxxxx Xxxxxx Xxxxxx Biosciences Corporation
Pharmaceutical Research Institute
By: By:
------------------------------ --------------------------------
Title: Title:
--------------------------- -----------------------------
Date: Date:
---------------------------- ------------------------------
Page 6
*** Confidential Treatment Requested
EXHIBIT A OF THE SECOND AMENDMENT
(TO REPLACE ORIGINAL SECTION 3.1.1
AS OF THE SECOND AMENDMENT EFFECTIVE DATE)
3.1.1 SCOPE. Under ***, BMS and Aurora will collaborate, using the
Screening Technology, to develop high throughput and/or ultra high
throughput screens for BMS' use in accordance with this Agreement and
which will be manufactured by Aurora and delivered to BMS *** selected
by BMS ***. The parties will collaborate on the specifications for, and
development of, the particular screens (each screen, together with all
of the reagents and any other materials to be delivered by Aurora in
connection therewith, ***, which shall be manufactured by Aurora and
delivered to BMS (the ***). BMS will *** parties will use all
reasonable efforts to select *** months following the Effective Date.
Page 7
*** Confidential Treatment Requested
EXHIBIT B OF THE SECOND AMENDMENT
(TO REPLACE ORIGINAL SECTION 3.2
AS OF THE SECOND AMENDMENT EFFECTIVE DATE)
***
Page 8
*** Confidential Treatment Requested
***
Promptly following mutual agreement ***, the parties will jointly
prepare the *** Work Plan, which shall set forth in detail the
respective responsibilities of the parties in the development of each
Collaborative *** Screen, and which must be executed by both parties to
be effective. Each such *** Work Plan will contain, where applicable, a
description of the tasks to be performed by each party, location, the
specific deliverables (including number of reagents and any other
materials to be provided for each ***Screen) and documentation to be
produced by Aurora, acceptance criteria for each Collaborative NSP
Screen, *** any other relevant terms, conditions, and work
specifications.
Promptly following the execution of each *** Work Plan, the parties
will commence their respective duties under the *** Work Plan for the
development, manufacture, and delivery of the applicable ***Screen. All
work under a ***Work Plan shall be performed in accordance with the
provisions of this Agreement, and each party will use its reasonable
best efforts to complete its
Page 9
*** Confidential Treatment Requested
obligations under the *** Work Plan as expeditiously as practicable. If
any provisions of any such *** Work Plan should conflict with any
provisions set forth in this Agreement, the provisions of this
Agreement shall take precedence, unless such *** Work Plan expressly
refers to the specific provision(s) of this Agreement that it is
intended to replace or modify (and which shall be limited in force and
effect to such *** Work Plan ***). During the development of a ***
Screen, ***.
*** reagents and other materials to be delivered for use with ***
Screen shall be based on the specifications and validation criteria for
such *** Screen, reagents and other materials as established by such
*** Work Plan. ***, after which the *** Screen shall be delivered to
BMS. Promptly following receipt of each such *** Screen, *** days after
receipt by BMS and *** BMS so that Aurora may develop ***. Aurora will
use its commercially reasonable best efforts to promptly ***, if
possible, provide *** Screen within a reasonable time ***. If Aurora is
*** Screen for ***, or BMS is *** Screen transferred to BMS by Aurora
and Aurora is ***Screen to *** as the parties may agree, Aurora will
prepare an *** Work Plan for *** and BMS will *** Screen; provided,
however, that (i) the foregoing shall not *** BMS in *** Screen, and,
except as set forth in (ii) that follows, BMS shall *** as a result of
BMS' use of such ***, and (ii) BMS may, ***, elect to incorporate the
cells provided by Aurora from such *** Screen into an *** Screen ***
BMS for ***, in which *** using such ***Screen that incorporates such
cells provided by Aurora as BMS would have ***.
If at any time within *** delivery of a *** Screen for whatever reason
such ***, Aurora *** promptly as *** are required to *** Screen), in
which event BMS will reimburse Aurora for *** incurred to manufacture
and supply same ***.
***.
*** BMS under Section *** will not *** of the number of such *** to be
delivered to BMS as part of such *** Plan; provided, however BMS shall
pay for Materials unique to such *** Screens (e.g. cell lines not
available to Aurora or readily commercially available, specific ligands
not available to Aurora or readily commercially available, ***).
***
Page 10
*** Confidential Treatment Requested
All Materials provided by BMS in furtherance of an *** Work Plan shall
be used in accordance with *** attached to the Research and License
Agreement.
3.2.2 *** RESOURCE. In each year for a period of *** years following
the Second Amendment Effective Date, Aurora will use reasonable effort
and a screen development resource of *** Aurora FTEs each of which
shall spend up *** hours per year to develop the *** Screens at Aurora
provided for in Section 3.2.
3.2.3 TRAINING OF BMS PERSONNEL IN AURORA TECHNOLOGIES. In each year
for a period of *** years following the Second Amendment Effective
Date, Aurora will dedicate *** Aurora FTE who will devote up to ***
hours per year to train BMS personnel in aspects of Aurora Reporter
System Technology. This will include, with BMS's approval and at the
expense of BMS, the training of BMS scientist in BMS's facilities ***
times per year and the training of up to *** BMS scientists per year in
Aurora Technology at Aurora's facilities in San Diego. BMS and Aurora
will determine the nature of the training and coordination of such
training sessions, and ***.
Page 11
*** Confidential Treatment Requested
3.2.4 PAYMENTS FOR SUPPORT AND SCREEN DEVELOPMENT RESOURCE. As partial
consideration for the development of *** Screens at Aurora under
Section 3.2 and the training and support of BMS personnel in Aurora
Reporter System Technology under Section 3.2.3, BMS shall commit to pay
Aurora *** per year for *** years following the Second Amendment
Effective Date. The payments with respect to the *** Second Amendment
Effective Date shall be paid as follows: *** shall be paid *** Second
Amendment, and the *** shall become payable ***. The *** to be paid
with respect to the *** Second Amendment Effective Date shall be paid
in *** installments of *** which shall be paid upon the *** of the
Second Amendment Effective Date, and the *** shall become payable ***.
3.2.5 DEPLOYMENT OF *** SCREENS BY BMS. BMS and its Affiliates will
employ each *** Screen developed in collaboration with Aurora to screen
such BMS Test Materials as BMS deems appropriate for such purpose in
the exercise of its sole and absolute discretion. *** Affiliates shall
have the right to continue to use the *** Screens developed by Aurora
and provided to BMS hereunder (and to use the Reporters and Reporter
System provided by Aurora for use ***.
3.2.6 ***.
Page 12
*** Confidential Treatment Requested
3.2.7 PAYMENTS TO AURORA. In addition to such payments as are made by
BMS to Aurora pursuant to section 3.2.4 hereof, the following payments
shall be made to Aurora with respect to the delivery and use of ***
Screens by BMS:
3.2.7.1 MILESTONES. BMS will pay to Aurora the following
milestone payments on each Product containing an Approved PLP
*** Screen developed under this Section 3.2 ***:
3.2.7.1.1 BMS will promptly notify Aurora in writing of
each Approved PLP Compound *** Screen ***. BMS will pay
Aurora *** for each such Approved PLP Compound so approved
for further development by the ***. Payments shall be
wired to a bank account specified by Aurora within ***
days following such notification from BMS.
3.2.7.1.2 ***:
Event Payment (US$)
----- -------------
***
Page 13
*** Confidential Treatment Requested
3.2.7.2 ROYALTIES. With respect to each Covered Product
containing an Approved PLP Compound *** Screen developed in
collaboration between Aurora and BMS under this Section 3.2
***, BMS shall pay a royalty on *** of such Covered Product
during the Royalty Term for such Covered Product, as follows
(the worldwide annual *** are multiplied by the applicable
royalty rate ***:
Worldwide *** (in US$ millions) *** Percentage of Net Sales
----------------------------------- -----------------------
***
***.
Page 14
*** Confidential Treatment Requested
Royalties for Net Sales of any such Covered Product in any
given country shall be due and payable only during the Royalty
Term for such Covered Product in such country; thereafter, BMS
shall be entitled to continue to sell such Covered Product in
such country without further compensation to Aurora.
3.2.8 ***:
Page 15
*** Confidential Treatment Requested
(i) ***.
3.2.9 ***.
3.2.10 ***.
Page 16
*** Confidential Treatment Requested
EXHIBIT C TO SECOND AMENDMENT
3.6 ***.
Page 17
*** Confidential Treatment Requested
***
Page 18
*** Confidential Treatment Requested
***
Page 19
*** Confidential Treatment Requested
***
Page 20
*** Confidential Treatment Requested
EXHIBIT D TO THE SECOND AMENDMENT
***
Page 21
*** Confidential Treatment Requested
***
Page 22
*** Confidential Treatment Requested
***
Page 23
*** Confidential Treatment Requested
***
Page 24
*** Confidential Treatment Requested
EXHIBIT E TO THE SECOND AMMENDMENT
***
Page 25
*** Confidential Treatment Requested
EXHIBIT F OF THE SECOND AMENDMENT
***
Page 26
*** Confidential Treatment Requested
***
Page 27
*** Confidential Treatment Requested
***
Page 28
*** Confidential Treatment Requested
EXHIBIT G TO THE SECOND AMENDMENT
***
Page 29
*** Confidential Treatment Requested
EXHIBIT H TO THE SECOND AMENDMENT
***
Page 30
*** Confidential Treatment Requested
***
Page 31
*** Confidential Treatment Requested
***
Page 32
*** Confidential Treatment Requested
EXHIBIT I TO THE SECOND AMENDMENT
***
Page 33
*** Confidential Treatment Requested
