Collaboration Agreement - ACLARA BioSciences Inc. and PE Corp.
AMENDED AND PARTIALLY RESTATED COLLABORATION AGREEMENT
BETWEEN
ACLARA BIOSCIENCES, INC.
AND
PE CORPORATION (NY)
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AMENDED AND RESTATED COLLABORATION AGREEMENT
THIS AMENDED AND RESTATED COLLABORATION AGREEMENT (this "AMENDED GA
AGREEMENT") is signed as of March 22, 2002 ("AMENDMENT SIGNING DATE") and
effective as of May 17, 2001 ("AMENDMENT EFFECTIVE DATE"), by and between ACLARA
BIOSCIENCES, INC., a Delaware corporation having its principal place of business
at 1288 Pear Avenue, Mountain View, California 94043 ("ACLARA"), and PE
CORPORATION (NY), a New York corporation, through its Applied Biosystems Group,
having its principal place of business at 850 Lincoln Center Drive, Foster City,
California 94404 ("ABG"). ACLARA and ABG may be referred to herein individually
as a "Party" or, collectively, as "Parties."
RECITALS
WHEREAS, ABG (as the successor-in-interest to The Perkin-Elmer Corporation)
and ACLARA (as the successor-in-interest to Soane Biosciences, Inc.) entered a
Collaboration Agreement, dated April 25, 1998 (the "GA AGREEMENT"), related to
the development of genetic analysis systems incorporating microfluidic
electrophoresis devices; and
WHEREAS, ABG and ACLARA each desire to be able to (i) independently develop
products pursuant to the terms of this Amended GA Agreement that, if developed
pursuant to the terms of the GA Agreement, would be Licensed Product, and (ii)
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jointly develop products as Licensed Product pursuant to the terms of the GA
Agreement if the Parties agree to do so as provided herein; and
WHEREAS, the GA Agreement incorporates certain provisions, including,
without limitation, provisions relating to the Parties' wish to amend and
restate as set forth below
Now, THEREFORE, in consideration of the foregoing premises and the promises
and undertakings set forth herein, the Parties agree as follows:
ARTICLE 1
DEFINITIONS
Except as otherwise set forth below, terms with initial capitals shall be
defined as set forth in the GA Agreement.
1.1 "JOINT DEVELOPMENT PROPOSAL" shall have the meaning assigned to it in
Section 3.1.
1.2 "POST EXCLUSIVE PERIOD PRODUCT" means any product developed in
accordance with the terms of this Amended GA Agreement that, if developed in
accordance with the terms of the GA Agreement without amendment and restatement
as provided herein, would be Licensed Product.
1.3 "PRODUCT NET SALES" means (i) with respect to sales by a Party, or an
Affiliate of a Party, or a distributor of a Party to non-affiliated third party
purchasers, the actual amount of gross sales of Post Exclusive Period Product to
a third party, less: trade, cash and quantity discounts granted at the time of
invoice, if any, actually allowed, amounts refunded for faulty or
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defective product, returns, rejections, freight, insurance and other
transportation costs (except income taxes), tariffs, duties and similar
governmental charges paid, to the extent included in gross sales price, (ii)
with respect to sales by a Party made to any Affiliate or to any person, firm or
corporation enjoying a special course of dealing with a Party, the Product Net
Sales will be determined based on the first resale in a bona fide arms-length
transaction of Post Exclusive Period Product by such Affiliate, person, firm or
corporation to third parties, and (iii) with respect to Post Exclusive Period
Product which are used by a Party, or an Affiliate of a Party, to supply
services or information to a third party for commercial purposes, or are
otherwise disposed of, the Product Net Sales shall be determined as if such Post
Exclusive Period Product had been sold at the average Product Net Sales for such
Post Exclusive Period Product during the past one hundred and twenty days.
ARTICLE 2
THE GA AGREEMENT
2.1 PARTIES. ACLARA agrees to assume the rights and obligations of SBio
under the GA Agreement. ABG agrees to assume the rights and obligations of
Perkin-Elmer under the GA Agreement.
2.2 PURPOSE OF AMENDMENT. Notwithstanding the terms and conditions of the
GA Agreement, subject to the terms and conditions provided herein, ABG and
ACLARA each hereby agree that each Party may independently develop Post
Exclusive Period Product. In addition, notwithstanding the previous sentence,
ABG and ACLARA each hereby agree that the Parties may jointly develop Licensed
Product pursuant to the terms of the GA Agreement; PROVIDED that the Parties
agree to do so in accordance with the requirements of Article 3 of this Amended
GA Agreement prior to initiation of such joint development.
2.3 PROVISIONS NO LONGER EFFECTIVE. ABG and ACLARA each hereby agree that,
upon the Amendment Effective Date, the following sections of the GA Agreement
are no longer in force or effect, except to the extent that the Parties may, in
their discretion, mutually agree in writing, pursuant to Article 3, to jointly
develop a Licensed Product: Sections 2, 3, 4, 5.2, 5.4, 5.5.1, and 10. ABG and
ACLARA each hereby agree that all provisions of the GA Agreement, except as set
forth in this Section 2.3, shall remain in full force and effect.
2.4 INTELLECTUAL PROPERTY. ABG and ACLARA each hereby agree that, unless
the Parties agree to jointly develop a Licensed Product pursuant to Article 3,
Collaboration SBio Intellectual Property, Collaboration Joint Intellectual
Property, and Collaboration Perkin-Elmer Intellectual Property shall be limited
to Intellectual Property Rights that were conceived and reduced to practice as a
result of work performed under the GA Agreement before the Amendment Effective
Date. In the event that the Parties agree to jointly develop a Licensed Product
pursuant to Article 3, Collaboration SBio Intellectual Property, Collaboration
Joint Intellectual Property, and Collaboration Perkin-Elmer Intellectual
Property shall include additional Intellectual Property Rights that are
conceived and reduced to practice as a result of the work thereafter performed
to jointly develop such Licensed Product.
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2.5 Release. ABG and ACLARA each hereby release the other Party from any
and all obligations or liabilities arising from Sections 2, 3 or 4 of the GA
Agreement prior to the Amendment Effective Date.
2.6 INTERPRETATION OF AMENDED GA AGREEMENT. In the event of any conflict,
inconsistency, or incongruity between any provision of this Amended GA Agreement
and any provision of the original GA Agreement, the provisions of this Amended
GA Agreement will govern and control.
ARTICLE 3
JOINT DEVELOPMENT OPTION
3.1 PROPOSAL FOR JOINT DEVELOPMENT UNDER GA AGREEMENT. If ABG desires to
develop any Post Exclusive Period Product, ABG first shall notify ACLARA in
writing, which notice shall include, without limitation, a description of the
proposed Post Exclusive Period Product ("Proposed Product") and a development
and commercialization plan with respect thereto (a "JOINT DEVELOPMENT
PROPOSAL").
3.2 JOINT DEVELOPMENT PLAN. If ABG submits a Joint Development Proposal to
ACLARA as provided in Section 3.1 above, ACLARA will either notify ABG in
writing within 15 days of Aclara's receipt of such submission that it does not
desire to pursue the Joint Development Proposal or within 30 days of such
submission, both Parties will meet in person to discuss in good faith such Joint
Development Proposal. If ACLARA agrees to pursue such joint development for the
Proposed Product, within 45 days of such meeting with ABG, ACLARA shall notify
ABG in writing and, within 30 days of ABG's receipt of such written notice to
ABG, the Parties shall draft a detailed joint development plan ("JOINT
DEVELOPMENT PLAN"), which shall include, without limitation, a detailed
description of the Proposed Product, the specific steps each Party shall take to
reach the Start Development Checkpoint for such Proposed Product, a schedule for
completing such steps, and a detailed commercialization plan for such Proposed
Product. If ACLARA notifies ABG within said 15 day period that it does not wish
to pursue the Joint Development Proposal or after the meeting ACLARA does not
agree to pursue such joint development, ACLARA shall notify ABG in writing (or,
if ACLARA fails to provide ABG with a written response within the 45-day
decision period as to whether or not it desires to pursue such joint development
with ABG), then such Proposed Product shall be deemed a Post Exclusive Period
Product subject to the nonexclusive license terms set forth in Articles 4 and 5
below.
3.3 CONFIRMATION OF JOINT DEVELOPMENT. If the Parties agree in writing as
provided at Section 3.2 above to proceed with a Joint Development Plan for a
Proposed Product, then it is agreed that: (i) the Parties' rights and
obligations, solely with respect to the Proposed Product described in the Joint
Development Plan, shall be as set forth in the GA Agreement; and (ii) the
Parties shall execute a written confirmation of joint development in a form set
forth in Exhibit A (a "CONFIRMATION OF JOINT DEVELOPMENT"), which shall include,
as an exhibit thereto, a copy of
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the mutually agreed Joint Development Plan; and (iii) upon such written
confirmation, such Proposed Product shall not be deemed a Post Exclusive Period
Product as provided herein.
3.4 TERMS OF GA AGREEMENT. ABG and ACLARA each agree that, upon the
execution of a Confirmation of Joint Development, and solely with respect to the
Proposed Product and development activities set forth in the Joint Development
Proposal attached to such Confirmation of Joint Development: (i) such Proposed
Product shall be deemed a Licensed Product that is subject to the entire GA
Agreement, including, without limitation, Sections 2, 3, 4, 5.2, 5.4, and 5.5.1
shall be deemed, at that time, to be reinstated and in full force and effect
solely with respect thereto; and (ii) Article 4 of this Amended GA Agreement
shall no longer apply with respect to, and solely with respect to, such Proposed
Product that is the subject of a Confirmation of Joint Development. For
avoidance of doubt, with respect to any Proposed Product that is the subject of
a Confirmation of Joint Development, the exclusivity provisions of the GA
Agreement, including, without limitation, the exclusive license grants therein,
shall apply and the nonexclusive license grants set forth in Section 4.2 of this
Amended GA Agreement below shall not apply.
ARTICLE 4
INDEPENDENT DEVELOPMENT
4.1 NO DILIGENCE. Neither ABG nor ACLARA shall have any obligation, as of
the Amendment Effective Date and thereafter, to develop or commercialize any
Licensed Product.
4.2 ACLARA'S LICENSE OF INTELLECTUAL PROPERTY TO ABG.
(a) LICENSE GRANT. In the event that ABG provides notice to ACLARA in
accordance with Section 3.1 and ACLARA notifies ABG pursuant to Section 3.2
that it does not agree to pursue joint development of a Proposed Product
described in ABG's Joint Development Proposal (or fails to respond to ABG
within the 45-day decision period), such Proposed Product shall be deemed a
Post Exclusive Period Product; and, subject to the exclusion set forth in
Section 4.2(b), ACLARA hereby grants to ABG a worldwide, royalty-bearing,
non-exclusive license, [ * ], under the Valid Claims of Licensed Patents
which claim Pre-Collaboration SBio Intellectual Property or Collaboration
SBio Intellectual Property to make, have made by an Approved Third Party,
offer to sell, sell, import and use such Post Exclusive Period Product in
the Licensed Field, wherein"Approved Third Party" means a third party other
than Caliper Technologies, Inc. or its Affiliate that has been approved by
ACLARA as follows: ABG shall notify ACLARA in writing of the name of the
proposed third party; ACLARA shall respond in writing within 30 days after
receiving such notification whether or not it approves the third party,
which approval shall not be unreasonably withheld; and if ACLARA does not
approve the third party, it shall include in its response its good faith
reasons to believe that approval of the third party would have an
unreasonable negative impact on the business of ACLARA or its Affiliates or
sublicensees.
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[*] Certain information on this page has been omitted and filed separately with
the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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(b) JAPANESE EXCLUSION. The non-exclusive license granted in Section
4.2(a) expressly excludes the manufacture, use or sale of Post Exclusive
Period Product having [ * ] in Japan.
4.3 ABG'S OPTION TO LICENSE INTELLECTUAL PROPERTY TO ACLARA. ABG hereby
grants to ACLARA an option to negotiate in good faith for a royalty-bearing,
worldwide, nonexclusive, non-transferable, [ * ], license under one or more
patents included within Collaboration Perkin-Elmer Intellectual Property to
make, have made, import, use, offer to sell, and sell Post Exclusive Period
Product in the Licensed Field
4.4 Payments by ABG. ABG shall pay ACLARA a royalty, as set forth below, on
Net Sales of Post Exclusive Period Product:
(a) GENETIC ANALYSIS SYSTEMS. [ * ] Product Net Sales generated by
Genetic Analysis Systems covered by Valid Claims of Licensed Patents which
claim Pre-Collaboration SBio Intellectual Property or Collaboration SBio
Intellectual Property.
(b) MICROFLUIDIC ELECTROPHORESIS DEVICES. (i) [ * ] Product Net Sales
generated by Microfluidic Electrophoresis Devices covered by Valid Claims
of Licensed Patents which claim Pre-Collaboration SBio Intellectual
Property, or (ii) [ * ] Microfluidic Electrophoresis Devices covered by
Valid Claims of Licensed Patents which claim Collaboration SBio
Intellectual Property, provided that to the extent that a Microfluidic
Electrophoresis Devices are also covered by Valid Claims of Licensed
Patents which claim Pre-Collaboration SBio Intellectual Property, [ * ]
that applies to Product Net Sales thereof.
ARTICLE 5
PAYMENT PROVISIONS
5.1 PAYMENT SCHEDULE. The Party owing any amount pursuant to Sections 4.4
or 4.5 shall make payment to the other Party on a quarterly basis within thirty
(30) days after the last day of each calendar period in which the Product Net
Sales occurred. The Party making payment shall provide the other Party, with
each such payment, a written report setting forth in reasonable detail the
calculation of the amounts due.
5.2 MODE OF PAYMENT. All payments hereunder will be made by direct wire
transfer of United States Dollars in the requisite amount to such bank account
as the receiving Party may from time to time designate by written notice to the
other Party. Payments will be free and clear of any taxes (other than
withholding and other taxes. imposed on the payee), fees or charges, to the
extent applicable.
5.3 RECORDS RETENTION. For a period of three (3) years after the date of
each report provided to a Party pursuant to Section 5.1, the Party making the
payment shall keep records of such Product Net Sales in sufficient detail to
confirm the accuracy of any royalty payment
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[*] Certain information on this page has been omitted and filed separately with
the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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calculations hereunder. Such records shall be deemed the Confidential
Information of each Party.
5.4 AUDITS.
(a) AUDIT RIGHTS; PROCEDURE. Upon the written request of the Party
receiving payment, and not more than once in each calendar year, the Party
making payment will permit an independent certified public accounting firm
selected by other Party, and reasonably acceptable to the paying Party, at
the expense of the Party initiating the audit, to have access during normal
business hours, and upon reasonable prior written notice, to such of the
records of the paying Party as may be reasonably necessary to verify the
accuracy of the payments due within the preceding three (3) years.
(b) ADDITIONAL PAYMENTS; COST REIMBURSEMENT. If such accounting firm
concludes that additional royalties or other payments were owed during such
period, the paying Party will pay the additional royalties or other
payments, with interest from the date originally due at the prime rate, as
published in The Wall Street Journal (Eastern U.S. Edition) on the last
business day preceding such date, within thirty (30) days after the date
the auditing Party delivers to the other Party such accounting firm's
written report. If the amount of the underpayment is greater than five
percent (5%) of the total amount owed, then the paying Party shall
reimburse the other Party for its reasonable costs related to such audit.
(c) CONFIDENTIALITY. The independent, certified public accountant
shall be required to maintain all information it reviews in confidence,
except that it may report the results of its audit to the Party that
initiated such audit. The Party receiving the audit report shall treat all
information subject to review under this Section 5.4 in accordance with the
confidentiality provisions of the GA Agreement, and will cause its
accounting firm to enter into a confidentiality agreement reasonably
acceptable in form and substance to the Party being audited, obligating
such firm to retain all such financial information in confidence pursuant
to such confidentiality agreement.
(d) AUDIT DISPUTES. If the Party that was audited in good faith
disputes the conclusion of the accounting firm under subsection (b) above
that the audited Party owes additional royalties or other payments, or any
specific aspect of the conclusion, then such Party will inform the other
Party by written notice within sixty (60) days of receiving a copy of the
audit containing such conclusion, specifying in detail the reasons for
disputing such conclusion. The Parties will promptly thereafter meet and
negotiate in good faith a resolution to such dispute. In the event that the
Parties are unable to resolve such dispute within sixty (60) days after
such notice, the matter will be resolved pursuant to the terms of the GA
Agreement, and interest will be payable on any additional royalties or
other payments determined to be due in the same manner as provided for in
Section 5.4(b).
ARTICLE 6
GENERAL
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6.1 NOTICES. Section 11.7 of the GA Agreement is hereby deleted in its
entirety and replaced by the following:
11.7 NOTICES. Any notice, request, delivery, approval or consent
required or permitted to be given under this Agreement will be in writing
and will be deemed to have been sufficiently given if delivered in person,
or by express courier service (signature required) or five (5) days after
it was sent by registered letter, return receipt requested (or its
equivalent), to the Party to which it is directed at its address or such
other address as such Party will have last given by notice to the other
Parties.
If to ACLARA, addressed to:
ACLARA BioSciences, Inc.
1288 Pear Avenue
Mountain View, California 94043
Attn.: Chief Executive Officer
Fax: (650) 210-1210
and to
Latham & Watkins
135 Commonwealth Drive
Menlo Park, CA 94025
Attn.: Michael W. Hall, Esq.
Fax: (650) 4632600
If to ABG, addressed to:
Applied Biosystems
850 Lincoln Center Drive
Foster City, California 94043
Attn.: Vice President, Intellectual Property
Fax: (650) 638-6677
6.2 COUNTERPARTS. This Amended Agreement may be executed simultaneously in
any number of counterparts, any one of which need not contain the signature of
more than one Party but all such counterparts taken together will constitute 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 will for all purposes be deemed to be an original.
ACLARA BIOSCIENCES, INC. PE CORPORATION (NY)
By: /s/ Joseph M. Limber By: /s/ Michael W. Hunkapiller
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Name: Joseph M. Limber Name: Michael W. Hunkapiller
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Title: President, CEO Title: Sr. V.P.
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Date: March 25, 2002 Date: March 22, 2002
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EXHIBIT A
CONFIRMATION OF JOINT DEVELOPMENT
THIS CONFIRMATION OF JOINT DEVELOPMENT (this "CONFIRMATION") is entered
into and effective as of , 20- (the "EFFECTIVE DATE"), by and between ACLARA
BIOSCIENCES, INC., a Delaware corporation having its principal place of business
at 1288 Pear Avenue, Mountain View, California 94043 ("ACLARA"), and PE
CORPORATION (NY), a New York corporation, through its Applied Biosystems group,
having its principal place of business at 850 Lincoln Center Drive, Foster City,
California 94404 ("ABG"). ACLARA and ABG may be referred to herein individually
as a "Party" or, collectively, as "Parties."
RECITALS
WHEREAS, ABG (as the successor-in-interest to The Perkin-Elmer Corporation)
and ACLARA (as the successor-in-interest to Soane Biosciences, Inc.) entered a
Collaboration Agreement, dated April 25, 1998 (the "GA AGREEMENT"), related to
the development of genetic analysis systems incorporating microfluidic
electrophoresis devices; and
WHEREAS, ABG and ACLARA entered into a Amended and Restated Collaboration
Agreement, dated March 22, 2002 (the "AMENDED GA Agreement") and effective May
17, 2001, which provided, in part, that the Parties may (i) independently
develop products pursuant to the terms of the Amended GA Agreement that, if
developed pursuant to the terms of the GA Agreement, would be Licensed Product,
and (ii) jointly develop products as Licensed Product pursuant to the terms of
the GA Agreement if the Parties agree to do so as provided the Amended GA
Agreement; and
WHEREAS, the Parties wish to confirm that they agree to the joint
development of a certain Licensed Product, as set forth herein.
Now, THEREFORE, in consideration of the foregoing premises and the promises
and undertakings set forth herein, the Parties agree as follows:
1. The Parties hereby agree that the terms and conditions of the GA Agreement
shall apply to the Licensed Product, and the development thereof, as set forth
in the Joint Development Plan, attached hereto as Exhibit 1.
ACLARA BIOSCIENCES, INC. PE CORPORATION (NY)
By:_____________________________ By:_______________________________
Name:___________________________ Name:______________________________
Title:__________________________ Title:_____________________________
Date:___________________________ Date:______________________________
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