Joint Technology and Collaboration Agreement - Aridia Corp., Infectio Diagnostic Inc. and Cepheid
JOINT TECHNOLOGY AND COLLABORATION AGREEMENT entered into as of the 4th day of
February 2000.
BETWEEN: ARIDIA CORP., a corporation incorporated under the laws of the
Province of Nova Scotia (hereinafter the "Corporation")
AND: INFECTIO DIAGNOSTIC (I.D.I.) INC., a corporation incorporated under
the laws of the Province of Quebec (hereinafter "IDI")
AND: CEPHEID, a corporation incorporated under the laws of the state of
California (hereinafter "Cepheid")
WHEREAS, IDI has expertise and know-how relating to certain nucleic acid
sequences for identification and diagnosis of certain human infectious disease
parameters as hereinafter described;
WHEREAS, Cepheid has expertise and know-how relating to systems, subsystems and
non-reagent consumables (such as disposable reaction tube), for diagnosing human
disease parameters;
WHEREAS IDI and Cepheid have granted to the Corporation exclusive licenses in
the Field relating to their respective technology;
WHEREAS IDI, Cepheid and the Corporation have entered into a Shareholders
Agreement dated February 4, 2000; and
WHEREAS IDI and Cepheid desire to cooperate in the discovery and development of
innovative diagnostic systems based on the integration of their respective
technologies;
NOW THEREFORE, in consideration of the mutual covenants and agreements
hereinafter set forth and other good and valuable consideration, the parties
hereby agree as follows:
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ARTICLE 1
DEFINITIONS
As used in this agreement:
1.1 "AFFILIATE(s)" shall mean any corporation or other business entity
controlled by or in common control of a party. "Control" as used herein
means ownership directly or through one or more Affiliates, of fifty
percent (50%) or more of the shares of stock entitled to vote for the
election of directors, in the case of any corporation, or fifty percent
(50%) or more of the equity interests in the case of any other type of
legal entity, status as a general partner in any partnership, or any other
arrangement whereby a party controls or has the right to control the board
of directors or equivalent governing body of a corporation or other
entity.
1.2 "CEPHEID" shall include all of the divisions, subsidiaries and Affiliates
of Cepheid.
1.3 "CEPHEID INTELLECTUAL PROPERTY" shall mean all technology rights and
patents rights (a) owned by Cepheid, existing as of the date hereof or
developed subsequent to the date hereof and (b) relating to systems,
subsystems and non reagent consumables for diagnosing human disease
parameters including without limitations the patents and patents
applications listed and described on Appendix A hereto. The Cepheid
Intellectual Property shall also include any improvements, refinements,
updates, discoveries or inventions related to Cepheid Intellectual
Property and intellectual property developed by Cepheid in the course of
the Collaboration Program.
1.4 "COLLABORATION PROGRAM" means any research program and associated
activities contemplated by the parties during the term of this Agreement
which program and activities shall, from time to time, be attached to this
Agreement as Appendix B.
1.5 "COLLABORATIVE PRODUCTS" means any products which are discovered in whole
or in part as a result of the Collaboration Program and made of Joint
Technology.
1.6 "FIELD" shall mean the rapid diagnosis of human infectious diseases
including but not limited to bacteria, fungi, antibiotic resistance and
related disorders with systems integrating IDI Intellectual Property and
Cepheid Intellectual Property.
1.7 "IDI" shall include all of the divisions, subsidiaries and Affiliates of
IDI.
1.8 "IDI INTELLECTUAL PROPERTY" shall mean all technology rights and patent
rights (a) owned by IDI, existing as of the date hereof or developed
subsequent to the date hereof and (b) relating to nucleic acid sequences
useful for the identification and/or diagnosis of human infectious disease
parameters, including, without limitation, the patents and patent
applications listed and described on Appendix C hereto. The IDI
Intellectual Property shall also include any improvements, refinements,
updates, discoveries or inventions related to IDI Intellectual Property
and intellectual property developed by IDI in the course of the
Collaboration Program.
1.9 "JOINT TECHNOLOGY" shall have the meaning ascribed to such term in section
2.6.3. hereof.
1.10 "SHAREHOLDERS AGREEMENT" shall mean the Shareholders Agreement between
IDI, Cepheid and the Corporation dated February 4, 2000, and any addenda
and amendments of said agreement.
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ARTICLE 2
COLLABORATION PROGRAM
2.1 BASIC PROVISIONS
The Collaboration Program shall aim at the development and
commercialization of innovative diagnostic systems based on the
integration of IDI Intellectual Property and Cepheid Intellectual
Property.
2.2 COOPERATION
Each party shall keep the board of directors of the Corporation fully
informed about the status of the Collaboration Program, and scientists at
IDI and Cepheid shall cooperate in the performance of the Collaboration
Program and, subject to any confidentiality obligations to third parties,
shall exchange information and materials as necessary to carry out the
Collaboration Program.
2.3 EXPENSES
IDI and Cepheid shall each bear all expenses of their participation in the
Collaboration Program.
2.4 RESEARCH AND DEVELOPMENT
The parties agree to jointly develop and prepare a written plan for any
Collaboration Program which plan shall include without limitation:
o Product description and specifications
o Development Plan with specified tasks and milestones, including
identified responsibilities of the respective parties
o Resourcing plan, budget and funding plan
o Regulatory plan
o Production plan
o Cost targets and analysis
2.5 DISCLOSURE OF INVENTION
Each party shall promptly inform the other of all inventions that are
conceived, made or developed in the course of carrying out the
Collaboration Program by employees or consultants of either of them or
their Affiliates alone or jointly with employees or consultants of the
other party or its Affiliates. The following provisions shall apply to
rights in the intellectual property developed by IDI or Cepheid, or both,
during the course of carrying out the Collaboration Program.
2.6 OWNERSHIP
The Corporation shall not own any intellectual property developed in the
course of the Collaboration Program, which shall be owned as follows:
2.6.1 IDI Technology
IDI shall have sole and exclusive ownership of all rights, title and
interest on a worldwide basis in and to any technology solely
developed or created by employees or consultants of IDI or through
the use of IDI Intellectual Property
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in the course of the Collaboration Program. This technology shall be
included in IDI License.
2.6.2 Cepheid Technology
Cepheid shall have sole and exclusive ownership of all rights, title
and interest on a worldwide basis in and to any technology solely
developed or created by employees or consultants of Cepheid or
through the use of Cepheid Intellectual Property in the course of
the Collaboration Program. This technology shall be included in
Cepheid License.
2.6.3 Joint Technology
IDI and Cepheid shall jointly own all technology jointly conceived,
reduced to practice or developed jointly by employees or consultants
of both IDI and Cepheid during the course of the Collaboration
Program (the "Joint Technology") and shall jointly own all joint
patent rights. The Joint Technology shall be included in IDI License
and in Cepheid License. Technology shall be considered "jointly"
conceived, reduced to practice, or developed if and only if it is
the subject of a patent application showing authorship by at least
one employee of each of Cepheid and IDI.
2.7 COMMERCIALIZATION RIGHTS
The Corporation shall have the exclusive worldwide right to develop and
commercialize Joint Technology and the Collaborative Products in the
Field.
2.8 JOINT TECHNOLOGY OUTSIDE THE FIELD
IDI and Cepheid shall not use the Joint Technology and the Collaborative
Products outside the Field without the prior written consent of the other
party.
2.9 FIRST NEGOTIATION RIGHT
During the term of this Agreement, each party shall promptly disclose to
the Corporation after the filing of a patent application any new
intellectual property developed by such party (the "Inventor Party")
outside the Collaboration Program which is subject to such patent
application, but only to the extent that such property is of material use
in the Field. The Corporation shall benefit of a first negotiation right
over any third party to use, make, offer to sell and sell such new
intellectual property in the Field. Upon receipt of a written notice from
the Inventor Party, the Corporation shall have 30 days to notify the
Inventor Party that it wishes to enter into negotiations. If the
Corporation does not notify the Inventor Party within 30 day period that
it wishes to enter into negotiations, then the Inventor Party shall be
free to offer its new intellectual property to any third party on any
terms. In the event that the Corporation exercises its right of first
negotiation, the Inventor Party and the Corporation shall enter into good
faith negotiations in order to conclude an agreement within 90 days from
the expiration of the 30-day period. If the Corporation and the Inventor
Party cannot reach an agreement despite good faith negotiations, then on
or before the 90th day described in the preceding sentence, the
Corporation shall deliver to the Inventor Party a detailed written offer
of terms and conditions upon which it is willing, without additional
negotiation, to acquire the right use, make, offer to sell, and sell the
new intellectual property in the Field, and after the 90th day, the
Inventor Party shall be free to offer the new intellectual property to any
third party on terms and conditions not more favorable to the third party
than the terms and
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conditions so offered by the Corporation. If the Corporation does not
deliver such a written offer within 90-day period, then the Inventor Party
may offer the new intellectual property to any third party on any terms.
ARTICLE 3
PROVISIONS CONCERNING THE FILING, PROSECUTION
AND MAINTENANCE OF PATENT RIGHTS
3.1 FILING OF PATENTS
In consultation with the board of directors of the Corporation, IDI will
determine what patents will be filed on IDI Technology and Cepheid will
determine what patents will be filed on Cepheid Technology developed in
the course of the Collaboration Program. Each party will be responsible
for the prosecution (including the defense of interferences and similar
proceedings) of patent protection for its owned intellectual property,
provided that the other party will have the opportunity to provide
substantive review and comment on any such prosecution. Responsibility for
prosecution of patent protection (including the defense of interferences
and similar proceedings) on Joint Technology will be determined by the
board of directors of the Corporation.
3.2 EXPENSES
Each party shall bear all attorneys' fees, filing and maintenance fees and
other out-of-pocket costs incurred by it pursuant to Section 3.1 to the
extent they relate to its Intellectual Property except for Joint
Technology in which case the Corporation shall bear all such costs.
3.3 RIGHT TO PROSECUTE ABANDONED RIGHTS
If either party at any time elects (or causes the Corporation to elect)
not to seek or continue to seek, use or maintain patent protection on any
Joint Technology in any country, the other party shall have the exclusive
right, at its expense, to file, procure, maintain and enforce in such
countries patents on such intellectual property. Each party agrees to
advise the other party of all decisions taken in a timely manner in order
to allow a party to protect its rights under this Article 3. If a party
elects not to file a patent application or application for a certificate
of invention, not to maintain a patent or certificate of invention, or to
abandon a pending patent application or application for a certificate of
invention, it shall advise the other party of such election in a timely
manner, and such other party shall have the right, at its own expense, of
filing such application, maintaining such patent or certificate of
invention or continuing to attempt to obtain protection on the subject
matter disclosed in such pending application.
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ARTICLE 4
CONFIDENTIALITY AND NON-DISCLOSURE
The parties agree that the Confidentiality provisions contained in the
Shareholders Agreement apply to this Agreement, with the necessary changes
having been made.
ARTICLE 5
TERM AND TERMINATION
5.1 TERM
This Agreement shall continue in full force and effect until the
expiration of the 6 month period following receipt by IDI or Cepheid of a
notice of winding up sent pursuant to Article 4 of the Shareholders
Agreement.
5.2 SURVIVAL OF OBLIGATIONS
Article 4 of this Agreement shall survive the termination of this
Agreement.
ARTICLE 6
DISPUTES
6.1 NEGOTIATION AND MEDIATION
If a dispute arises out of or relates to this Agreement or its breach (the
"Matter"), the parties agree to resolve the Matter as follows:
(a) A party (the "Initiating Party") shall submit written notice of the
Matter to the other parties and request negotiation.
(b) The parties shall attempt in good faith to resolve any Matter
arising out of or relating to this Agreement promptly by negotiation
between representatives which the parties may appoint, and
(c) If the Matter has not been resolved within 60 days of a party's
request for negotiation, either party may request that the Matter be
submitted to a sole mediator selected by the parties for mandatory
mediation of not more than five days' duration;
6.2 ARBITRATION
If the Matter has not been resolved by such mediation, either party may
submit the Matter for binding arbitration, to a sole arbitrator in
accordance with the Rules of Conciliation and Arbitration of the
International Chamber of Commerce as in effect on the date hereof, (the
"ICC Rules"), except where such ICC Rules conflict with the provisions of
Article 6 in which event the provisions of this Article 6 shall prevail.
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6.3 APPOINTMENT OF ARBITRATOR
If the parties fail to agree on the appointment of the sole arbitrator
within 20 days after one party has served the other party, a written
notice to concur in the appointment of the single arbitrator nominated by
the serving party, the sole arbitrator shall be appointed in accordance
with the ICC Rules. If IDI is the Initiating Party, then the sole
arbitrator shall be a member of the California Bar with at least 10 years
of experience in corporate commercial or intellectual property law. If
Cepheid is the Initiating Party, then the sole arbitrator shall be a
member of the Quebec Bar with at least 10 years of experience in corporate
commercial or intellectual property law. The arbitrator shall render any
final award within 20 days following the completion of evidence and
arguments on the Matter.
6.4 ADMISSIBILITY OF EVIDENCE IN OTHER PROCEEDINGS
The parties shall not be entitled to rely on or introduce as evidence
before any arbitral proceedings whether or not such proceedings relate to
the Matter that is the subject of the negotiations:
(a) views expressed or suggestions made by another party in respect of a
possible settlement of the Matter;
(b) admissions or proposals made by another party in the course of
negotiations; or
(c) the fact that the other party had indicated his willingness to
accept a proposal for settlement made by another party.
6.5 LOCATION
The mediation and arbitration shall be held in Montreal, Quebec. The
parties, their representatives, the mediator and the arbitrator shall hold
the existence, content and results of any negotiation, mediation or
arbitration in confidence unless disclosure is required by law or
regulation, and in such case the parties shall take reasonable precautions
to only disclose what is required by law or governmental regulation
6.6 AWARD
Any award of the Arbitration shall be final and binding on the parties and
shall be enforceable in any court having jurisdiction over the party from
whom enforcement is requested.
ARTICLE 7
NOTICES
Any notice, request, instruction or other document to be given hereunder
shall be deemed validly given if in writing, and delivered personally,
sent by overnight courier, or sent by certified mail, postage prepaid,
return receipt requested (in which event it shall be deemed received on
the third business day following mailing), as follows:
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If to IDI:
---------
Infectio Diagnostic (I.D.I.), Inc.
2050 Rene Levesque Blvd. West
Ste-Foy, Quebec, Canada G1V 2K8
Attn: Dr. Pierre Coulombe
Facsimile: (418) 681-5254
if to Cepheid:
-------------
Cepheid
1190 Borregas Avenue
Sunnyvale, CA, USA, 94089-1302
Attn: Thomas L. Gutshall
Facsimile: (408) 541-4192
and if to the Corporation:
-------------------------
Aridia Corp.
2050 Rene Levesque Blvd. West
Ste-Foy, Quebec, Canada G1V 2K8
Attn: Dr. Pierre Coulombe
Facsimile: (418) 681-5254
With copy to Thomas L. Gutshall
Facsimile: (408) 541-4192
Alternatively, notices and other communications may be sent by facsimile
transmission with a confirmation copy sent by one of the forms of
delivery set forth above. Except as provided above, all notices and
other communications shall be deemed delivered on the date of actual
receipt.
ARTICLE 8
MISCELLANEOUS
8.1 ENTIRE AGREEMENT
This Agreement along with the Shareholders Agreement and the exclusive
licenses between IDI and the Corporation and Cepheid and the Corporation
constitutes the entire understanding between the parties with respect to
the subject matter hereof and supersedes and replaces all prior
agreements, understandings, writings and discussions between the parties
relating to said subject matter. Only a written instrument executed by the
parties may amend this Agreement.
8.2 WAIVER
The failure of either party at any time or times to require performance of
any provision hereof shall in no manner affect its rights at a later time
to enforce the same. No waiver by either party of any condition or term in
any one or more
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instances shall be construed as a further or continuing waiver of such
condition or term or any other condition or term.
8.3 SUCCESSORS AND ASSIGNS
This Agreement shall be binding upon and inure to the benefit of and be
enforceable by the parties hereto and their respective successors and
assigns and neither IDI, Cepheid or the Corporation shall assign this
Agreement without the prior written consent of the other parties, which
cannot be unreasonably withheld.
8.4 FORCE MAJEURE
Any delays in or failure of performance by either party under this
Agreement shall not be considered a breach of this Agreement if and to the
extent caused by occurrences beyond the reasonable control of the party
affected, including but not limited to acts of God; acts, regulations, or
laws of any government; strikes or other considered acts of workers;
fires; floods; explosions; riots; wars; rebellion; and sabotage; and any
time for performance hereunder shall be extended by the actual time of
delay caused by such occurrence.
8.5 SEVERABILITY
If any provision(s) of this Agreement are or become invalid, or ruled
illegal by any court of competent jurisdiction, or are deemed
unenforceable under then current applicable law from time to time in
effect during the term hereof, it is the intention of the parties that the
remainder of this Agreement shall not be affected thereby. It is further
the intention of the parties that in lieu of each such provision which is
invalid, illegal, or unenforceable, there be substituted or added as part
of this Agreement, a provision which shall be as similar as possible in
economic and business objectives as intended by the parties to such
invalid, illegal, or unenforceable provision, but which shall be valid,
legal, and enforceable, and shall be mutually agreed by the parties.
8.6 HEADINGS
The headings contained herein are for reference purposes only and shall
not in any way affect the meaning of this Agreement.
8.7 COUNTERPARTS
This Agreement may be executed in any number of counterparts, each of
which shall be an original, but all of which together shall constitute one
instrument.
8.8 NO AGENCY
Nothing contained in this Agreement shall be deemed to create a
partnership between the Corporation, IDI and Cepheid. Neither party shall
be liable for the act of the others unless each other parties expressly
authorizes such act in writing.
8.9 GOVERNING LAW
As to matters affecting Cepheid Intellectual Property, this Agreement
shall be governed by and construed in accordance with the laws of the
State of California, without regard to the application of principles of
conflicts of laws thereof. As to other matters, this Agreement shall be
governed by and construed in accordance with the laws of the Province of
Quebec, without regard to the application of principles of conflicts of
laws thereof.
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date first above written.
INFECTIO DIAGNOSTIC (I.D.I.) INC ARIDIA CORP.
Per: /s/ PIERRE COULOMBE Per: /s/ PIERRE COULOMBE
------------------------------ ------------------------------
Dr. Pierre Coulombe Dr. Pierre Coulombe
Per: /s/ THOMAS L. GUTSHALL
------------------------------
Thomas L. Gutshall
CEPHEID
Per: /s/ THOMAS L. GUTSHALL
------------------------------
Thomas L. Gutshall
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APPENDIX A
CEPHEID INTELLECTUAL PROPERTY
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APPENDIX A
TO THE JOINT TECHNOLOGY AND COLLABORATION AGREEMENT
BETWEEN AND ARIDIA CORP., INFECTIO DIAGNOSTIC (I.D.I.) INC. AND CEPHEID
COLLABORATION PROGRAM
I. Reaction vessel for heat-exchanging chemical processes.
<TABLE>
<CAPTION>
PATENT
COUNTRY NUMBER ISSUES
------- ------ ------
<S> <C> <C>
UNITED STATES US 5,958,349 Sept. 28, 1999
</TABLE>
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APPENDIX B
COLLABORATION PROGRAM
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APPENDIX B
TO THE JOINT TECHNOLOGY AND COLLABORATION AGREEMENT
BETWEEN AND ARIDIA CORP., INFECTIO DIAGNOSTIC (I.D.I.) INC. AND CEPHEID
COLLABORATION PROGRAM
<PAGE> 15
APPENDIX C
IDI INTELLECTUAL PROPERTY
<PAGE> 16
APPENDIX C
TO THE JOINT TECHNOLOGY AND COLLABORATION AGREEMENT
BETWEEN AND ARIDIA CORP., INFECTIO DIAGNOSTIC (I.D.I.) INC. AND CEPHEID
IDI PATENT RIGHTS AND APPLICATIONS
I. Specific and universal probes and amplification primers to rapidly detect
and identify common bacterial pathogens and antibiotic resistance genes
from clinical specimens for routine diagnosis in microbiology
laboratories.
<TABLE>
<CAPTION>
APPLICATION FILING
COUNTRY NUMBER DATE STATUS
<S> <C> <C> <C>
AUSTRALIA 34 681/95 Sept 12, 1995 292494
BRAZIL 08/304732 Sept 12, 1995 Pending
CANADA 1529278 April 2, 1998 Pending
CHINA CN1161060A Oct 1, 1997 Pending
UNITED STATES US526840 Nov 4, 1996 6,001,564
EUROPE 95 931 109.3-2116 Pending
INDIA 2153CAL97 Pending
JAPAN 504973/98 May 19, 1998 Pending
MEXICO 97/01847 June 18, 1997 Pending
NORWAY 971111 Sept. 1, 1998 Pending
NEW ZEALAND JP207909 August 12, 1998 292494
SINGAPORE 9701090-4 Sept. 12, 1995 9701090-4
</TABLE>
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II. Species-specific, genus-specific and universal DNA probes and
amplification primers to rapidly detect and identify common bacterial and
fungal pathogens and associated antibiotic resistance genes from clinical
specimens for diagnosis in microbiology laboratories.
<TABLE>
<CAPTION>
APPLICATION FILING
COUNTRY NUMBER DATE STATUS
<S> <C> <C> <C>
ARGENTINA P970105357 Nov. 14, 1997 Pending
AUSTRALIA 48598/97 Nov. 14, 1997 Pending
BRAZIL PI 9713494-5 Nov. 14, 1997 Pending
CANADA 5044400 July 22, 1999 Pending
CHINA 97180194.0 Nov. 4, 1997 Pending
UNITED STATES WO98/20157 Nov. 4, 1997 Pending
EUROPE 97911094.7 - 2116 Pending
INDIA 2153CAL97 Nov. 13, 1997 Pending
JAPAN May 6, 1999 Pending
MEXICO 99-4119 May 3, 1999 Pending
NORWAY 19991976 April 26, 1999 Pending
NEW ZEALAND 335548 June 4, 1999 Pending
SINGAPORE 9901915-0 Nov. 4, 1997 Pending
</TABLE>
<PAGE> 18
III. Highly conserved genes and their use to generate species-specific,
genus-specific, family-specific, group-specific and universal nucleic acid
probes and amplification primers to rapidly detect and identify bacterial,
fungal and parasitical pathogens from clinical specimens for diagnosis.
<TABLE>
<CAPTION>
APPLICATION FILING
COUNTRY NUMBER DATE STATUS
<S> <C> <C> <C>
CANADA CAN 2,283,458 Sept. 28, 1999 Pending
</TABLE>
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IV. Specific and universal probes to rapidly detect and identify common
bacteria form urinary or any other biological samples in the routine
microbiology laboratory.
<TABLE>
<CAPTION>
APPLICATION FILING
COUNTRY NUMBER DATE STATUS
<S> <C> <C> <C>
UNITED STATES 85-586-9001-2 Sept. 12, 1994 08/304,732
UNITED STATES S.N. 850586.90012 Sept. 11, 1995 08/526,840
</TABLE>
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V. Species-specific and universal DNA probes and amplification primers to
rapidly detect and identify common bacterial pathogens and associated
antibiotic resistance genes from clinical specimens for routine diagnosis
in microbiology laboratories.
<TABLE>
<CAPTION>
APPLICATION FILING
COUNTRY NUMBER DATE STATUS
<S> <C> <C> <C>
UNITED STATES US 743,637 Nov. 4, 1996 5,994,066
</TABLE>