Compound Library Screening Agreement - Genzyme Corp. and Cubist Pharmaceuticals Inc.
Confidential Treatment
COMPOUND LIBRARY SCREENING AGREEMENT
This Agreement, effective as of the date last written below, is between
Genzyme Corporation ("Genzyme") and Cubist Pharmaceuticals, Inc. ("Cubist").
1. Information Exchange.
(a) Within thirty (30) days after receiving an executed original of
this Agreement, each party shall provide the other with such information as
the Receiving Party (as defined in Paragraph 6) may reasonably request for
the purpose of evaluating the therapeutic potential of any products that
may arise from a collaboration between the parties. Such information shall
include ****************************************************************
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************************************************. Genzyme shall confirm to
Cubist that each biological target disclosed by Cubist is not the subject
of any research program currently conducted by Genzyme internally or with
any third party collaborator.
(b) The Receiving Party shall determine in its sole discretion whether
to proceed with the screening activities described in Paragraph 2 and shall
notify the other party of such determination. If either party determines
not to proceed with such screening activities, this Agreement shall
terminate upon receipt of notice to the other party of such determination.
If both parties elect to proceed with the screening activities, Genzyme
will provide Cubist with Compounds as described in Paragraph 2 within
thirty (30) days after receipt of Cubist's notice to proceed.
2. Screening of Compound Libraries and Deconvolution Services.
(a) Subject to the provisions of Paragraph 1, Genzyme will make
available to Cubist all compounds within Genzyme's libraries as of the
effective date this Agreement ("Compounds"). Compounds added to Genzyme's
libraries after such date will be made available to Cubist on a semiannual
basis during the term of this Agreement. Compounds will be
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delivered in quantities of **************************************
************************ (a "Mixture"). Genzyme grants Cubist a
non-exclusive, worldwide right to use the Compounds to screen against
biological targets identified by Cubist to evaluate the biological activity
of the Compounds. Such right may not be sublicensed and does not include
the right to sell or otherwise transfer the Compounds to third parties.
Cubist will use commercially reasonable efforts to screen all Compounds
provided by Genzyme against each of the targets identified by Cubist
pursuant to Paragraph 1 (a).
(b) Subject to a Mixture satisfying criteria agreed upon by Cubist and
Genzyme for biological activity (e.g., potency and dose-responsiveness)
against a target screened by Cubist, Genzyme will provide the following
services: **************************************************************
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3. Availability of License.
(a) Cubist shall notify Genzyme of all Active Compounds identified by
Cubist. "Active Compound" shall mean a Compound that has exhibited
biological activity against a target warranting, in Cubist's reasonable
business judgment, further development.
(b) If any Active Compound previously has been committed to a third
party or to an internal Genzyme program, Cubist shall have no rights in or
to such Active Compound. In all other cases, Genzyme shall disclose to
Cubist the chemical composition and structure of the Active Compound and
Cubist shall have a right of first negotiation to obtain a license (the
"Negotiation Right"), in accordance with the procedures set forth in
Paragraph 3(c).
(c) Cubist may exercise the Negotiation Right upon written notice to
Genzyme which is received by Genzyme at any time during the term of this
Agreement, whereupon the parties will engage in good faith negotiations to
establish the terms and conditions of a mutually acceptable research
collaboration agreement. Such research collaboration agreement will
provide, among other matters, for the following: (i) establishments of
committees to manage the collaboration; (ii) licenses under intellectual
property rights of each party to conduct medicinal chemistry and
preclinical development of the Active Compound; (ii)
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responsibilities of the parties for specific preclinical development
activities; (iv) commercialization strategy for the Active Compound following
preclinical development; and (v) sharing of commercialization revenues after
recovery by each party of its preclinical development costs.
(d) If the parties are unable to negotiate and execute a mutually acceptable
collaboration agreement within ************* after the date upon which Cubist
exercised the Negotiation Right, Genzyme shall have the right to license the
Active Compound to any third party, subject to non-disclosure restrictions set
forth in Paragraph 6.
4. Use and Transfer Restrictions. Cubist acknowledges and agrees that the
Compounds (including without limitation all Active Compounds) are proprietary to
and owned by Genzyme and or may be covered by claims of U.S. and international
patents or parent applications of Genzyme. Cubist agrees to use the Compounds
only for the purposes set forth in this Agreement. Cubist agrees (i) not
transfer such Compounds to any third party without the prior written consent of
Genzyme, (ii) to permit access to the Compounds only to its employees and
consultants requiring such access, (iii) to inform such employees and
consultants of the proprietary nature of the Compounds, and (iv) to take
reasonable precautions, at least as stringent as those observed by Cubist to
protect its own proprietary material, to ensure that such employees and
consultants observe the obligations of Cubist pursuant to this Paragraph. Upon
the expiration or termination of this Agreement, Cubist shall, at the
instruction of Genzyme, either destroy or return any unused Compounds.
5. Compliance with Law. Cubist agrees to comply with all federal, state and
local laws and regulations applicable to the use, storage, disposal, and
transfer of all the Compounds, including without limitation the Toxic Substances
Control Act (15 USC 2601 et. seq.) and implementing regulations (in particular,
40 CFR 720.36 [Research and Development Exemption]), the Food, Drug, and
Cosmetic Act (21 USC 301 et. seq.) and implementing regulations, and all Export
Administration Regulations of the Department of Commerce. Cubist assumes sole
responsibility for any violation of such laws or regulations by Cubist or any of
its affiliates.
6. Confidential Information.
(a) As used in this Agreement, the term "Confidential Information" means any
technical or business information furnished by one party ("Disclosing Party") to
the other party ("Receiving Party") in connection with this Agreement and
specifically designated as confidential
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including, without limitation, any information disclosed by the parties
pursuant to Paragraphs 1, 2 and 3 of this Agreement. Such Confidential
Information may also include, without limitation, trade secrets, know-how,
inventions, formulations, compositions, technical data or specifications,
testing methods, business or financial information, research and
development activities, product and marketing plans, customer and supplier
information. Confidential Information that is disclosed in writing shall be
marked with the legend "confidential". Confidential Information that is
disclosed orally or visually shall be documented in a written notice
prepared by the Disclosing Party and delivered to the Receiving Party
within thirty (30) days of the date of disclosure. Such notice shall
summarize the Confidential Information disclosed to the Receiving Party and
reference the time and place of disclosure.
(b) The Receiving Party shall and shall cause its employees engaged in the
research to: (i) maintain all Confidential Information in strict confidence,
except that the Receiving Party may disclose or permit the disclosure of any
Confidential Information to its directors, officers, employees, consultants, and
advisors who are obligated to maintain the confidential nature of such
Confidential Information and who need to know such Confidential Information for
the purposes set forth in this Agreement; (ii) use all Confidential Information
solely for purposes set forth in this Agreement; and (iii) reproduce the
Confidential Information only to the extent necessary to effect the purpose set
forth in this Agreement, with all such reproductions being considered
Confidential Information.
(c) The obligations of the Receiving Party under Paragraph 6(b) shall
not apply to the extent that the Receiving Party can demonstrate by written
documentation that certain Confidential Information: (i) was in the public
domain prior to the time of its disclosure under this Agreement; (ii)
entered the public domain after the time of its disclosure under this
Agreement through means other than an unauthorized disclosure resulting
from any act or omission by the Receiving Party; (iii) was independently
developed or discovered by the Receiving party prior to the time of its
disclosure under this Agreement; (iv) is or was disclosed to the Receiving
Party at any time, whether prior to or after the time of its disclosure
under this Agreement, by a third party having no fiduciary relationship
with the Disclosing Party and having no obligations of confidentiality with
respect to such Confidential Information; or (v) is required to be
disclosed to comply with applicable laws or regulations, or with a court or
administrative order, provided that the Disclosing Party receives prior
written notice of such disclosure and
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that the Receiving party takes all reasonable and lawful actions to obtain
confidential treatment for such disclosure and, if possible, to minimize
the extent of such disclosure.
(d) The Receiving Party agrees that the Disclosing Party (or any third party
entrusting its own confidential information to the Disclosing Party) is and
shall remain the exclusive owner of the Confidential Information disclosed by
the Disclosing Party and all patent, copyright, trademark, trade secret, and
other intellectual property rights in, or arising from such Confidential
Information. No option, license, or conveyance of such rights to the Receiving
Party is granted or implied under this Agreement. If any such rights are to be
granted to the Receiving Party, such grant shall be expressly set forth in a
separate written instrument.
(e) Upon the termination by either party of this Agreement, the Receiving
Party shall return to the Disclosing Party all originals, copies, and summaries
of documents, materials, and other tangible manifestations of Confidential
Information in the possession or control of the Receiving Party. The obligations
set forth in this Agreement shall remain in effect for a period of five (5)
years after such termination by either party.
(f) The Receiving Party agrees that any breach of its obligations under this
Paragraph 6 will cause irreparable harm to the Disclosing Party; therefore, the
Disclosing Party shall have, in addition to any remedies available at law, the
right to obtain requitable relief to enforce this Agreement.
7. No Warranties. Any Compounds delivered pursuant to this Agreement
are understood to be experimental in nature and may have hazardous
Properties. GENZYME MAKES NO REPRESENTATIONS, AND EXTENDS NO WARRANTIES OF
ANY KIND, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO THE COMPOUNDS, THERE
ARE NO EXPRESS OR IMPLIED WARRANTIES OR MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE, OR THAT THE USE OF THE COMPOUNDS WILL NOT INFRINGE ANY
PATENT OR OTHER INTELLECTUAL PROPERTY RIGHTS OF A THIRD PARTY.
8. Indemnification. Cubist assumes all liability for, and agrees to
indemnify, defend, and hold harmless Genzyme and its directors, officers,
representatives, employees, and agents against, all losses, expenses (including
without limitation any reasonable legal expenses), claims, demands, damages,
judgments, suits, or other actions arising form
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the use, storage, or disposal of the Compounds by Cubist and its affiliates
and sublicenses, or form any breach of its obligations under Paragraph 5 of
this Agreement. Genzyme assumes all liability for, and agrees to indemnify,
defend, and hold harmless Cubist and its directors, officers,
representatives, employees, and agents against, all losses, expenses
(including without limitation any reasonable legal expenses), claims,
demands, damages, judgements, suits, or other actions arising from the use,
storage, or disposal of the Compounds by Genzyme and its affiliates.
9. Termination. Subject to early termination pursuant to Paragraph
1(b), this Agreement shall commence on the date last written below and
continue for a period of *************************************************
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******************************************. Sections 3 (paragraph (d) only),
4, 5, 6, 7 and 8, shall survive termination of this Agreement.
10. Miscellaneous. This Agreement shall not be assigned or otherwise
transferred by either party without the prior written consent of the other
party to this Agreement. This Agreement shall be governed by the laws of
the Commonwealth of Massachusetts. This Agreement constitutes the entire
understanding of the parties and supersedes all prior agreements, written
or oral, with respect to the subject matter hereof. Any notice required or
permitted under this Agreement shall be in writing delivered personally or
by facsimile (and promptly confirmed by personal delivery or courier) or
courier, postage prepaid (where applicable), addressed to the other party
at its address indicated below, or to such other address as the addressee
shall have last furnished in writing to the addressor and shall be
effective upon receipt by the addressee. Each party shall obtain prior
written permission from the other before using the name, symbol and/or
marks of the other in any form of publicity.
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ACCEPTED AND AGREED:
GENYZME CORPORATION CUBIST PHARMACEUTICALS, INC.
By: /s/ James R. Rasmussen By:/s/ Scott M. Rocklage
Name: James R. Rasmussen Name: Scott M. Rocklage
Title: Senior VP, Research Title: President and CEO
Date: February 24, 1997 Date: February 24, 1997
Address: Address:
Genzyme Corporation Cubist Pharmaceuticals, Inc.
One Kendall Square 24 Emily Street
Cambridge, Massachusetts 02319 Cambridge, Massachusetts 02139
Tel: (617) 252-7500 Tel: (617) 576-1999
Fax: (617) 252-7600 Fax: (617) 576-0232
* Confidential treatment requested: material has been omitted and filed
separately with the Commission.
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