Library Sample Evaluation Agreement - Pharmacopeia Inc. and Cubist Pharmaceuticals Inc.
Confidential Treatment
LIBRARY SAMPLE EVALUATION AGREEMENT
This Library Sample Evaluation Agreement (the "Agreement"), effective
as of September 11, 1996 (the "Effective Date"), is made by and between
Pharmacopeia, Inc., a Delaware corporation having a principal place of
business at 101 College Road East, Princeton, New Jersey 08540
("Pharmacopeia"), and Cubist Pharmaceuticals, Inc., a Delaware corporation
having a principal place of business at 24 Emily Street, Cambridge,
Massachusetts 02139 ("Cubist").
BACKGROUND
A. Pharmacopeia has developed novel proprietary methods for the
generation of encoded compound libraries. Pharmacopeia believes that its
proprietary technology, by rapidly producing diverse and targeted compound
libraries, will accelerate the drug discovery process and increase
productivity of drug discovery programs.
B. Cubist wishes to obtain from Pharmacopeia samples of combinatorial
libraries to be screened by Cubist against certain agreed targets, and
Pharmacopeia is willing to provide such samples to Cubist for such purpose,
on the terms and conditions set forth herein.
NOW THEREFORE, it is agreed by and between the parties as follows:
1. DEFINITIONS
1.1 "Columbia License" means that certain License Agreement effective
as of July 16, 1993, as amended and restated as of October 6, 1995, entered
by and between Pharmacopeia, Inc., the Trustees of Columbia University in
the City of New York and the Cold Spring Harbor Laboratory.
1.2 "Confidential Information" means (i) any proprietary or
confidential information or material in tangible form disclosed hereunder
that is marked as "Confidential" at the time it is delivered to the
receiving party, or (ii) proprietary or confidential information disclosed
orally hereunder which is identified as confidential or proprietary when
disclosed and such disclosure of confidential information is confirmed in
writing within thirty (30) days by the disclosing party.
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1.3 "Library Compound" means any compound contained in a Library
Sample.
1.4 "Library Sample" means a sample of compounds selected from a
Pharmacopeia compound library and transferred to Cubist pursuant to this
Agreement.
1.5 "Licensed Patents" means any patent applications that claim any
compound in the library from which the Library Sample is derived; any
substitutions, divisions, continuations, and continuations-in-part of the
preceding patent applications; any foreign counterparts of the preceding
applications; and any patents issuing on the preceding applications,
including registrations, revalidations, reissues, reexaminations,
extensions or other governmental actions which extend claims or durations
of such patents; in each case, which is owned or controlled, in whole or
part, by license, assignment or otherwise by Pharmacopeia during the term
of this Agreement, and subject to any limitations and prohibitions of such
license or sublicense. It is understood that the Licensed Patents shall not
include any intellectual property owned or licensed by Pharmacopeia
relating to creation or use of combinatorial libraries, tag and/or marker
compound engineering and encoding, and/or high throughput screening assays
(hereinafter the "Excluded Technology").
1.6 "Screening Period" means the ************* period following the
date of shipment by Pharmacopeia of each Library Sample to Cubist or such
longer period as may be established under Section 2.3.2 below.
1.7 "Target" means any molecular target set for on Exhibit B hereto,
and any other molecular targets agreed in writing by Cubist and
Pharmacopeia.
2. LIBRARY SAMPLE
2.1 LIBRARY SAMPLE. Subject to the terms and conditions of this
Agreement, Pharmacopeia shall provide four copies of the Library Sample to
Cubist for screening by Cubist against the Targets as set forth in more
detail on Exhibit A. The Library Sample shall be available delivery to
Cubist as soon as practicable following Cubist's payment of the Library
Sample Access Fee pursuant to Section 5.1.
2.2 LIMITED USE. The Library Sample shall be used by Cubist
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2.3 SCREENING BY CUBIST.
2.3.1 Target Exclusivity. To provide Cubist a period of
exclusivity for screening of the Library Sample against the Targets,
Pharmacopeia agrees that until the termination of the Screening Period, as
such period may be extended, Pharmacopeia shall not knowingly deliver to
any third party any compound from the Library Sample for screening against
any of the Targets; provided, Pharmacopeia may itself screen or provide to
third parties compounds from such Library Sample, or the library from which
it was derived, for screening against any molecular target which is not a
Target hereunder at such time.
2.3.2 Extentions of Screening Period. Cubist may request that
Pharmacopeia extend the Screening Period for an additional period (after the
initial ************************** Screening Period) by notifying
Pharmacopeia no later than thirty (30) days prior to the date on which such
Screening Period will expire. It is understood and agreed that if
Pharmacopeia, in its sole discretion, does not so extend the Screening
Period, Cubist shall have no further rights to screen the Library Sample. The
length of any such additional period will be as agreed by the parties.
2.4 REARRAYS. After joint review of the screening data and upon
mutual agreement, Pharmacopeia shall rearray (at one compound per well)
those wells identified by the parties as containing compounds with activity
against any of the Targets.
2.5 ADDITIONAL LIBRARY SAMPLE. If Cubist screens the initial Library
Sample but does not identify any Library Compound with respect to which it
wishes to negotiate with Pharmacopeia for a further agreement pursuant to
Section 4.1, Cubist may request up to four copies of a further Library
Sample with notice to Pharmacopeia during the Screening Period.
Pharmacopeia then shall provide to Cubist a further Library Sample drawn
from a different Pharmacopeia library, and Cubist may screen such further
Library Sample, subject to the terms and conditions herein. Pursuant to
this Section 2.5, Cubist may receive
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Library Samples from ************** additional Pharmacopeia compound
libraries. Upon shipment of such further Library Sample, Cubist's right to
negotiate a further agreement with respect to any Library Compound in a
previous Library Sample shall terminate.
2.6 ADDITIONAL TARGETS. At any time during the Screening Period,
Cubist may provide Pharmacopeia notice that Cubist wishes to drop a Target
from this Agreement and designate an additional target as a Target for all
purposes of this Agreement. Within fifteen (15) days of receipt of such
notice, Pharmacopeia shall, at its sole discretion, accept or deny the
designation of each such proposed target as a Target by notice to Cubist.
Upon Pharmacopeia's notice of such acceptance, if any, Cubist's right to
negotiate a further agreement with respect to such dropped Target shall
terminate.
2.7 OWNERSHIP OF LIBRARY SAMPLES. Pharmacopeia, shall retain all
right, title and interest in and to the Library Sample and Library
Compounds, and all Pharmacopeia intellectual property rights related
thereto.
3. LICENSE
3.1 SCREENING LICENSE. Subject to the terms and conditions of this
Agreement, Pharmacopeia grants to Cubist a non-exclusive, non-transferable
license, under the applicable Licensed Patents solely to screen the Library
Sample to identify Library Compounds with activity against one or more of
the Targets.
3.2 COLUMBIA SUBLICENSE. Subject to the terms and conditions of this
Agreement and Columbia License, if necessary, Pharmacopeia will grant to
Cubist a non-exclusive, non-transferable sublicense under the Columbia
License solely to screen the Library Sample to identify Library Compounds
with activity against one or more of the Targets.
3.3 RETAINED RIGHTS. No right or license in or to intellectual
property rights of Pharmacopeia relating to the Library Sample or Library
Compounds (or otherwise) is granted nor implied hereunder, except for the
sole purpose of conducting the screening. Pharmacopeia retains rights not
expressly granted to Cubist in Section 3.1 above, including without
limitation, the right make, have made and use Library Compounds in the
Library Sample for its own research purposes. It is understood and agreed
that the license granted to Cubist in Section 3.1 above does not include
the right to create, make or have made combinatorial libraries,
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tags, markers or other encoding compositions, or use methods or processes
relating to the preceding.
4. FURTHER AGREEMENTS
4.1 NEGOTIATION OF FURTHER AGREEMENT. If Cubist determines that one
or more Library Compounds have biological activity with respect to a Target
and wishes to negotiate with Pharmacopeia a further agreement relating to
such Library Compounds, Cubist may notify Pharmacopeia thereof during the
Screening Period. In such event, the parties shall negotiate in good faith
the terms of a further agreement for a period of *************************
from Pharmacopeia's receipt of such notice, or such longer period as the
parties may agree (the "Negotiation Period"). The nature of such further
agreement may be a license, collaboration or any other form as may be
agreed by the parties. If the parties fail to enter into a further written
agreement with respect to a particular Library Compounded during the
Negotiation Period, Cubist shall acquire no right to such Library Compound.
4.2 NO DECODES. Until the parties reach definitive agreement pursuant
to Section 4.1, or unless otherwise agreed in writing by the parties,
Pharmacopeia shall not knowingly decode any Library Compound identified by
Cubist to Pharmacopeia as having activity with respect to any Target.
4.3 SCREENING BY PHARMACOPEIA. If Cubist notifies Pharmacopeia as
provided in Section 4.1, but the parties fail to enter into a further
agreement, following the first anniversary of the end of the Screening
Period, Pharmacopeia may screen and allow others to screen the Library
Sample and the library from which it was derived against any Target;
provided, Pharmacopeia may disclose to third parties that the Library
Sample has been screen against such a Target, but shall not disclose to
third parties that Cubist screened the Library Sample or the results of
such screening.
4.4 NO NOTICE OF LIBRARY COMPOUND ACTIVITY. If Cubist fails to
provide Pharmacopeia notice pursuant to Section 4.1 that it wishes to
negotiate a further agreement with respect to any Library Compound in a
particular Library Sample during the Screening Period, following the end of
such Screening Period Pharmacopeia may screen and allow third parties to
screen, such Library Sample and the library from which it was derived for
activity against any Target, without further obligation to
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Cubist, and may commercialize any Library Compound therein itself or with
third parties.
4.5 THIRD PARTY RIGHTS. It is understood that Pharmacopeia is in the
business of providing combinatorial libraries to third parties, and that
Pharmacopeia may grant such third parties rights to acquire licenses for
compounds in or derived from compounds in such libraries prior to the execution
of any further agreement between the parties hereto. Accordingly, any rights
granted to Cubist in a further agreement between the parties hereto shall be
limited to the extent that (i) a third party (either alone or jointly with
Pharmacopeia) has filed a patent application with respect to such a compound
prior to the filing by Cubist (either alone or jointly with Pharmacopeia) of a
patent application with respect to such a compound, (ii) Pharmacopeia has
previously granted a third party a license or other rights with respect to such
a compound, or (iii) as shown by contemporaneous documentation, Pharmacopeia has
previously decided to develop a particular compound on its own behalf. It is
further understood that compounds provided to third parties in the course of
Pharmacopeia's other business activities may result in third party patent
applications and patents, including patent applications and patents owned by
such third parties, or owned jointly by Pharmacopeia and such third parties,
which could affect the rights Cubist may wish to acquire from Pharmacopeia with
respect to any Library Compound.
5. PAYMENTS
5.1 LIBRARY SAMPLE ACCESS FEE. Within thirty (30) days of the
Effective Date, Cubist shall pay to Pharmacopeia a fee of ******************.
5.2 PAYMENT METHOD. All payments due under this Agreement shall be
made to an account designated by Pharmacopeia. All payments hereunder shall
be made in U.S. dollars. Any payments that are not paid on the date such
payments area due under this Agreement shall bear interest to the extent
permitted by applicable law at the prime rate as reported by the Chase
Manhattan Bank, New York, New York, on the date such payment is due, plus
an additional two percent (2%), calculated on the number of days such
payment is delinquent.
5.3 TAX MATTERS. Any sales taxes, use taxes, transfer taxes or
similar governmental charges required to be paid in connection with the
transfer of the Library Sample shall be the sole responsibility of Cubist.
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In the event that Pharmacopeia is required to pay any such amounts, Cubist
shall promptly remit payment to Pharmacopeia of such amounts.
6. CONFIDENTIALITY
6.1 CONFIDENTIAL INFORMATION. Except as expressly provided herein,
the parties agree that, for the term of this Agreement and for five (5)
years thereafter, the receiving party shall not disclose and except as
expressly provided in this Article 6, shall not use for any purpose other
than the performance of this Agreement, any Confidential Information
furnished to it by the disclosing party hereto pursuant to this Agreement
except to the extent that it can be established by the receiving party by
competent proof that such information:
(a) was already known to the receiving party, other than under an
obligation of confidentiality, at the time of disclosure;
(b) was generally available to the public or otherwise part of the
public domain 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 breach of this Agreement;
(d) was independently developed by the receiving party as demonstrated
by documented evidenced prepared contemporaneously with such independent
development; or
(e) was subsequently lawfully disclosed to the receiving party by a
person other than a party.
6.2 PERMITTED USE AND DISCLOSURES. Each party hereto may use or
disclose Confidential Information disclosed to it by the other party to the
extent such use or disclosure is reasonably necessary and permitted in the
exercise of the rights granted hereunder, prosecuting or defending
litigation, or complying with applicable governmental regulations or court
orders or otherwise submitting information to tax or other governmental
authorities, provided that if a party is required make any such disclosure
of another party's Confidential Information, other than pursuant to a
confidentiality agreement, it will give reasonable advance notice to the
other party of such disclosure and, save to the extent inappropriate in the
case of patent applications, will use its reasonable efforts to secure
confidential treatment of such Confidential Information in consultation
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with the other prior to its disclosure (whether through protective orders
or otherwise) and disclose only the minimum necessary to comply with such
requirements.
6.3 NONDISCLOSURE OF TERMS. Each of the parties hereto agrees not to
disclose to any third party the terms of this Agreements without the prior
written consent of the other party hereto, except to such party's
attorneys, advisors, investors and other on a need to know basis under
circumstances that reasonably ensure the confidentiality thereof, or to the
extent required by law.
7. INDEMNIFICATION
7.1 CUBIST. Cubist agrees to indemnify, defend and hold Pharmacopeia
and its directors, officers, employees and agents (the "Pharmacopeia
Indemnitees") harmless from and against any losses, costs, claims, damages,
liabilities or expense (including reasonable attorneys' and professional
fees and court and other expenses of litigation) arising out of or in
connection with third party claims relating to the use of the Library
Sample under this Agreement, except to the extent due to the negligence or
intentional misconduct of Pharmacopeia.
7.2 PHARMACOPEIA. Pharmacopeia agrees to indemnify, defend and hold
Cubist and its Affiliates and their respective directors, officers,
employees and agents (the "Cubist Indemnitees") harmless from and against
any losses, costs, claims, damages, liabilities or expense (including
reasonable attorneys' fees and court and other expenses of litigation)
arising out of or in connection with third party claims relating to the
preparation and delivery of the Library Sample, except to the extent due to
the negligence or intentional misconduct of Cubist.
8. TERM AND TERMINATION
8.1 TERM. The term of this Agreement shall begin as of the Effective
Date and, unless terminated earlier as provided in this Article 8, continue
in full force and effect until*********************************************
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8.2 TERMINATION FOR CAUSE. Either party may terminate this Agreement
in the event the other party shall have materially breached or defaulted in
the performance of any of its obligations hereunder, and such
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default shall have continued for ************* after written notice thereof
was provided to the breaching party by the nonbreaching party. Any
termination shall become effective at the end of such ***********************
period unless the breaching party (or any other party on its behalf) has
cured any such breach or default prior to the expiration of the
*************** period or has commenced the cure within such **********
period and thereafter uses its best efforts to complete the cure as soon as
practicable; provided, in the case of a failure to pay any amount due
hereunder, such default may be the basis of a termination ************
following the date that notice of such default was provided to the breaching
party.
8.3 TERMINATION UPON BANKRUPTCY OR INSOLVENCY. If voluntary or
involuntary proceedings by or against a party are instituted in bankruptcy
under any insolvency law, or a receiver or custodian is appointed for such
party, or proceedings are instituted by or against such party for corporate
reorganization or the dissolution of such party, which proceedings, if
involuntary, shall not have been dismissed within sixty (60) days
thereafter, the other party may immediately terminate this Agreement
effective upon notice of such termination.
8.4 TERMINATION BY CUBIST. Cubist shall have the right to terminate
this Agreement on sixty (60) days prior written notice to Pharmacopeia.
8.5 EFFECT OF BREACH OR TERMINATION.
8.5.1 Accrued Obligations. Termination of this Agreement for any
reason shall not release any party hereto from any liability which, at the
time of such termination, has already accrued to the other party or which
is attributable to a period prior to such termination nor preclude either
party from pursuing all rights and remedies it may have hereunder or at law
or in equity with respect to any breach of this Agreement.
8.5.2 Return of Materials. Upon any termination of this Agreement,
Cubist and Pharmacopeia shall promptly return to the other party all
Confidential Information of the other (except for one (1) copy which may be
retained solely for archival purposes), and Cubist shall return to
Pharmacopeia or destroy any remaining Library Compounds.
8.5.3. Survival. Sections 2.7. 4.2, 4.3, 5.3, 8.5 and 8.6, and
Articles 6, 7 and 9 of this Agreement shall survive the expiration or
termination of this Agreement for any reason.
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9. MISCELLANEOUS
9.1 GOVERNING LAW. This Agreement and any dispute arising from the
performance breach hereof shall be governed by and construed and enforced
in accordance with, the laws of state of New Jersey without reference to
conflicts of laws principles.
9.2 NO IMPLIED LICENSES. Only the licenses granted pursuant to the
express terms of the Agreement shall be of any legal force or effect. No
license rights shall be created by implication, estoppel or otherwise.
9.3 WAIVER. It is agreed that no waiver by any party hereto of any
breach or default of any of the covenants or agreements herein set forth
shall be deemed a waiver as to any subsequent and/or similar breach or
default.
9.4 ASSIGNMENT. This Agreement shall not be assignable by either
party to any third party hereto without the written consent of the other
party, except either party may assign this Agreement, without such consent,
to an entity that acquires all or substantially all of the business or
assets of such party to which this Agreement pertains, whether by merger,
reorganization, acquisition, sale, or otherwise. This Agreement shall be
binding upon and accrue to the benefit of the parties hereto and their
successors and any permitted assigns.
9.5 INDEPENDENT CONTRACTORS. The relationship of the parties hereto
is that of independent contractors. The parties hereto are not deemed to be
agents, partners or joint venturers of the others for any purpose as a
result of this Agreement or the transactions contemplated thereby.
9.6 DISCLAIMER OF WARRANTIES. THE LIBRARY SAMPLE PROVIDED HEREUNDER
IS PROVIDED AS-IS. PHARMACOPEIA MAKES NO REPRESENTATIONS AND EXTENDS NO
WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO THE
LICENSED PATENTS, LIBRARY SAMPLE, THE LIBRARY COMPOUNDS, OR ANY
CONFIDENTIAL INFORMATION DISCLOSED PURSUANT TO ARTICLE 6, INCLUDING, BUT
NOT LIMITED TO, ANY WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE, VALIDITY OF THE LICENSED PATENTS, OR NONFRINGEMENT BY THE
PRECEDING OF ANY INTELLECTUAL PROPERTY RIGHTS OR THIRD PARTIES.
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9.7 NOTICES. All notices, requests and other communications hereunder
shall be in writing and shall be personally delivered or by registered or
certified mail, return receipt requested, postage prepaid, in each case to
the respective address specified below, or such other address as may be
specified in writing to the other parties hereto and shall be deemed to
have been given upon receipt:
Pharmacopeia: Pharmacopeia, Inc.
101 College Road East
Princeton, New Jersey 08540
Attn: Chief Executive Officer
Cubist: Cubist Pharmaceuticals, Inc.
24 Emily Street
Cambridge, Massachusetts 02139
Attn: Chief Executive Officer
9.8 SEVERABILITY. In the event that 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.
9.9 NO CONSEQUENTIAL DAMAGES. IN NO EVENT SHALL ANY PARTY TO THIS
AGREEMENT HAVE ANY LIABILITY TO THE OTHER FOR ANY SPECIAL, INDIRECT,
CONSEQUENTIAL OR INCIDENTAL DAMAGES ARISING UNDER THIS AGREEMENT UNDER ANY
THEORY OF LIABILITY.
9.10 COMPLETE AGREEMENT. This Agreement with its Exhibits,
constitutes the entire agreement between the parties with respect to the
subject matter hereof, and all prior agreements respecting the subject
matter hereof, either written or oral, express or implied, shall be
abrogated, canceled, and are null and void and of no effect. No amendment
or change hereof or addition hereto shall be effective or binding on either
of the parties hereto unless reduced to writing and executed by the
respective duly authorized representatives of Pharmacopeia and Cubist.
9.11 DISPUTE RESOLUTION. Any dispute under this Agreement which is
not settled by mutual consent shall be finally settled by binding
arbitration, conducted in accordance with the Commercial Arbitration Rules
of the American Arbitration Association by one (1) arbitrator appointed in
accordance with said rules. The arbitration shall be held in New York, New
York. The costs of the arbitration, including
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administrative and arbitrators' fees, shall be shared equally by the
parties, and each party shall bear its own costs and attorneys' and
witness' fees. The decision of the arbitrator shall be written, final and
non-appealable and may be enforced in any court of competent jurisdiction.
9.12 COUNTERPARTS. This Agreement may be executed in counterparts,
each of which shall be deemed to be an original and all of which together
shall be deemed to be one and the same agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed by their authorized representatives and delivered as of the
Effective Date.
CUBIST PHARMACEUTICALS, INC. PHARMACOPEIA, INC.
By: /s/ Neal Farber By: /s/ Joseph A. Mollica
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Name: Neal Farber, Ph.D. Name: Joseph A. Mollica, Ph.D.
Title: UP Corporate Development Title: Chairman and Chief
Executive Officer
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EXHIBIT A
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EXHIBIT B
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