Collaboration Agreement - Cubist Pharmaceuticals Inc. and Syrrx Inc.
CONFIDENTIAL TREATMENT
COLLABORATION AGREEMENT
1. DEFINITIONS................................................................1
2. COLLABORATION GOVERNANCE..................................................10
2.1 Joint Research Committee.........................................10
2.2 Joint Research Committee Functions and Powers....................10
2.3 Information and Reports..........................................11
2.4 JRC Dispute Resolution...........................................11
3. CONDUCT OF THE COLLABORATION..............................................11
3.1 Objectives.......................................................11
3.2 Technology Transfer..............................................11
3.3 Performance Standards............................................12
3.4 Research Commitment..............................................12
3.5 Research and Development Reports for Shared Programs.............12
3.6 Subcontracts.....................................................12
3.7 Materials Transfer...............................................13
4. DISCOVERY AND PRE-CLINICAL RESEARCH.......................................13
4.1 Target Selection and Prioritization..............................13
4.2 Crystallization of Proposed Targets..............................14
4.3 Biological Assays; Compound Libraries............................14
4.4 Screening and Lead Generation....................................14
4.5 Advancement to Medicinal Chemistry Program.......................15
4.6 Allocation of Medicinal Chemistry Targets........................15
4.7 Additional Activities............................................16
4.8 Conduct of Medicinal Chemistry Programs for Shared Programs......16
4.9 Designation of IND Candidates....................................16
4.10 Pre-Clinical Development.........................................16
4.11 Exchange of Information Following Expiration of the Research
Term.............................................................16
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4.12 Restricted Activities............................................17
4.13 Allocation of Active Compounds...................................17
4.14 Medicinal Chemistry for Cubist Programs, Syrrx Programs and
Independent Programs.............................................17
5. BUY-IN OPTION; RIGHT OF FIRST NEGOTIATION; OPTION TO DISCONTINUE
PROGRAMS OR SUPPORT.......................................................17
5.1 Buy-In Option....................................................17
5.2 Cubist Right of First [*]........................................18
5.3 Discontinuation of Shared Programs...............................19
6. LICENSE GRANTS............................................................20
6.1 License Grants...................................................20
6.2 Diligence........................................................21
7. FEES AND PAYMENTS.........................................................21
7.1 Equity Investment................................................21
7.2 Research Milestone Payments......................................21
7.3 Medicinal Chemistry Milestone Payments...........................22
7.4 Clinical/Regulatory Milestones for Shared Programs...............24
7.5 Clinical/Regulatory Milestones for Cubist Programs...............24
7.6 Clinical/Regulatory Milestones for Syrrx Programs................24
7.7 Payments Non-Refundable and Non-Creditable.......................25
7.8 Royalties........................................................25
7.9 Sublicensing Revenues............................................26
8. PAYMENT; RECORDS; AUDITS..................................................26
8.1 Payment; Reports.................................................26
8.2 Exchange Rate; Manner and Place of Payment.......................26
8.3 Late Payments....................................................26
8.4 Withholding of Taxes.............................................27
8.5 Records and Audits...............................................27
8.6 Prohibited Payments..............................................27
9. INTELLECTUAL PROPERTY.....................................................27
9.1 Ownership of Inventions..........................................27
9.2 Patent Prosecution and Maintenance...............................28
9.3 Cooperation of the Parties.......................................28
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9.4 Infringement by Third Parties....................................28
9.5 Infringement of Third Party Rights...............................30
10. REPRESENTATIONS AND WARRANTIES............................................30
10.1 Mutual Representations and Warranties............................30
10.2 Disclaimer Concerning Technology.................................31
10.3 Limitation of Liability..........................................31
11. CONFIDENTIALITY; PUBLICATION..............................................31
11.1 Confidentiality..................................................31
11.2 Exceptions.......................................................32
11.3 Authorized Disclosure............................................32
11.4 Publications.....................................................33
11.5 Publicity........................................................33
12. TERM AND TERMINATION......................................................34
12.1 Term of the Agreement............................................34
12.2 Termination for Cause by Either Party............................34
12.3 Termination Without Cause........................................34
12.4 Effect of Termination under Section 12.2; Surviving Obligations..34
12.5 Effect of Termination under Section 12.3.........................35
12.6 Survival; Additional Assistance..................................35
12.7 Damages; Relief..................................................36
13. INDEMNIFICATION...........................................................36
13.1 Indemnification..................................................36
13.2 Control of Defense...............................................36
13.3 Insurance........................................................37
14. DISPUTE RESOLUTION........................................................37
14.1 Disputes.........................................................37
14.2 Procedures.......................................................37
15. GENERAL PROVISIONS........................................................38
15.1 Governing Law....................................................38
15.2 Entire Agreement; Modification...................................38
15.3 Relationship Between the Parties.................................38
15.4 Non-Waiver.......................................................38
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15.5 Assignment.......................................................38
15.6 No Third Party Beneficiaries.....................................39
15.7 Severability.....................................................39
15.8 Notices..........................................................39
15.9 Force Majeure....................................................39
15.10 Legal Fees.......................................................40
15.11 Interpretation...................................................40
15.12 Counterparts.....................................................40
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CONFIDENTIAL TREATMENT
COLLABORATION AGREEMENT
THIS COLLABORATION AGREEMENT (the "AGREEMENT") is entered into as of
June 27, 2001 (the "EFFECTIVE DATE") by and between CUBIST PHARMACEUTICALS,
INC., a Delaware corporation having an address of 24 Emily Street, Cambridge, MA
02139 ("CUBIST"), and SYRRX, INC., a California corporation having an address of
10450 Science Center Drive, Suite 100, San Diego, CA 92121 ("SYRRX").
RECITALS
WHEREAS, Syrrx has developed expertise and proprietary technology in
the areas of structural proteomics and high-throughput rational drug design;
WHEREAS, Cubist is engaged in the research, development and
commercialization of novel antimicrobial drugs to combat serious and
life-threatening bacterial and fungal infections;
WHEREAS, Syrrx and Cubist desire to enter into a collaborative
relationship to discover, develop and commercialize Products in the Field (as
such terms are defined below); and
WHEREAS, concurrently herewith Cubist and Syrrx are entering into a
stock purchase agreement under which Cubist will purchase shares of Syrrx's
Series C Preferred Stock on the terms and subject to the conditions set forth
therein.
NOW, THEREFORE, in consideration of the foregoing premises and the
mutual covenants contained herein and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties agree as
follows:
1. DEFINITIONS
1.1 "ACTIVE COMPOUND" shall mean any compound screened pursuant to the
Collaboration that demonstrates [*] against [*] or more [*] in the course of the
parties' performance under the Research Plan, and that has been so designated by
inclusion of such compound on the JRC's most current list of such Active
Compounds.
1.2 "ACTIVITY" shall mean the ability of a particular compound to [*]
or otherwise [*] the activity of a [*], as determined in accordance with this
Agreement.
1.3 "AFFILIATE" shall mean any company or entity controlled by,
controlling, or under common control with a party hereto and shall include any
company fifty percent (50%) or more of whose voting stock or participating
profit interest is owned or controlled, directly or indirectly, by a party, and
any company which owns or controls, directly or
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indirectly, fifty percent (50%) or more of the voting stock of a party.
1.4 "ALLOCABLE OVERHEAD" shall mean, for any particular cost item in
the Syrrx Program Expenses for a Syrrx Program, Syrrx's internal allocation,
based on direct project headcount or other standard activity-based project
accounting methods, of [*] incurred by Syrrx or any of its operating units
to support and carry out the activities of the specific business function, such
as [*] and [*] and [*], with respect to such Syrrx Program, which [*] costs may
include but are not limited to: [*] costs; [*] costs; [*] costs; [*] and [*]
costs; [*] costs; equipment costs; insurance costs; and [*] costs. Such
overhead shall [*] any indirect costs associated with [*] expenses or any [*]
not directly related to such Syrrx Program.
1.5 "BUY-IN NOTICE" shall have the meaning provided in Section 5.1.
1.6 "BUY-IN OPTION" shall have the meaning provided in Section 5.1.
1.7 "BUY-IN PERIOD" shall have the meaning provided in Section 5.1.
1.8 "CHEMICAL SERIES" shall mean a group of compounds that exhibit all
of the following properties:
(i) such compounds exhibit [*]; and
(ii) such compounds are or can be [*] or from [*] of a given
compound.
1.9 "COLLABORATION" shall mean the programs of collaborative research
and development, as described in Articles 2, 3 and 4.
1.10 "COMBINATION PRODUCT" shall mean a Product containing [*] more
active compounds in addition to a compound in a [*], where such Product may be
either combined in a single formulation or packaged as separate formulations
sold as a single package.
1.11 "COMPOUND SET" shall mean, with respect to a particular Target, an
[*] and all [*] with respect to such [*], subject to Section 4.5.
1.12 "CONFIDENTIAL INFORMATION" shall have the meaning provided in
Section 11.1.
1.13 "CONTROL" shall mean possession of the ability to grant a license
or sublicense without violating the terms of any agreement or other arrangement
with any Third Party.
1.14 "CUBIST ASSAYS" shall have the meaning provided in Section 4.3.
1.15 "CUBIST COMPOUND LIBRARIES" shall mean all compounds or sets of
compounds Controlled by Cubist or any of its Affiliates as of the Effective Date
or during the Research Term.
1.16 "CUBIST INVENTION" shall have the meaning set forth in Section
9.1.
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1.17 "CUBIST KNOW-HOW" shall mean Information that (a) Cubist or any of
its Affiliates Controls on the Effective Date that is reasonably necessary for
the parties' performance under this Agreement, or (b) is conceived or developed
by Cubist or any of its Affiliates in the course of the Collaboration. Cubist
Know-How includes without limitation any part or copy of the foregoing
information and Cubist's interest in the Joint Know-How. Cubist Know-How
excludes the [*].
1.18 "CUBIST PATENTS" shall mean all Patents Controlled by Cubist or
its Affiliates (a) that are issued or existing as of the Effective Date and that
either claim inventions the practice of which is reasonably necessary for the
parties' performance under the Collaboration or the manufacture, use, sale,
offer for sale or import of Product, or (b) that claim Cubist Inventions. Cubist
Patents include without limitation Cubist's interest in the Joint Patents.
1.19 "CUBIST PRODUCT" shall mean a pharmaceutical product [*], any
compound in a [*] having [*] against a [*], including all formulations, line
extensions and modes of administration thereof.
1.20 "CUBIST PROGRAM" shall mean the research and development
activities directed toward, and the rights of the parties in, a [*] and
[*]having [*] against such [*].
1.21 "CUBIST TARGET" shall have the meaning provided in Section 4.6.
1.22 "CUBIST TECHNOLOGY" shall mean the Cubist Patents and Cubist
Know-How.
1.23 "DERIVATIVE COMPOUND" shall mean a compound that (a) is an analog,
congener, homolog or isomer of an [*], or of any analog, congener, homolog or
isomer of an [*], in each case that either is made under [*] or a [*] based on
[*], or contains the same [*] and (b) demonstrates [*] against the same [*] as
the [*] from which it was derived in assays conducted by the parties solely or
jointly, pursuant to this Agreement.
1.24 "DESIGNATED ORTHOLOG" shall have the meaning provided in Section
4.1.
1.25 "EARLY DISCONTINUED PROGRAM" shall have the meaning provided in
Section 5.3(a).
1.26 "FDA" shall mean the United States Food and Drug Administration,
or any successor agency thereto having the administrative authority to regulate
the marketing of human pharmaceutical products or biological therapeutic
products, delivery systems and devices in the United States of America.
1.27 "FIELD" shall mean the treatment, prevention or diagnosis of [*].
1.28 "FIRST COMMERCIAL SALE" of a Product shall mean the first sale for
use or consumption by an end user of such Product in a country after Regulatory
Approval has been granted by the governing regulatory authority of such country.
Sale to an Affiliate or Sublicensee shall not constitute a First Commercial Sale
unless the Affiliate or Sublicensee is the end user of the Product.
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1.29 "FTE" shall mean the equivalent of full-time twelve (12) months
(including normal vacations, sick days and holidays) work of a person, carried
out by one or more employees or consultants of a party, who devote a portion of
his or her time to the Collaboration; PROVIDED, HOWEVER, that each party
understands and agrees that the other party retains complete discretion to
change the identity, the frequency and the time which any individual employee or
consultant devotes to the Collaboration.
1.30 "GENE TARGET" shall mean (a) nucleotide sequences, including, but
not limited to, genes, and gene fragments, and (b) the proteins encoded by the
sequences described in (a).
1.31 "IND" shall mean an Investigational New Drug Application filed
with the FDA, or the equivalent application or filing necessary to commence
human clinical trials in another country, as applicable.
1.32 "IND CANDIDATE" shall mean a particular compound in a [*] that has
met [*] typically used to support a decision to move into initial human testing
and, in the case of a compound having [*] against a [*], is designated by the
JRC pursuant to Section 4.9 as a candidate for the filing of an IND.
1.33 "INDEPENDENT PRODUCT" shall mean a pharmaceutical product [*], any
compound in a [*] having [*] against an [*], including all formulations, line
extensions and modes of administration thereof.
1.34 "INDEPENDENT PROGRAM" shall mean the research and development
activities directed toward, and the rights of the parties in, an [*] and [*]
having [*] against such [*].
1.35 "INDEPENDENT TARGET" shall have the meaning provided in Section
4.6.
1.36 "INFORMATION" shall mean all tangible and intangible (a)
techniques, technology, practices, trade secrets, inventions (whether or not
patentable), methods, knowledge, know-how, skill, experience, test data and
results (including pharmacological, toxicological and clinical test data and
results), analytical and quality control data, results or descriptions and
software and (b) compounds, compositions of matter, cells, cell lines, assays,
and other physical, biological or chemical materials.
1.37 "INVENTIONS" shall have the meaning set forth in Section 9.1.
1.38 "JOINT INVENTION" shall have the meaning set forth in Section 9.1.
1.39 "JOINT KNOW-HOW" shall mean all technology and information related
to the Research Plan, whether or not patentable, conceived jointly by the
parties in the conduct of the Research Plan. Joint Know-How excludes Joint
Patents.
1.40 "JOINT PATENTS" shall mean all Patents claiming a Joint Invention.
1.41 "JOINT RESEARCH COMMITTEE" or "JRC" shall mean the committee
formed pursuant to Section 2.1.
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1.42 "LATER DISCONTINUED PROGRAM" shall have the meaning provided in
Section 5.3(b).
1.43 "MAJOR MARKET" shall mean any of the following: (a) the [*], (b)
[*], or (c) [*] and [*].
1.44 "MEDICINAL CHEMISTRY LEAD COMPOUND" shall have the meaning set
forth in Section 4.5.
1.45 "MEDICINAL CHEMISTRY PROGRAM" shall mean the research and
development activities directed toward [*] involving, and the rights of the
parties in, a [*] and [*] having [*] against such [*].
1.46 "MEDICINAL CHEMISTRY TARGET" shall mean a [*] with respect to
which one or more [*] have been identified hereunder and that, when interacting
with such [*], has satisfied certain criteria (including, but not limited to,
[*] established by the JRC to support the initiation of medicinal chemistry
efforts with respect to such target and [*]having [*] against such target, as
more fully described in Section 4.5.
1.47 "NDA" shall mean a New Drug Application and all amendments and
supplements thereto filed with the FDA (as more fully defined in 21 C.F.R. 314.5
et seq.), or the equivalent application filed with any equivalent agency or
governmental authority outside the United States (including any supra-national
agency such as in the European Union) requiring such filing, including all
documents, data, and other information concerning a pharmaceutical product which
are necessary for gaining Regulatory Approval to market and sell such
pharmaceutical product.
1.48 "NET SALES" shall mean with respect to a Product, the gross
invoice price on sales by a party or its Affiliate or Sublicensee to an
independent Third Party end user of such product that is not a Sublicensee of
the selling party (unless such Sublicensee is the end user of the product, in
which case the amount invoiced therefor shall be deemed to be the amount that
would be invoiced to a Third Party in an arm's length transaction) for sales of
such Product, less the following items, as allocable to such Product: (i) trade
discounts, credits or allowances, (ii) credits or allowances additionally
granted upon returns, rejections or recalls (except where any such recall arises
out of a party's or its Affiliate's or Sublicensee's gross negligence, willful
misconduct or fraud), (iii) freight, shipping and insurance charges, (iv) taxes,
duties or other governmental tariffs (other than income taxes) levied on the
invoiced amount and (v) government mandated rebates.
In the event a Product is a Combination Product, then Net Sales shall
be calculated by multiplying the actual Net Sales of such Combination Product by
the fraction A/A+B where A is the invoice price of the Product if sold
separately, and B is the total invoice price of the other active ingredient or
ingredients in the combination, if sold separately. If, on a country-by-country
basis, the other active ingredient or ingredients in the combination are not
sold separately in said country, Net Sales for the purpose of determining
royalties due with respect to the Combination Product shall be calculated by
multiplying actual Net Sales of such Combination Product by the fraction A/C
where A is the invoice price of the Product if sold separately and C is the
invoice price of the Combination Product. If, on a country-by-country
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basis, neither the Product nor the other active ingredient(s) is sold separately
in such country, Net Sales for the purposes of determining royalties due on
sales of such Combination Product shall be determined by the parties in good
faith based upon the fair market value of the Product.
1.49 "NOMINATED IND CANDIDATE" shall mean a compound in a [*] that has
[*] against a [*] which the JRC has nominated to be the subject of [*]
toxicology studies and [*] manufacturing activities.
1.50 "ORTHOLOG" shall mean (a) a gene or gene fragment that, based on
similarities in its nucleotide sequence to another gene or gene fragment from a
different species, is likely to [*], and (b) [*] described in (a).
1.51 "PATENT" shall mean (a) valid and enforceable United States
patents, re-examinations, reissues, renewals, extensions and term restorations
(b) pending applications for United States patents, including, without
limitation, continuations, provisionals, converted provisionals, continuing
prosecution applications, continuations-in-part, divisional and substitute
applications, including, without limitation, inventors' certificates, and (c)
all foreign counterparts of all of the foregoing.
1.52 "PHARMACOPHORE" shall mean the [*] that provides the basis for
[*].
1.53 "PHASE I CLINICAL TRIALS" shall mean a phase I study as defined in
21 C.F.R. 312.21 designed to establish that a drug is safe for its intended use,
and to support its continued testing in Phase II Clinical Trials.
1.54 "PHASE II CLINICAL TRIALS" shall mean a phase 2 study as defined
in 21 C.F.R. 312.21.
1.55 "PHASE III CLINICAL TRIALS" shall mean a phase 3 study as defined
in 21 C.F.R. 312.21 designed to establish that a drug is safe and efficacious
for its intended use and to support Regulatory Approval of such drug.
1.56 "PRE-CLINICAL DEVELOPMENT" shall mean, with respect to any Shared
Program, all activities (including, but not limited to, chemical
development/scale-up, assay development, toxicology, pharmacokinetics,
metabolism and safety pharmacology) conducted after an IND Candidate has been
designated and prior to filing of an IND thereon.
1.57 "PRE-CLINICAL DEVELOPMENT EXPENSES" shall mean the expenses
incurred by a party or for its account that are directly attributable to the
Pre-Clinical Development of a Shared Program and consistent with the
Pre-Clinical Development Plan, excluding any indirect overhead expenses of a
party. Without limiting the generality of the foregoing, "Pre-Clinical Expenses"
shall mean amounts paid by a party to Third Parties involved in the Pre-Clinical
Development of a Shared Program, and all internal direct costs (calculated on an
FTE basis at the rate of [*] per FTE, subject to yearly modification based upon
the US Consumer Price Index) incurred by a Party in connection with the
Pre-Clinical Development of such Shared Program. Pre-Clinical Development
Expenses shall include, but are not limited to, the following costs incurred for
the Pre-Clinical Development of a Shared Program: (a) the costs of modifying and
optimizing a
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prospective IND Candidate, including its chemical structure and formulation, for
such Shared Program to achieve product development goals regarding efficacy,
safety, dosing and route of administration; (b) the cost of studies on the
toxicological, pharmacokinetic, metabolic or clinical aspects of a prospective
IND Candidate for such Shared Program conducted internally or by individual
investigators or consultants necessary or desirable for the purpose of preparing
or filing an IND with respect to an IND Candidate for such Shared Program; (c)
costs (and related fees) for preparing, submitting, reviewing or developing data
or information for such IND filing; and (d) manufacturing process development
and scale-up for an IND Candidate for such Shared Program for purposes of
conducting pre-clinical studies necessary to prepare or file an IND in a
regulatory jurisdiction. In no event shall Pre-Clinical Development Expenses
include any costs or expenses incurred by a party or for its account that are
attributable to a Shared Program either before the designation of an IND
Candidate or after the filing of an IND with respect to any compound therefrom.
In any event, Pre-Clinical Development Expenses shall exclude indirect overhead
costs incurred by a party or any of its operating units to support Pre-Clinical
Development activities.
1.58 "PRE-CLINICAL DEVELOPMENT PLAN" shall mean the plan for
performance of Pre-Clinical Development activities with respect to Shared
Products, as amended from time to time by the JRC.
1.59 "PRODUCT" shall mean a Shared Product, Cubist Product, Syrrx
Product or Independent Product.
1.60 "PROGRAM" shall mean a Proposed Program, Medicinal Chemistry
Program, Shared Program, Cubist Program, Syrrx Program or Independent Program.
1.61 "PROPOSED PROGRAM" shall mean the research and development
activities directed toward, and the rights of the parties in, a [*] and [*]
having [*] against such [*].
1.62 "PROPOSED TARGET" shall mean a [*] and [*] thereof proposed by
Cubist for use in the Collaboration pursuant to Section 4.1.
1.63 "REGULATORY APPROVAL" shall mean any and all approvals (including
price and reimbursement approvals), licenses, registrations, or authorizations
of the European Union or any country, federal, state or local regulatory agency,
department, bureau or other government entity that is necessary for the
manufacture, use, storage, import, transport and/or sale of a Product in such
jurisdiction.
1.64 "RESEARCH" shall mean the collaborative research program conducted
by the parties under this Agreement for the identification of IND Candidates, as
described in the Research Plan.
1.65 "RESEARCH PLAN" shall mean the plan for conducting the Research,
including the Medicinal Chemistry Program(s), under the Collaboration, as
amended from time to time by the JRC. The initial Research Plan has been agreed
upon by the parties prior to or on the Effective Date. Any amendments or
revisions to the Research Plan shall be in writing and shall require unanimous
approval of the JRC.
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1.66 "RESEARCH TERM" shall mean the [*] following the Effective Date,
subject to earlier termination in accordance with Article 12.
1.67 "ROYALTY TERM" shall mean, in the case of any Product, on a
country-by-country basis in any country, the period of time commencing on the
First Commercial Sale and ending upon the later of (a) [*] from the date of
First Commercial Sale in such country, or (b) the [*] of the last to [*] of a
[*] or [*]claiming the manufacture, use, offer for sale, import or sale of such
[*] in such country.
1.68 "SELECTED GENE TARGET" shall have the meaning provided in Section
4.1.
1.69 "SHARED PRODUCT" shall mean a pharmaceutical product [*] a
compound in a [*] having [*] against a [*], including all formulations, line
extensions and modes of administration thereof.
1.70 "SHARED PROGRAM" shall mean the research and development
activities directed toward, and the rights of the parties in, a [*] and [*]
having [*] against such [*].
1.71 "SHARED TARGET" shall have the meaning provided in Section 4.6.
1.72 "SUBLICENSEE" shall mean a Third Party to whom Cubist or Syrrx or
an Affiliate of Cubist or Syrrx has granted a sublicense under any Cubist
Technology or Syrrx Technology to discover, research, develop, make, have made,
use, distribute for sale, promote, market, offer for sale, sell, have sold,
import and/or export Product in the Field.
1.73 "SUBLICENSING REVENUES" shall mean amounts actually paid to Cubist
or Syrrx or an Affiliate of Cubist or Syrrx by a Sublicensee arising from or
relating to the sublicense of the right to discover, research, develop, make,
have made, use, distribute for sale, promote, market, offer for sale, sell, have
sold, import or export Product. Sublicensing Revenues shall include [*] or [*]
licensed or sublicensed to such Sublicensee but shall not include any payments
tied directly to the provision of [*] by a party or its Affiliate to such
Sublicensee (including without limitation [*] to [*] or its Affiliate for the
[*] to such party or its Affiliates by a Sublicensee based on such Sublicensee's
sale of [*], or [*] (other than premiums above market price).
1.74 "SYRRX COMPOUND LIBRARIES" shall mean all compounds or sets of
compounds Controlled by Syrrx or any of its Affiliates as of the Effective Date
or during the Research Term.
1.75 "SYRRX INVENTION" shall have the meaning set forth in Section 9.1.
1.76 "SYRRX KNOW-HOW" shall mean Information that (a) Syrrx or any of
its Affiliates Controls on the Effective Date that is reasonably necessary for
the parties' performance under this Agreement, or (b) is conceived or developed
by Syrrx or any of its Affiliates in the course of the Collaboration. Syrrx
Know-How shall include without limitation any part or copy of the foregoing
information and Syrrx's interest in the Joint Know-How. Syrrx Know-How excludes
the [*].
1.77 "SYRRX PATENTS" shall mean all Patents Controlled by Syrrx or any
of its Affiliates (a) that are issued or existing as of the Effective Date and
that claim either inventions the
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Commission.
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practice of which is reasonably necessary for the parties' performance under the
Collaboration or the manufacture, use, sale, offer for sale or import of a
Product, or (b) that claim Syrrx Inventions. Syrrx Patents include without
limitation Syrrx's interest in the Joint Patents.
1.78 "SYRRX PRODUCT" shall mean a pharmaceutical product [*] a compound
in a [*] having [*] against a [*], including all formulations, line extensions
and modes of administration thereof.
1.79 "SYRRX PROGRAM" shall mean the research and development activities
directed toward, and the rights of the parties in, a [*] having [*] against such
[*].
1.80 "SYRRX PROGRAM EXPENSES" shall mean the expenses incurred by Syrrx
or on its behalf that are attributable to Syrrx's independent research or
development of a Syrrx Program, calculated [*] (i.e., including [*] specifically
attributable thereto). Without limiting the generality of the foregoing, "Syrrx
Program Expenses" shall mean amounts [*] involved in the research or development
of a Syrrx Program, and all [*] costs (calculated on an FTE basis at the rate of
US[*] per FTE, subject to the penultimate sentence of this Section 1.80)
incurred by Syrrx in connection with its independent research or development
activities associated with a Syrrx Program. Syrrx Program Expenses shall
include, but are not limited to, the following costs incurred for the research
or development of a Syrrx Program: (a) the costs of [*] from a Syrrx Program or
a Syrrx Product, including its [*] and [*], to achieve product development goals
regarding efficacy, safety, dosing and route of administration; (b) the cost of
studies [*] of a prospective Syrrx Product conducted [*] necessary or desirable
for the purpose of obtaining Regulatory Approval of a Syrrx Product; (c) costs
(and related fees) for [*] for the purpose of submission to a governmental
authority to obtain Regulatory Approval of a Syrrx Product; and (d) [*] for a
Syrrx Product in [*] for purposes of conducting preclinical and clinical studies
necessary to obtain and/or maintain Regulatory Approval of Syrrx Products. FTE
rates shall be adjusted annually to reflect any increases in the Consumer Price
Index for the U.S. In calculating Syrrx Program Expenses, Syrrx shall use
standard activity-based project accounting methods, and such calculation shall
be made using U.S. generally accepted accounting principles, consistently
applied.
1.81 "SYRRX TARGET" shall have the meaning provided in Section 4.6.
1.82 "SYRRX TECHNOLOGY" shall mean the Syrrx Patents and the Syrrx
Know-How.
1.83 "TARGET" shall mean a Proposed Target, Medicinal Chemistry Target,
Shared Target, Cubist Target, Syrrx Target or Independent Target.
1.84 "TERM OF THE AGREEMENT" shall have the meaning set forth in
Section 12.1.
1.85 "THIRD PARTY" shall mean any entity other than Cubist or Syrrx or
an Affiliate of Cubist or Syrrx.
1.86 "THIRD PARTY AGREEMENT" shall have the meaning provided in Section
5.3.
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1.87 "USEFUL CRYSTAL STRUCTURE" shall mean a crystal structure
generated under the Collaboration that, when considered [*] and [*] used in or
resulting from the parties' efforts to generate such crystal structure, is
deemed useful for drug discovery research by the JRC.
1.88 "VALID CLAIM" shall mean (i) an unexpired claim of an issued
patent within Cubist Patents or Syrrx Patents which has not been found to be
unpatentable, invalid or unenforceable by a court or other authority in the
subject country, from which decision no appeal is taken or can be taken; or (ii)
a claim of a pending application within the Cubist Patents or Syrrx Patents,
which application claims a first priority no more than [*] prior to the date
upon which pendency is determined.
2. COLLABORATION GOVERNANCE
2.1 JOINT RESEARCH COMMITTEE. Promptly after the Effective Date, the
parties will form a Joint Research Committee ("JRC") comprised of
[*]representatives of each of Syrrx and Cubist. All decisions of the JRC shall
be [*] PROVIDED, HOWEVER, that, on a compound by compound basis for the Shared
Programs, effective after the date [*], [*] shall have the right to [*] of the
JRC, in its reasonable discretion, on any matter related to development and
commercialization of a [*] including a compound in a [*] with [*] against such
[*], except for those matters requiring [*] to the IND Candidate. For
purposes of clarification, during [*] of any Shared Program, [*] shall have
the right [*] of the JRC regarding such Pre-Clinical Development, except that
[*] shall not have such right to [*] when such [*] result in additional [*] work
by [*]. The representatives of each party collectively shall have [*], and shall
act in good faith and in the best interests of the Collaboration. Attendance by
at least [*]representatives from each Party shall constitute a quorum for
purposes of conducting a JRC meeting. The JRC shall meet at least [*]times per
year during the Research Term, or at such greater frequency as the JRC elects.
Such meetings shall alternate between the principal offices of each party, or at
such other site as mutually agreed to by the Parties, and the chairperson of the
meeting shall be nominated by the party hosting the meeting. The parties shall
agree upon the time of meetings. Within [*] after each meeting, the JRC
chairperson for the meeting will provide the parties with a [*], in reasonable
detail, the status of the [*], and the [*]. Within [*] days after each meeting,
the JRC chairperson for the meeting shall provide the parties with a list of
action items to be addressed prior to the next meeting. A [*] of additional
representatives of a party may attend meetings of the JRC, and either party may
replace any representative on the JRC by providing written notice to the other
party. The JRC shall remain in effect during the Research Term and for a period
of time thereafter during which any Shared Product is in Pre-Clinical
Development.
2.2 JOINT RESEARCH COMMITTEE FUNCTIONS AND POWERS. The JRC shall (a)
encourage and facilitate ongoing cooperation between the parties, (b) [*] and
[*] the [*] and [*] for accomplishing the goal of generating IND Candidates in
the Field, (c) [*] to perform under the Research Plan, (d) monitor progress
under the Research Plan and the parties' diligence in carrying out their
responsibilities thereunder, (e) [*] and [*] for Products, (f) carry out the
other duties and responsibilities described for it in this Agreement, and (g)
provide oversight support for [*] of Shared Products to the extent that the JRC
deems appropriate. The JRC shall also be responsible for developing and
approving an [*] for activities to be performed by the parties pursuant to the
Research Plan for each year of the Research Term (including any renewal or
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extension thereof). In addition, the JRC shall maintain and, on a regular basis,
update and provide to the parties a list or lists of the following: [*].
Notwithstanding the foregoing, on a Shared Program-by-Shared Program basis,
effective on the date, if any, as of which [*] provides [*] with written notice
under Section 4.8 that [*] elects not to continue to perform research or
development activities with respect to any Shared Program, the JRC shall [*]
with respect to such Shared Program, and the conduct of such Shared Program,
including all development and commercialization activities, shall be [*] [*].
2.3 INFORMATION AND REPORTS. Except as otherwise provided in this
Agreement, the parties will make available and disclose to one another all
results of the work conducted pursuant to the Research Plan prior to and in
preparation for JRC meetings, in the form and format to be designated by the
JRC.
2.4 JRC DISPUTE RESOLUTION. If the JRC is unable to decide or resolve
an issue unanimously, the issue shall be referred to the [*]. Such [*] will
discuss such issue promptly thereafter and shall negotiate in good faith to
resolve such issue. If they cannot resolve the issue within [*] of commencing
such negotiations, then they shall propose and consider in good faith additional
dispute resolution mechanisms.
3. CONDUCT OF THE COLLABORATION
3.1 OBJECTIVES. The parties hereby agree to collaborate [*] in
accordance with the Research Plan, the Pre-Clinical Development Plan, and with
the terms of this Agreement with the goal of generating IND Candidates in the
Field. Pursuant to the Collaboration, the parties will collaborate in: (a)
developing [*] in bacterial pathogens according to [*], (b) performing [*]
and [*] with respect to Proposed Targets and Medicinal Chemistry Targets, (c)
performing [*] with respect to Shared Targets and Active Compounds with Activity
against such Shared Targets, (d) [*] Active Compounds with respect to such
Targets and [*] therefrom, (e) [*] from Compound Sets suitable for development
in the Field as Products, and (f) conducting such other activities as are [*].
The term of the collaborative Research activities of the parties shall commence
on the Effective Date and continue until expiration of the Research Term, unless
earlier terminated pursuant to Section 12.2, 12.3 or 15.9 or extended by mutual
agreement of the parties.
3.2 TECHNOLOGY TRANSFER. Commencing promptly after the Effective Date
and from time to time thereafter, Syrrx will disclose to Cubist such of the
Syrrx Technology as is [*] to enable Cubist to perform its Collaboration
activities hereunder in accordance with the Research Plan and the Pre-Clinical
Development Plan, and otherwise to exercise fully the licenses granted to Cubist
hereunder. Commencing promptly after the Effective Date and from time to time
thereafter, Cubist shall disclose to Syrrx such of the Cubist Technology as is
[*] to enable Syrrx to perform its Collaboration activities hereunder in
accordance with the Research Plan and the Pre-Clinical Development Plan, and
otherwise to exercise fully the licenses granted to Syrrx hereunder. The JRC
shall monitor and oversee the parties' exchange of information pursuant to this
Section 3.2. During the Collaboration, each party will provide the other party
with reasonable technical assistance relating to the use of such party's
technology, solely to the extent necessary to enable such other party to
practice the providing party's technology to the extent permitted under the
license granted to such other party herein.
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3.3 PERFORMANCE STANDARDS. In conformity with standard pharmaceutical
and biotechnology industry practices and the terms and conditions of this
Agreement, each party shall prepare and maintain, or shall cause to be prepared
and maintained, complete and accurate written records, signed and witnessed
notebooks, accounts, notes, reports and data with respect to activities
conducted pursuant to the Research Plan and Pre-Clinical Development Plan and,
upon the other party's reasonable written request, shall send legible copies of
the aforesaid to the other party. Each party shall maintain laboratories,
offices and all other facilities reasonably necessary to carry out the
activities to be performed by such party pursuant to the Research Plan and
Pre-Clinical Development Plan. Each party shall conduct its activities under the
Collaboration in good scientific manner, and in compliance in all material
respects with the requirements of applicable laws and regulations and with
applicable GLPs and GMPs, to attempt to achieve the goals and objectives of the
Collaboration efficiently and expeditiously. Upon reasonable advance notice,
each party agrees to make its employees and non-employee consultants reasonably
available at their respective places of employment to consult with the other
party on issues arising during the Term of the Agreement and in connection with
any request from any regulatory agency, including, without limitation,
regulatory, scientific, technical and clinical testing issues relating to the
Collaboration or Products.
3.4 RESEARCH COMMITMENT. During the Research Term, the parties shall
diligently conduct their activities in accordance with the Research Plan, [*].
Without limiting the generality of the foregoing, it is contemplated that [*]
with respect to Shared Programs prior to commencement of [*] for an Active
Compound shall be [*] shall be conducted by [*], subject to [*] [*] [*]
pursuant to Section 2.1, and that [*] and [*] with respect to Shared Programs
will be conducted [*].
3.5 RESEARCH AND DEVELOPMENT REPORTS FOR SHARED PROGRAMS. Each party
each shall keep the other party fully informed as to all discoveries and
technical developments (including, without limitation, any Inventions) made in
the course of performing activities hereunder or under the Research Plan or
Pre-Clinical Development Plan with respect to Shared Programs. In particular,
Syrrx and Cubist each shall prepare, and distribute to all members of the JRC,
no later than [*] business days prior to the next JRC meeting, a reasonably
detailed written summary report regarding any Shared Programs, in such form and
format and setting forth such information regarding the results and progress of
performance of the Research Plan or the Pre-Clinical Development Plan as
determined from time to time by the JRC. Nothing herein shall require either
party to disclose information received from a Third Party which remains subject
to bona fide confidentiality obligations to such Third Party.
3.6 SUBCONTRACTS. Cubist and Syrrx may perform some of their
obligations under the Research Plan through one or more subcontractors provided
that (i) [*] has given permission therefor, (ii) none of the rights of either
party hereunder are diminished or otherwise adversely affected as a result of
such subcontracting, (iii) the subcontractor undertakes in writing obligations
of confidentiality and non-use regarding Confidential Information which are
substantially the same as those undertaken by the parties pursuant to Article 11
hereof, and (iv) any Inventions made by such subcontractor and all related
Patents are handled in a manner consistent with the intent of Article 9. In the
event either party performs one or more of its obligations under the Research
Plan through a subcontractor, then such party will at all times be
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responsible for the performance and payment of such subcontractor. This Section
3.6(i) shall not apply to the use by either party of consultants.
3.7 MATERIALS TRANSFER. In order to facilitate the Research, either
party shall provide to the other party certain biological materials or chemical
compounds including, but not limited to, compounds within the [*] or the [*],
Gene Targets, screens, receptors and reagents as required under the Research
Plan that are Controlled by the supplying party (collectively, "Materials") for
use by the other party in furtherance of the Research. Except as otherwise
provided under this Agreement, the receiving party shall have no rights in any
Materials delivered to it by the other party. The receiving party shall use such
Materials only in furtherance of the Research and solely under the control of
the receiving party, and such Materials shall not be used or delivered to or for
the benefit of any Third Party without the prior written consent of the
supplying party, nor shall such Materials be used in research or testing
involving human subjects except as permitted by applicable law. The Materials
supplied under this Section 3.7 must be used with prudence and appropriate
caution in any experimental work, because not all of their characteristics may
be known. THE MATERIALS ARE PROVIDED "AS IS" AND WITHOUT ANY REPRESENTATION OR
WARRANTY, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION ANY IMPLIED WARRANTY
OF MERCHANTABILITY OR OF FITNESS FOR ANY PARTICULAR PURPOSE OR ANY WARRANTY THAT
THE USE OF THE MATERIALS WILL NOT INFRINGE OR VIOLATE ANY PATENT OR OTHER
PROPRIETARY RIGHTS OF ANY THIRD PARTY.
4. DISCOVERY AND PRE-CLINICAL RESEARCH
4.1 TARGET SELECTION AND PRIORITIZATION.
(a) Within [*] following the Effective Date, Cubist shall provide
to an independent Third Party who is acceptable to [*] (the "THIRD PARTY
REVIEWER") a list of up to [*]Gene Targets as to which Cubist has identified
[*]or more compounds with [*], together with the structures of such
compounds. Such Gene Targets (collectively, the "CUBIST PREFERRED TARGETS")
shall be included in the Collaboration as Proposed Targets.
(b) Cubist shall also provide to the Third Party Reviewer up to
[*] additional Gene Targets that are believed to [*], together with a [*] [*]
Orthologs of each such listed Gene Target that are derived from other distinct
bacterial species (such selected Orthologs, "DESIGNATED ORTHOLOGS"), to be used
in the Collaboration (such Gene Targets and Designated Orthologs, collectively,
the "CUBIST PROPOSED TARGETS"). Also within such [*] period, Syrrx shall provide
to the Third Party Reviewer a list [*] Gene Targets that are believed [*]
("SYRRX EXCLUDED TARGETS"). Notwithstanding the foregoing, if any [*] Target is
also a [*], then such Gene Target shall be deemed a [*] Target [*] in the
Collaboration.
(c) Promptly after receiving such lists, the Third Party Reviewer
shall notify the parties which of the Cubist Proposed Targets are [*] nor
Orthologs of the [*], and are therefore, together with the Cubist Preferred
Targets, available to the Collaboration (such Cubist [*] that are listed [*],
the "SELECTED GENE TARGETS" and such Selected [*] together with Cubist's listed
[*], and the [*], collectively, the "PROPOSED TARGETS"). If the Third Party
Reviewer notifies the parties that fewer than [*] Selected Gene Targets are
available to the Collaboration,
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then Cubist may submit to the Third Party Reviewer a number of additional Cubist
Proposed Targets equal to [*] less the number of Selected Gene Targets that the
Third Party Reviewer determines are available to the Collaboration, plus
Designated Orthologs of such number of Selected Gene Targets. The Third Party
Reviewer shall promptly notify the parties which of such additional Cubist
Proposed Targets are [*] or Orthologs thereof and are therefore available to the
Collaboration. Cubist shall then select a number of such additional available
Cubist Proposed Targets it desires to include in the Collaboration such that [*]
Selected Gene Targets are designated, along with up to [*] Designated Orthologs
of each Selected Gene Target.
(d) Concurrently with such notification to Syrrx of the
finalization of a list of [*] Proposed Targets, Cubist shall transfer to Syrrx,
to the extent Controlled by Cubist, such Proposed Targets [*] relevant to each
Proposed Target, compounds demonstrated or believed to have Activity against
such Proposed Targets, and such other Materials and Information with respect to
such Proposed Targets as may be necessary or useful for purposes of the
Collaboration.
4.2 CRYSTALLIZATION OF PROPOSED TARGETS. Syrrx shall identify and
provide Useful Crystal Structures for use in Cubist Programs and Shared
Programs. Syrrx shall subject each Proposed Target to Syrrx's [*] approach to
[*], as more fully described in the Research Plan, to identify Proposed
Targets that are likely to be amenable to crystallization. The parties
acknowledge the likelihood that a significant number, or all, of such
Proposed Targets may not yield suitable proteins, protein crystals or protein
structures in [*]. [*]shall review the data resulting from such [*] approach
and shall select up to [*] Proposed Targets (i.e., up to [*] of any
combination of Cubist [*], [*], [*] designated pursuant to Section 4.1), or
such greater number of Proposed Targets as [*], in its sole discretion, may
agree, to be subjected to Syrrx's [*]approach to protein crystallization, as
more fully described in the Research Plan. The parties desire to use [*]
modes to generate [*] of Useful Crystal Structures, with [*] consisting of a
[*] Target and a Designated Ortholog thereof (i.e., a total of [*] Useful
Crystal Structures). To the extent that [*] of a Proposed Target is used to
generate proteins, crystals or structures that [*] deems suitable for the
Collaboration, Syrrx shall transfer such [*] to Cubist for [*] analysis in
accordance with the Research Plan.
4.3 BIOLOGICAL ASSAYS; COMPOUND LIBRARIES.
(a) Cubist shall be responsible for developing (a) biological
assays for the [*], (b) assays to determine whether [*] and (c) assays to
determine if [*] (collectively, "CUBIST ASSAYS"), in each case as more fully
defined by [*].
(b) Cubist shall provide compounds from [*] and Syrrx shall
provide compounds from [*] in such numbers and amounts, and at such time, as
required by the Research Plan. Upon designation of a Compound from the [*] or
the [*] as an Active Compound, Cubist or Syrrx, respectively, shall [*] for use
within the Field, until such time as the Target against which such Active
Compound has Activity [*].
4.4 SCREENING AND LEAD GENERATION. The parties shall conduct additional
activities as directed by the JRC and as provided in the Research Plan to
advance Proposed Targets and Active Compounds into Medicinal Chemistry Programs.
Such activities may include [*], [*]
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including without limitation [*] for the Selected Gene Targets and Designated
Orthologs, [*] and [*], and other activities deemed appropriate by [*].
Proposed Targets and Active Compounds shall be advanced into Medicinal
Chemistry Programs upon meeting the criteria set forth in Section 4.5.
4.5 ADVANCEMENT TO MEDICINAL CHEMISTRY PROGRAM. A Proposed Target and
Active Compound(s) with Activity against such Proposed Target shall be advanced
into a Medicinal Chemistry Program either when [*], based on available data, to
do so or when the [*], based on available data that each of the following
criteria have been met, whichever is earlier:
(a) the structure(s) generated pursuant to Sections 4.2 and 4.4
for such Proposed Target and Active Compound are [*]:
(b) an Active Compound has [*];
(c) an Active Compound(s) has Activity at [*];
(d) the [*] is less than [*];
(e) the [*] which such Active Compound has Activity is [*];
(f) the Active Compound(s) is at least [*];
(g) Active Compounds with Activity against the Proposed Target are
[*];
(h) the Active Compound exhibits [*]; and
(i) the JRC is not aware of any [*] which would prevent the
parties from developing and marketing such Active Compound or cause the
party(ies) to [*] connection with the development or marketing of such Active
Compound.
Upon [*] making such determination, the Proposed Target and Active
Compounds demonstrating Activity against such targets in the Cubist Assays shall
become a Medicinal Chemistry Target and Medicinal Chemistry Lead Compounds,
respectively.
4.6 ALLOCATION OF MEDICINAL CHEMISTRY TARGETS. The first [*] Medicinal
Chemistry Targets to be designated hereunder shall be deemed "SHARED TARGETS";
the [*] Medicinal Chemistry Targets to be designated hereunder shall be deemed
"SYRRX TARGETS"; and the [*] and [*] Medicinal Chemistry Targets to be
designated hereunder shall be deemed "CUBIST TARGETS." If more than [*]
Medicinal Chemistry Targets are designated hereunder, then the allocation of
such Medicinal Chemistry Targets between Syrrx and Cubist shall continue as set
forth above (i.e., [*] Syrrx Target followed by [*] Cubist Targets). Syrrx shall
work [*] in developing and commercializing Syrrx Products pursuant to Syrrx
Programs, and shall have [*] for expenses and decisions relating to such Syrrx
Products and Syrrx Programs, subject to Section 5. Cubist shall work [*] [*] in
developing and commercializing Cubist Products pursuant to Cubist Programs, and
shall have [*] for expenses and decisions relating to such Cubist Products and
Cubist Programs. Any Proposed Target that has not been designated a [*] prior to
the expiration of the Research Term, and any [*] that [*] does not [*] as a
Medicinal Chemistry Target or has not
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been subject to [*] under this Article 4 as determined by the JRC for at least
the preceding [*], shall upon such designation, expiration or determination be
deemed an "INDEPENDENT TARGET."
4.7 ADDITIONAL ACTIVITIES. If Cubist desires Syrrx to perform [*] under
Cubist Programs, or if Syrrx desires Cubist to perform [*] under Syrrx Programs,
the parties shall discuss in good faith the terms under which such work or
analysis may be provided.
4.8 CONDUCT OF MEDICINAL CHEMISTRY PROGRAMS FOR SHARED PROGRAMS.
Following designation of a Medicinal Chemistry Target that is deemed a Shared
Target, the parties shall conduct such additional activities under the Research
Plan as are deemed appropriate [*] with the goal of obtaining sufficient data
regarding such Shared Target(s) and the Medicinal Chemistry Lead Compounds to
determine which such compounds or Compound Sets having Activity against such
Shared Target shall become Nominated IND Candidates; PROVIDED, HOWEVER, that
Syrrx shall have the option, exercisable by written notice to Cubist, [*] with
respect to any such Shared Program following its designation as such, in which
event the royalties payable by Cubist with respect to Shared Products from such
Shared Program shall be [*], and the role of the JRC shall [*] Shared Program as
set forth in Section 2.2.
4.9 DESIGNATION OF IND CANDIDATES. The JRC shall review data resulting
from Research on Nominated IND Candidates and determine which such candidates
will be designated as IND Candidates.
4.10 PRE-CLINICAL DEVELOPMENT.
(a) Cubist shall conduct GLP toxicology studies on IND Candidates
with respect to Shared Targets, and perform activities related to GLP
manufacture of IND Candidates, and other such activities as directed by the JRC
in accordance with the Pre-Clinical Development Plan to obtain data sufficient
to enable Cubist to decide whether to file an IND thereon. Cubist shall be
solely responsible for further development and commercialization of Shared
Products resulting from all such IND Candidates for which Cubist files an IND
with respect to Shared Targets, subject to the terms and conditions of this
Agreement.
(b) Syrrx shall be solely responsible for all [*] activities and
expenses related to Syrrx Programs, and Cubist shall be solely responsible for
all [*] activities and expenses related to Cubist Programs. Each party may, in
its discretion and at its expense, pursue Pre-Clinical Development related to
[*] either alone or with a Third Party.
4.11 EXCHANGE OF INFORMATION FOLLOWING EXPIRATION OF THE RESEARCH TERM.
Following expiration of the Research Term, each party will keep the other party
appropriately informed about such party's clinical development and
commercialization efforts with respect to any Program as to which such party has
a license hereunder after the expiration of the Research Term. Without limiting
the generality of the foregoing, each party shall provide the other party with
notice of significant developments, Regulatory Approvals and commercialization
activities of Products it is developing pursuant to this Agreement.
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4.12 RESTRICTED ACTIVITIES.
(a) During the Research Term, Syrrx shall not [*].
(b) Neither party shall practice the technology licensed to it by
the other party pursuant to Section 6.1, either outside the scope of the license
set forth in such Section or in any manner inconsistent with this Agreement.
4.13 ALLOCATION OF ACTIVE COMPOUNDS. [*] shall determine which Active
Compounds and compounds in the related Compound Set have primary Activity
against a Shared Target, Cubist Target, Syrrx Target or Independent Target and
accordingly, whether such Active Compound and related Compound Set shall be
deemed to be included initially in a Shared Program, Cubist Program, Syrrx
Program or Independent Program. A given Active Compound and its related Compound
Set shall be allocated [*] of the foregoing categories of Programs (i.e., Shared
Programs, Cubist Programs or Syrrx Programs), and Compound Sets including such
Active Compounds shall be developed [*]. For example, an Active Compound and its
related Compound Set [*] may be developed pursuant to any [*] but may not be
developed pursuant to a [*].
4.14 MEDICINAL CHEMISTRY FOR CUBIST PROGRAMS, SYRRX PROGRAMS AND
INDEPENDENT PROGRAMS. Cubist may conduct, alone or with a Third Party, medicinal
chemistry on Active Compounds with Activity against Cubist Targets or
Independent Targets to generate Compound Sets with Activity against such
Targets, at [*]. Syrrx may conduct, alone or with a Third Party, medicinal
chemistry on Active Compounds with Activity against Syrrx Targets or Independent
Targets to generate Compound Sets with Activity against such Targets, [*].
5. BUY-IN OPTION; RIGHT OF FIRST NEGOTIATION; OPTION TO DISCONTINUE
PROGRAMS OR SUPPORT
5.1 BUY-IN OPTION.
(a) Cubist shall have the exclusive option, exercisable within
sixty (60) days after Cubist's receipt of (a) notice from Syrrx of the
occurrence of each of the following events with respect to any Syrrx Program
other than a Program that [*] pursuant to Section [*] (the "Trigger Event"), and
(b) a written statement, executed by an officer of Syrrx, setting forth the [*]
with respect to such Syrrx Program from the date the Program was designated a
Syrrx Program to the date of the Buy-In Notice (each such period of time, a
"Buy-In Period"), to cause such [*] (each, a "Buy-In Option").
EVENT RISK [*]
[*] [*]
[*] [*]
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(b) Should Cubist desire to exercise its Buy-In Option with
respect to any Syrrx Program with respect to which it receives a notice under
Section 5.1(a), it shall deliver written notice thereof (a "BUY-IN NOTICE") to
Syrrx prior to the expiration of the applicable Buy-In Period, and, within [*]
of such Buy-In Notice, pay to Syrrx an amount equal to the [*] (a) such [*] and
(b) the applicable risk [*] set forth in the table above based upon the Trigger
Event prompting Syrrx to provide a notice as to which Cubist has exercised its
Buy-In Option.
(c) Upon Syrrx's receipt of such payment, such Syrrx Program shall
be [*] and Syrrx Products from such Syrrx Program shall be [*] for purposes of
this Agreement (including, without limitation, for purposes of Article 7).
Within thirty (30) days after its receipt of such payment, Syrrx shall complete
all [*] Technology and Information, including, without limitation, [*] all INDs
filed with respect to such Syrrx Program (and all foreign equivalents of such
INDs and NDAs), and all drug dossiers and master files with respect thereto,
Materials, reagents, and intellectual property rights necessary [*] such Syrrx
Program and Syrrx Products to a [*]. Syrrx agrees to use its commercially
reasonable efforts to effect the necessary [*], and shall provide reasonable
assistance to Cubist in [*] upon Cubist's reasonable request.
(d) Syrrx shall calculate and maintain detailed records of Syrrx
Program Expenses on a Syrrx Program-by-Syrrx Program basis. Notwithstanding the
foregoing, in the event that Cubist desires to have a mutually acceptable
independent Third Party certified public accountant perform an audit on the
Syrrx Program Expenses records, then Cubist shall so notify Syrrx within 30 days
of its receipt of Syrrx's notice under Section 5.1(a). Cubist shall solely bear
all expenses of any audit performed pursuant to this Section 5.1(d). Syrrx shall
make all necessary records related to such Syrrx Program Expenses available to
said accountant such that such audit can be concluded within the sixty (60) day
Buy- In Period.
(e) Except as otherwise expressly set forth in this Section 5.1,
all payments to Syrrx hereunder shall be governed by the provisions of Article
8.
5.2 CUBIST RIGHT OF FIRST [*]. In the event that, at any time during
the Term of the Agreement, Syrrx elects to offer to one or more Third Parties
the terms of sale, license or other disposition or transfer of rights related to
the development and/or commercialization of a Syrrx Program or Syrrx Product
(either solely or jointly with Syrrx), then Syrrx shall provide Cubist with
written notice thereof and hereby grants Cubist the [*] with Syrrx for such
right in accordance with this Section 5.2. With respect to each such Syrrx
Program for which Syrrx may desire to sell, license, transfer or otherwise
dispose of rights pursuant to this Section 5.2, Cubist shall, within [*] after
receipt of such notice, notify Syrrx in writing either that (a) Cubist is
interested in negotiating for such rights or (b) Cubist has no interest and
therefore rejects such negotiation opportunity at such time. If Cubist notifies
Syrrx within [*] that Cubist desires to negotiate with Syrrx for such rights,
the parties shall negotiate in good faith for up to [*] from such notification
by Cubist regarding the terms pursuant to which Syrrx would sell, license,
transfer or dispose of such rights to Cubist, which terms would be set forth in
a separate agreement between the parties and which activities would occur
outside the scope of this Agreement. Failure by Cubist to give notice of its
interest or lack of interest in negotiating for such rights with respect to a
product within [*] after receipt of the written notice from Syrrx as described
in the first sentence of this Section 5.2 shall be deemed to constitute a waiver
by Cubist of its [*] for such Syrrx Program and related Syrrx Products, subject
to the proviso set
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<PAGE>
forth in the last sentence of this Section 5.2. If Cubist waives or otherwise
fails to exercise its [*] as provided in this Section 5.2, or if the parties
fail to agree within such [*] negotiation period, then Syrrx shall be free to
offer such opportunity to a Third Party and enter into an agreement with a Third
Party with respect to the sale, license, transfer or other disposition of rights
related to the development and/or commercialization of such Syrrx Program and
related Syrrx Products, and Cubist shall have no further rights with respect
thereto. Cubist's rights under this Section 5.2 shall apply on a Syrrx
Program-by-Syrrx Program basis, and shall apply [*]; provided that if Syrrx [*]
a [*] in the sale, license, transfer or other disposition of rights related to
such Syrrx Program for a period longer than [*], then Cubist's rights hereunder
shall [*] to such Syrrx Program and related Syrrx Products.
5.3 DISCONTINUATION OF SHARED PROGRAMS.
(a) In the event that [*] approves the discontinuation by the
parties hereunder of research and development of any Shared Program [*] for a
Shared Product from such Shared Program (each, an "EARLY DISCONTINUED PROGRAM"),
then Cubist shall have the [*], within [*] after such [*], (a) to cause such
Early Discontinued Program to become a Cubist Program hereunder, exercisable by
written notice to Syrrx, or (b) to negotiate and enter into a Third Party
Agreement with respect to such Early Discontinued Program. For purposes of this
Section 5.3, "THIRD PARTY AGREEMENT" shall mean a definitive written agreement
with a Third Party under which Cubist and Syrrx would grant appropriate licenses
under the Cubist Technology and Syrrx Technology to develop and commercialize
products based on such Early Discontinued Program to such Third Party. All
consideration payable by any Third Party under a Third Party Agreement shall be
first allocated to reimburse milestone payments made to Syrrx, with respect to
such Early Discontinued Program, with the remainder of such consideration shared
by Cubist and Syrrx such that Cubist receives [*] of such consideration and
Syrrx receive [*] of such consideration. Syrrx shall provide reasonable
cooperation to Cubist in the negotiation of any such Third Party Agreement and,
upon Cubist's request, shall execute such Third Party Agreement, provided Cubist
also executes such Third Party Agreement.
(b) In the event that [*], as applicable, approves the
discontinuation of a Shared Program during [*] (a "LATER DISCONTINUED PROGRAM"),
then Cubist shall promptly provide to Syrrx a written statement, executed by an
officer of Cubist, setting forth all [*] Expenses incurred by Cubist with
respect thereto, and Syrrx shall have the [*], within [*] after such [*], to
cause such Later Discontinued Program to become a Syrrx Program hereunder. Such
option shall be exercisable by written notice to Cubist and by payment to Cubist
of an amount equal to Cubist's [*] paid to Syrrx, in each case with respect
to such Shared Program. If Syrrx does not exercise its option hereunder, Cubist
may negotiate and enter into a Third Party Agreement with respect to such Later
Discontinued Program. All consideration payable by any Third Party under a Third
Party Agreement shall be first allocated to reimburse Cubist's [*] paid to Syrrx
with respect to such Later Discontinued Program, with the remainder shared by
Syrrx and Cubist such that Syrrx receives [*] of such consideration and Cubist
receives [*] of such consideration. Syrrx shall provide reasonable cooperation
to Cubist in the negotiation of any such Third Party Agreement, and upon
Cubist's request shall execute such Third Party Agreement, provided Cubist also
executes such Third Party Agreement.
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(c) In the event that, within [*] following the date upon which
Cubist becomes entitled to negotiate and enter into a Third Party Agreement with
respect to an Early Discontinued Program under Section 5.3(a), Cubist has not
entered into such Third Party Agreement, then, unless Cubist gives written
notice to Syrrx prior to the expiration of such [*] period that Cubist has
elected to cause such Early Discontinued Program to become a Cubist Program
hereunder, upon the expiration of such [*] period, such Early Discontinued
Program shall become an [*] for purposes of this Agreement. In the event that,
within [*] following the date upon which Cubist becomes entitled to negotiate
and enter into a Third Party Agreement with respect to a Later Discontinued
Program under Section 5.3(b), Cubist has not entered into such Third Party
Agreement, then upon the expiration of such [*] period, such Later Discontinued
Program shall become an [*] for purposes of this Agreement, unless otherwise
agreed in writing by the parties.
6. LICENSE GRANTS
6.1 LICENSE GRANTS.
(a) GRANT BY SYRRX. Subject to the terms and conditions of this
Agreement, Syrrx hereby grants to Cubist:
(i) a worldwide, non-exclusive, royalty-free license, with
the right to sublicense as permitted under Section 3.6, under the Syrrx
Technology solely to perform Research in the Field with respect to Proposed
Targets, Medicinal Chemistry Programs, Shared Programs and Cubist Programs
during the Research Term;
(ii) a worldwide, exclusive, royalty-bearing license, with
the right to sublicense, under the Syrrx Technology to perform development
activities for Shared Programs after designation of IND Candidates for such
Shared Programs, to develop Cubist Products, and to make, have made, use,
sell, have sold, offer for sale and import Shared Products and Cubist
Products in the Field; and
(iii) a worldwide, non-exclusive, royalty-bearing license,
with the right to sublicense, under the Syrrx Technology to develop, make,
have made, use, sell, have sold, offer for sale and import Independent
Products in the Field;
PROVIDED, HOWEVER, that no [*] by Syrrx shall be included in the Syrrx
Technology licensed to Cubist under this Section 6.1(a) unless and until such
[*] deemed by the JRC to be [*].
(b) GRANT BY CUBIST. Subject to the terms and conditions of this
Agreement, Cubist hereby grants to Syrrx:
(i) a worldwide, non-exclusive, royalty-free license, with
the right to sublicense as permitted under Section 3.6, under the Cubist
Technology solely to perform Research in the Field with respect to Proposed
Targets, Medicinal Chemistry Programs, Shared Programs and Syrrx Programs during
the Research Term;
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<PAGE>
(ii) a worldwide, exclusive, royalty-bearing license, with
the right to sublicense, under the Cubist Technology to develop, make, have
made, use, sell, have sold, offer for sale and import Syrrx Products in the
Field; and
(iii) a worldwide, non-exclusive, royalty-bearing license,
with the right to sublicense, under the Cubist Technology to develop, make, have
made, use, sell, have sold, offer for sale and import Independent Products in
the Field.
6.2 DILIGENCE. Cubist and Syrrx shall use commercially reasonable and
diligent efforts to pursue the research, discovery, development and
commercialization of at least one Shared Program and Shared Product(s) derived
therefrom in at [*]. As used herein, "commercially reasonable and diligent
efforts" shall mean those efforts, consistent with the exercise of prudent
scientific and business judgment, as applied to development and
commercialization activities conducted with respect to other products of similar
economic potential, risk and market size. Failure by Cubist to use such
commercially reasonable and diligent efforts to pursue the research, discovery,
development and commercialization of at least one Shared Program and Shared
Product(s) derived therefrom in at [*] shall entitle Syrrx to exercise its right
to terminate under Section 12.2.
7. FEES AND PAYMENTS
7.1 EQUITY INVESTMENT. On the terms and subject to the conditions set
forth in the Series C Preferred Stock Purchase Agreement attached hereto as
Exhibit A (the "STOCK PURCHASE AGREEMENT"), Cubist shall purchase [*] shares of
Syrrx's Series C Preferred Stock (the "Shares") at a purchase price per share of
[*] in an additional closing of the Syrrx Series C Preferred Stock financing. In
connection therewith, as of the Effective Date, Cubist shall become a party to
the Stock Purchase Agreement and the Investor Rights Agreement between Syrrx and
its existing Series C Preferred Stock investors by executing counterpart
signature pages thereto and delivering the same to Syrrx.
7.2 RESEARCH MILESTONE PAYMENTS.
Cubist shall pay to Syrrx the milestone payments set forth in Table 1
below within [*] following notification of the achievement of the milestone
events set forth below:
Milestone Events:
(i) agreement by [*] that Syrrx has [*] of a [*], as well
as a [*] a [*], where such [*] are [*], provided that
(A) an Active Compound [*]; and
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<PAGE>
(B) the [*] has been validated in accordance with the
Research Plan; and
(C) [*] has determined in good faith that the data
resulting from such [*] effort warrants continued
investigation by the Collaboration.
(ii) agreement by the JRC that Syrrx has [*], the first of
which is a [*] with Activity against such [*] and the second
of which is a [*] of the [*] where such [*] and such [*] are
from [*], provided that:
(A) the Active Compound that is [*]; and
(B) the [*] validated in accordance with the Research
Plan; and
(C) [*] has determined in good faith that the data
resulting from such [*] warrants continued investigation
by the Collaboration.
Table 1.
------------------------------------------------------------------------------ -------------------------------
MILESTONE EVENT (IN ANY ORDER) MILESTONE PAYMENT
------------------------------------------------------------------------------ -------------------------------
(a) The [*] by the JRC that milestone (i) has been met US[*]
------------------------------------------------------------------------------ -------------------------------
(b) The [*] by the JRC that milestone (i) has been met US[*]
------------------------------------------------------------------------------ -------------------------------
(c) The [*] by the JRC that milestone (ii) has been met US[*]
------------------------------------------------------------------------------ -------------------------------
(d) The [*] by the JRC that milestone (ii) has been met US[*]
------------------------------------------------------------------------------ -------------------------------
(e) The [*] by the JRC that milestone (ii) has been met US[*]
------------------------------------------------------------------------------ -------------------------------
(f) The [*] by the JRC that milestone (ii) has been met US[*]
------------------------------------------------------------------------------ -------------------------------
TOTAL OF ALL POSSIBLE PAYMENTS UNDER SECTION 7.2 US[*]
------------------------------------------------------------------------------ -------------------------------
PROVIDED, HOWEVER, that, prior to such time as milestone (b) above has been
paid, if a [*] provided to Cubist under Section 7.2 satisfies the criteria of
both Section 7.2(i) and Section 7.2(ii), only milestone (a) or (b), as
applicable, shall be payable by Cubist for such [*]; and PROVIDED, FURTHER,
that following such time as milestone (b) above has been paid, a [*] that
satisfies the criteria of both Section 7.2(i) and Section 7.2(ii) shall
trigger only the milestone payment for the applicable milestone set forth in
(c) through (f) above.
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7.3 MEDICINAL CHEMISTRY MILESTONE PAYMENTS
Cubist shall pay to Syrrx a total aggregate of [*] in Medicinal
Chemistry milestone payments as set forth in Table A, B or C below, within [*]
days following notification of the achievement of the relevant milestones.
[*].
Milestone Events:
(i) Agreement by [*] that Syrrx has [*] (independent of the
milestone events described in Sections 7.2(i) and (ii)), each
[*] of a [*] and a structure of a [*], provided, however,
that Syrrx has [*] which have an [*] to at least [*] of such
Useful Crystal Structures.
(ii) Agreement by the JRC that Syrrx has [*], each consisting
of a [*] with an [*], provided that the Selected Gene Target
and the Designated Ortholog are from [*].
(iii) Designation of a Medicinal Chemistry Program by the
JRC.
---------------------------------------------------------- ---------------------------------
Table A. MILESTONE EVENT (IN ANY ORDER) MILESTONE PAYMENT
---------------------------------------------------------- ---------------------------------
The [*] of (iii) US[*]
---------------------------------------------------------- ---------------------------------
The [*] of (iii) US[*]
---------------------------------------------------------- ---------------------------------
TOTAL AMOUNT POSSIBLE UNDER SECTION 7.3: US[*]
---------------------------------------------------------- ---------------------------------
OR
---------------------------------------------------------- ---------------------------------
Table B. MILESTONE EVENT (IN ANY ORDER) MILESTONE PAYMENT
---------------------------------------------------------- ---------------------------------
The [*] of (iii) US[*]
---------------------------------------------------------- ---------------------------------
The [*] of (ii) US[*]
---------------------------------------------------------- ---------------------------------
TOTAL AMOUNT POSSIBLE UNDER SECTION 7.3: US[*]
---------------------------------------------------------- ---------------------------------
OR
---------------------------------------------------------- ---------------------------------
Table C. MILESTONE EVENT (IN ANY ORDER) MILESTONE PAYMENT
---------------------------------------------------------- ---------------------------------
The [*] of (i) US[*]
---------------------------------------------------------- ---------------------------------
The [*] of (iii) US[*]
---------------------------------------------------------- ---------------------------------
TOTAL AMOUNT POSSIBLE UNDER SECTION 7.3: US[*]
---------------------------------------------------------- ---------------------------------
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7.4 CLINICAL/REGULATORY MILESTONES FOR SHARED PROGRAMS. Within [*]
following the first occurrence of each of the events set forth below with
respect to each Shared Program, Cubist shall pay to Syrrx the milestone payment
set forth below:
--------------------------------------------------------------------- --------------------------------------
MILESTONE EVENT MILESTONE PAYMENT
--------------------------------------------------------------------- --------------------------------------
[*] US[*]
--------------------------------------------------------------------- --------------------------------------
[*] US[*]
--------------------------------------------------------------------- --------------------------------------
[*] US[*]
--------------------------------------------------------------------- --------------------------------------
[*] US[*]
--------------------------------------------------------------------- --------------------------------------
[*] US[*]
--------------------------------------------------------------------- --------------------------------------
Each of the foregoing milestone payments shall be payable once per
Shared Program, and on a Shared Program-by-Shared Program basis.
7.5 CLINICAL/REGULATORY MILESTONES FOR CUBIST PROGRAMS. Within [*] following the
first occurrence of each of the events set forth below with respect to each
Cubist Program, Cubist shall pay to Syrrx the milestone payments set forth
below:
--------------------------------------------------------------------------------- ------------------------------------
MILESTONE EVENT MILESTONE PAYMENT
--------------------------------------------------------------------------------- ------------------------------------
[*] US[*]
--------------------------------------------------------------------------------- ------------------------------------
[*] US[*]
--------------------------------------------------------------------------------- ------------------------------------
[*] US[*]
--------------------------------------------------------------------------------- ------------------------------------
[*] US[*]
--------------------------------------------------------------------------------- ------------------------------------
[*] US[*]
--------------------------------------------------------------------------------- ------------------------------------
Each of the foregoing milestone payments shall be payable once per
Cubist Program, and on a Cubist Program-by-Cubist Program basis.
7.6 CLINICAL/REGULATORY MILESTONES FOR SYRRX PROGRAMS. Within [*]
following the first occurrence of each of the events set forth below with
respect to each Syrrx Program, Syrrx shall pay to Cubist the milestone payments
set forth below:
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<PAGE>
--------------------------------------------------------------------------------- ------------------------------------
MILESTONE EVENT MILESTONE PAYMENT
--------------------------------------------------------------------------------- ------------------------------------
[*] US[*]
--------------------------------------------------------------------------------- ------------------------------------
[*] US[*]
--------------------------------------------------------------------------------- ------------------------------------
[*] US[*]
--------------------------------------------------------------------------------- ------------------------------------
[*] US[*]
--------------------------------------------------------------------------------- ------------------------------------
[*] US[*]
--------------------------------------------------------------------------------- ------------------------------------
Each of the foregoing milestone payments shall be payable once per
Syrrx Program, and on a Syrrx Program-by-Syrrx Program basis.
7.7 PAYMENTS NON-REFUNDABLE AND NON-CREDITABLE. All payments made to
either party pursuant to Sections 7.2 through 7.6 are non-refundable and may not
be credited against any other payments payable by such party to the other party
under this Agreement.
7.8 ROYALTIES.
(a) ROYALTY PAYMENTS ON NET SALES OF SHARED PRODUCTS. Cubist shall
pay to Syrrx incremental royalties on annual worldwide Net Sales of Shared
Products (on a Shared Program-by-Shared Program basis) by Cubist, its Affiliates
and their respective sublicensees at the rates set forth in the following table:
--------------------------------------------------------------------------------------------- ------------------------
PORTION OF ANNUAL WORLDWIDE NET SALES OF SHARED PRODUCTS ROYALTY RATE
--------------------------------------------------------------------------------------------- ------------------------
= US[*] [*]
--------------------------------------------------------------------------------------------- ------------------------
> US[*] and =US[*] [*]
--------------------------------------------------------------------------------------------- ------------------------
> US[*] and =US[*] [*]
--------------------------------------------------------------------------------------------- ------------------------
> US[*] [*]
--------------------------------------------------------------------------------------------- ------------------------
PROVIDED, HOWEVER, that in the event that [*] of such Shared Program as a
Medicinal Chemistry Program, then the royalty rates set forth in the table above
for Shared Products based on such Shared Program shall be [*].
(b) ROYALTY PAYMENTS ON NET SALES OF CUBIST PRODUCTS. Cubist shall
pay to Syrrx a royalty equal to (i) [*] of worldwide Net Sales of Cubist
Products by Cubist and its Affiliates (but not by their Sublicensees) and (ii)
[*] of worldwide Net Sales of Cubist Products by Cubist's and its Affiliates'
Sublicensees.
(c) ROYALTY PAYMENTS ON NET SALES OF SYRRX PRODUCTS. Syrrx shall
pay to Cubist a royalty equal to (i) [*] of worldwide Net Sales of Syrrx
Products by Syrrx and its
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<PAGE>
Affiliates (but not by their Sublicensees) and (ii) [*] of worldwide Net Sales
of Syrrx Products by Syrrx's and its Affiliates' Sublicensees.
(d) ROYALTY PAYMENTS ON NET SALES OF INDEPENDENT PRODUCTS. Each
party shall pay to the other party a royalty equal to (i) [*] of worldwide Net
Sales of Independent Products by such party and its Affiliates (but not by their
Sublicensees), and (ii) [*] of worldwide Net Sales of Independent Products by
each party's, and their respective Affiliates' Sublicensees.
(e) ROYALTY TERM. Royalties for sales of any Product in a given
country shall be paid for a period equal to the Royalty Term for such Product in
such country.
7.9 SUBLICENSING REVENUES.
(a) SUBLICENSING REVENUES FROM CUBIST PROGRAMS. Cubist shall pay
to Syrrx an amount equal to [*] of Sublicensing Revenues received by Cubist or
its Affiliates with respect to Cubist Products.
(b) SUBLICENSING REVENUES FROM SYRRX PROGRAMS. Syrrx shall pay to
Cubist an amount equal to [*] of Sublicensing Revenues received by Syrrx or its
Affiliates with respect to Syrrx Products.
(c) SUBLICENSING REVENUE PAYMENT TERM. Payments on Sublicensing
Revenues under this Section 7.9 shall be paid during the Term of the Agreement.
8. PAYMENT; RECORDS; AUDITS
8.1 PAYMENT; REPORTS. Royalty payments and reports for the sale of
Products and the receipt of Sublicensing Revenues shall be calculated and
reported for each calendar quarter. All royalty payments due to a party under
this Agreement shall be paid within [*] of the end of each calendar quarter,
unless otherwise specifically provided herein. Each payment of royalties shall
be accompanied by a report of Net Sales of Products and of Sublicensing Revenues
in sufficient detail to permit confirmation of the accuracy of the payment made,
including, without limitation and on a country-by-country basis, the number of
Products sold, the gross sales and Net Sales of Products, the royalties, in U.S.
dollars, payable, the method used to calculate the royalty and the exchange
rates used.
8.2 EXCHANGE RATE; MANNER AND PLACE OF PAYMENT. All payments hereunder
shall be payable in U.S. dollars. With respect to each quarter, for countries
other than the United States, whenever conversion of payments from any foreign
currency shall be required, such conversion shall be made at the average rate of
exchange reported in THE WALL STREET JOURNAL, WESTERN EDITION, on the last
twenty (20) business days of the applicable quarter. All payments owed under
this Agreement shall be made by wire transfer to a bank and account designated
in writing by the party entitled to receive such payment, unless otherwise
specified in writing by such party.
8.3 LATE PAYMENTS. In the event that any payment due hereunder is not
made when due, and such late payment is not otherwise excused under Section
15.9, the payment shall
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<PAGE>
accrue interest from the date due at the rate of [*] per month; provided,
however, that in no event shall such rate exceed the maximum legal annual
interest rate. The payment of such interest shall not limit a party from
exercising any other rights it may have as a consequence of the lateness of any
payment.
8.4 WITHHOLDING OF TAXES. The party receiving royalties and other
payments under this Agreement will pay any and all taxes levied on account of
such payment. If any taxes are required to be withheld by the paying party,
it will (a) deduct such taxes from the remitting payment, (b) timely pay the
taxes to the proper taxing authority, and (c) send proof of payment to the
other party and certify its receipt by the taxing authority within sixty (60)
days following such payment.
8.5 RECORDS AND AUDITS. During the Term of the Agreement and for a
period of [*] thereafter, each party shall keep complete and accurate records
pertaining to all expenses incurred by such party subject to sharing or
reimbursement under this Agreement, the sale or other disposition of Products
and the receipt of Sublicensing Revenues in sufficient detail to permit the
other party to confirm the accuracy of all payments due hereunder. A party shall
have the right to cause an independent, certified public accountant reasonably
acceptable to both parties to audit such records to confirm reimbursable or
shared expenses, Net Sales, Sublicensing Revenues, and royalty and other
payments for a period covering not more than the preceding [*]. Such audits may
be exercised during normal business hours upon reasonable prior written notice
to the audited party, and shall occur no more than once per year. In the event
that such audit discloses an underpayment of more than [*] of the amount due,
then the audited party shall solely bear the cost of such audit. Prompt
adjustments shall be made by the parties to reflect any overpayment or
underpayment determined to have been made as a result of such audit.
8.6 PROHIBITED PAYMENTS. Notwithstanding any other provision of this
Agreement, if a party is prevented from paying any such royalty by virtue of the
statutes, laws, codes or governmental regulations of the country from which the
payment is to be made, then such royalty may be paid by depositing funds in the
currency in which accrued to the other party account in a bank acceptable to
such other party in the country whose currency is involved.
9. INTELLECTUAL PROPERTY
9.1 OWNERSHIP OF INVENTIONS. Ownership of inventions conceived of or
reduced to practice in the course of the Collaboration ("INVENTIONS") shall
be determined in accordance with the rules of inventorship under United
States patent laws, subject to any subsequent transfers of interest provided
for herein. Inventions invented solely or jointly by employees and agents of
either party relating to [*] the course of the Collaboration shall be "TARGET
CRYSTAL STRUCTURE INVENTIONS." Cubist shall own all Inventions conceived of
and reduced to practice in the course of the Collaboration solely by its
employees and agents [*] ("CUBIST INVENTIONS"), and all Cubist Patents
thereon. Syrrx shall own all Inventions conceived of and reduced to practice
in the course of the Collaboration solely by its employees and agents and all
Target Crystal Structure Inventions made [*] of each party (collectively,
"SYRRX INVENTIONS"), and all Syrrx Patents thereon. All Inventions conceived
of and reduced to practice jointly by employees or agents of Syrrx and
employees or agents of Cubist [*] ("JOINT INVENTIONS"), and all Joint
Patents, shall be owned jointly by Syrrx and Cubist. Joint Patents are
included in each of the Cubist Patents and the Syrrx Patents.
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<PAGE>
9.2 PATENT PROSECUTION AND MAINTENANCE.
(a) It is the intention of the parties to secure broad
intellectual property protection for discoveries and inventions made in
connection with the Collaboration. Syrrx shall be responsible for the filing,
prosecution and maintenance of all Syrrx Patents (excluding Joint Patents) at
Syrrx's sole expense. Cubist shall be responsible for the filing, prosecution
and maintenance of all Cubist Patents (excluding Joint Patents) at Cubist's sole
expense. The party owning the Patent shall keep the other party informed of
progress with regard to the filing, prosecution, maintenance, enforcement and
defense of patents applications and patents subject to this Section 9.2(a). The
party owning the Patent shall provide copies of drafts of all substantive
prosecution matters to the other party, and the other party shall have right to
make suggestions and comments thereon. Each party shall consider in good faith
the suggestions and comments of the other party with respect to strategies for
filing and prosecuting such patent applications.
(b) Cubist shall be responsible for, and shall initially bear the
expense of, the preparation, filing, prosecution, and maintenance of the Joint
Patents using patent counsel reasonably acceptable to Syrrx, provided that
Cubist shall be entitled to reimbursement by Syrrx of [*] of such expenses.
Cubist shall consult with Syrrx as to the preparation, filing, prosecution, and
maintenance of such Joint Patents reasonably prior to any deadline or action
with the U.S. Patent & Trademark Office or any foreign patent office, and shall
furnish to Syrrx copies of all relevant documents reasonably in advance of such
consultation. In the event that Cubist desires to abandon any such Joint Patent
in any country, or if Cubist later declines responsibility for any such Joint
Patent in any country, Cubist shall provide sixty (60) days prior written notice
to Syrrx of such intention to abandon or decline responsibility, and Syrrx shall
have the right, at its expense, to prepare, file, prosecute, and maintain such
Joint Patent in such country. For purposes of clarification, neither party shall
be obligated to compensate or reimburse the other party for internal costs other
than patent office fees incurred by such party associated with the preparation,
filing, prosecution or maintenance of Joint Patents.
9.3 COOPERATION OF THE PARTIES. Each party agrees to cooperate fully in
the preparation, filing, prosecution, maintenance and extension of any Patents
under this Agreement. Such cooperation includes, but is not limited to:
(a) executing all papers and instruments, or requiring its
employees or agents, to execute such papers and instruments, so as to effectuate
the ownership of Inventions set forth in Section 9.1, and Patents claiming such
Inventions, and to enable the other party to apply for and to prosecute patent
applications in any country; and
(b) promptly informing the other party of any matters coming to
such party's attention that may affect the preparation, filing, prosecution,
maintenance and extension of any such patent applications.
9.4 INFRINGEMENT BY THIRD PARTIES.
(a) Syrrx and Cubist shall promptly notify the other in writing of
any alleged or threatened infringement of any Patent included in the Syrrx
Patents, Cubist Patents or Joint Patents of which they become aware. The parties
shall reasonably discuss appropriate methods of
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<PAGE>
resolving such infringement without litigation. Syrrx shall have the first right
to bring and control any action or proceeding with respect to infringement of
any Patent included in the Syrrx Patents at its own expense and by counsel of
its own choice. Cubist shall have the first right to bring and control any
action or proceeding with respect to infringement of any Patent included in the
Cubist Patents at its own expense and by counsel of its own choice. In the event
any Patent included in the Joint Patents is infringed in the Field by a Third
Party [*] shall have the right to bring and control any action or proceeding
with respect to such Patent, and the parties shall share equally in the expenses
thereof. With respect to infringement in the Field of any Patent included in the
Syrrx Patents that is exclusively licensed to Cubist under Section 6.1(a)(ii)
and [*], if Syrrx fails to bring an action or proceeding within (a) sixty (60)
days following the notice of alleged infringement or (b) ten (10) days before
the time limit, if any, set forth in the appropriate laws and regulations for
the filing of such actions, whichever comes first, Cubist shall have the right
to bring and control any such action at its own expense and by counsel of its
own choice, and Syrrx shall have the right, at its own expense, to be
represented in any such action by counsel of its own choice. With respect to
infringement in the Field of any Patent included in the Cubist Patents that is
exclusively licensed to Syrrx under Section 6.1(b)(ii), and [*] if Cubist fails
to bring an action or proceeding within (a) sixty (60) days following the notice
of alleged infringement or (b) ten (10) days before the time limit, if any, set
forth in the appropriate laws and regulations for the filing of such actions,
whichever comes first, Syrrx shall have the right to bring and control any such
action at its own expense and by counsel of its own choice, and Cubist shall
have the right, at its own expense, to be represented in any such action by
counsel of its own choice. With respect to infringement in the Field of any
Patent included in the Joint Patents, if Cubist fails to bring an action or
proceeding within (a) sixty (60) days following the notice of alleged
infringement or (b) ten (10) days before the time limit, if any, set forth in
the appropriate laws and regulations for the filing of such actions, whichever
comes first, Syrrx shall have the right to bring and control any such action at
its own expense and by counsel of its own choice, and Cubist shall have the
right, at its own expense, to be represented in any such action by counsel of
its own choice. In the event a party brings an infringement action, the other
party shall cooperate fully, including if required to bring such action, the
furnishing of a power of attorney. Neither party shall have the right to settle
any patent infringement litigation under this Section 9.4 in a manner that
diminishes the rights or interests of the other party without the prior written
consent of such other party. Except as otherwise agreed to by the parties as
part of a cost-sharing arrangement, any recovery realized as a result of such
litigation, after reimbursement of any litigation and prosecution expenses of
Syrrx and Cubist, shall be allocated as follows: Each of Cubist and Syrrx shall
receive a percentage of any remaining recovery in the same ratio as each has
contributed to the costs of bringing or defending such action. Notwithstanding
the foregoing, any recovery of lost profits shall be directed to the party
suffering such lost profits.
(b) The parties have provided in subsection (a) for certain rights
of a party that is granted a license under a given patent or patent application
(other than a Joint Patent) pursuant to Section 6.1 (such party, the "LICENSEE
PARTY") to bring an action against Third Party infringers of such patent or
patent application within the Field. However, each party recognizes that
infringement arising by Third Party activities outside of the Field may,
depending on the then-existing circumstances, have an adverse impact on the
Licensee Party's ability to practice its license under such patent or patent
application under this Agreement within the Field. If
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either party as the Licensee Party believes such activities outside of the Field
adversely impact such party's rights under the exclusive licenses granted to it
under Section 6.1 under such patent or patent application, it may so notify the
other party (the "LICENSOR PARTY") and propose a manner of alleviating or
removing such adverse impact. The parties shall then discuss the situation and
evaluate the impact of the proposed method of resolving or removing such
infringement, and assess alternative methods for resolving such issue if
appropriate. However, in no event shall a Licensor Party be obligated to take
any action, or grant to a Licensee Party any rights to take any action, that
could, in the Licensor Party's sole discretion, adversely impact in any manner
such Licensor Party, its rights in and to such patent or patent application, or
the scope, validity or enforceability of such patent or patent application. If
either party desires to enforce a Joint Patent against alleged Third Party
infringement outside of the Field, it shall so notify the other party and the
parties shall discuss the appropriate manner in which to proceed; provided,
however, that if such enforcement of such patent by a party could not reasonably
affect the other party's rights in and to such Joint Patent, and if the other
party is not interested in participating in such proceeding, then the notifying
party may proceed in such matter, keeping the other party reasonably informed of
such action.
9.5 INFRINGEMENT OF THIRD PARTY RIGHTS. Each party shall promptly
notify the other in writing of any allegation by a Third Party that the activity
of either of the parties pursuant to this Agreement infringes or may infringe
the intellectual property rights of such Third Party. Each party will use
commercially reasonable efforts to cooperate with the other party in resolving
or defending against any such claims. Neither party shall have the right to
settle any patent infringement litigation under this Section 9.5 in a manner
that diminishes the rights or interests of the other party without the consent
of such other party.
10. REPRESENTATIONS AND WARRANTIES
10.1 MUTUAL REPRESENTATIONS AND WARRANTIES. Each party represents to
the other that:
(a) CORPORATE POWER. It is duly organized and validly existing
under the laws of its jurisdiction of incorporation or formation, and has full
corporate or other power and authority to enter into this Agreement and to carry
out the provisions hereof.
(b) DUE AUTHORIZATION. It is duly authorized to execute and
deliver this Agreement and to perform its obligations hereunder, and the person
or persons executing this Agreement on its behalf has been duly authorized to do
so by all requisite corporate or partnership action.
(c) BINDING AGREEMENT. This Agreement is legally binding upon it,
enforceable in accordance with its terms. The execution, delivery and
performance of this Agreement by it 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 material law or regulation of any court,
governmental body or administrative or other agency having jurisdiction over it.
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(d) GRANT OF RIGHTS; MAINTENANCE OF AGREEMENTS. It has not, and
will not during the Term of the Agreement, grant any right to any third party
which would conflict with the rights granted to the other party hereunder.
10.2 DISCLAIMER CONCERNING TECHNOLOGY. THE TECHNOLOGY AND INTELLECTUAL
PROPERTY RIGHTS PROVIDED BY EACH PARTY HEREUNDER ARE PROVIDED "AS IS" AND EACH
PARTY EXPRESSLY DISCLAIMS ANY AND ALL WARRANTIES OF ANY KIND, EXPRESS OR
IMPLIED, INCLUDING WITHOUT LIMITATION THE WARRANTIES OF DESIGN, MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, NONINFRINGEMENT OF THE INTELLECTUAL PROPERTY
RIGHTS OF THIRD PARTIES, AND DISCLAIMS WARRANTIES ARISING FROM A COURSE OF
DEALING, USAGE OR TRADE PRACTICES, IN ALL CASES WITH RESPECT THERETO. Without
limiting the generality of the foregoing, each party expressly does not warrant
(i) the success of any study or test commenced under the Collaboration or (ii)
the safety or usefulness for any purpose of the technology it provides
hereunder.
10.3 LIMITATION OF LIABILITY. EXCEPT AS EXPRESSLY PROVIDED IN THIS
AGREEMENT, INCLUDING WITHOUT LIMITATION IN THIS ARTICLE 10, AND EXCEPT FOR
INFINGEMENT BY EITHER PARTY OF THE OTHER PARTY'S INTELLECTUAL PROPERTY RIGHTS OR
BREACH OF CONFIDENTIALITY OBLIGATIONS UNDER ARTICLE 11, NEITHER PARTY SHALL BE
LIABLE TO THE OTHER FOR LOST PROFITS OR FOR ANY INDIRECT, INCIDENTAL,
CONSEQUENTIAL, SPECIAL, PUNITIVE OR EXEMPLARY DAMAGES OF THE OTHER PARTY IN
CONNECTION WITH THIS AGREEMENT OR THE TRANSACTIONS CONTEMPLATED BY THIS
AGREEMENT, HOWEVER CAUSED, UNDER ANY THEORY OF LIABILITY (COLLECTIVELY, "OTHER
DAMAGES"). IT IS EXPRESSLY UNDERSTOOD THAT THE OBLIGATION OF EITHER PARTY UNDER
ARTICLE 10 TO INDEMNIFY FOR AMOUNTS THAT THE OTHER PARTY ACTUALLY PAYS TO A
THIRD PARTY SHALL NOT BE LIMITED BY THE LIMITATIONS IN SECTION 10.3.
11. CONFIDENTIALITY; PUBLICATION
11.1 CONFIDENTIALITY. Except to the extent expressly authorized by this
Agreement or otherwise agreed in writing by the parties, the parties agree that,
during the Term of the Agreement and for [*] years thereafter, the receiving
party shall keep confidential and shall not publish or otherwise disclose and
shall not use for any purpose other than as expressly provided for in this
Agreement any Information furnished to it by the other party pursuant to this
Agreement or any Information developed during the course of the Research
hereunder (collectively, "CONFIDENTIAL INFORMATION"). Without limiting the
generality of the foregoing, during the course of the Research, Confidential
Information may be developed jointly by the parties ("COLLABORATION
INFORMATION"). Collaboration Information shall be deemed the Confidential
Information of both parties, and neither party shall use Collaboration
Information in or outside of the Field without the prior written consent of the
other party. Each party may use such Confidential Information only to the extent
required to accomplish the purposes of this Agreement. Each party will use at
least the same standard of care as it uses to protect proprietary or
confidential information of its own to ensure that its employees, agents,
consultants and other representatives do not disclose or make any unauthorized
use of the Confidential Information. Each party will promptly notify the other
upon discovery of any unauthorized use or disclosure of the Confidential
Information.
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11.2 EXCEPTIONS. The foregoing obligations shall not apply to any
portion of the Confidential Information that the receiving party can prove by
competent written evidence:
(a) is now, or hereafter becomes, through no act or failure to act
on the part of the receiving party, generally known or available;
(b) is known by the receiving party at the time of receiving such
information, as evidenced by its records;
(c) is hereafter furnished to the receiving party by a Third
Party, as a matter of right and without restriction on disclosure;
(d) is independently discovered or developed by the receiving
party without the use of Confidential Information belonging to the disclosing
party; or
(e) is the subject of written permission to disclose provided by
the disclosing party.
11.3 AUTHORIZED DISCLOSURE. Each party may disclose Confidential
Information belonging to the other party to the extent such disclosure is
reasonably necessary in the following instances:
(a) filing or prosecuting patents relating to the Collaboration;
(b) regulatory filings;
(c) prosecuting or defending litigation;
(d) complying with applicable court orders or governmental
regulations;
(e) conducting research, development and commercialization of
Programs and Products in accordance with the licenses granted hereunder; and
(f) disclosure to Affiliates, actual or potential sublicensees or
investors, employees, consultants, agents or other Third Parties in connection
with due diligence or similar investigations by such Third Parties, in each case
who agree to be bound by similar terms of confidentiality and non-use at least
equivalent in scope to those set forth in this Article 11.
Notwithstanding the foregoing, in the event a party is required to make
a disclosure of the other party's Confidential Information pursuant to this
Section 11.3, it will give reasonable (under the circumstances) advance notice
to the other party of such disclosure and use efforts to secure confidential
treatment of such information at least as diligent as such party would use to
protect its own confidential information, but in no event less than reasonable
efforts. In any event, the parties agree to take all reasonable action to avoid
disclosure of Confidential Information hereunder. The parties will consult with
each other on the provisions of this
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Agreement to be redacted in any filings made by the parties with the Securities
and Exchange Commission or as otherwise required by law.
11.4 PUBLICATIONS. Each party to this Agreement recognizes that the
publication of papers regarding results of and other information regarding the
Collaboration, including oral presentations and abstracts, may be beneficial to
both parties provided such publications are subject to reasonable controls to
protect Confidential Information. In particular, it is the intent of the parties
to maintain the confidentiality of any Confidential Information included in any
foreign or United States patent application until such patent application has
been published. Accordingly, a party shall have the right to review and approve
any paper proposed for publication by the other party, including oral
presentations and abstracts, which utilizes data generated from the
Collaboration and/or includes Confidential Information of the other party or
generated in the course of the Collaboration. Before any such paper is submitted
for publication, the party proposing publication shall deliver a complete copy
to the other party at least [*] days prior to submitting the paper to a
publisher. Such other party shall review any such paper and give its comments to
the publishing party within thirty [*] of the delivery of such paper to such
other party. With respect to oral presentation materials and abstracts, such
other party shall make reasonable efforts to expedite review of such materials
and abstracts, and shall return such items as soon as practicable to the
publishing party with appropriate comments, if any, but in no event later than
[*] days from the date of delivery to the non-publishing party. The publishing
party shall comply with the other party's request to delete references to the
other party's Confidential Information and/or Confidential Information generated
in the course of the Collaboration in any such paper, and, to the extent
necessary, will delay the submission of such publication for up to an additional
[*] days to allow the filing of a patent application on the disclosure therein.
11.5 PUBLICITY. It is understood that the parties intend to issue a
joint press release announcing the execution of this Agreement, and that each
party may desire or be required to issue subsequent press releases relating to
the Agreement or activities thereunder. Neither party shall issue any press
release containing the other party's Confidential Information and/or
Confidential Information generated in the course of the Collaboration, or
otherwise publicly disclose the other party's Confidential Information and/or
Confidential Information generated in the course of the Collaboration, without
the prior written consent of the other party. The parties agree to consult with
each other reasonably and in good faith with respect to the text and timing of
press releases, or other disclosures relating to this Agreement or Products
prior to the issuance thereof, provided that a party may not unreasonably
withhold consent to such releases, and that either party may issue such press
releases as it determines, based on advice of counsel, are reasonably necessary
to comply with laws or regulations or for appropriate market disclosure,
provided that such party shall give notice to the other party (which need not
comply with the terms of Section 15.8) prior to issuing such press release. In
addition, following the initial joint press release announcing this Agreement,
either party shall be free to disclose, without the other party's prior written
consent, the existence of this Agreement, the identity of the other party and
those terms of the Agreement which have already been publicly disclosed in
accordance herewith.
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12. TERM AND TERMINATION
12.1 TERM OF THE AGREEMENT. The term of this Agreement (the "TERM OF
THE AGREEMENT") shall commence on the Effective Date and continue until the
expiration of the last [*], unless earlier terminated pursuant to Section 12.2,
12.3 or 15.9 or extended by mutual agreement of the parties.
12.2 TERMINATION FOR CAUSE BY EITHER PARTY. Each party shall have the
right to terminate this Agreement upon [*] prior written notice to the other
upon the occurrence of any of the following:
(a) Upon or after the bankruptcy, insolvency, dissolution of the
other party (other than a dissolution for the purpose of reconstruction or
amalgamation); or
(b) Upon or after the breach of any material provision of this
Agreement by the other party if the breaching party has not cured such breach
within the [*] following written notice of termination by the non-breaching
party.
12.3 TERMINATION WITHOUT CAUSE.
(a) Cubist shall have the option to terminate this Agreement at
any time [*] upon [*] prior written notice to Syrrx.
(b) Cubist shall have the option, to terminate this Agreement at
any time [*] upon [*] prior written notice to Syrrx.
(c) Cubist shall have the option, on a Shared Program-by-Shared
Program basis, to terminate development or commercialization of any Shared
Program or Shared Products [*] with respect thereto, in which event Cubist shall
provide Syrrx with prompt written notice of its decision to so terminate with
respect to such Shared Program or Shared Products (and in any event, within [*]
days thereof).
12.4 EFFECT OF TERMINATION UNDER SECTION 12.2; SURVIVING OBLIGATIONS.
(a) Upon termination of this Agreement by Syrrx pursuant to
Section 12.2, (i) all rights under the licenses granted by Syrrx to Cubist
hereunder shall [*]; (ii) any permitted sublicenses granted hereunder by Cubist
[*]; (iii) the licenses granted by Cubist to Syrrx hereunder shall [*] with all
applicable provisions of this Agreement (including, without limitation, the
payment obligations set forth in Article 7); (iv) Cubist shall grant to Syrrx
(A) [*], under the Cubist Technology conceived or developed by Cubist or any of
its Affiliates in the course of the Collaboration (not otherwise licensed to
Syrrx under (iii)) and (B) [*], under the Cubist Technology conceived or
developed by Cubist or any of its Affiliates prior to the Effective Date (not
otherwise licensed to Syrrx under (iii)), in each of case (A) and (B), to
develop, make, have made, use, sell, have sold, offer for sale and import
pharmaceutical products discovered or developed pursuant to any Shared Program
in the Field; and (v) Cubist shall [*] as soon as reasonably practicable
following such termination all Information relating to such Shared Program and
Shared Products developed pursuant thereto as may be [*] Syrrx to practice the
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licenses granted under this Section 12.4(a), including, without limitation,
rights to all INDs and NDAs filed with respect to such Shared Program (and all
foreign equivalents of such INDs and NDAs), and all drug dossiers and master
files with respect thereto.
(b) Upon termination of this Agreement by Cubist pursuant to
Section 12.2, (i) all rights under the licenses granted by Cubist to Syrrx
hereunder shall [*], (ii) any sublicenses granted hereunder by Syrrx shall [*],
and (iii) the licenses granted by Syrrx to Cubist hereunder shall [*]
(including, without limitation, the payment obligations set forth in Article 7).
12.5 EFFECT OF TERMINATION UNDER SECTION 12.3.
(a) Upon any termination of this Agreement under Section 12.3(a)
[*], then, notwithstanding any other provision of this Agreement to the
contrary: Cubist shall [*] to Syrrx all of [*] and to any Patents claiming
Cubist Inventions or Joint Inventions, Cubist Know-How conceived or developed by
Cubist and or any of its Affiliates in the course of the Collaboration, Joint
Know-How, all data, Information. Cubist agrees to [*] and other documents,
testify and take all other actions necessary or appropriate to transfer, effect,
confirm, perfect, record, preserve, protect and enforce all rights, title and
interests transferred under this Section 12.5(a), at the reasonable request and
expense of Syrrx. Cubist shall pay to Syrrx the applicable milestone payments
under Section 7.2 and/or Section 7.3 with respect to any milestone achieved
prior to the expiration of the [*] notice period under Section 12.3(a).
(b) Upon any termination of this Agreement under Section 12.3(b)
after [*], or upon any [*], then, in either such case, notwithstanding any other
provision of this Agreement to the contrary, Cubist shall grant to Syrrx a [*]
[*] beginning on the effective date of termination to cause such Shared Program
to become a [*] and to cause Shared Products from such Shared Program to become
[*]. Syrrx may exercise such option by providing to Cubist written notice of the
exercise of such option. Within [*] after Cubist's receipt of such notice,
Cubist shall complete [*] of Cubist Technology and Information, including,
without limitation, rights to all INDs and NDAs filed with respect to such
Shared Products (and all foreign equivalents of such INDs and NDAs), and all
drug dossiers and master files with respect thereto, Materials, reagents, and
intellectual property rights necessary to convert such Shared Program and Shared
Products to a Syrrx Shared Program and Syrrx Shared Products. Cubist agrees to
use its commercially reasonable efforts to effect the necessary transfer of all
technology, and shall provide reasonable assistance to Syrrx in practicing such
technology upon Syrrx's reasonable request. Upon commercialization by Syrrx of
such Syrrx Shared Products, Syrrx shall pay to Cubist royalties on Net Sales of
Syrrx Shared Products at the rates set forth in Section 7.8(a). In no event
shall Syrrx be obligated to [*] on Syrrx Shared Programs or Syrrx Shared
Products.
If Syrrx does not exercise such option within such [*] day period, then
such Shared Program shall be deemed a Later Discontinued Program and shall be
subject to the terms of Section 5.3(b) hereunder.
12.6 SURVIVAL; ADDITIONAL ASSISTANCE.
(a) Expiration or termination of this Agreement shall not relieve
the parties of any obligation accrued prior to such expiration or termination.
Except as set forth below or
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elsewhere in this Agreement, the obligations and rights of the parties under
Sections 9.1, 10.2, 10.3, 11.1, 11.2, 11.3, 11.4, 12.2, 12.4 (including the
provisions therein that are contemplated to continue following termination),
12.5 and 12.6 and Articles 8, 13, 14 and 15 shall survive expiration or
termination of this Agreement.
(b) Within thirty (30) days following the expiration or
termination of this Agreement, except to the extent and for so long as a party
retains license rights under Sections 12.3(a) or (b), each party shall deliver
to the other party any and all Confidential Information of the other party in
its possession.
(c) Each party (the "TRANSFERRING PARTY") shall promptly execute
all assignment and other documents, testify and take all other actions necessary
or appropriate to transfer, effect, confirm, perfect, record, preserve, protect
and enforce all rights, title and interests to be transferred or granted to the
other party under Section 12.2(a), 12.3 or 12.4 at the reasonable request and
expense of such other party.
12.7 DAMAGES; RELIEF. Termination of this Agreement shall not preclude
either party from claiming any other damages, compensation or relief that it may
be entitled to upon such termination.
13. INDEMNIFICATION
13.1 INDEMNIFICATION.
(a) Cubist hereby agrees to defend, indemnify and hold harmless
Syrrx and its officers, directors, employees, consultants and agents from and
against any and all losses, damages, liabilities, expenses and costs, including
reasonable legal expense and attorneys' fees ("LOSSES"), to which Syrrx may
become subject as a result of any claim, demand, action or other proceeding by
any Third Party to the extent such Losses arise directly or indirectly out of
(a) the practice by Cubist of any license granted hereunder, or (b) the
development, manufacture, use, handling, storage, sale or other disposition of
any Product by Cubist, its Affiliates or sublicensees, except to the extent such
Losses result from the negligence, reckless or willful misconduct of Syrrx, or
from Syrrx 's practice of the Syrrx Technology.
(b) Syrrx hereby agrees to defend, indemnify and hold harmless
Cubist and its officers, directors, employees, consultants and agents from and
against any and all Losses to which Cubist may become subject as a result of any
claim, demand, action or other proceeding by any Third Party to the extent such
Losses arise directly or indirectly out of (a) the practice by Syrrx of any
license granted hereunder, or (b) the development, manufacture, use, handling,
storage, sale or other disposition of any product by Syrrx, its Affiliates or
sublicensees, except to the extent such Losses result from the negligence,
reckless or willful misconduct of Cubist, or from Cubist's practice of the
Cubist Technology.
13.2 CONTROL OF DEFENSE. In the event a party seeks indemnification under
Section 13.1, it shall inform the other party (the "INDEMNIFYING PARTY") of a
claim as soon as reasonably practicable after it receives notice of the claim,
shall permit the Indemnifying Party to assume direction and control of the
defense of the claim (including the right to settle the claim solely for
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monetary consideration), and shall cooperate as requested (at the expense of the
Indemnifying Party) in the defense of the claim.
13.3 INSURANCE.
(a) Prior to commencement of human clinical trials of the first
IND Candidate, Syrrx, at its own expense, shall maintain product liability
insurance (or self-insure) covering the use of any IND Candidate for which it is
responsible for conducting clinical trials pursuant to this Agreement in amount
and for a time consistent with industry standards during the Term of the
Agreement. Syrrx shall provide a certificate of insurance (or evidence of
self-insurance) evidencing such coverage upon the written request of Cubist.
Syrrx shall provide Cubist with written notice at least ten (10) days prior to
the cancellation, non-renewal or material change in such insurance or
self-insurance which materially adversely affects the rights of Cubist
hereunder.
(b) Prior to commencement of human clinical trials of the first
IND Candidate, Cubist, at its own expense, shall maintain product liability
insurance (or self-insure) covering the use of any IND Candidate for which it is
responsible for performing clinical trials pursuant to this Agreement in amount
and for a time consistent with industry standards during the Term of the
Agreement. Cubist shall provide a certificate of insurance (or evidence of
self-insurance) evidencing such coverage upon the written request of Syrrx.
Cubist shall provide Syrrx with written notice at least ten (10) days prior to
the cancellation, non-renewal or material change in such insurance or
self-insurance which materially adversely affects the rights of Syrrx hereunder.
14. DISPUTE RESOLUTION
14.1 DISPUTES. The parties recognize that disputes as to certain
matters may from time to time arise which relate to either party's rights and/or
obligations hereunder. To accomplish this objective, the parties agree to follow
the procedures set forth in Section 14.2 if and when such a dispute arises
between the parties.
14.2 PROCEDURES.
(a) Discussions Between the Parties. If any claim, dispute, or
controversy of whatever nature arising out of or relating to this Agreement,
including, without limitation, any action or claim based on tort, contract, or
statute (including any claims of breach or violation of statutory or common law
protections from discrimination, harassment and hostile working environment), or
concerning the interpretation, effect, termination, validity, performance and/or
breach of this Agreement ("Claim"), arises between the parties and the parties
cannot resolve the dispute within thirty (30) days of a written request by
either party to the other party, the parties agree to hold a meeting, attended
by the Chief Executive Officers of Cubist and Syrrx, to attempt in good faith to
negotiate a resolution of the dispute prior to pursuing other available
remedies.
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15. GENERAL PROVISIONS
15.1 GOVERNING LAW. This Agreement shall be governed by, and construed
and enforced in accordance with, the laws of the State of Delaware, excluding
its conflicts of laws principles.
15.2 ENTIRE AGREEMENT; MODIFICATION. This Agreement is both a final
expression of the parties' agreement and a complete and exclusive statement with
respect to all of its terms. The Exhibits referred to in this Agreement are
incorporated herein and made a part of this Agreement by this reference. This
Agreement supersedes all prior and contemporaneous agreements and
communications, whether oral, written or otherwise, with respect to the subject
matter hereof. No rights or licenses with respect to any intellectual property
of either party are granted or deemed granted hereunder or in connection
herewith, other than those rights expressly granted in this Agreement. No trade
customs, courses of dealing or courses of performance by the parties shall be
relevant to modify, supplement or explain any term(s) used in this Agreement.
This Agreement may not be modified or supplemented by any purchase order, change
order, acknowledgment, order acceptance, standard terms of sale, invoice or the
like. This Agreement may only be modified or supplemented in a writing expressly
stated for such purpose and signed by the parties to this Agreement.
15.3 RELATIONSHIP BETWEEN THE PARTIES. The parties' relationship, as
established by this Agreement, is solely that of independent contractors. This
Agreement does not create any partnership, joint venture or similar business
relationship between the parties. Neither party is a legal representative of the
other party, and neither party can assume or create any obligation,
representation, warranty or guarantee, express or implied, on behalf of the
other party for any purpose whatsoever.
15.4 NON-WAIVER. The failure of a party to insist upon strict
performance of any provision of this Agreement or to exercise any right arising
out of this Agreement shall neither impair that provision or right nor
constitute a waiver of that provision or right, in whole or in part, in that
instance or in any other instance. Any waiver by a party of a particular
provision or right shall be in writing, shall be as to a particular matter and,
if applicable, for a particular period of time and shall be signed by such
party.
15.5 ASSIGNMENT. Except as expressly provided hereunder, neither this
Agreement nor any rights or obligations hereunder may be assigned or otherwise
transferred by either party without the prior written consent of the other party
(which consent shall not be unreasonably withheld); PROVIDED, HOWEVER, that
either party may assign this Agreement and its rights and obligations hereunder
without the other party's consent to an Affiliate or in connection with the
transfer or sale of all or substantially all of the business of such party to
which this Agreement relates to a Third Party, whether by merger, sale of stock,
sale of assets or otherwise. In the event of such transaction, however,
intellectual property rights of a party to such transaction other than one of
the parties to this Agreement shall not be included in the technology licensed
hereunder. The rights and obligations of the parties under this Agreement shall
be binding upon and inure to the benefit of the successors and permitted assigns
of the parties. Any assignment not in accordance with this Agreement shall be
void.
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15.6 NO THIRD PARTY BENEFICIARIES. This Agreement is neither expressly
nor impliedly made for the benefit of any party other than those executing it.
15.7 SEVERABILITY. If, for any reason, any part of this Agreement is
adjudicated invalid, unenforceable or illegal by a court of competent
jurisdiction, such adjudication shall not affect or impair, in whole or in part,
the validity, enforceability or legality of any remaining portions of this
Agreement. All remaining portions shall remain in full force and effect as if
the original Agreement had been executed without the invalidated, unenforceable
or illegal part.
15.8 NOTICES. Any notice to be given under this Agreement must be in
writing and delivered either in person, by any method of mail (postage prepaid)
requiring return receipt, or by overnight courier or facsimile confirmed
thereafter by any of the foregoing, to the party to be notified at its
address(es) given below, or at any address such party has previously designated
by prior written notice to the other. Notice shall be deemed sufficiently given
for all purposes upon the earlier of: (a) the date of actual receipt; (b) if
mailed, three calendar days after the date of postmark; or (c) if delivered by
overnight courier, the next business day the overnight courier regularly makes
deliveries.
If to Cubist, notices must be addressed to:
Cubist Pharmaceuticals, Inc.
24 Emily Street
Cambridge, MA 02139
Attention: Alan Watson, Senior Vice President of Corporate Development
Telephone: (617) 576-4222
Facsimile: (617) 234-5992
With a copy to: Skip Shimer, Vice President, Research
If to Syrrx, notices must be addressed to:
Syrrx, Inc.
10450 Science Center Drive, Suite 100
San Diego, CA 92121
Attention: Chief Executive Officer
Telephone: (858) 622-8528
Facsimile: (858) 623-0460
15.9 FORCE MAJEURE. Each party shall be excused from liability for the
failure or delay in performance of any obligation under this Agreement by reason
of any event beyond such party's reasonable control including but not limited to
Acts of God, fire, flood, explosion, earthquake, or other natural forces, war,
civil unrest, accident, destruction or other casualty, any lack or failure of
transportation facilities, any lack or failure of supply of raw materials, any
strike or labor disturbance, or any other event similar to those enumerated
above. Such excuse from liability shall be effective only to the extent and
duration of the event(s) causing the failure or delay in performance and
provided that the party has not caused such event(s) to occur. Notice of a
party's failure or delay in performance due to force majeure must be given to
the
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other party within ten (10) calendar days after its occurrence. All delivery
dates under this Agreement that have been affected by force majeure shall be
tolled for the duration of such force majeure. In no event shall any party be
required to prevent or settle any labor disturbance or dispute. Notwithstanding
the foregoing, should the event(s) of force majeure suffered by a party extend
beyond a three (3) month period, the other party may then terminate this
Agreement by written notice to the non-performing party, with the consequences
of such termination as set forth in Sections 12.5 and 12.6.
15.10 LEGAL FEES. If any party to this Agreement resorts to any legal
action or arbitration in connection with this Agreement, the prevailing party
shall be entitled to recover reasonable fees of attorneys and other
professionals in addition to all court costs and arbitrator's fees which that
party may incur as a result.
15.11 INTERPRETATION.
(a) CAPTIONS AND HEADINGS. The captions and headings of clauses
contained in this Agreement preceding the text of the articles, sections,
subsections and paragraphs hereof are inserted solely for convenience and ease
of reference only and shall not constitute any part of this Agreement, or have
any effect on its interpretation or construction.
(b) SINGULAR AND PLURAL. All references in this Agreement to the
singular shall include the plural where applicable, and all references to gender
shall include both genders and the neuter.
(c) ARTICLES, SECTIONS AND SUBSECTIONS. Unless otherwise
specified, references in this Agreement to any article shall include all
sections, subsections, and paragraphs in such article; references in this
Agreement to any section shall include all subsections and paragraphs in such
sections; and references in this Agreement to any subsection shall include all
paragraphs in such subsection.
(d) DAYS. All references to days in this Agreement shall mean
calendar days, unless otherwise specified.
15.12 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original document, and all of
which, together with this writing, shall be deemed one instrument.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
40.
*Confidential treatment requested: Material has been omitted and filed with the
Commission.
<PAGE>
IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement.
SYRRX, INC. CUBIST PHARMACEUTICALS, INC.
By: /s/ Wendell Wierenga By: /s/ Alan Watson
--------------------------------- ---------------------------------
Name: Wendell Wierenga, Ph.D. Name: Alan Watson
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Title: Chief Executive Officer Title: Senior Vice President
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i.