Crosswalk Development Agreement - Partners HealthCare System Inc., The General Hospital Corporation d/b/a Massachusetts General Hospital, The Brigham and Women's Hospital Inc. and deCODE genetics Ltd.
CROSSWALK DEVELOPMENT AGREEMENT
BETWEEN
PARTNERS HEALTHCARE SYSTEM, INC.,
The General Hospital Corporation,
d.b.a. Massachusetts General Hospital,
The Brigham and Women's Hospital, Inc.
And
deCODE genetics Ltd.
DATED MAY 11, 2000
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CROSSWALK DEVELOPMENT AGREEMENT
THIS CROSSWALK DEVELOPMENT AGREEMENT (this "Agreement"), effective May
11, 2000, ("Effective Date"), is by and among Partners HealthCare System, Inc.,
a Massachusetts not-for-profit corporation with its principal place of business
at Prudential Tower, 800 Boylston Street, Boston, Massachusetts, 02199-8001
("Partners"); The General Hospital Corporation d.b.a. Massachusetts General
Hospital, a Massachusetts not-for-profit corporation having its principal
offices at 55 Fruit Street, Boston, MA 02114 ("MGH"); The Brigham and Women's
Hospital, Inc., a Massachusetts not-for-profit corporation having its principal
offices at 75 Francis Street, Boston, MA 02115 ("BWH") (BWH, Partners and MGH
are each, individually, an "Institution" and, collectively, the "Institutions");
and deCODE genetics Ltd., an Icelandic corporation which is a wholly-owned
subsidiary of deCODE genetics, Inc., a Delaware corporation, and having its
principal offices at Lynghalsi 1, IS-110 Reykjavik, Iceland ("deCODE").
Partners, MGH, BWH and deCODE are each, individually, a "Party" and,
collectively, the "Parties".
BACKGROUND
A. deCODE is building a database based on phenotypic healthcare
information that deCODE is collecting using the homogeneous Icelandic population
(the "Icelandic Healthcare Database" or "IHD") and a database based on genotypic
information that deCODE intends to collect (the "deCODE Genotype Database" and
collectively with the IHD, the "deCODE Database"). Partners is creating a
database based on the phenotypic and genotypic information that Partners is
collecting in connection with internal research using various heterogeneous
populations ("Research Patient Data Registry" or "RPDR") (the deCODE Database
and the RPDR are individually referred to as a "Database" and collectively
referred to as the "Databases").
B. The Parties desire to develop an information technology bridge
(the "Crosswalk") to facilitate studies with the Databases. The Crosswalk is to
be developed by a number of means, including the creation of common definitions
of disease classifications, common structure and field compatibility of
databases, and the creation of tools to query both Databases. Standard operating
procedures for querying the databases via the Crosswalk while preserving
patients' confidential information are to be established under the Strategic
Alliance Agreement entered into by deCODE and Partners simultaneously with this
Agreement (the "Strategic Alliance Agreement").
C. Institutions desire to obtain funding and technical support
from deCODE to further such development. deCODE wishes to obtain from
Institutions certain rights to Crosswalk Intellectual Property Rights, pursuant
to the terms and conditions of this Agreement and the Strategic Alliance
Agreement.
The Parties have, therefore, agreed as follows:
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1. Definitions.
1.1 "BWH" shall have the meaning assigned to such term in the
Introductory paragraph.
1.2 "Confidential Information" of a Party shall mean (a) all
Crosswalk Inventions which the IP Project Leaders decide to protect as
Confidential Information pursuant to Section 4.2, technical or marketing
reports, data or information disclosed by such Party to the other Party which is
in writing and marked or otherwise designated in writing as "Confidential" or
"Proprietary," (b) any item described in Section 1.2(a) which is disclosed
orally, indicated as confidential at the time of disclosure, summarized in
writing and marked or otherwise designated in writing as "Confidential" or
"Proprietary" within thirty (30) days after such disclosure, (c) any source code
or object code for software comprising any part of the Crosswalk, and (d) other
source code or object code disclosed by one Party to the other which is marked
or otherwise designated in writing as "Confidential" or "Proprietary" at the
time of disclosure.
1.3 "Copyright" shall mean the copyright subsisting in accordance
with the United States Copyright Law, foreign copyright laws and international
agreements in the Crosswalk Copyrightable Work (as that term is defined below)
together with any United States or foreign Copyright registration application or
resulting Copyright registration.
1.4 "Crosswalk" shall mean the information technology bridge (a)
created by deCODE Personnel and/or Institution Personnel in the performance of
the Crosswalk Project and (b) Embedded Technology. Unless otherwise expressly
provided herein, the term "Crosswalk" shall not include Other Technology.
1.5 "Crosswalk Coordinator" shall mean the deCODE Personnel or the
Institution Personnel appointed to this position in accordance with Section 2.2.
1.6 "Crosswalk Copyrightable Work" shall mean any original work of
authorship fixed in any tangible medium of expression, now known or later
developed, from which it can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a machine or device, including
without limitation, computer programs and related documentation, which is
authored by any Party solely or jointly with any other Party, including a
Party's Personnel, in the development of the Crosswalk, or prepared by any
Party's Personnel in the development of the Crosswalk as a Work-Made-For-Hire
(as that capitalized term is defined in the United States Copyright Law), for
which such Party is considered the author and owner solely or jointly with any
other Party or such Party's Personnel.
1.7 "Crosswalk Development Period" shall mean the period during
which the Parties shall create the Crosswalk pursuant to the Work Plan,
beginning on the Effective Date and ending (a) three (3) year(s) from the
Effective Date, and any extension thereof mutually agreed upon by the Parties in
writing, or (b) on the date this Agreement is terminated pursuant to Section 8,
whichever shall occur first.
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1.8 "Crosswalk Information" shall mean the deCODE Crosswalk
Information and/or the Institution Crosswalk Information.
1.9 "Crosswalk Intellectual Property Rights" shall mean the
statutory rights and protection afforded Crosswalk Patent Rights, Crosswalk
Copyrightable Works and/or Confidential Information by the patent, copyright and
trade secret laws of the country where such right is sought, it being understood
that any individual category of intellectual property may be afforded more than
one such statutory right.
1.10 "Crosswalk Invention" shall mean any new and useful process,
formulae, compilations, source code, object code, devices, methods, techniques,
machine, manufacture or composition of matter created or developed in the
performance of the Crosswalk Project, that is potentially patentable or
protectable as Confidential Information and is (a) conceived, solely or jointly,
by one or more deCODE Personnel and/or Institution Personnel in the performance
of the Crosswalk Project, and (b) first reduced to practice by one or more
deCODE Personnel and/or Institution Personnel in the performance of the
Crosswalk Project or in the subsequent one year period by one or more
individuals who, during the Crosswalk Development Period, were deCODE Personnel
or Institution Personnel.
1.11 "Crosswalk Patent Right" shall mean any United States patent
application, including any division or continuation and any foreign patent
application or equivalent corresponding thereto and any Letters Patent or the
equivalent thereof issuing thereon or reissue or extension thereof, which
contains one or more claims to a Crosswalk Invention. Patent Rights shall also
include those claims of any continuation-in-part of the aforementioned patent
applications to the extent they claim a Crosswalk Invention.
1.12 "Crosswalk Project" shall mean the Crosswalk development
project described in the Work Plan attached as Appendix A.
1.13 "CSRL" shall mean for: (a) Partners, the Vice President,
Corporate Sponsored Research and Licensing; (b) BWH, Corporate Sponsored
Research and Licensing at BWH; and (c) MGH, Corporate Sponsored Research and
Licensing at MGH, or any successors thereto.
1.14 "Databases" shall have the meaning assigned to such term in
the Background section.
1.15 "deCODE" shall have the meaning assigned to such term in the
Introductory paragraph.
1.16 "deCODE Crosswalk Information" shall mean any research data,
formulae, process information or other information pertaining to the Crosswalk
produced by deCODE Personnel in the performance of, or relating to, the
Crosswalk Project, including without limitation any research data, formulae,
process information or other information provided by deCODE to Institution or
their agents for the purpose of performing or in the performance of the
Crosswalk Project. Notwithstanding the foregoing, the term "deCODE Crosswalk
Information"
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shall not include patient identifiers or other patient confidential information,
or the data in the deCODE Database.
1.17 "deCODE Database" shall have the meaning assigned to such term
in the Background section.
1.18 "deCODE Genotype Database" shall have the meaning assigned to
such term in the Background section.
1.19 "deCODE Notice" shall have the meaning assigned to such term
in the Strategic Alliance Agreement.
1.20 "deCODE Personnel" shall mean the deCODE employees and
consultants who perform the Crosswalk Project.
1.21 "Effective Date" shall have the meaning assigned to such term
in the Introductory paragraph.
1.22 "Embedded Technology" shall mean any technology owned or
acquired by any Party outside of the performance of the Crosswalk Project and
incorporated or "embedded" into the Crosswalk after the Effective Date to
facilitate studies with the Databases, including any design, technical
description and any software (including programs, modules, code, algorithms,
flowcharts, diagrams, documentation and the like), as expressly described in
Appendix D attached hereto and as amended from time to time pursuant to Section
4.6. Unless otherwise provided in Appendix D, the term "Embedded Technology"
shall not include Other Technology.
1.23 "Icelandic Healthcare Database" or "IHD" shall have the
meaning assigned to such term in the Background section.
1.24 "Institution" and "Institutions" shall have the meanings
assigned to such terms in the Introductory paragraph.
1.25 "Institution Crosswalk Information" shall mean any research
data, formulae, process information or other information pertaining to the
Crosswalk produced by Institution Personnel in the performance of the Crosswalk
Project, but does not include patient identifiers or other patient confidential
information, or the data in the RPDR.
1.26 "Institution Notice" shall have the meaning assigned to such
term in the Strategic Alliance Agreement.
1.27 "Institution Personnel" shall mean the Institutions'
professional staff, graduate student, undergraduate student, employees and
consultants who perform the Crosswalk Project.
1.28 "IP Costs" shall have the meaning assigned to such term in
Section 4.3.
1.29 "IP Project Leader" shall have the meaning assigned to such
term in Section 2.3.
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1.30 "JAMS" shall have the meaning assigned to such term in Section
9.2.
1.31 "Joint Crosswalk Patent Right" shall have the meaning assigned
to such term in Section 4.1.2.
1.32 "Joint Steering Committee" or "JSC" shall have the meaning
assigned to such term in Strategic Alliance Agreement.
1.33 "MGH" shall have the meaning assigned to such term in the
Introductory paragraph.
1.34 "Other Technology" shall mean the design, technical
description and software (including programs, modules, code, algorithms,
flowcharts, diagrams, documentation and the like) developed by a Party outside
the scope of the Crosswalk Project, whether before or during the Crosswalk
Development Period, which is used to facilitate studies from a Party's Database
(e.g., genotypic or phenotypic database infrastructure, a query tool), and which
a Party licenses to the other Party pursuant to a Software License Agreement.
1.35 "Partners" shall have the meaning assigned to such term in the
Introductory paragraph.
1.36 "Party" and "Parties" shall have the meanings assigned to such
terms in the Introductory paragraph.
1.37 "Research Patient Data Registry" or "RPDR" shall have the
meaning assigned to such term in the Background section.
1.38 "Software License Agreement" shall have the meaning assigned
to such term in the Strategic Alliance Agreement.
1.39 "Sponsored Research Agreement" shall have the meaning assigned
to such term in the Strategic Alliance Agreement.
1.40 "Strategic Alliance Agreement" shall have the meaning assigned
to such term in the Background section.
1.41 "Third Party Project" shall have the meaning assigned to such
term in Section 2.5.2.
1.42 "Work Plan" shall have the meaning assigned to such term in
Section 2.1.
2. Work Plan.
2.1 Work Plan. Within sixty (60) days after the Effective Date,
the Crosswalk Coordinators for each of deCODE and the Institutions shall propose
and submit to the JSC a
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proposed work plan and budget for the development of the Crosswalk. Upon
approval of a work plan and budget by the JSC, such approved work plan shall be
attached hereto as Appendix A and made a part hereof (the "Work Plan") and such
budget shall be attached hereto as Appendix B and made a part hereof (the
"Budget").
2.2 Project Coordinators. Each of deCODE and the Institutions
shall appoint a Crosswalk Project coordinator (the "Crosswalk Coordinator") who
shall have day-to-day responsibility for overseeing and coordinating the
activities contemplated herein, including scheduling as set forth in the Work
Plan and presiding over meetings, design/review sessions, coordinating its staff
and conducting testing of the Crosswalk.
2.3 IP Project Leader. Each of deCODE and the Institutions shall
appoint an IP Project Leader, who shall have the duties described in Section 4
of the Strategic Alliance Agreement.
2.4 Performance of Crosswalk Project. The Institutions and deCODE
shall cooperate to create the Crosswalk according to the Work Plan and the
Budget.
2.5 Exclusivity.
2.5.1 At any time during the term of this Agreement,
Institution Personnel or deCODE Personnel may propose in writing additional
development directly related to the Crosswalk Project not previously described
in the Work Plan for the Crosswalk Project as set forth in Appendix A. Each such
proposal shall include a description of the additional development proposed, a
budget of the costs to be funded by deCODE and a schedule of payment of such
costs. Unless the Parties shall otherwise agree in writing, negotiations between
them over any such proposal shall not extend beyond the sixtieth (60th) day next
following the date when the proposal shall have first been so made, and whenever
such negotiations shall end without agreement between the Parties to proceed
with the proposed development, the Party proposing the additional development
may proceed without the other Party and seek funding from any other sponsor,
including but not limited to a commercial sponsor, as set forth in Section
2.5.2, subject to the restrictions provided in this Section 2.5. When such
proposal is accepted by the Institutions and deCODE, it shall be appended hereto
as an addendum to the Work Plan and shall be subject to the terms and conditions
of this Agreement unless otherwise specified, and the additional Crosswalk
Project described therein shall commence and budgeted amounts shall be paid as
set forth in the proposal or as otherwise agreed by the Parties in writing. In
no event shall any additional development be added to the Crosswalk Project nor
shall the direction of the Crosswalk Project be altered without the concurrence
of the Director of CSRL of the Institutions.
2.5.2 Notwithstanding any contrary provision, no member of
the Institution Personnel who shall perform any part of the Crosswalk Project
shall seek funding from another commercial sponsor for any additional
development proposals directly related to the Crosswalk Project unless and until
such proposal has been submitted to deCODE in accordance with the foregoing
Section 2.5.1 and the Parties have failed to agree in writing to append such
proposal hereto as an addendum to the Work Plan within the stipulated sixty (60)
days. In the event of such failure to agree, an Institution Personnel shall be
free to seek and accept funding from such
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commercial sponsor for such development proposal (the "Third Party Project"),
provided that, in the reasonable determination of the JSC created pursuant to
the Strategic Alliance Agreement, after consultation with the Institution
Personnel: (a) the subject matter of the Third Party Project is not so closely
related scientifically to the Crosswalk Project that sponsorship of such Third
Party Project by such other commercial sponsor would create a conflict of
interest for the Institutions or any Institution Personnel performing the
Crosswalk Project; (b) the risk of subject matter overlaps between the Crosswalk
Project and such Third Party Project is minimal; (c) the Third Party Project
would not conflict with the terms and conditions of this Agreement and would not
have a material impact on the Crosswalk Project or the Institutions' ability to
perform the Crosswalk Project; and (d) such other commercial sponsor of the
Third Party Project is not a competitor of deCODE in any of its business areas
that would create a conflict of interest.
2.5.3 At any time during the term of this Agreement, if any
Institution Personnel wishes to seek funding for any research or development
work directly related to the Crosswalk Project, including additional funding for
the Crosswalk Project, from any international, federal or state agencies, or
from any not-for-profit foundations, except foundations owned or operated by a
commercial entity other than deCODE or which have obligations to commercial
entities with respect to such research, such Institution Personnel shall so
notify deCODE's Crosswalk Coordinator, including a description of the research
or development work for which such funding is sought. deCODE shall have thirty
(30) days to review such proposal and decide whether, in the reasonable
determination of deCODE, after consultation with Institutions and the
Institution Personnel, such funding should be sought. No Institution Personnel
shall accept any such funding for any research or development work directly
related to the Crosswalk Project unless approved pursuant to this Section 2.5.3.
In any event, any Institution Personnel shall follow the procedures set forth in
Section 5 with respect to any grant applications and progress reports disclosing
Crosswalk Information.
2.5.4 Institution Personnel shall be free at any time to
seek funding from any source for any research or development work that is not
related or similar to the Crosswalk Project.
3. Payments.
3.1 Payments. deCODE shall pay to the Institutions the sum of up
to [CONFIDENTIAL TREATMENT REQUESTED] to support the Institutions' efforts to
create the Crosswalk, as provided in the Budget. deCODE shall make such payment
in periodic installments to be determined by the JSC. Such payments shall be
made in cash, in kind in the form of goods and services related to the Crosswalk
Project, the value of which shall be determined by the JSC, or both in cash and
in kind. The form of such in kind payments shall be determined by deCODE at its
sole discretion. All of such funding shall be used in the following order: (a)
first, to the extent such payments are in the form of cash, for the support of
the Crosswalk Project Coordinators and the IP Project Leaders during the
Crosswalk Development Period and in the amounts determined by the mutual
agreement of the Parties; (b) second, for costs and expenses incurred by the
Institutions during the Crosswalk Development Period for work conducted pursuant
to the Work Plan; and (c) third, to compensate deCODE for in kind contributions
to the Crosswalk Project, as provided above. All funds paid to the Institutions
shall be used to support the direct and attendant indirect costs
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(as determined by the Institutions' policies on indirect costs, as communicated
to the JSC from time to time) of the Crosswalk Project. All of such funding of
direct costs shall be used by the Institutions as deemed necessary and
appropriate by the JSC to achieve the research goals and objectives set forth in
the Work Plan. All funds advanced to the Institutions under this Agreement and
not used in accordance with the terms hereof shall be promptly refunded to
deCODE.
3.2 Payment Method. All payments made by deCODE shall reference
Agreement number ______. Checks for all payments to the Institutions under this
Agreement shall be made payable to the payees designated by the JSC and
addressed to the contacts set forth in Section 10.
3.3 Payment Records; Audit Rights. Each Institution shall maintain
records of its expenditures and of funds received under this Agreement in
accordance with its customary accounting policies and procedures and shall
provide to deCODE a summary of such expenditures within ninety (90) days after
the end of each elapsed year during the Crosswalk Development Period. During the
Crosswalk Development Period and for two years thereafter, deCODE on reasonable
notice, during normal business hours and at its own expense may examine or audit
each Institution's accounting records with respect to expenditures under this
Agreement, provided however, that in the event that such inspection or audit
reveals an overpayment by deCODE in excess of five percent (5%) of the amount
actually due for the period subject to such audit or examination, such
Institution shall reimburse the cost of the examination or audit in addition to
refunding the excess payment.
4. Crosswalk Intellectual Property Rights.
4.1 Ownership of Intellectual Property.
4.1.1 Each Institution Personnel who shall (i) solely or
jointly make a Crosswalk Invention, or (ii) solely or jointly author or prepare
a Crosswalk Copyrightable Work, shall promptly report such Crosswalk Invention
or Copyrightable Work to the Institution by whom such Institution Personnel is
employed or affiliated. Such Institution Personnel shall assign all of his or
her rights, title and interest in any Crosswalk Patent Right claiming such
Crosswalk Invention, or in any Confidential Information comprised of such
Crosswalk Invention or in any Copyrightable Work to the Institution by which he
or she is employed or affiliated (to the extent that such Copyrightable Work is
not already owned by such Institution as a Work-Made-For-Hire under United
States Copyright Law). Each deCODE Personnel who shall (i) solely or jointly
make a Crosswalk Invention, or (ii) solely or jointly author or prepare a
Crosswalk Copyrightable Work, shall promptly report such Crosswalk Invention or
Copyrightable Work to deCODE. Such deCODE Personnel shall assign all of his or
her rights, title and interest in any Patent Right claiming such Crosswalk
Invention, or in any Confidential Information comprised of such Crosswalk
Invention or in any Copyrightable Work to deCODE (to the extent that such
Copyrightable Work is not already owned by deCODE as a Work-Made-For-Hire under
United States Copyright Law).
4.1.2 If a Crosswalk Invention is invented by one or more
Institution Personnel and one or more deCODE Personnel, such Institution
Personnel and deCODE Personnel shall
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assign all of their respective rights, title and interest in any Crosswalk
Patent Right claiming such Joint Invention to their respective employers with
which they are affiliated (each, a "Joint Crosswalk Patent Right"). For each
Joint Crosswalk Patent Right, the Institution(s) to which such Patent Right is
assigned and deCODE agree that deCODE and such Institution(s) shall each own an
undivided interest in such Patent Right in each country in which it is filed and
granted. Such Institution(s) and deCODE shall each be allowed to sell, license
or otherwise transfer its rights to such Joint Crosswalk Patent Right in any
country without the consent of the other; however, the Institutions' rights in
this respect are subject to the terms and conditions of this Agreement and the
Strategic Alliance Agreement.
4.1.3 If a Crosswalk Invention which is protected as
Confidential Information is invented by one or more Institution Personnel and
one or more deCODE Personnel, such Institution Personnel and deCODE Personnel
shall assign all of their respective rights, title and interest in any
Confidential Information comprising such Joint Invention to their respective
employers with which they are affiliated. For each such joint Confidential
Information, the Institution(s) to whom such Confidential Information is
assigned and deCODE agree that deCODE and such Institution(s) shall each own an
undivided interest in such Confidential Information. Such Institution(s) and
deCODE shall each be allowed to sell, license or otherwise transfer its rights
to such Confidential Information without the consent of the other; however, the
Institutions' rights in this respect are subject to the terms and conditions of
this Agreement and the Strategic Alliance Agreement.
4.1.4 Institutions and deCODE intend and agree that all
Crosswalk Copyrightable Works authored by any of them (or any of their
respective Institution Personnel in the case of the Institutions and deCODE
Personnel in the case of deCODE) be treated as separable and independent works
to the maximum extent possible, and that such works shall not constitute "joint
works" as that term is defined by the United States Copyright Law, or otherwise
be jointly owned under United States law or the law of any foreign jurisdiction.
The Parties agree that all copyright filings and registrations shall be made
consistent with the terms of this Section 4.1.
4.2 Disclosure between Parties. Each Party shall promptly advise
the other in writing of each: (a) Crosswalk Invention, including without
limitation any Joint Invention; or (b) Crosswalk Copyrightable Work, including
without limitation any jointly authored or created Crosswalk Copyrightable Work,
disclosed to it. The IP Project Leaders for the Institutions and deCODE shall
then discuss whether applications for Crosswalk Patent Rights shall be sought
and in which countries, or whether such Crosswalk Invention shall be designated
and treated as Confidential Information, protected as such and made available
exclusively to the Alliance for use by the Parties as provided in the Strategic
Alliance Agreement, and the decisions regarding such matters shall be governed
by the decision-making process set forth in Section 4.7 of the Strategic
Alliance Agreement. If the Parties determine, pursuant to the decision-making
process set forth in Section 4.7 of the Strategic Alliance Agreement, that such
application(s) should be filed, applications assigned solely to any Institutions
shall be filed by such Institutions, applications assigned solely to deCODE
shall be filed by deCODE, and jointly assigned applications shall be filed as
mutually agreed upon by the Parties. The titles, serial numbers and
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other identifying data of any applications for Crosswalk Patent Rights shall be
added to Appendix C of this Agreement.
4.3 Costs. Reasonable and customary costs incurred by Institutions
for filing, obtaining and maintaining Crosswalk Intellectual Property Rights
("IP Costs") shall be reimbursed in full by deCODE upon deCODE's receipt of such
Institution's notice of payment of such IP Costs, except as provided for below.
Such IP Costs shall include but not be limited to the costs of preparing,
filing, prosecuting (including agreed upon interferences or oppositions),
issuing or maintaining and working such Crosswalk Intellectual Property Rights,
including without limitation the Crosswalk Patent Rights and Crosswalk
Copyrightable Works. For IP Costs not reimbursed by deCODE within thirty (30)
days, after receipt of such Institution's notice of payment of such IP Costs,
deCODE shall pay such Institution interest at the rate of [CONFIDENTIAL
TREATMENT REQUESTED] per month compounded each month that they remain unpaid.
For Crosswalk Intellectual Property Rights in which other commercial entities
have acquired license rights, deCODE shall reimburse such Institution only for
the same share of such IP Costs as reimbursed by each of the other commercial
entities, but in no event shall deCODE be required to reimburse such Institution
for more than [CONFIDENTIAL TREATMENT REQUESTED] of the IP Costs for such
Crosswalk Patent Rights.
4.4 Prosecution Notice. With respect to any Crosswalk Intellectual
Property Right, the filing Party shall provide to the other Party's IP Project
Leader each application and communication to and from the authorities which
grant such Crosswalk Intellectual Property Right, including without limitation
each application, office action, response to office action, request for terminal
disclaimer, request for reissue or reexamination of any patent issuing from such
application, and notice of interference or opposition, sufficiently prior to the
filing of such application, response or request to allow for review and comment
by such other Party's IP Project Leader. All decisions regarding such actions
shall be governed by the decision-making process set forth in the Strategic
Alliance Agreement.
4.5 Confidentiality. All information given by deCODE to any
Institution, or by the Institutions to deCODE, in accordance with this Section 4
shall be maintained in confidence for so long as such information remains
unpublished.
4.6 Addition of Embedded Technology. Each Party shall have the
right, but not the obligation, to contribute to the Crosswalk as Embedded
Technology additional technology owned or acquired by such Party outside of the
performance of the Crosswalk Project. In the event a Party desires to contribute
such additional technology, the Parties shall negotiate in good faith to
determine the terms upon which such Party may contribute such technology
(provided that such terms shall include only a non-exclusive right and license
to use such additional technology pursuant to the terms of the Strategic
Alliance Agreement), including the amount of any consideration to be paid for
such additional technology, the effect, if any, of such contribution on the
royalties to be paid by each Party to the other on revenue from the Crosswalk,
subject to approval by the JSC, and whether and to what extent such additional
technology shall serve as in kind funding of the Crosswalk as described in
Section 3.1 of this Agreement; provided, however, that upon the Parties'
agreement, the additional technology shall be listed upon Appendix D and shall
become Embedded Technology subject to the terms of this
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Agreement in all respects. Notwithstanding the forgoing, no Party shall be
compelled by any other Party or any decision-maker under the dispute resolution
provisions of this Agreement or the Strategic Alliance Agreement to contribute
any such additional technology without such Party's prior written consent.
4.7 Rights to Other Technology. Each Party shall own all right,
title and interest in and to any Other Technology developed by such Party.
4.8 Use of Intellectual Property. The Parties agree that all use
by any Party of the Crosswalk, including without limitation, all Crosswalk
Inventions, Crosswalk Copyrightable Work, Copyrights, Crosswalk Patent Rights,
Crosswalk Information and Confidential Information and all use by a Party of
another Party's Other Technology, shall be governed by the terms of the
Strategic Alliance Agreement, and also, in the case of such Other Technology,
the Software License Agreement applicable to such Other Technology. No Party
shall have any right to use the Crosswalk, any Party's Other Technology, any
additional technology owned or acquired by a Party outside of the Crosswalk
Project, or any component of any of the foregoing, including any Crosswalk
Intellectual Property Right which may be owned by such Party, except as
specifically provided in, and subject to the terms and conditions of, the
Strategic Alliance Agreement and, in the case of such Other Technology, the
Software License Agreement applicable to such Other Technology.
5. Publications.
5.1 Submission. Prior to public presentation or submission to a
journal, international, federal or state agency, or not-for-profit foundation,
as the case may be, each Institution Personnel shall agree to submit for review
to deCODE's Crosswalk Coordinator, and each deCODE Personnel shall agree to
submit for review to Institutions' Crosswalk Coordinator, an early draft of any
manuscript, abstract, public oral presentation containing Crosswalk Information.
5.2 Review Period. Within thirty (30) days of receipt of such
manuscript or seven (7) days after receipt of an abstract or public oral
presentation from an Institution Personnel or a deCODE Personnel, the other
Party's Crosswalk Coordinator shall submit such Party's comments, if any, to
such Institution Personnel or deCODE Personnel, as the case may be. Such
Institution Personnel or deCODE Personnel shall give due consideration to any
comments made by the other Party, but shall not be required to incorporate any
of the other Party's comments, and the Institution Personnel's or deCODE
Personnel's decision as to what such manuscript, presentation, or abstract shall
contain shall be final, except that upon notification from the other Party, such
Institution Personnel or deCODE Personnel shall delete all Confidential
Information of the other Party. In any publication or presentation involving the
Crosswalk, each Party shall acknowledge the role and contribution of the other
Party to the project to which the publication or presentation relates.
5.3 Delay for Patent Filing. If the reviewing Party has reason to
believe that any such manuscript, abstract or grant application provided in
accordance with Section 5.5 reveals a potentially patentable Crosswalk
Invention, such Party shall notify the other Party's IP Project
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Leader in writing within the time periods indicated in Section 5.2, 5.3 or 5.5,
as the case may be. In such case, the publishing Party agrees to delay
publication or public presentation until the earlier to occur of the following:
5.3.1 A Crosswalk Patent Right is filed in the appropriate
country for initial filing under the laws of the country in which such Crosswalk
Invention is made (i.e., Crosswalk Inventions made in the U.S. shall be filed
first in the U.S. unless the procedures set forth in 35 U.S.C. Section 184 are
complied with;
5.3.2 The IP Project Leaders have determined, pursuant to
the decision-making process set forth in the Strategic Alliance Agreement, that
no patentable Crosswalk Invention exists; or
5.3.3 Sixty (60) days have passed from the date of such
notification by the reviewing Party.
5.4 Competitive Publications. If any deCODE Personnel or
Institution Personnel receives reasonable indications concerning the imminent
oral presentation or publication of a manuscript or abstract by a third party
that is similar in content to the presentation, manuscript and/or abstract
containing Crosswalk Information proposed to be published or presented by such
deCODE Personnel or Institution Personnel, the Parties agree as follows: (a)
such deCODE Personnel or Institution Personnel shall notify their own and the
other Party's Crosswalk Coordinator in writing as soon as reasonably practical
about such other imminent presentation or publication; and (b) the time periods
for presentation or publication review and delay stated in Sections 5.1, 5.2 and
5.3 shall be shortened as mutually agreed.
5.5 Grant Submissions. Subject to approval pursuant to Section
2.5.3, Institution Personnel shall have the right to submit grant applications
related to the Crosswalk Project and/or disclosing any Crosswalk Information or
the nature of the relationship among the Parties to any international, federal
and/or state agencies or not-for-profit foundations which do not require
licensing to a commercial entity; provided, however, that such Institution
Personnel shall provide a draft of such grant applications to deCODE at least
fifteen (15) days prior to submission to such agencies or foundations. In the
event that an Institution Personnel wants to exclude from review any portions of
a grant application that do not disclose any Crosswalk Information or the nature
of the relationship among the Parties, then such Institution Personnel shall
provide to deCODE: (i) a draft of all other portions of such grant application,
including all portions disclosing any Crosswalk Information or the nature of
such relationship; and (ii) a certification from the Institution Personnel
submitting such grant application and Institutions' IP Project Leader that
deCODE has been provided with all portions of such grant application disclosing
Crosswalk Information and the nature of such relationship, and all portions
reasonably necessary for deCODE to determine whether such grant application
reveals a Crosswalk Invention. In such event, deCODE may request additional
information as it deems reasonably necessary or desirable to make such a
determination. Such grant submission shall be subject to Section 5.3. When so
requested by deCODE, Institutions and Institution Personnel shall indicate on
such grant application that certain proprietary business information is
contained therein which
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<PAGE> 14
is not subject to disclosure under the Freedom of Information Act, and shall
request that such information be treated as confidential.
6. Confidentiality.
6.1 Confidentiality Obligation. Except as otherwise provided in
Section 6.2, during the term of this Agreement and for a period of ten (10)
years thereafter, each Party agrees to use reasonable efforts not to disclose to
third parties any Confidential Information disclosed to it by the other Party.
6.2 Permitted Disclosures. Nothing in this Agreement shall limit
any Party in any way from: (a) disclosure of information required by a public
authority; or (b) disclosure of information that is necessary to prevent
imminent danger to the public; provided, however, in each case the disclosing
Party shall promptly inform the other Party of its intent to disclose such
information and the reasons for such disclosure.
6.3 Exceptions. Information received from the other Party hereto
shall not be deemed Confidential Information, and the receiving Party shall have
no obligation of confidentiality with respect to such information which:
6.3.1 As of the Effective Date, is part of the public
domain;
6.3.2 Subsequently becomes part of the public domain
through no fault of the receiving Party;
6.3.3 The receiving Party can show was in its possession,
as evidenced by written records kept in the ordinary course of business or by
the proof of actual use at the time of executing this Agreement, and which
information had not been wrongfully acquired, directly or indirectly, from the
disclosing Party;
6.3.4 Is subsequently disclosed to the receiving Party by a
third party not in violation of any right of, or obligation to, the other Party
hereto;
6.3.5 Is required to be disclosed by operation of law,
provided that the receiving Party has given advanced notice of the proposed
disclosure to the disclosing Party; or
6.3.6 Is developed by or on behalf of the receiving Party
without reference to the disclosing Party's Confidential Information, as
evidenced by written records.
6.4 Injunctive Relief. In addition to any other right or remedy it
may have and without the posting of any bond or other security, each Party shall
be entitled to seek injunctions to enjoin or restrain the other Party from any
violation or threatened violation of this Section 6.
7. Publicity and Advertising.
No Party shall, without the prior written consent of the other Party,
use in endorsement,
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advertising, publicity, or otherwise, the name, trademark, logo, symbol, or
other image of the other Party or such Party's employees or agents. Each Party
agrees that its name may be used: (a) whenever required by law or regulation,
including without limitation disclosure to the Securities and Exchange
Commission, provided, however, that a Party using another Party's name shall, to
the extent reasonably practicable as solely determined by such using Party,
provide a copy of such proposed disclosure to such other Party in advance and
give consideration to such other Party's comments and requests regarding such
disclosure, but shall not be obligated to perform any act or omission in
response to such comments or requests; (b) by deCODE in connection with its
capital raising and financing purposes, based upon standard statements
established by the mutual agreement of the Parties; (c) to make a joint,
mutually agreeable public announcement about the initiation of the relationship
and the support of the Crosswalk hereunder; and (d) to make routine
acknowledgments of the relationship, support of the Crosswalk hereunder and the
basic substance of the relationship, based upon standard statements established
by the mutual agreement of the Parties. If no such standard statements have been
established, then the disclosing Party shall provide the non-disclosing Party
with an opportunity to review, comment on and approve the disclosure in advance
of making such disclosure. Nothing in this Section 7 shall preclude deCODE's use
of Institutions' names, trademarks, logos, symbols, or other images in
connection with the marketing and sale of products and services pursuant to this
Agreement, provided that any such use shall remain subject to the approval of
the Public Affairs Officer of the Institution whose name, trademark, logo,
symbol or other image is so used.
8. Termination.
8.1 Breach by deCODE. If deCODE fails to meet any of its material
obligations under this Agreement and shall fail to remedy these failures within
sixty (60) days after receipt of written notice thereof, the Institutions shall
have the option of terminating this Agreement upon their mutual agreement and
upon written notice thereof; provided, however, that deCODE shall have the right
to cure such default during such sixty (60) day period.
8.2 Breach by Institution. If any Institution fails to meet any of
its material obligations under this Agreement and shall fail to remedy these
failures within sixty (60) days after receipt of written notice thereof, deCODE
shall have the option of terminating this Agreement upon written notice thereof
to all Institutions; provided, however, that such Institution shall have the
right to cure such default during such sixty (60) day period.
8.3 Termination by deCODE for Infeasibility. In the event that
deCODE determines that the Crosswalk Project is scientifically or economically
not feasible or no longer is consistent with deCODE's business strategy, deCODE
may terminate this Agreement at any time during the Crosswalk Development Period
by giving written notice of termination to Institutions thirty (30) days prior
to the effective date of such termination.
8.4 Termination by deCODE for Other Reasons. In the event that the
Strategic Alliance Agreement is terminated by deCODE pursuant to Section 10.5
thereof, then this Agreement shall also be deemed to be terminated upon the
effective date of such termination of the Strategic Alliance Agreement.
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<PAGE> 16
8.5 Effect of Termination.
8.5.1 In the event that this Agreement is terminated by the
Institutions pursuant to Section 8.1, by deCODE pursuant to Section 8.3 or by
deCODE pursuant to Section 8.4 following a deCODE Notice under the Strategic
Alliance Agreement, deCODE shall reimburse the Institutions for contractual
commitments and financial obligations incurred by such Institutions during the
Crosswalk Development Period if such financial obligations or contractual
commitments cannot reasonably be cancelled by such Institutions. The
Institutions shall use their best efforts to terminate or cancel all contractual
commitments and other financial obligations as soon as possible to avoid
incurring additional expenses.
8.5.2 In the event that this Agreement is terminated by
deCODE pursuant to Section 8.3:
(a) The Institutions shall use all reasonable
efforts to immediately commence winding down the Crosswalk Project upon receipt
of such notice of termination from deCODE; and
(b) deCODE shall reimburse the Institutions for
the direct salary costs incurred by the Institutions, for a period of six months
after the effective date of such termination, of any M.D., Ph.D. or equivalent
information technology personnel who is deriving 50% or more of his or her
salary from the Crosswalk Project being funded by deCODE during the three month
period preceding the notice of termination.
8.5.3 In the event that this Agreement is terminated by
deCODE pursuant to Section 8.2, all funding obligations of deCODE shall cease as
of the effective date of such termination.
8.5.4 In the event that this Agreement is terminated by
deCODE pursuant to Section 8.4 following an Institution Notice under the
Strategic Alliance Agreement:
(a) All funding obligations of deCODE shall
cease immediately upon receipt of notice of such termination of the Strategic
Alliance Agreement; and
(b) The Institutions shall use all reasonable
efforts to immediately commence winding down the Crosswalk Project upon receipt
of such notice of termination from deCODE.
8.5.5 Upon the early termination of this Agreement during
the Crosswalk Development Period pursuant to Section 8.1, 8.2, 8.3 or 8.4 or in
the event of the expiration of the Crosswalk Development Period under this
Agreement, the Parties' rights and obligations with respect to Confidential
Information and the use of the Crosswalk Intellectual Property Rights shall be
governed by the Strategic Alliance Agreement, and the Parties' rights and
obligations with respect to the Other Technology shall be governed by the
Software License Agreement applicable to such Other Technology.
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9. Alternative Dispute Resolution.
9.1 Negotiation. The Parties shall attempt in good faith to
resolve, through negotiation, any dispute, claim or controversy arising out of
or relating to this Agreement. Any Party may initiate negotiations by providing
written notice in letter form to the other Parties, setting forth the subject of
the dispute and the relief requested. The recipient of such notice shall respond
within five (5) days with a written statement of its position on, and
recommended solution to, the dispute. If the dispute is not resolved by this
exchange of correspondence, then representatives of each Party with full
settlement authority shall meet at a mutually agreeable time and place within
ten (10) days of the date of the initial notice in order to exchange relevant
information and perspectives, and to attempt to resolve the dispute.
9.2 Arbitration. Except with respect to breaches for which a Party
is seeking injunctive relief, all disputes between the Parties relating to this
Agreement or the subject matter hereof which cannot be resolved by the Parties
according to Section 9.1 shall be submitted for final and binding arbitration
before JAMS/Endispute ("JAMS") pursuant to the United States Arbitration Act, 9
U.S.C. Section 1 et seq., and shall be held at a mutually agreeable location or
in New York City. Any Party may commence the arbitration process pursuant to
this Agreement by filing a written demand for arbitration with JAMS, with a copy
to the other Parties. Unless the Parties otherwise agree in writing, the
arbitration shall be conducted in accordance with the provisions of JAMS
Comprehensive Arbitration Rules and Procedures in effect at the time of filing
of the demand for arbitration if the amount in controversy is greater than
$250,000, exclusive of interest; or the arbitration shall be conducted in
accordance with the provisions of JAMS Streamlined Arbitration Rules and
Procedures in effect at the time of filing of the demand for arbitration if the
amount in controversy is $250,000 or less, exclusive of interest. The Parties
shall cooperate with JAMS and with one another in selecting an arbitrator from
JAMS' panel of neutrals, and in scheduling the arbitration proceedings;
provided, however, that all arbitrators must be knowledgeable in the
biotechnology and bioinformatics industries and, in the case of a dispute
concerning the Crosswalk, the software development industry, and must not be
affiliated through employment or otherwise with a competitor of any Party, as
determined through mutual assent of the Parties. The Parties shall participate
in the arbitration in good faith, and shall share equally in its costs. The
provisions of this Section may be enforced by any court of competent
jurisdiction, and the Party seeking enforcement shall be entitled to an award of
all costs, fees and expenses, including attorneys' fees, to be paid by the Party
against whom enforcement is ordered.
9.3 Injunctive Relief. This Section 9 shall not prohibit a Party
from seeking injunctive relief from a court of competent jurisdiction in the
event of a breach or prospective breach of this Agreement by any other Party
which would cause irreparable harm to the first Party.
10. Miscellaneous.
10.1 Governing Law. This Agreement shall be governed by, construed,
and interpreted in accordance with the laws of the State of Delaware, without
reference to principles of conflicts of laws.
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10.2. Independent Contractors. No Party shall have the right to
direct or control the activities of any other Party or other Party's personnel
in the Crosswalk Project, and each Party shall act hereunder only as an
independent contractor; nothing herein contained shall be construed to be
inconsistent with that relationship or status. Under no circumstances shall
Institution or any Institution Personnel be considered to be an employee or
agent of deCODE, or deCODE or any deCODE Personnel be considered any employee or
agent of any Institution. This Agreement shall not constitute, create, or in any
way be interpreted as a joint venture, partnership or formal business
organization of any kind.
10.3 Assignment. No Party shall assign its rights or duties under
this Agreement to another without the prior express written consent of the other
Parties, which consent shall not be unreasonably withheld; provided, however,
that any Party may assign this Agreement to a successor in ownership of all or
substantially all its business assets. Such successor shall expressly assume in
writing the obligation to perform in accordance with the terms and conditions of
this Agreement.
10.4 Notices. All notices, demands, payments and other
communications of every kind and description whatsoever required or permitted
under this Agreement shall be in writing and shall be deemed to have been
received when personally delivered, or when shipped by private express carrier
(signature required), shipment charges prepaid, or when sent via facsimile
transmission (receipt verified) to the Party to whom delivery shall be made at
the respective addresses as set out below.
<TABLE>
<S> <C>
If to Partners, to: With a copy to:
Partners HealthCare System, Inc. Partners HealthCare System, Inc.
Prudential Tower, 800 Boylston Street Prudential Tower, 800 Boylston Street
Boston, Massachusetts, 02199-8001 Boston, Massachusetts, 02199-8001
Attn: Crosswalk Coordinator Attn: Vice President, Corporate Sponsored Research and
Institution Agreement #________ Licensing
Telephone: (617) 726-5518 Telephone: (617) 278-1088
Facsimile: (617) 726-5501 Facsimile: (617) 236-4906
If to MGH, to: If to BWH, to:
Massachusetts General Hospital The Brigham and Women's Hospital, Inc.
149 13th Street, Suite 1101 1249 Boylston St., Suite 201 Boston, MA 2215
Charlestown, MA 02129 Attn: Director, Corporate Sponsored Research and
Attn: Director, Corporate Sponsored Research and Licensing Licensing
Institution Agreement #2000A001263 Institution Agreement #A3329
Telephone: (617) 278-1068 Telephone: (617) 525-6010
Facsimile: (617) 278-1668 Facsimile: (617) 525-6011
</TABLE>
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<PAGE> 19
If to deCODE, to:
deCODE genetics Ltd.
Lynghalsi 1
IS-110 Reykjavik, Iceland
Attn: Crosswalk Coordinator
Telephone: +354-570-1900
Facsimile: +354-570-1901
10.5 Modification. No modification or waiver of this Agreement or
of any covenant, condition, or limitation herein contained shall be valid unless
in writing and duly executed by all Parties.
10.6 Waiver. No waiver of any rights shall be effective unless
assented to in writing by the Party to be charged with such waiver, and the
waiver of any breach or default shall not constitute a waiver of any other right
hereunder or any subsequent breach or default.
10.7 Headings. The Section headings herein are for convenience only
and shall not affect the construction or interpretation of this Agreement.
10.8 Severability. In the event that any provision of this
Agreement becomes or is declared by a court of competent jurisdiction to be
illegal, unenforceable or void, this Agreement shall continue in full force and
effect without said provision; provided however, that no such severability shall
be effective if the result of such action materially changes the economic
benefit of this Agreement to deCODE or to Institutions.
10.9 Construction. The Parties have participated equally in the
creation of this Agreement; the language of this Agreement shall not be
presumptively construed against either Party.
10.10 Survival. The provisions of Sections 1, 3.3, 4, 5, 6, 7, 8.5,
9, 10.1, 10.8, 10.9 and 10.10 shall survive any expiration or termination of
this Agreement.
10.11 Counterparts. This Agreement may be executed in counterparts,
each of which shall constitute an original document, but all of which together
shall constitute one and the same agreement.
***
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In witness whereof, each of the Institutions and deCODE have caused this
Agreement to be executed by their duly authorized representatives as of the date
first set forth above.
<TABLE>
<CAPTION>
PARTNERS HEALTHCARE SYSTEM, INC. DECODE GENETICS LTD.
<S> <C>
BY: __/s/ Eugene Braunwald_______ BY: ___/s/ Kari Stefansson________
NAME: __Eugene Braunwald_______ NAME: ___Kari Stefansson________
TITLE: __V.P. Academic Programs__ TITLE: __President and CEO_______
DATE: ___ 5/16/2000_____________ DATE: ___5/11/2000_____________
THE GENERAL HOSPITAL CORPORATION THE BRIGHAM AND WOMEN'S HOSPITAL,
D.B.A. MASSACHUSETTS GENERAL HOSPITAL INC.
BY: __/s/ Marvin C. Guthrie______ BY: ___/s/ Brian N. Hicks_________
NAME: __Marvin C. Guthrie, J.D._ NAME: ___Brian N. Hicks_________
TITLE: _V.P. Patents, Licensing__ TITLE: ____Director, Corporate____
and Industry Sponsored Sponsored Research
Research and Licensing
DATE: _11_May_2000_________ DATE: ___5/12/2000______________
</TABLE>
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<PAGE> 21
APPENDIX A
WORK PLAN
(see attached)
<PAGE> 22
APPENDIX B
BUDGET
(see attached)
<PAGE> 23
APPENDIX C
LIST OF INTELLECTUAL PROPERTY RIGHTS
(to be prepared and updated from time to time)
<TABLE>
<CAPTION>
PARTNERS HEALTHCARE SYSTEM, INC. DECODE GENETICS LTD.
<S> <C>
BY: _____________________________ BY: ______________________________
NAME: __________________________ NAME: ___________________________
TITLE: __________________________ TITLE: ___________________________
DATE: __________________________ DATE: ___________________________
THE GENERAL HOSPITAL CORPORATION THE BRIGHAM AND WOMEN'S HOSPITAL,
D.B.A. MASSACHUSETTS GENERAL HOSPITAL INC.
BY: _____________________________ BY: ______________________________
NAME: __________________________ NAME: ___________________________
TITLE: __________________________ TITLE: ___________________________
DATE: __________________________ DATE: ___________________________
</TABLE>
<PAGE> 24
APPENDIX D
LIST OF EMBEDDED TECHNOLOGY
(to be prepared and updated from time to time)
<TABLE>
<CAPTION>
PARTNERS HEALTHCARE SYSTEM, INC. DECODE GENETICS LTD.
<S> <C>
BY: _____________________________ BY: ______________________________
NAME: __________________________ NAME: ___________________________
TITLE: __________________________ TITLE: ___________________________
DATE: __________________________ DATE: ___________________________
THE GENERAL HOSPITAL CORPORATION THE BRIGHAM AND WOMEN'S HOSPITAL,
D.B.A. MASSACHUSETTS GENERAL HOSPITAL INC.
BY: _____________________________ BY: ______________________________
NAME: __________________________ NAME: ___________________________
TITLE: __________________________ TITLE: ___________________________
</TABLE>
<PAGE> 25
<TABLE>
<S> <C>
DATE: __________________________ DATE: ___________________________
</TABLE>