LifeSeq Collaborative Agreement - Incyte Genomics Inc. and Senomyx Inc.
LIFESEQ-Registered Trademark- COLLABORATIVE AGREEMENT
between
INCYTE GENOMICS, INC.
and
SENOMYX-SM-, INC.
1
<PAGE>
This Collaborative Agreement ("Agreement") is entered into as of the
29th day of December, 2000 (the "Effective Date") by and between Senomyx, Inc.,
a Delaware corporation ("Senomyx"), having its principal place of business at
11099 N. Torrey Pines Road, La Jolla, CA 92037, and Incyte Genomics, Inc., a
Delaware corporation ("Incyte"), having its principal place of business at 3160
Porter Drive, Palo Alto, CA 94304.
BACKGROUND
WHEREAS, Incyte has compiled and is compiling, and owns, certain
information and data regarding certain cDNAs in confidential databases which may
be useful in the study of biological phenomena;
WHEREAS, Incyte owns or has certain patent rights and know-how
regarding certain cDNAs as well as certain of the proteins they encode;
WHEREAS, Senomyx conducts research in the field of chemosensation, an
objective of which is to discover potential biological targets and develop
assays for use in taste, olfaction and pheromone detection; and
WHEREAS, Senomyx desires to obtain access to Incyte's
LifeSeq-Registered Trademark-Database Product(s) (as defined below), and to
obtain licenses to use Incyte's patent rights and know-how under the Database
Product(s), to conduct research and development of small molecule flavor and
fragrance products based on research and development of gene product targets
from the LifeSeq-Registered Trademark- Database Product(s).
NOW, THEREFORE, the Parties agree as follows:
1.0 DEFINITIONS.
The following terms have the following meanings:
"ANNOTATION INFORMATION": means the information associated with
individual cDNAs contained in each and/or all of the LifeSeq-Registered
Trademark- Database Product(s), as applicable including, but not
limited to, tissue expression information, homology information, and
gene cluster identifiers.
"ANTISENSE FIELD OF USE": means the treatment or prevention of any
disease, state or condition by use of one or more oligonucleotides or
modified oligonucleotides which bind either (i) to mRNA to block the
translation of mRNA in vivo to inhibit, prevent and/or alter protein
production, or (ii) to DNA to prevent the transcription of DNA into the
mRNA copy of the gene in vivo.
"cDNA": means a complementary DNA copy of messenger RNA.
2
<PAGE>
"cDNA CLONE": means an individual plasmid vector and cDNA insert, which
cDNA insert is usually a partial gene, and not necessarily a full
length gene.
"CHEMOSENSORY GENE PRODUCT(S)": means Gene Products which affect the
human detection of taste, flavor, pheromones, and fragrance.
"COLLABORATION PATENT RIGHTS": means the patents and/or patent
applications filed by (i) Incyte under Incyte Patent Rights which claim
the composition of matter to Senomyx Homolog(s) and which are selected
by Senomyx pursuant to Section 6.2.1; (ii) Senomyx on a Gene Product.
Collaboration Patent Rights excludes Incyte Patent Rights, and Senomyx
Patent Rights and all patent rights arising under Incyte Proprietary
Programs.
"DATABASE SECURITY PLAN" means the mutually agreed upon plan, to be
attached as Exhibit C and incorporated into this Agreement by
reference.
"DATABASE INFORMATION": means all or any part of the Annotation
Information and DNA Sequence Information that is contained in the
LifeSeq-Registered Trademark- Database Product(s) as applicable.
"DESIGNATED GENE PRODUCT": means a given Gene Product which is selected
for research and development, or other use by Senomyx in accordance
with the terms and conditions of this Agreement, and is or has been
"Used By Senomyx", as defined below.
"DIAGNOSTIC FIELD OF USE": means (a) the diagnosis and monitoring of
any disease, state or condition in humans, (b) the selection of a
method of treatment of any disease, state or condition in humans and
(c) the determination of genetic traits in humans. The Diagnostic Field
of Use does not include the determination of genetic traits for the
purposes of the Flavor and Fragrance Field of Use.
"DIAGNOSTIC PRODUCT(S)": means any product or service derived from or
directed to Gene Product(s) for use in the Diagnostic Field of Use.
"DNA SEQUENCE INFORMATION": means nucleotide sequences, including
SNP(s), incorporated in the LifeSeq-Registered Trademark- Database
Product(s) provided by Incyte to Senomyx pursuant to this Agreement.
"DRUG PRODUCT(S)": means compositions of matter that are ligands or
inhibitors of Gene Product(s) for use in the treatment of any disease,
state or condition in humans. These include small molecules and
antibodies which are agonists, antagonists, and/or modulators of Gene
Product(s); provided, however, that Drug Product(s) does not include
Gene Product(s), Diagnostic Product(s), Therapeutic Product(s), F&F
Product(s), or Antisense Product(s).
"FLAVOR AND FRAGRANCE FIELD OF USE": means internal research
applications of Gene Product(s) associated with conducting research in
the identification, development and commercialization of F & F
Products, provided that the Flavor
3
<PAGE>
and Fragrance Field of Use specifically excludes " the Research Field
of Use, Antisense Field of Use, Diagnostic Field of Use, and
Therapeutic Fields of Use. Further, the Flavor and Fragrance Field does
not include the sale or license of Database Information or Gene
Product(s) as research tools, or the use of Database Information or
Gene Product(s) to develop database products or services. Flavor and
Fragrance Field of Use includes the determination of genetic traits in
humans solely for the purposes of determining correlation to flavor
and/or fragrance sensitivity.
"FLAVOR AND FRAGRANCE PRODUCT(S)" OR "F&F PRODUCT(S)": means
compositions of matter which are ligands or inhibitors of Chemosensory
Gene Product(s) and which are modifiers of the human detection of
taste, flavor, pheromone and fragrance, provided, however, that a F&F
Product(s) does not include (i) Drug Product(s), (ii) Therapeutic
Product(s), (iii) Antisense Product(s), (iv) Diagnostic Product(s) or
(v) Gene Product(s).
"FULL LENGTH CLONE(S)": means, with respect to a given human gene, a
specific, purified cDNA Clone developed or acquired by Incyte, which
Incyte believes on currently available evidence, to contain the
nucleotide sequence of the entire amino acid coding region of such
gene.
"FULL LENGTH CONTIG": means, with respect to a given gene, DNA Sequence
Information contained in the LifeSeq-Registered Trademark- Database
Product(s), which Incyte believes on currently available evidence, to
correspond to the entire amino acid coding region of such gene.
"GENE PRODUCT(S)": means (i) Incyte's proprietary cDNA Clone(s) and
Full Length Clones corresponding to a given cDNA in the DNA Sequence
Information and (ii) any partial cDNAs, DNA sequences, genes, and full
length cDNAs corresponding to such genes, or any RNA sequences, SNP(s),
peptides, polypeptides and proteins encoded thereby, in each case which
are derived from material use by Senomyx or a Senomyx Affiliate of
Database Information or the cDNA Clone(s) in (i) above.
"INCYTE AFFILIATE": means any corporation, company, firm, partnership,
joint venture, association or other entity, which, directly or
indirectly controls, is controlled by or is under common control with
Incyte. As used in this definition, the term "control" means direct or
indirect beneficial ownership of more than fifty percent (or such
lesser percentage which is the maximum allowed to be owned by a foreign
corporation in a particular jurisdiction) of the outstanding securities
having voting rights for the election of directors in a corporation or
of the comparable equity interest in any other type of entity.
"INCYTE KNOW-HOW": means the information, software, data and biological
materials consisting of or directly and solely relating to Database
Information, and such other know-how of Incyte expressly provided by
Incyte to Senomyx, and which are proprietary to Incyte at the time of
disclosure to and not already Known To Senomyx independent of the
Database Information, as can be
4
<PAGE>
demonstrated by tangible records of Senomyx existing prior to such time
of all to the extent and only to the extent that Incyte has the right
to grant licenses, immunities or other rights to Senomyx thereunder;
PROVIDED, HOWEVER, that Incyte Know-How shall exclude Incyte Patent
Rights and all Incyte Proprietary Programs; and further provided that
genomic DNA sequence information which is part of the public domain or
was already Known to Senomyx does not render cDNA Database Information
non-proprietary or non-confidential except to the extent that such
genomic DNA sequence information has been specifically and materially
established as exon region(s) (i) via standard molecular biology
laboratory techniques, or (ii) through the use of a suitable computer
algorithm with subsequent confirmation through laboratory research, as
can be demonstrated by Senomyx's tangible records existing prior to the
time of disclosure of Database Information.
"INCYTE PATENT RIGHTS": means the patents and/or patent applications
owned or controlled by Incyte which (i) claim the composition of matter
of Gene Product(s) or any other cDNAs identified in the DNA Sequence
Information, and/or (ii) arise solely from the generation of Database
Information and claim the use of Gene Product(s) with respect to F&F
Product(s), throughout the world as well as reissues, reexaminations,
divisionals, provisionals, continuations or continuations-in-part
thereof or therefor, all to the extent and only to the extent Incyte
has the right to grant licenses, immunities or other rights thereunder;
PROVIDED, HOWEVER, that Incyte Patent Rights shall exclude all patent
rights arising under Incyte Proprietary Programs and any claims to
antibodies.
"INCYTE PROPRIETARY PROGRAM(S)": means an Incyte internal research and
development program of Incyte which involves investment by Incyte
intended to develop discoveries, inventions, data or information
(whether or not patentable) beyond that consisting of Database
Information. Incyte Proprietary Programs are independent of those
services regularly performed by Incyte to produce or generate DNA
Sequence Information and Annotation Information intended to be released
to the LifeSeq-Registered Trademark- Database Product(s).
"INCYTE TECHNOLOGY": means, collectively, Incyte Know-How and Incyte
Patent Rights.
"INSTALLATION SITE": means the research facility of Senomyx located in
La Jolla, California or an alternative location with Incyte's prior
written approval.
"KNOWN TO SENOMYX": means information, software, data, biological
materials and/or other materials disclosed or provided by Incyte to
Senomyx which:
(a) is already known to Senomyx at the time of disclosure
by Incyte; or
(b) is generally known to the public or otherwise part of
the public domain at the time of its disclosure to
Senomyx; or
5
<PAGE>
(c) becomes generally available to the public or
otherwise part of the public domain other than
through any act or omission of Senomyx in breach of
this Agreement; or
(d) was subsequently lawfully disclosed to Senomyx by a
Third Party, provided it was not obtained by such
Third Party directly or indirectly from Incyte on a
confidential basis; or
(e) was independently discovered or developed by Senomyx
as can be documented by laboratory notebooks or other
such records as are customary for documenting
research and product development activities created
at the time of such independent discovery or
development, including the Senomyx Sequences listed
in Exhibit B as of the Effective Date.
"LIFESEQ-Registered Trademark- GOLD DATABASE": means Incyte's
proprietary database of human Annotation Information, DNA Sequence
Information and corresponding cDNA Clones and Full Length Clones and
related software and documentation as of the Effective Date.
"LIFESEQ-Registered Trademark- DATABASE PRODUCT(S)": means the
LifeSeq-Registered Trademark- Gold Database and the ZooSeq-TM-
Database.
"PARTY": means either Incyte or Senomyx individually or, collectively,
the "Parties".
"RESEARCH FIELD OF USE": means all applications of Gene Product(s)
outside the Flavors and Fragrances Field of Use, including without
limitation, conducting research, identification, development and
commercialization of Drug Products, Diagnostic Products, Antisense
Product(s) and/or Therapeutic Product(s).
"SNP(S)": means single nucleotide polymorphism(s).
"SENOMYX AFFILIATE": means any corporation, firm, partnership, or other
legal entity, which, directly or indirectly is owned by Senomyx to the
extent of which the common stock or other equity ownership thereof is
One Hundred percent (100%) owned by Senomyx; provided however, that
where local laws require a minimum percentage of local ownership, the
status of Senomyx Affiliate will be established if Senomyx directly or
indirectly owns or controls the maximum ownership percentage that may,
under such local laws, be owned or controlled by foreign interests.
"SENOMYX HOMOLOG(S)": has the meaning as set forth is Section 6.2.1.
"SENOMYX PATENT RIGHTS": means the patents and/or patent applications
owned or controlled by Senomyx which claim the composition of matter
and or use of Senomyx Sequence(s) filed as of the Effective Date to the
extent that Senomyx has the right to grant licenses, immunities or
other rights thereunder.
6
<PAGE>
"SENOMYX SEQUENCES": means those sequences attached as Exhibit B, as
may be updated from time to time by mutual consent of the Parties.
"THERAPEUTIC FIELD OF USE": means the treatment or prevention of any
disease, state or condition by any means, (including without
limitation, gene therapy), excluding the Antisense Field of Use.
"THERAPEUTIC PRODUCT(S)": means any product or service, including gene
therapy, which uses a protein, peptide or polypeptide which is a Gene
Product in the treatment or prevention of any disease, state or
condition in humans, including gene therapy products; provided however,
that Therapeutic Protein Product(s) does not include Antisense
Product(s).
"THIRD PARTY(IES)": means any party other than Incyte or Senomyx, (or
both in the plural) or a Senomyx Affiliate or Incyte Affiliate.
"USED OR USE BY SENOMYX": means the first use by Senomyx or a Senomyx
Affiliate of Database Information or a proprietary cDNA Clone obtained
from Incyte hereunder, in each case which at the time of such use is
either included in the Incyte Know-How or the Incyte Patent Rights, and
provided that such first use by Senomyx meets any or all of the
following criteria:
(a) Senomyx uses such cDNA Clone from the LifeSeq-Registered
Trademark- Database Product(s) which contains DNA Sequence
Information that partially or completely codes for a Gene
Product in a screening assay to identify small molecules
and/or antibodies which are antagonists, agonists, inverse
agonists, and/or modulators of Gene Product(s); or
(b) Senomyx uses such cDNA Clone from the LifeSeq-Registered
Trademark- Database Product(s) which contains DNA Sequence
Information that partially or completely codes for a Gene
Product to synthesize or have synthesized a peptide or
polypeptide or protein or oligonucleotide and test the
efficacy of such Gene Product(s) in an animal model system; or
(c) such Database Information or such cDNA Clone which contains
the Database Information is disclosed or otherwise transferred
to a Third Party including but not limited to consultants and
collaborators; or
(d) such Database Information is specifically disclosed in a
Senomyx patent or patent application under Collaboration
Patent Rights; or
(e) Senomyx designs or uses an assay which tests the presence or
absence of the SNP(s) at a particular position in a sequence;
provided, however that if Senomyx and/or a Senomyx Affiliate has
independently discovered, developed and/or acquired from a Third Party
(in each case without use of Incyte Technology and as documented by
Senomyx, and/or a Senomyx affiliate's, tangible records generated at
the time of such discovery, development
7
<PAGE>
or acquisition) the same sequence information and/or other information
with respect to a specific Gene Product as is contained in the
LifeSeq-Registered Trademark- Database Products, Senomyx and Senomyx
Affiliates' use or disclosure of such independently discovered,
developed or acquired information shall not constitute "Use By
Senomyx".
The use of a cDNA Clone or DNA Sequence Information by Senomyx as an
array element on a gene expression microarray for internal use by
Authorized Personnel of Senomyx and Senomyx Affiliates will not require
establishing such cDNA Clones or DNA Sequence Information as Designated
Gene Products unless and until the time that the subsequent use of such
cDNA Clone or DNA Sequence Information would qualify under any of the
activities under (b) to (d) above.
The use of Database Information contained in the LifeSeq-Registered
Trademark- Gold Database Product(s) to search for putative homologs to
a given sequence will not trigger a license to, or establish such DNA
Sequence Information as, a Designated Gene Product except and until the
time that the subsequent use of such DNA Sequence Information would
qualify under any of the activities under (b) to (d) above.
"ZOOSEQ-TM- DATABASE: shall mean Incyte's proprietary database of
Annotation Information and DNA Sequence Information derived from
non-human cells and tissues of pharmacological and toxicological
interest.
2.0 DATABASE.
2.1 LIFESEQ-Registered Trademark- DATABASE PRODUCT(S). Commencing on the
Effective Date, Incyte will provide Senomyx access to the
LifeSeq-Registered Trademark- Database Product(s) at the Installation
Site in accordance with the terms and conditions of this Agreement.
2.2 DATABASE SECURITY PLAN. Senomyx shall implement a Database Security
Plan and Incyte shall have the right to require changes to the Database
Security Plan only to the extent reasonably necessary to enable Incyte
to verify Senomyx's compliance with the terms of this Agreement.
2.3 USE RESTRICTIONS AND SECURITY REQUIREMENTS.
2.3.1 OWNERSHIP. Senomyx hereby acknowledges that (a) Incyte has
expended significant resources and efforts to develop the
LifeSeq-Registered Trademark- Database Product(s) and the
Database Information, (b) the LifeSeq-Registered Trademark-
Database Product(s) are a highly valuable and confidential
assets, and are the principal product of Incyte, (c) Incyte is
willing to grant Senomyx access to the LifeSeq-Registered
Trademark- Database Product(s) in reliance upon the agreement
by Senomyx that it shall protect the LifeSeq-Registered
Trademark- Database Product(s) from unauthorized disclosure or
use at the Installation Site and (d) the LifeSeq-Registered
Trademark- Database Product(s) at all times during the term of
this Agreement shall remain, the sole and exclusive property
of Incyte.
8
<PAGE>
2.3.2 DESIGNATED CPU'S AT THE INSTALLATION SITES. The
LifeSeq-Registered Trademark- Database Product(s) shall only
be installed at the Installation Site on the hard disk of a
designated computer or file server whereby multiple
workstation(s) may not contain copy(ies) of the
LifeSeq-Registered Trademark- Database Product(s) installed on
the workstation hard disk(s). A second copy of the
LifeSeq-Registered Trademark- Database Product(s) may be kept
at the Installation Site on the same computer or file server
provided that this copy is used only to install and test new
versions and releases of the LifeSeq-Registered Trademark-
Database Product(s). A copy of the LifeSeq-Registered
Trademark- Database Product(s) may be installed at the
Installation Site on another computer or file server as a
back-up in the event that the primary computer fails. Under no
circumstances will the LifeSeq-Registered Trademark- Database
Product(s), be installed in a manner which would allow
unauthorized access (e.g. Third Party(ies') access via the
Internet). All other database access is prohibited.
2.3.3 PERMITTED USE.
(a) Senomyx shall have the right to use the
LifeSeq-Registered Trademark- Database Product(s)
solely for Senomyx's own internal use by authorized
personnel of Senomyx at the Installation Site(s) in
secure work facilities of Senomyx in accordance with
the terms and conditions of this Agreement and the
Database Security Plan.
(b) Senomyx shall not disclose or transfer Database
Information which would constitute Incyte Know-How,
or any portion thereof, to any Third Party, except
for Database Information and corresponding cDNA
Clone(s) specifically regarding a Designated Gene
Product and in each event solely in accordance with
the provisions of Sections 2.3.3(c), 2.3.4 and 5.2.
(c) Solely for purposes of system integration and/or to
facilitate data analysis and relational analysis
(e.g. extraction of DNA Sequence Information for
homology analysis by Senomyx of search algorithms),
Senomyx will have the right to reproduce, adapt,
modify and prepare derivative works based upon the
LifeSeq-Registered Trademark- Database Product(s)
("Modifications") solely for internal use by Senomyx
in its research and development programs.
Modifications shall be kept in confidence in the same
manner as, and shall be subject to the same terms and
conditions as apply to, the LifeSeq-Registered
Trademark- Database Product(s). Incyte shall have no
obligations to support any such Modifications.
Senomyx shall not acquire by reason of this
Subsection (c) any ownership of the
LifeSeq-Registered Trademark- Database Product(s),
any portions thereof or any title or rights therein.
Senomyx shall not distribute copies of, or provide
access to, any Modifications to any Third Party
without the prior written approval of Incyte.
9
<PAGE>
(d) Except as expressly set forth herein, or as otherwise
agreed by Incyte in writing, Senomyx shall not
reproduce, adapt, modify, prepare derivative works
based upon or distribute copies (in whatever form
whether tangible or intangible, by any means
whatsoever whether now known or hereafter invented)
of the LifeSeq-Registered Trademark- Database
Product(s), including any substantial portion of the
Database Information from any field of the database.
2.3.4 DESIGNATED GENE PRODUCT(S). Pursuant to an escrow agreement to
be attached hereto, such escrow agreement which shall
incorporate the provisions of the Escrow Provisions specified
in Exhibit X, Senomyx shall deposit into escrow the identity
of each Gene Product in Use or Used by Senomyx in the conduct
of research and development or other such use of a Gene
Product in accordance with the terms and conditions of this
Agreement. Senomyx shall then have the right to use, disclose
and transfer Database Information specifically regarding such
Designated Gene Product, including to Senomyx Affiliates,
academic and Third Party collaborators, licensees,
governmental agencies or offices or otherwise for use in the
discovery, research, development and/or commercialization of
F&F Products, subject to the appropriate terms and conditions
of this Agreement, including Article 5. Any use of Database
Information not in accordance with the above is expressly
prohibited.
2.3.5 RECORDS. Senomyx shall maintain records of access to and use
of the LifeSeq-Registered Trademark- Database Product(s) and
the Database Information, sufficient to enable Senomyx and
Incyte to determine, and monitor compliance with, their
respective rights and obligations under this Agreement (e.g.
laboratory notebooks and such other records as are customary
for documenting research and product development activities).
No more than once a year unless as otherwise agreed in
writing, at the request and the expense of Incyte, upon at
least forty-five (45) days' prior notice, Senomyx shall permit
an agent appointed by Incyte and acceptable to Senomyx to
examine these records solely to the extent necessary to verify
the fulfillment of Senomyx's obligations under this Agreement,
provided that such agent has entered into a suitable
confidentiality agreement with Senomyx. Incyte's agent shall
only report to Incyte the results of such examination (i.e.,
whether or not Senomyx is in compliance with its obligations
under this Agreement), and shall not disclose to Incyte any of
Senomyx's Confidential Information provided to it or to which
it may have access during the conduct of the examination.
2.3.6 LOSS, THEFT, UNAUTHORIZED DISCLOSURE OR USE. Senomyx shall
promptly notify Incyte of any loss, theft or unauthorized
disclosure or use of the LifeSeq-Registered Trademark-
Database Product(s) or the Database Information which comes to
Senomyx's attention.
10
<PAGE>
2.4 TRAINING.
2.4.1 At times mutually acceptable to Incyte and Senomyx, Incyte
shall provide Senomyx with two (2) days of training services
at Incyte's training facility in Palo Alto, California,
regarding the use of the LifeSeq-Registered Trademark-
Database Product(s). Senomyx may designate not more than
twelve (12) employees, unless mutually agreed upon by the
parties, to attend such training at Incyte. Each party shall
bear all accrued and out-of-pocket expenses of its employees
related to the training services.
2.4.2 At times mutually acceptable to Incyte and Senomyx after the
Effective Date, Incyte shall provide Senomyx with two (2) days
of training services at the Installation Site, regarding the
use of the LifeSeq-Registered Trademark- Database Product(s).
The number of employees to receive such training shall be in
the reasonable discretion of Senomyx. Each party shall bear
all accrued and out-of-pocket expenses of its employees
relating to the training services.
2.4.3 In addition to Sections 2.4.1 and 2.4.2 above, Incyte shall
provide Senomyx with such additional training services in such
manner and upon such terms and conditions as Incyte makes
generally available to comparable subscribers to the
LifeSeq-Registered Trademark- Database Product(s).
2.5 SUPPLY OF cDNA CLONES.
2.5.1 At any time for a period of [...***...] years from the
Effective Date, upon written request of Senomyx, and subject
to the grant of license rights pursuant to Sections 3.1.1 and
3.1.2, Incyte shall provide Senomyx with up to [...***...]
isolated cDNA clones available from Incyte's cDNA clone
repository from the LifeSeq-Registered Trademark- Database
Product(s) which are Gene Product(s) [...***...] under the
terms and conditions (excluding payment) below.
2.5.2 SUPPLY OF cDNA CLONES. At any time for a period of [...***...]
years from the Effective Date, upon the written request of
Senomyx and subject to the grant of license rights as
described in Sections 3.1.1 and 3.1.2, Incyte shall provide
Senomyx with [...***...] isolated cDNA Clones from the
LifeSeq-Registered Trademark- Database Product(s) which are
Gene Products under the following terms and conditions:
Shipments usually occur within twelve (12) business days of
the receipt of the order. For this service, a fee of
[...***...] per verified clone will be payable. If the clone
cannot be verified, there is no charge and Senomyx may request
an alternative clone, or request that Incyte attempt to
sequence and verify a clone, at a cost of [...***...] per
clone. Nonetheless, although Incyte shall use professional
skill and care in its efforts, the results of any such attempt
will be provided on an "AS IS" basis and there
*CONFIDENTIAL TREATMENT REQUESTED
11
<PAGE>
will be no refund if Incyte remains unsuccessful in obtaining
a verified clone.
Senomyx agrees to submit any payments due within thirty (30)
days from receipt of invoice from Incyte in reasonably
detailed form regarding such clone supply.
Senomyx agrees that all cDNA Clone(s) are provided to Senomyx
on a nonexclusive basis and subject to any license(s) granted
under Article 3.0.
2.6 At any time for a period of [...***...] years from the Effective Date,
Incyte shall provide to Senomyx, on Senomyx request, commercially
available updates to the LifeSeq-Registered Trademark- Database
Products, provided that such updates are made available by Incyte to
other commercial customers. Senomyx shall pay Incyte [...***...] per
update.
2.7 For a period of [...***...] following the Effective Date Senomyx may
purchase a [...***...] subscription to the LifeSeq-Registered
Trademark- Gold Database for [...***...] development for [...***...]
per year, under then current terms and conditions, including without
limitation license maintenance fees, milestones and royalties.
3.0 LICENSE GRANTS.
3.1 FLAVORS AND FRAGRANCE FIELD OF USE.
3.1.1 LICENSES UNDER INCYTE TECHNOLOGY - GENE PRODUCTS. Incyte
grants to Senomyx and Senomyx Affiliate(s) a [...***...]
worldwide, non-exclusive license under the Incyte Technology,
with respect to Designated Gene Products in the Flavor and
Fragrance Field of Use to discover, develop, make, have made,
use, sell, have sold, distribute and have distributed F&F
Product(s): provided however, that such grant does not include
the right to sell Gene Product(s).
3.1.2 LICENSES UNDER COLLABORATION PATENT RIGHTS - SENOMYX. Incyte
grants to Senomyx and Senomyx Affiliate(s) a [...***...]
worldwide, exclusive, sublicensable right and license (with a
right to sublicense) under Incyte's rights to Collaboration
Patent Rights in the Flavor and Fragrance Field of Use to
discover, develop, make, use, sell and distribute F&F
Product(s): provided however, that such grant does not include
the right to sell Gene Product(s).
3.1.3 LICENSES UNDER COLLABORATION PATENT RIGHTS - INCYTE. Senomyx
grants to Incyte and Incyte Affiliate(s) a [...***...]
worldwide, exclusive sublicensable right and license under
Senomyx's rights under Collaboration Patent Rights in all
fields of use except for the Flavor and Fragrance Field of Use
for all purposes except to discover, develop, make, use, sell
and distribute F&F Product(s).
*CONFIDENTIAL TREATMENT REQUESTED
12
<PAGE>
3.2 No grant of right to sublicense rights to Database Information,
Designated Gene Product(s) and the Incyte Technology relating thereto
in the Research Field of Use, including without limitation
identification, research and/or development of Drug Product(s),
Antisense Product(s), Therapeutic Product(s) or Diagnostic Product(s),
is provided by Incyte to Senomyx herein.
3.3 BROKERAGE. The Parties agree that brokerage of Database Information or
Incyte Technology by Senomyx is not permitted. Therefore, except for
Senomyx's right to use Database Information under this Agreement to
discover and provide F&F Products to a Third Party(ies), Incyte
explicitly withholds from this Agreement the right by Senomyx to use or
offer to use Database Information in the conduct of Senomyx's
activities, as a service provider to a Third Party(ies) for the benefit
of Senomyx or such Third Party(ies) (e.g. for corporate R&D
collaborations with pharmaceutical or biotechnology companies or as a
direct competitor to Incyte offering subscriptions to pharmaceutical or
biotechnology companies).
3.4 LIMITED EXCLUSIVITY TO SENOMYX. Incyte agrees, in consideration for the
covenant in Section 3.5, that it will not [...***...]. It is understood
by the Parties that, with respect to licenses to new customers under
Incyte Technology, [...***...]. On or before [...***...], at Senomyx's
request, Senomyx and Incyte shall negotiate in good faith a payment
under which Incyte will agree not to [...***...].
3.5 LIMITED EXCLUSIVITY TO INCYTE. Senomyx agrees, in consideration for the
covenant in Section 3.4, that it will not [...***...]. On or before the
[...***...], at Incyte's request, Senomyx and Incyte shall negotiate in
good faith a payment under which Senomyx will agree [...***...].
4.0 SCHEDULE OF PAYMENTS.
4.1 Payment for the LifeSeq-Registered Trademark- Database Product(s) at
the Installation Site shall be [...***...].
*CONFIDENTIAL TREATMENT REQUESTED
13
<PAGE>
4.2 SHIPPING. Senomyx shall pay, for its own account, any shipping,
freight, mailing expenses and the like payable to third parties not
affiliated with Incyte and arising out of obtaining tangible materials
under this Agreement and the transactions contemplated herein.
4.3 PAYMENTS AND TAXES. Unless otherwise provided in this Agreement,
Senomyx agrees to submit payments for services and materials provided
by Incyte within thirty (30) days from receipt of invoice. All payments
hereunder shall be made by bank wire transfer in immediately available
funds to such account as Incyte shall designate in writing from time to
time. All payments by Senomyx to Incyte under this Agreement shall be
paid from a Senomyx account in a banking institution located in the
United States.
Senomyx shall pay, or reimburse Incyte, as appropriate, and indemnify
Incyte against any sales, use, value added/ad valorem, surtax and
personal property taxes, customs duties, registration fees and the like
arising out of the provision of services and materials by Incyte to
Senomyx under this Agreement. All turnover taxes, income taxes, gross
revenues and profits taxes, and other taxes based on Incyte's income
(other than those covered by the preceding sentence) levied on account
of the royalties, milestone payments, license fees and other payments
accruing to Incyte under this Agreement shall be paid by Incyte.
The payments to be made by Senomyx under Section 4.1 include amounts
attributable to such items as training manuals and the electronic media
used for data transfer (e.g. CD's). Payments attributable to such items
and the clone transfer fees provided for under Section 2.5.2 are or may
be subject to sales tax.
4.4 INCYTE STOCK PURCHASE. Within ten (10) days following the Effective
Date, Incyte will purchase and Senomyx will issue Six Million,
Five-Hundred Nineteen Thousand, Nine Hundred Sixty Dollars ($6,519,960)
of Senomyx Series D preferred stock pursuant to the Stock Purchase
Agreements (attached as Exhibit D).
5.0 CONFIDENTIALITY AND PUBLICATION.
5.1 CONFIDENTIALITY. The Parties acknowledge that during the course of this
Agreement they will each receive from the other information which is
proprietary, confidential and of commercial value to the disclosing
Party. For purposes of this Agreement, "CONFIDENTIAL INFORMATION" shall
mean scientific, technical or business information belonging to the
disclosing Party, which the disclosing Party marks "Confidential" if
disclosed in writing, or which the disclosing Party identifies as
confidential at the time of any visual or oral disclosure and promptly
confirms in writing to have been confidential. Except to the extent
expressly authorized by this Agreement, Incyte agrees that, from the
Effective Date and for [...***...] and Senomyx agrees that from the
Effective Date and [...***...] thereafter the receiving Party shall
keep confidential and shall not publish or otherwise disclose and shall
not use for any purpose (except those expressly
*CONFIDENTIAL TREATMENT REQUESTED
14
<PAGE>
permitted under this Agreement) any Confidential Information furnished
to it by the other Party pursuant to this Agreement, and regardless of
the medium on which it is provided, including know-how, except to the
extent that it can be established by the receiving Party by competent
proof that such information:
(a) was already known to the receiving Party, other than
under an obligation of confidentiality, at the time
of disclosure by the other Party;
(b) was generally known to the public or otherwise part
of the public domain at the time of its disclosure to
the receiving Party;
(c) became generally available to the public or otherwise
part of the public domain after its disclosure other
than through any act or omission of the receiving
Party in breach of this Agreement;
(d) was subsequently lawfully disclosed to the receiving
Party by a Third Party having no confidentiality
obligations to the disclosing Party with respect
thereto;
(e) was independently discovered or developed by the
receiving Party without the use of the other Party's
Confidential Information, and such independent
discovery or development can be documented by the
receiving Party's tangible records created at the
time of such independent development.
Each Party may disclose the other's Confidential Information to the
extent such disclosure is reasonably necessary in (i) filing and
prosecuting patent applications, and maintaining patents, (ii)
prosecuting or defending litigation or (iii) filings pursuant to
federal securities laws. However, prior to disclosure of the other
Party's Confidential Information the disclosing Party will give
reasonable advance notice to the other Party, will only disclose the
minimum Confidential Information necessary, and will use reasonable
efforts to secure confidential treatment of such Confidential
Information.
It is understood that patent applications are filed with the
expectation and intention that such applications will, upon publication
of the applications and/or issuance of the resulting patents, result in
the publication or public accessibility of all information disclosed in
the underlying application and prosecution documents; provided,
however, that publication of such Information shall not affect either
Party's ongoing` obligations to the other Party with respect to
Information not so disclosed.
5.2 DISCLOSURE; THIRD PARTY ACCESS. Senomyx agrees that the
LifeSeq-Registered Trademark- Database Product(s) provided hereunder
will be for its internal use only and subject to all the terms and
provisions of Article 5 of this Agreement. Incyte recognizes that
Senomyx, in the normal course of business, utilizes consultants and
commercial enterprises who are bound by a contractual obligation to
Senomyx, including an
15
<PAGE>
obligation of confidentiality to Senomyx. Senomyx may disclose
Confidential Information of Incyte to such consultants, academic
collaborators and commercial enterprises in the context of the
disclosure of Senomyx's own scientific results or the conduct of its
work within the scope of the licenses granted herein, provided,
however, that:
(i) Senomyx has obtained a written obligation of confidentiality
and appropriate use restrictions no less restrictive than
those set forth herein and provided that such third party
shall not further disclose Confidential Information; and
(ii) any such disclosure of Confidential Information which includes
the transfer of biological materials shall be subject to a
written materials transfer agreement which protects the
intellectual property rights of Incyte and Senomyx as set
forth herein, such agreement to include customary provisions
regarding scope of work, publication, protection of
proprietary subject matter and ownership of inventions; such
provisions to include:
(a) that the third party shall use such biological
materials and DNA Sequence Information for the sole
benefit of Senomyx; and
(b) that the third party shall neither have the right to
file patent application(s) and retain rights or
retain any rights to know-how, inventions or
discoveries resulting from the use of the Incyte DNA
Sequence Information or Incyte biological materials;
and
(c) that Incyte proprietary DNA Sequence Information
remains the sole and exclusive property of Incyte.
(iii) a deposit in escrow has been made prior to disclosure in
accordance with this Agreement.
5.3 Senomyx shall not be permitted to publish or disclose the contents of
LifeSeq-Registered Trademark- Database Product(s), Database Information
or any Incyte software or hardware configurations, at any time without
the express written consent of Incyte.
5.4 Confidential Information of either Party shall not be published or
disclosed in any form without the written authorization of the other
Party except as expressly provided for under this Article 5.
6.0 INTELLECTUAL PROPERTY.
6.1 INCYTE RIGHTS. Incyte retains all rights it has to the Collaboration
Patent Rights, Incyte Technology, LifeSeq-Registered Trademark-
Database Product(s), and Database Information (including, without
limitation, Full Length Clones or Full Length Contigs) and no licenses
are granted herein except for those expressly provided in Section 3.1.
16
<PAGE>
SENOMYX RIGHTS. Senomyx retains all rights it has to the Collaboration
Patent Rights, Senomyx Patent Rights and Senomyx Sequences. Subject to
the grant of licenses under Article 4, Senomyx shall retain all
intellectual property rights in and to any F&F Product(s), and
inventions so claiming, discovered or developed by Senomyx and no
licenses are granted herein except for those expressly provided in
Section 3.1.
6.2 COLLABORATION PATENT RIGHTS.
6.2.1 For [...***...] from the Effective Date, for Gene Product(s)
which are [...***...] homologous to Senomyx Sequences
("Senomyx Homologs"), Incyte will provide Senomyx with the
identity and complete sequence of those Senomyx Homologs for
which Incyte has filed patent applications and which claim
composition of matter of the Senomyx Homologs within the later
of (i) [...***...] after the Effective Date or (ii)
[...***...] after such patent application was filed. Senomyx
shall have [...***...] from the time of such disclosure to
select such patent(s) to be included in the Collaboration
Patent Rights.
6.2.2 For [...***...] from the Effective Date, Senomyx agrees to
provide Incyte with the identity and complete sequence of any
Gene Product(s) generated by Senomyx, its consultants or
academic or commercial collaborators, in each case, within two
(2) weeks of the earlier of the identification of the full
length sequence of the Gene Product(s) or the filing of a
patent application on such Gene Product(s). For any such Gene
Product for which Senomyx has not filed a patent application
within [...***...] of obtaining the full length sequence,
Incyte shall have the right to file on such Gene Product(s)
and Senomyx shall provide Incyte with the full length sequence
for such Gene Product and any such patent and/or patent
application filed by Incyte shall be included in Incyte Patent
Rights.
6.2.3 Subject to the grant of licenses under Section 3.1, Senomyx
and Incyte shall co-own all intellectual property rights and
title and interest in Collaboration Patent Rights.
6.3 COLLABORATION PATENT RIGHTS. The out of pocket costs of filing,
maintaining and prosecuting Collaboration Patent Rights shall be borne
by [...***...]. For the Collaboration Patent Rights provided under
Section 6.2.1, [...***...].
The Parties undertake that they shall do all things which are
reasonably necessary or desirable to establish, maintain and assert any
rights or interest of the Parties in Collaboration Patent Rights,
including the execution of all documents necessary or desirable so that
title or other rights can be established and maintained and so that any
patent filings permitted hereunder can be made, prosecuted and
maintained. Such actions shall include cooperative efforts as
reasonable to obtain protection for such Gene Products in Collaboration
Patent
*CONFIDENTIAL TREATMENT REQUESTED
17
<PAGE>
Rights, to the mutual benefit of both Parties, taking into account the
nature of the invention(s) and the state of the law in the respective
jurisdictions, including reasonable commercial efforts to file a
letters patent directed to each such Gene Product.
Senomyx will consult with Incyte as to the preparation, filing,
prosecution and maintenance of Collaboration Patent Rights, and will
provide copies of all such patent applications to Incyte for review, at
least thirty (30) days prior to filing, and will consult with Incyte
regarding filing strategy, including but not limited to types of claims
to be filed and countries in which such patent applications are to be
filed.
If Senomyx decides to abandon any claimed subject matter, in all
countries or in one or more specific countries, it will provide
reasonable notification to Incyte prior to taking any such action and
Incyte will have the right to assume sole control over the prosecution
and maintenance of such claimed subject matter at Incyte's expense. All
such patent rights shall thereinafter be Incyte Patent Rights.
6.4 FREEDOM FROM SUIT: RESEARCH FIELD. With respect to composition of
matter or use claims directed to Gene Product(s) owned or controlled by
Senomyx, Senomyx agrees not to sue or bring any action in any court or
administrative agency or any other government authority alleging
infringement of said patents as a result of activities of Incyte,
Incyte Affiliates or (sub)licensee(s) in the Research Field of Use and
in the F&F Field of Use which would constitute an infringement of said
patents, and further, Senomyx agrees to extend such freedom from suit
or action to further (sub)licensee(s) of Incyte, its affiliates,
licensees or other subscribers of LifeSeq-Registered Trademark-
Database Product(s). The foregoing freedom from suit provisions shall
only apply with respect to such parties which have executed an
agreement which contains a provision with substantially similar rights
to Incyte, its affiliates, licensees and subscribers with respect to
any similar patents rights of said affiliate, (sub)licensee or
subscriber.
6.5 RESEARCH TOOLS, DIAGNOSTICS AND DATABASE PRODUCTS OR SERVICES. With
respect to composition of matter or use claims directed to Gene
Product(s) owned or controlled by Senomyx, Senomyx agrees not to sue or
bring any action in any court or administrative agency or any other
government authority alleging infringement of said patents as a result
of activities of Incyte, Incyte Affiliates or (sub)licensees with
respect to commercialization of Diagnostic Product(s), research tools
or database products or services, including without limitation
microarray-based research tools or database products or services, by
Incyte affiliates, which would constitute an infringement of said
patents, and further, Senomyx agrees to extend such freedom from suit
or action to further (sub)licensee(s)s of Incyte, its affiliates or
licensees with respect to commercialization of research tools or
database products or services.
Senomyx will provide Incyte with a list of the serial numbers of all
issued patents or published patent applications ("Senomyx Patent
Information") containing composition of matter or use claims directed
to Gene Products(s) which were
18
<PAGE>
considered Incyte Know-How at the time of Use by Senomyx, and not
already Known to Senomyx as of the Effective Date. Such list will be
updated by Senomyx on a monthly basis. Incyte will make Patent
Information accessible to all licensees and subscribers which have
executed an agreement which contains a provision which grants
substantially similar rights to Incyte, its affiliates, licensees and
subscribers with respect to any similar patents rights of said
affiliate, sublicensee or subscriber.
6.6 THIRD PARTY PATENTS. Subject to the warranties made hereunder as to
each Party's knowledge of any Third Party rights that may be infringed
by the use of the LifeSeq-Registered Trademark- Database Product(s) and
Database Information as contemplated herein, the Parties acknowledge
that, in order to discover, develop, and/or commercialize one or more
Gene Products, they may require licenses under Third Party patent
rights or such other rights, and it is hereby agreed that it shall be
each Party's responsibility to satisfy itself as to the need for such
licenses and, if necessary, to obtain such licenses. To the extent that
Senomyx obtains any such Third Party licenses, it shall have no
obligation to grant any sublicense or other rights to Incyte or any
Third Party with respect thereto.
7.0 TERM; TERMINATION.
7.1 TERM: TERMINATION AT FULL TERM. This Agreement shall commence as of the
Effective Date and continue unless terminated as provided below.
7.2 BREACH. Material failure by either Party to comply with any of its
obligations under this Agreement shall entitle the other Party to give
to the Party in default, written notice specifying the nature of the
default and requiring it to cure such default. If such default is not
cured within [...***...], or in the case of default under payment
obligations, [...***...], after the receipt of such notice, the
notifying Party shall be entitled, without prejudice to any of its
other rights conferred on it by this Agreement, in addition to any
other remedies available to it by law or in equity, immediately to
terminate this Agreement by giving notice to the other Party. The right
of a Party to terminate this Agreement, as hereinafter provided, shall
not be affected in any way by its waiver or failure to take action with
respect to any previous default.
7.3 ACCRUED RIGHTS SURVIVING OBLIGATIONS. Termination or relinquishment of
this Agreement for any reason shall be without prejudice to any rights,
which shall have accrued to the benefit of either Party prior to such
termination. Upon any termination of this Agreement, the following
provisions will not terminate, but will continue in full force and
effect: 5 (confidentiality), 6 (intellectual property), 8
(representations/warranties), 9 (indemnity), 10 (miscellaneous) and
Exhibit X (Escrow).
*CONFIDENTIAL TREATMENT REQUESTED
19
<PAGE>
8.0 REPRESENTATIONS AND WARRANTIES; COVENANTS.
8.1 REPRESENTATIONS AND WARRANTIES.
Each Party represents and warrants to the other Party that:
(a) it is a corporation or entity duly organized and
validly existing under the laws of the state or other
jurisdiction of incorporation or formation;
(b) it has the corporate power and authority and the
legal right to enter into this Agreement and to
perform its obligations hereunder;
(c) the execution and delivery of this Agreement and the
performance by such Party of the transactions
contemplated hereby have been duly authorized by all
necessary corporate action of such Party; and
(d) the execution, delivery and performance of this
Agreement by such party does not require the consent,
approval or authorization of, or notice, declaration,
filing or registration with, any governmental or
regulatory authority and the execution, delivery or
performance of this Agreement by such party does not
violate any law, rule or regulation applicable to
such party.
8.2 INCYTE'S REPRESENTATIONS Incyte hereby represents, warrants and
covenants to Senomyx that to the best of Incyte's knowledge, as of the
Effective Date it is the owner, or licensee (with the right to grant
sublicenses), of the Incyte Patent Rights and Incyte Know-How, and no
other person, corporate or other private entity, or governmental entity
or subdivision thereof, has or shall have any claim of an ownership
interest with respect to those Incyte Patent Rights and Incyte
Know-How, whatsoever.
For purposes of this Section 8.2, the term "to the best of Incyte's
knowledge" shall mean in each case Incyte's best knowledge without
undertaking any special investigation with respect to such subject
matter beyond the scope of those diligent investigations normally
performed by Incyte in its ordinary course of business operations.
8.3 NO CONFLICTING AGREEMENTS. Neither Party has in effect and after the
Effective Date neither Party shall enter into any oral or written
agreement or arrangement that would conflict with its obligations under
this Agreement. Incyte acknowledges that it has not, as of the
Effective Date, entered into an Incyte Proprietary Program solely in
the Flavors and Fragrance Field of Use.
8.4 COMPLIANCE WITH LAW. Each Party shall be responsible for compliance
with all applicable product safety, product testing, product labeling,
package marking,
20
<PAGE>
and product advertising laws and regulations with respect to its own
activities. Further, Senomyx and Incyte shall each comply with the
regulations of the United States and any other relevant nation
concerning any export or other transfer of technology, services, or
products.
8.5 DISCLAIMERS.
(a) EXCEPT AS EXPLICITLY STATED HEREIN, NOTHING IN THIS AGREEMENT SHALL
BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY INCYTE THAT
ANY PATENT WILL ISSUE BASED UPON ANY PENDING PATENT APPLICATION WITHIN
THE INCYTE PATENT RIGHTS, THAT ANY PATENT WITHIN THE INCYTE PATENT
RIGHTS THAT HAS ISSUED OR ISSUES WILL BE VALID, OR THAT THE USE OF ANY
LICENSE GRANTED HEREUNDER OR THAT THE USE OF ANY INCYTE PATENT RIGHTS
WILL NOT INFRINGE THE PATENT OR PROPRIETARY RIGHTS OF ANY THIRD PARTY.
INCYTE MAKES NO REPRESENTATIONS OR WARRANTIES WITH RESPECT TO SENOMYX's
USE OF THE INFORMATION TO BE PROVIDED TO IT HEREUNDER. EXCEPT AS
EXPLICITLY STATED HEREIN, ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING
WARRANTIES OF MERCHANTABILITY, NOVELTY OR FITNESS OF GENE PRODUCTS OR
DATABASE INFORMATION FOR ANY PARTICULAR PURPOSE, ARE EXCLUDED. INCYTE
MAKES NO WARRANTY THAT THE DATABASE INFORMATION DOES NOT CONTAIN
ERRORS. LIKEWISE, SENOMYX MAKES NO REPRESENTATIONS OR WARRANTIES WITH
RESPECT TO THE INFORMATION PROVIDED BY SENOMYX HEREUNDER EXCEPT AS
EXPLICITLY STATED HEREIN, ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING
WARRANTIES OF MERCHANTABILITY, NOVELTY OR FITNESS OF SENOMYX SEQUENCES,
OR COLLABORATIVE GENE PRODUCTS FOR ANY PARTICULAR PURPOSE, ARE
EXCLUDED.
(b) EXCEPT AS EXPLICITLY STATED HEREIN NEITHER PARTY WILL BE LIABLE FOR
CONSEQUENTIAL OR INCIDENTAL DAMAGES OF ANY NATURE ARISING FROM SUCH
PARTY'S ACTIVITIES UNDER THIS AGREEMENT; PROVIDED, HOWEVER, THAT THIS
LIMITATION SHALL NOT LIMIT THE INDEMNIFICATION OBLIGATION OF SUCH PARTY
UNDER SECTION 9.2 BELOW FOR CONSEQUENTIAL OR INCIDENTAL DAMAGES
RECOVERED BY A THIRD PARTY.
9.0 INDEMNITY.
9.1 INDEMNIFICATION BY SENOMYX. Senomyx shall indemnify, defend and hold
Incyte harmless from and against any and all losses, liabilities,
damages and expenses (including reasonable attorneys' fees and costs)
as a result of claims, demands, actions or other proceedings which may
be made or instituted by a Third Party against any of them arising out
of (i) [...***...], (ii) [...***...]
*CONFIDENTIAL TREATMENT REQUESTED
21
<PAGE>
[...***...], (iii) [...***...] or (iv) [...***...], except to the
extent such losses, liabilities, damages and expenses (including
reasonable attorney's fees and costs) resulted from the gross
negligence, recklessness or intentional misconduct of Incyte.
9.2 INDEMNIFICATION BY INCYTE. Incyte shall indemnify, defend and hold
Senomyx harmless from and against any and all losses, liabilities,
damages and expenses (including reasonable attorneys' fees and costs)
as a result of claims, demands, actions or proceedings which may be
made or instituted by a Third Party against any of them arising out of
(i) [...***...], (ii) [...***...], (iii) [...***...], or (iv)
[...***...] except to the extent such losses, liabilities, damages and
expenses (including reasonable attorney's fees and costs) resulted from
the gross negligence, recklessness or intentional misconduct of
Senomyx.
9.3 PROCEDURE. A Party that intends to claim indemnification under this
Article 9 (the "INDEMNITEE") shall promptly notify the indemnifying
Party (the "INDEMNITOR") of any loss, liability, damage, expense,
claim, demand, action or other proceeding in respect of which the
Indemnitee or any of its affiliates intend to claim such
indemnification, and the Indemnitor shall have the right to participate
in, and, to the extent the Indemnitor so desires, jointly with any
other Indemnitor similarly noticed, to assume the defense thereof with
counsel selected by the Indemnitor and reasonably satisfactory to the
Indemnitee; provided, however, that the Indemnitee shall have the right
to retain its own counsel, with the fees and expenses to be paid by the
Indemnitee. The indemnity provisions in this Article 9 shall not apply
to amounts paid in settlement of any loss, liability, damage, expense,
claim, demand, action or other proceeding if such settlement is
effected without the consent of the Indemnitor, which consent shall not
be withheld unreasonably. The failure to deliver notice to the
Indemnitor within a reasonable time after the commencement of any such
action, if prejudicial to the Indemnitor's ability to defend such
action, shall relieve such Indemnitor of any liability to the
Indemnitee under this Article 9, but the omission so to deliver notice
to the Indemnitor will not relieve it of any liability that it may have
to any Indemnitee otherwise than under this Article 9. The Indemnitor
may not settle the action or otherwise consent to an adverse judgment
in action or other proceeding that materially diminishes the rights or
interests of the Indemnitee without the express written consent of the
Indemnitee. The Indemnitee under this Article 9 and its employees and
agents, shall cooperate fully with the
*CONFIDENTIAL TREATMENT REQUESTED
22
<PAGE>
Indemnitor and its legal representatives in the investigation of any action,
claim or liability covered by this indemnification.
10.0 MISCELLANEOUS PROVISIONS.
10.1 NO PARTNERSHIP. Nothing in this Agreement is intended or shall be
deemed to constitute a partnership, agency, distributorship,
employer-employee or joint venture relationship between the Parties. No
Party shall incur any debts or make any commitments for the other,
except to the extent, if at all, specifically provided herein.
10.2 ASSIGNMENT BY INCYTE. Incyte may not assign any of its rights or
obligations hereunder except: [...***...].
10.3 ASSIGNMENT BY SENOMYX. Senomyx may not assign any of its rights or
obligations hereunder except: [...***...].
[...***...]
In no event will Senomyx's LifeSeq-Registered Trademark- Database
Product(s) access rights, or access to Gene Products be assignable to a
successor or permitted assign if Incyte's obligations thereunder would
increase materially as a result of the assignment (e.g. by having to
service additional sites, or where Incyte would incur a material
increase in expenses and/or services over those provided to Senomyx
hereunder).
*CONFIDENTIAL TREATMENT REQUESTED
23
<PAGE>
10.4 This Agreement shall be binding, upon the successors and permitted
assigns of the Parties. Any assignment not in accordance with the above
shall be void. To the extent that any assignment by Senomyx hereunder
would directly result in an increase in any withholding taxes for which
Incyte is responsible under this Agreement, Senomyx shall be
responsible for such additional taxes.
10.5 NO TRADEMARK RIGHTS. Except as otherwise provided herein, no right,
express or implied, is granted by this Agreement to use in any manner
the names "Incyte" or "Senomyx", or any other trade name or trademark
of Incyte or Senomyx or their affiliates in connection with the
performance of this Agreement.
10.6 PUBLIC ANNOUNCEMENTS. Except as may otherwise be required by law or
regulation, neither Party shall make any public announcement concerning
this Agreement or the subject matter hereof without the prior consent
of the other Party, such consent will not be unreasonably withheld. If
this Agreement is determined to be material to the business of either
Party so that its disclosure is required by law or regulation, the
other Party shall have the right to review and comment of the text of
the disclosure prior to its release to the public.
10.7 ENTIRE AGREEMENT OF THE PARTIES; AMENDMENTS. This Agreement between the
Parties of even date herewith constitute and contain the entire
understanding and agreement of the Parties and cancels and supersedes
any and all prior negotiations, correspondence, representations,
understandings and agreements, whether verbal or written, between the
Parties respecting the subject matter hereof. No waiver, modification
or amendment of any provision of this Agreement shall be valid or
effective unless made in writing and signed by a duly authorized
officer of each of the Parties.
10.8 APPLICABLE LAW. This Agreement shall be governed by and interpreted in
accordance with the laws of the State of California, without reference
to the conflicts of law principles thereof. The parties expressly
exclude application of the United Nations Convention for the
International Sale of Goods.
10.9 NOTICES AND DELIVERIES. Any notice, requests, delivery, approval or
consent required or permitted to be given under this Agreement shall be
in writing and shall be deemed to have been sufficiently given if
delivered in person, transmitted by commercial overnight courier, or
transmitted by telex telegram or telecopy (facsimile, with confirmed
receipt) to the Party to whom it is directed at its address shown below
or such other address as such Party shall have last given by notice to
the other Party (referred to herein as "notice"). All notices shall be
effective upon receipt.
If to Incyte, addressed to:
Incyte Genomics, Inc.
3160 Porter Drive
Palo Alto, CA 94304
Attn: Roy Whitfield, Chief Executive Officer
24
<PAGE>
If to Senomyx, addressed to:
Senomyx, Inc.
11099 N. Torrey Pines Road
La Jolla, CA, 92037
Attn: Vice President, Corporate Counsel
With a copy to the President
10.10 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of
which together shall constitute one and the same instrument.
10.11 FORCE MAJEURE. Force Majeure shall mean an Act of God, flood, fire,
explosion, earthquake, strike, lockout, casualty or accident, war,
civil commotion, act of public enemies, blockage or embargo, or any
injunction, law, order, proclamation, regulation, ordinance, demand or
requirement of any government or any subdivision, authority
representative thereof, or the inability to procure or use materials,
labor, equipment, transportation or energy sufficient to meet
manufacturing needs without the necessity of allocation, or any other
cause whatsoever, whether similar or dissimilar to those enumerated
above, which are beyond the reasonable control of such Party, which the
Party affected has used its reasonable best efforts to avoid, and which
prevent, restrict or interfere with the performance by a Party of its
obligations hereunder. The Party affected by Force Majeure shall give
notice to the other Party promptly in writing and whereupon shall be
excused from those obligations hereunder, to the extent of such
prevention, restriction or interference, provided that the affected
party shall use its commercially reasonable efforts to overcome, avoid
or remove such cause(s) of non-performance and shall continue
performance whenever such cause(s) is removed with all possible speed.
Nothing herein shall be deemed to require any party to settle on terms
unsatisfactory to such party with regard to any strike, lock-out or
other labor difficulty, any investigation or proceeding by any public
authority or any litigation by any Third Party. Nothing in this Section
10.11 shall in any way diminish the representations of a Party made
pursuant to this Agreement.
10.12 Senomyx covenants and agrees that for a period of [...***...] after the
Effective Date, Senomyx shall not [...***...]. The Parties acknowledge
that Senomyx has executed a term sheet for [...***...] providing for
[...***...] to which this Section 10.12 does not apply.
*CONFIDENTIAL TREATMENT REQUESTED
25
<PAGE>
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by
their respective duly authorized officers as of the Effective Date.
INCYTE GENOMICS, INC.
By:
--------------------------------------------
Name:
--------------------------------------------
Title:
--------------------------------------------
Date:
--------------------------------------------
SENOMYX, INC.
By:
--------------------------------------------
Name:
--------------------------------------------
Title:
--------------------------------------------
Date:
--------------------------------------------
26
<PAGE>
EXHIBIT B
SENOMYX SEQUENCES
[...***...]
*CONFIDENTIAL TREATMENT REQUESTED
27
<PAGE>
EXHIBIT E
LIST OF COMPANIES
[...***...]
*CONFIDENTIAL TREATMENT REQUESTED
28
<PAGE>
EXHIBIT X
ESCROW PROVISIONS
The parties agree to the following access monitoring mechanisms intended to
document the use of Database Information by Senomyx and the reporting of such
use to an Escrow Agent under an Escrow Agreement, which such agreement shall
contain the following provisions;
1. Incyte will release to its customers, including Senomyx, routine issues of
the LifeSeq-Registered Trademark- Database Product(s) including sequence data on
a suitable machine-readable medium (Magneto Optical Disk, Tape or CD-ROM) and in
a generally available format acceptable to Senomyx. These releases are
transferred typically on a monthly basis to Senomyx via express courier or
similar secure means and documented by courier's written receipt.
2. A copy of each release will be deposited with the Escrow Agent by Incyte.
3. During the Access Term, Senomyx will promptly report to the Escrow Agent the
clone numbers of Gene Product(s) in Use or Used By Senomyx, and not Known to
Senomyx, in the conduct of research and development or other such use of a Gene
Product along with the date of such use. This information shall be transferred
to the Escrow Agent via electronic mail using a public key cryptography system
acceptable to Senomyx. Senomyx agrees to provide to Incyte, typically on a
monthly basis, a report of the number (count) of Gene Product(s) escrowed,
PROVIDED, HOWEVER, that such reports shall not include the specific clone
numbers corresponding thereto, or otherwise identify the specific Gene
Product(s) used.
4. The Escrow Agent will copy the encrypted information onto a Magneto Optical
disk, Tape or CD-ROM, recorded with date and time of deposit. A back-up will be
maintained in a fire-proof safe. Incyte and Senomyx will be notified of a log of
deposits made but not of the content of the deposits.
5. Incyte may, from time to time, request from Senomyx an accounting of those
clone numbers deposited in escrow corresponding to Gene Product(s) which are
considered subject to the license grant(s) of Article 3.0. Senomyx shall have
thirty (30) days to respond to Incyte's request. If Incyte is not satisfied with
the response, an agent appointed by Incyte and acceptable to Senomyx may examine
the Escrow files corresponding to the Gene Product in accordance with the
provisions of Section 2.3.5.
6. The fees of the Escrow Agent will be borne by Incyte.
29