Research and License Agreement - Research and Diagnostic Systems Inc. and Discovery Genomics Inc.
RESEARCH AND LICENSE AGREEMENT
This Agreement, dated as of 02 August 2001 (the "Effective Date"), is by
and between Research and Diagnostic Systems, Inc., a Minnesota corporation
with principal offices at 614 McKinley Place NE, Minneapolis, Minnesota 55413-
2647 ("R&D") and Discovery Genomics Inc., a Minnesota corporation with
principal offices at 240 Gortner Lab, 1479 Gortner Avenue, St. Paul, MN 55108
("DGI").
Recitals:
A. Techne Corporation ("Techne"), the parent corporation of R&D, and
DGI are parties to a certain Investment Agreement on the same date as this
Agreement. Under the terms of such Investment Agreement, Techne has
subscribed for the purchase of 1.5 (one and one-half) million shares of
preferred stock in DGI.
B. Techne through R&D is engaged in the development, manufacturing and
sales of proteins, antibodies, immunoassays and related products ("R&D
Products") primarily for use as research reagents and has developed
proprietary processes and reagents for manufacturing and using such products.
Techne does not intend to sell its R&D Products as therapeutic agents. Techne
and R&D have acquired patents and have amassed substantial know-how relating
to R&D Products ("Existing R&D Technology").
C. DGI is engaged in the development of therapeutics and therapeutic
targets using nucleotide analogues, zebrafish and zebrafish embryos, and the
sleeping beauty transposon. DGI owns proprietary technology relating to the
use of certain nucleotide analogues in the zebrafish for the determination of
gene function and the sleeping beauty transposon and uses therefor ("Existing
DGI Technology"), including certain patent applications and invention
disclosures identified on Exhibit A hereto.
D. DGI is also engaged in the development of drug screening products
and services employing DGI Technology for the discovery and development of
therapeutics ("DGI Products"). As an outgrowth of these developments and
services DGI will discover genes and their gene products ("Proteins") and may
have need for antibodies against these Proteins ("Antibodies"), and
immunoassays to quantitate these Proteins ("Immunoassays"). For purposes of
this Agreement Proteins, Antibodies, and Immunoassays will be known as
"Products."
E. Dr. Stephen C. Ekker ("Ekker"), Dr. Perry B. Hackett, Jr.
("Hackett"), Dr. R. Scott McIvor ("McIvor"), and Dr. David Largaespada
("Largaespada") are the founders ("Founders") and have substantial expertise
in the field. Hackett is a full-time employee of DGI and is devoting his time
and energies to research and development on behalf of DGI and DGI will own all
right, title and interest to the results of such research and development.
Ekker, McIvor, and Largaespada are part-time employees or consultants to DGI.
Each will be devoting some time and energy to research and development on
behalf of DGI. DGI will own all right, title and interest to the results of
such research and development performed within DGI's facilities for the
benefit of DGI.
F. Techne and R&D wish to obtain an exclusive license from DGI to make,
use, sell and import DGI Products.
In partial consideration of the agreement of Techne to subscribe for the
purchase of shares of DGI pursuant to the Investment Agreement and in
consideration of mutual agreements contained herein, the Parties therefore
agree as follows:
1. DGI RESEARCH
1.1. Research. DGI and Founders agree to use their best efforts to
diligently and efficiently discover and develop DGI Products.
1.2. Products To Be Supplied To R&D. Representatives of R&D and DGI will
meet at least once each six (6) months to determine which DGI
Products will be made available to R&D for development as research
reagent products. At R&D's request, and upon mutual agreement by the
Parties as described herein, DGI will provide R&D, at no charge, with
reasonable quantities of cDNA or the necessary starting material
("Starting Materials") of each such DGI Product it discovers in order
to allow R&D to derive a manufacturing process for such DGI Product
and for the potential development of Antibodies and Immunoassays.
R&D's use and sale of such DGI Products shall be governed by the
terms of Section 2.2.
1.3. Joint Discoveries. If DGI jointly with any other party discovers any
Product that is of interest to R&D, it will use commercially
reasonable efforts to obtain a license for R&D commensurate in scope
with the license granted R&D under Section 3 of this Agreement. Upon
grant of license or permission of the third party, DGI will provide
R&D with reasonable quantities of Starting Materials of Joint
Discoveries, at no charge, to allow R&D to produce such Products.
1.4. Products Not of Current Interest to R&D. If DGI discovers a Product
that is not of current interest to R&D, it may forward said Starting
Materials to R&D for expression and antibody development at R&D's
discretion, but at no charge to DGI, under the same terms and
conditions of Section 2.1. If R&D does undertake such expression and
antibody development, any resulting Proteins and Antibodies shall be
included in the license set forth in Section 3 below.
2. R&D TECHNICAL ASSISTANCE
2.1. Products To Be Supplied To DGI. Upon receipt of Starting Materials
for Products from DGI, R&D will use commercially reasonable efforts
to develop processes to produce Products and without charge provide
reasonable quantities (up to 30 milligrams but not more than ten (10)
percent of R&D's total production) of market quality Protein to DGI
for its research use. R&D agrees that the LPS/endotoxin levels of
these preparations will be within the specifications of currently-
available catalog items manufactured by R&D, or as agreed between
representatives of R&D and DGI. In addition, R&D will provide DGI
with 100 milligrams of total monoclonal antibodies and 500 milligrams
of polyclonal total IgG antibody for each molecule. DGI will have
access to every antibody (monoclonal or polyclonal) generated against
a given Protein in order to evaluate which is most appropriate for
its research purposes, and to determine which it chooses to receive
in quantity.
2.2. Exclusivity of Supply. R&D will not market or make available to third
parties any Product resulting from this Agreement sooner than
mutually agreed or one (1) year from receipt of Starting Materials,
whichever is earlier (such period of time being the "Restriction
Period"). DGI agrees not to distribute to third parties any such
Products or other materials, other than in connection with a
scientific collaboration (provided that any collaborator involved in
such scientific collaboration shall be prevented from selling,
distributing or disclosing such Product(s) to any third parties) or
fee for service, prior to publication. If R&D fails to provide DGI
with Product within one year after DGI provides Starting Material, or
R&D informs DGI of its intent not produce Products from said Starting
Material then DGI may provide the Starting Material to another group
for the purposes of Protein or Antibody production.
a) DGI acknowledges that R&D should be free to market Products in a
manner consistent with the license granted under Section 3 of this
Agreement upon expiration of the Restriction Period. However, DGI
may ask for an extension of the Restriction Period with respect to
any particular Product in cases where its competitive advantage
may be jeopardized. If DGI requests such an extension,
representatives of R&D and DGI will meet and discuss DGI's
request. In the event R&D and DGI are unable to agree on such an
extension after good faith negotiations, DGI shall be entitled to
unilaterally extend the Restriction Period by six (6) months with
respect to that Product. DGI may request and require additional
extensions on the same terms, but in no event shall the
Restriction Period for a given Product extend beyond the
publication by DGI or a third party of the full sequence or
biological activity of such Product.
b) R&D may ask for a waiver of the Restriction Period (including any
extensions thereof) in cases where its competitive advantage may
be jeopardized, which permission shall not be unreasonably
withheld by DGI.
2.3. Other Research Reagents. R&D may also provide DGI with other
research reagents from its stock catalog at special prices, as
mutually agreed, provided that such reagents are used exclusively by
DGI for its research. DGI may also seek in certain circumstances to
obtain Protein from a third party provider via non-biological
methods, such as chemical synthesis, but will do so only with the
provider's understanding that such products are not subsequently sold
by the provider to compete with R&D products.
2.4. Progress Reports. Representatives of DGI and R&D will track the
progress of the projects encompassed by this agreement on a regular
basis, and provide written reports on the status of protein and
antibody production, and biological activity assessment, at least
twice yearly.
3. LICENSE
3.1. Research Marketplace License to R&D. DGI grants to R&D a perpetual,
irrevocable, royalty-free, exclusive worldwide license under DGI
Technology to make, have made, sell, and import Products, as
designated by mutual agreement as set out in section 1.2, in the
Biomedical Research Marketplace. DGI also grants to R&D perpetual,
irrevocable, royalty-free, exclusive worldwide license under DGI
Technology to use any Products in the Biomedical Research
Marketplace, provided that DGI retains the right to use such Products
for its own research and may grant scientific collaborators the
limited right to use such Products solely in furtherance of DGI's
research.
3.2. Diagnostic Marketplace License to R&D. Some Products made available
to R&D as set out in section 1.2 herein may have applicability in the
Diagnostic Marketplace. If a Product is found to be of such use, the
parties will negotiate in good faith to provide license to R&D to
make, have made, sell, import, and sublicense for the Diagnostic
Marketplace. Any license for the Diagnostic Marketplace will include
royalties paid to DGI for sales of Product and a sharing of any
sublicensing fees. Terms are to be comparable to those common in
licensing agreements between unrelated parties for diagnostic
products in markets similar to those for the product at issue.
3.3. For purposes of these licenses:
a) "DGI Technology" means all of DGI's technology relating to the
usage of nucleotide analogues for RNA antisense in Zebrafish or
Zebrafish embryos and the Sleeping Beauty Transposon including,
but not limited to, any patents, patent applications (set out in
Appendix A herein), Confidential Information (defined in Section
5.1 below) or other proprietary technology, whether based on or
incorporating Existing DGI Technology, technology developed by
DGI, or technology in which DGI acquires rights during the term of
this Agreement.
b) "Biomedical Research Marketplace" means the worldwide market where
the end user employs the products to gain knowledge. Excluded
from the Biomedical Research Marketplace are uses in which the
product is used to treat or diagnose a human disease or condition,
except for purposes of research.
c) "Diagnostic Marketplace" means the worldwide market where the end
user employs the product to detect the presence or absence of a
disease or condition.
4. OWNERSHIP OF TECHNOLOGY
4.1. Existing Technology. Nothing in this Agreement shall give DGI any
right, title or interest in the Existing R&D Technology. Other than
the License granted in Section 3, nothing in this Agreement shall
give Techne or R&D any right, title or interest in the Existing DGI
Technology. DGI warrants that it owns the Existing DGI Technology
and has the right to grant the license granted in Section 3. This
warranty does not encompass the use of the licensed technology for
therapeutic uses falling outside the Biomedical Research Marketplace
and the Diagnostic Marketplace.
4.2. Enforcement of Rights in Technology. If either party knows or has
reason to believe that a third party is infringing rights in any DGI
Technology, either directly or by inducement or contributorily, the
party possessing such knowledge or belief shall promptly notify the
other party thereof. DGI shall have the first right to commence
judicial proceedings for its own benefit to attempt to stop such
infringement. Each party agrees to fully cooperate with the other
party by providing, at the other party's expense, any assistance that
such other party deems necessary or appropriate in the conduct of
such suit, including appearing as witness and, if required by law or
if requested by the party bringing suit, to join as a party
plaintiff. If DGI fails to either stop the infringing activities or
bring any infringement, unfair competition or other appropriate suit
against the alleged infringer within one hundred eighty (180) days of
first learning of the infringement, the other party shall have the
option to bring such suit at its own expense. The party initiating
judicial proceedings shall be entitled to retain any award resulting
therefrom. If the party initiating the suit notifies the other party
of its intent to settle such suit, and if the other party does not
wish to enter into such settlement, such other party may obtain the
right to continue such suit at its own expense and to retain the
entire award or subsequent settlement by guaranteeing to pay the
initiating party the amount which it would have received from the
proposed settlement.
5. CONFIDENTIALITY
5.1. Definition of Confidential Information. For purposes of this
Agreement, "Confidential Information" means information not generally
known which is proprietary to the disclosing party and includes,
without limitation, all ideas, inventions, discoveries, improvements,
product designs, manufacturing methods and processes techniques,
technical information, engineering data, specifications, know-how,
formulae, computer programs and other confidential processes, methods
and information which relate to any Regulatory Factor owned by the
disclosing party or a disclosing party's other products. All
information identified as being "confidential" or "trade secret"
shall be presumed to be Confidential Information. Confidential
Information shall include any information described above which has
already been disclosed to the receiving party by the disclosing
party. Confidential Information does not include any information
which :
a) was in the public domain at the time of disclosure by the
disclosing party to the receiving party;
b) is published or otherwise comes into the public domain after its
disclosure to the receiving party through no violation of this
Agreement by the receiving party;
c) was in the receiving party's possession at the time of disclosure
to it by the other party;
d) is disclosed to the receiving party by a third party not under an
obligation of confidence to the disclosing party; or
e) is required to be produced by any applicable court, government
agency, regulation or statute.
5.2. Security of Confidential Information. The receiving party agrees to
treat all Confidential Information as confidential and to use
commercially reasonable efforts to protect the Confidential
Information from any unauthorized use or disclosure by it or its
employees, agents or representatives and shall at least use the same
degree of care to protect the Confidential Information as the
receiving party uses to protect its own confidential information.
The receiving party shall limit access to the Confidential
Information to those employees, agents and representatives of the
receiving party to whom it is necessary to disclose the Confidential
Information in furtherance of such party's rights, and performance of
such party's obligations, under this Agreement.
5.3. Sale of Products. It is acknowledged that the sale of Products may
inherently disclose Confidential Information. Nonetheless, sale of
Products in accordance with this Agreement shall not be deemed a
breach of any obligation of confidentiality.
6. INDEMNIFICATION
6.1. By DGI. DGI agrees to indemnify and hold R&D, and its affiliates,
shareholders, officers, directors, employees, successors and assigns,
harmless from and against any and all claims, actions, liabilities,
damages, losses, costs and expenses, including, without limitation,
reasonable attorneys' fees and legal expenses, actually incurred by
any such party in connection with any claim, action or proceeding
asserted by any person or entity arising from any matter which
constitutes a breach of DGI's obligations or representations and
warranties provided herein.
6.2. By R&D. R&D agrees to indemnify and hold DGI, and its affiliates,
shareholders, officers, directors, employees, successors and assigns,
harmless from and against any and all claims, actions, liabilities,
damages, losses, costs and expenses, including, without limitation,
reasonable attorneys' fees and legal expenses, actually incurred by
any such party in connection with any claim, action or proceeding
asserted by any person or entity arising from any matter which
constitutes a breach of R&D's obligations or representations and
warranties provided herein.
7. MISCELLANEOUS PROVISIONS
7.1. Survival. All of the representations and warranties made in this
Agreement and all terms and provisions hereof intended to be observed
and performed by the parties after the termination hereof, including
the obligations of Section 3 ("LICENSE") and Section 5
("CONFIDENTIALITY"), shall survive such termination and continue
thereafter in full force and effect.
7.2. Complete Agreement. This Agreement constitutes the entire agreement
of the parties with respect to the subject matter described in this
Agreement and shall supersede all previous negotiations, commitments
or writings with respect to such subject matter.
7.3. Waiver, Discharge, etc. This Agreement may not be released,
discharged, abandoned, changed or modified in any manner, except by
an instrument in writing signed on behalf of each of the parties to
this Agreement by their duly authorized representatives. The failure
of either party to enforce at any time any of the provisions of this
Agreement shall in no way be construed to be a waiver of any such
provision, nor in any way to affect the validity of this Agreement or
any part of it or the right of either party after any such failure to
enforce each and every such provision. No waiver of any breach of
this Agreement shall be held to be a waiver of any other or
subsequent breach.
7.4. Applicable Law. This Agreement shall be governed by, and construed
in accordance with, the law of the State of Minnesota (other than its
law with respect to conflicts of laws), including all matters of
construction, validity and performance.
7.5. Successors and Assigns. This Agreement shall be binding upon and
inure to the benefit of the parties to this Agreement and their
successors or assigns, provided that, except as otherwise provided
herein, the rights and obligations of either party under this
Agreement may not be assigned without the written consent of the
other party. Either party, however, may assign its rights and
obligations to an entity succeeding to substantially all of its
assets and business.
7.6. Execution in Counterparts. This Agreement may be executed in one or
more counterparts, all of which shall be considered one and the same
agreement, and shall become a binding agreement when one or more
counterparts have been signed by each party and delivered to the
other party.
7.7. Titles and Headings. Titles and headings to sections herein are
inserted for the convenience of reference only and are not intended
to be a part of or to affect the meaning or interpretation of this
Agreement.
7.8. Benefit. Nothing in this Agreement, expressed or implied, is
intended to confer on any person other than the parties to this
Agreement or their respective successors or assigns, any rights,
remedies, obligations or liabilities under or by reason of this
Agreement.
7.9. Notices. Any notice or other communication required or permitted
under this Agreement shall be in writing and shall be deemed to have
been given, when received, if personally delivered or delivered by
telegram, telex or facsimile, or, when deposited, if placed in the
U.S. Mails for delivery by registered or certified mail, return
receipt requested, postage prepaid and addressed to the appropriate
party at the addresses set forth on the first page of this Agreement.
Addresses may be changed by written notice given pursuant to the
provisions of this paragraph; however, any such notice shall not be
effective, if mailed, until three (3) working days after depositing
in the U.S. Mails or when actually received, whichever occurs first.
7.10.Severability. The invalidity of any portion hereof shall not affect
the validity, force or effect of the remaining portions hereof.
7.11.Execution of Further Documents. Each party agrees to execute and
deliver without further consideration any further applications,
licenses, assignments or other documents, and to perform such other
lawful acts as the other party may reasonably require to fully secure
and/or evidence the rights or interests herein.
7.12.Arbitration. Any dispute arising out of or relating to this Agreement
or the alleged breach of it, the making of this Agreement or the
agreements referenced herein, including claims of fraud in the
inducement, any dispute relating to Products available to R&D as set
forth in Section 1.2, and any dispute relating to the licensing of
Products for the Diagnositc Markeplace as set forth in Section 3.2,
shall be discussed between the disputing parties in a good faith effort
to arrive at a mutual settlement of any such controversy. If,
notwithstanding, such dispute cannot be resolved, such dispute shall be
settled by binding arbitration. Judgment upon the award rendered by
the arbitrator may be entered in any court having jurisdiction thereof.
The arbitrator shall be a retired state or federal judge or an attorney
who has practiced in substantive areas similar to the issues under
dispute for at least 10 years. If the parties cannot agree on an
arbitrator within 20 days, any party may request that the chief judge
of the District Court for Hennepin County, Minnesota, select an
arbitrator. Arbitration will be conducted pursuant to the provisions
of this Agreement, and the commercial arbitration rules of the American
Arbitration Association, unless such rules are inconsistent with the
provisions of this Agreement, but without submission of the dispute to
such Association. Limited civil discovery shall be permitted for the
production of documents and taking of depositions. Unresolved
discovery disputes may be brought to the attention of the arbitrator
who may dispose of such dispute. The arbitrator shall have the
authority to award any remedy or relief that a court of this state
could order or grant; provided, however, that punitive or exemplary
damages shall not be awarded. The arbitrator may award to the
prevailing party, if any, as determined by the arbitrator, all of its
costs and fees, including the arbitrator's fees. Unless otherwise
agreed by the parties, the place of any arbitration proceedings shall
be Hennepin County, Minnesota.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed in the manner appropriate for each.
RESEARCH AND DIAGNOSTIC SYSTEMS, INC.
By____________________________
Thomas E. Oland
President
DISCOVERY GENOMICS, INC.
By____________________________
John E. Haaland, Ph.D.
President
EXHIBIT A
RESEARCH AND LICENSE AGREEMENT
DGI is engaged in the development of therapeutics and therapeutic targets
using nucleotide analogues, zebrafish and zebrafish embryos, and the sleeping
beauty transposon. DGI owns proprietary technology relating to the use of
certain nucleotide analogues in the zebrafish for the determination of gene
function and the sleeping beauty transposon and uses therefor ("Existing DGI
Technology"), including certain patent applications and invention disclosures
identified below.
Existing DGI Technology, exclusively licensed to DGI by the University of
Minnesota:
Role of EC1 (heparin sulphate-6-0-sulfurotransferase) in the Vascular
Formation in Zebrafish, filed July 6, 2001.
"DNA-Based Transposon System for the Introduction of Nucleic Acid into DNA
of a Cell," U.S. Patent Application Serial No. 142,593, filed September 10,
1998 (from UM Docket 96135).
"Nucleic Acid Transfer Vector for the Introduction of Nucleic Acid into the
DNA of a Cell," U.S. Patent Application Serial No. 191,572 filed November
13, 1998 (from UM Docket 99002).
"Vector-Mediated Delivery of Integrating Transposon Sequences," U.S. Patent
Application Serial No. 569,257 filed May 11, 2000 (from UM Docket 99131).
"Germline Transgenesis in Animals," U.S. Provisional Patent Application
Serial No. 60/229,072 filed August 30, 2000 (from UM Docket Z01029).
Improvement under License L1185. U/M Docket Z01092: Fluorescent-protein
Based Gene Detection using Standard and Insertion Site Context DNA Elements
in Zebrafish, July 24, 2001.
"INHIBITION OF GENE EXPRESSION USING POLYNUCLEOTIDE ANALOGUES", US Patent
application filed 7/30/01. Includes information found within two separate
morphant-based provisional applications, the earliest was filed 7/31/00.
- U.S. Provisional Patent Application Serial No. 60/221,722142,593, filed
July 31, 2000, entitled Morpholino Substituted Oligonucleotides to
Inhibit Gene Expression in Aquatic Organisms.
- U.S. Provisional Patent Application Serial No. 76/169,890 filed
November 22, 2000 entitled Inhibition of Gene Expression in Vertebrate
Organisms.