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EXHIBIT 10.1
RESEARCH COLLABORATION AND LICENSE AGREEMENT
By and Between
ARQULE, INC.
and
AMERSHAM PHARMACIA BIOTECH AB
Dated August 13, 1998
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RESEARCH COLLABORATION AND LICENSE AGREEMENT
This Research Collaboration and License Agreement (this "Agreement") is
entered into as of August 13, 1998 (the "Effective Date") by and between ArQule,
Inc. ("ArQule"), a Delaware corporation, and Amersham Pharmacia Biotech AB
("APB"), a Swedish corporation having its principal office at S-751-84, Uppsala,
Sweden.
R E C I T A L S
WHEREAS, APB and ArQule previously entered into the Prior Research and
Development Agreement (as herein defined);
WHEREAS, pursuant to the Prior Research and Development Agreement, APB
and ArQule conducted joint research and development activities to determine the
feasibility of applying the ArQule technologies to certain APB product areas;
and
WHEREAS, APB and ArQule now desire to extend and expand their joint
research efforts, whereby pursuant to this Agreement and to the
Commercialization Agreement (as hereinafter defined), the parties will jointly
develop[*].
NOW, THEREFORE, in consideration of the foregoing and the covenants and
promises set forth herein, APB and ArQule hereby agree as follows:
1. DEFINITIONS.
1.1 "Affiliate" means any legal entity (such as a corporation,
partnership, or limited liability company) that is controlled by a party. For
the purposes of this definition, the term "control" means (i) beneficial
ownership of at least fifty percent (50%) of the voting securities of a
corporation or other business organization with voting securities or (ii) a
fifty percent (50%) or greater interest in the net assets or profits of a
partnership or other business organization without voting securities.
1.2 "APB Background Technology" means Background Technology that
(i) is owned or controlled by APB and (ii) APB has the right to license or
sublicense and use for the purposes set forth in this Agreement.
1.3 "APB Collaboration Technology" means Collaboration Technology
that was conceived, developed, discovered or reduced to practice solely by
employees or others acting on behalf of APB pursuant to this Agreement.
1.4 "APB Core Technology" means Technology that principally
consists of [*].
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1.5 "APB Patent Rights" means Patent Rights covering APB
Technology.
1.6 "APB Technology" means (i) APB Background Technology, (ii) APB
Collaboration Technology, and (iii) Joint Background Technology and Joint
Collaboration Technology that is within the APB Core Technology.
1.7 "ArQule Background Technology" means Background Technology
that (i) is owned or controlled by ArQule, and (ii) ArQule has the right to
license or sublicense and use for the purposes set forth in this Agreement.
1.8 "ArQule Collaboration Technology" means Collaboration
Technology conceived, developed, discovered or reduced to practice solely by
employees or others acting on behalf of ArQule pursuant to this Agreement.
1.9 "ArQule Compound" means a small organic chemical molecule that
is synthesized and optimized by ArQule and is capable of binding to a particular
Biomolecule, including a chemical derivative thereof or a compound that exhibits
structural similarity thereto.
1.10 "ArQule Core Technology" means Technology that principally
consists of [*].
1.11 "ArQule Patent Rights" means Patent Rights covering ArQule
Technology.
1.12 "ArQule Technology" means (i) ArQule Background Technology,
(ii) ArQule Collaboration Technology, and (iii) Joint Background Technology and
Joint Collaboration Technology that is within the ArQule Core Technology.
1.13 "Background Technology" means Technology that is useful in the
field of [*] and which is conceived, developed, discovered, reduced to practice,
acquired, or licensed by a party prior to or outside of this Agreement.
1.14 "Biomolecules" means polypeptides, proteins, oligonucleotides,
polynucleotides, oligosaccharides, polysaccharides or any combination of such
molecules, whether produced by natural means or by organic synthesis on solid
support or in solution.
1.15 [*].
1.16 "Collaboration Milestones" means the specific collaboration
objectives described in EXHIBIT B, as amended and updated by the parties
pursuant to Section 7.1.
1.17 "Collaboration Technology" means Technology that was
conceived, developed, discovered, or reduced to practice pursuant to this
Agreement.
1.18 "Collaborative Research Program" means the collaborative
research program described in Article 2 of this Agreement.
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1.19 "Commercialization Agreement" means the agreement entered into
between the parties dated as of the Effective Date and relating to their joint
efforts in the marketing, distribution and sale of [*].
1.20 "Confidential Information" has the meaning set forth in
Section 6.1.
1.21 "Customer Project" means a project to deliver [*] to a third
party customer.
1.22 "Customer Project Plan" means a description of activities that
each party will conduct with respect to a particular Customer Project.
1.23 [*].
1.24 "Joint Background Technology" means Background Technology that
was conceived, developed, discovered, or reduced to practice pursuant to the
Prior Research and Development Agreement by employees or others acting on behalf
of ArQule together with employees or others acting on behalf of APB pursuant to
this Agreement.
1.25 "Joint Collaboration Technology" means Collaboration
Technology that was conceived, developed, discovered, or reduced to practice by
employees or others acting on behalf of ArQule together with employees or others
acting on behalf of APB pursuant to this Agreement.
1.26 "Joint Patent Rights" means Patent Rights covering Joint
Technology.
1.27 "Joint Technology" means Joint Background Technology and Joint
Collaboration Technology, excluding Technology that is within the ArQule Core
Technology or APB Core Technology.
1.28 "Licensed Product" means[*].
1.29 "Licensed Service" means[*].
1.30 [*].
1.31 "Net Sales" means[*].
In the event any Licensed Product or Licensed Service is sold or
provided as a component of a combination of functional elements, Net Sales for
purposes of determining royalty payments on such combination shall be
calculated[*].
1.32 "Patent Rights" means any United States or foreign patent
applications, together with any and all patents that have issued or in the
future issue therefrom, and all related
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divisionals, continuations, continuations-in-part, reissues, renewals,
extensions or additions and foreign counterparts thereof.
1.33 "Prior Research and Development Agreement" means the Research
and Development Agreement between the parties dated March 10, 1995 and the
amendments thereto dated February 19, 1996 (Amendment No. 1), September 25, 1996
(Amendment No. 2) and June 27, 1997 (Amendment No. 3).
1.34 "Program Manager" has the meaning set forth in Section 2.3.
1.35 "Proprietary Materials" has the meaning set forth in Section
6.2(a).
1.36 "Royalty Period" means the partial calendar quarter commencing
on the date on which the first Licensed Product is sold or the first Licensed
Service is provided, and every complete or partial calendar quarter thereafter
during which APB has the obligation to pay a royalty to ArQule pursuant to
Article 9.
1.37 "Steering Committee" means the Steering Committee described in
Article 3.
1.38 "Technical Milestones" means the specific technical milestones
described in the Technology Development Plan attached as EXHIBIT A, as
subsequently amended by the parties.
1.39 "Technology" means any proprietary development, idea, design,
concept, technique, process, invention, Proprietary Materials, discovery, or
improvement, whether or not patentable or copyrightable.
1.40 "Technology Development Plan" means a plan for the
development, maintenance and improvement of [*].
1.41 "Valid Claim" means either (i) a claim of an issued patent
that has not been held unenforceable or invalid by an agency or a court of
competent jurisdiction in any unappealable or unappealed decision or (ii) a
claim of a pending patent application that has not been abandoned or finally
rejected without the possibility of appeal or refiling.
2. THE COLLABORATIVE RESEARCH PROGRAM.
2.1 OVERVIEW OF COLLABORATIVE RESEARCH PROGRAM. The overall
purposes of the Collaborative Research Program are [*].
2.2 OVERALL CONDUCT OF THE COLLABORATIVE RESEARCH PROGRAM. During
the term of this Agreement, ArQule and APB agree to use their best efforts to
conduct all activities pursuant to the Collaborative Research Program in
accordance with the Technology Development Plan and each Customer Project Plan
and as directed by the Steering Committee.
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2.3 PROGRAM MANAGER. Each party shall designate a program manager
(the "Program Manager") who shall have primary responsibility for (i) the
performance of activities pursuant the Collaborative Research Program conducted
by such party and (ii) coordination of efforts with the other party. The Program
Managers shall report on project activities directly to the Steering Committee.
Each party shall have the right to change its Program Manager immediately upon
written notice to the other party.
2.4 RESPONSIBILITIES OF ARQULE.
(a) RESPONSIBILITIES UNDER THE TECHNOLOGY DEVELOPMENT
PLAN. In connection with the development of the technology platform, ArQule will
be responsible for the activities set forth in the Technology Development Plan.
(b) RESPONSIBILITIES IN THE CONDUCT OF CUSTOMER PROJECTS.
ArQule shall be responsible for identifying and synthesizing ArQule
Compounds[*]. ArQule's specific responsibilities will be set forth in the
Customer Project Plan, and in the event of any inconsistency between the
Customer Project Plan and this Section 2.4(b), the Customer Project Plan
shall govern.
2.5 RESPONSIBILITIES OF APB.
(a) RESPONSIBILITIES UNDER THE TECHNOLOGY DEVELOPMENT
PLAN. In connection with the development of the technology platform, APB will be
responsible for the activities set forth in the Technology Development Plan.
(b) RESPONSIBILITIES IN THE CONDUCT OF CUSTOMER PROJECTS.
APB shall be responsible for development of [*] for use with a particular ArQule
Compound and pursuant to a Customer Project. Such activities will generally
include, without limitation, [*]. APB's specific responsibilities will be set
forth in each Customer Project Plan, and in the event of any inconsistency
between the Customer Project Plan and this Section 2.5(b), the Customer Project
Plan shall govern.
2.6 PERSONNEL. In addition to the Program Managers, each party
agrees to assign to the Collaborative Research Program such qualified and
competent members of its staff as may be required to achieve the aims and goals
set forth in the Technology Development Plan and in each Customer Project Plan.
All such commitments of personnel, including the number of dedicated full-time
equivalents to be committed by each party, shall be set by the Steering
Committee.
2.7 PAYMENT OF COSTS AND EXPENSES. Except for the research fees
payable to ArQule by APB pursuant to Section 9.1, each party shall bear the
costs and expenses of its respective activities in connection with the
Collaborative Research Program, and shall promptly make payments to third
parties arising therefrom.
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2.8 REPORTS AND RECORDS. Each party agrees to promptly and
regularly communicate to the other party all research results arising from
activities under the Collaborative Research Program, including quarterly reports
to the Steering Committee detailing all research activities and research results
conducted or obtained by such party. Each party shall prepare and maintain
adequate records, including bound laboratory notebooks maintained in accordance
with standard scientific procedures, containing all appropriate data reflecting
all research results arising from activities pursuant to the Collaborative
Research Program.
3. GOVERNANCE OF THE COLLABORATIVE RESEARCH PROGRAM.
3.1 CREATION OF STEERING COMMITTEE. The parties hereby create a
Steering Committee which shall consist of six (6) members, including [* ]. If
any member of the Steering Committee dies, resigns, or becomes incapacitated,
the party which designated such member shall designate his or her successor
(whose term shall commence immediately), and any party may withdraw the
designation of any of its members of the Steering Committee and designate a
replacement (whose term shall commence immediately) at any time by giving notice
of the withdrawal and replacement to the other party. If a member of the
Steering Committee cannot attend a meeting, that member may appoint a substitute
to attend the meeting in his or her place. The chairperson of the Steering
Committee shall be designated annually on an alternating basis between the
parties. The party not designating the chairperson shall designate one of its
representatives as secretary of the Steering Committee for such year.
3.2 MEETINGS OF THE STEERING COMMITTEE. Regular meetings of the
Steering Committee shall be held semiannually within forty-five (45) days of the
end of each calendar half year, or at such other times as the parties may deem
appropriate, at such times and places as the members of the Steering Committee
shall from time to time agree. Special meetings of the Steering Committee may be
called by either party on fifteen (15) days written notice to the other party
unless notice is waived by the parties. All meetings shall alternate between the
offices of the parties unless the parties otherwise agree. In the event a
Steering Committee member is unable to attend a meeting of the Steering
Committee, such Steering Committee member may designate an alternate member who
will serve solely for that Steering Committee meeting.
3.3 DECISIONS OF THE STEERING COMMITTEE. A quorum of the Steering
Committee shall be present at any meeting of the Steering Committee if every
member or a duly appointed substitute are present at such meeting in person or
by telephone. If a quorum exists at any meeting, the unanimous consent of all
members of the Steering Committee present at such meeting is required to take
any action on behalf of the Steering Committee. Unless otherwise specifically
stated to the contrary herein, no individual party shall purport to act on
behalf of the other party unless and then only to the extent authorized to do so
by the Steering Committee.
3.4 RESPONSIBILITY OF STEERING COMMITTEE. The Steering Committee
shall be responsible for oversight of the day-to-day conduct and progress of the
Collaborative Research
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Program and approval of all activities relating to the Collaborative Research
Program, including without limitation:
(i) preparing and recommending overall budgets
for the Technology Development Plans and the Customer Project Plans;
(ii) recommending changes to the Collaboration
Milestones subject to Section 7.1;
(iii) assessing, at least once every [*] during
the first [*] of the Collaborative Research Program, whether the parties are on
target to meet the Collaboration Milestones and Technical Milestones, and
conducting a formal evaluation whether the Collaboration Milestones have been
met at the end of that [*] period;
(iv) determining the type of intellectual
property protection that should be sought for a particular item of Joint
Technology, e.g. patent protection or trade secret protection, and allocating
the costs of intellectual property protection of the Joint Technology between
the parties;
(v) determining which party should take the lead
regarding the preparation, filing, prosecution and maintenance of Joint Patent
Rights, and determining which party should take the lead regarding the
enforcement or defense of infringement or declaratory judgment actions relating
to the Joint Patent Rights, and allocating any expenses relating thereto between
the parties;
(vi) recommending, for the purpose of calculating
Net Sales pursuant to Section 1.31, [*] of the Licensed Product or Licensed
Service portion of a combination product;
(vii) directing and administering the
Collaborative Research Program and overseeing the conduct of each Customer
Project, including preparing, updating and revising the Customer Project Plans;
(viii) preparing, updating and revising the
Technology Development Plan including setting, reviewing and modifying the
Technical Milestones;
(ix) reviewing reports and research results
submitted by ArQule and APB regarding their respective activities pursuant to
the Collaborative Research Program, providing a forum for the exchange of
scientific information among the scientists participating in the Collaborative
Research Program, and approving public disclosures of technical information; and
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(x) determining whether a Technology that is
conceived, developed, discovered or reduced to practice pursuant to the Prior
Research and Development Agreement or this Agreement constitutes an APB
Technology, an ArQule Technology, or a Joint Technology.
The Steering Committee actions described in items (i), (ii), and (vi) require
the approval of the Chief Executive Officers of each party.
3.5 STEERING COMMITTEE REPORTS. Within ten (10) days following
each meeting of the Steering Committee held pursuant to Section 3.2, the
secretary of the Steering Committee shall prepare and send to the members of the
Steering Committee a detailed written report of actions taken at the meeting in
such form and containing such detail as shall be determined by the Steering
Committee.
3.6 DEADLOCK. In the event that the Steering Committee cannot
reach agreement with respect to any matter that is subject to its
decision-making authority, then the matter shall be referred to the dispute
resolution procedure described in Section 13.12.
4. GRANTS OF RIGHTS
4.1 RIGHTS TO ARQULE TECHNOLOGY AND ARQULE PATENT RIGHTS. Subject
to the terms of this Agreement, including without limitation the provisions of
Article 8 below, ArQule hereby grants to APB and its Affiliates a [* ] license
[*] under the ArQule Patent Rights and other rights in the ArQule Technology, to
develop, make, use, sell, import and distribute Licensed Products and to develop
and provide Licensed Services in the field of [*]. In addition, subject to the
terms of this Agreement, including without limitation the provisions of Article
8 below, ArQule hereby grants to APB and its Affiliates a [*] license under the
ArQule Patent Rights and other rights in the ArQule Technology [*].
4.2 RIGHTS TO APB TECHNOLOGY AND APB PATENT RIGHTS. Subject to the
terms of this Agreement, including without limitation the provisions of Article
8 below, APB hereby grants to ArQule and its Affiliates a [*] license [*] under
the APB Patent Rights and other rights in the APB Technology, to the extent
necessary to enable ArQule to practice ArQule Patent Rights or Joint Patent
Rights or to use the ArQule Technology or the Joint Technology in [*], and to
the extent necessary to enable ArQule to fulfill its responsibilities pursuant
to the Collaborative Research Program; provided, however, that ArQule shall not
have the right to use any APB Background Technology in the field of [* ] except
to fulfill its responsibilities under the Collaborative Research Program.
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4.3 USE OF JOINT TECHNOLOGY.
(a) Subject to the terms of this Agreement, including without
limitation the provisions of Article 8, APB and its Affiliates shall have the
right to use the Joint Technology and to practice the Joint Patent Rights for
any purpose in the field of [*] which are determined according to the procedures
set forth in Section 9.5(a) below. APB and its Affiliates shall have the right
to use the Joint Technology and to practice the Joint Patent Rights for any
purpose outside the field of [*].
(b) Subject to the terms of this Agreement, including without
limitation the provisions of Article 8, ArQule and its Affiliates and
sublicensees shall have the right to use the Joint Technology and to practice
the Joint Patent Rights for any purpose in the field of [*], which are
determined according to the procedures set forth in Section 9.5(b) below and
included in a definitive license agreement before the relevant product or
service is made commercially available. ArQule and its Affiliates and
sublicensees shall have the right to use the Joint Technology and to practice
the Joint Patent Rights for any purpose outside of the field of[*].
4.4 USE OF [*]. Each party hereby agrees to grant to any third
party customer of a [*] any and all rights and licenses that are necessary to
effectuate any grant of rights in that [*] pursuant to a contract executed by
APB and approved by ArQule under the Commercialization Agreement.
4.5 OTHER TECHNOLOGY. In the event that either party desires to
contribute to the Collaborative Research Program a Technology that is not useful
in the [*]field[*] and therefore does not constitute Background Technology under
this Agreement, but which such party believes may become useful in the [*] field
through research and development efforts in the Collaborative Research Program,
such party may propose to the Steering Committee that the Technology be included
under this Agreement. If the Steering Committee decides to include such a
Technology, the Steering Committee may establish different contractual terms
that apply to that Technology, subject to the approval of the Chief Executive
Officers of both parties.
5. INTELLECTUAL PROPERTY OWNERSHIP; PATENT PROSECUTION; INFRINGEMENT
5.1 OWNERSHIP OF INTELLECTUAL PROPERTY
(a) APPLICABLE LAW. The principles of U.S. patent law
shall be applied to determine whether (i) employees or others acting on behalf
of APB, or (ii) employees or others acting on behalf of ArQule, or (iii)
employees or others acting on behalf of APB together with employees or others
acting on behalf of ArQule, conceived, developed, discovered or reduced to
practice a Technology, whether patentable or not, pursuant to the Prior Research
and Development Agreement or this Agreement.
(b) ARQULE PATENT RIGHTS AND ARQULE TECHNOLOGY. The
ArQule Technology and the ArQule Patent Rights are solely owned by ArQule.
ArQule shall have sole responsibility for and control over the prosecution,
maintenance and enforcement of the ArQule Patent Rights.
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(c) APB PATENT RIGHTS AND APB TECHNOLOGY. The APB
Technology and the APB Patent Rights are solely owned by APB. APB shall have
sole responsibility for and control over the prosecution, maintenance and
enforcement of the APB Patent Rights.
(d) JOINT PATENT RIGHTS AND JOINT TECHNOLOGY. ArQule and
APB shall have joint ownership of all right, title, and interest in the Joint
Technology and under the Joint Patent Rights, and the parties agree to execute
all documents of assignment necessary to effectuate this result. Each party
shall ensure that its employees, consultants, agents, and representatives are
contractually required to assign to such party all Joint Patent Rights and other
rights in the Joint Technology, and to promptly disclose all Joint Technology to
such party.
(e) NOTICE OF JOINT TECHNOLOGY. Each party shall provide
prompt written notice to the Steering Committee of the internal disclosure of
(i) any Joint Background Technology developed by such party pursuant to the
Prior Research and Development Agreement and (ii) any Joint Collaboration
Technology developed by such party pursuant to this Agreement. The Steering
Committee shall evaluate whether such Technology is within the APB Core
Technology or ArQule Core Technology, in which case Subsection 5.1(b) or 5.1(c)
shall apply. If such Technology is outside the APB Core Technology or ArQule
Core Technology, the Steering Committee shall determine whether to seek Joint
Patent Rights claiming the Joint Technology, or to maintain the Joint Technology
as a trade secret. The Steering Committee shall make its recommendations to the
Steering Committee for final approval.
5.2 MANAGEMENT OF INTELLECTUAL PROPERTY.
(a) RESPONSIBILITY FOR JOINT PATENT RIGHTS. The party
responsible for the filing, prosecution and maintenance of Joint Patent Rights
shall be determined by the Steering Committee on a case-by-case basis. Expenses
relating to the preparation, filing, prosecution and maintenance of the Joint
Patent Rights shall be divided evenly by the parties, unless a different
allocation is decided by the Steering Committee.
(b) COOPERATION. Each party agrees to cooperate fully in
the preparation, filing, prosecution, and maintenance of all Joint Patent Rights
claiming Joint Technology. Such cooperation includes, without limitation, (i)
promptly executing all papers and instruments, or requiring its employees,
consultants, and agents to execute such papers and instruments, as reasonable
and appropriate so as to enable one or both parties to file, prosecute, and
maintain such Patent Rights in any country; (ii) promptly informing the other
party of matters that may affect the preparation, filing, prosecution, or
maintenance of any such Joint Patent Rights; (iii) providing the other party
with the opportunity to review and consult on, any filings with the United
States Patent and Trademark Office and the equivalent of such office in foreign
countries; and (iv) undertaking no actions that are potentially deleterious to
the preparation, filing, or prosecution of any such Joint Patent Rights.
(c) ASSUMPTION OF RIGHTS BY OTHER PARTY. In the event
that a party desires to decline responsibility for obtaining or maintaining
Joint Patent Rights in a country for any of the Joint Technology, such party
will notify the other party before taking such action and, upon request, will
allow the other party to assume responsibility for, and all expenses relating
to, the
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relevant Joint Patent Rights in those countries; provided, that, neither party
shall have the right to seek patent protection for any Joint Technology with
respect to which the Steering Committee has determined, in its discretion, to
maintain as a trade secret. In the event that a party desires to cease further
payment of patent-related expenses for a Joint Patent Right in any country, such
party shall assign all rights in that Joint Patent Right in such country to the
other party, and thereafter shall have no further obligation to pay such
expenses.
5.3 INFRINGEMENT. Neither party shall have the obligation to
initiate an infringement action to assert any Patent Right. However, if a party
does initiate an infringement action in connection with a Patent Right claiming
Joint Technology, the other party shall have the right to join in the action. In
such event, the parties shall determine an allocation of the costs and expenses
of the litigation, and damages will be awarded as follows: [*].
6. CONFIDENTIAL INFORMATION; PROPRIETARY MATERIALS
6.1 CONFIDENTIAL INFORMATION.
(a) DEFINITION OF CONFIDENTIAL INFORMATION. Confidential
Information shall mean any technical or business information furnished by one
party (the "Disclosing Party") to the other party (the "Receiving Party") in
connection with this Agreement. Such Confidential Information may include,
without limitation, the ArQule Background Technology, the APB Background
Technology or the Joint Technology, the use of a chemical compound, as well as
trade secrets, know-how, inventions, technical data or specifications, testing
methods, business or financial information, research and development activities,
Research and Steering Committee reports or minutes, product and marketing plans,
and customer and supplier information.
(b) OBLIGATIONS. The Receiving Party agrees that it
shall:
(i) maintain all Confidential Information in
strict confidence, except that the Receiving Party may disclose or permit the
disclosure of any Confidential Information to its directors, officers,
employees, consultants, and advisors who are obligated to maintain the
confidential nature of such Confidential Information and who need to know such
Confidential Information for the purposes set forth in this Agreement;
(ii) use all Confidential Information solely for
the purposes set forth in this Agreement; and
(iii) allow its directors, officers, employees,
consultants, and advisors to reproduce the Confidential Information only to the
extent necessary to effect the purposes set forth in this Agreement, with all
such reproductions being considered Confidential Information.
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(c) EXCEPTIONS. The obligations of the Receiving Party
under Section 6.1(b) above shall not apply to the extent that the Receiving
Party can demonstrate that certain Confidential Information:
(i) was in the public domain prior to the time
of its disclosure under this Agreement;
(ii) entered the public domain after the time of
its disclosure under this Agreement through means other than an unauthorized
disclosure resulting from an act or omission by the Receiving Party;
(iii) was independently developed or discovered by
the Receiving Party without use of the Confidential Information;
(iv) is or was disclosed to the Receiving Party
at any time, whether prior to or after the time of its disclosure under this
Agreement, by a third party having no fiduciary relationship with the Disclosing
Party and having no obligation of confidentiality with respect to such
Confidential Information; or
(v) is required to be disclosed to comply with
applicable laws or regulations, or with a court or administrative order,
provided, that the Disclosing Party receives prior written notice of such
disclosure and that the Receiving Party takes all reasonable and lawful actions
to obtain confidential treatment for such disclosure and, if possible, to
minimize the extent of such disclosure.
6.2 PROPRIETARY MATERIALS.
(a) DEFINITION OF PROPRIETARY MATERIALS. "Proprietary
Materials" means any tangible chemical, biological, or physical materials that
are furnished by one party (the "Materials Provider") to the other party (the
"Materials Recipient") in connection with this Agreement regardless of whether
such materials are specifically designated as proprietary to the Materials
Provider, including without limitation all ArQule Compounds. The Materials
Provider shall furnish such Proprietary Materials to the Materials Recipient in
a mutually acceptable form, including appropriate labelling and packaging.
(b) LIMITED USE. The Materials Recipient shall use the
Proprietary Materials solely for the purposes set forth in this Agreement. The
Materials Recipient shall use the Proprietary Materials only in compliance with
all applicable governmental laws and regulations, and not for any in vivo
experiments on human subjects. The Materials Recipient assumes all liability for
damages that may arise from the use, storage, or disposal of any Proprietary
Materials. The Materials Recipient will not be liable to the Materials Provider
for any loss, claim, or demand made by Materials Recipient, or made against the
Materials Recipient by any other party, due to or arising from the use, storage,
or disposal of any Proprietary Materials by the Materials Recipient, and the
Materials Recipient agrees, to the extent allowed under applicable law, to
defend, indemnify, and hold the Materials Provider harmless from and against any
such losses,
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claims, or demands, except to the extent caused by the gross negligence or
willful misconduct of the Materials Provider.
(c) LIMITED DISPOSITION. Except as otherwise expressly
provided herein, the Materials Recipient shall not transfer or distribute any
Proprietary Materials to any third party without the prior written consent of
the Materials Provider, which consent may be withheld at the sole discretion of
the Materials Provider.
(d) APPLICABLE LAWS AND REGULATIONS. The Materials
Recipient agrees to comply with all federal, state, and local laws and
regulations applicable to the use, storage, disposal, and transfer of
Proprietary Materials furnished by the Materials Provider, including without
limitation the Toxic Substances Control Act (15 USC 2601 et seq.) and
implementing regulations (in particular, 40 CFR 720.36 [Research and Development
Exemption]), the Food, Drug, and Cosmetic Act (21 USC 301 et seq.) and
implementing regulations, all Export Administration Regulations of the U.S.
Department of Commerce, and equivalent laws and regulations in countries outside
the United States. The Materials Recipient assumes sole responsibility for any
violation of such laws or regulations by the Materials Recipient, its employees
or its consultants.
6.3 RETURN OF CONFIDENTIAL INFORMATION AND PROPRIETARY MATERIALS.
(a) CONFIDENTIAL INFORMATION. Upon the termination of
this Agreement, at the request of the Disclosing Party, the Receiving Party
shall return to the Disclosing Party all originals, copies, and summaries of
documents, materials, and other tangible manifestations of Confidential
Information in the possession or control of the Receiving Party, except that the
Receiving Party may retain one copy of the Confidential Information in the
possession of its legal counsel solely for the purpose of monitoring its
obligations under this Agreement.
(b) PROPRIETARY MATERIALS. Upon the termination of this
Agreement, the Materials Recipient shall, at the instruction of the Materials
Provider, either destroy or return any unused Proprietary Materials.
6.4 SURVIVAL OF OBLIGATIONS. The obligations set forth in this
Article 6 shall remain in effect for a period of [* ] after termination of this
Agreement, except that the obligations of the Receiving Party to return
Confidential Information to the Disclosing Party and the obligations of the
Materials Recipient to return or destroy Proprietary Materials received from the
Materials Provider shall survive until fulfilled.
7. DILIGENCE; TECHNICAL MILESTONES AND COLLABORATION MILESTONES
7.1 ESTABLISHMENT AND MONITORING OF TECHNICAL MILESTONES AND
COLLABORATION MILESTONES. The parties, through the Steering Committee, have
established Technical Milestones in the Technology Development Plan on EXHIBIT A
and the Collaboration Milestones set forth on
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EXHIBIT B. The parties will work together in good faith, each using best
efforts, to achieve the initial Technical Milestones by the times indicated in
the Technology Development Plan and to achieve the Collaboration Milestones on
or before [*] from the Effective Date. The Steering Committee will monitor
progress toward accomplishing the Technical Milestones and will produce a
written evaluation every [*]. To assist the Steering Committee, each party shall
appoint as an informal technical auditor one of its employees who is reasonably
knowledgeable in the subject matter of the Collaborative Research Program but is
not significantly involved in the Collaborative Research Program. The Steering
Committee may modify the Technical Milestones in its discretion. The Steering
Committee will monitor progress toward accomplishing the Collaboration
Milestones and will produce a written evaluation every [*]. The Steering
Committee may modify the Collaboration Milestones in its discretion provided,
that no modification to the Collaboration Milestones shall take effect without
the prior written approval of the Chief Executive Officers of both parties.
7.2 FAILURE TO ARCHIVE THE TECHNICAL MILESTONES. At [*] from the
start of the Collaborative Research Program, the Steering Committee shall
conduct a formal evaluation of whether the initial Technical Milestones have
been achieved. If the parties have been unable to meet the initial Technical
Milestones, the parties may [*].
7.3 FAILURE TO ACHIEVE THE COLLABORATION MILESTONES.
(a) At [*] from the start of the Collaborative Research
Program, the Steering Committee shall conduct a formal evaluation of the
progress toward achieving the Collaboration Milestones. If the parties determine
that it is unlikely that the Collaboration Milestones will be met by the end of
[*] from the Effective Date, or if the parties desire to terminate the
Collaborative Research Program, then by mutual written agreement the parties may
[*].
(b) At [*] from the Effective Date, the Steering
Committee shall conduct a formal evaluation of whether the Collaboration
Milestones have been achieved. If the parties have not achieved the
Collaboration Milestones, ArQule or APB may [ *].
7.4 CONVERSION TO [*] RELATIONSHIP. In the event the [*]
relationship of the parties is converted, pursuant to Sections 7.2 or 7.3, to a
[*] relationship, the following shall occur:
(a) the Collaborative Research Program shall[*];
(b) the [*] license granted to APB pursuant to Section
4.1 shall be converted to a [*] license;
(c) the non-exclusive license granted to ArQule pursuant
to Section 4.2 shall remain in effect;
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(d) the licenses on use of the Joint Patent Rights and
Joint Technology set forth in Section 4.3 shall survive;
(e) the parties shall negotiate in good faith regarding
adjustments to the royalty rates on the Net Sales of [*] set forth in Section
9.2; and
(f) the parties' obligations regarding exclusivity
pursuant to Article 8 shall terminate.
8. EXCLUSIVE RELATIONSHIP IN THE AREA OF [*].
8.1 GENERAL. The parties agree to work together exclusively to
provide [*]based on small organic molecule ligands in the field of [*] to third
party customers in the bioseparations market.
8.2 SCOPE OF EXCLUSIVITY.
(a) ArQule agrees that it will not enter into any
agreements with another supplier of separations media products or services to
develop and/or furnish ligands to such supplier as part of [*], or to endorse
such supplier; provided, that ArQule shall not be precluded from supplying
ligands to an end-user customer for use in the field of [*].
(b) APB agrees not to enter into any agreements with
another developer or manufacturer of small molecules in order to develop and/or
furnish ligands to its end user customers as part of an [*], or to endorse
another supplier of such services. APB further agrees that it will not use the
ArQule Technology or the Joint Technology in any project to provide [*] in the
field of [*] unless ArQule participates in that project. The foregoing
notwithstanding, APB is not precluded from [*].
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9. PAYMENTS
9.1 RESEARCH AND DEVELOPMENT FEES. APB agrees to pay ArQule a
total of [*] within [*] of the Effective Date for performance of activities
under the initial [*] phase of the Technology Development Plan.
9.2 ROYALTIES ON MEDIA PRODUCTS. In partial consideration of the
services performed by ArQule in Customer Projects pursuant to the
Commercialization Agreement and this Agreement, as well as the technology
contributions by ArQule that enable the parties to provide [*], APB shall pay
ArQule a royalty on the Net Sales of [*], on a [*]-by-[*] basis, at the rates
set forth below:
ESTIMATED ANNUAL NET SALES ROYALTY
OF THE [*]
[*]
[*]
[*]
provided, that, if the cumulative actual Net Sales for a particular [*] exceeds
[*], the annual royalty on any future Net Sales of such [*] shall be increased
by [*]. By way of example, but not limitation, [*].
9.3 ADJUSTMENTS TO ROYALTY PAYMENTS. At the commencement of each
calendar year APB will estimate the total annual Net Sales for each [*]
anticipated to be sold by APB during such calendar year, and thereby determine
the royalty percentage that will apply to the total annual Net Sales of such [*]
during such calendar year. After the end of each calendar year, APB will
provide, together with the first quarterly report due pursuant to Section 9.6, a
written report setting forth the total actual annual Net Sales for each such [*]
in such calendar year, reconciling the royalties paid by APB during such
calendar year with the royalties actually due from APB. Together with said
report, APB will either make a payment to ArQule or issue to ArQule an invoice
for any overpayments. All invoices provided for under this Section 9.3 shall be
stated, and all amounts payable thereunder shall be paid in United States
dollars as provided in Section 9.7.
9.4 DURATION OF ROYALTY OBLIGATION. APB's obligation to pay
royalties on the annual Net Sales of [*] pursuant to Section 9.2 shall continue
for as long as such [*] are being sold.
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9.5 ROYALTIES ON OTHER LICENSED PRODUCTS OR LICENSED SERVICES.
(a) If APB wishes to develop, market or sell Licensed
Products other than [*] or Licensed Services other than services within [*] or
incidental services in support of [*], APB shall notify ArQule in writing and
promptly thereafter the parties shall enter into good faith negotiations to[*],
for the development and commercialization of such Licensed Products or Licensed
Services. Until such terms are established,[*].
(b) If ArQule wishes to develop, market or sell products
or services for which a royalty or other payment is due to APB pursuant to
Sections 4.2 or 4.3(b), ArQule shall notify APB in writing and promptly
thereafter the parties shall enter into good faith negotiations to [*] for the
development and commercialization of such products or services. Until the
parties execute a definitive license agreement, [*].
9.6 REPORTS. Within [*] days after the conclusion of each Royalty
Period, APB shall deliver to ArQule a report containing the following
information:
(i) gross sales of Licensed Products and Licensed
Services by APB during the applicable Royalty Period in each country of sale;
(ii) adjustments and calculation of Net Sales for each
Licensed Product and/or Licensed Service for the applicable Royalty Period in
each country of sale;
(iii) total Net Sales of each Licensed Product and/or
Licensed Service together with the exchange rates used for conversion; and
(iv) total royalty payment due for the Royalty Period for
each Licensed Product and/or Licensed Service.
If no payment is to be made by APB for any reporting period, the report
shall so state. All such reports shall be considered Confidential Information
under this Agreement. Concurrent with this report, APB shall remit to ArQule any
payment due for the applicable Royalty Period.
9.7 PAYMENTS IN U.S. DOLLARS. Subject to Section 9.8, all payments
due under this Article 9 shall be payable in United States dollars. Conversion
of foreign currency to U.S. dollars shall be made at the conversion rate
existing in the United States (as reported in the WALL STREET JOURNAL) on the
last working day of the calendar quarter preceding the applicable Royalty
Period. Such payments shall be without deduction of exchange, collection, or
other charges.
9.8 PAYMENTS IN OTHER CURRENCIES. If by law, regulation, or fiscal
policy of a particular country, conversion into United States dollars or
transfer of funds of a convertible currency to the United States is restricted
or forbidden, APB shall give ArQule prompt written notice of such restriction,
which notice shall satisfy the payment deadlines described in Section 9.6. APB
shall
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pay any amounts due ArQule through whatever lawful methods ArQule reasonably
designates; provided, however, that if ArQule fails to designate such payment
method within thirty (30) days after being notified of the restriction, APB may
deposit such payment in local currency to the credit of ArQule in a recognized
banking institution selected by APB and identified by written notice to ArQule,
and such deposit shall fulfill all obligations of APB to the other party with
respect to such payment.
9.9 RECORDS. APB shall maintain complete and accurate records of
(i) Licensed Products and/or Licensed Services sold or provided and (ii) any
royalties payable to ArQule in relation to each such Licensed Product and/or
Licensed Service, which records shall contain sufficient information to permit
ArQule to confirm the accuracy of any reports delivered under Section 9.6. APB
shall retain such records relating to a given Royalty Period for at least [*]
after the conclusion of that Royalty Period, during which time ArQule shall have
the right, at its expense, to cause an independent, certified public accountant
to inspect such records during normal business hours for the sole purpose of
verifying any reports and payments delivered under this Agreement. Such
accountant shall not disclose to ArQule any information other than information
relating to accuracy of reports and payments delivered under this Agreement. The
parties shall reconcile any underpayment or overpayment within thirty (30) days
after the accountant delivers the results of the audit. In the event that any
audit performed under this Section reveals an underpayment in excess of [*] in
any Royalty Period, APB shall bear the full cost of such audit. ArQule may
exercise its rights under this Section only once every year and only with
reasonable prior notice to APB.
9.10 LATE PAYMENTS. Any payments by APB that are not paid on or
before the date such payments are due under this Agreement shall bear interest,
to the extent permitted by law, at two percentage points above the Prime Rate of
interest as reported in the WALL STREET JOURNAL on the date payment is due, with
interest calculated based on the number of days that payment is delinquent.
9.11 PAYMENTS UNDER COMMERCIALIZATION AGREEMENT. In addition to the
payments set forth in this Agreement, under the Commercialization Agreement APB
has agreed to pay ArQule [*] of Technology Access, R&D, and Success Fees and
[*]of Customer Royalties (as those terms are defined in the Commercialization
Agreement).
10. EXPIRATION AND TERMINATION.
10.1 TERM OF COLLABORATIVE RESEARCH PROGRAM. Unless this Agreement
is sooner terminated pursuant to this Article 10, the Collaborative Research
Program shall commence on September 1, 1998 and remain in effect for a period of
[*], subject to automatic extension for additional [*] periods unless and until
terminated by a party upon [*] prior written notice before the expiration of the
then-current term. Notwithstanding the foregoing, APB shall have the right to
terminate the Collaborative Research Program at any time after [*] upon payment
to ArQule of
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an amount negotiated in good faith by the parties (the "Buyout Right"). This
compensation is intended to repay ArQule for the fair market value of the lost
business opportunity. In the event that APB elects to exercise the Buyout Right,
APB shall furnish ArQule with [*] written notice at any time after [*],
whereupon the parties shall negotiate in good faith the amount of compensation
payable to ArQule. After the parties agree on the amount of compensation, this
Agreement shall terminate immediately upon payment of that compensation to
ArQule.
10.2 TERM OF AGREEMENT. Unless sooner terminated pursuant to this
Article 10, this Agreement shall expire on a Licensed Product-by-Licensed
Product or Licensed Service-by-Licensed Service basis and country-by-country
basis, upon the date of the last sale of such Licensed Product and/or the last
provision of a Licensed Service in such country.
10.3 EVENTS OF DEFAULT.
(a) DEFAULT BY EITHER PARTY. Subject to Section 10.3(b),
an Event of Default by either party shall have occurred upon (i) the occurrence
of a breach of a material term of this Agreement (other than a material breach
described in clause (ii) hereof or in Section 10.3(b)) if the breaching party
fails to remedy such breach within ninety (90) days after written notice thereof
by the non-breaching party or (ii) the bankruptcy, insolvency, dissolution or
winding up of a party.
(b) DEFAULT BY APB. An Event of Default by APB shall have
occurred if (i) APB fails to make payments due hereunder within thirty (30) days
after ArQule delivers written notice thereof to APB specifying such failure and
its claim of right to terminate, unless APB makes such payments plus interest
within such thirty (30) day period.
10.4 EFFECT OF AN EVENT OF DEFAULT.
(a) REMEDIES AVAILABLE TO ARQULE. If an Event of Default
described in Section 10.3(a) or 10.3(b) occurs relating to APB, and APB fails to
cure such default during any applicable cure period, ArQule shall have the
right, at its option exercisable in its sole discretion, in addition to any
other rights or remedies available to it at law or in equity, and subject to the
limitations of Section 13.12, to terminate this Agreement upon written notice
thereof to APB.
(b) REMEDIES AVAILABLE TO APB. If an Event of Default
described in Section 10.3(a) occurs relating to ArQule, and ArQule fails to cure
such default during any applicable cure period, APB shall have the right, at its
option exercisable in its sole discretion, in addition to any other rights or
remedies available to it at law or in equity, and subject to the limitations of
Section 13.12, to terminate this Agreement upon written notice thereof to
ArQule.
10.5 OTHER TERMINATION.
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(a) TERMINATION BY APB. APB may terminate this Agreement,
upon thirty (30) days written notice to ArQule, if ArQule [*].
(b) TERMINATION BY ARQULE. ArQule may terminate this
Agreement, upon thirty (30) days written notice to APB, if APB [*].
10.6 EFFECT OF TERMINATION. Except as otherwise agreed by the
parties, upon the termination of this Agreement:
(i) the Collaborative Research Program shall immediately
terminate, and all collaborative research and development activities shall
cease;
(ii) each party shall have the right to practice the Joint
Patent Rights and to use the Joint Technology in the field of [*], subject to
payment of a commercially reasonable royalty to the other party, and subject to
the negotiation of other financial terms regarding such use; provided, that,
neither party shall be required to grant the other party the right to practice
the Joint Patent Rights or use the Joint Technology, on any terms, for [*];
(iii) each party shall have the right to practice the Joint
Patent Rights and use the Joint Technology outside the field of [*], without
payment to or the consent of the other party;
(iv) the rights and licenses granted to ArQule pursuant to
Section 4.2 shall continue, provided that ArQule and APB shall enter into a [*];
(v) the rights and licenses granted to APB pursuant to
Section 4.1 shall terminate, provided that ArQule shall be required to grant APB
or its Affiliates a license [*] to practice the ArQule Patent Rights and to use
the ArQule Technology to the extent necessary to permit use of the Joint
Technology by APB; and
(vi) any rights granted to a third party pursuant to
Section 4.4 regarding the use of [*] shall survive.
10.7 SURVIVAL. The expiration or termination of this Agreement
shall not relieve the parties of any obligation accruing prior to such
expiration or termination. The provisions of Articles 5, 6, 9, 11 and 12, and
Sections 13.1, 13.10 and 13.12 shall survive the expiration or termination of
this Agreement.
11. REPRESENTATIONS AND WARRANTIES.
11.1 REPRESENTATIONS, WARRANTIES AND COVENANTS OF ARQULE. ArQule
represents and warrants to and covenants with APB that:
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(a) ArQule is a corporation duly organized, validly
existing and in corporate good standing under the laws of the State of Delaware;
(b) ArQule has the legal right, authority and power to
enter into this Agreement, and to extend the rights and licenses granted to APB
in this Agreement;
(c) ArQule has taken all necessary action to authorize
the execution, delivery and performance of this Agreement;
(d) upon the execution and delivery of this Agreement,
this Agreement shall constitute a valid and binding obligation of ArQule
enforceable in accordance with its terms, except as enforceability may be
limited by applicable bankruptcy, insolvency, reorganization, moratorium or
similar laws affecting creditors' and contracting parties' rights generally and
except as enforceability may be subject to general principles of equity
(regardless of whether such enforceability is considered in a proceeding in
equity or at law);
(e) the performance of its obligations under this
Agreement will not conflict with its charter documents or result in a breach of
any agreements, contracts or other arrangements to which it is a party; and
(f) ArQule will not during the term of this Agreement
enter into any agreements, contracts or other arrangements that would be
inconsistent with its obligations under this Agreement.
11.2 REPRESENTATIONS, WARRANTIES AND COVENANTS OF APB. APB
represents and warrants to and covenants with ArQule that:
(a) APB is a corporation duly organized, validly existing
and in corporate good standing under the laws of Sweden;
(b) APB has the legal right, authority and power to enter
into this Agreement, and to extend the rights and licenses granted to ArQule in
this Agreement;
(c) APB has taken all necessary action to authorize the
execution, delivery and performance of this Agreement;
(d) upon the execution and delivery of this Agreement,
this Agreement shall constitute a valid and binding obligation of APB
enforceable in accordance with its terms, except as enforceability may be
limited by applicable bankruptcy, insolvency, reorganization, moratorium or
similar laws affecting creditors' and contracting parties' rights generally and
except as enforceability may be subject to general principles of equity
(regardless of whether such enforceability is considered in a proceeding in
equity or at law);
(e) the performance of its obligations under this
Agreement will not conflict with APB's charter documents or result in a breach
of any agreements, contracts or other arrangements to which it is a party; and
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(f) APB will not after the Effective Date enter into any
agreements, contracts or other arrangements that would be inconsistent with its
obligations under this Agreement.
11.3 DISCLAIMER. NEITHER PARTY MAKES ANY WARRANTIES, EXPRESS OR
IMPLIED, REGARDING THE QUALITY OF ANY RESEARCH RESULTS GENERATED PURSUANT TO THE
COLLABORATIVE RESEARCH PROGRAM. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE FOR ANY PROPRIETARY
MATERIALS OF EITHER PARTY. EXCEPT AS EXPRESSLY PROVIDED IN THIS AGREEMENT,
NEITHER PARTY MAKES ANY WARRANTIES THAT THE USE OF ARQULE TECHNOLOGY, THE APB
TECHNOLOGY, THE JOINT TECHNOLOGY, OR ANY PROPRIETARY MATERIALS WILL NOT INFRINGE
ANY PATENT OR OTHER INTELLECTUAL PROPERTY RIGHTS OF A THIRD PARTY.
12. INDEMNIFICATION AND INSURANCE.
12.1 GENERAL INDEMNIFICATION. Each party (the "Indemnifying party")
shall indemnify and hold harmless the other party, and their respective
directors, officers, employees and agents (collectively, the "Indemnitees") from
and against all claims, expenses or liability of whatever nature arising from or
alleged to arise from (i) any default, act, omission or negligence of the
Indemnifying party, its agents or employees, or others exercising rights by,
through, or under the Indemnifying party, or the failure of the Indemnifying
party or such persons to comply with any applicable laws, rules, regulations,
codes, ordinances or directives of governmental authorities, in each case to the
extent the same are related, directly or indirectly, to the Collaborative
Research Program described herein, and/or the sale of Licensed Products and/or
the provision of Licensed Services; (ii) any theory of product liability
(including, but not limited to, actions in the form of tort, warranty or strict
liability) concerning any Licensed Product sold or Licensed Service rendered by
such party; or (iii) a breach by such party of any of its representations or
warranties made pursuant to Article 11 hereof; provided, however, that in no
event shall the Indemnifying party be obligated under this section to indemnify
the Indemnitees where such claim, expense or liability results solely from any
omission, fault, negligence, or other misconduct of any of the Indemnitees.
12.2 PROCEDURE. The Indemnitees agree to provide the Indemnifying
Party with prompt written notice of any claim, suit, action, demand, or judgment
for which indemnification is sought under this Agreement. If an Indemnitee fails
to provide such notice within a reasonable time, and if such failure
prejudicially affects the ability of the Indemnifying Party to defend such
action, the Indemnifying Party shall be relieved of its liability to such
Indemnitee under this Article 12. The Indemnifying Party agrees, at its own
expense, to provide attorneys reasonably acceptable to the Indemnitees to defend
against any such claim. The Indemnitees shall cooperate fully with the
Indemnifying Party in such defense and will permit the Indemnifying Party to
conduct and control such defense and the disposition of such claim, suit, or
action (including all decisions relative to litigation, appeal, and settlement);
provided, however, that any Indemnitee shall have the right to retain its own
counsel, at the expense of the Indemnifying Party, if representation of such
Indemnitee by the counsel retained by the Indemnifying Party would be
inappropriate because of actual or potential differences in the interests of
such Indemnitee and any other party represented
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by such counsel. The Indemnifying Party agrees to keep the other party informed
of the progress in the defense and disposition of such claim and to consult with
such party with regard to any proposed settlement.
12.3 INSURANCE. APB shall maintain adequate product liability
insurance with respect to development, manufacture, and sale of Licensed
Products and Licensed Services by APB in such amount as it customarily maintains
with respect to sales of its other products, and in no event less than a
reasonable amount. APB shall maintain such insurance for so long as it continues
to manufacture or sell Licensed Products and/or to provide Licensed Services,
and thereafter for so long APB customarily maintains such insurance for itself
covering such manufacture or sale.
13. MISCELLANEOUS.
13.1 PUBLICITY. No press release, advertising, promotional sales
literature, or other promotional oral or written statements to the public in
connection with or alluding to work performed under this Agreement or the
relationship between the parties created by it, having or containing any
reference to ArQule or APB, shall be made by either party without the prior
written approval of the other party, except for restatements of
previously-approved statements and disclosures required by applicable law or
regulation.
13.2 RELATIONSHIP OF PARTIES. For the purposes of this Agreement,
each party is an independent contractor and not an agent or employee of the
other party. Neither party shall have authority to make any statements,
representations, or commitments of any kind, or to take any action which shall
be binding on the other party, except as may be explicitly provided for herein
or authorized in writing.
13.3 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, and all of which
together shall be deemed to be one and the same instrument.
13.4 HEADINGS. All headings in this Agreement are for convenience
only and shall not affect the meaning of any provision hereof.
13.5 BINDING EFFECT. This Agreement shall inure to the benefit of
and be binding upon the parties and their respective lawful successors and
assigns.
13.6 ASSIGNMENT. This Agreement may not be assigned by either party
without the prior written consent of the other party, except that either of the
parties may assign this Agreement to an Affiliate or successor in connection
with the merger, consolidation, or sale of all or substantially all of its
assets or that portion of its business pertaining to the subject matter of this
Agreement.
13.7 FORCE MAJEURE. Neither party will be responsible for delays
resulting from acts beyond the control of such party, provided, that the
non-performing party uses commercially reasonable efforts to avoid or remove
such causes of nonperformance and continues performance hereunder with
reasonable dispatch whenever such causes are removed.
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13.8 NOTICES. All notices, requests, demands and other
communications required or permitted to be given pursuant to this Agreement
shall be in writing and shall be deemed to have been duly given upon the date of
receipt if delivered by hand, recognized national overnight courier, confirmed
facsimile transmission, or registered or certified mail, return receipt
requested, postage prepaid, to the following addresses or facsimile numbers:
If to APB:
Amersham Pharmacia Biotech AB
S-751-84 Uppsala
Sweden
Attention: Johan von Heijne
Telephone: ▇▇▇ ▇▇▇▇ ▇▇▇▇
Facsimile: ▇▇▇ ▇▇▇▇ ▇▇▇▇
with a copy (which shall not constitute notice) to:
▇▇▇ ▇▇▇▇▇▇▇▇
General Counsel
S-751-84 Uppsala
Sweden
Telephone: ▇▇▇ ▇▇▇▇ ▇▇▇▇
Facsimile: ▇▇▇ ▇▇▇▇ ▇▇▇▇
If to ArQule:
ArQule, Inc.
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: President
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
with a copy (which shall not constitute notice) to:
ArQule, Inc.
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: Legal Department
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
Either party may change its designated address and facsimile number by notice to
the other party in the manner provided in this Section 13.8.
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13.9 AMENDMENT AND WAIVER. This Agreement may be amended,
supplemented, or otherwise modified at any time, but only by means of a written
instrument signed by both parties. Any waiver of any rights or failure to act in
a specific instance shall relate only to such instance and shall not be
construed as an agreement to waive any rights or fail to act in any other
instance, whether or not similar.
13.10 GOVERNING LAW. This Agreement and the legal relations among
the parties shall be governed by and construed in accordance with the laws of
the State of Delaware irrespective of any conflict of laws principles.
13.11 SEVERABILITY. In the event that any provision of this
Agreement shall, for any reason, be held to be invalid or unenforceable in any
respect, such invalidity or unenforceability shall not affect any other
provision hereof, and this Agreement shall be construed as if such invalid or
unenforceable provision had not been included herein.
13.12 DISPUTE RESOLUTION. Any disputes between the parties that
arise under or relate to this Agreement and are not resolved by the Steering
Committee shall be resolved in accordance with the following procedures. The
parties shall first attempt in good faith to resolve the matter among
themselves. If the matter remains unresolved after a period of thirty (30) days
after the dispute first arose, the dispute shall be referred to the Chief
Executive Officers of each party, who shall meet at a mutually acceptable time
and location. If the matter remains unresolved within sixty (60) days after the
dispute first arose, the matter will be finally settled by binding arbitration
as follows. If the dispute relates to intellectual property matters under this
Agreement, including without limitation inventorship issues and whether a
particular Technology constitutes ArQule Technology, APB Technology, or Joint
Technology, the parties will submit the matter to binding arbitration in
accordance with the then current Center for Public Resources Institute for
Dispute Resolution Rules for Non-Administered Arbitration, with the exception
that the arbitration shall be conducted in New York, New York by a sole
arbitrator who is an experienced patent attorney with reasonable expertise in
the technological subject matter at issue. If the dispute relates to any other
matter under this Agreement, the parties will submit the matter to binding
arbitration in London, England under the Rules of Conciliation and Arbitration
of the International Chamber of Commerce. Judgment upon the award rendered by
the arbitrator may be entered and enforced in any court having jurisdiction
thereof.
13.13 ENTIRE AGREEMENT. This Agreement, together with the
Commercialization Agreement, constitutes the entire agreement between the
parties with respect to the subject matter hereof and supersedes any and all
prior or contemporaneous oral and prior written agreements and understandings
including, without limitation, the Prior Research and Development Agreement.
IN WITNESS WHEREOF, the undersigned have duly executed and delivered
this Agreement as a sealed instrument effective as of the date first above
written.
AMERSHAM PHARMACIA BIOTECH AB ("APB")
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27
By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
--------------------------------------------
Name: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
Title: Vice President Separations
ARQULE, INC.
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇
--------------------------------------------
Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇
Title: President and Chief Executive Officer
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28
EXHIBIT A
[*]
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* Confidential Treatment has been requested for the marked portion.
29
EXHIBIT B
[*]
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* Confidential Treatment has been requested for the marked portion.
1