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EXHIBIT 10.57
COLLABORATIVE RESEARCH, PURCHASE AND LICENSE AGREEMENT
BETWEEN
N.V. ORGANON
AND
Aurora Biosciences Corporation
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COLLABORATIVE RESEARCH, PURCHASE AND LICENSE AGREEMENT
THIS AGREEMENT is entered into as of the Effective Date by and between N.V.
ORGANON, a company organized and existing under the laws of The Netherlands and
having offices at ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇, ▇.▇. ▇▇▇ ▇▇, ▇▇▇▇ ▇▇ ▇▇▇, ▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇,
("Organon"), and AURORA BIOSCIENCES CORPORATION, a Delaware corporation having
offices at ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Aurora").
RECITALS
WHEREAS, Aurora has expertise in the development of screening systems and
screening biologies/chemistries used therein; and
WHEREAS, Aurora has the scientific expertise and capacity to undertake the
alliance activities and provide the services, materials and instrumentation
described below; and
WHEREAS, Organon desires screen development services and has the capability to
undertake screening and development of drug products for the prevention and
treatment of human and veterinary diseases and disorders.
NOW, THEREFORE, in consideration of the foregoing premises and of the covenants,
representations and agreements set forth below, the parties agree as follows:
1. DEFINITIONS
As used herein, the following terms shall have the following meanings:
1.1. "Affiliate" means any corporation, association or other entity,
which directly or indirectly controls, is controlled by or is under
common control with the party in question. As used herein, the term
control shall mean direct or indirect beneficial ownership of more than
*** of the voting or income interest in such corporation or other
business entity.
1.2. "Agreement" means this agreement, together with all appendices,
exhibits and schedules hereto, and as the same may be amended or
supplemented from time to time hereafter by a written agreement duly
executed by authorized representatives of each party hereto.
1.3. "Aurora Copyrights" means all copyrights throughout the world
Controlled by Aurora.
1.4. "Aurora Patent Rights" means the Patent Rights Controlled by
Aurora described in Exhibit 2 attached hereto *** Effective Date.
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1.5. "Aurora Reporter" means any of the reporters described in
Exhibit 1.2 attached hereto.
1.6. "Aurora Screen Development Resource" shall have the meaning set
forth in Section 2.2.1.
1.7. "Aurora Screening Program" shall have the meaning set forth in
Section 2.1.5.
1.8. "Aurora Technology" means Technology Controlled by Aurora
necessary for Aurora Reporters and the development of Collaborative
Screens, ***
1.9. "Collaborative Period" means the period during which the parties
are developing Collaborative Screens and ending on the third anniversary
of the Effective Date unless extended by written mutual agreement or
concluded earlier in accordance with Section 9.
1.10. "Collaborative Screen" means a screen or assay developed by
Aurora for an Organon Target under a CSP Work Plan as defined in Section
2.1.3.
1.11. "Collaborative Screen Program or CSP" shall have the meaning set
forth in Section 2.1.
1.12. "Compound" means *** Aurora *** in a Collaborative Screen or
tested by Organon in a Collaborative Screen and excluding *** in
accordance with Section 2.1.6.
1.13. "Compound Supply" shall have the meaning set forth in Section
2.1.6.
1.14. "Confidential Information" means all confidential information,
data, and materials received by either party from the other party
pursuant to this Agreement, which if in writing is marked confidential,
and all information, data, and materials developed pursuant to this
Agreement which if in writing is marked confidential, including, without
limitation, Technology of each party, subject to the exceptions set
forth in Section 6.1.2.
1.15. "Control" or "Controlled" means, with respect to intellectual
property, possession by a party of the ability to grant a license or
sublicense in accordance with the terms of this Agreement, and without
violating the terms of any agreement by such party with any Third Party
that is in effect on the Effective Date.
1.16. "Copyrights" means rights that protect expression in a tangible
form, such as the U.S. Copyright Laws.
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1.17. "CSP Steering Committee" shall have the meaning set forth in
Section 2.1.1.
1.18. "CSP Work Plan" shall have the meaning set forth in Section
2.1.3.
1.19. "Derivative" means *** Organon based ***, including i) *** , ii)
*** , or iii) *** Organon that *** has a ***. It is understood that a
***, provided that the Derivative of a ***.
1.20. "Development Compound" means *** for Organon. For the purpose of
this definition, a *** includes, but is not limited ***, and as defined
in the U.S. Code of Federal Regulations ***, or its foreign counterparts
and which is conducted under ***. In the event a *** reaches *** without
*** Organon, such ***.
1.21. "Effective Date" means the date that this Agreement is executed
by the last party to so execute.
1.22. "FDA" shall mean the United States Food and Drug Administration,
or any successor agency having regulatory jurisdiction over the
manufacture, distribution and sale of drugs in the United States or
equivalent in any other jurisdiction.
1.23. "Hit" means *** in the course of *** Organon using a *** on ***;
provided, however, a chemical developed *** incorporating or utilizing
an Aurora Technology, Aurora Patent Rights or an Aurora Reporter ***
indication. Organon ***.
1.24. "IND" means the first to occur of the following: (i) the filing
with and acceptance by the FDA of an Investigational New Drug
application; or (ii) any corresponding application filed in any country
other than the United States; or (iii) the first administration of a
Development Compound into a human subject.
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1.25. "Internal Research" means any *** solely *** for the *** to be
developed and ***, its Licensor(s) or its Licensee(s). Internal Research
does not include use requiring the *** under this Agreement.
1.26. "Invention" means any new and useful ***, or improvement
thereto, whether or not patentable.
1.27. "Know-How" means information and data which is not generally
known to the public, comprising: ***.
1.28. "Licensee" means a Third Party to whom *** grants a license,
sublicense or other right to manufacture, use, sell, offer for sale,
distribute and/or import one or more ***.
1.29. "Licensor" means a Third Party that grants *** a license,
sublicense or other right to manufacture, use, sell, offer for sale,
distribute and/or import one or more ***.
1.30. "Materials" means any reagents, promoters, enhancers, vectors,
plasmids, genes, polynucleotides, cell lines, proteins and fragments
thereof, peptides, antigens, antibodies, antagonists, agonists,
inhibitors, Compounds and chemicals.
1.31. "NDA" means a new drug application or product license
application, as appropriate in the United States or a foreign equivalent
in a foreign country.
1.32. "***" shall mean, with respect to Product(s), *** to customers
for all Product(s) sold *** the following items:
i) ***;
ii) ***;
iii) ***; and
iv) ***.
v) ***.
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Such amounts shall be determined from the books and records of ***
maintained in accordance with generally accepted accounting principles
("GAAP") consistently applied.
1.33. "Organon Copyrights" means all copyrights throughout the world
Controlled by Organon.
1.34. "Organon Patent Rights" means Patent Rights Controlled by
Organon.
1.35. "Organon Target" shall have the meaning set forth in Exhibit
1.35 and Section
1.36. "Organon Technology" means Technology Controlled by *** Aurora.
1.37. "Patent Rights" means all U.S. or foreign (including regional
authorities such as the European Patent Office) regular or provisional
patent applications, including any continuation, continuation-in-part,
or division thereof or any substitute application therefor or equivalent
thereof, and any patent issuing thereon, including any reissue,
reexamination or extension thereof and any confirmation patent or
registration patent or patent of additions based on any such patent,
containing one or more claims to an Invention (and in the case of an
issued patent, containing one or more Valid Claims), and for which a
party hereto owns or Controls, individually or jointly, any title
thereto or rights thereunder.
1.38. "Phase III Clinical Trial" means that portion of a clinical
development program which provides for the testing of a Development
Compound designed to assess the safety and efficacy of such a product at
a dosage regimen identified in Phase II dose ranging studies on a
sufficient number of human patients to support an NDA.
1.39. "Product" means any composition of matter developed *** use that
incorporates a Development Compound ***.
1.40. "Royalty Term" means, in the case of any Product and as to any
country, the period of time commencing on the first commercial sale for
use or consumption of such Product in such country and ending upon the
earlier of: (i) the date that there no longer exists a Valid Claim in a
patent owned or Controlled by Organon or its Affiliates, or the
Licensors or Licensees covering the manufacture, use or sale of such
Product in such country, or (ii) the date that is *** after the date of
such first commercial sale for use or consumption of such Product in
such country; provided, however, Organon *** royalties on a Product in a
country *** in such country *** in such country ***. *** for *** in such
country ***.
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1.41. "Selection Procedure" of molecular targets shall have the
meaning set forth in Section 2.1.2.
1.42. "Technology" means Materials and Know-How.
1.43. "Term" means the period beginning on the Effective Date and
terminating in accordance with this Agreement, as set forth in Section
9.
1.44. "Third Party" means any entity other than Aurora and Organon or
their respective Affiliates.
1.45. "Tracking Record" shall have the meaning set forth in Section
4.4.2.
1.46. "Validation" shall have the meaning set forth in Section 2.1.4.
1.47. "***" shall mean the parameters, standards, and results
established by the CSP Steering Committee for each Collaborative Screen
and will generally be in agreement with Aurora's standard assay ***
indicated in Exhibit 1.48.
1.48. "Valid Claim" means: (a) an issued claim under an issued patent
within the Patent Rights, which has not (i) expired or been canceled,
(ii) been declared invalid by an unreversed and unappealable decision of
a court or other appropriate body of competent jurisdiction, (iii) been
admitted to be invalid or unenforceable through reissue, disclaimer or
otherwise, and/or (iv) been abandoned; or (b) a claim included in a
pending patent application within the Patent Rights that is being
actively prosecuted in accordance with this Agreement and which has not
been (v) canceled, (vi) withdrawn from consideration, (vii) finally
determined to be unallowable by the applicable governmental authority
for whatever reason (and from which no appeal is or can be taken), or
(viii) abandoned.
1.49. "***" means ***reader purchased by Organon under this Agreement
and described on Exhibit 2.7.
1.50. "***" means *** which are to be used by ***.
2. COLLABORATIVE SCREEN PROGRAM AND INSTRUMENT PURCHASE
2.1. Collaborative Screen Program.
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For a period of three (3) years following the Effective Date, unless
terminated earlier or extended by mutual agreement, the parties will
collaborate in the development and validation of Collaborative Screens
as part of a *** (the "Collaborative Screen Program or CSP"). Organon
and Aurora will collaborate to develop Collaborative Screens at Aurora
for *** during the Collaborative Period.
2.1.1. CSP Steering Committees. No later than *** after the
Effective Date, the parties shall establish a CSP
Steering Committee (the "CSP Steering Committee"). The
mission of the CSP Steering Committee is to manage the
experimental science and all other matters of the CSP
including the selection of targets for screen
development at Aurora (each such target provided by
Organon is an "Organon Target") as provided for under
Section 2.1.2. The CSP Steering Committee shall consist
of *** representatives designated by Organon from
Organon and *** representatives designated by Aurora
from Aurora. Each representative to the CSP Steering
Committee will have *** vote resulting in each party
having exactly *** votes.
The CSP Steering Committee will meet no later than ***
days after the Effective Date and at least *** times per
year using mutually agreed upon meeting locations and
formats including tele- and video-conferencing. On an
alternating basis, one party shall promptly prepare and
deliver to the members of the CSP Steering Committee
minutes in respect thereof, for review and approval of
both parties. Decisions in the CSP Steering Committee
will be ***, at a meeting where all *** voting
representatives are present.
Where meetings are to be held between the Parties, which
includes CSP Steering Committee meetings, each Party ***
attending such meetings.
2.1.2. Screen Selection. Attached as Exhibit 1.35 is a list of
at least *** Organon Targets for ***. Additional
potential Organon Targets (at least *** and of ***
listed on Exhibit A, with a *** by ***; i.e *** and ***
or ***, e.g., ***, etc.) will be presented by Organon to
Aurora at *** days prior to the *** of the Effective
Date during the Collaboration Period. Aurora will
develop Collaborative Screens for at least *** Organon
Targets (of which *** unless otherwise agreed by the CSP
Steering Committee) in the ***, of the Collaborative
Period, *** Collaborative Screens for Organon Targets
(of which *** may be *** unless otherwise agreed by the
CSP Steering Committee) in the *** of the Collaborative
Period, subject to Sections 2.1.3.3 and 2.1.3.4.
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2.1.2.1.The *** listed in Exhibit A and *** Organon
shall be *** Organon reasonably *** using Aurora
Technology. Aurora may reasonably request
further information regarding ***. Within *** of
first receiving such information, Aurora shall
notify Organon in writing in the event that
Aurora reasonably *** is *** obligations or if
Aurora *** for a *** would not reasonably be
scientifically *** based on available
information and that ***. If Aurora *** proposed
by ***, Aurora will *** Organon ***, to the
extent that Aurora does not have to reveal
confidential *** Third Party. Consequently, the
parties agree that in some instances Aurora ***
a ***.
2.1.2.2.Additional Rights Necessary for Screen
Development. During the course of screen
selection or development the parties may
identify Third Party Materials (such as cell
lines or proteins) that may be useful for screen
development. If such Materials are deemed
necessary for screen development by the CSP
Steering Committee, *** required for their use.
2.1.3. Screen Development.
2.1.3.1 CSP Work Plan. The CSP Steering Committee will
coordinate the preparation of a work plan (a "CSP Work
Plan"), which shall set forth the respective
responsibilities of the parties for the development of
each Collaborative Screen, and which must be approved by
the CSP Steering Committee in accordance with Section
2.1.1. Each such CSP Work Plan will also *** to be
produced, the ***, the dates by which such activities
are expected to be accomplished by the parties, and ***
for each Collaborative Screen.
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2.1.3.2 Screen Development. The CSP Steering Committee
will coordinate screen development (including the
preparation and management of a CSP Work Plan, and the
***) for each Collaborative Screen within a time frame
set by the CSP Steering Committee that can satisfy the
objectives of the CSP Steering Committee and the
parties. Promptly following the approval of each CSP
Work Plan, the parties will use reasonable efforts to
commence their respective duties under the CSP Work Plan
***. Organon shall provide to Aurora all necessary
materials for screen development, including ***, etc.,
in an appropriate form and a timely manner (materials
*** Organon Targets in the *** of the Collaborative
Period, and materials for *** Organon Targets within ***
of the Effective Date), consistent with the CSP Work
Plans. Should such materials not be properly provided in
a timely manner, the parties shall discuss remedies ***.
All work under a CSP Work Plan shall be performed in
accordance with the provisions of this Agreement, and
each party will *** to complete its obligations under
the CSP Work Plan as ***. In situations where an *** is
required for a Collaborative Screen and Organon has
provided Aurora ***, if *** at Aurora a *** for a given
Organon Target, then work on that Target *** selected.
*** Aurora will be performed in conjunction with screen
development efforts ***. *** reagents for screening, and
methods thereof, are ***. Aurora may *** under
additional funding by Organon.
2.1.3.3 Additional Screens. Should Aurora complete the
development of *** for Organon Targets *** during the
Collaborative Period, Aurora may, with the approval of
the CSP Steering Committee, direct the Aurora Screen
Development Resource (see 2.2.1 below) to the
development of additional Collaborative Screens for
Organon Targets. Such work shall be conducted under a
CSP Work Plan approved by the CSP Steering Committee,
and Aurora shall be compensated *** in accordance with
Section 2.2.4.
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2.1.3.4 Fewer Screens. Should Aurora *** development of
*** Organon Targets *** during the Collaborative Period,
*** research and *** Aurora screen development resources
to *** of such *** Collaborative Screens within *** of
the ***, such resources to *** to the Aurora effort
during the Collaborative Period (i.e., ***). Such ***
Collaborative Screens shall be *** of *** Targets *** as
the parties shall mutually agree in writing. By the ***
the Effective Date *** Collaborative Screens will ***,
and by the *** the Effective Date *** Collaborative
Screens will ***, unless terminated earlier in
accordance with Section 9.4.
2.1.4. *** Collaborative Screens. When Aurora *** a
Collaborative Screen, including it's ***, which Organon
*** expense if desired, a written report describing the
Collaborative Screen and *** with the CSP Work Plan
including *** shall be provided by *** to the CSP
Steering Committee. The CSP Steering Committee will ***
report and *** each Collaborative Screen according to
the *** in the CSP Work Plan ("***")*** on the ***, if
any, necessary for ***. When so directed in writing by
*** and consistent with *** obligations, which
obligations shall not *** Organon, Aurora shall ***
Organon *** in accordance with the licenses described in
Section 3.1.
2.1.5 *** Screening by Aurora. During the Collaborative
Period, Organon shall *** screening of *** Collaborative
Screens to Aurora and subject to Section 2.2.5. For each
such Collaborative Screen developed pursuant to a CSP
Work Plan of Section 2.1.3, *** screening by Organon and
agreed by the parties in writing, Aurora will use *** to
screen Compounds or other chemicals agreed to by the
parties pursuant to Section 2.1.6. Aurora shall, with
regard to each Collaborative Screen, screen Compounds in
a manner determined by the CSP Steering Committee and
*** Compounds for ***, and *** as determined by the CSP
Steering Committee (such screening by Aurora of each
Collaborative Screen to be referred to as an "Aurora
Screening Program"), provided, however, the screening
*** utilized will be *** of *** performing such
Collaborative Screen *** equipment. Aurora will use ***
to provide such screening service *** which is *** used
*** as provided for in Section 2.2.5. The *** for any
given Collaborative Screen will *** ▇▇▇▇▇ or datapoints,
including standards and controls.
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2.1.6 Libraries. Organon shall, ***, *** Compounds *** Organon
for an Aurora Screening Program. Conversely, in the
event that Organon desires to have Aurora test in an
Aurora Screening Program a chemical (including a library
of compounds) owned, accessed or Controlled by ***, the
parties agree *** under which such chemical may be
screened. Any chemical supplied by *** for use in an
Aurora Screening Program shall be *** in *** (the
"Compound Supply", which refers only to compounds ***
Organon). The current *** is provided as Exhibit
2.1.6.). The quantities needed for each screen will be
specified in writing in the CSP Work Plan. Aurora agrees
*** received from *** or to use *** Collaborative
Screens without ***. Aurora *** Compound Supply received
*** to Organon of the action taken and successfully
completed, upon written notice by Organon of how it
would like the Compound Supply provided by Organon
handled upon completion of any screening by Aurora.
2.2 Aurora Screen Development Resource, Technology Access and
Payments. Aurora will provide access to Aurora Technology, Aurora
Reporters, Aurora Patent Rights, and the Aurora Screen Development
Resource at Aurora to Organon as follows:
2.2.1 Aurora Screen Development Resource. During the
Collaborative Period, upon payment by Organon of the
funding provided for in Section 2.2.2, Aurora will
commit a *** number of Aurora personnel (the "Aurora
Screen Development Resource") to develop at least ***
Collaborative Screens for the Organon Targets each year
of the Collaborative Period.
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2.2.2. Payments for Technology Access and Support of the Screen
Development Resource. As partial consideration for use
of the Aurora Screen Development Resource under Section
2.2.1 and *** to use *** during the Collaborative Period
in accord with Section 3.1, Organon shall pay Aurora ***
for ***. Such amount shall be payable in *** payments
*** each, the first payment to be made within *** of the
Effective Date, and subsequent payments to be made on or
before each of the following *** and *** during the
Collaborative Period, for a total of *** payments. Such
payments shall be ***. The total of the *** above
mentioned payments if so made would be *** dollars ***.
2.2.3. Payments for a License Subsequent to the Initial Term.
Organon will pay to Aurora starting on the date of ***
and on each *** thereafter a *** annual license fee to
maintain its license under Section 3.1. This license fee
shall *** dollars ($***) for *** of the Collaborative
Period ("First Payment"), and *** dollars ($***) per
year for *** ("Subsequent Payments") up to a maximum of
*** years. Such payments shall be made within *** days
of the anniversary of the Effective Date. Such license
fees are applicable *** Organon *** makes the First
Payment as described. Organon *** license granted under
Section 3.1 *** with *** to Aurora. ***, should Organon
have interest *** license or *** license, the ***
license shall *** the parties.
2.2.4 Payments for Additional Screens. For each *** developed
by Aurora for an Organon Target *** per a given year of
the Collaborative Period, or *** during the
Collaborative Period as described in Section 2.1.3.3,
Organon shall pay to *** dollars ($***) ***, due within
*** of *** Collaborative Screen *** for a given year of
the Collaborative Period by the CSP Steering Committee.
2.2.5 Payments for Screening by Aurora.
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As partial consideration for screening by Aurora and the
generation of datapoints during the Collaborative Period
pursuant to Section 2.1.5, Organon will pay Aurora ***
payments as follows: for datapoints generated in an ***
a ***, Organon will pay Aurora, in advance, ***, and for
datapoints generated in *** in a screening ***, Organon
will pay Aurora in advance, ***. Such payments *** costs
incurred by Aurora related to *** a Collaborative
Screen). The parties shall agree on the *** for any
assay to be performed, and *** above ***. Additionally
the prices indicated above are *** Aurora in accordance
with Section 2.1.6.
2.3 Milestones and Royalties.
In addition to such payments as are made by Organon to Aurora pursuant
to Section 2 hereof, the following payments shall be made to Aurora for
each Collaborative Screen:
2.3.1 Milestones. When *** Compound, Hit or Derivative from
any Collaborative Screen reaches the following
milestones, Organon will promptly notify Aurora of same
and within *** of such notification, Organon will pay
Aurora the amount corresponding to such milestone. It is
understood that Organon *** the milestone payments for a
Compound, Hit or Derivative it *** Compound, Hit or ***
such *** is *** Compound, Hit or Derivative.
Notwithstanding the above, each milestone shall be paid
*** Collaborative Screen.
Milestone Amount ($US)
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*** ***
*** ***
*** ***
*** ***
2.3.2. Royalties. With respect to each Product, Organon shall
pay a royalty on *** of such Product during the Royalty
Term for such Product. The royalty applicable is the
product of the worldwide *** summed from each applicable
country multiplied by the royalty rate of *** for annual
worldwide ***.
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2.4 Supply of Aurora Reporters.
So long as Organon has made payments in accordance with Section 2.2. and
2.3 as applicable, at Organon 's written request or other agreed upon
means available, Aurora will *** within *** days after receipt of a
written purchase order therefor, Materials pertaining to the Aurora
Reporters as Organon may require *** Collaborative Screens *** Aurora as
provided for in Section 2.1.3 and *** Organon as provided for under
Section 2.1.4. Organon will *** all supplies so delivered at Aurora's
then *** ( *** are indicated in Exhibit 2.4). Organon will pay for all
Materials so ordered within *** days after delivery to Organon. If
within *** weeks after Organon receives an Aurora Reporter *** by
Aurora, then *** of Organon's *** perform.
2.5 Ownership of Compounds and Data.
*** shall own all *** it, and Hits, Derivatives, Development Compounds
and Products arising from the Compound Supply *** it under this
Agreement. All results and data concerning any such Hits or Development
Compounds *** generated *** resulting from any Collaborative Screen ***
and shall be treated as *** Confidential Information hereunder. *** will
not *** any biological materials ***, provided, however, the parties
agree that *** biological materials to *** *** acquired by ***, its ***
or ***.
2.6. Development of Products.
*** will be responsible for all ***, including all regulatory filings,
of Hits and Development Compounds arising out of this Agreement at no
expense ***. Such development shall be at *** sole discretion, and ***
shall use ***, consistent with commercial business practices, to conduct
the activities associated with the development of any Development
Compound, all regulatory activities relating to the manufacture, use or
sale of any Development Compound or Product, and the commercialization
and marketing of any Product in any country. All regulatory filings made
or filed by *** for any Development Compound or Product shall be owned
***. At *** and expense, *** to the extent *** necessary to permit
Organon to perform the foregoing activities.
2.7 Purchase of an Aurora VIPR.
Organon shall purchase an Aurora VIPR for the purpose of performing
Collaborative Screens *** in accordance with Exhibit 2.7.
3. INTELLECTUAL PROPERTY RIGHTS
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3.1 Grant of Rights from Aurora to Organon.
License to Collaborative Screens developed by Aurora. Aurora, subject to
payments under Section 2.2, grants to Organon a *** under Aurora Patent
Rights and Aurora Technology to *** for Internal Research, and to ***
Internal Research *** developed by Aurora in accordance with Sections
2.1 and 2.2, *** CSP Steering Committee and *** Organon in accordance
with Section 2.1.4. The grant of rights from Aurora to Organon does not
include the right to ***. The Parties agree to *** for a license in
favor of *** for the practice of *** for other *** needed for *** out or
to be *** by *** or product development by ***.
3.2. Grant of Rights from Organon to Aurora.
Organon grants to Aurora *** license, ***, and *** Aurora to ***. ***
this Section 3.2, Aurora *** provided by Organon ***; provided however,
Aurora *** as provided for in Section 2.1.5.
3.3. Ownership of Intellectual Property and Property.
3.3.1. Transfer of Rights. All rights not expressly licensed or
assigned by Organon are retained by Organon. All rights
not expressly licensed or assigned by Aurora are
retained by Aurora. Except as otherwise expressly
provided in this Agreement, nothing in this Agreement is
intended to convey or transfer ownership by one party to
the other of any rights, title or interest in any
Confidential Information, Technology, Copyrights or
Patent Rights owned or Controlled by a party. Except as
expressly provided in this Agreement, nothing in this
Agreement shall be construed as a license or sublicense
by one party to the other of any rights in any
Technology, Copyrights, or Patent Rights owned or
Controlled by a party.
3.3.2. Organon Inventions. *** shall *** Inventions and other
Technology made solely by its employees and agents, and
all patent applications and
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patents claiming such Inventions and other Technology.
If Organon has a license pursuant to Sections 3.1,
Aurora *** that *** relating to *** and Organon ***.
3.3.3 Aurora Inventions. *** shall *** Inventions and other
Technology made solely by its employees and agents, and
all patent applications and patents claiming such
Inventions and other Technology, provided, however, that
*** and other Technology *** Organon (including *** from
the *** where such *** by Organon) and *** Aurora in
performance of this Agreement and Aurora *** Organon.
3.3.4. Joint Inventions. During the period from the Effective
Date to *** thereafter, all Inventions and other
Technology conceived jointly by employees or agents of
Organon and employees or agents of Aurora shall be owned
by ***; provided, however, that if a) ***, Aurora ***
such Inventions and other Technology that *** and
Organon *** Aurora and b) Organon will *** all
Inventions and other *** Organon and *** and Aurora ***
Organon.
3.3.5 Other Inventions. Any Inventions not included in
Sections 3.3.2, 3.3.3, 3.3.4 (a) or 3.3.4 (b) above
shall be owned by their inventors.
3.3.6. Inventorship and Assignment. Inventorship of patentable
inventions shall be determined by U.S. patent law.
Organon and Aurora agree to execute all documentation
necessary to perfect all assignments of Inventions,
Technology and Patent Rights.
4. PAYMENTS OF ROYALTIES, ACCOUNTING FOR ROYALTIES AND RECORDS.
4.1. Payment and Reporting.
The royalties due under Article 2 and as follows in this Article 4,
shall be paid within *** after the end of *** in which such royalties
are earned during the Royalty Term for each Product. With each such ***,
Organon shall furnish Aurora a summary statement setting forth on a
country-by-country basis the relevant sales information, including the
total number of units of each such Product sold and other information
employed to calculate *** for such Product.
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4.2. Currency of Payment.
All payments to be made under this Agreement, including the milestones
and royalties payable to Aurora by Organon, shall be paid in U.S.
dollars by wire transfer or other mutually acceptable means to a bank
account designated by Aurora upon an invoice received from Aurora.
Translation of sales recorded in local currencies to U.S. dollars will
be performed in a manner consistent with *** used to prepare its audited
financial statements for internal and external reporting purposes, which
uses a widely accepted source of published exchange rate.
4.3. Taxes Withheld.
Any income or other tax that Organon or any of its Affiliates, Licensees
or Licensors is required by a government agency to withhold and pay on
behalf of Aurora with respect to the royalties payable under this
Agreement shall be deducted from and offset against said royalties prior
to remittance to Aurora; provided, however, that in regard to any tax so
deducted, Organon shall give or cause to be given to Aurora such
assistance as may reasonably be necessary to enable Aurora to claim
exemption therefrom or credit therefor, and in each case shall furnish
Aurora proper evidence of the taxes paid on Aurora's behalf.
4.4. Records.
4.4.1. ***Royalty Calculations. During the Royalty Term and for
*** from the date of each payment of royalties, Organon
shall keep complete and accurate records of sales and
all other information necessary to calculate Net Sales
of each Product in sufficient detail to allow the
accrued royalties to be determined accurately in
accordance with GAAP. Aurora, with reasonable written
notice to Organon but not more than once each calendar
year, shall have the right to cause Aurora's nationally
recognized independent, certified public accountant to
audit such records at the place or places of business
where such records are customarily kept in order to
verify the accuracy of the reports of *** and royalty
payments. Such accountant shall execute a
confidentiality agreement prior to entering Organon's
premises, obligating such accountant to keep all
information disclosed to it confidential and shall only
be permitted to disclose to Aurora the extent of any
discrepancy between royalty payments made by Organon
hereunder and the actual royalty required to be so paid.
Aurora shall bear the full cost of such audit unless
such audit discloses a variance of more than *** from
the amount of the royalties due under this Agreement, in
which event, Organon shall bear the full cost of such
audit. Aurora agrees not to disclose Confidential
Information concerning royalty payments and reports, and
all information learned in the course of any audit or
inspection, except to the extent necessary for Aurora to
reveal such information in order to enforce its rights
under this Agreement or if disclosure is required by
law.
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4.4.2. Tracking Records for Collaborative Screens.
4.4.2.1.***. Organon will ***, to inspect the Tracking
Records once per year or upon reasonable request
by Aurora for the sole purpose of determining
the attainment of a milestone or royalty under
Article 2. The Tracking Records shall be
securely retained for no less *** years from the
last use of a Collaborative Screen. When a
compound, such as a Hit, Derivative or
Development Compound is selected for a good
laboratory practice safety or toxicology study,
Organon will *** to Aurora under strict
confidentiality.
4.4.2.2.Upon reasonable request by Aurora and at a
minimum ***, Organon will provide Aurora with a
summary of the status of Development Compounds
and Products that may be used to calculate
royalties or milestones.
4.5. Trade Secret Milestones and Royalty.
The parties acknowledge that the principal value contributed by Aurora
under this Agreement is the enhanced probability of identifying leads
for Products, such as human pharmaceutical products (or other products
having commercial value), and the potential to generate multiple leads,
either or both of which the parties reasonably believe will lessen the
time required to bring pharmaceutical products to market and increase
the efficiency of drug discovery and development processes and
technologies. Additionally, the parties acknowledge that Aurora may ***
covering the manufacture, sale, use or importation of a particular
Development Compound or Product. Organon acknowledges and agrees that
the value it receives hereunder is in the access and use of a
Collaborative
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Screen or Aurora Technology. Accordingly, Organon *** Aurora may *** a
Development Compound or a Product.
5. INTELLECTUAL PROPERTY ENFORCEMENT AND DEFENSE OF CLAIMS
5.1. Intellectual Property Enforcement.
Organon and Aurora shall have the right, but not the obligation, to
bring proceedings against any Third Party for the inappropriate use,
including patent infringement, of Technology or Patent Rights solely
owned or Controlled by it, and at its own risk and expense. If one party
brings such action such party shall be entitled to control such action,
hire and retain counsel, make decisions, settle on any terms, and retain
any and all awards or damages obtained in any such proceeding. At the
request and expense of either party, the other party shall give the
requesting party all reasonable assistance required to file and conduct
any such proceeding.
5.2. Defense of Infringement Claims for Organon Hits, Development
Compounds and Products.
Aurora will cooperate with Organon, at Organon's expense, in the defense
of any suit, action or proceeding against Organon and Organon's
Affiliates or Aurora alleging the infringement of the intellectual
property rights of a Third Party by reason of the manufacture, use or
sale of a Hit, Derivative, Compound, Development Compound or Product
from a Compound screened in a Collaborative Screen by Organon or Aurora.
Each party shall give the other party prompt written notice of the
commencement of any such suit, action, proceeding or claim of
infringement. Aurora *** to defend, hire counsel, make decisions or
settle on any terms any such suit, action or proceeding *** documents,
provide pertinent records, and take all other actions, including
requiring persons within its control to give testimony, which may be
reasonably required in connection with the defense or settlement of such
litigation.
5.3. Defense of Infringement Claims for Aurora Technology, the VIPR
and Aurora Patent Rights.
Organon will cooperate with Aurora, in the defense of any suit, action
or proceeding against Aurora or Organon alleging the infringement of the
intellectual property rights of a Third Party by reason of Aurora's or
Organon's use of any Aurora Patent Rights, the VIPR and Aurora
Technology licensed to Organon under this Agreement. The parties shall
notify each other promptly in writing of the commencement of any such
suit, action, proceeding or claim of infringement. Organon shall *** to
defend, hire counsel, make decisions or settle on any terms any such
suit, action or proceeding *** all documents, provide pertinent records,
and take all other actions, including requiring persons within its
control to give testimony, which may be reasonably required in
connection with the defense or settlement of such litigation.
6. TREATMENT OF CONFIDENTIAL INFORMATION; PUBLICITY
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6.1. Confidentiality.
6.1.1. Subject to the terms and conditions of this Agreement,
Organon and Aurora each agree that, during the term of
this Agreement and for *** years thereafter, it will
keep confidential, and will cause its Affiliates to keep
confidential, all Confidential Information that is
disclosed to it or to any of its Affiliates by the other
party in connection with the performance of this
Agreement. Neither Organon nor Aurora nor any of their
respective Affiliates shall use the other party's
Confidential Information except as expressly permitted
in this Agreement.
6.1.2. Organon and Aurora each agree that any disclosure of the
other's Confidential Information to any officer,
employee, contractor, consultant, sublicensee or agent
of the other party or of any of its Affiliates shall be
made only if and to the extent necessary to carry out
its responsibilities under this Agreement and to
exercise the rights granted to it hereunder, shall be
limited to the extent consistent with such
responsibilities and rights, and shall be provided only
to such persons or entities who are bound to maintain
same in confidence in a like manner as the party
receiving same hereunder is so required. Each party
shall use reasonable efforts to take such action, and to
cause its Affiliates to take such action, to preserve
the confidentiality of each other's Confidential
Information, which shall be the same efforts as it would
customarily take to preserve the confidentiality of its
own Confidential Information.
Either party may be required to disclose some
Confidential Information of the other party in a patent
application filed related to Compounds, Technology or
uses thereof. The disclosing party shall limit this type
of information to the minimum necessary and the
disclosing party shall inform the non-disclosing party
of exactly what Confidential Information will be
disclosed in the patent application *** before such
application is filed.
Upon termination of this Agreement, each party, upon the
other's request, will return all the Confidential
Information received from the other party pursuant to
this Agreement, including all copies and extracts of
documents, within *** of the request of the other party.
6.1.3.
Confidential Information shall not include any
information, which the receiving party can prove by
competent evidence:
i) is now, or hereafter becomes, through no act or
failure to act on the part of the receiving party,
generally known or available;
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ii) is known by the receiving party at the time of
receiving such information, as evidenced by its records;
iii) is hereafter furnished to the receiving party
without restriction as to disclosure or use by a Third
Party lawfully entitled to so furnish same;
iv) is independently developed by the employees,
agents or contractors of the receiving party without the
aid, application or use of the disclosing party's
Confidential Information;
v) is the subject of a written permission to
disclose provided by the disclosing party; or
vi) is provided by the disclosing party to a Third
Party without restriction as to confidentiality.
A party may also disclose Confidential Information of
the other where required to do so by law or legal
process, provided that, in such event, the party
required to so disclose shall give maximum practical
advance written notice of same to the other party and
will cooperate with the other party's efforts to seek,
at the request and expense of the other party, all
confidential treatment and protection for such
disclosure as is permitted by applicable law.
The parties agree that the material financial terms of
this Agreement will be considered Confidential
Information of both parties. Notwithstanding the
foregoing, either party may disclose such terms in legal
proceedings or as are required to be disclosed in its
financial statements, by law, or under strictures of
confidentiality to bona fide potential sublicensees.
Either party shall have the further right to disclose
the material financial terms of this Agreement under
strictures of confidentiality to any potential acquirer,
merger partner, bank, venture capital firm, or other
financial institution to obtain financing.
The parties agree that information developed pursuant to
*** will be considered Confidential Information of both
parties and shall be subject to the confidentiality
requirements of this Section 6.1. Notwithstanding the
foregoing, ***.
6.2. Publication of Results.
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Subject to Section 6.1 hereof, results and data obtained by either party
in the course of a Collaborative Screen Program through use of an Aurora
Reporter may be submitted for publication by Organon in accordance with
Organon's customary practices, provided, however, that Organon shall
credit Aurora in such publication as the developer and/or provider of
the technology that produced, in part, the published results or data.
Organon shall send a copy of the proposed publication and shall allow
Aurora *** from the date of receipt in which to determine whether such
publication contains subject matter for which patent protection should
be sought prior to disclosure, or otherwise contains Aurora Confidential
Information. If no answer is received from Aurora within *** of receipt
of the proposed publication, Organon shall be free to submit such
proposed publication.
6.3. Publicity. Except as required by law and as provided in this
Article 6, neither party may make any public announcement or otherwise
disclose the terms of this Agreement without the prior written consent
of the other party, which consent shall not be unreasonably withheld.
6.4. Press Release. Notwithstanding the foregoing, the parties will
agree on a press release to announce the execution of this Agreement and
to be released by Aurora and to be mutually agreed upon. Thereafter,
Organon and Aurora may each disclose to Third Parties the information
contained in the mutually agreed upon press release without the need for
further approval by the other.
7. PATENT PROSECUTION AND COPYRIGHTS
7.1. Patents.
The control and expense of the filing, prosecution (including an
opposition or interference) and maintenance of patents and patent
applications claiming Inventions will be the sole responsibility of the
party filing the patent application and the party not filing the patent
application will cooperate in such filing, prosecution and maintenance
of the validity of such patent position. Organon and Aurora will
cooperate in the filing, prosecution and maintenance of jointly owned
patents and patent applications claiming inventions conceived or made
pursuant to activities under Article 2, and share equally in the
expenses incurred thereto.
7.2. Copyrights.
The parties agree to treat and handle, to the maximum practical extent,
any copyrights owned or Controlled by a party in the same manner as
Patent Rights owned or Controlled by such party.
8. REPRESENTATIONS, WARRANTIES AND INDEMNIFICATION
8.1. Mutual Representations and Warranties.
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The parties make the following representations and warranties to each
other:
8.1.1. Corporate Power. Each party hereby represents and
warrants that such party (a) is duly organized and
validly existing under the laws of the state of its
incorporation and has full corporate power and authority
to enter into this Agreement and to carry out the
provisions hereof; (b) has the requisite power and
authority and the legal right to own and operate its
property and assets, to lease the property and assets it
operates under lease, and to carry on its business as it
is now being conducted; and (c) is in compliance with
all requirements of applicable law, except to the extent
that any noncompliance would not have a material adverse
effect on the properties, business, financial or other
condition of it and would not materially adversely
affect its ability to perform its obligations under the
Agreement.
8.1.2. Due Authorization. Each party hereby represents and
warrants that such party (a) has the requisite power and
authority and the legal right to enter into the
Agreement and to perform its obligations hereunder; and
(b) has taken all necessary action on its part to
authorize the execution and delivery of the Agreement
and to authorize the performance of its obligations
hereunder and the grant of rights extended by it
hereunder.
8.1.3. Binding Agreement. Each party hereby represents and
warrants to the other that (a) this Agreement has been
duly executed and delivered on its behalf and is a legal
and valid obligation binding upon it and is enforceable
in accordance with its terms; (b) the execution,
delivery and performance of this Agreement by such party
does not conflict with any agreement, instrument or
understanding, oral or written, to which it is a party
or by which it may be bound, nor violate any law or
regulation of any court, governmental body or
administrative or other agency having authority over it;
and (c) all necessary consents, approvals and
authorizations of all governmental authorities and other
persons required to be obtained by it in connection with
the Agreement have been obtained.
8.2. Warranties and Aurora Technology.
Aurora represents and warrants to Organon as of the Effective Date the
following:
8.2.1. To the best knowledge of Aurora: (a) ***; (b) ***; (c)
***; and (d) ***.
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8.2.2. Except as set forth in Section 8.2.1 above, Aurora
(including its officers, employees and agents) expressly
disclaims any representations and warranties, whether
express or implied, relating to ***. Aurora further
disclaims i) any express or implied warranty of
merchantability or fitness for a particular purpose of the
***, ii) any express or implied warranty that the practice
or use of the ***will not infringe a patent, copyright,
trademark or other right of a Third Party, and iii) any
express or implied warranty regarding ***.
8.3. *** Indemnification.
*** hereby agrees to indemnify, defend and hold ***, and its officers,
directors, employees, and agents (collectively, the " *** Indemnitees")
harmless from and against all damages or other amounts payable to a
Third Party, including reasonable attorneys' fees and costs of
litigation, resulting from a suit brought or threatened by a Third Party
against a *** Indemnitee based on (a) *** gross negligence or willful
misconduct (but not patent infringement) relating to *** contractual
performance under this Agreement, and (b) *** contractual performance
under this Agreement in the course of the Collaborative Screen Program
at ***, except to the extent such damages or other amounts payable are
attributable to: (i) the misappropriation by any such *** Indemnitee of
the trade secrets of any Third Party, (ii) any breach of this Agreement
by a *** Indemnitee or misrepresentation contained herein, or iii) trade
secret use or patent infringement by *** of Compounds provided under
this Agreement by ***, a target selected or screen components provided
by *** that are owned or otherwise controlled by a Third Party or a
Third Party's patent rights. In no event shall *** be liable for any
incidental or consequential damages suffered by *** resulting from the
exercise of any rights granted in accordance with this Agreement.
8.4. Warranties and Organon Technology.
Organon warrants to Aurora as of the Effective Date the following:
8.4.1. To the best knowledge of Organon as of the Effective
Date: (a) ***; (b) ***; and (c) ***.
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8.4.2. Except as set forth in Section 8.4.1 above, Organon
(including its officers, employees and agents) expressly
disclaim any representations and warranties, whether
express or implied, relating ***. Organon further
disclaims: i) ***; ii) ***; and iii) ***.
8.5. *** Indemnification.
*** hereby agrees to indemnify, defend and hold ***, and its respective
officers, directors, employees, and agents (collectively, the "***
Indemnitees") harmless from and against all damages or other amounts
payable to a Third Party, including reasonable attorneys' fees and costs
of litigation, resulting from a suit or other threat brought or
threatened by a Third Party against an *** Indemnitee based on a) any
development, manufacture, use or sale of a Development Compound or
Product by or through *** or its Affiliates or its Licensees or
Licensors, and b) infringement by *** of Patent Rights as a result of
using a target in a Collaborative Screen, or Compounds provided under
this Agreement by ***; except to the extent such damages or other
amounts payable are attributable to: (i) a violation of any contractual
or fiduciary duty owed by any *** Indemnitee to a Third Party, (ii) any
breach of this Agreement by an *** Indemnitee or misrepresentation
contained herein and (iii) trade secret use or patent infringement by
*** (other than of a target or screen component provided by ***) that
are owned or otherwise controlled by a Third Party or a Third Party
patent right. In no event shall *** be liable for any incidental or
consequential damages suffered by *** resulting from the exercise of any
rights granted in accordance with this Agreement.
*** hereby agrees to indemnify, defend and *** and its respective
officers, sponsors, directors, employees, and agents (collectively, the
"IP Indemnitees") harmless from and against all damages or other amounts
payable to a Third Party, including reasonable attorneys' fees and costs
of litigation, resulting or arising from the exercise of rights under
the licenses granted herein and pursuant to ***, including product
liability. This provision is pursuant to *** license agreement.
9. TERM AND TERMINATION
9.1 Term.
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The term of this Agreement will begin on the Effective Date and shall
continue until there is no longer a royalty obligation owed by Organon
to Aurora unless terminated earlier in accordance with the provisions of
Sections 9.2 or 9.3 hereof.
9.2. Termination By Mutual Agreement.
The parties may at any time terminate this Agreement, in whole or in
part, by written agreement executed by both Aurora and Organon. In such
event, the document effecting such termination shall specify the
continuation or termination of any license rights granted hereunder, as
well as any other terms agreed to by both parties.
9.3. Termination for Cause.
Either party shall have the right to terminate this Agreement at any
time for a material breach of this Agreement by the other party,
provided that the non-breaching party shall have given the breaching
party *** days written notice of the breach and intention to terminate
this Agreement in the absence of a cure within ninety *** (*** days in
the case on non-payment) of receipt of such notice by the breaching
party. Upon termination of this Agreement for cause, all licenses and
sublicenses granted in accordance with this Agreement shall be
terminated and all Materials transferred in accordance with this
Agreement shall be returned to the supplying party or destroyed at the
discretion of such party. The non-breaching party, upon termination of
this Agreement may seek actual or general damages and remedies available
to it at law or in equity. NO PUNITIVE OR CONSEQUENTIAL DAMAGES MAY BE
SOUGHT BY EITHER PARTY.
9.4 Termination without Cause.
Either party shall have the right to terminate the Research *** by providing
written notification thereof *** days ***.
9.5. Effect of Expiration or Termination.
The obligations and rights of the parties under ***, thereof, as well as
any provisions, which, by their intent or meaning are intended to so
survive, shall survive termination or expiration of this Agreement.
Except as otherwise expressly provided in this Agreement, the rights and
obligations of the parties under Article 2 hereof shall terminate and be
of no further force or effect whatsoever upon any termination of this
Agreement. Upon expiration or other termination of the Agreement all
licenses granted will terminate and Materials and Collaborative Screens
will be destroyed or returned, at the sole discretion of the providing
party, to the party providing such Materials and Collaborative Screens
within *** days.
10. MISCELLANEOUS
10.1. Assignment.
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*** may assign its rights or obligations under this Agreement in
connection with the sale of all or substantially all of its assets, or
may otherwise assign its rights or obligations under this Agreement ***;
provided, however, if such assignment is to an Affiliate that is wholly
owned by *** such consent shall not be necessary. This Agreement shall
survive any merger or consolidation of either party with or into another
party and no consent for any such merger, consolidation or similar
reorganization shall be required hereunder. In the event of such merger,
consolidation or similar reorganization or in the event of a sale of all
assets, no intellectual property rights of the acquiring or acquired
company shall be included in the technology licensed hereunder.
10.2. Binding Effect.
This Agreement shall be binding upon and inure to the benefit of the
successors and permitted assigns of the parties. Any assignment not in
accordance with this Agreement shall be void.
10.3. Force Majeure.
Neither party shall lose any rights hereunder or be liable to the other
party for damages or losses on account of failure of performance by the
defaulting party if the failure is occasioned by war, fire, explosion,
flood, earthquake, strike, lockout, embargo, act of God, or any other
similar cause beyond the control of the defaulting party, provided that
the party claiming force majeure has exerted all reasonable efforts to
avoid or remedy such force majeure and thereafter takes all reasonable
steps to mitigate any such delay in performance hereunder and any
damages that may be incurred by the other party thereby.
10.4. Notices.
Any notices or communications provided for in this Agreement to be made
by either of the parties to the other shall be in writing, in English,
and shall be made by prepaid air mail or overnight carrier with return
receipt addressed to the other at its address set forth below. Any such
notice or communication may also be given by hand, or facsimile to the
appropriate designation. Notices shall be sent:
If to Organon, to: N.V. Organon
▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇
▇.▇. ▇▇▇ ▇▇
▇▇▇▇ ▇▇ ▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇
Facsimile number: (▇▇) ▇▇▇ ▇▇▇▇▇▇
Attention: C. ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, Ph.D.
Director, Research
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If to Aurora, to: Aurora Biosciences Corporation
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Facsimile number: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇
Vice President, Business Development
provided that if such notice or communication relates to an amendment to
this Agreement or to any notice pursuant to Article 9 hereof, a copy
shall also be sent to:
If to Organon, to: Head of the Legal Department
If to Aurora, to: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
General Counsel
Either party may by like notice specify or change an address to which
notices and communications shall thereafter be sent. Notices sent by
mail, facsimile or cable shall be effective upon receipt and notices
given by hand shall be effective when delivered.
10.5. Governing Law and Jurisdiction.
This Agreement shall be governed by the laws of the State of California,
as such laws are applied to contracts entered into and to be performed
within such state.
10.6. Waiver.
Except as specifically provided for herein, the waiver from time to time
by either of the parties of any of their rights or their failure to
exercise any remedy shall not operate or be construed as a continuing
waiver of same or any of the other of such party's rights or remedies
provided in this Agreement.
10.7. Severability.
If any term, covenant or condition of this Agreement or the application
thereof to any party or circumstance shall, to any extent, be held to be
invalid or unenforceable, then the remainder of this Agreement, or the
application of such term, covenant or condition to parties or
circumstances other than those as to which it is held invalid or
unenforceable, shall not be affected thereby and each term, covenant or
condition of this Agreement shall be valid and be enforced to the
fullest extent permitted by law; and the parties hereto covenant and
agree to renegotiate any such term, covenant or application thereof in
good faith in order to provide a reasonably acceptable alternative to
the term, covenant or condition of this Agreement or the application
thereof that is invalid or unenforceable, it being the intent of the
parties that the basic purposes of this Agreement are to be effectuated.
10.8. Independent Contractors.
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It is expressly agreed that Aurora and Organon shall be independent
contractors and that the relationship between the parties shall not
constitute a partnership or agency of any kind. Neither Aurora nor
Organon shall have the authority to make any statements, representations
or commitments of any kind, or to take any action, which shall be
binding on the other, without the prior written authorization of the
other party to do so.
10.9. Entire Agreement.
This Agreement between the parties of even date herewith sets forth all
of the covenants, promises, agreements, warranties, representations,
conditions and understandings between the parties hereto, and supersedes
and terminates all prior agreements and understanding between the
parties, with respect to the subject matter hereof. There are no
covenants, promises, agreements, warranties, representations conditions
or understandings, either oral or written, between the parties other
than as set forth herein and therein. No subsequent alteration,
amendment, change or addition to this Agreement shall be binding upon
the parties hereto unless reduced to writing and signed by the
respective authorized officers of the parties. This Agreement shall not
be strictly construed against either party hereto. Any conflict between
the terms set forth in the text of this Agreement and the terms of any
Exhibit hereto shall be resolved in favor of the text of this Agreement.
10.10. No Third Party Beneficiaries.
No third party, including any employee of any party to this Agreement,
shall have or acquire any rights by reason of this Agreement. Nothing
contained in this Agreement shall be deemed to constitute the parties
partners with each other or any third party.
10.11. Construction.
The term "Article" or "Section" can refer to any single paragraph level
found herein or any collection of multiple paragraphs thereunder.
10.12. Dispute Resolution.
The parties recognize that disputes as to certain matters may from time
to time arise during the term of this Agreement which relate to either
party's rights and/or obligations hereunder. It is the objective of the
parties to establish procedures to facilitate the resolution of disputes
arising under this Agreement in an expedient manner by mutual
cooperation and without resort to arbitration. The parties agree that
prior to any arbitration concerning this Agreement, a member of
Organon's senior management and Aurora's president will meet in person
or by video-conferencing in a good faith effort to resolve any disputes
concerning this Agreement. Within *** days of a formal request by either
party to the other, any party may, by written notice to the other, have
such dispute referred to their respective officers designated or their
successors, for attempted resolution by good faith negotiations, such
good faith negotiations to begin within *** days after such notice is
received. Any dispute arising out of or relating to this Agreement which
is not resolved between the parties or the designated officers of the
parties pursuant to Section 10.12 shall be resolved by final and binding
arbitration conducted in *** (unless the parties mutually agree to
another location) under the then
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current Licensing Agreement Arbitration Rules of the American
Arbitration Association ("AAA"). The arbitration shall be conducted by
three (3) arbitrators who are knowledgeable in the subject matter which
is at issue in the dispute. One arbitrator is selected by Organon and
one arbitrator is selected Aurora and the third arbitrator is appointed
by the AAA. In conducting the arbitration, the arbitrators shall
determine what discovery will be permitted, consistent with the goal of
limiting the cost and time which the parties must expend for discovery
(and provided that the arbitrators shall permit such discovery they deem
necessary to permit an equitable resolution of the dispute), ensure that
the total time of the arbitration from filing to a final decision or
executed settlement agreement is less than *** months, and be able to
decree any and all relief of an equitable nature, including but not
limited to such relief as a temporary restraining order, a preliminary
injunction, a permanent injunction, specific performance or repletion of
property. The arbitrators shall also be able to award actual or general
damages, but shall not award any other form of damage (e.g.,
consequential, punitive or exemplary damages). The parties shall share
equally the arbitrator's fees and expenses pending the resolution of the
arbitration unless the arbitrator, pursuant to its right but not its
obligations, requires the non-prevailing party to bear all or any
portion of the costs of the prevailing party. The decision of the
arbitrator shall be final and may be sued on or enforced by the party in
whose favor it runs in any court of competent jurisdiction at the option
of such party. Notwithstanding anything to the contrary in this Section
10.12, either party may seek immediate injunctive or other interim
relief from any court of competent jurisdiction with respect to any
breach of Articles 3 or 6 hereof, or otherwise to enforce and protect
the patent rights, copyrights, trademarks, or other intellectual
property rights owned or Controlled by such party. In addition,
arbitration shall not be used to resolve disputes about patent rights.
Patent right disputes including but not limited to disputes concerning
patent ownership, claim language, claim scope and issues of validity
shall be settled in a court of law. Any arbitration ruling that relies
on an interpretation of patent rights shall have no binding effect in a
court of law on any patent rights related to this Agreement, unless such
patent rights have been adjudicated in a court of law. In no event shall
a demand for arbitration be made after the date when the institution of
a legal or equitable proceeding based on such claim, dispute or other
matter in question would be barred by the applicable statute.
10.13. Counterparts.
This Agreement may be executed in two (2) or more counterparts, each of
which shall be deemed an original, but all of which together shall
constitute one and the same instrument. Counterparts may be signed and
delivered via facsimile, each of which shall be binding when sent, and
in each case an original shall be sent via overnight courier.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives.
N.V. Organon Aurora Biosciences Corporation
By: By:
------------------------------- -------------------------------
Name: C. ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, Ph.D. Name: ▇▇▇▇▇ ▇▇▇▇▇▇, Ph.D.
Title: Director, Research Title: Senior Vice President,
Commercial Development
Date: Date:
By:
-------------------------------
Name: ▇. ▇. ▇▇▇▇▇▇▇▇▇, Ph.D.
Title: Managing Director R&D
Date:
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LIST OF EXHIBITS
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EXHIBIT 1.2
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EXHIBIT 1.35
LIST OF ORGANON TARGETS
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EXHIBIT 1.48
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EXHIBIT 2
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38
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39
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EXHIBIT 2.4
PRICE LIST FOR AURORA REPORTERS
CONFIDENTIAL
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EXHIBIT 2.7
PURCHASE OF AN AURORA VIPR
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***
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