Exhibit 10.17
*** TEXT OMITTED AND FILED SEPARATELY
CONFIDENTIAL TREATMENT REQUESTED
UNDER 17 C.F.R. SECTIONS 200.80(b)(4),
200.83 AND 230.406
COLLABORATIVE RESEARCH
AND LICENSE AGREEMENT
BETWEEN
SENOMYX, INC.
AND
KRAFT FOODS, INC.
1
COLLABORATIVE RESEARCH AND LICENSE AGREEMENT
This Agreement is entered into as of the Effective Date by and between Senomyx,
Inc., a Delaware Corporation having offices at ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇
▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("Senomyx") and Kraft Foods, Inc., a Delaware Corporation having
offices at ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("Kraft").
BACKGROUND
Senomyx conducts research in the field of chemosensation, an objective of which
is to study potential biological targets and develop assays for use in the
discovery and commercialization of products in taste and olfaction. Kraft is in
the business of developing, manufacturing and marketing consumer food products.
Senomyx and Kraft desire to collaborate in a research program to: (i) discover
compounds that [...***...] for use in [...***...]; and (ii) discover compounds
that [...***...] for use in [...***...].
NOW, THEREFORE, in consideration of the foregoing premises and of the covenants,
representations and agreements set forth below, the parties hereby agree as
follows:
THE AGREEMENT
1. DEFINITIONS. Certain terms set forth in this Agreement with initial
capitals are defined in Appendix A, which is incorporated herein by
reference.
2. STEERING COMMITTEE. No later than ten days after the Effective Date,
the parties will establish a joint steering committee (the "Steering
Committee"). The Steering Committee will manage the Collaborative
Program and will (i) provide strategic direction and performance
criteria for the Collaborative Program; (ii) monitor progress and
communicate status of the Collaborative Program; (iii) facilitate the
cooperation of the parties under the Collaborative Program; and (iv)
confirm completion of milestones under the Collaborative Program. The
Steering Committee will consist of two representatives designated by
Senomyx and two representatives designated by Kraft. Each member of the
Steering Committee will have one vote. The Steering Committee will meet
no later than thirty days after the Effective Date and at least four
times per year during the Collaborative Period using mutually agreed
upon meeting locations and formats including tele-conferencing and
video-conferencing. On an alternating basis, one party will promptly
prepare and deliver to the members of the Steering Committee minutes of
such meetings for review and approval of both parties. Decisions in the
Steering Committee will be made by
2 *CONFIDENTIAL TREATMENT REQUESTED
unanimous vote, at a meeting where all four voting representatives are
present. All unresolved disputes will be settled in accordance with
Section 18.4, or as otherwise mutually agreed upon in writing.
3. COLLABORATIVE PROGRAM. The parties will collaborate in the conduct of
the Collaborative Program in accordance with the Research Plan during
the Collaborative Period. The Collaborative Program will consist of two
phases: the [...***...] Phase and the [...***...] Phase, which may
overlap.
3.1 [...***...] PHASE.
(A) Within [...***...] of the Effective Date, Kraft will,
at its expense, supply Senomyx with [...***...]
Tastants for screening in accordance with the
Research Plan. During the [...***...] Phase, Kraft
may provide additional [...***...] Tastants for
profiling as agreed to In writing by the parties and
approved by the Steering Committee.
(B) Upon receipt of the [...***...] Tastants, Senomyx
will perform the activities outlined in the Research
Plan using reasonable efforts, and the resources
provided under Section 9.1.
(C) Within [...***...] of receipt of the report regarding
the [...***...] Compounds, Kraft will perform sensory
testing and other evaluations on a limited number of
the [...***...] Compounds and may select [...***...]
Compound(s) for further development by notifying
Senomyx of such selection in writing by the end of
such [...***...] period. Such [...***...] period may
be extended by agreement; such agreement will not be
unreasonably withheld. [...***...] Compounds, if any,
chosen for further development become Selected
[...***...] Compounds.
(D) Senomyx's obligations during the [...***...] Phase
will be completed upon the earlier of (i)
[...***...]; or (ii) upon [...***...]. If necessary,
Senomyx may provide additional optimization as agreed
to in writing by the parties and approved by the
Steering Committee.
3.2 [...***...] PHASE.
(A) Kraft may request that Senomyx pursue the
identification of [...***...] Compounds upon the
earlier of (i) [...***...]; or (ii) [...***...]
3 *CONFIDENTIAL TREATMENT REQUESTED
[...***...].
(B) Upon initiation of the [...***...] Phase, Kraft will,
at its expense, supply Senomyx with [...***...]
Tastants for screening. During the [...***...] Phase,
Kraft may provide additional [...***...] Tastants for
profiling as agreed to in writing by the parties and
approved by the Steering Committee.
(C) Upon receipt of the [...***...] Tastants, Senomyx
will perform the activities outlined in the Research
Plan using reasonable efforts, and the resources
provided under Section 9.1.
(D) Within [...***...] of receipt of the report regarding
the [...***...] Compounds, Kraft will perform sensory
testing and other evaluations on a limited number of
the [...***...] Compounds; and may select [...***...]
Compound(s) for further development by notifying
Senomyx of such selection in writing by the end of
such [...***...] period. Such [...***...] period may
be extended by agreement; such agreement will not be
unreasonably withheld. [...***...] Compounds, if any,
chosen for further development become Selected
[...***...] Compounds.
(E) Senomyx's obligations during the [...***...] Phase
will be completed upon the earlier of (i)
[...***...]; or (ii) upon [...***...]. If necessary,
Senomyx may provide additional optimization as agreed
to in writing by the parties and approved by the
Steering Committee.
3.3 PRODUCT DEVELOPMENT AND COMMERCIALIZATION.
(A) PRODUCT DEVELOPMENT. Within [...***...] of the
selection of a Selected Compound, Kraft will prepare
a plan for Product Development for approval by the
Steering Committee, which will be attached as
Appendix D to this Agreement, and incorporated into
the Agreement by reference. Kraft will perform the
Product Development outlined in Appendix D.
(B) PRODUCT COMMERCIALIZATION. Within [...***...] of the
completion of the Product Development plan , Kraft
will prepare a plan for Product Commercialization for
approval by the Steering Committee, which will be
attached as Appendix D to this Agreement, and
incorporated into the
4 *CONFIDENTIAL TREATMENT REQUESTED
Agreement by reference. Kraft will perform the Product
Commercialization outlined in Appendix F.
(C) Kraft will be responsible, [...***...] for all
formulation and regulatory approval of Products
arising out of this Agreement. [...***...] Senomyx
will cooperate to the extent reasonably necessary to
permit Kraft to perform the foregoing activities.
(D) If Kraft elects to abandon, discontinue, or forgo
development or commercialization of any Product or
fails after a reasonable time to initiate development
or commercialization of any Product in any country
pursuant to Appendix D, Kraft's licenses under
Section 10 of this Agreement to such Product will
terminate and the right to make, have made, use, sell
and have sold such Product in such particular country
will revert to Senomyx. Kraft will have no obligation
for the Product or country where Kraft's rights are
terminated under this Section 3.3.
4. PRINCIPAL SCIENTISTS. The principal scientists who will direct the
respective research and development responsibilities of each party will
be designated in writing by the Parties at the first meeting of the
Steering Committee.
5. COLLABORATION WITH AN AFFILIATE OR THIRD PARTY. During the Term,
Senomyx will have the right to enter into the Collaborative Program
with its Affiliates or with Third Parties including Collaborative
Programs to discover compounds that [...***...] for use outside the
applicable Field.
6. LAW AND REGULATION. The Compounds, Selected Compounds and Materials
provided by one party to the other under this Agreement must be used in
compliance with all applicable laws and regulations. Senomyx and Kraft
each certifies that it conducts tests IN VITRO or other tests that are
only used for laboratory research purposes and that all Materials and
chemicals that either party receives from the other under this
Agreement will actually be used for these purposes only.
7. SCIENTIFIC AND MANAGEMENT AUTHORITY. Scientific and management
authority and responsibility for activities conducted under the
Research Plan and Product Development and Commercialization will be
governed by the Steering Committee; provided, however, that after the
Collaborative Period, the parties will agree in writing to appoint a
new committee to manage the activities under this Agreement.
5 *CONFIDENTIAL TREATMENT REQUESTED
8. REPORTING. Each party will report to the other a written summary of
results of research and development work it carries out, if any, within
thirty days of the end of each calendar quarter. Each party agrees to
prepare and exchange written and electronic reports concerning any
results and data that must be used by either party as supporting
information for any regulatory filings. The exchange of such report may
be reasonably supplemented, at the request of the party receiving a
report, by correspondence and/or upon reasonable prior notice, visits
to the other party's facilities.
9. FINANCIAL TERMS.
9.1 ANNUAL RESEARCH SUPPORT. Each year during the Collaborative
Period Kraft will pay Senomyx $1,375,000 (which represents
the full time equivalent of [...***...] Senomyx scientists at
an annual rate of [...***...] per scientist based on a minimum
of [...***...] hours per year), such rate to be increased for
inflation using the Aon Consulting/▇▇▇▇▇▇▇ Division report for
industry compensation each year; provided, however, that if in
any calendar year the annual amount to be paid to Senomyx
exceeds [...***...], Kraft may elect, in its sole discretion,
to decrease the number of full time equivalents such that the
annual amount to be paid to Senomyx remains at [...***...].
These payments will be made in advance and, at a minimum, on
an equal quarterly basis. The first payment will be made
within [...***...] following the Effective Date. These
payments are inclusive of overhead, labor, and supplies. These
payments do not include (i) Kraft's costs associated with
providing [...***...] Tastants and [...***...] Tastants; (ii)
the costs of any unanticipated materials as requested and
agreed to by the parties; or (iii) the costs of high
throughput screening over 50,000 data points. Additional
funding, if any, will be proposed to the Steering Committee
and agreed to in writing by the parties.
9.2 MILESTONE PAYMENTS. Kraft will pay Senomyx the following
non-creditable, non-refundable milestone payments within
thirty days of notification of the following milestone events:
(A) [...***...] upon identification of the first relevant
Receptor for either a [...***...] Tastant or a
[...***...] Tastant;
(B) [...***...] upon submission of the first Compound
data package to Kraft;
(C) [...***...] upon the selection of each Selected
Compound by Kraft, which triggers exclusivity in the
applicable Field; and
(D) [...***...] upon the first sale of each Product
Category, as defined in Appendix C, such payment will
be creditable against any future earned royalties.
9.3 ROYALTY FOR [...***...] PRODUCTS. Kraft will pay to Senomyx
the following
6 *CONFIDENTIAL TREATMENT REQUESTED
earned royalties during the Royalty Term:
(A) With respect to Net Sales during [...***...]
following the date of the first commercial sale of a
[...***...] Product(s), Kraft will pay Senomyx a
royalty equal to [...***...] on that portion of total
annual Net Sales of [...***...] Product(s) that is
less than [...***...], adjusted during the Royalty
Term using the Consumer Price Index ("CPI"). The
royalty rate of [...***...] for the first year wiLL
apply to each Product Category, as described on
Appendix C;
(B) With respect to Net Sales after [...***...] of the
first commercial sale of a [...***...] Product(s),
Kraft will pay Senomyx a royalty equal to [...***...]
on that portion of total annual Net Sales of
[...***...] Product(s) that is less than [...***...],
adjusted during the Royalty Term using the CPI; and
(C) At any time, Kraft will pay Senomyx a royalty equal
to [...***...] on that portion of total annual Net
Sales of [...***...] Product(s) that is equal to or
greater than [...***...], adjusted during the Royalty
Term using the CPI.
(D) The royalty rate for New Products will be negotiated
at a future date and shall be separate and apart from
the other royalty rates established for the
[...***...] Products.
9.4 ROYALTY FOR [...***...] PRODUCTS. Kraft will pay to Senomyx
the following earned royalties during the Royalty Term:
(A) With respect to Net Sales during [...***...]
following the date of the first commercial sale of a
[...***...] Product, Kraft will pay Senomyx a royalty
equal to [...***...] on that portion of total annual
Net Sales of [...***...] Product(s) that is less than
[...***...], adjusted during the Royalty Term using
the Consumer Price Index ("CPI"). The royalty rate of
[...***...] for the first year will apply to each
Product Category, as described on Appendix C;
(B) With respect to Net Sales after [...***...] of the
first commercial sale of a [...***...] Product, Kraft
will pay Senomyx a royalty equal to [...***...] on
that portion of total annual Net Sales of [...***...]
Product(s) that is less than [...***...], adjusted
during the Royalty Term using the CPI; and
(C) At any time, Kraft will pay Senomyx a royalty equal
to [...***...] on that portion of total annual Net
Sales of [...***...] Product(s) that is equal to or
greater than [...***...], adjusted during the Royalty
Term using the CPI.
7 *CONFIDENTIAL TREATMENT REQUESTED
9.5 MANUFACTURING AND CAPITAL CREDITS. Kraft may in its sole
discretion, manufacture or enter into supply and manufacturing
agreements with a mutually agreed upon Third Party regarding
Selected Compounds; provided however, Senomyx will have the
first right of negotiation and refusal to manufacture any such
Selected Compounds, subject to provisions of cost, quality and
quantity. If Kraft or a Third Party manufactures a Product(s)
[...***...] of the capital cost specific to such manufacture,
incurred by Kraft, shall be creditable toward the royalties to
be paid for such Product(s) under Section 9.3 (b) or Section
9.4; provided, however, that under no circumstances shall the
effective royalty rate under Section 9.3 (b) be reduced below
[...***...] or the effective royalty rate under Section 9.4 be
reduced below [...***...].
9.6 PAYMENT METHOD. The royalties due under Section 9 will be paid
within thirty days after the end of each calendar quarter
period in which such royalties are earned during the Royalty
Term for each Product. With each such quarterly payment, Kraft
will furnish to Senomyx a royalty statement in sufficient
detail to permit confirmation of the accuracy of the royalty
payment made, which sets forth on a country-by-country basis
the relevant sales information, including the total number of
units of each such Product sold, Net Sales, the royalties
payable in United States dollars, the method used to calculate
the royalty, the exchange rate used and other information
employed to calculate Net Sales for such Product.
9.7 CURRENCY OF PAYMENT. All payments to be made under this
Agreement, including the royalties payable to Senomyx by
Kraft, will be paid in United States dollars by wire transfer
or other mutually acceptable means to a bank account
designated by Senomyx. With respect to each quarter, for
countries other than the United States, whenever conversion of
payments from any foreign currency are required, such
conversion will be made at the rate of exchange reported in
THE WALL STREET JOURNAL on the business day of the applicable
reporting period. Translation of sales recorded in local
currencies to United States dollars will be performed in a
manner consistent with Kraft's normal practices used to
prepare its audited financial statements for internal and
external reporting purposes, which uses a widely accepted
published exchange rate.
9.8 TAXES WITHHELD. Any income or other tax that Kraft, or any of
its Affiliates is required by a government agency to withhold
and pay on behalf of Senomyx with respect to the royalties
payable under this Agreement will be deducted from and offset
against such royalties prior to remittance to Senomyx;
provided, however, that in regard to any tax so deducted,
Kraft will
8 *CONFIDENTIAL TREATMENT REQUESTED
give or cause to be given to Senomyx such assistance as may
reasonably be necessary to enable Senomyx to claim exemption
from or credit for the tax so deducted, and in each case will
promptly furnish to Senomyx proper evidence of the taxes paid
on Senomyx's behalf.
9.9 LATE PAYMENT. In the event that any payment, including royalty
payments, due hereunder is not made when due, the payment will
accrue interest from that date due at the rate of one percent
per month; provided, however, that in no event will such rate
exceed the maximum legal annual interest rate. The payment of
such interest will not limit Senomyx from exercising any other
rights it may have as a consequence of the lateness of any
payment.
9.10 RECORDS OF NET SALES AND ROYALTY CALCULATIONS. During the
Royalty Term and for a period of three years thereafter, Kraft
will 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 United States
generally accepted accounting principles. Senomyx, with
reasonable written notice to Kraft, will have the right to
cause Senomyx'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 Net Sales and royalty
payments. Such accountant must execute a confidentiality
agreement prior to entering Kraft's premises, obligating such
accountant to keep all information disclosed to it
confidential and will only be permitted to disclose to Senomyx
the extent of any discrepancy between royalty payments made by
Kraft under this Agreement and the actual royalty required to
be so paid. Senomyx will bear the full cost of such audit
unless such audit discloses a variance of more than two
percent from the amount of the royalties due under this
Agreement, in which event, Kraft will bear the full cost of
such audit. In all events, Kraft will pay any underpayment
with interest in accordance with Section 9.9. Senomyx agrees
not to disclose Confidential Information concerning royalty
payments reports, and all other information learned in the
course of an audit or inspection, except to the extent
necessary for Senomyx to enforce its rights under this
Agreement or if disclosure is required by law.
10. GRANTS. Subject to the terms and conditions of this Agreement, Senomyx
hereby grants to Kraft the following rights:
10.1 GRANT OF RIGHTS REGARDING [...***...] COMPOUNDS AND
[...***...] PRODUCTS:
9 *CONFIDENTIAL TREATMENT REQUESTED
(A) Senomyx hereby grants to Kraft [...***...];
(B) Senomyx hereby grants to Kraft [...***...]; and
(C) Senomyx hereby grants to Kraft [...***...].
10.2 GRANT OF RIGHTS REGARDING [...***...] COMPOUNDS AND
[...***...] PRODUCTS:
(A) Senomyx hereby grants to Kraft [...***...];
(B) Senomyx hereby grants to Kraft [...***...]; and
(C) Senomyx hereby grants to Kraft [...***...].
10.3 RIGHT TO NEGOTIATE LICENSE FOR NEW PRODUCTS. At any time,
Kraft will have the right to negotiate [...***...] license
under the Senomyx's Patents and Know-How to make, have made,
use, sell, have sold, import and export New Products. The
parties will negotiate language in good faith for such license
including the royalties on such New Products.
10.4 LIMITATIONS TO LICENSES. Kraft may not sublicense its rights
under Section 10 to Third Parties, except for the purpose of
entering into collaborative development agreements between any
such Third Party and Kraft that provide the support, as is
appropriate at the time, for research, development or
commercialization of Product, and as agreed to by Senomyx in
writing. All rights granted by Senomyx to Kraft under Section
10 shall be subject to the timely payment by Kraft under
Section 9 of the Agreement.
10 *CONFIDENTIAL TREATMENT REQUESTED
10.5 GRANT OF RIGHTS FROM KRAFT TO SENOMYX. For the sole purpose of
conducting research under this Agreement, Kraft hereby grants
to Senomyx a fully paid, non-exclusive, worldwide,
fully-transferable license, to use the Kraft Technology
pursuant to the Research Plan, with the right to grant
sublicenses; provided, however, that any such sublicense shall
be subject to the prior written approval of Kraft, which shall
not be unreasonably withheld.
10.6 Notwithstanding the provisions contained within this
Agreement, Kraft may, at any time, negotiate a license for the
use of Selected [...***...] Compounds outside the Field.
However, the parties understand that any such license will be
subject to Third Party agreements entered into by Senomyx and
the final decision to enter into such license shall be made by
Senomyx, in its sole discretion.
11. OWNERSHIP OF INTELLECTUAL PROPERTY.
11.1 TRANSFER OF RIGHTS. Senomyx retains all rights not expressly
licensed or assigned in this Agreement. Except as otherwise
expressly provided in this Agreement, nothing in this
Agreement is intended to convey or transfer ownership or the
grant of any license or sublicense by one party to the other
party of any rights in any Confidential Information, Patent
Rights or Know-How Controlled by a party. Except as expressly
set forth in this Agreement, nothing in this Agreement will be
construed to grant manufacturing rights.
11.2 SENOMYX INVENTIONS. Senomyx will own all Inventions and other
Know-How made solely by its employees and agents and all
Patent Rights claiming such Inventions and other Know-How.
Senomyx hereby irrevocably assigns to Kraft all interest in
and to any such Inventions and other Know-How that consist of
improvements to Kraft Technology, subject to the licenses
granted to Senomyx under Section 10. The parties will look to
the definition of Kraft Technology in order to determine
whether any such Invention and Know-How is an improvement to
Kraft Technology. In the event that Senomyx is legally unable
to assign such rights to Kraft, then Senomyx agrees either to
waive the enforcement of such rights against Kraft and any
sublicensees and assignees, or to ▇▇▇▇▇ ▇▇▇▇▇ an exclusive,
irrevocable, perpetual, worldwide, fully-paid license, with
right to sublicense through multiple tiers of sublicense, to
such rights.
11.3 KRAFT INVENTIONS. Kraft will own all Inventions and other
Know-How made solely by its employees and agents, and all
Patent Rights claiming such Inventions and other Know-How.
Kraft hereby irrevocably assigns to Senomyx all interest in
and to any such Inventions and other Know-How that consist of
improvements to Senomyx Technology, Compounds, or Selected
Compounds, subject to the licenses granted to Kraft under
Section 10. The parties will look to the definition of Senomyx
Technology in order to determine whether any such Invention
and Know-How is an improvement to
11 *CONFIDENTIAL TREATMENT REQUESTED
Senomyx Technology. In the event that Kraft is legally unable
to assign such rights to Senomyx, then Kraft agrees either to
waive the enforcement of such rights against Senomyx and any
sublicensees and assignees, or to grant Senomyx an exclusive,
irrevocable, perpetual, worldwide, fully-paid license, with
right to sublicense through multiple tiers of sublicense, to
such rights.
11.4 JOINT INVENTIONS. All Inventions conceived jointly by
employees or agents of Senomyx and employees or agents of
Kraft (the "Joint Inventions") and all Joint Patent Rights
will be owned jointly by Kraft and Senomyx. Kraft hereby
irrevocably assigns to Senomyx all interest in and to any
Joint Inventions that consist of improvement to Senomyx
Technology, Compounds, or Selected Compounds and uses thereof,
and all Joint Patent Rights claiming such Joint Inventions,
subject to the licenses granted to Kraft under Section 10.
Senomyx hereby irrevocably assigns to Kraft all interest in
and to any such Inventions and other Know-How that consist of
improvements to Kraft Technology, subject to the licenses
granted to Senomyx under Section 10. In the event that Kraft
is legally unable to assign such rights to Senomyx, then Kraft
agrees either to waive the enforcement of such rights against
Senomyx and any sublicensees and assignees, or to grant
Senomyx an exclusive, irrevocable, perpetual, worldwide,
fully-paid license, with right to sublicense through multiple
tiers of sublicense, to such rights. In the event that Senomyx
is legally unable to assign such rights to Kraft, then Senomyx
agrees either to waive the enforcement of such rights against
Kraft and any sublicensees and assignees, or to ▇▇▇▇▇ ▇▇▇▇▇ an
exclusive, irrevocable, perpetual, worldwide, fully-paid
license, with right to sublicense through multiple tiers of
sublicense, to such rights.
11.5 OTHER INVENTIONS. Any Inventions not included in Sections
11.1, 11.2, 11.3, or 11.4 will be owned by their inventors.
11.6 INVENTORSHIP AND ASSIGNMENT. United States patent law will
determine inventorship of patentable inventions. Senomyx and
Kraft agree to execute all documentation necessary to perfect
all assignments of Inventions, Know-How and Patent Rights
contemplated in this Agreement.
11.7 MARKINGS. At least [...***...] prior to commercialization of
the first Product, Kraft will consider whether Kraft will ▇▇▇▇
any Product with a Senomyx trademark or Senomyx patent.
However, the parties understand that Kraft will make the final
decision in Kraft's sole discretion.
12. TREATMENT OF CONFIDENTIAL INFORMATION; PUBLICITY.
12.1 CONFIDENTIALITY. Subject to the terms and conditions of this
Agreement, Senomyx and Kraft each agree that, during the Term
and for a period of [...***...] 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
12 *CONFIDENTIAL TREATMENT REQUESTED
Affiliates by the other party. Neither Senomyx nor Kraft nor
any of their respective Affiliates will use the other party's
Confidential Information except as expressly permitted in this
Agreement.
12.2 DISCLOSURE TO RELATED PARTIES. Senomyx and Kraft each agree
that any disclosure of the other party's Confidential
Information to any officer, employee, contractor, consultant,
sublicensee or agent of the other party or to any of its
Affiliates will 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, will be limited
to the extent consistent with such responsibilities and
rights, and will be provided only to such persons or entities
who are under an obligation of confidentiality no less
stringent than as set forth in this Agreement. Each party will
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 will be the same efforts as it would customarily take to
preserve the confidentiality of its own Confidential
Information.
12.3 RETURN OF CONFIDENTIAL MATERIAL UPON TERMINATION. Upon
termination of this Agreement, each party, upon the other
party's request, will return or destroy all Confidential
Information received from the other party pursuant to this
Agreement, including all copies and extracts of documents,
within thirty days of the request of the other party;
provided, however, one copy of the Confidential Information
may be retained for legal purposes.
12.4 EXCEPTIONS TO CONFIDENTIAL INFORMATION. Confidential
Information will not include any information, which the
receiving party can prove by competent written evidence:
(A) is now, or hereafter becomes, through no act or
failure to act on the part of the receiving party,
generally known or available;
(B) is known by the receiving party at the time of
receiving such information, as evidenced by its
records;
(C) is hereafter furnished to the receiving party without
restriction as to disclosure or use by a Third Party
lawfully entitled to furnish such information;
(D) 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; or
(E) is the subject of a written permission to disclose
provided by the disclosing party.
13
A party may also disclose Confidential Information of the
other party where required to do so by law or legal process;
provided, however, that, in such event, the party required to
disclose such information must give advance written notice of
such disclosure to the other party and must 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.
12.5 CONFIDENTIAL FINANCIAL INFORMATION. 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 an obligation of
confidentiality to bona fide potential sublicensees. Either
party will have the further right to disclose the material
financial terms of this Agreement under an obligation of
confidentiality to any potential acquirer, merger partner,
bank, venture capital firm, or other financial institution to
obtain financing. Notwithstanding the foregoing, the parties
will mutually agree upon a press release consistent, in form
and content, with the draft press release attached as Appendix
E. Thereafter, Kraft and Senomyx may each disclose to Third
Parties the information contained in such press release
without the need for further approval by the other party.
12.6 CONFIDENTIAL RESEARCH INFORMATION. Each party agrees that all
results and data generated from the research under the
Collaborative Program will be owned exclusively by the
generating party and considered Confidential Information of
the generating party subject to the confidentiality
requirements of Section 12. Neither Kraft nor Senomyx will
provide to a Third Party any Materials provided by the other
party.
12.7 PERMITTED USE AND DISCLOSURES. Each party may use or disclose
Confidential Information disclosed to it by the other party to
the extent such information is included in the Kraft
Technology, Senomyx Technology or Joint Patent Rights, and to
the extent such use or disclosure is reasonably necessary and
permitted in the exercise of the rights granted hereunder in
filing or prosecuting patent applications, prosecuting or
defending litigation, complying with applicable governmental
regulations, or court orders or otherwise submitting
information to tax or other governmental authorities,
conducting clinical trials, [...***...], or making a permitted
sublicense or otherwise exercising rights expressly granted to
the other party pursuant to the terms of this Agreement;
provided, however, that if a party is required to make any
such disclosure of the other party's Confidential Information,
other than pursuant to a confidentiality agreement, it will
give reasonable advance notice of such disclosure to the other
party where reasonably possible and, save to the extent
inappropriate in the case of patent applications, will use its
reasonable efforts
14 *CONFIDENTIAL TREATMENT REQUESTED
to secure confidential treatment of such Confidential
Information in consultation with the other party prior to such
disclosure (whether through protective orders or otherwise)
and disclose only the minimum necessary to comply with such
requirements.
12.8 USE OF DATA FOR PROMOTIONAL PURPOSES. Either party may (i)
make public statements regarding Compounds, Selected Compounds
or Products, following consultation with the other party and
with the written consent of the other party to the form and
content of the public statement. Such public statement shall
be consistent with the press release attached as Appendix E.
12.9 PUBLICATION OF RESULTS. Subject to this Section 12, results
and data obtained by either party in the course of the
collaboration may be submitted for publication by Senomyx in
accordance with Senomyx's customary practices. Senomyx will
send a copy of the proposed publication to Kraft and will
allow Kraft thirty days 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 Kraft Confidential Information. If no
answer is received from Kraft within thirty days of receipt of
the proposed publication, Senomyx will be free to submit such
proposed publication.
12.10 PUBLICITY. Except as required by law and as provided in this
Section 12, 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 will
not be unreasonably withheld.
13. INTELLECTUAL PROPERTY ENFORCEMENT AND DEFENSE OF CLAIMS.
13.1 INTELLECTUAL PROPERTY ENFORCEMENT. Subject to the Third Party
obligations of Senomyx, each party will have the right, but
not the obligation, to bring proceedings against any Third
Party for the inappropriate use, including patent
infringement, of Patent Rights solely Controlled by it, at its
own risk and expense. If either party brings such an action,
such party will 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 will give the requesting party all reasonable
assistance required to file and conduct any such proceeding.
13.2 DEFENSE OF INFRINGEMENT CLAIMS FOR SENOMYX TECHNOLOGY. Kraft
will cooperate with Senomyx, at Senomyx's expense, in the
defense of any suit, action or proceeding against Kraft or
Senomyx or Senomyx's Affiliates alleging the infringement of
the intellectual property rights of a Third Party by reason of
Kraft's or Senomyx's use of any Senomyx Technology licensed to
Kraft under this Agreement. The parties must notify each other
promptly in
15
13.3 writing of the commencement of any such suit, action,
proceeding or claim of infringement. At the expense of
Senomyx, Kraft will give to Senomyx full and sole authority,
information and assistance necessary to defend, hire counsel,
make decisions or settle on any terms any such suit, action or
proceeding and Kraft will execute 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.
13.4 DEFENSE OF INFRINGEMENT CLAIMS FOR KRAFT TECHNOLOGY. Senomyx
will cooperate with Kraft, at Kraft's expense, in the defense
of any suit, action or proceeding against Senomyx or Kraft or
Kraft's affiliates alleging the infringement of the
intellectual property rights of a Third Party by reason of
Kraft's or Senomyx's use of any Kraft Technology licensed to
Senomyx under this Agreement. The parties must notify each
other promptly in writing of the commencement of any such
suit, action, proceeding or claim of infringement. At the
expense of Kraft, Senomyx will give to Kraft full and sole
authority, information and assistance necessary to defend,
hire counsel, make decisions or settle on any terms any such
suit, action or proceeding and Senomyx will execute 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.
14. PATENT PROSECUTION AND MAINTENANCE. The control and expense of the
filing, prosecution (including an opposition or interference) and
maintenance of Patent Rights or other intellectual property rights
claiming Inventions made solely by a party will be the sole
responsibility of the party that made such Invention, and the party not
filing the patent application will cooperate in such filing,
prosecution and maintenance. Senomyx and Kraft will determine by mutual
agreement which party will be responsible for, and will cooperate in,
the filing, prosecution and maintenance of Joint Patent Rights and will
share equally in the expenses incurred with respect thereto.
15. TERM AND TERMINATION.
15.1 TERM. The term of this Agreement will begin on the Effective
Date and will continue through [...***...], unless terminated
earlier in accordance with the provisions of Section 15.2,
15.3 or 15.4 hereof (the "Term").
15.2 TERMINATION BY KRAFT. Kraft will have the right to
terminate this Agreement without cause at any time upon
[...***...] written notice, provided, however, if such
termination occurs prior to the end of the Collaborative
Period Kraft must provide [...***...].
16 *CONFIDENTIAL TREATMENT REQUESTED
15.3 TERMINATION BY MUTUAL AGREEMENT. The parties may terminate
this Agreement at any time, in whole or in part, by mutual
written agreement executed by both parties.
15.4 TERMINATION FOR BREACH. Either party has the right to
terminate this Agreement at any time for a material breach of
this Agreement by the other party, provided that the breaching
party has not cured such breach within [...***...] after
written notice thereof by the non-breaching 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. NEITHER PARTY WILL SEEK PUNITIVE OR
CONSEQUENTIAL DAMAGES.
16. EFFECT OF TERMINATION.
16.1 Upon termination of this Agreement pursuant to Section 15,
Kraft will have no right to practice within or use of the
Senomyx Technology, and all rights, title and interest in and
to the Senomyx Technology will revert to and become the sole
property of Senomyx, unless otherwise agreed upon in writing
by the parties on or before the effective date of such
termination.
16.2 Expiration or termination of this Agreement will not relieve
the parties of any obligation accruing prior to such
expiration or termination.
16.2 SURVIVAL. The obligations and rights of the parties under
Sections 9.10, 11.2 through 11.7, 12, 16, 17.2(B), 17.3,
17.4(B), 17.5, 18, and Appendix A, will survive termination or
expiration of this Agreement.
17. WARRANTIES AND INDEMNIFICATION.
17.1 MUTUAL REPRESENTATIONS AND WARRANTIES. The parties make the
following representations and warranties to each other:
(A) CORPORATE POWER. Each party hereby represents and
warrants that as of the Effective Date such party (i)
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;
(ii) 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 (iii) is in compliance with
all requirements of applicable law, except to the
extent that any noncompliance would not have a
material adverse effect on its ability to perform its
obligations under this Agreement.
17 *CONFIDENTIAL TREATMENT REQUESTED
(B) DUE AUTHORIZATION. Each party hereby represents and
warrants that as of the Effective Date such party (i)
has the requisite power and authority and the legal
right to enter into this Agreement and to perform its
obligations hereunder; and (ii) has taken all
necessary action on its part to authorize the
execution and delivery of this Agreement and to
authorize the performance of its obligations
hereunder and the grant of rights extended by it
hereunder.
(C) BINDING AGREEMENT. Each party hereby represents and
warrants to the other that as of the Effective Date
(i) 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; (ii) 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 (iii) 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.
17.2 WARRANTIES REGARDING SENOMYX TECHNOLOGY. Senomyx warrants to
Kraft as of the Effective Date the following:
(A) To the best knowledge of Senomyx as of the Effective
Date: (i) Senomyx has the lawful right to use the
Senomyx Technology for the purpose of discovering
Compounds to be licensed to Kraft in accordance with
the terms of this Agreement; and (ii) no Third Party
suit exists relating to the Senomyx Patent Rights.
(B) EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT,
SENOMYX (INCLUDING ITS OFFICERS, EMPLOYEES AND
AGENTS) EXPRESSLY DISCLAIMS ANY REPRESENTATIONS AND
WARRANTIES, WHETHER EXPRESS OR IMPLIED, RELATING TO
SENOMYX TECHNOLOGY. SENOMYX FURTHER DISCLAIMS ANY
EXPRESS OR IMPLIED WARRANTY (i) OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE OF SENOMYX
TECHNOLOGY OR SENOMYX PATENT RIGHTS; (ii) THAT THE
PRACTICE OF SENOMYX TECHNOLOGY WILL NOT INFRINGE A
PATENT, COPYRIGHT, TRADEMARK OR OTHER RIGHT OF A
THIRD PARTY; AND (iii) REGARDING THE PATENTABILITY OF
ANY SENOMYX TECHNOLOGY, INCLUDING SENOMYX TECHNOLOGY
CLAIMED IN PATENT APPLICATIONS AS PART OF SENOMYX
PATENT RIGHTS.
18
17.3 SENOMYX INDEMNIFICATION. Senomyx hereby agrees to defend and
indemnify Kraft, and its respective officers, directors,
employees, and agents (collectively, the "Kraft Indemnitees")
from and against all damages or other amounts payable to a
Third Party, including reasonable attorneys' fees and costs of
litigation, resulting from a claim, demand, action, suit or
other proceeding brought or threatened by a Third Party
against a Kraft Indemnitee based on Senomyx's gross negligence
or willful misconduct (but not patent infringement) relating
to Senomyx's performance or failure to perform under this
Agreement. IN NO EVENT WILL SENOMYX BE LIABLE FOR ANY
INCIDENTAL OR CONSEQUENTIAL DAMAGES SUFFERED BY KRAFT
RESULTING FROM THIS AGREEMENT.
17.4 WARRANTIES RELATING TO KRAFT TECHNOLOGY. Kraft represents and
warrants to Senomyx as of the Effective Date the following:
(A) To the best knowledge of Kraft: (i) Kraft has the
lawful right to license (or sublicense, as the case
may be) the Kraft Technology to Senomyx in accordance
with the terms of this Agreement; and (ii) no Third
Party suits against Kraft exist relating to the Kraft
Patent Rights.
(B) EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT,
KRAFT (INCLUDING ITS OFFICERS, EMPLOYEES AND AGENTS)
EXPRESSLY DISCLAIMS ANY REPRESENTATIONS AND
WARRANTIES OF ANY KIND, WHETHER EXPRESS OR IMPLIED,
RELATING TO KRAFT TECHNOLOGY. KRAFT FURTHER DISCLAIMS
ANY EXPRESS OR IMPLIED WARRANTY (i) OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE
OF KRAFT TECHNOLOGY, (ii) THAT THE PRACTICE OF KRAFT
TECHNOLOGY WILL NOT INFRINGE A PATENT, COPYRIGHT,
TRADEMARK, OR OTHER RIGHT OF A THIRD PARTY, AND (iii)
REGARDING THE PATENTABILITY OF ANY KRAFT TECHNOLOGY,
INCLUDING KRAFT TECHNOLOGY CLAIMED IN PATENT
APPLICATIONS AS PART OF KRAFT PATENT RIGHTS.
17.5 KRAFT INDEMNIFICATION.
(A) OF SENOMYX. Kraft hereby agrees to indemnify, defend
and hold Senomyx, and its respective officers,
directors, employees and agents (collectively, the
"Senomyx Indemnitees") harmless from and against all
damages, losses, liabilities, expenses and costs or
other amounts payable to a Third Party, including
reasonable attorneys' fees and costs of litigation,
resulting from a claim, demand, action, suit or other
proceeding brought or threatened by a Third Party
against a Senomyx Indemnitee based on (i) any
development, manufacture, use, handling, storage,
sale, or other disposition of a Selected Compound or
Product by or through Kraft or its Affiliates or its
permitted sublicensees (ii) the practice by Kraft of
19
any license granted hereunder, or (iii) infringement
by Kraft of Patent Rights of any Third Party; except
to the extent such damages or other amounts payable
are attributable to: (a) a violation of any
contractual or fiduciary duty owed by any Senomyx
Indemnitee to a Third Party, (b) any breach of this
Agreement by a Senomyx Indemnitee or a
misrepresentation by Senomyx in this Agreement, or
(c) trade secret misappropriation or patent
infringement by Senomyx covered by a Third Party's
Patent Rights. IN NO EVENT WILL KRAFT BE LIABLE FOR
ANY INCIDENTAL OR CONSEQUENTIAL DAMAGES SUFFERED BY
SENOMYX RESULTING FROM THE EXERCISE OF ANY RIGHTS
GRANTED IN ACCORDANCE WITH THIS AGREEMENT.
(B) OF CERTAIN SENOMYX LICENSORS. Kraft hereby agrees to
indemnify, defend and hold [...***...] 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 from Senomyx to Kraft
provided for under Section 10 and pursuant to any
agreement between [...***...] and Senomyx, including
product liability.
18. MISCELLANEOUS.
18.1 FORCE MAJEURE. Neither party will 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 (other than
a payment default) if the failure is occasioned by war, fire,
explosion, flood, (e.g. El Nino), earthquake, strike, lockout,
embargo, act of God, or any other similar cause beyond the
control of the defaulting party; provided, however, 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.
18.2 GOVERNING LAW AND JURISDICTION. This Agreement will be
governed by the laws of the State of California, as such laws
are applied to contracts entered into and to be performed
entirely within such state.
18.3 BINDING EFFECT. This Agreement will 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
will be void.
18.4 DISPUTE RESOLUTION. The parties recognize that disputes as to
certain matters may from time to time arise during the Term,
which relate to either party's rights and/or obligations
hereunder. It is the objective of the parties to
20 *CONFIDENTIAL TREATMENT REQUESTED
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,
Senomyx's head of R&D and Kraft's head of R&D will meet in
person or by video-conferencing in a good faith effort to
resolve any disputes concerning this Agreement. Within thirty
days of a formal request by either party to the other party,
either party may, by written notice to the other party, 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
thirty 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 this Section 18.4 will be resolved by final and
binding arbitration conducted in San Diego, California (unless
the parties mutually agree to another location) in accordance
with Sections 1282 through 1288 of the California Code of
Civil Procedure. The arbitration will be conducted by three
arbitrators who are knowledgeable in the subject matter at
issue in the dispute. One arbitrator will be selected by
Senomyx, and one arbitrator will be selected by Kraft. The
third arbitrator will be selected by mutual agreement of the
two arbitrators selected by the parties. In conducting the
arbitration, the arbitrators will (i) 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 will permit such discovery they
deem necessary to permit an equitable resolution of the
dispute), (ii) ensure that the total time of the arbitration
from filing to a final decision or executed settlement
agreement is less than six months, and (iii) 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 will
also be able to award actual or general damages, but will not
award any other form of damage (e.g., consequential, punitive
or exemplary damages). The parties will share equally the
arbitrator's fees and expenses pending the resolution of the
arbitration, unless the arbitrators, pursuant to their its
right but not their obligations, requires the non-prevailing
party to bear all or any portion of the costs of the
prevailing party. The decision of the arbitrators will be
final and binding on the parties 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 18.4,
either party may seek immediate injunctive or other interim
relief from any court of competent jurisdiction with respect
to any breach of Sections 10 or 12 hereof, or otherwise to
enforce and protect the Patent Rights, copyrights, trademarks,
or other intellectual property rights Controlled by such
party. In addition, arbitration will not be used to resolve
disputes concerning Patent Rights. Disputes concerning Patent
Rights, including, but not limited to, disputes concerning
patent ownership, claim language, claim scope and issues of
validity will be settled in a court of law. Any arbitration
ruling that relies on
21
an interpretation of Patent Rights will 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 will 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
of limitations.
18.5 SEVERABILITY. If any term, covenant or condition of this
Agreement or the application thereof to any party or
circumstance is, to any extent, 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, will not be affected thereby and each term,
covenant or condition of this Agreement will be valid and
enforced to the fullest extent permitted by law; the parties
covenant and agree to renegotiate any such term, covenant or
condition or the 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.
18.6 INDEPENDENT CONTRACTORS. It is expressly agreed that Kraft and
Senomyx will be independent contractors and that the
relationship between the parties will not constitute a
partnership or agency of any kind. Neither Kraft nor Senomyx
will have the authority to make any statements,
representations or commitments of any kind, or to take any
action, which will be binding on the other party, without the
prior written authorization of the other party to do so.
18.7 ENTIRE AGREEMENT; AMENDMENT. This Agreement sets forth all of
the covenants, promises, agreements, warranties,
representations, conditions and understandings between the
parties, and supersedes and terminates all prior agreements
and understandings 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 in this Agreement. No subsequent
alteration, amendment, change or addition to this Agreement
will be binding upon the parties unless reduced to writing and
signed by the respective authorized officers of the parties.
This Agreement will not be strictly construed against either
party. Any conflict between the terms set forth in the text of
this Agreement and the terms of any Appendix hereto will be
resolved in favor of the text of this Agreement.
18.8 WAIVER. Except as specifically provided for in this Agreement,
the waiver from time to time by either of the parties of any
rights or the failure to exercise any remedy will not operate
or be construed as a continuing waiver
22
of the same right or remedy or any of the other of such
party's rights or remedies provided in this Agreement.
18.9 CONSTRUCTION. The term "Article" or "Section" can refer to any
single paragraph level found in this Agreement or any
collection of multiple paragraphs thereunder.
18.10 NO THIRD PARTY BENEFICIARIES. No Third Party, including any
employee of any party to this Agreement (except as
specifically provided in this Agreement), will have or acquire
any rights by reason of this Agreement. Nothing contained in
this Agreement will be deemed to constitute the parties
partners with each other or any Third Party.
18.11 NOTICES. Any notices or communications provided for in this
Agreement to be made by either party to the other party must
be in writing, in English, and will be made by prepaid air
mail or overnight carrier with return receipt addressed to the
other party at its address set forth below. Any such notice or
communication may also be given by hand, or facsimile to the
appropriate designation. Notices will be sent:
If to Senomyx, to: Senomyx, Inc.
▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Facsimile number: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: Corporate Counsel with a
copy to the President
If to KRAFT, to: KRAFT Foods
▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Facsimile number: ▇▇▇-▇▇▇-▇▇▇▇
Attention: Patent Counsel with a
copy to VP of Research
By like notice, either party may specify or change an address
to which notices and communications must be thereafter sent.
Notices sent by mail, facsimile or overnight carrier will be
effective upon receipt and notices given by hand will be
effective when delivered.
18.12 ASSIGNMENT. Notwithstanding any provision of this Agreement to
the contrary, neither party may assign any of its rights or
obligations under this Agreement in any country to any Third
Party without the prior written consent of the non-assigning
party, which consent will not be unreasonably withheld;
provided, however, that either party may assign its rights and
obligations under this Agreement without the consent of the
other party (i) in connection with the transfer or sale of all
or substantially all of its assets, or (ii) to any
23
Affiliate. In the event of such transaction, however,
intellectual property rights (including Know-How) of a party
to such transaction other than one of the parties to this
Agreement will not be included in the technology licensed
under this Agreement. Notwithstanding the foregoing, any such
assignment to an Affiliate will not relieve the assigning
party of its responsibilities for performance of its
obligations under this agreement. This Agreement will survive
any merger or consolidation of either party with or into
another party and no consent for any such merger,
consolidation or similar reorganization will be required
hereunder.
18.13 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which will be deemed an original, but
all of which together will constitute one and the same
instrument.
IN WITNESS WHEREOF, the parties, through their authorized officers, have
executed this Agreement as of the Effective Date.
KRAFT FOODS, INC.
By: [...***...]
-------------------------------------
Title: Senior V.P. R&D Quality
-------------------------------------
Date: December 6, 2000
-------------------------------------
SENOMYX, INC.
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
-------------------------------------
Title: President & CEO
-------------------------------------
Date: December 6, 2000
-------------------------------------
24 *CONFIDENTIAL TREATMENT REQUESTED
COLLABORATIVE RESEARCH AGREEMENT
APPENDIX A - DEFINITIONS
"Affiliate" means any corporation, company, partnership, joint venture,
association or other entity, which directly or indirectly controls, is
controlled by or is under common control with a party. As used in this
definition, the term "control" means direct or indirect beneficial ownership of
more than fifty percent (or such lesser percentage which is the maximum allowed
to be owned by a foreign corporation in a particular jurisdiction) of the
outstanding securities having voting rights for the election of directors in a
corporation or of the comparable equity interest in any other type of entity.
"Agreement" means this agreement, together with all appendices attached hereto,
as it may be amended or supplemented from time to time hereafter by a written
agreement executed by authorized representatives of both parties.
"[...***...] Compound(s)" means [...***...], discovered in the course of the
Collaborative Program that [...***...] that may be optimized and further tested
[...***...] by Senomyx and for which Senomyx will prepare a written report of
data to be reviewed by Kraft.
"[...***...] Phase" means that part of the Collaborative Program wherein Senomyx
will pursue the identification of [...***...] Compounds.
"[...***...] Product(s)" means product(s) in Field II that incorporate Selected
[...***...] Compound(s).
"[...***...] Tastant(s)" means [...***...] and that are provided by Kraft to
Senomyx under this Agreement.
"Collaborative Period" means the period beginning on the Effective Date and
ending three years thereafter, unless terminated earlier in accordance with
Section 3 or 15. The Collaborative Period will terminate after three years
regardless of whether the Compound Research has been completed.
"Collaborative Program" means a research program during the Collaborative Period
to discover [...***...] in Fields to be conducted pursuant to the Research Plan.
"Compound(s)" means [...***...] Compound(s) and/or [...***...] Compound(s).
"Confidential Information" means all information, Inventions and Know-How
disclosed by one party to the other party pursuant to this Agreement, including,
without limitation, information and material (whether or not patentable)
regarding technology, products,
25 *CONFIDENTIAL TREATMENT REQUESTED
research, development, manufacturing, marketing, finances, personnel or other
business information or objectives which is designated as confidential in
writing by the disclosing party, whether by letter or by the use of an
appropriate stamp or legend, prior to or at the time any such material, trade
secret or other information is disclosed by the disclosing party to the other
party. Notwithstanding the foregoing to the contrary, Inventions, Know-How or
other information which is orally, electronically or visually disclosed by a
party, or is disclosed in writing without an appropriate letter, stamp or
legend, will constitute Confidential Information of a party if the disclosing
party, within thirty days after such disclosure, delivers to the other party a
written document or documents describing the Inventions, Know-How or other
information and referencing the place and date of such oral, visual, electronic
or written disclosure and the names of the persons to whom such disclosure was
made.
"Control" or "Controlled" means, with respect to intellectual property,
possession by a party, as of the Effective Date or during the Collaborative
Period, of the ability to grant a license or sublicense in accordance with the
terms of this Agreement, without violating the terms of any agreement by such
party with any Third Party that is in effect on the Effective Date.
"Effective Date" means the date that this Agreement is signed by the last party
to sign below.
"Field I" means [...***...].
"Field II" means [...***...].
"Fields" means collectively Field I and Field II.
"Invention" means any invention, including any new and useful process, method,
or composition of matter, or improvement thereto, whether or not patentable,
made in the course of the Collaborative Program.
"Joint Invention" has the meaning set forth in Section 11.4.
"Joint Patent Rights" means all Patent Rights containing one or more claims to a
Joint Invention.
"Know-How" means information and data, whether or not patentable, which is not
generally known to the public, including, without limitation, designs, concepts,
formulae, software, techniques, practices, processes, methods, knowledge, skill,
experience, expertise, technical information, Materials and data, including
pharmacological, toxicological and clinical test data, analytical and quality
control data, patent and legal data or marketing, sales and manufacturing data.
26 *CONFIDENTIAL TREATMENT REQUESTED
"Kraft Know-How" means, to the extent necessary for purposes of the activities
to be conducted under this Agreement, all Know-How Controlled by Kraft,
including, but not limited to, formulations in which Selected Compounds are
used, [...***...] and methods of incorporating and/or processing Selected
Compounds into Products.
"Kraft Patent Rights" means, to the extent necessary for purposes of the
activities to be conducted under this Agreement, all Patent Rights Controlled by
Kraft, including, without limitation, any Patent Rights containing one or more
claims to an Invention made solely by employees or agents of Kraft, but
excluding any Joint Patent Rights.
"Kraft Technology" means Kraft Patent Rights and Kraft Know-How.
"Materials" means [...***...], including without limitation, Compounds and
Selected Compounds.
"Net Sales" means, with respect to a Product, the gross amount invoiced by Kraft
and its Affiliates and/or permitted sublicensees on any sales or other transfer
of the Product, less the following items:
i) trade, quantity and cash discounts or rebates actually allowed
with respect to such sales;
ii) credits, rebates, charge-back rebates, reimbursements or
similar payments actually granted or given to wholesalers and
other distributors, buying groups, governmental agencies and
other institutions, but only to the extent actually allowed;
iii) credits or allowances actually granted for rejection or return
of Products previously sold; and
iv) any tax, tariff, duty or other governmental charge (other than
an income tax) levied on the sale, transportation or delivery
of a Product that is borne by the seller thereof and deducted
from sales under United States generally accepted accounting
principles.
Net Sales will be determined from the books and records of Kraft, its Affiliates
and/or its permitted sublicensees, maintained in accordance with United States
generally accepted accounting principles.
"New Product(s)" means any products outside those listed on Appendix C that
incorporate Selected [...***...] Compounds in Field I.
"Patent Rights" means all rights associated with all U.S. or foreign (including
regional authorities such as the European Patent Office) regular or provisional
patents or patent
27 *CONFIDENTIAL TREATMENT REQUESTED
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.
"Product(s)" means [...***...] Product(s) and/or [...***...] Product(s).
"Product Category(ies)" means each category of [...***...] Products listed on
Appendix C.
"Product Development and Commercialization" means the program for development of
a Product conducted during the term of this Agreement as provided under Section
3.5.
"Receptor" or "Receptors" means [...***...].
"Research Plan" means the plan outlining the research to be performed during the
Collaborative Program agreed to by the Steering Committee at the first meeting
thereof within thirty days of the Effective Date.
"Royalty Term" means, in the case of any Product and as to any country, the
period of time commencing on [...***...] and ending upon the date that is
[...***...] in such country.
"Selected [...***...] Compound(s)" means those [...***...] Compound(s) selected
by Kraft for development, which are subject to certain payment and diligence
provisions.
"Selected Compound(s)" means Selected [...***...] Compound(s) and/or Selected
[...***...] Compound(s).
"Selected [...***...] Compound(s)" means those [...***...] Compound(s) selected
by Kraft for development, which are subject to certain payment and diligence
provisions.
"Senomyx Know-How" means all Know-How related to the Collaborative Program,
which is not covered by the Senomyx Patent Rights, but is necessary or
appropriate for purposes of the activities to be conducted under this
Agreement, and which is Controlled by Senomyx as of the Effective Date or
developed by Senomyx in the course of the Collaborative Program.
"Senomyx Patent Rights" mean all Patent Rights that are necessary or
appropriate for purposes of the activities to be conducted under this
Agreement, and which are Controlled by Senomyx as of the Effective Date or
developed by Senomyx in the course of the Collaborative Program, but
excluding any Joint Patent Rights.
"Senomyx Technology " means the Senomyx Patent Rights, and Senomyx Know-How.
28 *CONFIDENTIAL TREATMENT REQUESTED
"[...***...] Compounds" means [...***...], discovered in the course of the
Collaborative Program that [...***...] and for which Senomyx will prepare a
written report of data to be reviewed by Kraft.
"[...***...] Phase" means that part of the Collaborative Program wherein Senomyx
will pursue the identification of [...***...] Compounds.
"[...***...] Product(s)" means any product(s) listed on Appendix C that
incorporate Selected [...***...] Compound(s).
"[...***...] Tastants" means [...***...] provided by Kraft to Senomyx under this
Agreement.
"Steering Committee" has the meaning set forth in Section 2.
"Term" has the meaning set forth in Section 15.1.
"Third Party(ies)" means any party other than a party to this Agreement or an
Affiliate of Senomyx or Kraft.
29 *CONFIDENTIAL TREATMENT REQUESTED
COLLABORATIVE RESEARCH AGREEMENT
APPENDIX C - PRODUCT CATEGORIES
- [...***...]
30 *CONFIDENTIAL TREATMENT REQUESTED