Exhibit 10.42
AMENDMENT NO. 1
TO
DISCOVERWORKSTM
DRUG DISCOVERY COLLABORATION AGREEMENT
DATED JULY 7, 2000
THIS AMENDMENT NO. 1 TO DISCOVERWORKSTM DRUG DISCOVERY COLLABORATION
AGREEMENT DATED JULY 7, 2000 (this "Amendment"), is made as of May 16, 2001 by
and between 3-Dimensional Pharmaceuticals, Inc., a Delaware corporation having
its principal place of business at Eagleview Corporate Center, ▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("3DP"), and ▇▇▇▇▇▇▇-▇▇▇▇▇ Squibb Company, a
Delaware corporation having its principal place of business at ▇▇▇▇▇ ▇▇▇ &
▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇.▇. ▇▇▇ ▇▇▇▇, Princeton, New Jersey 08543 ("BMS"). 3DP and
BMS may be referred to herein as a "Party" or, collectively, as the "Parties."
WHEREAS, 3DP and BMS are parties to that certain DiscoverWorksTM Drug Discovery
Collaboration Agreement dated as of July 7, 2000 (the "Agreement") pursuant to
which the parties are collaborating on the identification of Initial Hits,
Improved Hits, Program Lead Compounds and Pre-Clinical Lead Compounds (all as
defined in the Agreement) active against selected targets, and suitable, if
required, for medicinal chemistry optimization, that may be developed and
commercialized by BMS;.
WHEREAS, the Parties desire to amend the Agreement to include certain additional
libraries of compounds that have been and may be used in the screening being
conducted pursuant to the Research Program (as defined in the Agreement).
NOW, THEREFORE, in consideration of the various promises and undertakings
set forth in this Amendment, the Parties agree to amend the Agreement as
follows:
1. Section 1.5A. New Section 1.5A shall be added to read in its entirety as
follows:
"1.5A "BMS Compound Library" means the sample compound library or any
subset thereof, comprised of [**] as of the Effective Date, or
[**] at any time thereafter, and which comprises [**] compounds
and [**] products. While the individual [**] in the BMS Compound
Library are not [**], the collection itself, and the list of [**]
compounds included in the collection, are "Confidential
Information" of BMS."
2. Section 1.21. Section 1.21 shall be amended to read in its entirety as
follows:
"1.21 "Initial Hit" means a compound in the 3DP Probe Library, the BMS
Compound Library or the 3DP [**] Probe Library that [**], as
measured using ThermoFluor(R) Technology."
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**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
3. Section 1.41. Section 1.41 shall be amended by adding the phrase ", as it
exists from time to time," after "3DP's virtual compound library" and
before "from which 3DP Probe Libraries".
4. Section 1.47. Section 1.47 shall be amended by adding the phrase ", as it
exists from time to time," after "small molecule chemical compounds" and
before "that have been synthesized by 3DP".
5. Section 1.47A. New Section 1.47A shall be added to read in its entirety as
follows:
"1.47A "3DP [**] Probe Library" means the sample compound library or any
subset thereof, comprised of [**] as of the Effective Date, or
[**] at any time thereafter, and which have [**] against a known
target or class or targets, and may be useful to identify the
[**]. While the individual [**]in the 3DP [**] Probe Library are
not [**], the collection itself, and the list of [**] compounds
included in the collection, are "Confidential Information" of
3DP."
6. Section 2.2. Section 2.2 shall be amended to read in its entirety as
follows:
"2.2 Initial Screening and Initial Hits.
2.2.1 Depending on the nature and source of each Target,
3DP shall screen the Target against a screening
library, created from (i) the 3DP Probe Library,
totaling no more than [**] compounds per Target that
are selected by [**], to identify Initial Hits;
however, 3DP shall not be required to screen [**]
pursuant to Section 2.2.1(i) and (ii). The JSMC may
ask 3DP to screen [**] from the 3DP Probe Library or
the BMS Compound Library if [**].
2.2.2 Depending on the nature and source of each Target,
3DP shall screen the Target against a screening
library, created from the 3DP [**] Probe Library,
totaling no more than [**] compounds per Target that
are selected by [**], to identify Initial Hits or
[**]. The JSMC may ask 3DP to screen [**] from the
3DP Probe Library or the BMS Compound Library based
on the results from screening of the [**].
2.2.3 Any additional screening requested as provided in
Sections 2.2.1 or 2.2.2, if any, together with the
screening to be conducted pursuant to such Sections,
shall be subject to the overall disposition of
Research Program FTE resources as determined by the
JSMC, and 3DP's screening capacity available to the
Research Program."
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**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
7. Section 3.6. The first sentence of Section 3.6 shall be amended by adding
the phrase ", including without limitation any compounds from the 3DP
Probe Library, the 3DP [**] Probe Library or the BMS Compound Library"
after "certain biological materials or chemical compounds" and before
"(collectively, the "Substances")."
8. Section 4.2.11. Section 4.2.11 shall be added to read in its entirety as
follows:
"4.2.11 Reviewing results from the screening of the 3DP [**]
Probe Library in connection with selecting the additional
compounds from the 3DP Probe Library or the BMS Compound Library
to be screened by 3DP."
9. Section 6.1.1. Section 6.1.1 shall be amended to read in its entirety as
follows:
"6.1.1 3DP shall retain its ownership rights in the 3DP Probe
Library and the Synthetically Accessible Library and shall have
ownership rights as to BMS in any Focused Library developed by 3DP
pursuant to this Agreement. 3DP shall retain whatever rights, if
any it may have in the 3DP [**] Probe Library. BMS shall retain
its ownership rights of the [**] compounds contained in the BMS
Compound Library, and shall retain whatever rights, if any, it may
have to the [**] compounds contained in the BMS Compound Library."
10. Section 6.1.3. Section 6.1.3 shall be amended to read in its entirety as
follows:
"6.1.3 In the event that [**] based on [**] as part of the
Research Program where such [**], then BMS shall have [**], and
shall have [**] in such compounds; however, BMS shall not [**]
against the [**] pursuant to this Agreement."
11. Section 6.1.4. New Section 6.1.4 shall be added to read in its entirety
as follows:
"6.1.4 In the event that [**] based on [**] as part of the
Research Program where such [**], then BMS shall have [**],
including the [**]; however, BMS shall not [**] against the [**]
pursuant to this Agreement and from which such [**]."
12. Section 6.3. Section 6.3 shall be amended to read in its entirety as
follows:
"6.3 Ownership of Initial Hits.
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**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
6.3.1 3DP shall retain any proprietary rights, title and interest
in and appurtenant to the Initial Hits identified from the
[**] that it may have had; however, [**].
6.3.2 BMS shall retain any proprietary rights, title and interest
in and appurtenant to the Initial Hits identified from the
[**] that it may have had; however, [**].
6.3.3 In order for the activities in Section 2.3 to be
undertaken, the JSMC may review data produced in the course
of the Research Program associated with such Initial Hits."
13. Section 6.4. Section 6.4 shall be amended to read in its entirety as
follows:
"6.4 Ownership of Improved Hits.
6.4.1 3DP shall retain any proprietary rights, title and interest
in and appurtenant to Improved Hits developed from Initial
Hits identified from the [**] that it may have had;
provided, however, BMS shall have an exclusive, worldwide
license, as to 3DP, with the right to sublicense, to
develop, make, have made, use, and commercialize such
Improved Hits against the specified Target of such Improved
Hits. Such license, and any sublicenses thereunder, shall
terminate, and 3DP shall regain its original rights, when
BMS ceases developing or commercializing any such Improved
Hit, or any Program Lead Compound or Pre-Clinical Lead
Compound developed from such Improved Hit against the
specified Target.
6.4.2 BMS shall retain any proprietary rights, title and interest
in and appurtenant to Improved Hits developed from Initial
Hits identified from [**] that it may have had."
14. Section 6.5. Section 6.5 shall be amended to read in its entirety as
follows:
"6.5 Ownership of Program Lead Compounds and Pre-Clinical Lead
Compounds.
6.5.1 All right, title and interest in and appurtenant to each
Program Lead Compound and each Pre-Clinical Lead Compound
developed from Initial Hits identified from the [**] shall
be owned, as to 3DP, by BMS; provided, however, that if
such a Program Lead Compound or a Pre-Clinical Lead
Compound, as the case may be, is developed to its
respective status by 3DP, then 3DP shall have ownership
rights, as to BMS, to such Program Lead Compound or such
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**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
Pre-Clinical Lead Compound, and BMS shall have an
exclusive, worldwide license, as to 3DP, with right to
sublicense (subject to the provisions of Section 6.6), to
develop, make, have made, use, and commercialize such
Program Lead Compound or such Pre-Clinical Lead Compound.
6.5.2 All right, title and interest in and appurtenant to each
Program Lead Compound and each Pre-Clinical Lead Compound
developed from Initial Hits identified from the [**] shall
be owned, as to 3DP, by BMS."
15. Section 6.6. Section 6.6 shall be amended by adding the phrase "
identified from the [**]" after "Pre-Clinical Lead Compound" and before
", BMS agrees,".
16. Defined Terms. All terms used in this Amendment and not otherwise defined
in this Amendment shall have the meanings assigned to such terms in the
Agreement.
17. Effective Date of Amendment. This Amendment shall take retroactive effect
as of July 7, 2000.
18. Effect of Amendment. Except as amended in this Amendment, in all other
respects the Agreement shall remain in full force and effect and shall be
unaffected by this Amendment.
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**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.
IN WITNESS WHEREOF, each of the Parties has caused this Amendment to be
executed by its duly authorized representative as of the date first above
written, each copy of which shall for all purposes be deemed to be an original.
3-DIMENSIONAL PHARMACEUTICALS, INC.
By: /s/ ▇▇▇▇▇ ▇. U'▇▇▇▇▇▇▇▇
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▇▇▇▇▇ ▇. U'▇▇▇▇▇▇▇▇, Ph.D.
Chief Executive Officer
▇▇▇▇▇▇▇-▇▇▇▇▇ SQUIBB COMPANY
By: /s/ ▇▇▇▇▇ ▇▇▇▇▇
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Name: ▇▇▇▇▇ ▇▇▇▇▇
Title: V.P. Chemistry
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**Certain portions of this exhibit have been omitted based upon a request for
confidential treatment that has been filed with the Commission. The omitted
portions have been filed separately with the Commission.