1
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "▇▇▇▇"). This Exhibit has been filed separately with the
Secretary of the Commission without the ▇▇▇▇ pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
EXHIBIT 10.22
COLLABORATIVE RESEARCH
AND LICENSE AGREEMENT
between
▇▇▇▇▇▇▇-▇▇▇▇▇ SQUIBB PHARMACEUTICAL RESEARCH INSTITUTE
and
AURORA BIOSCIENCES CORPORATION
2
TABLE OF CONTENTS
1.0 DEFINITIONS 1
2.0 COLLABORATIVE RESEARCH AND TECHNOLOGY TRANSFER 8
2.1 UHTSS Development 9
3.0 EXCLUSIVE AND NONEXCLUSIVE SCREENING PROGRAMS 27
3.1 Exclusive Screening Program 27
3.2 Nonexclusive Screening Payments 33
3.3 Ownership of Data 35
3.4 Development of Products 35
3.5 Laboratory Facilities and Personnel 36
3.6 Payments to Third Parties by Aurora. 36
4.0 SERVICE AND SUPPORT 37
4.1 Service and Support 37
5.0 INTELLECTUAL PROPERTY RIGHTS 37
5.1 License Rights. 37
5.2 Ownership Rights. 39
5.3 Sublicensing. 40
5.4 Software. 40
6.0 PAYMENTS OF ROYALTIES, ACCOUNTING FOR ROYALTIES, RECORDS 41
6.1 Payment Term. 41
6.2 Payment Dates. 41
6.3 Accounting. 41
6.4 Records. 41
6.5 Withholding Required by Law. 41
7.0 INFRINGEMENT BY THIRD PARTIES 42
7.1 Actual or Threatened Infringement of BMS Materials
and Products. 42
7.2 Actual or Threatened Infringement of Aurora Patent
Rights 42
8.0 DEFENSE OF INFRINGEMENT CLAIMS 43
8.1 Defense of Infringement Claims Pertaining to Lead
Compounds, Approved PLP Compounds, and Products. 43
8.2 Defense of Infringement Claims Pertaining to Patent
Rights Owned or Controlled by Aurora 44
9.0 TREATMENT OF CONFIDENTIAL INFORMATION; PUBLICITY, AND
CHANGE OF CONTROL 44
9.1 Confidentiality 44
9.2 Publication of Results. 46
9.3 Publicity. 46
3
9.4 Change in Control 46
10.0 PROVISIONS CONCERNING THE FILING, PROSECUTION AND
MAINTENANCE OF PATENT RIGHTS; COPYRIGHTS 47
10.1 Sole Inventions 47
10.2 Joint Inventions 48
10.3 Exclusive Screens 48
10.4 Copyrights 49
11.0 REPRESENTATIONS, WARRANTIES AND COVENANTS 49
11.1 Mutual Representations and Warranties. 49
11.2 Aurora Technology Representations and Warranties. 50
11.3 Aurora Indemnification. 52
11.4 BMS Product Indemnification. 53
11.5 Enforcement of Aurora-Third Party Contracts 54
12.0 TERM AND TERMINATION 54
12.1 Term. 54
12.2 Termination By Mutual Agreement. 54
12.3 Termination for Cause. 54
12.4 Effect of Bankruptcy. 56
12.5 Effect of Expiration or Termination. 56
13.0 DISPUTE RESOLUTION 57
13.1 Disputes. 57
13.2 Dispute Resolution Procedures. 57
14.0 MISCELLANEOUS 58
14.1 Assignment. 58
14.2 Binding Effect. 59
14.3 Force Majeure. 59
14.4 Notices. 59
14.5 Governing Law. 60
14.6 Waiver. 60
14.7 Severability. 60
14.8 Independent Contractors. 60
14.9 Counterparts. 60
14.10 Entire Agreement. 60
14.11 No Third Party Beneficiaries. 61
14.12 Construction. 61
4
COLLABORATIVE RESEARCH AND LICENSE AGREEMENT
THIS AGREEMENT is entered into as of the Effective Date (as defined
below) by and between ▇▇▇▇▇▇▇-▇▇▇▇▇ SQUIBB PHARMACEUTICAL RESEARCH INSTITUTE, a
division of ▇.▇. ▇▇▇▇▇▇ & Sons, Inc., a Delaware corporation, having offices at
Route 206 at Province Line Road, P.O. Box 4000, Princeton, New Jersey
08543-4000 ("BMS"), and between AURORA BIOSCIENCES CORPORATION, a Delaware
corporation having offices at ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Aurora").
RECITALS
WHEREAS, Aurora has expertise in the development of automated
ultra-high throughput screening systems and screening biologies/chemistries
used therein; and
WHEREAS, Aurora has the scientific expertise and capacity to undertake
the alliance activities described below; and
WHEREAS, BMS has the capability to undertake screening and development
of drug products for the prevention, treatment and diagnosis of 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:
1.0 DEFINITIONS
As used herein, the following terms shall have the following meanings:
"Acceptance" has the meaning set forth in section 2.1.3.
"Activity" means, with ***
"Affiliate" means, with respect to any Person, any other Person which
directly or indirectly controls, is controlled by, or is under common control
with, such Person. A Person shall be regarded as in control of another Person
if it/he/she owns, or directly or indirectly controls, more than fifty percent
(50%) of the voting securities (or comparable equity interests) or other
ownership interests of the other Person, or if it/he/she directly or indirectly
possesses the power to direct or cause the direction of the management or
policies of the other Person, whether through the ownership of voting
securities, by contract or any other means whatsoever.
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"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.
"Analog" of a compound shall mean any other compound created by or for
BMS in which ***
"Aurora Copyrights" means all copyright rights ***
"Aurora Patent Rights" means the Aurora Reporter System Patent Rights
and the Aurora UHTSS Patent Rights.
"Aurora Reporter System Technology" means all Technology ***
"Aurora Reporter System Patent Rights" means all Patent Rights which
are owned by or come under the Control of Aurora or its Affiliates during the
term of this Agreement which relate to the Reporter System or to the full
exercise of the rights and benefits accorded BMS under this Agreement
pertaining to the Reporter System.
"Aurora Technology" means the Aurora Reporter System Technology and
the Aurora UHTSS Technology.
"Aurora UHTSS Patent Rights" means all Patent Rights ***
"Aurora UHTSS Technology" means all Technology under the Control of
Aurora or any of its Affiliates during the term of this Agreement which relates
to the UHTSS or to the full exercise of the rights and benefits accorded BMS
under this Agreement pertaining to the UHTSS.
"BMS Materials Library" means the ***
"BMS Test Materials" means samples selected by BMS from its Materials
Library.
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"Confidential Information" means all information, compounds, data, and
materials received by either party from the other party pursuant to this
Agreement and all information, compounds, data, and materials developed in the
course of the Collaboration, including, without limitation, Know-How and
Technology of each party, subject to the exceptions set forth in Article 9.1.
"Contract Term" means the period beginning on the Effective Date and
ending on the date on which this Agreement terminates.
"Control" means possession by a party or its Affiliates of the ability
to grant a license or sublicense or to provide Materials or Technology in
accordance with the terms of this Agreement, and without violating the terms of
any agreement by such party with any Third Party.
"Covered Product" means a Product approved for marketing in a country
for the diagnosis, treatment or prevention of human disease indications, other
than a Product:
***
"Deliverables" has the meaning set forth in section 2.1.2.1 hereof.
"Development Phases" has the meaning set forth in section 2.1.2.1
hereof.
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"Drug Development Program" means that program conducted by BMS at its
cost and in the exercise of its sole and absolute discretion pertaining to the
pre-clinical and clinical development, regulatory filings, and
commercialization of a Lead Compound.
"Effective Date" means the date that this Agreement is executed by the
last party to so execute.
"Exclusive Screening Program" or "ESP" and "Exclusive Screen" shall
have the meanings set forth in section 3.1.
"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, and its counterpart(s) in
other countries of the world.
"Field" means the use of a compound, Material, or Product by BMS ***
"First Commercial Sale" of a Covered Product shall mean the first
commercial sale for use or consumption of such Covered Product in a country
after required marketing and, if applicable, pricing approval has been granted
by the applicable regulatory authority(ies) of such country.
"Hit" means any BMS Test Material:
***
"IND" means an Investigational New Drug application filed with the
United States Food and Drug Administration ("FDA") or its equivalent, and any
corresponding application filed in any country other than the United States.
"Invention" means any new and useful process, machine, manufacture, or
composition of matter, or improvement thereto, whether or not patentable.
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8
"Know-How" means all information and data which is not generally known
to the public, including without limitation, information or data either
pertaining to or comprising: materials and chemicals, Inventions, designs,
concepts, algorithms, formulae, software in any stage of development, supplies,
techniques, practices, machinery and equipment, reagents, processes, methods,
knowledge, know-how, skill, experience and expertise, data (including
preclinical, clinical, technical, analytical, and quality control data),
technical information, patent application data or descriptions, and marketing,
sales and manufacturing data.
"Lead Compound" means a Hit approved by BMS for development in a Lead
Compound Development Program or an Analog of such Lead Compound.
"Lead Compound Development Program" means that program, conducted by
or through BMS for the further characterization and pre-clinical development of
a Lead Compound ***
"Manufacturing Cost" shall mean ***
"Materials" shall mean any material having a biological or chemical
activity, including, but not limited to, reagents, probes, structural genes,
genetic sequences, promoters, enhancers, probes, linkage probes, vectors,
plasmids, transformed cell lines, transgenic animals, proteins and fragments
thereof, peptides, biological modifiers, antigens, antibodies, cell lines,
antagonists, agonists, inhibitors, chemicals, compounds, and other biologically
or chemically active materials or substances.
"NDA" means a New Drug Application or Product License Application, as
appropriate, and all supplements filed pursuant to the requirements of the FDA,
including all documents, data and other information concerning Covered Products
which are necessary for full FDA approval to market a Covered Product, or the
equivalent in any other country.
"Net Sales" of a Covered Product shall mean ***
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9
***
"Nonexclusive Screening Program", "NSP", and "Nonexclusive Screen"
have the meanings set forth in section 3.2 hereof.
*** CONFIDENTIAL TREATMENT REQUESTED
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"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 which a party hereto owns or Controls, individually or jointly,
any title thereto or rights thereunder.
"Person" shall mean an individual, corporation, partnership, limited
liability company, trust, business trust, association, joint stock company,
joint venture, pool, syndicate, sole proprietorship, unincorporated
organization, governmental authority, or any other form of entity not
specifically listed herein.
"PLP" means ***
"Product" means any final form or dosage of any drug product that
incorporates a Lead Compound and that will be sold or used within the Field.
"Reporter System" mean a ***
"Royalty Term" means, in the case of any Covered Product ***
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***
"Software" has the meaning set forth in Exhibit 4.1.
"Specifications" of the UHTSS shall have the meaning set forth in
section 2.1 hereof.
"Technology" means and includes all inventions, equipment, supplies,
materials (including Materials), software in any stage of development,
technology, Know-How, and trade secrets.
"Territory" means all countries of the world.
"Third Party" means any entity other than (i) Aurora and any of its
Affiliates, and (ii) BMS and any of its Affiliates.
"Third Party Contractee" and "Aurora-Third Party Contracts" have the
meanings set forth in section 11.2.6.
"*** License" means Exclusive License Agreement for *** between Aurora
*** *** (as the same may be amended or supplemented hereafter).
"UHTSS" means the *** .
"UHTSS Target Delivery Date" has the meaning set forth in section
2.1.2.1 hereof.
"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 in accordance with or as permitted by the terms of this Agreement or
by mutual written agreement; 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), and/or (viii) abandoned in accordance with or as permitted
by the terms of this Agreement or by mutual written consent.
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2.0 COLLABORATIVE RESEARCH AND TECHNOLOGY TRANSFER
Aurora and BMS shall collaborate on the development of the UHTSS and
the transfer of the Aurora Technology to BMS, as follows:
2.1 UHTSS Development. Aurora will develop the UHTSS in
collaboration with BMS and in accordance with the terms of this Agreement
(including the work plan and Specifications set forth in Exhibit 1.1 attached
hereto and the development phases set forth below). Aurora will be
responsible for the design, development, manufacture, supply, delivery and
installation of the UHTSS, and will use its best efforts to complete same
within the time frames for each Development Phase set forth below. The
Specifications for the Deliverables to be provided by Aurora, as customized for
BMS, are set forth in Exhibit 1.1 hereto, and may be changed or supplemented
hereafter by mutual written agreement. The parties agree to diligently review
such Specifications from time to time in order to ensure that the
Specifications for the UHTSS will meet the reasonable needs of commercial users
and the specific customizations required by BMS.
2.1.1 Project Management. Each party will designate an employee who
will serve as the principal contact point for such party in order to
ensure due coordination of the effort in the development,
installation, training, and use of the UHTSS. The parties will meet
and confer as needed, but in any event not less frequently than
quarterly, at a location to be chosen by each party alternately to
discuss the development of the UHTSS and resolution of any ongoing
issues. Aurora shall also submit progress reports at such time(s) as
BMS may reasonably request, but in any event will provide a quarterly
written update of its work on the development of the UHTSS (including
discussion of any significant problems encountered and significant
changes in strategy or design). If requested by BMS, such
progress/update reports will detail work performed to date and
estimated time to complete a Development Phase. The parties will
also consult with each other as needed to evaluate and recommend
scientific criteria to be implemented within the UHTSS and the
Exclusive Screening Program.
From time to time during the term of this Agreement, BMS
representatives shall have the right, upon reasonable advance notice
to Aurora and its contractors, to visit the facilities where the UHTSS
development is being performed in order to verify the stage of
completion of the work performed under a schedule and audit compliance
with the terms of this Agreement.
Individuals assigned by Aurora to perform work hereunder at BMS'
premises shall observe the business hours, policies, security rules
and holiday schedule of BMS while working on its premises. Adherence
to BMS' business hours and holiday schedules shall not constitute
justification for the failure to deliver conforming Deliverables
within the applicable time frames.
2.1.2 Development Phases; Priority; Delivery.
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2.1.2.1 Development Phases. Aurora will design and develop
the UHTSS in accordance with the following development phases
("Development Phases"), as more fully described in Exhibit 1.1
hereto. Aurora will develop and install the deliverables
("Deliverables") contemplated by each such Development Phase
(all such Deliverables for a Development Phase comprising a
"Module") not later than the dates set forth below (each such
date referred to as a "UHTSS Target Delivery Date"):
i) ***
ii) ***
iii) ***
It is understood and agreed that BMS' input on the
design and use of such Modules is an essential element of this
collaboration, and the parties will cooperate to ensure that
such input is solicited and provided on a timely basis. The
parties will cooperate in integrating such Modules and the
Deliverables developed under each Development Phase into the
then current BMS high throughput screening environment until
such time as the UHTSS is fully completed and installed at
BMS, and Aurora will provide BMS with assistance and support
in the use and maintenance of such Modules and Deliverables in
such environment without additional charge (other than the
payments otherwise due under this Agreement).
Aurora will further provide onsite transfer of the Aurora
UHTSS Technology to BMS personnel during the installation and
Acceptance Testing of each Module to be delivered hereunder to
assure BMS' ability to fully operate and maintain the UHTSS
and such Modules. In addition, within a reasonable time
after the Effective Date, Aurora will schedule training
classes, including course materials, for BMS personnel with
respect to the use of the Aurora UHTSS Technology. The number
of such individuals as shall be jointly determined by BMS and
Aurora, but shall be a number sufficient to allow for BMS to
effect rapid scale-up in its use of the Aurora UHTSS
Technology. If more individuals need to be trained than can
be reasonably accommodated in the first training session, the
parties will jointly schedule additional sessions as
reasonably necessary. Each party will bear its own costs in
connection with such training sessions.
All such Modules and other Deliverables to be sold by Aurora
and purchased by BMS hereunder shall be subject to the terms
and conditions of this Agreement, and the parties hereby agree
that the terms and conditions of this Agreement shall
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supersede and control any conflicting terms in any purchase
order, acknowledgment, invoice, shipping document, or other
preprinted form issued by either party relating to the
purchase and sale of the Modules and any other Deliverables
hereunder.
2.1.2.2 Priority. In allocating its internal resources,
Aurora agrees that BMS will be entitled to priority status
over any Third Party with regard to the development,
manufacture, delivery and installation of the UHTSS.
2.1.2.3 Shipment, Delivery and Installation. Aurora shall be
responsible at its expense for appropriately packaging and
transporting all Deliverables to BMS, all of which shall be
delivered F.O.B. the BMS facility designated by BMS at time of
shipment. All risk of damage or loss to any Deliverable for
whatever reason shall rest with Aurora until such item is
safely set upon the loading dock at BMS's installation site,
at which time it shall pass to BMS. Aurora will give BMS not
less than *** days' written notice of any proposed shipment.
Aurora will be responsible for installing all Deliverables,
unless otherwise mutually agreed to in writing. Aurora will
begin such installation within *** working days of delivery and
will use all reasonable efforts to complete same as promptly as
possible thereafter. *** BMS may also elect that the
Deliverables to be provided under the Development Phase for any
Module (and any additional Module ordered by BMS pursuant to
section 2.1.3.2) shall be held by Aurora until such time as BMS
is prepared to receive the applicable Module (in which event
the Acceptance testing for such Module(s) will be conducted at
Aurora in accordance with section 2.1.3.1 hereof and BMS will
pay for the Module(s) that are Accepted by it); ***. The
parties do not expect that any delay in delivery requested by
BMS for the Deliverables relating to a Module should delay
delivery of any Deliverables to be provided for any future
Module to be provided in a subsequent Development Phase;
provided, however, that where Aurora can demonstrate that any
such delay in such delivery requested by BMS will adversely
affect Aurora's ability to meet any such future time line(s)
set forth in sections 2.1.2.1 and 2.1.5.6 hereof, the pertinent
time line(s) shall be extended by the period of delay
demonstrated by Aurora as is reasonably occasioned by BMS'
request to delay delivery.
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*** Once all such approvals and permits are received, BMS'
right to delay delivery as provided above shall cease, and any
Modules previously Accepted by BMS that are then being held by
Aurora shall be shipped to BMS.
2.1.3 Acceptance Testing.
2.1.3.1 All Deliverables shall be subject to acceptance
testing by BMS to verify whether such Deliverables meet in all
material respects the Specifications for such Deliverables in
Exhibit 1.1 hereto, as the same may be amended or supplemented
in writing by the parties from time to time hereafter. Aurora
representatives shall have the right to be present at any such
acceptance testing conducted by BMS. BMS will consult with
Aurora regarding the acceptance testing, although the nature
and number of the actual tests to be conducted shall be
determined by BMS. If, *** , (i) Aurora is unable to install
at BMS all of the Deliverables required by a Development Phase
(or is unable to install same at Aurora, where BMS has elected
to test the Deliverables relating to a Module at Aurora as
opposed to conducting such tests following installation at BMS)
and (ii) such Deliverables, if installed, do not meet in all
material respects the Specifications for such Deliverables,
then BMS shall be entitled at any time thereafter to withdraw
from further development of the UHTSS at any time thereafter
without liability or penalty therefor (other than any payments
required by section 2.1.8), and such withdrawal shall be deemed
to be one made for good cause by BMS.
Acceptance testing shall commence by BMS, using such
acceptance tests as BMS considers necessary, to determine
whether the corrected Deliverables meet in all material
respects the Specifications for such Deliverables, as soon as
practicable following installation by Aurora of all
Deliverables to be provided by Aurora for a Module in a
Development Phase (and delivery of written certification by
Aurora to BMS that such Deliverables are ready for testing),
and shall continue for such period of time as may be
reasonably required by BMS for it to determine whether all
such Deliverables meet in all material respects the
Specifications for such Deliverables; provided, however, that
the acceptance testing following installation of all
Deliverables to be provided for a given Module shall not
exceed *** ***; and provided, further, that BMS may elect, on
written notice setting forth the specific and reasonable basis
for same, to extend the acceptance testing required for the
Deliverables for Module Two and/or Module Three by up to an
additional *** ***, in which event the time periods in section
2.1.5.6 shall be
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extended by the same amount of additional time requested by
BMS for such acceptance testing.
If any Deliverable does not conform in all material respects
to Specifications for such Deliverables, BMS shall so inform
Aurora in writing promptly and cooperate with Aurora in
identifying in what respects the Deliverable(s) have failed to
conform to the Specifications. Aurora will use its best
efforts to promptly correct any deficiencies which prevent
such Deliverable(s) from so conforming to the Specifications.
Upon completion of the corrective action and installation by
Aurora of the revised Deliverable(s), BMS will again conduct
such acceptance tests as BMS considers necessary to determine
whether the corrected Deliverables has successfully conformed
in all material respects to the Specifications for such
Deliverables, and BMS shall be entitled to use the same amount
of time to test such corrected Deliverable as it was entitled
to use with respect to the previous nonconforming
Deliverables.
When BMS has determined that all Deliverables for a Module
have successfully conformed to or satisfied the Specifications
in all material respects (and regardless of whether such
acceptance testing is conducted at BMS or at Aurora), BMS
shall give Aurora written notice thereof ("Acceptance"), in
which event BMS shall become obligated to pay such amounts as
may be triggered under this Agreement as a result thereof.
Upon receipt of payment by BMS, Aurora shall issue a ▇▇▇▇ of
sale to BMS, the terms of which shall be consistent with the
terms of this Agreement (including without limitation Article
5 hereof), confirming transfer of title to BMS of the Module
and any other Deliverables so purchased by BMS.
2.1.3.2 Upon payment by BMS for the first Module Two to be
installed hereunder, Aurora shall be obligated to sell and
supply to BMS, and BMS will be deemed to have firm ordered, an
identical Module Two to the first one so purchased and accepted
by BMS. Aurora agrees to manufacture and install such second
Module Two at BMS ***. BMS shall have *** to accept or reject
such Module Two, using the same Specifications and Acceptance
procedures as applied to its testing of the initial Module Two
(except that the acceptance tests must be completed within ***,
and that BMS shall have only *** to run such tests again if
such Module Two fails to meet the Specifications therefor
during the initial acceptance testing). Upon Acceptance by BMS
of such second Module Two, BMS shall pay to Aurora *** as the
purchase price therefor within *** days thereafter; provided,
however, that if Aurora shall have failed to install a Second
Module Two that meets the Specifications therefor by not later
than *** following payment by BMS of such initial Module Two
(without regard to any event or circumstance otherwise
entitling Aurora to delay performance under section 14.3), then
BMS shall be entitled to cancel its purchase order for such
second Module Two at any time thereafter prior to installation
of such second Module Two at BMS and BMS shall not be obligated
to purchase and take delivery of such second Module Two and
shall not be liable or responsible for the purchase price
therefor or for any costs incurred to manufacture same. ***
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The second Module Two shall be shipped F.O.B. the BMS facility
designated by BMS. Upon receipt of payment by BMS, Aurora
shall issue a ▇▇▇▇ of sale to BMS, the terms of which shall be
consistent with the terms of this Agreement (including without
limitation Article 5 hereof), confirming transfer of title to
BMS of the Second Module Two so purchased by BMS.
2.1.4 Force Majeure Deadline Limitation. Notwithstanding section
14.3, in no event shall any time frame, due date, or deadline arising
under this Agreement with respect to the development, manufacture,
delivery, installation or acceptance of any Module, Deliverable,
Reporter System component, or Exclusive Screen be extended by Aurora,
by reason of an event or circumstance entitling Aurora otherwise to
extend same under section 14.3, beyond the date that is *** following
the applicable time frame, due date, or deadline.
2.1.5 Payments Relating to Development of the UHTSS. BMS will make
the following payments to Aurora in consideration of the development,
completion, purchase, and installation of the UHTSS:
2.1.5.1 A payment of *** shall be made *** in consideration
of the design and development of the UHTSS by Aurora hereunder.
2.1.5.2 A payment of *** shall be made ***
2.1.5.3 A payment of *** shall be made ***
2.1.5.4 A payment of *** shall be made ***
2.1.5.5 In consideration of the design, development,
manufacture, installation and support of the UHTSS, payments of
*** *** shall be made, the first payment to be made ***
occurring after the Effective Date and *** which payments
shall *** provided, however, that:
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2.1.5.5.1 If BMS shall have *** under the
preceding sentence and a fully operational and
complete UHTSS has not then been installed and
accepted by BMS, Aurora shall continue to develop an
acceptable UHTSS unless and until BMS withdraws from
further development upon written notice to Aurora as
herein provided, and no further payments shall be due
or payable by BMS under this Agreement *** in respect
of such development, supply, and installation of an
acceptable UHTSS and its use by BMS in accordance with
this Agreement.
2.1.5.5.2 If BMS shall have accepted a fully
operational, complete UHTSS ***, BMS shall pay to
Aurora ***.
2.1.5.5.3 If BMS shall have withdrawn from
development of the UHTSS pursuant to section *** or
*** hereof, any payments to be made thereafter
pursuant to *** shall be governed by the terms of
sections ***.
2.1.5.6 In addition to any payments to be made under sections
2.1.5.1-2.1.5.5, the following payments shall be made ***:
2.1.5.6.1 *** BMS will pay *** to Aurora ***.
2.1.5.6.2 ***, BMS will pay *** to Aurora ***.
2.1.5.6.3 ***.
2.1.5.6.4 The time periods set forth in
sections 2.1.5.6.1-2.1.5.6.3 shall not be extended by
reason of any event of force majeure referred to in
section 14.3.
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2.1.6 Liquidated Damages for Late Delivery UHTSS. If acceptance is
delayed more than *** following the Effective Date, then as liquidated
damages to BMS for such delay and not in penalty therefore (the parties
agreeing that it shall be impracticable, if not impossible, in such
case to accurately or fairly determine the amount of any damages due
to such delay), Aurora will pay to BMS *** following the date that is
*** after the Effective Date until acceptance occurs (if at all);
provided, that such payments shall not in any case exceed ***. Any
payments due under this Section 2.1.6 shall be made monthly by Aurora
to BMS at its address first set forth above.
2.1.7 Withdrawal by BMS From UHTSS Development Without Cause. BMS
may elect at any time prior to Acceptance to cease further
participation in the development of the UHTSS for any reason without
good cause ("good cause" being defined in section 2.1.8), effective
upon written notice of same to Aurora. In such event:
2.1.7.1 Aurora shall be free to continue further development
of the UHTSS at its discretion and expense, and to change the
design or specifications therefor as Aurora shall determine.
2.1.7.2 ***, BMS shall pay to Aurora the sum of *** and
shall not be required to make any further payments under ***;
otherwise, BMS shall pay to Aurora *** so that BMS will have
***.
2.1.7.3 BMS shall pay to Aurora an amount equal to *** of the
milestone payment that would next have been made under section
***. Except for such payment (and any payments not
previously made that were then due and owing under any of ***
as of the date of BMS' withdrawal), no further payments under
any of sections *** shall be due or made.
2.1.7.4 *** provided, however, that
2.1.7.4.1 BMS may, for *** following such
withdrawal, continue to make and use any one or more
Nonexclusive
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Screen(s) and to use any Aurora Patent Rights and
Copyright rights necessary therefor and any Reporters
provided by Aurora in connection therewith, so long as
BMS gives written notice to Aurora, *** following any
such withdrawal as to the Nonexclusive Screen(s) so
elected for such continued use by BMS and pays Aurora
*** for each such Nonexclusive Screen so elected. No
withdrawal under this section 2.1.7.4 shall affect or
relieve BMS of *** or, to the extent elected by BMS
herein, following such withdrawal; and
2.1.7.4.2 BMS shall be entitled to use
thereafter in internal research (including screening
and drug development) those Accepted components of the
UHTSS as to which BMS has made the payments required
under *** hereof and to exercise a nonexclusive,
irrevocable, and fully paid-up right and license under
any Aurora UHTSS Patent Rights and Aurora UHTSS
Copyrights existing as of the date of such BMS
withdrawal that are needed in connection therewith,
for so long as BMS may conduct such internal research;
and such withdrawal; and
2.1.7.4.3 No such withdrawal shall affect BMS'
right to continue to make and use thereafter in
internal research (including screening and drug
development) any Exclusive Screen as was developed
prior to the date of such withdrawal or which the
parties may develop thereafter based on any agreement
to develop same that was agreed upon prior to the date
of such withdrawal or otherwise (and to continue to
use any Aurora Patent Rights and Copyrights covering
the manufacture and use of such Exclusive Screen(s)
that are needed for such purpose), for so long as BMS
may conduct such internal research; provided, that any
*** payments that BMS would otherwise be obligated to
make *** shall not be affected thereby and shall
continue to be made by BMS; and provided, further,
that no such withdrawal shall affect either party's
obligations and rights under (including without
limitation Aurora's obligation to develop and supply
and BMS' right to use thereafter any Exclusive Screen
developed under) any ESP Work Plan entered into prior
to the date of such withdrawal; and
2.1.7.4.4 No such withdrawal shall limit or
restrict BMS and its Affiliates in any way from
continuing to research, develop, manufacture, use and
sell Hits identified prior to such withdrawal or
which are identified thereafter in accordance with
the rights retained by BMS under this section 2.1.7.4
(and any Lead Compounds, Approved PLP Compounds, and
Products derived from such Hits), and to use any
Aurora
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Patent Rights and Copyrights as may be needed to
make, use and sell same, provided that BMS shall
remain obligated to pay Aurora ***
2.1.7.4.5 In the event such withdrawal occurs
after BMS has ordered, but not yet accepted, the
second Module Two under paragraph 2.1.3.2 hereof,
then the parties shall continue to fulfill their
obligations under such paragraph without regard to
such withdrawal. If accepted, BMS shall be entitled
to use thereafter in internal research (including
screening and drug development) such second Module
Two so long as BMS shall have made the payment *** of
and to exercise a nonexclusive, irrevocable, and
fully paid-up right and license under any Aurora
UHTSS Patent Rights and Aurora UHTSS Copyrights
existing as of the date of delivery of such second
Module Two that are needed in connection therewith,
for so long as BMS may conduct such internal
research.
2.1.7.5 Nothing in this section 2.1.7 is intended to prevent
or restrict, or shall be construed as preventing or
restricting, BMS and its Affiliates from using in any internal
research (including drug development): (i) any Reporters
supplied to BMS by Aurora prior to such withdrawal, or (ii)
any Aurora Technology disclosed to it by Aurora prior to such
withdrawal to the extent that the manufacture, use or sale of
such Aurora Technology is not covered by a Valid Claim under
the Aurora Patent Rights or the Aurora Copyrights; provided,
however, that notwithstanding the foregoing, BMS may not use
in its internal research thereafter any tangible embodiments
of Aurora's Confidential Information pertaining to the Aurora
Reporter System Technology. It is further understood that
nothing in this section 2.1.7 alters any confidentiality
obligations of the parties under this Agreement with respect
to disclosures to Third Parties.
2.1.8 Withdrawal by BMS From UHTSS Development With Cause. In the
event that BMS elects prior to Acceptance to cease further
participation in the development of the UHTSS for good cause (as
defined below), it shall give written notice of same to Aurora. In
such event:
2.1.8.1 Aurora shall be free to continue further development
of the UHTSS and to change the design or specifications
therefor as Aurora shall determine.
2.1.8.2 BMS shall have no obligation to make any remaining
payments (other than payments already due and owing as of the
date of BMS' withdrawal) under *** .
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2.1.8.3 No further payments under any of sections *** -
*** shall be due or made, other than any payments not
previously made that were then due and owing under such
section(s) as of the date of BMS' withdrawal.
2.1.8.4 All Aurora Patent Rights licensed to BMS under
Article 5 hereof shall terminate (other than such Aurora
Patent Rights and Copyright rights as are necessary to allow
BMS to effectuate its rights under sections
2.1.8.4.1-2.1.8.4.5 below), and BMS shall cease thereafter
development of any new Nonexclusive Screens for which the
manufacture or use of same is covered by such Aurora Patent
Rights or Copyrights; provided, however, that
2.1.8.4.1 BMS shall be entitled without
additional charge therefor to continue to make and
use thereafter in its internal research (including
screening and drug development), and to use any
Aurora Patent Rights and Copyright rights needed to
make and use same, any Nonexclusive Screens
incorporating any Reporters provided by Aurora
and/or that covered by any Aurora Patent Rights or
Copyrights where such Nonexclusive Screens were
developed by BMS prior to such withdrawal date, for
so long as BMS may conduct such internal research.
No good cause withdrawal under this section 2.1.8.4
shall affect or relieve BMS of *** or as permitted
hereunder thereafter following such withdrawal; and
2.1.8.4.2. BMS shall be entitled to use
thereafter in internal research (including screening
and drug development) those Accepted components of the
UHTSS as to which BMS has made the payments required
*** and to exercise a nonexclusive, irrevocable, and
fully paid-up right and license under any Aurora UHTSS
Patent Rights and Aurora UHTSS Copyrights existing as
of the date of such BMS withdrawal that are needed in
connection therewith, for so long as BMS may conduct
such internal research; and
2.1.8.4.3 No such withdrawal shall affect BMS'
right to continue to make and use thereafter in
internal research (including screening and drug
development) any Exclusive Screen as was developed
prior to the date of such withdrawal or which the
parties may develop thereafter based on any agreement
to develop same that was agreed upon prior to the
date of such withdrawal or otherwise (and to continue
to use any Aurora Patent Rights and Copyrights
covering the manufacture and use of such Exclusive
Screen(s) for such purpose), for so long as BMS may
conduct such internal research; provided, that any
*** payments that BMS would otherwise be obligated
to make ***
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shall not be affected thereby and shall continue to
be made by BMS; and provided, further, that no such
withdrawal shall affect either party's obligations
and rights under (including without limitation
Aurora's obligation to develop and supply and BMS'
right to use thereafter any Exclusive Screen
developed under) any ESP Work Plan entered into prior
to the date of such withdrawal; and
2.1.8.4.4 No such withdrawal shall limit or
restrict BMS and its Affiliates in any way from
continuing to research, develop, manufacture, use and
sell Hits identified prior to such withdrawal or
which are identified thereafter in accordance with
the rights retained by BMS under this section 2.1.8.4
(and any Lead Compounds, Approved PLP Compounds, and
Products derived from such Hits), and to use any
Aurora Patent Rights and Copyrights as may be needed
to make, use and sell same; provided, that BMS shall
remain obligated to pay Aurora ***
2.1.8.4.5 In the event such withdrawal occurs
after BMS has ordered, but not yet accepted, the
second Module Two under paragraph 2.1.3.2 hereof,
then the parties shall continue to fulfill their
obligations under such paragraph without regard to
such withdrawal. If accepted, BMS shall be entitled
to use thereafter in internal research (including
screening and drug development) such second Module
Two so long as BMS shall have made the payment
*** and to exercise a nonexclusive, irrevocable, and
fully paid-up right and license under any Aurora UHTSS
Patent Rights and Aurora UHTSS Copyrights existing as
of the date of delivery of such second Module Two that
are needed in connection therewith, for so long as BMS
may conduct such internal research.
2.1.8.5 Nothing in this section 2.1.8 is intended to prevent
or restrict, or shall be construed as preventing or
restricting, BMS and its Affiliates from using for any
internal research (including screening and drug development)
purpose, following any such withdrawal with good cause: (i)
any Reporters supplied to it by Aurora prior to the withdrawal
date or (ii) any Aurora Technology disclosed to it by Aurora
prior to the withdrawal date where the manufacture, use or
sale of such Aurora Technology is not covered by a Valid Claim
under the Aurora Patent Rights or Aurora Copyrights. It is
further understood that nothing in this section 2.1.8 alters
any confidentiality obligations of the parties under this
Agreement with respect to disclosures to Third Parties.
2.1.8.6 For purposes of this Agreement, "good cause"
withdrawal by BMS of its participation in the UHTSS program
shall mean withdrawal as a result of any of the following:
2.1.8.6.1 a decision to cease participation in
further development of the UHTSS in accordance with
Section 2.1.3; or
2.1.8.6.2 a material breach of this Agreement
by Aurora that is not cured within 90 days after
receipt of written notice by BMS describing such
breach; or
2.1.8.6.3 discovery by BMS that Aurora has made
an untrue statement with respect to any
representation, or materially breached any warranty
contained in this Agreement; or
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***
2.1.8.6.5 as provided in Section 9.4.
2.1.9 Syndicate Formation and Limitations. It is anticipated that
Aurora may seek to collaborate with, develop and supply to, and/or
grant certain license rights to Third Parties with respect to the
development, use and/or supply of a UHTSS to such Third Party.
Notwithstanding the foregoing, Aurora covenants and agrees that, so
long as BMS is not in default of any payment obligation hereunder and
has not terminated its participation in the development of the UHTSS,
then, until the date that is *** following the date that BMS
shall have accepted a fully operational, complete UHTSS pursuant to
section 2.1.3., Aurora will not, without BMS' prior written consent,
(A) enter into agreements with more than *** Third Parties (i)
under which ▇▇▇▇▇▇ ▇▇▇▇▇ a license rights to such Third Party to use
the Aurora UHTSS Patent Rights or Copyrights or Aurora UHTSS
Technology rights so that such Third Party may make or use any ultra-
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high throughput screening system similar to the UHTSS, and/or (ii)
under which Aurora will develop, sell (whether by purchase, financial
lease, lease with option to purchase, or otherwise), and/or supply,
whether (or not) in collaboration with such Third Party or otherwise,
any ultra-high throughput screening system similar to the UHTSS to
such Third Party, and (B) enter into any operating lease for a UHTSS
with a Third Party or license any Aurora UHTSS Technology or Aurora
UHTSS Patent Rights to a Third Party in order to allow such Third
Party to build its own UHTSS without infringing such rights.
Subject to section 2.1.10 (where applicable), nothing in this section
2.1.9 is intended to limit or restrict:
- the number of parties to whom Aurora may supply or grant
licenses with respect to any Reporters, the Aurora Reporter
System Patent Rights, or the Aurora Reporter System
Technology, and/or
- Aurora's ability to provide screening services using the
Aurora Patent Rights and Aurora Technology to Third Parties,
provided that such screening services do not involve a screen
that is exclusive to BMS under section 3.1.2 hereof or
otherwise conflict with any provisions of this Agreement.
***
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***
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***
2.1.10.3 In the event of any dispute between BMS and
Aurora under this section 2.1.10 as to any financial issue or
determination, the parties agree to use non-binding
arbitration first in an effort to resolve any such dispute, as
follows: Aurora shall select a independent accountant
reasonably acceptable to BMS (who is neither Aurora's nor BMS'
normal independent accountant) who will review the facts and
circumstances surrounding the dispute and render an opinion on
such matter. The parties will reasonably cooperate with such
independent accountant's efforts, and will evenly share the
fees and expenses of such independent accountant during the
pendency of such proceedings, with the loser to be responsible
for all such fees and expenses and to reimburse the winner for
its share paid. The independent accountant will execute a
confidentiality agreement with each party prior to obtaining
each party's relevant confidential information and which will
only be used for the purpose of rendering such accountant's
opinion. Neither party shall have any obligation to provide
any information, however, which would effect a waiver of any
privileges available to either party.
2.1.11 Supply of Reporters and Related Reagents/Tools. So long as BMS
has made payments in accordance with section 2.1.12 hereof, then, at
BMS' request, Aurora will supply to BMS, and will use reasonable
efforts to supply same within 30 days after receipt of a written
purchase order therefor, such Reporters then available to Aurora and
other reagents/tools pertaining thereto (e.g., plasmids) as BMS may
require in order to use the Reporter System in a Nonexclusive Screening
Program conducted by BMS. BMS will be charged for all supplies so
delivered at *** . BMS will pay for all supplies so ordered within
*** days after delivery and acceptance by BMS. All such supplies shall
be delivered F.O.B. the destination point designated by BMS. Any
supplies that BMS receives that are damaged, defective or inactive
shall be returned by BMS (or destroyed if so designated by Aurora), and
an appropriate exchange of, or credit or refund for, same shall be made
by Aurora, as BMS may elect.
2.1.12 Payments in Consideration of the Use of the Aurora Reporter
System Technology and Reporter System Patent Rights.
2.1.12.1 Until such time as BMS shall have accepted, if at all,
a fully operational, complete UHTSS in accordance with the provisions
of this Agreement, BMS' right to continue to use any Reporters supplied
by Aurora and to continue to use the Aurora Reporter System Patent
Rights licensed to BMS hereunder shall be conditioned upon the payment
by BMS, at BMS' election annually, to Aurora of *** . If BMS elects to
continue such rights, such amount
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shall be paid *** during each such calendar year. If BMS
affirmatively notifies Aurora that BMS no longer will exercise
such rights or if it fails to make a payment, then BMS' right
to use the Aurora Reporter System Patent Rights licensed to BMS
hereunder shall terminate; provided, that before any such
termination for nonpayment shall be effective, Aurora shall
have first notified BMS in writing of such failure to pay, and
BMS fails within *** days thereafter to pay the amount required
to maintain such rights.
If and once BMS has accepted a fully operational, complete
UHTSS in accordance with the provisions of this Agreement, BMS'
right to continue to use any Reporters supplied by Aurora and
to continue to use the Aurora Reporter System Patent Rights
licensed to BMS hereunder shall be conditioned upon the payment
by BMS, at BMS' election annually, to Aurora of ***. If
BMS so elects to continue such rights, such amount shall be
paid *** during each such calendar year. If BMS affirmatively
notifies that it no longer will exercise such rights or if it
fails to make a payment, then BMS' right to use the Aurora
Reporter System Patent Rights licensed to BMS hereunder shall
terminate; provided, that before any such termination for
nonpayment shall be effective, Aurora shall have first notified
BMS in writing of such failure to pay, and BMS shall have
failed within *** days thereafter to pay the amount required to
maintain such rights.
2.1.12.2 Nothing in this section 2.1.12 is intended to
prevent or restrict, or shall be construed as preventing or
restricting, BMS and its Affiliates from using for any
internal research (including drug development) purpose,
following any termination of rights pursuant to this section
2.1.12: (i) any Reporters supplied to BMS by Aurora prior to
the applicable termination date or (i) any Aurora Technology
disclosed to it by Aurora prior to the applicable termination
date where the manufacture, use or sale of such Aurora
Technology is not covered by a Valid Claim under the Aurora
Patent Rights or by any Aurora Copyrights. It is further
understood that nothing in this section 2.1.12 alters any
confidentiality obligations of the parties under this
Agreement with respect to disclosures to Third Parties.
2.1.13 Option to Purchase Additional UHTSS Components. BMS and its
Affiliates shall have the right to purchase one or more additional
UHTSS's (or any of the components comprising same) from Aurora, and
Aurora agrees to manufacture and supply same, upon issuance of a firm
purchase order to Aurora for same, subject to the following terms and
conditions:
2.1.13.1 Such option may be exercised by BMS for one
or more additional UHTSS's (or any of the components
comprising same) at any time after payment for the first UHTSS
(or the payment for the components comprising same) under
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section 2.1.5 and prior to the date that is ***.
2.1.13.2 The price of each such additional UHTSS (or
component) shall be ***. In the event that the applicable price
is determined by reference to (C)(i) above, Aurora shall
provide reasonable substantiation of such costs to BMS. BMS
will reimburse Aurora for any reasonable shipping, packaging
and insurance costs as are not included within the foregoing
pricing. The UHTSS (and any such components) shall be shipped
F.O.B. such BMS facility as is designated by BMS and shall be
subject to the terms of the purchase order and to the same
terms and conditions, including Acceptance, as are set forth
herein for the initial UHTSS.
2.1.13.3 BMS will pay to Aurora *** of the estimated
purchase price within *** after *** by Aurora, with another ***
to be paid within *** following *** (or applicable components)
covered by the purchase order, and the balance to be paid
within *** by BMS. Upon receipt of payment by BMS, Aurora
shall issue a ▇▇▇▇ of sale to BMS, the terms of which shall be
consistent with the terms of this Agreement (including without
limitation Article 5 hereof), confirming transfer of title to
BMS of any such UHTSS component so purchased by BMS
2.1.13.4 All items so ordered by BMS shall be
manufactured by Aurora and delivered to BMS not later than
*** following receipt of the purchase order for same from BMS;
provided, that the delivery date for such additional UHTSS's or
components so ordered by BMS may not be earlier than ***
following the applicable UHTSS Target Delivery Date
corresponding to same.
2.1.13.5 All items so purchased by BMS under this
section 2.1.13 shall be eligible for maintenance service under
the same terms as apply to the purchase of the UHTSS
components hereunder. Such maintenance shall be provided
*** following acceptance of such item by BMS, and thereafter,
may be purchased by BMS at its election *** of such item.
3.0 EXCLUSIVE AND NONEXCLUSIVE SCREENING PROGRAMS
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3.1 Exclusive Screening Program. The parties will collaborate in
developing and conducting an Exclusive Screening Program (ESP), as follows:
3.1.1 Scope. Under the ESP, BMS and Aurora will collaborate, using
the Aurora Screening Technology, to develop high throughput and/or
ultra high throughput screens for BMS' use in accordance with this
Agreement and which will be manufactured by Aurora and delivered to BMS
on *** selected by BMS (which targets must be reasonably acceptable to
Aurora, such consent not to be unreasonably withheld). The parties
will collaborate on the specifications for, and development of, the
particular screens (each screen, together with all of the reagents and
any other materials to be delivered by Aurora in connection therewith,
is referred to hereinafter as an "ESP Screen"), which shall be
manufactured by Aurora and delivered to BMS (the "ESP Collaborative
Activities"). BMS will propose the targets and the parties will use
all reasonable efforts to select two targets within *** following the
Effective Date, and the remaining target within *** after the Effective
Date; provided, however, that BMS shall not be obligated to propose (i)
more than *** targets with respect to the *** targets to be agreed upon
during said *** (and if the parties are unable to agree upon ***
targets from ***, this section 3.1.1 shall apply only to the ***, on
which the parties have been able to agree), and (ii) more than *** with
respect to the *** target to be agreed upon within said *** period (and
if the parties are unable to agree upon such *** target, neither party
shall be under any obligation with respect to the joint development of
an ESP Screen for such *** target).
Promptly following mutual agreement on the selection of each target,
the parties will jointly prepare an "ESP Work Plan", which shall set
forth in detail the respective responsibilities of the parties in the
development of each ESP Screen, and which must be executed by both
parties to be effective. Each such ESP Work Plan will contain, where
applicable, a description of the tasks to be performed by each party,
location, the specific deliverables (including number of reagents and
any other materials to be provided for each ESP Screen and any
specifications therefor) and documentation to be produced by Aurora,
acceptance criteria for each ESP Screen, any warranty periods, a
schedule of performance, fees (as determined in accordance with this
section 3.1.1), a schedule of payments, and any other relevant work
specifications (including the "closely-related target" definition
contemplated by section 3.1.2).
Promptly following the execution of each ESP Work Plan, the parties
will commence their respective duties under the ESP Work Plan for the
development, manufacture, and delivery of the applicable ESP Screen.
All work under an ESP Work Plan shall be performed in accordance with
the provisions of this Agreement, and each party will use its
reasonable best efforts to complete its obligations under the ESP Work
Plan as expeditiously as practicable. If any provisions of any such
ESP Work Plan should conflict with any provisions set forth in this
Agreement, the provisions of this Agreement shall take precedence,
unless such ESP Work Plan expressly refers to the specific
provision(s) of this Agreement that it is intended to replace or
modify (and which shall be
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limited in force and effect to such ESP Work Plan only). During the
development of an ESP Screen, Aurora will update BMS *** in
reasonable detail in writing with respect to its development
activities with respect to each such ESP Screen and will update BMS
verbally at more frequent intervals.
In developing each ESP Work Plan, the parties will jointly determine
and agree upon the fee to be paid by BMS to Aurora for development,
manufacture and delivery of an ESP Screen acceptable to BMS for the
target in question. The parties understand and agree that the total
fee for such effort ***. The *** shall be paid within *** following
execution of the ESP Work Plan, the *** shall be reimbursed to Aurora
by BMS monthly in arrears ***, and *** shall be paid *** following
***.
In the event that BMS pays, in whole or in part, for any work to be
performed and materials to be delivered as part of an ESP Work Plan,
and Aurora is unable to deliver an ESP Screen and related reagents and
other materials acceptable to BMS for the target in question by the
date called for in the ESP Work Plan ***, then BMS may elect in its
sole discretion either:
(i) to extend the delivery date (but only a writing signed by
an officer of BMS shall be sufficient);
(ii) not to continue further development of that target or a
substitute target, in which event the parties will be deemed
to have fulfilled their obligation to develop ***; or
(iii) to propose an additional target in substitution of such
target for which an acceptable ESP Screen could not be
developed (which target shall be reasonably
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acceptable to Aurora), in which event, in determining the fee
to be paid by BMS for such ESP Work Plan, Aurora shall not be
entitled to ***, and BMS shall be entitled to *** of such
unusable ESP Screen against the *** to be charged BMS under
such substitute ESP Work Plan developed for any such other
target.
All Materials provided by BMS in furtherance of a ESP Work Plan shall
be used in accordance with Exhibit 3.1.1 attached hereto.
3.1.2 Exclusivity. Following selection by BMS and Aurora of a
target for an ESP Work Plan and until the date that is ***
following the date that an ESP Screen for such target is delivered to
and accepted by BMS, Aurora agrees that it and its Affiliates will not
provide to any Third Party or use for the benefit of any Third Party,
and will not collaborate or contract with any Third Party on the
development of, any screens for the same target or any target that is
"closely-related" to the target so selected, nor grant license rights
to any Third Party that would conflict with the foregoing by allowing
such Third Party to use any Aurora Patent Rights, Copyrights or Aurora
Technology to make or use any such screen. Notwithstanding anything
that the preceding sentence might imply to the contrary, BMS does not
waive or relinquish any cause of action it may have relating to
infringement of, nor shall the foregoing be construed to imply or
create in any way any rights in Aurora following such *** period
under, any patent rights that may be owned or Controlled by BMS and
its Affiliates pertaining to the manufacture, use or sale of any such
ESP Screen, to any BMS Materials or other substances contained therein
or used to make such ESP Screen, or to any processes used to make
such ESP Screen.
It is understood that, to the extent that Aurora has granted a Third
Party a license to use the Aurora Reporter System Technology and
Aurora Reporter System Patent Rights on an unrestricted basis, Aurora
cannot guarantee or warrant that such Third Party's will not use such
rights in accordance with such grant to develop and use a screen that
competes with an ESP Screen developed by Aurora for BMS hereunder;
provided, that where Aurora and BMS are contemplating or performing an
ESP Work Plan for an ESP Screen that Aurora is aware is also under
development by a Third Party to whom Aurora has licensed unrestricted
rights that allow such Third Party to develop same or with whom Aurora
is then collaborating on the development thereof, Aurora will inform
BMS of such competitive development (but shall not be required to
identify the Third Party) so that BMS may decide whether to pursue
another ESP Screen or to enter into or continue the ESP Work Plan for
such ESP Screen anyway.
For purposes of this section 3.1.2, "closely-related" shall be
determined by ***
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3.1.3 Acceptance of Screen. Promptly following receipt of each such
ESP Screen, BMS will test same for acceptability to BMS in terms of
effectiveness, accuracy, reliability, and conformity to specifications
as set forth in the ESP Work Plan. BMS shall notify Aurora in writing
as to whether BMS accepts each such ESP Screen based on the foregoing
criteria *** (and if not, BMS will provide Aurora with a list of the
deficiencies found by BMS so that Aurora may develop an acceptable ESP
Screen). Aurora will promptly remedy such deficiencies and provide an
acceptable ESP Screen within a reasonable time *** thereafter.
If at any time during the Contract Term an ESP Screen for whatever
reason loses its effectiveness or efficacy or is no longer
biologically active, Aurora will replace same as promptly as
practicable at no additional cost to BMS (unless the replacement is
required as a result of negligence on the part of BMS, in which event
BMS will reimburse Aurora ***).
3.1.4 Improvements. Improvements to an ESP Screen that may be made
by Aurora during the Contract Term following delivery to and acceptance
by BMS of such Screen shall be made available to BMS, upon written
request from BMS, for a fee equal to *** incurred by Aurora to
improve and optimize same, plus ***. At BMS' request, and prior to
commencing such work, Aurora will provide BMS with a firm estimate ***
Payment shall be made by BMS following acceptance of same, using the
same acceptance procedure as set forth in section 3.1.3 for the
initial ESP Screen.
3.1.5 Deployment of Screen by BMS. BMS will employ each such
accepted ESP Screen to screen such BMS Test Materials as BMS deems
appropriate for such purpose in the exercise of its sole and absolute
discretion.
3.1.6 Additional Screens. Subject to the same terms and conditions
as are set forth in this section 3.1 (e.g., mutual acceptability of the
target, exclusivity, development of a mutually acceptable ESP Work Plan
for same, etc.), BMS may elect that the number of ESP Screens on which
BMS and Aurora shall collaborate to develop and deliver to BMS be
increased to *** *** during each year of this Agreement until the
date that BMS accepts a complete, fully operational UHTSS pursuant to
section 2.1.3 or the date that is *** following the Effective Date,
whichever is the later date.
3.1.7 Rights in BMS Compounds. All right, title and interest in any
Inventions relating in any way to any BMS Test Materials and any BMS
Hits or Lead Compounds which arise out of, or are conceived or reduced
to practice as a result of, the development or use of an ESP Screen by
or for BMS shall be owned solely by BMS, and to the extent that Aurora
or any of its employees or contractors might be considered a
co-inventor of any such Invention, Aurora hereby assigns to BMS all
rights, title and interest in and to any such Invention made by it,
its employees or contractors. Aurora agrees to execute any
instruments or other documents, at BMS' reasonable request and
expense, to confirm and
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vest same, and agrees to maintain appropriate contractual arrangements
with its employees and contractors to effectuate same.
3.1.8 Payments to Aurora. In addition to such payments as are made
by BMS to Aurora pursuant to section 3.1.1 hereof, the following
payments shall be made to Aurora with respect to the delivery and use
of the ESP Screens by BMS:
3.1.8.1 Milestones. BMS will pay to Aurora:
3.1.8.1.1 Where BMS has determined that a Hit identified
in an ESP Screen should become a Lead Compound and enter a
Lead Compound Development Program conducted by BMS, BMS
will promptly notify Aurora in writing of same and will pay
to Aurora *** for each such Lead Compound. Payments shall
be wired to a bank account specified by Aurora within ***
following such notification from BMS.
3.1.8.1.2 BMS will promptly notify Aurora in writing of
each Approved PLP Compound approved by the BMSPGOC. BMS
will pay Aurora *** for each Approved PLP Compound so
approved for further development by the BMSPGOC; provided,
that if a Hit under section 3.1.8.1.1 should be approved as
an Approved PLP Compound without first having been approved
to enter a Lead Compound Development Program (such that
Aurora did not receive any payment under section
3.1.8.1.1), then BMS shall pay Aurora *** upon any such Hit
so approved for further development as an Approved PLP
Compound by the BMSPGOC. Payments shall be wired to a
bank account specified by Aurora within *** following such
notification from BMS.
3.1.8.1.3 If an Approved PLP Compound should reach the
following milestones, BMS will promptly notify Aurora of
same and will pay the following amounts to Aurora:
Event Payment (US$)
***
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***
provided, however, that if a Hit identified using a
particular ESP Screen and on which milestones payment(s)
above have been made should be dropped from further
development by BMS, for whatever reason, then no more
milestone payments shall be due with respect to any
subsequent Hit so identified in the same ESP Screen, unless
and until such subsequent Hit reaches the milestone next
following the last milestone on which a payment was made
for the abandoned compound. Payments shall be wired to a
bank account specified by Aurora within *** days following
the date that any such milestone is reached.
3.1.8.2 Royalties. With respect to each Covered Product
identified as a Hit in a Exclusive Screen, BMS shall pay a
royalty on Net Sales of such Covered Product during the Royalty
Term for such Covered Product, as follows *** ***
***
; provided, however, that where the potential use or
application for a disease indication of any compound or Analog
thereof (or the active substance therein) was identified
(whether in laboratory notebooks, patent application(s), or
otherwise) by BMS prior to the date that such compound, Analog
or active substance was identified as a Hit hereunder, then no
royalty shall be due on a Covered Product incorporating same
to the extent sold for the treatment or prevention of diseases
or conditions for which such compound, Analog or Product is
being sold, being developed, or planned for development by BMS
at the time of such identification.
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Royalties for Net Sales of any Covered Product in any given
country shall be due and payable only during the Royalty Term
for such Covered Product in such country; thereafter, BMS
shall be entitled to continue to sell such Covered Product in
such country without further compensation to Aurora.
3.2 Nonexclusive Screening Payments. As part of the rights
licensed under section 5.1.1 hereof, BMS and its Affiliates shall be entitled
to use and practice the Aurora Reporter System Technology and Aurora Reporter
System Patent Rights and Copyrights licensed to it under section 5.1.1 hereof
and to use any Reporters or other reagents/tools covered thereby that are
supplied to BMS by Aurora pursuant to this Agreement for internal research and
drug development, including to develop, make and use in internal research and
drug development any high throughput and ultra high throughput screens
targeting any targets as BMS in its discretion may select (collectively, such
activities referred to as the "Nonexclusive Screening Program" or "NSP", and
any such screen, the manufacture or use of which is covered by the Aurora
Patent Rights or Copyrights or in which the Reporters supplied by Aurora are
used, referred to as a "Nonexclusive Screen"). BMS shall be entitled to
conduct any internal research, development and commercialization thereafter of
any Hits arising out of any such NSP activities as BMS in its discretion may
elect to conduct.
Promptly following the Effective Date, Aurora will commence training
of BMS personnel at Aurora in the use and application of the Aurora Reporter
System Technology and any Reporters or other reagents/tools to be supplied to
BMS by Aurora pursuant to this Agreement so that BMS may develop, make and use
Nonexclusive Screens for use by BMS in accordance with this Agreement. The
number of such individuals shall be jointly determined by BMS and Aurora but
shall be a number sufficient to allow for BMS to effect rapid scale-up in its
use of the Aurora Reporter System Technology. If more individuals need to be
trained than can be reasonably accommodated in the first training session, the
parties will jointly schedule additional sessions as reasonably necessary.
Each party will bear its own costs in connection with such training sessions.
Subject to section 3.2.4 below, BMS shall make milestone payments to
Aurora with respect to such Hits as arise out of any use of a Nonexclusive
Screen by BMS or its Affiliates, as follows:
3.2.1 Where BMS has determined that a Hit identified through the use
of any such Nonexclusive Screen should become a Lead Compound and enter
a Lead Compound Development Program conducted by BMS, BMS will promptly
notify Aurora of same and will pay to Aurora *** for each such Lead
Compound. Payments shall be wired to a bank account specified by
Aurora within *** following such notification from BMS.
3.2.2 BMS will promptly notify Aurora of each Lead Compound arising
out of section 3.2.1 that becomes an Approved PLP Compound, and will
pay Aurora *** for each Approved PLP Compound so approved for further
development by the BMSPGOC; provided, that if a Hit under section 3.2.1
should be approved as an Approved PLP Compound without first having
been approved to enter a
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Lead Compound Development Program (such that Aurora did not receive any
payment under section 3.2.1), then BMS shall pay Aurora *** upon any
such Hit so approved for further development as an Approved PLP
Compound by the BMSPGOC. Payments shall be wired to a bank account
specified by Aurora within *** following such notification from BMS.
3.2.3 If an Approved PLP Compound in section 3.2.2 should reach the
following milestones, BMS will promptly notify Aurora of same and will
pay the following amounts to Aurora:
Event Payment
(US$)
***
; provided, however, that if a Hit identified using a particular
Nonexclusive Screen and on which milestones payment(s) above have been
made should be dropped from further development by BMS, for whatever
reason, then no more milestone payments shall be due with respect to
any subsequent Hit so identified in the same Nonexclusive Screen,
unless and until such subsequent Hit reaches the milestone next
following the last milestone on which a payment was made for the
abandoned compound. Payments shall be wired to a bank account
specified by Aurora within *** following the date that any such
milestone is reached.
3.2.4 The milestone payments in this section 3.2 shall apply only to
Hits obtained prior to the delivery of the complete, fully operational
UHTSS to BMS and only with respect to such Hits as are obtained in the
*** Nonexclusive Screens developed by BMS; provided, however, that
if BMS enters into an agreement with Aurora to develop more than ***
ESP Screens under section 3.1 hereof, then each such additional ESP
Screen in excess of *** shall reduce, by the same excess number, the
number of Nonexclusive Screens under this section 3.2 for which
payments might otherwise be required to be made under sections ***
above. For example, if BMS enters into
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ESP Work Plans for *** ESP Screens, then the milestone payments under
Sections *** shall apply only to a Hit (that is subsequently approved
as a Lead Compound and that occurs prior to the date that a complete,
fully operational UHTSS is delivered to BMS) in the *** Nonexclusive
Screens developed by BMS.
3.2.5 All right, title and interest in any Inventions relating in
any way to any BMS Test Materials and any Hits or Lead Compounds which
arise out of, or are conceived or reduced to practice as a result of,
the development or use of an Nonexclusive Screen by or for BMS shall
be owned solely by BMS, and to the extent that Aurora or any of its
employees or contractors might be considered a co-inventor of any
such Invention, Aurora hereby assigns to BMS all rights, title and
interest in and to any such Invention made by it, its employees or
contractors. Aurora agrees to execute any instruments or other
documents, at BMS' reasonable request and expense, to confirm and vest
same, and agrees to maintain appropriate contractual arrangements with
its employees and contractors to effectuate same.
3.3 Ownership of Data. All results and data generated by BMS, its
Affiliates and its and their contractors arising out of the use by any of them
of the UHTSS and any ESP Screen or Nonexclusive Screen, the use of any of the
rights licensed under article 5 hereof, or otherwise arising out of this
Agreement with respect to any Hits, Lead Compounds and Approved PLP Compounds
(and Analogs of any of the foregoing made or obtained by BMS) or otherwise out
of the internal research and development conducted by or for BMS and its
Affiliates shall be owned exclusively by BMS and shall be treated as BMS
Confidential Information hereunder.
3.4 Development of Products. BMS will in its sole and absolute
discretion determine which, if any, such Hit(s) will be approved as Lead
Compounds and developed further in a Lead Compound Development Program
conducted by BMS. BMS shall be responsible for all pre-clinical (including
medicinal chemistry) activities during the course of the Lead Compound
Development Program for such Lead Compound, as well as following any approval
of an Approved PLP Compound. The conduct of the Lead Compound Development
Program shall be solely within the control and discretion of BMS, and BMS may
in its discretion suspend or terminate, in whole or in part, the Lead Compound
Development Program for a Lead Compound at any time.
BMS will be responsible for all pre-clinical and clinical development,
including all regulatory filings, of Hits, Lead Compounds, and Approved PLP
Compounds arising out of this Agreement. BMS shall have sole and absolute
discretion and control over the conduct of, and all activities associated with,
the development or abandonment of any Hit or Lead Compound, the approval of a
Lead Compound as an Approved PLP Compound, the development or abandonment of
any Approved PLP Compound, all regulatory activities relating to the
manufacture, use or sale of any Approved PLP Compound or Product, and the
commercialization and marketing of any Product in any country. All INDs, NDAs
and other regulatory filings made or filed by BMS for any Approved PLP Compound
or Product shall be owned solely by BMS. BMS will provide summary annual
reports to Aurora on the development status of any Approved PLP Compound then
in development arising out of the ESP Screening Program and which shall
*** CONFIDENTIAL TREATMENT REQUESTED
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be treated as BMS Confidential Information hereunder. Other than royalty
reports required hereunder, no reports shall be required of BMS with respect to
any activities connected with the commercialization of any Product approved for
marketing in any country.
3.5 Laboratory Facilities and Personnel. Aurora and BMS shall
each, at their respective cost and expense, provide suitable and sufficient
laboratory facilities and equipment, and will devote sufficient, experienced
personnel, as is needed to carry out their respective obligations under this
Agreement.
3.6 Payments to Third Parties by Aurora. Aurora shall be solely
responsible for the performance by, and any payments of any nature whatsoever
due to, Third Parties relating to the following:
3.6.1 The use by Aurora and by BMS (where used by BMS in accordance
with this Agreement) of any patent rights, copyrights, Know-How or
other intellectual property rights owned or controlled by such Third
Party that are licensed to Aurora and which are included within the
Aurora Patent Rights and Aurora Technology that are sublicensed to BMS
hereunder; and
3.6.2 Any Third Party used by Aurora to provide goods or services to
make, have made, sell, deliver, install and/or provide maintenance for
the UHTSS and any UHTSS components supplied hereunder; and
3.6.3 Any Third Party used by Aurora to provide goods or services in
connection with the preparation, manufacture, use, sale, and delivery
of an applicable ESP Screen or any Reporters hereunder.
4.0 SERVICE AND SUPPORT
4.1 Service and Support. For a period until (i) *** after
Acceptance of a complete, fully operational UHTSS pursuant to section 2.1.3.1
(including during the period prior to Acceptance of same during which Modules
One and Two of such UHTSS are being installed and used) , (ii) *** after
Acceptance of the Second Module Two pursuant to section 2.1.3.2 (or until
expiration of the *** in (i), whichever is the later), and (iii) for *** after
Acceptance of each additional UHTSS or component thereof as may be ordered by
BMS pursuant to section 2.1.13, Aurora will provide, ***, service and support
for the applicable system and all system components, as such service and support
is more fully described on Exhibit 4.1 attached hereto ("Service and Support").
Aurora will be responsible for providing and paying for this Service and
Support, whether provided by Aurora itself or through third party contractors
(including those providing any UHTSS components to Aurora). Aurora will
designate an appropriate Aurora employee to coordinate such Service and Support.
Following the applicable period pertaining to (i)-(iii) under the
preceding paragraph, BMS may elect to purchase Service and Support annually for
up to *** thereafter (or
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such longer period as the parties may mutually agree upon in writing) for such
UHTSS's (or components thereof) for a fee that is *** Maintenance payments
shall be payable in ***. Alternatively, BMS may utilize its own designated
internal resources for some or all of such components, in combination with
additional support provided directly by Aurora and/or Aurora's technology
partners, at Aurora and such partners' then prevailing rates, in which event the
annual maintenance fee shall be equitably prorated for the items still subject
to maintenance. Following such *** period, BMS may purchase maintenance at ***.
5.0 INTELLECTUAL PROPERTY RIGHTS
5.1 License Rights.
5.1.1 Aurora grants to BMS and its Affiliates a worldwide right and
license under Aurora Technology, Aurora Copyrights, and Aurora
Patent Rights existing or arising at any time during the term
of this Agreement:
(i) to conduct internal research and development (including
without limitation drug discovery, screening and drug
development), including without limitation:
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*** (ii) to the extent covered thereby to make, have made, use, sell,
import and offer for sale any Hits, Lead Compounds, Approved PLP
Compounds, Products, and substances identified as having Activity using
such licensed rights, all in accordance with the terms and conditions
of this Agreement.
Subject to sections 2.1.9, 3.1.2, and 3.1.7 hereof, the rights granted
under this section 5.1.1 shall be non-exclusive and Aurora shall be
entitled to grant licenses to such rights to Third Parties upon such
terms as Aurora shall determine and/or to use such rights for the
benefit of itself or any Third Party. The rights granted hereunder
shall be subject to any and all payments required in articles 2 and 3
hereof, and shall continue until, and to the extent, terminated in
accordance with the provisions of this Agreement.
5.1.2 Notwithstanding section 5.1.1, the rights granted thereunder
do not include:
5.1.2.1 Improvements to the Aurora Reporter System Technology
developed after the date that is the later of *** other than
those improvements that represent incremental improvements to
the existing Aurora Reporter System Technology developed after
such date (for example, a novel Reporter developed after such
date would not fall within the improvements licensed to BMS
after such date); and
5.1.2.2 Inventions pertaining to the Aurora Reporter System
Technology that are made after the date that is *** ;
provided, that the foregoing shall not apply to Inventions that
constitute incremental improvements under section 5.1.2.1; and
provided, further, that any Inventions made after such date
that are embodied in a division or substitute application for
an Invention made prior to such date shall be included within
the rights licensed to BMS hereunder.
5.1.2.3 The right to use any Reporter as a drug or tool as
part of any commercial contract service or bureau to treat or
diagnose diseases or conditions or to detect analytes as part
of a diagnostic program for Third Parties; however, the right
to use any Reporter for research (including screening and drug
development) purposes, including as a drug or tool to detect
analytes for research purposes, shall not be limited or
restricted in any way by the foregoing.
5.2 Ownership Rights.
5.2.1 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
***CONFIDENTIAL TREATMENT REQUESTED
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rights, title or interest in any Confidential Information, Technology,
or patent rights owned or Controlled by a party. Except as expressly
provided for 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 Biological Materials, Technology, Copyrights, or Patent
Rights owned or Controlled by a party or its Affiliates.
5.2.2 BMS shall own all Inventions and other Technology made solely
by its employees and agents, and all patent applications and patents
claiming such Inventions. Subject to section 3.1.7, 3.2.5, and 5.2.3,
Aurora shall own all Inventions and other Technology made solely by
its employees and agents, and all patent applications and patents
claiming such Inventions. Subject to Sections 3.1.7, 3.2.5, and
5.2.3, all Inventions and other Technology made jointly by employees
or agents of BMS and employees or agents of Aurora shall be owned
jointly by BMS and Aurora. Subject to the terms of this Agreement,
all joint Inventions (and all patent rights obtained thereon) and all
Technology jointly developed by Aurora and BMS during the Research
Term may be freely exploited by either party without further
obligation to the other. Determinations of inventorship shall be made
in accordance with U.S. patent law.
5.2.3 All rights, title and interests owned or Controlled by Aurora
or its Affiliates in any Inventions and Technology pertaining to any
indication or use of any Hit, Lead Compound, Approved PLP Compound or
Covered Product (or of Analogs of the class of compounds to which the
same may pertain) that may be conceived or reduced to practice at any
time during the Contract Term solely by Aurora employees or by a Third
Party under contract with Aurora, or jointly by any of them with
others, in connection with the activities conducted by Aurora under
this Agreement, and all rights, title and interest Aurora may have in
any Patent Rights that may be obtained on any of the foregoing
(collectively, "Product Invention Rights"), shall be owned exclusively
by BMS, and shall be deemed to be and have been automatically assigned
to BMS by reason of Aurora's execution of this Agreement. Aurora
shall promptly report any such Invention to BMS in sufficient detail
to enable BMS to assess whether a patent application should be filed.
If BMS desires to file patent applications on any such Invention, it
will do so at its option and expense, and Aurora will provide
reasonable cooperation as BMS may request (with BMS reimbursing Aurora
for any out-of-pocket costs so incurred) in obtaining and filing for
any patent protection thereon in BMS' name and will execute any
documents or other instruments as may be reasonably requested by BMS
to fully vest exclusive ownership of such Product Invention Rights in
BMS. BMS shall be under no obligation, express or implied, to
develop, market, or otherwise utilize any such Product Invention
Rights.
5.3 Sublicensing. BMS shall have the right to sublicense any of
the rights licensed to it by Aurora hereunder to any Affiliate of BMS, provided
that such Affiliate is bound by all pertinent terms and conditions of this
Agreement and provided that BMS shall not be relieved of any of its obligations
under this Agreement.
Nothing in this section 5.3 or otherwise in this Agreement shall
restrict, or is intended to restrict, BMS in any way from collaborating with a
Third Party on the development,
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manufacture, or use of any Non-Exclusive Screen (or with respect to the use of
an Exclusive Screen at BMS); provided, that such Third Party shall have
executed an appropriate confidentiality agreement with BMS to keep in
confidence any disclosures of Aurora Confidential Information that BMS may need
to make in connection therewith, and provided that such Third Party shall have
agreed that the use by such Third Party of any such Aurora Confidential
Information or rights licensed to BMS hereunder is limited solely to
developing, making, supplying, or using any such Non-Exclusive Screens (and
using any such Exclusive Screens) solely in furtherance of BMS' research and
drug development activities or of such collaboration as BMS may have with such
Third Party; and provided, further, that BMS may not provide any Reporters to
any such Third Party without Aurora's prior written consent, and may not
disclose any Confidential Information pertaining to any Aurora Reporter System
Technology to any such Third Party, other than to consultants and contractors
working at BMS facilities who have reason to know same and in accordance with
article 9.
5.4 Software. Aurora shall provide to BMS a copy of the source
code and object code for any Software provided with the UHTSS (or any Module or
other component) to the extent available to and under the Control of Aurora,
and, if such source or object code is licensed to Aurora from a third party,
upon the same terms as apply to Aurora's use of such source or object code.
BMS may, in its discretion, adapt, reproduce, and modify such software and
prepare derivative works based upon the software, as well as enhance or improve
functionality of the software through new modules or subroutines developed by
BMS for use with the software (all of the foregoing collectively,
"Modifications"), all of which, as well as any rights (including copyright
rights therein) shall be owned by BMS. Aurora shall have no ownership interest
in, nor any right to license, use or disclose, or any obligation to support,
any such Modifications developed by BMS, all of which (and the title and rights
therein) shall be owned by BMS; provided, however, that BMS shall not acquire
by reason of the foregoing ownership of any portions of the software code
provided by Aurora or any interest in any copyright owned or held by Aurora or
its licensors therein.
6.0 PAYMENTS OF ROYALTIES, ACCOUNTING FOR ROYALTIES, RECORDS
6.1 Payment Term. All royalties required to be paid by BMS
hereunder shall be paid with respect to each country of the world from ***
6.2 Payment Dates. Royalties shall be paid by BMS on Net Sales
within *** *** Such payments shall be accompanied by a statement showing all
relevant sales information including the information employed to calculate Net
Sales of each Covered Product in each country, and the calculation of the amount
of royalty due.
6.3 Accounting. The Net Sales used for computing the royalties
payable to Aurora by BMS shall be computed in U.S. dollars and paid by wire
transfer or other mutually acceptable
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means. For purposes of determining the amount of royalties due, the amount of
Net Sales in any foreign currency shall be computed by converting such amount
into dollars ***
6.4 Records. BMS shall keep for *** complete and accurate records
of sales and all other information necessary to calculate Net Sales of each
Covered Product in sufficient detail to allow the accrued royalties to be
determined accurately. Aurora shall have the right to cause an independent,
certified public accountant (who has executed a confidentiality agreement with
BMS reasonably acceptable to BMS) 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 for the preceding two
years. Such audits may be exercised during normal business hours *** . Aurora
shall bear the full cost of such audit unless such audit discloses a variance of
*** from the amount of the royalties due under this Agreement, in which event,
*** . 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.
6.5 Withholding Required by Law. If provision is made in law or
regulation for taxes to be withheld by BMS, such tax shall be deducted from the
royalty or other payment to be made by BMS hereunder and shall be remitted to
the proper taxing authority. Payment of the royalty or other payment due to
Aurora shall be net of such withholding. BMS and Aurora agree to assist the
other party in claiming any exemption available from such deduction or
withholdings under any double taxation or similar agreement or treaty from time
to time in force.
7.0 INFRINGEMENT BY THIRD PARTIES
7.1 Actual or Threatened Infringement of BMS Materials and
Products. If information comes to the attention of BMS or Aurora to the effect
that any patent rights owned or Controlled by BMS or its Affiliates relating to
a BMS Material, Hit, Lead Compound, Approved PLP Compound or Product are being,
have been or are threatened to be infringed by a Third Party not Affiliated
with BMS, BMS shall have the sole right, *** ,to take and control
all action as BMS may deem necessary or appropriate to prosecute or prevent
such unlawful infringement, including the right to bring, defend, settle,
compromise, or appeal any suit, action or proceeding involving any such
infringement. If BMS determines that it is necessary or desirable to bring an
infringement action and for Aurora to join any such suit, action or proceeding,
Aurora shall, *** , execute all papers, provide full cooperation
and assistance to BMS in connection with such proceeding, and, if necessary,
take such other actions as may be reasonably required to permit BMS to act in
Aurora's name (including the furnishing of a power of attorney), and *** ;
provided, however, that BMS may not settle any patent infringement
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litigation under this Section 7.1 in a manner that adversely affects the scope
or enforceability of Aurora's Patent Rights or that would constitute an
amendment of this Agreement without Aurora's written consent (not to be
unreasonably withheld or delayed). ***
7.2 Actual or Threatened Infringement of Aurora Patent Rights.
7.2.1 BMS and Aurora shall promptly notify the other in writing of
any alleged or threatened infringement of any Aurora Patent Rights
licensed to BMS under this Agreement of which either becomes aware.
Both parties shall use reasonable efforts in cooperating with each
other to terminate such infringement without litigation. Aurora shall
have the first right to bring and control any action or proceeding with
respect to such infringement *** and by counsel of its own choice as to
any such Aurora Patent Rights, and BMS shall have the right, *** to be
represented in any action involving any such Aurora Patent Rights using
counsel of its own choice.
7.2.2 If Aurora fails to bring an action or proceeding within (i) ***
following receipt of written notice from BMS with respect to an alleged
infringement of any Aurora UHTSS Patent Rights or of any Aurora
Reporter System Patent Rights used in an Exclusive Screen hereunder, or
(ii) *** , set forth in the appropriate laws and regulations for the
filing of such actions, whichever comes first, with respect to such
Aurora UHTSS Patent Rights or any such Aurora Reporter System Patent
Rights used in an Exclusive Screen hereunder, BMS shall have the right
to bring and control any such action *** and by counsel of its own
choice, and Aurora shall have the right, *** to be represented in any
such action by counsel of its own choice.
7.2.3 In the event a party brings an infringement action under this
section 7.2, the other party shall provide all reasonable cooperation,
including if required to bring such action, the furnishing of a power
of attorney. Neither party shall have the right to settle any
proceedings under this Section 7.2 in a manner that diminishes the
rights licensed to the other party hereunder or which would constitute
an amendment of this Agreement, without the consent of such other party
(not to be unreasonably withheld or delayed). Except as otherwise
agreed to by the parties as part of a cost sharing arrangement ***
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***
7.2.4 The parties acknowledge that Aurora's ability to comply with
section 7.2.1-7.2.3 above may be subject to rights and obligations
under Third Party Contracts as of the Effective Date that have
provided patent right, copyrights and Know-How that are included
within the Aurora Patent Rights and Aurora Technology licensed to BMS
hereunder. Such Third Party Contracts and the provisions therein
containing such restrictions are set forth in Exhibit 7.2.4, and
Aurora represents and warrants as of the Effective Date that there are
no other restrictions under any such Third Party Contracts not set
forth on such Exhibit that would affect its ability to perform
sections 7.2.1-7.2.3 hereof and that it will not agree to any changes
to such restrictions hereafter without the prior written consent of
BMS (except where such changes eliminate same or make such
restrictions less restrictive).
8.0 DEFENSE OF INFRINGEMENT CLAIMS
8.1 Defense of Infringement Claims Pertaining to Lead Compounds,
Approved PLP Compounds, and Products. Subject to section 11.4 (to the extent
applicable), Aurora will cooperate with BMS, *** , in the defense
of any suit, action or proceeding against Aurora, BMS, any BMS Affiliate, or
any licensee of BMS alleging the infringement of the intellectual property
rights of a Third Party by reason of the manufacture, use or sale of a BMS
Material, Hit, Lead Compound, Approved PLP Compound, or Product. Aurora shall
give to BMS all authority (including the right to exclusive control of the
defense of any such suit, action or proceeding and the exclusive right to
compromise, litigate, settle or otherwise dispose of any such suit, action or
proceeding), information and assistance necessary to defend or settle any such
suit, action or proceeding; provided, however, BMS shall obtain Aurora's prior
written consent (not to be unreasonably withheld) if any part of any proposed
settlement would have an adverse effect on the scope or enforceability of the
Aurora Patent Rights; ***
8.2 Defense of Infringement Claims Pertaining to Patent Rights
Owned or Controlled by Aurora. Subject to section 11.3 (to the extent
applicable), BMS will cooperate with Aurora, *** , in the
defense of any suit, action or proceeding against Aurora, any Aurora Affiliate,
BMS, any BMS Affiliate, or any licensee of BMS alleging the infringement of the
intellectual property rights of a Third Party by reason of the use of the
UHTSS, the Exclusive or Non-Exclusive Screens or of any Aurora Patent Rights
and Aurora Technology licensed to BMS under this Agreement. Aurora shall give
BMS prompt written notice of the commencement of
*** CONFIDENTIAL TREATMENT REQUESTED
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any such suit, action, proceeding or claim of infringement and will furnish BMS
a copy of each communication relating to the alleged infringement. BMS shall
give to Aurora all authority (including the right to exclusive control of the
defense of any such suit, action or proceeding and the exclusive right, after
consultation with BMS, to compromise, litigate, settle or otherwise dispose of
any such suit, action or proceeding), information and assistance necessary to
defend or settle any such suit, action or proceeding; provided, however, Aurora
shall obtain BMS's prior written consent to all or such part of any settlement
which requires payment or other action by BMS, its Affiliates, or licensees, or
which would conflict with or have an adverse effect on the continuing use of
such Screens or the rights granted hereunder to BMS, its Affiliates or
licensees. ***
9.0 TREATMENT OF CONFIDENTIAL INFORMATION; PUBLICITY, AND CHANGE OF
CONTROL
9.1 Confidentiality
9.1.1 Subject to the terms and conditions of this Agreement, BMS and
Aurora each agree that, during the term of this Agreement and for five
(5) years thereafter, each will use all reasonable efforts to keep
confidential, and will cause its Affiliates to use reasonable efforts
to keep confidential, all Aurora Confidential Information or BMS
Confidential Information, as the case may be, that is disclosed to it
or to any of its Affiliates by the other party in connection with the
performance of this Agreement. Neither BMS nor Aurora nor any of
their respective Affiliates shall use the other party's Confidential
Information except as expressly permitted in this Agreement.
9.1.2 BMS 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,
including not less than such efforts as it would customarily take to
preserve the confidentiality of its own Confidential Information.
Each party, upon the other's request, will return all the Confidential
Information disclosed to the other party pursuant to this Agreement,
including all copies and extracts of documents, within sixty (60) days
of the request of the other party following any termination of this
Agreement, except for one (1)
*** CONFIDENTIAL TREATMENT REQUESTED
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copy which may be kept for the purpose of ascertaining and complying
with continuing confidentiality obligations under this Agreement, and
except for such copies as a party may retain in order to continue to
exercise its rights hereunder (for example, under sections 2.1.7.4,
2.1.7.5, 2.1.8.4, 2.1.8.5, 2.1.12.2, 12.5.2, or 12.5.3) following
termination of this Agreement.
9.1.3 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;
ii) is known by the receiving party at the time
of receiving such information, as evidence 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; or
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 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 acquiror, merger
partner, bank, venture capital firm, or other financial institution to
obtain financing, or other bona fide potential strategic partner or
collaborator.
9.2 Publication of Results. Notwithstanding any term in this
Agreement that may state or imply to the contrary, but subject to section 9.1
hereof, results and data obtained by BMS in
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the course of the Exclusive and Nonexclusive Screening Programs or through the
use of the Reporters or the UHTSS may be submitted for publication in
accordance with BMS' customary practices.
9.3 Publicity. Except as required by law and as provided in this
article 9, 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.
9.4 Change in Control. If, prior to the Acceptance of the first
complete, fully operational UHTSS:
(i) Aurora merges or consolidates with a Third Party, or
(ii) Twenty percent (20%) or more of Aurora's outstanding voting
stock or equity interests at any time is held, owned or
controlled by a Third Party, or
(iii) Aurora should sell or otherwise transfer all or substantially
all of its assets that are the subject of this Agreement to a
Third Party,
which Third Party, in the good faith determination of BMS, is, or is an
Affiliate of, a substantial competitor of BMS in the manufacture, use or sale
of drugs to prevent or treat diseases in human beings, BMS may elect as
follows:
9.4.1 BMS may elect to treat such event as an event entitling BMS to
withdraw from further development of the UHTSS for good cause; or
9.4.2 BMS may, without affecting or altering Aurora's or BMS'
continuing obligations under this Agreement, elect to require that
Aurora provide, and Aurora agrees in such event to provide, reasonable
assurances that it will continue, and will devote the necessary
resources and efforts to ensure, the conduct of the research
activities contemplated by this Agreement, that Aurora will adopt
appropriate measures to ensure that Confidential Information of BMS is
not disclosed to the acquiring or merging entity (or its Affiliates),
and that, if necessary and appropriate to ensure the due performance
of its obligations under the Research Plan and this Agreement, Aurora
will take such steps and measures as may be reasonably be required to
segregate its business operations and assets to which this Agreement
pertains from the activities to be conducted by it in the future for
the benefit of such acquiring or merging entity. BMS shall also be
entitled to cease the provision of any and all reports thereafter to
Aurora with respect to BMS' ESP and NSP activities and BMS research
and development activities as to any Hit, Lead Compound, Approved PLP
Compound, or Product, except for milestone payments and royalty
reports required hereunder and such other reports as Aurora may
reasonably request for purposes of ascertaining whether any events
have occurred that would require BMS to make any other payment
required of it hereunder.
***CONFIDENTIAL TREATMENT REQUESTED
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10.0 PROVISIONS CONCERNING THE FILING, PROSECUTION AND MAINTENANCE OF
PATENT RIGHTS; COPYRIGHTS
10.1 Sole Inventions. For Inventions made solely by a party, such
party shall, subject to Sections 3.1.7, 3.2.5, and 5.2.3, be solely responsible
at its expense for making decisions regarding the scope and content of
application(s) to be filed and the prosecution thereof, as well as in what
country(ies) such applications should be filed, prosecuted, and maintained.
With respect to any Aurora Patent Rights licensed to BMS hereunder, Aurora
shall provide to BMS copies of all patent applications, (including any
continuations, continuations- in-part or divisions thereof or any substitute
applications therefor or equivalents thereof) relating thereto, and, shall also
provide to BMS copies of all documents and correspondence received or proposed
to be filed in connection with the filing and prosecution of all such Aurora
Patent Rights in a timely manner. Aurora shall also provide a report every six
(6) months detailing their status.
With respect to any Aurora UHTSS Patent Rights:
10.1.1 Aurora shall provide to BMS' patent counsel any patent
applications pertaining to such Patent Rights and any papers or other
documents pertaining thereto (such as responses to office action,
requests for terminal disclaimer, and requests for reissue or
reexamination of any patent issuing from such application) that Aurora
proposes to file sufficiently in advance of filing for the purpose of
obtaining substantive comment of BMS' patent counsel and shall
consider in good faith the requests and suggestions of BMS with
respect to strategies for filing and prosecuting such patent
applications; and
10.1.2 If Aurora decides not to pursue filing or prosecution of any
Invention conceived or made solely by it pertaining to such Patent
Rights in a given country, it shall give BMS reasonable notice to this
effect, and thereafter BMS may, at its discretion and expense, file,
prosecute, maintain and enforce in Aurora's name a patent application
or patent covering such Invention in such country.
Each party shall fully cooperate with the other party controlling such
filing, prosecution and maintenance, and will execute such documents or other
instruments as may be requested by the controlling party in order to fully vest
the rights associated with any such Invention as set forth herein. The
controlling party will reimburse the other party for any out-of-pocket costs
incurred by the other party in connection therewith.
10.2 Joint Inventions. Subject to sections 3.1.7, 3.2.5, 5.2.3,
and 10.3, for Inventions conceived or made jointly by BMS and Aurora in the
performance of this Agreement, the parties agree to meet and confer in order to
discuss whether, and in what countries, patent rights claiming such Joint
Inventions should be filed and which party(ies) should bear the cost of filing,
prosecuting and maintaining same. With respect to any patent rights filed,
prosecuted or maintained under this section 10.2, each patent application,
office action, response to office action, request for terminal disclaimer,
request for reissue or reexamination of any patent issuing from such
application, and any other papers or documents received or proposed to be filed
in connection therewith shall be provided by the party responsible for the
filing, request or response
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to the other party sufficiently prior to the filing of such application,
response or request to allow for review and comment by the other party. The
parties shall discuss patent filing, prosecution, defense and maintenance costs
from time to time and shall agree in advance before the expenditure of monies
for special transactions (such as the cost of interference, litigation and
appeals).
10.3 Exclusive Screens. It is understood and agreed that all
receptors and other targets provided by BMS to Aurora for use in developing an
Exclusive Screen, and title and all intellectual property rights and interests
in and to such receptors and other targets, shall remain the exclusive property
of BMS. All such Exclusive Screens shall be treated as BMS Confidential
Information hereunder, and Aurora may not transfer such Exclusive Screen to any
Third party or use such Exclusive Screen for the benefit of itself or any Third
Party, without the prior written consent of BMS. Regardless of which party
shall be considered an inventor under applicable patent law of any inventions
pertaining to any such Exclusive Screen, the parties agree to cooperate to file
such patent protection on any such Exclusive Screen on such countries as BMS
may request (in the names of either BMS or Aurora, or jointly, as the parties
respective patent counsel jointly agree is appropriate, or, if no agreement is
reached, then in the names of both parties). For countries that BMS requests
patent applications be filed, BMS will be responsible for, and for the cost of,
filing, prosecuting and maintaining same. With respect to any patent rights
filed, prosecuted or maintained under this section 10.3, each patent
application, office action, response to office action, request for terminal
disclaimer, request for reissue or reexamination of any patent issuing from
such application, and any other papers or documents received or proposed to be
filed in connection therewith shall be provided by the party responsible for
the filing, request or response to the other party sufficiently prior to the
filing of such application, response or request to allow for review and comment
by the other party. Where BMS has not requested a patent application to be
filed in a give country, the parties shall discuss patent filing, prosecution,
defense and maintenance costs from time to time and shall agree in advance
before the expenditure of monies for special transactions (such as the cost of
interference, litigation and appeals).
10.4 Copyrights. For purposes of Articles 5, 7, 8, and 10 hereof,
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.
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11.0 REPRESENTATIONS, WARRANTIES AND COVENANTS
11.1 Mutual Representations and Warranties. The parties make the
following representations and warranties to each other:
11.1.1 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.
11.1.2 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 and grant the rights extended by it 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.
11.1.3 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.
11.2 Aurora Technology Representations and Warranties. Aurora
represents and warrants to BMS as of the Effective Date the following:
11.2.1 The Patent Rights and Copyrights listed on Exhibit 11.2.1 list
all Aurora Patent Rights and registered Copyrights owned or Controlled
by Aurora, and such Exhibits specify the jurisdiction(s) by or in
which each such right has been issued or registered or in which an
application for such issuance or registration has been filed,
including respective registration or application numbers. To the best
knowledge of the current officers and directors of Aurora, the issued
claims under any issued Patent Rights are valid and in full force and
effect.
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11.2.2 Except as disclosed on Exhibit 11.2.1, (i) to the best
knowledge of Aurora's current officers and directors, the use of the
Aurora Technology and any Aurora Patent Rights and Copyrights in the
exercise by BMS of the rights granted to it hereunder will not
infringe upon any patent rights, copyrights or other proprietary
rights of any Affiliate of Aurora or of any Third Party; (ii) Aurora
has no knowledge of any infringement by any Third Party of any of the
Aurora Patent Rights or Copyrights; and (iii) Aurora and each of its
Affiliates are not subject to any outstanding order, judgment or
decree of any court or administrative agency, and each has not entered
into any stipulation or agreement, restricting (A) its use of the
Aurora Patent Rights, Aurora Technology or Copyrights in connection
with the manufacture, development, use, or licensing of the UHTSS, the
Reporter System or any Reporters, any Exclusive Screens, or any
Nonexclusive Screen as contemplated by this Agreement, provided,
however, that the foregoing shall not be construed as encompassing any
representation or warranty either that the receptors or other targets
selected by BMS for use in an Exclusive or Nonexclusive Screen will or
will not infringe the rights of any Third Party pertaining to such
receptors or that assay systems and screening systems components and
methods, instruments, equipment, software, reagents, and other
components (but excluding Reporters covered by Aurora's Patent Rights
or Aurora's Technology) provided by BMS for use in conjunction with
the UHTSS, any Exclusive Screen, or any Nonexclusive Screen will or
will not infringe the rights of any Third Party, or (B) Aurora's
ability to perform its obligations or to grant rights in accordance
with this Agreement.
11.2.3 There is no action, suit or proceeding pending or, to the
knowledge of its current officers and directors, that has been
threatened in writing by any Third Party against Aurora or its
Affiliates which, if adversely determined, would have a material
adverse effect upon Aurora's ability to grant to BMS, or upon the
ability of BMS to fully utilize or exercise, the Aurora Patent Rights,
Copyrights, or Technology licensed or sublicensed to BMS hereunder.
To the knowledge of Aurora's current officers and directors, there is
no action, suit or proceeding pending or that has been threatened in
writing by any Third Party against a Third Party Licensor which, if
adversely determined, would have a material adverse effect upon
Aurora's ability to grant to BMS, or upon the ability of BMS to fully
utilize or exercise, the Aurora Patent Rights, Copyrights, or
Technology licensed or sublicensed to BMS hereunder.
11.2.4 The Aurora Technology and Aurora Patent Rights and Copyrights
licensed or sublicensed by Aurora to BMS pursuant to this Agreement
have not been obtained by Aurora or its Affiliates in violation of any
contractual or fiduciary obligation to which Aurora or any of its
Affiliates or any of its or their employees or, to the best knowledge
of the current officers and directors of Aurora, its or their
contractors or predecessors-in-interest (and the employees of such
contractors or predecessors-in-interests), is or was a party, or by
misappropriation of the trade secrets of any Third Party, and the
exercise by BMS or its Affiliates of the rights licensed or
sublicensed by Aurora to it hereunder will not violate any such
contractual or fiduciary obligation owed by any of the foregoing
persons or entities to any such Third Party or render BMS liable for
the payment of any
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royalty attributable to or arising out of any such contractual or
fiduciary obligation or any such misappropriation.
11.2.5 Aurora has not (i) licensed to any Third Party any Aurora
Technology or Aurora Patent Rights to allow such Third Party to make
or use, nor agreed to supply to a Third Party or otherwise permit a
Third Party to use, any Reporters in substantially the same manner as
BMS is entitled is to use such Reporters hereunder, and (ii) has not
entered into any agreement with a Third Party, which, if such
agreement were entered into after this Agreement is signed, would be
an agreement falling within the scope of section 2.1.10.
11.2.6 Exhibit 11.2.6 lists all agreements as of the Effective Date
between Aurora and a Third Party involving the license to Aurora of
any inventions, patent rights, copyrights, Reporters, tangible
materials, UHTSS components, or Technology to Aurora that are included
within the Aurora Patent Rights, Copyrights and Technology, or that
will be used or incorporated in the development and/or supply of any
Reporters or any UHTSS components, the termination or breach of which
would have a material adverse effect upon (i) Aurora's ability to
grant to BMS, or upon BMS' ability to fully utilize or exercise, in
accordance with this Agreement the Aurora Patent Rights, Copyrights,
or Technology licensed or sublicensed to BMS hereunder or (ii)
Aurora's ability to develop, make or supply, or upon the ability of
BMS to obtain or fully utilize, the UHTSS (or its material components)
or the Reporters in accordance with the terms of this Agreement, or
(iii) Aurora's ability to develop and supply to BMS any Exclusive
Screen or BMS' ability to develop, make and use any Nonexclusive
Screen and to conduct NSP activities in accordance with this Agreement
(all such agreements, referred to collectively, as the "Aurora-Third
Party Contracts" and all such Third Parties referred to as
"Aurora-Third Party Contractees"); provided, however, that the
foregoing shall not be construed as encompassing any representation or
warranty that the receptors or other targets selected by BMS for use
in an Exclusive or Nonexclusive Screen will infringe the rights of any
Third Party pertaining to such receptors or other targets or that
assay systems and screening systems components and methods,
instruments, equipment, software, reagents, and other components (but
excluding Reporters covered by Aurora's Patent Rights or Aurora's
Technology) provided by BMS for use in conjunction with the UHTSS, any
Exclusive Screen, or any Nonexclusive Screen will or will not infringe
the rights of any Third Party.
11.2.7 Except as disclosed on Exhibit 11.2.6: (i) to the best
knowledge of Aurora, each of the Aurora-Third Party Contracts is valid
and enforceable by Aurora in accordance with its terms, except where
(A) such enforcement may be subject to bankruptcy, insolvency,
reorganization, moratorium, or other similar laws now or hereafter in
effect relating to creditors' rights generally, and (B) the remedy of
specific performance and other forms of equitable relief may be
subject to equitable defenses and to the discretion of the court or
arbitrator before which any proceeding therefor may be brought; (ii)
neither Aurora nor, to the best knowledge of Aurora any such Third
Party Contractee, is in default in the performance, observance, or
fulfillment of any material obligation,
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covenant or condition contained therein, and (iii) to the best
knowledge of Aurora, no event has occurred which (with or without the
giving of notice or lapse of time or both) would constitute a default
thereunder entitling such Third Party to terminate same.
11.3 Aurora Indemnification. Aurora hereby agrees to indemnify,
defend and hold BMS and its Affiliates, and their respective officers,
directors, employees, consultants, contractors, sublicensees (where approved by
Aurora), and agents (collectively, the "BMS Indemnitees") harmless from and
against any and all damages or other amounts payable to a Third Party, as well
as any reasonable attorneys' fees and costs of litigation incurred by such
Indemnitee as to such Claim until Aurora has acknowledged that it will provide
indemnification hereunder with respect to such Claim as provided below,
(collectively, "Damages") resulting from claims, suits, proceedings or causes
of action ("Claims") brought by a Third Party directed to: *** except to the
extent such Damages are attributable to: (i) a violation of law, regulation or
court order by any BMS Indemnitee, (ii) a violation of any contractual or
fiduciary duty owed by any BMS indemnittee to a Third Party, (iii) the
misappropriation by any such BMS Indemnitee of the trade secrets of any Third
Party, (iv) any negligent act or omission or intentional misconduct of any BMS
Indemnitee, (v) any breach of this Agreement or misrepresentation contained
herein by a BMS Indemnitee, (vi) *** (vii) ***
***CONFIDENTIAL TREATMENT REQUESTED
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***
It shall be a condition precedent to a BMS Indemnitee's right to seek
indemnification under this Section 11.3 that it shall inform Aurora of a Claim
as soon as reasonably practicable after it receives notice of the Claim; shall,
if Aurora acknowledges that such Claim falls within the scope of its
indemnification obligations hereunder, permit Aurora to assume direction and
control of the defense, litigation, settlement, appeal or other disposition of
the Claim (including the right to settle the claim solely for monetary
consideration), provided that Aurora shall seek the prior written consent (not
to be unreasonably withheld or delayed) of any such BMS Indemnitee as to any
settlement which would restrict any such BMS Indemnitee's continuing business
operations or reduce the scope of or adversely affect the rights licensed or
sublicensed to BMS under this Agreement; and shall provide reasonable
cooperation (including without limitation providing access to and copies of
pertinent records and making available for testimony relevant individuals
subject to its control) as requested by Aurora in the defense of the Claim.
Subject to the foregoing, Aurora shall provide attorneys reasonably acceptable
to each BMS Indemnitee to defend against any such Claim and will reimburse BMS
for out-of-pocket costs incurred by it at Aurora's request. Subject to the
foregoing, a BMS Indemnitee may participate in any proceedings involving such
Claim using attorneys of its/his/her choice and at its/his/her expense.
11.4 BMS Product Indemnification. BMS agrees to indemnify, defend
and hold Aurora, its Affiliates, and its and their officers, directors,
employees, consultants, contractors, and agents (collectively, the "Aurora
Indemnitees") harmless from and against any and all damages or other amounts
payable to a Third Party, as well as any reasonable attorneys' fees and costs of
litigation incurred by such Aurora Indemnitee as to such Claim until BMS has
acknowledged that it will provide indemnification hereunder with respect to such
Claim as provided below, (collectively, "Damages") resulting from claims, suits,
proceedings or causes of action ("Claims") brought by such Third Party based on
any *** except to the extent such Damages are attributable to: (i) a violation
of law by any Aurora Indemnitee, (ii) a violation of any contractual or
fiduciary duty owed by any Aurora Indemnitee to a Third Party, (iii) the
misappropriation by any such Aurora Indemnitee of the trade secrets of any Third
Party, (iv) any negligent or wrongful act or omission of any Aurora Indemnitee,
(v) *** or (vi) any breach of this Agreement by an Aurora Indemnitee or
misrepresentation contained herein.
It shall be a condition precedent to an Aurora Indemnitee's right to
seek indemnification under this Section 11.4 that it shall inform BMS of a Claim
as soon as reasonably practicable after it receives notice of the Claim; shall,
if BMS acknowledges that such Claim falls within the scope of its
indemnification obligations hereunder, permit BMS to assume direction and
control of the defense, litigation, settlement, appeal or other disposition of
the Claim (including the right to settle the claim solely for monetary
consideration), and provided that BMS shall seek the prior written consent (not
to be unreasonably withheld or delayed) of any such Aurora Indemnitee as to any
settlement which would restrict such Aurora's Indemnitee's continuing business
operations or reduce the scope of or adversely affect the Aurora Patent Rights
licensed or sublicensed to BMS under this Agreement; and shall fully cooperate
(including providing access to and copies of pertinent records and making
available for testimony relevant individuals subject to its control) as
requested by, and at the expense of, BMS in the defense of the Claim. Subject to
the foregoing, BMS shall provide attorneys reasonably acceptable to Aurora to
defend against any such Claim for which BMS has acknowledged its indemnification
obligation hereunder. Subject to the foregoing, an Aurora Indemnitee may
participate in any proceedings involving such Claim using attorneys of
its/his/her choice and at its/his/her expense.
11.5 Enforcement of Aurora-Third Party Contracts. Aurora agrees
that it will not breach, will make all required payments, and will use all
reasonable efforts to maintain and keep in force and effect, all Aurora Third
Party Contracts (including exclusive license rights under the UC License)
*** CONFIDENTIAL TREATMENT REQUESTED
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as the same may exist from time to time during the term of this Agreement.
Notwithstanding the foregoing, Aurora may, following consultation with BMS and
giving due consideration to any comments provided by BMS, terminate any such
Aurora Third Party Contracts where the termination of same would not have a
material adverse effect upon (i) the grant to BMS of, or upon BMS' ability to
fully utilize or exercise, in accordance with this Agreement the Aurora Patent
Rights, Copyrights, or Technology then licensed or sublicensed to BMS hereunder,
or (ii) Aurora's ability to develop, make or supply, or upon the ability of BMS
to obtain or fully utilize, the UHTSS (or its material components) or the
Reporters in accordance with the terms of this Agreement, or (iii) Aurora's
ability to develop and supply to BMS any Exclusive Screen or BMS' ability to
develop, make and use any Nonexclusive Screen, to use any Exclusive Screen, and
to conduct ESP and NSP activities in accordance with this Agreement.
12.0 TERM AND TERMINATION
12.1 Term. The term of this Agreement will begin on the Effective
Date and shall continue until terminated in accordance with the provisions of
Sections 12.2-12.4 hereof.
12.2 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 BMS. 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.
12.3 Termination for Cause.
12.3.1 Termination by BMS. In the event that Aurora materially
breaches any of the rights granted to it, or any of the duties or
obligations imposed on Aurora, under this Agreement, and such breach
is not cured within 90 days following receipt of written notice from
BMS to Aurora specifying such breach, then:
12.3.1.1 BMS may terminate this Agreement and/or seek
any damages and remedies available to it at law or in
equity, or
12.3.1.2 BMS may seek any damages and remedies
available to it at law or in equity, and/or may, without
affecting or altering Aurora's continuing obligations under
this Agreement and without affecting or altering any rights
granted to or remedies available to BMS under this Agreement:
12.3.1.2.1 terminate any rights licensed by BMS to
Aurora under this Agreement, in whole or in part,
and/or
12.3.1.2.2 if BMS desires that Aurora cease further
development of the UHTSS, terminate all remaining payments
(other than payments already due and owing as of the date
of termination) under section 2.1.5, except that all bonus
payments that BMS might otherwise be required to make to
Aurora under section 2.1.5.6 shall be void and of no
effect.
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12.3.2 Termination by Aurora. In the event that BMS materially
breaches any of the rights granted to it, or any of the material
duties and obligations imposed on it, under this Agreement, and such
breach is not cured within 90 days following receipt of written notice
from Aurora to BMS specifying such breach, then, subject to sections
12.3.2.3 and 12.3.3, Aurora may:
12.3.2.1 pursue any remedies and damages available to
it at law or in equity and/or
12.3.2.2 terminate this Agreement and/or any rights
licensed or sublicensed to BMS hereunder; provided, that in
such event:
12.3.2.2.1 BMS shall not be required to make any further
payments under any provision of this Agreement, other than
those payments that had accrued as of the date of such
termination or which are payable under section 12.3.2.2.2
below; and
12.3.2.2.2 such termination shall not restrict or
preclude BMS and its Affiliates in any way from continuing
to research, develop, manufacture, use and commercialize
any Hits, Lead Compounds, Approved PLP Compounds, Covered
Products and products, provided, that no such termination
shall relieve BMS of, and BMS shall remain obligated to
pay to Aurora, such milestone payments and royalties as
BMS would otherwise have paid to Aurora under article 3
hereof with respect to Hits and Lead Compounds identified
prior to the date of termination; and
12.3.2.2.3 BMS may exercise the same rights as it would
be entitled to exercise under sections 2.1.7.4 and 2.1.7.5
as would apply if BMS had withdrawn from development of
the UHTSS without cause.
12.3.2.3 Notwithstanding the foregoing, where a breach
by BMS entitling Aurora to terminate under this section 12.3.2
involves a breach pertaining to (i) the use of the Reporters,
a Nonexclusive Screen or Exclusive Screen by BMS or the Aurora
Reporter System Patent Rights or Aurora Reporter System
Technology rights licensed or sublicensed to BMS hereunder for
use in connection therewith, but not a breach by BMS involving
(ii) the use or development of the UHTSS or the Aurora UHTSS
Patent Rights or Aurora UHTSS Technology licensed or
sublicensed to BMS hereunder, or vice-versa as the case may
be, then termination of this Agreement and any rights
hereunder shall be limited to those rights granted by Aurora
under this Agreement that pertain to (i) or (ii), as the case
may be, that pertain to such breach but not the rights and
obligations of the parties under (i) or (ii), as the case may
be, that do not pertain to such breach.
12.3.3 In the event that the breach by BMS involves a milestone
payment or royalty payment under any of sections 3.1.8 or 3.2 hereof,
Aurora shall not be entitled to terminate this Agreement or any rights
licensed or sublicensed to BMS hereunder with
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respect thereto pursuant to section 12.3.2.2 or otherwise, but shall
be entitled to exercise any and all other rights that it may exercise
under article 12.3.2.1.
12.4 Effect of Bankruptcy. If a party becomes insolvent or admits
in writing its inability to pay its debts as they mature or applies for or
consents to the appointment of a receiver or trustee for any of its properties;
or a receiver or trustee is appointed for such party or a substantial portion
of its properties and is not discharged within ninety (90) days; or any
bankruptcy, reorganization, debt arrangement, dissolution, liquidation or other
proceeding under any bankruptcy or insolvency law is instituted by or against
such party and, if instituted against such party, it is consented to by such
party or remains undismissed for ninety (90) days, then
12.4.1 Notwithstanding any such event, such party shall remain
obligated to fulfill its obligations and covenants hereunder, and any
failure to do so or other breach hereunder shall entitle the other
party to terminate this Agreement in accordance with section 12.3
hereof; and
12.4.2 It is the parties desire that, if any such receiver, trustee,
judge, arbitrator or other adjudicator conducting or controlling such
proceedings on behalf of a party should hold that any obligations,
covenants or duties of such party hereunder should be suspended or
declared unenforceable, in whole or in part, then the rights and
benefits granted to the other party hereunder shall remain in full
force and effect, and that any such obligations, covenants or duties
shall be reformed by such receiver, trustee, judge, arbitrator or
other adjudicator so as to be enforceable to the maximum extent
permitted by applicable law and to permit any suspension to be lifted
at the earliest practicable time.
12.5 Effect of Expiration or Termination.
12.5.1 Expiration or termination of this Agreement shall not relieve
the parties of any obligation accruing prior to such expiration or
termination. The obligations and rights of the parties under sections
and articles 2.1.7, 2.1.8, 2.1.12.2, 3.1.7, 3.2.5, 3.3, 3.4, 5.2, 6.4,
7, 8, 9.1, 9.2, 9.3, 10, 11.3, 11.4, 12.5.2, 12.5.3, 13. and 14
hereof, 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 sections
5.1 and 5.3 hereof shall terminate and be of no further force or
effect whatsoever upon any termination of this Agreement.
12.5.2 Nothing in this Agreement (including this article 12) is
intended to prevent or restrict, or shall be construed as preventing
or restricting, BMS and its Affiliates from using, following any
termination of this Agreement pursuant to this Article 12, for any
internal research and drug development purpose (i) any Reporters or
other reagents supplied to BMS by Aurora prior to the applicable
termination date or (ii) any Aurora Technology disclosed to it by
Aurora prior to the applicable termination date where the manufacture
or use of such Technology is not covered by a Valid Claim under the
Aurora Patent Rights or by any Aurora Copyrights. It is further
understood that nothing in this
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section 12.5.2 alters any confidentiality obligations of the parties
under this Agreement with respect to disclosure to Third Parties.
12.5.3 Nothing in this Agreement is intended to prevent or restrict,
or shall be construed as preventing or restricting, BMS and its
Affiliates from researching, developing, making, using or selling any
compound, drug or other product for the prevention, diagnosis or
treatment of diseases and disorders following any termination of this
Agreement, where the research, development, manufacture, use or sale
of such compound, drug or other product is not covered by a Valid
Claim under the Aurora Patent Rights and/or restricted by section
2.1.7.5 hereof.
13.0 DISPUTE RESOLUTION
13.1 Disputes. 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 or thereunder. It
is the objective of the parties to establish procedures to facilitate the
resolution of disputes arising under or in connection with this Agreement,
including without limitation all financial disputes and any disputes as to the
validity, construction, performance, default, or breach hereof, in an expedient
manner by mutual cooperation and without resort to litigation. To accomplish
this objective, but subject to section 13.2.3 below, the parties agree to
follow the procedures set forth in this Article 13 if and when such disputes
arise under or in connection with this Agreement between the parties.
13.2 Dispute Resolution Procedures.
13.2.1 If the parties cannot resolve the dispute within 30 days of
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 below or their successors, for attempted
resolution by good faith negotiations within 30 days after such notice
is received. Said designated officers are as follows:
For BMS: President of the BMS Pharmaceutical Research Institute
For Aurora: President
13.2.2 Any such 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 13.2.1 shall be resolved by final
and binding arbitration conducted in Wilmington, Delaware under the
then current Licensing Agreement Arbitration Rules of the American
Arbitration Association ("AAA"). The arbitration shall be conducted
by one arbitrator who is knowledgeable in the subject matter which is
at issue in the dispute and who is selected by mutual agreement of the
parties or, failing such agreement, shall be selected according to the
AAA rules. In conducting the arbitration, the arbitrator 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
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permit such discovery he/she/they deem necessary to permit an
equitable resolution of the dispute), and shall 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, or replevin of property. The
arbitrator shall also be able to award actual, general or
consequential damages, but shall not award any other form of damage
(e.g., 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.
13.2.3 Notwithstanding anything to the contrary in this Article 13,
either party may seek immediate injunctive or other interim relief
from any court of competent jurisdiction with respect to any breach of
articles 5 or 9 hereof, or otherwise to enforce and protect the patent
rights, copyrights, trademarks, or other intellectual property rights
owned or controlled by a party or its Affiliates.
14.0 MISCELLANEOUS
14.1 Assignment. Notwithstanding any provision of this Agreement
to the contrary, either party may assign any of its rights or obligations under
this Agreement in any country to any Affiliates; provided, however, that such
assignment shall not relieve the assigning party of its responsibilities for
performance of its obligations under this Agreement.
Subject to section 9.4, either party may also 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 with the prior written consent of the other
party. Subject to Section 9.4, 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; provided, that in the event of such merger, consolidation or similar
reorganization or in the event of a sale of substantially all of the assets of
a party, no intellectual property rights of the acquiring or merging
corporation shall be included in the technology licensed hereunder.
14.2 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.
14.3 Force Majeure. Subject to section 2.1.4 or as otherwise
expressly provided in a section hereunder, 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, 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
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takes all reasonable steps to mitigate any such delay in performance hereunder
and any damages that may be incurred by the other party thereby.
14.4 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 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 BMS, to: ▇▇▇▇▇▇▇-▇▇▇▇▇ Squibb Pharmaceutical
Research Institute
▇.▇. ▇▇▇ ▇▇▇▇
▇▇▇▇▇ ▇▇▇ & Province Line Road
Princeton, NJ 08543-4000
Attention: Senior Vice President, Exploratory
Research & Drug Discovery
If to Aurora, to: Aurora Biosciences Corporation
▇▇▇▇▇ ▇▇. ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: President
provided that if such notice or communication relates to an amendment
to this Agreement or to any notice pursuant to section 12 hereof, a
copy shall also be sent to:
If to BMS, to the attention of the Vice President & Senior
Counsel, Pharmaceutical Research Institute and Worldwide
Strategic Business Planning, at the address set forth above
for BMS.
If to Aurora, to the attention of ___________________________
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.
14.5 Governing Law. This Agreement shall be governed by the laws
of the State of Delaware, as such laws are applied to contracts entered into
and to be performed within such state.
14.6 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 of any other of such party's rights or remedies
provided in this Agreement.
14.7 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
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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.
14.8 Independent Contractors. It is expressly agreed that Aurora
and BMS shall be independent contractors and that the relationship between the
two parties shall not constitute a partnership, joint venture relationship, or
agency of any kind. Neither Aurora nor BMS 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 party to do so.
14.9 Counterparts. This Agreement may be executed in two or
more counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
14.10 Entire Agreement. This Agreement between the parties of even
date herewith set forth all of the covenants, promises, agreements, warranties,
representations, conditions and understandings between the parties hereto, and
supersede and terminate 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.
14.11 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.
14.12 Construction. References to Articles or Sections hereunder
shall be deemed to include the sections and subsections thereunder. The use of
the word "including" shall be deemed to mean "including but not limited to".
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives.
▇▇▇▇▇▇▇-▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ BIOSCIENCES
PHARMACEUTICAL RESEARCH CORPORATION
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INSTITUTE
By: By:
------------------------------- ------------------------------------
Title: Title:
---------------------------- ---------------------------------
Date: November ___, 1996 Date: November ___, 1996
----------------------------- ----------------------------------
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LIST OF EXHIBITS
Exhibit 1.1 - UHTSS Description and Specifications
Exhibit 1.2 - Description of Existing Reporters
Exhibit 3.1.1 - Terms and Conditions Pertaining to Use of BMS
Materials in the Development of ESP Screens
Exhibit 4.1 - Service and Support
Exhibit 7.2.4 - ***
Exhibit 11.2.1 - List of Aurora Patent Rights and ***
Exhibit 11.2.6 - List of Material Third Party Licensor Agreements
*** CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT 1.1
* * *
PROPOSED PERFORMANCE SPECIFICATIONS
*** CONFIDENTIAL TREATMENT REQUESTED
67
Exhibit 1.2
DESCRIPTION OF EXISTING REPORTERS
***
***CONFIDENTIAL TREATMENT REQUESTED
68
***
***CONFIDENTIAL TREATMENT REQUESTED
69
***
*** CONFIDENTIAL TREATMENT REQUESTED
70
***
*** CONFIDENTIAL TREATMENT REQUESTED
71
***
***CONFIDENTIAL TREATMENT REQUESTED
72
***
***CONFIDENTIAL TREATMENT REQUESTED
73
EXHIBIT 7.2.4
***
*** CONFIDENTIAL TREATMENT REQUESTED
74
EXHIBIT 11.2.1
***
*** CONFIDENTIAL TREATMENT REQUESTED
75
EXHIBIT 11.2.6
***
*** CONFIDENTIAL TREATMENT REQUESTED