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EXHIBIT 10.31
DRUG DISCOVERY COLLABORATION AGREEMENT
BETWEEN
ARRAY BIOPHARMA CORPORATION
AND
ICOS CORPORATION
JULY 31, 2000
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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THIS DRUG DISCOVERY COLLABORATION AGREEMENT (the "Agreement")
is entered into and made effective as of July 31, 2000 (the "Effective Date"),
by and between ARRAY BIOPHARMA INC, a Delaware corporation having its principal
offices located at ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("Array") and ICOS
CORPORATION, a Delaware corporation having its principal offices located at
▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇.▇., ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("ICOS").
WHEREAS, Array has skills, expertise and experience in
multi-parallel synthesis and purification methods, developing and preparing
chemical libraries suitable for high throughput biological screening assays and
medicinal chemistry;
WHEREAS, as of the Effective Date, ICOS and its Affiliates
have developed and own, among other things, certain know how and intellectual
property rights, assays, methods and lead compounds that may be potential drug
candidates directed to PDE4, [ * ] and the Optimization Targets, (as defined
below) (collectively "ICOS Technology");
WHEREAS, ARRAY and ICOS have entered that certain Lead
Optimization Agreement ("LO Agreement") dated December 22, 1998, for the
optimization of, among other things, such lead compounds directed against PDE4;
WHEREAS, ARRAY and ICOS have entered into that certain Cell
Cycle Checkpoint Optimization Agreement ("C3 Agreement) dated April 6, 1999, for
the optimization of, among other things, such lead compounds directed against
[ * ];
WHEREAS, ARRAY and ICOS desire to consolidate the optimization
programs initiated pursuant to the LO and C3 Agreements with an optimization
program against the Optimization Targets;
WHEREAS, ARRAY and ICOS have mutually agreed to cancel and
terminate the LO Agreement and the C3 Agreement in their entirety and to release
each other from all obligations, accrued or outstanding, under the LO Agreement
and the C3 Agreement, all under the terms and conditions as set forth herein
below;
NOW, THEREFORE, the Parties agree as follows:
1. DEFINITIONS
1.1 "Active Target" means an Optimization Target for which
ICOS has provided reasonable written notice to Array as de scribed in Section
3.1 of this Agreement, that such Optimization Target shall be included in the
Optimization Program and for which an Optimization Plan shall be produced. For
the purpose of this definition reasonable notice shall be [ * ] days
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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unless the parties have agreed to a shorter period of notice either by written
agreement or by the Parties' performance.
1.2 "Affiliate" of a Party means any corporation or other
business entity controlled by, controlling or under common control with, such
Party. For this purpose "control" shall mean direct or indirect beneficial
ownership of more than fifty percent (50%) of the voting securities or income
interest in such corporation or other business, or if not meeting the preceding
requirements, any company owned or controlled by or owning or controlling such
Party at the maximum control or ownership right permitted in the country where
such company exists.
1.3 "Array Compound" means a chemical compound that is
proprietary to Array, or whose use or manufacture is proprietary to Array.
1.4 "Array Patents" means all Patents which claim any Array
Technology and that are Controlled by Array during the Exclusivity Period, but
shall exclude any claims of an Optimization Patent. For purposes of this
definition, "controlled" shall mean the ability to grant a license or sublicense
as provided for in Section 8.1 below.
1.5 "Array Technology" means certain know-how, intellectual
property or patents (i) developed, licensed and/or owned by Array, prior to the
Effective Date or (ii) developed licensed and/or owned by Array outside of the
Optimization Program and used by Array in the Optimization Program, or (iii)
developed during the Optimization Program and not having solely specific or
novel application to the Optimization Program (i.e. such know-how, intellectual
property, or patents having application outside of the development, manufacture,
use, sale, or importation of Optimization Compounds or Products). Array
Technology shall not include Daughter Libraries or Optimization Compounds.
1.6 "Confidential Information" shall mean:
(a) all information and materials received by
either Party from the other Party pursuant
to this Agreement which is confidential
under Section 10;
(b) all information and materials received by
either Party from the other Party in
connection with the Optimization Program
during the Optimization Period, including,
without limitation, structures of lead
compounds provided by ICOS to Array, to the
extent the same is confidential under
Section 10; and
(c) the financial terms of this Agreement and
the identity of the Optimization Targets, to
the extent the same are confidential under
Section 10.
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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1.7 "Daughter Libraries" shall mean the compound libraries
which are designed and synthesized as a part of the Optimization Program by
Array.
1.8 "Derivative" shall mean a compound (or compounds) which
has resulted from chemical synthesis by ICOS in connection with the Optimization
Program or which is derived from an Optimization Compound.
1.9 "Exclusivity Period" means the Optimization Period for any
Active Target plus [ * ].
1.10 "Field" means all indications for any Optimization Target
against which an Optimization Compound or Products may be directed.
1.11 "FTE" shall mean a full-time equivalent employee of Array
having the skills, support, services and resources to fulfill Array's
obligations under this Agreement. For purposes of this Agreement, the FTEs shall
include synthetic and analytical chemists and upon approval by ICOS may also
include Array employees with the skills required to facilitate a structure based
drug design program.
1.12 "Milestone Compound" shall have the meaning set forth in
Section 7.2.
1.13 "Optimization Compound(s)" means a compound (or
compounds) which is (i) synthesized by Array following the Effective Date in the
course of performing the Optimization Program for the purpose of screening
against an Active Target, (ii) was synthesized by Array, for the purpose of
screening against an Active Target, in the course of performing lead compound
optimization under the LO agreement, or (iii) was synthesized by Array, for the
purpose of screening against an Active Target, in the course of performing lead
compound optimization under the C3 Agreement.
1.14 "Optimization Patent" means a Patent claiming and
disclosing the composition of an Optimization Compound or the manufacture
thereof, for which Array has made an inventive contribution to the subject
invention in the course of performing the Optimization Program, as determined
under U.S. Patent law. Notwithstanding the foregoing, Optimization Patents shall
only include Patents to the extent the same (i) is entitled to a first effective
filing date for priority purposes (i.e., for priority purposes under 35 USC, or
the corresponding laws of the country in which such Patent is filed) after the
Effective Date and (ii) claims subject matter reduced to practice (either actual
or constructive) prior to the date [ * ] after the end of the Optimization
Period.
1.15 "Optimization Period" means the term of the Optimization
Program as provided in Section 9 of this Agreement.
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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1.16 "Optimization Plan" means the Optimization Plan for each
Optimization Target to be prepared by Array approved and accepted by ICOS, which
describes in agreed detail the research activities to be performed by Array for
each Active Target.
1.17 "Optimization Program" means the research and activities
for each Optimization Target to be conducted under this Agreement as described
in the Optimization Plan and as set forth in Sections 3.1 and 3.2 of this
Agreement.
1.18 "Optimization Target" means any [ * ] biomolecular
entities described in Appendix B, at execution of this Agreement, or as
substituted by mutual written agreement of the Parties, and unless otherwise
specified may include Active Targets, and shall in each case be selected from
Appendix B.
1.19 "Project Team" shall have the meaning set forth in
Section 3.1(c).
1.20 "Party" means Array or ICOS, as the case may be,
including their respective permitted assigns of this Agreement under Section 13
below.
1.21 "Patent" means (a) valid and enforceable U.S. or non U.S.
Patent, and any non-U.S. equivalent, including any extension (including
Supplemental Protection Certificates), registration, confirmation, reissue,
continuation, divisionals, continuation-in-part, reexamination or renewal
thereof, or (b) pending applications for any of the foregoing.
1.22 "Product(s)" means any product containing an Optimization
Compound or Derivative with such compound as the active ingredient or one of the
active ingredients, which is the subject of one or more claims under an
Optimization Patent and which is granted regulatory approval by the governing
health regulatory authority of the applicable country for marketing in the
Field.
1.23 "Restored Active Target" means an Active Target which has
ceased to be an Active Target either by Agreement of the Parties or by operation
of the Optimization Program, and which, by reasonable written notice has been
again designated as an Active Target. For the purposes of this definition
reasonable notice shall be [ * ] unless the Parties have agreed to a shorter
period of notice either by written Agreement or by parties performance.
1.24 "Territory" means the entire world.
1.25 "Third Party" means an entity other than Array or ICOS or
their respective Affiliates.
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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2. CANCELLATION AND TERMINATION
2.1 Cancellation and Termination. As of the Effective Date of
this Agreement, Array and ICOS hereby irrevocably cancel and terminate the LO
Agreement in its entirety. Array and ICOS also hereby irrevocably cancel and
terminate the C3 Agreement in its entirety Except as expressly set forth herein,
(i) all rights and obligations of Array and ICOS under the LO Agreement and
under the C3 Agreement are hereby canceled and terminated, (ii) all rights and
licenses granted under the LO Agreement or the C3 Agreement shall revert to the
party granting such right or license, and (iii) no terms and conditions of the
LO Agreement or the C3 Agreement shall survive. For the avoidance of doubt, it
is however intended by the parties that this consolidated Agreement shall give
the same rights, obligations and duties to the parties for PDE4 and [ * ] as
under the Lead Optimization Agreement and C3 Agreement respectively.
2.2 Settlement and Release. Each party hereto agrees that this
Agreement represents settlement in full of all outstanding obligations owed to
the other party under the LO Agreement and the C3 Agreement. Array and ICOS, on
behalf of themselves, and their respective heirs, executors, officers,
directors, employees, investors, shareholders, administrators, predecessor and
successor corporations, and assigns, hereby fully and forever release each other
and their respective heirs, executors, officers, directors, employees,
investors, shareholders, administrators, predecessor and successor corporations,
and assigns, of and from any claim, duty, obligation or cause of action relating
to any matters of any kind, whether presently known or unknown, suspected or
unsuspected, that any of them may possess arising from any omissions, acts or
facts that have occurred up until and including the Effective Date of this
Agreement.
3. OPTIMIZATION PROGRAM
3.1 Array Responsibilities. Array shall with due diligence
provide the following services and resources to ICOS and conduct the following
activities in accordance with the Optimization Plan:
(a) During the Optimization Period, Array shall
(i) review data and information regarding
Active Targets and lead compounds provided
by ICOS; (ii) based on such data and
information design Daughter Libraries and
optimize the lead compounds supplied by ICOS
and (iii) synthesize compounds as provided
in Section 6.3 below;
(b) During the Optimization Period, Array shall
keep ICOS regularly informed of its
activities performed in connection with the
Optimization Program, including, without
limitation, providing ICOS with data and
information (and, upon ICOS's written
request, reasonable quantities of samples
pursuant to Section 6.3) regarding the
status of Array's work on Optimization
Compounds under the Optimization Plan;
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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(c) Subject to Sections 3.3, 4 and 7, and at all
times during the Optimization Period, Array
shall assign a project team ("Project
Team"), to conduct Array's activities under
the Optimization Plan. The initial Project
Team shall consist of [ * ] Array FTEs,
unless changed according to Section 7.1(b).
3.2 ICOS Responsibilities. ICOS shall provide the following
resources to Array and conduct the following activities under the Optimization
Program as more fully described in the Optimization Plan:
(a) ICOS shall make payment to Array under the
Optimization Program as set forth in Section
7, provide screening, biological and
structural data and information including
leads and/or screening hits and assay
methods relating to Optimization Compounds
to Array necessary for Array to perform its
duties under this Agreement, and will assume
scientific, financial and administrative
responsibility for screening and biological
support activities, drug development and
regulatory filings during and after the term
of the Optimization Program on the terms set
forth below.
(b) During the Optimization Period, ICOS shall
provide Array with: (i) lead compounds
and/or structures of such lead compounds for
Active Targets, and (ii) data and
information regarding Optimization Compounds
and Active Target assays developed by ICOS
under the Optimization Program.
3.3 Conduct of Optimization Program. The Parties hereby agree
that the Optimization Program shall be carried out in accordance with the
Optimization Plan and this Agreement, as amended from time to time. ICOS shall
review the Optimization Plan on a regular and an ongoing basis and may make
written changes to the Optimization Plan so long as such changes are mutually
agreed to in writing by Array.
3.4 Third Party Licenses. Each Party shall be solely
responsible for any Third Party license fees required to perform its obligations
under this Agreement.
4. TARGETS
4.1 Active Target. The initial Active Targets shall be as
specified in Appendix B or as specified by reasonable written notice from ICOS
to Array. There shall be no more than [ * ] Active Targets at any one time
unless Array and ICOS mutually agree in writing to having more than [ * ]
Optimization Targets simultaneously designated as Active Targets together with
additional terms and conditions, if any.
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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4.2 Restored Active Target. Any Optimization Target which has
ceased to be an Active Target due to the later designation of another
Optimization Target as an Active Target, may always be restored to the status of
an additional Active Target at ICOS's request provided that no more than [ * ]
targets may be designated as active targets at any one time, as described in 4.1
above.
4.3 Disclosure of Active Target Information. ICOS agrees not
to disclose to Array any Confidential Information relating to any Optimization
Targets, or lead compounds therefor until such Optimization Targets are
designated as the Active Targets in accordance with Section 4.1 above.
5. EXCLUSIVITY
5.1 Active Target Exclusivity. During the Optimization Period,
Array shall not knowingly work on or provide information regarding any
Optimization Target with or to any Third Parties; thereafter during the
Exclusivity Period, Array shall not knowingly work on or provide information
regarding any Optimization Target which has been designated as an Active Target
during the Optimization Period with or to any Third Parties, in each case except
(a) as provided for in Section 11.2 with regard to any Public Statements, and
(b) with respect to any Third Parties who are collaborators or proposed
collaborators of Array, Array shall have the right, consistent with its
corporate policy (but without identifying any Optimization Target), to notify
any such Third Party of its decision and/or inability to work on such
Optimization Target with that Third Party. For the purposes of this Section 5.1,
"knowingly" shall mean actual knowledge or imputed knowledge that the corporate
entity or its directors and officers knew or should have known.
5.2 Optimization Compounds. Optimization Compounds, their
structures and best methods of synthesis and manufacture developed during the
Optimization Program shall be made available only to ICOS for research or
application to any Optimization Target, within or outside the Collaboration,
during the Optimization Period, and Array shall not work on or provide
information regarding such Optimization Compound to any Third Party, except to
take any steps necessary to protect ICOS's exclusivity hereunder.
5.3 Duration of Exclusivity for Optimization Targets.
Notwithstanding any other provision of this Agreement, it is understood and
agreed that once an Optimization Program has been initiated for any Active
Target Array's obligations under Section 5.1 shall continue until ICOS has
released Array from the effect of this Section 5.3 by written notice or the end
of the Exclusivity Period, whichever occurs first.
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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6. OPTIMIZATION COMPOUNDS
6.1 Intellectual Property Rights; Vesting and Transfer to
ICOS. Subject to Section 6.2, and except as set forth in this Section 6.1, ICOS
shall have exclusive rights in all Optimization Patents and the subject matter
contained therein and all intellectual property and know-how (whether or not
patentable) embodied in Optimization Compounds and Products and methods
specifically directed to the manufacture of Optimization Compounds and methods
of use of Products, in each case resulting from the Optimization Program; to the
extent possible such exclusive rights shall be achieved by Array assigning its
interest, if any, in such Patents and intellectual property and know-how to ICOS
and where such assignment is not legally possible ICOS shall receive an
exclusive license or sublicense to the maximum extent of Array's rights. ICOS
shall file, maintain and prosecute all Patents arising out of, or comprising,
the rights and interests granted in this Section 6.1 and Array shall do
everything reasonably necessary to assist ICOS in filing such Patents. Prior to
the filing of any such Patent applications or during the pendency of such
applications, Array shall assign to ICOS or its designee all intellectual
property rights it may have, to the extent granted in this Section 6.1, in the
Optimization Patents and the subject matter disclosed and claimed therein which
are necessary for the development and commercialization of such Optimization
Compounds by ICOS or its designee. Notwithstanding anything in this Section 6.1
to the contrary, nothing in this Section 6.1, or the operation thereof, shall be
deemed to grant to ICOS any rights in or to any Array Technology.
6.2 Structural Information. Array shall not disclose the
structure of any Optimization Compound, Derivative or Product (to the extent
such structure is not publicly available) to any Third Party nor identify such
structure, if publicly available, with its collaboration with ICOS without
ICOS's written permission, unless required to do so by law, in which case Array
shall promptly notify ICOS of such required disclosure and will use its
reasonable efforts to assist ICOS to secure confidential treatment of such
structure prior to any disclosure.
6.3 Supply of Optimization Compounds. Aliquots of at least
[ * ] of any Optimization Compound that has been synthesized will be prepared
and given to ICOS together with their structures and all known and developed
best methods of synthesis and manufacture. Array shall replenish once during the
Exclusivity Period that amount upon ICOS's reasonable request, and ICOS shall
reimburse Array for any cost thereof not otherwise reimbursed under Section 6
below for any reasonably requested replenishment in excess of a total of [ * ]
milligrams. To the extent that Optimization Compounds are not available in a
timely and sufficient quantity to allow the earliest start of necessary large
scale preclinical or other studies such unavailability of Optimization Compounds
shall not be cited as a lack of due diligence provided that the Parties have
made commercially reasonable attempts, and continue such attempts, during the
Exclusivity Period to provide such unavailable Optimization Compounds in
required quantities in an expedient manner.
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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7. CONSIDERATION
7.1 Optimization Program Funding.
(a) Research Support for Project Team. At all
times during the Optimization Period, ICOS
shall make payments to Array for direct
research support for its Project Team, which
shall initially consist of [ * ] of Array,
unless determined otherwise under Section
7.1(b). The total amount payable per FTE
shall be U.S. [ * ] per FTE per annum ("FTE
Rate"). The FTE Rate for any Calendar Year
after [ * ] shall be adjusted annually at
each anniversary of this Agreement by ICOS
in accordance with the annual percentage
change in Consumer Price Index for all Urban
Consumers as published by the United States
Department of Labor, Bureau of Labor
Statistics. All payments for direct research
support shall be paid by ICOS to Array,
quarterly in advance, and adjusted as
necessary in subsequent quarters, of such
amounts as are equal to the product of (i)
the number of FTEs [ * ] FTEs unless
determined otherwise under Section 7.1(b))
allocated to the Optimization Program for
the calendar quarter to which each such
payment applies, multiplied by (ii) U.S. [ *
] (i.e., the quarterly amount per FTE on the
basis of U.S. [ * ] per annum).
(b) Expansion of Project Team. ICOS may request
that Array expand its Project Team during
the Optimization Period in order to match
the work on Active Targets. In such event,
the Parties shall promptly confer as to the
appropriate number of FTEs to constitute the
Project Team, as mutually agreed, to be paid
as specified in Section 7.1(a).
7.2 Milestone Payments. Within [ * ] days of the occurrence of
a development milestone triggered by the activities of ICOS or its Affiliates,
or Third Parties acting under authority from ICOS or its Affiliates, ICOS shall
pay Array the related milestone payment in U.S. dollars as set forth in Appendix
A. Such payments shall apply once only to each milestone reached by any
Optimization Compound or Derivative for each Optimization Target. Such milestone
payments shall be due with respect to each Optimization Compound or Derivative
to meet such milestone (each a "Milestone Compound"); [ * ].
7.3 Taxes. All income and other taxes levied or accruing to
Array under this Agreement shall be paid by Array, including taxes levied
thereon as income to Array. If provision is made in law or regulation for
withholding, such tax shall be deducted from the payment made by ICOS to the
proper taxing authority and a receipt of payment of the tax secured and promptly
delivered to Array. Each Party agrees to assist the other Party reasonably in
claiming exemption
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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from such deductions or withholdings under any double taxation or similar
agreement or treaty from time to time in force.
7.4 Title to, and ownership of, tangible property. Without
limiting ICOS' rights under Sections 6.1 and 8 of this Agreement, it is
understood and agreed that each Party retains title to any tangible property
delivered to the other Party under this Agreement.
8. LICENSE GRANTS; OUTLICENSE
8.1 Array License Grant to ICOS. Subject to the terms and
conditions of this Agreement, Array hereby grants to ICOS a non-exclusive,
royalty-free, fully paid up except as to payment of respective milestones under
Section 7.2, worldwide license, with the right to sublicense to use Array
Technology and under the Array Patents, in each case solely to make, have made,
use, have used, sell, have sold, import and export Optimization Compounds or
Products in the Field.
8.2 ICOS Sublicense. ICOS shall have the right to transfer,
assign or sublicense to a Third Party ICOS's rights under Sections 6.1 and 8.1
above or Optimization Patents covering the Products.
8.3 No Other Licenses. No right or license is granted to ICOS
hereunder under technology or intellectual property of Array, by implication,
estoppel or otherwise, except as specifically and expressly granted under
Sections 6.1, 6.2 and 8.1 of this Agreement. No right or license is granted to
ARRAY hereunder in any Optimization Compound or Derivative, including compounds
in Daughter Libraries.
9. TERM AND TERMINATION OF THE AGREEMENT
9.1 Term, Renewals and Extensions. The term of this Agreement
and Optimization Program shall commence upon the Effective Date of this
Agreement, and unless earlier terminated as provided in this Agreement, shall
expire on the second anniversary thereafter provided, however, that the term
shall be automatically extended for a further one (1) year unless either party
provides written notice sixty (60) days or more prior to such second anniversary
canceling such extension. Unless terminated early pursuant to Section 9.2 below,
the Optimization Periods may be individually renewed for additional periods upon
mutual agreement of the Parties; provided that neither Party shall be obligated
to approve any such renewal.
9.2 Termination by ICOS. ICOS may terminate this Agreement
effective at any time after the first anniversary of the Effective Date, in its
sole discretion, upon ninety (90) days prior written notice.
9.3 Termination by ICOS or Array. If either Party materially
breaches this Agreement and fails to remedy that breach within ninety (90) days
of receiving written notice
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
12
thereof from the other Party, or makes an assignment of substantially all of its
assets for the benefit of its creditors or goes into liquidation, insolvency,
bankruptcy, receivership or reorganization proceedings, whether voluntarily or
compulsorily which is not dismissed by a court of competent jurisdiction within
ninety (90) days, then the other Party may at any time, by notice in writing or
by telefax, terminate this Agreement and/or any and/or all of the Optimization
Programs. Within ninety (90) days following termination for the Optimization
Program and/or research related to any Optimization Target under this Agreement,
Array shall prepare a detailed, final written report to ICOS, and provide any
remaining supply of Optimization Compounds in synthesis to date, for each Target
or part of the Optimization Program being terminated.
9.4 Effect of Termination on Licensees. In the event of any
termination of this Agreement pursuant to Section 9.2 where such termination
shall not have been caused by the action or inaction on the part of any
respective licensee of ICOS or Array, or by any breach by such licensee of its
obligations under its license from ICOS or Array, as appropriate, such
termination of this Agreement shall be without prejudice to the rights of each
non-breaching licensee and such licensee shall be deemed to be a direct licensee
hereunder; provided that such licensee agrees in writing to be bound by the
applicable provisions of this Agreement, including, without limitation, the
payment of milestone payments pursuant to Section 7.2.
10. CONFIDENTIAL INFORMATION
10.1 Nondisclosure. During the term of this Agreement and for
a period of [ * ] after termination or expiration thereof, each Party (the
"Receiving Party") will maintain all Confidential Information received from the
other Party (the "Disclosing Party") in trust and confidence and will not
disclose any such Confidential Information to any Third Party or use any such
Confidential Information for any purpose except (i) as expressly authorized by
this Agreement, (ii) as required by law or court order, after as much advance
notice as is practical to the Disclosing Party, (iii) to its consultants,
subcontractors, agents or financing sources who need to know and who are bound
by equivalent written confidentiality obligations. The Receiving Party will use
at least the same standard of care as it uses to protect proprietary or
confidential information of its own to ensure that its Affiliates, employees,
agents, consultants and other representatives do not disclose or make any
unauthorized use of the Confidential Information of the Disclosing Party. The
Receiving Party will promptly notify the Disclosing Party upon discovery of any
unauthorized use or disclosure of the Disclosing Party's Confidential
Information
10.2 Exceptions. Confidential Information shall not include
any information which the Receiving Party can prove by competent evidence: (a)
is now, or hereafter becomes, through no act or failure to act on the part of
the Receiving Party, generally known or available; (b) is known by the Receiving
Party at the time of receiving such information, as evidenced by its written
records; (c) is hereafter disclosed to the Receiving Party by a Third Party, as
a matter of right and without restriction on disclosure; (d) is independently
developed by the Receiving Party without the aid, application or use of
Confidential Information of the Disclosing Party; or (e) is the
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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subject of a written permission to disclose provided by the Disclosing Party.
11. PUBLICATIONS AND PUBLIC STATEMENTS
11.1 Publications. ICOS and Array will treat matters of
authorship of scientific abstracts, manuscripts or publications in a proper
collaborative spirit, giving credit where it is due. Without affecting
obligations under Section 10 above, Array shall not publish any information with
respect to Optimization Compounds or Derivatives during the Exclusivity Period
without the prior written permission of ICOS. ICOS agrees to provide to Array,
on a Confidential Basis, any publication, except patent prosecution documents
with respect to Optimization Compounds at least [ * ] prior to submission for
publication during the Exclusivity Period.
11.2 Public Statements. Except as the Parties otherwise agree
in writing, neither Array nor ICOS shall release any information to any Third
Party with respect to the existence of this Agreement. Once the Parties issue a
press release, which has been agreed to in writing before release by both
Parties, each Party may use the substance of such press release without prior
notice.
12. INDEMNIFICATION
12.1 Product Liability. ICOS hereby agrees to save, defend and
hold Array and its officers, directors, employees, consultants, and agents
harmless from and against any and all suits, claims, actions, demands,
liabilities, expenses and losses, including reasonable legal expenses and
attorneys' fees ("Losses") resulting directly or indirectly from any claim
alleging physical injury or death or otherwise arising out of the
administration, utilization and/or ingestion of Optimization Compounds or
Products manufactured, used or sold by or under the authority of ICOS, its
Affiliates or licensees except to the extent such Losses result from the
negligence (whether active, passive or imputed), breach of this Agreement or
willful misconduct of Array.
12.2 Procedures. If Array (the "Indemnified Party") seeks
indemnification under this Section 12, it shall inform ICOS (the "Indemnifying
Party") of a claim as soon as reasonably practicable after it receives notice of
the claim, shall permit the Indemnifying Party to assume direction and control
of the defense of the claim (including the right to settle any claim brought
against the Indemnified Party upon prior written consent, which shall not be
unreasonably withheld), and shall give reasonable cooperation (at the expense of
the Indemnifying Party) in the defense of such claim.
13. ASSIGNABILITY
13.1 Generally. This Agreement may not be assigned by either
Party without the prior written consent of the other Party, and which shall not
to be unreasonably withheld; provided, however, that either Party may assign
this Agreement, in whole or in part, to an Affiliate or to a
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
14
successor of a Party in connection with the merger, consolidation or sale of all
or substantially all of such Party's assets or that portion of its business
pertaining to the subject matter of this Agreement (and upon doing so will
promptly notify the other Party in writing) (each such transaction being
referred to as an "Acquisition"); provided that the assigning Party remains
fully liable as obligated hereunder.
13.2 Technology of Acquirer. In the event of an Acquisition,
it is understood and agreed that no intellectual property rights or technology
of the acquirer shall be included within the subject matter licensed hereunder,
to the extent that such intellectual property or technology was owned or
controlled by the acquirer as of the date of the Acquisition, or was created or
obtained after the date of the Acquisition other than by employees of Array in
the course of performing the Optimization Program.
14. DISPUTE RESOLUTION PROCEDURES
14.1 Senior Executives Discussions. If a dispute arises
between Array and ICOS or with respect to matters other than the management of
the Optimization Program, either during or after the Optimization Period, such
dispute will be referred to the appropriate senior management in the area of the
dispute. If such senior management are unable to resolve such dispute, such
dispute will be referred to the Executive Vice President of Operations of ICOS
and the Chief Operating Officer of Array.
14.2 Injunctive Relief. Nothing contained in this Section 14
or any other provisions of this Agreement shall be construed to limit or
preclude a Party from bringing any action in any court of competent jurisdiction
for injunctive or other relief or to compel the other Party to comply with its
obligations hereunder.
15. NOTICES
Any notice required or permitted to be given hereunder shall
be deemed sufficient if sent by facsimile letter or overnight courier, or
delivered by hand to ICOS or Array at the respective addresses and facsimile
numbers as set forth below or at such other address and facsimile number as
either Party hereto may designate. If sent by facsimile letter, notice shall be
deemed given when the transmission is completed if the sender has a confirmed
transmission report. If a confirmed transmission report does not exist, then the
notice will be deemed given when the notice is actually received by the person
to whom it is sent. If delivered by overnight courier, notice shall be deemed
given when it has been signed for. If delivered by hand, notice shall be deemed
given when received.
if to Array, to: Array BioPharma Corporation
▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Fax number: (▇▇▇) ▇▇▇-▇▇▇▇
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
15
if to ICOS, to: ICOS Corporation
▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇.▇.
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: Legal Department
Fax number: (▇▇▇) ▇▇▇-▇▇▇▇
16. SURVIVAL
The provisions of Sections 5.1, 5.3, 6.1, 6.2, 6.3, 7.2, 7.4, 8.1, 8.2,
8.3, 9.4, 10, 11, 12, 13, and 16 shall survive the expiration and any
termination of this Agreement. In addition, Section 1 shall survive the
expiration or any termination of this Agreement to the extent necessary to
define terms in any other surviving Section. Notwithstanding the foregoing if
Array terminates this Agreement under Section 9.3 then Section 8.1 shall not
survive such termination by Array.
17. ADDITIONAL TERMS
17.1 Entire Agreement. This Agreement constitutes the entire
understanding between the Parties with respect to the subject matter hereto and
supersedes and replaces all previous negotiations, understandings,
representations, writings and contract provisions and rights relating hereof.
17.2 Amendment; No Waiver. No provision of this Agreement may be
amended except to the extent expressly allowed herein, revoked or waived except
by a writing signed and delivered by an authorized officer of each Party. Any
waiver on the part of either Party of any breach or any right or interest
hereunder shall not imply the waiver of any subsequent breach or waiver of any
other right or interest.
17.3 Validity. The invalidity or unenforceability of any provision of
this Agreement shall not affect the validity or enforceability of any other
provision of this Agreement, each of which shall remain in full force and
effect.
17.4 Headings. The descriptive headings and numberings are inserted for
convenience of reference only and are not intended to be part of or to affect
the meaning of or interpretation of this Agreement.
17.5 Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, and all of which
together shall be deemed to be one and the same instrument.
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
16
17.6 Governing Law. This Agreement shall be governed by and construed
and enforced in accordance with the laws of the State of Washington, without
regard to conflicts of laws and principles.
17.7 Further Assurances. At any time and from time to time after the
Effective Date, the Parties shall each do, execute, acknowledge and deliver, and
cause to be done, executed, acknowledged or delivered, all such further acts,
transfers, conveyances, or assignments as may be reasonably required to carry
out the transactions contemplated by this Agreement.
18. REPRESENTATIONS AND WARRANTIES
18.1 Authorization. All action on the part of each of Array, ICOS and
their respective officers, and directors necessary for the authorization,
execution and delivery of this Agreement and the performance of all obligations
of Array and ICOS, respectively, hereunder has been taken.
18.2 Rights to Intellectual Property. Each Party warrants that it has
the power to grant all of the rights granted and make such required assignments,
and to assume all of the obligations required, under this Agreement.
18.3 Disclaimer of Warranties. EXCEPT AS OTHERWISE EXPLICITLY PROVIDED
IN THIS SECTION 18, ARRAY AND ICOS EXPRESSLY DISCLAIM ANY WARRANTIES OR
CONDITIONS, EXPRESS, IMPLIED, STATUTORY OR OTHERWISE, WITH RESPECT TO THE
OPTIMIZATION PROGRAM, OPTIMIZATION COMPOUNDS, DERIVATIVES, PRODUCTS, ARRAY
TECHNOLOGY, ARRAY PATENTS OR OPTIMIZATION PATENTS, INCLUDING, WITHOUT
LIMITATION, ANY WARRANTY OF MERCHANTABILITY, NON-INFRINGEMENT, OR FITNESS FOR A
PARTICULAR PURPOSE.
IN WITNESS WHEREOF, the parties have executed this Agreement to be effective as
of the Effective Date.
By: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇ By: /s/ W. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, Ph.D.
------------------------------- -------------------------------
▇▇▇▇▇ ▇▇▇▇▇▇▇, Ph.▇. ▇. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, Ph.D.
V. P. of Business Development Vice President and Scientific
and Chief Operating Officer Director
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
17
APPENDIX A
Milestones and Payments
(in U.S. Dollars)
Milestone payments shall be due only once per Milestone Compound upon the first
occurrence of each milestone by such Milestone Compound.
Milestones related to PDE4 and DNA-PK Milestone Payment
[ * ]
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
18
APPENDIX A
Milestones and Payments
(in U.S. Dollars)
Milestone payments shall be due only once per Milestone Compound upon the first
occurrence of each milestone by such Milestone Compound.
Milestones related to all other Compounds Milestone Payment
[ * ]
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
▇▇
▇▇▇▇▇▇▇▇ ▇
Optimization Targets
[ * ]
[ * ] = Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.