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EXHIBIT 10.28
COLLABORATIVE RESEARCH AND LICENSE AGREEMENT
BETWEEN
MERCK & CO., INC.
AND
AURORA BIOSCIENCES CORPORATION
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TABLE OF CONTENTS
1 Definitions..............................................................3
2 System Development and Delivery..........................................9
3 Collaborative Screen Program............................................15
4 Service and Support.....................................................22
5 Intellectual Property Rights............................................22
6 Payments of Royalties, Accounting for Royalties, and Records............24
7 Intellectual Property Enforcement and Defense of Infringement Claims....25
8 Treatment of Confidential Information; Publicity........................26
9 Patent Prosecution and Copyrights.......................................29
10 Warranties and Indemnification..........................................29
11 Term, Partial Performance and Termination...............................31
12 Miscellaneous...........................................................32
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COLLABORATIVE RESEARCH AND LICENSE AGREEMENT
THIS AGREEMENT is entered into as of December 18, 1997 (the "Effective Date") by
and between MERCK & CO., INC., a New Jersey corporation, having offices at ▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇ ("Merck"), and 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 used therein and has rights
to certain intellectual property related thereto; and
WHEREAS, Aurora has the scientific expertise and capacity to undertake the
activities described below; and
WHEREAS, Merck has the capability to undertake screening and development of drug
products for the prevention and treatment of human and animal diseases and
disorders.
NOW, THEREFORE, in consideration of the foregoing premises and of the covenants,
representations and agreements set forth below, the parties agree as follows:
1 DEFINITIONS
As used herein, the following terms shall have the following meanings:
1.1 "Affiliate" means any corporation, association or other entity,
which directly or indirectly controls, is controlled by or is under
common control with a party. As used in this definition, the term
control shall mean direct or indirect beneficial ownership of more
than *** of the voting or equity interest in such corporation or
other business entity.
1.2 "Agreement" means this agreement, together with all appendices,
exhibits and schedules hereto, and as the same may be amended or
supplemented from time to time hereafter by a written agreement duly
executed by authorized representatives of each party hereto.
1.3 "Annual Work Plan" means ***.
1.4 "Aurora Copyrights" means all ***.
1.5 "Aurora Patent Rights" means ***.
1.6 "Aurora Reporter" means ***.
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1.7 "Aurora Reporter System" means the ***.
1.8 "Aurora Reporter System Technology" means all ***.
1.9 "Aurora Reporter System Patent Rights" means ***.
1.10 "Aurora Screening Program" shall have the meaning set forth in
Section 3.1.1.7.
1.11 "Aurora Technology" means ***.
1.12 "Aurora System Patent Rights" means ***.
1.13 "Aurora System Technology" means ***.
1.14 "Aurora VIPR Copyrights" means ***.
1.15 "Aurora VIPR Patent Rights" means ***.
1.16 "Aurora VIPR Technology" means ***.
1.17 "Authorized Affiliates" means the affiliates of Merck listed on
Exhibit 1.15.
1.18 "Automated Plate Replication System" or "APRS" shall have the
meaning set forth in Section 2.1.2.1.2, the features of which are
set forth in Exhibit 1.1 hereto.
1.19 "Collaborative Screen" means ***.
1.20 "Collaborative Screen Program" shall have the meanings set forth in
Section 3.1.
1.21 "Collaborative Period" shall have the meaning set forth in Section
3.1
1.22 "Combination Product" means a ***.
1.23 "Compound" means ***.
1.24 "Compound Supply" has the meaning set forth in Section 3.1.1.8.
1.25 "Confidential Information" means all information, data, and
Materials received by either party from the other party pursuant to
this Agreement and all information, data, and Materials developed in
the course of the collaboration and/or activities of the parties under
this Agreement, including, without limitation, Technology of each
party, subject to the exceptions set forth in Section 8.1.3.
1.26 "Control" or "Controlled" means, with respect to tangible and
intellectual property, possession by a party of the ability to grant a
license or sublicense in accordance with the
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terms of this Agreement, and without violating the terms of any
agreement by such party with any Third Party.
1.27 "CSP Steering Committee" shall have the meaning set forth in Section
3.1.1.1.
1.28 "CSP Work Plan" shall have the meaning set forth in Section 3.1.1.4.
1.29 "Deliverables" has the meaning set forth in Section 2.1.2.1 hereof.
1.30 "Derivative" means ***.
1.31 "Development Candidate" means ***.
1.32 "Effective Date" means December 18, 1997.
1.33 "FDA" shall mean ***.
1.34 "FTE" shall have the meaning set forth in Section 3.1.1.5.
1.35 "Hit" means ***.
1.36 "IND" means an ***.
1.37 "Internal Research" means ***.
1.38 "Invention" means any new and useful idea or discovery, including
without limitation a new and useful process, machine, manufacture, or
composition of matter, or improvement thereto, whether or not
patentable.
1.39 "Know-How" means information and data that is not generally known to
the public, including, but not limited to : Inventions, designs,
concepts, algorithms, formulae, software, techniques, practices,
processes, methods, knowledge, skill, experience, expertise and
technical information.
1.40 "Licensee" means a Third Party to whom Merck grants a license,
sublicense or other right to manufacture, use, sell, offer for sale,
distribute and/or import one or more Products or Development
Candidates.
1.41 "Licensor" means a Third Party that grants Merck a license,
sublicense or other right to manufacture, use, sell, offer for sale,
distribute and/or import one or more Products or Development
Candidates.
1.42 "Manufacturing Cost" means ***.
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1.43 "Materials" means ***.
1.44 "Merck Copyrights" means ***.
1.45 "Merck Patent Rights" means ***.
1.46 "Merck Technology" means Technology owned or Controlled by Merck
which is necessary for the performance of Aurora's obligations in the
Collaborative Screen Program.
1.47 "Module 1" has the meaning set forth in Section 2.1.2.1.1 hereof.
1.48 "Module 2" has the meaning set forth in Section 2.1.2.1.4 hereof.
1.49 "Module 3" has the meaning set forth in Section 2.1.2.1.5 hereof.
1.50 "NDA" means a ***.
1.51 "Net Sales" shall mean, with respect to Product(s), *** less the
following items:
i) trade, and/or, quantity discounts, cash discounts,
bad debt, sales and excise taxes, freight or other
transportation costs, insurance charges,
additional special packaging, duties, tariffs, and
other governmental charges (other than and an
income tax), actually paid or allowed;
ii) the standard inventory cost of devices used for
dispensing or administering the Product(s) which
accompany the Product(s) as they are sold;
iii) credits, charge-back rebates, reimbursements or
similar payments granted or given to wholesalers
and other distributors, buying groups, health care
insurance carriers, governmental agencies and
other institutions, but only to the extent
actually allowed;
iv) credits or allowances for rejection or return of
Products previously sold; and
v) payment or rebates actually paid in connection
with government sponsored health insurance
programs.
Such amounts shall be determined from the books and records of Merck
maintained in accordance with GAAP consistently applied.
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***
1.52 "Optional Deliverable" shall have the meaning set forth in Section
2.1.5.5.
1.53 "Optional Module 1" shall have the meaning set forth in Section
2.1.5.1.
1.54 "Optional Module 2" shall have the meaning set forth in Section
2.1.5.2.
1.55 "Optional SDS" shall have the meaning set forth in Section 2.1.5.3.
1.56 "Optional VIPR" shall have the meaning set forth in Section 2.1.5.4.
1.57 "Patent Rights" means all ***.
1.58 "Product" means ***.
1.59 "Royalty Term" means, in the case of any Product and as to any
country, the period of time commencing on the first commercial sale for
use or consumption of such Product in such country and ending upon the
date that is *** after the date of such first commercial sale for use or
consumption of such Product in such country.
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1.60 "Screen Development Stage" shall have the meaning set forth in
Section 2.1.2.1.3, the features of which are set forth in Exhibit 1.1
hereto.
1.61 "Selection Procedure" of molecular targets shall have the meaning
set forth in Section 3.1.1.2 hereof.
1.62 ***.
1.63 "Specifications" of the System or the VIPR shall have the meaning
set forth in Section 2.1 hereof.
1.64 "Subsidiary" means any corporation, association or other entity in
which a party directly or indirectly beneficially owns 100% of the
voting or equity interest.
1.65 "System" means ***.
1.66 "System Steering Committee" shall have the meaning set forth in
Section 2.1.1.
1.67 "System Target Delivery Date" has the meaning set forth in Section
2.1.2.1 hereof.
1.68 "Technology" means Materials and Know-How.
1.69 "Term" means the period beginning on the Effective Date and
terminating in accordance with this Agreement, as set forth in Article
11.
1.70 "Third Party" means any entity other than Aurora, its Subsidiaries
or its Affiliates or Merck, its Subsidiaries or its Authorized
Affiliates.
1.71 "Tracking Record" shall have the meaning set forth in Section
6.4.2.1 hereof.
1.72 "Valid Claim" means: (a) an issued claim under an issued patent
within the Patent Rights, which has not (i) expired or been canceled,
(ii) been declared invalid by an unreversed and unappealable decision of
a court or other appropriate body of competent jurisdiction, (iii) been
admitted to be invalid or unenforceable through reissue, disclaimer or
otherwise, and/or (iv) been abandoned; or (b) a claim included in a
pending patent application within the Patent Rights that is being
actively prosecuted in accordance with this Agreement and which has not
been (i) canceled, (ii) withdrawn from consideration, (iii) finally
determined to be unallowable by the applicable governmental authority
for whatever reason (and from which no appeal is or can be taken), or
(iv) abandoned.
1.73 "Validation" has the meaning set forth in Section 2.1.3 and 2.1.5.6.
1.74 "VIPR" shall have the meaning set forth in Section 2.1.2.2, the
features of which are set forth in Exhibit 1.3 hereto.
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2 SYSTEM DEVELOPMENT AND DELIVERY
2.1 System Development. Aurora will use reasonable efforts to design,
develop, supply, and install the System and VIPRs within the time
periods and in accordance with the terms hereof. The Specifications for
the Deliverables and VIPRs to be provided by Aurora are set forth in
Exhibit 1.1 and Exhibit 1.3 hereto, respectively (the "Specifications").
2.1.1 Project Management. The parties shall establish a steering
committee to coordinate the development of the System and to perform
testing for the Validation of the Deliverables and VIPR(s) (the
"System Steering Committee"). The System Steering Committee will be
established not later than thirty (30) days after the Effective Date.
The System Steering Committee will consist of three (3)
representatives designated by Merck and three (3) representatives
designated by Aurora. Each representative will have one vote
resulting in each party having exactly three votes. Decisions by the
System Steering Committee shall be made by unanimous vote, requiring
a quorum of four (4) voting representatives. The System Steering
Committee will meet at least four times per year at mutually agreed
upon times and locations using mutually agreed upon meeting formats,
including tele- and video-conferencing provided, that the members of
the System Steering Committee shall use reasonable efforts to
schedule such meetings at least thirty (30) calendar days prior to
each payment date for the quarterly payments required pursuant to
Section 2.1.4.7. The System Steering Committee shall maintain
accurate records to document the discussions and decisions at each
meeting. Meeting minutes or summaries shall be prepared in accordance
with procedures established by the System Steering Committee at its
first meeting and shall be distributed to all members of the System
Steering Committee for review and approval. Aurora will also submit
progress reports to the System Steering Committee at such time(s) as
the System Steering Committee may reasonably request and no less than
twice per year. Each party shall bear its own expenses in connection
with attendance by its representatives at meetings of the System
Steering Committee.
2.1.2 Development and Delivery. During the term of this Agreement, Merck
representatives shall have the right, upon reasonable advance written
notice to Aurora, to visit the facilities where the System is being
developed. During the System development, Aurora shall provide Merck
with information regarding recommended facility specifications for
housing and operating the System and shall share information
regarding recommended operating conditions.
2.1.2.1 Development. Aurora will use reasonable efforts to develop
and install the deliverables for the System ("Deliverables")
according to the estimated delivery dates set forth below (each such
date referred to as a "System Target Delivery Date"):
2.1.2.1.1 Module 1 - Automated Storage and Retrieval - ***;
2.1.2.1.2 One Automated Plate Replication System ("APRS") - ***;
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2.1.2.1.3 One Screen Development Stage - ***(Screen Development
Stage);
2.1.2.1.4 Module 2 - Liquid handling, Screening Formats,
Detection and Three (3) Screen Development Stages - ***; and
2.1.2.1.5 Module 3 - Informatics, Integration, and Control System
("Module 3") - ***.
2.1.2.2 VIPR Development. In addition, Aurora will use reasonable
efforts to develop the voltage ion probe reader, as further
described in Exhibit 1.3 (the "VIPR") and ***. If such
installation includes integration of a VIPR into an existing
screening system, the parties will negotiate in good faith for
the terms of such integration.
2.1.2.3 Shipment, and Installation. Aurora will be responsible for
the appropriate packaging of all Deliverables and VIPRs to be
delivered to Merck. Aurora will provide Merck with written notice
at least thirty (30) days before the anticipated date that each
Deliverable or VIPR will be ready for shipping, and Merck will be
responsible for arranging the shipment and for paying associated
delivery charges, including insurance and sales tax, if
applicable. Aurora will provide Merck with written notice of
actual shipment for accounting purposes pursuant to Section
2.1.4. Aurora will begin installation of each Deliverable and
VIPR within fifteen (15) working days of delivery to Merck and
will use reasonable efforts to complete such installation
promptly thereafter and Merck will use reasonable efforts to
prepare in advance for such installation and to facilitate such
installation after delivery. Merck will provide Aurora with
written notice at least thirty (30) days before such installation
of any expected delays or problems with the installation site at
Merck. Aurora will install all Deliverables and VIPRs, unless
otherwise mutually agreed to in writing. Aurora will be
responsible for its employees or contractors performing such
installation including salaries, benefits and workers
compensation. Aurora shall provide Merck with timely notice of
any anticipated change in a System Target Delivery Date. Merck
may agree, but shall not be required, to accept delivery of a
Deliverable earlier than the relevant System Target Delivery
Date. Merck shall provide Aurora with timely notice of any
anticipated change in being able to accommodate the delivery of a
Deliverable on a System Target Delivery Date. If Merck is unable
to take of delivery of a Deliverable within sixty (60) days after
the relevant System Target Delivery Date, the System Steering
Committee may Validate such Deliverable pursuant to Section 2.1.3
at Aurora instead of at Merck; provided, however, that the
Deliverable will also be Validated by the System Steering
Committee at Merck and Merck will be entitled to the cure
provisions pursuant to Section 2.1.3 (i), (ii) or (iii).
2.1.3 Validation Testing. All Deliverables and VIPRs shall be subject to
testing by or for Aurora and by or for Merck. Within thirty days (30)
day after installation of a Deliverable or VIPR, the System Steering
Committee shall perform tests necessary to determine that a
Deliverable or a VIPR conforms to the Specifications for such
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Deliverable or VIPR ("Validation"). Upon such Validation Aurora shall
give Merck written notice. If the members of the System Steering
Committee, acting in good faith, cannot agree that a Deliverable or
VIPR satisfies the criteria for Validation within such thirty (30)
day period, Aurora shall have an additional sixty (60) days to cure
such Deliverable's or VIPR's inability to satisfy the Specifications.
If Aurora is unable to cure such Deliverable or VIPR within sixty
(60) days of such notice, Merck may elect to:
(i) accept such Deliverable or VIPR and such Deliverable or
VIPR will be considered Validated;
(ii) permit Aurora to cure such Deliverable's or VIPR's
inability to satisfy the Specifications during an
additional cure period determined by Merck; or
(iii) request, and receive from Aurora, a refund of the full
amount paid for such Deliverable (not including any
payments made as an entry payment paid under Section
2.1.4.1 or an ongoing quarterly payment paid under
Section 2.1.4.7) within thirty (30) days of the end of
such cure period(s).
If Merck elects to receive a refund pursuant to Section 2.1.3 (iii),
Merck must ship such Deliverable or VIPR to Aurora in substantially
its original condition within thirty (30) days of such election, and
Aurora shall bear all delivery risks and charges, including insurance
and sales tax, if applicable. Merck's rights under this Section 2.1.3
are in addition to it rights pursuant to Section 11.3.2 hereof.
2.1.4 Payments relating to System Deliverables and VIPR. Merck will make
the following payments to Aurora in consideration of the development,
delivery, and Validation of Deliverables and VIPRs:
2.1.4.1 An entry payment of *** shall be made within thirty (30)
business days after the Effective Date.
2.1.4.2 Module 1: A payment of *** shall be made in two equal
installments: one installment of *** within thirty (30) days
after *** and one installment of ***.
2.1.4.3 For the APRS of Section 2.1.2.1.2, a payment ***shall be made
in two equal installments: one installment of *** and one
installment of ***.
2.1.4.4 For the Screen Development Stage of Section 2.1.2.1.3, a
payment *** shall be made in two equal installments: one
installment of *** and one installment of ***.
2.1.4.5 Module 2: A payment *** shall be made in two equal
installments: one installment of ***.2.1.4 and one installment
***.
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2.1.4.6 Module 3: A payment of *** shall be made in two equal
installments: one installment of *** and one installment of ***.
2.1.4.7 As partial consideration for the design and development of
the System, Merck shall make payments to Aurora of *** each, the
first payment to be made on or before the first January 15, April
15, July 15 or October 15 occurring after the Effective Date and
then every three months thereafter, which payments shall cease
upon the first to occur of (i) the date that represents *** or
(ii) the date of Validation of Module 3 pursuant to Section
2.1.3; provided, however, that (subject to Section 2.1.2.3) if
the Validation of Module 3 pursuant to Section 2.1.3 occurs prior
to the date that Merck shall have ***hereunder, Merck shall pay
to Aurora in a lump sum, within thirty (30) days after Validation
of Module 3 pursuant to Section 2.1.3 those payments remaining
that would raise the total number of payments made under this
Section 2.1.4.7 by Merck ***.
2.1.4.8 For each VIPR developed pursuant to Section 2.1.2.2 a payment
of *** shall be made in two equal installments: one installment
of ***.
2.1.5 Option for Additional Deliverables.
2.1.5.1 Optional Module 1: Merck will have the option to obtain an
additional Module 1, *** during the period from the Effective
Date to twelve (12) months after the Validation of Module 1
pursuant to Section 2.1.3. To exercise such option, Merck will
notify Aurora in writing within such option period and pay to
Aurora *** within thirty (30) days of such election. The option
may be extended to the period from the Effective Date to twenty
*** during such initial option period. Such amount is
non-refundable ***. Aurora will use reasonable efforts to develop
and install the Optional Module 1 according to the estimated
delivery date of twelve (12) months after the receipt by Aurora
of the total payment for Optional Module 1. The parties
understand that the delivery date may vary due to availability of
supplies and components. Aurora will promptly notify Merck of
changes in the estimated delivery date for the Optional Module 1.
The Optional Module 1 shall be subject to Validation testing in
accordance with Section 2.1.5.6.
2.1.5.2 Optional Module 2: Merck will have the option to obtain an
additional Module 2 (the "Optional Module 2***. To exercise such
option, Merck will notify Aurora in writing within such option
period and pay to Aurora *** within thirty (30) days of such
election. Aurora will use reasonable efforts to develop and
install each Optional Module 2 according to the estimated
delivery date of Eighteen (18) months after the receipt by Aurora
of such payment for the first Optional Module 2. The estimated
delivery date of all subsequent Optional Modules 2(s), if any,
will be mutually agreed upon by the parties. The parties
understand that the delivery date may vary due to availability of
supplies and components. Aurora will promptly notify Merck of
changes in the estimated delivery date for an Optional Module 2.
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Each Optional Module 2 shall be subject to Validation testing in
accordance with Section 2.1.5.6.
2.1.5.3 Optional SDS: Merck will have the option to obtain an
additional Screen Development Stage (the "Optional SDS"), ***,
during the period from ***. To exercise such option, Merck will
notify Aurora in writing within such *** for each Optional SDS
within thirty (30) days of such election. Aurora will use
reasonable efforts to develop and install the first Optional SDS
according to the estimated delivery date of Twelve (12) months
after the receipt by Aurora of such payment for the first
Optional SDS. The estimated delivery date of all subsequent
Optional SDS(s) will be mutually agreed upon by the parties. The
parties understand that the delivery date may vary due to
availability of supplies and components. Aurora will promptly
notify Merck of changes in the estimated delivery date for an
Optional SDS. Each Optional SDS shall be subject to Validation
testing in accordance with Section 2.1.5.6.
2.1.5.4 Optional VIPRs: Merck will have the option to obtain an
additional VIPR (the "Optional VIPR"), or up to a total of ***
each, during the period from the Effective Date to twelve (12)
months after the first Validation of a VIPR pursuant to Section
2.1.3. To exercise such option, Merck will notify Aurora in
writing within such option period and pay to ***. Aurora will use
reasonable efforts to develop and install the first Optional VIPR
according to the estimated delivery date of twelve (12) months
after the receipt by Aurora of such payment for the first
Optional VIPR. The estimated delivery date of all subsequent
Optional VIPR(s) will be mutually agreed upon by the parties. The
parties understand that the delivery date may vary due to
availability of supplies and components. Aurora will promptly
notify Merck of changes in the estimated delivery date for an
Optional VIPR. Each Optional VIPR shall be subject to Validation
testing in accordance with Section 2.1.5.6.
2.1.5.5 Delivery of the Optional Deliverables: Aurora will be
responsible for the appropriate packaging of each Optional Module
1, Optional Module 2, Optional SDS, and Optional VIPR ("Optional
Deliverables") to be delivered to Merck. Aurora will provide
Merck with written notice at least thirty (30) days before the
anticipated date that each Optional Deliverable will be ready for
shipping, and Merck will be responsible for arranging the
shipment and for paying associated delivery charges, including
insurance and sales tax, if applicable. Aurora will begin
installation of each Optional Deliverable within fifteen (15)
working days of delivery to Merck and will use reasonable efforts
to complete such installation promptly thereafter and Merck will
use reasonable efforts to prepare in advance for such
installation and to facilitate such installation after delivery.
Merck will provide Aurora with written notice at least thirty
(30) days before such installation of any expected delays or
problems with the installation site at Merck. Aurora will install
all Optional Deliverables, unless otherwise mutually agreed to in
writing. Aurora will be responsible for its employees or
contractors performing such installation including salaries,
benefits and workers compensation. Aurora shall provide Merck
with timely notice of any anticipated change in a scheduled
delivery date for an
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Optional Deliverable. Merck may agree, but shall not be required,
to accept delivery of an Optional Deliverable earlier than the
relevant scheduled delivery date. Merck shall provide Aurora with
timely notice of any anticipated change in being able to
accommodate the delivery of an Optional Deliverable.
2.1.5.6 Validation Testing for Optional Deliverables. All Optional
Deliverables shall be subject to testing by or for Aurora and by
or for Merck. Within thirty days (30) day after installation of
an Optional Deliverable, the System Steering Committee shall
perform tests necessary to determine that an Optional Deliverable
conforms to the Specifications for such Optional Deliverable.
Upon such Validation Aurora shall give Merck written notice. If
the members of the System Steering Committee, acting in good
faith, cannot agree that an Optional Deliverable satisfies the
criteria for Validation within such thirty (30) day period,
Aurora shall have an additional sixty (60) days to cure such
Optional Deliverable's inability to satisfy the Specifications.
If Aurora is unable to cure such Optional Deliverable within
sixty (60) days of such notice, Merck may elect to:
(i) accept such Optional Deliverable and such Optional
Deliverable will be considered Validated;
(ii) permit Aurora to cure such Optional Deliverable's inability
to satisfy the Specifications during an additional cure
period determined by Merck; or
(iii) request, and receive from Aurora, a refund of the full
amount paid for such Optional Deliverable (not including
any payments made as an entry payment paid under Section
2.1.4.1 or an ongoing quarterly payment paid under Section
2.1.4.7) within thirty (30) days of the end of such cure
period(s).
If Merck elects to receive a refund from Aurora under Section 2.1.5.6
(iii), Merck must ship such Optional Deliverable to Aurora in
substantially its original condition within thirty (30) days of such
election, and Aurora shall bear all delivery risks and charges,
including insurance and sales tax, if applicable. Merck's rights
under this Section 2.1.5.6 are in addition to it rights pursuant to
Section 11.3.2 hereof.
2.1.6 Syndicate Formation, Limitations and Most Favored Nations.
2.1.6.1 Syndicate Formation and Limitations. It is understood that
Aurora may collaborate with, and supply to, and grant certain
license rights with respect to the use and supply of a system
substantially conforming to the specifications of the System and
the Aurora Reporter System to Third Parties.
2.1.6.1.1 System. Notwithstanding the foregoing, Aurora covenants
and agrees that, so long as Merck is not in default of a
payment obligation hereunder with respect to the System and
Aurora Reporter Systems for more than thirty (30) days after
receiving notice of such payment default, and Merck has not
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terminated its purchase of the System pursuant to Section
11.2, 11.3, or 11.4, then, ***.
2.1.6.1.2 Aurora Reporter Systems. Notwithstanding Section
2.1.6.1, Aurora covenants and agrees that, so long as Merck is
not in default of a payment obligation hereunder with respect
to the System or the Aurora Reporter System for more than
thirty (30) days after receiving notice of such payment
default and Merck has not terminated its purchase of the
System pursuant to Section 11.2, 11.3, or 11.4, then, ***.
2.1.6.2 Most Favored Nations. If, during the ***. Upon written
notification by Merck to Aurora, Aurora will select a consultant
reasonably acceptable to Merck who will perform a confidential
review of the value of the terms of such Third Party agreement.
If Merck chooses to substitute such terms, as a whole, and such
substituted terms would require payments from Merck that have not
then been made by Merck, then Merck shall promptly pay the same
to Aurora. If Merck chooses to substitute such terms, as a whole,
and such substituted terms exceed the amount owed to Aurora,
Aurora shall credit the difference of such overpayments to future
payments to be made hereunder by Merck under Article 2 or Article
3, as appropriate.
3 COLLABORATIVE PROGRAM
3.1 Collaborative Program. For a period of five (5) years following the
Effective Date (the "Collaborative Period") the parties will collaborate
in the development of Inventions and Technology and the development and
validation of Collaborative Screens as part of development programs (the
"Collaborative Screen Programs" or a "CSPs"), as follows:
3.1.1 Development Program. Merck and Aurora will use reasonable efforts
to identify targets for screen development, improvements to the
System, new instrumentation or new reporters for development as part
of an Annual Work Plan.
3.1.1.1 CSP Steering Committee. No later than thirty (30) days after
the Effective Date, the parties shall establish a CSP Steering
Committee (the "CSP Steering Committee"). The CSP Steering
Committee shall consist of three (3) representatives designated
by Merck and three (3) representatives designated by Aurora. Each
representative will have one vote resulting in each party having
exactly three votes. Decisions by the CSP Steering Committee will
be made by unanimous vote, requiring a quorum of four voting
representatives. The CSP Steering Committee will meet at least
three times per year at mutually agreed upon times and locations
using mutually agreed upon meeting formats, including tele- and
video-conferencing; provided, that the members of the CSP
Steering Committee shall use reasonable efforts to schedule such
meetings at least thirty (30) calendar days prior to each payment
date for the quarterly payments required pursuant to Section
3.1.1.5. The CSP Steering Committee shall maintain accurate
records to document the discussions and decisions at each
meeting. Meeting minutes or summaries shall
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be prepared in accordance with procedures established by the CSP
Steering Committee at its first meeting and shall be distributed
to all members of the CSP Steering Committee for review and
approval.
3.1.1.2 Screen Selection. Within fifteen (15) days after the
Effective Date, and at least ninety (90) days prior to the first,
second, third and fourth anniversaries of the Effective Date,
Merck will propose in writing to Aurora molecular targets which
Merck believes are reasonably feasible for development of screens
for the next Annual Work Plan. For each proposed molecular
target, Merck shall provide Aurora with a written proposal
describing such molecular target. Within thirty (30) days after
the Effective Date, and in subsequent years, within forty-five
(45) days after receiving such information from Merck, and
further information as Aurora may reasonably request regarding a
proposed molecular target, Aurora shall provide to Merck an
estimate of the approximate resources required for such screen
development and shall notify Merck as to whether Aurora accepts
such proposed target; provided, however, that Aurora may only
reject a proposed target if it reasonably believes that the
development of a Collaborative Screen for such proposed target
(i) would be inconsistent with Aurora's Third Party obligations,
(ii) would cause Aurora to infringe the intellectual property
rights of a Third Party, (iii) would require more than two FTEs
for twelve months or (iv) would not be feasible in view of the
resources and expertise required to complete such Collaborative
Screen . Merck and Aurora will repeat the foregoing selection
procedure ("Selection Procedure") and will use reasonable
efforts, to select at least three (3) molecular targets, for the
Annual Work Plan for each year, for which screen development
shall be initiated ***.
3.1.1.3 Instrumentation and New Reporter Development. During the
Collaborative Period, Merck may also propose new instrumentation
(including improvements to the System) and new reporters that
Merck believes are reasonably feasible for development as part of
an Annual Work Plan. Within forty five (45) days of receiving
such proposal, and further information as Aurora may reasonably
request regarding such new instrumentation or new reporters,
Aurora shall notify Merck whether Aurora reasonably believes that
the development of such instrumentation or reporters are
reasonably feasible and if such development is consistent with
Aurora's Third Party obligations and will notify the CSP Steering
Committee of the following: (i) the approximate resources that
Aurora believes would be required to be provided by Merck through
the CSP Steering Committee and funded pursuant to Section 3.1.1.3
for the development of such new instrumentation or reporters; or
(ii) the approximate resources that Aurora believes would be
required to be provided by Merck through the CSP Steering
Committee and funded pursuant to Section 3.1.1.3 and the
resources that Aurora proposes to provide for the development of
such new instrumentation or reporters. Within thirty (30) days of
such notification, Merck, in its sole discretion, shall determine
whether to initiate such development of new instrumentation or
reporters under Sections 3.1.1.3(i) or 3.1.1.3(ii) and the CSP
Steering Committee will coordinate the preparation of a written
work plan for such
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development. Merck and Aurora may mutually agree upon additional
funding to be provided by Merck for such development.
3.1.1.4 Coordination of Development. The CSP Steering Committee will
coordinate the development of Collaborative Screens, new
instrumentation or new reporters during the Collaborative Period
(including the formation and management of a CSP Work Plan
described below in this Section 3.1.1.4 for each Collaborative
Screen within sixty (60) days of Aurora choosing to accept a
Merck proposed molecular target), generate (or modify) and
implement each CSP Work Plan, as defined below, and Annual Work
Plan, and approve the validation of each Collaborative Screen.
Promptly following mutual agreement on the selection of each
target, the CSP Steering Committee will coordinate the
preparation of a written work plan (a "CSP Work Plan"), which
shall set forth the respective responsibilities of the parties in
the development of each Collaborative Screen, and which must be
approved by the CSP Steering Committee. Each such CSP Work Plan
will also contain a description of the specific assay components
and documentation to be produced and proposed validation criteria
for each Collaborative Screen. Each CSP Work Plan will be adopted
from an Annual Work Plan on a target by target basis. Promptly
following the approval of each CSP Work Plan, the parties will
commence their respective duties under the CSP Work Plan for the
development of the applicable Collaborative Screen. All work
under a CSP Work Plan shall be performed in accordance with the
provisions of this Agreement, and each party will use its
reasonable efforts to complete its obligations under the CSP Work
Plan as expeditiously as practicable. ***.
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3.1.1.5 Payments for Development. As partial consideration for the
development of Inventions and Technology and the Collaborative
Screens to be developed by Aurora or by Aurora and Merck, Merck
shall pay *** per year for a period of *** beginning on the
Effective Date for such development. The fully-burdened rate for
each Aurora full time equivalent shall *** per year based on a
minimum *** per year, annually increased on the anniversary of
the Effective Date to reflect adjustment in the CPI, using
January 1, 1997 as the base year (a "FTE"). Such payments shall
be payable in quarterly payments ***, the first payment to be
made on or before the first January 15, April 15, July 15 or
October 15 occurring after the Effective Date and the subsequent
Nineteen (19) such quarterly payments made every three months
thereafter. Such payments shall be non-refundable and
non-creditable. In no event shall Merck be obligated to pay more
than *** under this Section 3.1.1.5 per year of the Collaborative
Period. The parties acknowledge that the total number of FTEs may
be reduced due to CPI adjustment. Of the Aurora FTEs funded by
Merck, Aurora will dedicate three (3) FTEs to ***. All other FTEs
each year will be allocated from a pool of Aurora personnel
resources that will contain individuals that may have expertise
or experience that can be applied to a particular Collaborative
Screen, new instrumentation or new reporter. The parties
understand and agree that Aurora is not obligated to enter into a
CSP Work Plan where more than two (2) FTEs for one year would
reasonably be needed to complete the work under such CSP Work
Plan.
3.1.1.6 Screen Validation. When Aurora completes the development of a
Collaborative Screen, it shall provide the CSP Steering Committee
with a written report describing the Collaborative Screen and the
data demonstrating compliance with the CSP Work Plan including
the validation criteria. Aurora will also permit Merck
representatives to visit the facilities of Aurora to test and
verify compliance of the Collaborative Screen with the validation
criteria. Merck, through the CSP Steering Committee, will approve
the report and accept the Collaborative Screen, or provide Aurora
a written explanation for declining such acceptance within thirty
(30) days of receipt of the report by committee members. Upon
acceptance of each Collaborative Screen to be developed by
Aurora, Aurora will submit to Merck an invoice for *** of the
date of such invoice.
3.1.1.7 Screening by Aurora. For the Collaborative Screens validated,
pursuant to Section 3.1.1.6, Merck may elect to have Aurora test,
using reasonable efforts, up to *** provided by Merck or agreed
to by the parties pursuant to Section 3.1.1.8. Aurora shall with
regard to each such Collaborative Screen, screen Compounds in a
manner determined by the CSP Steering Committee and provide
retests of Compounds for putative Hits, and determination of
crude IC50's or EC50's as determined by the CSP Steering
Committee (collectively referred to as an "Aurora Screening
Program"). At Merck's request, the parties will negotiate in good
faith the terms for alternative screening arrangements to be
provided by Aurora. The data resulting from such activities using
the Compound Supply shall be owned by Merck and shall be stored
in a separate file in the Aurora database. Merck employees or
agents shall have access to such data and shall have the right to
transfer such data to
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Merck's internal database. Aurora shall not have any right to use
such data for any purpose, for itself or for any Third Party.
3.1.1.8 Compound Supply. Merck shall, at its expense, supply Aurora
with Compounds selected by Merck for an Aurora Screening Program.
In the event that Merck desires to have Aurora test in an Aurora
Screening Program a chemical (including a library of chemicals)
owned, accessed or Controlled by Aurora, the parties agree to
negotiate in good faith the terms and conditions under which such
chemicals may be screened. Any Compound supplied by Merck for use
in an Aurora Screening Program will be provided in 96-well or
384-well-microtiter plates, in quantities, form and format as
agreed by the CSP Steering Committee ("Compound Supply"). Aurora
agrees not to transfer the Compound Supply to any Third Party,
attempt to analyze the Compound Supply for purposes of
determining structure, or to use the Compound Supply for purposes
not contemplated herein without Merck's prior written consent.
Aurora will return or destroy (at Merck's election) such Compound
Supply upon written notice by Merck.
3.1.1.9 Screening Payments. If Merck during the Collaborative Period
elects to have Aurora use a Collaborative Screen to screen
Compounds or other chemicals pursuant to Section 3.1.1.7, in
partial consideration for each such Aurora Screening Program
Merck will pay ***. Such payment shall be inclusive of all costs
incurred by Aurora relating to labor, screening equipment, and
supplies (other than chemicals or reagents unique to a
Collaborative Screen). If Aurora determines that the expenses
which would be incurred by Aurora with respect to any such Aurora
Screening Program would ***, Aurora shall notify Merck, and Merck
may in its sole discretion, elect to provide additional funding
in an amount to be determined by Merck.
3.1.2 Deployment of Collaborative Screen by Merck. For each
Collaborative Screen, upon receipt of the payment made by Merck to
Aurora pursuant to Section 3.1.1.6, Aurora will ship the
Collaborative Screen to Merck. For each such transferred
Collaborative Screen, Merck will use reasonable efforts to employ
such Collaborative Screen to screen Compounds, using Merck's then
current screening practices, consistent with Merck's usual drug
discovery and development practices. If after one hundred and eighty
(180) days after such shipment, Merck does not, or is unable to
successfully employ such Collaborative Screen to identify Hits, Merck
will notify Aurora. At Merck's sole discretion, Merck may request
that Aurora initiate an Aurora Screening Program for such
Collaborative Screen at Aurora as set forth in Section 3.1.1.7.
3.1.3 Additional Screens. Subject to the same terms and conditions set
forth in Sections 3.1.1, and 3.1.2 and Aurora's approval, such
approval shall not be unreasonably withheld, Merck may elect to
increase the number of Collaborative Screens initiated during any
year of the Collaborative Period to ***.
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3.1.4 Payments to Aurora. In addition to such payments as are made by
Merck to Aurora pursuant to Section 3.1.1 hereof, the following
payments shall be made to Aurora for each Collaborative Screen:
3.1.4.1Milestones. Merck will pay to Aurora:
For the first *** that reaches the following milestone events,
Merck will promptly provide Aurora with written notification and
will pay the following amounts to Aurora within thirty (30) days
following such notification from Merck.
Milestone
Event Payment (US$)
--------- -------------
i) ***
ii) ***
iii) ***
iv) ***
Each of the foregoing payments shall only be made for ***
to reach the milestone event and ***
3.1.4.2 Royalties. For *** Merck shall pay Aurora a royalty with
respect to *** that become Products developed and marketed for
the activity of the kind and direction intended to be detected by
such Collaborative Screen. Such royalty shall be payable during
the Royalty Term in the amount of ***of worldwide Net Sales of
each such Product. Exhibit 3.1 sets forth examples for
determining Products on which royalties will be payable.
3.1.4.3 If Merck provides any Hit, Derivative, Development Candidate,
or Product as consideration to a Third Party, including as
consideration for another chemical or target from a Third Party
for development at Merck, Merck will: (i) remain obligated to the
payment to Aurora of any milestones and royalties provided for in
Article 3; or (ii) obligate such Third Party to pay to Aurora
directly any milestones and royalties provided for in Article 3;
or (iii) negotiate with Aurora in good faith alternative
compensation for any such Hits, Derivatives, Development
Candidates, or Products.
3.1.4.4 Exceptions. Notwithstanding the foregoing, Merck shall not be
obligated to pay Milestones or Royalties pursuant to 3.1.4.1 and
3.1.4.2 with respect to the following:
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(a) ***;
(b) ***
(c) Compounds identified by Merck without using a Collaborative
Screen.
3.2 Access to the Aurora Reporter System Technology and Aurora Reporter
System Patent Rights. Merck's right to use the Aurora Reporters and
Aurora Reporter System, as set forth in the license in Section 5.1.3,
requires that Merck pay to Aurora an up-front license payment of *** for
the first year following the Effective Date and an annual license
payment of *** following the first anniversary of the Effective Date.
The first annual payment will be made within ten (10) business days of
the Effective Date and the remaining four annual payments will be made
on the respective anniversaries of the first payment. ***, Merck may
elect to maintain the annual license, as set forth in Section 5.1.3, for
Aurora Reporters and the Aurora Reporter System for an annual payment of
*** for consecutive one-year periods thereafter; provided, however, that
any such obligation to pay such annual license payment shall terminate
when there is no longer a Valid Claim of an issued patent within Aurora
Reporter System Patent Rights. Upon expiration of such Valid Claim,
Merck shall retain a fully paid-up, royalty free license to use any
Aurora Reporter System Technology then in Merck's possession.
3.3 Supply of Materials. So long as Merck has made payments in accordance
with Section 3.2 hereof, then, at Merck's written request, Aurora will
use reasonable efforts to supply within thirty (30) days after receipt
of a written purchase order therefor, Materials pertaining to Aurora
Reporters and the Aurora Reporter System as Merck may require in order
to use the Aurora Reporters. Merck will be charged for all supplies so
delivered at Aurora's ***. Merck will pay for all Materials so ordered
within thirty (30) days after delivery to Merck. ***. The parties agree
that if Merck requests ***, Aurora may, at its sole discretion, develop
such cell lines and provide to ***shall be provided to Merck at ***.
3.4 Ownership of Data. Subject to Sections 5.3.2 and 5.3.3, all results and
data generated by or for Merck arising out of the use of the System,
development and use of any Collaborative Screen, the exercise of any of
the rights licensed under Section 5 hereof, or otherwise arising out of
this Agreement shall be owned exclusively by Merck and shall be treated
as Merck Confidential Information hereunder.
3.5 Development of Products. Merck will in its discretion determine which,
if any, Hit(s), or Derivative(s), will be approved as Development
Candidates. Merck will use reasonable efforts consistent with Merck's
usual drug development practices, for all pre-clinical and clinical
development, including all regulatory filings, of Hits and Development
Candidates arising out of this Agreement at no expense to Aurora. Merck
shall have discretion and control over the conduct of all activities
associated with the development or abandonment of any Hit, Derivative or
Development Candidate, all regulatory activities relating to the
manufacture, use or sale of any Development Candidate or Product, and
the commercialization and marketing of any Product in any country and
Merck will use its reasonable efforts, consistent with Merck's usual
practice in developing, commercializing
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and marketing its other similar pharmaceutical products, to attain all
of the foregoing. All INDs, NDAs and other regulatory filings made or
filed by Merck for any Development Candidate or Product shall be owned
solely by Merck.
3.6 Laboratory Facilities and Personnel. Aurora and Merck 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. In performing their activities
hereunder, the parties shall maintain records in sufficient detail and
in good scientific manner appropriate for patent and regulatory
purposes, which shall be complete and accurate and shall fully and
properly reflect all work done and results achieved in the performance
of such work or activities. Where appropriate, such records shall be
written into research notebooks and countersigned.
4 SERVICE AND SUPPORT
4.1 Service and Support for the System. For the period commencing upon the
Validation of Module 1 and ending *** after the Validation of Module 3
pursuant to Section 2.1.3, Aurora will provide service and support for
the System and all system components, without additional charge to Merck
with the exception of reasonable travel expenses within limits
pre-approved by the parties. 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.
Aurora will designate an appropriate Aurora employee to coordinate such
Service and Support. Following such initial period, Merck and Aurora
will in good faith negotiate additional Service and Support.
4.2 Service and Support for the VIPR(s). For the period commencing upon the
Validation of a VIPR and ending *** after the Validation of such VIPR
pursuant to Section 2.1.3, Aurora will provide Service and Support for
such VIPR*** parties. After such ***, service and support for such VIPR
will be on terms to be negotiated by the parties.
4.3 Service and Support for Optional Deliverable. If Merck elects to
purchase an Optional Deliverable, Aurora will provide Service and
Support with respect ***, until twelve (12) months after the Validation
of such Optional Deliverable pursuant to Section 2.1.3. After ***,
service and support for such Optional Deliverable will be on terms to be
negotiated by the parties.
4.4 ***.
5 INTELLECTUAL PROPERTY RIGHTS
5.1 Grant of Rights from Aurora to Merck.
5.1.1 Intellectual Property Rights related to the System. Aurora hereby
grants to ***.
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5.1.2 Intellectual Property Rights Related to Collaborative Screens.
Aurora, upon payment under Section 3.1.1.6, grants to Merck a
non-exclusive, ***.
5.1.3 Intellectual Property Rights related to Aurora Reporters. Aurora
grants to Merck a non-exclusive, non-transferable, ***.
5.1.4 Intellectual Property Rights Related to the VIPR. Aurora, hereby
grants to Merck a non-exclusive, non-transferable, ***.
5.1.5 Third Party Rights. The rights granted in Sections 5.1.1, 5.1.2,
5.1.3 and 5.1.4 do ***. If during the Term of this Agreement Merck
desires to obtain Third Party intellectual property rights that
relate to the following:
***
***.
5.1.6 During the Term of this Agreement, Merck will not enter into an
agreement with a Third Party under which Merck will use Aurora
Technology or Aurora Patent Rights in conjunction with such Third
Party's targets or chemicals where Merck does not have an obligation
in such agreement to develop and/or market pharmaceuticals to be
identified using such targets or chemicals.
5.1.7 Merck shall have ***; provided, however, that i) any ***of any of
its obligations hereunder, including its payment obligations and ii)
the rights of ***under Sections 5.1.1, 5.1.2, 5.1.3, and 5.1.4 will
*** under such section pursuant to this Agreement. ***.
5.1.8 ***.
5.2 ***.
5.3 Ownership of Intellectual Property and Property
5.3.1 ***.
5.3.2 ***Inventions and other Technology (including, without limitation,
the intellectual property rights associated with Collaborative
Screens, Compounds and Derivatives and pharmaceutical uses thereof)
conceived or reduced to practice by its employees and agents, ***.
Aurora agrees to execute any and all documentation necessary to
perfect Merck's rights in such Inventions and Technology. Merck will
grant to Aurora an irrevocable, worldwide, fully paid up,
sublicensable, unrestricted, non-exclusive license to any
improvements and associated intellectual property rights with respect
to any Aurora Reporter or the Aurora Reporter System Technology that
are conceived or made by the employees and agents of Merck, its
Subsidiaries and Authorized Affiliates.
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5.3.3 ***.
5.3.4 Inventorship of patentable Inventions shall be determined in
accordance with U.S. patent law.
6 PAYMENTS OF ROYALTIES, ACCOUNTING FOR ROYALTIES, AND RECORDS
6.1 Payment and Reporting. The royalties due under Article 3 and as follows
in this Article 6, shall be paid within sixty (60) days after the end of
each calendar quarter period in which such royalties are earned during
the Royalty Term for each Product. With each such quarterly payment
Merck shall furnish Aurora a royalty statement, setting forth on a
country-by-country basis: (i) gross sales (less returns and on-invoice
allowances), (ii) deductions from gross sales, and (iii) Net Sales for
such Product.
6.2 Currency of Payment. All payments to be made under this Agreement,
including the royalties payable to Aurora by Merck, shall be paid in
U.S. dollars by wire transfer or other mutually acceptable means to a
bank account designated by the recipient. Royalties earned shall be
determined from the Net Sales in the currency of the country in which
they are earned and then converted into dollars using the rate of
exchange published by Reuters Ltd. for the spot purchase of U.S. dollars
at 7:15 a.m., Eastern Standard Time, on the third (3rd) banking day
preceding the end of the calendar quarter for which royalties are being
calculated.
6.3 Taxes Withheld. Any income or other tax that Merck, its Subsidiaries,
its Authorized Affiliates, Licensees, or Licensors is required by a
government agency to withhold and pay on behalf of Aurora with respect
to the royalties payable under this Agreement shall be deducted from and
offset against said royalties prior to remittance to the recipient;
provided, however, that in regard to any tax so deducted, Merck shall
give or cause to be given to Aurora such assistance as may reasonably be
necessary to enable Aurora to claim exemption therefrom or credit
therefor, and in each case shall furnish the recipient proper evidence
of the taxes paid on Aurora's behalf.
6.4 Records.
6.4.1 Net Sales and Royalty Calculations. During the Royalty Term and
for two (2) years from the date of each payment of royalties, Merck
shall keep complete and accurate records of sales and all other
information necessary to calculate Net Sales of each Product in
sufficient detail to allow the accrued royalties to be determined
accurately in accordance with GAAP. Aurora, with reasonable written
notice to Merck, shall have the right to cause Aurora's independent,
certified public accountant to audit such records not more than once
each year 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. Aurora shall bear the full cost of
such audit unless such audit discloses an underpayment of more than
ten percent (10%) from the amount of the royalties due under this
Agreement, in which event, Merck shall bear the reasonable cost of
such audit. Such accountant shall disclose only whether the royalty
reports are correct and
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the details of any discrepancies. Aurora shall cause such accountant
to enter into a confidentiality agreement with Merck. Within thirty
(30) days of notification by Aurora of any underpayment of royalties,
Merck will notify Aurora whether it agrees with the conclusion of
such accountant. If Merck agrees with the conclusion of such account,
Merck will remit to Aurora the amount of any such underpayment. If
such accountant concludes that Merck has made an overpayment of
royalties, Aurora will so notify Merck. If Merck agrees with the
conclusion of overpayment, the amount of such overpayment will be
credited toward any future royalties payable hereunder.
6.4.2 Tracking Records for Collaborative Screens.
6.4.2.1 The compounds, screens and targets tested using a
Collaborative Screen will be recorded by Merck using its
customary means and in a computer searchable database on a
storage device. The information stored will include the target,
screen type, the concentration, structure and activity of the
compound tested, and date of testing. Records of any Hits or any
compound subject to additional screening will be stored by Merck
in a computer searchable database. Upon written request by
Aurora, Merck will create an annual written report of Hits or
Derivatives subjected to additional screening, in vivo testing,
computer modeling, medicinal chemistry or an IND to date. All the
records described in this Section 6.4.2.1 are collectively
referred to as tracking records (the "Tracking Records"). The
Tracking Records shall be securely retained for no less than ten
(10) years from the last use of a Collaborative Screen. Upon
reasonable request by Aurora and at a minimum once every six (6)
months, Merck will provide Aurora with a list of Development
Candidates and Products on which royalties or milestones will be
payable.
6.5 Trade Secret Royalty. The parties acknowledge that the principal value
contributed by Aurora under this Agreement is the enhanced probability
of identifying leads for Products, such as human pharmaceutical products
(or other products having commercial value), and the potential to
generate multiple leads, either or both of which the parties reasonably
believe will lessen the time required to bring pharmaceutical products
to market and increase the efficiency of drug discovery and development
processes and technologies. Additionally, the parties acknowledge that
Aurora may not own or Control patent applications or patents covering
the manufacture, sale, use, or importation of a particular Development
Candidate or Product. Merck acknowledges and agrees that the value it
receives hereunder is in the access and use of the System, Collaborative
Screens or Aurora Technology. Accordingly, Merck agrees to pay those
royalties and other amounts at the applicable rate specified under the
Agreement, regardless of whether a Product is covered by a patent
application or patent within the Aurora Patent Rights.
7 INTELLECTUAL PROPERTY ENFORCEMENT AND DEFENSE OF INFRINGEMENT CLAIMS
7.1 Intellectual Property Enforcement. Merck and Aurora shall have the
right, but not the obligation, to bring proceedings against any Third
Party for the inappropriate use, including patent infringement, of
Technology, Copyrights or Patent Rights solely owned or Controlled by
it, and at its own risk and expense. Such party shall be entitled to
retain any
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and all awards or damages obtained in any such proceeding. At the
request of either party, the other party shall give the requesting
party, at the requesting party's expense, all reasonable assistance
required to file and conduct any such proceeding. For jointly owned
Technology, Copyrights or Patent Rights, Merck and Aurora shall use
their best efforts to coordinate pursuing a commercially reasonable
action to address inappropriate use, including patent infringement, by
Third Parties of such Technology, Copyrights and Patent Rights and to
determine how expenses and any recovery from such action shall be
allocated between the parties. Merck will make reasonable efforts to
provide Aurora with any information known to Merck relating to the
suspected or actual inappropriate use, including patent infringement, of
Aurora Technology and Aurora Patent Rights.
7.2 Defense of Infringement Claims Pertaining to Hits, Development
Candidates, and Products. Aurora will cooperate with Merck, at Merck's
expense, in the defense of any suit, action or proceeding against
Aurora, or Merck and its Affiliates alleging the infringement of the
intellectual property rights of a Third Party by reason of the
manufacture, use or sale of a Hit, Development Candidate, or Product by
Merck, its Subsidiaries or Authorized Affiliates. Merck shall give
Aurora prompt written notice of the commencement of any such suit,
action, proceeding or claim of infringement. Aurora shall give to Merck
all authority, information and assistance necessary to defend or settle
any such suit, action or proceeding; provided, however, that if Aurora
should join in any such suit, action or proceeding pursuant to this
Section 7.2 and at the request of Merck, Merck shall hold Aurora, free,
clear and harmless from any and all costs and expenses of such
litigation, including reasonable attorneys' fees, and Aurora shall
execute all documents, provide pertinent records, and take all other
actions, including requiring persons within its control to give
testimony, which may be reasonably required in connection with such
litigation.
7.3 Defense of Infringement Claims Pertaining to Aurora Technology and
Aurora Patent Rights. Merck will cooperate with Aurora, at Aurora's
expense, in the defense of any suit, action or proceeding against Aurora
alleging the infringement of the intellectual property rights of a Third
Party by reason of Aurora's use of any Aurora Patent Rights and Aurora
Technology in performing its obligations under this Agreement. Aurora
shall give Merck prompt written notice of the commencement of any such
suit, action, proceeding or claim of infringement. Merck shall give to
Aurora all authority, information and assistance necessary to defend or
settle any such suit, action or proceeding; provided, however, that if
Merck should join in any such suit, action or proceeding pursuant to
this Section 7.3 and at the request of Aurora, Aurora shall hold Merck,
free, clear and harmless from any and all costs and expenses of such
litigation, including reasonable attorneys' fees, and Merck shall
execute all documents, provide pertinent records, and take all other
actions, including requiring persons within its control to give
testimony, which may be reasonably required in connection with such
litigation.
8 TREATMENT OF CONFIDENTIAL INFORMATION; PUBLICITY
8.1 Confidentiality.
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8.1.1 Subject to the terms and conditions of this Agreement, Merck and
Aurora each agree that, during the term of this Agreement and for
***, it will use best efforts to keep confidential all Confidential
Information that is disclosed to it or to any of its Affiliates by
the other party in connection with the performance of this Agreement.
Neither Merck nor Aurora nor any of their respective Affiliates shall
use the other party's Confidential Information except as expressly
permitted in this Agreement. Nor will either party disclose the other
party's Confidential Information to an Affiliate that is not a
Subsidiary or Authorized Affliliate, without the written consent of
such other party.
8.1.2 Merck 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 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, using
efforts which are not less than efforts 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 it by 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) copy which may
be kept for the purpose of ascertaining and complying with continuing
confidentiality obligations under this Agreement.
8.1.3 Confidential Information shall not include any information which
the receiving party can prove by competent evidence:
i) is now, or hereafter becomes, through no fault of the
receiving party, generally known or available;
ii) is known by the receiving party at the time of
receiving such information, as evidenced by its records;
iii) is hereafter furnished to the receiving party without
restriction as to disclosure or use by a Third Party
lawfully entitled to so furnish same;
iv) is independently developed by the employees, agents or
contractors of the receiving party without the aid,
application or use of the disclosing party's Confidential
Information;
v) is the subject of a written permission to disclose
provided by the disclosing party; or
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vi) is provided by the disclosing party to a Third Party
without restriction as to confidentiality.
A party may also disclose Confidential Information of the other where
required to do so by law or legal process, provided that, in such event,
the party required to so disclose shall give maximum practical advance
written notice of same to the other party and will cooperate with the
other party's efforts to seek, at the request and expense of the other
party, all confidential treatment and protection for such disclosure as
is permitted by applicable law. The parties agree that the material
financial terms of this Agreement will be considered Confidential
Information of both parties. A party shall have the further right to
disclose the material financial terms of this Agreement under strictures
of confidentiality to any potential acquirer, bona fide potential
strategic partner or collaborator, merger partner, bank, venture capital
firm, or other financial institution to obtain financing with the
consent of the other party hereto, not to be unreasonably withheld. The
parties agree that information developed during the course of a
Collaborative Screen Program or a Merck-funded project pursuant to
Section 3.1.1.3 (i) will be considered Confidential Information of Merck
and shall be subject to the confidentiality requirements of this Section
8.1. Notwithstanding the foregoing, Aurora may disclose and use such
information which is related to the improvements licensed to Aurora by
Merck pursuant to Section 5.3.2 in the course of screen development
under strictures of confidentiality to bona fide sublicensees. The
parties agree that information developed during a jointly funded project
pursuant to Section 3.1.1.3 (ii) will be considered Confidential
Information of both parties and shall be subject to the confidentiality
requirements of this Section 8.1.
8.2 Publication of Results. If either party desires to publish or otherwise
disclose the results and data obtained by the parties in the course of a
Collaborative Screen Program or in the course of a project pursuant to
Section 3.1.1.3, such party shall provide a copy of any such proposed
public disclosure to the other party at least sixty (60) calendar days
prior to such disclosure. The other party shall have forty-five (45)
calendar days from the receipt of such proposed public disclosure to
object to the proposed disclosure or any portion thereof (a) on the
basis that it contains or references unprotected patentable subject
matter or (b) violates any provision of this Agreement, including the
confidentiality provisions hereof or (c) is factually inaccurate.
Notwithstanding anything herein to the contrary, if such party objects
on the basis that the disclosure contains unprotected patentable subject
matter, the disclosing party shall refrain from making the disclosure
for ninety (90) calendar days from the date of the other party's
objection in order to allow the other party an opportunity to obtain
proper legal protection for the subject matter contained in the proposed
public disclosure. In the event that the other party objects to any
proposed public disclosure on the basis that some or all of said
disclosure violates the confidentiality terms of this Agreement, said
disclosure shall not be made. In addition the parties agree to credit
each other when a publication is based in whole or in significant part
of the other party's Technology.
8.3 Publicity. 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.
Upon execution of this Agreement, the parties shall issue a press
release in the form mutually agreed upon variant thereof. Any additional
press
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releases or public announcements with respect to this Agreement or
the transactions and activities contemplated herein shall be at such
time and in such manner as the parties shall mutually agree upon.
9 PATENT PROSECUTION AND COPYRIGHTS
9.1 Patent Filing, Prosecution and Maintenance. Merck will have
responsibility and sole control, at Merck's expense, for the filing,
prosecution (including an opposition or interference) and maintenance of
patents and patent applications claiming Compounds, Derivatives, Hits
Development Candidates or Products and the pharmaceutical uses thereof
and any Inventions owned by Merck or assigned to Merck hereunder and
which are not licensed to Aurora pursuant to Sections 5.3.2. Aurora will
have responsibility and sole control, at Aurora's expense, for the
filing, prosecution (including an opposition or interference) and
maintenance of patents and patent applications relating to the System
and Aurora Reporters; provided, however, that with respect to patents or
patent applications claiming Inventions licensed by Merck to Aurora
pursuant to Sections 5.3.2 and jointly owned patents and patent
applications, Merck and Aurora will cooperate in the filing, prosecution
(including an opposition or interference), and maintenance of such
patents and patent applications and the parties will share equally in
the control and expenses (including attorney fees) for such patents and
such patent applications. Should one party choose not to share in the
control, filing, prosecution, expense or maintenance of such patents or
patent applications, the other party with thirty (30) days written
notice to the non-sharing party may choose either (i) to gain sole
control of the filing, prosecution (including an opposition or
interference) or maintenance of such patents or patent applications or
(ii) to abandon the same; provided, however, that the party that
proceeds with the filing, prosecution (including an opposition or
interference), and maintenance will have sole responsibility for, and
sole control of the same and expenses; further provided, however, that
the party that does not proceed with such filing, prosecution,
maintenance and expenses will perfect the assignment of rights to the
party proceeding with such filing, prosecution, maintenance and
expenses. At Merck's reasonable request, not to exceed one request per
year, Aurora will use reasonable efforts to provide Merck with copies of
patent applications related to Aurora Patent Rights licensed under
Section 5.1, including patent applications covering improvements to
Aurora Reporters.
9.2 Copyrights. The parties agree to treat and handle, to the maximum
practical extent, any copyrights owned or Controlled by a party or
parties in the same manner as Patent Rights owned or Controlled by such
party or the parties.
10 WARRANTIES AND INDEMNIFICATION
10.1 Mutual Representations and Warranties. The parties make the
following representations and warranties to each other:
10.1.1 Corporate Power. Each party hereby represents and warrants that
such party is duly organized and validly existing under the laws of
the state of its incorporation and has
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full corporate power and authority to enter into this Agreement and
to perform its obligations under the Agreement.
10.1.2 Due Authorization. Each party hereby represents and warrants that
such party (a) has the requisite power and authority and the legal
right to enter into the Agreement and to perform its obligations
hereunder; and (b) has taken all necessary action on its part to
authorize the execution and delivery of the Agreement and to
authorize the performance of its obligations hereunder and the grant
of rights extended by it hereunder.
10.2 Warranties and Aurora Technology. Aurora represents and warrants to
Merck on and before the Effective Date that to the best knowledge of
Aurora:
***.
10.2.1 ***.
10.2.2 EXCEPT AS SET FORTH IN SECTION 10.2 ABOVE, AURORA (INCLUDING ITS
OFFICERS, EMPLOYEES AND AGENTS) EXPRESSLY DISCLAIMS ANY
REPRESENTATIONS AND WARRANTIES, WHETHER EXPRESS OR IMPLIED, RELATING
TO AURORA PATENT RIGHTS, AURORA COPYRIGHTS AND AURORA TECHNOLOGY.
AURORA FURTHER DISCLAIMS I) ANY EXPRESS OR IMPLIED WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OF AURORA
TECHNOLOGY, A DELIVERABLE, A VIPR, AN OPTIONAL DELIVERABLE, AND
AURORA PATENT RIGHTS, II) ANY EXPRESS OR IMPLIED WARRANTY THAT THE
PRACTICE OF AURORA COPYRIGHTS, AURORA TECHNOLOGY OR AURORA PATENT
RIGHTS WILL NOT INFRINGE A PATENT, COPYRIGHT, TRADEMARK OR OTHER
RIGHT OF A THIRD PARTY, AND III) ANY EXPRESS OR IMPLIED WARRANTY
REGARDING THE PATENTABILITY OF ANY AURORA TECHNOLOGY, INCLUDING
AURORA TECHNOLOGY CLAIMED IN PATENT APPLICATIONS AS PART OF AURORA
PATENT RIGHTS.
10.3 Aurora Indemnification. Aurora hereby agrees to indemnify, defend and
hold Merck, and its officers, directors, employees, and agents
(collectively, the "Merck Indemnitees") harmless from and against all
damages or other amounts payable to a Third Party, including
reasonable attorneys' fees and costs of litigation, resulting from a
suit or ***.
10.4 Warranties and Merck Technology. Merck represents and warrants to
Aurora on and before the Effective Date that to the best knowledge of
Merck:
***.
10.4.1 EXCEPT AS SET FORTH IN SECTION 10.4 ABOVE, MERCK (INCLUDING ITS
OFFICERS, EMPLOYEES AND AGENTS) EXPRESSLY DISCLAIM ANY
REPRESENTATIONS AND WARRANTIES, WHETHER EXPRESS OR IMPLIED,
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RELATING TO MERCK PATENT RIGHTS, MERCK COPYRIGHTS AND MERCK
TECHNOLOGY. MERCK FURTHER DISCLAIMS: I) ANY EXPRESS OR IMPLIED
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OF
MERCK TECHNOLOGY OR MERCK PATENT RIGHTS; II) ANY EXPRESS OR IMPLIED
WARRANTY THAT THE PRACTICE OF MERCK COPYRIGHTS, MERCK TECHNOLOGY OR
MERCK PATENT RIGHTS WILL NOT INFRINGE A PATENT, COPYRIGHT, TRADEMARK
OR OTHER RIGHT OF A THIRD PARTY; AND III) THE PATENTABILITY OF ANY
MERCK TECHNOLOGY, INCLUDING MERCK TECHNOLOGY CLAIMED IN PATENT
APPLICATIONS AS PART OF MERCK PATENT RIGHTS.
10.5 Merck Indemnification. Merck hereby agrees to indemnify, defend and
hold Aurora, and its officers, directors, employees, and agents
(collectively, the "Aurora Indemnitees") harmless from and against all
damages or other amounts payable to a Third Party, including reasonable
attorneys' fees and costs of litigation, ***.
11 TERM, EARLY SYSTEM PURCHASE CONCLUSION AND TERMINATION
11.1 Term. The term of this Agreement will begin on the Effective Date
and shall continue until expiration of the ***.
11.2 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 Merck. 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.
11.2.1 ***.
11.3 ***.
11.4 Effect of Expiration or Termination. Except as provided by Section
11.4, 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
3.1.4, 5.3, 5.1.8,, 10.2.2, 10.3, 10.4.1, 10.5, Articles 6, 7, 8, 9, and
12, thereof, as well as any provisions, which, by their intent or
meaning are intended to so survive, shall survive termination or
expiration of this Agreement. Except as otherwise expressly provided in
this Agreement, the rights and obligations of the parties under Sections
5.1.1, 5.1.2, 5.1.3 and 5.1.4 hereof shall terminate and be of no
further force or effect whatsoever upon any termination of this
Agreement.
11.5 Effect of Expiration or Termination. Except as provided by Section
11.4, 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 ***,
thereof, as well as any provisions, which, by their intent or meaning
are intended to so survive, shall survive termination or expiration of
this Agreement. Except as otherwise
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expressly provided in this Agreement, the rights and obligations of the
parties under *** hereof shall terminate and be of no further force or
effect whatsoever upon any termination of this Agreement.
12 MISCELLANEOUS
12.1 Assignment. Notwithstanding any provision of this Agreement to the
contrary, ***.
12.2 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.
12.3 Force Majeure. Neither party shall lose any rights hereunder or be
liable to the other party for damages or losses on account of failure of
performance by the defaulting party if the failure is occasioned by war,
fire, explosion, flood (including but not limited to, floods caused by
El Nino), earthquake, strike, lockout, embargo, act of God, or any other
similar cause beyond the control of the defaulting party, provided that
the party claiming force majeure has exerted all reasonable efforts to
avoid or remedy such force majeure and thereafter takes all reasonable
steps to mitigate any such delay in performance hereunder and any
damages that may be incurred by the other party thereby.
12.4 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, by courier or by
facsimile to the appropriate designation. Notices shall be sent:
If to Merck, to: Merck & Co., Inc.
▇.▇. ▇▇▇ ▇▇▇
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: Vice President, Corporate Licensing
Copy: Office of Secretary
Fax: ▇▇▇-▇▇▇-▇▇▇▇
If to Aurora, to: Aurora Biosciences Corporation
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇, M.D., Sc.D.
Chairman, CEO, and President
Copy: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Senior Vice President, Corporate Development
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Fax: ▇▇▇-▇▇▇-▇▇▇▇
provided that if such notice or communication relates to an amendment to
this Agreement or to any notice pursuant to Article 11 hereof, a copy
shall also be sent to:
If to Aurora, to: ▇▇▇▇ ▇▇▇▇▇▇▇▇, Ph.D., ▇.▇.
Vice President, Senior Legal Counsel
Aurora Biosciences Corporation
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
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 courier shall be effective upon receipt and notices given by
hand shall be effective when delivered.
12.5 Governing Law and Jurisdiction. This Agreement shall be governed by
the laws of the State of California, without regard to its rules of
conflict of laws as such laws are applied to contracts entered into and
to be performed within such state.
12.6 Waiver. Except as specifically provided for herein, the waiver from
time to time by either of the parties of any of their rights or their
failure to exercise any remedy shall not operate or be construed as a
continuing waiver of same or any of other of such party's rights or
remedies provided in this Agreement.
12.7 Severability. If any term, covenant or condition of this Agreement
or the application thereof to any party or circumstance shall, to any
extent, be held to be invalid or unenforceable, then the remainder of
this Agreement, or the application of such term, covenant or condition
to parties or circumstances other than those as to which it is held
invalid or unenforceable, shall not be affected thereby and each term,
covenant or condition of this Agreement shall be valid and be enforced
to the fullest extent permitted by law; and the parties hereto covenant
and agree to renegotiate any such term, covenant or application thereof
in good faith in order to provide a reasonably acceptable alternative to
the term, covenant or condition of this Agreement or the application
thereof that is invalid or unenforceable, it being the intent of the
parties that the basic purposes of this Agreement are to effectuated.
12.8 Independent Contractors. It is expressly agreed that Aurora and
Merck shall be independent contractors and that the relationship between
the two parties shall not constitute a partnership or agency of any
kind. Neither Aurora nor Merck 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.
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12.9 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.
12.10 Entire Agreement. This Agreement between the parties sets forth all
of the covenants promises, agreements, warranties, representations,
conditions and understandings between the parties hereto, and supersedes
and terminates all prior agreements and understanding between the
parties, with respect to the subject matter hereof. There are no
covenants, promises, agreements, warranties, representation 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.
12.11 No Third Party Beneficiaries. No Third Party, including any
employee of any party to this Agreement when acting within the scope of
his or her employment, shall have or acquire any rights by reason of
this Agreement. Nothing contained in this Agreement shall be deemed to
constitute the parties partners with each other or any third party.
12.12 Construction. The term "Article" or "Section" can refer to any
single paragraph level found herein or any collection of multiple
paragraphs.
12.13 Dispute Resolution. The parties recognize that disputes as to
certain matters may from time to time arise during the term of this
Agreement which relate to either party's rights and/or obligations
hereunder. It is the objective of the parties to establish procedures to
facilitate the resolution of disputes arising under this Agreement in an
expedient manner by mutual cooperation and without resort to
arbitration. The parties agree that prior to any arbitration concerning
this Agreement, a member of Merck's senior management and Aurora's
president will meet in person or by video-conferencing in a good faith
effort to resolve any disputes concerning this Agreement. Within thirty
(30) days of a formal request by either party to the other, any party
may, by written notice to the other, have such dispute referred to their
respective officers designated or their successors, for attempted
resolution by good faith negotiations, such good faith negotiations to
begin within thirty (30) days after such notice is received. Any dispute
arising out of or relating to this Agreement which is not resolved
between the parties or the designated officers of the parties pursuant
to Section 12.13 shall be resolved by final and binding arbitration
conducted in Denver, Colorado (unless the parties mutually agree to
another location) under the then current Licensing Agreement Arbitration
Rules of the American Arbitration Association ("AAA"). The arbitration
shall be conducted by three (3) arbitrators who are knowledgeable in the
subject matter which is at issue in the dispute. One arbitrator will be
selected by Merck and one arbitrator will be selected by Aurora and the
third arbitrator will be appointed by the AAA. 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 permit such discovery they
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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, specific
performance or replevin of property. The arbitrators shall also be able
to award actual or general damages, but shall not award any other form
of damage (e.g., consequential, punitive or exemplary damages). The
parties shall share equally the arbitrator's fees and expenses pending
the resolution of the arbitration unless the arbitrators require the
non-prevailing party to bear all or any portion of the costs of the
prevailing party. The decision of the arbitrators shall be final and may
be sued on or enforced by the party in whose favor it runs in any court
of competent jurisdiction at the option of such party. Notwithstanding
anything to the contrary in this Section 12, 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 8 hereof, or
otherwise to enforce and protect the patent rights, copyrights,
trademarks, or other intellectual property rights owned or Controlled by
such party. In no event shall a demand for arbitration be made after the
date when the institution of a legal or equitable proceeding based on
such claim, dispute or other matter in question would be barred by the
applicable statute of limitations.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized representatives.
MERCK & CO., INC. AURORA BIOSCIENCES CORPORATION
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇
----------------------------- ---------------------------------------
Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇
--------------------------- -------------------------------------
Title: President, Merck Research Title: President & Chief Executive Officer
-------------------------- ------------------------------------
Laboratories
--------------------------
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LIST OF EXHIBITS
***
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