Exhibit 10.59
FIRST AMENDMENT TO AGREEMENT THREE
Effective February 29, 1996, Agouron Pharmaceuticals, Inc., a California
corporation with offices at 10350 North Torrey Pines Road, La Jolla,
California 92037 ("Agouron"), and Japan Tobacco Inc., a Japanese corporation
with offices at JT Building, 2-2-1 Toranomon, Minato-ku, Tokyo 105 Japan
("JT"), for good and valuable consideration, agree as follows:
Article I
Background
1.01 Pursuant to the terms of the agreement which was originally entered
into on February 28, 1994 (hereinafter referred to as "Agreement Three"),
Agouron and JT have conducted a collaborative research program ("Research
Program") consisting of a research project ("Research Project V") to discover
novel anti-viral drugs to treat rhinovirus infections. JT has assisted
Agouron in the discovery activities of Research Project V to enable the
parties to develop scientific skills and information and experimental data
which have been made available to another collaborative research program
which the parties are conducting ("Agreement Two").
1.02 Section 1.20 of Agreement Three provides for a two year Research
Term expiring February 29, 1996, unless such Research Term is extended or
shortened by the mutual written agreement of the parties or by operation of
the provisions of Agreement Three, including Section 2.02 and Article VI.
1.03 The parties have elected not to extend Research Project V and,
instead, wish to refocus the research efforts which would have been committed
by Agouron scientists during the third year of Research Project V to the
Agreement Two research program. To affect the preceding and to clarify the
parties' rights and obligations, the parties agree to amend the terms of
Agreement Three by entering into this First Amendment to Agreement Three
("First Amendment").
1.04 For purposes of this First Amendment, terms with initial
capitalization shall have the same meanings as those set out in Agreement
Three.
Article II
First Amendment
2.01 The parties agree that the last day of the Research Term of
Agreement Three is February 29, 1996 and that the Research Program ends on
February 29, 1996.
2.02 The parties agree that only chemical compounds synthesized in the
Research Program during the Research Term shall be subject to the provisions
of Sections 3.05(c) and 5.03(c) of Agreement Three.
2.03 The parties agree that any chemical compounds not qualifying as
Program Compounds under the definition of Section 1.04 of Agreement Three,
which are synthesized in the Research Program during the Research Term shall
be assigned to and owned jointly by the parties.
2.04 The parties agree that, subject to the provisions of Section 5.03 of
Agreement Three, any Program Compounds shall be assigned to and owned solely
by Agouron. Any Patent Rights covering Program Compounds shall be assigned
to and owned jointly by the parties pursuant to the terms of Section 3.05 of
Agreement Three.
2.05 The parties agree that the chemical compounds to be contained in a
List of Agreement Three Compounds to be dated as of February 29, 1996 ("List
of Agreement Three Compounds") are the only chemical compounds synthesized in
the Research Program during the Research Term. The parties agree to use
their best efforts to classify as soon as possible the chemical compounds
contained in the List of Agreement Three Compounds, as being either Program
Compounds or Non-Program Compounds; such classification shall be based on the
definition of Program Compound which is set forth in Agreement Three, Section
1.04. The List of Agreement Three Compounds shall be reviewed and approved
in writing by both of the parties.
2.06 The parties agree that the chemical compounds contained in the List
of Agreement Three Non-Program Compounds dated as of February 29, 1996 do not
qualify as Program Compounds. The List of Agreement Three Non-Program
Compounds shall be reviewed and approved in writing by both of the parties
and shall be supplemented as the parties classify as being Non-Program
Compounds those previously unclassified chemical compounds contained in the
List of Agreement Three Compounds.
2.07 The parties agree that the chemical compounds contained in the List
of Agreement Three Program Compounds dated as of February 29, 1996 qualify as
Program Compounds. The List of Agreement Three Program Compounds shall be
reviewed and approved in writing by both of the parties, and shall be
supplemented as the parties classify as being Program Compounds those
previously unclassified chemical compounds contained in the List of Agreement
Three Compounds.
2.08 The parties agree that Program Technology does not include any know-
how, trade secret, experimental data, formula, expert opinion, experimental
procedure and other confidential and/or proprietary information (including
crystallographic information and coordinates): (i) specifically concerning
a Target Protein and/or (ii) specifically relating to the discovery of a
Program Compound, intermediates thereof, or a Program Product, which is
developed or acquired by or on behalf of Agouron or JT, independently or
jointly, as the case may be, after the last day of the Research Term.
2.09 The parties shall cause their respective employees to cooperate as
reasonably required to co-author manuscripts and to file patent applications
on separately or jointly made inventions arising out of Agreement Three.
2.10 The parties agree that Research Project V terminates effective
February 29, 1996, and agree to reallocate the research efforts which would
have been committed by certain of Agouron scientists during the third year of
Research Project V to Agreement Two.
2.11 Commencing March 1, 1996, Agouron shall be free, without any further
action by Agouron or JT and without any further obligation to JT, to continue
work to discover, develop, manufacture and market novel anti-viral drugs to
treat rhinovirus infections and/or chemical compounds which interact with a
Target Protein(s), on its own or with any third party. JT, on its own or
with any third party, agrees not to conduct research and development to
discover, develop, manufacture and market novel anti-viral drugs to treat
rhinovirus infections. JT agrees not to use Program Technology to discover,
develop, manufacture and/or commercialize novel anti-viral drugs to treat
rhinovirus infections. JT agrees not to disclose to third parties any
Program Technology. The parties hereby agree that any Program Technology
shall be assigned to and owned jointly by the parties and that either party
shall be free, subject to the preceding two sentences, to use Program
Technology for any purpose. If requested by either party, the other party
will provide an acknowledgment to a third party concerning the continuing
rights and obligations of the parties, if any, under Agreement Three.
2.12 The parties agree that effective February 29, 1996 Agreement Three
is amended to delete Section 5.03(a).
2.13 Except as modified by the terms contained herein, the provisions of
Agreement Three shall remain in full force and effect.
AGOURON PHARMACEUTICALS, INC. JAPAN TOBACCO INC.
By: /s/ Gary E. Friedman, Esq. By: /s/ Masakazu Kakei
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Gary E. Friedman, Esq. Masakazu Kakei
Title: Vice President & General Counsel Title: Managing Director,
Pharmaceutical Business
Date: February 16, 1996 Date: March 4, 1996