Exhibit 99.5
CONFIDENTIAL PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED PURSUANT TO REGULATION
240.24B-2B OF THE SECURITIES EXCHANGE ACT OF 1934. [*] INDICATES OMITTED
MATERIAL THAT IS THE SUBJECT OF A CONFIDENTIAL TREATMENT REQUEST AND IS FILED
SEPARATELY WITH THE COMMISSSION.
SERVICE AGREEMENT
This Service Agreement (the "Agreement") is made and entered into as of this
_23_ day of November 1998 ("Effective Date"), by and between Ribozyme
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Pharmaceuticals Incorporated, a Delaware corporation with offices located at
2950 Wilderness Place, Boulder, CO 80301 (hereinafter "RPI") and ATUGEN
Biotechnology GmbH organized under the laws of Germany, and having its principal
office in Berlin, Germany (hereinafter ATUGEN) (together, the "Parties").
WHEREAS, RPI is engaged in research, development and commercialization of
certain patented and/or proprietary nucleic acid technologies for therapeutic,
agricultural, animal health, diagnostic and functional genomics applications
(the " RPI Technology");
WHEREAS, ATUGEN is interested in conducting research, development and
commercialization activities in the field of Target Validation and Discovery
(TVD), as more fully described in the Business Plan of July 30, 1998, and
amendments thereof and a certain Participation Agreement which is incorporated
by reference herein; and
WHEREAS, ATUGEN desires to obtain from RPI, and RPI is willing to provide,
certain advice, consultation and other services in the field of Target
Validation and Discovery.
NOW THEREFORE, in consideration of the mutual covenants herein contained and
intending to be legally bound hereby, the Parties hereto agree as follows:
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Section 1
DEFINITIONS
1.1. "Business Development Team" shall mean RPI employees currently working in
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the business development group of RPI which currently includes four
professionals and two support staff.
1.2. "COGS" means RPI's fully-burdened costs of supplying Nucleic Acid
----
Molecules (including costs of raw materials, direct labor, quality control
testing, labeling, packaging and shipping costs) calculated in accordance
with RPI's accounting methods consistently applied in compliance with U.S.
generally accepted accounting principles (GAAP).
1.3. "Collaborator" shall mean any entity or person engaged in an active
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research and development collaboration with ATUGEN in its Target
Validation and Discovery program.
1.4. "Confidential Information" shall mean confidential and proprietary
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information of ATUGEN or RPI, including without limitation scientific
data, technical reports and business information, disclosed to the other
Party, provided that such information is in writing and marked
"CONFIDENTIAL" or with a similar legend, or is disclosed orally and is
reduced to writing and marked "CONFIDENTIAL" or with a similar legend
within 30 days after such disclosure.
1.5. "Delivery Reagents" shall mean RPI reagents useful for the delivery of
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Nucleic Acid Molecules to cells that are covered under RPI Technology.
1.6. "Existing Licensee" shall mean third parties with whom RPI has already
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granted certain licenses under RPI Technology in the Field and are listed
in the enclosed Appendix A.
1.7. "Expressed Ribozyme" shall mean a DNA or RNA vector encoding a Ribozyme
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and intended to be used to express such Ribozyme in cells.
1.8. "Field" shall mean any and all applications of Nucleic Acid Molecules, in
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the field of human therapeutic Target Validation and Discovery, transgenic
animal technology, Chip Technology and associated bioinformatics. Such
Field will include functional genomics or gene function identification in
human systems, in which the function of a gene is determined by using the
Nucleic Acid Molecule. The Field shall also include use of the Nucleic
Acid Molecules to validate a human therapeutic target.
1.9. "License Agreements" shall mean the License Agreement between RPI and
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ATUGEN dated November 23, 1998; a Manufacturing and Supply Agreement and
Sublicense
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Agreement and any amendments thereof, all of which are incorporated by
reference herein.
1.10. "Lipid Market Price" shall mean the average arms-length retail selling
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cost of the two market leading reagents for cell-based transfection.
These two market leading reagents shall be identified based on mutual
agreement of the Parties.
1.11. "Nucleic Acid Molecules" shall mean Expressed Ribozymes or Synthetic
----------------------
Ribozymes, GeneBloc reagents or nucleic acid probes. The term Nucleic
Acid Molecules, as used herein, shall not include (i) nucleic acid
molecules used for cloning, sequencing or amplification purposes, or
(ii) protein-encoding or peptide-encoding genes.
1.12. Nucleic Acid Product" means any substance that (i) is or is intended to
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be developed and sold commercially, and (ii) contains a non-protein or
non-peptide encoding oligonucleotide, including but not limited to, a
Nucleic Acid Molecule.
1.13. "Oligonucleotide Market Price" shall mean the price determined by mutual
----------------------------
agreement of the parties as the fair market price for an oligonucleotide
by reference to a Nucleic Acid Molecule available from third party price
lists comprising greater than fifty percent (50%) 2'-O-alkyl nucleotide
modification, an appropriate 5'- and/or 3'-cap modification and a length
equivalent to the Nucleic Acid Molecule to be supplied.
1.14 "Participation Agreement" shall mean the participation agreement of
August 24, 1998, and all amendments thereof, executed by ATUGEN and
founders of ATUGEN, including RPI.
1.15 "Prospective Licensee" shall mean third parties with whom RPI is
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currently discussing the licensing of certain RPI Technology in the Field
and are listed in the enclosed Appendix B.
1.16. "Ribozyme" shall mean a Nucleic Acid Molecule able to cause catalytic
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cleavage of itself or another molecule independent of protein.
1.17. "RPI Field" shall mean any and all applications of Nucleic Acid
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Molecules, including but not limited to, as a human or animal therapeutic
or diagnostic product or an agricultural product but excluding any
application of Nucleic Acid Molecules in the field of Target Validation
and Discovery (TVD).
1.18. "Synthetic Ribozyme" shall mean chemically synthesized Ribozymes.
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1.19. "Target" means a gene or partial sequence thereof, and those elements
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necessary for its expression or regulation, or its transcription,
translation, or replication product or intermediates or portions thereof.
1.20. "Target Validation and Discovery (TVD)" means a research program in which
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a nucleic acid molecule, including Nucleic Acid Molecules, is used to
determine the utility of a gene or gene product, as a therapeutic or a
therapeutic target, and/or for the discovery of genes or gene products as
potential therapeutics or therapeutic targets or as tools for the
identification of potential therapeutics or therapeutic targets. Such a
program is usually performed on behalf of a third party Collaborator, but
may be performed solely for ATUGEN's benefit or may consist of technology
rights which are licensed or sold to third parties for use in their own
non-Nucleic Acid-Molecule-based product development programs outside the
RPI Field.
Section 2
SCOPE OF RPI ACTIVITIES FOR ATUGEN
2.1 Activities. RPI will use reasonable best efforts to provide ATUGEN with all
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the advice, consulting and other services in the Field reasonably requested
by ATUGEN, ("RPI Activities"). The RPI Activities shall include, but shall
not be limited to, the following:
2.1.1. RPI shall transfer it's Target Validation and Discovery (TVD) business
to ATUGEN, subject to RPI's right to use the TVD program to the extent
that the License Agreements so allows
2.1.2. RPI shall transfer to ATUGEN RPI technology relating to the use of
Nucleic Acid Molecules in the Field.
2.1.3. RPI will supply to ATUGEN Nucleic Acid Molecules for use in the Field
under the provisions of the License Agreements.
2.1.4. RPI will supply to ATUGEN its Delivery Reagents for use in delivering
the Nucleic Acid Molecules to a range of cell types in the Field under
the provisions of the License Agreements.
2.1.5. RPI shall provide financial support to ATUGEN in the amount of two
million U.S. dollars (US $2 million) under the terms of the
Participation Agreement, at the Closing of the Participation Agreement.
2.1.6. RPI shall provide the following Scientific Consulting and Management
Support to ATUGEN:
2.1.6.1. RPI's Business Development Team will devote up to fifty percent (50%)
of it's time, during the first twelve (12) months from September 1,
1998, to provide Business Development support to ATUGEN under the
terms of this Agreement. ATUGEN may opt to extend this term of support
for an
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additional three-(3) months by requesting RPI for such an extension in
writing prior to the expiration of the nine month period.
2.1.6.2. RPI's Dr. Ralph E. Christoffersen (President and CEO) and Mr. Larry
Bullock (CFO) will spend up to twenty five percent (25%) of their time,
during the first nine (9) months from September 1, 1998, to provide
management support to ATUGEN under the terms of this Agreement. Such
Management support will include hiring senior and other personnel and
facilitating a smooth transition and technology transfer to ATUGEN. Dr.
Christoffersen and Mr. Bullock will make all reasonable efforts,
including possibly spending more time (greater than 25%) to meet the
management needs of ATUGEN during this nine (9) month period or for a
longer period of time if necessary as mutually agreed to by the
Parties. Neither Dr. Christoffersen nor Mr. Bullock will be deemed an
ATUGEN employee.
2.1.6.3. RPI's Dr. Nassim Usman (Vice President of Research) will spend up to
twenty five percent (25%) of his time, during the first nine (9) months
from September 1, 1998, to provide Research and Development management
support including a smooth transition and technology transfer, under
the terms of this Agreement. Such Management support will also include
hiring senior and other personnel necessary for ATUGEN. ATUGEN may opt
to extend this term of support for an additional three-(3) months by
requesting RPI for such an extension in writing prior to the expiration
of the nine month period. Dr. Usman at no time will be deemed an ATUGEN
employee.
2.1.6.4. RPI's Dr. James Thompson (Associate Director of Functional Genomics)
will become an ATUGEN employee upon commencement of ATUGEN's
operations. Dr. Thompson will remain in the Boulder, Colorado facility
and will not relocate to Berlin. The details of Dr. Thompson's
employment with ATUGEN will be governed under a separate Employment
Contract with ATUGEN.
2.1.6.5. RPI and its personnel will make all reasonable efforts to facilitate
the transfer of necessary technology and provide necessary services to
ATUGEN as provided herein.
2.1.6.6. For purposes of clarification, ATUGEN and RPI shall based on mutual
agreement determine the timing of the services to be provided by the
foregoing personnel, including the time, place and amount of services
to be rendered, up to the limits prescribed herein.
2.1.7. Existing Licensee Transfer.
---------------------------
RPI will transfer its contract with the Existing Licensees (see Appendix
A) to ATUGEN under the following terms, provided such transfer is
legally possible and the Existing Licensees agree to such a transfer.
RPI agrees to use its best efforts to obtain such approvals. One or more
representatives from ATUGEN, Berlin offices may have an opportunity to
assist RPI in its efforts to obtain the approvals from Existing
Licensees.
2.1.7.1. Beginning on the Effective Date of this Agreement and for a period of
five years thereafter, RPI shall receive all milestone payments,
success
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fees, and royalties provided under the contracts with each of the
Existing Licensees. ATUGEN will receive all research and development
payments under these contracts, provided ATUGEN will hire certain RPI
employees in Boulder, Colorado (the minimum number of such employees
to be based on contractual requirements in the agreements between RPI
and the Existing Licensees who have transferred to ATUGEN), and
provide necessary resources required for performance under the
agreements with the Existing Licensees. Such RPI employees hired by
ATUGEN under this section 2.1.7.1 will remain in Boulder, Colorado
facility and not relocate to Berlin, Germany.
2.1.7.2. After the fifth anniversary of the Effective Date of this Agreement,
RPI shall receive all milestone payments, success fees and royalty
payments relating to the development and commercialization of Nucleic
Acid Products provided under the contracts with each of the Existing
Licensees. ATUGEN will receive all other payments under these
contracts.
2.1.8. Prospective Licensee. For the contracts with the Prospective
---------------------
Licensees listed in Appendix B that are formalized by August 30, 1999,
or a later date designated based on mutual agreement of the Parties,
ATUGEN will pay to RPI a [*] of the total transaction value received
by ATUGEN from each such Prospective Licensee. To avoid double
payment, the success fee, under this Section 2.1.8, will not be paid
to RPI on any amounts for which RPI shall be directly reimbursed under
this Agreement or the supply provisions of the License Agreement.
2.1.9. The scope of activities to be performed by RPI for ATUGEN is strictly
limited to the above-mentioned services in this section unless
otherwise mutually agreed. Under no circumstances will RPI be entitled
to enter into business activities, such as negotiating contracts for
ATUGEN with third parties, for or on behalf of ATUGEN beyond the
auxiliary functions after the Effective Date of this contract.
Notwithstanding the foregoing, RPI will provide the services provided
under Sections 2.1.6.1-2.1.6.3 above, on behalf of and for ATUGEN.
Section 3
REMUNERATION FOR RPI AND RELATED PROVISIONS
3.1. Calculation of Fees. ATUGEN shall make payments to RPI according to the
-------------------
following provisions:
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3.1.1. For the services described under Sections 2.1.6.1, 2.1.6.2 and 2.1.6.3
above, ATUGEN will pay to RPI an amount equal [*] the actual salary of
each RPI executive (as set out in the financial statements of RPI filed
with the Securities and Exchange Commission (SEC)) performing services
thereunder, prorated to reflect time actually spent performing services
for ATUGEN during any given billing period. This payment, which takes
into account and fully compensates RPI for the additional costs (like
bonus, secretarial support, insurance etc.) incurred by RPI in
connection with the rendering of these services, shall be the only fee
to which RPI shall be entitled in connection with Sections 2.1.6.1,
2.1.6.2 and 2.1.6.3.
3.1.2. For the services described under Section 2.1.6.5 above, ATUGEN will pay
to RPI an amount equal to the billing rate of fully burdened cost per
full-time equivalent per year for each RPI employee, prorated to reflect
time actually spent performing services for ATUGEN during any given
billing period. This payment, which takes into account and fully
compensates RPI for the additional costs (like bonus, secretarial
support, insurance etc.,) incurred by RPI in connection with the
rendering of these services, shall be the only fee to which RPI is
entitled in connection with Section 2.1.6.5.
3.1.3. RPI shall not be entitled to any payments for services rendered pursuant
to Sections 2.1.3 and 2.1.4 other than those fees to which it is
entitled pursuant to the License Agreements.
3.1.4. For the services set forth in Sections 2.1.1, 2.1.2 and 2.1.6.4 or
otherwise requested by ATUGEN, ATUGEN shall reimburse RPI for its Costs
and Other Expenses (as defined in Section 3.2 below) incurred in the
performance of its obligations under those sections.
3.2. Costs. Under this Agreement Costs shall mean all costs incurred by RPI
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directly or indirectly in connection with the above-mentioned services
(i.e. rent, wages, travel expenses and the like), [*] plus any applicable
Value Added Tax (VAT), such [*] being intended to cover general
administrative expenses incurred in connections with such costs). Costs
shall not include out-of-pocket expenses, such as payments to advertising
agencies, promotion agencies and the like ("Other Expenses"). These Other
Expenses will be reimbursed by ATUGEN to RPIbut shall shall not be subject
to an additional[*].
3.3. Records. RPI shall record all costs actually incurred on the basis of
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completed costs using a recognized cost accounting method. All costs shall
be allocated to either RPI or ATUGEN, in accordance with such recognized
cost accounting method, based on the allocation key that is most
commensurate with the underlying activity. RPI shall document all
procedural instructions for the recording, determination and allocation of
costs. Such records shall be kept at RPI's principal place of business and
shall be retained
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by RPI for three (3) years following the end of the calendar year to which
such books and records pertain.
3.4 Audit Rights. ATUGEN shall be entitled to retain, at its own expense, an
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independent accounting firm to conduct one (1) audit per calendar year of
RPI's books and records of account regarding invoices for services provided
by RPI under this Agreement, for the sole purpose of verifying the accuracy
of invoices and RPI's compliance with the terms and conditions of this
Agreement. Such audit shall be conducted during RPI's normal business
hours and after at least ten (10) days written notice to RPI requesting the
audit.
3.5 Annual Estimates. Prior to the beginning of each fiscal year, RPI and
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ATUGEN shall collaborate to establish an annual non-binding estimation of
the amount of services RPI will perform under this Agreement during such
fiscal year. The budget for 1999 shall be agreed upon within sixty (60)
days from the Effective Date of this Agreement.
3.6 Billing Cycle. RPI shall provide to ATUGEN invoices for services no more
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than once per month and no less than twice per year. Each such invoice
shall be due and payable thirty (30) days following its receipt by ATUGEN.
Section 4
CONFIDENTIALITY
4.1 Any Party receiving any Confidential Information from the other Party in
connection with the execution, delivery and performance of this Agreement
shall keep, and shall cause its affiliates, officers, employees,
technicians, advisors and consultants and other agents to keep, all such
Confidential Information in confidence and shall not disclose such
Confidential Information to third parties, except in connection with a
license, sublicense or sale permitted hereunder requiring such disclosure
and containing appropriate confidentially provisions.
4.2 The obligations of confidentiality and nonuse set forth in this Agreement
shall not apply to any portion of the Confidential Information which:
(a) is or becomes public or available to the general public otherwise
than through the act or default of the receiving Party or its
affiliates or their employees, advisors or consultants; or
(b) is obtained by the receiving Party from a third party without a duty
of confidentiality who is lawfully in possession of such Confidential
Information and is not subject to an obligation of confidentiality
owed to the other Party or others; or
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(c) is known, as shown by competent evidence, by the receiving Party or
any of its affiliates prior to disclosure under this Agreement and
was not obtained or derived directly or indirectly from the other
Party; or
(d) is disclosed by the receiving Party or its affiliates pursuant to a
requirement of law, provided that such Party has complied with the
provisions set forth in paragraph 4.3.
4.3. If the receiving Party or any of its Affiliates becomes legally required
to disclose any Confidential Information, the receiving Party shall give
the other Party to this Agreement prompt notice of such fact so that such
Party may obtain a protective order or other appropriate remedy concerning
any such disclosure and/or waive compliance with the non-disclosure
provisions of this Agreement. The receiving Party and its Affiliates will
fully cooperate with the other Party to this Agreement in connection with
such Party's efforts to obtain any such order or other remedy. If any such
order or other remedy does not fully preclude disclosure or the other
Party to this Agreement waives such compliance, the receiving Party and
its affiliates will make such disclosure only to the extent that such
disclosure is legally required and will use its best efforts to have
confidential treatment accorded to the disclosed Confidential Information.
Notwithstanding the foregoing provisions, ATUGEN will be free to disclose
the terms of this Agreement to a third party, including ATUGEN's
Collaborators and potential investors, under confidentiality with such
third parties.
4.4 Term. The obligations of ATUGEN and RPI under this Section 4 shall
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continue for a period of five (5) years after the expiration of this
Agreement.
4.5 Return of Materials. Upon expiration or termination of this Agreement,
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each Party shall return all copies of Confidential Information disclosed
to such Party, and all other materials provided to such Party under this
Agreement; provided that one copy of such Confidential Information and
such materials may be retained for archival or legal purposes only.
Section 5
LIABILITY AND INDEMNIFICATION
5.1. ATUGEN agrees to indemnify, hold harmless and defend RPI, its officers,
employees, and agents, against any and all claims, suits, losses, damages,
costs, fees, and expenses asserted by third parties, both government and
non-government, resulting from or arising out of the exercise of this
Agreement. ATUGEN shall not be responsible for the negligence or
intentional wrong-doing of RPI and RPI shall indemnify and hold harmless
ATUGEN and its agents for such actions if necessary.
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5.2. ATUGEN shall maintain in force at its sole cost and expense, with
reputable insurance companies, general liability insurance and products
liability insurance coverage in an amount reasonably sufficient to protect
against liability under paragraph 5.1 above. RPI shall have the right to
ascertain from time to time that such coverage exists, such right to be
exercised in a reasonable manner.
5.3. Force Majeure. The Parties will not be liable for any failure to perform
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as required by this Agreement, to the extent such failure to perform is
caused by any reason beyond the control of either Party, or by reason of
any of the following: labor disturbances or disputes of any kind,
accidents, governmental policy, civil disorders, acts of aggression, acts
of God, energy or other conservation measures, failure of utilities,
mechanical breakdowns, material shortages, disease or similar occurrences.
Section 6
REPRESENTATIONS AND WARRANTIES
6.1. Representations of RPI. RPI represents that RPI has the legal right,
----------------------
authority and power to enter into this Agreement and meet the obligations
set forth herein. RPI further represents that it has not previously granted
other than to Existing Licensees, and will not grant to any third party
during the term of this agreement, any rights under the RPI Technology that
are inconsistent with the rights granted to ATUGEN herein in the Field. RPI
further declares that it has experience in providing the services described
under Section 2 of this Agreement and will use reasonable diligence in
providing these services.
6.2 Representations of ATUGEN. ATUGEN represents and warrants that ATUGEN has
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the legal right, authority and power to enter into this Agreement and meet
the obligations set forth herein.
6.3 NOTHING IN THIS AGREEMENT SHALL BE DEEMED TO BE A REPRESENTATION OR
WARRANTY BY RPI OF THE VALIDITY OF ANY OF THE PATENTS OR THE ACCURACY,
SAFETY, EFFICACY, OR USEFULNESS, FOR ANY PURPOSE, OF ANY INVENTION. RPI
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SHALL HAVE NO OBLIGATION, EXPRESS OR IMPLIED, TO SUPERVISE, MONITOR, REVIEW
OR OTHERWISE ASSUME RESPONSIBILITY FOR THE PRODUCTION, MANUFACTURE,
TESTING, MARKETING OR SALE OF ANY LICENSED PRODUCT, AND RPI SHALL HAVE NO
LIABILITY WHATSOEVER TO ATUGEN OR ANY THIRD PARTIES FOR OR ON ACCOUNT OF
ANY INJURY, LOSS, OR DAMAGE, OF ANY KIND OR NATURE, SUSTAINED BY, OR ANY
DAMAGE ASSESSED OR ASSERTED AGAINST, OR ANY OTHER LIABILITY INCURRED BY OR
IMPOSED UPON ATUGEN OR ANY OTHER PERSON OR ENTITY, ARISING OUT OF OR IN
CONNECTION WITH OR RESULTING FROM:
a. the production, use, or sale of any RPI Technology;
b. the use of any aspect of inventions; or
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c. any advertising or other promotional activities with respect to
any of the foregoing.
Section 7
TERM AND TERMINATION
7.1. Term. The Term of this Agreement shall commence on the Effective Date and
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continue until terminated as provided in this Section.
7.2. Termination for Cause. Either Party shall have the right to terminate
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this Agreement following any material breach or default in performance
under this Agreement by the other Party upon sixty (60) days prior written
notice by certified mail to the breaching Party specifying the nature of
the breach or default. Unless the breaching Party has either cured or
taken such steps as may be reasonably expected to cure the breach or
default prior to the expiration of such sixty (60) day period, the non-
breaching Party, at its sole option, may terminate this Agreement upon
written notice to the breaching Party. Termination of this Agreement shall
become effective upon receipt of such notice by the breaching Party.
7.3. Rights in Law or Equity. Except as otherwise expressly provided herein,
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termination by either Party pursuant to this Section 7 shall not prejudice
any other remedy that a Party might have in law or equity, except that
neither Party may claim compensation for lost opportunity or like
consequential damages arising out of the fact of such termination.
7.4. Termination for Insolvency. To the extent permitted by applicable law,
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either Party may terminate this Agreement immediately upon written notice
without opportunity to cure if the other Party becomes the subject of a
voluntary or involuntary petition in bankruptcy or any proceeding relating
to insolvency, receivership, liquidation, or composition for the benefit
of creditors, if such petition or proceeding is not dismissed with
prejudice within ninety (90) days after filing.
7.5. Termination at will: RPI has the right to terminate this Agreement at the
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end of each calendar year after the completion of the first year from the
Effective Date, provided it gives ATUGEN a six (6) month written notice
prior to termination.
7.6. Effect of Termination In the event of the termination of this Agreement
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neither party shall have any further obligations under this agreement
except as set forth in Section 7.7.
7.7 Survival. The following Sections of this Agreement shall survive
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expiration or termination of this Agreement: 4, 5 7.7 and 8.
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Section 8
GENERAL PROVISIONS
8.1. Dispute Resolution
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8.1.1 Any disputes arising between the Parties relating to, arising out
of or in any way connected with this Agreement or any term or
condition hereof, or the performance by either Party of its
obligations hereunder, whether before or after termination of this
Agreement, shall be promptly presented to the Chief Executive
Officer of RPI and the Chief Executive Officer of ATUGEN (or their
designees) for resolution. If these individuals cannot promptly
(within 30 days) resolve such disputes, then such dispute shall be
finally resolved by binding arbitration. Whenever a Party shall
decide to institute arbitration proceedings, it shall give written
notice to that effect to the other Party. The Party giving such
notice shall refrain from instituting the arbitration proceedings
for a period of thirty (30) days following such notice.
8.1.2 In the event that arbitration is instituted by ATUGEN, such
arbitration shall be held in Berlin, Germany. In the event that
arbitration is initiated by RPI, such arbitration shall be held in
Berlin, Germany. Judgment on any award rendered by the arbitrator
may be entered in any court having jurisdiction thereof. The Parties
agree that, any provision of applicable law notwithstanding, they
will not request, and the arbitrator shall have no authority to
award, punitive or exemplary damages against any Party.
8.1.3 Notwithstanding the above, in the event of a dispute concerning
inventorship between RPI and ATUGEN, the Parties hereby agree that
each will attempt to resolve such dispute by agreement between two
U.S. patent attorneys (one chosen by each Party) according to U.S.
patent laws. If those two attorneys fail within 30 days to reach a
resolution, then the Parties agree to reach a binding agreement by
negotiation between those two attorneys and a third patent attorney
chosen by those two attorneys. The three attorneys will reach a
binding agreement with regard to the dispute by a majority vote of
the three attorneys. Such dispute will be resolved in this manner
within 60 days from the date of the initial dispute.
8.2 No Use of Name. Neither Party shall use the name of the other in any form
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of advertising publicity or otherwise, any trade-name, personal name,
trademark, trade device, service mark, symbol, or any abbreviation,
contraction or simulation thereof owned by the other party; or public
promotion without the prior written approval of the other, or
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represent, either directly or indirectly, that any product or service of
the other party is a product or service of the representing party or that
it is made in accordance with or utilizes the information or documents of
the other party.
8.3 Governing Law. This Agreement shall be governed by, construed, and
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interpreted in accordance with the laws of Germany, including but not
limited to, export control regulations regarding commodities and technical
data/information. Parties specifically agree not to export or re-export
any commodities and/or data/information in violation of any applicable
U.S.A. or German laws and/or regulations.
8.4 Assignment. This Agreement may not be assigned or transferred by any of
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the Parties hereto without the prior written consent of the other Parties
which will not be unreasonably withheld; provided, however, that ATUGEN
may assign or transfer ATUGEN's rights and obligations under this
Agreement to an affiliate of ATUGEN or a successor to all or substantially
all of its assets or business relating to this Agreement, whether by sale,
merger, securities sale, operation of law or otherwise upon written notice
to RPI.
8.5 Entire Agreement. This Agreement constitutes the entire and only
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agreement between the Parties relating to the subject matter hereof, and
all prior negotiations, representations, agreements and understandings are
superseded hereby.
8.6 Further Assurances. At any time or from time to time on and after the
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Effective Date, RPI and ATUGEN shall at the request of the other (a)
deliver to the other such records, data or other documents consistent with
the provisions of this Agreement, (b) execute, and deliver or cause to be
delivered, all such assignments, consents, documents or further
instruments of transfer or license, and (c) take or cause to be taken all
such other actions, as may reasonably deem necessary or desirable in order
to obtain the full benefits of this Agreement and the transactions
contemplated hereby.
8.7 Notices. Any notice or other communication required or permitted under
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this Agreement shall be in writing and will be deemed given as of the date
such notice is (a) hand delivered, or (b) mailed, postage prepaid, first
class, certified mail, return receipt requested, or (c) sent, shipping
prepaid, receipt requested by national courier service, to the Party at
the address listed below or at such other addresses as may be given from
time to time in accordance with the terms of this notice provision.
If to ATUGEN: ATUGEN Biotechnology GmbH.
Robert-Rossle-Strasse 10
13125 Berlin
Germany
Attention: Managing Director
[*] Confidential treatment requested
If to RPI: Ribozyme Pharmaceuticals Inc.
2950 Wilderness Place
Boulder, CO 80301
Attention: President & CEO
8.8. Amendments or Modifications. No amendment or modification to this Agreement
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shall be effective unless assented to in writing by the Parties hereto. In
additon the parties will discuss in good faith any amendments requested by
the appropriate German government agency.
8.9 Waiver. The failure of a party in any instance to insist upon the strict
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performance of the terms of this Agreement will not be construed to be a
waiver or relinquishment of any of the terms of this Agreement, either at
the time of the party's failure to insist upon strict performance or at any
time in the future, and such terms will continue in full force and effect.
8.10 Headings. The headings of the several sections of this Agreement are
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intended for convenience of reference only and are not intended to be a
part of or to affect the meaning or interpretation of this Agreement.
8.11 Severability Should any of the provisions of this Agreement prove to be
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invalid or should this agreement contain omissions, the efficacy of the
remaining provisions shall not be disturbed. In lieu of the invalid
provision, the valid provision which comes closest to fulfilling the
intended economic purpose of the invalid provision shall be deemed agreed
upon. In the case of omissions, the provision which represents the meaning
and intention of this agreement and would have been agreed to if the
parties had been aware of it shall be deemed agreed upon.
8.12 Publication. Each Party shall use its best efforts to provide a copy of any
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publication under this Agreement forty-five (45) days in advance of such
submission for approval by the other party.
8.13 Counterparts. This Agreement may be executed in counterparts, each of
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which shall be deemed an original, but all of which together shall
constitute one and the same English version is binding.
8.14 Language. An English and a German version of this Agreement exist. Only the
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English version is binding, and the German version shall not be used for
any legal purpose, interpretive or otherwise.
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IN WITNESS WHEREOF, the Parties hereto, intending to be legally bound hereby,
have caused this Agreement to be executed by their duly authorized
representatives as of the date first written above.
ATUGEN BIOTECHNOLOGY GmbH
By: /s/ Ralph E. Christoffersen
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Name: RALPH E. CHRISTOFFERSEN
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Title: CEO/GESCHAFTSFUHRER
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Date: 11/23/98
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RIBOZYME PHARMACEUTICALS INC.
By: /s/ Larry Bullock
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Name: LARRY BULLOCK
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Title: CFO
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Date: 11/23/98
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Appendix A
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Listing of Existing Licensees Effective Date
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1. Schering AG, Germany 4/9/97
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2. Roche Bioscience 5/19/98
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3. Chiron 5/13/96
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4. Glaxo-Wellcome 7/16/98
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5. Parke-Davis 3/2/98
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Appendix B
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Prospective Licensees
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1. Abbott Laboratories
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2. Schering-Plough
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3. Metabolex
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4. Immunex
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5. Merck
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6. E. Merck
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7. Grunenthal
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8. Rhone-Poulenc-Rorer
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9. Alcon Laboratories
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10. Glaxo-Wellcome expansion
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11. Amgen
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12. Astra-Charnwood
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13. Smith-Kline Beecham
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14. Onyx
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15. Schering AG Expansion of TVD collaboration
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16. Signal Pharmaceuticals
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17. Parke-Davis Pharmaceuticals expansion
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18. Chiron expansion
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