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EXHIBIT 10.16
MATERIALS TRANSFER AND RESEARCH AGREEMENT
This Agreement is made as of June 27, 1996 (the "EFFECTIVE DATE"), by
and between ALANEX CORPORATION, a California corporation having offices at 3550
General Atomics Court, San Diego, California 92121 (the "COMPANY") and ROCHE
BIOSCIENCE, a division of Syntex (USA), Inc., a Delaware corporation, having
offices at 3401 Hillview Avenue, Mail Stop R7-101, Palo Alto, California 94303
("ROCHE BIOSCIENCE"), with respect to the following:
WHEREAS, the Company desires to transfer to Roche Bioscience, and Roche
Bioscience desires to receive, certain materials described in Exhibit A hereto
(the "MATERIALS") for the purpose of carrying out certain research (the
"RESEARCH") as more fully described in Section 5.1 of the Collaborative Research
and License Agreement between the Company and Roche Bioscience of even date
herewith.
NOW THEREFORE, in consideration of the foregoing premises and the
mutual covenants set forth below, the Company and Roche Bioscience hereby agree
as follows:
1. USE OF MATERIALS BY ROCHE BIOSCIENCE. Roche Bioscience shall use the
Materials solely for the purpose of carrying out the Research and shall not
attempt to reverse engineer, deconstruct or in any way determine the structure
or composition of the Materials. Roche Bioscience shall not sell, transfer,
disclose or otherwise provide access to the Materials to any person or entity
without the prior express written consent of the Company, except that Roche
Bioscience may allow access to the Materials to employees and agents for
purposes consistent with this Agreement provided that prior to such disclosure,
such individuals shall have been apprised of the proprietary nature of the
Materials and shall have executed written agreements consistent with the terms
hereof. Roche Bioscience will take all reasonable steps to ensure that such
employees and agents will use the Materials in a manner that is consistent with
the terms of this Agreement.
2. CONDUCT OF RESEARCH. Upon receipt of the Materials, Roche Bioscience
shall perform the Research utilizing its expertise and facilities in strict
accordance with all applicable laws, regulations and guidelines, including
without limitation, those regulations and guidelines promulgated by the U.S.
Food and Drug Administration and the U.S. Department of Agriculture. Roche
Bioscience understands that the Materials may have biological and/or chemical
properties that are unpredictable and unknown at the time of transfer, that they
are to be used with caution and prudence, and are not to be used for testing in
or treatment of humans.
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3. RESEARCH RESULTS. Roche Bioscience shall, in accordance with its
established practice, keep complete, accurate and authentic accounts, notes,
data and records of the Research performed under this Agreement. Roche
Bioscience shall promptly and fully disclose to the Company any and all
information, data and results obtained from conducting the Research or relating
to the use of the Materials (the "RESULTS"), which disclosure shall include,
without limitation, copies of relevant data, summaries and reports. Upon request
by the Company and in any event upon the conclusion of the Research, Roche
Bioscience shall prepare a summary report detailing the Results and the
underlying data, which report shall be delivered within thirty (30) days of the
termination of this Agreement. The Company shall have the right to use all such
Results for any purpose, including without limitation, referencing such Results
in any regulatory filings or patent applications. Roche Bioscience shall have
the right to use all such Results solely for research and other non-commercial
purposes.
4. PROPRIETARY RIGHTS.
a. COMPANY PROPRIETARY RIGHTS. Roche Bioscience agrees and
acknowledges that Roche Bioscience shall acquire no rights of any kind
whatsoever with respect to any patents, copyrights, trademarks, trade secrets or
other proprietary rights of the Company as a result of Roche Bioscience's
performance under this Agreement or otherwise and that the Company is, and shall
remain at all times, the sole owner of the Materials and related know-how.
b. INVENTIONS IN THE COURSE OF RESEARCH. In performing the
Research, Roche Bioscience may develop ideas, inventions, techniques and other
technology and associated intellectual property, whether or not patentable
(collectively, "INVENTIONS"). The Company and Roche Bioscience agree that all
Inventions shall be owned by Roche Bioscience; provided, however, that if Roche
Bioscience fails to exercise its option pursuant to Section 5.2 of the
Collaborative Research and License Agreement, Roche Bioscience shall assign all
of its right, title and interest in and to such Inventions to the Company at the
end of the Option Period (as defined therein). Roche Bioscience shall promptly
disclose to the Company all Inventions made in the course of the Research and,
where applicable, shall perform, or ensure that its personnel and students shall
perform any and all acts necessary to assist the Company in perfecting its right
to any and all such Inventions, including executing or having executed any
documents effecting the assignment to the Company of all rights to the same.
5. CONFIDENTIAL INFORMATION. Anything in this Agreement to the contrary
notwithstanding, any and all knowledge, know-how, practices, processes or other
information (hereinafter referred to as "CONFIDENTIAL INFORMATION") disclosed or
submitted in writing or in other tangible form by one party to the other and
which is designated as Confidential Information shall be received and maintained
by such other
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party in strict confidence and shall not be disclosed to any third party. Roche
Bioscience expressly acknowledges that the Results shall be considered the
Company's Confidential Information. Neither party shall use said Confidential
Information for any purpose other than those purposes specified in this
Agreement. Each party may disclose Confidential Information to employees,
consultants or agents requiring access thereto for the purposes of this
Agreement, provided, however, that prior to making any such disclosures, each
such individual shall be apprised of the obligation to maintain Confidential
Information in confidence and not to use such information for any purpose other
than in accordance with the terms and conditions of this Agreement. Each party
further agrees to take all steps necessary to ensure that the Confidential
Information received will be maintained in confidence including such steps as it
takes to prevent the disclosure of its own proprietary and confidential
information of like character. Each party agrees that this Agreement shall be
binding upon its affiliates, and upon the employees and associates of each party
and its affiliates. Each party will take all steps necessary to ensure that its
affiliates, employees and associates will comply with the terms and conditions
of this Agreement. This obligation of confidentiality shall survive, and remain
in effect for a period of five (5) years from, the termination of this
Agreement.
6. EXCLUSIONS FROM NONDISCLOSURE OBLIGATION. The nondisclosure
obligation in Section 5 shall not apply to Confidential Information which, to
the extent that either party can establish by competent written proof: (a) is
now, or hereafter becomes, part of the public domain by publication or
otherwise, except by breach of this Agreement by the receiving party; (b) was in
the receiving party's possession in documentary form at the time of disclosure;
(c) is received by the receiving party from a third party who has the lawful
right to disclose the Confidential Information and who shall not have obtained
the Confidential Information either directly or indirectly from the disclosing
party; or (d) is disclosed as required by law or regulation.
In the event that Confidential Information is required to be disclosed
pursuant to subsection (d), the party under such obligation shall notify the
other party to allow such other party to assert whatever exclusions or
exemptions may be available to it under such law or regulation.
7. INDEMNITY. In no event shall the Company be liable for any use by
Roche Bioscience of the Materials. Roche Bioscience hereby agrees to indemnify,
defend and hold the Company harmless from damages for any loss, claim, injury
liability or the like, which may arise from Roche Bioscience's use, handling or
storage of the Materials.
8. DISCLAIMER OF WARRANTIES. ROCHE BIOSCIENCE ACKNOWLEDGES AND AGREES
THAT THE MATERIALS ARE BEING SUPPLIED TO ROCHE BIOSCIENCE WITH NO WARRANTIES OF
ANY KIND, EXPRESS OR IMPLIED, INCLUDING ANY WARRANTY OF MERCHANTABILITY
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OR FITNESS FOR A PARTICULAR PURPOSE OR THAT THEY ARE FREE FROM THE RIGHTFUL
CLAIM OF ANY THIRD PARTY, BY WAY OF INFRINGEMENT OR THE LIKE. NEITHER PARTY
MAKES REPRESENTATIONS THAT THE USE OF THE MATERIALS WILL NOT INFRINGE ANY PATENT
OR PROPRIETARY RIGHTS OF ANY THIRD PARTIES.
9. TERM. This Agreement, and Roche Bioscience's Research hereunder,
shall commence on the Effective Date and shall run until ninety (90) days from
the Effective Date.
10. TERMINATION. The rights and obligations under Sections 1, 4, 5 and
7 shall survive any termination, expiration or completion of this Agreement with
respect to information generated and activities and events occurring prior
thereto. Upon expiration or any termination of this Agreement, Roche Bioscience
shall promptly return to the Company or destroy, as the Company directs, all
remaining Materials and all Confidential Information of the Company.
11. INDEPENDENT CONTRACTORS. The parties shall perform their
obligations under this Agreement as independent contractors and nothing
contained in this Agreement shall be construed to be inconsistent with such
relationship or status. This Agreement shall not constitute, create or in any
way be interpreted as a joint venture or partnership of any kind.
12. ENTIRE AGREEMENT. This Agreement, together with the exhibits
attached hereto and the Collaborative Research and License Agreement between the
Company and Roche Bioscience of even date herewith, set forth the complete and
entire agreement of the parties hereto with respect to the subject matter hereof
and supersedes and terminates all prior agreements and understandings between
the parties hereto. No subsequent amendment 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 hereto.
13. GOVERNING LAW. This Agreement shall be governed by the laws of
the State of California as those laws are applied to contracts entered into and
to be performed entirely in California by California residents.
14. NOTICES. Any notices required or permitted hereunder shall be given
to the appropriate party at the address specified below or at such other address
as the party shall specify in writing. Such notice shall be deemed given upon
personal delivery, or three (3) days after the date of mailing when sent by
certified or registered mail, postage prepaid.
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IN WITNESS WHEREOF, the parties have by duly authorized persons,
executed this Agreement, as of the date first above written.
ROCHE BIOSCIENCE ALANEX CORPORATION
By: By: /s/
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Title: Title: President & CEO
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Date: Date: 06/27/96
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IN WITNESS WHEREOF, the parties have by duly authorized persons,
executed this Agreement, as of the date first above written.
ROCHE BIOSCIENCE ALANEX CORPORATION
By: /s/ James N. Woody By: /s/ Marvin R. Brown
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Title: President Roche Bioscience Title: President & CEO
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Date: 06/27/96 Date: 06/27/96
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EXHIBIT A
MATERIALS
[To be supplied by Alanex]
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