EXHIBIT 10.56
COLLABORATIVE AGREEMENT
between
INCYTE GENOMICS, INC.
and
CORVAS INTERNATIONAL, INC.
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*** TEXT OMITTED AND FILED SEPARATELY
CONFIDENTIAL TREATMENT REQUESTED
UNDER 17 C.F.R. SS.SS. 200.80(b)(4),
200.83 AND 240.24b-2
This Agreement is entered into as of July 30, 2001 (the "Effective
Date") by and between Corvas International, a Delaware corporation ("Corvas"),
having its principal place of business at 3030 Science Park Road, San Diego, CA
92121, and Incyte Genomics, Inc., a Delaware corporation ("Incyte"), having its
principal place of business at 3160 Porter Drive, Palo Alto, CA 94304.
RECITALS
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WHEREAS, Incyte owns or has rights in certain patent rights and
know-how regarding certain high-throughput partial cDNA sequencing, cloning, and
data analysis technologies; and
WHEREAS, Incyte has compiled and is compiling, and owns, certain
information and data regarding certain cDNAs in confidential databases which may
be useful in the study of biological phenomena; and
WHEREAS, Incyte owns or has rights in certain patent rights and
know-how regarding certain cDNAs as well as certain of the proteins they encode;
and
WHEREAS, Corvas desires to obtain access to Incyte's LifeSeq(R)
Database Product(s) (as defined below), and to obtain licenses to use Incyte's
patent rights and know-how in the Database Products, to conduct research and
development of Drug Products (as defined below);
NOW, THEREFORE, the Parties agree as follows:
1.0 DEFINITIONS.
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The following terms shall have the following meanings:
1.1 "ACCESS TERM": shall mean the period commencing on the Effective Date
and ending on the date immediately preceding the [...***...]
anniversary of the Effective Date, unless sooner terminated under
Section 7.0).
1.2 "ANNOTATION INFORMATION": shall mean the information associated with
individual cDNAs contained in each and/or all of the LifeSeq(R)Database
Product(s), as applicable including, but not limited to, Gene
Expression Profiles, homology information, gene cluster identifiers,
etc.
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1.3 "ANNUAL REPORTING MECHANISM": shall mean Corvas' obligation, on an
annual basis, to notify Incyte as to the number of Gene Product(s) Used
by Corvas during the previous twelve (12) month period and the calendar
quarter in which such Gene Product was Used by Corvas.
1.4 "ANTISENSE FIELD OF USE": shall mean the treatment or prevention of any
disease, state or condition in humans by use of one or more
oligonucleotides or modified oligonucleotides which bind either (i) to
mRNA to block the translation of mRNA IN VIVO to inhibit, prevent
and/or alter protein production, or (ii) to DNA to prevent the
transcription of DNA into the mRNA copy of the gene IN VIVO. The
Antisense Field of Use does not include the sale or license to third
parties of Database Information or Gene Product(s) as research tools,
or the use of Database Information or Gene Product(s) to develop
database products or services.
1.5 "ANTISENSE PRODUCT(S)": shall mean oligonucleotides or modified
oligonucleotides derived from or targeted to Gene Product(s) for use in
the Antisense Field of Use.
1.6 "cDNA": shall mean a complementary DNA copy of messenger RNA.
1.7 "cDNA CLONE": shall mean an individual plasmid vector and cDNA insert,
which cDNA is usually a partial gene, and not necessarily a full-length
gene.
1.8 "CORVAS AFFILIATE": shall mean any corporation, firm, partnership, or
other legal entity, which, directly or indirectly is owned or under
common ownership by Corvas to the extent of which the common stock or
other equity ownership thereof is one hundred percent (100%) owned by
Corvas; provided however, that where local laws require a minimum
percentage of local ownership, the status of Corvas Affiliate will be
established if Corvas directly or indirectly owns or controls the
maximum ownership percentage that may, under such local laws be owned
or controlled by foreign interests.
1.9 "DATABASE INFORMATION": shall mean all or any part of the Annotation
Information and DNA Sequence Information which is contained in each
and/or all of the LifeSeq(R)Database Product(s), as applicable, and the
Gene Family Dataset.
1.10 "DESIGNATED GENE PRODUCT": shall mean a given Gene Product which is
selected for research and development, or other use by Corvas in
accordance with the terms and conditions of this Agreement, and is or
has been "Used By Corvas", as defined below, during the Access Term.
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1.11 "DNA SEQUENCE INFORMATION": shall mean human nucleotide sequences
incorporated into the LifeSeq(R) Database Product(s) provided by Incyte
to Corvas pursuant to this Agreement.
1.12 "DRUG PRODUCT(S)": shall mean any compositions of matter which are
ligands or inhibitors of Gene Product(s) which are agonists,
antagonists, and/or modulators of Gene Product(s), for use in the
treatment or prevention of any disease in humans; provided, however,
that Drug Product(s) shall not include Therapeutic Protein Products or
Antisense Products or Substrates of Gene Products.
1.13 "FULL LENGTH CLONE": shall mean, with respect to a given human gene, a
specific, purified cDNA Clone developed or acquired by Incyte,
containing the nucleotide sequence of the entire amino acid coding
region of such human gene.
1.14 "FULL LENGTH CONTIG": shall mean, with respect to a given human gene,
DNA Sequence Information contained in the LifeSeq(R)Database Product(s)
which corresponds to the entire amino acid coding region of such human
gene.
1.15 "GENE EXPRESSION PROFILE(S)": shall mean a listing of cDNAs by name
with each cDNA assessed by a homology score to be:
an exact match to a known gene sequence, or
a match to a proprietary Incyte cDNA, or
a homolog of a known gene or proprietary Incyte cDNA, or
a new clone with no prior identified homology or overlap.
This profile includes transcript abundance and certain annotation
information regarding such cDNA derived from Incyte and public
databases, but does not include DNA Sequence Information.
1.16 "GENE FAMILY DATASET": shall mean a single release of DNA Sequence
Information and Annotation Information relating to Gene Products that
are serine proteases, in flat file format, to be mined using Incyte's
bioinformatic services, from the most current commercially-released
version of the LifeSeq Database troduct(s) as of the Effective Date (to
be delivered electronically) using SPSCAN and Incyte Proprietary HMM's
and delivered by Incyte to Corvas pursuant to Section 2.1.3.
1.17 "GENE PRODUCT(S)": shall mean (i) Incyte's proprietary cDNA Clone(s)
and Full Length Clones corresponding to a given cDNA in the DNA
Sequence Information and (ii) any partial cDNAs, DNA sequences, genes,
and full length cDNAs corresponding to such genes, or any RNA
sequences, peptides,
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polypeptides and proteins encoded thereby. Gene Products shall exclude
Drug Products.
1.18 "INCYTE KNOW-HOW": shall mean the information, software, data and
biological materials consisting of or directly and solely relating to
Database Information which are Proprietary to Incyte either at the time
of disclosure to Corvas or at the time of Use By Corvas and not already
known to Corvas (with the right to use) independent of the Database
Information, as can be demonstrated by tangible records of Corvas
existing prior to such time of disclosure, all to the extent and only
to the extent that Incyte has the right to grant licenses, immunities
or other rights to Corvas thereunder; PROVIDED, HOWEVER, that Incyte
Know-How shall exclude Incyte Patent Rights and all Incyte Proprietary
Programs; and further provided that genomic DNA sequence information
which is part of the public domain or was already known to Corvas (with
the right to use) does not render Database Information non-proprietary
or non-confidential except to the extent that such genomic DNA sequence
information has been specifically and materially established as exon
region(s) (i) via standard molecular biology laboratory including, but
not limited to, isolation and analysis of cDNA clones (including ESTs),
5' and 3' RACE, "clone capture", RNA mapping with nuclease S1, mung
bean nuclease, ribonuclease, or exonuclease VII (including ribonuclease
protection), and other protocols described in Molecular Cloning, 3rd
Edition (Sambrook and Russell) or Current Protocols in Molecular
Biology (Ausubel, et al.). or (ii) through the use of a suitable
computer algorithm or visual inspection and comparison of genomic DNA
sequences (including predicted amino acid sequences of putative open
reading frames or ORF's) with known serine protease genes, cDNAs,
expressed sequence tags, and amino acid sequences, as can be
demonstrated by Corvas' tangible records existing prior to the time of
disclosure of Database Information
1.19 "INCYTE PATENT RIGHTS": shall mean the patents and/or patent
applications that (i) are owned, or controlled or licensed by Incyte to
the extent that they claim the composition of matter of Gene Product(s)
or any other cDNAs identified in the DNA Sequence Information, (ii) are
related to software or algorithms used by Incyte, and/or (iii) arise
solely from the generation of Database Information and claim the use of
Gene Product(s) with respect to Drug Product(s), throughout the world
as well as reissues, reexaminations, divisionals, provisionals,
continuations or continuations-in-part thereof or therefor only to the
extent that they claim, inventions described in (i) or (ii) above, all
to the extent and only to the extent Incyte has the right to grant
licenses, immunities or other rights thereunder; PROVIDED, HOWEVER,
that Incyte Patent Rights shall exclude all patent rights arising under
Incyte Proprietary Programs
1.20 "INCYTE PROPRIETARY PROGRAM(S)": shall mean an internal research and
development program of Incyte which involves investment by Incyte
intended to
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develop discoveries, inventions, data or information (whether or not
patentable) beyond that consisting of Database Information. In
particular, Incyte Proprietary Programs shall include discoveries,
data, inventions, or information related to antibodies. Incyte
Proprietary Programs are independent of those services regularly
performed by Incyte to produce or generate DNA Sequence Information and
Annotation Information intended to be released to the LifeSeq(R)
Database Product(s).
1.21 "INCYTE TECHNOLOGY": shall mean, collectively, Incyte Know-How and
Incyte Patent Rights.
1.22 "KNOWN GENE": shall mean a gene represented in the LifeSeq(R)Gold
Database, of which [...***...] or more Of the nucleotide sequence
within the open reading frame of the protein encoding the Serine
Protease domain region is Known to Corvas.
1.23 "KNOWN TO CORVAS": shall mean information, software, data, biological
materials and/or other materials disclosed or provided by Incyte to
Corvas which:
(a) is already known to Corvas at the time of disclosure by Incyte; or
(b) is generally known to the public or otherwise part of the public
domain at the time of its disclosure to Corvas; or
(c) was subsequently lawfully disclosed to Corvas by a third party,
provided it was not obtained by such third party directly or
indirectly from Incyte on a confidential basis; or
(d) was independently discovered or developed by Corvas as can be
documented by laboratory notebooks or other such records as are
customary for documenting research and product development
activities created at the time of such independent discovery or
development.
1.24 "LIFESEQ(R) DATABASE PRODUCT(S)": shall mean Incyte's proprietary
database of human Annotation InformatioN and DNA Sequence Information
and corresponding cDNA Clones and Full Length Clones as of the
Effective Date, and as updated thereafter during the Access Term to
include additional Annotation Information and/or DNA Sequence
Information and corresponding cDNA Clones, together with related
software and documentation, as described generally in Exhibit A.
1.25 "NET SALES": shall mean with respect to each country in the Territory,
invoiced sales by Corvas, or Affiliates or sublicensees of Corvas on
all sales of Drug Product (in final form for end use) to an
unaffiliated third party (whether an end-
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user, a distributor or otherwise), and exclusive of intercompany
transfers or sales, less the following deductions from such gross
amounts which are actually incurred, to the extent that they are
reasonable and customary amounts for such item in the market in which
such sale occurred: , and provided that such deductions shall not
exceed ten percent (10%) of aggregate invoiced sales:
(a) credits or allowances actually granted for damaged Drug Products,
returns or rejections, including recalls of Drug Product and
retroactive price reductions;
(b) freight, postage, shipping, customs duties and insurance charges;
(c) normal and customary trade, cash and quantity discounts,
allowances and credits;
(d) sales, value added or similar taxes duties or other governmental
charges (other than income taxes) levied on, absorbed or otherwise
imposed on the sale of royalty bearing products measured by the
billing amount, when included in billing;
(e) charge back payments and rebates granted to managed health care
organizations; or to federal, state and local governments, their
agencies, and purchasers and reimbursers or to trade customers;
(f) commissions paid to third parties other than sales personnel and
sale representatives or sales agents; and
(g) rebates (or equivalents thereof) granted to or charged by
national, state or local governmental authorities in countries
other than the United States.
1.26 "PHASE I CLINICAL TRIAL": shall mean that portion of the clinical
development program which provides for the trials of a specific Drug
Product on sufficient numbers of healthy volunteers and/or patients to
establish the safety of such Drug Product in humans to support
initiation of Phase II Clinical Trials.
1.27 "PHASE II CLINICAL TRIAL": shall mean that portion of the clinical
development program which provides for the continued trials of a
specific Drug Product on sufficient numbers of patients to establish
the safety and appropriate dose of such Drug Product in humans to
support initiation of Phase III Clinical Trials.
1.28 "PHASE III CLINICAL TRIAL": shall mean that portion of the clinical
development program which provides for the continued trials of a
specific Drug Product on sufficient numbers. of patients to establish
the safety and efficacy of such Drug
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Product to standard consistent with that necessary to support
Regulatory Approval required to market and sell the Drug Product for
the applicable indication(s) in any country in the world.
1.29 "REGULATORY APPROVAL": shall mean, with respect to any country in the
world, applications or approval of any national, supra-national ,
regional, state or local regulatory agency, department, bureau,
commission, council or other governmental entity, necessary for the
lawful manufacture, distribution, use, import, export or sale of Drug
Product(s) in such country.
1.30 "RESEARCH FIELD OF USE": shall mean all internal research applications
of Gene Product(s), associated with conducting research in the
identification, development and commercialization of Drug Products. The
Research Field of Use does not include the sale or license of Database
Information or Gene Product(s) as research tools, or the use of
Database Information or Gene Product(s) to develop database products or
services.
1.31 "SUBSTRATE(S)": shall mean an entity that is cleaved or modified by an
enzyme into one or more products.
1.32 "SERINE PROTEASE(S)": shall mean the Serine Protease Dataset and
(Chymo)trypsin family serine proteases, which are defined by the
following structural and mechanistic criteria. Members of this gene
family exhibit structural homology to trypsin and chymotrypsin. The
catalytic mechanism of these enzymes involves nucleophilic attack of
the P1 carbonyl carbon atom of a peptide bond by an active site residue
and the formation of a covalent acyl-enzyme intermediate. Genes
identified by Corvas which meet the above criteria but fall outside the
Serine Protease Dataset shall be noticed in writing, with respect to
gene identifier, to Incyte at the time of Use by Corvas.
1.33 "SERINE PROTEASE DATASET": shall mean those Gene Product(s) listed by
template identifier (as may be revised by Incyte) specified in Exhibit
C and any others identified by Incyte and provided in the
LifeSeq(R)Gold Database.
1.34 "TERRITORY": shall mean the entire world.
1.35 "THERAPEAUTIC FIELD OF USE": shall mean the treatment or prevention of
any disease, state or condition in humans by any means, (including
without limitation, gene therapy), excluding the Antisense Field of
Use. The Therapeutic Field of Use does not include the sale or license
of Database Information or Gene Product(s) as research tools, or the
use of Database Information or Gene Product(s) to develop database
products or services.
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1.36 "THERAPEUTIC PROTEIN PRODUCT(S)": shall mean any product or service,
including gene therapy, which uses a protein, peptide or polypeptide
which is a Gene Product in the treatment or prevention of any disease,
state or condition in humans, including gene therapy products; provided
however, that Therapeutic Protein Product(s) does not include Antisense
Product(s).
1.37 "USED OR USE BY CORVAS": shall mean the first use by Corvas or an
Affiliate of Corvas of Database Information or a proprietary cDNA Clone
obtained from Incyte hereunder, in each case which at the time of such
use is either included in the Incyte Know-How or the Incyte Patent
Rights, and provided that such first use by Corvas meets any or all of
the following criteria:
(a) Corvas uses such cDNA Clone from the LifeSeq(R) Database
Product(s) which contains DNA Sequence Information that partially
or completely codes for a Gene Product in a screening assay to
identify small molecules and/or antibodies which are antagonists,
agonists, inverse agonists, and/or modulators of Gene
Product(s);or
(b) Corvas uses such cDNA Clone from the LifeSeq(R) Database
Product(s) which contains DNA Sequence Information that partially
or completely codes for a Gene Product to synthesize or have
synthesized a peptide or polypeptide or protein or oligonucleotide
and test the efficacy of such Gene Product(s) in an animal disease
model system; or
(c) such Database Information or such cDNA Clone which contains the
Database Information is disclosed or otherwise transferred to a
third party including but not limited to consultants and
collaborators of Corvas; or
(d) such Database Information is specifically disclosed in a Corvas
patent or patent application
provided, however that if Corvas and/or an Affiliate of Corvas has
independently discovered, developed and/or acquired from an
unaffiliated third party (in each case without use of Incyte Technology
and as documented by Corvas', and/or Corvas' Affiliates, tangible
records generated at the time of such discovery, development or
acquisition) Known Gene sequence information and/or other information
with respect to a specific Gene Product contained in the LifeSeq(R)
Database Products which is Known to Corvas, then Corvas' and Corvas
Affiliates' use or disclosure of such independently discovered,
developed or acquired information shall not constitute "Use By Corvas".
For the avoidance of doubt, the use of a cDNA Clone or DNA Sequence
Information by Corvas as an array element on a gene expression
microarray for internal use by Corvas and its Affiliates shall not
require establishing such cDNA
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Clones or DNA Sequence Information as Designated Gene Products unless
and until the time that the subsequent use of such cDNA Clone or DNA
Sequence Information would qualify under any of the activities under
(b) to (d) above.
For the avoidance of doubt, the use of Database Information contained
in the LifeSeq(R) Database Product(s) to search for putative homologs
to a given sequence shall not trigger a license to, or establish such
DNA Sequence Information as, a Designated Gene Product except and until
the time that the subsequent use of such DNA Sequence Information would
qualify under any of the activities under (b) to (d) above.
1.38 "VALID CLAIM": shall mean a claim of an issued and unexpired Incyte
Patent Right which has not been held unenforceable, unpatentable or
invalid by a decision of a court or governmental body of competent
jurisdiction, unappealable or unappealed within the time allowed for
appeal, which has not been lost through an interference proceeding
which, but for the license granted by Incyte to Corvas, would be
infringed by the use, manufacture or sale of a Drug Product.
2.0 DATABASE ACCESS.
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2.1 ACCESS TO THE LIFESEQ(R)DATABASE PRODUCT(S).
2.1.1 ACCESS GRANT. Incyte hereby agrees to provide Corvas with access
to the Incyte Database Product(s) solely in accordance with the terms
and conditions of this Agreement. Up to [...***...] identified CorvaS
employees (specified in Exhibit B) or their alternates as mutually
agreed upon by Incyte and Corvas (consent by Incyte not to be
unreasonably withheld), all of whom will be located at Corvas
facilities at the address first written above, will have access to the
Incyte Database Products via on-line services over the Internet. Corvas
will comply with such security procedures, including the use of
confidential passwords assigned on an individual basis to each Corvas
employee who will have access to the Incyte Database Products as Incyte
may reasonably specify to maintain the security of the Incyte Database
Products, the confidentiality of the Database Information and the
limitations described in this Agreement with respect to Corvas' use and
disclosure of Database Information.
2.1.2 UPDATED RELEASES AND UPDATES. During the Access Term, Incyte
shall provide Corvas with on-line access data updates of newly released
Database Information, and such updated releases of the LifeSeq(R)
Database Product(s), as Incyte provides generally to its LifeSeq
Database Product collaborators.
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2.1.3 GENE FAMILY DATASET. Within fifteen (15) days after the Effective
Date, Incyte shall deliver to Corvas a copy of the Gene Family Dataset.
2.2 USE RESTRICTIONS AND SECURITY REQUIREMENTS
2.2.1 OWNERSHIP. Corvas hereby acknowledges that (a) Incyte has
expended significant resources and efforts to develop the
LifeSeq(R)Database Product(s) and the Database Information, (b) the
LifeSeq(R)Database Product(s) and the Gene Family Dataset represent
highly valuable and confidential assets, (c) Incyte is willing to grant
Corvas access to the LifeSeq(R)Database Product(s) and the Gene Family
Dataset in reliance upon the agreement by Corvas that it shall protect
the LifeSeq(R)Database Product(s) and the Gene Family Dataset from
unauthorized disclosure or use, and (d) the LifeSeq(R)Database
Product(s) and the Gene Family Dataset at all times during the term of
this Agreement shall remain the sole and exclusive property of Incyte.
2.2.2 PERMITTED USE.
(a) During the Access Term, Corvas shall have the right to use
the LifeSeq(R) Database Product(s) and the GenE Family Dataset
solely for its own internal use by authorized personnel of Corvas
in the Research Field of Use in secure work facilities of Corvas
in accordance with the terms and conditions of this Agreement.
(b) Corvas shall not disclose or transfer Database Information
which would constitute Incyte Know-How, or any portion thereof,
to any third party, except for Database Information and
corresponding cDNA Clone(s) specifically regarding a Designated
Gene Product and in each event solely in accordance with the
provisions of Sections 2.2.2(c), 2.2.3 and 5.0.
(c) Solely for purposes of system integration and/or to
facilitate data analysis and relational analysis (e.g. extraction
of DNA Sequence Information for homology analysis by Corvas
search algorithms), Corvas shall have the right to reproduce,
adapt, modify and prepare derivative works based upon the
Database Information ("Modifications") solely for internal use by
Corvas in its research and development programs. Modifications
shall be kept in confidence in the same manner as, and shall be
subject to the same terms and conditions as apply to, the
Database Information. Incyte shall have no obligations to support
any such Modifications. Corvas shall not acquire by reason of
this subsection (c) any ownership of any LifeSeq(R)Database
Product(s), the Gene Family Dataset, any portions thereof or any
title or rights therein. Corvas shall
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not distribute copies of, or provide access to, any Modifications
to any third party without the prior written approval of Incyte.
(d) Except as expressly set forth herein, or as otherwise agreed
by Incyte in writing, Corvas shall not reproduce, adapt, modify,
prepare derivative works based upon, or distribute copies of (in
whatever form whether tangible or intangible, by any means
whatsoever whether now known or hereafter invented), the
LifeSeq(R) Database Product(s) or the Gene Family Dataset,
including any substantial portion of the Database Information
from any field of the database.
(e) Corvas shall have the right to use, disclose and transfer
Database Information specifically regarding a Gene Product,
including to Affiliates of Corvas, academic and third party
collaborators, licensees, governmental agencies or offices or
otherwise solely for use in the discovery, research, development
and/or commercialization of Drug Products, subject to the
appropriate terms and conditions of this Agreement, including
Article 5.0. Any use of Database Information not in accordance
with the above is expressly prohibited.
2.2.3 DESIGNATED GENE PRODUCT(S). During the Access Term and pursuant
to the Annual Reporting Mechanism, Corvas shall have the right to use,
disclose and transfer Datatabase Information specifically regarding a
Designated Gene Product, including the Affiliates of Corvas, academic
and third party collaborators, licensees, governmental agencies or
offices or otherwise solely for use in the discovery, research,
development and/or commercialization of Drug Products, subject to the
appropriate terms and conditions of this Agreement, including Article
5.0. Any use of Database Information not in accordance with the above
is expressly prohibited.
2.2.4 RECORDS. Corvas shall maintain records of access to and use of
the LifeSeq(R)Database Product(s), the Gene Family Dataset and the
Database Information, sufficient to enable Corvas and Incyte to
determine, and monitor compliance with their respective rights and
obligations under this Agreement (e.g. laboratory notebooks and such
other records as are customary for documenting research and product
development activities). No more than once a year unless as otherwise
agreed in writing, at the request and the expense of Incyte, upon at
least forty-five (45) days' prior notice, Corvas shall permit an agent
appointed by Incyte and acceptable to Corvas to examine these records
solely to the extent necessary to verify the fulfillment of Corvas'
obligations under this Agreement, provided that such agent has entered
into a suitable confidentiality agreement with Corvas. Incyte's agent
shall only report to Incyte the results of such examination (i.e.,
whether or not Corvas is in compliance with its obligations under this
Agreement), and shall not disclose to Incyte any of Corvas'
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Confidential Information provided to it or to which it may have access
during the conduct of the examination.
2.2.5 LOSS, THEFT, UNAUTHORIZED DISCLOSURE OR USE. Corvas promptly
shall notify Incyte of a loss, theft or unauthorized disclosure or use
of the Database Information which comes to Corvas' attention.
2.2.6 TERMINATION OF THE ACCESS TERM. Upon termination or expiration of
the Access Term with respect to the applicable LifeSeq(R) Database
Product(s), Corvas, at its election:
(a) shall have the option of extending the term of such
LifeSeq(R) Database Product(s) subscription or individual
database module thereof under terms demonstrably consistent with
and comparable to those secured by comparable users of the
LifeSeq(R) Database Product(s) at the time of extension or under
terms to be mutually agreed to by Corvas and Incyte at the time
of extension; or
(b) shall discontinue use of such LifeSeq(R) Database Product(s)
and Database Information, and promptly return to Incyte, or upon
Incyte's written instruction destroy, all portions and copies of
such LifeSeq(R) Database Product(s) and the Database Information;
except for that certain Database Information specific to
Designated Gene Product(s) which are the subject of one or more
of the licenses granted to Corvas under Article 3.0 below.
Corvas agrees to perform with Incyte a mutually acceptable final
accounting of those Designated Gene Product(s) which are subject to one
or more of the licenses granted to Corvas under Article 3.0 below.
2.2.7 NOTIFICATION OF CLINICAL DEVELOPMENT. Corvas agrees to keep
Incyte reasonably informed of all Drug Product(s) resulting from the
use of the LifeSeq(R) Database Product(s) or the Gene Family Dataset,
including notification when a given Drug Product candidate has been
designated for clinical development according to appropriate Corvas
procedures. All information provided by Corvas to Incyte pursuant to
this Section 2.2.7 shall be treated as Corvas' Confidential
Information.
2.3 TRAINING.
2.3.1 At times mutually acceptable to Incyte and Corvas, Incyte shall
provide Corvas with two (2) days of training services at Incyte's
training facility in Palo Alto, California, regarding the use of the
LifeSeq(R) Database Product(s). Corvas may designate not more than
[...***...] employees to attend each SuCH training at
Page 13 *CONFIDENTIAL TREATMENT REQUESTED
Incyte, or such other number as mutually agreed. Each party shall bear
all accrued and out-of-pocket expenses of its own employees in
connection therewith.
2.3.2 At times mutually acceptable to Incyte and Corvas, Incyte shall
provide Corvas with two (2) days of training services at the Corvas'
facilities, regarding the use of the LifeSeq(R) Database Product(s).
ThE number of employees to receive such training shall be in the
reasonable discretion of Corvas. Each party shall bear all accrued and
out-of-pocket expenses of its own employees in connection therewith.
2.3.3 Incyte shall provide Corvas with such additional training
services at times to be agreed upon by Corvas and Incyte at Incyte's
facilities. Corvas shall pay Incyte [...***...] per Corvas employee
attending such training and shall be responsible for bearing the
travel-related expenses of any such Corvas employee attending training
at Incyte facilities.
3.0 LICENSE GRANTS.
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3.1 NON-EXCLUSIVE LICENSE UNDER INCYTE TECHNOLOGY--RESEARCH
3.1.1 SERINE PROTEASE(S). During the Access Term, Incyte hereby grants
to Corvas a worldwide, non-exclusive license (with a right to
sublicense as provided in Section 3.3 and publish and disclose as
provided in Section 5.2)) under the Incyte Technology to conduct
research with respect to Gene Product(s) in the Research Field of Use
and to discover, develop, make, have made, use, offer to sell, sell,
import, and distribute Drug Product(s): provided however, that with
respect to the Research Field of Use such grant does not include the
right to sell Gene Product(s). The first [...***...] such licenses
shall be included in the Access Fee provided for in Section 4.1. In the
event that Corvas purchases [...***...] in products or services from
Incyte within [...***...] of the Effective Date, the number of such
licenses included in the Access Fees specified in Section 4.1 shall be
the first [...***...]. Any additional licenses shall be provided by
Incyte to Corvas for [...***...] per Gene Product. The term of any
license specified in this Section 3.1.1 is provided for in Section 7.2.
3.1.2 NON-SERINE PROTEASE(S). During the Access Term and [...***...],
Incyte hereby grants to Corvas a worldwide, non-exclusive license (with
a right to sublicense as provided in Section 3.3, and publish and
disclose as provided in Section 5.2)) under the Incyte Technology to
conduct research and development activities with respect to Gene
Product(s) in the Research Field of Use and to discover, develop, make,
have made, use, offer to sell, sell, import, and distribute Drug
Product(s): provided
Page 14 *CONFIDENTIAL TREATMENT REQUESTED
however, that with respect to the Research Field of Use such grant does
not include the right to sell Gene Product(s). The term of any license
specified in this Section 3.1.2 is provided for in Section 7.2.
3.2 RESERVATION OF RIGHTS.
(a) Incyte reserves the right under the Incyte Technology (i) to
satisfy its obligations under this Agreement, (ii) to discover,
develop, make, have made, use and sell Gene Products, Drug Products,
Therapeutic Protein Products, and Antisense Products in all fields of
use, and (iii) to grant licenses to third parties to discover, develop,
make and use and sell Gene Products, Drug Products, Therapeutic Protein
Products, and Antisense Products in all fields of use.
(b) With respect to any proprietary cDNA Clone provided to Corvas under
Section 3.4, Incyte reserves the right under the Incyte Technology at
any time to (a) release such cDNA Clone to an Incyte database made
available to collaborators by Incyte on a nonexclusive basis, and/or
(b) to provide such cDNA Clone to any third party.
3.3 SUBLICENSING.
3.3.1 On a Gene Product-by-Gene Product basis, Corvas may sublicense to
any third party, the rights to Designated Gene Product(s) and the
Incyte Technology relating thereto granted under this Article 3.0 to
the extent necessary in order to permit the third party to develop,
make, have made, use, offer to sell, sell, transfer, import, export and
distribute Drug Product(s) as appropriate according to the role
assigned to that third party by Corvas' plan for the commercialization
of such Drug Product(s); PROVIDED, HOWEVER, that without the prior
written consent of Incyte, no sublicense of Incyte Technology will be
granted to any third party in the absence of [...***...], and (ii) the
license or sublicense of patent rights, if any, pertaining thereto,
owned by, licensed to or controlled by Corvas; and further provided
that each sublicense has a grant which is consistent with the terms
herein and that Corvas shall be responsible for payments and royalties
due to Incyte under Article 4.0. Corvas shall obtain the written
commitment of any sublicensee to abide by all applicable terms and
conditions of this Agreement. Promptly upon execution of any
sublicense, Corvas shall provide notice thereof to Incyte and
reasonable satisfactory evidence that such sublicense is in compliance
with this Section 3.3, and shall within thirty (30) days of execution
of such sublicense remit to Incyte a sublicense fee [...***...] for
each Designated Gene Product so sublicensed.
Page 15 *CONFIDENTIAL TREATMENT REQUESTED
3.3.2 No grant of right to sublicense rights to Database Information,
Designated Gene Product(s) and the Incyte Technology relating thereto
in the Research Field of Use in order to discover or research Drug
Products, Antisense Products and Therapeutic Protein Products is
provided by Incyte to Corvas herein.
3.4 SUPPLY OF cDNA CLONES. Upon the written request of Corvas and subject
to the grant of license rights as described in Section 3.1, Incyte
shall provide to Corvas, one or more isolated cDNA Clones from the
LifeSeq(R) Database Product(s) under the following terms and
conditions:
Shipments usually occur within twelve (12) business days of the receipt
of the order. For this service, a fee of [...***...] verified cDNA
Clone that is not a Full-Length Clone, and [...***...] per sequence
verified cDNA Clone that is a Full-Length Clone, will be payable. If
the cDNA Clone cannot be verified, there is no charge and Corvas may
request an alternative clone, or request failure analysis on the CDNA
Clone at a cost of [...***...] per clone. In failure analysis Incyte
will review the clone retrieval process to determine the failure point
and proceed to re-process, including searching an entire 96-well plate
in the case of gel tracking error or electroporating from master
archives if the clone will not transform. There is no refund of the
failure analysis fee if Incyte remains unsuccessful in obtaining a
verified clone..
Corvas agrees to submit any payments due within thirty (30) days from
receipt of invoice from Incyte in reasonably detailed form regarding
such clone supply.
Corvas agrees that such cDNA Clone(s) are provided to Corvas on a
nonexclusive basis and subject to any license(s) granted under Article
3.0.
3.5 NO IMPLIED LICENSES. No implied right or license is granted to Corvas
to utilize the Incyte Technology in a manner not expressly included
within the scope of the licenses granted pursuant to this Agreement.
Other than as expressly granted herein, no licenses either by estoppel,
implication or otherwise are granted herein. No grant or license to
Corvas under Incyte Technology is provided under this Article 3.0 with
respect to any Gene Product which has not been licensed by Corvas
pursuant to this Agreement (e.g. a Gene Product which is NOT a
Designated Gene Product).
4.0 SCHEDULE OF PAYMENTS; ROYALTIES.
- --- -------------------------------
4.1 ACCESS FEE(S).
Page 16 *CONFIDENTIAL TREATMENT REQUESTED
Corvas will pay to Incyte a fee for access to the LifeSeq(R) Database
Product(s) subscription ("Access Fee") of [...***...] each twelve (12)
month period during the Access Term. The Access Fee shall be payable
quarterly, with the first such payment due within ten (10) business
days of the Effective Date. In addition, Corvas will pay to Incyte a
one-time fee of [...***...] for the right to receive the Gene Family
Dataset, which will be payable within ten (10) business days following
Corvas' receipt of the Gene Family Dataset. Of the Access Fee, Corvas
agrees that [...***...] of the Access Fee will be allocated to any CDs
delivered by Incyte to Corvas, and [...***...] of the Access Fee will
be allocated to any user manuals delivered by Incyte to Corvas.
4.2 MILESTONE PAYMENTS AND ROYALTIES.
4.2.1 Milestone Payments and Royalties. Contingent on the each of the
events described below, the following payments and royalties shall be
paid by Corvas (within thirty (30) days of such event, except for
royalty payments, which are payable pursuant to Section 4.5) to Incyte
for each Drug Product(s) with respect to Designated Gene Products under
respective license(s) as applicable:
TABLE 4.2.1
--------------------------------------- ------------------------- -------------------------
Agreement as of Expansion
Effective Date Option
--------------------------------------- ------------------------- -------------------------
Non-Exclusive Non-Exclusive
License(s) under License(s) under
Incyte Incyte
Technology - Technology -
Drug Product Drug Product
(Section 3.1) (Section 3.1)
--------------------------------------- ------------------------- -------------------------
# of Designated Gene Product(s) [...***...] within [...***...] within
Serine Serine
Protease(s) Protease(s)
--------------------------------------- ------------------------- -------------------------
Upgrade Fee 0 [...***...]
See (g) below
--------------------------------------- ------------------------- -------------------------
Annual Access Fee [...***...] [...***...]
--------------------------------------- ------------------------- -------------------------
[...***...] [...***...] [...***...]
--------------------------------------- ------------------------- -------------------------
Page 17 *CONFIDENTIAL TREATMENT REQUESTED
--------------------------------------- ------------------------- -------------------------
[...***...] [...***...] [...***...]
--------------------------------------- ------------------------- -------------------------
--------------------------------------- ------------------------- -------------------------
[...***...] [...***...] [...***...]
--------------------------------------- ------------------------- -------------------------
--------------------------------------- ------------------------- -------------------------
[...***...] [...***...] [...***...]
--------------------------------------- ------------------------- -------------------------
--------------------------------------- ------------------------- -------------------------
[...***...] [...***...] [...***...]
--------------------------------------- ------------------------- -------------------------
--------------------------------------- ------------------------- -------------------------
[...***...] [...***...]
Royalties on Net Sales
See (i) below [...***...] [...***...]
--------------------------------------- ------------------------- -------------------------
Notes: All fees, payments, and royalties are to be made in United States dollars.
[...***...]
[...***...]
[...***...]
[...***...]
[...***...]
[...***...]
(g) Corvas shall hove the right during the Access Term or any
extensions thereof to upgrade the current access program to
Expanded Option specified in Table 4.2 above. The option to
upgrade must be exercised by [...***...]. An upgrade fee of
[...***...] apply. The values in each of the options will be
replaced and amended to the current contact. All other terms
within contract will apply.
[...***...]
[...***...] into a sublicense agreement with a third party who is also
subscriber of the LifeSeq Database Product, the Royalties on Net Sales
shall be [...***...].
Page 18 *CONFIDENTIAL TREATMENT REQUESTED
4.2.2 ROYALTY-RATE REDUCTION. Corvas shall have the right to reduce
royalty rates on Net Sales of all licensed Gene Products upon payment
of a one-time fee as set forth in Table 4.2.2. Reduction of royalties
can be exercised [...***...]. The royalty rates in the selected option
will be replaced and amended in the Agreement. All other terms in the
Agreement will remain in full force and effect.
TABLE 4.2.2
- ------------------ ------------------------------ ------------------------------ ------------------------------
ROYALTIES OPTION 1 OPTION 2 OPTION 3
PAYABLE ON ------------------------------ ------------------------------ ------------------------------
NET [...***...] [...***...] [...***...] [...***...] [...***...] [...***...]
- ------------------ ------------------------------ ------------------------------ ------------------------------
[...***...] [...***...] [...***...] [...***...]
- ------------------ ------------------------------ ------------------------------ ------------------------------
[...***...] [...***...] [...***...] [...***...]
- ------------------ ------------------------------ ------------------------------ ------------------------------
[...***...] [...***...] [...***...] [...***...]
- ------------------ ------------------------------ ------------------------------ ------------------------------
4.3 PAYMENT OBLIGATION. The foregoing payments under Section 4.2 will
accrue or become due or payable with respect to Drug Product(s) which
are:
(a) materially based on, or use materially or are directly
derived by material use of that which would constitute Incyte
Know-How at the time of Use By Corvas; or
(b) are covered by a Valid Claim of Incyte Patent Rights
and/or which Drug Product is identified; or
(c) discovered by a drug discovery process (e.g. compound
screening) which utilizes a Designated Gene Product which is
covered by a Valid Claim of Incyte Patent Rights.
Page 19 *CONFIDENTIAL TREATMENT REQUESTED
If a Drug Product would be covered by more than one of the licenses
referred to in Section 4.2 (e.g., where a Drug Product is covered by
two or more of the Designated Gene Product Licenses granted to Corvas
under Section 3.1), only the [...***...] and there will be no multiple
royalties due under such Section 4.2.
4.4 DURATION OF PAYMENT OBLIGATION. Royalty obligations payable with
respect to each Drug Product under a Valid Claim of Incyte Patent
Rights shall terminate on a country-by-country and product-by-product
basis on the [...***...] of [...***...] after the first country-wide
launch of each Drug Product in each country or (ii) expiration or
invalidation of the last-to expire Valid Claim which covers such
product in each country. Royalty obligations payable with respect to
each Drug Product under Incyte Know-How shall terminate on a
country-by-country and product-by-product basis [...***...] after the
first country-wide launch of each Drug Product in each country.
Upon termination of the royalty payment obligation, Corvas shall
thereafter have in perpetuity a royalty-free license to make, use and
sell such Drug Product in the specified field(s) of use without any
accounting to Incyte.
4.5 MODE OF PAYMENT. For purposes of determining when a sale of a
royalty-bearing Drug Product occurs, the sale shall be deemed to occur
on the date of the invoice to the purchaser of the Drug Product. All
royalty payments shall be made within ninety (90) days of the end of
each calendar quarter in which the sale was made. Any royalty payment
that is not paid on or before the date such payment is due under this
Agreement shall bear interest to the extent permitted by applicable
law, at two percentage points over the prime rate of interest as
reported by Bank of America NT&SA in San Francisco, California, from
time to time, for the number of days such payment is delinquent.
Royalties shall be deemed payable by the entity making the Net Sales
and subject to foreign exchange regulations then prevailing. Royalty
payments shall be made to Incyte in United States dollars. The rate of
exchange to be used in any such conversion from the currency in the
country where such Net Sales are made shall be the rate of exchange
used by Corvas for reporting such sales for United States financial
statement purposes.
4.6 RECORDS RETENTION. Corvas agrees to keep for at least three (3) years'
records of all sales of Drug Products in sufficient detail to permit
Incyte to confirm the accuracy of Corvas' royalty calculations. Once a
year, at the request and the expense of Incyte, upon at least
forty-five (45) days' prior written notice, Corvas shall permit a
nationally recognized, independent, certified public accountant
Page 20 *CONFIDENTIAL TREATMENT REQUESTED
appointed by Incyte and acceptable to Corvas, to examine these records
solely to the extent necessary to verify such calculations, provided
that such accountant has entered into a confidentiality agreement with
Corvas substantially similar to the confidentiality provisions of this
agreement, limiting the use and disclosure of such information to
purposes germane hereto. The examination shall be limited to pertinent
books and records for any year ending not more than twenty-four (24)
months prior to the date of such request. Corvas may designate
competitively sensitive information which such auditor may not disclose
to Incyte, PROVIDED, HOWEVER, that such designation shall not encompass
the auditor's conclusions. The accounting firm shall disclose to Incyte
only whether the royalty reports are correct or incorrect and the
specific details concerning any discrepancies. No other information
shall be provided to Incyte. If such accounting firm correctly
concludes that there was an underpayment of royalties by [...***...] or
more, Corvas shall pay all costs of such examination. If such
accounting firm concludes that additional royalties were owed, the
additional royalties shall be paid within thirty (30) days of the date
Incyte delivers to Corvas such accountant's written report. Any
overpayments by Corvas will be credited against future royalty
obligations. This section shall survive the cessation of payment
obligations under Section 4.3 for a period of two (2) years.
4.7 SHIPPING. Corvas shall pay, for its own account, any shipping, freight,
mailing expenses and the like payable to third parties not affiliated
with Incyte and arising out of obtaining tangible materials under this
Agreement and the transactions contemplated herein.
4.8 PAYMENTS AND TAXES. Unless otherwise provided in this Agreement, Corvas
agrees to submit payments within thirty (30) days from receipt of
invoice. All payments hereunder shall be in United States dollars and
shall be made by bank wire transfer in immediately available funds to
such account as Incyte shall designate in writing from time to time.
All payments by Corvas to Incyte under this Agreement shall be paid
from a Corvas account in a banking institution located in the United
States.
Corvas shall pay, or reimburse Incyte, as appropriate, and indemnify
Incyte against any sales, use, value added/ad valorem, surtax and
personal property taxes, customs duties, registration fees and the like
including interest and penalties arising out of this Agreement and
transactions contemplated herein and including the costs and
responsibility of any withholding taxes. Corvas shall make any
withholding payments due on behalf of Incyte, and shall promptly
provide Incyte with written documentation of any such payment made on
behalf of Incyte sufficient to satisfy any requirements of the United
States Internal Revenue Service, or foreign government, as applicable,
related to an application by Incyte for a foreign tax credit or refund
for such payment to the extent
Page 21 *CONFIDENTIAL TREATMENT REQUESTED
applicable; provided however that in the case where Incyte can take and
receives a credit or refund against its United States tax liability for
the withholding payments due on behalf of Incyte and made by Corvas,
then such credited or refunded withholding payment will be reimbursed
by Incyte or deducted by Corvas as appropriate. The Parties agree to
take reasonable and lawful steps to minimize the amount of tax to which
payments to Incyte are subject.
5.0 CONFIDENTIALITY AND PUBLICATION.
- --- -------------------------------
5.1 CONFIDENTIALITY. The Parties acknowledge that during the course of this
Agreement they will each receive from the other information, which is
proprietary, confidential and of commercial value to the disclosing
Party. For purposes of this Agreement, "CONFIDENTIAL INFORMATION" shall
mean scientific, technical or business information belonging to the
disclosing Party, which the disclosing Party marks "Confidential" if
disclosed in writing, or which the disclosing Party identifies as
confidential at the time of any visual or oral disclosure and promptly
confirms in writing to have been confidential. Except to the extent
expressly authorized by this Agreement, the Parties agree that, for the
Access Term and for five (5) years thereafter, the receiving Party
shall keep confidential and shall not publish or otherwise disclose and
shall not use for any purpose (except those expressly permitted under
this Agreement) any Confidential Information furnished to it by the
other Party pursuant to this Agreement, and regardless of the medium on
which it is provided, including know-how, except to the extent that it
can be established by the receiving Party by competent proof that such
information:
(a) was already known to the receiving Party, other than under
an obligation of confidentiality, at the time of disclosure by
the other Party;
(b) was generally known to the public or otherwise part of the
public domain at the time of its disclosure to the receiving
Party;
(c) became generally available to the public or otherwise part
of the public domain after its disclosure other than through
any act or omission of the receiving Party in breach of this
Agreement;
(d) was subsequently lawfully disclosed to the receiving Party
by a third party having no confidentiality obligations to the
disclosing Party with respect thereto;
(e) was independently discovered or developed by the receiving
Party without the use of the other Party's Confidential
Information, and such independent discovery or development can
be documented by the
Page 22
receiving Party's tangible records created at the time of such
independent development.
Each Party may disclose the other's Confidential Information to the
extent such disclosure is reasonably necessary in (i) filing and
prosecuting patent applications, and maintaining patents, or (ii)
prosecuting or defending litigation or (iii) complying with applicable
governmental laws and regulations governing the testing approval,
manufacture and marketing of Drug Products; provided, however, that
prior to disclosure of the other Party's Confidential Information it
will give reasonable advance notice to such Party, will only disclose
the minimum Confidential Information necessary, and will use reasonable
efforts to secure confidential treatment of such Confidential
Information.
It is understood that patent applications are filed with the
expectation and intention that such applications will, upon publication
of the applications and/or issuance of the resulting patents, result in
the publication or public accessibility of all information disclosed in
the underlying application and prosecution documents; provided,
however, that publication of such Information shall not affect either
Party's ongoing' obligations to the other Party with respect to
Information not so disclosed.
5.2 DISCLOSURE AND PUBLICATION. Except as provided for in Sections 2.2.3
and 3.3 above and by this Section 5.2 Confidential Information of
Incyte will not be published or disclosed in any form without the
written authorization of Incyte.
(a) Corvas, Corvas Affiliate(s) and its sub licensees may publish their
own scientific results and the conduct of their work within the scope
of the licenses granted under this Agreement, provided, however, that:
(i) any such publication by Corvas, its Affiliates or
sublicensees that would disclose Confidential Information of
Incyte shall require the prior written consent of Incyte,
which consent will not be unreasonably withheld or delayed and
such consent or denial of consent shall be provided to Corvas
within thirty (30) days of Incyte receiving request from
Corvas, provided that Corvas has given Incyte a copy of each
such publication for diligent review at least thirty (30) days
prior to its submission for publication; and
(ii) such disclosure is on an individual Gene Product-by-Gene
Product-basis, is related specifically to selection of
Designated Gene Product(s) and reflects research results which
have involved material investment above and beyond Database
Information; and
Page 23
(iii) Corvas has notified Incyte in accordance with the Annual
Reporting Mechanism ; and
(iv) Incyte has had the opportunity to file applications for
protection of subject matter that is proprietary to Incyte;
and
(v) any such publications will include recognition of the
contributions of Incyte according to standard practice for
assigning scientific credit, either through authorship or
acknowledgment as may be appropriate.
(b) Any scientific publications that would disclose Confidential
Information of Incyte on other than an individual Designated Gene
Product by Gene Product basis shall be under reasonable terms and
conditions mutually agreed between the Parties, including the
provisions of subparagraphs 5.2(a) (i), (iii) and (iv) above.
(c) Incyte recognizes that Corvas, in the normal course of business,
utilizes consultants, academic and third party collaborators who are
bound by a contractual obligation to Corvas, including an obligation of
confidentiality to Corvas. Corvas may disclose Confidential Information
of Incyte to such consultants and academic and third party
collaborators in the context of the disclosure of Corvas' own
scientific results or the conduct of its work within the scope of the
licenses granted herein, provided, however, that:
(i) Corvas has obtained a written obligation of
confidentiality and appropriate use restrictions no less
restrictive than those set forth herein and provided that such
third party shall not further disclose Confidential
Information; and
(ii) any such disclosure of Confidential Information which
includes the transfer of DNA Sequence Information or
biological materials shall be subject to a written materials
transfer agreement which protects the intellectual property
rights of Incyte and Corvas as set forth herein, such
agreement to include customary provisions regarding scope of
work, publication, protection of proprietary subject matter
and ownership of inventions; and
(iii) Corvas has notified Incyte in accordance with the Annual
Reporting Mechanism; and
Page 24
(iv) Corvas has obtained a written obligation from such third
party regarding Corvas' right to review publications which are
at least as restrictive as the provisions of Section 5.2(a)
herein.
d). With respect to the transfer of DNA Sequence Information or
biological materials on other than an individual Gene Product basis,
the provisions of Sections 5.2(c) sub-paragraphs (i) to (iv) above
shall apply and Collaborator agrees to obtain the prior written consent
of Incyte with respect to such third party transfer, and Incyte retains
the right to review and approve the relevant sections of the written
materials transfer agreement between Collaborator and such third party,
with such consent and approval not to be unreasonably withheld
e) Incyte shall not publish or disclose any of Corvas' Confidential
Information without the prior written consent of Corvas.
5.3 Notwithstanding anything to the contrary set forth herein, this Article
5.0 shall not be construed to allow Corvas, its Affiliates,
sublicensees, collaborators or consultants to publish or disclose the
contents of LifeSeq(R) Database Product(s), or any Incyte software or
hardware configurations, at any time without the express written
consent of Incyte.
6.0 INTELLECTUAL PROPERTY.
- --- ---------------------
6.1 INCYTE RIGHTS. With the exception of intellectual property rights
granted to Corvas under the nonexclusive or exclusive license(s)
granted under this Agreement, Incyte retains all rights it has to the
Incyte Technology, Database Information and the LifeSeq(R) Database
Product(s) and no licenses are granted herein except for those
expressly provided in Article 3.0 .
6.2 CORVAS RIGHTS. Except as otherwise provided herein, Corvas, its
Affiliates, licensees, or sublicensees, as applicable, shall
respectively retain all intellectual property rights and title in and
to any Gene Product(s), Drug Product(s), and inventions relating
thereto, discovered or developed by or for Corvas, provided, however,
that with respect to Full Length Clones or Full Length Contigs provided
to Corvas by Incyte hereunder, Incyte retains the right to file patent
application(s) with claims directed to composition of matter covering
such Full Length Clones or Full Length Contigs.
6.3 PATENT PROSECUTION. Except as provided herein, the filing, prosecution,
maintenance and enforcement of patent(s), copyrights, and other
proprietary rights regarding the Incyte Technology shall be the
responsibility of, and at the discretion of Incyte. Both parties shall
share equally the responsibility and
Page 25
expense of filing, prosecuting, maintaining and enforcing any patents,
copyrights and other proprietary rights created jointly by employees of
both Parties.
6.4 FREEDOM FROM SUIT: RESEARCH FIELD OF USE. Consistent with the license
grant of Incyte Patent Rights to Corvas as provided in Section 3.1
herein, with respect to composition of matter or use claims directed to
Designated Gene Product(s) owned or controlled by Corvas, its
Affiliate(s) or sublicensee(s), Corvas (or its Affiliate(s) or
sublicensee(s) as the case may be) agrees not to sue or bring any
action in any court or administrative agency or any other government
authority alleging infringement of said patents as a result of
activities of Incyte or its affiliates or (sub)licensee(s) in the
Research Field of Use which would constitute an infringement of said
patents, and further, Corvas (or its Affiliate(s) or sublicensee(s) as
the case may be) agrees to extend such freedom from suit or action to
further (sub)licensee(s) of Incyte, its affiliates, licensees or other
collaborators of LifeSeq(R) Database Product(s). The foregoing freedom
from suit provisions shall only apply with respect to such parties
which have executed an agreement which contains a provision with
substantially similar rights to Incyte, its affiliates , licensees and
collaborators with respect to any similar patents rights of said
affiliate, (sub)licensee or Corvas .
6.5 RESEARCH TOOLS AND DATABASE PRODUCTS OR SERVICES. With respect to
composition of matter or use claims directed to Designated Gene
Product(s) owned or controlled by Corvas, its Affiliate(s) or
sublicensee(s), Corvas (or its Affiliate(s) or sublicensee(s) (other
than Incyte under Section 6.4 above) as the case may be) agrees not to
sue or bring any action in any court or administrative agency or any
other government authority alleging infringement of said patents as a
result of activities of Incyte or its affiliates or (sub)licensee(s)
with respect to commercialization of research tools or database
products or services, including microarray-based research tools or
database products or services, by Incyte or its affiliates or
(sub)licensee(s) , which would constitute an infringement of said
patents, and further, Corvas (or Corvas Affiliate(s) or sublicensee(s)
as the case may be) agrees to extend such freedom from suit or action
to further (sub)licensee(s)s of Incyte, its affiliates or licensees
with respect to commercialization of research tools or database
products or services.
6.6 CORVAS PATENT INFORMATION. Corvas will provide Incyte with a list of
the serial numbers of all issued patents or published patent
applications ("Corvas Patent Information") containing composition of
matter or use claims directed to Designated Gene Products(s) owned or
controlled by Corvas, its Affiliate(s) or sublicensee(s), and shall
update the Corvas Patent Information on a quarterly basis. Incyte will
make Corvas Patent Information accessible to all licensees and
collaborators which have executed an agreement which contains a
provision which grants substantially similar rights to Incyte, its
Affiliates, licensees and
Page 26
collaborators with respect to any similar patents rights of said
affiliate, (sub)licensee or collaborator.
6.7 INCYTE PATENT INFORMATION. Incyte will provide Corvas with a list of
the serial numbers of all issued patents ("Incyte Patent Information")
containing composition of matter or use claims directed to Designated
Gene Products(s) owned or controlled by Incyte, its Affiliate(s) or
sublicensee(s), and shall update the Incyte Patent Information on a
quarterly basis.
6.8 THIRD PARTY PATENTS. Subject to the warranties made hereunder as to
each Party's knowledge of any third party rights that may be infringed
by the uses of the Database Information as contemplated herein, the
Parties acknowledge that, in order to discover, develop, and/or
commercialize one or more Gene Products, they may require licenses
under third party patent rights or such other rights,, and it is hereby
agreed that it shall be each Party's responsibility to satisfy itself
as to the need for such licenses and, if necessary, to obtain such
licenses. To the extent that Corvas obtains any such third party
licenses, it shall have no obligation to grant any sublicense or other
rights to Incyte or any third party with respect thereto.
7.0 TERM; TERMINATION.
- --- -----------------
7.1 TERMINATION AT FULL TERM. This Agreement shall commence as of the
Effective Date and shall expire on the last day of the Access Term,
unless terminated earlier as provided under this Section 7.1 or under
Section 7.3. Corvas shall have the right to terminate the Access Term
[...***...] after the Effective DaTe, upon thirty (30) days' prior,
written notice and upon payment to Incyte of a termination fee equal
[...***...].
7.2 TERM OF LICENSE(S). Upon termination or expiration of the Access Term,
to retain any license procured under Sections 3.1, Corvas shall, on a
Designated Gene Product by Designated Gene Product basis, pay to Incyte
[...***...] or [...***...], until:
a) the filing by Corvas of the earlier of an IND (or PMA, 510K,
PLA) or equivalent or initiation of Phase I Clinical testing
for which a milestone payment as been made pursuant to
Article 4.0 in which case such license shall then extend in
perpetuity; or
b) the license is terminated by Corvas prior to the filing by
of an IND (or PMA, 510K, BLA) or equivalent by Corvas, on or
before a given anniversary of the Access Term
Page 27 *CONFIDENTIAL TREATMENT REQUESTED
7.3 BREACH. Material failure by either Party to comply with any of its
obligations under this Agreement shall entitle the other Party to give
to the Party in default notice specifying the nature of the default and
requiring it to cure such default. If such default is not cured within
ninety (90) days after the receipt of such notice, the notifying Party
shall be entitled, without prejudice to any of its other rights
conferred on it by this Agreement, in addition to any other remedies
available to it by law or in equity, immediately to terminate this
Agreement by giving notice to the other Party. The right of a Party to
terminate this Agreement, as hereinafter provided, shall not be
affected in any way by its waiver or failure to take action with
respect to any previous default.
7.4 ACCRUED RIGHTS SURVIVING OBLIGATIONS. Termination, relinquishment or
expiration of this Agreement for any reason shall be without prejudice
to any rights which shall have accrued to the benefit of either Party
prior to such termination, or expiration. Except as set forth in
Section 7.3., upon any termination, relinquishment or expiration of
this Agreement, the following provisions will not terminate, but will
continue in full force and effect: Articles 2 (database access), 5
(confidentiality), 6 (intellectual property), 8
(representations/warranties), 9 (indemnity), and 10 (miscellaneous),
any licenses or options granted by Incyte or entered into by Corvas,
and any payment obligations thereunder pursuant to Corvas' rights under
Articles 3 and 4. In the event the Agreement is terminated by Corvas
due to a material breach by Incyte, Corvas will maintain a fully
paid-up, royalty -free, non-exclusive license to develop, use and
commercialize Designated Gene Products.
8.0 REPRESENTATIONS AND WARRANTIES; COVENANTS.
- --- -----------------------------------------
8.1 REPRESENTATIONS AND WARRANTIES. Each Party represents and warrants to
the other Party that:
(a) it is a corporation or entity duly organized and validly
existing under the laws of the state or other jurisdiction of
incorporation or formation;
(b) it has the corporate power and authority and the legal
right to enter into this Agreement and to perform its
obligations hereunder;
(c) the execution and delivery of this Agreement and the
performance by such Party of the transactions contemplated
hereby have been duly authorized by all necessary corporate
action of such Party; and
(d) except for the governmental and Regulatory Approvals
required to market the Drug Product(s) in the Territory, the
execution, delivery and performance of this Agreement by such
party does not require the
Page 28
consent, approval or authorization of, or notice, declaration,
filing or registration with, any governmental or regulatory
authority and the execution, delivery or performance of this
Agreement by such party does not violate any law, rule or
regulation applicable to such party.
8.2 INCYTE'S REPRESENTATIONS Incyte hereby represents, warrants and
covenants to Corvas as follows:
(a) to the best of Incyte's knowledge, as of the Effective
Date it is the owner, or licensee (with the right to
grant sublicenses), of the Incyte Patent Rights and
Incyte Know-How, and no other person, corporate or
other private entity, or governmental entity or
subdivision thereof, has or shall have any claim of an
ownership interest with respect to those Incyte Patent
Rights and Incyte Know-How owned by Incyte, whatsoever.
For purposes of this Section 8.2, the term "to the best of Incyte's
knowledge" shall mean in each case Incyte's best knowledge without
undertaking any special investigation with respect to such subject
matter beyond the scope of those diligent investigations normally
performed by Incyte in the course of its own business operations.
8.3 CORVAS REPRESENTATIONS. Corvas hereby represents, warrants and
covenants to Incyte that it will comply with its obligation to record
which Gene Product(s) have been Used by Corvas and to notify Incyte of
the number of such Gene Product(s) in accordance with the Annual
Reporting Mechanism.
8.4 NO CONFLICTING AGREEMENTS. Neither Party has in effect and after the
Effective Date neither Party shall enter into any oral or written
agreement or arrangement that would conflict with its obligations under
this Agreement.
8.5 COMPLIANCE WITH LAW. Each Party shall be responsible for compliance
with all applicable product safety, product testing, product labeling,
package marking, and product advertising laws and regulations with
respect to its own activities and Drug Products. Further, Corvas and
Incyte shall each comply with the regulations of the United States and
any other relevant nation concerning any use manufacture, export or
other transfer of technology, services, or products.
8.6 DISCLAIMERS.
(a) EXCEPT AS EXPLICITLY STATED HEREIN, NOTHING IN THIS AGREEMENT SHALL
BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY INCYTE THAT
ANY PATENT WILL ISSUE BASED UPON ANY PENDING PATENT APPLICATION WITHIN
THE INCYTE
Page 29
PATENT RIGHTS, THAT ANY PATENT WITHIN THE INCYTE PATENT RIGHTS THAT HAS
ISSUED OR ISSUES WILL BE VALID, OR THAT THE USE OF ANY LICENSE GRANTED
HEREUNDER OR THAT THE USE OF ANY INCYTE PATENT RIGHTS WILL NOT INFRINGE
THE PATENT OR PROPRIETARY RIGHTS OF ANY THIRD PARTY. INCYTE MAKES NO
REPRESENTATIONS OR WARRANTIES WITH RESPECT TO CORVAS' USE OF THE
INFORMATION TO BE PROVIDED TO IT HEREUNDER. EXCEPT AS EXPLICITLY STATED
HEREIN, ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WARRANTIES OF
MERCHANTABILITY, NOVELTY OR FITNESS OF GENE PRODUCTS OR DATABASE
INFORMATION FOR ANY PARTICULAR PURPOSE, ARE EXCLUDED. INCYTE MAKES NO
WARRANTY THAT THE DATABASE INFORMATION DOES NOT CONTAIN ERRORS.
(b) EXCEPT AS EXPLICITLY STATED HEREIN NEITHER PARTY WILL BE LIABLE FOR
CONSEQUENTIAL OR INCIDENTAL DAMAGES OF ANY NATURE ARISING FROM SUCH
PARTY'S ACTIVITIES UNDER THIS AGREEMENT; PROVIDED, HOWEVER, THAT THIS
LIMITATION SHALL NOT LIMIT THE INDEMNIFICATION OBLIGATION OF INCYTE
UNDER SECTION 9.2 BELOW FOR CONSEQUENTIAL OR INCIDENTAL DAMAGES
RECOVERED BY A THIRD PARTY.
9.0 INDEMNITY.
- --- ---------
9.1 INDEMNIFICATION BY CORVAS. Corvas shall indemnify, defend and hold
Incyte, its affiliates and licensees (other than Incyte) harmless from
and against any and all losses, liabilities, damages and expenses
(including reasonable attorneys' fees and costs) as the result of
claims, demands, actions or other proceedings which may be made or
instituted by any third party against any of them, except to the extent
such losses, liabilities, damages and expenses (including reasonable
attorney's fees and costs) resulted from the gross negligence,
recklessness or intentional misconduct of Incyte, and arising out of
(i) a material breach of Corvas' representations, warranties or
covenants under this Agreement, (ii) the development, manufacture,
possession, distribution, use, testing, sale or other disposition of
any Drug Product by Corvas, its Affiliates or licensees, (iii) products
liability arising from the use by any third party of Drug Product(s)
sold by or on behalf Corvas, its Affiliates or licensees, or (iv) the
gross negligence, recklessness or intentional misconduct of Corvas or
its Affiliates in connection with activities to be performed under this
Agreement.
9.2 INDEMNIFICATION BY INCYTE. Incyte shall indemnify, defend and hold
Corvas, its Affiliates and licensees harmless from and against any and
all losses, liabilities, damages and expenses (including reasonable
attorneys' fees and costs) as the result of claims, demands, actions or
proceedings which may be made or instituted by any third party against
any of them arising out of (i) a material
Page 30
breach of Incyte's representations, warranties or covenants under this
Agreement, (ii) the manufacture, possession, distribution, use,
testing, sale or other disposition of any product by Incyte, its
affiliates or licensees (other than Corvas, Corvas' Affiliates or
Corvas' sublicensees), or (iii) the gross negligence, recklessness or
intentional misconduct of Incyte or its affiliates in connection with
activities to be performed under this Agreement.
9.3 PROCEDURE. A Party that intends to claim indemnification under this
Article 9 (the "INDEMNITEE") shall promptly notify the indemnifying
Party (the "INDEMNITOR") of any loss, liability, damage, expense,
claim, demand, action or other proceeding in respect of which the
Indemnitee or any of its affiliates intend to claim such
indemnification, and the Indemnitor shall have the right to participate
in, and, to the extent the Indemnitor so desires, jointly with any
other Indemnitor similarly noticed, to assume the defense thereof with
counsel selected by the Indemnitor and reasonably satisfactory to the
Indemnitee; provided, however, that the Indemnitee shall have the right
to retain its own counsel, with the fees and expenses to be paid by the
Indemnitee. The indemnity provisions in this Article 9 shall not apply
to amounts paid in settlement of any loss, liability, damage, expense,
claim, demand, action or other proceeding if such settlement is
effected without the consent of the Indemnitor, which consent shall not
be withheld unreasonably. The failure to deliver notice to the
Indemnitor within a reasonable time after the commencement of any such
action, if prejudicial to the Indemnitor's ability to defend such
action, shall relieve such Indemnitor of any liability to the
Indemnitee under this Article 9, but the omission so to deliver notice
to the Indemnitor will not relieve it of any liability that it may have
to any Indemnitee otherwise than under this Article 9. The Indemnitor
may not settle the action or otherwise consent to an adverse judgment
in action or other proceeding that materially diminishes the rights or
interests of the Indemnitee without the express written consent of the
Indemnitee. The Indemnitee under this Article 9 and its employees and
agents, shall cooperate fully with the Indemnitor and its legal
representatives in the investigation of any action, claim or liability
covered by this indemnification.
10.0 MISCELLANEOUS PROVISIONS.
- ---- ------------------------
10.1 NO PARTNERSHIP. Nothing in this Agreement is intended or shall be
deemed to constitute a partnership, agency, distributorship,
employer-employee or joint venture relationship between the Parties. No
Party shall incur any debts or make any commitments for the other,
except to the extent, if at all, specifically provided herein.
10.2 ASSIGNMENTS. Neither Party shall assign any of its rights or
obligations hereunder except: (i) as incident to the merger,
consolidation, reorganization or acquisition of stock or assets or
similar transaction affecting all or substantially
Page 31
all of the assets or voting control of the assigning Party; (ii) in the
case of Corvas, to any Corvas Affiliate, or, in the case of Incyte, to
any firm, partnership or legal entity which directly or indirectly
owns, is owned by or is under common ownership with Incyte, provided
that the assigning Party remains liable and responsible for such Corvas
Affiliate's or Incyte subsidiary's performance hereunder, as
applicable; (iii) with respect to either Party as the assignor, as
incident to the acquisition or transfer of the assets affecting all or
substantially all of the assets of the business of the Party relating
to a given field of use, provided that the acquiring entity or
transferee continues to fulfill its obligations to the other Party
hereunder; (iv) with the written consent of the other Party, which
consent shall not be withheld unreasonably. This Agreement shall be
binding, upon the successors and permitted assigns of the Parties. Any
assignment not in accordance with the above shall be void. To the
extent that any assignment by Corvas hereunder would directly result in
an increase in any withholding taxes for which Incyte is responsible
under this Agreement, Corvas shall be responsible for such additional
taxes.
[...***...]
In no event will Corvas' LifeSeq(R) Database Product(s) access rights
be assignable to a successor or permitted assign if Incyte's
obligations thereunder would increase materially as a result of the
assignment (e.g. by having to service additional sites, or where Incyte
would incur a material increase in expenses and/or services over those
provided to Corvas hereunder), unless such successor or permitted
assign provides appropriate pro-rated adjustment of the access fees,
service charges or Incyte costs incurred, and consistent with access
fees, service charges or Incyte costs incurred pertaining to comparable
database services customers.
10.3 NO TRADEMARK RIGHTS. Except as otherwise provided herein, no right,
express or implied, is granted by this Agreement to use in any manner
the names "Incyte"
Page 32 *CONFIDENTIAL TREATMENT REQUESTED
or "Corvas", or any other trade name or trademark of Incyte or Corvas
or their affiliates in connection with the performance of this
Agreement.
10.4 PUBLIC ANNOUNCEMENTS. Except as may otherwise be required by law or
regulation, neither Party shall make any public announcement concerning
this Agreement or the subject matter hereof without the prior consent
of the other Party, such consent not to be unreasonably withheld. If
this Agreement is determined to be material to the business of either
Party so that its disclosure is required by law or regulation, the
other Party shall have the right to review and comment on the text of
the disclosure prior to its release to the public.
10.5 ENTIRE AGREEMENT OF THE PARTIES; AMENDMENTS. This Agreement and the
other agreements between the Parties of even date herewith constitute
and contain the entire understanding and agreement of the Parties and
cancels and supersedes any and all prior negotiations, correspondence,
representations, understandings and agreements, whether verbal or
written, between the Parties respecting the subject matter hereof. No
waiver, modification or amendment of any provision of this Agreement
shall be valid or effective unless made in writing and signed by a duly
authorized officer of each of the Parties.
10.6 APPLICABLE LAW. This Agreement shall be governed by and interpreted in
accordance with the laws of the State of Delaware, without reference to
the conflicts of law principles thereof. The parties expressly exclude
application of the United Nations Convention for the International Sale
of Goods.
10.7 NOTICES AND DELIVERIES. Any notice, requests, delivery, approval or
consent required or permitted to be given under this Agreement shall be
in writing and shall be deemed to have been sufficiently given if
delivered in person, transmitted by commercial overnight courier, or
transmitted by telex telegram or telecopy (facsimile, with confirmed
receipt) to the Party to whom it is directed at its address shown below
or such other address as such Party shall have last given by notice to
the other Party (referred to herein as "notice"). All notices shall be
effective upon receipt.
If to Incyte, addressed to:
Incyte Genomics, Inc.
3160 Porter Drive
Palo Alto, CA 94304
Attn: Roy Whitfield, Chief Executive Officer
If to Corvas, addressed to:
Corvas International, Inc.
3030 Science Park Road
San Diego, CA 92121
Attn: George P. Vlasuk, Ph.D., Chief Scientific Officer
Page 33
10.8 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.
10.9 FORCE MAJEURE. Force Majeure shall mean an Act of God, flood, fire,
explosion, earthquake, strike, lockout, casualty or accident, war,
civil commotion, act of public enemies, blockage or embargo, or any
injunction, law, order, proclamation, regulation, ordinance, demand or
requirement of any government or any subdivision, authority
representative thereof, or the inability to procure or use materials,
labor, equipment, transportation or energy sufficient to meet
manufacturing needs without the necessity of allocation, or any other
cause whatsoever, whether similar or dissimilar to those enumerated
above, which are beyond the reasonable control of such Party, which the
Party affected has used its reasonable best efforts to avoid, and which
prevent, restrict or interfere with the performance by a Party of its
obligations hereunder. The Party affected by Force Majeure shall give
notice to the other Party promptly in writing and whereupon shall be
excused from those obligations hereunder, to the extent of such
prevention, restriction or interference, provided that the affected
party shall use its commercially reasonable efforts to overcome, avoid
or remove such cause(s) of non-performance and shall continue
performance whenever such cause(s) is removed with all possible speed.
Nothing herein shall be deemed to require any party to settle on terms
unsatisfactory to such party with regard to any strike, lock-out or
other labor difficulty, any investigation or proceeding by any public
authority or any litigation by any third party.
Page 34
10.10 AFFILIATE PERFORMANCE. To the extent that any Affiliate of Corvas has
access to any LifeSeq(R) Database Product(s), has the right to receive
any other rights or benefits under this Agreement or otherwise is
obligated to perform any obligations under this Agreement, Corvas shall
cause such Affiliate to perform in full, when due, all applicable
obligations under this Agreement to the same extent as if such
Affiliate were a party to this Agreement; provided, however, that
nothing in this Section 10.16 shall expand the rights or benefits of
Corvas or Affiliates of Corvas, or the obligations of Incyte or
Affiliates of Incyte, beyond those otherwise expressly set forth in
this Agreement. Corvas shall guaranty timely performance in full by
such Affiliate of all such obligations. A breach by such Affiliate of
any such obligation shall constitute a breach by Corvas of this
Agreement.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by
their respective duly authorized officers as of the Effective Date.
INCYTE GENOMICS, INC.
By: /s/ Roy A. Whitfeild
-----------------------------------------
Name: Roy A. Whitfeild
---------------------------------------
Title: CEO
--------------------------------------
CORVAS INTERNATIONAL
By: /s/ George P. Vlasuk
-----------------------------------------
Name: George P. Vlasuk, Ph.D.
---------------------------------------
Title: Chief Scientific Officer
--------------------------------------
Page 35
EXHIBIT A
- ---------
LifeSeq Database Product Description as of Effective Date:
o Over 6.3 million ESTs
o Over 120,000 human genes; 60,000 of which are Incyte proprietary
o More than 30,000 5'-complete or full-length gene sequences
o Highly expressed and "rare" genes
o Over 1,200 representative tissue sources
LifeSeq(R) Gold online will accelerate scientists' discovery programs and
provide full online access to all of Incyte's public and proprietary data. This
database will also improve scientists' ability to reach their research
milestones and provide regular updates via the Internet without the standard
maintenance and hardware costs.
LifeSeq(R) Gold online is an Incyte-hosted version of the LifeSeq(R) Gold
database. The database contains Incyte proprietary and public gene transcripts
and is updated and assembled with new revisions regularly. Subscribers can
access LifeSeq & Gold online via the Incyte.com web site.
Page 36
EXHIBIT B
- ---------
Corvas employees with access to LifeSeq:
[...***...]
Page 37 *CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT C
- ---------
Serine Protease Dataset:
[...***...]
Page 38 *CONFIDENTIAL TREATMENT REQUESTED