<PAGE>
EXHIBIT 10.23
*** TEXT OMITTED AND FILED SEPARATELY
PURSUANT TO A CONFIDENTIAL TREATMENT REQUEST
UNDER 17 C.F.R. SECTION 200.80(b)(4)
AND RULE 406 UNDER THE SECURITIES
ACT OF 1933, AS AMENDED
COLLABORATION AGREEMENT
THIS
COLLABORATION AGREEMENT (the "AGREEMENT") is effective as of
August
1, 2003 (the "EFFECTIVE DATE") by and
between STRUCTURAL GENOMIX, INC. a
Delaware corporation located at 10505
Roselle Street, San Diego, CA 92121
("SGX"), and OSI PHARMACEUTICALS, INC., and
its Affiliates, a Delaware
corporation, with executive offices at 58
South Service Road, Melville, New York
11747 ("OSIP"). SGX and OSIP may be
referred to herein individually as a "Party"
and collectively as the "Parties."
BACKGROUND
WHEREAS,
SGX has expertise in the field of structure directed drug
discovery;
WHEREAS,
OSIP has expertise in the discovery, validation and development
of drugs for the treatment of cancer;
WHEREAS,
SGX and OSIP wish to enter into a collaborative research
program
to perform high-throughput co-complex
structure determination of OSIP drug
targets with compounds provided by
OSIP.
NOW,
THEREFORE, in consideration of the foregoing and the covenants
and
promises contained in this Agreement, the
Parties hereby agree as follows:
1. DEFINITIONS
1.1
"Affiliate" means, with respect to a Party hereto, a
corporation,
company or other entity that is owned or
controlled by such Party by virtue of
such Party's direct or indirect ownership
or control of more than fifty percent
(50%) of the outstanding shares or
securities (representing the right to vote
for the election of directors or other
managing authority) of such corporation,
company or other entity, but such
corporation, company or other entity shall be
deemed to be an Affiliate only so long as
such ownership or control exists.
1.2
"Co-Complex Structure" means the three dimensional atomic structure
of
the bound combination of a OSIP Target with
an OSIP Compound or Other Compound,
made in the course of the Collaboration,
which has the following
characteristics: either (a) (i) [...***...]
(i.e., the [...***...] or is
[...***...]); (ii) [...***...] in the
[...***...]; (iii) [...***...]%[...***...]
and [...***...]% in the [...***...]; (iv)
[...***...]; and (v) [...***...]; or
(b) (i) [...***...]; (ii) [...***...] in
the [...***...]; (iii)
[...***...]%[...***...] and [...***...]% in
the [...***...]; (iv) [...***...];
(v) [...***...]; and (vi) [...***...] in a
[...***...] for the [...***...]
provided that the [...***...] of the
[...***...] is [...***...] and [...***...].
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1.3
"Collaboration" means the research collaboration performed by
the
Parties pursuant to Section 2.1.
1.4
"Collaboration Technology" means Patent Rights and Know-How which
are
conceived or reduced to practice or
otherwise developed by or on behalf of OSIP
or SGX or jointly by OSIP and SGX during
and in the performance of the
Collaboration, including without limitation
Co-Complex Structures; provided
however, Collaboration Technology does not
include SGX Background Technology or
OSIP Background Technology.
1.5
"Controls" or "Controlled" means possession of the ability to
grant
the licenses or sublicenses as provided for
herein, without violating the terms
of any agreement or other arrangement with
a Third Party.
1.6
"Know-How" means all ideas, inventions, instructions, designs,
processes, formulas, software, materials,
methods, processes, techniques, and
data.
1.7 "OSIP
Background Technology" means all Patent Rights and Know-How
owned or Controlled by OSIP which are: (a)
existing on the Effective Date or
developed during the Term of the
Collaboration (i) outside of the Collaboration
or (ii) within the Collaboration but are of
general application (for example,
have application to other proteins in
addition to the OSIP Targets); and (b)
necessary for the conduct of the
Collaboration.
1.8 "OSIP
Compound" means an active small molecule ligand that is
provided
by OSIP to SGX for inclusion in the
Collaboration that is not publicly known to
bind to, inhibit or modulate or to be
likely to bind to, inhibit or modulate,
the OSIP Target to which it is intended to
be bound under the Collaboration.
1.9 "OSIP
Materials" means OSIP Targets, OSIP Compounds, Other Compounds
and any protein, clone or vector used to
express OSIP Targets in each case,
which are owned or Controlled by OSIP.
1.10 "OSIP
Target" means all forms of the target listed in the attached
Exhibit B, as may be amended from time to
by agreement of the JSC in accordance
with Section 2.6.
1.11
"Other Compound" means a small molecule ligand that the JSC agrees
to
include in the Collaboration that is
publicly known to bind to, inhibit or
modulate or to be likely to bind to,
inhibit or modulate, the OSIP Target to
which it is intended to be bound under the
Collaboration.
1.12
"Patent Rights" means patent applications filed in any country
worldwide, including provisionals,
utilities, continuations (in whole or in
part), divisionals, reissues,
reexaminations and foreign counterparts thereof,
any patents issued on such applications and
any extensions of term,
registrations or confirmations of such
patents.
1.13 "SGX
Background Technology" means all Patent Rights and Know-How
owned or Controlled by SGX which are (a)
existing on the Effective Date or
developed during the Term of the
Collaboration (i) outside of the Collaboration
or (ii) within the Collaboration but are of
general application (for example,
have application to other proteins in
addition to the OSIP Targets); and (b)
necessary for the conduct of the
Collaboration.
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1.14 "SGX
Materials" means the biological and chemical materials
embodying
any Co-Complex Structure, any protein,
clone, or vector used to express a
Co-Complex Structure, in each case which
are owned or Controlled by SGX and are
developed in the course of the
Collaboration.
1.15 "Term
of the Collaboration" shall have the meaning set forth in
Section 2.2.
1.16
"Third Party or Third Parties" means any entity other than OSIP
or
SGX or their respective Affiliates.
2. COLLABORATION.
2.1
Collaboration. Subject to the terms and conditions of this
Agreement
OSIP and SGX will use commercially
reasonable efforts to conduct the
Collaboration in accordance with the
collaboration plan attached to this
Agreement as Exhibit A ("Collaboration
Plan").
2.2 Term
of the Collaboration. The term of the Collaboration commences
on
the Effective Date and terminates
[...***...] ([...***...]) months thereafter,
unless extended by mutual agreement of the
parties ("Term of Collaboration").
2.3
Provision of OSIP Compounds.
(a) Delivery of OSIP Compounds. Within three (3) months of the
inclusion of an OSIP Target in the
Collaboration OSIP will deliver to SGX a
minimum of [...***...] ([...***...]) OSIP
Compounds for such OSIP Target which
bind to, inhibit or modulate the OSIP
Target to which they are intended to be
bound under the Collaboration; with each
such OSIP Compound having: (i)
solubility [...***...]; (ii) molecular
weight of [...***...]; and (iii) potency
againsT the OSIP Target of [...***...]; and
being provided in volumes of at
least [...***...] ([...***...])
[...***...].
(b) Consequences of Delay. On an OSIP Target by OSIP Target
basis,
in the event that OSIP has not provided any
OSIP Compounds as described in
Section 2.3(a) above, for such OSIP Target,
during the Term of the
Collaboration, then OSIP's rights under
Section 4.1(b) will not include any
structural data on such OSIP Target.
2.4
Provision of OSIP Background Technology. Within 30 days following
the
Effective Date and during the Term of the
Collaboration OSIP will provide SGX
with reasonable quantities of such OSIP
Materials and other OSIP Background
Technology which are necessary or useful
for the conduct of the Collaboration by
SGX.
2.5
Delivery of SGX Materials and Collaboration Technology. During
the
Term of the Collaboration, upon reasonable
request by OSIP, SGX will provide
OSIP with reasonable quantities of
available SGX Materials and other
Collaboration Technology, to the extent
necessary for OSIP to exercise its
rights under this Agreement.
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2.6
Designation of Additional Targets. During the Term of the
Collaboration the JSC may agree to include
additional OSIP Targets in the
Collaboration and/or remove OSIP Targets
from the Collaboration, provided
however, (i) there will be no more than
[...***...] ([...***...]) OSIP Targets
included in the Collaboration at any one
time, for which the Milestone in
Section 3.3(b) has not been achieved; and
(ii) there will be no more than
[...***...] ([...***...]) OSIP Targets
included in the Collaboration in total.
2.7
Records; Reports. Monthly for the first six (6) months and
quarterly
thereafter during the Term of the
Collaboration the Parties will have the
obligation to prepare and provide to the
JSC written reports summarizing the
progress of the work performed by such
Party in the course of the Collaboration
during the preceding time period. Promptly
upon completion of the Collaboration
SGX shall provide a final written report
summarizing its activities during the
Collaboration and the results thereof.
2.8 Joint
Steering Committee.
(a) Responsibilities. SGX and OSIP will establish a Joint
Steering
Committee ("JSC") to oversee the strategic
and tactical aspects of the
Collaboration.
(b) Membership; Decisions. The JSC shall be comprised of two
(2)
representatives from OSIP and two (2)
representatives from SGX:
<TABLE>
<CAPTION>
OSIP
SGX
---------------------------
---------------------------
<S>
<C>
[...***...], Ph.D.
[...***...], Ph.D.
Vice President, [...***...]
Vice President, [...***...]
[...***...],Ph.D.
[...***...], Ph.D.
Vice President, [...***...]
Vice President, [...***...]
</TABLE>
Each Party may replace its JSC
representatives at any time, with written notice
to the other Party. Each representative of
SGX and OSIP shall have one vote on
the JSC, which vote may be cast by proxy.
All decisions of the JSC shall be made
by unanimous vote. Any matter which the JSC
is unable to agree shall be
submitted to the Chief Scientific Officer
of SGX and the VP of Research of OSIP
for resolution.
(c) Responsibilities. The JSC will review, direct and supervise
the
performance of the Collaboration Plan. The
JSC will be responsible for (i)
coordinating, monitoring and reporting
research progress and ensuring open
exchange between the Parties with respect
to Collaboration activities; (ii)
determining the research strategy and time
lines for the Collaboration Plan;
(iii) confirming the achievement of
Milestones under Section 3.3; and (iv)
including additional OSIP Targets or
removing OSIP Targets from the
Collaboration in accordance with Section
2.6.
(d) Meetings. The JSC shall meet via videoconference or in
person,
monthly for the first six (6) months and on
a quarterly basis thereafter
(alternating between San Diego, CA and
Melville, NY or as the JSC may otherwise
agree), to discharge its responsibilities.
Each Party will be responsible for
paying its own expenses in connection with
participating in the meetings of the
JSC. The JSC shall prepare written minutes
of each
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meeting and a written record of all JSC
decisions, whether made at a JSC meeting
or otherwise.
3. CONSIDERATION
3.1
Upfront Payment. Within ten (10) days of the Effective Date, OSIP
will
pay to SGX the sum of $100,000.
3.2
Research Funding. During the Term of the Collaboration, OSIP will
pay
$60,000 per month, payable quarterly in
advance, commencing on the Effective
Date.
3.3
Research Milestone Payments. within thirty (30) days of the date
of
achievement of the applicable milestone
during the Term of the Collaboration,
OSIP will pay to SGX the following
non-refundable milestone payments; provided
however, that OSIP will not be required to
pay under this Section 3.3 for more
than [...***...] ([...***...]) milestones
(i.e. $[...***...]) prior to the first
anniversary of the Effective Date; or an
aggregate of [...***...] ([...***...])
milestones during the Term of the
Collaboration (i.e. $[...***...]):
<TABLE>
<CAPTION>
MILESTONES
AMOUNT
-------------------------------------------------------------------
----------------------------
<S>
<C>
(a) Completion of the first [...***...] for
an OSIP Target.
$[...***...] per OSIP Target
(b) Completion of each additional
[...***...] aggregated across all
OSIP Targets (not including the first
$[...***...] per [...***...]
[...***...] for each OSIP Target).
</TABLE>
4. LICENSES
4.1
License to OSIP. Subject to the terms and conditions of this
Agreement, SGX hereby grants to OSIP the
following licenses:
(a) an [...***...], [...***...], [...***...] license (with the
right
to grant sublicenses in accordance with
Section 4.3 below) under SGX'S interest
in Collaboration Technology covering
[...***...] which contain OSIP Compounds,
to use such Collaboration Technology for
any purpose.
(b) a [...***...], [...***...], [...***...] license (with the
right
to grant sublicenses in accordance with
Section 4.3 below) under SGX'S interest
in Collaboration Technology other than that
covering [...***...] containing OSIP
Compounds, to use such Collaboration
Technology for any purpose.
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4.2 Cross
Licenses. Each Party hereby grants to the other, a
non-exclusive, non-transferable,
royalty-free license to use and practice OSIP
Background Technology, SGX Background
Technology and such Party's interest in
Collaboration Technology, solely to conduct
the Collaboration.
4.3
Sublicenses. OSIP may sublicense the rights granted in Section 4.1
to
its Affiliates and to Third Parties. Each
such sublicense granted by OSIP shall
be consistent with all of the terms and
conditions of this Agreement. OSIP as
the sublicensor, shall remain responsible
for all of each such sublicensee's
obligations under this Agreement.
5. INTELLECTUAL PROPERTY
5.1
Ownership of Technology.
(a) Ownership by SGX. Title to all SGX Background Technology and
all
Collaboration Technology made solely by
SGX, shall be owned solely by SGX.
(b) Ownership by OSIP. Title to all OSIP Background Technology,
and
Collaboration Technology made solely by
OSIP, shall be owned solely by OSIP.
(c) Joint Ownership. Title to all Collaboration Technology made
jointly by OSIP and SGX in connection with
the Collaboration shall be jointly
owned by OSIP and SGX. Each Party agrees to
execute in a timely manner such
documents as the other Party may request to
document and perfect joint ownership
of such Collaboration Technology.
(d) Law. Inventorship of inventions and, subject to the terms
of
this Agreement, ownership rights with
respect thereto, shall be determined in
accordance with the patent laws of the
United States.
5.2 Patent
Prosecution.
(a) Background Technology. SGX shall be responsible, at its
sole
discretion and expense, for the
preparation, filing, prosecution and maintenance
of the patent applications and patents
within Patent Rights within SGX
Background Technology, in countries
selected by SGX, and for conducting any
interferences, reexaminations, reissues,
oppositions, or request for patent term
extension relating thereto. OSIP shall be
responsible, at its sole discretion
and expense, for the preparation, filing,
prosecution and maintenance of the
patent applications and patents within
Patent Rights within OSIP Background
Technology, in countries selected by OSIP,
and for conducting any interferences,
reexaminations, reissues, oppositions, or
request for patent term extension
relating thereto.
(b) Collaboration Technology. OSIP shall be responsible, at its
expense and sole discretion, for the
preparation, filing, prosecution and
maintenance of patent applications and
patents claiming Collaboration Technology
covering [...***...] ("OSIP Patents"). SGX
shall be responsible, at its expense
and sole discretion, for the preparation,
filing, prosecution and maintenance of
patent applications and patents claiming
Collaboration Technology other than
that covering [...***...] ("SGX
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Patents"). On an OSIP Target by OSIP Target
basis, in the event that SGX elects
not to file a patent application for an SGX
Patent within twelve (12) months of
determination of such structure, OSIP shall
have the right to file, prosecute
and maintain such patent applications and
SGX will reasonably assist OSIP in
such activities at OSIP's expense.
Furthermore, in the event that SGX elects not
to pursue prosecution or maintenance of any
patent applications or patents
claiming such Collaboration Technology, SGX
shall give OSIP not less than sixty
(60) days notice before any
