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Exhibit 10.38 AMENDED AND RESTATED LICENSE
AGREEMENT THIS AMENDED AND
RESTATED LICENSE AGREEMENT (together with the exhibits hereto,
this " Agreement ") is entered into as of June 14, 2007
(the " Restatement Execution Date ") and effective as of the
Restatement Effective Date (as defined below), by and among
Archemix Corp., a Delaware corporation with its principal place of
business located at 300 Third Street, Cambridge, MA 02142 ("
Archemix "), and SomaLogic, Inc., a Delaware corporation
with its principal place of business located at 1775 38th Street,
Boulder, CO 80301 (" SomaLogic "). Each of Archemix and
SomaLogic may be referred to herein as a " Party " and
together as the " Parties ." RECITALS
Whereas, the Parties entered
into a License Agreement (the " Original Agreement ")
effective as of September 4, 2003 (the " Original Agreement
Effective Date") ; and
Whereas, the Parties desire to amend and restate in all
respects the Original Agreement such that ( inter alia ) the
licenses granted therein continue and certain terms, including
Target Validation and Drug Screening, related thereto are clarified
and additional licenses are granted herein; and
Whereas, the Parties have
mutually agreed to replace and supersede the terms of the Original
Agreement with those set forth in this Agreement as of the
Restatement Effective Date. NOW,
THEREFORE, in consideration of the foregoing premises and other
good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, the Parties hereby agree as follows:
SECTION 1
DEFINITIONS Unless otherwise
specifically provided herein, the following terms shall have the
following meanings: 1.1 "AAA"
shall have the meaning set forth in Exhibit 10.6(b) ,
Section A(2). 1.2 "
Affirmative Notice" shall have the meaning set forth in
Section 2.2.1.3.1. 1.3
"Aptamer" shall mean a non-naturally occurring nucleic acid
ligand, which may be identified, e.g., through the SELEX Process,
having a specific binding affinity for a target molecule, including
without limitation, small molecules and proteins, and any
structural variations and modifications, derivatives, homologs,
analogs or mimetics thereof, but excluding Photoaptamers.
1.4 " Aptamer-Specific Patent
Rights" shall mean any Patent Rights on a claim-by-claim basis
that solely cover specific Aptamer or Photoaptamer sequences and/or
uses of such sequences. Portions of this Exhibit were omitted and
have been filed separately with the Secretary of the Commission
pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
1.5 "Aptamer Therapeutic
Product" shall mean an Aptamer that is, or is a component of, a
therapeutic drug. 1.6 "
Affiliate " shall mean any entity owned, owning or under
common ownership with a Party to this Agreement to the extent of at
least fifty percent (50%) of the equity (or such lesser percentage
which is the maximum allowed to be owned by a foreign corporation
in a particular jurisdiction) having the power to vote on or direct
the affairs of the entity and any person, firm, partnership,
corporation or other entity actually controlled by, controlling or
under common control with such entity. Notwithstanding the
foregoing, neither Party shall be an "Affiliate" of the other
Party, or any of its Affiliates, for the purposes of this
Agreement. 1.7 "Archemix
Collaborative Partner" shall mean any Third Party with whom
Archemix is engaged, from time to time, in a collaborative effort
to research, develop or commercialize Aptamers or Photoaptamers,
which collaborative effort is evidenced by a written agreement. For
purposes of clarity, as used in this definition, a "collaborative
effort" includes, without limitation, out-licensing of products
developed by Archemix or its Affiliates.
1.8 "Archemix Licensed
Patents" shall mean any Patent Rights that are Controlled by
Archemix as a result of the Gilead-Archemix Agreement as of the
Restatement Effective Date, including, without limitation, the
Patent Rights listed on Exhibit 1.8 but excluding
Aptamer-Specific Patent Rights. 1.9 "
Archemix Licensed Products " shall mean any product for use
in the Gilead-Archemix Field, the making, using, selling or
offering for sale of which would infringe a SomaLogic EC Patent but
for the license(s) granted herein.
1.10 " Archemix Patents "
shall mean the Patent Rights that are Controlled by Archemix that
relate to SELEX methods or processes and/or Aptamer or Photoaptamer
methods, compositions, and/or uses thereof as of the Restatement
Effective Date, but excluding (a) Aptamer-Specific Patent
Rights and (b) Archemix Licensed Patents.
1.11 " Archemix EC Royalties "
shall have the meaning set forth in Section 3.1.1.
1.12 " Archemix CD Royalties "
shall have the meaning set forth in Section 3.1.3.
1.13 "Breaching Party" shall
have the meaning set forth in Section 7.2.
1.14 " Clinical Diagnostic
Field " shall mean the assaying, testing or determination
outside of a living organism, of a substance in any biological test
material, in connection with clinical practice, for the purpose of
identifying, characterizing, defining or diagnosing a disease or
other condition in humans or animals, including without limitation,
a determination of the state of health, in order to treat or
prevent disease. 1.15 " Companion
Diagnostic Product(s) " shall have the meaning set forth in
Section 2.6. Portions of this Exhibit were omitted and have
been filed separately with the Secretary of the Commission pursuant
to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
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1.16 " Companion Diagnostic
Product Option " shall have the meaning set forth in Section
2.6. 1.17 " Confidential
Information " shall have the meaning set forth in
Section 4.1. 1.18 "
Control " or " Controlled " shall mean, with respect
to any intellectual property right, including, without limitation,
any Patent Rights, possession of the right, whether by ownership or
license, to assign or to grant licenses, sublicenses, immunities or
other rights as provided for herein under such right without the
payment of additional consideration to, and without violating the
terms of any agreement or other arrangement with, any Third Party.
For purposes of clarity, two (2) or more entities may Control
rights to different territories or fields of use under the same
Patent Rights. 1.19 " Cost of
Goods Sold " shall mean the cost of manufacturing a Product,
using, as the case may be, SomaLogic’s or Archemix’s
standard accounting procedures and computed in accordance with
GAAP. Such cost shall include the fully burdened cost of all raw
materials, auxiliaries and other ingredients, labor and overhead,
depreciation, maintenance and repair and shall also include
reasonable expenses for services and transportation charges and any
royalties paid to Third Parties in connection with the
manufacturing process or materials used. "Cost of Goods" shall not
include general and administrative expenses, sales and marketing
costs. 1.20 " GAAP " shall
mean generally accepted U.S. accounting principles consistently
applied. 1.21 " Default "
shall have the meaning set forth in Section 7.2.
1.22 " Disclosing Party "
shall have the meaning set forth in Section 4.1.
1.23 " Dispute " shall have
the meaning set forth in Section 10.6.
1.24 " Drug Screening Field "
shall mean the use of Aptamers or Photoaptamers as competitive
binding agents in displacement assays for in vitro screening of
potential therapeutic drugs as described in [***].
1.25 " EC Royalty Term " shall
have the meaning set forth in Sections 3.2.1.
1.26 " EC Technology License
Agreement " shall mean that certain License Agreement between
SomaLogic, Inc. and EC Technology LLC dated June 14, 2004, as
amended on or about June 14, 2007.
1.27 " Exclusive Target Notice
" shall have the meaning set forth in Section 2.2.1.1.
1.28 "Exclusive Targets" shall
mean the targets designated from time to time by Archemix pursuant
to Section 2.2.1.1. Portions of this Exhibit were omitted and
have been filed separately with the Secretary of the Commission
pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
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1.29 " Ex Vivo
Field" shall mean all uses of Aptamers or Photoaptamers outside
of a human body. For purposes of clarity, the Ex Vivo Field
includes, without limitation, uses of Aptamers or Photoaptamers in
the Drug Screening Field and the Target Validation Field.
Notwithstanding the foregoing, the Ex Vivo Field
specifically excludes uses of Aptamers or Photoaptamers in the
Purification Field and the Manufacturing Purification Field.
1.30 " Force Majeure Event "
shall have the meaning set forth in Section 10.1.
1.31 " Gilead-Archemix
Agreement " shall mean the License Agreement entered into by
and between Gilead Sciences, Inc. and Archemix Corp. dated
October 23, 2001. 1.32 "
Gilead-Archemix Field " shall have the meaning ascribed to
the term "Licensed Field" as set forth in the Gilead-Archemix
Agreement as clarified by the Gilead-SomaLogic Agreement
Clarification. 1.33 "
Gilead-SomaLogic Agreement " shall mean the License,
Assignment and Sale Agreement entered into by and among Gilead
Sciences, Inc., SomaLogic and University Technology Corporation
dated November 11, 1999. 1.34 "
Gilead-SomaLogic Agreement Clarification " shall mean the
agreement of interpretation of Section 1.12 of the
Gilead-SomaLogic Agreement entered into by the Parties as of the
Original Agreement Effective Date.
1.35 " Gilead-SomaLogic Field
" shall have the meaning ascribed to the term " In Vitro
Diagnostics" as set forth in the Gilead-SomaLogic Agreement
Clarification. 1.36 " Indemnified
Party " shall have the meaning set forth in Section 8.3.
1.37 " Indemnifying Party "
shall have the meaning set forth in Section 8.3.
1.38 " In Vivo Imaging
Field" shall mean all uses of Aptamers or Photoaptamers for
in vivo imaging, to the extent that such uses are not
subject to Patent Rights Controlled by Schering AG as a result of
the License Agreement and Collaborative Research Agreement, dated
November 16, 1993, between NeXagen, Inc. and Schering AG.
1.39 " Losses " shall have the
meaning set forth in Section 8.2.
1.40 " Licensed Aptamer "
shall have the meaning set forth in Section 2.2.1.2.
1.41 " Licensed Patents "
shall mean, collectively, the Archemix Licensed Patents and the
SomaLogic Licensed Patents including, without limitation, the
patents and patent applications listed on Exhibit 1.8
and Exhibit 1.70 attached hereto.
1.42 " Licensor Party " shall
have the meaning set forth in Section 2.8. Portions of this
Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 406
of the Securities Act.
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1.43 "Manufacturing
Purification Field" shall mean all uses of Aptamers or
Photoaptamers as Purification Agents for isolation of materials to
be sold. For purposes of clarity, the Manufacturing Purification
Field includes uses of Aptamers or Photoaptamers as Purification
Agents in the isolation of manufacturing intermediates that undergo
subsequent modification(s) prior to sale.
1.44 " Net Sales " shall mean
the amount invoiced by a Party or its Affiliates (a " Selling
Party ") for sales of a Product to unaffiliated Third Parties
less the following deductions applicable to the Product for:
(a) transportation
charges and insurance charges paid by the Selling Party;
(b) sales
and excise taxes or customs duties paid by the Selling Party or any
other governmental charges imposed upon the sale of the Product and
paid by the Selling Party exclusive of taxes on the income of the
Selling Party;
(c) fees
paid to distributors, consignees or agents in connection with the
sale of the Product;
(d) rebates
and premiums granted in connection with the sale of a Product;
(e) credits
to customers on account of governmental requirements, price
differences, rejection, outdating, returns or recalls of the
Product;
(f) quantity
discounts, cash discounts or chargebacks granted in connection with
the sale of the Product;
(g) provisions
for price reductions; and
(h) the
Selling Party’s standard allowance as demonstrated to the
other Party’s reasonable satisfaction, and in no case in
excess of [***] percent ([***]%).
1.45 " New Archemix License "
shall mean any license granted by Archemix to SomaLogic under this
Agreement as of the Restatement Effective Date but not including
any of the licenses granted in the Original Agreement and
continuing under this Agreement. For purposes of clarity, the New
Archemix License shall exclude , without limitation, the licenses
granted under Section 2.1.1 in the Original Agreement, the
licenses granted within the Target Validation Field in the Original
Agreement, the licenses granted within the Drug Screening Field in
the Original Agreement, and the licenses granted to the use of
Aptamers or Photoaptamers as Purification Agents within the
Clinical Diagnostics Field in the Original Agreement.
1.46 " New SomaLogic License "
shall mean any license granted by SomaLogic to Archemix under this
Agreement as of the Restatement Effective Date but not including
any of the licenses granted in the Original Agreement and
continuing under this Agreement. For purposes of clarity, the New
SomaLogic License shall exclude without limitation, the licenses
granted under Sections 2.2.1 (other than the licenses granted
under sub-sections 2.2.1.1 and 2.2.1.2) in the Original Agreement,
the licenses granted in Section 2.2.2 in the Original Portions
of this Exhibit were omitted and have been filed separately with
the Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 406
of the Securities Act.
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Agreement, the licenses granted in Section 2.2.3 in the
Original Agreement, and the licenses granted in Section 2.2.4
in the Original Agreement. 1.47
"Non-Selling Party" shall mean the Party that is not a
Selling Party. 1.48 " Other
Archemix Patent Rights " shall mean any Patent Rights, other
than Archemix Licensed Patents and Archemix Patents, that come to
be Controlled by Archemix after the Restatement Effective Date and
that claim or relate to SELEX methods or processes and/or Aptamer
or Photoaptamer methods, compositions and/or uses of such methods,
processes or compositions but excluding Aptamer-Specific Patent
Rights except as otherwise expressly set forth herein.
1.49 " Other SomaLogic Patent
Rights " shall mean any Patent Rights, other than SomaLogic
Licensed Patents, SomaLogic Patents, and SomaLogic EC Patents, that
come to be Controlled by SomaLogic after the Restatement Effective
Date and that claim or relate to SELEX methods or processes and/or
Aptamer or Photoaptamer methods, compositions and/or uses of such
methods, processes or compositions but excluding Aptamer-Specific
Patent Rights except as otherwise expressly set forth herein.
1.50 " Partnering Agreement "
shall have the meaning set forth in Section 2.2.1.3.2.
1.51 " Patent Rights " shall
mean all rights and interests in and to issued patents and pending
applications, including non-provisional patents and non-provisional
patent applications, and all divisions, continuations and
continuations-in-part thereof, patents issuing on any of the
foregoing, all reissues, reexaminations, renewals and extensions
thereof, and supplementary protection certificates therefor, as
well as any certificates of invention or applications therefor, and
all foreign equivalents of any of the foregoing.
1.52 " Photoaptamer " shall
mean an Aptamer that includes a photoreactive chemical, including,
without limitation, a brominated deoxyuridine (BrdU), that forms a
covalent crosslink with its target molecule when exposed to
radiation including, without limitation, ultraviolet light.
1.53 " PhotoSELEX " or "
PhotoSELEX Process " shall mean the SELEX process modified
for the identification of PhotoAptamers.
1.54 " Procuring " shall have
the meaning set forth in Section 5.2.
1.55 " Product " shall mean,
as dictated by the context, an Archemix Licensed Product, a
Companion Diagnostic Product, and/or a SomaLogic Licensed Product.
1.56 " Proposed Terms " shall
have the meaning set forth in Section 2.2.1.3.1.
1.57 "Protein Profiling Aptamer
Array" shall mean an array populated by more than one species
of Aptamer that can detect the presence or concentration of one or
more proteins from a sample. Portions of this Exhibit were omitted
and have been filed separately with the Secretary of the Commission
pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
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1.58 "Purification Agent"
shall mean a compound that is used to enrich, deplete, or isolate
one or more components of a solution or mixture.
1.59 "Reserved Targets" shall
mean the targets listed on Exhibit 1.58 attached
hereto. 1.60 "Purification
Field" shall mean all uses, other than uses in the
Manufacturing Purification Field, of Aptamers or Photoaptamers as
Purification Agents. For purposes of clarity, the Purification
Field specifically excludes uses of Aptamers or Photoaptamers in
the Manufacturing Purification Field.
1.61 "Receiving Party" shall
have the meaning set forth in Section 4.1.
1.62 "Release" shall have the
meaning set forth in Section 2.9.
1.63 "Restatement Effective
Date" shall mean the later of (a) the date of receipt by
Archemix of an executed copy of the EC License Amendment and
(b) the date of receipt by each Party of a Final Acceptance
Notice from the other Party. 1.64 "
RiboReporters " shall mean allosteric ribozymes whose
catalytic activity is changed or modulated by the presence of a
specific target. 1.65 "Robotic
SELEX" shall mean the process, equipment and reagents required
to perform SELEX or PhotoSELEX in an automated process.
1.66 " CD Royalty Term " shall
have the meaning set forth in Section 3.2.3.
1.67 "SELEX or SELEX Process"
shall mean any process for the selection or identification of
Aptamers. 1.68 " SELEX
Technology " means any process for modifying, optimizing,
and/or stabilizing an Aptamer wherein such modification,
optimization, or stabilization includes without limitation
minimization, truncation, conjugation, complexation, substitution,
deletion, and/or incorporation of modified nucleotides.
Notwithstanding the foregoing, SELEX Technology specifically
excludes any subject matter claimed in any of the SomaLogic EC
Patents. 1.69 "Selling Party"
shall have the meaning set forth in Section 1.45.
1.70 "SomaLogic Collaborative
Partner" shall mean any Third Party with whom SomaLogic is
engaged, from time to time, in a collaborative effort to research,
develop or commercialize Aptamers or Photoaptamers, which
collaborative effort is evidenced by a written agreement. For
purposes of clarity, as used in this definition, a "collaborative
effort" includes, without limitation, out-licensing of products
developed by SomaLogic or its Affiliates.
1.71 "SomaLogic Diagnostic"
shall have the meaning set forth in Section 2.6. Portions of
this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 406
of the Securities Act.
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1.72 "SomaLogic Licensed
Patents" shall mean any Patent Rights that are Controlled by
SomaLogic as a result of the Gilead-SomaLogic Agreement as of the
Restatement Effective Date, including, without limitation, the
Patent Rights listed on Exhibit 1.70 but excluding
Aptamer-Specific Patent Rights. 1.73
" SomaLogic Licensed Products " shall mean any product for
use in the Manufacturing Purification Field, the making, using,
selling or offering for sale of which would infringe an Archemix
Licensed Patent or an Archemix Patent but for the license(s)
granted herein. 1.74 " SomaLogic
Patents " shall mean any Patent Rights that are Controlled by
SomaLogic that relate to SELEX methods or processes and/or Aptamer
methods, compositions and/or uses as of the Restatement Effective
Date, but excluding (a) Aptamer Specific Patent Rights,
(b) SomaLogic Licensed Patents, and (c) SomaLogic EC
Patents. 1.75 " SomaLogic EC
Patents " shall mean any Patent Rights that are Controlled by
SomaLogic as a result of the EC Technology License Agreement
including, without limitation, the Patent Rights identified in
Exhibit 1.73 . 1.76
"SomaLogic Royalties " shall have the meaning set forth in
Section 3.1.2. 1.77
"SomaLogic Royalty Term " shall have the meaning set forth
in Section 3.2.2. 1.78
"Sublicense Income" shall mean all payments received by a
Party as consideration for the grant by such Party of a sublicense
to a Third Party of any of the rights granted to it herein pursuant
to Section 2.1.6 (in the case of SomaLogic) and
Section 2.2.5 (in the case of Archemix), excluding
(a) payments made under such sublicense in consideration of
the issuance of equity or debt securities of such Party to the
extent that the price paid for such equity does not exceed the then
fair market value of such equity and (b) payments made under
such sublicense which are required to be used to support or fund
research and development activities to be undertaken by such Party
pursuant to a budget for sponsored research that is based on
full-time equivalent or other cost-accounting methodologies that
are consistent with then current industry practices.
1.79 "Sublicensee Party "
shall have the meaning set forth in Section 2.8.2.
1.80 "Target" shall mean any
protein receptor, and/or any protein ligand to a protein receptor,
that SomaLogic, its Affiliates, or its sublicensees, in good faith,
reasonably intends to pursue under the New Archemix License.
1.81 " Target Validation Field
" shall mean the use of Aptamers or Photoaptamers to bind to a
target molecule in vivo or in cell culture assays to
activate, inhibit or otherwise modulate the activity of the target
molecule and thereby demonstrate that such activation, inhibition
or modulation is potentially useful for development of a
therapeutic drug. 1.82 " Term
" shall have the meaning set forth in Section 7.1. Portions of
this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 406
of the Securities Act.
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1.83 "Terminating Party "
shall have the meaning set forth in Section 7.2.
1.84 "Territory" shall mean
worldwide. 1.85 " Therapeutic
Partnering Agreement " shall have the meaning set forth in
Section 2.2.1.3.1. 1.86 "
Therapeutic Partnering Agreement Notice " shall have the
meaning set forth in Section 2.2.1.3.1.
1.87 " Third Party " shall
mean any person or entity other than Archemix, SomaLogic and their
respective Affiliates. 1.88 "
Third Party Agreement " shall have the meaning set forth in
Section 2.8. 1.89 " Third
Party Licensor " shall have the meaning set forth in
Section 2.8. 1.90 " Third
Party Payments " shall have the meaning set forth in
Section 2.8.2. 1.91 " Valid
Claim " shall mean any claim of a pending patent application or
an issued, unexpired patent that has not been (a) finally
cancelled, withdrawn, abandoned or rejected in a decision by any
administrative agency or other body of competent jurisdiction,
which decision is unappealable or unappealed within the time
allowed for appeal, (b) permanently revoked, held invalid, or
declared unpatentable or unenforceable in a decision of a court or
other body of competent jurisdiction that is unappealable or
unappealed within the time allowed for appeal, (c) rendered
unenforceable through disclaimer or otherwise, and (d) lost
through an interference proceeding SECTION 2
GRANT OF RIGHTS 2.1 License
Grants by Archemix . Subject to the terms and conditions set
forth herein, Archemix hereby grants to SomaLogic the following
licenses.
2.1.1
SomaLogic Diagnostic Rights . Archemix hereby grants to
SomaLogic a non-exclusive, royalty-free, paid-up license under the
Archemix Licensed Patents and Archemix Patents, that claim or
relate to the use of Aptamers or Photoaptamers, to research,
develop, make, have made, use, have used, sell, offer for sale,
have sold, keep, import and export products for use within the
Gilead-SomaLogic Field, during the Term and throughout the
Territory.
2.1.2
SomaLogic Ex Vivo Rights . Archemix hereby grants to
SomaLogic a non-exclusive, royalty-free, paid-up license under the
Archemix Licensed Patents and Archemix Patents, that claim or
relate to the use of Aptamers or Photoaptamers, to research,
develop, make, have made, use, have used, sell, offer for sale,
have sold, keep, import and export products in the Ex Vivo Field,
during the Term and throughout the Territory. Portions of this
Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 406
of the Securities Act.
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2.1.3
SomaLogic Purification Rights. Archemix hereby grants to
SomaLogic an exclusive, royalty-free, paid-up license under the
Archemix Licensed Patents and Archemix Patents, that claim or
relate to the use of Aptamers or Photoaptamers, to research,
develop, make, have made, use, have used, sell, offer for sale,
have sold, keep, import and export products in the Purification
Field, during the Term and throughout the Territory.
2.1.4
SomaLogic In Vivo Imaging Rights . Archemix hereby
grants to SomaLogic a non-exclusive, royalty-free, paid-up license
under the Archemix Licensed Patents and Archemix Patents, that
claim or relate to the use of Aptamers or Photoaptamers, to
research, develop, make, have made, use, have used, sell, offer for
sale, have sold, keep, import and export products in the In Vivo
Imaging Field, during the Term and throughout the Territory.
2.1.5
Robotic SELEX . Archemix hereby grants to SomaLogic a
non-exclusive, royalty-free, paid-up license under the Archemix
Licensed Patents and Archemix Patents, that claim or relate to the
use of Robotic SELEX, to perform Robotic SELEX, during the Term and
throughout the Territory.
2.1.6
SomaLogic Manufacturing Purification Rights. Archemix hereby
grants to SomaLogic an exclusive (except as provided in
Section 2.1.7), royalty-bearing license under the Archemix
Licensed Patents and Archemix Patents, that claim or relate to the
use of Aptamers or Photoaptamers, to research, develop, make, have
made, use, have used, sell, offer for sale, have sold, keep, import
and export products in the Manufacturing Purification Field, during
the Term and throughout the Territory.
2.1.7
Retained Rights. Notwithstanding anything to the contrary in
this Agreement, SomaLogic shall have no right or license under the
license granted under Section 2.1.6 with respect to any of the
Reserved Targets. In addition, the Parties acknowledge and agree
that (a) Archemix has previously granted to a Third Party a
non-exclusive license to Aptamers that bind to [***] and (b)
subject to Section 9.3, the license granted to SomaLogic under
Section 2.1.6 shall be non-exclusive with respect to Aptamers
that bind to [***].
2.1.8
Archemix Commercial Uses. In the event that Archemix at any
time during the Term determines that it wishes to obtain a license
in the Manufacturing Purification Field that will cover the
commercial use of Aptamers or Photoaptamers by Archemix and/or an
Archemix Collaborative Partner, then it shall provide written
notice of same to SomaLogic, whereupon the Parties shall negotiate
in good faith for a period not to exceed [***] days with respect to
the terms and conditions of such license.
2.1.9
Protein Profiling Arrays . Archemix hereby grants to
SomaLogic a non-exclusive, royalty-free, paid-up license under any
Patent Rights that are Controlled by Archemix during the Term that
claim a protein profiling array and that are discovered through use
of a SomaLogic Protein Profiling Aptamer Array provided by
SomaLogic under Section 2.7 below.
2.1.10
Improvements to the SELEX Process and SELEX Technology.
Archemix hereby grants to SomaLogic a non-exclusive, royalty-free,
paid-up license under the Other Archemix Patent Rights, that claim
or relate to improvements of the SELEX Process or SELEX Technology,
to research, develop, make, have made, use, have used, sell, offer
for sale, Portions of this Exhibit were omitted and have been filed
separately with the Secretary of the Commission pursuant to the
Company’s application requesting confidential treatment under
Rule 406 of the Securities Act.
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have sold, keep, import and export products within the
Gilead-SomaLogic Field and the field of any license granted to
SomaLogic hereunder, during the Term and throughout the Territory.
2.1.11
Sublicensing Rights.
2.1.11.1
Sections 2.1.1 — 2.1.6 and 2.1.9 . Each of the
foregoing license grants in Section 2.1.1 through
Section 2.1.6 and 2.1.9 hereof includes the right of SomaLogic
to grant sublicenses to its Affiliates and any Third Party. Any
sublicense may include the right to grant further sublicenses. If
this Agreement is terminated, SomaLogic shall provide Archemix with
notice of any granted sublicenses and a copy of any sublicense
agreements related thereto, and any granted sublicenses shall
remain in full force and effect, provided, that, the sublicensee is
not then in breach of its sublicense agreement and the sublicensee
agrees to be bound to Archemix as a licensor under the terms and
conditions of the sublicense agreement. If this Agreement is
terminated, provided that the sublicensee of a granted sublicense
is not in breach of its sublicense agreement and the sublicensee
agrees to be bound to Archemix as a licensor under the terms and
conditions of such sublicense agreement, Archemix shall enter into
appropriate agreements or amendments to such sublicense agreement
to substitute itself for SomaLogic as the licensor thereunder.
2.1.11.2
Section 2.1.10 . The foregoing license grant in
Section 2.1.10 hereof includes the right of SomaLogic to grant
sublicenses to its Affiliates and any SomaLogic Collaborative
Partner, provided, that, each such sublicense shall be limited to
programs directed to the research, discovery, development, or
commercialization of products within the Gilead-SomaLogic Field and
the field of any license granted to SomaLogic hereunder. Any
sublicense may include the limited right to grant further
sublicenses solely for such purposes. If this Agreement is
terminated, SomaLogic shall provide Archemix with notice of any
granted sublicenses and a copy of any sublicense agreements related
thereto, and any granted sublicenses shall remain in full force and
effect, provided, that, the sublicensee is not then in breach of
its sublicense agreement and the sublicensee agrees to be bound to
Archemix as a licensor under the terms and conditions of the
sublicense agreement. If this Agreement is terminated, provided
that the sublicensee of a granted sublicense is not in breach of
its sublicense agreement and the sublicensee agrees to be bound to
Archemix as a licensor under the terms and conditions of such
sublicense agreement, Archemix shall enter into appropriate
agreements or amendments to such sublicense agreement to substitute
itself for SomaLogic as the licensor thereunder.
2.1.11.3
For any sublicense granted by SomaLogic under this
Section 2.1.11, SomaLogic will cause each such sublicensee to
comply with all of the relevant obligations and covenants of
SomaLogic related to any license or sublicense granted by Archemix
to SomaLogic under this Agreement, including without limitation
SomaLogic’s obligations under Sections 3.2, 3.3, 3.6,
3.7, and 3.9 hereof.
2.1.12
Reserved Rights. Notwithstanding anything to the contrary
herein, (i) the exclusive licenses granted herein by Archemix
are subject to Archemix’s continued right to practice the
licensed rights solely for internal research and development uses
or to sublicense such rights to Archemix Collaborative Partners
solely for internal research and development uses and (ii) no
right or license to any therapeutic veterinary applications are
granted in this Agreement to SomaLogic. Portions of this Exhibit
were omitted and have been filed separately with the Secretary of
the Commission pursuant to the Company’s application
requesting confidential treatment under Rule 406 of the
Securities Act.
11
2.2 License Grants by
SomaLogic . Subject to the terms and conditions set forth
herein, SomaLogic hereby grants to Archemix the following licenses.
2.2.1
Aptamer Therapeutics Rights . SomaLogic hereby grants to
Archemix a non-exclusive, royalty free, paid-up license under the
SomaLogic Licensed Patents and SomaLogic Patents, that claim or
relate to the use of Aptamers or, subject to the terms and
conditions of the Gilead-SomaLogic Agreement, Photoaptamers, to
research, develop, make, have made, use, have used, sell, offer for
sale, have sold, keep, import and export products for use in the
Gilead-Archemix Field, during the Term and throughout the
Territory.
2.2.1.1
Exclusive Targets. During the Term Archemix may identify up
to [***] targets (the "Exclusive Targets") in each year
following the Restatement Effective Date by providing written
notice to SomaLogic (the "Exclusive Target Notice" ). As
soon as practicable after its receipt of the Exclusive Target
Notice, SomaLogic shall identify any pre-existing obligations it
may have to a Third Party with respect thereto and shall promptly
inform Archemix in writing of any such pre-existing obligations
that would not permit such target’s identification as an
Exclusive Target. Subject to the foregoing, SomaLogic agrees that
it will not develop any Aptamers or Photoaptamers directed to such
Exclusive Targets either for itself or for any Third Party for
therapeutic uses. For purposes of clarity, (a) SomaLogic shall
have the right to develop and commercialize Aptamers and
Photoaptamers to all Exclusive Targets for non-therapeutic uses and
(b) this Section 2.2.1.1 shall apply to any such
Exclusive Targets only for so long as Archemix maintains an
on-going bona fide research program directed to each such Exclusive
Target and uses commercially reasonable efforts to develop Aptamer
therapeutics directed to each such Exclusive Target. On or before
[***] and [***] of each year during the Term, Archemix shall
provide a written report to SomaLogic that indicates which
Exclusive Targets are still the subject of an on-going bona fide
research program and which are no longer the subject of an ongoing
bona fide research program.
2.2.1.2
Exclusive License to Certain SomaLogic Aptamer Sequences.
SomaLogic shall provide Archemix with written notice upon its
generation of an Aptamer or Photoaptamer to any Exclusive Target.
As soon as practicable thereafter, (a) SomaLogic shall provide
Archemix with (i) a list of the Aptamers or Photoaptamers
selected for sequencing by SomaLogic, such list to exclude any
Aptamers or Photoaptamers that SomaLogic intends to develop for
commercialization, (ii) any available data regarding such
sequences and (iii) upon Archemix’s request pursuant to
Section 2.12, samples of the Aptamers or Photoaptamers
identified by SomaLogic, and (b) Archemix shall provide
SomaLogic with written notice which shall identify from such list
of sequences the particular Aptamer or, subject to the terms and
conditions of the Gilead-SomaLogic Agreement, Photoaptamer,
sequences, up to a total of [***] such sequences for each Exclusive
Target, for which Archemix desires a license from SomaLogic (each
such sequence, a "Licensed Aptamer" ). During the Term,
SomaLogic shall grant Archemix an exclusive, paid-up, royalty-free
license under the SomaLogic Licensed Patents, SomaLogic Patents and
the Other SomaLogic Patents solely to research, develop or
commercialize such Licensed Aptamers for therapeutic purposes. For
purposes of clarity, SomaLogic will (i) not grant any license
to a Third Party to research, develop or commercialize Licensed
Aptamers for any purpose, and (ii) retain all non-therapeutic
rights to all other Aptamer and Photoaptamer sequences generated by
SomaLogic to any Exclusive Targets. Portions of this Exhibit were
omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting
confidential treatment under Rule 406 of the Securities
Act.
12
2.2.1.3
Right of First Refusal.
2.2.1.3.1
Therapeutic Rights . If and to the extent that SomaLogic
finalizes the material terms of a proposed collaboration with a
Third Party in which SomaLogic would grant a license(s) under the
SomaLogic Patents or Other SomaLogic Patent Rights solely for the
research, development and/or commercialization of Aptamers or
Photoaptamers to [***] or more target molecules for therapeutic
purposes (a "Therapeutic Partnering Agreement" ), SomaLogic
shall, prior to entering into a binding agreement with such Third
Party, give written notice (a "Therapeutic Partnering Agreement
Notice" ) to Archemix that shall include a statement of the
proposed, material terms for the Therapeutic Partnering Agreement
(the "Proposed Terms" ). Upon receipt of the Therapeutic
Partnering Agreement Notice, if Archemix determines in good faith
that it would like to enter into a Therapeutic Partnering Agreement
with SomaLogic upon terms which are at least as favorable to
SomaLogic as the Proposed Terms, Archemix shall be entitled to give
written notice (an "Affirmative Notice" ) to SomaLogic that
it elects to exercise its right to enter into a Therapeutic
Partnering Agreement upon terms which are at least as favorable to
SomaLogic as the Proposed Terms. If Archemix does not deliver a
written Affirmative Notice to SomaLogic within [***] days of the
delivery of the Therapeutic Partnering Agreement Notice by
SomaLogic, then SomaLogic shall be free to enter into an agreement
with (i) any Third Party under terms which are at least as
favorable to SomaLogic as the Proposed Terms within [***] months of
SomaLogic’s delivery of the Therapeutic Partnering Agreement
Notice to Archemix or (ii) the Third Party for which the
Therapeutic Partnering Agreement Notice was provided, solely to the
extent that negotiations with such Third Party are continuous from
the date of SomaLogic’s delivery of the Therapeutic
Partnering Agreement Notice to Archemix through the date of
execution of the applicable agreement. If Archemix delivers an
Affirmative Notice to SomaLogic within the requisite [***] day time
period, then Archemix and SomaLogic shall immediately commence good
faith negotiations and shall enter into a Therapeutic Partnering
Agreement upon terms which are at least as favorable to SomaLogic
as the Proposed Terms as well as such other mutually acceptable
terms as would be customary for such an agreement.
2.2.1.3.2
Therapeutic and Other Rights . If and to the extent that
SomaLogic enters into negotiations with a Third Party for a license
under the SomaLogic Patents or Other SomaLogic Patent Rights for
the research, development and/or commercialization of
(a) Aptamers or Photoaptamers to [***] or more target
molecules for therapeutic purposes and (b) any Aptamers or
Photoaptamers, or uses of Aptamers or Photoaptamers, for
non-therapeutic purposes (a "Partnering Agreement" ),
SomaLogic shall notify Archemix of such negotiations within [***]
days of the initiation of such negotiations. Upon Archemix’s
written request, SomaLogic shall enter into good faith negotiations
with Archemix for a license under the SomaLogic Patents or Other
SomaLogic Patent Rights for the research, development and/or
commercialization of such Aptamers or Photoaptamers to such target
molecules for therapeutic purposes. For clarity, so long as
SomaLogic provides the notice as provided in this
Section 2.2.1.3.2, SomaLogic and such Third Party may, in
SomaLogic’s sole discretion, (i) continue negotiations
regarding such Partnering Agreement, including, without limitation,
during the period in which SomaLogic and Archemix conduct any
negotiations under this Section 2.2.1.3.2, and
(ii) execute and deliver such Partnering Agreement. Portions
of this Exhibit were omitted and have been filed separately with
the Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 406
of the Securities Act.
13
2.2.2
Robotic SELEX . SomaLogic hereby grants to Archemix a
non-exclusive, royalty-free, paid-up license under the SomaLogic
Licensed Patents and SomaLogic Patents, that claim or relate to the
use of Robotic SELEX, to perform Robotic SELEX, during the Term and
throughout the Territory.
2.2.3
In Vitro Analysis Rights . SomaLogic hereby grants to
Archemix a non-exclusive, royalty-free, paid-up license under the
SomaLogic Licensed Patents and SomaLogic Patents that claim or
relate to the use of Aptamers or, subject to the terms and
conditions of the Gilead-SomaLogic Agreement, Photoaptamers, in any
in vitro analysis, including, without limitation,
non-clinical FACS analysis, immunohistochemistry, and
single-analyte assays, during the Term and throughout the
Territory. Subject to Section 2.2.7.2, the license granted by
SomaLogic to Archemix pursuant to this Section 2.2.3 to use
Aptamers and Photoaptamers in in vitro analysis shall be
limited to programs directed to the research, discovery or
development of Aptamer Therapeutic Products by Archemix. For
purposes of clarity, Archemix shall not have the right under such
license to perform any such in vitro analysis for the
benefit of a Third Party on a fee-for-service or contract research
basis.
2.2.4
RiboReporter Rights . SomaLogic hereby grants to Archemix a
non-exclusive, royalty-free, paid-up license under the SomaLogic
Licensed Patents and the SomaLogic Patents, that claim or relate to
the SELEX Process and Aptamers or Photoaptamers, to research,
develop, make, have made, use, have used, sell, offer for sale,
have sold, keep, import and export RiboReporters solely for uses
outside of the Clinical Diagnostic Field, during the Term and
throughout the Territory.
2.2.5
EC Technology Rights. SomaLogic hereby grants to Archemix a
non-exclusive, royalty-bearing license under the SomaLogic EC
Patents (a) to research, develop, make, have made, use, have
used, sell, offer for sale, have sold, keep, import and export
Aptamer products for use in the Gilead-Archemix Field, during the
Term and throughout the Territory and (b) to research,
develop, make, have made, use, have used, import and keep any
products not covered by Section 2.2.5(a) for use in the
Gilead-Archemix Field, during the Term and throughout the
Territory.
2.2.6
Improvements to the SELEX Process and SELEX Technology.
SomaLogic hereby grants to Archemix a non-exclusive, royalty-free,
paid-up license under the Other SomaLogic Patent Rights, that claim
or relate to improvements of the SELEX Process or SELEX Technology,
to research, develop, make, have made, use, have used, sell, offer
for sale, have sold, keep, import and export products for use in
the Gilead-Archemix Field and the field of any license granted to
Archemix hereunder, during the Term and throughout the Territory.
2.2.7
Sublicensing Rights.
2.2.7.1
Sections 2.2.1, 2.2.2, and 2.2.4. Each of the foregoing
license grants in Section 2.2.1, 2.2.2, and 2.2.4 hereof includes
the right of Archemix to grant sublicenses to its Affiliates and
any Third Party. Any sublicense may include the right to grant
further sublicenses. If this Agreement is terminated, Archemix
shall provide SomaLogic with notice of any granted sublicenses and
a copy of any sublicense agreements related thereto, and any
granted sublicenses shall remain in full force and effect,
provided, that, the sublicensee is not Portions of this Exhibit
were omitted and have been filed separately with the Secretary of
the Commission pursuant to the Company’s application
requesting confidential treatment under Rule 406 of the
Securities Act.
14
then in breach of its sublicense agreement and the sublicensee
agrees to be bound to SomaLogic as a licensor under the terms and
conditions of the sublicense agreement. If this Agreement is
terminated, provided that the sublicensee of a granted sublicense
is not in breach of its sublicense agreement and the sublicensee
agrees to be bound to SomaLogic as a licensor under the terms and
conditions of such sublicense agreement, SomaLogic shall enter into
appropriate agreements or amendments to such sublicense agreement
to substitute itself for Archemix as the licensor thereunder.
2.2.7.2
Sections 2.2.3, 2.2.5, and 2.2.6. Each of the foregoing
license grants in Section 2.2.3, 2.2.5, and 2.2.6 hereof includes
the right of Archemix to grant sublicenses to its Affiliates and
any Archemix Collaborative Partner, provided that each of any such
sublicenses shall be limited to programs directed to the research,
discovery or development of Aptamer Therapeutic Products by
Archemix or Archemix Collaborative Partners. Any sublicense may
include the limited right to grant further sublicenses solely for
such purposes. If this Agreement is terminated, Archemix shall
provide SomaLogic with notice of any granted sublicenses and a copy
of any sublicense agreements related thereto, and any granted
sublicenses shall remain in full force and effect, provided that
the sublicensee is not then in breach of its sublicense agreement
and the sublicensee agrees to be bound to SomaLogic as a licensor
under the terms and conditions of the sublicense agreement. If this
Agreement is terminated, provided that the sublicensee of a granted
sublicense is not in breach of its sublicense agreement and the
sublicensee agrees to be bound to SomaLogic as a licensor under the
terms and conditions of such sublicense agreement, SomaLogic shall
enter into appropriate agreements or amendments to such sublicense
agreement to substitute itself for Archemix as the licensor
thereunder.
2.2.7.3
For any sublicense granted by Archemix under this
Section 2.2.7, Archemix will cause each such sublicensee to
comply with of all of the relevant obligations and covenants of
Archemix related to any license or sublicense granted by SomaLogic
to Archemix under this Agreement, including without limitation
Archemix’s obligations under Sections 3.2, 3.3, 3.6,
3.7, and 3.9 hereof. 2.3
Disclosure of Aptamer Sequences. The Parties shall make good
faith efforts to disclose the nucleic acid sequences of Aptamers or
Photoaptamers, subject to license grants herein, that are
discovered by either of them during the Term to the extent such
sequences have been published or have otherwise been made available
to the public and such disclosure would be consistent with good
business judgment as determined by such Party in its sole
discretion. 2.4 Nonassertion by
Archemix. Archemix hereby agrees that it will not assert any
Other Archemix Patent Rights against SomaLogic or its Affiliates or
sublicensees for making, having made, using, having used, selling,
offering to sell, having sold, importing or exporting Aptamer or
Photoaptamer compositions to the extent such activities fall within
the Gilead-SomaLogic Field or the field of any license granted to
SomaLogic hereunder. 2.5
Nonassertion by SomaLogic. SomaLogic hereby agrees that it
will not assert any Other SomaLogic Patent Rights against Archemix
or its Affiliates or sublicensees for making, having made, using,
having used, selling, offering to sell, having sold, importing or
exporting Aptamer or Photoaptamer compositions to the extent such
activities fall within the Gilead-Archemix Field or the field of
any license granted to Archemix hereunder. Portions of this Exhibit
were omitted and have been filed separately with the Secretary of
the Commission pursuant to the Company’s application
requesting confidential treatment under Rule 406 of the
Securities Act.
15
2.6 Option to Companion
Diagnostic Products . SomaLogic hereby grants to Archemix the
option (the "Companion Diagnostic Products Option" ) to
obtain a license from SomaLogic under the financial terms set forth
in Section 3.1.3, under Patent Rights Controlled by SomaLogic,
to research, develop, make, have made, use, have used, sell, offer
for sale, have sold, keep and import products that are specifically
marketed and sold as companion diagnostic products for Aptamer
Therapeutic Products to be developed or commercialized by Archemix
or an Archemix Collaborative Partner ( "Companion Diagnostic
Products" ), wherein such Companion Diagnostic Products are
intended for use in: (i) detecting a disease or condition in
humans or animals to be treated with such Aptamer Therapeutic
Product, (ii) evaluating a subject’s suitability for
treatment with such Aptamer Therapeutic Product or
(iii) monitoring a subject’s response to treatment with
such Aptamer Therapeutic Product. In the event that SomaLogic
Controls the rights to a product that is intended to diagnose or
otherwise detect the existence of a disease or condition in humans
or animals (a "SomaLogic Diagnostic" ) for which Archemix
has developed a Aptamer Therapeutic Product and such SomaLogic
Diagnostic is suitable as a Companion Diagnostic Product, Archemix
shall have the option (the "SomaLogic Companion Diagnostic
Products Option" ) to negotiate for a license to such SomaLogic
Diagnostic, subject to any obligations that SomaLogic may have to a
Third Party. Upon receipt of written notice that Archemix desires
to exercise the SomaLogic Companion Diagnostic Products Option for
an identified Aptamer Therapeutic Product, (a) subject to any
obligations to a Third Party, SomaLogic will promptly disclose to
Archemix the existence of any relevant SomaLogic Diagnostic,
including any available information regarding such SomaLogic
Diagnostic as is reasonably relevant, including without limitation,
a summary of the development work which has been completed on such
SomaLogic Diagnostic, data relating to the safety and efficacy of
such SomaLogic Diagnostic, and samples of such SomaLogic
Diagnostic, subject to the execution and delivery of a commercially
reasonable material transfer agreement by the Parties relating to
such samples, (b) if no such SomaLogic Diagnostic exists, or
if any obligations to a Third Party prevent SomaLogic from
disclosing information regarding a relevant SomaLogic Diagnostic to
Archemix, SomaLogic will so inform Archemix, and (c) if so
requested by Archemix following receipt of such information, the
Parties hereby agree to negotiate in good faith an agreement
regarding a license for the relevant SomaLogic Diagnostic.
2.7 Access to and Use of Protein
Profiling Aptamer Arrays . Upon the request of Archemix,
SomaLogic will either supply Archemix with Protein Profiling
Aptamer Arrays, or will perform for Archemix protein detection and
analysis services on samples provided by Archemix with Protein
Profiling Aptamer Arrays. Archemix shall be free to use such
Protein Profiling Aptamer Arrays and the results of such services,
either itself or with an Archemix Collaborative Partner, solely to
discover and develop Aptamer Therapeutic Products. Archemix shall
not otherwise use such Protein Profiling Aptamer Arrays for the
benefit of a Third Party other than an Archemix Collaborative
Partner nor will Archemix otherwise transfer any such Protein
Profiling Aptamer Arrays to a Third Party other than an Archemix
Collaborative Partner. SomaLogic will supply such Protein Profiling
Aptamer Arrays or services to Archemix at [***] for such arrays
[***] by [***], or the [***] for materials that are consumed in
connection with providing such services [***] by [***].
2.8 Obligations to Third Party
Licensors . The Parties hereby acknowledge that certain of the
Patent Rights licensed hereunder are Controlled by the licensor
Party (the " Licensor Party ") by virtue of a license or
other agreement between the Licensor Party and a Portions of this
Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 406
of the Securities Act.
16
Third Party (each a " Third Party Licensor ") who owns or
otherwise Controls such Patent Rights. The Parties further
acknowledge that such agreements contain certain payment or other
requirements or obligations pertaining to the grant of sublicenses,
or the activities of sublicensees, under such agreements (each such
license or agreement is a " Third Party Agreement "). The
Parties hereby agree to the following obligations with respect to
such Third Party Agreements.
2.8.1
Notice . Attached hereto as Exhibit 2.8.1(a) is
a list of all Third Party Agreements to which Archemix is a party.
Attached hereto as Exhibit 2.8.1(b) is a list of all
Third Party Agreements to which SomaLogic is a party.
2.8.2
Obligations under Third Party Agreements . Each Party hereby
agrees to conform to the obligations and restrictions imposed upon
it as a sublicensee (a " Sublicensee Party ") under any
Third Party Agreements, in each case as amended from time-to-time
during the Term. Under certain Third Party Agreements, the Third
Party Licensor is entitled to receive payments on account of the
grant of sublicenses, or on account of specified activities of
sublicensees ( "Third Party Payments" ). Each Party hereby
assumes the obligation to make all such Third Party Payments as are
attributable to the grant of the sublicense of rights to it
hereunder, or as are attributable to the activities, including
without limitation, the achievement of milestones or the sale of
products, by it, its Affiliates and its sublicensees, as and when
required under the applicable Third Party Agreements. Each Party
further agrees that the Licensor Party shall have the right, but
not the obligation, to fulfill such Sublicensee Party’s
obligations under this Section 2.8.2 if the Sublicensee Party
should fail to do so in a timely and complete manner following
written notice from the Licensor Party, in order to avoid a loss or
curtailment of the Licensor Party’s rights under such Third
Party Agreement, and that such Sublicensee Party shall reimburse
the Licensor Party for all costs and expenses incurred in so
fulfilling such obligations of the Sublicensee Party.
Notwithstanding anything to the contrary herein, SomaLogic shall be
responsible for [***] Third Party Payments owed to [***] by
Archemix in excess of the [***] specified in Section [***].
2.9 Certain Acknowledgments
Concerning the Gilead-SomaLogic Field. The Parties hereby
acknowledge the following: (i) that the scope of rights
granted to SomaLogic under the Gilead-SomaLogic Agreement was a
matter of dispute between the Parties; (ii) that the Parties
agree that the scope of rights granted to SomaLogic under the
Gilead-SomaLogic Agreement Clarification is acceptable to them;
(iii) that the Parties have, as of the Original Agreement
Effective Date, executed and delivered a mutual release of claims
and settlement releasing claims that each has against the other as
more fully set forth therein (the " Release "); and
(iv) that, for purposes of determining the adequacy of the
consideration received under the Gilead-SomaLogic Agreement
Clarification, the Release, the Original Agreement or this
Agreement, for any purposes whatsoever, all of the rights,
obligations and forbearances granted under the other three
agreements must be taken into account.
2.10 Research Management
Committee. To coordinate efforts by both Parties to continue to
develop Aptamer and Photoaptamer technology and to facilitate the
exchange of know-how foreseen by this Agreement, the Parties will
establish a Research Management Committee ( "RMC" ), which
will be comprised of equal numbers of representatives of each of
the Parties. The RMC will meet at least [***] per calendar year,
alternating venues between the Portions of this Exhibit were
omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting
confidential treatment under Rule 406 of the Securities
Act.
17
vicinities of Cambridge, Massachusetts and Boulder, Colorado, to
share scientific direction and data and to coordinate basic
research experiments. Intellectual property representatives of each
Party will be invited to participate in RMC meetings and such
meetings will provide a forum to discuss patent prosecution and
enforcement issues and to allocate responsibility for the filing
and prosecution of any Joint Patents. The RMC will establish a
clearance policy that will govern any publication or presentation
by a Party in which such Party proposes to include any previously
undisclosed information or intellectual property Controlled by the
other Party. The RMC will continue in existence for [***] years
after the Effective Date, subject to extension by mutual agreement
of the Parties. 2.11 Disclosure of
Aptamer Data. Subject to any obligations to a Third Party, each
Party shall disclose to the other Party on the Restatement
Effective Date and quarterly thereafter the following information:
(i) the targets for which it has attempted to identify an
Aptamer or Photoaptamer; (ii) the targets for which an Aptamer
or Photoaptamer has been successfully identified; (iii) the
SELEX conditions used to successfully identify such Aptamer(s) or
Photoaptamer(s); and (iv) whatever data the disclosing Party
possesses regarding the physical characteristics of such Aptamers
or Photoaptamers including such things as binding affinity and
association/dissociation constants, but excluding the sequence of
such Aptamer(s) or Photoaptamer(s) (such information, " Aptamer
Data "). All such Aptamer Data shall be deemed to be
Confidential Information of the Disclosing Party and shall be
subject to Section 4 of this Agreement.
2.12 Supply of
Aptamers/Photoaptamers For Research. Upon the request of a
Party, the other Party shall use commercially reasonable efforts to
supply the requesting Party with samples of the Aptamers or
Photoaptamers identified by such other Party under the terms set
forth in Exhibit 2.12 (a) (in the case of Archemix) or
2.12(b) (in the case of SomaLogic) and, except as otherwise
provided for herein, solely for the internal research purposes of
the requesting Party. 2.13 Target
Screening. Upon Archemix’s request, SomaLogic shall
perform SELEX against targets provided by Archemix using
commercially reasonable efforts and shall provide the resulting
Aptamer Data to Archemix in accordance with the provisions of
Section 2.11 hereof. SomaLogic shall own all right, title and
interest in and to the resulting Aptamers or Photoaptamers, and
Archemix shall have the right to license any such Aptamers or
Photoaptamers from SomaLogic subject to the provisions of
Section 2.2.1.2 hereof. 2.14
Therapeutic Photoaptamer Rights. Upon Archemix’s
request, SomaLogic will assist Archemix in its efforts to negotiate
an agreement with Gilead Sciences Inc. to provide Archemix with a
royalty-free, paid up right to research, develop and commercialize
Photoaptamers originally discovered or developed by SomaLogic, or
derivatives thereof, as Aptamer Therapeutic Products.
2.15 Negative Covenants.
2.15.1
Archemix . Archemix will include in any license or
sublicense granted by Archemix to the Archemix Licensed Patents
(including any Aptamer-Specific Patent Rights within the Archemix
Licensed Patents) a negative covenant which prohibits the licensee
or Portions of this Exhibit were omitted and have been filed
separately with the Secretary of the Commission pursuant to the
Company’s application requesting confidential treatment under
Rule 406 of the Securities Act.
18
sublicensee from using such rights to research, develop, make,
have made, use, have used, sell, offer for sale, have sold, keep,
import and export Aptamers for use within the Gilead-SomaLogic
Field, during the Term and throughout the Territory.
2.15.2
SomaLogic . SomaLogic will include in any license or
sublicense granted by SomaLogic to the SomaLogic Licensed Patents
(including any Aptamer-Specific Patent Rights within the SomaLogic
Licensed Patents) a negative covenant which prohibits the licensee
or sublicensee from using such rights to research, develop, make,
have made, use, have used, sell, offer for sale, have sold, keep,
import and export Aptamer Therapeutic Products, during the Term and
throughout the Territory. 2.16 New
Archemix License.
2.16.1
Target Identification . Notwithstanding anything to the
contrary herein, prior to SomaLogic or any sublicensee of SomaLogic
performing or engaging in any activities with respect to a Target
under the New Archemix License (" Target Activities "),
SomaLogic shall provide Archemix with a written notice (each, a "
Target Notice ") identifying the Target(s) that would be the
subject of any such activities. Within [***] days of receipt of a
Target Notice, Archemix shall provide SomaLogic with a written
response (each, a " Target Response ") identifying the
Targets identified in such Target Notice for which SomaLogic and
its sublicensees have the right to perform Target Activities under
the New Archemix License under this Agreement. For purpose of
clarity, (i) neither SomaLogic nor its affiliates or sublicensees
shall have the right to perform Target Activities for any Target
not identified in a Target Response, (ii) Archemix shall only
have the right to reject a Target proposed by SomaLogic in a Target
Notice if Archemix is prohibited by an executed agreement in effect
as of the Restatement Effective Date from licensing Aptamers
against such proposed Target and (iii) Archemix will provide
prompt written notice to SomaLogic if the restrictions on any
Target that is rejected by Archemix pursuant to the foregoing
clause (ii) no longer apply, in which case such Target shall
be deemed to be included in the rights granted to SomaLogic and, to
the extent SomaLogic has excluded such Target from the New
SomaLogic License under Section 2.17, the rights granted to
Archemix hereunder without further action of the Parties.
2.16.2
Confidentiality. SomaLogic hereby agrees to maintain the
identity of any Targets identified in a Target Notice but not in a
Target Response as confidential information using at least the same
degree of care (but never less than a reasonable degree of care)
that it uses to protect its other confidential or proprietary
information. 2.17 New SomaLogic
License . SomaLogic shall have the right to exclude any Target
identified in a Target Notice but not a Target Response from the
scope of the New SomaLogic License by providing written notice to
Archemix identifying such Target within [***] days of the
applicable Target Response. SECTION 3
CONSIDERATION 3.1
Consideration. In further consideration of the mutual
rights, licenses and acknowledgements granted or made in the
Original Agreement and/or herein, in the Release and Portions of
this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company’s
application requesting confidential treatment under Rule 406
of the Securities Act.
19
in the Gilead-SomaLogic Agreement Clarification, by the Parties,
and subject to the other terms and conditions of this Agreement,
the Parties agree to the following fees and payments.
3.1.1
Archemix Licensed Products. Archemix shall pay to SomaLogic,
during the EC Royalty Term, (a) a royalty of [***] percent
([***]%) of Net Sales of Archemix Licensed Products sold by or on
behalf of Archemix or its Affiliates and (b) [***] percent ([***]%)
of all Sublicense Income applicable to Archemix Licensed Products
(collectively, " Archemix EC Royalties ").
3.1.2
SomaLogic Licensed Products. SomaLogic shall pay to
Archemix, during the SomaLogic Royalty Term, (a) a royalty of
[***] percent ([***]%) of Net Sales of SomaLogic Licensed Products
sold by or on behalf of SomaLogic or its Affiliates and (b) [***]
percent ([***]%) of all Sublicense Income applicable to SomaLogic
Licensed Products (collectively, " SomaLogic Royalties ").
3.1.3
Companion Diagnostics Products. In the event that the
Parties enter into a license agreement pursuant to Section 2.6
hereof, Archemix shall pay to SomaLogic, during the CD Royalty
Term, (a) a royalty of [***] ([***]%) of Net Sales of
Companion Diagnostic Products discovered and developed by Archemix
and (b) a royalty of [***] percent ([***]%) of Net Sales of
any Companion Diagnostic Products that employ or are derived from a
SomaLogic Diagnostic (collectively, " Archemix CD Royalties
"). To the extent that SomaLogic produces commercial quantities of
any such Companion Diagnostic Products and Archemix desires to
purchase such Companion Diagnostic Products from SomaLogic, the
Parties will enter into a supply agreement providing that Archemix
shall have the right to purchase such Companion Diagnostic Products
from SomaLogic at SomaLogic’s Cost of Goods Sold multiplied
by 1.15 and containing such other terms as shall be commercially
reasonable under the circumstances.
3.2 Royalty Terms. Royalties
on the sale of Products shall be payable until expiration of the
applicable EC Royalty Term, the SomaLogic Royalty Term and/or the
CD Royalty Term (as defined below) as follows.
3.2.1
Archemix Licensed Products. Archemix shall pay to SomaLogic
Archemix EC Royalties hereunder, with respect to each Archemix
Licensed Product (i) commencing on the date of the First
Commercial Sale of such Archemix Licensed Product by or on behalf
of Archemix or its Affiliates and ending upon the expiration of the
last to expire Valid Claim within the SomaLogic EC Patent(s) that
claim or cover the manufacture, use, sale or importation of such
Archemix Licensed Product in the country of sale and
(ii) commencing on the first date of receipt by Archemix of
any Sublicense Income applicable to such Archemix Licensed Product
and continuing until no further Sublicense Income payments are
received that are applicable to such Archemix Licensed Product (the
" EC Royalty Term "). For purposes of clarity, the EC
Royalty Term shall be determined on a country-by-country and
Archemix Licensed Product-by-Archemix Licensed Product basis.
3.2.2
SomaLogic Licensed Products. SomaLogic shall pay to Archemix
SomaLogic Royalties hereunder, with respect to each SomaLogic
Licensed Product (i) commencing on the date of the First
Commercial Sale of such SomaLogic Licensed Product by on behalf of
SomaLogic or its Affiliates and ending upon the expiration of the
last to expire Portions of this Exhibit were omitted and have been
filed separately with the Secretary of the Commission pursuant to
the Company’s application requesting confidential treatment
under Rule 406 of the Securities Act.
20
Valid Claim within the Archemix Licensed Patents and Archemix
Patents that claim or cover the manufacture, use, sale or
importation of such SomaLogic Licensed Product in the country of
sale and (ii) commencing on the first date of receipt by
SomaLogic of any Sublicense Income applicable to such SomaLogic
Licensed Product and continuing until no further Sublicense Income
payments are received that are applicable to such SomaLogic
Licensed Product (the " SomaLogic Royalty Term "). For
purposes of clarity, the SomaLogic Royalty Term shall be determined
on a country-by-country and SomaLogic Licensed Product-by-SomaLogic
Licensed Product basis.
3.2.3
Companion Diagnostic Products. In the event the Parties
enter into a license agreement pursuant to Sections 2.6 and
3.1.3, such license agreement shall require Archemix to pay
Archemix CD Royalties on sales of each Companion Diagnostic
Products (i) commencing on the date of the First Commercial
Sale of such Companion Diagnostic Product and ending upon the
expiration of the last to expire Valid Claim within the patents
licensed to Archemix under such license agreement that cover the
manufacture, use, sale or importation of such Companion Diagnostic
Product in the country of sale and (ii) commencing on the
first date of receipt by Archemix of any Sublicense Income
applicable to such Companion Diagnostic Product and continuing
until no further Sublicense Income payments are received that are
applicable such Companion Diagnostic Product (the " CD Royalty
Term "). For purposes of clarity, such CD Royalty Term shall be
determined on a country-by-country and Companion Diagnostic
Product-by-Companion Diagnostic Product basis.
3.3 Currency. All amounts
payable under this Agreement shall be payable in United States
Dollars, by wire transfer of immediately available funds to bank
accounts designated by Archemix and SomaLogic. Monthly sales
amounts denominated in a foreign currency shall be translated into
U.S. Dollars by using an average rate of exchange. This average for
a particular foreign currency shall be computed using the rate of
exchange for such currency quoted under Foreign Exchange in the
Wall Street Journal in the last month of the applicable
calendar quarter plus the rate of exchange for such currency as of
the end of the prior month and dividing by two (2).
3.4 Withholding Taxes. If any
law or regulation in any country requires the withholding of any
taxes due on payments to be paid under this Agreement, such taxes
shall be deducted from the amounts paid. If the taxes are deducted
from the amounts paid, each Selling Party making such deductions
shall promptly deliver proof of payment of all such taxes, levies
and other charges, together with copies of all communications from
or with such governmental authority with respect thereto and shall
provide any reasonable assistance or cooperation which may be
requested by the Non-Selling Party in connection with any efforts
the Non-Selling Party makes to obtain a credit for such taxes.
3.5 Currency Transfer
Restrictions. If any payment or transfer of funds out of a
country is prohibited by law or regulation, the Parties hereto
shall confer regarding the terms and conditions on which Products
shall be sold in such countries, including the possibility of
payment of royalties hereunder in local currency to a bank account
in such country or the renegotiation of royalties for such sales,
and in the absence of any other agreement by the Parties, such
funds shall be deposited in whatever currency is allowable by the
Selling Party in an accredited bank in that country that is
acceptable to the Non-Selling Party. Portions of this Exhibit were
omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting
confidential treatment under Rule 406 of the Securities
Act.
21
3.6 Royalty Payments Upon
Termination. If this Agreement, and the rights and licenses
granted hereunder, are terminated in accordance with Section 7
hereof with respect to all or some of the Products, the Selling
Party shall continue to pay the Non-Selling Party all amounts
payable pursuant to this Section 3 up through the date of such
termination and any amounts earned thereafter as a result of
authorized sales, if any, of residual inventory of Products.
3.7 Payments and Quarterly
Reports.
3.7.1
Payments . The Selling Party shall make written reports
(consistent with GAAP) to the Non-Selling Party within [***] days
after the close of each calendar quarter during the EC Royalty
Term, the SomaLogic Royalty Term and/or the CD Royalty Term, as
applicable. These reports shall show, for such calendar quarter,
sales by the Selling Party of Products sold in each country and the
country of manufacture, if different, gross revenues from sales,
trade discounts allowed and taken, Net Sales, the amount of any
applicable Sublicense Income received, and the royalties due
hereunder. Concurrently with the making of such report, the Selling
Party shall make payment to the Non-Selling Party of all amounts
payable for the period covered by such report.
3.8 Overdue Royalties .
Subject to the other terms of this Agreement, any payments not paid
within the time period set forth in this Section 3 shall bear
interest at a rate of [***] percent ([***]%) per month from the due
date until paid in full. 3.9
Accounting. The Parties shall, and shall cause their
Affiliates and other sublicensees to, keep accurate and complete
records, all in a format agreed by the Parties in accordance with
GAAP, for a period of at least [***] years for each reporting
period in which sales occur showing the manufacturing, sales, use
and other disposition of Products in sufficient detail to enable
amounts payable hereunder to be determined, and further agree to
permit, and cause their Affiliates and sublicensees to permit,
their books and records to be audited as set forth herein. The
Non-Selling Party shall have the right, at its sole expense except
as hereinafter provided, through a certified public accountant
reasonably acceptable to the Selling Party, and following
reasonable notice, to examine such records during regular business
hours during the EC Royalty Term, SomaLogic Royalty Term or the CD
Royalty Term as applicable and for [***] years thereafter;
provided , however , that such examination shall not
(i) be of records for more than the prior [***] years,
(ii) take place more often than once a year, and
(iii) cover any records which date prior to the date of the
last examination, and provided, further, that such accountants
shall report to the requesting party only as to the accuracy of the
royalty statements and payments. Copies of such reports shall be
supplied to the Selling Party. In the event the report demonstrates
an underpayment, the Selling Party shall pay the amount of such
underpayment immediately upon request of the Non-Selling Party and
if such underpayment is more than [***] percent ([***]%) of the
amount due for the audited period, shall reimburse the Non-Selling
Party for the expense of the audit. If the Selling Party has
overpaid, the Selling Party may deduct such overpayments from
future amounts owed hereunder Portions of this Exhibit were omitted
and have been filed separately with the Secretary of the Commission
pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
22
SECTION 4
CONFIDENTIALITY 4.1
Confidentiality. Confidential information shall consist of
any information disclosed in writing, orally or in any other manner
by a Party (the "Disclosing Party" ) or otherwise made
available to the other Party (the "Receiving Party" )
concerning the Disclosing Party’s Intellectual Property
Rights, know-how or performance of this Agreement or otherwise
concerning the business, operations, trade secrets or other
proprietary information of the Disclosing Party ( "Confidential
Information" ). Except as otherwise provided herein, during the
Term, and for [***] years thereafter, Archemix and SomaLogic shall
not use or reveal or disclose to any Third Party any Confidential
Information disclosed hereunder without first obtaining the written
consent of the Disclosing Party. This confidentiality obligation
shall not apply to such information:
(a) which
is or becomes generally available to the public other than as a
result of unauthorized disclosure thereof by the Receiving Party;
(b) which
is lawfully received by the Receiving Party on a non-confidential
basis from a Third Party that is not itself under any obligation of
confidentiality or nondisclosure to the Disclosing Party or any
other person with respect to such information;
(c) which
by competent proof can be shown by the Receiving Party to have been
independently developed by the Receiving Party; or
(d) which
the Receiving Party establishes by competent proof was in its
possession at the time of disclosure by the Disclosing Party and
was not acquired, directly or indirectly from the Disclosing Party.
The Receiving Party shall use Confidential Information solely for
the purposes of this Agreement and the transactions contemplated
hereby and shall not disclose or disseminate any Confidential
Information to any person at any time, except for disclosure to
those of its directors, officers, employees, accountants,
attorneys, advisers and agents whose duties reasonably require them
to have access to such Confidential Information, provided that such
directors, officers, employees, accountants, attorneys, advisers
and agents are required to maintain the confidentiality of such
Confidential Information to the same extent as if they were parties
hereto. Each Receiving Party shall safeguard the Disclosing
Party’s Confidential Information using at least the same
degree of care, (but never less than a reasonable degree of care)
that it uses to protect its own confidential or proprietary
information. 4.2 Required
Disclosures. All Confidential Information disclosed by the
Disclosing Party to the Receiving Party shall remain the property
of the Disclosing Party. The foregoing confidentiality and
nondisclosure obligations shall not apply to information which is
required to be publicly disclosed by law or by regulation;
provided, however, that, in such event, the Receiving Party who is
compelled to disclose such Confidential Information shall promptly
notify, with a copy to the Disclosing Party, the court or other
tribunal: (i) that Confidential Information received from the
Disclosing Party under this Agreement remains the property of the
Disclosing Party and (ii) of the confidentiality obligations
under this Agreement. In addition, the Portions of this Exhibit
were omitted and have been filed separately with the Secretary of
the Commission pursuant to the Company’s application
requesting confidential treatment under Rule 406 of the
Securities Act.
23
Receiving Party who is compelled to disclose the Confidential
Information shall, to the extent permitted by law, take all steps
necessary or desirable to maintain the confidentiality of the
Disclosing Party’s Confidential Information and to insure
that the court, other tribunal or appointee maintains such
information in confidence in accordance with the terms of this
Agreement. 4.3 Press Release.
Immediately following the Parties’ execution of this
Agreement, the Parties shall disclose the nature of this Agreement
in a joint press release and each Party shall publish such press
release on the Party’s web site for a period of at lease six
(6) months; provided , however , that the
Parties shall obtain each other’s prior consent on the text
of such press release, such consent not to be unreasonably withheld
or de
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