-----BEGIN PRIVACY-ENHANCED MESSAGE----- Proc-Type: 2001,MIC-CLEAR Originator-Name: webmaster@www.sec.gov Originator-Key-Asymmetric: MFgwCgYEVQgBAQICAf8DSgAwRwJAW2sNKK9AVtBzYZmr6aGjlWyK3XmZv3dTINen TWSM7vrzLADbmYQaionwg5sDW3P6oaM5D3tdezXMm7z1T+B+twIDAQAB MIC-Info: RSA-MD5,RSA, PHC+Nb6OpUncpmIpkG2upxZDiAxjfVBfx1iL9O/mvGNFnAnYsfZ6bu8/5MRoI8CQ PTHzPKGHptCxmGsND9WfDg== 0000927016-98-000998.txt : 19980318 0000927016-98-000998.hdr.sgml : 19980318 ACCESSION NUMBER: 0000927016-98-000998 CONFORMED SUBMISSION TYPE: S-1/A PUBLIC DOCUMENT COUNT: 4 FILED AS OF DATE: 19980317 SROS: NASD FILER: COMPANY DATA: COMPANY CONFORMED NAME: CURAGEN CORP CENTRAL INDEX KEY: 0001030653 STANDARD INDUSTRIAL CLASSIFICATION: SERVICES-COMMERCIAL PHYSICAL & BIOLOGICAL RESEARCH [8731] IRS NUMBER: 06133140 FILING VALUES: FORM TYPE: S-1/A SEC ACT: SEC FILE NUMBER: 333-38051 FILM NUMBER: 98567202 BUSINESS ADDRESS: STREET 1: 555 LONG WHARF DRIVE STREET 2: 11TH FL CITY: NEW HAVEN STATE: CT ZIP: 06511 S-1/A 1 FORM S-1/A AS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION ON MARCH 17, 1998 REGISTRATION NO. 333-38051 - ------------------------------------------------------------------------------- - ------------------------------------------------------------------------------- SECURITIES AND EXCHANGE COMMISSION WASHINGTON, D.C. 20549 --------------- AMENDMENT NO. 9 TO FORM S-1 REGISTRATION STATEMENT UNDER THE SECURITIES ACT OF 1933 --------------- CURAGEN CORPORATION (EXACT NAME OF REGISTRANT AS SPECIFIED IN ITS CHARTER) DELAWARE 8731 06-1331400 (STATE OR OTHER (PRIMARY STANDARD INDUSTRIAL (I.R.S. EMPLOYER JURISDICTION OF CLASSIFICATION CODE NUMBER) IDENTIFICATION NO.) INCORPORATION OR ORGANIZATION) 555 LONG WHARF DRIVE, 11TH FLOOR NEW HAVEN, CONNECTICUT 06511 (203) 401-3330 (203) 401-3333 FACSIMILE (ADDRESS, INCLUDING ZIP CODE, AND TELEPHONE NUMBER, INCLUDING AREA CODE, OF REGISTRANT'S PRINCIPAL EXECUTIVE OFFICES) --------------- JONATHAN M. ROTHBERG, PH.D. CHIEF EXECUTIVE OFFICER, PRESIDENT AND CHAIRMAN OF THE BOARD CURAGEN CORPORATION 555 LONG WHARF DRIVE, 11TH FLOOR NEW HAVEN, CONNECTICUT 06511 (203) 401-3330 (203) 401-3333 FACSIMILE (NAME, ADDRESS, INCLUDING ZIP CODE, AND TELEPHONE NUMBER, INCLUDING AREA CODE, OF AGENT FOR SERVICE) --------------- COPIES TO: JONATHAN L. KRAVETZ, ESQ. KEITH F. HIGGINS, ESQ. STANFORD N. GOLDMAN, JR., ESQ. ROPES & GRAY MINTZ, LEVIN, COHN, FERRIS, ONE INTERNATIONAL PLACE GLOVSKY AND POPEO, P.C. BOSTON, MASSACHUSETTS 02110 ONE FINANCIAL CENTER (617) 951-7000 BOSTON, MASSACHUSETTS 02111 (617) 951-7050 FACSIMILE (617) 542-6000 (617) 542-2241 FACSIMILE --------------- APPROXIMATE DATE OF COMMENCEMENT OF PROPOSED SALE TO THE PUBLIC: As soon as practicable after this Registration Statement becomes effective. If any of the securities being registered on this Form are to be offered on a delayed or continuous basis pursuant to Rule 415 under the Securities Act of 1933, as amended (the "Securities Act"), check the following box. [_] If this Form is filed to register additional securities for an offering pursuant to Rule 462(b) under the Securities Act, check the following box and list the Securities Act registration statement number of the earlier effective registration statement for the same offering. [_] If this Form is a post-effective amendment filed pursuant to Rule 462(c) under the Securities Act, check the following box and list the Securities Act registration statement number of the earlier effective registration statement for the same offering. [_] If this Form is a post-effective amendment filed pursuant to Rule 462(d) under the Securities Act, check the following box and list the Securities Act registration statement number of the earlier effective registration statement for the same offering. [_] If delivery of the prospectus is expected to be made pursuant to Rule 434, please check the following box. [_] --------------- THE REGISTRANT HEREBY AMENDS THIS REGISTRATION STATEMENT ON SUCH DATE OR DATES AS MAY BE NECESSARY TO DELAY ITS EFFECTIVE DATE UNTIL THE REGISTRANT SHALL FILE A FURTHER AMENDMENT WHICH SPECIFICALLY STATES THAT THIS REGISTRATION STATEMENT SHALL THEREAFTER BECOME EFFECTIVE IN ACCORDANCE WITH SECTION 8(A) OF THE SECURITIES ACT OF 1933 OR UNTIL THIS REGISTRATION STATEMENT SHALL BECOME EFFECTIVE ON SUCH DATE AS THE SECURITIES AND EXCHANGE COMMISSION, ACTING PURSUANT TO SAID SECTION 8(A), MAY DETERMINE. - ------------------------------------------------------------------------------- - ------------------------------------------------------------------------------- PART II INFORMATION NOT REQUIRED IN PROSPECTUS ITEM 13. OTHER EXPENSES OF ISSUANCE AND DISTRIBUTION The following table sets forth all expenses, other than underwriting discounts and commissions, payable by the Company in connection with the sale of the Common Stock being registered. All amounts are estimated except the registration fee. Commission Registration Fee................................... $ 12,121 NASD filing fee............................................... 5,000 Nasdaq National Market listing fee............................ 83,500 Printing and engraving expenses............................... 200,000 Legal fees and expenses....................................... 565,000 Accounting fees and expenses.................................. 225,000 Blue sky fees and expenses (including legal fees)............. 5,000 Transfer agent and registrar fees and expenses................ 2,000 Miscellaneous................................................. 2,379 ---------- TOTAL....................................................... $1,100,000 ==========
ITEM 14. INDEMNIFICATION OF DIRECTORS AND OFFICERS. The amendment and restatement of the Company's Certificate of Incorporation (the "Restated Certificate") provides that the Company shall indemnify to the fullest extent authorized by the Delaware General Corporation Law ("DGCL"), each person who is involved in any litigation or other proceeding because such person is or was a director or officer of the Company or is or was serving as an officer or director of another entity at the request of the Company, against all expense, loss or liability reasonably incurred or suffered in connection therewith. The Restated Certificate provides that the right to indemnification includes the right to be paid expenses incurred in defending any proceeding in advance of its final disposition; provided, however, that such advance payment will only be made upon delivery to the Company of an undertaking, by or on behalf of the director or officer, to repay all amounts so advanced if it is ultimately determined that such director is not entitled to indemnification. If the Company does not pay a proper claim for indemnification in full within 60 days after a written claim for such indemnification is received by the Company, the Restated Bylaws authorize the claimant to bring an action against the Company and prescribe what constitutes a defense to such action. Section 145 of the DGCL permits a corporation to indemnify any director or officer of the corporation against expenses (including attorney's fees), judgments, fines and amounts paid in settlement actually and reasonably incurred in connection with any action, suit or proceeding brought by reason of the fact that such person is or was a director or officer of the corporation, if such person acted in good faith and in a manner that he or she reasonably believed to be in, or not opposed to, the best interests of the corporation, and, with respect to any criminal action or proceeding, if he or she had no reason to believe his or her conduct was unlawful. In a derivative action, (i.e., one brought by or on behalf of the corporation), indemnification may be made only for expenses, actually and reasonably incurred by any director or officer in connection with the defense or settlement of such an action or suit, if such person acted in good faith and in a manner that he reasonably believed to be in, or not opposed to, the best interests of the corporation, except that no indemnification shall be made if such person shall have been adjudged to be liable to the corporation, unless and only to the extent that the court in which the action or suit was brought shall determine that the defendant is fairly and reasonably entitled to indemnity for such expenses despite such adjudication of liability. Pursuant to Section 102(b)(7) of the DGCL, Article Tenth of the Restated Certificate eliminates the liability of a director or the corporation or its stockholders for monetary damages for such breach of fiduciary duty as a director, except for liabilities arising (i) from any breach of the director's duty of loyalty to the corporation or its stockholders, (ii) from acts or omissions not in good faith or which involve intentional misconduct or a knowing II-1 violation of law, (iii) under Section 174 of the DGCL, or (iv) from any transaction from which the director derived an improper personal benefit. The Company has obtained primary and excess insurance policies insuring the directors and officers of the Company against certain liabilities that they may incur in their capacity as directors and officers. Under such policies, the insurers, on behalf of the Company, may also pay amounts for which the Company has granted indemnification to the directors or officers. Additionally, reference is made to the Underwriting Agreement filed as Exhibit 1.1 hereto, which provides for indemnification by the Underwriters of the Company, its directors and officers who sign the Registration Statement and persons who control the Company, under certain circumstances. ITEM 15. RECENT SALES OF UNREGISTERED SECURITIES. In the three years preceding the filing of this Registration Statement, the Company has sold the following securities that were not registered under the Securities Act. (a) Issuances of Capital Stock. On May 9, 1995, the Company issued an aggregate of 19,575 shares of its Common Stock to two investors in exchange for financial advisory services rendered by such investors to the Company having a value of $45,218.75. On December 29, 1995, the Company sold an aggregate of 100,000 shares of its Common Stock to two investors at $1.00 per share in exchange for payments of an aggregate of $100,000 by such investors upon the exercise of warrants to purchase Common Stock. On March 30, 1996, the Company sold 100,000 shares of its Common Stock to one investor at $1.52 per share in exchange for payment of $152,000 by such investor upon the exercise of a warrant to purchase Common Stock. On December 27, 1996, the Company sold 307,167 shares of its Series A Convertible Preferred Stock at a purchase price of $5.86 per share to Genentech, Inc. in a private placement for $1,800,000. In March 1997, the Company issued 17,073 and 22,673 shares of its Common Stock to Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. and Pennie & Edmonds LLP, respectively, at $4.10 per share in exchange for legal services rendered on behalf of the Company and having an aggregate value of $162,958.60. On March 27, 1997, the Company sold an aggregate of 175,000 shares of its Series B Redeemable Preferred Stock at a purchase price of $10.00 per share to five investors in a private placement for $1,750,000 in cash. In connection with this private placement, the Company issued five-year warrants to purchase 358,361 shares of Common Stock at an exercise price of $5.86 per share. On March 27, 1997, the Company sold an aggregate of 2,011,468 shares of its Series C Convertible Preferred Stock at a purchase price of $5.86 per share to eleven investors in a private placement for $11,787,202.48. In connection with this private placement, the Company also issued three-year warrants to purchase 366,894 shares of Common Stock at an exercise price of $9.00 per share to two investors who each purchased 1,706,485 and 127,986 shares of Series C Convertible Preferred Stock, respectively. On April 10, 1997, the Company sold 291,875 shares of its Common Stock to Connecticut Innovations Incorporated in exchange for the cancellation of a $600,000 principal amount promissory note (plus accrued interest thereon) upon the exercise of a warrant to purchase Common Stock. II-2 On May 16, 1997, the Company sold 1,000,000 shares of its Series D Convertible Preferred Stock at a purchase price of $7.50 per share to Pioneer Hi-Bred International, Inc. in a private placement for $7,500,000. On June 25, 1997, the Company sold 100,000 shares of its Series E Convertible Preferred Stock at a purchase price of $10.00 per share to Biogen, Inc. in a private placement for $1,000,000. In October 1997, the Company agreed to sell $5,000,000 of its Common Stock to Biogen, Inc. in a private placement concurrent with this offering at a price per share equal to the price per share at which the Common Stock is sold in this Offering. In November 1997, the Company agreed to sell $5,000,000 of its Common Stock to Genentech, Inc. in a private placement concurrent with this offering at a price per share equal to the price per share at which the Common Stock is sold in this Offering. In November 1997, the Company agreed to sell $1,000,000 of its Common Stock to the University of Florida Research Foundation, Inc. in a private placement concurrent with this offering at a price per share equal to the price per share at which the Common Stock is sold in this Offering. (b) Certain Grants and Exercises of Stock Options. Pursuant to the 1993 Stock Option and Incentive Award Plan (the "1993 Stock Plan"), as of December 31, 1997, the Company has granted options to purchase an aggregate of 1,028,884 shares of Common Stock, of which options to purchase an aggregate of 347,611 shares of Common Stock are exercisable at a weighted average exercise price of $3.32 per share. As of December 31, 1997, no options pursuant to the foregoing have been exercised. Pursuant to the 1997 Employee, Director and Consultant Stock Plan (the "1997 Stock Plan"), as of December 31, 1997, the Company has granted options to purchase an aggregate of 65,000 shares of Common Stock at a price per share equal to the initial public offering price, of which options to purchase an aggregate of 21,668 shares of Common Stock are exercisable. As of December 31, 1997, no options pursuant to the foregoing have been exercised. In addition to the options granted under the 1993 Stock Plan and the 1997 Stock Plan, as of December 31, 1997, the Company has issued options to purchase an aggregate of 570,000 shares of Common Stock pursuant to individual agreements with Company employees and consultants, of which options to purchase an aggregate of 349,500 shares of Common Stock are exercisable at a weighted average exercise price of $1.40 per share. As of December 31, 1997, no options pursuant to the foregoing have been exercised. No underwriters were involved in the foregoing offers and sales of securities. Such offers and sales were made in reliance upon an exemption from the registration provisions of the Securities Act set forth in Section 4(2) thereof relative to sales by an issuer not involving any public offering or the rules and regulations thereunder, or, in the case of options to purchase Common Stock, Rule 701 under the Securities Act. All of the foregoing securities are deemed restricted securities for purposes of the Securities Act. ITEM 16. EXHIBITS AND FINANCIAL STATEMENT SCHEDULES. (a) Exhibits
EXHIBIT NUMBER DESCRIPTION ------- ----------- @1.1 Form of Underwriting Agreement @3.1 Amended and Restated Certificate of Incorporation of the Registrant @3.2 Certificate of Amendment of Restated Certificate of Incorporation of the Registrant and Certificate of Amendment of Certificate of Designation, Preferences, and Rights of Series E Preferred Stock of the Registrant.
II-3
EXHIBIT NUMBER DESCRIPTION ------- ----------- @3.3 Amended and Restated Certificate of Incorporation of the Registrant @3.4 Bylaws of the Registrant @3.5 Amended and Restated Bylaws of the Registrant @4.1 Article Fourth of the Amended and Restated Certificate of Incorporation of the Registrant (see Exhibit 3.3) @4.2 Form of Common Stock Certificate @5.1 Opinion of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. with respect to the legality of the securities being registered @10.1 Lease Agreement (New Haven), dated December 23, 1996, between the Registrant and Fusco Harbour Associates, LLC @10.2 Standard Form of Office Lease, as amended (Branford), dated February 11, 1993 and April 26, 1996, between the Registrant and Branford Office Venture @10.3 Sid Martin Biotechnology Development Institute Incubator License Agreement, dated July 15, 1997, between the Registrant and the University of Florida Research Foundation, Inc. @10.4 1997 Employee, Director and Consultant Stock Plan @10.5 1993 Stock Option and Incentive Award Plan @10.6 Amendment to 1993 Stock Option and Incentive Plan, dated May 12, 1997 @10.7 Employment Letter, dated February 20, 1997, between the Registrant and Gregory T. Went, Ph.D. @10.8 Employment Letter, dated July 18, 1997, between the Registrant and David M. Wurzer @10.9 Employment Letter, dated August 21, 1997, between the Registrant and Peter A. Fuller, Ph.D. @10.10 Employment Letter, dated August 22, 1997, between the Registrant and Stephen F. Kingsmore, M.B., Ch.B. +10.11 Option and Exclusive License Agreement, dated October 4, 1996, between the Registrant and Wisconsin Alumni Research Foundation +10.12 Standard Non-Exclusive License Agreement--Brumley, dated July 1, 1996, between the Registrant and Wisconsin Alumni Research Foundation @+10.13 Collaborative Research and License Agreement, dated May 16, 1997, between the Registrant and Pioneer Hi-Bred International, Inc. @+10.14 Research and Option Agreement, dated October 1, 1997, between the Registrant and Biogen, Inc. @+10.15 Research and Option Agreement, dated November 20, 1997, between the Registrant and Genentech, Inc. @+10.16 Notice of Grant Award and Grant Application to Department of Health and Human Services for Automated Sequencing System for Human Genome Project, dated March 25, 1995 @10.17 ATP Agreement for Integrated Microfabricated DNA Analysis Device for Diagnosis of Complex Genetic Disorders, dated February 1995 @10.18 ATP Agreement for Molecular Recognition Technology for Precise Design of Protein-Specific Drugs, dated March 2, 1995 @10.19 ATP Agreement for Programmable Nanoscale Engines for Molecular Separation, dated May 6, 1997 @10.20 Material Transfer and Screening Agreement, dated January 15, 1998, between the Registrant and ArQule, Inc. @11.1 Schedule of Computation of Net Loss Per Share @21.1 Subsidiaries of the Registrant @23.1 Consent of Deloitte & Touche LLP @23.2 Consent of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. (included in Exhibit 5.1) @23.3 Consent of Pennie & Edmonds LLP @24.1 Power of Attorney of Messrs. Went, Wurzer and DeVita @24.2 Power of Attorney of Messrs. Booth, Patricelli and Vincent 27.1 Financial Data Schedule
- -------- @ Previously filed. + Confidential treatment requested as to certain portions, which portions are omitted and filed separately with the Commission. II-4 (b) Financial Statement Schedules All schedules are omitted because they are not required, are not applicable or the information is included in the financial statements or notes thereto. ITEM 17. UNDERTAKINGS. The undersigned registrant hereby undertakes to provide to the Underwriters at the closing specified in the Underwriting Agreement, certificates in such denominations and registered in such names as required by the Underwriters to permit prompt delivery to each purchaser. Insofar as indemnification for liabilities arising under the Securities Act may be permitted to directors, officers and controlling persons of the Registrant pursuant to the foregoing provisions, or otherwise, the Registrant has been advised that in the opinion of the Securities and Exchange Commission such indemnification is against public policy as expressed in the Securities Act and is, therefore, unenforceable. In the event that a claim for indemnification against such liabilities (other than the payment by the Registrant of expenses incurred or paid by a director, officer or controlling person of the Registrant in the successful defense of any action, suit or proceeding), is asserted by such director, officer or controlling person in connection with the securities being registered, the Registrant will, unless in the opinion of its counsel the matter has been settled by controlling precedent, submit to a court of appropriate jurisdiction the question whether such indemnification by it is against public policy as expressed in the Securities Act and will be governed by the final adjudication of such issue. The undersigned registrant hereby undertakes that: (1) For purposes of determining any liability under the Securities Act, the information omitted from the form of prospectus filed as part of this registration statement in reliance upon Rule 430A and contained in a form of prospectus filed by the registrant pursuant to Rule 424(b)(1) or (4) or 497(h) under the Securities Act shall be deemed to be part of this registration statement as of the time it was declared effective. (2) For the purposes of determining any liability under the Securities Act, each post-effective amendment that contains a form of prospectus shall be deemed to be a new registration statement relating to the securities offered therein, and the offering of such securities at that time shall be deemed to be the initial bona fide offering thereof. The undersigned registrant hereby undertakes to provide to the Underwriters at the Closing specified in the Underwriting Agreement, certificates in such denominations and registered in such names as required by the Underwriters to permit prompt delivery to each purchaser. II-5 SIGNATURES PURSUANT TO THE REQUIREMENTS OF THE SECURITIES ACT OF 1933, AS AMENDED, THE REGISTRANT HAS DULY CAUSED THIS AMENDMENT NO. 9 TO THE REGISTRATION STATEMENT TO BE SIGNED ON ITS BEHALF BY THE UNDERSIGNED, THEREUNTO DULY AUTHORIZED, IN THE CITY OF BOSTON, MASSACHUSETTS ON THIS 17TH DAY OF MARCH, 1998. CuraGen Corporation (Registrant) /s/ Jonathan M. Rothberg By: __________________________________ JONATHAN M. ROTHBERGCHIEF EXECUTIVE OFFICER, PRESIDENT ANDCHAIRMAN OF THE BOARD PURSUANT TO THE REQUIREMENTS OF THE SECURITIES ACT OF 1933, AS AMENDED, THIS AMENDMENT NO. 9 TO THE REGISTRATION STATEMENT HAS BEEN SIGNED BELOW BY THE FOLLOWING PERSONS IN THE CAPACITIES AND ON THE DATES INDICATED. SIGNATURE TITLE DATE /s/ Jonathan M. Rothberg Chief Executive March 17, 1998 - ------------------------------------ Officer, President JONATHAN M. ROTHBERG and Chairman of the Board (principal executive officer) * Executive Vice March 17, 1998 - ------------------------------------ President and a GREGORY T. WENT Director * Executive Vice March 17, 1998 - ------------------------------------ President, DAVID M. WURZER Treasurer and Chief Financial Officer (principal financial and accounting officer) * Director March 17, 1998 - ------------------------------------ VINCENT T. DEVITA, M.D. * Director March 17, 1998 - ------------------------------------ RICHARD H. BOOTH * Director March 17, 1998 - ------------------------------------ ROBERT E. PATRICELLI * Director March 17, 1998 - ------------------------------------ JAMES L. VINCENT
II-6 *By executing his name hereto, Jonathan M. Rothberg is signing this document on behalf of the persons indicated above pursuant to powers of attorney duly executed by such persons and filed with the Securities and Exchange Commission. By: /s/ Jonathan M. Rothberg ---------------------------------- JONATHAN M. ROTHBERG (ATTORNEY-IN-FACT) II-7 EXHIBIT INDEX
EXHIBIT NO. DESCRIPTION ----------- ----------- @1.1 Form of Underwriting Agreement @3.1 Amended and Restated Certificate of Incorporation of the Registrant @3.2 Certificate of Amendment of Restated Certificate of Incorporation of the Registrant and Certificate of Amendment of Certificate of Designation, Preferences, and Rights of Series E Preferred Stock of the Registrant. @3.3 Amended and Restated Certificate of Incorporation of the Registrant @3.4 Bylaws of the Registrant @3.5 Amended and Restated Bylaws of the Registrant @4.1 Article Fourth of the Amended and Restated Certificate of Incorporation of the Registrant (see Exhibit 3.3) @4.2 Form of Common Stock Certificate @5.1 Opinion of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. with respect to the legality of the securities being registered @10.1 Lease Agreement (New Haven), dated December 23, 1996, between the Registrant and Fusco Harbour Associates, LLC @10.2 Standard Form of Office Lease, as amended (Branford), dated February 11, 1993 and April 26, 1996, between the Registrant and Branford Office Venture @10.3 Sid Martin Biotechnology Development Institute Incubator License Agreement, dated July 15, 1997, between the Registrant and the University of Florida Research Foundation, Inc. @10.4 1997 Employee, Director and Consultant Stock Plan @10.5 1993 Stock Option and Incentive Award Plan @10.6 Amendment to 1993 Stock Option and Incentive Plan, dated May 12, 1997 @10.7 Employment Letter, dated February 20, 1997, between the Registrant and Gregory T. Went, Ph.D. @10.8 Employment Letter, dated July 18, 1997, between the Registrant and David M. Wurzer @10.9 Employment Letter, dated August 21, 1997, between the Registrant and Peter A. Fuller, Ph.D. @10.10 Employment Letter, dated August 22, 1997, between the Registrant and Stephen F. Kingsmore, M.B., Ch.B. +10.11 Option and Exclusive License Agreement, dated October 4, 1996, between the Registrant and Wisconsin Alumni Research Foundation +10.12 Standard Non-Exclusive License Agreement--Brumley, dated July 1, 1996, between the Registrant and Wisconsin Alumni Research Foundation @+10.13 Collaborative Research and License Agreement, dated May 16, 1997, between the Registrant and Pioneer Hi-Bred International, Inc. @+10.14 Research and Option Agreement, dated October 1, 1997, between the Registrant and Biogen, Inc. @+10.15 Research and Option Agreement, dated November 20, 1997, between the Registrant and Genentech, Inc. @+10.16 Notice of Grant Award and Grant Application to Department of Health and Human Services for Automated Sequencing System for Human Genome Project, dated March 25, 1995 @10.17 ATP Agreement for Integrated Microfabricated DNA Analysis Device for Diagnosis of Complex Genetic Disorders, dated February 1995 @10.18 ATP Agreement for Molecular Recognition Technology for Precise Design of Protein-Specific Drugs, dated March 2, 1995 @10.19 ATP Agreement for Programmable Nanoscale Engines for Molecular Separation, dated May 6, 1997 @10.20 Material Transfer and Screening Agreement, dated January 15, 1998, between the Registrant and ArQule, Inc. @11.1 Schedule of Computation of Net Loss Per Share @21.1 Subsidiaries of the Registrant @23.1 Consent of Deloitte & Touche LLP @23.2 Consent of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. (included in Exhibit 5.1) @23.3 Consent of Pennie & Edmonds LLP @24.1 Power of Attorney of Messrs. Went, Wurzer and DeVita @24.2 Power of Attorney of Messrs. Booth, Patricelli and Vincent 27.1 Financial Data Schedule
- -------- @ Previously filed. + Confidential treatment requested as to certain portions, which portions are omitted and filed separately with the Commission. EX-10.11 2 OPTION AND EXCLUSIVE LICENSE AGREEMENT Exhibit 10.11 ------------- CuraGen Corporation has omitted from this Exhibit 10.11 portions of the Agreement for which CuraGen Corporation has requested confidential treatment from the Securities and Exchange Commission. The portions of the Agreement for which confidential treatment has been requested are marked with X's in brackets and such confidential portions have been filed separately with the Securities and Exchange Commission. Agreement No.95-0191 OPTION AND EXCLUSIVE LICENSE AGREEMENT -------------------------------------- This Agreement is made effective the 4th day of October, 1996, by and between Wisconsin Alumni Research Foundation (hereinafter called "WARF"), a nonstock, nonprofit Wisconsin corporation, and CuraGen Corporation (hereinafter called "CuraGen"), a corporation organized and existing under the laws of Delaware; WHEREAS, WARF owns certain inventions that are described in the "Licensed Patents" defined below, and WARF is willing to grant a license to CuraGen under any one or all of the Licensed Patents and CuraGen desires a license under all of them; NOW, THEREFORE, in consideration of the mutual covenants and agreements set forth below, the parties covenant and agree as follows: Section 1. Definitions. ----------- For the purpose of this Agreement, the Appendix A definitions shall apply. Section 2. Grant. ----- A. Option. ------ (i) WARF hereby grants to Curagen and its Affiliates an option to obtain set out in this Agreement in the Licensed Field and Licensed Territory under the option shall expire on October 4, 1999. (ii) In order to exercise its option under this Section 2A, CuraGen must not WARF in writing, prior to the expiration of the option, that CuraGen is exercising its option and include with such notification a development plan and the License Fee due under Section 3 C. Upon such exercise of the option, the license granted under Section 2B will become effective. B. License. ------- Upon CuraGen's exercise of the option in Section 2A, WARF will hereby grant to CuraGen an exclusive license, limited to the Licensed Field and the Licensed Territory, under the Licensed Patents to make, have made, use, sell, offer for sale, and import Products. C. Sublicenses. ----------- (i) Upon CuraGen's exercise of the option in Section 2A, CuraGen may grant written, nonexclusive sublicenses to third parties. Any agreement granting a sublicense shall state that the sublicense is subject to the termination of this Agreement. CuraGen shall have the same responsibility for the activities of any sublicensee as if the activities were directly those of CuraGen. 1 of 11 (ii) In respect to sublicenses granted by CuraGen under this Section 2C, CuraGen shall pay to WARF an amount equal to what CuraGen would have been required to pay to WARF had CuraGen sold the amount of Products sold by such sublicensee. Section 3. Consideration. -------------- A. Development. ------------ Upon CuraGen's exercise of the option in Section 2A, CuraGen agrees to use diligent efforts in the exercise of its reasonable business judgment to develop, produce and market Products, and to pursue the development plan set forth in the Gantt Chart submitted by CuraGen upon exercise of the option in Section 2A, and thereafter will provide WARF with an annual letter describing the progress made therein. WARF agrees to keep such letter confidential pursuant to Section 13. B. Option Fee. ----------- CuraGen agrees to pay to WARF an option fee of [XXXXXX] upon execution of this Agreement. Such option fee will be credited against the license fee due under Section 3C upon exercise of the option. C. License Fee. ------------ Upon exercise of its option granted in Section 2A, CuraGen agrees to pay to WARF a license fee of [XXXXXXX]. D. Royalty. -------- If CuraGen exercises its option in Section 2A, in addition to the Section 3C license fee, CuraGen or its sublicensee(s) agree to pay to WARF as "earned royalties" a royalty calculated as a percentage of the Selling Price of Products made, used or sold by CuraGen and its Affiliates or its sublicensee(s) in the United States subject however to any credits permitted hereunder. If the Product is made and sold outside the United States, no royalties shall be payable on such Products. The royalty is deemed earned as of the date the Product is actually sold and paid for. The royalty shall remain fixed while this Agreement is in effect at a rate of [XXXXXXXXXXXXXXXXXXXXX] of the Selling Price. E. Minimum Royalty. ---------------- CuraGen further agrees to pay to WARF a minimum royalty for each calendar year or part thereof during which this Agreement is in effect, starting in the third calendar year after exercise of the option, against which any earned royalty paid for the same calendar year will be credited. The minimum royalty shall be [XXXXXX] per calendar year. The minimum royalty for a given year shall be due at the time payments are due for the calendar quarter ending on December 31. It is understood that the minimum royalties will apply on a calendar year basis, and that sales of Products requiring the payment of earned royalties made during a prior or subsequent calendar year shall have no effect on the annual minimum royalty due WARF for any given calendar year. 2 of 11 [Confidential treatment requested] F. Accounting: Payments. -------------------- (i) Amounts owing to WARF under Sections 2C and 3D shall be paid on a quarterly basis, with such amounts due and received by WARF on or before the sixtieth day following the end of the calendar quarter ending on March 31, June 30, September 30 or December 31 in which such amounts were earned. The balance of any amounts which remain unpaid more than sixty (60)days after they are due to WARF shall accrue interest until paid at the rate of the lesser of one percent (1%) per month or the maximum amount allowed under applicable law. However, in no event shall this interest provision be construed as a grant of permission for any payment delays. (ii) Except as otherwise directed, all amounts owing to WARF under this Agreement shall be paid in U.S. dollars to WARF at the address provided in Section 15(a). All royalties owing with respect to Selling Prices stated in currencies other than U.S. dollars shall be converted at the rate shown in the Federal Reserve Noon Valuation - Value of Foreign Currencies on the day preceding the payment. (iii) A full accounting showing how any amounts owing to WARF under Sections 2C and 3D have been calculated shall be submitted to WARF on the date of each such payment. Such accounting shall be on a per-country and product line, model or tradename basis and shall be summarized on the form shown in Appendix B of this Agreement. In the event no payment is owed to WARF, a statement setting forth that fact shall be supplied to WARF. Section 4. Certain Warranties of WARF. --------------------------- A. WARF warrants that except as otherwise provided under Section 12 of this Agreement with respect to U.S. Government interests, it is the owner of the Licensed Patents and has the right to grant the option and upon exercise of such option the licenses granted to CuraGen in this Agreement. However, nothing in this Agreement shall be construed as: (i) a warranty or representation by WARF as to the validity or scope of any of Licensed Patents; (ii) a warranty or representation that anything made, used, sold or otherwise disposed of under the license granted in this Agreement will or will not infringe patents of third parties; or (iii) an obligation to bring or prosecute actions or suits against third parties for infringement of Licensed Patents: B. EXCEPT AS EXPRESSLY SET FORTH HEREIN, WARF MAKES NO REPRESENTATIONS, EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, AND ASSUMES NO RESPONSIBILITIES WHATSOEVER WITH RESPECT TO USE, SALE, OR OTHER DISPOSITION BY CURAGEN, ITS SUBLICENSEES OR THEIR VENDEES OR OTHER TRANSFEREES OF PRODUCTS INCORPORATING OR MADE BY USE OF INVENTIONS LICENSED UNDER THIS AGREEMENT. 3 of 11 Section 5. Recordkeeping. ------------- A. CuraGen and its sublicensee(s) shall keep books and records sufficient to verify the accuracy and completeness of CuraGen's and its sublicensee(s)'s accounting referred to above, including without limitation inventory, purchase and invoice records relating to the Products or their manufacture. Such books and records shall be preserved for a period not less than five years after they are created during and after the term of this Agreement. B. CuraGen and its sublicensee(s) shall take all steps necessary so that WARF may within thirty days of its request review and copy all the books and records at a single U.S. location to verify the accuracy of CuraGen's and its sublicensee(s)'s accounting. Such review shall be made not more than once each calendar year, upon reasonable notice and during regular business hours, at the expense of WARF by a Certified Public Accountant to whom CuraGen has no reasonable objection. C. If a royalty payment deficiency is determined, CuraGen or its sub licensee(s) shall. pay the royalty deficiency outstanding within thirty (30) days of receiving written notice thereof, plus interest on outstanding amounts as described in Section 3F(i). Section 6. Term and Termination. -------------------- A. The term of this Agreement shall begin on the effective date of this Agreement and continue until the expiration of the option granted in Section 2A or, if the option is exercised, until the expiration of the last to expire of the Licensed Patents. B. CuraGen may terminate this Agreement at any time by giving at least sixty (60) days' prior written and unambiguous notice of such termination to WARF. C. In the event either party shall materially breach any of the terms, conditions and agreements contained in this Agreement to be kept, observed and performed by it, then the other party may terminate this Agreement, at its option and without prejudice to any of its other legal and equitable rights and remedies, by giving the party who committed the breach sixty (60) days notice in writing, particularly specifying the breach, unless the notified party within such sixty (60) day period shall have rectified the breach. D. Upon the termination of this Agreement, CuraGen shall remain obligated to provide an accounting for and to pay royalties earned up to the date of the termination and any minimum royalties shall be prorated as of the date of termination by the number of days elapsed in the applicable calendar year. Section 7. Assignability. ------------- This Agreement may not be transferred or assigned by either party without the prior written consent of the other party, except that CuraGen may freely assign this Agreement to an Affiliate or to an entity acquiring substantially all of its business to which Products relate. 4 of 11 Section 8. Enforcement. ------------ Upon CuraGen's exercise of the option in Section 2A, the following provisions shall take effect. A. In the event that either party believes there is infringement of any Licensed Patent under this Agreement, the party shall provide the other party with notification thereof. During the term of this Agreement, CuraGen shall have the right, but not the obligation, to prosecute at its own expense any such infringement of the Licensed Patents. Before filing any such legal action against such infringement, CuraGen shall have obtained the opinion of outside counsel that such infringement is occurring and shall have provided WARF with a copy of such opinion. If CuraGen elects to prosecute such infringement, the total cost of any infringement action shall be borne by CuraGen and CuraGen shall keep any recovery or damages for past infringement derived therefrom. WARF agrees to cooperate with CuraGen in connection with said action and shall have the right to join in such action upon prompt notification to CuraGen. B. If CuraGen is unwilling or: unable to bring a suit against any alleged infringer, then, and in those events only, WARF shall have the right, but not the obligation, to prosecute at its own expense any infringement of the Licensed Patents. If WARF elects to prosecute any such infringement, the total cost of any infringement action shall be borne by WARF and WARF shall keep any recovery or damages for patent infringement derived therefrom. Section 9. Patent Marking. -------------- Upon CuraGen's exercise of the option in Section 2A, CuraGen shall insure that it and its sublicensee(s) apply patent markings that meet all requirements of U.S. law, 35 U.S.C. 287, with respect to all Products subject to this Agreement. Section 10. Product Liability Conduct of Business. -------------------------------------- Upon CuraGen's exercise of the option in Section 2A, the following provisions shall take effect. A. CuraGen shall, at all times during the term of this Agreement and thereafter, indemnify, defend and hold WARF and the inventors of the Licensed Patents harmless against all claims and expenses, including legal expenses and reasonable attorneys fees, arising out of the death of or injury to any person or persons or out of any damage to property and against any other claim, proceeding, demand, expense and liability of any kind whatsoever (other than patent infringement claims) resulting from the production, manufacture, sale, use, lease, consumption or advertisement of Products arising from any right or obligation of CuraGen or any sublicensee hereunder. Notwithstanding the above, WARF at all times reserves the right to retain counsel of its own to defend WARF's interests. B. CuraGen warrants that it now maintains and will continue to maintain liability insurance coverage appropriate to the risk involved in marketing the products subject to this Agreement and that such insurance coverage lists WARF and the inventors of the Licensed Patents as additional insureds. Within ninety (90) days after CuraGen's exercise of the option in Section 2A and thereafter annually between January 1 and January 31 of each year, CuraGen will 5 of 11 present evidence to WARF that the coverage is being maintained with WARF and its inventors listed as additional insureds if the Licensed Product has an in vivo effect. In addition, CuraGen shall provide WARF with at least 30 days prior written notice of any change in or cancellation of the insurance coverage. Section 11. Use of Names. ------------- CuraGen and its sublicensee(s) shall not use WARF's name, the name of any inventor of inventions governed by this Agreement, or the name of the University of Wisconsin in sales promotion, advertising, or any other form of publicity without the prior written approval of the entity or person whose name is being used. Notwithstanding the foregoing, CuraGen may state in written materials that CuraGen has obtained an option or a license, as appropriate, from WARF to the technology which is the subject of this Agreement. Section 12. United States Government Interests. ----------------------------------- It is understood that if the United States Government (through any of its agencies or otherwise) has funded research, during the course of or under which any of the inventions of the Licensed Patents were conceived or made, the United States Government is entitled, as a right, under the provisions of 35 U.S.C. (S) 200-212 and applicable regulations. of Chapter 3,7. of the Code of Federal Regulations, to a nonexclusive'; nontransferable, `irrevocable paid-up license to practice or have practiced the invention of such Licensed Patents for governmental purposes. Any license granted to CuraGen in this Agreement shall be subject to such right. Section 13. Confidential Information. ------------------------- The following provisions relate to restrictions on the disclosure and use of Confidential Information by the parties: A. Confidentiality. CuraGen and WARF each agree to treat as --------------- confidential and to use only in the conduct of its business, all Confidential Information disclosed to it by the other party. B. Non-Disclosure and Non-Use. CuraGen and WARF each agrees not to -------------------------- disclose any of the Confidential Information received from the other party to any unauthorized third party and not to use any of the Confidential Information except in the conduct of its business until the later of (a) five years from the effective date of this Agreement; or (b) two years from the effective date of termination. C. Release from Restrictions. All information which is ------------------------- characterized as Confidential Information shall cease to be confidential and CuraGen and/or WARF shall be released from their respective obligations under Sections 13A and 13B hereof on the date when, through no fault or omission of the party seeking such release, such information becomes (a) disclosed in published literature; (b) generally available to industry; or (c) obtained by the party seeking such release from a third party without binder of secrecy, provided. however that such third party has no confidentiality obligations to - --------- ------- the other party. 6 of 11 Section 14. Miscellaneous. -------------- This Agreement shall be construed in accordance with the internal laws of the State of Wisconsin. If any provisions of this Agreement are or shall come into conflict with the laws or regulations of any jurisdiction or any governmental entity having jurisdiction over the parties or this Agreement, those provisions shall be deemed automatically deleted, if such deletion is allowed by relevant law, and the remaining terms and conditions of this Agreement shall remain in full force and effect. If such a deletion is not so allowed or if such a deletion leaves terms thereby made clearly illogical or inappropriate in effect, the parties agree to substitute new terms as similar in effect to the present terms of this Agreement as may be allowed under the applicable laws and regulations. The parties hereto are independent contractors and not joint ventures or partners. Section 15. Notices. -------- Any notice required to be given pursuant to the provisions of this Agreement shall be in writing and shall be deemed to have been given at the earlier of the time when actually received as a consequence of any effective method of delivery, including but not limited to hand delivery, transmission by telecopier, or delivery by a professional courier service or the time when sent by certified or registered mail addressed to the party for whom intended at the address below or at such changed address as the party shall have specified by written notice, provided that any notice of change of address shall be effective only upon actual receipt. (a) Wisconsin Alumni Research Foundation Attn: Managing Director 614 Walnut Street Madison, Wisconsin 53705 (b) CuraGen Corporation Attn: Jonathan M. Rothberg, Ph.D. 322 East Main Street Branford, Connecticut 06405 Section 16. Integration. ----------- This Agreement constitutes the full understanding between the parties with reference to the subject matter hereof, and no statements or agreements by or between the parties, whether orally or in writing, made prior to or at the signing hereof, shall vary or modify the written terms of this Agreement. Neither party shall claim any amendment, modification, or release from any provisions of this Agreement by mutual agreement, acknowledgement, or otherwise, unless such mutual agreement is in writing, signed by the other party, and specifically states that it is an amendment to this Agreement. Section 17. Benefits. --------- All terms and provisions of this Agreement shall bind and inure to the benefit of the parties hereto, and upon their respective successors and assigns as those are permitted under the terms of this Agreement. 7 of 11 Section 18. Contract Formation and Authority. --------------------------------- The persons signing on behalf of WARF and CuraGen hereby warrant and represent that they have authority to execute this Agreement on behalf of the party for whom they have signed. IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement on the dates indicated below. WISCONSIN ALUMNI RESEARCH FOUNDATION /s/ Richard H. Leazer Date: November 13, 1996 - ---------------------- Richard H. Leazer, Managing Director CURAGEN CORPORATION /s/ Jonathan M. Rothberg Date: October 30, 1996 - ------------------------- Jonathan M. Rothberg, President Reviewed by WARF's Attorney: /s/ Attorney Date: October 3, 1996 - ------------ (WARF's attorney shall not be deemed a signatory to this Agreement.) 8 of 11 APPENDIX A A. "Licensed Patents" shall refer to and mean [XXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXX], and reissues and extensions of such patent; and United States and foreign patents granted thereon, and reissues and extensions thereof. B. "Affiliates" shall mean any corporation, company, partnership, joint venture or other entity which controls, is controlled or under common control with CuraGen or WARF as the case may be. For the purposes of this definition, control shall mean the direct or indirect ownership of at least fifty percent (50%) or, if less than fifty percent (50%), the maximum percentage as allowed by applicable law of (a) the stock shares entitled to vote for the election of directors; or (b) ownership interest. C. "Products" shall refer to and mean [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXX]. For the purposes of calculating the selling Price; "Products" shall include [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX]. D. "Selling Price" shall mean, in the case of Products that are sold, the invoice price to the retail customer of Products (regardless of uncollectible accounts) less any discounts, shipping costs, allowances because of returned Products, or sales taxes. In the event of a sale to a previous purchaser of Products of a component that incorporates the technology of the Licensed Patents, the "Selling Price" will be the price of solely the component. E. "Licensed Field" shall be limited to the field of electrophoresis apparatuses and components of such apparatuses. F. "Licensed Territory" shall be worldwide. G. "Confidential Information" shall mean this Agreement, the Development Plan and Development Reports, and any and all books, records, opinions of counsel and business information required to be supplied to WARF by CuraGen under the terms of this Agreement. 9 of 11 [Confidential treatment requested] APPENDIX B WARF ROYALTY REPORT ------------------- Licensee:_______________________________ Agreement No.___________________ INVENTOR:_______________________________ P#: P ----------------------------- Period Covered: From: / 199 THROUGH: / / 199 -------------------- ------------------------ Prepared By:___________________________ DATE:__________________________ Approved By:___________________________ DATE:__________________________ If license covers several major product LINES, please prepare a separate report for each line. Then combine all product lines into a summary report. Report Type: [_] Single Product Line Report: [_] Multiproduct Summary Report Page I of ______ PAGES [_] Product Line Detail. Line:______TRADENAME:_______PAGE:______ Report Currency:[_] U.S. Dollars ID Other ============================================================================== County Gross Less Net Royalty Period Royalty Amount Sales Allowances Sales Rate This Year Last Year - ------------------------------------------------------------------------------ U.S.A. - ------------------------------------------------------------------------------ Canada - ------------------------------------------------------------------------------ Europe: - ------ - ------------------------------------------------------------------------------ - ------------------------------------------------------------------------------ - ------------------------------------------------------------------------------ - ------------------------------------------------------------------------------ - ------------------------------------------------------------------------------ - ------------------------------------------------------------------------------ Japan - ------------------------------------------------------------------------------ Other: - ----- - ------------------------------------------------------------------------------ - ------------------------------------------------------------------------------ - ------------------------------------------------------------------------------ ============================================================================== TOTAL: ============================================================================== 10 of 11 Total Royalty:_____________Conversion Rate: ____________ Royalty in U.S. Dollars:_____________ The following royalty forecast is non-binding and for WARF's internal planning purposes only Royalty Forecast Under This Agreement: Next Quarter:______ Q2_____ Q3:______ Q4______: - -------------------------------------------------------------------------------- On a separate page, please indicate the reasons for returns or other adjustments if significant. Also note any unusual occurrences that affected royalty amounts during this period. To assist WARF's forecasting, please comment on any significant expected trends in sales volume. - -------------------------------------------------------------------------------- 11 of 11 EX-10.12 3 STANDARD NON-EXCLUSIVE LICENSE AGREEMENT Exhibit 10.12 ------------- CuraGen Corporation has omitted from this Exhibit 10.12 portions of the Agreement for which CuraGen Corporation has requested confidential treatment from the Securities and Exchange Commission. The portions of the Agreement for which confidential treatment has been requested are marked with X's in brackets and such confidential portions have been filed separately with the Securities and Exchange Commission. Agreement No. 96-0126 STANDARD NONEXCLUSIVE LICENSE AGREEMENT - BRUMLEY TECHNOLOGY ------------------------------------------------------------ This Agreement is made effective the 1st day of July, 1996, by and between Wisconsin Alumni Research Foundation (hereinafter called "WARF"), a nonstock, nonprofit Wisconsin corporation, and CuraGen Corporation(hereinafter called ("CuraGen"), a corporation organized and existing under the laws of Delaware; WHEREAS, WARF owns certain inventions that are described in the "Licensed Patents" defined below and the Technology, and WARF is willing to grant a license to CuraGen under any one or all of the Licensed Patents and/or the Technology and CuraGen desires a license under all of them. NOW, THEREFORE, in consideration of the mutual covenants and agreements set forth below, the parties covenant and agree as follows: Section 1. Definitions. ----------- For the purpose of this Agreement, the Appendix A definitions shall apply. Section 2. Grant. ----- A. License. ------- WARF hereby grants to CuraGen a nonexclusive license, limited to the Licensed Field and the Licensed Territory, under the Licensed Patents and under the Technology to make, have made, use, sell, offer for sale, and import Products. B. Standstill. ---------- WARF agrees it will not grant any other party a license under the Licensed Patents in the Licensed Field in the Licensed Territory through August 30, 2002 if CuraGen pays the following standstill fees:
Standstill Fees Date --------------- ---- [XXXXXXX] [XXXXXXX] [XXXXXXX] [XXXXXXX] [XXXXXXX] [XXXXXXX] [XXXXXXX] [XXXXXXX] [XXXXXXX] [XXXXXXX]
In the event CuraGen elects not to pay any or all of the standstill fees, the standstill provision shall expire and WARF may license other parties under the Licensed Patents in the Licensed Field and the Licensed Territory. WARF agrees to discuss and reasonably negotiate extension of the standstill period beyond the August 30, 2002 expiration date. Upon termination of the [Confidential treatment requested] standstill provision set forth in this Section 2B, all other terms of this Agreement shall remain in full force and effect Section 3. Consideration. ------------- A. Development. ----------- CuraGen agrees to use diligent efforts in the exercise of its reasonable business judment to develop, produce and market Products, and to pursue the development plan set forth in the Gantt Chart submitted by CuraGen upon execution of this Agreement and attached as Appendix C, and will provide WARF with an annual letter describing the progress made therein. WARF agrees to keep such letter confidential pursuant to Section 12. B. License Fee. ----------- CuraGen agrees to pay to WARF a license fee of [XXXXXXXX]. The first installment shall be due and payable on or before August 30, 1996. The second installment shall be due and payable on or before August 30, 1997. The final installment shall be due and payable on or before August. 30, 1998. C. Royalty. ------- (i) In addition to the Section 3B license fee, CuraGen agrees to pay to WARF as earned royalties" a royalty calculated as a percentage of the Selling Price of Products in accordance with the terms and conditions of this Agreement subject however to any credits permitted hereunder. The royalty is deemed earned as of the date the Product is actually sold and paid for. The royalty shall remain fixed while this Agreement is in effect at a rate of [XXXXXXXX] of the Selling Price. (ii) Notwithstanding the foregoing, WARF hereby grants to CuraGen the right to sell as many as [XXXXXXXX]. D. Offset Against Royalties. ------------------------ In the event that CuraGen or its Affiliate(s) cannot manufacture or sell a particular Product without infringing the patent of a third party, CuraGen shall have the right to negotiate with the third party for a license under the third party's patent rights; and then CuraGen shall have the right to reduce CuraGen `s royalty payments to WARF by up to [XXXXXXXXXXXXXXXXX] of the amount which CuraGen is obligated to pay such third party for such patent license. However, in no event shall this offset for third party licensing costs exceed [XXXXX XXXXXXXXXXXX] of the royalties owed to WARF in any given calendar year. 2 [Confidential Treatment Requested] E. Accounting: Payments. -------------------- (i) Amounts owing to WARF under Section 3C shall be paid on a quarterly basis, with such amounts due and received by WARF on or before the sixtieth day following the end of the calendar quarter ending on March 31, June 30, September 30 or December 31 in which such amounts were earned. The balance of any amounts which remain unpaid more than sixty (60) days after they are due to WARF shall accrue interest until paid at the rate of the lesser of one percent (1%) per month or the maximum amount allowed under applicable law. However, in no event shall this interest provision be construed as a grant of permission for any payment delays. (ii) Except as otherwise directed, all amounts owing to WARF under this Agreement shall be paid in U.S. dollars to WARF at the address provided in Section 14(a). All royalties owing with respect to Selling Prices stated in currencies other than U.S. dollars shall be converted at the rate shown in the Federal Reserve Noon Valuation - Value of Foreign Currencies on the day preceding the payment. (iii) A full accounting showing how any amounts owing to WARF under Section 3C have been calculated shall be submitted to WARF on the date of each such payment. Such accounting shall be on a per-country and product line, model or tradename basis and shall be summarized on the form shown in Appendix C of this Agreement. In the event no payment is owed to WARF, a statement setting forth that fact shall be supplied to WARF. Section 4. Certain Warranties of WARF. -------------------------- A. WARF warrants that except as otherwise provided under Section 11 of this Agreement with respect to U.S. Government interests, it .is the owner of the Licensed Pa tents and has the right to grant the licenses granted to CuraGen in this Agreement. However, nothing in this Agreement shall be construed as: (i) any of Licensed Patents; a warranty or representation by WARF as to the validity or scope of (ii) a warranty or representation that anything made, used, sold or otherwise disposed of under the license granted in this Agreement will or will not infringe patents of third parties; or (iii) an obligation to furnish any know-how not provided in Licensed Patents or any services other than those specified in this Agreement. B. EXCEPT AS EXPRESSLY SET FORTH HEREIN, WARF MAKES NO REPRESENTATIONS, EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, AND ASSUMES NO RESPONSIBILITIES WHATSOEVER WITH RESPECT TO USE, SALE, OR OTHER DISPOSITION BY CURAGEN OR ITS VENDEES OR OTHER 3 TRANSFEREES OF PRODUCTS INCORPORATING OR MADE BY USE OF INVENTIONS LICENSED UNDER THIS AGREEMENT. Section 5. Recordkeeping. ------------- A. CuraGen shall keep books and records sufficient to verify the accuracy and completeness of CuraGen's accounting referred to above, including without limitation inventory, purchase and invoice records relating to the Products or their manufacture. Such books and records shall be preserved for a period not less than five years after they are created during and after the term of this Agreement. B. CuraGen shall take all steps necessary so that WARF may within thirty days of its request review and copy all the books and records at a single U.S. location to verify the accuracy of CuraGen's accounting. Such review shall be made not more than once each calendar year, upon reasonable notice and during regular business hours, at the expense of WARF by a Certified Public Accountant to whom CuraGen has no reasonable objection. C. deficiency outstanding outstanding amounts as If a royalty payment deficiency is determined, CuraGen shall pay the royalty within thirty (30) days of receiving written notice thereof, plus interest on described in Section 3E(i). Section 6. Term: Termination. ----------------- A. The term of this license shall begin on the effective date of this Agreement and continue until the expiration of the last to expire of the Licensed Patents. B. CuraGen may terminate this Agreement at any time by giving at least sixty (60) days' prior written and unambiguous notice of such termination to WARF. C. In the event either party shall materially breach any of the terms, conditions and agreements contained in this Agreement to be kept, observed and performed by it, then the other party may terminate this Agreement, at its option and without prejudice to any of its other legal and equitable rights and remedies; by giving the party who committed the breach sixty (60) days notice in writing, particularly specifying the breach, unless the notified party within such sixty (60) day period shall have rectified the breach. D. Upon the termination of this Agreement, CuraGen shall remain obligated to provide an accounting for and to pay royalties earned up to the date of the termination and any minimum royalties shall be prorated as of the date of termination by the ., number of days elapsed in the applicable calendar year. 4 Section 7. Assignability. ------------- This Agreement may not be transferred or assigned by either party without the prior written consent of the other party, except that CuraGen may freely assign this Agreement to an Affiliate or to an entity acquiring substantially all of its business to which Products relate. Section 8. Patent Marking. -------------- CuraGen shall insure that it applies patent markings that meet all requirements of U.S. law, 35 U.S.C. 287, with respect to all Products subject to this Agreement. Section 9. Product Liability: Conduct of Business. -------------------------------------- A. CuraGen shall, at all times during the term of this Agreement and thereafter, indemnify, defend and hold WARF, and the inventors of the Licensed Patents and the authors and inventors of the Technology harmless against all claims and expenses, including legal expenses and reasonable attorneys fees, arising out of the death of or injury to any person or persons or out of any damage to property and against any other claim, proceeding, demand, expense and liability of any kind whatsoever (other than patent infringement claims) resulting from the production, manufacture, sale, use, lease, consumption or advertisement of Products arising from any right or obligation of CuraGen hereunder. WARF at all times reserves the right to select and retain counsel of its own to defend WARF's interests. B. CuraGen warrants that it now maintains and will continue to maintain liability insurance coverage appropriate to the risk involved in marketing the products subject to this Agreement and that such insurance coverage lists WARP and the inventors of the Licensed Patents and the authors and inventors of the Technology as additional insureds. Within ninety (90) days after the execution of this Agreement and thereafter annually between January 1 and January 31 of each year, CuraGen will present evidence to WARF that the coverage is being maintained with WARF and its inventors listed as additional insureds if the Licensed Product has an in vivo effect. In addition, CuraGen shall provide WARF with at least 30 days prior written notice of any change in or cancellation of the insurance coverage. Section 10. Use of Names. ------------ CuraGen shall not use WARF's name, the name of any inventor or author of inventions or technology governed by this Agreement, or the name of the University of Wisconsin in sales promotion, advertising, or any other form of publicity without the prior written approval of the entity or person whose name is being used. Notwithstanding the foregoing, CuraGen may state in written materials that CuraGen has obtained a license from WARF to the technology which is the subject of this Agreement. 5 Section 11. United States Government Interests. ---------------------------------- It is understood that the United States Government (through any of its agencies or otherwise) has funded research, during the course of or under which any of the inventions of the Licensed Pa' tents were conceived or made, the United States Government is entitled, as a right, under the provisions of 35 U.S.C. (S) 200-212 and applicable regulations of Chapter 37 of the Code of Federal Regulations, to a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced the invention of such Licensed Patents for governmental purposes. Any license granted to CuraGen in this Agreement shall be subject to such right. Section 12. Confidential Information. ------------------------ The following provisions relate to restrictions on the disclosure and use of Confidential Information by the parties: A. Confidentiality. CuraGen and WARF each agree to treat as confidential and to use only in the conduct of its business, all Confidential Information disclosed to it by the other party. B. Non-Disclosure and Non-Use. CuraGen and WARF each agrees not to disclose any of the Confidential Information received from the other party to any unauthorized third party and not to use any of the Confidential Information except in the conduct of its business until the later of (a) five years from the effective date of this Agreement; or (b) two years from the effective date of termination. C. Release from Restrictions. All information which is characterized as Confidential Information shall cease to be confidential and CuraGen and/or WARF shall be released from their respective obligations under Sections 1 2A and 1 2B hereof on the date when, through no fault or omission of the party seeking such release, such information becomes (a) disclosed in published literature; (b) generally available to industry; `or `(c) obtained by the party seeking such release from a third party without binder of secrecy, provided, however, that such third party has no confidentiality obligations to the other party. Section 13. Miscellaneous. ------------- This Agreement shall be construed in accordance with the internal laws of the State of Wisconsin. If any provisions of this Agreement are or shall come into conflict with the laws or regulations of any jurisdiction or any governmental entity having jurisdiction over the parties or this Agreement, those provisions shall be deemed automatically deleted, if such deletion is allowed by relevant law, and the remaining terms and conditions of this Agreement shall remain in ,full force and effect. If such a deletion is not so allowed or if such a deletion leaves terms thereby made clearly illogical or inappropriate in effect, the parties agree to substitute new terms as similar in effect to the present terms of this Agreement as may be allowed under the applicable laws and regulations. The parties hereto are independent contractors and not joint venturers or partners. 6 Section 14. Notices. ------- Any notice required to be given pursuant to the provisions of this Agreement shall be in writing and shall, be deemed to have been given at, the earlier of the time when actually received as a' consequence of any effective method of delivery, including but not limited to hand delivery, transmission by telecopier, or delivery by a professional courier service or the time when sent by certified or registered mail addressed to the party for whom intended at the address below or at such changed address as the party shall have specified by written notice, provided that any notice of change of address shall be effective only upon actual receipt. (a) Wisconsin Alumni Research Foundation Attn: Managing Director 614 Walnut Street Madison, Wisconsin 53705 (b) CuraGen Corporation Attn: Jonathan M. Rothberg, Ph.D. 322 East Main Street Branford, Connecticut 06405 Section 15. Integration. ----------- This Agreement constitutes the full understanding between the parties with reference to the subject matter hereof, and no statements or agreements by or between the parties, whether orally or in writing, made prior to or at the signing hereof, shall vary or modify the written terms of this Agreement. Neither party shall claim any amendment, modification, or release from any provisions of this Agreement by mutual agreement, acknowledgement, or otherwise, unless such mutual agreement is in writing, signed by the other party, and specifically states that it is an amendment to this Agreement. Section 16. Benefits. -------- All terms and provisions of this Agreement shall bind and inure to the benefit of the parties hereto, and upon their respective successors and assigns as those are permitted under the terms of this Agreement. Section 17. Contract Formation and Authority. -------------------------------- The persons signing on behalf of WARF and CuraGen hereby warrant and represent that they have authority to execute this Agreement on behalf of the party for whom they have signed. 7 IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement on the dates indicated below. WISCONSIN ALUMNI RESEARCH FOUNDATION By: /s/ Richard H. Leazer Date: August 20, 1996 ------------------------------------ Richard H. Leazer, Managing Director CURAGEN CORPORATION By: /s/ Jonathan M. Rothberg Date: August 13, 1996 ------------------------------------ Jonathan M. Rothberg, President ________________________________________________________________________________ Reviewed by WARF's Attorney: /s/ Elizabeth L. R. Donley - ---------------------------------------- Elizabeth L. R. Donley, Esq. August 17, 1996 (WARF's attorney shall not be deemed a signatory to this Agreement.) 8 APPENDIX A A. "Licensed Patents" shall refer to and mean those patents and patent applications listed on Appendix B hereto, and reissues and extensions of such patents, and continuations, continuations-in-part, divisions, and renewals of such applications; and United States and foreign patents granted thereon, and reissues and extensions thereof. B. "Affiliates" shall mean any corporation, company, partnership, joint venture or other entity which controls, is controlled or under common' control with CuraGen or WARF as the case may be. For the purposes of this definition, control shall mean the direct or indirect ownership of at least fifty percent (50%) or, if less than fifty percent (50%), the maximum percentage as allowed by applicable law of (a) the stock shares entitled to vote for the election of directors; or (b) ownership interest. C. "Products" shall refer to and mean [XXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] D. "Date of First Commercial Sale" shall mean the date when cumulative sales to the retail market of Products exceeds [XXXXXXXXX]. E. "Selling Price" shall mean, in the case of Products that are sold, the invoice price to the retail customer of Products (regardless of uncollectible accounts) less any discounts, shipping costs, allowances because of returned Products, or `sales taxes. In the event of a sale to a previous purchaser of Products of a component that incorporates the technology of the Licensed Patents, the "Selling Price" will be the price of solely the component. F "Licensed Field" shall be limited to the field of electrophoresis apparatuses and components of such apparatuses. G. "Licensed Territory" shall be worldwide. H. "Confidential Information" shall mean this Agreement, the Development Plan and Development Reports, and any and all books, records and business information required to be supplied to WARF by CuraGen under the terms of this Agreement. 9 [Confidential Treatment Requested] APPENDIX B LICENSED PATENTS AND PATENT APPLICATIONS ----------------------------------------
REFERENCE PATENT ISSUE APPLIC. SERIAL NUMBER COUNTRY NUMBER DATE NUMBER - -------------------------------------------------------------------------------- [XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX] XXXXXXXX XXXX XXXXXXXXX XXXXXXX XXXXXXXX XXXX XXXXXXXXX XXXXXXX XXXXXXXX XXXXXX XXXXXXX XXXXXXXX XXX XXXXXXXXXX XXXXXXXX XXXXX XXXXXXXX
10 [Confidential Treatment Requested] WARF ROYALTY REPORT ------------------- CuraGen:____________________________ Agreement No.:_________________ Inventor:___________________________ P#: P ------------------------------------- Period Covered: From: / /199 Through: / /199 ------------- -------------------------- Prepared By: _____________ Date: _______________________________ Approved By: _____________ Date: _______________________________ If license covers several major lines, please prepare a separate report for each line. Then combine all product lines into a summary report. Report Type: Single Product Line Report:______________________________ Multiproduct Summary Report. Page 1 of ____ Pages Product Line Detail. Line:________ Tradename:_______ Page:____________ Report Currency: U.S. Dollars Other______________________________________
============================================================================================== Gross * Less: Net Royalty Period Royalty Amount Country Sales Allowances Sales Rate ============================================================================================== This Year Last Year - ---------------------------------------------------------------------------------------------- U.S.A. - ---------------------------------------------------------------------------------------------- Canada ============================================================================================== Europe - ------ - ---------------------------------------------------------------------------------------------- - ---------------------------------------------------------------------------------------------- - ---------------------------------------------------------------------------------------------- - ---------------------------------------------------------------------------------------------- - ---------------------------------------------------------------------------------------------- - ---------------------------------------------------------------------------------------------- ============================================================================================== Japan ============================================================================================== Other - ----- ============================================================================================== - ---------------------------------------------------------------------------------------------- - ---------------------------------------------------------------------------------------------- - ---------------------------------------------------------------------------------------------- ============================================================================================== TOTAL: ==============================================================================================
Total Royalty:______________ Conversion Rate:_______________ Royalty in U.S. Dollars: $______________ The following royalty forecast is non-binding and for WARF's internal planning purposes only: Royalty Forecast Under This Agreement: Next Quarter:_____Q2:_____Q3:_____Q4:___ ________________________________________________________________________________ * On a separate page, please indicate the reasons for returns or other adjustments if significant. Also note any unusual occurrences that affected royalty amounts during this period. To assist WARF's forecasting, please comment on any significant expected trends in sales volume. ________________________________________________________________________________ APPENDIX D DEVELOPMENT PLAN ---------------- [XXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
XXXX XXXX XXXX XXXXXXXXX XX XX XX XX XX XX XX XX XXXXXXXXXXXXXX XXXXX XXXXXXXXXXXXXXXXX X XXXXXX XXXXXXXXXXXXXXXXXX X XXXXXXXXXXXXXXXXXXXXX X XXXXXXXXXXXXXXXXXXXXXX X XXXXXXXXXXXXXXXXX X XXXXXX XXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXX X XXXXXX XXXXXXXXXXXXXXX
[Confidential Treatment Requested] EX-27 4 FINANCIAL DATA SCHEDULE
5 THIS SCHEDULE CONTAINS SUMMARY FINANCIAL INFORMATION EXTRACTED FROM THE CURAGEN CORPORATION DECEMBER 31, 1997 FINANCIAL STATEMENTS AND IS QUALIFIED IN ITS ENTIRETY BY REFERENCE TO SUCH FINANCIAL STATEMENTS. 12-MOS DEC-31-1997 JAN-01-1997 DEC-31-1997 17,417,161 0 588,314 0 0 19,260,089 8,656,032 (1,735,836) 26,519,029 4,521,417 0 0 1,459,196 85,801 12,137,178 26,519,029 0 5,896,543 0 0 9,742,546 0 684,537 (7,222,010) 0 (7,222,010) 0 0 0 (7,222,010) (.92) (.92)
-----END PRIVACY-ENHANCED MESSAGE-----