Collaborative Research Agreement BTWN Xenogen And Pfizer

Exhibit 10.20


[CONFIDENTIAL TREATMENT GRANTED. CERTAIN PORTIONS OF THIS AGREEMENT HAVE BEEN REDACTED AND SEPARATELY FILED WITH THE COMMISSION.]


COLLABORATIVE RESEARCH AGREEMENT


This COLLABORATIVE RESEARCH AGREEMENT (" Agreement" ) is entered into as of December 28, 2000 by and between PFIZER INC , a Delaware corporation, having an office at 235 East 42nd Street, New York, New York 10017 and its Affiliates (" Pfizer" ), and XENOGEN BIOSCIENCES (" Xenogen Cranbury" ), an Ohio Corporation, with an office at 5 Cedar Brook Drive, Cranbury, NJ 08512, and a wholly owned subsidiary of Xenogen Corp. (" Xenogen" ).

RECITALS

WHEREAS , Pfizer wishes to develop Assays (as defined below) to use in performing phenotypic analysis of Transgenic Animals (as defined below) with a view toward identifying the role of interesting genes in human disease processes and toward validating gene function in research animals; and

WHEREAS, Pfizer has detailed protocols for individual Assays;


WHEREAS, Xenogen Cranbury has expertise in developing and conducting such Assays and in performing phenotypic analysis of Transgenic Animals using such Assays; and

WHEREAS, Xenogen Cranbury desires to collaborate with Pfizer on the development of such Assay packages for Transgenic Animals;


NOW, THEREFORE, in consideration of the promises and mutual covenants contained herein, Xenogen Cranbury and Pfizer agree as follows:


1. DEFINITIONS .


Whenever used in this Agreement, the terms defined in this Section 1 shall have the meanings specified.


1.1 " Affiliate" means, with respect to Pfizer, any legal entity controlling, controlled by, or under common control with Pfizer; and with respect to Xenogen Cranbury, any legal entity controlling, controlled by, or under common control with Xenogen Cranbury; where, in all cases, " control" means the ownership, directly or indirectly, of fifty percent (50%) or more of the voting capital shares or similar voting securities of the other entity.


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1.2 " Area" means: (a) research to develop a battery of phenotypic and challenge Assays on Transgenic Animals; (b) performing phenotypic analysis on Transgenic Animals using such Assays; and (c) any other activities identified in the course of the research or development hereunder; in all cases only as specified in the Research Plan (as defined below).


1.3 " Assay" means any of the Level I Assays, the Level II Assays, the Level IIIP Assays, or the Level IIIXC Assays as defined below.

1.4 " Contract Period" means the period beginning on the Effective Date and ending on the date on which this Agreement terminates.


1.5 " Contract Research Service" means a research service performed for a Third Party (as defined below) for a fee or other consideration.

1.6 " Control Animal" means any mouse, other than a Transgenic Animal (as defined below), acquired by Xenogen Cranbury under this Agreement, including, but not limited to: ***


1.7 " Effective Date" means December 28, 2000.


1.8 " Level I Assay " means any assay identified as a Level I Assay in Exhibit B, as annexed hereto, or as the parties may from time to time identify as a Level I Assay in a written amendment to the Research Plan.

1.9 " Level II Assay" means any assay identified as a Level II Assay in Exhibit B, as annexed hereto, or as the parties may from time to time identify as a Level II Assay in a written amendment to the Research Plan.

1.10 " Level III Assay" means a Level IIIP Assay or a Level IIIXC Assay (which may be collectively referred to as Level III Assays).


1.10.1 " Level IIIP Assay" means any assay incorporating Pfizer Technology and Pfizer Confidential Information (both as defined below) identified as a Level IIIP Assay in Exhibit B, as annexed hereto, or as the parties may from time to time identify as a Level IIIP Assay in a written amendment to the Research Plan.


1.10.2 " Level IIIXC Assay" means any assay incorporating Xenogen Cranbury Technology and Xenogen Cranbury Confidential Information (both as defined below) identified as a Level IIIXC Assay in Exhibit B, as annexed hereto, or as the parties may from time to time identify as a Level IIIXC Assay in a written amendment to the Research Plan. The designation of the Level IIIXC Assay shall be at the sole discretion of Xenogen Cranbury and Level IIIXC Assay will not be part of Program Technology.

*** CONFIDENTIAL TREATMENT GRANTED


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1.11 " Period of Exclusivity" means, with respect to any Level III Assay, the period ending on the second anniversary of the termination or expiration of this Agreement.


1.12 " Pfizer Compound" means any Pfizer compound, any library of Pfizer compounds, and intermediates of any Pfizer compound, any impurities of any Pfizer compound, and any information regarding the chemical or biochemical properties of any Pfizer compound that Pfizer delivers to Xenogen Cranbury under this Agreement.

1.13 " Pfizer Confidential Information" means (a) all Results (as defined in Section 1.19) and Program Technology, and (b) all other information about any element of Pfizer Technology, including, without limitation, protocols, which Pfizer discloses to Xenogen Cranbury and designates as " Confidential," where such disclosure is either in writing or within 30 days of such disclosure Pfizer provides Xenogen Cranbury a memorandum identifying the disclosure and characterizing it as confidential. Notwithstanding the foregoing, " Pfizer Confidential Information" shall not include any information that (i) at the time of disclosure to Xenogen Cranbury, is already known by Xenogen Cranbury other than by virtue of a prior confidential disclosure to Xenogen Cranbury by Pfizer; or (ii) is or becomes disclosed in published literature, or otherwise is or becomes generally known to the public, in each case through no fault or omission of Xenogen Cranbury; or (iii) is obtained by Xenogen Cranbury from a third party free from any obligation of confidentiality to Pfizer.

1.14 " Pfizer Technology" means (a) Technology developed prior to the Effective Date by employees of, or consultants to, Pfizer acting alone or jointly with third parties (but, in the case of consultants or third parties, only to the extent Pfizer has the right to grant rights to such Technology), and including without limitation any Transgenic Animals; (b) Program Technology; or (c) Results.


1.15 " Program Technology" means Technology developed, in the course of performing the Research Program by employees of or consultants to Pfizer or Xenogen Cranbury solely or jointly with each other, excluding Results and Level IIIXC Assays, but including, without limitation, Level I, Level II and Level IIIP Assays.

1.16 " Research Plan" means the written plan describing the research and development in the Area to be carried out during the Contract Period by Pfizer and Xenogen Cranbury pursuant to this Agreement. The Research Plan is attached to and made a part of this Agreement as Exhibit A. The Research Plan may be amended from time to time by agreement of the parties. Any such amended Research Plan shall be appended hereto as an Exhibit.


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1.17 " Research Program" is the collaborative research program in the Area conducted by Pfizer and Xenogen Cranbury pursuant to the Research Plan.


1.18 " Results" means any data or information generated by either party in the course of performing the Research Program, including, without limitation, any data relating to the development and use of any Assay, and any data or information resulting from the application of any Assay to any Transgenic Animal or Control Animal.

1.19 " Start-Up Costs" means costs incurred for the activities performed under Phase IA, IB and 2 of Track I and IA, IB and 2 of Track 2 as further described in Exhibit A


1.20 " Technology" means and includes all materials, technology, technical data and information, inventions, methods, know-how, expertise and trade secrets within the Area.


1.21 " Third Party" means any party other than Pfizer, Xenogen, or Xenogen Cranbury.

1.22 " Transgenic Animal" means any genetically modified mouse supplied by Pfizer to Xenogen Cranbury under this Agreement.


1.23 " Xenogen Cranbury Technology" means Technology that is or was developed by employees of, or consultants to, Xenogen Cranbury alone or jointly with third parties prior to the Effective Date, but, in the case of consultants or third parties, only to the extent Xenogen Cranbury has the right to grant rights to such Technology, and specifically excluding, in all cases: (i) any technology concerning or relating to in vivo imaging; and (ii) light-producing cells, micro-organisms or animals; and (iii) other technologies intended for use with (i) or (ii).

1.24 " Xenogen Cranburv Confidential Information" means (a) all information about any element of Xenogen Cranbury Technology which Xenogen Cranbury discloses to Pfizer and designates as " Confidential," where such disclosure is either in writing or within 30 days of such disclosure Xenogen Cranbury provides Pfizer a memorandum identifying the disclosure and characterizing it as confidential. Notwithstanding the foregoing, " Xenogen Cranbury Confidential Information" shall not include any information that (i) at the time of disclosure to Pfizer, is already known by Pfizer other than by virtue of a prior confidential disclosure to Pfizer by Xenogen Cranbury; or (ii) is or becomes disclosed in published literature, or otherwise is or becomes generally known to the public, in each case through no fault or omission of Pfizer; or (iii) is obtained by Pfizer from a third party free from any obligation of confidentiality to Xenogen Cranbury.


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2. COLLABORATIVE RESEARCH PROGRAM


2.1 Purpose . Xenogen Cranbury and Pfizer each shall conduct their respective responsibilities of the Research Program throughout the Contract Period. The objective of the Research Program is to develop specific phenotypic assays and to validate and test such assays on Transgenic Animals.


2.2 Research Plan . The initial Research Plan is described in the attached Exhibit A. As the Research Plan is modified by mutual agreement of the parties, the modified version shall be appended to Exhibit A and made part of this Agreement.

2.3 Research Committee

2.3.1 Purpose . Pfizer and Xenogen Cranbury shall establish a Research Committee (the " Research Committee" ):


(a) to review and evaluate progress under the Research Plan;


(b) to prepare the Research Plan, and amendments and evaluate the need for extensions to the Agreement;


(c) to propose, discuss, select and document in writing, the mutual acceptance of Assays in the Area to be included in the Research Plan;

(d) to coordinate and monitor publication as provided under Section 4.7 of this Agreement, of Results (this function shall survive termination of this Agreement for five (5) years); and


(e) to designate Assays as either Level I, Level II, or Level III.


2.3.2 Membership . Each of Pfizer and Xenogen Cranbury shall appoint, in its sole discretion, three members to the Research Committee. Each party may replace its respective Research Committee members at any time, with prior written notice to the other party hereto. The parties initially appoint the following members:

Pfizer Appointees: John McNeish

Andrew Reaume

Kelly Longo


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David Grass

Olesia Buiakova Satbir Kaur


2.3.3 Chair . The Research Committee shall be chaired by two co-chairpersons, one appointed by Pfizer and the other appointed by Xenogen Cranbury.

2.3.4 Meetings . The Research Committee shall meet at least quarterly, at places selected by each party in turn and on dates mutually agreed by the parties. The location of the first meeting of the Research Committee shall be at Pfizer' s election. Representatives of Pfizer or Xenogen Cranbury or both, in addition to members of the Research Committee, may attend such meetings at the invitation of either party. Any materials to be submitted to the members of the Research Committee shall be delivered to each member not less than five (5) business days before the meeting.

2.3.5 Minutes . The Research Committee shall keep accurate minutes of its deliberations which record all proposed decisions and all actions recommended or taken. Drafts of the minutes shall be delivered to all Research Committee members within five (5) business days after each meeting. The party choosing the location for the meeting shall be responsible for the preparation and circulation of the draft minutes. Draft minutes shall be edited by the co- chairpersons and shall be issued in final form only with their approval and agreement.


2.3.6 Decisions . All decisions of the Research Committee shall be made by mutual agreement except that Pfizer, in its sole discretion, shall decide the overall direction of the Research Program.

2.3.7 Expenses . Pfizer and Xenogen Cranbury shall each bear all expenses, including reasonable travel, related to the participation of their designated members of the Research Committee, respectively.


2.4 Reports and Materials .


2.4.1 Reports . During the Contract Period, Xenogen Cranbury shall furnish to the Research Committee:

(a) summary written reports within fifteen (15) days after the end of each three-month period commencing on the Effective Date, describing the progress under the Research Plan;


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a comprehensive written report within thirty (30) days after the end of the Contract Period, describing in detail the work accomplished by it under the Research Plan during the Contract Period and discussing and evaluating the results of such work;


a written report describing the detailed protocols of all assays developed under the Research Program;


a written report detailing Results. Such reports will be submitted at the end of Phase 1A, 1B and Phase 2 of Tracks I and II; and


(e) any report containing information that Xenogen Cranbury may generate using Level II Assays for Third Parties during the Term, pursuant to Section 4.3.


2.4.2 Materials . During the Contract Period, each party shall provide the other, to the extent necessary for the receiving party to perform its responsibilities under the Research Plan, with Transgenic Animals, Control Animals, Pfizer Compounds, which are part of Pfizer Technology, Xenogen Cranbury Technology or Program Technology. Such supply of materials and Technology shall be in accordance with the Research Plan, or as a party may otherwise reasonably request from time to time and the other party agree to provide. To the extent that the quantities of materials requested and supplied by the parties exceed the quantities required to be provide ...