EXHIBIT 10.26(a)
FIRST AMENDMENT TO LICENSE AGREEMENT
This First Amendment to License Agreement ("Amendment") is made
effective as of the 1st day of January, 2002, by and between Genomic Solutions
Inc., a Delaware corporation ("GENOMIC") and Affymetrix, Inc., a Delaware
corporation ("Affymetrix").
The following facts underlie this Amendment:
Pursuant to a certain License Agreement executed December 28, 2000 (the
"License Agreement"), GENOMIC obtained a non-exclusive license to
practice certain patent and other rights of Affymetrix. The parties now
desire to amend the License Agreement pursuant to the terms and
conditions of this Amendment.
NOW, THEREFORE, in consideration of the mutual covenants and
undertakings set forth herein and in the License Agreement, the parties agree as
follows:
1. DEFINITIONS. All capitalized terms not defined in this
Amendment shall have the meaning set forth in the License
Agreement. In addition, the License Agreement is amended to
add the following new or substitute defined terms, as
applicable:
a) Replace Section 1.10 with the following:
"Gene" shall refer to a nucleic acid sequence representing or
encoding a distinct messenger RNA or protein as well as
polymorphic variants of such sequence, provided that such
polymorphic variants must have at least ninety-nine and nine
tenths percent (99.9%) homology with the underlying gene.
b) Replace Section 1.11 with the following:
"Licensed Genetic Analysis Field" shall mean the measurement
of the presence, absence or level of an expressed Gene in
cells for use in pharmaceutical and diagnostic research
provided that any one Nucleic Acid Array shall be capable of
measuring up to but not exceeding *** Unique Elements using
up to but not exceeding *** Spots.
c) Change "diverse nucleic acids or polynucleotides" to "Unique
Elements" in Section 1.14.
*** Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been sought for the omitted
portion.
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d) Add new definition 1.18 as follows:
"Unique Element" shall mean up to two different nucleic acid
sequences or polynucleotides designed or intended to measure
the presence, absence or level of a single Gene.
2. ADDITIONAL AMENDMENTS:
a) Replace the 3rd sentence of Section 2.1 with the following:
Notwithstanding the foregoing, GENOMIC's license to
use for contract services, import, lease, distribute,
offer for sale and sell such Form Factor Compatible
Nucleic Acid Arrays (all as provided above)
containing fully synthesized oligonucleotides shall
become effective on ***, and GENOMIC's license to
make, but not have made, use, import, lease,
distribute, offer for sale and sell such Nucleic Acid
Arrays (all as provided above) containing clones or
PCR products shall expire on ***; GENOMIC has the
option to extend such license for Nucleic Acid Arrays
containing clones or PCR products until *** by
providing written notice to Affymetrix prior to ***
that GENOMIC has exercised such option and paying
Affymetrix the license extension fee set forth in
Section 3.3.
b) Add the following at the end of Section 2.1:
The parties acknowledge that GENOMIC may have
opportunities for sales of Custom Arrays to bona fide
clients whose Unique Element and Spot requirements
exceed the number of permitted Unique Elements and
Spots in the Licensed Genetic Analysis Field and
sales to such clients will benefit both GENOMIC and
Affymetrix. GENOMIC's license under this Section 2.1
shall include the right to manufacture and sell
Custom Arrays exceeding the Unique Element and Spot
limitation set forth in this Agreement if, and only
if, the following conditions are met by GENOMIC and
GENOMIC obtains Affymetrix' prior written consent
which may be granted or withheld in Affymetrix' sole
discretion: (A) the materials spotted onto the Custom
Arrays by GENOMIC (i) are unique to that bona fide
customer, (ii) are limited to cDNA, clonal DNA or PCR
products, and (iii) are not purchased by or on behalf
of GENOMIC or any of GENOMIC's customers through any
third party, and (B) any one Custom Array shall be
capable of measuring
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*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been sought for the omitted portion.
up to but not exceeding *** Unique Elements using up to but
not exceeding *** Spots. Notwithstanding anything to the
contrary herein, the annual sales of such Custom Arrays that
exceed the Unique Element and Spot limitation set forth in
this Agreement shall not exceed *** of GENOMIC's total annual
Net Sales. For purposes of obtaining such written consent, the
following procedures shall govern:
2.1.1 GENOMIC shall notify Affymetrix in writing of
its desire to obtain Affymetrix' consent to a
limited waiver of the Unique Element and Spot
limitation to permit a particular Custom
Array opportunity to a bona fide customer.
Such written notice shall be made to an
Affymetrix designated licensing contact who
shall initially be Xxxxx Xxxxx. In connection
with such written request, GENOMIC shall be
required to identify the particular bona fide
client and shall otherwise be permitted to
respect confidentiality agreements. During
the term of this Agreement, Affymetrix agrees
that it will not offer its products or
services to a bona fide client of GENOMIC
identified to Affymetrix hereunder that are
substantially similar to a Custom Array
opportunity that meets the requirements set
forth in clauses (A) and (B) of the preceding
paragraph of this Amendment. Notwithstanding
anything to the contrary herein, Affymetrix
may offer any of its products or services,
including, without limitation, Affymetrix'
GeneChip Custom Array and CustomExpress
Arrays, to potential customers that are
independently identified by Affymetrix
without the use of the names of clients
identified by GENOMIC to Affymetrix
hereunder.
2.1.2 Affymetrix shall consider GENOMIC's consent
request and shall respond to GENOMIC's
request within ten (10) business days after
receipt of GENOMIC's request.
2.1.3 All such sales of Custom Arrays shall be
subject to the Royalties as provided in
Section 3.2.2 unless the parties agree in
writing to a different royalty.
c) Replace Section 3.2.1 with the following:
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*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been sought for the omitted portion.
A minimum sum of *** for Contract Year 2 and a
minimum sum of Two Hundred Fifty Thousand *** for
each of the remaining Contract Years of this
Agreement, provided that any royalties in excess of a
particular Contract Year minimum shall be applied
against the minimum for the next Contract Year; or
d) Replace Section 3.2.2 and Table I with the following:
A royalty on Net Sales calculated as follows for each
Nucleic Acid Array used, leased, sold or transferred
to an End User or to a Distributor pursuant to the
licenses granted in Section 2 hereof:
In Contract Year 2, the greater of:
(i) *** of Net Sales
OR:
(ii) *** Unique Elements - $***per Unique
Element
Greater than *** Unique Elements -
$***per Unique Element
In Contract Year 3, the greater of:
(i) *** of Net Sales
OR:
(ii) *** Unique Elements - $*** per
Unique Element
Greater than *** Unique Elements -
$*** per Unique Element
In Contract Year 4, the greater of:
(i) *** of Net Sales
OR:
(ii) *** Unique Elements - $*** per
Unique Element or
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*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been sought for the omitted portion.
Greater than *** Unique Elements -
$*** per Unique Element
In Contract Year 5, and each subsequent year, if any,
the greater of:
(i) *** of Net Sales
OR:
(ii) *** Unique Elements - $*** per
Unique Element
Greater than *** Unique Elements -
$*** per Unique Element
***
e) Replace Section 3.3 with the following:
If GENOMIC exercises its option to extend the license
for Nucleic Acid Arrays containing clones or PCR
products until *** as described in Section 2.1,
GENOMIC shall pay Affymetrix on or before *** a
one-time, non-refundable, up-front license extension
fee, which vests as of *** and is not creditable
toward any other royalties owed hereunder of ***.
f) Add the following to Section 5:
5.6 Notwithstanding anything to the contrary set forth in
this Section 5, GENOMIC may terminate this Agreement
at any time upon ninety (90) days written notice to
Affymetrix (the last day of such ninety (90) day
notice period being referred to herein as the
"Termination Date"), provided, that GENOMIC shall be
obligated to pay Affymetrix the entire minimum annual
royalty pursuant to Section 3.2.1 for the Contract
Year in which the Termination Date falls.
3. EFFECTS OF AMENDMENT. Except as provided in this Amendment,
all terms and conditions of the License Agreement shall remain in full
force and effect without modification.
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*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been sought for the omitted portion.
IN WITNESS WHEREOF, GENOMIC and Affymetrix have executed this Amendment
as of the date first above written.
WITNESS: GENOMIC SOLUTIONS INC.
/s/ Xxxxxx X. Xxxxxxxxxx By: /s/ Xxxx X. Xxxxxx
------------------------------------ ----------------------------------------
Its: Executive Vice President
"GENOMIC"
AFFYMETRIX, INC.
/s/ Xxxxx Xxxxx By: /s/ Xxxx Xxxxxxxxx
------------------------------------ --------------------------------------------------
Its: Vice President Chief Financial Officer
"Affymetrix"
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