EXHIBIT 10.12
CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
LICENSE AGREEMENT
THIS AGREEMENT, dated May 20, 1996 (the "Effective Date"), is between
BASF BIORESEARCH CORPORATION, a corporation organized under the laws of the
Delaware, and having a place of business at 000 Xxxxxxxx Xxxxx, Xxxxxxxxx, XX
00000-0000 ("BASF") and CLONTECH LABORATORIES, INC., a California corporation
having a place of business at 0000 Xxxx Xxxxxx Xxxxxx, Xxxx Xxxx, Xxxxxxxxxx
00000-0000 ("Clontech").
BASF and Clontech agree as follows:
ARTICLE 1
DEFINITIONS
1.00 As used throughout this Agreement, the following capitalized terms
shall have the meanings ascribed to them below in paragraphs 1.01 through
1.14.
1.01 "AFFILIATE" shall mean any corporation, association or other
business entity which directly or indirectly controls, is controlled by, or
is under common control with the party in question. As used herein, the term
"control" means ownership, directly or indirectly, of shares of stock having
more than 50% of the voting power entitled to vote for the election of
directors in the case of a corporation, and more than 50% of the interest in
profits in the case of a business entity other than a corporation.
1.02 "EXCLUSIVE" shall mean that no other licenses will be granted by
BASF in the Exclusive Field within the Territory under the Licensed Patents,
subject to Paragraphs 2.03 and 2.04 (b) hereof.
1.03 "EXCLUSIVE FIELD" shall mean the development, manufacture and sale
of the research reagents listed in Appendix B as of the Effective Date, as
well as the following research reagents which Clontech may elect to add to
Appendix B, subject to Paragraph 2.04 hereof:
(i) any [ * ] developed by Clontech, BASF or third parties which
are claimed in the Licensed Patents and/or incorporate the TET-System;
(ii) any [ * ] research reagents other than [ * ] developed or
acquired by Clontech and not described in the Licensed Patents, where the
term "[ * ]" shall mean that no [ * ] description of the reagent,
including the reagent itself, has made public prior to its listing on
Appendix B; and
(iii) any research reagent(s) acquired exclusively by Clontech.
1.04 "LICENSED FIELDS OF USE" shall mean the Exclusive Field and the
Semi-Exclusive Field, and specifically excludes the development, manufacture
or sale of [ * ] and any reagent intended for [ * ] or the preparation of
substances intended for [ * ].
* Portions of this exhibit have been omitted and filed separately with the
Commission pursuant to a request for confidential treatment under Rule 406.
1.
1.05 "LICENSED PATENT(S)" shall mean the patent(s) and patent
applications listed in Appendix A and attached hereto, including any
division, continuation, continuation-in-part, substitute, renewal, reissue,
extension, confirmation, reexamination or registration thereof and any patent
issuing thereon, including any substitute, renewal, reissue, extension,
confirmation, reexamination, registration or foreign counterpart thereof.
1.06 "LICENSED PRODUCT" shall mean any research reagent (i) the
manufacture, use, or sale of which is covered by a Valid Claim of a Licensed
Patent and (ii) an essentially identical reagent when offered for sale in a
country or territory where no Licensed Patent exists.
1.07 "LICENSEE NUMBER" shall mean the number assigned by BASF to
for-profit Qualified Buyers, which number shall entitle such Qualified Buyers
to purchase Licensed Products.
1.08 "NET SALES" shall mean all fees or other payments charged by
Clontech and Affiliate(s), less returns and customer trade discounts actually
taken, outbound freight, value added, sales or use taxes, and custom duties.
1.09 "SEMI-EXCLUSIVE" shall mean that only one license other than this
license to Clontech will be granted by BASF in the Semi-Exclusive Field in
any country within the Territory under the Licensed Patents, subject to
Paragraphs 2.03 and 2.04 (b) hereof.
1.10 "SEMI-EXCLUSIVE FIELD" shall mean the development, manufacture and
sale of the research reagents listed in Appendix C as of the Effective Date,
as well as the following research reagents which Clontech elects to add to
Appendix C, subject to Paragraph 2.04 hereof:
(i) research reagents other than [ * ] which are described in the
Licensed Patents, or for which an [ * ] description of the reagent, including
the reagent itself, has made public prior to its listing on Appendix C.
1.11 "QUALIFIED BUYERS" shall mean (i) researchers in academic and
non-profit research institutions, where the commercial and/or intellectual
property rights of said academic or non-profit research institution are not
owned by or obligated to a single for-profit corporation or business entity;
and (ii) for-profit corporations or other business entities which have been
granted a license under the Licensed Patents by BASF, as evidenced by their
having been assigned a Licensee Number.
1.12 "TERRITORY" shall mean any country or territory in the world,
independent of whether or not Licensed Patent(s) have been applied for or
issued in that country or territory.
1.13 "TET-SYSTEM" shall mean the tetracycline-inducible gene expression
technology, including the overall system as well as its individual
components, claimed in the Licensed Patents.
1.14 "VALID CLAIM" shall mean an unexpired claim of a Licensed Patent,
whether or not issued or granted in any country, which has not been revoked
or held unenforceable, unpatentable or invalid by a decision of a court or
other governmental agency of competent jurisdiction, unappealable or
unappealed within the time allowed for appeal, and which has not
2.
* Portions of this exhibit have been omitted and filed separately with the
Commission pursuant to a request for confidential treatment under Rule 406.
been rendered unenforceable through disclaimer or otherwise, and which has
not been lost through an interference proceeding.
ARTICLE 2
LICENSE GRANT
2.01 GRANT: BASF hereby grants to Clontech, upon and subject to all the
terms and conditions of this Agreement, a license in the Territory under the
Licensed Patents, to manufacture, use, and/or sell to Qualified Buyers,
Licensed Products solely in the Licensed Fields of Use. No license or right
is granted hereunder to sell or otherwise transfer Licensed Products or
materials and methods claimed in the Licensed Patents to non-Qualified Buyers.
2.02 EXCLUSIVITY: The license granted hereunder shall be Exclusive in
the Exclusive Field and Semi-Exclusive in the Semi-Exclusive Field, unless
later modified under Paragraphs 2.03 and 2.04(b) below.
2.03 LOSS OF EXCLUSIVITY: If BASF determines there to be a lack of
sales of any individual Licensed Product or group of Licensed Products or if
BASF receives consistent complaints from Qualified Buyers relating to the
quality, availability, timeliness of service, reasonability of pricing, or
other issues related to the purchase of a particular Licensed Product, the
parties shall discuss the source of the problem and attempt to reach a
solution. If BASF and Clontech cannot reach a solution on how to resolve the
stated concerns, BASF may convert the rights granted hereunder to
non-exclusive rights, but only as they pertain to the particular Licensed
Product(s) in question.
2.04 REAGENT LISTS:
(a) Appendix B and Appendix C may be amended on an as-needed basis
in order to expand or diminish the research reagents offered for sale to
Qualified Buyers as Licensed Products hereunder, provided, however that any
expansion is subject to third party rights which may exist at the time of the
proposed amendment.
(b) BASF may, at its own discretion, propose to Clontech that a
particular TET-System research reagent be added to Appendix B, or Appendix C
if Semi-Exclusivity is appropriate under the parameters described in
Paragraph 1.10 hereof, as a Licensed Product hereunder. If Clontech has not
elected to add said research reagent to the appropriate Appendix within
[ * ] days after BASF's proposal, then BASF may, at its own discretion,
select a third party for development, manufacture and sale of that particular
TET-System research reagent, on any level of exclusivity which BASF may deem
appropriate.
2.05 SUBLICENSING: Clontech shall not have any right to sublicense the
rights granted hereunder. As used herein, "sublicense" refers to the sale or
rental of Licensed Products to an individual or entity for the purpose of
resale or rental to additional parties. Notwithstanding the foregoing,
Clontech may sell Licensed Products to the international research reagent
market in the Licensed Fields of Use through its international agents or
distributors.
3.
* Portions of this exhibit have been omitted and filed separately with the
Commission pursuant to a request for confidential treatment under Rule 406.
2.06 GRANT BACK: Clontech shall, free of charge, provide BASF and the
laboratory of Xxxxxxxxx Xxxxxxx Bujard with (i) a non-exclusive license under
its improvements to the TET-System, and (ii) samples of Licensed Products
upon request.
2.07 EXCLUDED USES: Clontech agrees that it shall not manufacture, use,
sell or otherwise transfer the Licensed Patents or Licensed Products for (i)
administration to, or use in, humans, or (ii) the preparation of materials
for use in humans. Clontech further agrees that it shall not manufacture,
use, sell or otherwise transfer the Licensed Patents or Licensed Products for
any purpose other than as expressly permitted under this Agreement.
ARTICLE 3
ROYALTIES AND PAYMENTS
3.01 UPFRONT PAYMENT: In consideration of the license granted under
Article 2 of this Agreement, Clontech shall pay to BASF a non-refundable fee
of [ * ] Dollars ($[ * ]) within 30 days after the Effective Date.
3.02 RUNNING ROYALTY. In further consideration of the license granted
hereunder, Clontech shall pay to BASF a royalty of [ * ] percent ([ * ]%) on
Net Sales of all Licensed Products, provided, however, that if BASF develops
a novel TET-System research reagent and provides it to Clontech for inclusion
as a Licensed Product on Appendix B hereto, then the royalty on Net Sales of
that particular Licensed Product shall be [ * ] percent ([ * ]%).
3.03 MINIMUM ROYALTY. Commencing in 1996 and continuing for as long as
the license granted hereunder remains Exclusive or Semi-Exclusive, Clontech
shall have a minimum royalty obligation to BASF. If the cumulative total of
royalties paid to BASF by Clontech under 3.02 above in any given calendar
year is less than [ * ] Dollars ($[ * ]), Clontech shall, with the final
royalty payment due for that calendar year, pay to BASF the amount necessary
to bring the total royalty payment to BASF up to [ * ] Dollars ($[ * ]).
ARTICLE 4
REPORTS AND PAYMENTS
4.01 PAYMENT REPORT. On or before the last business day of January and
July of each year of this Agreement, Clontech shall submit to BASF a written
report with respect to the preceding two calendar quarters (the "Payment
Report") stating:
(i) Net Sales made by Clontech and any Affiliate during such period
for Licensed Products;
(ii) A calculation under Section 3.02 and 3.03 of the amounts due
to BASF; and
(iii) A list of Qualified Buyers to whom the Licensed Products have
been sold during such period.
4.
* Portions of this exhibit have been omitted and filed separately with the
Commission pursuant to a request for confidential treatment under Rule 406.
4.02 PAYMENT. Simultaneously with the submission of each Payment
Report, Clontech shall make payments in U.S. dollars to BASF of the amounts
due for the six month period covered by said Payment Report. For sales
outside the United States, the buying rates of exchange shall be determined
by quoting CitiBank (or its successors of interest) in New York, New York at
the close of business on the last business day of the quarterly period in
which the sales were made.
4.03 LATE PAYMENTS. Late payments shall incur interest at an annual
rate of [ * ] percent ([ * ]%) compounded daily.
4.04 RECORD KEEPING. Clontech shall maintain at its principal office
usual books of account and records showing its actions under this Agreement.
Upon reasonable notice, such books and records shall be open to inspection
and copying, during usual business hours, by an independent certified public
accountant to whom Clontech has no reasonable objection, for three (3) years
after the calendar period to which such books and records pertain, for
purposes of verifying the accuracy of the amounts paid to BASF under this
Agreement.
4.05 QUALIFIED BUYERS LIST. BASF shall provide Clontech with the names
and Licensee Numbers of all Qualified Buyers for whom a license from BASF is
required in order to purchase Licensed Products from Clontech.
ARTICLE 5
MARKING AND USE OF NAMES
5.01 LIMITED LICENSE. Clontech shall include with all Licensed Products
a Limited License Notice, as set forth in Appendix D hereto.
5.02 PATENT NUMBERS. Clontech shall xxxx each Licensed Product or its
product insert with the number(s) of the issued patent(s) covering said
product, or, where appropriate, the words "Patent Pending" where no issued
patent exists.
5.03 NON-USE OF NAMES. Neither party shall use the name of the other in
any publicity, news release, or other public announcement or comment, whether
written, electronic, or oral, without the prior consent of the other party,
except as required by law. The party making any announcement which is
required by law will give the other party an opportunity to review the form
and content of any such announcement and comment upon it before it is made.
ARTICLE 6
BREACH AND CURE
6.01 Either party shall have the right to cure a breach of this
Agreement. The cure shall be effected within a reasonable period of time but
in no event later that thirty (30) days after notice of any breach given by
the non-breaching party.
* Portions of this exhibit have been omitted and filed separately with the
Commission pursuant to a request for confidential treatment under Rule 406.
5.
ARTICLE 7
TERM OF AGREEMENT
7.01 This Agreement shall be effective as of the Effective Date and
shall continue in full force and effect until the earlier of (i) the last to
expire of the Licensed Patents, or (ii) ten (10) years following the
Effective Date, unless sooner terminated under this Article 7.
7.02 The license granted under this Agreement may be terminated by BASF
(i) upon thirty days written notice to Clontech for Clontech's breach of the
Agreement and Clontech's failure to cure such breach in accordance with
Section 6, or (ii) Clontech, become insolvent, files a petition under any
bankruptcy or insolvency act, or has any such petition filed against it.
7.03 The license granted under this agreement may be terminated by
Clontech upon sixty (60) days written notice to BASF. Clontech shall use all
reasonable efforts to make Licensed Products available to Qualified Buyers
during said sixty day notice period, and shall thereafter discontinue all
sales of products covered by the license agreement.
ARTICLE 8
NOTICES
Any notice required or permitted to be given under this Agreement shall
be sufficient if sent by certified mail, postage, pre-paid,
if to BASF, to: Xxx X. Xxxxxx
Director of Business Development
BASF Bioresearch Corporation
000 Xxxxxxxx Xxxxx
Xxxxxxxxx, XX 00000-0000
with copy to: Mr. Xxxxxx Xxxx, Esq.
Vice President, Intellectual Property
BASF Corporation
0000 Xxxxxxxxxxx Xxxxx -- Xxxxx
Xxxxx Xxxxx, Xxx Xxxxxx 00000-0000
if to Clontech, to: Xx. Xxxxxxx Xxxx
President
Clontech Laboratories
0000 Xxxx Xxxxxx Xxxxxx
Xxxx Xxxx, XX 00000-0000
with copy to: Xx. Xxxx Xxxxxx
Director, Marketing
Clontech Laboratories
0000 Xxxx Xxxxxx Xxxxxx
Xxxx Xxxx, XX 00000-0000
6.
or to other such address as a party may specify by notice hereunder.
ARTICLE 9
ASSIGNMENT
This Agreement and the obligations and rights hereunder may not be
assigned without the written consent of the other party. Any attempt to do
so without consent shall be void.
ARTICLE 10
COMPLIANCE WITH GOVERNMENTAL OBLIGATIONS
Clontech shall comply upon reasonable notice from BASF with all
governmental requests directed to either BASF or Clontech and provide all
information and assistance necessary to comply with the governmental
requests. Clontech shall insure that the research, development and marketing
under this Agreement will comply with all governmental regulation in force
and effect.
ARTICLE 11
NO WARRANTY
11.01 DISCLAIMER OF WARRANTIES. Nothing in this Agreement is or shall
be construed as:
(a) A warranty or representation as to the validity or scope of the
Licensed Patent(s);
(b) A warranty or representation that anything made, used, sold, or
otherwise disposed of under any license granted in this Agreement is or will
be free from infringement of patents, copyrights, and other rights of third
parties;
(c) An obligation to bring or prosecute actions or suits against
third parties for infringement of the Licensed Patent(s); or
(d) Granting by implication, estoppel, or otherwise any licenses or
rights under patents or other rights of BASF AG, BASF Corporation, Xxxxx XX,
Xxxxx Pharmaceuticals Corporation, BASF Bioresearch Corporation, their
Affiliates, or third parties other than expressly provided herein, regardless
of whether such patents or other rights are dominant or subordinate to any
Licensed Patent(s) or Licensed Product(s).
11.02 NO OTHER WARRANTY. Clontech acknowledges that the Licensed
Patent(s) claim materials and methods which are experimental in nature. BASF
makes no warranties express or implied of any kind, and hereby expressly
disclaims any warranties, representations or guarantees of any kind as to the
Licensed Patents or Licensed Products. No biological materials are being
provided to Clontech under this Agreement.
7.
ARTICLE 12
GOVERNING LAW
This Agreement shall be governed by and construed in accordance with the
laws of the Commonwealth of Massachusetts, U.S.A. without having any regard
to the conflicts of law provisions thereof.
IN WITNESS THEREOF, BASF and Clontech have caused this Agreement to be
executed by their duly authorized representatives as of the day and year
first written above.
BASF BIORESEARCH CORPORATION
By: /s/ Xxxxxx Xxxxx
--------------------------------------
Title: President
Date: 6/24/96
------------------------------------
CLONTECH LABORATORIES, INC.
By: /s/ Xxx Xxxx
--------------------------------------
Title: President
Date: 7/8/96
------------------------------------
8.
APPENDIX A
SUMMARY OF BASF-OWNED PATENTS AND
PATENT APPLICATIONS CLAIMING THE TET-SYSTEM
FORWARD SYSTEM (REPRESSOR SYSTEM):
1. US Patent # 5,464,758. Issued November 7, 1995.
TIGHT CONTROL OF GENE EXPRESSION IN EUKARYOTIC CELLS BY TETRACYCLINE
RESPONSIVE PROMOTERS, by Bujard and Xxxxxx.
2. June 14, 1993. Pending U.S. Patent Application.
TIGHT CONTROL OF GENE EXPRESSION IN EUKARYOTIC CELLS BY TETRACYCLINE
RESPONSIVE PROMOTERS, by Bujard, Gossen, Salfeld and Xxxx. BBI-013;
BBC-003.
3. June 14, 1994. Pending U.S. Patent Application.
TIGHT CONTROL OF GENE EXPRESSION IN EUKARYOTIC CELLS BY TETRACYCLINE
RESPONSIVE PROMOTERS, by Bujard, Gossen, Salfeld and Xxxx. BBI-013CP;
BBC-003A.
4. June 14, 1994. Pending PCT Patent Application.
TIGHT CONTROL OF GENE EXPRESSION IN EUKARYOTIC CELLS BY TETRACYCLINE
RESPONSIVE PROMOTERS, by Bujard, Gossen, Salfeld and Xxxx. BBI-013CPPC;
BBC-003B.
5. June 14, 1994. Pending Mexican Patent Application.
TIGHT CONTROL OF GENE EXPRESSION IN EUKARYOTIC CELLS BY TETRACYCLINE
RESPONSIVE PROMOTERS, by Bujard, Gossen, Salfeld and Xxxx. BBI-013CPMX;
BBC-003C.
6. June 7, 1995. Pending U.S. Patent Application.
ANIMALS TRANSGENIC FOR A TETRACYCLINE-CONTROLLED TRANSCRIPTIONAL
ACTIVATOR, by Bujard, Gossen, Salfeld and Xxxx. BBI-013CP2; BBC-003D.
7. June 7, 1995. Pending U.S. Patent Application.
METHODS FOR REGULATING GENE EXPRESSION, by Bujard, Gossen, Salfeld and
Xxxx. BBI-013CP3; BBC-003E.
REVERSE SYSTEM (INDUCER SYSTEM):
8. July 1, 1994. Pending U.S. Patent Application.
TETRACYCLINE INDUCIBLE TRANSCRIPTIONAL ACTIVATOR AND TETRACYCLINE
REGULATED TRANSCRIPTION UNITS, by Bujard and Xxxxxx. BBI-009; BBC-009.
9. July 15, 1994. Pending U.S. Patent Application.
TETRACYCLINE INDUCIBLE TRANSCRIPTIONAL ACTIVATOR AND TETRACYCLINE
REGULATED TRANSCRIPTIONAL UNITS, by Bujard and Xxxxxx. BBI-009CP;
BBC-009A.
1.
10. February 3, 1995. Pending U.S. Patent Application.
TETRACYCLINE REGULATED TRANSCRIPTIONAL INHIBITORS, by Bujard and Xxxxxx.
BBI-009CP2; BBC-009B.
11. June 7, 1995. Pending U.S. Patent Application.
ANIMALS TRANSGENIC FOR A TETRACYCLINE-INDUCIBLE TRANSCRIPTIONAL
ACTIVATOR, by Bujard and Xxxxxx. BBI-009CP3; BBC-009C.
12. June 7, 1995. Pending U.S. Patent Application.
ANIMALS TRANSGENIC FOR A TETRACYCLINE-REGULATED TRANSCRIPTIONAL
INHIBITOR, by Bujard and Xxxxxx. BBI-009CP4; BBC-009D.
13. June 7, 1995. Pending U.S. Patent Application.
METHODS FOR REGULATING GENE EXPRESSION, by Bujard and Xxxxxx.
BBI-009CP5; BBC-009E.
14. June 7, 1995. Pending U.S. Patent Application.
METHODS FOR REGULATING GENE EXPRESSION, by Bujard and Xxxxxx.
BBI-009CP6; BBC-009F.
15. June 7, 1995. Pending U.S. Patent Application.
TETRACYCLINE REGULATED XXXX-SCRIPTIONAL MODULATORS WITH ALTERED DNA
BINDING SPECIFICITIES, by Bujard, Gossen, Hillen, Helbl and
Schnappinger. BBI-009CP7; BBC-009G.
16. June 29, 1995. Pending PCT Application.
TETRACYCLINE-REGULATED TRANSCRIPTIONAL MODULATORS, by Bujard and Xxxxxx.
BBI-009C2PC; BBC-009H.
2.
APPENDIX B
LICENSED PRODUCTS IN THE EXCLUSIVE FIELD OF USE:
[ * ]
[ * ]
[ * ]
1.
* Portions of this exhibit have been omitted and filed separately with the
Commission pursuant to a request for confidential treatment under Rule 406.
APPENDIX C
LICENSED PRODUCTS IN THE SEMI-EXCLUSIVE FIELD OF USE
[ * ]
[ * ]
1.
* Portions of this exhibit have been omitted and filed separately with the
Commission pursuant to a request for confidential treatment under Rule 406.
APPENDIX D
Product Marking
"Research Use only"
"Use of the Tetracycline controllable expression systems (the "Tet system")
is covered under U.S. patent #5,464,758, which has been assigned to BASF
Aktiengesellschaft. Not-for-profit and academic research institutions are
granted an automatic license to use the Tet system only for internal,
academic research purposes with the purchase of this product, which license
specifically excludes the right to sell, or otherwise transfer, the tet
system or its component parts to third parties. In accepting this license,
all users acknowledge that the Tet system is experimental in nature. BASF
makes no warranties, express or implied of any kind, and hereby disclaims any
warranties, representations or guarantees of any kind as to the tet system,
patents or products.
For profit entities are required to obtain a license from BASF prior to
purchasing these reagents or using them for any purpose. Clontech is
required by its licensing agreement to submit a report of all purchasers of
the Tet controllable expression systems to BASF Bioresearch Corporation. For
license information contact: Director of Business Development, BASF
Bioresearch Corporation, 000 Xxxxxxxx Xxxxx, Xxxxxxxxx, XX 00000-0000. FAX:
(000) 000-0000."
This Appendix D may be amended from time to time as may be deemed necessary
by BASF.
1.
