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Exhibit 10.39
AMENDED AND RESTATED TECHNOLOGY AGREEMENT
THIS AMENDED AND RESTATED TECHNOLOGY AGREEMENT, dated as of February
24, 1997, by and between ONCOR, INC., a Maryland corporation ("Oncor"), with its
principal business address at 000 Xxxxx Xxxxxxx, Xxxxxxxxxxxx, Xxxxxxxx 00000
and ONCORMED, INC., a Delaware corporation ("OncorMed"), with its principal
business address at 000 Xxxxx Xxxxxxx, Xxxxxxxxxxxx, Xxxxxxxx 00000.
WHEREAS, Oncor and OncorMed are the parties to that certain Restated
Technology License Agreement dated June 6, 1994 (the "Existing License
Agreement");
WHEREAS, OncorMed desires to expand its business into new fields not
accommodated by the Existing License Agreement and desires that the Existing
License Agreement be amended and restated to accommodate these new fields;
WHEREAS, OncorMed desires that it obtain sole ownership with
exceptions as set forth herein to the technologies it has discovered, invented,
developed or acquired and will discover, invent, develop or acquire in the
future, instead of automatically assigning such technologies to Oncor and
receiving the exclusive license within prescribed fields set forth in the
Existing License Agreement; and
WHEREAS, in consideration of certain revised financial arrangements,
ownership of Improvements (as defined herein) to certain Oncor technologies
discovered, invented, developed or acquired by Oncormed and certain rights of
first offer in respect of technologies discovered, invented, developed or
acquired by OncorMed, Oncor is willing to amend and restate the Existing License
Agreement to expand the scope of the licenses granted to OncorMed and to give
OncorMed ownership rights with exceptions as
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set forth herein in the technologies OncorMed has discovered, invented,
developed or acquired and will discover, invent, develop or acquire.
NOW THEREFORE, for good and valuable consideration, receipt and
sufficiency of which are hereby acknowledged, the parties agree that the
Existing License Agreement shall be replaced, amended and restated as follows:
1. Definitions.
(a) "Acquiring Party" shall mean either (i) Oncor or OncorMed
after a Change in Control where more than fifty percent (50%) of the total
combined voting power of the outstanding securities of such corporation are
transferred to a Person or Persons different from the Persons holding such
securities immediately prior to such transaction or (ii) the Person or Persons
who have acquired all or substantially all of the assets of Oncor or OncorMed as
a result of a Change in Control resulting from a sale of all or substantially
all of the assets of Oncor or OncorMed.
(b) "Additional Oncor Technology" shall mean any and all
Inventions, Know-How or Improvements which during the Term of this Agreement are
either acquired or developed by Oncor or licensed to Oncor by a third party with
an express right to sublicense, which can or could be used in relation to the
Exclusive OncorMed Field.
(c) "BRCA2 License" shall mean that certain license agreement
by and between OncorMed, Cancer Research Campaign Technology Limited and Duke
University, pursuant to which OncorMed is granted a license to the inventions
related to inherited susceptibility to breast cancer associated with the
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gene that is encoded in whole or in part with the nucleotide
sequence set out in [****].
(d) "[****] Technology" shall mean the inventions claimed in
the patent applications set forth on Schedule 1 attached hereto.
(e) "BRCA 2 Technology" shall mean the Inventions and Know-How
related to inherited susceptibility to breast cancer associated with the gene
that is encoded in whole or in part with the nucleotide sequence set out in
[****], to the extent the foregoing is licensed to OncorMed under the BRCA2
License.
(f) "Change in Control" shall mean either: (i) a stockholder
approved merger or consolidation in which securities possessing more than fifty
percent (50%) of the total combined voting power of the outstanding securities
of either Oncor or OncorMed, as the case may be, are transferred to a Person or
Persons different from the Persons holding such securities immediately prior to
such transaction, or (ii) a stockholder approved sale, transfer or other
disposition of all or substantially all of the assets of Oncor or OncorMed,
including complete liquidation or dissolution of Oncor or OncorMed.
(g) "Controlled Affiliate" shall mean an organization which is
directly or indirectly controlled by a party, but only for so long as such
control continues. For the purposes of this definition, control shall consist of
the ownership of more than fifty percent (50%) of the combined voting power of
an organization or the legal power to direct or cause the direction of the
general management and policies of the organization.
(h) "Effective Date" shall mean February 24, 1997.
**** Denotes language for which the Company has requested confidential
treatment pursuant to the rules and regulations of the Securities
Exchange Act of 1934, as amended.
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(i) "Exclusive OncorMed Field" shall mean and is limited to
the provision by OncorMed of the following specific services, direct to third
party health care providers, in relation to cancer: (i) testing, detection
and/or analysis of cancer-predisposing genes, (ii) genetic assessment of risk of
an individual to cancer, and (iii) testing and analysis for the purposes of
cancer management. The Exclusive OncorMed Field excludes, inter alia, the
provision by OncorMed of any services direct to patients, direct to health care
providers who are patients or employees of OncorMed, to any affiliate or
subsidiary of OncorMed, or to any persons other than health care providers who
are not patients.
(j) "Grant Revenues" shall mean any revenues received under a
formal grant for a research proposal from a Federal or a State government body
or agency, provided such grant is, in all material aspects, to recover only the
actual cost or estimated cost of providing the services and/or products.
(k) "Improvements" shall mean any modification or alteration
to any existing Invention or Know-How which improves that Invention or Know-How.
Examples of what does and does not represent an Improvement are set forth on
Exhibit A attached hereto.
(l) "Invention(s)" shall mean any new and useful discovery or
invention (whether or not patentable).
(m) "Know-How" shall mean all discoveries, works of
authorship, trade secrets, information, experience, data (including without
limitation preclinical and clinical test data), formulas, algorithms, computer
programs, technology, know-how, protocols, techniques, expertise, designs,
drawings, methods, procedures, and results.
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(n) "Net Sales" shall mean (i) gross revenues and fees due to
OncorMed and its Controlled Affiliates from the sale of any service by OncorMed
or its Controlled Affiliates (as reported in OncorMed's and its Controlled
Affiliates' quarterly and annual reports filed from time to time with the
Securities and Exchange Commission or, if such reports are not prepared, such
alternative reports as may be most appropriate), less any allowances actually
made and taken for returns, refunds or recalls; trade discounts actually allowed
in amounts and for purposes customary in the trade; an allowance for actual bad
debts, not to exceed six percent (6%) of gross revenues and fees; sales, use,
value-added and similar taxes and duties and similar governmental assessments;
transportation, packing and shipping insurance actually paid; and the direct
costs (as determined in accordance with generally accepted accounting
principles) to OncorMed and its Controlled Affiliates of any reagents,
chemicals, supplies and materials used in providing the service and (ii) the
payments actually received by OncorMed from sublicensees other than its
Controlled Affiliates (which have been approved by Oncor) for sales by the
sublicensees of any service which is based in whole or in part on Oncor
Technology or an Oncor Technology Improvement sublicensed to the sublicensees by
OncorMed.
(o) "Non-Exclusive OncorMed Field" shall mean the provision by
OncorMed of any services direct to third parties other than the services that
are included in the Exclusive OncorMed Field.
(p) "Oncor Technology" shall mean the Inventions, Know-How and
Improvements set forth on Schedule 2.
(q) "Oncor Technology Improvements" shall mean any and all (i)
Improvements to the Oncor Technology which are discovered, invented, developed
or acquired by OncorMed during the Term of this Agreement and (ii) Improvements
to Additional Oncor Technology which OncorMed has licensed from Oncor pursuant
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to Section 6 hereof, which Improvements are discovered, invented, developed or
acquired by OncorMed after the license to the subject Additional Oncor
Technology has been executed by OncorMed. To the extent an Improvement referred
to in (i) and (ii) also improves upon or relates to any other Invention or
Know-How, the application of such Improvement to those other Invention(s) or
Know-How shall not be deemed to be an Oncor Technology Improvement. Improvements
to the Oncor Technology made prior to the Effective Date are set forth on
Schedule 2, Category II and are included in the definition of Oncor Technology.
(r) "OncorMed Technology" shall mean any and all Inventions,
Know-How and Improvements, except for any that are Oncor Technology
Improvements, which prior to or after the Effective Date are either (i)
discovered, invented, developed or acquired by OncorMed or (ii) licensed to
OncorMed. As of the Effective Date of this Agreement, OncorMed Technology
includes, to OncorMed's best knowledge, the Inventions, Know-How and
Improvements set forth on Schedule 3. Inventions, Know-How and Improvements
which are not set forth on Schedule 3, but which would otherwise constitute
OncorMed Technology, shall only be excluded from OncorMed Technology if they
were actually known to OncorMed prior to the Effective Date and were
intentionally omitted from Schedule 3.
(s) "Option OncorMed Technology" shall mean only OncorMed
Technology which can or could be used in relation to (i) genetic test systems
and related products for cancer and other genetic diseases or (ii) any aspect of
cancer or other genetic disease management, but excluding BRCA1 Technology and
BRCA2 Technology.
(t) "Patents" shall mean all United States and foreign patent
applications, including any addition, continuation, continuation-in-part or
division thereof or any substitute application therefor; any patent issued with
respect to such patent applications, any reexaminations, reissue or
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extension of such patent and any confirmation patent or registration patent or
inventor's certificate.
(u) "Person" shall mean an individual, a corporation,
partnership or any other legal entity.
(v) "Product" shall mean any genetic test systems and related
products for cancer and other genetic diseases made commercially available by
Oncor (including for research purposes only), including but not limited to
probes, probe kits and reagents.
(w) "Proprietary Rights" shall mean any and all Patents,
copyrights, trade secret rights and similar rights owned by or licensed to a
party.
(x) "Tangible Manifestations" shall mean and include
documents, drawings, specifications, scientific notebooks, processes,
formulations, protocols and devices.
(y) "Termination Payments" shall mean quarterly payments, for
the remaining Term of this Agreement, in an amount equal to the higher of (i)
[****] and (ii) [****].
(z) "Transferable Technology" shall mean any of the following:
(i) any rights to Oncor Technology that have not already been granted to
OncorMed pursuant to Section 3 hereof, (ii) Additional Oncor Technology, or
(iii) Option OncorMed
Technology.
**** Denotes language for which the Company has requested confidential
treatment pursuant to the rules and regulations of the Securities
Exchange Act of 1934, as amended.
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2. Assignments and Ownership Rights.
(a) In consideration of the payment of [****] and the various
covenants of OncorMed herein, Oncor hereby assigns to OncorMed all of Oncor's
right, title and interest throughout the world in and to the OncorMed
Technology that exists as of the Effective Date of this Agreement, including,
but not limited to, all Proprietary Rights to such OncorMed Technology,
including, but not limited to, the Patents set forth on Schedule 3. Oncor
further agrees that the foregoing shall be deemed a full legal and formal
equivalent of any assignment, consent to file or like document which may be
required in any country or jurisdiction for any purpose regarding the subject
matter hereof, as well as constituting proof of the right of OncorMed to apply
for Patents or other proper protection for the OncorMed Technology existing as
of the Effective Date and to claim the benefits of the right of priority
provided by the International Convention for the Protection of Industrial
Property, as amended, or by any convention which may henceforth be substituted
for it. Oncor agrees that it will (i) promptly execute, verify, acknowledge and
deliver all such further papers, including patent applications and instruments
of transfer, as reasonably requested by OncorMed to record or confirm the
foregoing assignment in relation to the OncorMed Technology existing as of the
Effective Date and at OncorMed's expense, and (ii) promptly perform such other
acts as reasonably requested by OncorMed and at OncorMed's expense to obtain,
maintain, vest title in OncorMed to, defend or enforce Proprietary Rights for
the OncorMed Technology existing as of the Effective Date in any and all
countries and jurisdictions.
(b) In consideration of the payment of [****] and the various
licenses and covenants of Oncor herein, OncorMed hereby assigns and hereby
agrees to assign to Oncor all of OncorMed's right, title and interest
throughout the world in and to (A) the Improvements made by OncorMed set forth
**** Denotes language for which the Company has requested confidential
treatment pursuant to the rules and regulations of the Securities
Exchange Act of 1934, as amended.
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in Category II of Schedule 2 hereto, and (B) the Oncor Technology Improvements,
including, but not limited to, all Proprietary Rights to the Improvements
referred to in (A) above and Oncor Technology Improvements. OncorMed further
agrees that the foregoing shall be deemed a full legal and formal equivalent of
any assignment, consent to file or like document which may be required in any
country or jurisdiction for any purpose regarding the subject matter hereof, as
well as constituting proof of the right of Oncor to apply for Patents or other
proper protection for the Improvements referred to in (A) above and the Oncor
Technology Improvements and to claim the benefits of the right of priority
provided by the International Convention for the Protection of Industrial
Property, as amended, or by any convention which may henceforth be substituted
for it. OncorMed agrees that it will (i) promptly execute, verify, acknowledge
and deliver all such further papers, including patent applications and
instruments of transfer, as reasonably requested by Oncor to record or confirm
the foregoing assignment in relation to the Improvements referred to in (A)
above and the Oncor Technology Improvements and at Oncor's expense, and (ii)
promptly perform such other acts as reasonably requested by Oncor and at Oncor's
expense to obtain, maintain, vest title in Oncor to, defend or enforce
Proprietary Rights for the Improvements referred to in (A) above and the Oncor
Technology Improvements in any and all countries and jurisdictions.
(c) As between themselves, the parties hereby agree and
confirm that, except for the licenses granted in Section 3 below and the right
of first offer granted in Section 6 below, Oncor owns all right, title and
interest, including but not limited to all Proprietary Rights, to all the Oncor
Technology and Oncor Technology Improvements and that Oncor alone shall have a
direct license with the licensor of those parts of the Oncor Technology which
are licensed to Oncor by third parties.
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(d) As between themselves, the parties hereby agree and
confirm that, except for the right of first offer granted in Section 6 below,
OncorMed owns all right, title and interest, including, but not limited to, all
Proprietary Rights, to all the OncorMed Technology and that OncorMed alone shall
have a direct license with the licensor of those parts of the OncorMed
Technology which are licensed to OncorMed by third parties.
3. Grant of License to OncorMed.
(a) Subject to all of the terms and conditions of this
Agreement, Oncor hereby grants to OncorMed, including under any and all of
Oncor's current and future Proprietary Rights, a sole and exclusive, worldwide
license to use the Oncor Technology and Oncor Technology Improvements within the
Exclusive OncorMed Field to develop, make, have made, use, market, offer to
sell, sell and otherwise commercialize any of the services within the Exclusive
OncorMed Field. The parties hereby agree that while OncorMed's exclusive license
is to the exclusion of all other Persons (including, but not limited to, Oncor),
the following shall still be allowed:
(i) Oncor's continuing right to use the Oncor Technology
and Oncor Technology Improvements for internal, non-commercial
research and development purposes within or outside the Exclusive
OncorMed
Field;
(ii) Oncor's continuing right to use the Oncor
Technology and Oncor Technology Improvements to develop, make, have
made, use, market, offer to sell, sell and otherwise commercialize
Products, regardless of whether or not such Products are provided or
used by Oncor's customers as part of a service which comes within
the Exclusive OncorMed Field and regardless of whether or not the
purchaser of such Products is a competitor or customer of OncorMed.
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(b) Subject to all of the terms and conditions of this
Agreement, Oncor also hereby grants to OncorMed, including under any and all of
Oncor's current and future Proprietary Rights, a non-exclusive, worldwide
license to use Oncor Technology and Oncor Technology Improvements, within the
NonExclusive OncorMed Field to develop, make, have made, use, market, offer to
sell, sell and otherwise commercialize any of the services within the
Non-Exclusive OncorMed Field.
(c) Oncor retains all rights in relation to the Oncor
Technology, the Additional Oncor Technology and the Oncor Technology
Improvements other than those rights granted to OncorMed in this Section 3 and
in Section 6 below, including but not limited to, all rights to commercialize
the Oncor Technology, the Additional Oncor Technology and the Oncor Technology
Improvements in the field of genetic test systems and related products.
4. Rights to Sublicense
OncorMed shall not have the right to grant sublicenses of any
of the rights licensed to it by Oncor pursuant to this Agreement, except with
the prior written approval of Oncor, which approval:
(a) in the case of sublicenses within the Exclusive OncorMed
Field, shall not be unreasonably withheld; and
(b) in the case of sublicenses within the NonExclusive
OncorMed Field, may be withheld at Oncor's sole discretion.
5. Payments
(a) In consideration of the assignments and licenses to
OncorMed set forth above, and commencing as of April 1, 1997, OncorMed hereby
agrees to make quarterly payments to
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Oncor that are equal to the applicable percentage set forth in Section 5(b)
below of (i) all OncorMed's Net Sales in the quarterly period in question less
(ii) any Grant Revenues and any other payments that the parties mutually agree
to exclude from such calculation (the amounts set forth in (i) less the amounts
set forth in (ii) for an applicable period shall be referred to collectively as
the "Base Revenues").
(b) The payments due shall be calculated as follows: (i) for
aggregate annual Base Revenues of up to [****], the payment due shall be [****]
of such Base Revenues; (ii) for aggregate annual Base Revenues of [****], the
payment due shall be equal to [****] of such Base Revenues; and (iii) for
aggregate annual Base Revenues in excess of [****], the payment due shall be
equal to [****] of such Base Revenues. The payments due shall be calculated on
an accumulating annual basis, with each annual period commencing on April 1 and
ending on March 31st of the following year. The payments shall be made quarterly
in arrears within forty-five (45) days of the end of the previous quarter. By
way of example only, if in the first two quarters of a given annual period,
OncorMed's Base Revenues are [****] for the first quarter and [****] for the
second quarter (making aggregate Base Revenues of [****] for the first two
quarters) the payments to be made by OncorMed to Oncor would be as follows:
(iii) Within forty-five days of the end of the
first quarter:
[****]
(iv) Within forty-five days of the end of the second
quarter:
[****]
**** Denotes language for which the Company has requested confidential
treatment pursuant to the rules and regulations of the Securities Exchange
Act of 1934, as amended.
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and
[****]
Making an aggregate payment due of
[****]
(c) During the twelve month payment period beginning on
[****], OncorMed shall be obligated to pay a minimum payment equal to [****] per
quarter. The payment shall be made within sixty (60) days of the end of each
quarter. During the second twelve month payment period of this Agreement,
beginning April 1, 1998 and ending March 31, 1999, OncorMed shall be obligated
to pay a minimum payment equal to [****] per quarter. The payment shall be made
within sixty (60) days of the end of each quarter. After [****], OncorMed shall
not be obligated to pay Oncor any further minimum payments. To the extent that
any minimum payment exceeds the payment otherwise due for a given quarter
pursuant to this Section 5, the excess shall be fully creditable against any
other payments due to Oncor for the next quarterly period.
6. Right of First Offer.
(a) Subject to certain contractual provisions in which third
parties limit the transferability of licensed, assigned or otherwise transferred
Inventions, Know-How or Improvements, prior to the license or disposition
(whether by assignment or license) to a third party of Transferable Technology,
the offering party shall offer to the other party in writing terms for a license
or assignment, and the other party shall have a thirty (30) day period from the
date of delivery of
**** Denotes language for which the Company has requested confidential
treatment pursuant to the rules and regulations of the Securities Exchange
Act of 1934, as amended.
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the written offer in which to agree to license or acquire the Transferable
Technology on the offered terms. If the offer is declined or is not accepted
during such thirty (30) day period, the offering party may license or otherwise
dispose of (whether by assignment, transfer or license) the Transferable
Technology to a third party on terms no more favorable to the third party than
the terms offered in writing by such offering party to the other party. If the
offer from the offering party to the other party in respect of Transferable
Technology is accepted in writing and delivered within said thirty (30) day
period, the parties agree to negotiate in good faith the terms and conditions of
any such license or acquisition agreement; provided, however, that if the
parties are unable to agree upon the terms and conditions of any such license or
acquisition agreement within thirty (30) days of delivery of the written
acceptance of the offer, the offering party may license or dispose of (whether
by assignment, transfer or license) the Transferable Technology to a third party
on terms no more favorable to the third party than the terms offered by such
offering party to the other party. In determining whether the terms offered to a
third party are more favorable than those received or accepted by the other
party, all terms and conditions of the respective offers shall be considered,
including, but not limited to, monetary terms, scope of rights granted,
warranties and indemnities.
7. [Reserved]
8. Technology Transfer.
(a) In the event that Oncor does not have all the information
necessary to exercise its rights to any Improvement made by OncorMed or Oncor
Technology Improvement that is assigned to Oncor by OncorMed under Section 2
above, OncorMed shall, to the extent that agreements with third parties allow,
disclose and make available to Oncor such information as is held by OncorMed
that will enable Oncor to exercise its rights to such Improvement
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or Oncor Technology Improvement, including providing to Oncor all
Tangible Manifestations of such Improvement or Oncor Technology
Improvement held by OncorMed.
(b) In the event OncorMed does not have all the information
necessary to exercise its rights to Oncor Technology licensed to OncorMed by
Oncor hereunder, Oncor shall, to the extent that agreements with third parties
allow, disclose and make available to OncorMed such information as is held by
Oncor that will enable OncorMed to exercise its rights to such Oncor Technology,
including providing to OncorMed all Tangible Manifestations of such Oncor
Technology held by Oncor.
9. Proprietary Rights.
(a) Oncor will retain the sole right and discretion to apply
for, prosecute, maintain, enforce and defend all Proprietary Rights in Oncor
Technology and Oncor Technology Improvements, at its expense; provided that,
OncorMed shall give reasonable assistance to Oncor as requested by Oncor, at
Oncor's sole expense, concerning the preparation, filing, prosecution,
maintenance and defense thereof.
(b) OncorMed will retain the sole right and discretion to
apply for, prosecute, maintain, enforce and defend all Proprietary Rights in
OncorMed Technology, at its expense; provided that, Oncor shall give reasonable
assistance to OncorMed as requested by OncorMed, at OncorMed's sole expense,
concerning the preparation, filing prosecution, maintenance and defense of the
OncorMed Technologies set forth on Schedule 3.
10. Enforcement.
(a) OncorMed will notify Oncor promptly in writing if it
discovers any infringement by a third party of any of the Proprietary Rights to
either the Oncor Technology or the Oncor Technology Improvements.
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(b) Oncor shall have the sole right and discretion to enforce
any Proprietary Right to either the Oncor Technology or the Oncor Technology
Improvements against any infringer or alleged infringer thereof, but shall at
all times keep OncorMed informed as to the status thereof. Oncor may, in its
sole judgement and at its own expense, institute suit against any such infringer
or alleged infringer and control, settle, and defend such suit in a manner
consistent with the terms and provisions hereof and recover, for its account,
any damages, awards or settlements resulting therefrom. OncorMed shall
reasonably cooperate with such litigation at Oncor's sole expense.
(c) If Oncor elects not to enforce any Proprietary Right it
holds in relation to either the Oncor Technology or the Oncor Technology
Improvements, it shall so notify OncorMed in writing within sixty (60) days of
receiving notice that an infringement exists, and OncorMed may, in its sole
judgement and at its own expense, do so and control, settle, and defend such
suit in a manner consistent with the terms and provisions hereof, and recover,
for its own account, any damages, awards or settlements resulting therefrom.
Oncor shall reasonably cooperate with such litigation at OncorMed's sole
expense.
(d) OncorMed shall have the sole right and discretion to
enforce any Proprietary Right to the OncorMed Technology against any infringer
or alleged infringer thereof. OncorMed may, in its sole judgement and at its own
expense, institute suit against any such infringer or alleged infringer and
control, settle, and defend such suit in a manner consistent with the terms and
provisions hereof and recover, for its account, any damages, awards or
settlements resulting therefrom. Oncor shall reasonably cooperate with such
litigation at OncorMed's sole expense.
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11. Publications.
(a) OncorMed shall not make any publication, public
announcement, press release or other disclosure which incorporates material
information relating to the Oncor Technology or any Oncor Technology
Improvements, either directly or indirectly, except as may be legally required,
without first obtaining the approval of Oncor for the nature and text of such
announcement or disclosure, which approval shall not be unreasonably withheld.
This restriction does not apply to the dissemination of information that has
previously been approved and released by Oncor. OncorMed shall use its best
efforts to inform Oncor of any proposed announcement or disclosure in sufficient
time prior to public release, and shall use its best efforts to provide Oncor
with a written copy thereof, in order to allow Oncor to comment upon such
announcement or disclosure.
(b) OncorMed may not submit to a publisher any manuscript or
abstract containing information relating to Oncor Technology or any Oncor
Technology Improvements for the purposes of publication, without first obtaining
the written consent of Oncor, which consent shall not be unreasonably withheld.
If Oncor consents to such submission, then simultaneously with submission to the
publisher, copies of the manuscript or abstract shall also be sent to Oncor.
(c) OncorMed shall be entitled at its sole discretion to make
any publication, public announcement, press release or other disclosure which
incorporates or makes reference to OncorMed Technology. OncorMed shall have no
obligation to inform Oncor of any such publication, public announcement, press
release or other disclosure.
12. Confidentiality.
(a) Oncor and OncorMed each agree that all Inventions,
Know-How, Improvements, as well as other business,
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marketing and financial information of the other party which is not generally
known to the public and which the other party treats as confidential (the
"Proprietary Information") are the confidential property of the disclosing
party. The Oncor Technology, Additional Oncor Technology and Oncor Technology
Improvements are all Proprietary Information of Oncor. The OncorMed Technology,
including, but not limited to, the BRAC1 Technology and BRCA2 Technology, are
Proprietary Information of OncorMed. Except as expressly and unambiguously
authorized hereunder, each party shall hold in confidence and not disclose or
use any Proprietary Information received from the other party and shall
similarly require its employees and contractors to sign written agreements with
confidentiality and non-use provisions substantially similar to this Section 12.
The receiving party shall not be obligated under this Section 12 with respect to
information the receiving party can document by written records:
(v) is or has become published or otherwise readily
available to the public without restriction through no fault of the receiving
party or its employees or agents; or
(vi) is received without restriction from a third party
lawfully in possession of such information and lawfully empowered to disclose
such information; or
(vii) was rightfully in the possession of the receiving
party without restriction prior to its disclosure by the disclosing party; or
(viii) is independently developed by the receiving party
by employees without access to the other party's similar Proprietary
Information.
(b) The four above exceptions to the confidentiality
provisions of this Agreement do not, and should not be interpreted to, confer
any license or other rights to the receiving party in any of the information
referred to in said
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four exceptions. Nothing herein shall permit the receiving party to disclose or
use, except as explicitly permitted elsewhere in this Agreement, Proprietary
Information of the disclosing party and then only on an "as-needed" basis for
purposes of this Agreement. Each party shall notify the other party promptly
upon discovery of any unauthorized use of disclosure of the other's Proprietary
Information. The obligations of this Section 12 shall survive any termination or
expiration of the Agreement for a period of five (5) years.
(c) Upon any termination of this Agreement, each party will
promptly return or destroy any Proprietary Information of the other and any
copies, extracts and derivatives thereof, except as otherwise set forth in this
Agreement; provided, however, that each party shall be entitled to retain one
copy of such Proprietary Information for its corporate files solely for use in
any litigation or dispute involving such Proprietary Information.
(d) Each party acknowledges that its breach of this Section 12
would cause irreparable injury to the other for which monetary damages are not
an adequate remedy. Accordingly, a party will be entitled to seek injunctions
and other equitable remedies in the event of such a breach by the other.
(e) In the event that either of the parties receives a request
or demand to disclose all or any part of the Proprietary Information or the
existence of this Agreement under the terms of a subpoena or order issued by a
court of competent jurisdiction or otherwise, the recipient party agrees to (i)
immediately notify the other party of the existence, terms and circumstances
surrounding such a request so that the other party may seek a protective order
or other appropriate relief or remedy or waive compliance with this Section 12,
(ii) consult with the other party on the advisability of taking steps to resist
or narrow such request, and (iii) if disclosure is required, disclose such
information and, subject to reimbursement by the
20
other party of reasonable expenses, exercise best efforts to obtain an order or
other reliable assurance that confidential treatment will be accorded to such
disclosed information.
13. Representations, Warranties and Covenants of Oncor.
Oncor hereby represents, warrants and covenants to OncorMed as
follows:
(a) Except to the extent that Oncor has licensed Oncor
Technology from third parties, Oncor is the legal and equitable owner of the
Oncor Technology as of the Effective Date of this Agreement.
(b) As of the Effective Date of this Agreement, all licenses
from third parties to Oncor in respect of parts of the Oncor Technology are in
full force and effect and Oncor is in compliance in all material respects with
all of its material obligations thereunder; Oncor has heretofore delivered to
OncorMed a true and complete copy of each of such licenses and there have been
no amendments or modifications thereof, otherwise than has been disclosed to
OncorMed.
(c) Oncor has the full legal right and title to assign the
OncorMed Technology that exists as of the Effective Date in accordance with the
terms of this Agreement.
(d) Oncor has no knowledge, without independent investigation,
as of the Effective Date of this Agreement (i) of any material information, not
heretofore disclosed to OncorMed, relating to the potential safety or efficacy
of the Oncor Technology, or (ii) that the actual and proposed use of the Oncor
Technology licensed or sublicensed to OncorMed hereunder, will infringe upon any
rights of any third party.
(e) During the Term of this Agreement Oncor shall promptly
disclose to OncorMed any material information, not
21
previously disclosed to OncorMed, relating to the potential safety or efficacy
of the Oncor Technology.
(f) Oncor has the corporate power and authority to execute and
deliver this Agreement and perform its obligations hereunder, and the execution,
delivery and performance of this Agreement have been duly and validly authorized
and upon execution and delivery by Oncor will constitute a valid and binding
agreement of Oncor enforceable against it in accordance with its terms.
14. Representations, Warranties and Covenants of OncorMed.
OncorMed hereby represents, warrants and covenants to Oncor as
follows:
(a) OncorMed has the full legal right and title to assign to
Oncor the Improvements to Oncor Technology made by OncorMed set forth in
Category II of Schedule 2 attached hereto.
(b) The legal right and title, if any, which OncorMed may hold
in relation to Oncor Technology Improvements, shall be assigned to Oncor
pursuant to Section 2(b) hereof.
(c) To OncorMed's best knowledge, the list of OncorMed
Technology set forth on Schedule 3 is true and complete.
(d) OncorMed shall promptly disclose to Oncor any material
information, not previously disclosed to Oncor, relating to the potential safety
or efficacy of the Oncor Technology and the Oncor Technology Improvements.
(e) OncorMed has the corporate power and authority to execute
and deliver this Agreement and perform its obligations hereunder, and the
execution, delivery and performance of this Agreement have been duly and validly
authorized and upon execution and delivery by OncorMed will
22
constitute a valid and binding agreement of OncorMed enforceable against it in
accordance with its terms.
15. Regulatory matters Each party agrees that its conduct in
performing its obligations under this Agreement shall conform in all material
respects to all applicable laws and regulations of the United States of America
and foreign governments (and political subdivisions thereof).
16. Term and Termination.
(a) The term of this Agreement shall be from the Effective
Date of this Agreement until June 4, 2004 (the "Initial Term"). The Initial Term
of this Agreement is automatically renewable for additional one (1) year periods
unless either party hereto notifies the other party of its desire to terminate
this Agreement at least thirty (30) days prior to the expiration of the Initial
Term of this Agreement or any extension thereof (the Initial Term and any
extensions thereof collectively, the "Term").
(b) Upon any breach or default of any of the representations,
warranties or covenants set forth in this Agreement, the breaching or defaulting
party shall be given notice of such breach or default in writing and a period of
ninety (90) days after receipt of such notice to correct the breach or default.
If the default or breach (i) is material to this Agreement and (ii) is not
corrected within said ninety (90) day period and the breaching or defaulting
party has not taken reasonable steps to cure the same, the party not in breach
or default shall have the right to terminate this Agreement; provided, however,
that no such termination shall effect: (A) the assignments of OncorMed
Technology and Improvements pursuant to Sections 2(a) and 2(b) above; or (B) the
assignments by OncorMed to Oncor of Oncor Technology Improvements discovered,
invented, developed or acquired by OncorMed prior to the effective date of
termination pursuant to Section 2(b) above.
23
(c) Upon a Change in Control of OncorMed, the Acquiring Party
shall have the option, exercisable at any time during the One Hundred and Eighty
(180) days following the closing of the Change of Control, of either: (i)
maintaining this Agreement and assuming OncorMed's rights and obligations
hereunder or (ii) terminating this Agreement. In the event the Acquiring Party
elects to terminate this Agreement, it shall notify Oncor in writing and shall
pay the Termination Payments. At the election of the Acquiring Party, the
Termination Payments may be made either (i) quarterly in arrears within
forty-five (45) days of the end of each quarter following the Change of Control
until June 4, 2004 (prorated for any partial quarters as appropriate) or (ii) in
one lump sum payment of the then net present value of the future Termination
Payments as determined by mutual agreement between Oncor and the Acquiring
Party.
(d) Upon a Change in Control of OncorMed and in the event that
the Acquiring Party terminates this Agreement, the Acquiring Party shall, in
addition to paying the Termination Payments under Section 16(c) above, have an
option, exercisable for a period of One Hundred and Eighty (180) days from the
effective date of termination of this Agreement, of retaining the licenses
granted under Section 3 in exchange for a six percent (6%) royalty on Net Sales
derived from services that utilize the Oncor Technology and/or Oncor Technology
Improvements that are subject to such licenses. Oncor and the Acquiring party
shall determine the other terms and conditions for such license as they mutually
agree.
(e) Upon a Change in Control of Oncor the Acquiring Party
shall have the option exercisable at any time during the One Hundred and Eighty
(180) days following the closing of the Change of Control, to either: (i)
maintain this Agreement or (ii) terminate this Agreement, provided that the
licenses granted by Oncor under Section 3 shall survive on a royalty-free basis
and shall remain in full force and effect notwithstanding such termination.
24
(f) The licenses or sublicenses that may be negotiated in the
future between the parties pursuant to Sections 6 and 7 hereof shall not be
subject to the above Change in Control provisions, unless expressly provided for
therein.
(g) In the event of a termination of this Agreement for any
reason whatsoever, in addition to the other provisions of this Agreement which
are by their terms to survive, Sections 9, 10, 12 and 17 shall survive
termination, as will any accrued rights of payment or causes of action
hereunder.
17. Arbitration.
In the event of any dispute arising in relation to any aspect of
this Agreement, then the determination of such dispute shall first be submitted
to the Chief Executive Officers of both parties for resolution. In the event
that the Chief Executive Officers fail to reach agreement, then such dispute
shall be submitted to The American Arbitration Association in Washington, D.C.
for final and binding resolution of such dispute. The arbitration shall be
conducted in accordance with the then prevailing commercial arbitration rules of
The American Arbitration Association. The parties agree to abide by all
decisions and any award rendered in such proceedings. Such decisions and awards
rendered by the arbitrator shall be final and conclusive and may be entered in
any court having competent jurisdiction as a basis of judgment and of orders for
enforcement thereof. All such controversies, claims or disputes in connection
with this Agreement shall be settled in this manner in lieu of any action at law
or equity. The parties shall keep confidential the existence and determination
of any claim, controversy or dispute between them in connection with this
Agreement, unless otherwise required by law.
18. Miscellaneous.
25
(a) Notices under this Agreement shall be effective upon
delivery in writing and shall be sufficient only if personally delivered,
delivered by a major commercial rapid delivery courier service, mailed by
certified or registered mail, return receipt requested, postage prepaid, or such
other address as is provided by the other party in accordance with this Section.
If to Oncor:
Oncor, Inc.
000 Xxxxx Xxxxxxx
Xxxxxxxxxxxx, XX 00000
For the attention of: Xxxx Xxxxx
With a copy to:
Xxxxx, Xxxxx Xxxxxxx Xxxxxx
000 Xxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000
For the attention of: Xxxxxx X. Xxxxxxx, Esq.
If to OncorMed:
000 Xxxxx Xxxxxxx
Xxxxxxxxxxxx, XX 00000
For the attention of: Xxxxxxx Xxxxxxxx
With a copy to:
Xxxxxxx, Phleger & Xxxxxxxx LLP
0000 Xxxxxxxx
Xxx Xxxx, Xxx Xxxx 00000
For the attention of: Xxxxxxxxx X. Xxxxx, Esq.
(b) This Agreement is executed with the understanding that it
embodies the entire agreement with respect to the subject matter hereof between
the parties, that this Agreement supersedes and replaces all previous agreements
and arrangements with respect to the subject matter hereof, including, but not
limited to, the Existing License Agreement dated June 6, 1994 and that certain
Term Sheet between Oncor and OncorMed dated February 24, 1997, and that there
are no prior
26
representations, warranties or agreements relating thereto. This Agreement may
be modified only by a duly executed writing executed on behalf of the parties
hereto.
(c) A delay or failure to exercise any right shall not be
deemed to be a waiver. No waiver of any right under a provision of this
Agreement shall constitute a waiver of any prior, concurrent or subsequent right
under the same or any other provisions hereof, and no waiver shall be effective
unless made in writing and signed by an authorized representative of the waiving
party.
(d) This Agreement does not create any agency relationship
between either of the parties and neither party shall hold itself out as being
an agent for the other.
(e) Neither party shall be liable for failures and delays in
performance due to matters and circumstances beyond its reasonable control.
(f) If any provision of this Agreement is held by a court of
competent jurisdiction to be invalid, illegal or unenforceable, that provision
shall be limited or eliminated to the minimum extent necessary so that this
Agreement shall otherwise remain in full force and effect and enforceable.
(g) This Agreement shall be governed and construed in
accordance with the laws of the State of Maryland and the United States without
regard to the conflicts of laws provisions thereof.
(h) This Agreement may be executed simultaneously in one or
more counterparts, each of which will be deemed an original.
(i) This Agreement and the rights hereunder may not be
assigned except as otherwise provided herein without the
27
prior written consent of each party and shall be binding upon and inure to the
benefit of and be enforceable by any permitted successors and assigns of the
parties hereto.
28
IN WITNESS WHEREOF, the parties have caused their duly authorized
representatives to execute this Agreement as of the date set first set forth
above.
ONCOR, INC.,
a Maryland corporation
By: /s/ Xxxxxxx Xxxxxx
-----------------------------
Name: Xxxxxxx Xxxxxx
----------------------------
Title: CEO
----------------------------
ONCORMED, INC.,
a Delaware corporation
By: /s/ Xxxx Xxxxxxxx
-----------------------------
Name: Xxxx Xxxxxxxx
----------------------------
Title: President
---------------------------
29
SCHEDULE 1
[****]
**** Denotes language for which the Company has requested confidential
treatment pursuant to the rules and regulations of the Securities Exchange
Act of 1934, as amended.
30
SCHEDULE 2
[****]
**** Denotes language for which the Company has requested confidential
treatment pursuant to the rules and regulations of the Securities Exchange
Act of 1934, as amended.
31
SCHEDULE 3
[****]
**** Denotes language for which the Company has requested confidential
treatment pursuant to the rules and regulations of the Securities Exchange
Act of 1934, as amended.
32
EXHIBIT A
[****]
**** Denotes language for which the Company has requested confidential
treatment pursuant to the rules and regulations of the Securities Exchange
Act of 1934, as amended.
