CERTAIN MATERIAL (INDICATED BY AN ASTERISK) HAS BEEN OMITTED FROM THIS DOCUMENT
PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT. THE OMITTED MATERIAL HAS BEEN
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
EXHIBIT 10.26
LICENSE AGREEMENT
This Agreement is between The Public Health Research Institute of The City
of New York, Inc., a not-for-profit research corporation of the State of New
York, having offices at 000 Xxxxx Xxxxxx, Xxx Xxxx, XX 00000 ("PHRI"), and
Gen-Probe Incorporated, a California corporation having offices at 00000 Xxxxxxx
Xxxxxx Xxxxx, Xxx Xxxxx, XX 00000 ("GEN-PROBE"), collectively "The Parties."
BACKGROUND
A. PHRI owns U.S. Patent Application Serial No. 08/439,619, which is a
continuation-in-part of earlier U.S. Patent Application Serial No. 08/152,006,
now abandoned, and foreign counterpart applications to those U.S. applications,
and also U.S. Provisional Patent Application No. 60/015,409. These several
applications disclose and claim, inter alia, improvements in fluorescently
labeled nucleic acid detection probes, and kits and assays employing such
probes.
B. GEN-PROBE desires a non-exclusive license under the above
applications, and patents that may issue therefrom, to develop and perform
Assays and market kits in one or more fields, as reflected below, and PHRI is
willing to grant such a license on the terms and under the conditions set forth
below.
C. GEN-PROBE further desires an option for the right to include within
its license from PHRI certain Kits to be manufactured under agreements with
bioMerieux ("BMX") of France, and PHRI is willing to grant the option for that
right on the terms and conditions set forth below.
NOW THEREFORE, for and in consideration of the mutual covenants contained
herein, the Parties agree as follows:
1. Definitions.
For the purpose of this Agreement, and solely for that purpose, the
terms set forth hereinafter shall be defined as follows:
1.1 "PHRI Patent Rights" shall mean the claims of U.S. Patent Application
Serial No. 439,619 covering fluorescently labeled probes, kits and assays, the
claims of corresponding foreign patent applications, including foreign patent
applications corresponding to parent U.S. Patent Application Serial No. 152,006
(itself abandoned in favor of Serial No. 439,619, a continuation-in-part
application); and by all U.S. and foreign patent claims entitled to the priority
of either of the identified U.S. patent applications. PHRI Patent Rights shall
also mean all patent application claims and all patent claims, U.S. and foreign,
entitled to the priority of U.S. Provisional Patent Application No. 60/015,049,
covering fluorescently labeled probes, kits and assays.
Page 2
PHRI Patent Rights shall also mean all patent application claims and all
patent claims, U.S. and foreign, that cover improvements in Molecular Beacon
Probes, kits and assays and whose subjects are inventions and discoveries that
are made by PHRI during the period between the Effective Date and the third
anniversary of the Effective Date, so long as not made under third-party
commercial sponsorship and so long as PHRI has the right to license GEN-PROBE.
PHRI Patent Rights shall also include PHRI's "Molecular Switch Patents,"
namely, Xxxxxxx et al. U.S. Patent No. 5,118,801; Xxxxxxx et al. U.S. Patent No.
5,312,728; and corresponding patents and patent applications outside the United
States.
1.2 "Territory" shall mean worldwide.
1.3 "Human In Vitro Diagnostics" ("HIVD") shall mean the field of use
comprising the in vitro measurement, observation or determination of one or more
nucleic acids in a sample obtained from a human being for medical management of
that human being or for blood banking, bone marrow banking or similar banking of
human tissues for human medical management, and pre-clinical uses and clinical
trials for the foregoing uses, even if kits for such purposes are labeled
"Research Use Only" or "Investigational Use Only."
HIVD does not include research and development for any purpose, other than
as set forth in 2.1(c), human identity testing or parentage testing, forensics,
agricultural testing, food testing, quality control
Page 3
and assurance, detection of nucleic acid sequences in persons or in living
cells, in vitro fertilization and diagnoses therefor, tests on materials
obtained from animals other than humans, tests on plants, or any other testing
not specifically included in the previous paragraph.
1.4 "Food Testing" shall mean the field of use comprising the in vitro
measurement, observation, or determination of one or more nucleic acids of an
organism in a sample obtained from food intended for human consumption in order
to determine whether or not that food is fit for consumption.
1.5 "Licensed Fields" shall mean the fields of Human In Vitro Diagnostics
and Food Testing.
1.6 "Molecular Beacon Probe" shall mean a free-floating detector probe
with interacting label moieties covered by any claim of PHRI Patent Rights,
provided such probe does not include a nucleic acid sequence that must, in order
that a signal be generated, interact with a macromolecule other than the target
when the probe is hybridized to target.
1.7 "Assay" shall mean, collectively, all steps necessary to detect the
presence or absence of, or determine the amount of, one or more nucleic acid
target sequences in a sample or control, including any combination of the steps
of sample preparation, isolation of nucleic acid sequences, amplification of
targets or probes, detection, quantitation, analysis and reporting of results.
Page 4
1.8 "Kit" shall mean, collectively, at least one Molecular Beacon Probe
in combination with all such other reagents and materials, not including
instrumentation or associated software, as are necessary to perform an Assay.
1.9 "Affiliate" of GEN-PROBE shall mean an organization of which
GEN-PROBE owns or controls fifty percent or more of the voting stock or fifty
percent or more of other ownership interest.
1.10 "Effective Date" shall mean the date on which the last signatory to
this Agreement signs the Agreement.
1.11 "Straight Sale" of licensed Kits shall mean a sale whose consideration
is money only, in an arm's length transaction, to an unrelated third-party
distributor or end user not enjoying a special course of dealing with seller,
wherein the Kit sale price is not affected by any other dealing, including but
not limited to sale or purchase of other products or services. For pre-clinical
uses and clinical studies, distribution shall be considered to be a Straight
Sale, even if no charge is made by GEN-PROBE.
1.12 "Valid Claim" shall mean a claim of a patent which has not been held
invalid or unenforceable by a court from which no appeal has or can be taken, or
a pending claim of a patent application.
1.13 "Net Sales Price" shall apply to a Straight Sale of a licensed Kit
and shall mean GEN-PROBE's gross invoice price less: if based on licensed Kits
only, discounts allowed and
Page 5
taken, in amounts customary in the trade; and sales taxes, use taxes and duties
paid by GEN-PROBE for such sale.
2. License Grant.
2.1 Subject to the terms and conditions of this Agreement, PHRI grants
to GEN-PROBE a royalty-bearing, non-exclusive immunity from suit in the
Territory under PHRI Patent Rights:
(a) to itself perform Assays using Molecular Beacon Probes in
the Licensed Fields;
(b) to make, have made, use, sell and promote Kits that include
Molecular Beacon Probes for use in the Licensed Fields, and
to pass on to end-user purchasers the right to use those
Kits in the Licensed Fields under PHRI Patent Rights; and
(c) to develop licensed Assays and licensed Kits for the
Licensed Fields, and to test licensed Kits for quality
control.
2.2 No rights are granted to sell or distribute Molecular Beacon
Probes except as Kits. Further, rights under the Molecular Switch Patents are
limited to inclusion or use of Molecular Beacon Probes, and no rights are
granted under the Molecular Switch Patents for Kits or Assays that infringe
those patents by reason of including or using a molecule that is not a
Molecular Beacon Probe.
Page 6
2.3 No rights are granted under any other patent or patent application
owned or licensable by PHRI, including other patents already issued and other
patents which may issue from patent applications that are pending or not yet
filed.
2.4 Except for the right of end-user purchasers to use licensed Kits in
the Licensed Fields, the grant to GEN-PROBE is personal to GEN-PROBE, and
GEN-PROBE shall have no right to sublicense, assign or otherwise transfer or
share with others the rights granted in this Agreement.
2.5 Licensed Assays will be performed only by, and licensed Kits will be
marketed and sold only by, GEN-PROBE under its own name. Licensed Kits may be
marketed through independent third-party distributors.
2.6 Notwithstanding Section 2.5, GEN-PROBE may exercise the rights granted
under Article 2 through its Affiliates that were Affiliates as of the Effective
Date or through its Affiliates which are 100% owned by Gen-Probe, even if
formed after the Effective Date, but only for so long as either remain
Affiliates of GEN-PROBE and only to the extent that GEN-PROBE reports and pays
under this Agreement on behalf of such Affiliates.
3. BMX Option.
3.1 GEN-PROBE has agreements with BMX dated May 2, 1997, under which
Assay products bearing GEN-PROBE's name and trademarks and also BMX's name and
trademarks may be either
Page 7
manufactured entirely by GEN-PROBE or partly manufactured by GEN-PROBE and
partly manufactured by BMX with final product assembly by BMX.
3.2 Subject to the terms and conditions of this Agreement, PHRI
grants to GEN-PROBE an option to elect to include among the Assay products
described in Section 3.1 Kits for the Licensed Fields whose manufacture, sale
or use, but for license rights hereunder, would infringe at least one Valid
Claim of PHRI Patent Rights, in which event such Kits will be included within
the license grant of Section 2.1.
3.3 GEN-PROBE may make the election under Section 3.2 and begin
development of Kits described in that section at any time during the term of
this Agreement by serving written notice on PHRI accompanied by payment of the
option exercise fee under Section 4.3.
3.4 Upon GEN-PROBE's exercise under Section 3.3, BMX's sales of Kits
described in Section 3.2 will be considered sales by GEN-PROBE under this
Agreement, and GEN-PROBE will account for such sales on that basis.
3.5 No rights and no option for rights are granted to BMX beyond
Kits described in Section 3.2.
4. Fees and Royalties.
For the rights granted under this Agreement, including both Article 2
and Article 3, GEN-PROBE shall pay fees and royalties set forth in this Article
4.
Page 8
4.1 License Issue Fee. GEN-PROBE shall pay to PHRI on signing a license
issue fee of [***].
4.2 Annual License Fee. GEN-PROBE shall pay to PHRI an annual license fee
of [***] for the first year of this Agreement, [***] for the second year of
this Agreement and [***] for the third year of this Agreement. If GEN-PROBE
elects to continue the Agreement beyond three years, GEN-PROBE shall pay to PHRI
an annual license fee of [***] for year four and for each subsequent year of
the Agreement. The annual license fee is not creditable against royalties. The
first payment shall be due on signing. Subsequent annual payments shall become
due on the anniversary of the Effective Date.
4.3 Option Exercise Fee. GEN-PROBE shall pay to PHRI a fee of [***]
with the notice described in Section 3.3.
4.4 Milestones. GEN-PROBE shall pay PHRI, upon achievement but not
earlier than January 1, 1998, a fee of [***] for the achievement of each of
the following milestones during this Agreement:
(a) [***]
(b) [***]
(c) [***]
*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
Page 9
(d) [***]
4.5 Earned Royalties. GEN-PROBE shall pay to PHRI an earned royalty for
each sale of a licensed Kit; that is, a Kit whose manufacture, sale or use in
the Licensed Fields is covered by at least one Valid Claim of PHRI Patent
Rights. GEN-PROBE shall also pay to PHRI an earned royalty for each performance
of a licensed Assay (other than an Assay performed by a customer using a
purchased Kit licensed hereunder); that is, an Assay whose performance in the
Licensed Fields is covered by, or that utilizes at least one reagent covered by,
at least one Valid Claim of PHRI Patent Rights. The earned royalty for each
licensed Kit and each licensed Assay shall be determined according to the
remainder of this section.
(a) For a Straight Sale of a licensed Kit, the earned royalty shall
be [***].
(b) For distribution of a licensed Kit which is not a Straight Sale
for any reason, or for performance of a licensed Assay, the
earned royalty shall be that which provides a dollar return to
PHRI equal to the dollar return PHRI would have received were the
licensed Kit sold in a Straight Sale or were
*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
Page 10
the Assay reagents sold as a licensed Kit in a Straight Sale.
(c) Types of GEN-PROBE's business transactions, including manner of sale and
products or services to which applicable, falling under subsection 4.5(b)
that have already been considered by The Parties, if any, are described in
Appendix A to this Agreement, which includes for each type of transaction
an earned royalty, for example a fixed dollar amount or a rate (X) on a
base (Y), in accord with the definition of subsection 4.5(b), as agreed by
The Parties.
(d) Other types of business transactions falling under subsection 4.5(b) which
GEN-PROBE may wish to utilize will be considered when necessary. Prior to
introduction of a transaction not already covered by Appendix A, an earned
royalty in accord with the definition of subsection 4.5(b) will be
determined according to the procedure set forth in this subsection and
added to Appendix A.
(i) GEN-PROBE will provide to PHRI all information pertinent to arriving
at an earned royalty in accordance with
Page 11
the principle set forth in subsection 4.5(b).
(ii) Next, The Parties will, in good faith, confer and attempt to
determine the royalty by agreement.
(iii) If agreement cannot be reached, The Parties will, if possible,
within thirty (30) days put the question to binding arbitration
of a single, mutually acceptable arbitrator under a mutually
acceptable procedure.
(iv) If the Parties cannot agree on an arbitrator and/or procedure,
they will promptly put the question to binding arbitration under
the rules of, and before a single arbitrator selected by, the
Center for Public Resource (current address: 000 Xxxxx Xxxxxx,
Xxx Xxxx, XX 10019); or if that service is unavailable, binding
arbitration under the rules of, and before a single arbitrator
selected by, the American Arbitration Association.
(e) The Parties recognize the possibility that an earned royalty previously
agreed to, as
Page 12
reflected in subsection 4.5(c), or subsequently determined
according to subsection 4.5(d) may in time cease to satisfy
the definition set forth in subsection 4.5(b). Therefore,
either party may request review and revision of such earned
royalty not more frequently than once per year, according to
the procedure set forth in subsection 4.5(d). The
pre-review earned royalty shall continue to apply until
thirty (30) days after review and revision is requested. If
a determination on the requested revision is not reached
within thirty (30) days, royalty payments shall continue to
be made using the pre-review amount, subject to retroactive
adjustment to the end of the thirty-day period, if a revised
earned royalty is ultimately determined in response to the
request.
Nothing contained in this Section 4.5 shall require payment of royalties for
licensed Assays performed by GEN-PROBE or its Affiliates for internal use
licensed hereunder.
4.6 VOLUME REDUCTION. Earned royalties determined according to Section
4.5 in a single calendar year shall be
Page 13
subject to a stepped volume discount as follows:
Ranges of Multiplication
Royalties Factor to Arrive
Determined at Discounted
Under Section 4.5 Royalty
----------------- ----------------
$ 0 - 1,000,000 [***]
$1,000,001 - 2,000,000 [***]
$2,000,001 - 3,500,000 [***]
$3,500,001 - 4,000,000 [***]
$4,000,001 and above [***]
[***]
4.7 MINIMUM ANNUAL ROYALTY. Beginning three years after the Effective
Date, GEN-PROBE shall pay to PHRI a minimum annual royalty of [***] per
calendar year pursuant to Section 5.2(c). The first such minimum annual royalty
shall be the portion of [***] represented by the fraction of the calendar
year remaining after the third anniversary of the Effective Date. Each minimum
annual royalty shall be creditable only against earned royalties under Section
4.5 that accrued during the calendar year to which it applies and were reported
and paid pursuant to Article 5.
4.8 EARNED ROYALTY CREDIT. GEN-PROBE shall have a credit of [***] to
apply against the first [***] of earned royalties, calculated under Sections
4.5 and 4.6, constituting (a) all earned royalties accrued prior to the third
anniversary
*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
Page 14
of the Effective Date and (b) thereafter, earned royalties in excess of minimum
annual royalties.
5. Records, Reports and Payments.
5.1 Records. GEN-PROBE shall keep full, true and accurate records of
account of the particulars for royalty payments, which records shall be
available for inspection by PHRI or an independent certified public accountant
for three (3) years. If in dispute, such records shall be kept until the dispute
is resolved. Any inspection shall be at PHRI's expense unless the total of
earned and minimum royalties for the period inspected are found to have been
understated by five percent (5%) or more, in which case GEN-PROBE shall pay for
the inspection.
5.2 Reports. GEN-PROBE shall report accrued royalties on a calendar
quarterly basis, calendar quarters being the three-month periods ending March
31, June 30, September 30 and December 31 of each calendar year. GEN-PROBE shall
within forty-five (45) days after the close of each calendar quarter deliver to
PHRI a true and accurate royalty report.
(a) This report shall give such particulars as are pertinent to
an accounting for earned royalties under this Agreement,
including at least:
(i) for Kits subject to Section 4.5(a), the number of Kits
distributed, compilation of xxxxxxxx therefor,
Page 15
allowable deductions from xxxxxxxx, net sales subject
to royalty (sum of Net Sales Prices of all Kits), and
royalties on net sales; and
(ii) for Kits and Assays subject to Section 4.5(b), the type
of business transaction identified in Appendix A, the
earned royalty specified in Appendix A, and royalties
due for each type of business transaction.
(b) Earned royalty reductions pursuant to Section 4.6 shall be
shown.
(c) The minimum annual royalty, earned royalty payments
creditable against it and any net amount owing shall be
calculated and reported in the reports for the quarters
ending December 31.
(d) Credits under Section 4.8 shall be shown until the full
[***] credit is consumed.
(e) The correctness and completeness of reports shall be
attested to by the responsible financial officer of
GEN-PROBE or by GEN-PROBE's external auditor.
All reports submitted by GEN-PROBE shall be confidential. PHRI will use the
reports only for the purpose of monitoring payment of royalties. PHRI will not
disclose any report or, except for
Page 16
*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
the amount of royalties collected and then without naming the source, the
information contained in any report to any third party. If PHRI believes that
disclosure is warranted by law or circumstances, it shall first give GEN-PROBE
notice and an opportunity to object. PHRI shall take all steps appropriate to
minimize disclosure if any proper disclosure is made after notice and
opportunity to object are provided GEN-PROBE.
5.3 Royalty Payments. Simultaneously with the delivery of each royalty
report, GEN-PROBE shall pay to PHRI all royalties then due. Unless directed
otherwise, GEN-PROBE shall send reports and payment to PHRI at the notice
address (Section 18.2) to the attention of "Controller".
5.4 Annual License Fee Payments. The annual license fee payments under
Section 4.2 shall be paid on or before the anniversary of the Effective Date to
apply to the upcoming year. The fee for the second year of the Agreement shall
be paid on or before the first anniversary of the Effective Date, and so on.
5.5 Late Payments. Late payments by GEN-PROBE shall include interest at 2%
over the then-current prime rate of Chase Manhattan Bank of
New York,
New York.
6. Compliance and Quality.
PHRI does not approve or endorse any service or product of GEN-PROBE.
Quality and quality control, and compliance with applicable laws and
regulations, are the sole responsibility of GEN-PROBE.
Page 17
7. Notice to Customers.
7.1 GEN-PROBE shall, by means of a label statement applied to each
licensed Kit distributed to a third party, state positively that the Kit comes
with only limited field-of-use rights under PHRI Patent Rights, and identifies
that field of use, consistent with the terms of the limited grant hereunder.
GEN-PROBE shall propose language for this label statement for PHRI's approval,
in view of PHRI's need to protect its intellectual property rights, approval not
to be withheld unreasonably.
7.2 GEN-PROBE shall use the same or a similar PHRI-approved statement in
promotional literature for licensed Kits and licensed Assays.
8. Patent Infringement.
8.1 It is recognized that services and products of GEN-PROBE, including
licensed Assays and licensed Kits, may utilize patented technology of third
parties. Should that occur, securing rights thereunder or otherwise dealing with
third-party patent owners is the sole responsibility of GEN-PROBE.
8.2 GEN-PROBE has no right to compel PHRI to enforce any patent within
PHRI Patent Rights against third-party infringers. If GEN-PROBE's marketing of
licensed Assays or licensed Kits is being adversely and significantly impacted
by infringement of any such patent in either of the Licensed Fields in the
Territory, GEN-PROBE may notify PHRI of that fact and
Page 18
provide particulars of the identity of infringing product(s) and/or process(es),
the identify of the infringer(s), and the amount of infringement. If the level
of infringement described in any such notice in that Licensed Field in any
country in the Territory exceeds [***] of the market for Assays and Kits covered
by PHRI Patent Rights (the "Market") and substantially impacts GEN-PROBE's
marketing of licensed Assays and Kits either (a) PHRI will terminate the
significant infringement or bring suit against an infringer within [***] of
notification, or (b) GEN-PROBE's earned royalty rate only under Valid Claims in
that country and only in that Licensed Field shall be reduced by one-half during
the period infringing activity exceeds [***] of the Market. During any time
period in which the level of infringement in one of the licenced Fields shall
exceed [***] of the Market in the Territory for Assays and Kits covered by PHRI
Patent Rights, the earned royalty rate in that Licensed Field shall be zero,
unless PHRI is suing a substantial infringer.
9. Term and Termination.
9.1 Term. The immunity from suit granted herein shall commence on
the Effective Date and terminate upon the expiration of the last-to-expire of
the patents included within PHRI Patent Rights.
9.2 Guaranteed Term. Except for early termination under subsections
(b)-(d) of Section 9.3, the minimum term for this Agreement shall be three years
from the Effective Date.
*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
Page 19
Guaranteed payments during the minimum term include a license issue fee of
[***] and three annual license-fee payments totaling [***].
9.3 Termination.
(a) After the minimum term specified in Section 9.2, GEN-PROBE may
terminate this Agreement at any time on thirty (30) days'
written notice.
(b) The immunity from suit granted hereunder shall automatically
terminate upon institution by or against GEN-PROBE of any
bankruptcy, insolvency arrangement or similar proceeding; the
appointment of a receiver, trustee or similar officer for a
substantial portion of GEN-PROBE's property; an assignment by
GEN-PROBE for the benefit of creditors; or an adjudication or
written admission of GEN-PROBE as bankrupt, insolvent or unable
to pay its obligations as they mature.
(c) Upon GEN-PROBE's breach or default of a material term of this
Agreement, PHRI may terminate this Agreement upon thirty (30)
days' written notice, which shall become effective at the end of
the thirty-day
*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
Page 20
period unless GEN-PROBE has fully cured such breach or default.
(d) A decision by a court or administrative body finding PHRI liable
or culpable due to GEN-PROBE's performance under this Agreement
shall give PHRI the right to terminate this Agreement immediately
upon notice.
9.4 GEN-PROBE's obligation to report and pay fees and royalties for
activities preceding expiration or termination of this Agreement shall survive
expiration or termination. Further, termination pursuant to any subsection of
Section 9.3 shall not entitle GEN-PROBE to forgiveness or return of any portion
of the license issue fee, the option exercise fee, any milestone fee or any
annual license fee already either due or paid. If expiration or termination
occurs within an Agreement year, the minimum annual royalty for that Agreement
year shall be reduced by the fraction of the Agreement year remaining after
termination.
10. [***]
*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
Page 21
[***]
11. Publicity.
Neither party will use the other's name in any publicity, advertising
or news release without prior written approval of that other party.
12. Indemnification.
GEN-PROBE shall indemnify, defend and hold harmless PHRI, its
trustees, officers, faculty, staff and employees against all claims and
expenses, including legal expenses and attorney's fees, arising out of death or
injury to any person, damage to property, or any other claim, proceeding,
demand and liability resulting from GEN-PROBE's activities performed under this
Agreement.
*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
Page 22
13. Cooperation.
During the three-year guaranteed term of this Agreement, PHRI agrees
to cooperate with GEN-PROBE so as to permit employees of GEN-PROBE to
occasionally visit Xx. Xxxx Xxxxxx'x laboratory at PHRI to carry out joint
experiments on the licensed subject matter. GEN-PROBE shall be fully
responsible for its employees while they are at PHRI and GEN-PROBE shall be
responsible for the expenses of joint experiments. Indemnification under
Article 12 shall apply to joint experiments and all other activities of
GEN-PROBE's employees while at PHRI.
14. Warranties.
14.1 PHRI warrants that it has the power to enter into this
Agreement.
14.2 PHRI warrants that it is the rightful owner of the patents and
patent applications included in PHRI Patent Rights.
14.3 PHRI warrants that it does not own or have license rights under
any other patent or patent application which is necessary to the ability and
right of GEN-PROBE to practice the rights granted in Section 2.1, as distinct
from being possibly useful in the exercise of those rights.
15. Negation of Warranties.
15.1 Nothing in this Agreement shall be construed as:
(a) a warranty or representation by PHRI as to the
patentability of any patent application
Page 23
within PHRI Patent Rights, or the validity or scope of any
patent issuing thereon;
(b) a warranty or representation that practice under PHRI Patent
Rights is or will be free from infringement of third-party patent
rights;
(c) an obligation to bring or prosecute actions or suits against
infringers;
(d) conferring by implication, estoppel or otherwise any license,
immunity or right under any patent of PHRI other than those
stated to be included in PHRI Patent Rights;
(e) an obligation to furnish know-how; or
(f) creating any agency, partnership, joint venture or similar
relationship between PHRI and GEN-PROBE.
15.2 PHRI MAKES NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE.
16. Covenant to License.
16.1 PHRI agrees that, if GEN-PROBE grants to any third-party a
royalty-bearing license in one or both of the Licensed Fields under substantial
patented core technology of GEN-PROBE to perform Assays or to manufacture and
sell Kits, or both, PHRI will offer to that same third-party a royalty-bearing,
non-exclusive immunity from suit under PHRI Patent Rights on the
Page 24
same financial terms (excluding the BMX option) as are set forth in this
Agreement, said non-exclusive immunity from suit to be limited (a) to the
Territory within GEN-PROBE's grant, (b) to the Licensed Field(s) within
GEN-PROBE's grant, and (c) to Assays and Kits that are royalty bearing under
GEN-PROBE's grant.
16.2 PHRI shall not be required to extend to any third-party licensee
of GEN-PROBE any rights beyond those specified in Section 16.1, nor shall PHRI
be constrained by this Agreement from seeking whatever compensation it deems
reasonable, if it does elect to offer rights beyond those specified.
16.3 In negotiations to license its core technology, GEN-PROBE may
inform prospective licensees with whom it is negotiating of the substance of
this Article 16.
17. Assignment.
GEN-PROBE may not assign or otherwise transfer its rights or
obligations under this Agreement without the written consent of PHRI, except
that GEN-PROBE may assign this Agreement to a purchaser of substantially the
entire business of GEN-PROBE, upon such purchaser's agreement to be bound by
the terms of this Agreement.
18. General
18.1 This Agreement constitutes the entire agreement between The
Parties as to the subject matter hereof, and all prior negotiations,
representations, agreements and
Page 25
understandings are merged into, extinguished by and completely expressed by it.
This Agreement may be modified or amended only by a writing executed by
authorized officers of both parties.
18.2 Notice under this Agreement shall be given in writing and by
registered mail return receipt requested, courier or facsimile, properly
addressed. Notice is effective upon receipt by the addressee. Until otherwise
notified in writing notices shall be addressed as follows:
The Public Health Research Institute
of the City of
New York, Inc.
000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attn: President
Gen-Probe Incorporated
00000 Xxxxxxx Xxxxxx Xxxxx
Xxx Xxxxx, Xxxxxxxxxx 00000
Attn: Chairman, Chief Executive Officer
and President
18.3 This Agreement shall be construed and enforced in accordance
with the laws of the State of
New York. The exclusive judicial jurisdiction and
venue for any dispute arising from this Agreement or to enforce an arbitration
award hereunder shall be in the State or Federal Courts in
New York.
18.4 In the event a dispute arises between the Parties under or
relating to this Agreement, other than validity or enforceability of any PHRI
patent, The Parties agree to exchange all relevant information pertinent to
resolving the dispute and then proceed to out-of-court resolution according to
the procedure set forth above in Section 4.5(d)(ii), (iii) and (iv).
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18.5 Nothing in this Agreement shall be construed so as to require
the commission of any act contrary to law, and wherever there is any conflict
between any provision of this Agreement and any law or treaty, the latter shall
prevail, but in such event the affected provisions of the Agreement shall be
curtailed only to the extent necessary.
18.6 If any provision of this Agreement is held unenforceable for any
reason, it shall be adjusted rather than voided, if possible, in order to
achieve the intent of the parties to the extent possible. In any event, other
provisions of this Agreement shall be deemed valid and enforceable to the
fullest extent possible.
18.7 This Agreement may be executed by exchange of facsimile and
followed immediately by re-execution of identical hard-copy originals exchanged
by Federal Express or Express Mail. Each party agrees that the executed
facsimile shall be binding.
IN WITNESS WHEREOF, The Parties have set their hands and seals and
duly executed this Agreement on the date(s) indicated below.
GEN-PROBE INCORPORATED THE PUBLIC HEALTH RESEARCH
INSTITUTE OF THE CITY
OF
NEW YORK, INC.
By: /s/ Xxxxx X. Xxxxxxxx By: /s/ Xxxxx X. Xxxxxxxxx
--------------------- ----------------------
Xxxxx X. Xxxxxxxx Xxxxx X. Xxxxxxxxx
Chairman, Chief Executive President
Officer & President
Date: 6-25-97 Date: June 24, 1997
--------------- ----------------
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[APPROVED LEGAL SEAL]
APPENDIX A
Business Transactions and Earned Royalties
for Other than Straight Sales
NONE
Page 28
