EXHIBIT 10.30
***TEXT OMITTED AND FILED SEPARATELY
CONFIDENTIAL TREATMENT REQUESTED
UNDER 17 C.F.R. SECTIONS 200.80(b)(4)
AND 240.24B-2
THIS AGREEMENT is made the Twelfth day of July, One thousand nine
hundred and eighty four between THE WELSH NATIONAL SCHOOL OF MEDICINE whose
principal office is situate at Xxxxx Xxxx Xxxxxxx Xxxxx XX0 0XX (hereinafter
called "WNSM" which expression shall include its successors and assigns) of the
one part and BIOANALYSIS LIMITED whose registered office is situate at College
Buildings Courtenay Road Splott Cardiff (hereinafter called "BIOANALYSIS") of
the other part
WHEREAS
A. WNSM has developed techniques for the measurement of the
presence of antibodies binding proteins and other analytes based upon the
phenomenon of chemiluminescence which it believes may be applicable to
immunoassay binding protein and other assay systems (hereinafter called the
"CHEMILUMINESCENCE TECHNOLOGY")
B. WNSM is the registered proprietor of the patents particulars
of which are set out in the first part of the Schedule hereto and is entitled to
the benefit of the applications for the patents particulars of which are set out
in the second part of the said schedule
C. Bioanalysis has assisted in the development of the techniques
referred to in Recital (A) above and has a number of commercial contacts who
would be interested in manufacturing and marketing clinical diagnostic kits
components for such kits and other related products on a commercial scale and is
also interested in manufacturing and marketing such kits and other products
itself
D. WNSM has agreed to grant to Bioanalysis under the said patents
under any patents to be granted under the said applications and under any
further patents to be granted to WNSM relating to the Chemiluminescence
Technology (hereinafter called the "PATENTS") the right and licence either by
itself or with others to develop the Chemiluminescence Technology and to market
and sell either by itself or with others clinical diagnostic kits and/or
components thereof and/or other related products incorporating the
Chemiluminescence Technology upon the terms and conditions hereinafter set forth
NOW IT IS HEREBY AGREED by and between the parties hereto as follows:
1. This Agreement shall be deemed to come into force on the Twelfth day of
July One thousand nine hundred and eighty four and shall be read and construed
accordingly
2. In consideration of the royalties hereinafter reserved and the
covenants on behalf of Bioanalysis hereinafter contained WNSM hereby grants to
Bioanalysis an exclusive right and licence to develop manufacture market and
sell either by itself or with such other parties as Bioanalysis and WNSM shall
determine clinical diagnostic kits and/or components thereof and/or any other
related products incorporating the Chemiluminescence Technology covered by the
Patents
3. Bioanalysis shall on demand contribute one half of the costs incurred
by WNSM in maintaining in force any of the Patents or applying for further
patents in connection with the Chemiluminescence Technology provided that
nothing in this Agreement shall prevent
1.
Bioanalysis or its sub-licensees from applying for patents for new techniques or
products not covered by the Patents and for which Bioanalysis or its
sub-licensee are responsible
4. WNSM represents to Bioanalysis that (i) it is the owner of the Patents
and of all the know-how and information to be disclosed hereunder (ii) it has
not previously granted any rights or licences under the Patents or in connection
with the know-how and information to be disclosed hereunder relating to the
Chemiluminescence Technology to any third parties and (iii) it has power to
grant the rights and licences of this Agreement without any prior or conflicting
obligations whatsoever
5. Bioanalysis shall not assign transfer mortgage charge or part with any
of its rights duties or obligations under this Agreement but may with the
approval of WNSM grant licences to commercial organisations with a view to the
commercial exploitation of the Chemiluminescence Technology covered by the
Patents for the benefit of WNSM and Bioanalysis In the event that Bioanalysis
does grant licences as aforesaid it shall within One month of the grant of any
such licence furnish to WNSM a true copy thereof
6. WNSM will on the execution of this Agreement furnish Bioanalysis with
all the information relating to the Patents and the Chemiluminescence Technology
and will from time to time thereafter during the continuance of this Agreement
furnish such further information as may be necessary to keep the same up to date
7. Each of WNSM and Bioanalysis shall during the continuance of this
Agreement forthwith disclose to the other full details of all improvements in
the Chemiluminescence Technology covered by the Patents which it or any
sub-licensee of Bioanalysis may make or discover during such continuance and the
use of such improvements by WNSM or Bioanalysis shall not give rise to any
liability for payment of any further royalties over and above those payable
hereunder
8. Bioanalysis shall have the right during the continuance of this
Agreement at its own expense to send its employees to WNSM's laboratories and
workshops and WNSM shall permit such employees to study at reasonable times and
in a reasonable manner the methods processes designs and techniques employed by
WNSM in the development of the Chemiluminescence Technology covered by the
Patents. Bioanalysis shall indemnify and hold WNSM harmless against all loss and
damage claims demands costs or expenses arising out of the acts or omissions of
the employees of Bioanalysis in or about the premises of WNSM in connection with
such arrangements and for this express purpose Bioanalysis shall arrange
appropriate insurance cover with a reputable insurance company
9. (1) WNSM or Bioanalysis shall not during the continuance of this
Agreement or at any time thereafter disclose any part of the know-how techniques
data or other confidential information relating to the development of the
Chemiluminescence Technology covered by the Patents other than to a sub-licensee
of Bioanalysis and shall treat the same as confidential and to this end shall
cause its directors employees and agents to keep the same in confidence and not
to use or disclose the same except for the purposes of this Agreement
2.
(2) The provisions of this clause shall not apply to such of the
know-how relating to the Chemiluminescence Technology as shall have become
available to the public otherwise than through this Agreement
10. Bioanalysis shall during the continuance of this Agreement pay to WNSM
a royalty at the rate of [...***...] of the net selling price of each of the
clinical diagnostic kits OR components thereof or other related products
incorporating the Chemiluminescence Technology (hereinafter called the "LICENSED
PRODUCTS") manufactured and sold by Bioanalysis alone and [...***...] of the
royalties received by Bioanalysis on licensed products manufactured and sold by
a sub-licensee of Bioanalysis
11. Bioanalysis shall during the continuance of this Agreement use its
reasonable endeavours to promote the sale of the licensed products and to obtain
the best market price therefor
12. Bioanalysis shall keep true and detailed records of all royalties
payable hereunder and shall within Thirty days after the last day of June and
December in each year during which this Agreement shall remain in full force
deliver to WNSM a true account thereof in respect of the preceding half year (or
any part thereof) up to the end of the last preceding June or December as the
case may be showing separately the numbers of the licensed products sold by
Bioanalysis or its sub-licensee and shall at the same time pay to WNSM the
amount of such royalties as may be shown to be due hereunder Provided that if
this Agreement shall terminate otherwise than at the end of June or December in
any year the last account and payment under this Agreement shall be rendered and
made respectively within Thirty days after the termination of this Agreement
13. Bioanalysis shall permit any duly authorised representative of WNSM
such access to the accounts records of Bioanalysis as shall be reasonably
necessary to verify the accounts rendered under Clause 12 hereof and the
provisions of this Clause shall remain operative (notwithstanding the
determination of this Agreement) until the settlement of all subsisting claims
of WNSM hereunder
14. Unless terminated as hereinafter provided this Agreement shall continue
in force until the expiry or the last to expire of the Patents
15. Bioanalysis shall have the right to determine this Agreement at any
time upon giving to WNSM six months' previous notice in writing to that effect
16. WNSM shall have the right to determine this Agreement forthwith at any
time by notice in writing to Bioanalysis upon the happening of any of the
following events:-
(a) if any royalty payable hereunder is in arrears for sixty days
after the same shall have become payable
(b) if Bioanalysis shall commit a material breach of any of the
obligations on its part to be performed or observed herein and in the case of a
breach capable of rectification shall fail to rectify the same within thirty
days after notice is given to it by WNSM requiring such remedy
*CONFIDENTIAL TREATMENT REQUESTED
3.
(c) if Bioanalysis has a receiver or manager appointed to the
whole or any substantial part of its assets or if an order shall be made or
resolution passed for the winding up of Bioanalysis unless such order or
resolution is part of a scheme of reconstruction of Bioanalysis
17. Notwithstanding the failure of either party to exercise any right
hereunder including the right to terminate such failure shall not be deemed a
waiver of such right in any continuing or subsequent default
18. (1) Bioanalysis shall give notice in writing to WNSM (with full
technical supporting information) of any infringement or threatened infringement
of the Patents which shall at any time and from time to time come to its
knowledge
(2) If WNSM shall fail for a period of three months after due notice in
writing has been given to WNSM of an infringement of the Patents to institute
proceedings necessary to prevent such infringement and to indemnify Bioanalysis
against all damages claims costs and expenses in respect thereof Bioanalysis
shall be relieved from further obligation to pay any royalties under this
Agreement and shall be at liberty at its own cost to institute and prosecute any
such action or proceedings in the name of WNSM Provided that if the infringement
or alleged infringement shall subsequently cease royalties shall become payable
again as from the date of such cessation
19. On the termination of this Agreement (howsoever caused):
(a) Bioanalysis shall forthwith cease all further development
manufacture and sale of the licensed products except only that Bioanalysis may
sell its stock of the licensed products manufactured prior to such termination
and may fulfil any contract for the sale of these licensed products made by it
prior thereto subject to the payment of royalties to WNSM as provided under this
Agreement in respect of sales of licensed products by it or any of its
sub-licensees
(b) Bioanalysis shall Forthwith return to WNSM all written
information drawings specifications data and material supplied by WNSM pursuant
to this Agreement and all copies thereof and shall make no further use
whatsoever of any information so supplied;
(c) all rights and obligations under this Agreement and all
licences granted pursuant thereto shall automatically terminate with the
exception of:-
(i) such rights of action as shall have accrued prior to
termination (including but not limited to any and all claims for any breach of
any term or undertaking contained in this Agreement ) and
(ii) all obligations of Bioanalysis under this Agreement
which are expressed to survive its termination and continue thereafter
20. This Agreement contains the entire agreement and understanding of the
parties with respect to its subject matter and supersedes all prior agreements
written or oral with respect thereto
21. This Agreement shall not be construed as constituting Bioanalysis an
agent or employee or partner of WNSM for any purpose whatsoever and neither
party shall have the right or
4.
authority to act for or to bind the other party in any way or to make or give
any representation or warranty on behalf of the other or to settle any claims by
or against the other
22. Neither of the parties hereto shall be liable in damages or have the
right to terminate for any delay or default in performance of the other
hereunder if such delay or default is caused by conditions beyond the control of
the parties hereto including but not limited to Government restrictions
including domestic or international problems such as wars insurrections strikes
fires floods work stoppages embargos and or lack of materials; provided however
that either party shall have the right to terminate this Agreement summarily by
notice if the inability of the other to perform according to the obligations of
this Agreement due to any of the above mentioned causes continues for a period
of six months
23. All disputes differences or questions arising out of this Agreement as
to the rights and liabilities of the parties hereto or as to the interpretation
hereof shall be referring to the decision of a single arbitrator to be agreed
between the parties or in default of agreement appointed at the request of
either party by the president for the time being of the Chartered Institute of
Arbitrators Arbitration shall take place in London or in such other place as
shall be agreed between the parties
24. Any provision of this Agreement which in any way contravenes the law of
any territory in which this Agreement takes effect shall in such territory to
the extent of such contravention be deemed severable and of no effect but the
other provisions of this Agreement shall continue in full force and effect
25. Any notice or other document to be given under this Agreement shall be
in writing and shall be deemed duly given if left at or forwarded by registered
post or recorded delivery to the address of such party at its last known address
or in the case of Bioanalysis to its registered office and every notice or other
document shall be deemed to have been duly received and given at the time when
in the ordinary course of transmission it should have been delivered at the
address to which it was sent In proving the giving of notice it shall be
sufficient to prove that the notice was left or that the envelope containing
such notice was properly addressed and posted (as the case may be)
26. This Agreement shall be governed by and interpreted in accordance with
the laws of England and Wales and the parties submit to the jurisdiction of the
High Court of Justice in England and Wales
IN WITNESS WHEREOF this Agreement has been duly executed the day and
year first above written.
5.
THE SCHEDULE
PART I
PARTICULARS OF PATENTS GRANTED TO WNSM
APPLICATION OR PATENT
CASE NO. SHORT TITLE COUNTRY NUMBER STATUS
-------- ----------- ------- ------ ------
[...***...] [...***...] [...***...] [...***...] [...***...]
[...***...] [...***...] [...***...] [...***...] [...***...]
[...***...] [...***...] [...***...] [...***...] [...***...]
[...***...] [...***...] [...***...] [...***...] [...***...]
[...***...] [...***...] [...***...] [...***...] [...***...]
PART II
PARTICULARS OF PATENTS APPLIED FOR BY WNSM
APPLICATION OR PATENT
CASE NO. SHORT TITLE COUNTRY NUMBER STATUS
-------- ----------- ------- ------ ------
[...***...] [...***...] [...***...] [...***...] [...***...]
[...***...] [...***...] [...***...] [...***...] [...***...]
[...***...] [...***...] [...***...] [...***...] [...***...]
[...***...] [...***...] [...***...] [...***...] [...***...]
[...***...] [...***...] [...***...] [...***...] [...***...]
[...***...] [...***...] [...***...] [...***...] [...***...]
[...***...] [...***...] [...***...] [...***...] [...***...]
[...***...] [...***...] [...***...] [...***...] [...***...]
[...***...] [...***...] [...***...] [...***...] [...***...]
[...***...] [...***...] [...***...] [...***...] [...***...]
[...***...] [...***...] [...***...] [...***...] [...***...]
*CONFIDENTIAL TREATMENT REQUESTED
6.
THE SEAL of THE WELSH )
NATIONAL SCHOOL OF )
MEDICINE was hereunto )
affixed in the presence of )
LS X.X. Xxxxxx
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Member of Council
X.X. Xxxxxxx
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Registrar and Secretary
THE COMMON SEAL of )
BIOANALYSIS LIMITED was )
hereunto affixed in the )
presence of: - )
Xxxx Xxxxx
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Director
XX
X. Xxxxxx
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Secretary
7.
