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 10.25
NONEXCLUSIVE LICENSE
AGREEMENT UNDER VYSIS' XXXXXXX PATENTS
THIS NONEXCLUSIVE LICENSE AGREEMENT (the "AGREEMENT") is made and is effective
the 22nd day of June, 1999 by and between Gen-Probe Incorporated ("GEN-PROBE"),
a Delaware corporation having its principal place of business in San Diego, CA
and Vysis, Inc. ("VYSIS"), a Delaware corporation having its principal place of
business in Downers Grove, IL WITNESSETH:
RECITALS
WHEREAS, certain inventions generally characterized as Target and Background
Capture Methods and Apparatus for Affinity Assays and Target and Background
Capture Methods with Amplification for Affinity Assays are disclosed and claimed
in United States Patents No. 5,780,224 and No. 5,750,338 by Xxxxxxx and Xxxxxxx,
et al., respectively, and foreign counterparts thereto and other patents and
applications claiming priority therefrom (the "Xxxxxxx Patents");
WHEREAS, GEN-PROBE and VYSIS are engaged in litigation unrelated to VYSIS'
Xxxxxxx Patents and which litigation involves BP Amoco Corporation ("BP AMOCO"),
an Indiana Corporation having its principal place of business in Chicago, IL;
WHEREAS, GEN-PROBE has previously entered into alliances with Chiron Corporation
("CHIRON") for blood screening, with Bayer Corporation ("BAYER") for infectious
diseases and with bioMerieux Xxxxx X.X. ("BIOMERIEUX") for infectious diseases;
WHEREAS, in partial fulfillment of a settlement of the litigation between
GEN-PROBE and VYSIS, GEN-PROBE desires to obtain certain license and rights
under the Xxxxxxx Patents for itself and certain options on behalf of its
alliances with CHIRON, BAYER and BIOMERIEUX, and VYSIS desires and is able to
grant certain license and rights to GEN-PROBE for itself and options on behalf
of its alliances;
GEN-PROBE and VYSIS agree hereto as follows:
1. DEFINITIONS
1.1 The term Xxxxxxx Patents shall mean United States Patents No. 5,780,224, No.
5,750,338 and No. 5,457,025 by Collins, Collins, et al., and Xxxxxxx et al.
respectively, and foreign counterparts thereto, continuations, divisionals,
reissues, and reexaminations thereof and other patents and applications claiming
priority therefrom. A Schedule of Xxxxxxx Patents is attached as Exhibit 1
hereto and incorporated herein by reference.
1.2 The term Licensed Method shall mean any method, the use or practice of which
would constitute, but for the license granted herein, an infringement of any
issued, Valid Claim within the Xxxxxxx Patents.
Page 1 of 12
1.3 The term Valid Claim shall mean an issued claim of a Xxxxxxx Patent which
has not been ruled invalid by a court or an administrative agency of competent
jurisdiction from which all appeals have been exhausted.
1.4 The term Licensed Product shall mean any of the following:
(a) Any product specifically intended for use in practicing a Licensed
Method;
(b) Any product which lacks substantial use other than in practicing a
Licensed Method; and
(c) Any product, the making, using, selling, offering for sale or
importing of which, would constitute, but for the license granted herein,
an infringement of any issued, Valid Claim within the Xxxxxxx Patents.
1.5 The term GEN-PROBE/CHIRON ALLIANCE shall mean the current alliance for blood
screening entered into by GEN-PROBE and CHIRON by agreement dated June 11, 1998.
In the event that CHIRON assigns substantially all of its rights and obligations
under this blood screening alliance agreement to another party, the alliance
with such party shall assume the rights and obligations of CHIRON with respect
to the GEN-PROBE/CHIRON ALLIANCE.
1.6 The term GEN-PROBE/BAYER ALLIANCE shall mean the current alliance for
clinical diagnostics entered into by GEN-PROBE and CHIRON by agreement dated
June 11, 1998. CHIRON has assigned its rights and obligations under the clinical
diagnostics alliance agreement to Bayer. In the event that BAYER assigns
substantially all of its rights and obligations under the clinical diagnostics
alliance agreement to another party, the alliance with such party shall assume
the rights and obligations of BAYER with respect to the GEN-PROBE / BAYER
ALLIANCE.
1.7 The term End User Net Commercial Sales shall mean the total of the gross
invoice prices received by GEN-PROBE and any other Xxxxxxx Licensee from end
users for Licensed Products or Licensed Methods less the sum of the following
actual and customary deductions where applicable: cash, trade, or quantity
discounts; sales, use, tariff, import/export duties or other excise taxes
imposed upon particular sales; transportation charges and allowances or credits
to customers because of rejections or returns. In the event Licensed Products or
Licensed Methods are sold to end users through distributors, the gross invoice
price received by the distributors will be used to determine End User Net
Commercial Sales. Notwithstanding the foregoing, End User Net Commercial Sales
shall not include products transferred for purposes of a clinical trial by
GEN-PROBE, the GEN-PROBE/CHIRON ALLIANCE, and the GEN-PROBE/BAYER ALLIANCE and
the use of such products for clinical trials will not be royalty bearing.
1.8 The term Xxxxxxx Licensee shall refer to a recipient of license and rights
under the Xxxxxxx Patents granted hereunder as applicable.
Page 2 of 12
1.9 The term GEN-PROBE Core Licensee shall mean a third party to whom Gen-Probe
grants a royalty-bearing license in the field of infectious disease nucleic acid
testing under substantial patented core technology of Gen-Probe (a "Gen-Probe
Core Technology License"), including, by way of example and not of limitation,
Transcription Mediated Amplification.
2. GRANTS
2.1 Subject to the terms and conditions of this Agreement, VYSIS hereby grants
to GEN- PROBE a worldwide, royalty-bearing, nonexclusive license without the
right to sublicense, to make, use, sell, offer for sale, or import Licensed
Products and practice Licensed Methods under the Xxxxxxx Patents for use in the
field of infectious disease nucleic acid testing.
2.2 The right to sell Licensed Products granted in Paragraph 2.1 shall extend to
distributors of GEN-PROBE relative to their distribution of Licensed Products
from GEN-PROBE with no additional obligation by the distributors to pay
royalties.
2.3 Except as otherwise provided herein, the licenses granted in paragraph 2.1
shall extend from June 22, 1999 until the date of expiration of the last to
expire of the Xxxxxxx Patents.
2.4 Subject to the terms and conditions of this Agreement, VYSIS hereby agrees
to grant the following options to the following third parties:
(a) For a period of six (6) months following June 22, 1999, VYSIS will
grant to the GEN-PROBE/CHIRON ALLIANCE an option for a license under the
Xxxxxxx Patents. The terms of the license will be the same terms granted
to GEN-PROBE herein, except that such terms [***] as provided herein and
the license will be granted solely for purposes of the blood screening
aspects of the GEN-PROBE/CHIRON ALLIANCE.
(b) For a period of six (6) months following June 22, 1999, VYSIS will
grant to the GEN- PROBE/BAYER ALLIANCE an option for a license under the
Xxxxxxx Patents. The terms of the license will be the same terms granted
to GEN-PROBE herein, except that such terms [***] as provided herein and
the license will be granted solely for purposes of infectious diseases
aspects of the GEN-PROBE/BAYER ALLIANCE with the exception of blood
screening.
(c) For a period of twelve (12) months following June 22, 1999, VYSIS will
grant to BIOMERIEUX and its subsidiaries an option for a license under the
Xxxxxxx Patents at terms similar to the terms granted to GEN-PROBE herein
(such terms shall include a license issue fee of [***] and running royalty
similar to the royalty provided herein).
*** 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 3 of 12
(d) For a period of six (6) months following the grant by GEN-PROBE of a
Gen-Probe Core Technology License in a field of infectious disease nucleic
acid testing to a GEN-PROBE Core Licensee, VYSIS will grant to the
GEN-PROBE Core Licensee an option to a license under the Xxxxxxx Patents
in the same field of infectious disease nucleic acid testing. The license
under the Xxxxxxx Patents shall be at [***] (excluding the terms granted
to GEN-PROBE, the GEN-PROBE/CHIRON ALLIANCE, the GEN- PROBE/BAYER ALLIANCE
and BIOMERIEUX pursuant to this Agreement) and include a [***] herein
relative to such other comparable Xxxxxxx Licensees.
2.5 For all purposes of this Agreement, each license granted pursuant to
paragraph 2.4 herein shall be regarded as a separate license under the Xxxxxxx
Patents and each corresponding licensee will be regarded as a separate licensee
under the Xxxxxxx Patents.
3. ROYALTIES AND PAYMENTS
3.1 GEN-PROBE agrees for itself and on behalf of the GEN-PROBE/CHIRON ALLIANCE
and the GEN-PROBE/BAYER ALLIANCE receiving licenses as provided in Paragraph 2.1
to make the following payments for the licenses received hereunder:
(a) A one-time license issue fee of [***] to be paid consistent with the
payment provision of Paragraph 27 of the Definitive Agreement and Release
executed concurrently with this Agreement by the parties hereto.
(b) A running royalty of [***] of End User Net Commercial Sales of
Licensed Products (the parties agree that a single royalty rate of [***]
of End User Net Commercial Sales will apply as an aggregate rate in the
event that one or more Xxxxxxx Patents apply to any End User Net
Commercial Sales of Licensed Products);
3.2 Running royalties accruing to VYSIS hereunder shall be paid to VYSIS by each
Xxxxxxx Licensee as applicable on a calendar quarterly basis for each quarter
ending:
(a) March 31;
(b) June 30;
(c) September 30; and
(d) December 31
3.3 Royalty payments accruing hereunder shall be paid within sixty (60) days of
the close of each calendar quarter.
*** 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 4 of 12
3.4 All monies due VYSIS shall be payable in United States Dollars collectible
at par in Chicago, Illinois. When Licensed Products and Licensed Methods are
sold for monies other than United States Dollars, the earned royalties will
first be determined in the foreign currency of the country in which the Licensed
Products and Licensed Methods were sold and then converted into equivalent
United States Dollars. The applicable exchange rate will be that established by
the Bank of America in New York, New York on the last day of the reporting
period and will be quoted in the Continental terms method of quoting exchange
rates (local currency per U.S. dollar).
3.5 In the event that any Xxxxxxx Licensee is required to withhold taxes imposed
upon VYSIS for any payment under this Agreement by virtue of the laws or
governmental regulations of a country in which Licensed Products are sold or
Licensed Methods are practiced, then such payments will be made by such Xxxxxxx
Licensee on behalf of VYSIS by deducting from the payment due VYSIS and
remitting such taxes to the proper authorities on a timely basis and the
payments provided for under this Agreement will be adjusted appropriately
provided that the Xxxxxxx Licensee supplies VYSIS with official documentation
and/or tax receipt on such withholdings supporting such taxes and such payments
as may be required by VYSIS for its tax records. The Xxxxxxx Licensee shall be
responsible for all bank transfer charges.
3.6 In the event royalty payments or fees due hereunder are not received by
VYSIS when due, the applicable Xxxxxxx Licensee shall pay to VYSIS interest
charges at a rate of one percent (1%) per month. The interest shall be
calculated from the date the payment or fee was due to VYSIS until actually
received by VYSIS.
3.7 Royalties paid hereunder shall be accompanied by a report of the following:
(a) Gross sales and End User Net Commercial Sales of Licensed Products and
Licensed Methods by the reporting Xxxxxxx Licensee in the preceding
calendar quarter;
(b) The number of each type of Licensed Product sold and Licensed Method
performed;
(c) The royalties, in U.S. dollars, payable hereunder as a result of such
sales;
(d) The method used to calculate the royalty; and
(e) The exchange rate used to calculate the royalty in U.S. dollars.
All reports submitted hereunder shall be confidential. VYSIS will use the
reports only for the purpose of monitoring payment of royalties. Except as
required by law, VYSIS will not disclose any report or the information contained
in any report to any third party. If VYSIS believes that disclosure is warranted
by law or circumstances, it shall first give the appropriate Xxxxxxx Licensee
notice and an opportunity to object. VYSIS shall take reasonable steps to
minimize the extent of any proper disclosure made after notice and opportunity
to object are provided to the appropriate Xxxxxxx Licensee.
Page 5 of 12
3.8 If, after a Xxxxxxx Licensee has made its first commercial sale of License
Products or Licensed Method, no sale of Licensed Products or Licensed Method has
been made during any particular quarterly reporting period, the Xxxxxxx Licensee
shall submit a report indicating that no sale was made in the period.
3.9 Xxxxxxx Licensees shall keep books and records accurately showing all
Licensed Products manufactured, used and/or sold and Licensed Methods performed
commercially under the terms of this Agreement. Such books and records shall be
preserved for at least five (5) years from the date of the royalty payment to
which they pertain and shall be open to inspection by representatives or agents
of VYSIS at reasonable times and under reasonable conditions. All information
contained in the Xxxxxxx Licensees' books and records shall be confidential and
VYSIS will use the reports only for the purpose of monitoring payment of
royalties.
4. TERM AND TERMINATION
4.1 Unless otherwise terminated by operation of law or by acts of the parties in
accordance with the terms of this Agreement, this Agreement shall be in force
from June 22, 1999 and shall remain in effect for the life of the last-to-expire
of the Xxxxxxx Patents.
4.2 Any termination of this Agreement shall not affect the following:
(a) A Xxxxxxx Licensee's obligations that have accrued prior to
termination;
(b) A Xxxxxxx Licensee's continuing obligation to indemnify VYSIS; and
(c) VYSIS' or a Xxxxxxx Licensee's continuing obligation to maintain the
confidentiality of the terms of this Agreement and any confidential
information received from another party pursuant to this Agreement.
4.3 If a Xxxxxxx Licensee should violate or fail to perform any material term or
covenant of this Agreement, VYSIS may give written notice of such default
("Notice of Default") to the Xxxxxxx Licensee. If the Xxxxxxx Licensee should
fail to take appropriate steps to cure such default within sixty (60) days of
the effective date of such Notice of Default, VYSIS shall have the right to
terminate the license and rights granted to the Xxxxxxx Licensee hereunder by
issuing a second written notice (Notice of Termination) to the Xxxxxxx Licensee.
Thereafter, the license and rights previously granted to the Xxxxxxx Licensee
shall terminate automatically on the effective date of the Notice of
Termination. Such termination shall not relieve the terminated Xxxxxxx Licensee
of its obligation to pay any royalty or license fees owing at the time of
termination and shall not impair any accrued right of VYSIS. Such termination
shall not act to terminate the license and right granted hereunder to any other
Xxxxxxx Licensee, provided that, VYSIS may exercise its rights under this
Paragraph 4.3 separately against any Xxxxxxx Licensee who violates or fails to
perform any material term or covenant of this Agreement.
Page 6 of 12
4.4 GEN-PROBE or any other recipient of a license and rights pursuant to
Paragraphs 2.4(a) - (d) may each terminate their respective license and rights
(and any license which issues pursuant to those rights) upon written notice of
termination to VYSIS. Thereafter, the license and rights previously granted to
the applicable Xxxxxxx Licensee shall terminate automatically on the effective
date of the Notice of Termination. Such termination shall have no effect on the
license and rights granted to any other Xxxxxxx Licensee hereunder.
5. LIMITED WARRANTY
5.1 VYSIS represents and warrants that it is the owner of the Xxxxxxx Patents
and has the lawful right to grant the license and rights granted hereunder.
5.2 GEN-PROBE represents and warrants that it has the right and authority to
accept the rights and obligations provided herein for itself, the
GEN-PROBE/CHIRON ALLIANCE and the GEN- PROBE/BAYER ALLIANCE.
5.3 The license and rights provided herein are provided WITHOUT WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY,
EXPRESS OR IMPLIED. VYSIS MAKES NO REPRESENTATION OR WARRANTY THAT THE LICENSED
PRODUCTS OR LICENSED METHODS WILL NOT INFRINGE ANY PATENT OR OTHER PROPRIETARY
RIGHT.
5.4 IN NO EVENT WILL VYSIS BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES RESULTING FROM GEN-PROBE'S OR A XXXXXXX LICENSEE'S
EXERCISE OF THIS LICENSE OR ITS USE OF LICENSED PRODUCTS OR LICENSED METHODS.
6. PATENT MARKING
6.1 GEN-PROBE agrees that GEN-PROBE and each Xxxxxxx Licensee will xxxx all
Licensed Products made, used or sold under the terms of this Agreement, or their
containers, with the patent number or numbers of any applicable Xxxxxxx Patent
practiced thereby.
7. NON-PARTY INFRINGEMENT
7.1 As used in this Article 7, the term Substantial Infringement shall mean
alleged non-licensed infringement by a non-party brought to VYSIS' attention by
a Xxxxxxx Licensee wherein such non-licensed infringement accounts for [***] of
the total End User Net Commercial Sales for Licensed Product and Licensed Method
in the United States or Europe.
*** 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 7 of 12
7.2 In the event that a Xxxxxxx Licensee hereunder believes that an unlicensed
non-party to this Agreement is substantially infringing any issued patent within
the Xxxxxxx Patents, the Xxxxxxx Licensee shall call this Substantial
Infringement to VYSIS' attention in writing and shall provide VYSIS with
reasonable evidence of such non-licensed infringing activity and the
substantiality of the non-licensed infringing activity by the non-party.
However, the Xxxxxxx Licensee will not notify the non-party infringer without
first obtaining the consent of VYSIS. VYSIS agrees that it will use its best
efforts to terminate such Substantial Infringement.
7.3 In the event the Substantial Infringement of the Xxxxxxx Patents continues
and VYSIS is unable to cause its termination, the Xxxxxxx Licensee may request
that VYSIS take legal action against the Substantial Infringement of the Xxxxxxx
Patents by the non-party. Any such request by a Xxxxxxx Licensee shall be in
writing and shall include reasonable evidence of such infringement and the
damages such infringement is causing to the Xxxxxxx Licensee. If VYSIS is unable
to cause the termination of such Substantial Infringement within [***] of the
effective date of the Xxxxxxx Licensee's request for same, VYSIS shall, at its
discretion, commence litigation against the non-party infringer to cause the
termination of the Substantial Infringement. [***]
7.4 If VYSIS fails to initiate litigation to terminate such Substantial
Infringement within [***] of the effective date of a Xxxxxxx Licensee's request
for same, the Xxxxxxx Licensee's obligation to pay royalties on End User Net
Commercial Sales of Licensed Product and Licensed Method in the affected country
shall be suspended until such time as VYSIS has commenced such litigation or
such Substantial Infringement has ceased.
7.4 VYSIS will maintain sole control of any such litigation for patent
infringement, bear all expenses for such litigation, and retain all recoveries
and damages awarded from such litigation as is initiated pursuant to Paragraph
7.3 above. However, the Xxxxxxx Licensee requesting termination of the
Substantial Infringement will provide reasonable cooperation to VYSIS in VYSIS'
litigation against such non-party infringer.
*** 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 8 of 12
8. [***]
[***]
9. INDEMNIFICATION
9.1 Each Xxxxxxx Licensee hereunder agrees to indemnify, hold harmless and
defend VYSIS, its officers, employees and agents against any and all claims,
suits, losses, damages, costs, fees, and expenses resulting from or arising out
of the Xxxxxxx Licensee's exercise of the license and rights granted herein
including any sale, manufacture or use of a Licensed Product or performance of a
Licensed Method. This indemnification will include, but not be limited to, any
product liability.
9.2 VYSIS shall promptly notify the appropriate Xxxxxxx Licensee in writing of
any claim which VYSIS believes it may have a right of indemnification under this
Agreement.
9.3 VYSIS will provide reasonable cooperation to each Xxxxxxx Licensee that is
indemnifying and holding VYSIS harmless for a claim, suit, loss or damage
pursuant to Paragraph 9.1.
10. NOTICES
10.1 Any notice or payment required to be given to either party shall be deemed
to have been properly given and to be effective (a) on the date of delivery if
delivered in person or (b) five (5) days after mailing by first-class certified
mail, postage paid, to the respective addresses identified below, or to such
other address as the applicable party shall designate by written notice to the
other party.
*** 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 of 12
If to VYSIS:
VYSIS, INC.
0000 Xxxxxxxxx Xxxxx
Xxxxxxx Xxxxx, XX 00000
Attention: Patent Counsel
If to GEN-PROBE:
GEN-PROBE INCORPORATED
00000 Xxxxxxx Xxxxxx Xxxxx
Xxx Xxxxx, XX 00000
Attention: Vice President, Intellectual Property
If to the GEN-PROBE/CHIRON ALLIANCE:
GEN-PROBE INCORPORATED
00000 Xxxxxxx Xxxxxx Xxxxx
Xxx Xxxxx, XX 00000
Attention: Vice President, Intellectual Property
and
CHIRON CORPORATION
0000 Xxxxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxxxx 00000
Attention: General Counsel
If to the GEN-PROBE/BAYER ALLIANCE:
GEN-PROBE INCORPORATED
00000 Xxxxxxx Xxxxxx Xxxxx
Xxx Xxxxx, XX 00000
Attention: Vice President, Intellectual Property
and
BAYER CORPORATION
0000 Xxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000-0000
Attention: VP, NAD Partner Management
Page 10 of 12
11. ASSIGNMENT
11.1 This Agreement is binding upon and shall inure to the benefit of VYSIS, it
successors and assigns, but shall be personal to GEN-PROBE, the GEN-PROBE/CHIRON
ALLIANCE and the GEN-PROBE/BAYER ALLIANCE and personal relative to subsequent
GEN-PROBE Core Licensees. The applicable license and rights and options granted
herein to GEN-PROBE, the GEN-PROBE/CHIRON ALLIANCE, the GEN-PROBE/BAYER ALLIANCE
and to subsequent GEN-PROBE Core Licensees are not assignable by them except to:
(a) A bona fide purchaser of all or substantially all of the business of
the seller to which the license and rights pertain, provided that such
bona fide purchaser agrees to the terms and conditions of this Agreement;
and
(b) A wholly-owned affiliate of GEN-PROBE, the GEN-PROBE/CHIRON ALLIANCE,
the GEN-PROBE/BAYER ALLIANCE, or the GEN-PROBE Core Licensee as the case
may be.
12. GOVERNING LAW
12.1 This Agreement is made in partial fulfillment of and reflects terms
specified in a Definitive Agreement and Release entered into by the parties in
settlement of litigation in the United States District Court for the Southern
District of California in the matter Gen-Probe, Incorporated v. Amoco Corp., et
al. (Case No. 95-CV-998-J(BTM)). The Agreement and its construction are subject
to the laws of the state of California with the exception of any choice of law
provisions which would direct the application of another state's laws. The
Agreement and its construction are further subject to the continuing
jurisdiction of the United States District Court for the Southern District of
California.
13. CONFIDENTIALITY
13.1 Except as required by law, the terms of this Agreement and all information
produced hereunder and designated as confidential by the producing party shall
be considered as confidential information of the producing party and the party
receiving such information shall use the same care to protect such information
as it uses to protect its own information of like kind.
14. MISCELLANEOUS
14.1 No amendment or modification hereof shall be valid or binding upon the
parties unless made in writing and signed by an authorized representative on
behalf of each party hereto.
Page 11 of 12
14.2 This Agreement embodies provisions of a Definitive Agreement and Release
entered into concurrently herewith by the parties in the matter Gen-Probe,
Incorporated v. Amoco Corp., et al. (Case No. 95-CV-998-J(BTM)) in the United
States District Court for the Southern District of California and such other
understandings as are included herein. This Agreement and the Definitive
Agreement and Release embody the entire understanding of the parties and shall
supercede all previous communications, representations or understandings either
oral or written, between the parties relating to the subject matter hereof.
14.3 In case any of the provisions contained in this Agreement shall be held
invalid, illegal or unenforceable in any respect, such invalidity, illegality or
unenforceability shall not affect any other provisions hereof and this Agreement
shall be construed as if such invalid or illegal or unenforceable provisions had
never been contained herein.
14.4 CHIRON, BAYER, BIOMERIEUX, and GEN-PROBE Core Licensees are third party
beneficiaries of this Agreement as set forth above.
IN WITNESS WHEREOF VYSIS and GEN-PROBE have executed this Agreement, in
duplicate originals, by their respective officers hereunto duly authorized, on
the day and year written below.
VYSIS, INC. GEN-PROBE INCORPORATED
By: /s/ By: /s/ Xxxxx X. Xxxxxxxx
----------------------- -----------------------
Title: President & CEO Title: President & Chief Exec.
----------------------- Officer
Date: 8/10/99 ------------------------
----------------------- Date: August 10, 1999
------------------------
Page 12 of 12
EXHIBIT 1
SCHEDULE OF XXXXXXX PATENTS*
1) Target and Background Capture Methods And Apparatus For Affinity Assays by
Xxxxxxx
Country Applcn. No. Status/Xxx. No.
------- ----------- ---------------
European 87309308.2 0000000
Xxxxxx 87309308.2 0265244
Germany 87309308.2 P3781860.0
Italy 87309308.2 0265244
United Kingdom 87309308.2 0000000
Xxxxx 268030/87 Pending
Japan 104339/99 Pending
USA 08/236,877 5,780,224
2) Target And Background Capture Methods With Amplification For Affinity Assays
by Xxxxxxx, et al.
Country Applcn. No. Status/Xxx. No.
------- ----------- ---------------
European 88312135.2 0000000
Xxxxxx 88312135.2 0328829
Germany 88312135.2 P3854470.9
Italy 88312135.2 0328829
United Kingdom 88312135.2 0000000
Xxxxx 323183/88 2817926
USA 08/238,080 5,750,338
* Abandoned Applications/Patents Are Not Identified
1 of 2
3) Closed Vessel For Isolating Target Molecules And For Performing Amplification
by Xxxx, et. al.
Country Applcn. No. Status/Xxx. No.
------- ----------- ---------------
USA 08/622,491 5,714,380
4) Methods And Composition For Preventing Interference With Affinity Capture
Schemes by Xxxxxxx, et. al.
Country Applcn. No. Status/Xxx. No.
------- ----------- ---------------
European 90905780.4 0000000
Xxxxxx 90905780.4 0481999
Germany 90905780.4 69031121.4
Italy 90905780.4 0481999
United Kingdom 90905780.4 0000000
Xxxxx 505451/90 Pending
USA 07/976,678 5,457,025
2 of 2
