NONEXCLUSIVE LICENSE AGREEMENT UNDER VYSIS’ COLLINS PATENTS

Exhibit 10.104

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.

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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.

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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 shall not include a license issue fee 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 shall not include a license issue fee 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 Seven Hundred Fifty Thousand Dollars ($750,000) and running royalty similar to the royalty provided herein).

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(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 reasonable commercial terms which are no greater than those terms granted by Vysis to other comparable Xxxxxxx Licensees (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 most favored licensee provision comparable to Paragraph 8.1 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 One and One Half Million U.S. Dollars ($1.5 Million) 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 three percent (3%) of End User Net Commercial Sales of Licensed Products (the parties agree that a single royalty rate of three percent (3%) 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;

(d) December 31

3.3 Royalty payments accruing hereunder shall be paid within sixty (60) days of the close of each calendar quarter.

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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;

(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.

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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.

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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 at least ten percent (10%) of the total End User Net Commercial Sales for Licensed Product and Licensed Method in the United States or Europe.

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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 ninety (90) days 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. However, Vysis shall not be required to initiate more than one such litigation at any one tome.

7.4 If VYSIS fails to initiate litigation to terminate such Substantial Infringement within ninety (90) days 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.

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8. MOST FAVORED LICENSEE

8.1 If after the effective date of this Agreement, VYSIS grants to a third party unrelated to the parties of this Agreement a license and rights of substantially the same scope as the license and rights granted herein but under royalty rates which are more favorable than the rates granted to GEN-PROBE, and for the GEN-PROBE/CHIRON ALLIANCE, and the GEN-PROBE/BAYER ALLIANCE, VYSIS shall promptly notify GEN-PROBE, the GEN-PROBE/CHIRON ALLIANCE, and the GEN-PROBE/BAYER ALLIANCE, as applicable, of such; and for sixty (60) days thereafter, each shall have the right and option to substitute such more favorable royalty rates for the royalty rates specified herein. However, the right and option for each to substitute the more favorable royalty rates granted to said third party shall be contingent upon acceptance by GEN-PROBE, the GEN-PROBE/CHIRON ALLIANCE, and the GEN-PROBE/BAYER ALLIANCE, as the case may be, in writing of all other conditions and terms, favorable or unfavorable, under which such more favorable royalty rates have been granted to such other third party. In the event GEN-PROBE, the GEN-PROBE/CHIRON ALLIANCE, or the GEN-PROBE/BAYER ALLIANCE, as the case may be, elects to substitute the more favorable royalty rate for the royalty rate provided herein, the more favorable royalty rate will be effective as of the effective date of its election to substitute the more favorable royalty rate for the royalty rate provided herein.

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.

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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

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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.

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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/ [signature illegible]		By: /s/ Xxxxx X. Xxxxxxxx

Title: President & CEO		Title: President & Chief Exec. Officer

Date: 8/10/99		Date: August 10, 1999

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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

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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

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NONEXCLUSIVE LICENSE AGREEMENT UNDER VYSIS’ COLLINS PATENTS

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