[CONFIDENTIAL TREATMENT
HAS BEEN REQUESTED FOR
PORTIONS OF THIS
DOCUMENT]
Xx. X. Xxxxxxxx
Lifecodes Corporation
000 Xxxx Xxxxxx
Xxxxxxxx Xxxxxxxx Holdings, Inc.
Connecticut 06902 0000 X. Xxxxxxxxxx Xxxxx
XXX Xxxxxxxxx Xxxxxxx, XX
000000
Tel (000) 000-0000
Amersham
The Health Science Group
Dear Xx. Xxxxxxxx
Subject to contract
Letter of intent
o Lifecodes Corporation will enter into a Microarray Technology Access
Agreement (TA agreement) with Nycomed Amersham plc and Molecular Dynamics
Inc. for the purposes of Life Science research within the fields of HLA
typing for tissue transplantation and DNA identity testing for forensics
and paternity analysis and DNA Diagnostics during the Effective period of
the TA agreement which lasts [ ] from the Effective Date.
o During the Effective period of the TA agreement, Lifecodes Corporation will
work with the Products listed in Schedules I and II of the TA agreement
("Products"), in order to define and develop further products and/or kits
(reagents and consumables) within the fields of HLA typing and DNA identity
testing and DNA diagnostics defined above, relating to Products. Any
methods, know-how or improvements arising during the Effective period and
relating to the work carried out by Lifecodes, described above, should be
disclosed to Amersham, with Lifecodes granting to Amersham a non-exclusive
license to use any such improvements and to make, use and sell Amersham
products embodying any such improvements under terms of a sole license
agreement. Lifecodes will carry out reformatting required to ensure
compatibility of their products with the MD commercial Array Scanner
currently expected for launch from [ ].
o Amersham will use reasonable endeavors to negotiate a series of agreements
with Lifecodes Corporation to enable Lifecodes Corporation to commence
manufacture and/or commercialization of the kits and/or products developed
by Lifecodes during the Effective period from a date no earlier than
January 1, 1999.
o Lifecodes Corporation will be permitted to perform services or tests for
"Affiliates and Approved Collaborators", defined within TA agreement, on an
unpaid basis from the Effective Date until 30 September 1998, and on a paid
basis after 1 October 1998, subject to terms and conditions to be agreed
between Amersham and Lifecodes.
1 .a. During the Effective period of the TA agreement, Amersham will
in good faith, negotiate terms and conditions for the
sub-license to the relevant patents and licensed technology,
required by Lifecodes Corporation to use and sell licensed
products being restricted to include only the following specific
biological materials labeled with Cy2, Cy3, Cy3.5, Cy5, and
Cy5.5: avidin, streptavidin, nucleotides, nucleic acids and
phosphoramidites, (hereinafter referred to as "Licensed
Products"), excluding resale of Cy-phosphoramidites and Cy
dNTPs. Terms of this sub-license to include non-exclusive rights
to a worldwide license in the fields of HLA typing for tissue
transplantation and DNA identity typing for forensics and
paternity analysis and DNA Diagnostics. Terms of this license
will be subject to a customary and reasonable annual fee and
royalties to be negotiated in good faith payable to Amersham.
b. Amersham will in good faith negotiate terms and conditions to
grant to Lifecodes Corporation a sole, worldwide CyDye license
to use and sell:
i) Cy 3, Cy 3.5, Cy 5 and Cy 5.5, i.e. Xx xxx chemistries
matched to the MD Scanners
ii) dNTP nucleotides labeled with the aforementioned Xx xxx
chemistries.
iii)Phosphoramidites labeled with the aforementioned Xx xxx
chemistries in the field of HLA typing for tissue
transplantation and DNA identity typing for forensics and
paternity analysis only, onto products listed in Schedule I of
the TA agreement and commercial derivatives thereof. Amersham
and Lifecodes Corporation will work together to complete license
agreements by September 30, 1998. License agreement terms will
include minimum annual payments dependent on volume over a
specified period of time.
2) During the Effective period of the TA agreement, Amersham will, in good
faith, negotiate terms and conditions for a supply agreement, to supply
Products listed in Schedule II of TA Agreement and other Amersham
non-Xx xxx Products, to enable Lifecodes Corporation to commercialize
products developed for use onto Products listed in Schedule I of the TA
agreement and commercial derivatives thereof. Terms of this supply
agreement will be dependent on the final product format, "the kit".
Amersham anticipates that Lifecodes Corporation will be sole supplier
of this kit in the field of HLA-typing for tissue transplantation and
DNA identity typing for forensics and paternity analysis onto Products
defined in Schedule I of the TA agreement and commercial derivatives
thereof.
3) Specialized support, from Amersham, on aspects of HLA typing and DNA
identity outside of the gene expression application area, may be
negotiated on a contract R&D Supply of Services basis.
Reference to Amersham and patent references on products will also be
subject to discussion during the agreement negotiations. At a minimum,
packaging should carry reference to relevant Amersham/Pharmacia patents.
Amersham does not warrant that final products developed, manufactured or
sold by Lifecodes do not infringe any third party patents.
For the avoidance of doubt it is agreed that any proprietary information
and/or inventions arising under the terms of the [ ] is
excluded from the terms of the TA agreement.
For the avoidance of doubt it is agreed that should Lifecodes Corporation
wish to incorporate [ ] into the aforementioned kit, then
Lifecodes will negotiate terms and conditions for supply of and license to
these [ ].
The parties intend to negotiate a series of agreements in due course which
will be legally binding and which will provide inter alia detailed
arrangements for financing, payments and exploitation of intellectual
property rights. The parties agree that details set out in this letter are
confidential and for the purposes of discussion and negotiation only and are
not otherwise intended to be legally binding except as otherwise set out in
the existing confidentiality agreement.
Signed for and on behalf of:
NYCOMED AMERSHAM PLC LIFECODES CORPORATION
Sign:_________________________________ Sign:____________________________
Title: Vice President, Molecular Title:
Biology & Sequencing
Name: Dr. Xxxxxxx Xxxxx Name: Xxxxxxx Xxxxxxxx
Address: Amersham Place Address:000 Xxxx Xxxxxx
Xxxxxx Xxxxxxxx Xxxxxxxx,
Xxxxxxxxxxxxxxx, Xxxxxxxxxxx 00000
Xxxxxxx BP7 9NA USA
Fax: 00-0000-000000 Fax: 000-000-0000
