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Exhibit 10.26
[PBA LETTERHEAD]
Mr. X Xxxxxx
Licensing and Agreements Manager
Medical Research Council
00 Xxxx Xxxxxxxx
Xxxxxx XXX 0XX
15th December 1997
Dear Xx. Xxxxxx
RE: LICENSE AGREEMENT BETWEEN MRC AND PBA TECHNOLOGY OF 9TH JANUARY 1995
At our last meeting with Xxxx Xxxxxx on the subject of the above License it was
agreed that the terms would be altered to reflect the change in position of
program priorities at the Sanger Centre (Genome Research Ltd). This has meant
that the Sanger Centre has not fulfilled their obligations set out in this
agreement to pursue further programs nor indeed to order a further 10 Flexys
(TM) robot as envisaged in this Agreement. This has meant we have not been in a
position to develop the new applications of our Flexys(TM) robot system
appropriate to these programs nor have we made the sales and earned the income
which was part of our startup business plan.
For the above reason it was agreed at our meeting with Xxxx Xxxxxx to reduce
the Royalty rate from 5% as set out in the agreement to 0.5% from 1st January
1995, and remove the specific obligations of the Sanger Centre relating to the
sequencing and PCR programs detailed in clause 4 also in the agreement. We have
since agreed that this reduced level of 0.5% would be levied for seven years and
that we would negotiate the remaining period of the licence at a rate of
between 0.5% and 2.5%.
It is our understanding that this would be incorporated in a revised document
which we would then both sign. Following this we would make payment on the
agreed outstanding Royalties to December 31st 1995 and calculate and pay
royalties thereafter at the agreed lower figure. Unfortunately this has not
occurred and indeed may not be necessary as we could simply sign an amendment
and append to our original agreement.
This week we are carrying out a company merger which will require us to warrant
ownership and use of intellectual property. I would therefore be grateful if you
could confirm that the position as stated above is correct by signing and
returning a copy of this letter. Following this I suggest we then agree whether
you wish to proceed with drawing up a new agreement or are satisfied with the
amendment route suggested.
Yours sincerely
/s/ X X Xxxx /s/ Xxxxxx X. Xxxxxx
X X XXXX XXXXXX X. XXXXXX
CHAIRMAN LICENSING AND AGREEMENTS MANAGER
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LICENCE AGREEMENT
THIS AGREEMENT is made on the 9th day of Jan 1995 (hereinafter called
"Effective Date") BETWEEN PBA TECHNOLOGY of 000 Xx. Xxxxx Xxxx, Xxxxx Xxxx,
Xx. Xxxxx, Xxxxxxxxxxxxxx, XX00 0XX (hereinafter called "PBA") and MEDICAL
RESEARCH COUNCIL, 00 Xxxx Xxxxxxxx, Xxxxxx XXX 0XX, X.X. (hereinafter
called "MRC").
WHEREAS
(a) PBA is an engineering design, instrumentation and robotic manufacturer.
(b) Genome Research Limited (GRL) has developed some research
instrumentation and robotic equipment as defined below useful in a wide
range of applications including molecular biology.
(c) MRC owns or is beneficial owner of certain technical information and
rights relating to the said equipment and has the right to grant to PBA
rights and immunities with respect to said equipment.
(d) PBA wishes to acquire certain rights to manufacture and sell the said
equipment through a Distributor (as defined below).
(e) PBA and Distributor will enter into a Distribution Agreement wherein
Distributor recognises the commitments and obligations of PBA under
this Agreement, which written acknowledgement is provided as an
attachment to this agreement.
1. DEFINITIONS
1.1 "Equipment" will mean the flexible robot incorporating an xyz and
drawer mechanism including associated fixtures as described in Schedule
1 hereto and will be designated "SCR/3".
1.2 "MRC Knowhow" will mean all or any knowledge, experience, design data,
construction data, operating data or other information or know how
possessed by MRC which relates to Equipment and the applications for
which it is employed and which MRC is free to disclose.
1.3 "MRC Rights" will mean any design rights, copyright or similar rights
relating to Equipment and for which MRC has the right to grant
licences.
1.4 "Software" will mean the control and user interface software used in
the operation of Equipment in the execution of its applications as
described in Schedule 1 hereto.
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1.5 "Application Specific" will mean in relation to specific applications
and operations employed only by or in Equipment.
1.6 "Generic" will mean of common or general nature that may be employed or
applied in areas other than Equipment.
1.7 "Net Selling Price" will mean the total of the gross prices billed or
otherwise charged by Distributor (as defined below) for the Equipment
or the Software as the case may be during the continuation of this
Agreement less actual returns and allowances normal cash discounts
actually taken VAT or other taxes and all transport and insurance
charges incurred by PBA in respect of the delivery of the Equipment or
the Software as the case may be.
1.8 "Affiliate" will mean any corporation, firm, partnership, or other
entity, whether de jure or de facto, which directly or indirectly owns,
is owned by, or is under common ownership with PBA, to the extent of at
least fifty per cent (50%) of the equity (or such lesser percentage
which is the maximum allowed to be owned by a foreign corporation in a
particular jurisdiction) having the power to vote on or direct the
affairs of the entity and any person, firm, partnership, corporation or
other entity presently controlled by, controlling or under common
control with PBA.
1.9 "Colony Picker" will mean [definition to be consistent with the
previous agreement].
1.10 "Distributor" will mean any company sub-licensed by PBA under terms
provided for herein for the sole purpose of the marketing, distribution
and sale of Equipment.
2. GRANT
2.1 MRC grants to PBA a world-wide exclusive right to use Application
Specific MRC Knowhow and Application Specific Software in the
manufacture of Equipment including the right to subcontract any of the
manufacture and design of any part of Equipment providing such
subcontractor is bound by the same abligations of confidentiality as
PBA.
2.2 MRC grants to PBA a world-wide non-exclusive right to use Generic MRC
Knowhow and Generic Software in the manufacture, distribution and sale
of Equipment.
2.3 MRC grants to PBA a world-wide non-exclusive immunity from suit for
infringement of MRC Rights in connection with the manufacture,
distribution, sale and use of Equipment.
2.4 MRC grants to PBA the exclusive right to grant to one or more
Distributors, subject to MRC's prior written consent, non-assignable
sub-licences conferring the rights to use all MRC Knowhow, gain
immunity from suit for infringement of MRC Rights and use all Software
to the extent necessary for such Distributors and customers of
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Distributors to sell and use Equipment world wide. Such Distributor
will confirm in writing that it recognises the commitments and
obligations of PBA under this Agreement, which written acknowledgement
will be appended to this Agreement. In the event PBA enters into an
exclusive arrangement with a preferred Distributor, with MRC's prior
consent, said arrangement will be exclusive only in the field of
molecular biology.
2.5 The exclusive rights granted in Clauses 2.1 and 2.4 herein will become
non-exclusive under the following conditions:
2.5.1 On the tenth anniversary of the Effective Date of this
agreement; or
2.5.2 In a particular country or region if the granting of exclusive
rights infringes any law or regulation in that country or
region.
3. TECHNOLOGY TRANSFER
3.1 MRC will forthwith communicate to PBA all MRC Knowhow relating to or in
respect of or for use with the processes and methods of working which
have been developed or acquired by MRC at the Effective Date of this
agreement relating to or in respect of or for the manufacture or use of
the Equipment and the Software to enable PBA to manufacture and sell
the Equipment.
3.2 For a period of 5 years from the Effective Date hereto details of any
new or improved applications or parts of Equipment, including tools,
modules or heads etc developed by GRL will be made available to PBA and
PBA will have the option to include them in the Equipment for
distribution and sale. Any change in respective contributions will be
agreed as provided for in Clause 4.1.3 hereto. Should PBA not wish to
incorporate said new or improved application or parts of Equipment then
MRC will be free to seek such alternative exploitation as it sees fit.
3.3 At the request of PBA and/or Distributor GRL will provide the services
of suitably qualified personnel to assist with technology transfer,
training of PBA or Distributor personnel and to provide advice in
rectifying any operational problems that may become apparent in items
of Equipment supplied by PBA/Distributor to third parties and that
cannot be determined by PBA/Distributor subject to the following:
3.3.1 Reasonable notice is provided by PBA and/or Distributor of when
such service is required and that such service is subject to
the availability of suitably qualified personnel.
3.3.2 Services will be provided for each application of Equipment. To
avoid doubt for example Gridding, Sequencing and PCR will be
three separate applications. These services will be free of
charge up to a maximum of 50 man hours for each application.
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3.3.3 Subject to GRL management approval services may be provided in
excess of the 50 man hours maximum indicated in Clause 3.3.2.
Such services will be in accordance with a separate
consultation agreement to be agreed separately between GRL and
PBA and/or Distributor and which may embody more general
terms.
4. CONSIDERATION
4.1 In consideration for the rights and immunities granted under Clause 2
hereof PBA will pay MRC the following sums:
4.1.1 The sum of f15,000 (fifteen thousand pounds sterling) upon
proof by GRL that Equipment functions successfully in
performing sequencing reactions in the laboratory setting as
demonstrated by meeting the targets to be agreed and specified
in Schedule 2 to this Agreement.
4.1.2 The sum of f10,000 (ten thousand pounds sterling) upon the
sale or supply of the first 5 units of Equipment to any
customer or end user for sequencing applications, whether a
normal commercial sale or part of a special arrangement. This
will include units supplied to GRL intended for use in this
application.
4. The sum of f10,000 (ten thousand pounds sterling) upon the
sale or supply of the first 5 units of Equipment to any
customer or end user for PCR applications, whether a normal
commercial sale or part of a special arrangement. This will
include units supplied to GRL intended for use in this
application.
4.1.4 A royalty of 5% (five per cent) of the Net Selling Price of
all versions of the Equipment manufactured by PBA or on behalf
of PBA during the continuation of this Agreement, including
those supplied to GRL, but excluding the first ten units of
Equipment supplied to GRL specifically for sequencing
applications. GRL's intent to purchase 10 units at an agreed
preferential price is provided in Schedule 3 to this
Agreement.
4.1.5 A royalty on improved versions of Equipment manufactured by
PBA or on behalf of PBA at such a percentage rate of the Net
Selling Price as is agreed by the parties to be reasonable
having regard to their respective contributions to the
development of such improved version (which rate could go up
as well as down), and in default of agreement such percentage
will be determined by an arbitrator appointed on the
application of either party by the President for the time
being of the Law Society.
For the avoidance of doubt, if any version of Equipment is
suitable for or used as a Colony Picker it will accrue
royalties only under this Agreement and will not be deemed an
improved version of the Colony Picker.
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4.2 PBA will at all times during the term of this Agreement keep true and
accurate records of all units of Equipment manufactured by or on behalf
of PBA which may be material for the purpose of showing the amounts
payable to MRC hereunder and the said records and particulars will be
open during all normal business hours to inspection by a duly
authorised representative of MRC upon MRC giving reasonable notice to
PBA and such representative will be free to make copies and extracts
from all such books or documents, insofar as such copies or extracts
are relevant to determination of royalties due to MRC hereunder.
4.4 PBA will on or before 31st January in each calendar year during the
term of this Agreement deliver to MRC a statement certified by a
responsible representative of PBA containing all such information as
may be required to enable the royalty in respect of PBA's operations
during the preceding year to be determined. Upon receipt of the
statement MRC will send an invoice to PBA for the sum due to MRC
hereunder plus any Value Added Tax due on such sum. Within sixty (60)
days of the receipt of the invoice PBA will pay to MRC the sum shown to
be due on the invoice in accordance with the procedures specified on
the invoice.
4.5 Any payment due from PBA and not paid within sixty (60) days of the
receipt of the invoice as prescribed in Clause 4.4 will bear interest
at a compound monthly rate, equal to one twelfth (1/12) of the annual
rate equivalent to 4% above National Westminster Base rate prevailing
at the date of invoice, for each month or part month by which PBA
delays the payment in question and the payment when made will be
accompanied by all interest so calculated. In the event that a
statement as required under Clause 4.4 is not received by 31st January
then any royalties due to MRC for the preceding year will be deemed
overdue as of 1st February and will bear interest as provided for
herein from that date.
5 CONFIDENTIALITY
5.1 No information of whatsoever nature provided by one party to the
recipient party will be disclosed by the recipient party to a third
party or used by the recipient party save as expressly allowed in this
Agreement or with the prior written consent of the other party hereto
but this will not apply to information which:
5.1.1 at the time of its disclosure hereunder is in the public
domain; or
5.1.2 after disclosure hereunder becomes part of the public domain
by publication or otherwise through no fault of the recipient
party (but only after it is so published or otherwise becomes
part of the public domain); or
5.1.3 the recipient can show was, at the time of its receipt
hereunder, already rightfully in its possession, free from
restrictions on disclosure and use, and was not obtained
directly or indirectly from the other party hereto; or
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5.1.4 was received by the recipient after the time of disclosure
hereunder from any third party who had a lawful right to
disclose it to the recipient and who did not require the
recipient to hold it in confidence.
Specific information will not be deemed to be within any of the
foregoing exceptions merely because it is embraced by more general
information which is public knowledge or otherwise lawfully available
to the recipient party.
5.2 PBA recognises that under MRC policy the results of MRC related work
should be publishable and agrees that GRL shall be permitted to present
at symposia, national, or regional professional meetings, and to
publish in journals, theses or dissertations, or otherwise of their own
choosing, methods and results of their work using and in connection
with Equipment provided however that PBA shall have been furnished
copies of the proposed publication or presentation. PBA shall have two
months after receipt of said copies to object to such proposed
presentation or proposed publication because there is either
commercially sensitive information or patentable subject matter which
needs protection. In the event that PBA makes such objection, the
Parties hereto shall use reasonable endeavours to agree a mutually
acceptable position. To avoid doubt it is intended that detailed
information including design information concerning the Equipment and
the Software, including source code, will not be disclosed except under
suitable non-disclosure terms.
5.3 GRL will have the right to sub-contract any of the manufacture or
design of any part of Equipment solely for GRL's use and further
development of Equipment. Any new or improved applications that may
arise from such activity will be made available to PBA as provided for
in Clause 3.2.
5.4 The obligations of either party as set forth in this Clause 5 will
survive any termination of this Agreement for a period of 2 years from
the date of termination of this Agreement but in any event not before
the fifth aniversary of the Effective Date of this Agreement.
6 WARRANTIES AND LIABILITIES
6.1 MRC warrants that it has full right and authority to grant the rights
and licences herein described and that to the best of its knowledge at
the Effective Date hereof the use of MRC Knowhow or Software made
available to PBA pursuant to this Agreement will not result in the
infringement of patents or other rights of any third party.
6.2 MRC gives no warranty, express or implied, as to the suitability or
fitness for any purpose of MRC Knowhow, Software or any other
information disclosed by MRC or on MRC's behalf to PBA under this
Agreement excepting use of Equipment as a research tool in applications
used by GRL. In no event will MRC or GRL be liable for damages whether
direct or indirect or otherwise arising out of PBA's use of MRC
Knowhow, Software or any other information provided by MRC or on MRC's
behalf to PBA.
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6.3 PBA will be responsible for all guarantees or warranties or any
representations provided to its customers or sub-contractors in
connection with Equipment, MRC Knowhow or Software.
6.4 PBA will, during and after the period of this Agreement, indemnify and
hold harmless MRC and its employees and agents against all liability,
loss, damage, cost or expenses which may result from performance by PBA
or subcontractors of PBA or any Distributors appointed by PBA or any
customers of PBA or customers of Distributors under the terms and
conditions of this Agreement unless such loss, damage, cost or expenses
results from the negligence of MRC, its employees or agents.
7 TERM AND TERMINATION
7.1 Subject to the provision of sub-clauses 7.3 and 7.4 this Agreement will
terminate on the twentieth anniversary of the Effective Date.
7.2 Either PBA or MRC may terminate this Agreement forthwith by notice in
writing if the other party commits a substantial breach of this
Agreement which in the case of a breach capable of remedy will not have
been remedied within sixty days of the receipt by the party in default
of notice identifying the breach and requiring its remedy.
7.3 MRC may terminate this Agreement forthwith by notice in writing to PBA
if PBA enters into liquidation whether compulsorily or voluntarily or
compounds with or convenes a meeting of its creditors or has a receiver
appointed over all or part of its assets or takes or suffers any
similar actions in consequences of a debt or ceases for any reason to
carry on business.
7.4 The expiration of this Agreement or the termination thereof for
whatever reason will not affect the accrued rights of the parties
arising in any way out of this Agreement as at the date of expiration
or termination and all provisions which are expressed to survive this
Agreement will remain in full force and effect. Such provisions will
include but not necessarily be limited to:
7.4.1 obligations under Clauses 5 and 6 hereof,
7.4.2 rights and immunities for use of Equipment made available to
customers of PBA;
7.4.3 payments by PBA under Clause 4 for units of Equipment
manufactured and/or sold up to the date of termination;
8 ASSIGNMENT
8.1 Subject to the provisions of sub-clause 8.2 below, PBA will not assign
or transfer the said inventions, MRC Knowhow, MRC Rights or Software to
any third party, neither will either party assign, transfer or in any
other manner make over to any
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other party the benefit and/or burden of this Agreement without the
prior written consent of MRC in the case of a proposed assignment by
PBA or the prior written consent of PBA in the case of a proposed
assignment by MRC.
8.2 PBA will be entitled to assign or transfer in the manner prohibited by
Clause 8.1 hereof to an Affiliate or to any company with which it may
transfer its assets and undertaking provided that such Affiliate or
other company undertakes and agrees in writing to observe the rights
and/or obligations of PBA under the provisions of this Agreement being
assigned or otherwise made over.
9 GENERAL PROVISIONS
9.1 GOVERNING LAW AND JURISDICTION
The validity, construction and performance of this Agreement will be
governed by English Law.
9.2 SEVERABILITY OF PROVISIONS
If any provision of this agreement is declared void or unenforceable by
any judicial or administrative authority this will not ipso facto
nullify the remaining provisions of this Agreement and the provision of
this Agreement so affected will be curtailed and limited only to the
extent necessary to bring it within the legal requirements.
9.3 FORCE MAJEURE
No Failure or omission by either party to carry out or to observe any
of the terms or conditions of this Agreement will, except in relation
to obligations to make payments hereunder, give rise to any claim
against the party in question or be deemed a breach of this Agreement
if such failure or omission arises from any cause beyond the reasonable
control of that party.
9.4 ENTIRE AGREEMENT
This Agreement embodies the entire agreement between the parties hereto
as to the subject matter hereof and merges all prior discussions and no
provision of this Agreement may be changed except by the written mutual
consent of the parties hereto.
9.5 ARBITRATION
MRC and PBA will attempt to settle by mutual agreement all disputes and
differences arising under this Agreement, but in the event that an
amicable settlement cannot be achieved then all such disputes and
differences will, unless otherwise specifically provided herein, be
referred to the arbitration in England of two arbitrators (one to be
appointed by each party) and, in the event of the
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arbitrators differing, to an umpire. The umpire will be agreed upon by
the arbitrators or, in default of such agreement, nominated by the
President for the time being of the Law Society of England and Wales,
before the arbitration is commenced. Any such reference will be deemed
to be a reference to arbitration within the meaning of the provisions
of the English Arbitration Act of 1950 or any statutory modification or
re-enactment thereof which may for the time being be in force.
10 NOTICES
10.1 Any notice or other document given under this Agreement will be in
writing and will be deemed to have been duly given if left at or sent
by:
10.1.1 first class post or express or air mail or other fast postal
service or
10.1.2 registered post or
10.1.3 telex, facsimile or other electronic media, to a party at the
address or telex number set out below for such party or such
other address as the party may from time to time designate by
written notice to the other.
PBA MRC
PBA Technology The Medical Research Council
000, Xx Xxxxx Xxxx 00 Xxxx Xxxxxxxx
Xxxxx Xxxx Xxxxxx X0X 0XX
Xx Xxxxx
Xxxxxxxxxxxxxx XX00 0XX
Telex No. Telex No. 24897 Medresco London
Fax No. 0000 000000 Fax No. 000 000 0000
SIGNED FOR AND ON BEHALF OF THE MEDICAL RESEARCH COUNCIL
Signature /s/ Xxxxxx X. Xxxx PH.D. Date 16 January 1995
............................. ...............................
Name (Printed) XXXXXX X. XXXX PH.D. Title:Head of Technology Transfer Group
.................................................................
SIGNED FOR AND ON BEHALF OF PBA
Signature /s/ X. Xxxxx Date 9 January 1995
.............................. ...............................
Name (Printed) X. XXXXX Title Director
......................... ..............................
Signed in the presence of /s/ X. XxXxxxxx
...........................................
Name (Printed) X. XxXXXXXX
......................................................
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Schedule 1
DEFINITION OF EQUIPMENT AND SOFTWARE
The flexible robot comprises a combination of mechanical and electrical parts,
the "Equipment", and the software necessary for its operation and control, the
"Software".
EQUIPMENT
The Equipment means the base system comprising a three axis xyz robot, a method
of attaching a tool to the end of the z axis, a drawer to which fixtures can be
attached that are accessed by the robot and the various tools and other
attachments, collectively called modules that are available and may be developed
in the future for specific functions.
Separate control electronics are available for the system as follows:
1. stepper motors and electronics to drive each of the 3 axes
2. power supply
3. wiring
4. electronics to monitor machine state
Electronic printed circuit boards (ECPBs) are used to control these functions as
follows:
1. PIC - S is used to drive all the robot axes motors
2. PIC - P is a parallel input/output with dc motor and ADC facilities used for
a number of modules and attachments.
Modules and attachments developed or currently under development are as follows:
1. multi-channel syringe unit
2. multi-channel pipetting and plate moving tool
3. gridding tool
4. well filling head
5. single pin picking head
6. lid lifting attachment
7. plate storage and access system
8. heater block
9. plate image station
10. plaque picking application
11. template preparation application
The Equipment with the exception of the gridding tool, ECPBs, PIC - S and PIC -
P, is defined as Application Specific Equipment and the gridding tool, ECPBs,
PIC - S and PIC - P are defined as Generic Equipment.
In addition there is a freezer storage system and other mechanical facilities
including freezer trays, microtiter trays, reagent troughs, tip wash and
magnetic stations that are useful in the application of Equipment and will form
part of Generic Equipment.
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SOFTWARE
The software associated with the flexible robot comprises:
1. Libraries of low level routines for communication with the electronics
boards including the associated diagnostic and test routines. These are
defined as Generic Software.
2. Higher level libraries of routines, including test routines, robot
moving routines and specific module control routines. These are defined
as Application Specific Software.
3. Highest level software containing the code and user interface for the
particular application. These are defined as Application Specific
Software.
In addition, the ECPBs mentioned above, PIC - P and PIC - S, have a
microcontroller which contains bespoke software. In the current versions this is
all Generic Software although it is possible that future developments may also
include Application Specific Software.
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SCHEDULE 2
MINIMUM REQUIREMENTS TO DEMONSTRATE SUCCESSFUL PERFORMANCE OF SEQUENCING
REACTIONS BY EQUIPMENT
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SCHEDULE 3
STATEMENT OF GRL COMMITMENT TO DEVELOP THE EQUIPMENT TO PERFORM TEMPLATE
PREPARATION AND SEQUENCING REACTIONS AND IF SUCCESSFUL INTENT TO PURCHASE
ADDITIONAL UNITS FROM PBA.
GRL hereby warrants that it is firmly committed (for a period of at least 24
months) to develop Equipment to satisfactorily perform template preparation and
sequencing reactions.
In the event that the Equipment so developed satisfactorily performs template
preparation and sequencing reactions then GRL intend to purchase 10 units during
the 12 month period following the successful completion of such development with
the specification and at the price quoted in PBA's letter to GRL dated September
29th 1994 and attached to this Schedule 3.
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[TECHNOLOGY TRANSFER GROUP LOGO]
MEDICAL RESEARCH COUNCIL
00 XXXX XXXXXXXX, XXXXXX X0X 0XX
Tel 0000 000 0000
Fax 0000 000 0000
Your reference Colony Picker
A813/1009
Our reference
6 September, 1995
Xx Xxxxx Xxxxx
PBA Technology
Unit 3, Forge Close
Little End Road
Xxxxx Socon
St Neots
Cambridge PE19 3TP
Dear Xx Xxxxx,
MK1 COLONY PICKER
Further to your request to Xxxx Xxxxxx I am enclosing a copy of the original
agreement between Hybaid and the MRC. If you have any queries please do not
hesitate to contact me.
Yours sincerely
/s/ Xxxx Xxxxxxx
Xxxx Xxxxxxx
Technology Transfer Group
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[TECHNOLOGY TRANSFER GROUP LOGO]
MEDICAL RESEARCH COUNCIL
00 XXXX XXXXXXXX, XXXXXX X0X 0XX
telephone 000-000 0000
telex 24897 (Medresco London)
fax 000-000 0000
Your reference Colony Picker
A813/1009
Our reference
26 July, 1995
Xx Xxxx Xxxxx
Xxxxxxx Byatt
Unit 3, Forge Close
Little End Road
Xxxxx Socon
St Neots
Cambridge PEI93JH
Dear Xx Xxxxx,
COLONY PICKER A813/1009
I am writing on behalf of Dr Xxxx Xxxxxx who has received a letter from Xxxxx
X'Xxxxxxx of Hybaid Limited which confirms that responsibility for sales and
marketing for the Colony Picker has been transferred to Xxxxxxx Byatt.
I would be grateful if you could confirm in writing that any royalty payments
due to the MRC from the sale of Colony Pickers after the transfer date will now
be paid by Xxxxxxx Xxxxx.
Yours sincerely
/s/ Xxxx Xxxxxxx
Xxxx Xxxxxxx
Technology Transfer Group
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EXHIBIT 1.2(e)
THIS AGREEMENT is made th 1992
BETWEEN HYBAID LIMITED C dington,
Middlesex TW11 8LL (her MEDICAL
RESEARCH COUNCIL of WlN 4AL
(hereinafter called "MR(
W H E R E A S:
(a) HYBAID is a manufacturer and supplier of instruments and reagents to
the Molecular Biology market
(b) MRC is the owner of the Intellectual Property mentioned in Clause 1
below.
INTELLECTUAL PROPERTY
1.1 MRC is the owner of UK patent application 9100623.9 filed on llth
January 1991 which relates to a colony picker head and assembly
("the Equipment")
1.2 MRC is the owner of the copyright for the vision system software ("the
Software") which expression includes the vision system itself and any associated
software)
LICENCE TO AND TYPE
2.1 MRC grants to HYBAID an Exclusive Licence to the above patent
application for the use in the field of Molecular Biology.
2.2 MRC grants to HYBAID an Exclusive Licence to manufacture and sell the
Xxxx XX version of the Equipment in the
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field of Molecular Biology. This Licence includes the know-how for the
construction and operation of the Equipment.
2.3 MRC grants to HYBAID a Non-Exclusive Licence of the Software for use in
the manufacture and sale of the Equipment in the field of Molecular Biology and
will not grant any other Licences relating to the Software in the field of
Molecular Biology to any person firm or company other than Applied Biosystems
Inc.
2.4 MRC grants to HYBAID a Non-Exclusive Licence from lst January 1995 to
use the above Patent application to manufacture and sell the Equipment, and to
use the Software in any fields other than the field of Molecular Biology to
which the Equipment or Software become applicable.
2.5 MRC agrees not to grant any other Licence to use the Software without
imposing a restriction forbidding the use of the same in the field of Molecular
Biology in relation to the manufacture or sale of items of the Equipment which
are designed or used to pick more than 288 samples per day.
TECHNOLOGY TRANSFER
3.1 MRC will meet with HYBAID to discuss how many items of the Equipment
will be manufactured and/or assembled at the MRC
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Laboratory of Molecular Biology (LMB), how the transfer of technology will be
achieved and in what time frame.
3.2 MRC will forthwith communicate to HYBAID all technical information
know-how, manufacturing techniques, engineering data, chemical formulae,
specifications of materials and other information in the possession of MRC
relating to or in respect of or for use with the processes and methods of
working which have been developed or acquired by MRC relating to or in respect
of or for the manufacture or use of the Equipment and the Software and will from
time to time provide HYBAID with such further information and documentation as
is necessary to enable HYBAID to manufacture and sell the Equipment.
CONSIDERATION
4.1 If ICRF so require, Hybaid will sell the first example of the Xxxx XX
version of the Equipment to ICRF at the preferential price of pound sterling
50,000 or such higher price as is agreed between MRC and ICRF.
4.2 MRC will receive a 5% (five percent) royalty of the net selling price
of Xxxx XX versions of the Equipment manufactured by HYBAID or on their behalf
during the continuation of this Agreement.
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4.3 MRC will also receive a 5% (five per cent) royalty of the net selling
price of improved versions of the equipment manufactured by Hybaid or on their
behalf during the first five years of the term of this Agreement.
4.4 MRC will also receive a royalty on improved versions of the equipment
manufactured by Hybaid or on their behalf during the second five years of the
term of this Agreement. The rate of that royalty shall be such percentage as is
agreed by the parties to be reasonable having regard to their respective
contributions to the development of such improved version, and in default of
agreement such percentage shall be determined by an arbitrator appointed on the
application of either party by the President for the time being of the Law
Society.
4.5 During the period of three years from the first sale by HYBAID of the
Equipment and provided that the information communicated pursuant to clause 3.2
hereof is sufficient for Hybaid to commence the manufacture of the Equipment,
MRC will receive a minimum royalty each year equivalent to a royalty at the rate
specified in clause 4.2 on the sale of two Xxxx XX versions of the Equipment, or
improved versions of the Xxxx XX version of the Equipment for use in the field
of Molecular Biology, whichever is the greater.
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4.6 In relation to items manufactured by HYBAID pursuant to the Licence
granted in clause 2.4, MRC will receive such reduced royalty as is agreed by the
parties to be reasonable having regard to the effort and expense incurred by
Xxxxxx in developing the Equipment for use in other fields or in default of
agreement is determined by an arbitrator appointed on the application of either
party by the President for the time being of the Law Society.
4.7 For the purpose of this clause "net selling price" means the total of
the gross prices billed or otherwise charged for the Equipment or the Software
as the case may be during the continuation of this Agreement less actual returns
and allowances normal cash discounts actually taken VAT or other taxes and all
transport and insurance charges incurred by HYBAID in respect of the delivery of
the Equipment or the Software as the case may be.
PATENT COSTS
5.1 MRC will use its best endeavours to register the Patent which is the
subject of the application referred to in clause 1.1 and will continue to meet
Patent application and maintenance costs relating to that Patent, the ownership
of which will continue to rest with MRC.
5.2 Upon the grant of that Patent the Licence granted by clause 2.1 shall
apply to that Patent.
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5.3 MRC will also apply for and maintain Patents in relation to the
Equipment at the expense of MRC in other countries decided in consultation with
Hybaid.
5.4 MRC authorises Hybaid at its own expense to take such action in the
name of MRC as Xxxxxx considers necessary for the defence of the said Patents
and Patent applications.
LIABILITY
6. HYBAID shall indemnify and hold harmless MRC against all liability,
loss damage, cost and expenses which may result from performance by HYBAID under
the terms and conditions of this Agreement unless such loss, damage, costs or
expenses results from the negligence of MRC, its employees or agents.
TERM AND TERMINATION
7.1 Subject to the provision of sub-clauses 7.3 and 7.4, this Agreement
shall terminate automatically ten years subsequent to the completion by HYBAID
of the manufacture of the first production model of the Equipment but may be
extended by mutual agreement between the parties.
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7.2 Either HYBAID or MRC may terminate this Agreement forthwith by notice
in writing to the other if the other commits a substantial breach of this
Agreement which in the case of a breach capable of remedy shall not have been
remedied within sixty days of the receipt by the party in default of notice
identifying the breach and requiring its remedy.
7.3 MRC may terminate this Agreement forthwith by notice in writing to
HYBAID if HYBAID enters into liquidation whether compulsorily or voluntarily or
compounds with or convenes a meeting of its creditors or has a receiver
appointed over all or part of its assets or takes or suffers any similar actions
in consequences of a debt or ceases for any reason to carry on business.
7.4 The expiration of this Agreement or the termination thereof for
whatever reason shall not affect the accrued rights of the parties arising in
any way out of this Agreement as at the date of expiration or termination and
all provisions which are expressed to survive this Agreement shall remain in
full force and effect.
ASSIGNMENT
8.1 Subject to the provisions of sub-clauses 8.2 and 8.3 below, HYBAID
shall not assign or transfer the said inventions, know-how, Patents or Patent
applications to any third party,
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neither shall either party assign, transfer or in any other manner make over to
any other party the benefit and/or burden of this Agreement without the prior
written consent of MRC in the case of a proposed assignment by Xxxxxx or the
prior written consent of Xxxxxx in the case of a proposed assignment by MRC.
8.2 HYBAID shall be entitled to assign or transfer in the manner prohibited
by Clause 8.1 hereof to an affiliate (as defined in clause 8.4) or to any
company with which it may merge or to any company to which it may transfer its
assets and undertaking provided that such affiliate or other company undertakes
and agrees to observe the rights and/or obligations of HYBAID under the
provisions of this Agreement being assigned or otherwise made over.
8.3 HYBAID shall be entitled to sub-contract any of the manufacture design
or sale of the items to which this Agreement relates and to take any steps
necessary to enable sub-contractors to be able to comply with their resulting
obligations to HYBAID and HYBAID shall also be entitled to provide its
distributors with all information or documentation required to facilitate the
sale of the items to which this Agreement relates.
8.4 The term "affiliate" shall mean any corporation, firm, partnership, or
other entity, whether de jure or de facto, which directly or indirectly owns, is
owned by, or is under common
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ownership with HYBAID, to the extent of at least fifty percent (50%) of the
equity (or such lesser percentage which is the maximum allowed to be owned by a
foreign corporation in a particular jurisdiction) having the power to vote on or
direct the affairs of the entity and any person, firm, partnership, corporation
or other entity presently controlled by, controlling or under common control
with HYBAID.
GOVERNING LAW AND JURISDICTION
9. The validity, construction and performance of this Agreement shall be
governed by English Law.
NOTICE
10. Any notice or other document given under this Agreement shall be in
writing and shall be deemed to have been duly given if left at or sent by:
(a) first class post or express or air mail or other fast postal
service or
(b) registered post or
(c) telex, facsimile or other electronic media, to a party at the
address or telex number set out below for such party or such other
address as the party may from time to time designate by written
notice to the other(s).
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Address of HYBAID HYBAID LIMITED
000-000 Xxxxxxxxxx Xxxx
Xxxxxxxxxx,
Xxxxxxxxx XXxx 0XX
Telex No. 8951670 Labimp G
Fax No. 000 000 0000
Address of the Medical Research Council
00 Xxxx Xxxxxxxx
Xxxxxx XxX 0XX
Telex No. 24897 Medresco London
Fax No. 000 000 0000
Signed for and on behalf of the Medical Research Council
Signature /s/ X.X. Xxxxx
...................................
Name (Printed) X.X. Xxxxx
..............................
Title Administrative Director, Cambridge
.......................................
Date 16th July 1992
.......................................
Signed for and on behalf of HYBAID
Signature /s/ Xxxxx X. X'Xxxxxxx
...................................
Name (Printed) Xxxxx X. X'Xxxxxxx
..............................
Title Managing Director
.......................................
Date 16th July 1992
........................................
Signed in the presence of [SIG]
..................................
Name (Printed)
.............................................
