1
Exhibit 10.20
XXXXXXXXXX LICENSE AGREEMENT - HUMAN MARKET
This License Agreement (the "Agreement") is entered into and made
effective this 1st day of April, 1997, (the "EFFECTIVE DATE") between Becton,
Xxxxxxxxx and Company, a New Jersey corporation, whose principal place of
business is at 0 Xxxxxx Xxxxx, Xxxxxxxx Xxxxx, Xxx Xxxxxx, 00000 (hereinafter
referred to as "BECTON") and Quidel Corporation, a Delaware corporation, whose
principal place of business is at 00000 XxXxxxxx Xxxxx, Xxx Xxxxx, XX 00000
(hereinafter referred to as "QUIDEL").
WHEREAS, BECTON and QUIDEL are presently engaged in litigation
involving BECTON patents in Becton Xxxxxxxxx and Co. v. Quidel Corporation, No.
97-167 (U.S. Dist. Ct., D. Del.,); and
WHEREAS, the parties wish amicably to settle their differences and
terminate such litigation under the terms hereinafter set forth.
For and in consideration of the mutual promises and covenants set
forth below, BECTON and QUIDEL agree as follows:
1.0 DEFINITIONS.
1.1 "AFFILIATE" shall mean any corporation or other business
entity controlled by, controlling or under common control with the recited
entity. For this purpose "control" shall mean direct or indirect beneficial
ownership of at least fifty-one percent (51%) of the voting stock of, or at
least a fifty-one percent (51%) interest in the income of such corporation or
other business entity.
1.2 "LICENSED PATENT(S)" shall mean United States Letters Patent
No. 5,591,645, and any continuation, division, re-examination, or reissue
thereof, and the foreign counterpart patents granted on applications claiming
priority thereto; a list of such applications and patents as of the EFFECTIVE
DATE is set forth in Appendix A.
1.3 "PRODUCT" shall mean the QUIDEL PRODUCT(S) listed in Appendix
B or any product, device, instrument, kit or component thereof, the making,
using, importing, offering for sale or selling of which would, in the absence
of the license granted hereunder, infringe, contribute to the infringement of,
or induce the infringements of any claim of a LICENSED PATENT. For the
purposes of this Agreement, those products listed in Appendix B shall, without
limitation, be PRODUCTS hereunder.
1.4 (a) "NET SALES" shall mean the sum of all amounts
invoiced on account of sale of PRODUCTS by QUIDEL to non-affiliated third party
purchasers of PRODUCTS, less (i) returns, allowances, rebates, and cash
discounts to purchasers allowed and taken, (ii) amounts for transportation or
shipping charges to purchasers shown on the invoice, and (iii) taxes and duties
levied on the sale of PRODUCTS actually paid.
(b) In the instance where a PRODUCT is sold by QUIDEL to
a purchaser with which the seller does not deal at arms length, the NET SALES
for the purposes of determining the royalties shall be the highest current NET
SALES for the same or similar items sold at arms length under similar market
conditions.
(c) In the instance where a PRODUCT is not sold, but is
OTHERWISE DISPOSED OF (as defined in Paragraph 1.5 below), the NET SALES for
the purposes of determining the royalties shall be the highest current NET
SALES at which PRODUCTS of the same or similar kind and quality, and in
substantially similar quantities, are sold or offered for sale.
1.5 "OTHERWISE DISPOSED OF" shall mean and include:
(i) the delivery of any amount of PRODUCT, other than
nominal quantities of free samples or free replacements, by QUIDEL to others in
any transaction other than a sale, regardless of the basis of consideration, if
any; or
(ii) the placing into use of any PRODUCT by QUIDEL for any
purpose, other than its internal routine testing, provided that the scrapping
or destruction (except if consideration is received therefor) of any PRODUCT
shall not fall within the definition of "OTHERWISE DISPOSED OF" and no value in
respect thereof shall be included in calculating NET SALES. A PRODUCT shall be
considered OTHERWISE DISPOSED OF when used or shipped by, or on behalf of,
QUIDEL.
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Exhibit 10.20
1.6 "QUARTER" shall mean any period of three consecutive calendar
months beginning January 1, April 1, July 1, and October 1, occurring during
the term of this Agreement.
1.7 "XXXXXXXX LICENSE AGREEMENTS" shall mean the two (2) license
agreements entered into between BECTON and QUIDEL on October 10, 1991; and on
the same date as this Agreement, respectively, with respect to United States
Letters Patent No. 4,703,017, and its foreign counterparts, issued to Xxxxxxxx
et al.
2.0 LICENSE GRANT.
2.1 Subject to the terms and conditions herein, BECTON hereby
grants to QUIDEL, who accepts the same, a non-exclusive, non- transferable
(except to an AFFILIATE) right and license under the LICENSED PATENTS, without
the right to sublicense, to make, have made for its own use and sale, use,
offer for sale and import PRODUCT and to practice the methods claimed in the
LICENSED PATENTS in connection with such PRODUCT, and to extend to its
customers purchasing PRODUCT the right to use and sell the PRODUCT purchased
and to practice the methods claimed in the LICENSED PATENTS in connection with
such PRODUCT, all of the foregoing limited expressly to the field of all human
in vitro manually formatted immunodiagnostic assays.
2.2 In the event that QUIDEL sells PRODUCT(S) to a third party
that has a non-exclusive, non-transferable right and license under the LICENSED
PATENT(S), the license granted to QUIDEL herein shall not extend to such sales,
provided however, QUIDEL shall be permitted to make PRODUCTS for any third
party licensee having the right and license under the LICENSED PATENT(S) to
have such PRODUCTS made for it, and to sell those PRODUCTS to such licensee
without any obligation to pay royalties to BECTON thereon since the third party
(without waiving any right of BECTON to collect royalties from QUIDEL in the
event the third party licensee fails to account for and pay royalties to BECTON
on its sales of such PRODUCTS) licensee has the obligation, under its license
with BECTON, to pay royalties on the sales of PRODUCTS made for it. BECTON
agrees to provide QUIDEL with the names of such third party licensees which
have the right and license to have PRODUCTS made for it.
2.3 BECTON further hereby releases QUIDEL from any liability for
infringement of the LICENSED PATENTS arising from the sale of PRODUCTS by
QUIDEL which occurred prior to the EFFECTIVE DATE.
3.0 TERM.
3.1 This Agreement shall become effective as of the EFFECTIVE DATE
hereof and shall continue in effect until the last to expire of the LICENSED
PATENTS.
4.0 PAYMENT.
4.1 In consideration for the license granted hereunder, QUIDEL
shall pay to BECTON a royalty at the rate of five and one-quarter percent
(5-1/4%) of the NET SALES of all PRODUCTS sold, or OTHERWISE DISPOSED OF on or
subsequent to the EFFECTIVE DATE. Royalties may be payable under both this
Agreement and any of the XXXXXXXX LICENSE AGREEMENTS for the same PRODUCT(S).
In that event, QUIDEL shall be entitled to a credit, on a country-by-country
basis, where sales of the same PRODUCTS occurred, for any royalties payable and
actually paid under any of the XXXXXXXX LICENSE AGREEMENTS. The magnitude of
this credit shall be on a dollar-for-dollar basis up to, but not in excess of,
the royalty payable hereunder for the sale of the particular PRODUCT. It is
expressly recognized that, under certain of the XXXXXXXX LICENSE AGREEMENTS,
QUIDEL may be required to pay more than the royalty payable hereunder for the
sale of a PRODUCT. However, in no event shall the credit exceed the royalty
which would be payable hereunder for the sale of that same PRODUCT. QUIDEL
shall note this credit in the reports filed in accordance with Paragraph 4.6.
4.2 QUIDEL's obligation to pay royalties under Paragraph 4.1 on
PRODUCT shall terminate, on a country by country basis, upon expiration of the
last of the LICENSED PATENTS in the country of sale or manufacture, as
applicable. Further, this obligation shall cease in the event that a court of
competent jurisdiction in the country in question renders a final decision from
which no appeal is or can be taken, that all of the LICENSED PATENTS in that
country are invalid and/or unenforceable. If in such decision one or more
claims of the LICENSED PATENTS are not declared invalid or unenforceable, the
obligation of QUIDEL to pay with respect to PRODUCTS covered by the remaining
claims shall not be affected.
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Exhibit 10.20
4.3 For all sales and royalty-bearing transfers and uses occurring
on or subsequent to the EFFECTIVE DATE, QUIDEL shall provide written reports to
BECTON within sixty (60) days after the end of each QUARTER, stating in each
report the analyte name and the NET SALES of each PRODUCT sold or OTHERWISE
DISPOSED OF during such QUARTER and upon which royalties are payable as
provided in this Paragraph.
4.4 For all sales and other dispositions of PRODUCTS occurring on
or subsequent to the EFFECTIVE DATE that QUIDEL makes to a third party licensee
of BECTON, QUIDEL shall provide separate written reports to BECTON within sixty
(60) days after the end of each QUARTER, stating in each report the analyte
name, the identity of the third party licensee(s) and the NET SALES of each
PRODUCT sold or OTHERWISE DISPOSED OF during such QUARTER and upon which
royalties are not payable as provided in this Paragraph, consistent with the
provisions of Paragraph 2.2, above.
4.5 (a) Concurrently with the making of each report QUIDEL
shall pay to BECTON all royalties due in the amount specified in Paragraph 4.1
on the NET SALES of all PRODUCTS included in the report.
(b) Any late payment shall bear interest at the rate of
one percent (1%) per month.
4.6 All payments shall be made hereunder in United States Dollars;
provided, however, that if the proceeds of the sales upon which such royalty
payments are based are received by QUIDEL in a foreign currency or other form
that is not convertible or exportable in Dollars, and QUIDEL does not have
ongoing business operations or bank accounts in the country in which the
currency is not convertible or exportable, QUIDEL shall pay such royalties in
the currency of the country in which such sales were made by depositing such
royalties in BECTON's name in a bank designated by BECTON in such country.
Royalties in Dollars shall be computed by converting the royalty in the
currency of the country in which the sales were made at the exchange rate for
Dollars prevailing at the close of the last business day of the QUARTER for
which royalties are being calculated as published the following day in the Wall
Street Journal (or a comparable publication agreed upon from time to time by
the parties), and with countries for which rates are not published, the
exchange rate fixed for such date by the appropriate United States governmental
agency.
4.7 In the event that any taxes, withholding or otherwise, are
levied by any taxing authority in connection with accrual or payment of any
royalties payable to BECTON under this agreement, QUIDEL shall have the right
to pay such taxes to the local tax authorities on behalf of BECTON and the
payment to BECTON of the net amount due, after reduction by the amount of such
taxes, shall fully satisfy QUIDEL's royalty obligations under this Agreement,
so long as appropriate documentation of such tax payment is provided to BECTON.
4.8 All payments made hereunder shall be made to BECTON at the
address set forth in Article 7 of this Agreement or at such changed address as
BECTON shall specify by written notice.
4.9 QUIDEL shall keep detailed records of all PRODUCT sold or
OTHERWISE DISPOSED OF to permit verification of the reports and payments made
to BECTON. At BECTON's expense and request and upon reasonable notice, QUIDEL
shall permit such records to be examined by independent public accountants
designated by BECTON and reasonably acceptable to QUIDEL. Such examination
shall take place not more than once each year.
4.10 In the event that an examination by BECTON of QUIDEL's records
and books of account reveals an underpayment to BECTON, QUIDEL shall
immediately pay BECTON the deficiency, plus interest at a rate of one percent
(1%) per month from the date the underpayment occurred. In the event that such
underpayment amounts to ten percent (10%) or more of the total amount payable
for the period examined, QUIDEL shall also reimburse BECTON for all
out-of-pocket expense of the examination.
4.11 Within ninety (90) days after the release by QUIDEL of any
human in vitro manually formatted immunodiagnostic products for sale, QUIDEL
will notify BECTON in writing of the same. Such product shall be included in
Appendix B unless QUIDEL specifically provides information indicating that such
product is not a PRODUCT hereunder.
5.0 TRANSFERABILITY OF RIGHTS AND OBLIGATIONS.
5.1 This Agreement and the license granted under it may not be
assigned or sold by QUIDEL without the express written consent of BECTON,
except to an AFFILIATE or to an entity acquiring substantially all of QUIDEL's
business relating to
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Exhibit 10.20
in vitro immunodiagnostic assay technology. If QUIDEL is permitted to assign
this Agreement, the assignee shall first agree, in writing, to assume all
obligations of QUIDEL created by this Agreement.
5.2 BECTON may freely assign this Agreement in whole or in part
and any or all of the LICENSED PATENTS.
5.3 This Agreement, and each and every one of the terms and
conditions thereof, shall inure to the benefit of and be binding upon the
permitted successors and assignees of both parties.
6.0 ACKNOWLEDGMENT OF VALIDITY AND ENFORCEABILITY.
6.1 QUIDEL acknowledges the validity and enforceability of United
States Patent No. 5,591,645 and agrees that it will not challenge directly or
indirectly, or assist others in any way in challenging, the validity or
enforceability of this patent, in any court or in the U.S. Patent and Trademark
Office or any other Patent Office.
6.2 Further, it is expressly agreed that QUIDEL will, upon the
EFFECTIVE DATE, cease any and all active participation in, and where permitted,
withdraw from, any oppositions, protests or similar proceedings against any
LICENSED PATENT including any patent or application listed now or later in
Appendix A.
6.3 If QUIDEL breaches this Article, BECTON will be entitled, to
the extent permitted by law, to specific performance of QUIDEL's obligations as
set forth in this paragraph and BECTON shall be entitled to terminate this
Agreement forthwith, notwithstanding any provisions to the contrary set forth
in Paragraph 8.1.
7.0 NOTICE.
7.1 Any notice, payment, report, or other correspondence
(hereinafter collectively referred to as "correspondence") required or
permitted to be given hereunder shall be mailed by certified mail or delivery
by hand or overnight courier to the party to whom such correspondence is
required or permitted to be given hereunder If mailed, any such notice shall
be deemed to have been given when received by the party to whom such
correspondence is given, as evidenced by written and dated receipt of the
receiving party.
7.2 Alternatively, correspondence provided for in this Agreement
shall be deemed sufficiently given by the party sending the correspondence when
sent by facsimile to the party to whom the correspondence is addressed. A
confirmation copy of the correspondence will be sent by Certified or Registered
Mail. The date of the facsimile transmission will constitute the date of
receipt of the correspondence.
All correspondence to QUIDEL shall be addressed as follows:
Quidel Corporation
00000 XxXxxxxx Xxxxx
Xxx Xxxxx, Xxxxxxxxxx 00000
Attention: Xxxxxx Xxxxxxx, President and CEO
All correspondence to BECTON, except for royalty payments,
shall be addressed as follows:
Becton, Xxxxxxxxx and Company
0 Xxxxxx Xxxxx
Xxxxxxxx Xxxxx, Xxx Xxxxxx 00000
Attention: Chief Patent and Licensing Counsel
All royalty payments to BECTON shall be addressed as follows:
Becton Xxxxxxxxx Microbiology Systems
0 Xxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxx 00000-0000
Attention: Manager, Financial Reporting
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Exhibit 10.20
Either party may change the address to which correspondence to it is to be
addressed by notification as provided for herein.
8.0 TERMINATION.
8.1 BECTON shall have the right to terminate this Agreement if
QUIDEL commits a material breach of an obligation under this Agreement,
including the failure to make timely royalty payments hereunder, and continues
in default for more than thirty (30) days after receiving written notice from
BECTON of such default, such termination to be effective immediately upon
further written notice to QUIDEL after such thirty (30) day period.
8.2 In the event that QUIDEL shall be adjudicated bankrupt, go
into liquidation, receivership or trusteeship, make a composition with its
creditors or enter into any similar proceeding of the same nature, then BECTON
shall have the right without liability therefor to terminate this Agreement
forthwith by notice in writing to QUIDEL.
9.0 GOVERNING LAW.
9.1 This Agreement shall be governed by, interpreted in accordance
with and enforced under the laws of the State of Delaware, U.S.A. (regardless
of its or any other jurisdiction's choice of law principles), or, as necessary,
the laws of the United States of America. The Federal District Court of the
District of Delaware shall have exclusive jurisdiction in all matters arising
under this Agreement, and the parties hereto expressly consent and submit to
such jurisdiction.
10.0 REPRESENTATIONS, WARRANTIES AND LIMITATIONS.
10.1 Nothing in this Agreement shall be construed as:
(a) A warranty or representation by BECTON as to the
validity or enforceability of any LICENSED PATENTS; or
(b) A warranty or representation by BECTON that anything
made, used, sold or OTHERWISE DISPOSED OF under the license granted in this
Agreement, is or will be free from infringement of patents or other rights of
third parties; or
(c) A requirement that BECTON shall file any patent
application or secure any patent; or
(d) An obligation of either party to bring or prosecute
actions or suits against third parties for infringement of any patents; or
(e) Conferring a right to use in advertising, publicity,
or the like any name, tradename, or trademark of QUIDEL or BECTON; or
(f) Granting by implication, estoppel or otherwise any
licenses or rights under any letters patents and applications for letters
patents other than under the LICENSED PATENTS; or
(g) An obligation by BECTON to furnish know-how or any
other technical information not disclosed in the LICENSED PATENTS.
10.2 BECTON represents to QUIDEL that BECTON is the owner of the
LICENSED PATENTS and has the right to grant the license hereunder.
10.3 Each party represents and warrants that it has full authority
to enter into and become bound by the terms and conditions of this Agreement
and that its execution of this Agreement will not violate, contravene or be in
conflict with any law, rule, by-law, article of incorporation, order,
regulation or other agreement.
11.0 DISCLAIMER AND HOLD HARMLESS PROVISION.
11.1 It is understood and agreed by and between the parties hereto
that nothing contained in this Agreement shall constitute or be construed to
constitute any undertaking, representation, suggestion, inducement, warranty,
assurance or guarantee whatsoever by either party in connection with PRODUCTS
or any component, product, material, service, process or apparatus with
43
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Exhibit 10.20
respect to safety, quality, yield, production, cost, profit, saleability,
licensability, demand, utility, performance, availability of raw materials,
accident or injury to person or property.
11.2 QUIDEL expressly indemnifies and holds BECTON, its affiliates,
its successors, and assigns and its officers, directors and employees harmless
from and against any and all claims, liabilities, damages, costs, expenses,
and/or actions of any kind whatsoever which arise from or are connected with
the manufacture, use, lease, sale, or other disposition of PRODUCTS under the
LICENSED PATENTS.
11.3 Neither of the parties hereto shall be liable in damages or
have the right to cancel for any delay or default in performing hereunder
(other than delay or default in the payment of money) if such delay or default
is caused by conditions beyond its control, including but not limited to Acts
of God, governmental restrictions, continuing domestic or international
problems such as war or insurrections, strikes, fires, flood, work stoppages,
embargoes and/or other casualty or cause; provided, however, that any party
hereto shall have the right to terminate this Agreement upon thirty (30) days
prior written notice if either party is unable to fulfill its obligations under
this Agreement due to any of the above-mentioned causes and such inability
continues for a period of six (6) months.
12.0 CAPTIONS.
12.1 The captions and paragraph headings of this Agreement are
solely for the convenience of reference and shall not affect its
interpretation.
13.0 SEVERABILITY.
13.1 Should any part or provision of this Agreement be held
unenforceable or in conflict with the applicable laws or regulations of any
jurisdiction, the invalid or unenforceable part or provision shall be replaced
with a provision which accomplishes, to the extent possible, the original
business purpose of such part or provision in a valid and enforceable manner,
and the remainder of this Agreement shall remain binding upon the parties
hereto.
14.0 WAIVER.
14.1 No failure or delay on the part of a party in exercising any
right hereunder shall operate as a waiver of, or impair, any such right. No
single or partial exercise of any such right shall preclude any other or
further exercise thereof or the exercise of any other right. No waiver of any
such right shall be deemed a waiver of any other right hereunder.
15.0 MOST FAVORED LICENSEE.
15.1 In the event that after the EFFECTIVE DATE of this Agreement
BECTON enters into a license agreement with a third party, in which such third
party is licensed to make, use and sell any PRODUCTS at a royalty rate which is
different from the royalty rate set forth in this Agreement, BECTON shall
within thirty (30) days after the signing of such license agreement, disclose
to QUIDEL the royalty rate in the third party agreement. BECTON will provide
such information to QUIDEL's attorneys who will maintain the information in
confidence and may disclose it to others within QUIDEL only on a confidential,
need-to-know basis.
15.2 Concurrent with the above report, BECTON will extend to QUIDEL
the option of substituting the royalty rate in the third party agreement for
the royalty rate in this Agreement, subject to the following provision:
(a) The different royalty rate shall become effective as of the
date of its written acceptance by QUIDEL and shall apply only to sales
occurring thereafter. In no event shall QUIDEL be entitled to a refund or
credit of any monies paid or payable to BECTON prior to the acceptance of the
different royalty rate.
15.3 In the event that QUIDEL does not accept the different royalty
rate relative to Paragraph 15.2 within thirty (30) days after QUIDEL receives
notice from BECTON, QUIDEL's option to substitute the different royalty rate
shall be deemed forever waived.
16.0 SURVIVAL.
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Exhibit 10.20
16.1 The provisions of Paragraphs 9, 10, and 11 shall survive the
termination or expiration of this Agreement and shall remain in full force and
effect. Furthermore, termination or expiration shall not affect, inter alia;
(a) QUIDEL's obligation to supply reports as specified in
Paragraph 4 of this Agreement;
(b) BECTON's right to receive or recover and QUIDEL's
obligation to pay royalties accrued or accruable for payment at the time of any
termination;
(c) QUIDEL's obligation to maintain records and BECTON's
right to conduct a final examination of QUIDEL's books and records in
accordance with Paragraph 4.8 of this Agreement; and
(d) Licenses and releases running in favor of customers
or transferees of either party in respect to PRODUCT sold or OTHERWISE DISPOSED
OF prior to termination of this Agreement.
16.2 The provisions of this Agreement which do not survive
termination or expiration hereof (as the case may be) shall, nonetheless, be
controlling on, and shall be used in construing and interpreting, the rights
and obligations of the parties hereto with regard to any dispute, controversy
or claim which may arise under, out of, in connection with, or relating to this
Agreement.
17.0 ENTIRE AGREEMENT.
17.1 This Agreement constitutes the entire agreement between the
parties hereto respecting the subject matter hereof and the license granted
hereunder, and supersedes and terminates all prior agreements respecting the
same subject matter hereof, whether written or oral, and may be amended only by
an instrument in writing executed by both parties hereto, however the XXXXXXXX
LICENSE AGREEMENTS shall remain in full force and effect and shall be
unaffected by this Agreement.
18.0 DISPUTE RELATIONS.
18.1 The parties shall attempt in good faith to resolve any dispute
arising out of or relating to this Agreement promptly by negotiations between
executives who have authority to settle such dispute. Any party may give the
other party(ies) written notice of any dispute hereunder not resolved in the
normal course of business. Within twenty (20) days following delivery of such
notice, executives of both parties shall discuss by telephone or meet at a
mutually acceptable time and place, and thereafter as often as they reasonably
deem necessary, to exchange relevant information and to attempt to resolve such
dispute. If the matter has not been resolved within sixty (60) days following
the disputing party's notice, or if the parties fail to discuss or meet within
twenty (20) days, either party may initiate mediation of the controversy or
claim under the then-current Center for Public Resource Procedure for
Mediation of Business Disputes in New York. No party shall institute any court
proceedings until the expiration of one hundred and twenty (120) days from the
initiation of negotiations. At the conclusion of this period, absent any
resolution of the dispute or further agreement between the parties to extend
this period, either party may file suit for the subject matter of the dispute
only.
18.2 If a negotiator intends to be accompanied at a telephone
conference or a meeting by an attorney, the other negotiator shall be given at
least three (3) business days' notice of such intention and may also be
accompanied by an attorney. All negotiations pursuant to this clause are
confidential and shall be treated as comprise and settlement negotiations for
purposes of the Federal Rules of Evidence any state rules of evidence.
19.0 CONFIDENTIALITY.
19.1 This Agreement, its terms, and any information provided by a
party hereto pursuant to this Agreement, shall be kept in strictest confidence
by all parties hereto, except that the parties may disclose the terms of the
Agreement as required by law, as required by Most Favored Nations notification
provisions for other licensees of the LICENSED PATENTS, and as required by the
parties' respective accountants, auditors, attorneys, officers, and employees
with a need to know, as well as to prospective purchasers of the business
relating to PRODUCTS provided that any such parties to whom disclosure is
permitted have agreed to keep such terms confidential. Except as provided
above, no party hereto shall provide this Agreement or any of its terms to any
person or entity not a party hereto. Notwithstanding any of the above, the
parties hereto may disclose publicly that BECTON has granted and QUIDEL has
accepted a non-exclusive right and license under the LICENSED PATENTS, in
accordance with Article 21.0 below.
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Exhibit 10.20
19.2 Notwithstanding Paragraph 19.1 if either of the parties hereto
is requested or required (by deposition questions, interrogatories, requests
for information or documents as required by or in any legal proceedings,
subpoenas, civil investigative demands, or any other similar compulsory
processes) to disclose any of the terms of this Agreement, each party so
required shall provide the other party with prompt written notice of any such
request or requirement so that such other party may seek a protective order or
other appropriate remedy or waive compliance with the provisions of Article
19.0 of this Agreement.
19.3 Notwithstanding the foregoing, neither of the parties shall be
prohibited from disclosing the terms of this Agreement in a Quarterly Report on
Form 10-Q or Annual Report on Form 10-K, if, upon the advise of legal counsel,
such disclosure is required by the rules and regulations of the Securities and
Exchange Commissions, including but not limited to Regulations S-K and S-X.
20.0 DISMISSAL OF THE LITIGATION.
20.1 Simultaneous with the execution of this License Agreement, the
parties hereto shall execute the Settlement Agreement attached hereto as
Appendix C. The parties hereto also agree to direct their respective counsel
to effectuate the dismissal of the litigation pursuant to the Settlement
Agreement.
21.0 PRESS RELEASE AND PUBLIC ANNOUNCEMENTS.
21.1 Any press release or other public announcement of this
agreement or the settlement of the litigation shall be sent to the other party
for review at least two (2) business days prior to the proposed release or
announcement date by the party desiring to make the same. No press release or
other announcement unacceptable to either party shall be made. Apart from any
such agreed upon release or announcement, both parties shall keep confidential
the existence of their agreement and its terms except to the extent that is
required by law or regulation, in which event the parties shall consult on the
same basis as for a press release or public announcement, to permit the non-
disclosing party to obtain a protective order or other process to limit such
required disclosure. QUIDEL may inform its customers, agents, distributors or
AFFILIATES of this Agreement, subject to such customers, agents, distributors,
or AFFILIATES keeping such information confidential on the same terms as apply
to QUIDEL hereunder.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be executed by their respective officers thereunto duly authorized to be
effective as of the EFFECTIVE DATE.
BECTON, XXXXXXXXX AND COMPANY QUIDEL CORPORATION
By: /S/ XXXXX X. XXXXXX By /S/ XXXXXX X. XXXXXXX
---------------------------- ---------------------------------
Date: June 13, 1997 Date: June 13, 1997
-------------------------- ----------------------------
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Exhibit 10.20
APPENDIX A
U.S. Patent No. 5,591,645 - issued January 7, 1997
Foreign counterparts:
Country Patent No. Appln. No. Issue/Filing Date
------- ---------- ---------- -----------------
EPO 0284232 0284232A1 June 7, 0000
Xxxxxx 1,303,983 557,276 June 23, 0000
Xxxxx 68000/88 68000/88 Xxxxx 00, 0000
Xxxxxxxxx 605565 13595/88 May 9, 0000
Xxxxxxx 1681/88 1681/88 Xxxxx 00, 0000
Xxxxxxx 880764 880764 November 15, 0000
Xxxxxx XX00000 77101765 Xxxxxx 0, 0000
Xxxxxxxx MY-103176 PI 8800068 April 30, 1993
Korea 42295 3311/88 June 10, 1991
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Exhibit 10.20
APPENDIX B
PRODUCTS
Conceive 1-Step Pregnancy
QuickVue One Step hCG-Urine
QuickVue One Step hCG-Combo
Q Test Pregnancy
Conceive 1-Step Ovulation Predictor
QuickVue Chlamydia
QuickVue In-Line One-Step Strep A
QuickVue Flex Strep A
QuickVue H. Pylori
48
11
Exhibit 10.20
APPENDIX C
[To Be Added]
49
