EXHIBIT 10(y)
DISTRIBUTION AND SUPPLY AGREEMENT
BETWEEN ENZO BIOCHEM, INC. AND CORANGE INTERNATIONAL LIMITED
April 25, 1994
This agreement is entered into effective this 25th day of April, 1994, by
and among Enzo Biochem, Inc. and Enzo Diagnostics, Inc., a wholly-owned
subsidiary of Enzo Biochem, Inc. (collectively referred to hereafter as "ENZO"),
New York corporations having their principal places of business at 00 Xxxxxxxxx
Xxxxxxxxx, Xxxxxxxxxxx, XX 00000, U.S.A., and Corange International Limited, a
Bermuda corporation having its principal place of business at 00 Xxxxxx Xxxxxx,
Xxxxxxxx, Xxxxxxx HM HX ("CIL").
WHEREAS, ENZO owns or has rights to certain PATENTS listed in APPENDIX A
("PATENTS");
WHEREAS, CIL wishes to market and sell certain PRODUCTS ("PRODUCT(S)"),
covered by claims of PATENTS, into the research products market worldwide;
WHEREAS, ENZO wishes CIL to market and sell certain PRODUCTS, covered by
claims of PATENTS, into the research products market worldwide;
WHEREAS, ENZO manufactures or will manufacture certain PRODUCTS;
WHEREAS, ENZO desires to have CIL manufacture for ENZO certain PRODUCTS
within the scope of this Agreement;
NOW, THEREFORE, in consideration of the mutual agreements hereinafter set
forth, the parties hereto agree as follows:
I. Definitions
AFFILIATE means an entity controlled by or under common control with
another entity within the Corange Limited group of companies. For purposes of
this Agreement, control shall mean the ownership of a majority of the common
stock or the majority of the voting equity interest. Unless the context
otherwise requires, "CIL" shall be deemed to refer to Corange International
Limited and its AFFILIATES.
GROUP A PRODUCT means a product that is a nucleotide, oligonucleotide or
polynucleotide with a signal generating moiety, the manufacture, use or sale of
which is covered by claims of a PATENT and that is not a group A1 product. The
current GROUP A PRODUCTS are listed on EXHIBIT A to this Agreement.
GROUP A1 PRODUCT means a product that is a nucleotide, oligonucleotide or
polynucleotide with a signal generating moiety, the manufacture, use or sale of
which is covered by claims of a PATENT and that requires additional complex
proprietary manufacturing know-how CIL. The current GROUP A1 PRODUCTS are listed
on EXHIBIT A1 to this Agreement.
GROUP C PRODUCT means a product (i) is not a GROUP A PRODUCT or a GROUP A1
PRODUCT, the use of which is covered by claims of a PATENT. The current GROUP C
PRODUCTS are listed on EXHIBIT C to this Agreement.
GROUP D PRODUCT means a product that may or may not infringe claims of a
patent which the parties have agreed that CIL shall manufacture, or have
manufactured, and sell.
GROUP E1 PRODUCT means a KIT manufactured by ENZO. The current GROUP E1
PRODUCTS are listed on EXHIBIT E1 to this Agreement.
GROUP E2 PRODUCT means a product currently manufactured by ENZO that is not
part of a KIT. The current GROUP E2 PRODUCTS are listed on EXHIBIT E2 to this
Agreement.
GROUP K PRODUCT means a KIT sold by CIL that contains RAW MATERIALS. The
current GROUP K PRODUCTS are listed on EXHIBIT K to this Agreement.
GROUP K1 PRODUCT means (i) a KIT sold by CIL that does not contain RAW
MATERIALS but contains a component that, if sold individually, would be a GROUP
K1 PRODUCT, or (ii) a component requiring manufacturing processes in addition to
labeling on the base, sugar or phosphate. The current GROUP K1 PRODUCTS are
listed on EXHIBIT K1 to this Agreement.
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ENZ-1 DIV 3 CLAIMS means the claims contained in the U.S. patent
application USSN 07/130,170, filed December 7, 1987, as allowed by the United
States Patent and Trademark Office in the notice of allowance dated November,
1993, or the equivalent claims (or equivalent composition claims) in a foreign
patent.
ENZ-7 COMPOSITION CLAIMS means composition or apparatus claims contained in
U.S. Patent No. 4,994,373 (USSN 385986 filed July 20, 1989) or any patent
issuing from any parent, continuation, reissue or division of such patent, or
any foreign counterpart thereto or comparable claims in any PATENT, that, in
mutual agreement between CIL and ENZO or through the final judgment of a court
of law, are infringed by a product sold by CIL.
ENZO SELLING PRICE means the higher of (i) the actual selling price of a
GROUP A1, C, K OR K1 product less the usual trade discounts actually allowed,
and credits actually given for returns allowances or trades; or *.
PATENTS means patents throughout the world owned or licensed by ENZO.
Issued PATENTS are listed in APPENDIX A to this Agreement, which APPENDIX is
subject to periodic supplementation upon the issuance of PATENTS.
PRODUCTS means collectively all GROUP A PRODUCTS, GROUP A1 PRODUCTS, GROUP
C PRODUCTS, GROUP D PRODUCTS, GROUP E1 PRODUCTS, GROUP E2 PRODUCTS, GROUP K
PRODUCTS, and GROUP K1 PRODUCTS.
FORCE MAJEURE means a cause beyond the control of a party, including but
not limited to acts of God, acts, laws or regulations of any government, civil
disorder, strikes, destruction of production facilities or material by fire,
water, earthquake or storm, epidemics and failures of public utilities or common
carriers.
KIT means a PRODUCT containing two or more vials of reagents or other
components that are optimized to allow the user to perform a function.
RAW MATERIALS means a GROUP A PRODUCT or a material that is included as a
component of a KIT for which ENZO has PATENTS.
MANUFACTURING TRANSITION PERIOD is defined in Section VII.
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* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
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SELLING PRICE means the actual selling price of a PRODUCT to a CIL customer
that is the end user of the PRODUCT, less the usual trade discounts actually
allowed, and credits actually given for returns, allowances or trades.
II. Sale Of PRODUCTS.
ENZO hereby appoints, and CIL accepts appointment, subject to the
conditions set forth herein, as a nonexclusive distributor for the distribution
and sale of PRODUCTS to the research market subject to the conditions of this
Agreement.
A. GROUP A PRODUCTS.
1. Manufacture and Sale. ENZO or its designee shall manufacture, sell
and deliver to CIL and CIL shall purchase exclusively from ENZO (after the
MANUFACTURING TRANSITION PERIOD with respect to each GROUP A PRODUCT) such
quantities of the GROUP A PRODUCTS as CIL may order in accordance with this
Agreement. CIL shall have the right to sell GROUP A PRODUCTS worldwide within
the scope of this Agreement.
2. Packaging. Each of the GROUP A PRODUCTS shall be packaged in
CIL-designated packaging and labeling; provided, however, that such packaging
shall acknowledge ENZO as provided in this Agreement and that such packaging
shall not be changed by CIL to become unduly burdensome to ENZO.
3. Specifications. Each GROUP A PRODUCT shall conform to the
specifications for it agreed to by ENZO and by CIL.
4. Changes to Exhibit A. CIL may request that ENZO add to EXHIBIT A
and manufacture and sell to CIL additional products that are nucleotides,
oligonucleotides or polynucleotides with a signal generating moiety, which CIL
believes to be GROUP A PRODUCTS, the manufacture, use or sale of which are
covered by PATENTS, provided that CIL may not add any additional product for any
period during which ENZO has a prior exclusive commitment to a third party. If
ENZO desires to manufacture such additional products, then such additional
products shall be added to EXHIBIT A and the parties shall immediately enter
into good faith negotiations on specifications and price. If ENZO does not
desire to manufacture such additional products, such additional products shall
be added to EXHIBIT A1 for manufacture by or for CIL under the terms of this
Agreement.
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ENZO shall have the right at any time, upon its representation to CIL that
it desires to commence manufacture and supply of such additional products, to
transfer such additional products from the status of GROUP A1 PRODUCTS to GROUP
A PRODUCTS.
B. GROUP A1 PRODUCTS.
1. Manufacture and Sale. ENZO shall engage CIL to manufacture GROUP A1
PRODUCTS in accordance with ENZO's specifications. CIL shall have the right to
sell GROUP A1 PRODUCTS worldwide within the scope of this Agreement.
2. Changes to Exhibit A1. CIL may add to EXHIBIT A1 additional products
that fall within the definition of GROUP A1 PRODUCTS by giving ENZO notice to
that effect. In the event CIL gives notice to ENZO of an additional product to
be included as a GROUP A1 PRODUCT, and ENZO proves by its laboratory and other
documentary evidence, that it has been working on a project within the last six
(6) months to develop commercially the same PRODUCT and added to EXHIBIT A.
C. GROUP C PRODUCTS.
1. Manufacture and Sale. ENZO shall engage CIL to manufacture GROUP C
PRODUCTS. CIL shall have the right to sell GROUP C PRODUCTS worldwide within the
scope of this Agreement.
2. Changes to Exhibit C. CIL may add additional products to EXHIBIT C
by giving ENZO notice to that effect.
D. GROUP D PRODUCTS.
1. Manufacture and Sale. CIL shall have the right to manufacture, have
manufactured, and sell GROUP D PRODUCTS worldwide.
2. Changes to Exhibit D. The parties may mutually consent to include
additional products as GROUP D PRODUCTS, which consent shall not be unreasonably
withheld.
3. No Acknowledgement. The foregoing does not constitute an
acknowledgement by CIL that any agreement or license from ENZO is necessary in
order for CIL to sell or CIL's customers to use GROUP D PRODUCTS.
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E. GROUP K PRODUCTS.
1. Manufacture and Sale of KITS. ENZO shall engage CIL to manufacture
(except for RAW MATERIALS, which shall be manufactured by ENZO subject to the
terms of this Agreement) GROUP K PRODUCTS in accordance with ENZO's
specifications. CIL shall have the right to sell GROUP K PRODUCTS worldwide
within the scope of this Agreement.
2. Supply of RAW MATERIALS. ENZO shall supply to CIL and CIL shall
purchase exclusively from ENZO (after the MANUFACTURING TRANSITION PERIOD) such
quantities of the RAW MATERIALS as CIL may order in accordance with this
Agreement.
3. RAW MATERIAL Specifications. RAW MATERIALS shall conform to the
specifications agreed to by ENZO and by CIL.
4. Changes Exhibit K. CIL may add additional products to EXHIBIT K by
giving ENZO notice to that effect, provided that CIL may not add any additional
product for any period during which ENZO has a prior exclusive commitment to a
third party. ENZO shall use its best efforts to manufacture and sell RAW
MATERIALS for such additional GROUP K products to CIL. Until such time as ENZO
elects to scale up manufacture of such RAW MATERIAL, ENZO shall request that CIL
manufacture the RAW MATERIALS for such additional GROUP K PRODUCTS.
F. GROUP K1 PRODUCTS.
1. Manufacture and Sale of KITS. ENZO shall engage CIL to manufacture,
or have manufactured, GROUP K1 PRODUCTS worldwide within the scope of this
Agreement. CIL shall have the right to sell GROUP K1 PRODUCTS worldwide within
the scope of this Agreement.
2. Changes to Exhibit K1. CIL may add to EXHIBIT K1 additional
products that fall within the definition of GROUP K1 PRODUCTS by giving ENZO
notice to that effect.
G. GROUP E1 PRODUCTS.
1. Manufacture and Sale. ENZO shall manufacture, sell and deliver to
CIL, and CIL shall purchase exclusively from ENZO such quantities of the GROUP
E1 PRODUCTS as CIL may order in accordance with this Agreement. CIL shall have
the right to sell GROUP E1 PRODUCTS worldwide within the scope of this
Agreement.
2. Packaging. Each of the GROUP E1 PRODUCTS shall be packaged in
CIL-designated packaging and labeling; provided, however, that such packaging
shall acknowledge ENZO as provided in this Agreement and that such packaging
shall not be unduly burdensome to ENZO.
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3. Specifications. Each GROUP E1 PRODUCT shall conform to the
specifications for it agreed to by ENZO and by CIL.
4. Changes to EXHIBIT E1. CIL may request from time to time that ENZO
add to EXHIBIT E1. Upon acceptance, ENZO shall use its best efforts to
manufacture and sell such products to CIL. ENZO shall inform CIL, under the
terms of this Agreement, of any changes in its product offering that may be
added to EXHIBIT E1.
H. GROUP E2 PRODUCTS.
1. Manufacture and Sale of KITS. ENZO shall manufacture, sell and
deliver to CIL, and CIL shall purchase exclusively from ENZO such quantities of
the GROUP E2 PRODUCTS as CIL may order in accordance with this Agreement. CIL
shall have the right to sell GROUP E2 PRODUCTS worldwide within the scope of
this Agreement.
2. Packaging. Each of the GROUP E2 PRODUCTS shall be packaged in
CIL-designated packaging and labeling; provided, however, that such packaging
shall acknowledge ENZO as provided in this Agreement and that such packaging
shall not be unduly burdensome to ENZO.
3. Specifications. Each GROUP E2 PRODUCT shall conform to the product
specifications agreed upon by ENZO and CIL.
4. Changes to EXHIBIT E2. CIL may request from time to time that ENZO
add to EXHIBIT E2. Upon acceptance, ENZO shall use its best efforts to
manufacture and sell such products to CIL. ENZO shall inform CIL, under the
terms of this Agreement, of any changes in its product offering that may be
added to EXHIBIT E2.
III. Sale of GROUP A1, C, K and K1 PRODUCTS BY ENZO.
CIL appoints, and ENZO accepts appointment, subject to the conditions set
forth herein, as a non-exclusive distributor for the worldwide distribution and
sale of GROUP A1, C, K, and K1 PRODUCTS, subject to the following conditions:
A. SUPPLY ARRANGEMENT.
ENZO shall purchase its requirements for GROUP A1, C, K and K1
PRODUCTS from CIL. Such supply arrangement shall
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be on an exclusive basis worldwide. If, at any time after the first anniversary
of the issuance of a United States patent to CIL covering digoxigenen labeled
nucleotides, oligonucleotides or polynucleotides (a "dig patent"), and during
the term of this Agreement, such dig patent is or appears to be infringed by a
third party in connection with the sale of a product in competition with the
PRODUCTS described herein, the party having knowledge thereof shall notify the
other and the parties shall consult to consider what, if any, action should be
taken. The decision regarding institution of proceedings to xxxxx the
infringement shall be at CIL's discretion, and in the event CIL elects to
initiate legal proceedings, ENZO shall give CIL all reasonable assistance in
such proceedings. In the event CIL shall elect not to institute infringement
proceedings, and if ENZO can show, by market research performed by a researcher
mutually acceptable to both parties, that infringing sales exceed 20% of the
market for a particular PRODUCT, the payment to CIL for such PRODUCT pursuant to
this Agreement shall be reduced by 25% until CIL commences legal action against
such infringer of settlement has been reached between such infringer and CIL.
The foregoing sentence does not constitute a validation, endorsement or belief
(express or implied) on the part of ENZO in the validity of any CIL patent
claims. PRODUCT specifications, etc. shall be identical in all respects to
PRODUCT distributed by CIL. Labeling of any such PRODUCTS shall not include any
reference to CIL except as may be required by law.
B. SALE TO END USERS.
ENZO shall sell PRODUCT exclusively to end users, and not for
distribution or resale.
C. PAYMENT TO CIL.
In consideration of the right to distribute GROUP A1, C, K AND K1
PRODUCTS, ENZO will pay CIL:
1. For all GROUP A1 PRODUCTS sold by ENZO to end users, ENZO will pay
CIL an amount equal to * of the ENZO SELLING PRICE of such GROUP A1 PRODUCTS.
Notwithstanding the foregoing, ENZO will pay CIL an amount equal to * of the
ENZO SELLING PRICE of any such GROUP A1 PRODUCTS sold in any country where a dig
patent has not issued
2. For all GROUP C PRODUCTS sold by ENZO to end users, ENZO will pay
CIL an amount equal to * of the ENZO SELLING PRICE of such GROUP C PRODUCTS.
Notwithstanding the foregoing, ENZO will pay CIL an amount equal to *% of the
ENZO SELLING PRICE of any such GROUP C PRODUCTS sold in any country where a dig
patent has not issued
3. For all GROUP K PRODUCTS sold by ENZO to end users, ENZO will pay
CIL an amount equal to * of the ENZO SELLING PRICE of such GROUP K PRODUCTS.
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* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
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4. For all GROUP K1 PRODUCTS sold by ENZO to end users, ENZO will pay
CIL an amount equal to * of the ENZO SELLING PRICE of such GROUP K1 PRODUCTS.
Notwithstanding the foregoing, ENZO will pay CIL an amount equal to *% of the
ENZO SELLING PRICE of any such GROUP K1 PRODUCTS sold in any country where a dig
patent has not issued.
D. Shipping Terms. All PRODUCTS ordered by ENZO for sale on its own
account shall be shipped by CIL pursuant to ENZO's written instructions. FOP
Penzberg, Germany.
E. Warranty. CIL warrants that the PRODUCTS sold to ENZO for sale on its
own account shall meet the specifications agreed upon by the parties. CIL's sole
obligation under this warranty is to promptly replace the PRODUCTS without cost
or expense therefor to ENZO. THIS WARRANTY IS EXPRESSLY IN LIEU OF ANY OTHER
WARRANTIES OR LIABILITIES, EXPRESS OR IMPLIED, INCLUDING THE WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
F. Miscellaneous Terms. The provisions of Section V, Paragraphs A through
D, shall be applied to ENZO's purchase of PRODUCTS from CIL in the same fashion
as such provisions apply to CIL's purchases from ENZO.
IV. Price to CIL
A. GROUP A PRODUCTS:
1. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Not Issued. For all GROUP A PRODUCTS manufactured by ENZO and sold
by CIL in any country where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have
Not Issued, ENZO's price to CIL shall be an amount equal to * of the SELLING
PRICE of such GROUP, A PRODUCTS.
2. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. For all GROUP A PRODUCTS manufactured by ENZO and sold by
CIL in any country where the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have
Issued, ENZO's supply price to CIL shall be an amount equal to * of the SELLING
PRICE of such GROUP A PRODUCTS.
3. GROUP A PRODUCTS Manufactured By CIL. For all GROUP A PRODUCTS
manufactured for ENZO by CIL during the MANUFACTURING TRANSITION PERIOD pursuant
to Section VII B, C, and D of this Agreement, ENZO's supply price to CIL for
such GROUP A PRODUCTS shall be an amount equal to (i) *% of the SELLING PRICE of
GROUP A PRODUCTS sold by CIL in any country where the ENZ 1 DIV 3 CLAIMS or ENZ
7 COMPOSITION CLAIMS have not issued, plus CIL's contract supply price for such
PRODUCTS to ENZO (ii) *% of the SELLING PRICE of GROUP A PRODUCTS which are
manufactured or sold by CIL in any country where the ENZ 1 DIV 3 CLAIMS or ENZ 7
COMPOSITION CLAIMS have issued, plus CIL's contract supply price for such
PRODUCTS to ENZO and (iii) *% of the SELLING PRICE of GROUP A PRODUCTS
worldwide, plus CIL's contract supply price for such PRODUCTS to ENZO, at such
time as the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS have issued in both
Europe and the United States.
*.
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* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
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B. GROUP A1 PRODUCTS:
1. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Not Issued. For all GROUP A1 PRODUCTS sold by CIL in any country
Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Not Issued in such
country, ENZO's supply price to CIL shall be an amount equal to * of the SELLING
PRICE of such GROUP A1 PRODUCTS, plus CIL's contract supply price for such
PRODUCT TO ENZO.
2. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. For all GROUP A1 PRODUCTS sold by CIL in any country ENZ 1
DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Issued, ENZO's supply price to CIL
shall be an amount equal to * of the SELLING PRICE of such GROUP A1 PRODUCTS,
plus CIL's contract supply price for such PRODUCTS TO ENZO.
3. Sale In Countries When ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. At such time as ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS are issued both in the United States and Europe, ENZO's supply price for
all GROUP A1 PRODUCTS sold by CIL shall be an amount equal to * of the SELLING
PRICE of such GROUP A1 PRODUCTS, worldwide.
C. GROUP C PRODUCTS:
1. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Not Issued. For all GROUP C PRODUCTS sold by CIL in any country
where the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Not Issued, ENZO's
supply price of such GROUP C PRODUCTS, shall be an amount equal to *% of the
SELLING PRICE of such GROUP C PRODUCTS, plus CIL'S contract supply price for
such PRODUCTS to ENZO, provided, however, that ENZO shall rebate to CIL as a
discount * paid pursuant to Section IV, C, 1 .
2. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. For all GROUP C PRODUCTS sold by CIL in any country where
the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Issued, ENZO's supply
price to CIL shall be an amount equal to * of the SELLING PRICE of such GROUP C
PRODUCTS, plus CIL's contract supply price for such PRODUCT TO ENZO.
3. Sale In Countries When ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. At such time as ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS are issued both in the United States and Europe, ENZO's supply price for
all GROUP C PRODUCTS sold by CIL shall be an amount equal to * of the SELLING
PRICE of such GROUP C PRODUCTS worldwide, plus CIL's contract supply price for
such PRODUCT TO ENZO.
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* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
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D. GROUP D PRODUCTS:
1. CIL shall not owe ENZO any amounts on sales of GROUP D PRODUCTS.
2. Nothing contained in this Section IV D, shall be construed as a
waiver of any rights that ENZO may have against any third party with regard to
its PATENTS. In the event ENZO enters into any agreement with any supplier of a
GROUP D PRODUCT, ENZO will rebate to CIL any monies or value received from that
supplier resulting from such sales of GROUP D PRODUCT to CIL.
E. GROUP K PRODUCTS:
1. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Not Issued. For all GROUP K PRODUCTS which are sold by CIL in any
country where the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Not
Issued, ENZO's supply price to CIL for such GROUP K PRODUCTS shall be an amount
equal to * of the SELLING PRICE of such GROUP K PRODUCTS, plus CIL's contract
supply prices for such products to ENZO.
2. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. For all GROUP K PRODUCTS, which are sold by CIL in any
country where the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Issued,
ENZO's supply price to CIL shall be an amount equal to * of the SELLING PRICE of
such GROUP K PRODUCTS, plus CIL's contract supply prices for such products to
ENZO
3. Sale In Countries When ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. At such time as ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS are issued both in the United States and Europe, ENZO's supply price for
all GROUP K PRODUCTS sold by CIL shall be an amount equal to * of the SELLING
PRICE of such GROUP K PRODUCTS worldwide, plus CIL's contract supply prices for
such products to ENZO.
F. GROUP K1 PRODUCTS:
1. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Not Issued. For all GROUP K1 PRODUCTS which are sold by CIL in any
country where the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Not
Issued, ENZO's supply price to CIL for such GROUP K1 PRODUCTS shall be an amount
equal to * of the SELLING PRICE of such GROUP K1 PRODUCTS, plus CIL's contract
supply prices for such products to ENZO.
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* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
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2. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. For all GROUP K1 PRODUCTS, which are sold by CIL in any
country where the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Issued,
ENZO's supply price to CIL shall be an amount equal to * of the SELLING PRICE of
such GROUP K1 PRODUCTS, plus CIL's contract supply price for such products to
ENZO.
3. Sale In Countries When ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. At such time as ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS are issued both in the United States and Europe, ENZO's supply price for
all GROUP K1 PRODUCTS sold by CIL shall be an amount equal to * of the SELLING
PRICE of such GROUP K1 PRODUCTS worldwide, plus CIL's contract supply price for
such products to ENZO.
G. GROUP E1 PRODUCTS.
1. For GROUP E1 PRODUCTS, ENZO's supply price to CIL shall be an
amount equal to * of the SELLING PRICE of such products.
H. GROUP E2 PRODUCTS.
For GROUP E2 PRODUCTS, ENZO's supply price to CIL shall be an amount equal
to * of the SELLING PRICE of such products.
I. Manufacturing, Use and Sale of Products Prior to This Agreement.
CIL shall pay to ENZO the amount of * (U.S. dollars) for manufacture, use
and sale, by CIL and CIL customers, of all PRODUCTS that have claims that would
be infringed by any PATENTS, wherein the manufacture, use or sale occurred prior
to this Agreement. This payment of * made by CIL to ENZO shall constitute full
payment for manufacture, use and sale of all PRODUCTS manufactured, used or sold
by CIL or CIL customers prior to this Agreement. This payment of * shall also
release CIL and customers of CIL of any liability for the manufacture, use, and
sale of any PRODUCTS manufactured, used or sold prior to this Agreement.
J. Method for Determining and Making Payment.
CIL shall pay ENZO according to the method set forth on Appendix B to
this Agreement. Appendix B describes the method for estimating Worldwide Average
Unit Prices based upon Worldwide Mannheim. CIL agrees to permit its books and
records to be examined by ENZO from time to time to the extent necessary, but
not more often than twice per year to verify receipts. Such examination is to
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* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
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be made by ENZO, at ENZO's expense, except in the event that the results of the
audit reveal a discrepancy in ENZO's favor of five (5%) or more, then the audit
fees shall be paid by CIL.
K. *.
V. Forecasts and Purchase Orders
A. Forecasts. During the mid-month of each calendar quarter after the
effective date of this Agreement, CIL shall provide to ENZO a non-binding
forecast covering its estimated requirements for GROUP A PRODUCTS, RAW
MATERIALS, GROUP E1 PRODUCTS, GROUP E2 PRODUCTS and other material manufactured
by ENZO under this Agreement for the succeeding two (2) calendar quarters. Such
forecast shall be made for planning purposes only and is not a purchase
commitment.
B. Purchase Orders. Purchase orders will be issued to ENZO by CIL at least
sixty (60) days in advance of the requested delivery of such products. Each
purchase order will indicate specific delivery and/or shipping requirements.
ENZO shall meet such requirements provided that the quantities of products
ordered are within 130% of the forecast for such quarter. If a purchase order is
for a quantity in excess of 130% of the forecast amount for such quarter, the
parties agree to negotiate in good faith to agree upon delivery and/or shipping
requirements that are reasonable under the circumstances.
C. Cancellation of Purchase Orders. Purchase orders may be cancelled by CIL
no later than fifteen (15) after issuance. If CIL desires to cancel an order
later than fifteen (15) after the issuance of such purchase order, the parties
agree to negotiate in good faith to determine a reasonable resolution of such
order. In the event CIL cancels a purchase order to ENZO under this paragraph,
CIL will reimburse ENZO for materials specifically purchased to fill such order,
as well as manufacturing costs directly attributable to such fulfillment,
incurred prior to the receipt of notice of cancellation.
D. Conflicting Purchase Order or Order Acceptance. Each purchase order
shall be governed by the relevant provisions of this agreement (unless otherwise
expressly provided in the individual purchase order and confirmed in writing by
ENZO), and no conflicting term or condition which may appear in the preprinted
matter in CIL's purchase order form or ENZO's confirmation or acceptance form
shall be binding on either party
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* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
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or apply to any transaction under this agreement unless agreed to by both
parties in writing.
E. Shipping Terms. All PRODUCTS, ordered by CIL shall be shipped by ENZO
pursuant to CIL's written instructions, FOB Xxxxxxxxxxx, Xxx Xxxx 00000.
VI. Quality Control and Product Acceptance
A. GROUP E1 PRODUCTS and GROUP E2 PRODUCTS. ENZO shall provide CIL with
GROUP E1 PRODUCT and GROUP E2 PRODUCT specifications and package inserts within
thirty (30) days of the execution of this Agreement and promptly after the
introduction of any new GROUP E1 PRODUCT or GROUP E2 PRODUCT. Such
specifications and package inserts shall be subject to CIL's approval, which
shall not be unreasonably withheld.
B. All Other Products. Before manufacturing any PRODUCTS or RAW MATERIALS
other than GROUP E1 PRODUCTS or GROUP E2 PRODUCTS for CIL, ENZO shall provide to
CIL (under an appropriate confidentiality and non-use agreement, if ENZO so
requests) a detailed description of the manufacturing process ENZO will use in
such manufacture. CIL shall have the right to approve such manufacturing
process: CIL's approval shall not be unreasonably withheld. Once ENZO begins
manufacturing any GROUP A PRODUCT or RAW MATERIALS for CIL, ENZO shall provide
documentation to CIL showing that ENZO has manufactured the products in
accordance with the manufacturing process that has been approved by CIL. CIL
shall have the right to periodically audit ENZO's documentation and
manufacturing process to ensure such compliance. Within one (1) year of the time
CIL becomes ISO 9000 certified for PRODUCTS, ENZO shall become ISO 9000
certified for such PRODUCTS. CIL shall provide consultative assistance to ENZO
to facilitate such certification.
C. Quality Testing. CIL shall have the right to test PRODUCTS and RAW
MATERIALS for the conformance with the specifications upon receipt of such
PRODUCTS, and agrees to notify ENZO of acceptance or non-acceptance based on
such conformity with the specifications within thirty (30) days in the case of
RAW MATERIALS and ten (10) days in case of all other PRODUCTS. Acceptance shall
not be unreasonably withheld.
D. Disagreement on Quality. If the parties disagree as to whether a RAW
MATERIAL PRODUCT shipment meets specifications, the parties shall use their best
efforts to resolve such disagreement expeditiously. If the parties are unable to
resolve the disagreement, ENZO and CIL shall jointly evaluate the disputed
product at CIL's facility in Penzberg, Germany or such other site as CIL deems
appropriate. In such event, CIL shall pay the reasonable travel expenses of ENZO
personnel to Penzberg or such other site.
E. Storage and Stock Rotation.
1. ENZO and CIL agree to share all necessary storage and stock
rotation practices which apply to the PRODUCTS.
14
2. CIL further agrees to take diligent care not to ship PRODUCTS which
have expired, been damaged in storage and handling, or improperly stored. CIL
will be responsible for damage or liability arising from its shipment of
expired, damaged or improperly stored PRODUCTS.
F. Product Complaint File. CIL agrees to allow ENZO, at ENZO's expense,
access to its Product Complaint File on a periodic basis, not to exceed once
every six months (under an appropriate confidentiality and non-use agreement, if
CIL so requests). If, in ENZO's opinion, an undue number of complaints exist
concerning the quality of an individual product, then ENZO and CIL shall meet
and discuss the means of ensuring improved quality.
VII. Manufacturing By CIL
A. Manufacturing Transition Period. At the time of the commencement of this
Agreement for GROUP A PRODUCTS or RAW MATERIALS, ENZO may request that CIL
manufacture such materials for a limited amount of time until ENZO can initiate
manufacturing activities. This manufacturing transition period cannot be a time
greater than 6 months.
B. Quality/Capacity Issues. If, after the MANUFACTURING TRANSITION PERIOD
with respect to any GROUP A PRODUCTS or RAW MATERIALS, ENZO becomes unable to
supply CIL's supply needs, either because of capacity or quality issues
(including, with limitation, a failure to comply with the terms of Section VI
B. CIL may manufacture the affected PRODUCT(S) or RAW MATERIALS for ENZO, and
purchase such products at the prices set forth in Section IV with respect to
such products, until ENZO certifies to CIL that it has corrected the capacity or
quality problem and will be able to meet CIL's requirements.
C. FORCE MAJEURE. If ENZO becomes unable to supply CIL's product needs as a
result of FORCE MAJEURE, CIL may manufacture the affected PRODUCTS for ENZO, and
the purchase of such products at the prices set forth in Section IV with respect
to such products, until ENZO is able to resume supplying CIL.
VIII. Sales Promotions and Technical Service
CIL shall exert on its own account, its best efforts in sales promotions
and advertisement of PRODUCTS such as direct mailings, catalog listings and
promotions, except in the case where CIL determines that it no longer wishes to
sell PRODUCTS. ENZO agrees to provide CIL with such technical support for the
PRODUCTS and RAW MATERIALS as CIL may reasonably request. ENZO will provide CIL
with one copy of any literature, technical data, specifications and the like
describing the PRODUCTS and RAW MATERIALS
15
as they are currently produced for the assistance of CIL in the preparation of
advertising material and catalogs for existing and new products. CIL will list
GROUP E1 PRODUCTS and GROUP E2 PRODUCTS in its next available or published
product catalog(s) or in a supplemental catalog in which these PRODUCTS can be
listed after the effective date of this agreement. CIL will modify the listings
of PRODUCTS in its product catalog(s) as soon as reasonably possible to conform
with the list of such PRODUCTS. CIL will modify the listings of GROUP E1
PRODUCTS and GROUP E2 PRODUCTS in its product catalog(s), or a supplemental
catalog, at CIL's discretion, as soon as reasonably possible after any
corresponding modification of the PRODUCTS in the EXHIBITS of this Agreement.
IX. Product Labels
Labels on the outside of PRODUCTS (excluding GROUP D PRODUCTS) including
vials and boxes and package inserts shall contain the following wording:
"Sold through an arrangement with Enzo Diagnostics, Inc."
X. Warranty
A. GROUP E1 PRODUCTS and GROUP E2 PRODUCTS. ENZO warrants that the GROUP E1
PRODUCTS and GROUP E2 PRODUCTS sold by ENZO to CIL shall met the specifications
agreed to by CIL and described in ENZO's PRODUCT or package inserts. ENZO's sole
obligation under this warranty is to promptly replace the GROUP E1 PRODUCTS and
GROUP E2 PRODUCTS without cost or expense therefor to CIL. THIS WARRANTY IS
EXPRESSLY IN LIEU OF ANY OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING THE
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
B. ALL OTHER PRODUCTS and RAW MATERIALS. ENZO warrants that the PRODUCTS
and RAW MATERIALS sold by ENZO to CIL shall meet the specifications agreed to by
CIL. ENZO's sole obligation under this warranty is to promptly replace the
PRODUCTS and RAW MATERIALS without cost or expense therefor to CIL. THIS
WARRANTY IS EXPRESSLY IN LIEU OF ANY OTHER WARRANTIES OR LIABILITIES, EXPRESS OR
IMPLIED, INCLUDING THE WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE.
1. PRODUCT REPLACEMENT. Notwithstanding the foregoing warranties, ENZO
agrees to replace, at no cost to CIL,
16
any PRODUCTS and RAW MATERIALS manufactured by ENZO upon the request of any CIL
customer so long as it remains CIL's policy to do the same with respect to its
own products. Notwithstanding the foregoing, ENZO shall not be required to
replace PRODUCTS and RAW MATERIALS replaced as a result of shipping or handling
errors by CIL.
XI. Relationship Between ENZO and CIL
Nothing herein creates or constitutes a partnership or an agreement of
agency between the parties with respect to any activities whatsoever. The
relationship between ENZO and CIL shall be that of seller and buyer, and neither
party shall conclude any contract or agreement or make any commitment,
representation or warranty which binds the other party or otherwise act in the
name of or on behalf of the other party. Furthermore, this agreement is not a
license or an implied license of ENZO's PATENTS. ENZO maintains full rights
under its PATENTS. The foregoing statements are paramount to this Agreement.
XII. FORCE MAJEURE
Subject to Section VII D, each of the parties shall be excused from the
performance of its obligations under this Agreement in the event performance is
prevented by FORCE MAJEURE. The party incurring a FORCE MAJEURE condition shall
notify the other that such condition exists within five (5) days of the time
such party learns of such condition. Should such FORCE MAJEURE condition
continue for forty-five (45) days after such notice, the non-affected party may,
at its option, terminate this Agreement. At such termination all designations
that are the subject of this Agreement are revoked with the exception of the
Confidentiality and Non Use Agreement.
If ENZO's capacity to manufacture and deliver PRODUCTS and RAW MATERIALS
under this agreement is diminished by circumstances beyond its control, then
ENZO shall employ its existing capacity to supply CIL in accordance with this
agreement in a manner fair and equitable to all its customers.
XIII. Confidentiality and Non-Disclosure
ENZO and CIL agree that any confidential information relating to ENZO's
PATENTS and/or ENZO's or CIL's proprietary technical information and/or ENZO's
or CIL's business development in the area of the PRODUCTS will not be disclosed
while this Agreement is in effect to third parties except with the prior written
consent of the non requesting party or if the confidential information can be
shown by documentary evidence that it was:
17
(i) in the possession of the receiving party prior to disclosure thereof
by the other party;
(ii) is or through no fault of the receiving party becomes part of the
public knowledge or literature;
(iii) lawfully becomes available without limitation by its disclosure from
an outside source; or
(iv) the receiving party can prove it was developed independently.
XIV. Term and Termination
A. Term. This Agreement shall become effective as of the date first above
written and shall continue until the expiration of the last PATENT to expire.
B. Termination for Breach. In the event either party breaches a material
provision of this Agreement, the non- breaching party may, after giving the
breaching party written notice of such breach and ninety (90) days in which to
cure such breach, terminate this Agreement upon written notice to the non-
breaching party. Either party may terminate this Agreement forthwith by giving
written notice to the other party in the event the other party shall:
(i) Become insolvent, admit its inability to pay its debts as they mature,
or has a petition in bankruptcy filed by or against it or a receiver
appointed for all or substantially all of its business or assets; or
(ii) Make a general assignment of all or substantially all of its business
or assets for the benefit of its creditors; or
(iii) Cease to carry on its business in the ordinary course.
C. Termination. If CIL ceases to offer, or has not sold GROUP A, A1, C, K
and K1 PRODUCTS, for a period of six (6) months, CIL shall have the right to
terminate this Agreement upon thirty (30) days' written notice to ENZO. Upon
termination of this Agreement, the distribution relationship between ENZO and
CIL shall no longer exist.
D. Assignment. This Agreement may not be assigned or otherwise transferred
by either party (except to an affiliate of such party) without the written
consent of the non-assigning party. Any attempted assignment or transfer without
such consent shall be void.
----------
* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
18
XV. Use of Products
Unless otherwise specified in writing and agreed to by both parties, all
PRODUCTS are for research use only and are not intended for or to be used for
diagnostic or therapeutic use.
XVI. Indemnification and Insurance
A. Indemnification.
ENZO agrees to and shall defend, indemnify and hold CIL, its employees,
agents and officers harmless, including attorneys' fees, from and against any
suit or proceeding alleging death or injury to persons or property and any
liability, damages or penalties awarded therein and resulting from or arising
from ENZO's negligence in the manufacture, storage or transport of PRODUCTS and
RAW MATERIALS prior to their receipt by CIL. CIL agrees to and shall defend,
indemnify and hold ENZO, its employees, agents and officers harmless, including
attorneys fees, from and against any suit or proceeding alleging death or injury
to persons or property and any liability, damages or penalties awarded therein
and resulting from or arising from CIL's negligence in handling, storage or
transport of PRODUCTS and RAW MATERIALS after receipt thereof from ENZO.
B. Insurance Each party shall at all times during the term of this
Agreement purchase and maintain comprehensive general liability insurance
including products liability, contractual liability and broad form property
damage with combined single limits for bodily injury and/or death and property
damage of $5,000,000 for any one occurrence. Such insurance shall also require
thirty (30) days' prior written notice of cancellation or material change in
coverage.
XVII. Third Party Patents.
ENZO agrees to and shall defend, indemnify and hold CIL and its customers
harmless, including attorneys fees, from and against any suit, proceeding, claim
or loss and any damages or penalties awarded therein so far as such suit or
proceeding is based upon an assertion that the use or sale of PRODUCTS and RAW
MATERIALS are, in such suit or proceeding, held to infringe and their further
use or sale is enjoined. ENZO shall, at its sole cost and expense, either (i)
procure for CIL and its customers the right to continue using and selling such
PRODUCTS and RAW MATERIALS, (ii) replace such PRODUCTS and RAW MATERIALS with
non-infringing equivalents, (iii) modify such PRODUCTS and RAW MATERIALS so
that they become non-infringing, or (iv) discontinue the use or sale of such
PRODUCTS and RAW MATERIALS if no alternative recourse is possible.
19
XVIII. Patent Infringement.
Infringement Proceedings. If, at any time after the first anniversary of
the issuance of * and during the term of this Agreement, one or more of the
PATENTS is or appears to be infringed by a third party in connection with the
sale of a product in competition with the PRODUCTS described herein, the party
having knowledge thereof shall notify the other and the parties shall consult to
consider what, if any, action should be taken. The decision regarding
institution of proceedings to xxxxx the infringement shall be at ENZO's
discretion, and in the event ENZO elects to initiate legal proceedings, CIL
shall give ENZO all reasonable assistance in such proceedings. In the event ENZO
shall elect not to institute infringement proceedings, and if CIL can show, by
market research performed by a researcher mutually acceptable to both parties,
that infringing sales exceed 20% of the market for a particular PRODUCT, the
payment to ENZO for such PRODUCT pursuant to this Agreement shall be reduced by
25% until ENZO commences legal action against such infringer or settlement has
been reached between such infringer and ENZO.
XIX. Invoicing and Payment. Invoices by each party to the other for work
performed and product supplied hereunder shall be issued at the end of each
calendar quarter. The net amount due shall be paid within thirty (30) days of
the end of each quarter.
XX. Miscellaneous
A. Waiver.
A waiver of any provision of this Agreement must be in writing. Waiver by
ENZO or CIL of any provision of this agreement shall not be deemed a waiver of
future compliance therewith and such provision as well as all other provisions
hereunder shall remain in full force and effect.
B. Governing Law. This Agreement is made under and shall be governed by the
laws of the State of New York.
C. Severability. In the event that any clause of this Agreement shall be
found to be void or unenforceable, such finding shall not be construed to render
any other clause of this Agreement either void or unenforceable, and all other
clauses shall remain in full force and effect.
D. Headings. All headings of the sections and paragraphs of this Agreement
are inserted for convenience only and shall not affect any construction or
interpretation of this Agreement.
----------
* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
20
E. Notices. All notices to be given with respect to this Agreement shall be
in writing and shall be deemed effectively given:
(a) when delivered personally;
(b) seven calendar days after being deposited in the mail, registered or
certified mail, return receipt requested
addressed as set forth below, or to such other address that either party
designates by written notice to the other party:
ENZO: Enzo Diagnostics, Inc.
00 Xxxxxxxxx Xxxxxxxxx
Xxxxxxxxxxx, XX 00000
Attention: Xx. Xxxxxxx X. Xxxxxxx
Executive Vice President
and Chief Operating Officer
Fax No.: 0 (000) 000-0000
Phone No.: 0 (000) 000-0000
CIL: Boehringer Mannheim Corporation
0000 Xxxxx Xxxx
Xxxxxxxxxxxx, XX 00000
Attn.: General Manager-Biochemicals
North America
Fax No.: 0 (000) 000-0000
Phone No.: 0 (000) 000-0000
F. Entirety. This Agreement together with the Appendix and Exhibits
attached hereto embodies the entire understanding between CIL and ENZO, and
there are no contracts or prior drafts of the agreement, understandings,
conditions, warranties or representations, oral or written, express or implied,
with reference to the subject matter hereof which are not merged herein. No
modification hereto shall be of any force or effect unless (1) reduced to
writing and signed by both parties hereto, and (2) expressly referred to as
being modifications of this agreement.
G. Mutuality. This Agreement has been drafted after considerable
negotiation by the parties and on the basis of mutual understanding; neither
party shall be prejudiced as being the drafter thereof.
H. Public Announcements. Any press release or other public announcement
relating to this Agreement shall be approved by both parties prior to its
release.
21
IN WITNESS WHEREOF, the parties have cause this Agreement to be executed by
their duly authorized representatives.
ENZO BIOCHEM, INC. CORANGE INTERNATIONAL LIMITED
By: /s/ Xxxx Xxx Xxxxxxxxxx By: /s/ Xxxxxxx Xxxxxxxx
----------------------------- ----------------------------------
Xxxx Xxx Xxxxxxxxxx, Ph.D Xxxxxxx Xxxxxxxx
Senior Vice President Treasurer
April 25, 1994 April 25, 1994
----------------------------- ----------------------------------
DATE DATE
22
PRODUCT CLASSIFICATION
EXHIBIT A
Seq # BM Group Name
396 A Biotin-16dUTP, sale
669 A DNA mol wt mk VI, padigxgn
1671 A DNA MWM II BIOTIN LABELED
1673 A DNA MWM III BIOTIN LABELED
1675 A DNA MWM VI BIOTIN LABELED
1717 A RNA Marker III-DIG label
1721 A Fluorescein-12-eeUTP
1778 A Biotin 16-ddUTP
1779 A Fluorescein-12-ddUTP
1780 A Fluorescein-12-UTP
1782 A Hydroxy-cuomarin-6-dUTP
1784 A Biotin-11-UTP
1809 A Dig DNA MWM VIII
1903 A DNA Mol Wt XI, dig-labeled
1904 A DNA Mol Wt XII, dig label
1975 A Rhod-6-dUTP
5002 A RNA MWM I DIGOXIGENIN LABEL **
5003 A RNA MWM I DIG-LABEL **
5004 A Dig-16-dATP
EXHIBIT A1
589 A1 DIGOXIGENIN 11-DUTP **(HAZ)
590 A1 Digoxigenin-11-UTP
1662 A1 DIG RNA LABELING _____________
1663 A1 DIG-11-ddUTP
1974 A1 AMCA-8-dUTP
5005 A1 Dig-11-dUTP
5012 A1 Dig-11-dUTP, alk label
5013 A1 Dig-11-dUTP, alk label
EXHIBIT C
115 C Anti-digoxigenin-(Fab)-AP
114 C Anti-digoxigenin-(Fab)-POD
113 C Anti-digoxigenin-(Fab)-flu
116 C Anti-digoxigenin-(Fab)- ___
1652 C ANTI-DIG (MONO)
1765 C Anti-Fluor-AP, Fab
1
EXHIBIT D
BM Group
Seq # Name
112 D Anti-digoxigenin (Fab)
410 D Blocking Reagent, hybrid
672 D DNA polymerase I
673 D DNA pol I, enconuc-free
674 D DNA pol I, klenow frag
1131 D Nick translation Kit
1178 D Nylon membranes, positive
1356 D Primer, Random pd(N)G
1397 D Random Primed Labeling Kit
1521 D RNA polymerase, E. coli
1522 D SPG RNA polymerase
1523 D RNA polymerase, 13
1524 D RNA polymerase, 17
1548 D Streptavicin-AP, NA det
1574 D Terminal transferase
1592 D Transcription Kit, SP6/T7
1653 D _________________________________________
1672 D DNA MWM II DIG LABELED **
1674 D DNA MWM III DIG LABELED **
1883 D HEXANUCLEOTIDE MIXTURE IOX
1886 D Lumi-Phos 530
1766 D Anti-FluorPOD,Fab
1785 D Lumigen PPD
1799 D [Fluorescein]-unconj(Mab)
1915 D anti-dig gold conj.
1978 D [dig]-AMCA, Feb Frag
5019 D SPG primer, dig
5020 D T3 primer, dig
5021 D T7 primer, dig
5022 D lambda ___________ rev.primer, dig
5023 D lambda ___________ primer, dig
5024 D DIG Wash and Block buffer set
EXHIBIT K
658 K DNA 3-End Labeling Kit
660 K Genius 2 DNA Labeling Kit
661 K Genius 1 DNA Label/Det Kit
1168 K Genius 3 NA Det. Kit
1661 K DIG DNA LABELING MIXTURE
16__ K GENIUS 5 OLIGO LABEL KIT
1755 K Genius 6 Oligo ___________ Kit
1768 K Genius 7 Lumin. Det. Kit
2
Seq # BM Group Name
1803 K DIG DNA Sequencing Kit
1890 K Genius 4 RNA Labeling Kit
1976 K Genius 5 End Labeling Set
5000 K MULTI-COLOR DNA DETECTION SET
5001 K ET-Assay Kit
K ____________________________________________
5028 K Biotin High Prime
5027 K Fluor High Prime
EXHIBIT K1
1951 K1 Actin RNA probe-DIG labeled
5006 K1 HUMAN CHROMOSOME,ALL,PROB,DIG **
5007 K1 Human Chr. Y, dig
5008 K1 Human Chr Y, flu
5009 K1 Human chr. 1, dig
5010 K1 Human chr. 1, flu
5011 K1 Human chr. ______, flu
5014 K1 PCR DIG labelling mix
5015 K1 DIG labeled control DNA
5016 K1 DIG labeled control RNA
5017 K1 DIG labeled control oligo
5018 K1 S. cerevisiae chr. probe, dig
3
EXHIBIT E-1
CATEGORY E1
Enzo
Category Cat. No. Product
-------- -------- -------
E1 42803 Nick Translation System (containing Bio-11-dUTP
E1 42804 Nick Translation System (to be used with nucleotide of choice)
E1 42809 Terminal Labeling Kit
E1 42810 Random Priming Kit
E1 42813 BioBridge(R) Labeling System
E1 42807 RNA Labeling System - T3/T7
E1 42808 RNA Labeling System - SP6
E1 43818 DETEK(R)I-f (double antibody xxxxxxxxxxxx)
X0 00000 XXXXX(X)-xxx Kit
E1 43822 DETEK(R)-alk Kit
E1 43823 DETEK(R)-Enhancer Kit (double antibody alk phos)
E1 43825 Peroxidase Substrate Kit (AEC)
E1 43826 Peroxidase Substrate Kit (DAB)
E1 43827 Alkaline Phosphate Substrate Kit (NBT/BCIP)
E1 43900 ImmunoDETEK(R) Kit (Peroxidase)
E1 43910 ImmunoDETEK(R) Kit (Alkaline Phosphatase)
EXHIBIT E-2
CATEGORY E1
Enzo
Category Cat. No. Product
-------- -------- -------
E2 42814 BioBridge(R) Labeling Xxxxxxxx
X0 00000 Bio-11-dUTP (0.3mM)
E2 42806-50 Bio-11-dUTP (1.0mM)
E2 42811 Bio-16-dUTP (0.3mM)
E2 42811-50 Bio-16-dUTP (1.0mM)
E2 42816 Bio-11-dCTP (0.3mM)
E2 42816-50 Bio-11-dCTP (1.0mM)
E2 42819 Bio-7-dATP (0.3mM)
E2 42819-50 Bio-7-dATP (1.0mM)
E2 42812 Bio-AP3-dCTP (0.3mM)
E2 42815 Bio-11-UTP (20mM)
E2 42801 Bio-11-CTP (20mM)
E2 00000 Xxxxxxxxxx XXX (20mM)
E2 43861 IgG fraction rabbit anti biotin
E2 43805 DETEK(R)-fav (fluoresceinated avidin)
E2 43406 ENZOTIN(R) Biotinylating Reagent
2
ENZO DIAGNOSTICS, INC.-BOEHRINGER MANNHEIM GMBH
DISTRIBUTORSHIP AGREEMENT
EXHIBIT A - AMENDMENT A DATED
AUGUST 19, 1994
ENZO BIOCHEM, INC.
UNITED STATES ISSUED PATENTS
================================================================================
Grant of
Patent
Patent Number Title/Inventor Published
--------------------------------------------------------------------------------
4,687,732 Visualization Polymers and Their Aug. 18. 1987
Application to Diagnostic Medicine
Xxxxx X. Xxxx et al.
--------------------------------------------------------------------------------
4,707,352 Method of Radioactively Labeling Nov. 17. 1987
Diagnostic and Therapeutic Agents
Containing a Chelating Group
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
4,707,440 Nucleic Acid Hybridization Assay and Nov. 17, 1987
Detectable Molecules Useful in Such
Assay
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
4,711,955 Modified Nucleotides and Methods of Dec. 8. 1987
Preparing and Using Same
Xxxxx X. Xxxx et al.
--------------------------------------------------------------------------------
4,746,604 Specific Binding Assays Utilizing A May 24, 1988
Viable Cell as a Label
Xxxxxxx Xxxxxxxxxx
--------------------------------------------------------------------------------
4,755,458 Composition and Method for the Jul. 5, 1988
Detection of the Presence of a Polynucleotide Sequence of
Interest Xxxxxx Xxxxxxx et al.
--------------------------------------------------------------------------------
5,328,824 Methods of Using Labeled Jul. 12, 1994
Nucleotides
Xxxxx X. Xxxx
--------------------------------------------------------------------------------
5,241,060 Base Moiety-Labeled Detectable Aug. 31, 1993
Nucleotide
Xxxx Xxxxxxxxxx et al.
--------------------------------------------------------------------------------
5,260,433 Saccharide Specific Binding System Nov. 9, 1993
Labeled Nucleotides
Xxxx Xxxxxxxxxx et al.
--------------------------------------------------------------------------------
1
================================================================================
Grant of
Patent
Patent Number Title/Inventor Published
--------------------------------------------------------------------------------
4,767,609 Therapeutic and Diagnostic Processes Aug. 30, 1988
Using Isotope Transfer to Chelator-
Target Recognition Molecule Conjugate
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
4,772,548 Radiosotopicassay Using Isotope Sept. 20, 1988
Transfer to Chelator-Target
Recognition Molecule Conjugate
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
4,843,122 Detectable Molecules, Method of June 27, 1989
Preparation and Use
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
4,849,208 Detectable Molecules, Method of Jul. 18, 1989
Preparation and Use
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
4,849,505 Detectable Molecules, Method of Jul. 18, 1989
Preparation and Use
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
4,868,103 Analyte Detection by Means of Energy Sep. 19, 1989
Transfer
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
4,889,798 Hetarologous System for the Detection Dec. 26, 1989
of Chemically Labeled DNA and other
Biological Materials Providing a
Receptor or Target Moiety Therson
Xxxxxx Xxxxxxx
--------------------------------------------------------------------------------
4,894,325 Hybridization Method for the Detection Jan. 16, 1990
of Genetic material
Xxxx Xxxxxxxxxx et al.
--------------------------------------------------------------------------------
4,900,669 Necleotide Sequence Composition and Feb. 13, 1990
Method for Detection for Neissera
Gonorrhoeae and Method for Screening
for a Nucleotide Sequence that is
Specific for a Genetically Distinct
Group
Xxxxxx Xx et al.
--------------------------------------------------------------------------------
4,943,523 Detectable Molecules, Method of Jul. 24, 1980
Preparation and Use
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
2
================================================================================
Grant of
Patent
Patent Number Title/Inventor Published
--------------------------------------------------------------------------------
4,952,665 Detectable Molecules, Method of Aug. 28, 1990
Preparation and Use
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
4,987,065 In Vivo Labelling of Polynucleotide
Sequences
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
4,994,373 Method and Structures Employing Feb. 19, 1991
Chemically-Labelled Polynucleotide
Probes
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
5,002,885 Detectable Molecules, Method of Mar. 26, 1991
Preparation and Use
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
5,013,831 Detectable Molecules, Method of May 7, 1991
Preparation and Use
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
5,024,933 Method and Kit for Sample Adherence to June 18, 1991
Test Substrate
Xxxx-Xxxx Yang et al.
--------------------------------------------------------------------------------
5,061,076 Time-Resolved Fluorometer Oct. 29, 1991
Xxx Xxxxxx
--------------------------------------------------------------------------------
5,082,830 End Labeled Nucleotide Probe Jan. 21, 1992
Xxxxxxxxx X. Xxxxxx et al.
--------------------------------------------------------------------------------
5,175,269 Compound and Detectable Molecules Dec. 29, 1992
Having An Oligo-or Polynucleotide with
Modifiable Reactive Group
Xxxxxx X. Xxxxxxxxxxxxxxx
--------------------------------------------------------------------------------
5,288,609 Capture Sandwich Hybridization Method Feb. 22, 1994
and Composition
Xxxx Xxxxxxxxxx et al.
--------------------------------------------------------------------------------
5,328,824 Methods of using Labeled Neucleotides Jul. 12, 1994
================================================================================
3
APPENDIX B
WORLD-WIDE LOCAL NET SALES FOR DIG PRODUCTS ARE CALCULATED FOR 1994 BY APPLYING
A FACTOR OF 1.85 ON EX MANNHEIM NET SALES.
THE FACTOR OF 1.85 REFLECTS THE RATIO BETWEEN LOCAL WORLD-WIDE NET SALES AND EX
MANNHEIM SALES.
IT SHALL BE REVISED AND AGREED UPON MUTUALLY ON A YEARLY BASIS ACCORDING TO THE
ACTUAL SITUATION OF THE CURRENT YEAR AND BE APPLIED FOR THE FOLLOWING YEAR.
AVERAGE LOCAL UNIT PRICE SHALL BE CALCULATED BY APPLYING THE NUMBER OF UNITS
SOLD EX MANNHEIM.
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