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*****Certain information on this page has EXHIBIT 10.30
been omitted and filed separately with the
Securities and Exchange Commission. Confidential REDACTED FOR
treatment has been requested with respect to the CONFIDENTIALITY
omitted portions.
CONFIDENTIAL TREATMENT
REQUESTED
The asterisked portions of this document have been
omitted and are filed separately with the Securities and
Exchange Commission
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (hereinafter "AGREEMENT"), effective as of the
EFFECTIVE DATE (as defined below), is entered into by and between diaDexus,
LLC, 0000 Xxxxxxxx Xxxxx, Xxxxx Xxxxx, XX 00000 (hereinafter "diaDexus") and
SmithKline Xxxxxxx Clinical Laboratories, Inc. a Delaware corporation having
principal offices at 0000 Xxxxx Xxxxxxxxxxxx Xxxx, Xxxxxxxxxxxx, Xxxxxxxxxxxx
00000 (hereinafter "SBCL").
WHEREAS, diaDexus, Incyte Pharmaceuticals, Inc., and SmithKline Xxxxxxx
entered into the COLLABORATION AND LICENSE AGREEMENT (as defined below)
relating to the establishment of diaDexus for the purpose of undertaking
research, development and commercialization of certain diagnostic products.
WHEREAS, diaDexus has rights in certain patents, identified in EXHIBIT A
hereto, and know-how relating to methods for the diagnosis of and/or screening
for prostate cancer.
WHEREAS, SBCL desires to obtain certain licenses in certain countries of
the world from diaDexus to develop and commercialize certain tests for the
diagnosis, prognosis, and/or screening for prostate cancer in such countries
under the aforesaid patents and know-how, and diaDexus is willing to grant to
SBCL such licenses under terms and conditions set forth below:
NOW, THEREFORE, in consideration of the following, and intending to be
legally bound, diaDexus and SBCL agree as follows:
1. DEFINITIONS
In this AGREEMENT, unless otherwise provided, the following terms shall
have the meaning set forth in this section.
1.1 AFFILIATE
The term "AFFILIATE" shall mean any corporation or other business entity
controlled by, controlling or under common control with either diaDexus or
SBCL. For purposes of this Section 1.1, "control" shall mean direct or indirect
beneficial ownership of greater than fifty percent (50%) of the voting stock or
equity, or greater than fifty percent (50%) interest in the income of such
corporation or other business entity; provided that, if local law requires a
minimum percentage of local ownership, control will be established by direct or
indirect beneficial ownership of one hundred percent (100%) of the maximum
ownership percentage that may, under such local law, be owned by foreign
interests.
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1.2 COLLABORATION AND LICENSE AGREEMENT
The term "COLLABORATION AND LICENSE AGREEMENT" shall mean the
collaboration and license agreement by and among diaDexus, SmithKline Xxxxxxx,
Corp. SmithKline Xxxxxxx, plc. and Incyte Pharmaceuticals, Inc., dated
September 1, 1997 as amended.
1.3 EFFECTIVE DATE
The term "EFFECTIVE DATE" shall mean the effective date of this AGREEMENT
and shall be the date upon which this AGREEMENT is executed by both parties.
1.4 HOMEBREW
The term "HOMEBREW" shall mean a Clinical Diagnostic HOMEBREW or a Phase
III/IV H0MEBREW and/or a Phase I/II HOMEBREW, as the case may be. For the
purposes of this Agreement, such words and expressions shall have the following
meaning:
(A) A "Clinical Diagnostic HOMEBREW" shall mean test(s) performed on human
serum for the diagnosis, prognosis and/or screening of prostate cancer
by detecting elevated levels of PLA2 and, subject to Paragraph 2.2,
conducted prior to commercial launch of such test as a Kit (and not
packaged as a product for sale), the results of which test are
provided to payors, providers, or patients for use in the clinical
management of individual patients, which become part of such patient's
health record.
(B) A "Phase III/IV HOMEBREW" shall mean a Clinical Diagnostic HOMEBREW
performed on human serum for the diagnosis and/or prognosis and/or
screening of prostate cancer during the course of a Phase III/IV
clinical trial for a prostrate cancer therapeutic.
(C) A "Phase I/II HOMEBREW" shall mean diagnostic test(s) detecting
elevated levels of PLA2 performed on human serum to support the
development of a compound for potential use as a prostate cancer
therapeutic that could lead to the performance of a Phase III or Phase
IV clinical trial for such prostate cancer therapeutic including
without limitation Phase I and Phase II trials for prostate
therapeutics.
1.5 KIT
The term "KIT" shall mean any set of components or reagents provided
together as a unit, to a THIRD PARTY for the purpose of performing a diagnostic
or screening test or assay for the diagnosis, prognosis, and/or screening of
prostate cancer by detecting elevated levels of PLA2 in the serum which has
been approved by the Federal Food and Drug Administration (or its equivalent
outside of the U.S.A. if required) for diagnosis, prognosis, and/or screening
clinical use.
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1.6 KNOW-HOW
The term "KNOW-HOW" shall mean all present and future technical
information and know-how which relates to a HOMEBREW which is confidential or
is not in the public domain and shall include, without limitation, all
biological, chemical, pharmacological, toxicological, clinical, assay, control
and manufacturing data and biological material samples required for HOMEBREW
development purposes, and any other information relating to a HOMEBREW and
useful for the development and commercialization of a HOMEBREW and in which
diaDexus has a licensable interest.
1.7 NET SALES
The term "NET SALES" shall mean the gross invoiced sales of HOMEBREW by
SBCL, its AFFILIATE, or sublicensees as the case may be (The "Selling Party")
to Third Parties less deductions actually allowed or specifically allocated and
actually incurred to such HOMEBREW by the Selling Party using generally
accepted accounting practices in the United States and reasonable practices
with respect to sales of such HOMEBREW Selling Party, consistently applied for
the following (i) sales and excise taxes and duties paid or allowed by the
Selling Party and any other governmental charges imposed on the production,
importation, use or sale of such HOMEBREW; (ii) trade, quantity and cash
discounts actually allowed on HOMEBREWs, (iii) sales adjustments, credits,
refunds, and allowances to customer on account of rejection or return of
HOMEBREW performed by the Selling Party or on account of retroactive price
reductions affecting same, (iv) handling or transportation charges for HOMEBREW
to the extent they are for shipping and included in the price or otherwise paid
by the Selling Party, including insurance, and (v) SBCL's bad debt expense
based on SBCL's prior years actual percentage for bad debt, provided such
expenses do not exceed 4.5% of Net Sales. Any accruals for the foregoing
deductions shall be reconciled with actual results on a quarterly basis and any
adjustments shall be reflected in the subsequent quarter's computation of NET
SALES.
1.8 PATENTS
The term "PATENTS" shall mean all patents and patent applications which
are or become owned by diaDexus, or to which diaDexus otherwise has, now or in
the future, the right to grant licenses, which generically or specifically
claim a HOMEBREW or its components, a process for manufacturing a HOMEBREW or
its components, an intermediate used in making or using the HOMEBREW or its
components, or a use of a HOMEBREW for the diagnosis, prognosis, and screening
of prostate cancer. Included within the definition of PATENTS are all
continuations, continuations-in-part, divisions, patents of addition, reissues,
re-examinations, renewals or extensions thereof and all SPCs (i.e., a right
based upon a PATENT to exclude others from making, using, importing or selling
a HOMEBREW, such a Supplementary Protection Certificate). Also included within
the definition of PATENTS are any patents or patent applications which
generically or specifically claim any improvements on a HOMEBREW, or its
components, or intermediates or manufacturing processes required or useful for
production of a HOMEBREW or its components which are developed by diaDexus, or
which diaDexus
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otherwise has the right to grant licenses, now or in the future, during the
term of this AGREEMENT. The current list of patent applications and patents
encompassed within PATENTS is set forth in EXHIBIT A which is attached hereto
and fully incorporated herein.
1.9 PROFIT MARGIN
The term "PROFIT MARGIN" shall mean net sales (as reported on SBCL's
operating statement) less cost of goods, which is divided by such net sales and
expressed as a percent. For the purposes of this definition, cost of goods
shall mean the sum of the actual direct and indirect costs for ingredients,
supplies, material, and labor and an allocated portion of overheads, incurred
in the manufacturing of HOMEBREWS, as determined in accordance with generally
accepted accounting principles in the United States.
1.10 TERRITORY
The term "TERRITORY" shall mean the United States, Canada, Mexico, Japan,
the Countries of Europe as listed in Exhibit B, Singapore, Australia, and New
Zealand of which USA, Canada, UK, France, Japan, Spain, Italy, and Germany
shall for the purposes of this Agreement be deemed a "Major Market".
1.11 THIRD PARTY(IES)
The term "THIRD PARTY(IES)" shall mean any party other than SBCL,
diaDexus, and their AFFILIATES.
1.12 VALID CLAIM
The term "Valid Claim" shall mean a claim of an enforceable PATENT which
has not been held invalid or unenforceable by final decision of a court or
other governmental agency of competent jurisdiction, unappealable or unappealed
within the time allowed for appeal, and which is not expressly admitted to be
invalid or unenforceable through reissue, disclaimer or otherwise.
2. GRANTS
2.1 EXCLUSIVE LICENSE
(a) Subject to the terms and conditions of this AGREEMENT, diaDexus
hereby grants to SBCL an exclusive right and license including, without
limitation, the right to grant sublicenses, under PATENTS and KNOW-HOW to make,
use, have made, and import materials or components for the sole purpose of
developing HOMEBREWS, and offering to sell, selling, and performing HOMEBREWS
in the TERRITORY. Notwithstanding the above, SBCL shall have no right to grant
sublicenses to a THIRD PARTY in any country of the TERRITORY after the date of
the first commercial sale of a KIT in such country by diaDexus or by a licensee
of diaDexus.
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(b) Within thirty (30) days after the effective date of any THIRD PARTY
sublicense granted by SBCL under this Section 2.1. SBCL shall provide to
diaDexus, in writing, a notice of the identity of any such sublicensee.
2.2 NONEXCLUSIVE LICENSE
Subject to the terms and conditions of this AGREEMENT, at any time after
the date of the first commercial sale in a country of the TERRITORY, either by
diaDexus or by a licensee of diaDexus of a KIT, SBCL, upon SBCL's written
election, may convert in such country the exclusive right and license granted
by diaDexus pursuant to Section 2.1 to a nonexclusive, nontransferable right
and license. Such right and license shall not include a right to grant
sublicenses other than the right to grant sublicenses to AFFILIATES. The
effective date of such conversion shall be the date of receipt by diaDexus of
written notice of SBCL's election under this Section 2.2.
2.3 NO OTHER RIGHTS
Except as expressly provided herein, no right, title, or interest is
granted by diaDexus to SBCL in, to or under PATENTS and KNOW-HOW or in or to a
HOMEBREW, or any components thereof.
3. CONSIDERATION
3.1 LICENSE FEE
(a) In partial consideration for the rights and license granted pursuant
to Section 2 of this AGREEMENT with respect to Clinical Diagnostic HOMEBREWS
AND Phase III/IV HOMEBREWS and in accordance with Paragraph 6.3(b) of the
COLLABORATION AND LICENSE AGREEMENT, within thirty (30) days after the
EFFECTIVE DATE, SBCL shall pay to diaDexus a license fee equal to fifty
thousand U.S. dollars (U.S. $50,000) and such fee shall be fully creditable
against royalties due and payable to diaDexus pursuant to Sections 3.2 and 3.3
of this AGREEMENT.
(b) In partial consideration for the rights and license granted pursuant
to Section 2 of this AGREEMENT with respect to Phase I/II HOMEBREWS, within
thirty (30) days after the EFFECTIVE DATE, SBCL shall pay to diaDexus a license
fee equal to fifty thousand U.S. dollars (U.S. $50,000). This fee shall be fully
creditable against royalties due and payable to diaDexus pursuant to Sections
3.2 and 3.3 of this AGREEMENT.
3.2 SUBLICENSE ROYALTIES.
Any royalties based on accrual use of a HOMEBREW by a sublicensee of SBCL
shall be paid to diaDexus by SBCL in accordance with Section 3.3 or Section 3.4.
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3.3 ROYALTIES
In partial consideration for the rights and license granted pursuant to
Section 2.1 or 2.2 of this AGREEMENT and in accordance with Paragraph 6.3(a) of
the COLLABORATION AND LICENSE AGREEMENT and subject to Section 3.3.3 of this
AGREEMENT, SBCL shall pay to diaDexus royalties on NET SALES of HOMEBREWS by
SBCL, is AFFILIATES and sublicensees (the `Selling Party') in accordance with
the following:
3.3.1 Clinical Diagnostic HOMEBREW/Phase III/IV HOMEBREW
(a) ***** of all NET SALES of each Clinical Diagnostic HOMEBREW and
Phase III/IV HOMEBREW for the first 3 months of sales of such service; and
(b) Thereafter, the applicable royalty rate for NET SALES of each
Clinical Diagnostic HOMEBREW and Phase III/IV HOMEBREW shall be as follows:
(i) If the Selling Party PROFIT MARGIN is *****
(ii) If the Selling Party PROFIT MARGIN is *****
(iii) For Selling Party PROFIT MARGIN between *****
3.3.2 Phase I/II HOMEBREW
***** of all NET SALES of each Phase I/II HOMEBREW in those countries
of the TERRITORY where there is a VALID CLAIM covering the HOMEBREW and ***** of
NET SALES in those countries of the TERRITORY where there is not a VALID CLAIM
covering the Phase I/II HOMEBREW.
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has
been requested with respect to the omitted portions.
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3.3.3 THIRD PARTY ROYALTIES
(a) If during the term of this AGREEMENT, SBCL deems it necessary to seek
a license to US Patent ***** and/or ***** (and/or their foreign equivalents in
the TERRITORY) in order to avoid infringement of the exercise of the rights and
licenses granted herein, one-half of any royalties paid to such THIRD PARTY
under such license may be deducted by SBCL from any royalties otherwise due
diaDexus under this AGREEMENT, provided always that any such deduction shall
not ever exceed two percent (2%) of any such royalties due to diaDexus under
this AGREEMENT.
(b) In the event SBCL determines any such license from such THIRD PARTY
constitutes or would constitute a financial hardship to SBCL, diaDexus shall
promptly upon SBCL's written request, promptly collaborate with SBCL, providing
all such assistance as would be reasonably necessary, to re-format the assay
for HOMEBREWS such that SBCL would then deem it unnecessary to seek a license to
such patents.
(c) In the event SBCL and diaDexus are able to re-format the assay for
HOMEBREWS such that SBCL would then deem it unnecessary to seek a license to
such patents, the time periods set forth in Section 5.2 and 5.3 shall be
altered to reflect the time period of the delay in the commencement of
promotion and marketing of HOMEBREWS caused to SBCL as a consequence of the
need to re-format the assay for HOMEBREWS pursuant to Section 3.3.3(b).
3.4 CURRENCY
All payments shall be made in United States of America dollars. If
governmental regulations prevent remittances from a foreign country with
respect to sales made in that country, the obligation of SBCL to pay royalties
on sales in that country shall be suspended until such remittances are
possible. diaDexus shall have the right, upon giving written notice to SBCL, to
receive payment in that country in local currency.
3.5 TAXES
Any tax, duty or other levy paid or required to be withheld by SBCL or its
AFFILIATES or sublicensees on account of royalties payable to diaDexus under
this AGREEMENT shall be deducted from the amount of royalties otherwise due.
SBCL shall secure and sent to diaDexus proof of any such taxes, duties or other
levies withheld and paid by SBCL or its AFFILIATES or sublicensees for the
benefit of diaDexus.
4. REPORTS AND AUDIT RIGHTS
4.1 RECORDS
SBCL shall keep, and shall require SBCL's AFFILIATES, and sublicensees to
keep accurate records in sufficient detail to enable royalties and other
payments due diaDexus hereunder to be determined. Such records shall be
maintained by SBCL at SBCL's
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has
been requested with respect to the omitted portions.
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principal place of business for at least three (3) years after the period
covered by such records.
4.2 REPORTS
Within thirty (30) days after the first day of each calendar quarter. SBCL
shall:
(a) deliver to diaDexus a written report containing information and data
concerning the number (volume and value) of HOMEBREWS SBCL, its AFFILIATES and
its sublicensees have performed during the relevant period (i.e., prior
calendar quarter in each country in the TERRITORY.
(b) deliver to diaDexus a written report containing information and data
concerning the total amount due and payable to diaDexus hereunder for SBCL's,
its AFFILIATES' and its sublicensees' activities during such calendar quarter;
and
(c) pay to diaDexus the full amount of royalties due to diaDexus
hereunder for SBCL's, its AFFILIATES' and its sublicensees' activities during
the calendar quarter covered by such report, subject to any credit which may be
due SBCL under section 3.1 (a).
(d) Payment of royalties and other payments due and payable to diaDexus
but not paid when due shall accrue interest at the prime commercial lending
rate plus 5%, prevailing on the payment due date at the Bank of America, San
Francisco, California or its successor.
4.3 AUDIT RIGHTS
During the term of this AGREEMENT and for six (6) months after its
expiration or termination, after receipt by SBCL of diaDexus' written request
and after reasonable prior notice, SBCL shall permit an independent certified
public accountant, selected by diaDexus and reasonably acceptable to SBCL, to
examine SBCL'S, its AFFILIATES and their sublicensees' records to determine the
accuracy of any report delivered or payment made by SBCL to diaDexus hereunder.
Only one such examination may be made in each year and shall not cover records
for more than the preceding three (3) years, and further provided that such
accountant shall report to diaDexus only as to the accuracy of the royalty
statements and payments. Except as otherwise provided below, the cost and
expense of such examination shall be borne by diaDexus. If any such examination
determines that additional payment amounts are owed to diaDexus for any period.
SBCL shall pay such additional payment amounts to diaDexus promptly. If any
such examination determines that an overpayment has been made to diaDexus for
any period, diaDexus shall reimburse such overpayment amount to SBCL promptly.
In addition, if any such examination reveals that SBCL underpaid diaDexus by an
amount equal to or greater than 10% of the total amount due diaDexus in any
reporting period, the reasonable cost and expense of such examination shall be
borne by SBCL.
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5. DILIGENCE AND OTHER OBLIGATIONS OF SBCL
5.1 MANUFACTURING AND DISTRIBUTION
SBCL shall bear all costs and expenses associated with making, having
made, using and importing a HOMEBREW or its components for the purpose of
offering to sell, selling, and performing HOMEBREW in the TERRITORY.
5.2 CLINICAL DIAGNOSTIC HOMEBREW DILIGENCE
SBCL shall use reasonable and documentable efforts to promote and develop
a commercial market for performing Clinical Diagnostic HOMEBREWS in the
TERRITORY using the same standards SBCL would use in promoting and developing a
Clinical Diagnostic HOMEBREW of its own making which had the same commercial
potential as a Clinical Diagnostic HOMEBREW. Notwithstanding the above, SBCL
shall have satisfied its obligations to use such reasonable efforts, within the
relevant country of the TERRITORY, upon the occurrence of the following:
(a) Initiating offers to sell or sales and thereafter continuing
offers to sell or sales of services utilizing a Clinical Diagnostic
HOMEBREW to THIRD PARTY customers upon which royalties are to be paid to
diaDexus in the United States of America within one hundred twenty (120)
days after the EFFECTIVE DATE;
(b) Initiating offers to sell or sales and thereafter continuing
offers to sell or sales of services utilizing a Clinical Diagnostic
HOMEBREW to THIRD PARTY customers upon which royalties are to be paid to
diaDexus in each of the Major Markets (other than the US) within one
hundred and eighty (180) days after the EFFECTIVE DATE; and
(c) Initiating offers to sell or sales and thereafter continuing
offers to sell or sales of services utilizing a Clinical Diagnostic
HOMEBREW to THIRD PARTY customers upon which royalties are to be paid to
diaDexus in the relevant country in the TERRITORY which is not mentioned in
Section 5.2 (a) or (b) within twelve (12) months after the EFFECTIVE DATE.
5.3 PHASE I/II HOMEBREW/PHASE III/IV HOMEBREW DILIGENCE
SBCL shall use reasonable and documentable efforts to promote and
develop a commercial market for performing Phase I/II HOMEBREW/Phase III/IV
HOMEBREWS in the TERRITORY using the same standards SBCL's Clinical Trial
Testing Center would use in promoting and developing a HOMEBREW of its own
making which had the same technical and commercial potential as a Phase
I/II HOMEBREW/Phase III/IV HOMEBREW. Such efforts shall include timely
presentations by SBCL to these THIRD PARTIES reasonably known to SBCL to be
conducting Phase I, II, III, and IV clinical trials in the TERRITORY for
prostate cancer therapeutics making such parties aware of Phase I/II
HOMEBREW/Phase III/IV HOMEBREW.
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5.4 If SBCL fails to initiate offers to sell or sales and/or continue
offers to sell or sales of HOMEBREW services in any country of the TERRITORY in
accordance with the schedule set forth in Sections 5.2 or 5.3 and subject to
Section 5.5, diaDexus shall be entitled to terminate any right and license
granted to SBCL by diaDexus under this AGREEMENT in such country with respect
to such HOMEBREW. Such termination to be effective, upon receipt by SBCL of
written notice of such termination by diaDexus, provided such termination shall
not be effective if SBCL has either initiated offers to sell or sales of such
HOMEBREW in such country at the time SBCL receives such notice from diaDexus or
within thirty (30) days of receipt of such notice from diaDexus. In the event
that SBCL initiates offers to sell or sales of HOMEBREW as a service in a
country of the TERRITORY in accordance with the schedule set forth in Sections
5.2 or 5.3, but thereafter fails to continue offering to sell or sales of such
HOMEBREW, and such failure is due (i) to circumstances which are within SBCL's
reasonable control and (ii) continues for more than three (3) months, unless
SBCL is proceeding as diligently as reasonably possible, diaDexus shall be
entitled, at its discretion, to terminate any right and license granted to SBCL
by diaDexus under this AGREEMENT in such country with respect to such HOMEBREW.
Such termination to be effective, with no opportunity to cure, upon receipt by
SBCL of written notice of such termination by diaDexus, provided such
termination shall not be effective if SBCL has resumed offers to sell or sales
of such HOMEBREW in such country at the time SBCL receives such notice from
diaDexus or within thirty (30) days of receipt of such notice from diaDexus.
5.5 In the event that, after the EFFECTIVE DATE, the Federal Food and
Drug Administration passes legislation or other laws which require the approval
of a HOMEBREW by such agency, the timelines outlined in Sections 5.2 and 5.3
shall be extended such that they shall not come into effect until after
approval of the HOMEBREW in such country has been achieved.
5.6 MARKETING
SBCL shall bear all costs and expenses associated with its and its
AFFILIATES marketing of services in the TERRITORY utilizing a HOMEBREW. SBCL
shall develop a marketing and market development plan within ninety (90) days
after the EFFECTIVE DATE and deliver such plan to diaDexus on or before such
date. Such plan shall include programs which make SBCL's entire sales force
cognizant of the availability of HOMEBREWS. In connection with its marketing
activities, including without limitation the development of a market
development and marketing plan. SBCL shall spend not less than One Hundred
Fifty Thousand U.S. dollars (U.S. $150,000) in support of marketing and
commercialization (including but not limited to sales activity) in the
TERRITORY of a HOMEBREW, such expenditure to be made at a rate which is within
SBCL's sole discretion.
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6. PROVISION OF KNOW-HOW AND CONFIDENTIALITY
6.1 PROVISION OF KNOW-HOW
(a) Promptly after the EFFECTIVE DATE, diaDexus shall disclose and supply
to SBCL all KNOW-HOW. Thereafter, diaDexus shall promptly disclose and supply
to SBCL any further KNOW-HOW which may become known to diaDexus. During the
term of the AGREEMENT, and at no cost to SBCL, diaDexus shall provide SBCL with
reasonable technical assistance within diaDexus' area of expertise, with
respect to the utilization of such KNOW-HOW in the development and
commercialization of HOMEBREWS.
(b) SBCL shall to the extent it has the rights to do so, reasonably
cooperate with diaDexus and its sublicensees (including a proposed Kit
manufacturer) in providing information to diaDexus that the parties mutually
agree may be useful in gaining approval for such HOMEBREW as a KIT, provided
such efforts are likely to enhance the overall market for the KIT and/or
HOMEBREW and such efforts may result in information useful to SBCL in its
healthcare services application.
6.2 GENERAL PROVISION REGARDING CONFIDENTIALITY
During the term of this AGREEMENT and for five (5) years thereafter,
irrespective of any termination earlier than the expiration of the term of this
AGREEMENT, and except as otherwise expressly provided in this AGREEMENT, each
party shall hold in strict confidence and not use or disclose to any THIRD
PARTY (other than AFFILIATES, sublicensees, distributors, employees,
consultants and advisors who are similarly bound in writing) any assay,
product, technical, marketing, financial, business or other information, ideas
or know-how identified in writing as confidential ("Confidential Information")
by the other party without first obtaining the written consent of the
disclosing party; provided, however, that Confidential Information of a party
shall not include:
(a) Information which at the time of disclosure to the receiving party
was previously known to the receiving party as demonstrated by written records;
or
(b) Information which at the time of disclosure to the receiving party is
published or otherwise generally available to the public; or
(c) Information which, after disclosure to the receiving party by the
other party, is published or otherwise becomes generally available to the
public through no breach of this AGREEMENT by the receiving party.
(d) Information which is subsequently and independently developed by
employees of the receiving party or AFFILIATES thereof who had no knowledge of
the confidential information disclosed.
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6.3 EXCEPTIONS AND OTHER PROVISION RELATED TO CONFIDENTIAL INFORMATION
A party may disclose Confidential Information of the other party:
(a) As required, in connection with the order of a court or other
governmental body; or
(b) As required by or in compliance with laws or regulations; or
(c) In confidence to accountants, banks and financing sources and their
advisors; or
(d) In confidence to consultants and advisors in connection with a
merger or acquisition or proposed merger or acquisition, or the like; or
(e) as may be required for purposes of investigating, developing,
manufacturing, having manufactured or marketing a HOMEBREW or its components
under this AGREEMENT or for securing essential or desirable authorizations,
privileges or rights from governmental agencies, or is required to be disclosed
to a governmental agency or is necessary to file or prosecute patent
applications concerning a HOMEBREW or its components which arises under this
AGREEMENT.
The parties shall take reasonable measures to assure that no unauthorized
use or disclosure is made by others to whom access to such information is
granted.
All Confidential Information disclosed by one party to the other shall
remain the intellectual property of the disclosing party. If a court or other
legal or administrative tribunal, directly or through an appointed master,
trustee or receiver, assumes partial or complete control over the assets of a
party to this AGREEMENT based on the insolvency or bankruptcy of such party,
the bankrupt or insolvent party shall promptly notify the court or other
tribunal (i) that Confidential Information received from the other party under
this AGREEMENT remains the property of the other party and (ii) of the
confidentiality obligations under this AGREEMENT. In addition, the bankrupt or
insolvent party shall, to the extent permitted by law, take all steps necessary
or desirable to maintain the confidentiality of the other party's Confidential
Information and to ensure that the court, other tribunal or appointee maintains
such information in confidence in accordance with the terms of this AGREEMENT.
6.4 PUBLIC DISCLOSURE REGARDING THE TERMS OF THIS AGREEMENT OR HOMEBREW
(a) Except as otherwise required by law, each of the parties agree not
to disclose, directly or indirectly, by public announcement or other
disclosure, the existence, financial terms or conditions or any other terms of
this AGREEMENT to any THIRD PARTY without the prior written consent of the
other party regarding the nature and text of such announcement or disclosure.
The party desiring to make any such public announcement or other disclosure
shall inform the other party of the proposed announcement or
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disclosure in reasonably sufficient time prior to public release, and shall
provide the other party with a written copy thereof, in order to allow such
other party to comment upon such announcement or disclosure. Each party agrees
that it shall cooperate fully with the other with respect to all disclosures
regarding this AGREEMENT to the Securities Exchange Commission and any other
governmental or regulatory agencies, including requests for confidential
treatment of proprietary information of either party included in any such
disclosure.
(b) Notwithstanding the above, subject to any restrictions which may be
imposed by any governmental agency, including without limitation the Securities
and Exchange Commission, diaDexus and SBCL agree that a public announcement of
this AGREEMENT will be made within five (5) business days after the EFFECTIVE
DATE. Such announcement shall be drafted by diaDexus and SBCL jointly and shall
be mutually acceptable to diaDexus and SBCL.
(c) Neither party shall not submit for written or oral publication any
manuscript, abstract or the like which includes data or other information
relating to a HOMEBREW without first obtaining the prior written consent of the
other party, which consent shall not be unreasonably withheld. The contribution
of each party shall be noted in all publications or representations by
acknowledgment or coauthorship, whichever is appropriate.
7. INDEMNIFICATION AND WARRANTIES
7.1 INDEMNIFICATIONS
(a) Each party (the "indemnitor") shall defend, indemnify and hold
harmless the other party, its AFFILIATES, and its and their respective officers,
directors, employees, agents, successors and assigns (collectively the
"indemnitee") from any loss, damage, or liability, including reasonable
attorney's fees, resulting from any claim, complaint, suit, proceeding or cause
of action against any of them alleging misdiagnosis, physical or other injury,
including death, rising out of the provision of a HOMEBREW, or services
utilizing a HOMEBREW, to the injured party by the indemnitor, its AFFILIATES,
(or its permitted sublicensees); provided that:
(b) The indemnitor shall not be obligated under this Section 7.1 if it is
shown by evidence acceptable in a court of law having jurisdiction over the
subject matter and meeting the appropriate degree of proof for such action,
that the injury was the result of the negligence or willful misconduct of any
employee or agent of the indemnitee or the breach of any warrant or
representation made by the indemnitee in this AGREEMENT.
(c) The indemnitor shall have no obligation under this Section 7.1
unless the indemnitee (i) gives the indemnitor prompt written notice of any
claim or lawsuit or other action for which it seeks to be indemnified under
this AGREEMENT, (ii) the indemnitor is granted full authority and control over
the defense, including settlement against such
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claim or lawsuit or other action and (iii) the indemnitee cooperates fully with
the indemnitor and its agents in defense of the claims or lawsuit or other
action; and
(d) The indemnitee shall have the right to participate in the defense of
any such claim, complaint, suit, proceeding or cause of action referred to in
this Section 7.1 utilizing attorneys of its choice at its own expense,
provided, however, that the indemnitor shall have full authority and control to
handle any such claim, complaint, suit, proceeding or cause of action,
including any settlement or other disposition thereof for which the indemnitee
seeks indemnification under this Section 7.1.
7.2 WARRANTIES AND REPRESENTATIVES
(a) (i) Each party warrants and represents that it has the right to
enter into this AGREEMENT and to perform its obligations hereunder.
(ii) SB and diaDexus each warrants and represents that it will not
encumber PATENTS and KNOW-HOW with liens, mortgages, security interests or
otherwise to the extent they are the owner or assignee of such PATENT and/or
KNOW-HOW.
(iii) diaDexus further warrants and represents that there is nothing
in any THIRD PARTY agreement diaDexus has entered into as of the EFFECTIVE DATE
which, in any way, will limit diaDexus' ability to perform all of the
obligations undertaken by diaDexus hereunder, and that it will not enter into
any such agreement after the EFFECTIVE DATE under which diaDexus would incur
any such limitations.
(iv) Nothing in this AGREEMENT shall be construed as a warranty or
representation by diaDexus as to the validity of any patent claim or patent
within the PATENTS. Nothing in this AGREEMENT shall be construed as a warranty
or representation by diaDexus that any HOMEBREW made, used or imported, or any
service offered for sale or sold, pursuant to the rights and license granted
under this AGREEMENT is or will be free from infringement of any patent right
held by any THIRD PARTY.
(v) diaDexus warrants and represents that it has not, up through and
including the EFFECTIVE DATE, omitted to furnish SBCL with any information in
its possession concerning HOMEBREWS or the transactions contemplated by this
AGREEMENT, which would be material to SBCL's decision to enter into this
AGREEMENT and to undertake the commitments and obligations set forth herein.
(b) DIADEXUS GRANTS NO WARRANTIES WITH RESPECT TO THE PATENTS, KNOW-HOW
OR HOMEBREWS OR SERVICES UTILIZING HOMEBREWS, EXPRESS OR IMPLIED. EITHER IN
FACT OR BY OPERATION OF LAW, BY STATUTE OR OTHERWISE, AND DIADEXUS SPECIFICALLY
DISCLAIMS ANY IMPLIED WARRANTY OR QUALITY, WARRANTY OF MERCHANTABILITY,
WARRANTY OF FITNESS FOR A PARTICULAR PURPOSE OR WARRANTY OF NONINFRINGEMENT.
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8. PATENT PROSECUTION, ENFORCEMENT AND DEFENSE
8.1 INVENTIONS AND PROSECUTION
(a) Each party shall have and retain sole and exclusive title to all
inventions, discoveries and know-how which are made, conceived, reduced to
practice or generated by its employees, agents, or other persons acting under
its authority in the course of or as a result of this AGREEMENT. Each party
shall own a fifty percent (50%) undivided interest in all such inventions,
discoveries and KNOW-HOW made, conceived, reduced to practice or generated
jointly by employees, agents, or other persons acting under the authority of
both parties in the course of or as a result of this AGREEMENT. Except as
expressly provided in this AGREEMENT, each joint owner may make, use, sell,
keep, license, assign, or mortgage such jointly owned inventions, discoveries
and know-how, and otherwise undertake all activities a sole owner might
undertake with respect to such inventions, discoveries and know-how, without
the consent of and without accounting to the other joint owner.
(b) diaDexus warrants and represents that it will promptly disclose to SBCL
the complete texts of all PATENTS filed by diaDexus which relate to a HOMEBREW
or its components to which SBCL holds exclusive rights hereunder as well as all
information received after the EFFECTIVE DATE concerning the institution or
possible institution of any interference, opposition, re-examination, reissue,
revocation, nullification or any official proceeding involving such PATENT
anywhere in the TERRITORY. SBCL shall have the right to review all such pending
applications and other proceedings and make recommendations to diaDexus
concerning them and their conduct. diaDexus agrees to keep SBCL promptly and
fully informed of the course of patent prosecution or other proceedings
including by providing SBCL with copies of substantive communications, search
reports and third party observations submitted to or received from patent
offices throughout the TERRITORY. SBCL shall provide such patent consultation
to diaDexus at no cost to diaDexus. SBCL shall hold all information disclosed
to it under this section as confidential subject to the provisions of Section
6.2.
(c) During the term of this AGREEMENT, the filing, prosecution and
maintenance of PATENTS listed on part A of Exhibit A are governed by the
COLLABORATION AND LICENSE AGREEMENT until diaDexus has assumed such PATENTS
under Paragraph 14.3 of the COLLABORATION AND LICENSE AGREEMENT.
(d) During the term of this AGREEMENT, diaDexus shall, at its expense and in
its sole discretion, file, prosecute and maintain all other PATENTS. During the
term of the AGREEMENT in which SBCL has an exclusive right to a HOMEBREW under
such PATENTS and KNOW-HOW, SBCL shall have the right, but not the obligation,
to assume responsibility for any such PATENT or any part of such PATENT which
diaDexus intends to abandon or otherwise cause or allow to be forfeited.
diaDexus shall give SBCL reasonable written notice prior to abandonment or
other forfeiture of any such PATENT or any part of such PATENT so as to permit
SBCL to exercise its rights under this Section.
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8.2 ENFORCEMENT
(a) During the term of this AGREEMENT, enforcement of PATENTS listed on
part A of Exhibit A are governed by the COLLABORATION AND LICENSE AGREEMENT
until diaDexus has assumed such PATENTS under Paragraph 14.3 of the
COLLABORATION AND LICENSE AGREEMENT. For all other PATENTS:
(b) If either diaDexus or SBCL determines that a THIRD PARTY is making,
using, offering for sale, selling or importing a HOMEBREW or its components or
that may infringe PATENTS in the TERRITORY, the party that has made such
determination will notify the other party promptly in writing.
(c) diaDexus, in its own name or jointly with SBCL if required by law, at
diaDexus' expense, shall have the first right, at diaDexus' election, but no
obligation to (i) bring and prosecute actions, proceedings, suits and
countersuits for enforcement of PATENTS covering a HOMEBREW or its components
or HOMEBREW in the TERRITORY, and/or (ii) settle any claim or demand, including
without limitation any suit, for enforcement of PATENTS covering a HOMEBREW or
its components or HOMEBREW in the TERRITORY. If diaDexus elects to bring any
action, proceeding, suit or countersuit for infringement of PATENTS covering a
HOMEBREW or its components of HOMEBREW in the relevant country of the
TERRITORY, diaDexus shall direct and control such action, proceeding, suit or
countersuit and shall provide prompt and regular updates to SBCL of diaDexus'
intentions and progress toward resolution of such action, proceeding, suit or
countersuit.
(d) If diaDexus brings any action, proceeding, suit or countersuit to
enforce rights within PATENTS covering a HOMEBREW or its components or HOMEBREW
in the TERRITORY against any infringer pursuant to Section 8.2(c), SBCL, at its
expenses, shall cooperate with diaDexus in connection with such action,
proceeding, suit or countersuit, including without limitation by joining as a
party if necessary and appropriate, and executing such documents as diaDexus
may reasonably request. diaDexus and SBCL shall recover their respective actual
out-of-pocket expenses, or equitable proportions thereof, associated with any
litigation or settlement thereof from any recovery made by any party.
(e) If diaDexus does not commence an action, proceeding or suit against a
THIRD PARTY to enforce any rights within PATENTS covering a HOMEBREW or its
components or HOMEBREW in the TERRITORY, or does not otherwise take action to
xxxxx infringement of PATENTS by a THIRD PARTY in the TERRITORY, within 30 days
after giving or receiving notice thereof, pursuant to Section 8.2(b), and
thereafter pursues such action or proceeding diligently, SBCL, at SBCL's
expense, shall have a right but not an obligation to commence or take control
of such action, proceeding or suit. In the event that SBCL elects to commence
or take control of any action, proceeding or suit pursuant to this Section
8.2(e), diaDexus, at diaDexus' expense, shall cooperate with SBCL in connection
with such action, proceeding or suit, including without limitation by joining
as a party if necessary and appropriate, and executing such documents as SBCL
may
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reasonably request, diaDexus and SBCL shall recover their respective actual
out-of-pocket expenses, or equitable proportions thereof, associated with any
litigation or settlement thereof from any recovery made by any party.
8.3 DEFENSE
(a) During the term of this AGREEMENT, defense of PATENTS listed on part
A of Exhibit A are governed by the COLLABORATION AND LICENSE AGREEMENT until
diaDexus has assumed such PATENTS under Paragraph 14.3 of the COLLABORATION AND
LICENSE AGREEMENT. For all other PATENTS:
(b) SBCL shall defend or, at SBCL's option, settle, at SBCL's expense,
any action, proceeding, suit or claim brought against SBCL on the issue of
infringement by it or its AFFILIATES making, having made, using or importing a
HOMEBREW, or for offering for sale, selling or performing HOMEBREW, in the
TERRITORY; provided, however, that SBCL shall not settle any such action,
proceeding, suit or claim which would adversely affect the scope and/or
validity of PATENTS without the express prior written consent of diaDexus.
9. TERM AND TERMINATION
9.1 TERM -- INITIAL AND EXTENDED.
(a) The initial term of this AGREEMENT will commence on the EFFECTIVE
DATE and shall remain in full force and effect until the fifth (5) year
anniversary of the EFFECTIVE DATE, unless terminated at an earlier date in
accordance with the terms and conditions of this Section 9 or as otherwise
provided in Section 5.5.
(b) Notwithstanding the above, SBCL, at any time during the fifth year
after the EFFECTIVE DATE or any extension year, upon written notice to
diaDexus, may extend the term of this AGREEMENT for up to 3 additional periods
of 1 year each; provided that this AGREEMENT has not expired or terminated
prior to the date of diaDexus' receipt of any such written notice of extension.
If SBCL still has an exclusive license under PATENTS and KNOW-HOW under Section
2.1 at the time SBCL provides such notice to diaDexus, the terms and conditions
of each and any such extension shall be, at diaDexus' option and discretion,
either (i) an exclusive license in accordance with Section 2.1 above, or (ii) a
non-exclusive license in accordance with Section 2.2 above.
9.2 TERMINATION FOR MATERIAL BREACH OR DEFAULT.
(a) Either diaDexus or SBCL may terminate this AGREEMENT in the event of
a material breach of or default under this AGREEMENT by the other party.
(b) The effective date of termination of this AGREEMENT for material
breach or default shall be the date of receipt by the breaching party of
written notice of termination of this AGREEMENT by the non-breaching party,
such written notice to be provided at any time after 90 days after the date of
a written notice by the non-breaching
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party to the breaching party of a material breach or default, unless the
breaching party shall have cured such breach or default within such 90-day
period.
9.3 AT-WILL TERMINATION
SBCL may terminate this AGREEMENT on a country by country basis, at any
time upon one hundred twenty (120) days prior written notice to diaDexus.
9.4 BANKRUPTCY
(a) Either party may terminate this AGREEMENT if, at any time, the other
party shall file in any court or agency pursuant to any statute or regulation of
any state or country, a petition in bankruptcy or insolvency or for
reorganization or for an arrangement or for the appointment of a receiver or
trustee of the party or of its assets, or if the other party shall be served
with an involuntary petition against it, filed in any insolvency proceeding, and
such petition shall not be dismissed within sixty (60) days after the filing
thereof, or if the other party shall propose or be a party to any dissolution or
liquidation, or if the other party shall make an assignment for the benefit of
creditors.
(b) Notwithstanding the bankruptcy of diaDexus, or the impairment of
performance by diaDexus of its obligations under this AGREEMENT as a result of
bankruptcy or insolvency of diaDexus, SBCL shall be entitled to retain the
licenses granted herein, subject to diaDexus' rights to terminate this AGREEMENT
for reasons other than bankruptcy or insolvency as expressly provided in this
AGREEMENT.
(c) All rights and distribution rights granted under or pursuant to this
AGREEMENT by diaDexus to SBCL are, and shall otherwise be deemed to be, for
purposes of Section 365(n) of the U.S. Bankruptcy Code, licenses of rights to
"intellectual property" as defined under Section 101(52) of the U.S. Bankruptcy
Code. The parties agree that SBCL, as a licensee of such rights under this
AGREEMENT, shall retain and may fully exercise all of its rights and elections
under the U.S. Bankruptcy Code, subject to performance by SBCL of its
preexisting obligations under this AGREEMENT. The parties further agree that, in
the event of the commencement of a bankruptcy proceeding by or against diaDexus
under the U.S. Bankruptcy Code, SBCL shall be entitled to a complete duplicate
of (or complete access to, as appropriate) any such intellectual property and
all embodiments of such intellectual property, and same, if not already in its
possession, shall be promptly delivered to SBCL (i) upon any such commencement
of a bankruptcy proceeding upon written request therefor by SBCL, unless
diaDexus elects to continue to perform all of its obligations under this
AGREEMENT, or (ii) if not delivered under (i) above, upon the rejection of this
AGREEMENT by or on behalf of diaDexus upon written request therefor by SBCL;
provided, however that upon diaDexus' (or its successor's) written notification
to SBCL that it is again willing and able to perform all of its obligations
under this AGREEMENT, SBCL shall promptly return all such tangible materials to
diaDexus, but only to the extent that SBCL does not require continued access to
such materials to enable SBCL to perform its obligations under this AGREEMENT.
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9.5 EFFECT OF EXPIRATION OR TERMINATION
(a) Upon termination of this AGREEMENT, diaDexus shall have the right to
retain any sums already paid by SBCL hereunder, and SBCL shall pay all sums
accrued hereunder which are then due.
(b) Termination of this AGREEMENT in its entirety shall terminate all
outstanding obligations and liabilities between the parties arising from this
AGREEMENT except those described in Sections 4, 6.2, 7, 9.5, and 10. In
addition, any other provision required to interpret and enforce the parties'
rights and obligations under this AGREEMENT shall also survive, but only to the
extent required for the full observation and performance of this AGREEMENT.
(c) Termination of the AGREEMENT in accordance with the provisions hereof
shall not limit remedies which may be otherwise available in law or equity.
10. MISCELLANEOUS PROVISIONS
10.1 GOVERNING LAW
This AGREEMENT shall be governed by, and construed and interpreted in
accordance with, the law of the State of Delaware, without reference to conflict
of laws principles.
10.2 ASSIGNMENT
The rights and liabilities of the parties hereto will bind and inure to the
benefit of their successors, executors or administrators; provided that, neither
party may assign or delegate any right or obligation under this AGREEMENT,
either in whole or in part, to any entity, without the express prior written
consent of the other party; provided, however, that either party may assign this
AGREEMENT or any part of its rights and obligations hereunder to any AFFILIATE
or to any corporation with which it may merge or consolidate, or to which it may
transfer all or substantially all of its assets to which this AGREEMENT relates,
without obtaining the consent of the other party. Any permitted assignee or
transferee shall agree in writing to comply with all the terms and conditions
contained in this AGREEMENT. Any attempted assignment in violation of the
provisions of this Section 10.2 will be void.
10.3 ENTIRE AGREEMENT
This AGREEMENT and the COLLABORATION AND LICENSE AGREEMENT constitutes the
entire and exclusive agreement between the parties with respect to the subject
matter hereof and supercedes and cancels all previous registrations, agreements,
commitments and writings in respect thereof so far as the subject matter of this
AGREEMENT is concerned. As between the parties to this AGREEMENT, in the event
of conflict between the terms of this AGREEMENT and the COLLABORATION AND
LICENSE AGREEMENT the
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terms of this AGREEMENT shall prevail. This AGREEMENT shall not act in any way
to modify or amend the terms and conditions of the COLLABORATION AND LICENSE
AGREEMENT.
10.4 MODIFICATION
No modification to this AGREEMENT shall be effective unless consented to
in writing by the party to be charged.
10.5 WAIVER
No waiver of any rights shall be effective unless consented to in writing
by the party to be charged and the waiver of any breach of default shall not
constitute a waiver of any other right hereunder or any subsequent breach or
default.
10.6 NOTICES
Any notice, request, approval or other document required or permitted to
be given under this AGREEMENT shall be in writing and shall be deemed to have
been given when delivered in person, or sent by overnight courier service,
postage prepaid, or sent by certified or registered mail, return receipt
requested, or by facsimile transmission, to the following addresses of the
parties (or to such other address or addresses as may be specified from time to
time in written notice). Any notices given pursuant to this AGREEMENT shall be
deemed to have been given and delivered upon the earlier of (i) if sent by
overnight courier service, on the date when received at the address set forth
below as proven by a written receipt from the delivery service verifying
delivery, or (ii) if sent by certified or registered mail, three (3) business
days after mailed by certified or registered mail postage prepaid and properly
addressed, with return receipt requested, or (iii) if sent by facsimile
transmission, on the day when sent by facsimile as confirmed by automatic
transmission report coupled with certified or registered mail or overnight
courier service receipt proving delivery, or (iv) if delivered in person, on
the date of delivery to the address set forth below as proven by written
signature of the recipient.
diaDexus
diaDexus, LLC
0000 Xxxxxxxx Xxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000
Attention: Chief Executive Officer
SBCL
SmithKline Xxxxxxx Clinical Laboratories
0000 Xxxxx Xxxxxxxxxxxx Xxxx
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000
Attention: President
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copies to:
SmithKline Xxxxxxx Corporation
One Franklin Plaza (Mail Code FP2225)
X.X. Xxx 0000
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000, X.X.X.
Attention: Corporate Law-U.S.
10.7 DESCRIPTIVE HEADINGS
The headings of the several sections of this AGREEMENT are intended for
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this AGREEMENT.
10.8 COUNTERPARTS
This AGREEMENT may be executed in counterparts, each of which shall be
deemed an original but all of which together shall constitute one and the same
instrument.
10.9 TRADEMARKS
SBCL and diaDexus shall jointly be responsible for the selection of all
trademarks and service marks which SBCL, its AFFILIATES, and sublicensees
employ in connection with a HOMEBREW in the TERRITORY and shall jointly own and
control such marks. The parties shall jointly control prosecution and
maintenance of such marks and the parties shall equally share the related costs
and expenses fully.
10.10 FORCE MAJEURE
If the performance of any part of this AGREEMENT by either party, or of
any obligation under this AGREEMENT, is prevented, restricted, interfered with
or delayed by reason of any cause beyond the reasonable control of the party
liable to perform, unless conclusive evidence to the contrary is provided, the
party so affected shall, upon giving written notice to the other party, be
excused from such performance to the extent of such prevention, restriction,
interference or delay, provided that the affected party shall use its
reasonable best efforts to avoid or remove such causes of non-performance and
shall continue performance with the utmost dispatch whenever such causes are
removed. When such circumstances arise, the parties shall discuss what, if any,
modification of the terms of this AGREEMENT may be required in order to arrive
at an equitable solution.
10.11 SEPARABILITY
(a) If any portion of this AGREEMENT shall be held illegal, void or
ineffective, the remaining portions hereof shall remain in full force and
effect.
(b) If any of the terms or provisions of this AGREEMENT are in conflict
with any applicable statute or rule of law, then such terms or provisions shall
be deemed
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inoperative to the extent that they may conflict therewith and shall be deemed
to be modified to conform with such statute or rule of law.
(c) If the terms and conditions of this AGREEMENT are materially altered
as a result of Sections 10.11(a) or 10.11(b), the parties will renegotiate the
terms and conditions of this AGREEMENT to resolve any inequities.
10.12 RECORDING
SBCL shall have the right, at any time, to record, register, or otherwise
notify this AGREEMENT in appropriate governmental or regulatory offices
anywhere in the TERRITORY, and diaDexus shall provide reasonable assistance to
SBCL in effecting such recording, registering or notifying.
IN WITNESS WHEREOF, the undersigned are duly authorized to execute this
AGREEMENT on behalf of diaDexus and SBCL, as applicable.
diaDexus, LLC SMITHKLINE XXXXXXX CLINICAL
("diaDexus") LABORATORIES, INC.
("SBCL")
By: /s/ [Signature Illegible] By: /s/ [Signature Illegible]
----------------------------- -----------------------------
Title: President & CEO Title: President
------------------------- -------------------------
Date: 6 Feb 99 Date: 10 Feb 99
--------------------------- ---------------------------
EXECUTION Page 22
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LICENSE AGREEMENT
SMITHKLINE XXXXXXX CLINICAL LABORATORIES-DIADEXUS, LLC
EXHIBIT A
PATENTS
Part a: ****** Patent Family
---------------------------------------------------------------------------
COUNTRY APPLICATION # FILING DATE STATUS/PATENT #
---------------------------------------------------------------------------
USA ****** 16 Sept 1996 US Patent 5.747.264
Issued 5 May 98
---------------------------------------------------------------------------
USA ****** 20 June 1997 Pending
---------------------------------------------------------------------------
USA ****** January 0000 Xxxxxxx
---------------------------------------------------------------------------
XXXXXX ****** Pending
---------------------------------------------------------------------------
EPO ****** 31 July 1997 Pending
---------------------------------------------------------------------------
JAPAN ****** Pending
---------------------------------------------------------------------------
S. AFRICA ****** 31 July 1997 97/6814
Issued
27 May 1998
---------------------------------------------------------------------------
PCT ****** 31 July 1997 02 February 1999 is
the 30th month.
National Phase
---------------------------------------------------------------------------
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has
been requested with respect to the omitted portions.
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---------------------------------------------------------------------------
Entry Requests
Japan, Canada EP
---------------------------------------------------------------------------
****** Patent Family
---------------------------------------------------------------------------
COUNTRY APPLICATION # FILING DATE STATUS/PATENT #
---------------------------------------------------------------------------
USA ****** 2/23/98 Pending
---------------------------------------------------------------------------
USA ****** 7/8/98 Pending
---------------------------------------------------------------------------
USA ****** 10/20/98 Pending
---------------------------------------------------------------------------
PCT ****** 2/23/99 Pending
---------------------------------------------------------------------------
***** Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has
been requested with respect to the omitted portions.
Page 24
