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EXHIBIT 10.4 CONFIDENTIAL TREATMENT
GENOMETRIX INCORPORATED HAS REQUESTED
THAT THE MARKED PORTIONS OF THIS DOCUMENT
BE ACCORDED CONFIDENTIAL TREATMENT PURSUANT
TO RULE 406 UNDER THE SECURITIES ACT OF 1933,
AS AMENDED.
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
GENOMETRIX, INCORPORATED
PATENT LICENSE AGREEMENT
(EXCLUSIVE)
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MASSACHUSETTS INSTITUTE OF TECHNOLOGY
GENOMETRIX INCORPORATED
PATENT LICENSE AGREEMENT
This Agreement is made and entered into this April 1, 1996, (the
"Effective Date") by and between MASSACHUSETTS INSTITUTE OF TECHNOLOGY, a
corporation duly organized and existing under the laws of the Commonwealth of
Massachusetts and having its principal office at 00 Xxxxxxxxxxxxx Xxxxxx,
Xxxxxxxxx, Xxxxxxxxxxxxx 00000, X.X.X. (hereinafter referred to as "M.I.T."),
and GENOMETRIX INCORPORATED, a corporation duly organized and existing under the
laws of Delaware and a company having its principal office at 0000 Xxxxxxxx
Xxxxxx Xxxxx, Xxxxx X-0, the Xxxxxxxxx, XX 00000 (hereinafter referred to as
"LICENSEE").
WITNESSETH
WHEREAS, M.I.T., the Houston Advanced Research Center, having its
principal address at 0000 Xxxxxxxx Xxxxxx Xx., Xxxxx X-0, Xxx Xxxxxxxxx, XX
00000 (hereinafter "HARC") and the Baylor College of Medicine, having its
principal address at 0000 Xxxxxx, Xxxxxxx, XX 00000 (hereinafter "BCM") are the
owners of and have the right to grant licenses under certain PATENT RIGHTS (as
later defined herein) relating to M.I.T. Case No. 5722L, "Genosensors For DNA
Decoding," by Xxxxx Xxxxx, Xxxxx-Xxx Xxxx, Xxxxxxxx Xxxxxx, Xxxxxx Xxxxxxx,
Xxxxxxx Xxxxx, Xxxx Xxxxxx, Xxxxxxx Xxxxxxx, Xxxxxxx Xxxxxxx, Xxxxx Xxxxxx and
Xxxxxx Xxxxxxx and related to M.I.T. Case NO. 6838L, "Optical and Electrical
Methods and Apparatus for Molecule Detection" (Formerly part of 5722L), by Xxxx
Xxxxxx, Xxxxx-Xxx Xxxx, Xxxxxxx Xxxxxxx, Xxxxx Xxxxxx, Xxxxx Xxxxx, Xxxxxxx
Xxxxxxx, Xxxxxx Xxxxxxx, Xxxxxx Xxxxxxx, Xxxxxxx X. Xxxxx and Xxxxxxxx X. Xxxxx
and has the right to grant licenses under said PATENT RIGHTS, subject only to a
royalty-free, nonexclusive license heretofore granted to the United States
Government;
WHEREAS, HARC and BCM have appointed M.I.T. as their licensing agent
for M.I.T. Case 5722L in the Technology Transfer and Royalty-Sharing Agreement
by and between M.I.T., HARC and BCM dated July 16, 1992;
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WHEREAS, LICENSEE AND M.I.T. entered into an exclusive license
agreement dated May 27, 1994 (attached hereto and referenced as ATTACHMENT R)
which the parties now wish to terminate and replace with two license agreements,
one for intellectual property related to M.I.T. Case 5722L and M.I.T. Case 6838L
the "5722L Agreement", which is this Agreement, and one for intellectual
property related to M.I.T. Case 6394L the "6394L Agreement";
WHEREAS, M.I.T. to induce M.I.T. to enter into this Agreement, that
LICENSEE is knowledgeable with respect to products similar to the LICENSED
PRODUCT(s) (as later defined herein) and/or the use of the LICENSED PROCESS(es)
(as later defined herein) and that it shall commit itself to a thorough,
vigorous and diligent program of exploiting the PATENT RIGHTS so that public
utilization shall result therefrom; and
WHEREAS, LICENSEE desires to obtain a license under the PATENT RIGHTS
upon the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein, the parties hereto agree as follows:
DEFINITIONS
For the purposes of this Agreement, the following words and phrases
shall have the following meanings:
1.1 "LICENSEE" shall mean GENOMETRIX INCORPORATED, shall include a
related company of GENOMETRIX INCORPORATED, the voting stock
of which is directly or indirectly at least fifty percent
(50%) owned or controlled by GENOMETRIX INCORPORATED, an
organization which directly or indirectly controls more than
fifty percent (50%) of the voting stock of GENOMETRIX
INCORPORATED and an organization, the majority ownership of
which is directly or indirectly common to the ownership of
GENOMETRIX INCORPORATED.
1.2 "PATENT RIGHTS" shall mean all of the following M.I.T., HARC,
and BCM intellectual property:
a. the United States and foreign patents and/or patent
applications listed in Appendices A and B;
b. United States and foreign patents issued from the
applications listed in Appendices A and B an from
divisionals, continuations, revisions and
reexaminations of these applications;
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c. Claims of U.S. and foreign continuation-in-part
applications, and of the resulting patents, which are
directed to subject matter specifically described in
the U.S. and foreign applications listed in
Appendices A and B;
d. claims of all foreign patent applications, and of the
resulting patents, which are directed to subject
matter specifically described in the United States
patents and/or patent applications described in a, b
or c above; and
e. any reissues of United States and foreign patents
described in a, b or c above.
1.3 A "LICENSED PRODUCT" shall mean any product or part thereof which:
a. is covered in whole or in part by a VALID CLAIM or a
pending claim asserted in good faith contained in the
PATENT RIGHTS in the country in which any such
product or part thereof is made, used or sold; or
b. is manufactured by using a process which is covered
in whole or in part by a VALID CLAIM or pending claim
asserted in good faith contained in the PATENT RIGHTS
in the country in which any LICENSED PROCESS is used
or in which such product or part thereof is used or
sold.
1.4 A "LICENSED PROCESS" shall mean any process which is covered in
whole in part by a VALID CLAIM or a pending claim asserted in good faith
contained in the PATENT RIGHTS.
1.5 "NET SALES" shall mean LICENSEE's and its sublicensees' xxxxxxxx
for LICENSED PRODUCTS and LICENSED PROCESSES sold hereunder less the sum of the
following:
a. discounts allowed in amounts customary in the trade;
b. sales, tariff duties and/or use taxes directly
imposed and with reference to particular sales;
c. packing and crating charges separately stated;
d. outbound transportation prepaid or allowed;
e. amounts allowed or credited on returns, and
f. amounts paid to third parties to collect monies due
from sublicensees.
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
No deductions shall be made for commissions paid to individuals whether
they be with independent sales agencies or regularly employed by LICENSEE and on
its payroll, or except as provided above, for cost of collections. LICENSED
PRODUCTS shall be considered "sold" when billed out or invoiced.
1.6 "TERRITORY" shall mean worldwide.
1.7 A "VALID CLAIM" shall mean a claim of an issued, unexpired patent
contained in the PATENT RIGHTS so long as such claim shall not have been held
invalid in an unappealed or unappealable decision rendered by a court of
competent jurisdiction.
1.8 "FIELD OR USE" shall mean all fields of use
****************************************************************************** ,
which term `GENOSENSOR SYSTEM' is defined in a Collaboration Agreement among
M.I.T., Xxxxxxx Instruments, Inc., GENOMETRIX and certain others, dated May 28,
1993 and amended November 5, 1993 to read:
"the system developed by the PARTIES as generally described in
the AWARD proposal for detecting hybridization of target
DNA/RNA to known DNA/RNA, PNA or other nucleic acid analog
probes. The system will be used only for high and/or low
resolution sequence determination and will consist of a
microfabricated semiconductor device ("GENOSENSOR CHIP") or
("CHIP") designed to be used with an array of probes attached
to a solid support, means for exposing the array of probes to
target DNA/RNA (the sample), means for detecting whether or
not (and where) hybridization has occurred and means for
reporting the results. The solid support can be the GENOSENSOR
CHIP itself or a separable support."
1.9 "5722L Agreement" shall mean this Agreement for the intellectual
property related to M.I.T. Case 5722L and M.I.T. Case 6838L and listed in
Appendices A and B.
1.10 "6394L Agreement" shall mean a license agreement by and between
M.I.T. and LICENSEE for intellectual property related to M.I.T. Case No. 6394L,
and executed on the Effective Date of this Agreement.
2 - GRANT
2.1 M.I.T. hereby grants to LICENSEE the right and license in the
TERRITORY for the FIELD OF USE to practice under the PATENT RIGHTS and, to the
extent not prohibited by other patents, to make, have made, use, lease, sell and
import LICENSED PRODUCTS and to
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practice the LICENSED PROCESSES, until the end of the term, for which the PATENT
RIGHTS are granted unless this Agreement shall be sooner terminated according to
the terms hereof.
2.2 LICENSEE agrees that LICENSED PRODUCTS leased or sold in the United
States shall be manufactured substantially in the United States.
2.3 In order to establish a period of exclusivity for LICENSEE, M.I.T.
hereby agrees that it shall not grant any other license to make, have made, use,
lease, sell or import LICENSED PRODUCTS or to utilize LICENSED PROCESSES in the
TERRITORY for the FIELD Of USE during the period of time commencing with the
Effective Date of this Agreement and terminating with the expiration of ten (10)
years after the Effective Date of this Agreement. If at the end of the exclusive
period, LICENSEE has achieved all milestones within this agreement and has not
breached this agreement, M.I.T. shall negotiate to extend the exclusive period,
such negotiations shall be in good faith.
2.4 At the end of the exclusive period, the license granted hereunder
shall become nonexclusive and shall extend to the end of the term or terms for
which any PATENT RIGHTS are issued, unless sooner terminated as hereinafter
provided.
2.5 M.I.T., HARC, and BCM reserve the right to practice under the
PATENT RIGHTS for noncommercial research purposes.
2.6 LICENSEE shall have the right to enter into sublicensing agreements
for the rights, privileges and licenses granted hereunder only during the
exclusive period of this Agreement. Such sublicenses may extend past the
expiration date of the exclusive period of this Agreement, but any exclusivity
of such sublicenses shall expire upon the expiration of LICENSEE's exclusivity.
Upon any termination of this Agreement, sublicensees' rights shall also
terminate, subject to Article 13.6 hereof.
2.7 LICENSEE agrees that any sublicenses granted hereunder by it shall
provide that the obligations to M.I.T. of Articles 2, 5, 7, 8, 9, 10. 12, 13,
and 15 of this Agreement shall be binding upon the sublicensee as if it were a
party to this Agreement. LICENSEE further agrees to attach copies of these
Articles to sublicense agreements.
2.8 LICENSEE agrees to forward to M.I.T. a copy of any and all
sublicense agreements promptly upon execution by the parties.
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
2.9 LICENSEE shall not receive from sublicensees anything of value in
lieu of cash payments in consideration for any sublicense under this Agreement,
without the express prior written permission of M.I.T., which shall not be
unreasonably withheld, provided M.I.T. receives its share of value.
2.10 The license granted hereunder shall not be construed to confer any
rights upon LICENSEE by implication, estoppel or otherwise as to any technology
not specifically set forth in Appendices A and B hereof or not otherwise within
the definition of PATENT RIGHTS.
3 - DUE DILIGENCE
3.1 LICENSEE shall use its commercially reasonable best efforts to
bring one or more LICENSED PRODUCTS or LICENSED PROCESSES to market through a
thorough, vigorous and diligent program for exploitation of the PATENT RIGHTS
and to continue active, diligent marketing efforts for one or more LICENSED
PRODUCTS or LICENSED PROCESSES throughout the life of this Agreement.
3.2 In addition, LICENSEE shall adhere to the following milestones:
a. LICENSEE shall deliver to M.I.T. on or before January
1 of each year of this License a business plan
showing the amount of money, number and kind of
personnel and time budgeted and planned for each
phase of development of the LICENSED PRODUCTS and
LICENSED PROCESSES.
b. LICENSEE shall make NET SALES of LICENSED PRODUCTS
under M.I.T. Case 5722L and M.I.T. Case 6838L
according to the following schedule:
1998 ************
1999 ************
2000 and each year thereafter ************
3.3 LICENSEE's failure to perform in accordance with Paragraphs 3.1 and
3.2 above shall be grounds for M.I.T. to terminate this Agreement pursuant to
Paragraph 13.3 hereof.
3.4 In addition, in order to maintain exclusive rights to the PATENT
RIGHTS, LICENSEE shall adhere to the following milestones:
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
a. LICENSEE shall raise One Million Five Hundred
Thousand Dollars ($1,500,000) in equity financing by
May 1, 1996, said financing to be used to
commercialize M.I.T Case 5722L and M.I.T. Case 6838L.
b. LICENSEE shall make NET SALES of LICENSED PRODUCTS
relating to M.I.T. Case 5722L and M.I.T. Case 6838L
and according to the following schedule:
1998 ************
1999 *************
2000 and each year thereafter *************
3.5 LICENSEE's failure to perform in accordance with Article 3.4 above
shall be grounds for M.I.T. upon written notice to terminate the exclusive
provisions of this Agreement and to convert the license granted by this
Agreement to nonexclusive.
4- ROYALTIES
4.1 For the rights, privileges and license granted hereunder, LICENSEE
shall pay royalties to M.I.T. in the manner hereinafter provided to the end of
the term of the PATENT RIGHTS or if earlier until this Agreement shall be
terminated:
(a) Shares of common stock of LICENSEE equal to ten
percent (10%) of the total outstanding common and
preferred shares of LICENSEE. Said shares shall be
due with thirty (30) days of LICENSEE'S raising One
Million Dollars ($1,000,000), cumulative, of equity
financing and shall be transferred to M.I.T. at no
charge to M.I.T. M.I.T. agrees to make to the
LICENSEE customary representations required of equity
investors which have equity in LICENSEE. Thereafter,
no additional shares shall be due to M.I.T., provided
that in subsequent rounds of financing. M.I.T. shall
have the right to invest in that number of additional
shares of common or preferred stock of the LICENSEE
as are issued by the LICENSEE in any subsequent
financing in an amount equal to the percentage of the
outstanding Common Stock owned by M.I.T. immediately
prior to such financing provided that for purposes of
determining such percentage, any shares of
convertible preferred stock shall be included on an
as converted basis provided, however, in any event,
M.I.T.'s right of participation shall not apply to
any issuance of shares of capital stock or grant of
an option or other right to purchase shares of
capital stock to employees, directors, officers,
advisors or consultants of or to LICENSEE or in
connection with license, joint venture, corporate
partnering or research and development agreement or
equipment or lease financing arrangements. M.I.T.'s
right of
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
purchase shall be at the same price payable by other
investors in such financing. LICENSEE shall provide
M.I.T. written notice of such a financing and the
purchase terms and M.I.T. shall have ten (10)
business days to elect by written notice to the
LICENSEE to participate in such financing. M.I.T.
shall be required in the event of its participation
to make customary investment representations in
connection with such purchase, including meeting any
accreditation or suitability standards imposed by
federal or state securities law. The right of
purchase set forth herein shall not apply to any
securities offered in a public offering and shall
terminate upon the consummation of an initial public
offering of the LICENSEE registered under the
Securities Act of 1933. This stock provision applies
in the aggregate to funds raised under this Agreement
and to funds raised under the 6394L Agreement, and
funds raised under the now terminated May 27, 1994
Agreement.
(b) Running Royalties in an amount equal to ***********
of the NET SALES of the LICENSED PRODUCTS and
LICENSED PROCESSES sold by the LICENSEE during the
period of this Agreement.
(c) ********** of any sublicense fee received by LICENSEE
from a sublicensee during the period of this
Agreement.
(d) ********** of any running and/or minimum royalty
received by LICENSEE from a sublicensee during the
period of this Agreement. In no event shall the
amount due M.I.T. under the above provision be less
than ********** or more than *********** of the NET
SALES of the LICENSED PRODUCTS and LICENSED PROCESSES
sold by said sublicensee.
4.2 All payments due hereunder shall be paid in full, without deduction
of taxes or other fees which may be imposed by any government and which shall be
paid by LICENSEE.
4.3 No multiple royalties shall be payable because any LICENSED
PRODUCT, its manufacture, use, lease, sale or import are or shall be covered by
more than one PATENT RIGHTS patent application and/or PATENT RIGHTS patent
licensed under this Agreement.
4.4 If LICENSEE pays royalties to a third party for patents necessary
to the manufacture, use or sale of a LICENSED PRODUCT or LICENSED PROCESS, then
LICENSEE may credit ************ of the third party royalties paid against the
royalties otherwise due to M.I.T. for the LICENSED PRODUCT or LICENSED PROCESS
under Article 4.1 b. above; provided, however, that the royalties paid to M.I.T.
for that LICENSED
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
PRODUCT or LICENSED PROCESS shall not be less than ************* of those
otherwise due under Article 4.1(b) above.
4.5 Royalty payments shall be paid in United States dollars in
Cambridge, Massachusetts, or at such other place as M.I.T. may reasonably
designate consistent with the laws and regulations controlling in any foreign
country. If any currency conversion shall be required in connection with the
payment of royalties hereunder, such conversion shall be made by using the
exchange rate prevailing at the Chase Manhattan Bank (N.A.) on the last business
day of the calendar semiannual reporting period to which such royalty payments
relate.
5- REPORTS AND RECORDS
5.1 LICENSEE shall keep full, true, and accurate books of account
containing all particulars that may be necessary for the purpose of showing the
amounts payable to M.I.T. hereunder and books of account shall be kept at
LICENSEE's principal place of business or the principal place of business of the
appropriate division of LICENSEE to which this Agreement relates. Said books and
the supporting data shall be open at all reasonable times and upon reasonable
notice for three (3) years following the end of the calendar year to which they
pertain, to the inspection of M.I.T. or by an independent auditor selected by
M.I.T. who is acceptable to LICENSEE (which acceptance shall not be unreasonably
withheld) for the purpose of verifying LICENSEE's royalty statement or
compliance in other respects with this Agreement. Should such inspect on lead to
the discovery of a greater than ten percent (10%) discrepancy in reporting to
M.I.T.'s detriment, LICENSEE agrees to pay the full cost of such inspection.
M.I.T. shall not inspect such books more than once in any twelve (12) month
period and any inspection following termination of this Agreement shall be
conducted within twelve (12) months of the effective date of such termination.
5.2 Before the first commercial sale by LICENSEE or any sublicensee of
a LICENSED PRODUCT or LICENSED PROCESS, LICENSEE shall submit the reports due
under Article 3.2(a) on January 1 of each year. After the first commercial sale
of a LICENSED PRODUCT or LICENSED PROCESS, LICENSEE, within sixty (60) days
after June 30 and
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December 31, of each year, shall deliver to M.I.T. true and accurate reports,
giving such particulars of the business conducted by LICENSEE and its
sublicensees during the preceding six-month period under this Agreement as shall
be pertinent to a royalty accounting hereunder. These shall include at least the
following:
a. number of LICENSED PRODUCTS manufactured and sold by
LICENSEE and all sublicensees;
b. total xxxxxxxx for LICENSED PRODUCTS sold by LICENSEE
and all sublicensees;
c. accounting for all LICENSED PROCESSES used or sold by
LICENSEE and all sublicensees;
d. deductions applicable as provided in Article 1.5;
e. royalties due on additional payments from
sublicensees under Article 4.1(c) and 4.1(d).
f. total royalties due; and
g. names and addresses of all sublicensees of LICENSEE.
5.3 With each such report submitted, LICENSEE shall pay to M.I.T. the
royalties due and payable under this Agreement. If no royalties shall be due,
LICENSEE shall so report.
5.4 On or before the ninetieth (90th) day following the close of
LICENSEE's fiscal year, LICENSEE shall provide M.I.T. with LICENSEE's certified
financial statements for the preceding fiscal year including, at a minimum, a
Balance Sheet and an Operating Statement.
5.5 The royalty payments set forth in this Agreement and amounts due
under Article 6 shall, if overdue, bear interest until payment at a per annum
rate two percent (2%) above the prime rate in effect at the Chase Manhattan Bank
(N.A.) on the due date or the highest rate allowed by law, whichever is less on
the due date. The payment of such interest shall not foreclose M.I.T. from
exercising any other rights it may have as a consequence of the lateness of any
payment.
6 - PATENT PROSECUTION
6.1 M.I.T. shall apply for, seek prompt issuance of, and maintain
during the term of this Agreement the PATENT RIGHTS in the United States and in
the foreign countries listed in
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Appendix B hereto. Appendix B may be amended by verbal agreement of both
parties, such agreement to be confirmed in writing within ten (10) days. The
prosecution, filing and maintenance of all PATENT RIGHTS patents and
applications shall be the primary responsibility of M.I.T.; provided, however,
LICENSEE shall have reasonable opportunities to advise M.I.T. and shall
cooperate with M.I.T. in such prosecution, filing and maintenance. M.I.T. shall
promptly provide LICENSEE with (i) a copy of all applications filed with the
various patent offices (together with a translation thereof if available and if
requested by LICENSEE); (ii) a copy of each communication from a patent office
relating to each such application (together with a translation thereof if
available and if requested by LICENSEE); and, (iii) a copy of each response to
the patent office communication relating to each such application (together with
a translation thereof if available and if requested by LICENSEE).
6.2 Payment of all fees and costs relating to the filing, normal
prosecution, and maintenance of the PATENT RIGHTS not required to be paid by
Xxxxxxx Instruments, Inc. shall be the responsibility of LICENSEE, whether such
fees and costs were incurred before or after the date of this Agreement. Normal
prosecution shall not include appeals, interferences and oppositions unless
separately agreed to by LICENSEE in each instance before expense therefor is
incurred. M.I.T. is not obligated to pay for such appeals, interferences and
oppositions.
7 - INFRINGEMENT
7.1 Each party shall inform the other party promptly in writing of any
alleged infringement of the PATENT RIGHTS by a third party and of any available
evidence thereof.
7.2 During the term of this Agreement, M.I.T. shall have the right, but
shall not be obligated, to prosecute at its own expense all infringements of the
PATENT RIGHTS and, in furtherance of such right, LICENSEE hereby agrees that
M.I.T. may include LICENSEE as a party plaintiff if required by law in any such
suit, without expense to LICENSEE. The total cost of any such infringement
action commenced or defended solely by M.I.T., shall be borne by M.I.T. and
M.I.T., shall keep any recovery or damages for past infringement derived
therefrom.
7.3 If within six (6) months after having been notified of any alleged
infringement, M.I.T. shall have been unsuccessful in persuading the alleged
infringer to desist and shall not have brought and shall not be diligently
prosecuting an infringement action, or if M.I.T. shall notify LICENSEE at any
time prior thereto of its intention not to bring suit against any alleged
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infringer in the TERRITORY for the FIELD OF USE, then, and in those events only,
LICENSEE shall have the right, but shall no be obligated, to prosecute at its
own expense any infringement of the PATENT RIGHTS in the TERRITORY for the FIELD
OF USE, and LICENSEE may, for such purposes, use the name of M.I.T. as party
plaintiff if required by law; provided, however, that such right to bring such
an infringement action shall remain in effect only for so long as the license
granted herein remains exclusive. No settlement, consent judgment or other
voluntary final disposition of the suit may be entered into without the consent
of M.I.T. which consent shall not unreasonably be withheld or delayed, but
nothing herein shall require LICENSEE to continue prosecuting any such suit
beyond the time which LICENSEE deems, in its sole judgment. desirable. LICENSEE
shall indemnify M.I.T. as appropriate, against any order for costs that may be
made against M.I.T. in such proceedings.
7.4 In the event that LICENSEE shall undertake the enforcement and/or
defense of the PATENT RIGHTS by litigation. LICENSEE may withhold up to fifty
percent (50%) of the payments otherwise thereafter due M.I.T. under Article 4
hereof and apply the same toward reimbursement of up to half of LICENSEE's
expenses, including reasonable attorneys' fees, in connection therewith. Any
recovery of damages by LICENSEE for each such suit shall be applied first in
satisfaction of any unreimbursed expenses and legal fees of LICENSEE relating to
such suit, and next toward reimbursement of M.I.T. for any payments under
Article 4 past due or withheld and applied pursuant to this Article 7. The
balance remaining from any such recovery shall be divided equally between
LICENSEE and M.I.T.
7.5 In the event that a declaratory judgment action alleging invalidity
or noninfringement of any of the PATENT RIGHTS shall be brought against
LICENSEE, M.I.T., at its sole option, shall have the right, within thirty (30)
days after commencement of such action, to intervene and take over the sole
defense of the action at its own expense.
7.6 In any infringement suit as either party may institute to enforce
the PATENT RIGHTS pursuant to this Agreement, the other party hereto shall, at
the request and expense of the party initiating such suit, cooperate in all
respects and, to the extent possible, have its employees testify when requested
and make available relevant records, papers information, samples, specimens, and
the like.
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
7.7 LICENSEE, during the exclusive period of this Agreement, shall have
the sole right in accordance with the terms and conditions herein to sublicense
any alleged infringer in the TERRITORY for the FIELD OF USE for future use of
the PATENT RIGHTS.
8 - PRODUCT LIABILITY AND WARRANTIES
8.1 LICENSEE shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold M.I.T., HARC, and BCM, their trustees,
directors, officers, employees and affiliates, harmless against all claims,
proceedings, demands and liabilities of any kind whatsoever, including legal
expenses and reasonable attorneys' fees, arising out of the death of or injury
to any person or persons or out of any damage to property, resulting from the
production, manufacture, sale, use, lease, consumption or advertisement of the
LICENSED PRODUCT(s) and/or LICENSED PROCESS(es) by LICENSEE.
8.2 Prior to the first use of a LICENSED PRODUCT and/or LICENSED
PROCESS for a commercial application involving human subjects LICENSEE shall
obtain and carry in full force and effect commercial, general liability
insurance which shall protect LICENSEE and M.I.T., HARC, and BCM with respect to
events covered by Article 8.1 above. Such insurance shall be written by a
reputable insurance company authorized to do business in the Commonwealth of
Massachusetts, shall list M.I.T.. HARC, and BCM as additional named insured
thereunder, shall be endorsed to include product liability coverage and shall
require thirty (30) days written notice to be given to M.I.T., HARC, and BCM
prior to any cancellation or material change thereof. The limits of such
insurance shall not be less than ************ per occurrence with an aggregate
of ********************* for personal injury or death, and ********************
per occurrence with an aggregate of ************* for property damage. LICENSEE
shall provide M.I.T., HARC, and BCM with Certificates of Insurance evidencing
the same.
8.3 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, M.I.T.,
HARC, and BCM, THEIR TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES, AND AFFILIATES
MAKE NO REPRESENTATIONS AND EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED, INCLUDING BUT NOT
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LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR PENDING, AND THE ABSENCE OF LATENT
OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE. NOTHING IN THIS AGREEMENT SHALL
BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY M.I.T. HARC, AND BCM
THAT THE PRACTICE BY LICENSEE OF THE LICENSE GRANTED HEREUNDER SHALL NOT
INFRINGE THE PATENT RIGHTS OF ANY THIRD PARTY. IN NO EVENT SHALL M.I.T., HARC,
AND BCM, THEIR TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES AND AFFILIATES BE LIABLE
FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGE
OR INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF WHETHER M.I.T., HARC, OR
BCM SHALL BE ADVISED, SHALL HAVE OTHER REASON TO KNOW OR IN FACT SHALL KNOW OF
THE POSSIBILITY.
8.4 M.I.T. warrants and represents that it is an owner of the right,
title in and to the inventions included in the PATENT RIGHTS and that it has
acquired the right to grant licenses to the patent applications and patents
included in the PATENT RIGHTS of the scope herein granted. M.I.T.'s liability
under this provision shall be limited to the total sum paid to M.I.T. by
LICENSEE under this Agreement.
9 - EXPORT CONTROLS
It is understood that M.I.T. is subject to United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities (including the Arms Export Control
Act, as amended and the Export Administration Act of 1979), and that its
obligations hereunder are contingent on compliance with applicable United States
export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by LICENSEE that LICENSEE shall not export
data or commodities to certain foreign countries without prior approval of such
agency. M.I.T. neither represents that a license shall not be requited nor that,
if required, it shall be issued.
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10 - NON-USE OF NAMES
Except as otherwise required by law LICENSEE shall not use the names or
trademarks of the Massachusetts Institute of Technology, Lincoln Laboratory,
HARC or BCM, nor any adaptation thereof, nor the names of any of their
employees, in any advertising, promotional or sales literature without prior
written consent obtained from M.I.T., or said employee, in each case, except
that (a) LICENSEE may state that it is licensed by M.I.T. under one or more of
the patents and/or applications comprising the PATENT RIGHTS and (b) LICENSEE
may use the name of any employee of M.I.T., Lincoln Laboratory, HARC or BCM who
is a consultant to and/or member of an advisory board of LICENSEE, with the
permission of such consultant or advisory board member, and making clear their
affiliation with LICENSEE.
11 - ASSIGNMENT
This agreement is not assignable and any attempt to do so shall be
void, except that any LICENSEE may assign this Agreement to any person, firm or
corporation succeeding to that portion of its business to which this Agreement
pertains as a result of sale, merger, consolidation, reorganization or otherwise
provided such person, firm or corporation shall, without delay, accept in
writing the provisions of this Agreement and agree to become in all respects
bound thereby in the place and stead of the assigning party and provided further
that LICENSEE may assign this Agreement to (or grant an exclusive license to)
any special purpose entity, partnership or joint venture in which LICENSEE has
an interest or the rights to acquire developed technology.
12 - DISPUTE RESOLUTION
12.1 Except for the right of either party to apply to a court of
competent jurisdiction for a temporary restraining order, a preliminary
injunction, or other equitable relief to preserve the status quo or prevent
irreparable harm, any and all claims, disputes or controversies arising under,
out of, or in connection with the Agreement, including any dispute relating to
patent validity or infringement, which the parties shall be unable to resolve
within sixty (60) days shall be mediated in good faith. The party raising such
dispute shall promptly advise the other party of such claim, dispute or
controversy in a writing which describes in reasonable detail the nature of such
dispute. If the parties are unable to resolve such dispute within such sixty
(60) day period,
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either parry may demand mediation by written notice to the other party. By not
later than ten (10) business days after the recipient has received such demand
for mediation, each party shall have selected for itself a representative who
shall have the authority to bind such party, and shall additionally have advised
the other party in writing of the name and title of such representative. By not
later than twenty (20) business days after the date of such demand for
mediation, the party against whom the dispute shall be raised shall select a
mediation firm in the Boston area which is acceptable to the other party (which
acceptance shall not be unreasonably withheld) and such representatives shall
schedule a date with such firm for a mediation hearing. Within thirty (30) days
after the selection of the mediation firm, the parties shall enter into good
faith mediation and shall share the costs equally. If the representatives of the
parties have not been able to resolve the dispute within fifteen (15) business
days after such mediation hearing, the parties shall have the right to pursue
any other remedies legally available to resolve such dispute in either the
Courts of the Commonwealth of Massachusetts or in the United States District
Court for the District of Massachusetts, to whose jurisdiction for such purposes
M.I.T. and LICENSEE each hereby irrevocably consents and submits.
12.2 Notwithstanding the foregoing, nothing in this Article shall be
construed to waive any rights or timely performance of any obligations existing
under this Agreement.
13 - TERMINATION
13.1 LICENSEE shall cease to carry on its business with respect to the
rights granted in this Agreement, this Agreement shall terminate upon notice by
M.I.T.
13.2 Should LICENSEE fail to make any payment whatsoever due and
payable to M.I.T. hereunder, M.I.T. shall have the right to terminate this
Agreement effective on thirty (30) days' notice, unless LICENSEE shall make all
such payments to M.I.T. within said thirty (30) day period; provided, however,
that if LICENSEE in good faith shall dispute all or any part of such payment and
shall invoke the provisions of Article 12 hereof, M.I.T. shall have no right to
terminate this Agreement until M.I.T. shall have a favorable result from any
such mediation and LICENSEE shall thereafter continue to refuse to make any such
payment. Upon the expiration of the thirty (30) day period, if LICENSEE shall
not have made all such payments to M.I.T., the rights, privileges and license
granted hereunder shall automatically terminate.
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13.3 Upon any material breach or default of this Agreement by LICENSEE
(excluding Articles 3), other than those occurrences set out in Articles 13.1
and 13.2 hereinabove, which shall always take precedence in that order over any
material breach or default referred to in this Article 13.3, M.I.T. shall have
the right to terminate this Agreement and the rights, privileges and license
granted hereunder effective on ninety (90) days' notice to LICENSEE. Upon any
material breach or default of Article 3, M.I.T. shall have the right to
terminate LICENSEE's rights as provided in Article 3. Such termination shall
become automatically effective unless LICENSEE shall have cured or have begun
substantial efforts toward curing any such breach or default prior to the
expiration of the ninety (90) day period. If, prior to the expiration of the
ninety (90) day notice from M.I.T. of intent to terminate LICENSEE has begun
substantial efforts toward curing such breach or default and has documented such
efforts in writing to M.I.T., LICENSEE shall have an additional ninety (90) days
to complete the cure. If the breach or default is not cured within a total of
one hundred eighty (180) days from the original notice of intent to terminate,
this Agreement shall then terminate.
13.4 LICENSEE shall have the right to terminate this Agreement at any
time on three (3) months' notice to M.I.T. and upon payment of all amounts due
M.I.T. through the effective date of the termination.
13.5 Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination; and Articles 1, 8, 9, 10, 13.5,
13,6. and 16 shall survive any such termination. LICENSEE and any sublicensee
thereof may, however, after the effective date of such termination, sell all
LICENSED PRODUCTS, and complete LICENSED PRODUCTS in the process of manufacture
at the time of such termination and sell the same, provided that LICENSEE shall
make the payments to M.I.T. as required by Article 4 of this Agreement and shall
submit the reports required by Article 5 hereof.
13.6 No sublicense agreement which may have been entered into by
LICENSEE hereunder prior to any surrender or termination of this Agreement or
for any of the licenses herein granted under the provisions of this Article 13
shall be affected by any surrender or termination of the licenses herein granted
except that M.I.T. shall be substituted for LICENSEE in all of such sublicense
agreements and LICENSEE shall be discharged of all obligations
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accrued or to accrue thereafter under all such sublicense agreements and under
this Agreement with respect to such sublicense agreements.
14- PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
Any payment, notice or other communication pursuant to this Agreement
shall be sufficiently made or given if sent to such party by certified first
class mail, postage prepaid, or nationally recognized air carrier service.
addressed to it at its address below or as it shall designate by written notice
given to the other party:
All such payments, notices or communications shall be deemed given on
the date of actual receipt or, if earlier, five (5) business days after sending
in accordance with this Article 15. All notices hereunder shall be in writing.
In the case of M.I.T.:
Director
Technology Licensing Office
Massachusetts Institute of Technology
00 Xxxxxxxxxxxxx Xxxxxx. Room E32-300
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
In the case of LICENSEE:
President
GENOMETRIX, INCORPORATED
0000 Xxxxxxxx Xxxxxx Xxxxx, Xxxxx X-0
The Woodlands, TX 77381
15 - MISCELLANEOUS PROVISIONS
15.1 This Agreement shall be construed, governed, interpreted and
applied in accordance with the laws of the Commonwealth of Massachusetts,
U.S.A., except that questions affecting the construction and effect of any
patent shall be determined by the law of the country in which the patent was
granted.
15.2 The parties hereto acknowledge that this Agreement sets forth the
entire Agreement and understanding of the parties hereto as to the subject
matter hereof, and shall not be subject to any change or modification except by
the execution of a written instrument subscribed to by the parties hereto.
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15.3 The provisions of this Agreement are severable, and in the event
that any provisions of this Agreement shall be determined be invalid or
unenforceable under any controlling body of the law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
15.4 LICENSEE agrees to xxxx the LICENSED PRODUCTS sold in the United
States with all applicable United States patent numbers to the extent reasonably
practical. All LICENSED PRODUCTS shipped to or sold in other countries shall he
marked in such a manner as to conform with the patent laws and practice of the
country of manufacture or sale.
15.5 The failure of either party to assert a right hereunder or to
insist upon compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
15.6 The headings and captions of the various Articles of this
Agreement are for convenience of reference only and shall in no way modify or
affect the meaning or construction of any of the terms or provisions hereof.
IN WITNESS WHEREOF, the parties have duly executed this Agreement the
day and year set forth below.
MASSACHUSETTS INSTITUTE OF GENOMETRIX, INCORPORATED
TECHNOLOGY
By: /s/ Xxxx X. Xxxxxx By: /s/ Xxxxxxxx X. Xxxxxx
------------------------------------------- ---------------------------
Name: Xxxx X. Xxxxxx Name: Xxxxxxxx X. Xxxxxx
Title: Director, Technology Licensing Office Title: President and CEO
Date: 4/8/96 Date: 4/4/96
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00
XXXXXXXX X
XXXXXX XXXXXX PATENT RIGHTS
M.I.T. CASE NO. 5722L
"Genosensors For DNA Decoding"
By Xxxxx Xxxxx, Xxxxx-Xxx Xxxx, Xxxxxxxx Xxxxxx, Xxxxxx Xxxxxxx, Xxxxxxx Xxxxx,
Xxxx Xxxxxx, Xxxxxxx Xxxxxxx. Xxxxxxx Xxxxxxx, Xxxxx Xxxxxx, and Xxxxxx Xxxxxxx
that includes patent applications:
USSN 07/794,036
(*ABANDONED*)
"Method and Apparatus for Molecule Detection"
By Xxxxxxxx Xxxxxx, Xxxxxx Xxxxxxx, Xxxxxxx Xxxxx, Xxxxxxx Xxxxxxx, Xxxx
Xxxxxxxx, Xxxx Xxxxxx
Filed November 19, 1991.
USSN 08/353,957
(Divisional of 07/794,036)
"Multi-Site Molecule Detection Apparatus"
by Xxxxxxxx Xxxxxx, Xxxxxx Xxxxxxx, Xxxxxxx Xxxxx, Xxxxxxx Xxxxxxx, Xxxx
Xxxxxxxx, Xxxx Xxxxxx
Filed December 12, 1994
USSN 08/457,096
(Divisional of 07/794,036)
"Multi-Site Molecule Detection Method"
by Xxxxxxxx Xxxxxx, Xxxxxx Xxxxxxx, Xxxxxxx Xxxxx, Xxxxxxx Xxxxxxx, Xxxx
Xxxxxxxx, Xxxx Xxxxxx
Filed June 1, 1995
M.I.T. CASE NO. 6838L.
"Optical and Electrical Methods and Apparatus for Molecule Detection (formerly
part of 5722L)"
by Xxxx Xxxxxx, Xxxxxx Xxxxxxx. Xxxxx Xxxxxx, Xxxxxxx Xxxxxxx, Xxxxxx Xxxxxxx,
Xxxxx-Xxx Xxxx, Xxxxxxx Xxxxxxx, Xxxxx Xxxxx, Xxxxxxxx Xxxxxx, Xxxxxxx Xxxxx.
Xxxxxxxx Xxxxx
USSN 07/872,582
(CIP of 07/794,036)
"Optical and Electrical Methods and Apparatus for Molecule Detection"
By Xxxx Xxxxxx, Xxxxxx Xxxxxxx, Xxxxx Xxxxxx, Xxxxxxx Xxxxxxx, Xxxxxx Xxxxxxx,
Xxxxx-Xxx Xxxx, Xxxxxxx Xxxxxxx, Xxxxx Xxxxx, Xxxxxxxx Xxxxxx, Xxxxxxx Xxxxx,
Xxxxxxxx Xxxxx
Filed April 23, 1992.
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USSN 08/511,649
(Divisional of 07/872,582)
"Optical and Electrical Methods and Apparatus for Molecule Detection"
by Xxxx Xxxxxx, Xxxxxx Xxxxxxx, Xxxxx Xxxxxx. Xxxxxxx Xxxxxxx, Xxxxxx Xxxxxxx,
Xxxxx-Xxx Xxxx, Xxxxxxx Xxxxxxx, Xxxxx Xxxxx, Xxxxxxxx Xxxxxx, Xxxxxxx Xxxxx,
Xxxxxxxx Xxxxx
Filed August 7, 1995
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APPENDIX B
1. Foreign patent applications and patents within the PATENT RIGHTS as of
Effective Date:
M.I.T. CASE NO. CASE 5722L
"Genosensors For DNA Decoding"
By Xxxxx Xxxxx, Xxxxx-Xxx Xxxx, Xxxxxxxx Xxxxxx, Xxxxxx Xxxxxxx, Xxxxxxx Xxxxx,
Xxxx Xxxxxx, Xxxxxxx Xxxxxxx, Xxxxxxx Xxxxxxx, Xxxxx Xxxxxx, and Xxxxxx Xxxxxxx
that includes patent applications:
European Serial No. 92310253.7
(based on USSN 07/794,036)
"Method and Apparatus for Molecule Detection"
By Xxxxxxxx Xxxxxx, Xxxxxx Xxxxxxx, Xxxxxxx Xxxxx, Xxxxxxx Xxxxxxx, Xxxx
Xxxxxxxx, Xxxx Xxxxxx
Filed November 10, 1992
Designating: Austria, Belgium, Denmark, France, France, Germany, Greece,
Ireland, Italy, Luxembourg, Monaco, Netherlands, Portugal, Spain,
Sweden, Switzerland. United Kingdom
Israel Serial No. 103674
(based on USSN 07/794,036)
"Method and Apparatus for Molecule Detection"
By Xxxxxxxx Xxxxxx. Xxxxxx Xxxxxxx, Xxxxxxx Xxxxx, Xxxxxxx Xxxxxxx, Xxxx
Xxxxxxxx, Xxxx Xxxxxx
Filed November 6, 0000
Xxxxx Serial No. 310445/92
(based on USSN 07/794,036)
"Method and Apparatus for Molecule Detection"
By Xxxxxxxx Xxxxxx, Xxxxxx Xxxxxxx, Xxxxxxx Xxxxx, Xxxxxxx Xxxxxxx, Xxxx
Xxxxxxxx. Xxxx Xxxxxx
Filed November 19, 0000
Xxxxxx Serial No. 9206648
(based on USSN 07/794,036)
"Method and Apparatus for Molecule Detection"
By Xxxxxxxx Xxxxxx, Xxxxxx Xxxxxxx, Xxxxxxx Xxxxx, Xxxxxxx Xxxxxxx, Xxxx
Xxxxxxxx, Xxxx Xxxxxx
Filed November 18, 1992
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M.I.T. CASE NO. 6838L
"Optical and Electrical Methods and Apparatus for Molecule Detection (formerly
part of 5722L)"
by Xxxx Xxxxxx, Xxxxxx Xxxxxxx. Xxxxx Xxxxxx. Xxxxxxx Xxxxxxx. Xxxxxx Xxxxxxx,
Xxxxx-Xxx Xxxx, Xxxxxxx Xxxxxxx, Xxxxx Xxxxx, Xxxxxxxx Xxxxxx, Xxxxxxx Xxxxx,
Xxxxxxxx Xxxxx
that includes patent applications:
European Serial No. 93910751.2
(based on USSN 07/872,582)
"Optical and Electrical Methods and Apparatus for Molecule Detection"
By Xxxx Xxxxxx, Xxxxxx Xxxxxxx, Xxxxx Xxxxxx, Xxxxxxx Xxxxxxx. Xxxxxx Xxxxxxx,
Xxxxx-Xxx Xxxx, Xxxxxxx Xxxxxxx, Xxxxx Xxxxx. Xxxxxxxx Xxxxxx, Xxxxxxx Xxxxx,
Xxxxxxxx Xxxxx
Filed April 23, 1993
Designating: France, Germany, Italy and United Kingdom
Japan Serial No. 5-519396
(based on USSN 07/872,582)
"Optical and Electrical Methods and Apparatus for Molecule Detection"
By Xxxx Xxxxxx, Xxxxxx Xxxxxxx, Xxxxx Xxxxxx, Xxxxxxx Xxxxxxx, Xxxxxx Xxxxxxx,
Xxxxx-Xxx Xxxx, Xxxxxxx Xxxxxxx, Xxxxx Xxxxx, Xxxxxxxx Xxxxxx, Xxxxxxx Xxxxx,
Xxxxxxxx Xxxxx
Filed April 23, 1993
2. Foreign countries in which PATENT RIGHTS shall be filed, prosecuted and
maintained in accordance with Article 6:
For
M.I.T. CASE NO. CASE 5722L
"Genosensors For DNA Decoding"
By Xxxxx Xxxxx, Xxxxx-Xxx Xxxx. Xxxxxxxx Xxxxxx, Xxxxxx Xxxxxxx, Xxxxxxx Xxxxx,
Xxxx Xxxxxx, Xxxxxxx Xxxxxxx, Xxxxxxx Xxxxxxx, Xxxxx Xxxxxx, and Xxxxxx Xxxxxxx
NO ADDITIONAL COUNTRIES DESIGNATED OR FOREIGN FILINGS REQUESTED AS OF FEBRUARY
23,1996.
For
M.I.T. CASE NO. 6838L
"Optical and Electrical Methods and Apparatus for Molecule Detection (formerly
part of 5722L)" by Xxxx Xxxxxx, Xxxxxx Xxxxxxx, Xxxxx Xxxxxx, Xxxxxxx Xxxxxxx.
Xxxxxx Xxxxxxx, Xxxxx-Xxx Xxxx, Xxxxxxx Xxxxxxx. Xxxxx Xxxxx, Xxxxxxxx Xxxxxx,
Xxxxxxx Xxxxx, Xxxxxxxx Xxxxx
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NO ADDITIONAL COUNTRIES DESIGNATED OR FOREIGN FILINGS REQUESTED AS OF FEBRUARY
23, 1996.
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