EXHIBIT 10.17
LICENSE AGREEMENT
-----------------
This Agreement is made and entered into this Sixth day of January, 1996
(the "Effective Date") by and between Cold Spring Harbor Laboratory, a New York
corporation having its principal office at 0 Xxxxxxxx Xxxx, Xxxx Xxxxxx Xxxxxx,
Xxx Xxxx 00000 (hereinafter referred to as "CSHL"), and Genomica Corporation, a
Delaware corporation having its principal office at Cold Spring Harbor, New York
(hereinafter referred to as "Licensee").
WITNESSETH
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WHEREAS, CSHL is the owner of certain Patent Rights, Copyrights and
Technical Information (as defined below) pertaining to GT (as defined in section
1.2) and also known as Genome Topographer.
WHEREAS, GT was developed by Xx. Xxxxxx Xxxx at CSHL under work supported,
in part, by grants from the Department of Energy DE-FG02-9lER61190 and the
National Institutes of Health IROI HG0020301A1; and
WHEREAS, Licensee desires to obtain licenses from CSHL so that it may
commercialize the GT and make it commercially available;
WHEREAS, CSHL desires to have the Patent Rights, Copyrights and Technical
Information utilized in the public interest and is willing to grant an exclusive
license thereunder; and
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties hereto agree as follows:
ARTICLE 1 - DEFINITIONS
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For the purpose of this Agreement, the following words and phrases shall
have the following meanings:
1.1 "Affiliate" shall mean any corporation, company, partnership, joint
venture and/or firm which controls, is controlled by or is under common control
with Licensee. For purposes of this Section 1.1, "control" shall mean (a) in the
case of corporate entities, direct or indirect ownership of at least fifty
percent (50%) of the stock or shares entitled to vote for the election of
directors, and (b) in the case of non-corporate entities, direct or indirect
ownership of at least fifty percent (50%) of the equity interest with the power
to direct the management and policies of such on-corporate entities.
1.2 "GT" shall mean a general purpose computing system useful for studying
complex genetic diseases.
1.3 "Xxxxx/Xxxx Algorithm" shall mean that portion of the GT which
incorporates either in software or hardware form an algorithm developed at CSHL
and described in "Approximate String Matching and Local Similarity" by Xxxxxxx
X. Xxxxx and Xxxxxx X. Xxxx in Proc. Symp. Combinatorial Pattern Matching, 1994
------------------------------------------
Springer-Verlag Lecture Notes in Computer Science 807:259-273 (June, 1994) and
described in U.S. Patent Application Serial No. 08/455,654 filed May 31, 1995.
1.4 "Licensed Process" shall mean any process which is Covered in whole or
in part by a Valid Claim contained in the Patent Rights in the country in which
such process is used or which incorporates Licensed Copyrights or Technical
Information in its manufacture, use or sale;
1.5 "Licensed Product" shall mean any product or part thereof, including
without limitation, software systems or apparatus which:
(a) is Covered in whole or in part by a Valid Claim contained in the
Patent Rights in the country in which such product or part thereof is
made, used or sold; or
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(b) is manufactured using a Licensed Process in the country in which such
product or part thereof is manufactured; or
(c) which incorporates Licensed Copyrights or Technical Information in its
manufacture, use or sale.
1.6 "Valid Claim" shall mean an issued claim of an unexpired patent, or a
claim of a pending patent application, which shall not have been withdrawn,
cancelled or disclaimed, nor held invalid or unenforceable by a court of
competent jurisdiction in an unappealed or unappealable decision.
1.7 "Covered" shall mean, with respect to a Valid Claim, that but for the
licenses granted herein, the manufacture, use or sale of the Licensed Product or
Licensed Process would be deemed to constitute an infringement of the Valid
Claim, whether the Valid Claim was in an issued patent or not.
1.8 Subject to the provisions of Section 4.3 with respect to "portions" of
a Licensed Product, "Net Sales Price" with respect to Licensed Products shall
mean the gross billing price for a Licensed Product sold by Licensee or its
Affiliates or sub-licensees thereof less the sum of the following:
(a) rebates or discounts allowed;
(b) customs duties or charges;
(c) excises, sales taxes, tariff duties and/or other taxes imposed upon
and with reference to such sales;
(d) outbound transportation charges, including freight, postage, insurance
and additional special packaging charges, prepaid or allowed; and
(e) amounts allowed or credited for rejections, recalls or returns.
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 for cost of collections. Licensed Products shall be considered
"sold" when billed out or invoiced. Transfer between Licensee and any of its
Affiliates for resale shall not be considered a sale, and in such
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case, the Net Sales Price shall be based on the gross billing price for the
Licensed Product as sold by the Affiliate, less those deductions set forth in
clauses (a) through (e) above.
Subject to the provisions of Section 4.3 with respect to "portions" of a
Licensed Process, "Net Sales Price" with respect to a Licensed Process shall
mean the gross price charged by Licensee or its sublicensees to a customer for
the right to practice the Licensed Process.
l.9 "Patent Rights" shall mean U.S. Patent Application Serial No.
08/455,654 filed May 31, 1995, and any United States and foreign patents issued
from said U.S. application and from divisionals and continuations of said
application; and any reissues or reexaminations of said application.
1.10 "Technical Information" shall mean any information, including,
designs, formulas, process information, or algorithms pertaining to GT
technology or software (including object code and source code), or inventions
claimed in the Patent Rights or included in the Licensed Copyrights which
information is now, or during a period of five (5) years from the Effective Date
hereof, becomes owned or controlled by CSHL with a right to grant the license
granted herein and which has been or becomes developed by CSHL employees in Xx.
Xxxx'x facilities at CSHL, during said five (5) year period. Notwithstanding the
preceding sentence, research data generated at CSHL shall be excluded from the
definition of Technical Information.
1.11 "Copyrights" shall mean all elements of protection under national and
international copyright law including, without limitation, the right to make
enhancements, adaptations, and translations of copyrighted material.
1.12 "Licensed Copyrights" shall mean all registered copyrights pertaining
to GT, which was developed by or for Xx. Xxxxxx Xxxx at his facilities at CSHL
and which is now, or becomes, owned or controlled by CSHL within a period of
five (5) years from the Effective Date with the right to grant the license set
forth herein with respect to any of the Technical Information.
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ARTICLE 2 - GRANT
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2.1 Subject to CSHL's rights in Section 2.3 and the government's rights in
Section 4.7, CSHL hereby grants to Licensee the worldwide, exclusive right and
license under the Patent Rights, Licensed Copyrights and Technical Information,
including the right to sublicense any or all of such rights, to make, have made,
use, have used, sell, have sold, offer to sell or import Licensed Products and
to practice and otherwise use the Licensed Processes until the later of the
expiration of the last to expire patent included in the Patent Rights or
copyright included in the Licensed Copyrights, unless this Agreement shall be
sooner terminated according to the terms hereof.
2.2 As soon as reasonably possible following the date of execution of this
Agreement, but in no event later than three (3) months after such date, upon
request by Licensee, CSHL shall disclose to Licensee all Technical Information
presently in its possession or control.
2.3 The parties recognize that CSHL is a basic research and educational
institute. CSHL therefore retains and reserves the right to publish any work
developed at CSHL. CSHL agrees to provide a draft disclosure of Technical
Information at least thirty (30) days in advance of submission for publication.
If Licensee believes that patentable subject matter is contained in the
submission, CSHL shall delay the submission up to an additional thirty (30) days
to permit the filing of a patent application pursuant to Article 6. CSHL further
reserves the right to practice under the Patent Rights, Licensed Copyrights and
Technical Information for its own noncommercial research purposes, provided that
the researcher is free to publish the results of the research. CSHL further
reserves the right to sublicense Xx. Xxxx to practice under the Patent Rights,
Licensed Copyrights and Technical Information under the same conditions for his
own noncommercial purposes. The Licensee grants to CSHL for research purposes a
royalty-free license to use Licensee developed products which incorporate the
Licensed Products (the "License Back"). The License Back includes software
updates. CSHL agrees to: (i) publish data developed through the use of GT in the
Licensee maintained GT data base on timeframes consistent with the publication
of the data in other public databases; (ii) work with the Licensee to
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actively promote the use of the developed product within CSHL; and (iii) pay
standard Licensee rates for services such as telephone and installation support.
2.4 Licensee agrees to forward to CSHL, in advance, a copy of its
standard license agreements for Licensed Products, and to forward a copy of any
and all non-standard sublicense agreements at least five (5) working days prior
to the effective date thereof.
ARTICLE 3 - DUE DILIGENCE
-------------------------
3.1 Licensee shall use its best efforts to develop and to bring to
market one or more Licensed Products and or Licensed Process for the field of
biological applications of the GT.
3.2 As partial evidence of such efforts, the Licensee shall:
3.2.1. Fund sponsored research at CSHL in the amount of one hundred and
seventy thousand ($170,000.00) dollars per year, payable quarterly, for each of
the next two years. The first payment in the amount of forty-two thousand and
five hundred dollars ($42,500.00) shall be due on 1 April, 1996, and subsequent
payments in the same amount shall be due each 1 July, 1 October and 1 January
thereafter subject to the terms and conditions appended hereto as APPENDIX A.
This amount includes CSHL customary indirect costs.
3.2.2. On or before December 1, 1996 release at least one version of the
Licensed Product or Licensed Process.
3.2.3. On or before December 1, 1996, hire and retain sufficient
development personnel to effectively develop the Licensed Product and/or
Licensed Process and a support organization to sell, market and service the
Licensed Product and/or Licensed Process.
3.2.4. Spend at least two million ($2,000,000) dollars over a period of
three (3) years from the Effective Date towards development and
commercialization of the Licensed Product and Licensed Process. Sponsored
research funded at CSHL shall be credited against this amount.
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3.2.5. Enter into an exclusive consulting contract with Xx. Xxxx in
accordance with the terms and conditions set forth in the Consultant Agreement
appended hereto as APPENDIX B.
3.3 Upon written notification by CSHL of a field or fields other than
biological applications of the GT, Licensee shall present a business plan to
CSHL to develop and commercialize such field(s) and enter into good faith
negotiations with CSHL to exploit such field(s). As a minimum, Licensee shall
comply with the due diligence requirements of the aforementioned DOE and NIH
grants in order to maintain the exclusive licenses granted herein. In the event
the parties are unable to reach an agreement with respect to exploiting such
fields within one year from any particular notification, then at CSHL's option
the matter shall be submitted to mediation and/or arbitration as a dispute under
Article 13.
ARTICLE 4 - ROYALTIES AND FEES
------------------------------
4.1 Licensee shall pay to CSHL a license fee of 679,679 shares of
Licensee common stock upon execution of this Agreement, as outlined in the
Initial Capitalization Schedule of APPENDIX C attached hereto and subject only
to the terms of the Common Stock Acquisition Agreement attached hereto as
APPENDIX D. Licensee shall set aside a pool of additional shares for
distribution by CSHL and Licensee to future employees at Xx. Xxxx'x laboratory
involved in the generation of improvements to the GT technology or software as
compensation for their potential contributions, in accordance with NIH
regulations.
4.2 Licensee shall also pay: (i) the sum of $__________ as reimbursement
to CSHL for the patent and copyright expenses incurred up to the Effective Date
and relating to the Patent Rights and the GT, and (ii) the sum of thirty-three
thousand ($33,000) dollars to CSHL for renovation of space at CSHL for
accommodating Licensee personnel at CSHL.
4.3 On all manufacture, use or sales of Licensed Products by Licensee or
its Affiliates or its sub-licensees or customers or sub-licensees of Licensee or
its Affiliates and all use of a Licensed Process by a customer of Licensee or
its Affiliates during the term of the license granted
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in Section 2.1 above, for intended use in the field of biological applications,
including, without limitation, gene based drug research and development,
Licensee shall pay to CSHL earned royalties at the rate of 2% of the Net Sales
Price of that portion of the Net Sales Price of the Licensed Product or Licensed
Process which is attributable to the Xxxxx/Xxxx Algorithm, taking into account
the added value of the Xxxxx/Xxxx Algorithm to the Licensed Product or Licensed
Process, prevailing industry standards with respect to software licenses, profit
potential, market potential and additional research and development required. In
the event the parties are unable to agree on "that portion" prior to first sale
of a Licensed Product or Licensed Process, the matter shall be resolved as a
dispute under Article 13. For intended use outside of the preceding field of
biological applications, the earned royalty rate shall be 10% of the Net Sales
Price of "that portion" (as computed above) of the Licensed Product or Licensed
Process which relates to, or incorporates, the Xxxxx/Xxxx Algorithm.
4.4 In no event shall more than one royalty pursuant to the terms of
Section 4.3 be due CSHL in respect of any Licensed Product or Licensed Process
despite the fact that such Licensed Product, or its method of manufacture or
use, is or shall be Covered by more than one Valid Claim contained in the Patent
Rights.
4.5 Notwithstanding the foregoing Sections 4.3 and 4.4, in the event
Licensee sub-licenses any of the rights granted herein, CSHL shall be paid 10%
of any compensation or consideration attributable to the Xxxxx/Xxxx Algorithm
(hereinafter "Income") and paid to Licensee for such rights, in addition to the
royalty specified in Article 4.3 as applied to the Net Selling Price of Licensed
Products or Licensed Process sold by the sublicensee.
4.6 Royalty and other payments hereunder shall be paid in United States
dollars to CSHL at its principal office, or at such other place as CSHL may
reasonably designate consistent with the laws and regulations controlling in any
foreign country. CSHL shall reimburse Licensee for any payments lawfully made by
Licensee to any foreign country for fees otherwise due such country directly
from CSHL. If any currency conversion shall be required in connection with the
payment of royalties and other payments hereunder, such conversion shall be made
by using the
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exchange rate prevailing at the Chase Manhattan Bank, N.A. (hereinafter "Chase
Manhattan Bank") in New York, New York, on the last business day of the royalty
reporting period to which such royalty or other payments relate. If by law,
regulation, or fiscal policy of a particular country, conversion into or
transfer to United States dollars is restricted or forbidden, Licensee shall
give CSHL prompt notice in writing and shall pay the royalty and other amounts
due through such lawful means or methods as CSHL may reasonably designate.
Failing the designation by CSHL of such lawful means or methods within fifteen
(15) days after such notice is given to CSHL, Licensee shall deposit the royalty
payment due in local currency to the credit of CSHL in a recognized banking
institution designated by CSHL or, if none is designated by CSHL within the
period of fifteen (15) days as described above, in a recognized banking
institution selected by Licensee and identified in a notice in writing given to
CSHL by Licensee. When in any country the law or regulations prohibit both the
transmittal and deposit of royalties on sales in such country, royalty payments
shall be suspended for as long as such prohibition is in effect, and as soon as
such prohibition ceases to be in effect, all royalties which License would have
been under obligation to transmit or deposit, but for the prohibition, shall be
deposited or transmitted promptly to the extent allowable.
4.7 Licensee understands that the Patent Rights and Licensed Copyrights
were developed with support provided in part by funds of United States federal
agencies and, therefore, Licensee agrees that the rights granted Licensee
hereunder are subject to applicable limitations and United States governmental
rights established by United States law, including 35 U.S.C. Sections 200-212
and the regulations promulgated thereunder in 37 C.F.R. Part 401.
4.8 Licensee shall not owe CSHL the royalties set forth in Section 4.3
above on sales of Licensed Products to the United States government when the
government reduces the Net Sales Price paid by it for such Licensed Products by
the amount of the royalty due CSHL hereunder on the basis of its royalty-free
license for government use of the Patent Rights or Licensed Copyrights for which
the royalty, in the absence of such license, would be due hereunder.
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ARTICLE 5 - REPORTS AND RECORD
------------------------------
5.1 Licensee shall keep full, true and accurate books of account and other
records containing all particulars that may be necessary for the purpose of
showing the amounts payable to CSHL hereunder. Said books of account shall be
kept at Licensee's principal place of business. Said books and other records
shall be available during normal business hours, upon two (2) business days'
prior written notice by CSHL, for two (2) years following the end of the
calendar year to which they pertain, to the inspection of CSHL or its agents
(not to exceed once during each calendar year) for the sole purpose of verifying
Licensee's royalty statements or compliance in other respects with this
Agreement. Such inspection shall be at the sole cost and expenses of CSHL;
provided, however, should such inspection lead to the discovery of a greater
than ten percent (10%) discrepancy in reporting of royalties or other payments
due hereunder, Licensee shall pay the full cost and expense of such inspection.
5.2 Commencing with the calendar quarter in which the first commercial
sales of any Licensed Product occurs, or the calendar quarter in which
sublicense income is first received by Licensee, whichever occurs sooner,
Licensee shall submit to CSHL, within sixty (60) days after March 31, June 30,
September 30 and December 31 of each year, true and accurate reports, giving the
following particulars of the business conducted by Licensee, its Affiliates and
its sublicensees during the preceding three-month, period under this Agreement,
as such particulars shall be pertinent to an accounting of royalties or other
payments due hereunder:
(a) number of Licensed Products sold by Licensee and its Affiliates in
each country;
(b) total xxxxxxxx for Licensed Products sold by Licensee, its
sublicensees and its Affiliates in each country;
(c) amount of Income received from sublicensees;
(d) applicable deductions from Net Sales Price as provided in Section 1.8;
and
(e) total royalties and/or portion of sublicense Income due to CSHL
hereunder.
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5.3 With each such report submitted, Licensee shall pay to CSHL the
royalties and/or portion of sublicense Income due and payable under this
Agreement. If no royalties and/or portion of sublicense Income shall be due,
Licensee shall so report.
5.4 The royalty and other payments set forth in this Agreement and any
amounts due under Article 6 shall, if overdue, bear interest until paid at a per
annum rate two percent (2%) above the prime rate in effect at Chase Manhattan
Bank on the due date. The payment of such interest shall not foreclose CSHL from
exercising any other rights it may have as a consequence of the lateness of any
payment.
ARTICLE 6 - PATENT PROSECUTION
------------------------------
6.1 Except as provided in this Article 6, CSHL shall be responsible, at
its sole discretion, for the preparation, filing, prosecution and maintenance of
all patent applications and patents included in the Patent Rights in the United
States and to the extent warranted in any foreign countries. CSHL shall consult
regularly with Licensee and shall provide copies to Licensee of all filings,
office actions and proposed responses and shall endeavor to provide Licensee
with a meaningful opportunity to participate in decisions regarding the filing,
prosecution and maintenance of those patent applications. Licensee shall
reimburse CSHL for all reasonable costs incurred by CSHL subsequent to the
Effective Date of this Agreement for the preparation, filing, prosecution and
maintenance of all Patent Rights.
6.2 CSHL shall not abandon the prosecution of any patent applications
included in the Patent Rights nor shall it fail to make any payment or fail to
take any other action necessary to maintain a patent included in the Patent
Rights unless it has notified Licensee at least thirty (30) days prior thereto,
whereupon Licensee shall have the option to prosecute and maintain such patent
or patent application at its own expense.
6.3 For the first five (5) years after the Effective Date, CSHL shall
provide Licensee with copies of any invention disclosures by CSHL employees who
are then employed in Dr.
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Xxxx'x facilities at CSHL, to the extent submitted prior to publication to the
Administrative Director or Assistant Administrative Director of CSHL and solely
relating to the Licensed Product or Licensed Process. Licensee shall have a
period of not more than sixty (60) days from the date of receipt of said copies
in which to inform CSHL of its decision to have such a disclosure filed as a
U.S. and/or foreign patent application; in which event, CSHL shall, with due
diligence, file such a patent application at Licensee's expense, whereupon it
shall become a Patent Right hereunder subject to all provisions in this
Agreement referring to "Patent Right(s)."
ARTICLE 7 - INFRINGEMENT
------------------------
7.1 Each Party shall inform the other Party promptly in writing of any
alleged infringement of the Patent Rights or Licensed Copyrights by a third
party, of which such Party shall have knowledge, and of any available evidence
thereof.
7.2 During the term of this Agreement, CSHL shall have the right, but
shall not be obligated, to prosecute at its own expense any infringements of the
Patent Rights and, in furtherance of such rights, Licensee hereby agrees that
CSHL may join Licensee as a party plaintiff in any such suit, without expense to
Licensee. CSHL shall hold harmless and indemnify Licensee from and against any
order for costs arising without fault of Licensee that may be made against CSHL
or Licensee in such proceedings. The total cost of any infringement action
commenced or defended solely by CSHL shall be borne by CSHL. Any recovery or
damages for past infringement derived from such action shall first be used to
reimburse CSHL for all legal expenses connected with such action. Any recovery
or damages still remaining shall be applied toward (i) reimbursement of CSHL for
the amount of royalties not received by CSHL as a result of such infringement,
and (ii) compensation of Licensee for its lost profits or a reasonable royalty
on the sales of the infringer, whichever measure of damages the court shall have
applied; provided, however, that if such remaining amount of recovery or damages
is insufficient to compensate CSHL fully for such royalties and to compensate
Licensee fully for such lost profits or reasonable royalty, then such amount of
recovery or damages still remaining shall be
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apportioned pro rata between CSHL and Licensee in proportion to (a) the amount
of royalties not received by CSHL as a result of such infringement, as compared
with (b) Licensee's lost profits or a reasonable royalty on the sales of the
infringer, whichever measure of damages the court shall have applied. Any
recovery or damages still remaining after the above-mentioned applications shall
be divided as follows: 50% to CSHL and the remaining 50% to Licensee.
7.3 If within six (6) months after having been notified of any alleged
infringement CSHL shall have been unsuccessful in causing the alleged infringer
to desist or shall not have brought and shall not be diligently prosecuting an
infringement action, or if CSHL shall notify Licensee at any time prior thereto
of its intention not to bring suit against any alleged infringer, then, in those
events only, Licensee shall have the right, but shall not be obligated, to
prosecute at its own expense any such infringement of the Patent Rights and, in
furtherance of such rights, CSHL hereby agrees that Licensee may join CSHL as a
party plaintiff in any such suit, without expense to CSHL. No settlement,
consent judgment or other voluntary final disposition of the suit may be entered
into without the consent of CSHL, which consent shall not unreasonably be
withheld. Licensee shall hold harmless and indemnify CSHL from and against any
order for costs arising without fault of CSHL that may be made against Licensee
or CSHL in such proceedings. The total cost of any infringement action commenced
or defended by Licensee shall be borne by Licensee. Any recovery or damages for
past infringement derived from such action shall first be used to reimburse
Licensee for all legal expenses connected with such action. Any recovery or
damages still remaining shall be applied toward (i) reimbursement of CSHL for
the amount of royalties not received by CSHL as a result of such infringement,
and (ii) compensation of Licensee for its lost profits or a reasonable royalty
on the sales of the infringer, whichever measure of damages the court shall have
applied; provided, however, that if such remaining amount of recovery or damages
is insufficient to compensate CSHL fully for such royalties and to compensate
Licensee fully for such lost profits or reasonable royalty, then such amount of
recovery or damages still remaining shall be apportioned pro rata between CSHL
and Licensee in proportion to (a) the amount of royalties not received by CSHL
as a result of such infringement,
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as compared with (b) Licensee's lost profits or a reasonable royalty on the
sales of the infringer, whichever measure of damages the court shall have
applied. Any recovery or damages still remaining after the above-mentioned
applications shall be divided as follows: 50% to CSHL and the remaining 50% to
Licensee.
ARTICLE 8 - PRODUCT LIABILITY AND WARRANTY
------------------------------------------
8.1 Except to the extent resulting from the gross negligence or
intentional misconduct or material breach of this Agreement by CSHL, which
breach remains uncured beyond a ninety (90) day period from the date of receipt
of notice of breach, Licensee shall at all times during the term of this
Agreement and thereafter, indemnify, defend and hold CSHL, its trustees,
officers, employees and affiliates, harmless from and against all actions,
suits, claims, demands, judgments, liabilities and expenses, including legal
expenses and reasonable attorneys' fees, arising out of the development,
manufacture, sale, distribution or use of Licensed Products or Licensed
Processes or the presence of Licensees employees, sublicensees or agents in or
on the premises of CSHL, including, without limitation, any claim arising out of
the death of or injury to any person or persons or out of any damage to
property, or arising out of the exercise of rights granted hereunder by
Licensee, its Affiliates or its sublicensees. CSHL shall promptly notify
Licensee in writing of any such action, suit, claim or demand. Licensee shall
manage and control, at its sole expense, the defense of any such action, suit,
claim or demand. CSHL shall not agree to any settlement without Licensee's
consent.
8.2 Licensee shall promptly obtain and carry in full force and effect
product liability insurance against any claims, judgments, liabilities and
expenses for which it is obligated to indemnify CSHL under Section 8.1 above, in
such amounts and with such deductibles and other limits as are customary in the
software industry to protect against this eventuality.
A copy of a policy for such insurance shall be provided to CSHL within
thirty (30) days of the Effective Date.
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8.3 CSHL represents and warrants that it is the sole owner of the Patent
Rights, and Licensed Copyrights, subject to any rights of the United States
government, and that it has the authority to grant the licenses granted
hereunder, and that it has not knowingly taken any actions that would adversely
affect the validity of the Patent Rights. CSHL warrants that as of the date of
execution of this Agreement, it has not received actual notice of any patents or
patent applications or copyrights owned by third parties which would prevent
Licensee from making, using or selling Licensed Products or practicing or
otherwise using the Licensed Processes. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH
IN THIS AGREEMENT, CSHL MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF
ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF
MERCHANTABILITY OF THE LICENSED PRODUCT OR LICENSED PROCESS, FITNESS FOR A
PARTICULAR PURPOSE OF THE LICENSED PRODUCT OR LICENSED PROCESS, OR VALIDITY OR
ENFORCEMENT OF PATENT RIGHTS OR LICENSED COPYRIGHTS. NOTHING IN THIS AGREEMENT
SHALL BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY CSHL THAT THE
PRACTICE BY LICENSEE OF THE LICENSES GRANTED HEREUNDER SHALL NOT INFRINGE THE
INTELLECTUAL PROPERTY RIGHTS OF ANY THIRD PARTY.
ARTICLE 9 - COLLABORATION
-------------------------
9.1 CSHL and Licensee desire to establish a broad collaboration with
respect to further developments emanating from Xx. Xxxx'x facilities at CSHL.
9.2 In furtherance of the spirit of collaboration of the Parties, CSHL
agrees to provide up to eight (8) employees of Licensee with access, during a
period of two (2) years after the date of execution of this Agreement and during
normal business hours, to CSHL's laboratories for the sole purpose of conducting
computer software development and research on GT under the direction of Xx.
Xxxx.
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These employees shall be in addition to any employees funded by Licensee
sponsored research at CSHL. Licensee shall be responsible for any salaries,
expenses and additional capital equipment required by these employees and for
rent for the facilities and services used by such Licensee's employees, in
accordance with the Lease Agreement appended hereto as APPENDIX E.
ARTICLE 10 - EXPORT CONTROLS
----------------------------
It is understood that CSHL and Licensee are 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 applicable 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. CSHL neither represents that a license shall not be required nor
that, if required, it shall be issued.
ARTICLE 11 - CONFIDENTIALITY AND NON-USE OF NAMES
-------------------------------------------------
11.1 Licensee shall maintain the Proprietary Technical Information in
confidence, and shall not disclose, divulge or otherwise communicate such
Information to others, or use it for any purpose, except pursuant to, and in
order to carry out, the terms and objectives of this Agreement, and hereby
agrees to exercise every reasonable precaution to prevent and restrain the
unauthorized disclosure (except to the extent necessary incident to the use or
sale of Licensed Products or Licensed Processes) of such Information by any of
its directors, officers, employees, consultants, subcontractors, sublicensees or
agents.
11.2 The provisions of Section 11.1 shall not apply to any Information
disclosed hereunder which:
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(a) was known or used by Licensee prior to its date of disclosure to
Licensee, as evidenced by the prior written records of Licensee; or
(b) either before or after the date of the disclosure to Licensee is
lawfully disclosed to Licensee by sources other than CSHL who are
rightfully in possession of the Information; or
(c) either before or after the date of the disclosure to Licensee is or
was published or generally known to the public through no fault or
omission on the part of Licensee provided, however, that the sale of
Licensed Products or use of Licensed Processes in the ordinary course
shall not constitute fault or omission;
(d) is independently developed by or for the Licensee without reference to
or reliance upon the Information; or
(e) is required to be disclosed by Licensee to comply with applicable
laws, to defend or prosecute litigation or to comply with governmental
regulations, or to be used in patent applications to be filed under
this Agreement, provided that the Licensee provides prior written
-------- ----
notice of such disclosure to CSHL and takes reasonable and lawful
actions to avoid and/or minimize the degree of such disclosure.
11.3 Neither Party shall use the names or trademarks of the other Party,
nor any adaptation thereof, nor the names of any of its employees, in any
advertising, promotional or sales literature without prior written consent
obtained from such other Party, or said employee, in each case, except that
Licensee may state that it is licensed by CSHL under one or more of the patents
and/or applications included in the Patent Rights and Licensed Copyrights.
11.4 A Party shall not disclose, divulge or otherwise communicate the
existence or terms of this Agreement to others except to the extent such
existence or terms (i) become published or generally known to the public through
no fault or omission of such Party; (ii) are required to be disclosed to comply
with applicable laws, to defend or prosecute litigation or to comply with
governmental regulations, or (iii) are required to be disclosed to potential
investors in Licensee, existing shareholders of Licensee, or otherwise as
necessary to conduct the business of Licensee, provided that in the case of
-------- ----
(ii), or (iii) such Party provides prior written notice of such disclosure to
the other Party and takes reasonable and lawful actions to avoid and/or minimize
the degree of such disclosure; including, where possible, disclosing the
information under an agreement of confidentiality for the benefit of the other
Party.
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ARTICLE 12 - ASSIGNMENT
-----------------------
This Agreement is not assignable by Licensee or CSHL by operation of law or
otherwise, except that it is assignable by Licensee in connection with a merger
or consolidation of Licensee with or into another business entity or sale of all
or substantially all of Licensee's business or assets or stock to a business
entity or business person that assumes Licensee's obligations hereunder in
writing.
ARTICLE 13 - DISPUTE RESOLUTION
-------------------------------
13.1 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
and except for any dispute involving Section 14.2, any and all claims, disputes
or controversies arising under, out of, or in connection with this Agreement,
including, without limitation, any dispute relating to "compensation" or
"consideration" attributable to the Xxxxx/Xxxx Algorithm in Section 4.5 or
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. By not later than five (5) business days after the recipient has
received such notice of dispute, 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. Such representatives shall schedule a date for a mediation
hearing with a mediator jointly selected by such representatives in New York,
New York on a date not later than ten (10) business days after the date of such
notice of dispute, or if no dates are available in such period, then the first
available date thereafter. The parties shall thereupon enter into good faith
mediation and shall share the costs equally. If the representatives of the
parties have not been able to jointly select a mediator or to resolve the
dispute within fifteen (15) business days after the earlier of attempting to
jointly select a mediator or the occurrence of such mediation hearing, the
parties
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shall submit the matter to arbitration, in good faith in New York, New York, in
accordance with the rules and practices of the American Arbitration Association.
The decision of the arbitrator(s) shall be binding on the parties and
enforceable in any court of competent jurisdiction.
13.2 Notwithstanding the foregoing, nothing in this Article 13 shall be
construed to waive any rights or timely performance of any obligations existing
under this Agreement.
ARTICLE 14 - TERMINATION
------------------------
14.1 If Licensee shall cease to carry on its business or at any time
commit any act of bankruptcy, or become bankrupt, or have a receivership order
made against it, or make or execute any xxxx of sale, deed of trust, or
assignment for the benefit of creditors, this Agreement shall terminate upon
notice by CSHL.
14.2 Should Licensee fail to make any payment whatsoever due and payable
to CSHL hereunder, CSHL shall have the right to terminate this Agreement
effective on thirty (30) days' notice, unless Licensee shall make all such
payments to CSHL within said thirty (30) day period. Upon the expiration of the
thirty (30) days period, if Licensee shall not have made all such payments to
CSHL, CSHL may, immediately upon notice to Licensee, terminate this Agreement
and the rights, privileges and license granted hereunder.
14.3 Upon any material breach or default of this Agreement by Licensee,
other than those occurrences set out in Section 14.1 and 14.2 above, which shall
always take precedence in that order over any material breach or default
referred to in this Section 14.3, CSHL shall have the right to terminate this
Agreement and the rights, privileges and license granted hereunder effective on
ninety (90) days' notice to Licensee. Such termination shall become
automatically effective unless Licensee shall have cured any such material
breach or default prior to the expiration of the ninety (90) day period. Upon
any termination under Sections 14.1, 14.2, or 14.3, Licensee shall promptly
return all Proprietary Technical Information theretofore supplied to it by CSHL
and any copies made by or for it, its Affiliates or sublicensees.
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14.4 Licensee shall have the right to terminate this Agreement at any time
on six (6) months' notice to CSHL, and upon payment of all amounts due CSHL
through the effective date of termination.
14.5 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. 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
pay to CSHL the royalties thereon as required by Section 4.3 of this Agreement
and shall submit the reports required by Article 5 hereof on the sale of
Licensed Products.
14.6 Upon termination of this Agreement for any reason, CSHL shall
recognize the sublicenses granted by the Licensee under the rights licensed
hereunder, provided that CSHL (i) thereafter shall have the right to receive any
payments or other consideration payable to Licensee thereunder, (ii) thereafter
shall have the right to terminate the sublicense upon thirty (30) days' notice
of a material breach by the sublicensee which is not cured prior to expiration
of such thirty (30) day period, and (iii) shall not assume, and shall not be
responsible to any sublicensees for, any representations, warranties or
obligations of Licensee to any sublicensees other than as set forth herein.
14.7 The provisions of Article II shall survive any expiration or
termination of this Agreement.
ARTICLE 15 - PAYMENTS, NOTICES
------------------------------
AND OTHER COMMUNICATIONS
------------------------
Any payment, notice or other communication pursuant to this Agreement shall
be sufficiently made or given by the sending Party (i) upon personal delivery to
the receiving Party, or (ii) two (2) days after deposit with the United States
Postal Service, registered or certified first class mail, postage prepaid,
return receipt requested, addressed to the receiving Party at its
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address set forth below, or at such other address of which the receiving Party
shall have notified the sending Party in a notice given in accordance with this
Article 15.
In the case of CSHL:
Xx. Xxxx Xxxxxxx
------------------------------------------
Assistant Administrative Director
------------------------------------------
Box 100. 0 Xxxxxxxx Xxxx
------------------------------------------
Cold Xxxxxx Xxxxxx, Xxx Xxxx 00000
------------------------------------------
In the case of Licensee:
Xx. Xxxxx X. Xxxxxxxx
------------------------------------------
President, Genomica Corporation
------------------------------------------
000 Xxxxxx Xxxx
------------------------------------------
Xxxxx, Xxxxxxxxxxxx 00000
------------------------------------------
ARTICLE 16 - MISCELLANEOUS PROVISIONS
-------------------------------------
16.1 This Agreement shall be construed, governed, interpreted and
applied in accordance with the laws of the State of New York, U.S.A., without
giving effect to its conflict of laws provisions, except that questions
affecting the constructions and effect of any patent shall be determined by the
law of the country in which the patent was granted.
16.2 The parties hereto acknowledge that this Agreement (including the
Appendices hereto) 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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16.3 The provisions of this Agreement are severable, and in the event
that any provisions of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of the law, such invalidity or
unenforceability shall not in any way affect the validity of enforceability of
the remaining provisions hereof.
16.4 Licensee agrees to xxxx the Licensed Products sold by it with any
notice of patent rights reasonably necessary or desirable under applicable law
to enable the Patent Rights to be enforced to the maximum degree in the country
where such Licensed Products are sold.
In the event any Technical Information bears a Copyright Notice,
Licensee shall not remove such notice and it shall be retained or reproduced in
its exact form on all authorized copies and versions of Licensed Product(s) or
the Licensed Process, both in machine and human readable language.
16.5 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.
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IN WITNESS WHEREOF, the parties have duly executed this Agreement the day
and year set forth below.
COLD SPRING HARBOR LABORATORY
By: /s/ Xxxx Xxxxxxx
--------------------------------------
Name: Xxxx Xxxxxxx
------------------------------------
Title: Assistant Administrative Director
-----------------------------------
Date: 3/25/96
------------------------------------
GENOMICA CORPORATION
By: /s/ Xxxxx X. Xxxxxxxx
--------------------------------------
Name: Xxxxx X. Xxxxxxxx
------------------------------------
Title: President
-----------------------------------
Date: 3
------------------------------------
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