EXHIBIT 10.19
CONFIDENTIAL
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LICENSE AGREEMENT
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between
CombiMatrix Corporation.
0000 Xxxxxxx Xxxxxxx Xxxx.
Xxxxxxxx, XX 00000
XXX
(hereinafter referred to as "CBMX")
[LICENSOR]
and
Roche Diagnostics GmbH
Sandhofer Xxxx(xxxx)x 000
00000 Xxxxxxxx
Xxxxxxx
(hereinafter referred to as "RDG")
[LICENSEE]
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This License Agreement (the "Agreement"), is made and entered into by and
between RDG and CBMX. RDG and CBMX may be referred to herein individually as a
"Party" and collectively as the "Parties."
RECITALS
WHEREAS
(1) CBMX and RDG have entered into a broad strategic collaboration in
nucleic acid microarray technology comprising a License & Supply
Agreement and a Research & Development Agreement on July 1st 2001.
(2) Whereas due to changes in CBMX business model for the collaboration the
Parties have decided to reformulate their mutual relationship with this
Agreement which shall replace in its entirety and including all
existing amendments such License and Supply Agreement of July 1st 2001,
and a new R&D Agreement (the "R&D Agreement") which replaces in its
entirety the existing Research and Development Agreement dated July 1st
2001 and is signed concurrently with this Agreement.
(3) CBMX is the owner of intellectual property rights, including Know-How
and various patents, patent applications, copyrights and trademarks in
the field of nucleic acid microarray technology, including its
proprietary micro chip technology, and is willing to grant to RDG a
license under the terms and conditions of this Agreement;
(4) CBMX and RDG have now agreed to enter into this Agreement and to
regulate their mutual rights and obligations in the manner hereinafter
appearing.
NOW, THEREFORE the Parties hereto in consideration of the premises and of the
mutual covenants, agreements, representations and warranties hereinafter set
out, the Parties hereto agree to enter into this Agreement according to the
following terms and conditions:
License Agreement Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
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PARAGRAPH 1
DEFINITIONS
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The following terms shall be defined as follows for the purpose of this
Agreement:
(1) "Affiliate" shall mean any person, company or entity that, directly
or indirectly, through one or more intermediaries, controls, is controlled by,
or is under common control with, RDG or CBMX. For purposes of this definition,
"control" shall mean the direct or indirect ownership of (a) at least fifty per
cent (50%) or the maximum controlling percentage, if less than fifty per cent
(50%), as allowed by applicable law, of the outstanding voting securities or
participating profit interest of such entity, (b) at least fifty per cent (50%)
of the decision making authority of such entity, or (c) otherwise has the
ability to direct the management of such entity. Notwithstanding the foregoing,
the term "Affiliate" shall not include Genentech, Inc. a company located at 0
XXX Xxx, Xxxxx Xxx Xxxxxxxxx, Xxxxxxxxxx, X.X.X.
(2) "Agreement" shall mean this License Agreement and all Annexes and
Exhibits hereto.
(3) "Agreements" shall mean this Agreement and the R&D Agreement
collectively."
(4) "* Instrument" shall mean a hardware device with operating software
supporting the electrochemical in situ synthesis of oligonucleotides on Chips,
capable of synthesizing * or more Flow-Cells or Slide-Chips in parallel.
(5) "Chip(s)" shall mean an electrode-containing microarray device
containing a three-dimensional, porous reaction layer (PRL), wherein the device
is capable of synthesizing nucleic acids using a CBMX patented electrochemical
process.
(6) "Slide-Chips" shall mean a Chip mounted on any device that is not a
Mono-cassette.
(7) "Confidential Information" shall mean information, including,
without limitation, information related to inventions, technology, know-how,
trade secrets, plans, data, research, development, design, processes,
manufacture, marketing, financial matters, and personnel matters that one Party
or its Affiliates discloses to the other Party or its Affiliates in any form,
written, oral or otherwise, with the exception of information which
(i) at the time of disclosure is in the public domain or which
after disclosure becomes part of the public domain through no
fault of the recipient; or
(ii) the recipient can show, by its written records, was already
in its possession at the time of disclosure hereunder; or
License Agreement Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
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(iii) the recipient can prove was rightfully received from a Third
Party, which to the recipient's knowledge, the Third Party,
without breach of any obligation of secrecy, is free to disclose
to others; or
(iv) the recipient can prove, by its written records, was
independently developed by the recipient without reference to the
confidential information disclosed to it pursuant to this
Agreement; or
(v) is required by law, regulation, rule, act or order of any
governmental authority to be disclosed: provided that the
recipient shall give the disclosing party timely, prior
notification if it intends to disclose any Confidential
Information in order that disclosing party shall have an
opportunity to intervene to limit or prevent disclosure of such
Confidential Information; and provided further that the recipient
disclose only the minimum Confidential Information required to be
disclosed in order to comply with its disclosure obligations.
(8) "Content" shall be the compilation of nucleic acid capture probes
on a Chip, including their pattern of distribution. Content may include
proprietary nucleic acid sequences and/or may be separately protectable by
patent rights.
(9) "Commercial Launch" shall mean the first commercial sale or other
disposition of a Licensed Product to an End User in the Territory on a Licensed
Product-by-Licensed Product basis.
(10) "Desk Top Synthesizer" shall mean a hardware device with operating
software supporting the electrochemical in situ synthesis of oligonucleotides on
Chips, capable of synthesizing up to * Flow--Cells in parallel.
(11) "Distributor" shall mean a reseller, which is not an Affiliate of
a Party, of a Licensed Product purchased from such Party or one of its
Affiliates or Sales Representatives for resale, transfer or other disposition to
an End User.
(12) "Effective Date" shall mean the effective date of a settlement of
the law suit between CBMX and its employee Xxxxxx Xxxxxxxxxx on one side and
Nanogen, Inc, of San Diego, California on the other side at the United States
District Court, Southern District of California; Case No.: CV2369 JM RBB, in
which settlement Nanogen irrevocably confirms and accepts CBMX sole ownership to
U.S. Patents 6,093,302 and 6,280,595 and covenants not to xxx or make any claim
against CBMX in the future regarding CBMX legitimate ownership of U.S. Patents
6,093,302 and 6,280,595.
License Agreement Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
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(13) "End User" means any person, firm, entity or corporation that
purchases or takes possession from RDG or its Affiliates and Distributors of any
of the Licensed Products for intended use within the Field.
(14) "Field" shall mean all fields of * application within the
Technology regardless of user type or market segment using * means. However, the
field shall exclude applications in Proteomics and electrochemical detection
15) "Flowcell(s)" shall mean a device consisting of a Chip with a flow
through cavity.
(16) "Hybridizer/Reader" shall mean a hardware device and embedded
operating Software that combines a nucleic acid hybridization function and an
optical Chip reader, and related components, capable of optically reading a
Chip, but only if the Chip is housed in a Mono-Cassette format.
Hybridizer/Reader shall exclude hardware devices that combine a nucleic acid
hybridization function and an optical Chip reader function that cannot read
Chips in a Mono-Cassette format.
(17) "Know-How" shall mean all technical information, trade secrets,
know-how and knowledge owned or licensed by CBMX, patentable or not, (including
without limitation all "Results" owned party or entirely by CBMX under the R&D
Agreement), which is proprietary and confidential. "Know-How" shall exclude
rights to Content.
(18) "Major Markets" means the United States, the European Union and
Japan.
(19) "Mono-Cassette(s)" shall mean a device consisting of a Flowcell
containing oligonucleotides synthesized on a Chip designed to be read by the
Hybridizer/Reader, provided however that a Slidechip format shall not be a
Mono-Cassette.
(20) "Net Sales" shall mean, with respect to sales or other
dispositions of a Licensed Product the amount invoiced by RDG, RDG's Affiliate
or Sublicensees to End Users, Distributors or agents less
a) value added tax, sales tax and similar taxes levied on such
sales or other dispositions (provided that such taxes are
separately invoiced to such End Users, distributors or agents)
as reported in RDG's or RDG Affiliates' internal accounting
system (I.E. DIASIS);
b) the Refund Deduction in the amount of * percent (* %);
License Agreement Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
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c) the Reagent Rental Deduction which shall be mutually agreed to
by the Parties in the event that RDG enters into a Reagent
Rental Agreement with any End User customer.
In the event one or more Licensed Product(s) is/are sold together or otherwise
disposed of with one or more other Licensed Products at a single price (such
combination is hereinafter referred to as "Combination Product"), such single
price shall be allocated among the Licensed Product(s) in the Combination
Product based on the market price for such products when sold separately. If any
such product is not being sold alone with a market price, CBMX and RDG shall
agree upon a fair market price for that product. Solely this price agreed upon
shall be used to calculate Net Sales.
(21) "Licensed Patents" means any and all patents or patent
applications owned or controlled by CBMX (including without limitation all
"Results" owned partly or entirely by CBMX under the R&D Agreement),
divisionals, continuations-in-part, reissues, reexaminations, extensions and
corresponding foreign patents and patent applications) in existence or hereafter
filed and as disclosed in ANNEX I to this Agreement, at least, one Valid Claim
of which would be infringed by the making, using or selling of any Licensed
Product by an unauthorized party.
(22) "Licensed Product(s)"shall mean any product the making, using or
selling of which would, but for this license, infringe at least one Valid Claim
of the Licensed Patents. Licensed Products shall include but not be limited to
Mono-Cassette, Flow-Cell, Hybridizer/Reader, Desk Top Synthesizer, Reagents,
Synthesis Reagents and Software as defined under this Agreement. Licensed
Products shall include all products to be developed under the R&D Agreement (as
defined in the R&D Agreement) not specifically mentioned above and covered by,
at least, one Valid Claim of a Licensed Patent.
(23) "Party or Parties" shall mean RDG and/or CBMX.
(24) "Phosphoramidites" shall mean a nucleotide monomer having a
phosphoramidite moiety for linking one nucleotide to the next.
(25) "Proteomics" shall mean any method of protein detection or
detection using proteins.
(26) "Reagents" shall mean all chemicals, solutions, reagents materials
and buffers used in labeling, processing and detection on Chips.
(27) "Reagent Rental Deduction" shall mean a lump sum deduction of fees
for all services which are included in reagent prices such as instrument service
costs, instrument depreciation, finance costs, disposables and rental fees and
shall apply only if Licensed Products are sold by RDG in an arrangement whereby
License Agreement Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
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the cost of an Instrument is financed by the sale of other Licensed Products
(Reagent Rental Agreement).
(28) "Refund Deduction" shall mean a deduction from the Gross Amount of
Licensed Products equal to * percent (* %) of the amount determined by
subtracting from such Gross Amount all value added taxes, sales taxes and
similar taxes reflected in such Gross Amount, intended by the Parties, in lieu
of deductions for actual expenses, as an allowance for all expenses to be
deducted from Gross Amount to calculate Net Sales, including, without limitation
(a) amounts repayable or creditable because of charge backs, refunds, rebates or
retroactive price reductions, (b) tariffs, duties, excises and other taxes
imposed upon the production, sale, delivery or use of Licensed Products
(excluding value added taxes, sales taxes and similar taxes), and (c)
distribution and other customary expenses, such as freight, transportation and
insurance expenses.
(29) "Software" shall mean, (i) software in machine-readable form for
operating the Hybridizer/Reader(s) and Desk Top Synthesizer and the * Instrument
("OPERATING SOFTWARE") (ii) nucleic acid probe chip design software ("PROBE
DESIGN SOFTWARE"), software for preparation of raw data from the Operating
Software for later analysis ("DATA EXTRACTION SOFTWARE"), (iii) Derivative
Works, and (iv) any future software developed by CBMX for RDG for use with any
other Licensed Product, in each case only if such Software is supplied to RDG or
its Affiliate by CBMX sold and/or licensed as a separate stand-alone product by
RDG to an End User.
(30) "Synthesis Reagents" shall mean chemicals, solutions and materials
used in the electrochemical synthesis process.
(31) "Sublicensing Income" shall mean any consideration paid to RDG by
Third Parties for the sublicensing of Licensed Patents including but not limited
to up-front fees and royalties.
(32) "Technology" shall mean all Licensed Patents, and Know-How.
(33) "Territory" shall mean the entire world.
(34) "Third Party" or "Third Parties" shall mean any person or persons
or entity or entities other than RDG or CBMX, or an Affiliate of RDG or CBMX at
the time of the conclusion of this Agreement.
(35) "Valid Claim" shall mean an issued claim of a patent within the
Licensed Patents which has not otherwise been held invalid or unenforceable by a
court from which no appeal has or can be taken, or has not otherwise finally
been held not patentable by the appropriate administrative agency after all
rights of appeal have been exhausted, or a claim in a pending patent application
License Agreement Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
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within the Licensed Patents, the subject matter of which claim, as well as the
application containing said claim, not having been pending for more than six
years from the Effective Date of this Agreement.
PARAGRAPH 2
GRANT OF LICENSE
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2.1 LICENSE GRANT. Subject to the terms and conditions of this
Agreement, CBMX hereby grants to RDG a royalty-bearing world-wide and
non-exclusive (subject to co-exclusivity to Desk Top Synthesizers below) license
- with the unlimited right to sublicense to its Affiliates as long as they
remain Affiliates - to use the Technology only within the Field only for the
purposes of manufacturing, having manufactured, distributing, selling and having
sold Licensed Products, in the Territory to End Users, together with an
exclusive right to sublicense Licensed Patents to Third Parties for the
manufacturing, having manufactured, selling and distributing of Mono Cassettes.
CBMX may not license to Third Parties any of its Licensed Patents for
manufacturing, selling and sublicensing of the Hybridizer/Reader. The license
granted hereunder shall be co-exclusive to RDG for the Desk Top Synthesizer. RDG
hereby grants back to CBMX a non-exclusive license without the right to
sublicense, except to sublicense its Affiliates, so long as they remain
Affiliates, under the Licensed Patents to manufacture, have manufactured,
distribute and sell the Desk Top Synthesizer; PROVIDED, HOWEVER, that CBMX may
not sell to End Users any model of the Desk Top Synthesizer with the same
features as listed in the features section of the Specifications as amended from
time to time by the Parties for new developments. If RDG due to reasons within
its reasonable control does not achieve the first Commercial Launch of the Desk
Top Synthesizer within 18 months from the date where the prototype of the Desk
Top Synthesizer is delivered to RDG according to the Specifications, RDG shall
grant back to CBMX the full right to sublicense the Desk Top Synthesizer at
terms and conditions to be negotiated at such time in good faith; PROVIDED,
HOWEVER, that any delay of the Commercial Launch caused by a delay in the
development and delivery of the Chip and/or Synthesis Reagent under the R&D
Agreement shall not be deemed a reason which is under RDG's reasonable control.
For Software, RDG is granted additional rights to:
a) modify, adapt, enhance or otherwise create Derivative Works
(as defined in the R&D Agreement) of the Software
b) Make, have made, use, sell and have sold Licensed Products
which include, Software at the royalty rate applicable for
such Licensed Product under this Agreement or use, sell and
have sold Software separately as a stand alone products under
the royalty rate for Software in this Agreement.
c) grant implied sublicenses to the Software to End-Users.
License Agreement Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
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2.2 TRADEMARKS AND PATENT MARKINGS. CBMX grants to RDG and its
Affiliates a non-exclusive, royalty-free right and license in the Territory to
use and refer to the CBMX names, trademarks, logos, symbols, designs, and other
designations ("CBMX Brands") used in connection with the Licensed Products as
the source of origin in order to advertise and market same to End Users together
with the right to sublicense Affiliates so long as they remain Affiliates of
RDG. RDG shall, however, not have any obligation to use such CBMX Brands in
connection with any of the Licensed Products. In addition, RDG shall xxxx all
Licensed Products, including promotional brochures and the like, with the
appropriate patent numbers appropriate for each Licensed Product.
PARAGRAPH 3
REPRESENTATIONS AND WARRANTIES
3.1 (a) CBMX represents and warrants that it has full legal rights,
title and the corporate authority to grant the license to RDG under the
Technology, the Agreements create legal, valid and binding obligations on it and
are enforceable against it in accordance with their respective terms; it is
neither aware of the existence of any lawsuits nor has received notice of any
claims, either asserted or implied, of CBMX Technology's infringement of a
patent or other proprietary right anywhere in the world.
(b) To the best of its knowledge, CBMX is not aware of any
rights of Third Parties that, in the legal opinion of CBMX, are valid and
enforceable and are infringed by the making, using or selling of the Licensed
Products. CBMX represents that it owns and controls the U.S. 6,093,302 patent
and all divisionals, continuations and corresponding foreign patents and patent
applications ("Core Patent").
(c) CBMX further represents and warrants that it will take all
necessary measures and pay all official fees (such as annuities) necessary to
maintain the Licensed Patents needed to protect commercial products throughout
the term of this Agreement. CBMX does not assume any liability that the Licensed
Product shall be approved by governmental authorities or any other institution
or supervisory board or similar agencies. CBMX, however, shall support RDG in
its efforts to obtain such approvals, by providing documentary, technical and
other information already in its possession requested by any regulatory
authority if requested to do so by RDG provided however that if CBMX is required
to provide statements and deliver documentation not already in its possession,
RDG shall compensate CBMX for such efforts on a cost plus 25% basis to be agreed
upon in good faith.
(d) Except as explicitly set forth in this Agreement CBMX,
however, does not assume any liability of any kind over and above the
representations and warranties related to the infringement or non infringement
of any third Party intellectual property rights or for the efficiency and
merchantability of the Licensed Products.
License Agreement Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
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3.2 RDG RDG represents and warrants that it has the authority to enter
into the Agreements and it is not a party to any agreement, understanding or
business relationship that prevents it from carrying out its obligations under
the Agreements; the Agreements create legal, valid and binding obligations on it
and are enforceable against it in accordance with their respective terms; and
RDG has the full right and corporate power to enter into and perform its
obligations under the Agreements. RDG shall not promote or advertise the use of
Licensed Products outside the Field, however, RDG shall not be held responsible
or liable by CBMX for any application of Licensed Products outside the Field
that is initiated by End-users or other customers.
3.3 INDEMNITY. Each Party agrees to indemnify, defend and hold harmless
the other Party, its Affiliates and their respective officers, directors,
employees and agents (collectively hereinafter referred to as the "Indemnities")
from and against any and all claims, damages, losses, expenses, fines,
penalties, costs, obligations and other liabilities (including legal cost and
fees) resulting from Third Party claims actually incurred by any of them arising
from, related to or caused by the material breach of any representation or
warranty contained in this Paragraph 3, provided that any such indemnity shall
not exceed individually or collectively an amount equal to the sum of all
payments made by RDG to CBMX under this Agreement and the R&D Agreement through
the date of the event or occurrence giving rise to the breach.
PARAGRAPH 4
PAYMENTS
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4.1 RUNNING ROYALTIES. In consideration of the granting of the rights
hereunder, RDG shall pay to CBMX a Running Royalty in percentage amounts
staggered per any twelve month period ("Year") as described below following the
First Commercial Launch of the Hybridizer/Reader for Category 1 Products and
following the First Commercial Launch of the Desk Top Synthesizer for Category 2
Products and any future Licensed Products not presently covered by any of
Category 1 and Category 2:
Instruments, including but not limited to, Hybridizer/Reader (Category 1) and
Desk Top Synthesizer (Category 2).
o Year 1=* % of Net Sales
o Year 2=* % of Net Sales
o Year 3=* % of Net Sales
License Agreement Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
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o Year 4=* % of Net Sales
o Year 5 onward=* % of Net Sale
Reagents (Category 1):
o Year 1=* % of Net Sales
o Year 2=* % of Net Sales
o Year 3=* % of Net Sales
o Year 4=* % of Net Sales
o Year 5=* % of Net Sales
o Year 6 onward * % of Net Sales
Synthesis Reagents/Phosphoramidites (Category 2):
o Year 1=* % of Net Sales
o Year 2=* % of Net Sales
o Year 3=* % of Net Sales
o Year 4=* % of Net Sales
o Year 5 onward=* % of Net Sales
Synthesis Reagents/Non-Phosphoramidites (Category 2):
o Year 1=* % of Net Sales
o Year 2=* % of Net Sales
o Year 3=* % of Net Sales
o Year 4=* % of Net Sales
o Year 5= * % of Net Sales
Mono-Cassette (Category 1):
o Year 1=* % of Net Sales
o Year 2=* % of Net Sales
o Year 3=* % of Net Sales
o Year 4=* % of Net Sales
o Year 5=* % of Net Sales
o Year 6 onward * % of Net Sales
Flow Cells (Category 2):
o Year 1=* % of Net Sales
o Year 2=* % of Net Sales
License Agreement Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
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o Year 3=* % of Net Sales
o Year 4=* % of Net Sales
o Year 5=* % of Net Sales
o Year 6 onward * % of Net Sales
Software if sold separately (Category 1):
o Year 1=* % of Net Sales
o Year 2=* % of Net Sales
o Year 3=* % of Net Sales
o Year 4=* % of Net Sales
o Year 5=* % of Net Sales
o Year 6 onward * % of Net Sales
4.2 MINIMUM ROYALTIES. Moreover, commencing with the First Commercial
Launch of a Licensed Product, RDG shall pay to CBMX in quarterly installments
beginning with the beginning of the first full calendar quarter following the
First Commercial Launch of a Licensed Product, minimum royalties in the
following amount throughout a period of * Years ("Minimum Period"):
Year 1: $ * ($ * per calendar quarter)
Year 2: $ * ($* per calendar quarter)
Year 3: $ * ($* per calendar quarter)
Such minimum royalties shall be fully creditable against any Running Royalties
during the entire period of Year 1 - Year 3, in the sense that no Running
Royalties and no Sublicensing Income share under Section 4.1 and Section 4.3 is
payable to CBMX per calendar quarter unless and only to the extent that the
amount of Running Royalties due based on Net Sales of Licensed Products and
Sublicensing Income share under Section 4.3 during any calendar quarter
reporting period exceeds *. At the end of the Minimum Period any excess or
shortfall of minimum royalties versus Running Royalties and Sublicensing Income
Share shall be compensated making sure that during the entire Minimum Period,
RDG shall not have paid to CBMX more (but also not less) than the minimum
royalties unless and only to the extent that Running Royalties and Sublicensing
Income Share accrued during the entire Minimum Period exceed the total amount of
minimum royalties ($*) plus the total amount of the creditable portion of * ($*)
under Section 4.4. If the total amount of Running Royalties and Sublicensing
Income Share accrued during the Minimum Period does not reach or exceed $*, only
the creditable portion of the Manufacturing Transfer payments in the amount of
$* shall after the Minimum Period be creditable against Running Royalties and
Sublicensing Income Share. If such total amount accrued is between $* and $*,
the remaining amount of the creditable portion of the Manufacturing Transfer
Payments shall also be creditable against Running Royalties and Sublicensing
Income share after the Minimum Period.
License Agreement Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
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4.3 SUBLICENSING INCOME SHARE. RDG shall pay to CBMX * of all
Sublicensing Income except for Software sold or licensed separately where the
Running Royalty for Software shall apply.
4.4 MANUFACTURING TRANSFER PAYMENTS. RDG shall pay CBMX a total of $*
for the granting of rights under the Technology and the transfer of certain
Deliverables as noted below. A sum of $ * of such amount shall be paid as a
non-reimbursable up-front component within 30 days following the Effective Date.
A sum of $ * of such amount shall be payable for Deliverables attached to
milestones as indicated in Annex 1 of the R&D Agreement and such amount shall be
fully deductible under Section 4.2 above.
4.5 STATEMENTS. The amount of the Running Royalty and/or minimum
royalty payable shall be determined with effect to the end of each applicable
calendar quarter. For that purpose RDG shall prepare and deliver to CBMX an
accurate statement. Such statement shall set forth Sublicensing Income and the
Net Sales by Licensed Product (Category) by country and applicable exchange
rates and shall be forwarded to CBMX within thirty (30) days from the end of
each calendar quarter together with the respective payment. The responsible
financial officer of RDG shall certify in writing that such statement is correct
and complete.
4.6 PAYMENT TIMING. The Running Royalties, Sublicensing Income Share
and Minimum Royalties, as applicable, shall be paid in immediately available
funds together with delivery of the statement described in Section 4.5 above.
Payment will not be deemed to have been made until such time as the funds are
available to CBMX at the designated location.
4.7 PAYMENT FORM. Unless otherwise stated, all payments between the
Parties are to be made in US dollars in the United States. All conversions from
foreign currency to US dollars will be determined on the last business day of
each calendar quarter in the calendar quarter in which the payment, revenue,
expenditure, or other transaction involving non-US currency occurred, based on
the exchange rate of WALL STREET JOURNAL on the last day of that quarter. RDG
agrees to take all reasonable and necessary steps to register this Agreement in
any country of the Licensed Patents where such is required to permit the
transfer of funds and/or payment of Royalties to CBMX hereunder or is otherwise
required by the government or law of such country to effectuate or carry out
this Agreement.
4.8 TAXES ON SALES OF LICENSED PRODUCTS. CBMX will pay all taxes or
withholding taxes payable on CBMX's income generated from the sale of Licensed
Products and deductible under applicable laws of the United States ("Withholding
Taxes"); and RDG agrees to use its best efforts to do anything necessary to
enable CBMX to claim exemption from the payment of Withholding Taxes under
double taxation or similar agreements in force and shall produce to CBMX proper
evidence of payments of any Withholding Taxes.
License Agreement Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
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4.9 LATE PAYMENTS. In the event that payments under this Paragraph are
more than thirty (30) days late, the Party whose payments are late shall be
obliged to pay to the other an interest charge at an annual rate of three months
LIBOR plus 3% (three per cent) compounded weekly for each week that payments are
late.
PARAGRAPH 5
BOOKS AND RECORDS
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RDG shall keep during the term of this Agreement and for five years thereafter
complete and accurate records reflecting all information necessary or useful in
verifying the accuracy of the reports required by this Agreement and relevant to
determination of payments to be made by the Parties hereunder. CBMX shall have
the right to hire an independent certified public accountant to inspect all such
records so required to be kept by RDG (which accountant shall be reasonably
acceptable to RDG and shall agree in writing to keep all information
confidential except as needed to disclose any discovered discrepancies);
provided, such audit: (i) is conducted during normal business hours, (ii) is
conducted no more often then once per year and (iii) is conducted only after
CBMX has given reasonable prior written notice. CBMX shall bear the full cost
and expense of such audit, unless a discrepancy in excess of * % of the amount
due in favor of CBMX is discovered, in which event RDG shall bear the full cost
and expense of such audit. Regardless of the amount of discrepancy discovered,
all discrepancies (and interest thereon) shall be immediately due and payable.
PARAGRAPH 6
INFRINGEMENT AND VALIDITY CHALLENGE
-----------------------------------
The Parties hereto shall inform each other promptly on any infringement of the
Licensed Patents in the Field. CBMX shall defend the Licensed Patents against
validity challenges of Third Parties. Upon reasonable request by RDG, CBMX shall
take commercially reasonable actions against any infringer of the Licensed
Patents in the Field. Any monetary damage, award or other judgment or recovery
that will be adjudicated in favor of CBMX as a result of such infringement shall
belong exclusively to CBMX. All cost for litigation as a result of a validity
challenge or an infringement shall be borne by CBMX. RDG may join any such
action if it is invited to so join by CBMX. The terms and conditions applicable
in such a scenario, including sharing of any damage, award or other judgment or
recovery that will be adjudicated in favor of CBMX as a result of such
infringement would be reflected in a written amendment to this Agreement signed
by both Parties, it being understood that if RDG joins in such action and bears
part of the cost, it would also obtain an equitable amount of the proceeds
depending on its share of cost participation.
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PARAGRAPH 7
THIRD PARTY RIGHTS
------------------
7.1 COOPERATION AGAINST INFRINGEMENT CLAIMS. The Parties, after
consultation with their respective legal counsel, in order to reduce expenses
and avoid duplication of defense efforts, have concluded that they will have
certain interests in common in the event either Party is charged, formally or
informally, with or it is alleged by a Third Party that either Party in making,
using or selling the Licensed Products infringes a Third Party right and may be
able to assert certain common defenses. The Parties and counsel for the Parties
emphasize that the purpose of this Section is not to prevent or impede a jury
from fully considering all evidence that should properly come before it at the
trial of such a case, but rather to enable the Parties to minimize the cost and
expense involved in the efforts directed toward their common interests and
defenses and in defending against certain claims made (and expected to be made)
in the lawsuit that are applicable to the Parties. The Parties and their
respective counsel understand that it may become necessary to exchange and
discuss privileged information relating to their common interests and defenses.
The Parties and their counsel desire to set forth the terms under which
privileged information will be exchanged and discussed and wish to memorialize
their agreement relating to such charges and the sharing of privileged
information and for the protection of such exchanges and discussions in reliance
upon the joint defense privilege. Accordingly, because it is in their common
interests and to assist the defense of such claims, the Parties and their
counsel may share documents, files, letters, plans or evidence they have in
their possession whether or not same is privileged, proprietary, or
confidential. In order to render legal services to the Parties and for the
purposes of a joint defense, the Parties and their counsel may find it advisable
and necessary to communicate with one another. These communications may include,
without limitation, joint conferences of counsel, joint interviews of witnesses,
deponents, experts, and consultants, and exchanges of documents and information.
The subject matter of these communications and exchanges may include but may not
be limited to (a) strategy and tactics regarding defense of the litigation; (b)
legal memoranda, factual and background memoranda, legal theories, deposition
summaries, notes of witness interviews, and witness statements and descriptions
of produced documents, and (c) other privileged documents. All such
communications and exchanges would be protected from disclosure to any Third
Party by the attorney/client privilege, the attorney work-product privilege, the
trial preparation exclusion, the joint defense privilege, the party
communication privilege, and any other applicable privileges and protections,
and such privileges and protections will not be waived as a result of such
communications and exchanges among the Parties and their counsel. The documents
and information described in this Section and exchanged and discussed pursuant
to this Section would be subject to the following conditions which the Parties
believe and intend will preserve the confidentiality of such communications and
work product pursuant to the joint defense, common defense and party
communication privileges: (a) such documents would be maintained in confidence
by counsel and used by counsel solely for purposes of rendering legal advice to
and defending the Parties in the applicable proceedings; (b) such documents and
information may be disclosed to outside or in-house counsel (and such counsel's
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legal assistants, secretaries, word processing personnel and consultants)
representing the Parties in connection with the defense; (c) such documents and
information additionally may be disclosed to present or former directors,
officers or employees of a Party, for purposes of preparing for deposition or
trial, or for purposes of interviewing potential deponents or witnesses, or for
other purposes in connection with the defense; (d) such documents and
information additionally may be disclosed to expert witnesses and consultants
retained by one or more of the Parties in connection with defense.
7.2 STRATEGY. If either Party is charged with or it is alleged by a
Third Party in a manner that either Party in making, using or selling the
Licensed Products within the Field infringes a Third Party right, then the
Parties shall immediately confer in good faith regarding strategy and a course
of action. In consultation with the other Party, the Party charged with any
infringement shall use best efforts to defend itself against any such
infringement claim provided however that RDG may determine in its sole business
judgement to negotiate a license with such Third Party according to Section 7.4
while considering CBMX interests before potentially affecting such interests by
way of settlement, cross claim or Third Party claim or otherwise. Each Party
shall be entitled to engage legal counsel of its own choosing and * the
reasonable costs and expenses of such proceedings (to be calculated, reconciled
and paid within 90 days of the end of a fiscal quarter) insofar as they relate
to common issues of law and/or fact; provided that *.
7.3 STOP ORDER. If RDG is, as a result of a final, unappealable and
conclusive judgment of a court, ordered to cease making, using or selling the
Licensed Products in any of the Major Markets, and if CBMX finally fails to
secure RDG's right to further exploit the Licensed Products in any of the Major
Markets, RDG shall be entitled to immediately stop payment of any Royalties
payable hereunder and terminate this Agreement.
7.4 THIRD PARTY LICENSE. If RDG deems it reasonable under its sole
business judgement to obtain or maintain a license * regarding the
commercialization of a Licensed Product in any of the Major Markets, it may
negotiate or maintain a license from such Third Party at its sole discretion and
*. However such * shall be calculated and applied on a country-by-country basis
where the Third Party agreement applies and shall not exceed a * of the
royalties under Section 4.1 of * from Net Sales for * and * from Net Sales for
all other Licensed Products (except for * ) provided however that such deduction
shall apply only after *. For * of such Third Party royalties and/or license
issuance fees shall be * royalties owed by RDG to CBMX for * without any time
limitation following the Effective Date, however such *may not exceed * of the
royalty amount owed to CBMX for *.
License Agreement Combimatrix September 25th 2002
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CONFIDENTIAL
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PARAGRAPH 8
MOST FAVORED LICENSEE
---------------------
CBMX is under the obligation to offer to RDG the same favorable royalty terms as
CBMX grants to other non exclusive licensees of the Licensed Patents in the
Field before or after the Effective Date, to the extent such other licenses
involve similar volumes and up-front payments and a similar scope of the license
with the proviso that any license grant and related pricing and royalty terms by
CBMX to any governmental entity or otherwise used to settle a pending or
threatened legal dispute shall be excluded from this paragraph.
PARAGRAPH 9
TERM AND TERMINATION
--------------------
9.1 TERM. This Agreement shall commence on the Effective Date and shall
continue thereafter in each country in the Territory for as long as the earlier
of fifteen years from the Effective Date or expiration of the Core Patent unless
terminated in accordance with the clauses set forth herein.
9.2 TERMINATION. Either Party shall have the right to terminate this
Agreement with immediate effect by notice in writing to the other Party, upon
occurrence of any of the following events:
(a) If the other Party commits a material breach of any of the
terms and conditions of this Agreement or the R&D Agreement
and does not cure a material breach susceptible of being cured
within a period of 60 (sixty) days after having been requested
to do so by the non-defaulting Party period (provided,
however, that nothing in this subsection shall prevent a Party
from seeking immediate, injunctive relief where appropriate to
protect proprietary information or such Party's proprietary or
intellectual property rights); or
(b) if the other Party enters into liquidation whether
compulsorily or voluntarily otherwise than for the purpose of
amalgamation or reconstruction, or a petition in bankruptcy is
filed by or against either Party in any competent court and
the same is not dismissed within 120 days; or
(c) if the other Party is adjudicated bankrupt or insolvent or if
the other ceases to do business, or otherwise terminates its
business operations;
(d) if either Party terminates this Agreement in accordance with
the terms of this Agreement.
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9.3 EFFECTS OF TERMINATION. Upon any termination or expiration of this
Agreement, the licenses granted under Section 2 shall terminate and RDG shall no
longer be authorized to purchase Licensed Products. However RDG shall have the
right to sell off any Licensed Products on stock at any of its facilities upon
termination and shall pay the royalties owed for such sales under Section 4 to
CBMX. Upon any termination or expiration of this Agreement, the rights and
obligations of the Parties as set forth out in Paragraphs 9, 10, 11, 12 and 13
of this Agreement and any accrued obligations under this Agreement at the date
of such termination shall survive any termination as well as any other provision
intended by their nature to survive termination of this Agreement. With the
exception of the foregoing rights and obligations and, if applicable, those
under Section 9.4, all rights and obligations hereunder shall immediately
terminate and cease upon termination or expiration of this Agreement.
9.4 UNILATERAL TERMINATION BY RDG. After one hundred and twenty (120)
days' prior written notice to CBMX, RDG may terminate this Agreement for any
reason it deems reasonable. Upon any such termination RDG shall pay to CBMX in
one lump sum an amount equal to the sum of Running Royalties owed for the
selling of Licensed Products upon the effective date of termination. No other
payments and obligations of any kind shall be due to CBMX except as those set
forth in the R&D Agreement in the event it is also terminated.
PARAGRAPH 10
CONFIDENTIALITY
---------------
10.1 GENERALLY. CBMX and RDG shall each retain in confidence and not
disclose to Third Parties Confidential Information obtained from the other under
this Agreement. Receiving party will not utilize Confidential Information except
for the express purposes of: performing this Agreement. Both Parties shall be
allowed to disclose Confidential Information if it is disclosed to:
(i) Consultants and Affiliates of the receiving party who have a
genuine need to know in connection with the receiving Party's
performance of this Agreement and are obligated to maintain it in
confidence pursuant to written agreements.
(ii) A governmental agency or authority if necessary to obtain
regulatory approval, reviews clearance, registration, or
authorization in order to manufacture, develop, market or sell any
of the Licensed Products, provided that the receiving Party or its
may, without liability hereunder, disclose only that portion of
the which legal counsel advises the receiving Party is legally
required to be disclosed (and only to such persons as such counsel
advises the receiving Party are legally required) and that the
receiving Party exercise its best efforts to preserve the
confidentiality of the Confidential Information, including,
without limitation, by cooperating with the providing Party to
obtain an appropriate protective order or other reliable assurance
that confidential treatment will be accorded the Confidential
Information.
License Agreement Combimatrix September 25th 2002
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CONFIDENTIAL
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(iii) To patent authorities as reasonably may be required in a
patent application filed by CBMX or RDG covering subject matter
which is encompassed within this Agreement upon consent of the
originator of the Confidential Information, which consent shall
not be unreasonably withheld; or
(iv) To other entities as may be required by law, regulation or
judicial order, subject to the proviso in clause (ii) above.
Each Party acknowledges that the restrictions contained in this Paragraph 11 are
necessary and reasonable to protect the legitimate interests of the Parties. The
provisions of this Paragraph 11 shall survive the expiration or termination of
this Agreement for a period of five (5) years. Notwithstanding any other
provision of this Agreement, the receiving party or its Affiliates will be
permitted to disclose any Confidential Information if such disclosure:
(a) Is in response to a valid order by a court or other
governmental body having jurisdiction; or
(b) Is otherwise required by law or by the requirements of any
competent securities regulatory authority;
PROVIDED, HOWEVER, that the receiving Party will make every effort to inform the
disclosing Party of the order, law or requirement such that the disclosing Party
will have a reasonable opportunity to seek an appropriate protective order.
PARAGRAPH 11
DISPUTES AND ARBITRATION
------------------------
11.1 FIRST STAGE CONSULTATION. All disputes, controversies and
differences which may arise between the Parties hereto in respect of this
Agreement shall tried to be settled amicably through mutual consultation within
thirty (30) days of a written settlement request of either Party.
11.2 ICC ARBITRATION. Any disputes arising out of or in connection with
this Agreement, including any question regarding its existence, validity,
breach, violation or termination, shall be exclusively and finally settled under
the Rules of Conciliation and Arbitration of the International Chamber of
Commerce effective January 1st 1998 in the then applicable form ("ICC Rules") by
three arbitrators (the "Arbitral Tribunal") appointed in accordance with the
said ICC Rules. Any award granted by the Arbitral Tribunal shall be final,
binding and enforceable against the Parties. The arbitration shall at all times
be held in the English language, provided, however, that (i) a Party may submit
documents in the German language and such submitted documents will only be
translated into the English language if the Arbitral Tribunal or a Party so
requests, and (ii) that the cost of translation of any such German language
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documents shall be at the sole expense of the Party submitting such documents.
Any arbitration arising pursuant to f this Agreement shall be held in New York,
N.Y. Discovery shall only be admissible to the extent permitted and not
prohibited under Article 20 of the ICC-Rules and agreed upon by the Parties who
shall cooperate with one another at the outset of the proceeding to define the
extent of discovery reasonably needed to complete the proceeding. The procedural
law of the State of New York shall otherwise be applied to any proceedings held
in connection with said arbitration. Judgment upon an award rendered by the
Arbitrators shall be binding and may be entered in any court with appropriate
jurisdiction, and the Parties consent to jurisdiction therein for the purpose of
such enforcement. Notwithstanding anything to the contrary contained in this
Agreement or elsewhere, each of the parties hereby acknowledges and expressly
agrees that any breach by it of this Agreement, which does or may result in loss
of confidentiality of the Confidential Information, would cause irreparable harm
to the other party for which money damages would not be an adequate remedy.
Therefore, each of the Parties hereby agree, that in the event of any breach of
this Agreement by it, the non-breaching Party will have the right to seek
injunctive relief in a court of competent jurisdiction against continuing or
further breach by the breaching Party, without the necessity of proof of actual
damages, in addition to any other right which either Party may have under this
Agreement, or otherwise in law or in equity.
PARAGRAPH 12
APPLICABLE LAW
--------------
This Agreement shall be governed by and construed under the laws of the State of
New York, and the United States without regard to conflicts of laws provisions
thereof and shall not apply the United Nations Convention on Contracts for the
International Sale of Goods. In any action or proceeding to enforce rights under
this Agreement, the prevailing Party shall be entitled to recover costs and
attorneys' fees.
PARAGRAPH 13
FINAL PROVISIONS
----------------
13.1 ENTIRE AGREEMENT. This Agreement constitutes the entire
understanding between the Parties hereto concerning the subject matter hereof
and supersedes all other agreements, arrangements and understandings, written or
oral, concerning such subject matter between the Parties, not including any
existing confidentiality agreement between them and the accompanying R&D
Agreement but including the agreements cited in Recital (1) of this Agreement.
13.2 AMENDMENTS. Any modification of or amendment to this Agreement
must be made in writing. The same applies to any agreement waiving this
requirement.
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13.3 WAIVERS. A failure or delay on the part of any Party hereto in
exercising any power or right hereunder shall not operate as a waiver by such
Party of any succeeding default by the other, nor shall any single or partial
exercise of such right or power preclude any other or further exercise thereof
or the exercise of any other right or power. A Party's consent to or waiver,
express or implied, of the other Party's breach of its obligations hereunder
shall not be deemed to be construed as a consent to or waiver of any other
breach of the same or any other obligations of the other Party. A Party's
failure to complain of any act, or failure to act, by the other Party, to
declare the Party in default, to insist upon the strict performance of any
obligation or condition of this Agreement or to exercise any right or remedy
consequent upon a breach thereof, no matter how such failure continues, shall
not constitute a waiver by such Party of its rights hereunder, of any such
succeeding breach, or of any other obligation or condition. A Party's consent in
any one instance shall not limit or waive the necessity to obtain such Party's
consent in any future instance and in any event no consent or waiver shall be
effective for any purpose hereunder unless such consent or waiver is in writing
and signed by the Party granting such consent or waiver.
13.4 STATUS OF PARTIES. In its performance under this Agreement, each
Party shall be an independent contractor and neither Party (nor any employee or
agent thereof) shall be an agent or partner of the other Party. Neither party
shall have the right to assume or create obligations on the others behalf,
express or implied.
13.5 HEADINGS. The headings of the various Paragraphs and Sections of
this Agreement are used solely for the convenience of the Parties, do not form
part of this Agreement and are not intended to affect the interpretation or
meaning of this Agreement or to define, limit, extend or describe its scope or
intent.
13.6 THIRD PARTIES. None of the provisions of this Agreement shall be
for the benefit of or enforceable by any Third Party except where otherwise
expressly provided in this Agreement.
13.7 DATES. In computing any period of time pursuant to this Agreement,
the day or date of the act, notice, event or default from which the designated
period of time begins to run will not be included. The last day of the period so
computed will be included, unless it is a Saturday or Sunday or other public
holiday in either of the Parties countries of origin in which event the period
runs until the end of the next day which is not a Saturday or Sunday or public
holiday.
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13.8 CONSTRUCTION. The Parties agree that each Party has reviewed this
Agreement and that any rule of construction to the effect of ambiguities are to
be resolved against the drafting Parties shall not apply to the interpretation
of this Agreement.
13.9 ASSIGNMENT. This Agreement, and the License, rights and duties
contained in this Agreement shall not be assigned by RDG to anyThirtd Party,
except as part of a sale of RDG's business(es) pertaining to all of the Licensed
Products and, in such event, only collectively and in their entirety. RDG shall
give CBMX prior written notice of such assignment and obtain RDG's assignees'
written agreement to abide by the terms of this Agreement and assume all of
RDG's obligations under this Agreement. Upon such assignment, the term RDG as
used in this Agreement shall thereafter mean the assignee of RDG. This Agreement
and rights and duties contained in this Agreement shall not be assigned by CBMX
to any Third Party, except as part of a sale of CBMX's business(es) pertaining
to all of the Licensed Products and, in such event, only collectively and in
their entirety. CBMX shall give RDG prior written notice of such assignment and
obtain CBMX's assignees' written agreement to abide by the terms of this
Agreement and assume all of CBMX's obligations under this Agreement. Upon such
assignment, the term CBMX as used in this Agreement shall thereafter mean the
assignee of CBMX. Except as otherwise provided in this Agreement, neither Party
will have the right to assign or transfer any of its rights or to delegate any
of its duties under this Agreement to any Third Party without the prior written
consent of the other Party. Any attempted assignment or transfer without such
consent will be void and of no effect, and will automatically terminate all
rights of the Party attempting such assignment or transfer under this Agreement.
13.10 SEVERABILITY. Should any provision of this Agreement be or become
invalid or unenforceable, then the validity and enforceability of the remaining
provisions shall thereby not be affected. The Parties of this Agreement are
under the obligation to use good faith efforts to substitute, if possible, any
invalid or unenforceable provision by a legally effective provision which comes
as close as possible to the economic purpose of the invalid or unenforceable
provision. The same applies to any amendment to this Agreement.
13.11 NOTICES. Notices, requests, reports and other communication in
connection with this Agreement shall be delivered to the addresses of the
Parties appearing in the heading of this Agreement for the attention of
License Agreement Combimatrix September 25th 2002
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Roche Diagnostics GmbH
Legal Department
Sandhofer Xxxx(xxxx)x 000
00000 Xxxxxxxx
Xxxxxxx
Tel. 0000-000-0000 Fax. 0000-000-0000
if addressed to CBMX
0000 Xxxxxxx Xxxxxxx Xxxxxxx
Xxxxxxxx, Xxxxxxxxxx 00000
XX
Tel x000 000 0000
Fax x000 000 0000
for the attention of General Counsel
The address and the person to whom notice should be provided may be altered by
notice so given. Such delivery will be deemed to have occurred upon proof of
delivery by mail, telex, telecopy, or courier.
13.12 SURVIVORSHIP. The Agreement will be binding upon and will inure
to the benefit of the Parties hereto and their respective successors and
permitted assigns.
13.13 OFFICIAL LANGUAGE. The official language of this Agreement is
English. Documents or notices not originally written in English will have no
effect under this Agreement until they have been translated into English and the
English translation will then be the controlling form of the document or notice
13.14 INTERPRETATION. When a reference is made in this Agreement to
Articles ors Sections, such reference will be to an Article or Section of this
Agreement unless otherwise indicated. The headings contained in this Agreement
are for reference purposes only and will not affect in any way the meaning or
interpretation of this Agreement. Whenever the words "include", "includes" or
"including" are used in this Agreement they will be deemed to be followed by the
words "without limitation." The phrases "the date of this Agreement," "the date
hereof" and terms of similar import, unless the context otherwise requires, will
be deemed to refer to the date appearing in the introductory paragraph of this
Agreement.
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13.15 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, all of which taken together will be considered one and the same
agreement and will become effective when two or more counterparts have been
signed by each of the Parties and delivered to the other Parties, it being
understood that all Parties need not sign the same counterpart.
13.16 FORCE MAJEURE. If the performance of any obligation under this
Agreement (except payment of monies due) by either Party is prevented,
restricted or interfered with by reason of casualty, accident, fire, strikes or
labor disputes, inability to procure materials or components, power or supplies,
war or other violence, any law, order, proclamation, regulation, ordinance,
demand or requirement of any government agency or intergovernmental body, or any
other act, circumstance or condition whatsoever beyond the reasonable control of
such Party, the Party so affected, upon giving notice to the other Party, shall
be excused from such performance to the extent of such prevention, restriction
or interference.
13.17 LIMITATION OF LIABILITY. Notwithstanding anything to the contrary
in this Agreement, in no event will either Party be liable for any indirect,
punitive, special, incidental or consequential damage in connection with or
related to this agreement (including loss of profits, use, data, or other
economic advantage), howsoever arising, either out of breach of this agreement,
including breach of warranty, or in tort, even if the other Party has been
previously advised of the possibility of such damage.
IN WITNESS WHEREOF the Parties hereto have signed this Agreement on this 25th
day of September 2002.
Mannheim, Germany Mukilteo, Washington
ROCHE DIAGNOSTICS GMBH COMBIMATRIX CORPORATION
By: /S/ DR. RAEHS By: /S/ XXXX XXXXX PH.D
------------------------ ------------------------
Dr. Raehs Xxxx Xxxxx Ph.D.
i.V.
By: /S/ X. XXXXXXXXX By: /S/ XXXXXX XXXXX
------------------------ ------------------------
X. Xxxxxxxxx Xxxxxx Xxxxx
License Agreement Combimatrix September 25th 2002
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ANNEX I
LICENSED PATENTS
-------------------- ------------------------------ -------------- ---------------------------------------------------
SERIAL NUMBER OR
DOCKET NUMBER PATENT NUMBER COUNTRY TITLE
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101 * US Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101WO PCT/US97/11463 PCT Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101AU 35884/97 AU Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101BE 0910467 BE Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101CH 0910467 CH Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101DK 0910467 DK Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101EP 97 932 422.5 EP Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101ES 0910467 ES Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101FR 0910467 FR Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101GB 0910467 GB Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101IE 0910467 IE Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101IT 0910467 IT Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101JP PCT/US97/11463 JP Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101NL 0910467 NL Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0101SE 0910467 SE Electrochemical Solid Phase Synthesis of Polymers
-------------------- ------------------------------ -------------- ---------------------------------------------------
0102 6,093,302 US Electrochemical Solid Phase Synthesis
-------------------- ------------------------------ -------------- ---------------------------------------------------
0102WO PCT/US99/00599 PCT Gettering Device for Ion Capture
-------------------- ------------------------------ -------------- ---------------------------------------------------
0102A * USO1 Electrochemical Solid Phase Synthesis
-------------------- ------------------------------ -------------- ---------------------------------------------------
0102B * US02 Electrochemical Solid Phase Synthesis
-------------------- ------------------------------ -------------- ---------------------------------------------------
0102C * US03 Electrochemical Solid Phase Synthesis
-------------------- ------------------------------ -------------- ---------------------------------------------------
0102AU 22216/99 AU Gettering Device for Ion Capture
-------------------- ------------------------------ -------------- ---------------------------------------------------
0102CA 2317537 CA Gettering Device for Ion Capture
-------------------- ------------------------------ -------------- ---------------------------------------------------
0102CN 99803184.4 CN Gettering Device for Ion Capture
-------------------- ------------------------------ -------------- ---------------------------------------------------
0102EP 99 902 174.4-1270 EP Gettering Device for Ion Capture
-------------------- ------------------------------ -------------- ---------------------------------------------------
0102JP 2000-527976 JP Gettering Device for Ion Capture
-------------------- ------------------------------ -------------- ---------------------------------------------------
0104 * US *
-------------------- ------------------------------ -------------- ---------------------------------------------------
0201 * US *
-------------------- ------------------------------ -------------- ---------------------------------------------------
0202 * US *
-------------------- ------------------------------ -------------- ---------------------------------------------------
A Method for Selecting Oligonucleotides Having
0202WO PCT/US00/02000 PCT Low Cross Hybridization
-------------------- ------------------------------ -------------- ---------------------------------------------------
0203B * US *
-------------------- ------------------------------ -------------- ---------------------------------------------------
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-------------------- ------------------------------ -------------- ---------------------------------------------------
SERIAL NUMBER OR
DOCKET NUMBER PATENT NUMBER COUNTRY TITLE
-------------------- ------------------------------ -------------- ---------------------------------------------------
Automated System and Process for Custom-Designed
0203B-WO PCT Biological Chip Design and Analysis
-------------------- ------------------------------ -------------- ---------------------------------------------------
0401 * US *
-------------------- ------------------------------ -------------- ---------------------------------------------------
Microchips of Peptide Affinity Probes for
Analyzing Gene Products and Methods for Analyzing
0401WO PCT/US00/06676 PCT Gene Products
-------------------- ------------------------------ -------------- ---------------------------------------------------
0402 * US *
-------------------- ------------------------------ -------------- ---------------------------------------------------
-------------------- ------------------------------ -------------- ---------------------------------------------------
?? * *
-------------------- ------------------------------ -------------- ---------------------------------------------------
License Agreement Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
