EXHIBIT 10.26
CERTAIN MATERIAL (INDICATED BY AN ASTERISK) HAS BEEN OMITTED FROM THIS DOCUMENT
PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT. THE OMITTED MATERIAL HAS BEEN
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
AMENDED AND RESTATED LICENSE AGREEMENT
This Agreement is between The Public Health Research Institute of The
City of New York, Inc., a not-for-profit research corporation of the State of
New York, having offices at 000 Xxxxxx Xxxxxx, Xxxxxx, XX 00000 ("PHRI"), and
Gen-Probe Incorporated, a California corporation having offices at 00000 Xxxxxxx
Xxxxxx Xxxxx, Xxx Xxxxx, XX 00000 ("GEN-PROBE"), collectively "The Parties." It
amends and replaces the License Agreement having an effective date of June 25,
1997 (the "Original License").
BACKGROUND
A. PHRI owns U.S. Patent Application Serial No. 08/439,819, which is a
continuation-in-part of earlier U.S. Patent Application Serial No. 08/152,006,
now abandoned, and foreign counterpart applications to those U.S. applications,
and also U.S. Provisional Patent Application No. 60/015,409. These several
applications disclose and claim, inter alia, improvements in fluorescently
labeled nucleic acid detection probes, and kits and assays employing such
probes.
B. GEN-PROBE desires a non-exclusive license under the above
applications, and patents that may issue
therefrom, to develop and perform Assays and market Kits in one or more fields,
as reflected below, and PHRI is willing to grant such a license on the terms and
under the conditions set forth below.
C. GEN-PROBE further desires an option for the right to include within
its license from PHRI certain Kits to be manufactured under agreements with
bioMerieux ("BMX") of France, and PHRI is willing to grant the option for that
right on the terms and conditions set forth below.
NOW THEREFORE, for and in consideration of the mutual covenants
contained herein, The Parties agree as follows:
1. Definitions.
For the purpose of this Agreement, and solely for that purpose, the
terms set forth hereinafter shall be defined as follows:
1.1 "PHRI Patent Rights" shall mean:
(a) the claims of the U.S. patents and patent applications listed
in Appendix A; the claims of non-U.S. counterpart
applications of those U.S. applications, including but not
limited to those listed in Appendix A; and the claims of
patents issuing from the
2
foregoing U.S. applications and non-U.S. applications; and
(b) all patent application claims and all patent claims, U.S. and
foreign, that cover improvements in the foregoing claimed
probes, kits and assays and whose subjects are inventions and
discoveries that are made by PHRI through June 24, 2005, so
long as not made under commercial sponsorship and so long as
PHRI has the right to license GEN-PROBE.
1.2 "Territory" shall mean worldwide.
1.3 "Environmental Testing" shall mean the field of use comprising
the in vitro measurement, observation or determination of one or more protein or
nucleic acid targets of microorganisms (including bacteria, yeast, viruses and
parasites) for the purpose of detecting and/or monitoring environmental
contamination in (a) materials associated with a manufacturing process,
excluding samples of food intended for consumption, or (b) samples collected
from air, soil, water or other liquids, particles or surfaces. Environmental
Testing includes testing for the presence of microbiological agents used for
bioterrorism and biowarfare.
1.4 "Human In Vitro Diagnostics" ("HIVD") shall mean the field of use
comprising the in vitro measurement,
3
observation or determination of one or more protein or nucleic acid targets in a
sample obtained from a human being for medical management of that human being or
for blood banking, bone marrow banking or similar banking of human tissues for
human medical management, and pre-clinical uses and clinical trials for the
foregoing uses, even if kits for such purposes are labeled "Research Use Only"
or "Investigational Use Only."
HIVD does not include research and development for any purpose
other than as set forth in Section 2.1(c), and specifically excludes human
identity testing or parentage testing, forensics, agricultural testing, food
testing, quality control and assurance, detection of nucleic acid sequences in
persons or in living cells, in vitro fertilization and diagnoses therefor, tests
on materials obtained from animals other than humans, tests on plants, or any
other testing not specifically included in the previous paragraph.
1.5 "Food Testing" shall mean the field of use comprising the in
vitro measurement, observation, or determination of one or more protein or
nucleic acid targets of an organism in a sample obtained from food and/or
sources of food intended for human consumption in order to determine whether or
not that food is fit for consumption.
4
1.6 "Licensed Fields" shall mean the fields of Human In Vitro
Diagnostics, Food Testing, and Environmental Testing.
1.7 "Molecular Beacon Probe" shall mean a detector probe with
interacting label moieties covered by any claim of PHRI Patent Rights. A
Molecular Beacon Probe [***]. A Molecular Beacon Probe may generate a signal
either by binding directly to a nucleic acid target or [***]. Molecular Beacon
Probe excludes probes that must, in order that a signal be generated, interact
with a macromolecule other than a nucleic acid target or a target-dependent
nucleic acid sequence, when the probe is hybridized to a nucleic acid target or
to a target-dependent nucleic acid sequence.
1.8 "Assay" shall mean, collectively, all steps necessary to detect
the presence or absence of, or determine the amount of, one or more protein or
nucleic acid target sequences in a sample or control, including any combination
of the steps of sample preparation, isolation of protein or nucleic acid
sequences, amplification of targets or probes, generation of target-dependent
nucleic acid sequences, detection, quantitation, analysis and reporting of
results.
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the Commission. Confidential treatment has been requested with respect to the
omitted portions.
5
1.9 "Kit" shall mean, collectively, at least one Molecular Beacon
Probe in combination with all such other reagents and materials, not including
instrumentation or associated software, as are necessary to perform an Assay.
1.10 "Affiliate" of GEN-PROBE shall mean an organization of which
GEN-PROBE owns or controls fifty percent or more of the voting stock or fifty
percent or more of other ownership interest.
1.11 "Effective Date" shall mean the date on which the last signatory
to this Agreement signs the Agreement.
1.12 "Straight Sale" of Licensed Kits shall mean a sale whose
consideration is money only, in an arm's length transaction, to an unrelated
third-party distributor or end user not enjoying a special course of dealing
with seller, wherein the Kit sale price is not affected by any other dealing,
including but not limited to sale or purchase of other products or services. For
pre-clinical uses and clinical studies, distribution shall be considered to be a
Straight Sale, even if no charge is made by GEN-PROBE,
1.13 "Valid Claim" shall mean a claim of a patent which has not been
held invalid or unenforceable by an agency or court of competent jurisdiction
from which no appeal has or can be taken, or a pending claim of a patent
application.
6
1.14 "Net Sales Price" shall apply to a Straight Sale of a Licensed
Kit and shall mean GEN-PROBE's gross invoice price less: if based on Licensed
Kits only, discounts allowed and taken, in amounts customary in the trade; and
sales taxes, use taxes and duties paid by GEN-PROBE for such sale.
1.15 "Molecular Switch Patents" shall mean U.S. Patents 5,118,801 and
5,312,728, and the claims of corresponding foreign patents and applications.
1.16 "Licensed Assay" shall mean an Assay that utilizes at least one
Molecular Beacon Probe, wherein the Molecular Beacon Probe itself, or any
combination of reagents used in the Assay, or the manufacturing or importation
of either the Molecular Beacon Probe or the combination of reagents, or the
Assay itself is covered by at least one Valid Claim of PHRI Patent Rights.
1.17 "Licensed Kit" shall mean a Kit for use in a Licensed Field,
where the Molecular Beacon Probe, the Kit or the manufacture, sale or
importation of either, or an Assay performed with the Kit is covered by at least
one Valid Claim of PHRI Patent Rights.
2. License Grant.
2.1 Subject to the terms and conditions of this Agreement, PHRI
grants to GEN-PROBE a royalty-bearing,
7
non-exclusive immunity from suit in the Territory under PHRI Patent Rights:
(a) to itself perform Licensed Assays;
(b) to make, have made, use, sell and promote Licensed Kits, and
to pass on to end-user purchasers the right to use those
Licensed Kits in the Licensed Fields under PHRI Patent
Rights; and
(c) to develop Licensed Assays and Licensed Kits, and to test
Licensed Kits for quality control.
2.2 No rights are granted to sell or distribute Molecular Beacon
Probes except as Kits. Further, rights under the Molecular Switch Patents are
limited to inclusion or use of Molecular Beacon Probes, and no rights are
granted under the Molecular Switch Patents for Kits or Assays that infringe
those patents by reason of including or using a molecule that is not a Molecular
Beacon Probe.
2.3 No rights are granted under any other patent or patent
application owned or licensable by PHRI, including other patents already issued
and other patents which may issue from patent applications that are pending or
not yet filed.
2.4 Except for the right of end-user purchasers to use Licensed Kits
in the Licensed Fields, the grant to GEN-PROBE is personal to GEN-PROBE, and
GEN-PROBE shall
8
have no right to sublicense, assign or otherwise transfer or share with others
the rights granted in this Agreement.
2.5 Licensed Assays will be performed only by, and Licensed Kits will
be marketed and sold only by, GEN-PROBE under its own name. Licensed Kits may be
marketed through independent third-party distributors.
2.6 Notwithstanding Section 2.5, GEN-PROBE may exercise the rights
granted under Article 2 through its Affiliates that were Affiliates as of June
25, 1997 or through its Affiliates which are 100$ owned by Gen-Probe, even if
formed after June 25, 1997, but only for so long as either remain Affiliates of
GEN-PROBE and only to the extent that GEN-PROBE reports and pays under this
Agreement on behalf of such Affiliates.
3. BMX Option.
3.1 GEN-PROBE has agreements with BMX dated May 2, 1997, under which
Assay products bearing GEN-PROBE's name and trademarks and also BMX's name and
trademarks may be either manufactured entirely by GEN-PROBE or partly
manufactured by GEN-PROBE and partly manufactured by BMX with final product
assembly by BMX.
3.2 Subject to the terms and conditions of this Agreement, PHRI
grants to GEN-PROBE an option to elect to include among the Assay products
described in Section 3.1 Licensed Kits for the Licensed Fields of Human In Vitro
9
Diagnostics and Food Testing, in which event such Kits will be included within
the license grant of Section 2.1.
3.3 GEN-PROBE may make the election under Section 3.2 and begin
development of Licensed Kits described in that section at any time during the
term of this Agreement by serving written notice on PHRI accompanied by payment
of the option exercise fee under Section 4.3.
3.4 Upon GEN-PROBE's exercise under Section 3.3, BMX's sales of
Licensed Kits described in Section 3.2 will be considered sales by GEN-PROBE
under this Agreement, and GEN-PROBE will account for such sales on that basis.
3.5 No rights and no option for rights are granted to BMX beyond
Licensed Kits described in Section 3.2.
4. Fees and Royalties.
For the rights granted under this Agreement, including both Article 2
and Article 3, GEN-PROBE shall pay fees and royalties set forth in this Article
4.
4.1 License Issue Fees. GEN-PROBE paid to PHRI on signing of the
Original License a license issue fee of [***]. GEN-PROBE shall pay to PHRI on
signing of this Agreement an amendment issue fee of [***].
4.2 Annual License Fee. GEN-PROBE paid to PHRI annual license fees of
[***], and [***] for the first six (6)
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the Commission. Confidential treatment has been requested with respect to the
omitted portions.
10
years under the Original License. On June 25, 2003, and on each anniversary
thereof, GEN-PROBE shall pay to PHRI an annual license fee of [***] for the
upcoming year. The annual license fee is not creditable against royalties.
4.3 Option Exercise Fee. GEN-PROBE shall pay to PHRI a fee of [***]
with the notice described in [***].
4.4 Milestones. GEN-PROBE has paid to PHRI a milestone payment of
[***] for the issuance of a patent within PHRI Patent Rights. GEN-PROBE shall
pay to PHRI, upon achievement, a fee of [***] for the achievement of each of the
following milestones during this Agreement:
(a) [***]
(b) [***]
(c) [***]
4.5 Earned Royalties. GEN-PROBE shall pay to PHRI an earned royalty
for each sale of a Licensed Kit. GEN-PROBE shall also pay to PHRI an earned
royalty for each performance of a Licensed Assay (other than an Assay performed
by a customer using a Licensed Kit). The earned
***Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
11
royalty for each Licensed Kit and each Licensed Assay shall be determined
according to the remainder of this section.
(a) For a Straight Sale of a Licensed Kit, the earned royalty
shall be [***].
(b) For distribution of a Licensed Kit which is not a Straight
Sale for any reason, or for performance of a Licensed Assay,
the earned royalty shall be that which provides a dollar
return to PHRI equal to the dollar return PHRI would have
received were the Licensed Kit sold in a Straight Sale or
were the Assay reagents sold as a Licensed Kit in a Straight
Sale.
(c) Types of GEN-PROBE's business transactions, including manner
of sale and products or services to which applicable, falling
under subsection 4.5(b) that have already been considered by
The Parties, if any, are described in Appendix B to this
Agreement, which includes for each type of transaction an
earned royalty, for example a fixed dollar amount or a rate
(X) on a base (Y), in accord with
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the Commission. Confidential treatment has been requested with respect to the
omitted portions.
12
the definition of subsection 4.5(b), as agreed by The
Parties.
(d) Other types of business transactions falling under subsection
4.5 (b) which GEN-PROBE may wish to utilize will be
considered when necessary. Prior to introduction of a
transaction not already covered by Appendix B, an earned
royalty in accord with the definition of subsection 4.5 (b)
will be determined according to the procedure set forth in
this subsection and added to Appendix B.
(i) GEN-PROBE will provide to PHRI all information
pertinent to arriving at an earned royalty in
accordance with the principle set forth in subsection
4.5(b).
(ii) Next, The Parties will, in good faith, confer and
attempt to determine the earned royalty by agreement.
(iii) If agreement cannot be reached, The Parties will, if
possible, within thirty (30) days put the question to
binding arbitration of a single, mutually acceptable
13
arbitrator under a mutually acceptable procedure.
(iv) If The Parties cannot agree on an arbitrator and/or
procedure, they will promptly put the question to
binding arbitration under the rules of, and before a
single arbitrator selected by, the Center for Public
Resource (current address: 000 Xxxxx Xxxxxx, Xxx Xxxx,
XX 10019); or if that service is unavailable, binding
arbitration under the rules of, and before a single
arbitrator selected by, the American Arbitration
Association.
(e) The Parties recognize the possibility that an earned royalty
previously agreed to, as reflected in subsection 4.5(c), or
subsequently determined according to subsection 4.5(d) may in
time cease to satisfy the definition set forth in subsection
4.5(b). Therefore, either party may request review and
revision of such earned royalty not more frequently than once
14
per year, according to the procedure set forth in subsection
4.5(d). The pre-review earned royalty shall continue to apply
until thirty (30) days after review and revision is
requested. If a determination on the requested revision is
not reached within thirty (30) days, royalty payments shall
continue to be made using the pre-review amount, subject to
retroactive adjustment to the end of the thirty-day period,
if a revised earned royalty is ultimately determined in
response to the request.
Nothing contained in this Section 4.5 shall require payment of royalties for
Licensed Assays performed by GEN-PROBE or its Affiliates for internal use.
4.6 Volume Reduction. Earned royalties determined according to
Section 4.5 in a single calendar year shall be subject to a stepped volume
discount as follows:
15
Ranges of Multiplication
Royalties Factor to Arrive
Determined at Discounted
Under Section 4.5 Royalty
---------------------- -----------------
$ 0 - 1,000,000 [***]
$1,000,001 - 2,000,000 [***]
$2,000,001 - 3,500,000 [***]
$3,500,001 - 4,000,000 [***]
$4,000,001 and above [***]
[***].
4.7 Minimum Annual Royalty. GEN-PROBE has paid minimum annual
royalties of [***] under the Original License for the period through December
31, 2001. GEN-PROBE shall pay to PHRI a minimum annual royalty of [***] per
calendar year, beginning with calendar year 2002, pursuant to Section 5.2(c).
Each minimum annual royalty shall be creditable only against earned royalties
under Section 4.5 that accrued during the calendar year to which it applies and
were reported and paid pursuant to Article 5.
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the Commission. Confidential treatment has been requested with respect to the
omitted portions.
16
4.8 Earned Royalty Credit. GEN-PROBE shall have a credit of [***] to
apply against the first [***] of earned royalties, calculated under Sections 4.5
and 4.6, in excess of minimum annual royalties.
5. Records, Reports and Payments.
5.1 Records. GEN-PROBE shall keep full, true and accurate records of
account of the particulars for royalty payments, which records shall be
available for inspection by PHRI or an independent certified public accountant
for three (3) years. If in dispute, such records shall be kept until the dispute
is resolved. Any inspection shall be at PHRI's expense unless the total of
earned and minimum royalties for the period inspected are found to have been
understated by five percent (5%) or more, in which case GEN-PROBE shall pay for
the inspection.
5.2 Reports. GEN-PROBE shall report accrued royalties on a calendar
quarterly basis, calendar quarters being the three-month periods ending March
31, June 30, September 30 and December 31 of each calendar year. GEN-PROBE shall
within forty-five (45) days after the close of each calendar quarter deliver to
PHRI a true and accurate royalty report.
(a) This report shall give such particulars as are pertinent to
an accounting for earned royalties under this Agreement,
including at least:
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the Commission. Confidential treatment has been requested with respect to the
omitted portions.
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(i) for Kits subject to Section 4.5(a), the number of Kits
distributed, compilation of xxxxxxxx therefor, allowable
deductions from xxxxxxxx, net sales subject to royalty
(sum of Net Sales Prices of all Kits), and royalties on
net sales; and
(ii) for Kits and Assays subject to Section 4.5(b), the type
of business transaction identified in Appendix B, the
earned royalty specified in Appendix B, and royalties due
for each type of business transaction.
(b) Earned royalty reductions pursuant to Section 4.6 shall be
shown.
(c) The minimum annual royalty, earned royalty payments
creditable against it and any net amount owing shall be
calculated and reported in the reports for the quarters
ending December 31.
(d) Credits under Section 4.8 shall be shown until the full [***]
credit is consumed.
(e) The correctness and completeness of reports shall be attested
to by the
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the Commission. Confidential treatment has been requested with respect to the
omitted portions.
18
responsible financial officer of GEN-PROBE or by GEN-PROBE'S
external auditor.
All reports submitted by GEN-PROBE shall be confidential. PHRI will use the
reports only for the purpose of monitoring payment of royalties. PHRI will not
disclose any report or, except for the amount of royalties collected and then
without naming the source, the information contained in any report to any third
party. If PHRI believes that disclosure is warranted by law or circumstances, it
shall first give GEN-PROBE notice and an opportunity to object. PHRI shall take
all steps appropriate to minimize disclosure if any proper disclosure is made
after notice and opportunity to object are provided GEN-PROBE.
5.3 Royalty Payments. Simultaneously with the delivery of each
royalty report, GEN-PROBE shall pay to PHRI all royalties then due. Unless
directed otherwise, GEN-PROBE shall send reports and payment to PHRI at the
notice address (Section 18.2) to the attention of Xxxx Xxxxxxxxxx.
5.4 Annual License Fee Payments. The annual license fee payments
under Section 4.2 shall be paid on or before the anniversary of the effective
date of the Original License to apply to the upcoming year.
19
5.5 Late Payments. Late payments by GEN-PROBE shall include interest
at 2% over the then-current prime rate of Chase Manhattan Bank of New York, New
York.
6. Compliance and Quality.
PHRI does not approve or endorse any service or product of GEN-PROBE.
Quality and quality control, and compliance with applicable laws and
regulations, are the sole responsibility of GEN-PROBE.
7. Notice to Customers.
7.1 GEN-PROBE shall, by means of a label statement applied to each
Licensed Kit distributed to a third party, state positively that the Kit comes
with only limited field-of-use rights under PHRI Patent Rights, and identifies
that field of use, consistent with the terms of the limited grant hereunder.
GEN-PROBE shall propose language for this label statement for PHRI's approval,
in view of PHRI's need to protect its intellectual property rights, approval not
to be withheld unreasonably.
7.2 GEN-PROBE shall use the same or a similar PHRI-approved statement
in promotional literature for Licensed Kits and Licensed Assays.
8. Patent Infringement.
8.1 It is recognized that services and products of GEN-PROBE,
including Licensed Assays and Licensed Kits,
20
may utilize patented technology of third parties. Should that occur, securing
rights thereunder or otherwise dealing with third-party patent owners is the
sole responsibility of GEN-PROBE.
8.2 GEN-PROBE has no right to compel PHRI to enforce any patent
within PHRI Patent Rights against third-party infringers. If GEN-PROBE's
marketing of Licensed Assays or Licensed Kits is being adversely and
significantly impacted by infringement of any such patent in any of the Licensed
Fields in the Territory, GEN-PROBE may notify PHRI of that fact and provide
particulars of the identity of infringing product(s) and/or process(es), the
identify of the infringer(s), and the amount of infringement. If the level of
infringement described in any such notice in that Licensed Field in any country
in the Territory exceeds [***] of the market for Assays and Kits covered by PHRI
Patent Rights (the "Market") and substantially impacts GEN-PROBE's marketing of
Licensed Assays and Licensed Kits, either (a) PHRI will terminate the
significant infringement or bring suit against an infringer within [***] of
notification, or (b) GEN-PROBE's earned royalty rate only under Valid Claims in
that country and only in that Licensed Field shall be reduced by one-half during
the period infringing activity exceeds [***] of the Market. During any time
period in which the level of infringement in one of the licensed Fields shall
exceed [***] of the Market in the Territory for Assays
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the Commission. Confidential treatment has been requested with respect to the
omitted portions.
21
and Kits covered by PHRI Patent Rights, the earned royalty rate in that
Licensed Field shall be zero, unless PHRI is suing a substantial infringer.
9. Term and Termination.
9.1 Term. The immunity from suit granted herein shall commence on
June 25, 1997 and terminate upon the expiration of the last-to-expire of the
patents included within PHRI Patent Rights.
9.2 Guaranteed Term. Except for early termination under subsections
(b)-(d) of Section 9.3, the minimum term for this Agreement shall be to and
including December 31, 2002. Guaranteed payments to be made from the Effective
Date of this Agreement through the end of the minimum term include an amendment
issue fee of [***] and a minimum annual royalty of [***].
9.3 Termination.
(a) After the minimum term specified in Section 9.2, GEN-PROBE
may terminate this Agreement at any time on thirty (30) days'
written notice.
(b) The immunity from suit granted hereunder shall automatically
terminate upon institution by or against GEN-PROBE of any
bankruptcy, insolvency arrangement or similar proceeding; the
appointment of a
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the Commission. Confidential treatment has been requested with respect to the
omitted portions.
22
receiver, trustee or similar officer for a substantial
portion of GEN-PROBE's property; an assignment by GEN-PROBE
for the benefit of creditors; or an adjudication or written
admission of GEN-PROBE as bankrupt, insolvent or unable to
pay its obligations as they mature.
(c) Upon GEN-PROBE's breach or default of a material term of this
Agreement, PHRI may terminate this Agreement upon thirty (30)
days' written notice, which shall become effective at the end
of the thirty-day period unless GEN-PROBE has fully cured
such breach or default.
(d) A decision by a court or administrative body finding PHRI
liable or culpable due to GEN-PROBE's performance under this
Agreement shall give PHRI the right to terminate this
Agreement immediately upon notice.
9.4 GEN-PROBE's obligation to report and pay fees and royalties for
activities preceding expiration or termination of this Agreement shall survive
expiration or termination. Further, termination pursuant to any subsection of
Section 9.3 shall not entitle GEN-PROBE
23
to forgiveness or return of any portion of the license issue fee, the option
exercise fee, any milestone fee or any annual license fee already either due or
paid. If expiration or termination occurs within an Agreement year, the minimum
annual royalty for that Agreement year shall be reduced by the fraction of the
Agreement year remaining after termination.
10. [***]
[***]
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the Commission. Confidential treatment has been requested with respect to the
omitted portions.
24
11. Publicity.
Neither party will use the other's name in any publicity,
advertising or news release without prior written approval of that other party.
12. Indemnification.
GEN-PROBE shall indemnify, defend and hold harmless PHRI, its
trustees, officers, faculty, staff and employees against all claims and
expenses, including legal expenses and attorney's fees, arising out of death or
injury to any person, damage to property, or any other claim, proceeding, demand
and liability resulting from GEN-PROBE's activities performed under this
Agreement.
13. Cooperation.
Through [***] , PHRI agrees to cooperate with GEN-PROBE so as to
permit employees of GEN-PROBE to occasionally visit Xx. Xxxx Xxxxxx'x laboratory
at PHRI to carry out joint experiments on the licensed subject matter. GEN-PROBE
shall be fully responsible for its employees while they are at PHRI and
GEN-PROBE shall be responsible for the expenses of joint experiments.
Indemnification under Article 12 shall apply to joint experiments and all other
activities of GEN-PROBE's employees while at PHRI.
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the Commission. Confidential treatment has been requested with respect to the
omitted portions.
25
14. Warranties.
14.1 PHRI warrants that it has the power to enter into this
Agreement.
14.2 PHRI warrants that it is the rightful owner of the patents and
patent applications included in PHRI Patent Rights.
14.3 PHRI warrants that it does not own or have license rights under
any other patent or patent application which is necessary to the ability and
right of GEN-PROBE to practice the rights granted in Section 2.1, as distinct
from being possibly useful in the exercise of those rights.
15. Negation of Warranties.
15.1 Nothing in this Agreement shall be construed as:
(a) a warranty or representation by PHRI as to the patentability
of any patent application within PHRI Patent Rights, or the
validity or scope of any patent issuing thereon;
(b) a warranty or representation that practice under PHRI Patent
Rights is or will be free from infringement of third-party
patent rights;
(c) an obligation to bring or prosecute actions or suits against
infringers;
26
(d) conferring by implication, estoppel or otherwise any
license, immunity or right under any patent of PHRI other
than those stated to be included in PHRI Patent Rights;
(e) an obligation to furnish know-how; or
(f) creating any agency, partnership, joint venture or similar
relationship between PHRI and GEN-PROBE.
15.2 PHRI MAKES NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY
OR FITNESS FOR A PARTICULAR PURPOSE.
16. Covenant to License.
16.1 PHRI agrees that, if GEN-PROBE grants to any third-party a
royalty-bearing license in one or more of the Licensed Fields under substantial
patented core technology of GEN-PROBE to perform Assays or to manufacture and
sell Kits, or both, PHRI will offer to that same third-party a royalty-bearing,
non-exclusive immunity from suit under PHRI Patent Rights on the same financial
terms (excluding the BMX option) as are set forth in this Agreement, said
non-exclusive immunity from suit to be limited (a) to the Territory within
GEN-PROBE's grant, (b) to the Licensed Field(s) within GEN-PROBE's grant, and
(c) to Assays and Kits that are royalty bearing under GEN-PROBE's grant.
27
16.2 PHRI shall not be required to extend to any third-party
licensee of GEN-PROBE any rights beyond those specified in Section 16.1, nor
shall PHRI be constrained by this Agreement from seeking whatever compensation
it deems reasonable, if it does elect to offer rights beyond those specified.
16.3 In negotiations to license its core technology, GEN-PROBE may
inform prospective licensees with whom it is negotiating of the substance of
this Article 16.
17. Assignment.
GEN-PROBE may not assign or otherwise transfer its rights or
obligations under this Agreement without the written consent of PHRI, except
that GEN-PROBE may assign this Agreement to a purchaser of substantially the
entire business of GEN-PROBE, upon such purchaser's agreement to be bound by the
terms of this Agreement.
18. General.
18.1 This Agreement constitutes the entire agreement between The
Parties as to the subject matter hereof, and all prior negotiations,
representations, agreements and understandings are merged into, extinguished by
and completely expressed by it. This Agreement may be modified or amended only
by a writing executed by authorized officers of both parties.
28
18.2 Notices under this Agreement shall be given in writing and by
registered mail return receipt requested, courier or facsimile, properly
addressed. Notice is effective upon receipt by the addressee. Until otherwise
notified in writing notices shall be addressed as follows:
The Public Health Research Institute
of the City of New York, Inc.
000 Xxxxxx Xx.
Xxxxxx, XX 00000
Attn: Xxxxxxxxx Xxxxxx, Ph.D.
Technology Transfer Administrator
Gen-Probe Incorporated
00000 Xxxxxxx Xxxxxx Xxxxx
Xxx Xxxxx, Xxxxxxxxxx 00000
Attn: Chairman, Chief Executive
Officer and President
18.3 This Agreement shall be construed and enforced in accordance
with the laws of the State of New York. The exclusive judicial jurisdiction and
venue for any dispute arising from this Agreement or to enforce an arbitration
award hereunder shall be in the State or Federal Courts in New York.
18.4 In the event a dispute arises between The Parties under or
relating to this Agreement, other than validity or enforceability of any PHRI
patent, The Parties agree to exchange all relevant information pertinent to
resolving the dispute and then proceed to out-of-court resolution according to
the procedure set forth above in Section 4.5(d)(ii), (iii) and (iv).
29
18.5 Nothing in this Agreement shall be construed so as to require
the commission of any act contrary to law, and wherever there is any conflict
between any provision of this Agreement and any law or treaty, the latter shall
prevail, but in such event the affected provisions of the Agreement shall be
curtailed only to the extent necessary.
18.6 If any provision of this Agreement is held unenforceable for
any reason, it shall be adjusted rather than voided, if possible, in order to
achieve the intent of the parties to the extent possible. In any event, other
provisions of this Agreement shall be deemed valid and enforceable to the
fullest extent possible.
18.7 This Agreement may be executed by exchange of facsimile and
followed immediately by re-execution of identical hard-copy originals exchanged
by Federal Express or Express Mail. Each party agrees that the executed
facsimile shall be binding.
IN WITNESS WHEREOF, The Parties have set their hands and seals and
duly executed this Agreement on the date(s) indicated below.
30
GEN-PROBE INCORPORATED THE PUBLIC HEALTH RESEARCH
INSTITUTE OF THE CITY
OF NEW YORK, INC.
By: /s/ XXXXX X. XXXXXXXX By: /s/ XXXXX X. XXXXXXXXX
---------------------------------- -------------------------------
Xxxxx X. Xxxxxxxx Xxxxx X. Xxxxxxxxx
Chairman, Chief Executive President
Officer & President
Date: 7/19/02 Date: 7/10/02
-------------------------------- --------------------------
[SEAL]
31
APPENDIX A
PHRI Patent Rights
[***]
***Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to the
omitted portions.
32
[***]
*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
33
[***]
*** Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
00
XXXXXXXX X
Business Transactions and Earned Royalties
for Other than Straight Sales
35
