1
OPTION AGREEMENT
THIS AGREEMENT (the "Agreement"), is made and effective this 18th day
of January, 2001, by and between HTS BioSystems, Inc., a Minnesota Corporation
having its principal office at 00 Xxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx, the
United States of America ("HTS") and Mitsubishi Chemical Corporation, a Japanese
corporation having its principal office at 0-0, Xxxxxxxxxx 0-xxxxx, Xxxxxxx-xx,
Xxxxx, Xxxxx ("MCC").
RECITALS:
WHEREAS, HTS is engaged in the manufacture and sale of the HTS
Products (as defined in Paragraph 1.8 hereof);
WHEREAS, HTS is developing HTS SPR Array System (as defined in
Paragraph 1.5 hereof) and wishes to have MCC exclusively distribute HTS Products
in Japan; and
WHEREAS, MCC wishes to have an option to distribute and resell HTS
Products exclusively in Japan after successful development of the HTS SPR Array
System.
NOW, THEREFORE, in consideration of these premises, and the mutual
covenants and agreements hereinafter set forth and other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties agree as follows:
1. DEFINITIONS
For the purposes of interpreting this Agreement, the following
definitions will apply and whenever appropriate, terms used in the singular will
also include the plural and vice versa:
1.1. Chip means a substrate which contains a grating pursuant to the
Grating SPR Technology and is coated with a conductive surface.
1.2. Effective Date means January 18, 2001.
1.3. Exercise Date means the date that MCC notifies HTS in writing to
exercise MCC's option granted from HTS pursuant to Paragraph 2, in
accordance with the successful evaluation by MCC of the HTS SPR
Array System which is delivered from HTS to MCC pursuant to
Paragraph 3. The performance requirements for the HTS SPR Array
System is listed in Schedule A
1.4. Flow Cell means a device which (i) allows liquids to flow through
it and comprises a base piece which contains a grating pursuant to
the Grating SPR Technology; (ii) is coated with a conductive
surface; and (iii) has an optically clear cover slip which is
attached to the base piece by a means that allows for fluid flow.
1.5. HTS SPR Array System means grating coupled SPR detection systems
capable of reading distinct detection sites on a 1cm x 1cm Chip
and will include future upgrades or versions of such original
system with the first HTS SPR Array Systems being capable of
reading up to 400 distinct detection sites.
1.6. Grating SPR Technology means the use of thin conductive films on a
surface or surfaces of a grating or other diffracting substrate to
conduct chemical analysis.
2
1.7. HTS Patent means those patents that HTS has exclusively licensed
or sublicensed from Applied BioSystems Inc. and which HTS has the
right to sublicense. The HTS Patents are listed in Schedule A of
this Agreement.
1.8. HTS Products means Instruments, Chips, Flow Cells and Peripheral
Equipment for use in the Field of Research Applications developed
or to be developed by HTS using Grating SPR Technology covered by
one or more Valid Claims of the HTS Patents.
1.9. HTS Technology means any Grating SPR technology owned by HTS as of
the Effective Date and to be developed during the term of this
Agreement that (i) is useful for the development of MCC Products
and/or HTS Products for the Field of Research Applications; and
(ii) HTS is not restricted from licensing or sublicensing the
technology by an agreement which HTS may have with a third party.
1.10. Instrument means a device that reads the events that occur in a
Chip for use in the Field of Research Applications using Grating
SPR Technology covered by one or more Valid Claims of the HTS
Patents.
1.11. Research Applications means those areas of research, including,
but not limited to, high throughput screening, genomics and
proteomics, for which the HTS products may be used, but excluding
food and environmental testing and the Medical Diagnostic Fields
defined in the HTS License Agreement with Applied Biosystems, Inc.
1.12. Peripheral Equipment means those devices that are sold in
conjunction with the Instrument and/or Chips, including, but not
limited to, chemistry coating, sample preparation and Chip
handling equipment.
2. DISTRIBUTORSHIP OPTION TO MCC BY HTS TO DISTRIBUTE HTS PRODUCTS.
HTS hereby grants to MCC an exclusive option to become the sole and
exclusive distributor to market, sell and distribute HTS Products for Research
Applications in Japan. MCC is entitled to fulfill such rights to distribute the
HTS SPR Array System and HTS Products through any of its wholly owned
subsidiaries.
3. NOTIFICATION TO MCC
3.1 Development of HTS SPR Array System: If and when the HTS SPR Array
System is successfully developed by HTS, HTS shall promptly notify
MCC of such fact (expected to be on or about April 1, 2001) with
sufficient information and data, thereof MCC shall send to HTS,
within 30 days of notice by HTS, MCC persons to evaluate within 10
days of arrival at HTS the performance of the HTS SPR Array System
pursuant to the specifications of Schedule A and such HTS SPR
Array System will be delivered to MCC after such evaluation of
performance. After such 10 days evaluation, if the HTS SPR Array
System meets the specifications of Schedule A, MCC shall notify in
writing whether MCC will exercise MCC'S option or not, within five
(5) days after the end of the 10 days evaluation period
(`'Notification Period"). In case MCC will not notify in writing
MCC will not exercise MCC's option during Notification Period,
Exercise Date shall be deemed on the next day of the end of
Notification Period.
3
4. PAYMENTS
In consideration of the exercise of the option by MCC , MCC shall pay
HTS one million and five hundred thousands US Dollars (US$1,500,000-) within
forty-five (45) days from the Exercise Date.
5. EXECUTION OF DISTRIBUTION AGREEMENT
If the option exercised hereunder, HTS and MCC shall enter into
distribution agreement attached hereto as Schedule D.
6. TERM AND TERMINATION
6.1 Term of Agreement This Agreement shall commence on the Effective
Date and continue, unless earlier terminated pursuant to
Paragraphs 6.2, 6.3 or 6.4 of this Agreement, until (i) the
expiration of two (2) years from the Effective Date; or (ii) the
date of the payment pursuant to Paragraph 4 above, whichever comes
earlier. It is hereby acknowledged that during the term of this
Agreement, HTS may provide notice of availability of evaluation of
the HTS Array Systems and more than one evaluation may occur
during the term of this Agreement.
6.2 Termination by HTS. If MCC is in material default of any of its
obligations under this Agreement, HTS shall have the right to
terminate this Agreement by giving thirty (30) days' written
notice of termination specifying the reason for termination,
provided that such notice will be of no effect and termination
will not occur if the specified default is cured prior to the
expiration of said thirty (30) day notice period.
6.3 Termination by MCC.
(a) If HTS is in material default of any of its obligations under
this Agreement, MCC shall have the right to terminate this
Agreement by giving thirty (30) days' written notice of
termination specifying the reason for termination, provided
that such notice will be of no effect and termination will not
occur if the specified default is cured prior to the
expiration of said thirty (30) day notice period.
6.4 Termination Resulting from Government Action. Either party may,
immediately upon notice, terminate this Agreement in its entirety
or with respect to any patent license granted under the Agreement
if: (1) such termination is necessary to comply with an order or
official request of the government of the terminating party; or
(2) normal conduct of the business of the other party as a private
enterprise ceases or is substantially altered as a consequence of
action taken by governmental or other authority.
7. INDEMNIFICATION
HTS shall defend, indemnify and hold MCC and its shareholders,
directors, officers, agents, representatives, successors and assigns harmless
from and against any and all claims, damages, costs (including reasonable
attorneys' fees), judgments, fines, penalties, losses, diminution in value and
liabilities of and kind or nature: (a) arising out of the breach by HTS of any
of its warranties, representations and covenants under this Agreement.
4
8. REPRESENTATIONS AND WARRANTIES
8.1 HTS hereby warrants and represents to MCC as follows:
(a) HTS is a corporation duly organized, validly existing and in
good standing under the laws of the State of Minnesota.
(b) This Agreement has been duly authorized, executed and
delivered by HTS and constitutes a valid and binding
obligation of HTS, enforceable in accordance with its terms,
except as rights to indemnification thereunder may be limited
by applicable law and except as and to the extent that the
enforcement thereof may be limited by bankruptcy, insolvency,
reorganization, moratorium or other similar laws relating to
or affecting creditors' rights generally or by general
equitable principles. The execution, delivery and performance
of this Agreement and the consummation of the transactions
contemplated thereby have been authorized by all necessary
corporate action and do not and will not conflict with or
result in any material breach of any of the provisions of, or
constitute a material default under, or result in a material
violation of, or require any authorization, consent or
approval, under the provisions of any organizational charter,
articles, by-laws, member control, operating or other
agreement, contract or instrument to which HTS is bound or
affected, or any law, statute, rule, regulation, judgment
order or decree to which HTS is subject.
(c) HTS is the sole and exclusive licensee, sublicensee or owner,
as the case may be, of all the rights of HTS Patents listed in
Schedules B and C, and has full right, power and authority to
grant the option under this Agreement.
(d) All HTS Patents listed in Schedule B are in force having paid
all necessary maintenance fees. HTS has no knowledge of
information that would render any of the listed patents
invalid or unenforceable.
(e) HTS has good and marketable title to the HTS Patents free and
clear of any and all liens, pledges, claims, licenses,
assignments, conditional sales contracts, agreements or
encumbrances of any kind that would impair HTS's ability to
grant the licenses under this Agreement.
5
8.2 MCC hereby warrants and represents to HTS as follows:
(a) MCC is a corporation duly organized, validly existing and in
good standing under the laws of Japan.
(b) This Agreement has been duly authorized executed and delivered
by MCC and constitutes a valid and binding obligation of MCC,
enforceable in accordance with its terms, except as rights to
indemnification thereunder may be limited by applicable law
and except as the enforcement thereof may be limited by
bankruptcy, insolvency, reorganization, moratorium or other
similar laws relating to or affecting creditors' rights
generally or by general equitable principles. The execution,
delivery and performance of this Agreement and the
consummation of the transactions contemplated thereby do not
and will not conflict with or result in any material breach of
any of the provisions of, or constitute a material default
under, or result in a material violation of, or require any
authorization, consent or approval, under the provisions of
the Laws of Japan or articles of incorporation of MCC or other
agreement, contract or instrument to which MCC is bound or
affected, or any law, statute, rule, regulation, judgment
order or decree to which MCC is subject.
9. MISCELLANEOUS
9.1 Assignment. Neither party may assign or otherwise transfer its
rights and obligations under this Agreement without the prior
written consent of the other party, to any third party; provided,
however, that either party may assign this Agreement and/or any of
the rights granted hereunder without such consent (i) to its
wholly owned subsidiary, and (ii) the successor in interest (by
merger, share exchange, combination or consolidation of any type,
operation of Law, purchase or otherwise), if such assignee or
successor agrees to be bound by the terms hereof.
9.2 Entire Agreement. This Agreement, together with the Schedules,
constitutes the entire agreement of the parties with respect to
the subject matter hereof and supersedes all previous proposals or
agreements, oral or written, and all negotiations, conversations
or discussions heretofore had between the parties related to the
subject matter of this Agreement. No modification of this
Agreement or waiver of any of its terms shall be binding upon the
parties unless said modification or waiver is in writing, signed
by both parties, and states that it is an amendment to this
Agreement.
9.3 Survival. Paragraphs 7 and 8 shall survive termination or
expiration of this Agreement for any reason and continue
thereafter in full force and effect.
9.4 Discharge. This Agreement may not be released, discharged,
abandoned, changed or modified in any manner, except by an
instrument in writing signed on behalf of each of the parties to
this Agreement by their duly authorized representatives.
6
9.5 Waiver. The failure of either party to enforce at any time any of
the provisions of this Agreement shall in no way be construed to
be a waiver of any such provision, nor in any way to affect the
validity of this Agreement or any part of it or the right of
either party after any such failure to enforce each and every such
provision. No waiver of any breach of this Agreement shall be held
to be a waiver of any other or subsequent breach.
9.6 Force Majeure. Neither party shall be responsible for any delay or
failure in the performance of any obligation hereunder due to
strikes, lockouts, fires, floods, acts of God, embargoes, wars,
riots, or act or order of any government or governmental agency.
9.7 Execution in Counterparts. This Agreement may be executed in one
or more counterparts, all of which shall be considered one and the
same agreement, and shall become a binding agreement when one or
more counterparts have been signed by each party and delivered to
the other party.
9.8 Titles and Headings. The titles and headings to Sections herein
are inserted for the convenience of reference only and are not
intended to be a part of or to affect the meaning or
interpretation of this Agreement.
9.9 Construction. The parties agree that the restrictions, covenants,
agreements and obligations contained in this Agreement are
reasonable and necessary to protect the legitimate interests of
the parties. This Agreement shall be construed without regard to
any presumption or other rule requiring construction hereof
against the party causing this Agreement to be drafted.
9.10 Benefit. Nothing in this Agreement, expressed or implied, is
intended to confer on any person other than the parties to this
Agreement or their respective permitted successors or assigns, any
rights, remedies, obligations or liabilities under or by reason of
this Agreement.
9.11 Notices. All notices, statements, reports, requests or other
communications to a party required or permitted hereunder shall be
in writing and shall be deemed effective and properly given when
sent by registered or certified mail, or by confirmed facsimile
transmission to the person as indicated below or such other person
as may be designated by MCC or HTS by such notice;
if to MCC, to:
Mitsubishi Chemical Corporation.
0-0, Xxxxxxxxxx 0-xxxxx,
Xxxxxxx-xx, Xxxxx 000-0000 Xxxxx
Attention: General Manager, Life Science Business Initiatives
Department
Facsimile number: (00) 0000-0000
and, if to HTS, to:
HTS BioSystems, Inc.,
00 Xxxxx Xxxxxx,
Xxxxxxxxx, Xxxxxxxxxxxxx 00000 U.S.A.
Attention: CEO
Facsimile number: (000) 000-0000
7
MCC and HTS may change their respective above-specified recipient
and/or mailing address by notice to the other party given in the
manner herein prescribed. All notices shall be deemed given on the
day when actually delivered as provided above (if delivered by
facsimile) or on the day shown on the return receipt (if delivered
by mail).
9.12 Severability. If any provision of this Agreement is held invalid
by a court of competent jurisdiction, the remaining provisions
shall nonetheless be enforceable according to their terms.
Further, if any provision is held to be overbroad as written, such
provision shall be deemed amended to narrow its application to the
extent necessary to make the provision enforceable according to
applicable law and shall be enforced as amended.
9.13 Governing Law. This Agreement shall be construed in accordance
with the laws of the State of New York, excluding its choice of
law provisions. The parties further agree to submit themselves to
the non-exclusive jurisdiction of the state and federal courts of
the State of New York in the event that any dispute arises under
this Agreement.
IN WITNESS WHEREOF, each of the parties has caused this Agreement to
be executed in the manner appropriate to each as of the Effective Date.
MITSUBISHI CHEMICAL CORPORATION
-----------------------------------------
By: Xxxxxxx Xxxxxxxx
Its: General Manager,
Life Science Business Initiatives
Department
HTS BIOSYTEMS, INC.
-----------------------------------------
By: Xxxxxxx X. Xxxxxxx
Its: Chief Executive Officer
