REDACTED VERSION
[CONFIDENTIAL TREATMENT HAS BEEN
REQUESTED FOR PORTIONS OF
THIS EXHIBIT]
PARENTAGE TESTING PRODUCT AGREEMENT
This Agreement is made by and among Roche Molecular Systems, Inc., a
Delaware corporation having an office at 1080 U.S. Highway 202, Branchburg
Township, Somerville, New Jersey 08876-3771 ("RMS"), X. Xxxxxxxx-Xx Xxxxx Ltd, a
Switzerland limited liability company, with offices at Xxxxxxxxxxxxxxxxx 000,
XX-0000 Xxxxx, Xxxxxxxxxxx ("FHRL") (both of which are referred to herein as
"ROCHE", and Lifecodes Corporation ("LIFECODES"), having an office at 000 Xxxx
Xxxxxx, Xxxxxxxx, Xxxxxxxxxxx 00000, hereafter collectively referred to as "The
Parties".
BACKGROUND
A. In the United States, RMS owns and has the right to grant licenses under
United States Patent Nos. 4,683,195 and 4,683,202. Outside the United States,
FHRL owns and has the right to grant licenses under the corresponding foreign
counterpart patents and patent applications describing and claiming nucleic acid
amplification techniques, including inter alia, a process known as the
polymerase chain reaction ("PCR") process.
B. LIFECODES has attained substantial expertise in the design, manufacture, and
sale of products for performing parentage determination testing in humans.
C. LIFECODES desires to obtain a license from ROCHE to manufacture and sell
products which are useful in PCR and which enable the user to perform in vitro
parentage determination testing procedures as described herein, and ROCHE is
willing to grant such a license on the terms and subject to the conditions
provided in this Agreement.
NOW, THEREFORE, for and in consideration of the mutual covenants contained
herein, ROCHE and LIFECODES 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 The term "Affiliate" of a designated party to this Agreement shall
mean:
a) an organization of which fifty percent (50%) or more of the
voting stock is controlled or owned directly or indirectly by
either party to this Agreement;
b) an organization which directly or indirectly owns or controls
fifty percent (50%) or more of the voting stock of either party
to this Agreement;
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c) an organization, the majority ownership of which is directly or
indirectly common to the majority ownership of either party to
this Agreement; and
d) an organization under (a), (b), or (c) above in which the amount
of said ownership is less than fifty percent (50%) and that
amount is the maximum amount permitted pursuant to the law
governing the ownership of said organization.
It is understood and agreed, however, that the term "Affiliate" shall not
include Genentech Inc., a Delaware Corporation.
1.2 "Effective Date" shall mean April 1, 1998.
1.3 "Licensed Product" shall mean a reagent kit manufactured by LIFECODES
containing a thermostable DNA polymerase in combination with all such other
reagents, enzymes or materials, whether packaged together or separately, as are
necessary to perform a PCR-based assay for Parentage Determination Testing,
which is covered by at least one Valid Claim within PCR Technology, and (a)
which is marketed for use in Parentage Determination Testing and (b) bears a
label as specified in Section 2.6, setting forth the license limitations.
1.4 "Net Product Revenues" shall mean gross invoice price for the Royalty
Products sold by LIFECODES to an end user customer less a lump sum deduction of
four percent (4%), which lump sum deduction shall be the only deduction made
from the gross invoice price for sales of Royalty Products and is in lieu of all
other deductions (such as, for example, recalls, returns, taxes, freight,
transportation, insurance, packaging, custom duties, and discounts granted later
than at the time of invoicing.)
Net Product Revenues shall be calculated on the basis of sales or transfers
to end users by LIFECODES or an Affiliate or distributor. In the event LIFECODES
is unable to account for sales to Third-Party end users by its distributors, the
Net Product Revenues shall be calculated as the sales price to such distributors
multiplied by 1.43, which factor represents a 30% margin allowed to the
distributor.
The Net Product Revenues for any Royalty Product sold by LIFECODES to any
person, firm or corporation controlling, controlled by, or under common control
with LIFECODES, or enjoying a special course of dealing with LIFECODES, shall be
determined by reference to the Net Product Revenues which would be applicable
under this Section in an arm's length transaction between LIFECODES and a Third
Party other than such person, firm or corporation.
1.5 "Parentage Determination Testing" shall mean the analysis of genetic
material to ascertain whether two or more individuals are biologically related,
but specifically excludes
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analysis of forensic evidence for a sexual assault investigation. This field
specifically excludes tissue typing. In no event shall the term Parentage
Determination Testing include or be construed to include the performance of any
test for the diagnosis or therapy of humans or other animals, or the manufacture
of any product useful in performing an in vitro diagnostic procedure to detect
the presence, absence or quantity of nucleic acid sequences associated with a
disease or condition of humans or other animals.
1.6 "PCR Technology" shall mean the polymerase chain reaction process
covered by United States Patent Nos. B1 4,683,195 and B1 4,683,202, and any
reissue or reexamination patents thereof, and those claims in foreign patents
and patent applications which correspond to issued claims in the above patents
and which claim priority from the patent applications on which the above patents
are based and access to which claims are necessary for LIFECODES to sell and
promote Licensed Products in accordance with the rights granted in Section 2.2,
hereto. No other ROCHE patents or patent applications, including those directed
to any thermostable DNA polymerase, are included herein by implication, estoppel
or otherwise.
1.7 "Royalty Product" shall mean (a) Licensed Product or (b) a reagent,
component or other material which is sold in connection with the sale of a
Licensed Product by LIFECODES and which is adapted for or promoted or supported
for use by customers in PCR Testing in the Licensed Field. As used herein, "PCR
Testing" shall include all steps involved in the analysis of a sample for the
presence or absence of amplifiable nucleic acid from preparation of the sample
to detection and/or analysis of any amplified product.
1.8 "Territory" shall mean worldwide.
1.9 "Third Party" shall mean a party other than an Affiliate of The Parties
to this Agreement.
1.10 "Valid Claim" shall mean the claim of a patent or pending patent
application 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 unpatentable by the appropriate administrative agency.
2. Grant
2.1 Upon the terms and subject to the conditions of this Agreement, ROCHE
hereby grants to LIFECODES, and LIFECODES hereby accepts from ROCHE, a royalty
bearing, limited, non-exclusive license in the Territory, without the right to
sublicense, under PCR Technology to manufacture (but not to have manufactured)
and to sell worldwide, directly or through distributors, Licensed Products for
use in Parentage Determination Testing and to pass with such sales of Licensed
Products to end user purchasers only so much of PCR Technology patent rights as
are necessary to be consistent with labels as required by Section 2.6,
accompanying those Licensed Products. Notwithstanding the foregoing grant,
nothing in
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this Agreement shall be deemed to grant to LIFECODES specific rights to
manufacture any component of Licensed Products covered by patents of ROCHE which
are not licensed herein, such as for example, the DNA polymerase or primers
and/or probes.
2.2 The Parties understand and agree that no rights are hereby granted,
expressly or by implication, under any ROCHE thermostable polymerase patents or
patent applications or under U.S. Patent No. 4,965,188 (the '188 patent,
covering the performance of nucleic acid amplification using a thermostable
polymerase) and any foreign claim covering, inter alia, the performance of PCR
with a thermostable polymerase. An immunity from suit under the '188 patent and
foreign claims claiming priority therefrom, may be obtained by purchase of a
thermostable polymerase that is either manufactured by ROCHE or licensed by
ROCHE under the `188 patent, or by contacting, in the United States, the
Director of Licensing, Roche Molecular Systems, Inc., 0000 Xxxxxxxx Xxxxxx,
Xxxxx 000, Xxxxxxx, XX 00000 and, outside the United States, the PCR Licensing
Manager at X. Xxxxxxxx-Xx Xxxxx Xxx, XX 0000 Xxxxx, Xxxxxxxxxxx.
2.3 LIFECODES expressly acknowledges and agrees that this license is
personal to LIFECODES alone and LIFECODES shall have no right to sublicense,
assign or otherwise transfer or share its rights under the foregoing license and
shall not authorize any other party, including Affiliates, to practice PCR
Technology, nor shall it practice PCR Technology in conjunction with any other
party.
2.4 The right to extend rights under PCR Technology granted hereunder to
LIFECODES is limited strictly to the sale of Licensed Products and for no other
purpose whatsoever, and no other right, immunity or license is granted
expressly, impliedly or by estoppel.
2.5 Except as is specifically provided herein, this Agreement shall not
limit the rights of ROCHE in any way. It is specifically understood that as
between the parties to this Agreement, ROCHE reserves the right itself or
through its Affiliates to practice under PCR Technology, including the PCR
process itself, and to sublicense, assign or otherwise transfer the PCR
Technology to others for any purpose whatsoever.
2.6 LIFECODES shall affix prominently to each particular Licensed Product,
either on a product insert accompanying the product or on the product itself, a
label as provided in Appendix A hereto, or such other label as ROCHE may
reasonably direct from time to time. With regard to any changes in the label
notice provided in Appendix A, LIFECODES shall have a reasonable time period
over which to change its labels.
To the extent that LIFECODES includes a thermostable polymerase that is
fully licensed by ROCHE under the `188 patent in its Licensed Products or
otherwise becomes separately licensed under ROCHE's `188 patent, then LIFECODES
will use label notice Number 1 in Appendix A, which includes the `188 patent;
otherwise LIFECODES will use
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label notice Number 2 in Appendix A. The Parties understand and agree that using
label notice Number 2 shall not relieve LIFECODES from liability for inducing
infringement of ROCHE's patents.
2.7 With respect to LIFECODES' promotional materials for Licensed Products,
for example advertisements, intended for distribution to Third Parties and in
which it is not practical to include the complete label notice statement
provided for in Section 2.6 above, ROCHE hereby grants to LIFECODES the right
and LIFECODES accepts and agrees to credit ROCHE as the source of patent rights
as follows:
"This product is sold under a license from Roche Molecular Systems, Inc.
and X. Xxxxxxxx-Xx Xxxxx Ltd, and the use of this product is restricted
thereby."
Such reference will be reasonably prominent and in materials (for example,
catalogues) containing multiple product descriptions, will be directly
associated with information on each specific product covered by this Agreement.
2.8 LIFECODES hereby covenants that it shall sell, market and otherwise
promote products licensed hereunder only for use in accordance with the terms of
this Agreement and shall use its best efforts to ensure that Licensed Products
are used in compliance with the letter and intent of the Agreement.
2.9 LIFECODES agrees that once it is notified by ROCHE or once it
independently becomes aware that a particular purchaser is using or intends to
use any product licensed herein other than as is specifically provided in this
Agreement, LIFECODES shall immediately notify said purchaser in writing that
such use is unlicensed and that a license for said use must be obtained from
ROCHE. LIFECODES shall also require distributors to report to LIFECODES any
unlicensed activities of which they become aware. LIFECODES further agrees that
continued or resumed sales by LIFECODES, or a distributor, to a particular
purchaser of which LIFECODES was previously notified or is otherwise aware is
distributing/using any licensed product other than as expressly licensed in this
Agreement, shall constitute a breach of this Agreement under Section 5.4 of the
Agreement. A written certification by a distributor or purchaser which is
executed by an officer of said distributor or purchaser which officer may
legally bind the distributor or purchaser, that it has ceased the unlicensed
activity, or a written certification by LIFECODES which is executed by an
officer of LIFECODES which officer may legally bind LIFECODES that sales to such
distributor or purchaser have ceased, shall be a cure under Section 5.4.
LIFECODES agrees that it shall provide to ROCHE a copy of each of its
notices to purchasers/distributors pursuant to this section, as well as a copy
of each purchaser/distributor's certification of compliance.
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3. Grant to ROCHE
If LIFECODES elects to license at least one Third Party to make, use or
sell any improvement, modification, invention or discovery (hereinafter referred
to as "Discoveries" in this Section) of LIFECODES which constitutes an
improvement of the PCR Technology, in the performance of PCR-based assays, or of
Licensed Products, ROCHE shall have an option to negotiate a nonexclusive
license under commercially reasonable terms, to use said Discovery and to make,
use and sell products including or incorporating said Discovery directly or
through distributors, and in the event that LIFECODES licenses Third Parties,
ROCHE shall be entitled to the same terms and conditions as the most favorable
license for said Discovery granted by LIFECODES to a Third Party. It is hereby
agreed that ROCHE may sublicense Discoveries under this Section 3 to its
Affiliates as well as licensees of PCR Technology.
4. Royalties, Records and Reports
4.1 Royalties. For the rights and privileges granted under this Agreement,
LIFECODES shall pay to ROCHE royalties on Royalty Products used by LIFECODES or
which are sold, distributed, or otherwise transferred by LIFECODES (with or
without payment) as follows:
a) a nonrefundable, noncreditable license issuance fee in the amount
of [___], to be paid upon execution of this Agreement;
b) Earned Royalties: A royalty of [ ] of the Net Product Revenues of
each Royalty Product.
4.2 LIFECODES shall keep full, true and accurate books of account
containing all particulars which may be necessary for the purpose of showing the
amount payable to ROCHE by way of royalty or by way of any other provision under
this Agreement. Such books and the supporting data shall be open at all
reasonable times, for three (3) years following the end of the calendar year to
which they pertain (and access shall not be denied thereafter, if reasonably
available), to the inspection of ROCHE or an independent certified public
accountant retained by ROCHE for the purpose of verifying LIFECODES' royalty
statements or LIFECODES' compliance in other respects with this Agreement. If in
dispute, such records shall be kept until the dispute is settled. The inspection
of records shall be at ROCHE's sole cost unless the inspector concludes that
royalties reported by LIFECODES for the period being audited are understated by
five percent (5%) or more from actual royalties, in which case the costs and
expenses of such inspection shall be paid by LIFECODES.
4.3 LIFECODES shall within thirty (30) days after the first day of January,
April, July, and October of each year deliver to ROCHE a true and accurate
royalty report. This report shall be in accordance with the royalty report form
attached hereto as Appendix A. This
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report shall be on a country-by-country basis and shall give such particulars of
the business conducted by LIFECODES in each country during the preceding three
(3) calendar months as are pertinent to an accounting for royalty under this
Agreement and shall include at least the following:
a) separately itemized quantities of Royalty Products sold or
otherwise transferred by LIFECODES during those three (3) months;
b) the cumulative gross sales of each Royalty Product;
c) the Net Product Revenues of each Royalty Product; and
d) the calculation of net royalties due ROCHE. If no royalties are
due, it shall be so reported.
The correctness and completeness of each such report shall be attested to
in writing by a responsible financial officer of LIFECODES.
Simultaneously with the delivery of each such royalty report, LIFECODES
shall pay to ROCHE the royalty and any other payments due under this Agreement
for the period covered by such report. All amounts payable hereunder by
LIFECODES to ROCHE shall be payable in U.S. currency and sent by the due date,
together with the royalty report, to the following address:
Roche Molecular Systems, Inc.
X.X. Xxx 00000
Xxxxxx, Xxx Xxxxxx 00000
With a copy of the report to: X. Xxxxxxxx-Xx Xxxxx Ltd
Xxxx. 000/000, XX-0000
Xxxxx, Xxxxxxxxxxx
Attn: Licensing Manager
Royalties accruing on account of sales in countries other than the United
States shall be payable in United States dollars in amounts based on the New
York rate of exchange as quoted in The Wall Street Journal (WSJ) for the last
business day of each quarter. If the WSJ does not publish any such rate, a
comparable publication shall be agreed upon from time to time by the parties,
and with respect to each country for which such rate is not published in the WSJ
or in a comparable publication, the parties shall use the applicable rate for
such date by the appropriate governmental agency in such country.
ROCHE may change the above addresses at any time by giving LIFECODES
written notice. Said written notice shall become effective four days after it is
mailed unless ROCHE indicates a later effective date.
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4.4 LIFECODES' obligation to pay royalties pursuant to this Agreement shall
terminate upon a final holding of invalidity or unenforceability of all of the
patents identified in Section 1.6, supra, by a final court decision from which
no appeal is or can be taken.
4.5 If LIFECODES shall fail to pay any amount specified under this
Agreement after the due date thereof, the amount owed shall bear interest at the
Citibank NA base lending rate ("prime rate") plus 3% from the due date until
paid, provided, however, that if this interest rate is held to be unenforceable
for any reason, the interest rate shall be the maximum rate allowed by law at
the time the payment is due.
5. Term and Termination
5.1 The license granted to LIFECODES and LIFECODES' obligation to pay
royalties hereunder, shall commence on the Effective Date and terminate on the
date of expiration of the last to expire of the patents included within the PCR
Technology.
5.2 Notwithstanding any other Section of this Agreement, LIFECODES may
terminate this Agreement for any reason on sixty (60) days' written notice to
ROCHE. If LIFECODES elects to terminate this Agreement pursuant to this section,
it shall within thirty (30) days of said termination, notify each of its
customers that LIFECODES is no longer licensed under PCR Technology, and shall
provide ROCHE a copy of all such notices.
5.3 The license granted hereunder to LIFECODES shall automatically
terminate upon (a) an adjudication of LIFECODES as bankrupt or insolvent, or
LIFECODES' admission in writing of its inability to pay its obligations as they
mature; or (b) an assignment by LIFECODES for the benefit of creditors; or (c)
LIFECODES' applying for or consenting to the appointment of a receiver, trustee
or similar officer for any substantial part of its property or such receiver,
trustee or similar officers' appointment without the application or consent of
LIFECODES, if such appointment shall continue undischarged for a period of
ninety (90) days; or (d) LIFECODES' instituting (by petition, application,
answer, consent or otherwise) any bankruptcy, insolvency arrangement, or similar
proceeding relating to LIFECODES under the laws of any jurisdiction; or (e) the
institution of any such proceeding (by petition, application or otherwise)
against LIFECODES, if such proceeding shall remain undismissed for a period of
ninety (90) days or the issuance or levy of any judgment, writ, warrant of
attachment or execution or similar process against a substantial part of the
property of LIFECODES, if such judgment, writ, or similar process shall not be
released, vacated or fully bonded within ninety (90) days after its issue or
levy.
5.4 Breach. Upon any breach of or default of a material term under this
Agreement by LIFECODES, ROCHE may terminate this Agreement upon thirty (30)
days' written notice to LIFECODES. Said notice shall become effective at the end
of the thirty-day period, unless during said period LIFECODES fully cures such
breach or default to ROCHE's reasonable satisfaction and notifies ROCHE of such
cure. Such 30-day cure period shall not apply to any
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uncontested royalty payments due, which uncontested payments must be made in
accordance with the terms of this Agreement.
5.5 Upon termination of this Agreement as provided herein, all rights and
immunities granted to LIFECODES by ROCHE hereunder shall revert to or be
retained by ROCHE.
5.6 LIFECODES' obligations to report to ROCHE and to pay royalties to ROCHE
as to the sale of Royalty Products sold under the Agreement prior to termination
or expiration of the Agreement shall survive such termination or expiration.
LIFECODES shall have 30 days from the termination of this Agreement to dispose
of its inventory of Licensed Products and to pay the appropriate royalty.
Thereafter, any remaining Licensed Products shall be destroyed and LIFECODES
shall certify to ROCHE in writing that all such remaining products in fact have
been destroyed.
6. Confidentiality-Publicity
6.1 Except as provided in Section 2.5 of this Agreement, LIFECODES agrees
to obtain ROCHE's approval before distributing any written information,
including but not limited to promotional and sales materials, to Third Parties
referring to ROCHE, the PCR Technology, or the terms of this Agreement. ROCHE's
approval shall not be unreasonably withheld or delayed and, in any event,
ROCHE's decision shall be rendered within three (3) weeks of receipt of the
written information. Once approved, such materials, or abstracts of such
materials, which do not materially alter the context of the material originally
approved may be reprinted during the term of the Agreement without further
approval by ROCHE unless ROCHE has notified LIFECODES in writing of its decision
to withdraw permission for such use.
6.2 Each party agrees that any financial, legal or business information or
any technical information disclosed to it (the "Receiving Party") by the other
(the "Disclosing Party") in connection with this Agreement shall be considered
confidential and proprietary and the Receiving Party shall not disclose same to
any Third Party and shall hold it in confidence for a period of five (5) years
and will not use it other than as permitted under this Agreement provided,
however, that any information, know-how or data which is orally disclosed to the
Receiving Party shall not be considered confidential and proprietary unless such
oral disclosure is reduced to writing and given to the Receiving Party in
written form within thirty (30) days after oral disclosure thereof. Such
confidential and proprietary information shall include, without limitation,
marketing and sales information, commercialization plans and strategies,
research and development work plans, and technical information such as patent
applications, inventions, trade secrets, systems, methods, apparatus, designs,
tangible material, organisms and products and derivatives thereof.
6.3 The above obligations of confidentiality shall not be applicable to the
extent:
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a) such information is general public knowledge or, after disclosure
hereunder, becomes general or public knowledge through no fault
of the Receiving Party; or
b) such information can be shown by the Receiving Party by its
written records to have been in its possession prior to receipt
thereof hereunder; or
c) such information is received by the Receiving Party from any
Third Party for use or disclosure by the Receiving Party without
any obligation to the Disclosing Party provided, however, that
information received by the Receiving Party from any Third Party
funded by the Disclosing Party (e.g., consultants,
subcontractors, etc.) shall not be released from confidentiality
under this exception; or
d) the disclosure of such information is reasonably needed for use
in connection with performing, offering and selling Licensed
Products; or
e) the disclosure of such information is required or desirable to
comply with or fulfill governmental requirements, submissions to
governmental bodies, or the securing of regulatory approvals.
6.4 Each party shall, to the extent reasonably practicable, maintain the
confidentiality of the provisions of this Agreement and shall refrain from
making any public announcement (including press releases) or disclosure of the
terms of this Agreement without the prior consent of the other party, except to
the extent a party concludes in good faith that such disclosure is required
under applicable law or regulations, in which case the other party shall be
notified in advance.
7. Compliance
In exercising any and all rights and in performing its obligations
hereunder, LIFECODES shall comply fully with any and all applicable laws,
regulations and ordinances and shall obtain and keep in effect licenses, permits
and other governmental approvals, whether at the federal, state or local levels,
necessary or appropriate to carry on its activities hereunder.
8. Assignment
8.1 This Agreement shall not be assigned by LIFECODES to anyone for any
reason (including without limitation any purported assignment or transfer that
would arise from a sale or transfer of LIFECODES' business).
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8.2 ROCHE may assign all or any part of its rights and obligations under
this Agreement at any time without the consent of LIFECODES. LIFECODES agrees to
execute such further acknowledgments or other instruments as ROCHE may
reasonably request in connection with such assignment.
9. Negation of Warranties and Indemnity
9.1 Nothing in this Agreement shall be construed as:
a) a warranty or representation by ROCHE as to the validity or scope
of any patent included within PCR Technology;
b) a warranty or representation that the manufacture, use or sale of
Licensed Products is or will be free from infringement of patents
of Third Parties;
c) an obligation to bring or prosecute actions or suits against
Third Parties for infringement;
d) except as expressly set forth herein, conferring the right to use
in advertising, publicity or otherwise any trademark, trade name,
or names, or any contraction, abbreviation, simulation or
adaptation thereof, of ROCHE;
e) conferring by implication, estoppel or otherwise any licenses,
immunities or rights under any patents of ROCHE other than those
specified in PCR Technology, regardless of whether such other
patents are dominant or subordinate to those in PCR Technology;
f) an obligation to furnish any know-how not provided in PCR
Technology; or
g) creating any agency, partnership, joint venture or similar
relationship between ROCHE and LIFECODES.
9.2 ROCHE MAKES NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE.
9.3 LIFECODES shall assume full responsibility for its use of the PCR
Technology and sale of Licensed Products and shall defend, indemnify and hold
ROCHE harmless from and against all liability, demands, damages, expenses
(including attorneys' fees) and losses for death, personal injury, illness,
property damage or any other injury or damage, including any damages or expenses
arising in connection with state or federal regulatory action,
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in view of the use by LIFECODES, including its officers, directors, agents and
employees, of the PCR Technology, except that LIFECODES shall not be liable to
ROCHE for injury or damage arising solely because of ROCHE's negligence.
10. General
10.1 This Agreement constitutes the entire agreement between LIFECODES and
ROCHE 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 each of The Parties.
10.2 Any notice required or permitted to be given by this Agreement shall
be given by postpaid, first class, registered or certified mail, or by courier,
properly addressed to the other party at the respective address as shown below:
If to ROCHE: Roche Molecular Systems, Inc.
000 Xxxxxxxxx Xxxxxx
Xxxxxx, Xxx Xxxxxx 00000
Attn: Corporate Secretary
with a copy to: Roche Molecular Systems, Inc.
0000 Xxxxxxxx Xxxxxx, Xxxxx 000
Xxxxxxx, Xxxxxxxxxx 00000
Attn: Licensing Manager
If to LIFECODES: Lifecodes Corporation
000 Xxxx Xxxxxx
Xxxxxxxx, Xxxxxxxxxxx 00000
Attn: Xxxxxxx Xxxxxxxx, Vice President,
Sales and Marketing
Either party may change its address by providing notice to the other party.
Unless otherwise specified herein, any notice given in accordance with the
foregoing shall be deemed given within four (4) full business days after the day
of mailing, or one full day after the date of delivery to the courier, as the
case will be.
10.3 Governing Law and Venue. This Agreement and its effect are subject to
and shall be construed and enforced in accordance with the law of the State of
New Jersey, U.S.A., except as to any issue which by the law of New Jersey
depends upon the validity, scope or enforceability of any patent within PCR
Technology which issue shall be determined in accordance with the applicable
patent laws of the United States or the relevant foreign jurisdiction. The
Parties agree that the exclusive jurisdiction and venue for any dispute or
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controversy arising from this Agreement shall be in the United States District
Court for the District of New Jersey if federal jurisdiction exists, and if no
federal jurisdiction exists, then in the Superior Court of New Jersey.
10.4 Arbitration. Notwithstanding the provisions of Section 10.3 above, any
dispute concerning solely the determination of facts such as, but not limited
to, (1) a determination of royalty rate payments owed pursuant to Section 4.1;
and (2) the proper use of labels pursuant to Section 2.6, and which dispute does
not involve a question of law, shall be settled by final and binding arbitration
in the State of New Jersey pursuant to the commercial arbitration rules of the
American Arbitration Association in accordance with the following procedural
process:
a) The arbitration tribunal shall consist of three arbitrators. In
the request for arbitration and the answer thereto, each party
shall nominate one arbitrator and the two arbitrators so named
will then jointly appoint the third arbitrator within sixty (60)
days of the filing of the answer, said third arbitrator being the
chairman of the arbitration tribunal.
b) The decision of the arbitration tribunal shall be final and
judgment upon such decision may be entered in any competent court
for juridical acceptance of such an award and order of
enforcement.
Each party hereby submits itself to the jurisdiction of the courts of the
place of arbitration, but only for the entry of judgment with respect to the
decision of the arbitrators hereunder.
10.5 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 or concerning the legal right of The
Parties to enter into this contract and any statute, law, ordinance or treaty,
the latter shall prevail, but in such event the affected provisions of the
Agreement shall be curtailed and limited only to the extent necessary to bring
it within the applicable legal requirements.
10.6 If any provision of this Agreement is held to be 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, all
other provisions of this Agreement shall be deemed valid and enforceable to the
full extent possible.
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IN WITNESS WHEREOF, The Parties hereto have set their hands and seals and
duly executed this Agreement on the date(s) indicated below, to be effective on
Effective Date as defined herein.
ROCHE MOLECULAR SYSTEMS, INC. LIFECODES CORPORATION
By: ___________________________ By: ___________________________
Name: Xxxxxx Xxxxx, Ph.D. Name: Xxxxxxx Xxxxxxxx
Title: Vice President, R & D Title: Vice President, Sales and
Marketing
Date: _________________________ Date: _________________________
Apprv'd As To Form
LAW DEPT.
By: .................
X. XXXXXXXX-XX XXXXX LTD
By: ___________________________
Name: _________________________
Title: ________________________
Date: _________________________
14
APPENDIX A
Label Notice Number 1
License Statement for use on Royalty Products which are Licensed Products
containing a Thermostable Polymerase either Manufactured by Roche or Licensed
Under Roche's `188 Patent
NOTICE TO PURCHASER: LIMITED LICENSE
The purchase price of this product includes limited, non-transferable rights
under U.S. Patents 4,683,202, 4,683,195, and 4,965,188 or their foreign
counterparts, owned by Roche Molecular Systems, Inc. and X. Xxxxxxxx-Xx Xxxxx
Ltd ("Xxxxx"), to use only this amount of the product to practice the Polymerase
Chain Reaction ("PCR") and related processes described in said patents solely
for the parentage determination testing applications of the purchaser, and
explicitly excludes analysis of forensic evidence. The right to use this product
to perform and to offer commercial services for parentage determination testing
applications, using PCR, including reporting the results of the purchaser's
activities for a fee or other commercial consideration, is also hereby granted.
Further information on purchasing licenses to practice PCR and related processes
may be obtained by contacting the Director of Licensing at Roche Molecular
Systems, Inc., 0000 Xxxxxxxx Xxxxxx, Xxxxxxx, Xxxxxxxxxx, 00000
15
APPENDIX A, CONTINUED
Label Notice Number 2
License Statement for use on Royalty Products Designed and Sold for use in
Parentage Determination Testing Applications but which Do Not Contain a
Thermostable Polymerase either Manufactured by Roche, or Licensed Under Roche's
`188 Patent and are therefore not Licensed Products.
NOTICE TO PURCHASER: DISCLAIMER OF LICENSE
This product is optimized for use in the Polymerase Chain Reaction ("PCR")
Process, covered by patents owned by Roche Molecular Systems, Inc. and X.
Xxxxxxxx-Xx Xxxxx Ltd ("Xxxxx"). Further information on purchasing licenses to
practice PCR and related processes may be obtained by contacting the Director of
Licensing at Roche Molecular Systems, Inc., 0000 Xxxxxxxx Xxxxxx, Xxxxxxx,
Xxxxxxxxxx 00000.
16
SUMMARY ROYALTY REPORT
for the Period ________________ to ____________________ Country ____________________
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Licensee: Lifecodes Corporation Field of Use: Parentage Determination Products
Effective Date: April 1, 1998 Royalty Rate: 15%
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Number Cumulative Deductions Allowed
Royalty Product of Product Gross Sales of (4%) Net Product Royalty Due
Units Sold or Royalty Product Revenues
Transferred
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Check here if there were no sales for this period ___ Total Royalty Earned
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Royalty Payment Due
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I hereby certify the information set forth above is correct and
complete with respect to the amounts due under the applicable license agreement.
By: _________________________________________ Title: __________________________________ Date: _______________________
(authorized signature)
Name (please print): ___________________________________________
====================================================================================================================================
Mail completed form and royalty payment to: Roche Molecular Systems, Inc., P. O. Xxx 00000, Xxxxxx, Xxx Xxxxxx 00000
Copy to: X. Xxxxxxxx-Xx Xxxxx Xxx, Xxxxxxxxxxxxx.000, XX-0000, Xxxxx, Xxxxxxxxxxx, Attn: Licensing Manager
