EXHIBIT 10.18
C O N F I D E N T I A L
RESEARCH & DEVELOPMENT AGREEMENT
Between:
Roche Diagnostics GmbH
Sandhofer Xxxxxxx 00
00000 Xxxxxxxx
Xxxxxxx Xxxxxxxx of Germany
(hereinafter referred to as "RDG")
and
CombiMatrix Corporation
0000 Xxxxxxx Xxxxxxx Xxxx.
Xxxxxxxx, XX 00000
XXX
- hereinafter referred as to "CBMX"
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This Research & Development Agreement ("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) Due to changes in CBMX business model for the collaboration the Parties
have decided to reformulate their mutual relationship with this
Agreement dated as of July 1st 2002 which shall replace in its
entirety, including all existing amendments, such Research and
Development Agreement of July 1st 2001 and with a new License Agreement
(the "License Agreement") which replaces in its entirety the existing
License and Supply Agreement dated July 1st 2001 and is signed
concurrently with this Agreement.
(3) CBMX shall develop for RDG under the terms and conditions of this
Agreement prototypes and products.
1. DEFINITIONS
1.1 Capitalised terms in this Agreement shall have the same meaning as in
the License Agreement unless defined otherwise in this Agreement. The
following terms shall have the following meaning:
(1) "Agreement" shall mean this Research and Development Agreement
and all Annexes hereto.
(2) "Chiplettes" shall mean smaller (in size) Chips (with Chips
being generally about * cm2 or larger) that have Content
synthesized prior to dicing to Chiplette size (approximately *
cm2 or smaller) and do not have separate electrical contact
points.
(3) "Development Program" shall mean the development program as
attached to this Agreement as ANNEX I for the development of
products under this Agreement, which Development Program may
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be amended from time to time by the Parties in the Development
Steering Committee as set forth herein.
(4) "Development Steering Committee or DSC" shall mean a group of
technical and business representatives from RDG and CBMX
responsible for managing the Development Program and the R&D
collaboration under this Agreement as detailed in Section 3 of
this Agreement.
(5) "Development and Payment Schedule" shall mean the time
schedule for the development and payments based on milestones
as attached to this Agreement as ANNEX I.
(6) "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.
(7) "Miniarrays" shall mean smaller (in size) Chips (with Chips
being generally *) that are *.
(8) "Mono-Cassette" shall have the meaning set forth in the
License Agreement.
(9) "Results" shall mean any and all results (including but not
limited to products, inventions, data, Know-How, Software,
ideas and other expertise) developed under the Development
Program and to be delivered to RDG, whether patentable or not.
(10) "Specifications" shall mean the general specifications for all
Deliverables and SOP's for functional test of Deliverables
preliminarily set forth in Annex II, Attachments 1 - 9
attached hereto and as amended from time to time by the DSC.
(11) "Wafer(s)" shall mean the generally circular silicon-based
semiconductor product having the circuitry etched thereon and
arranged for a plurality of Arrays, Blank Chips, Miniarrays or
Chiplettes to be diced out.
(12) "Derivative Work" means any RDG developed or funded
translation (including any translation into other computer
languages), modification, correction, addition, extension,
upgrade, improvement, compilation, abridgement or other form
in which the Software may be recast, transformed or adapted
including but not limited to all forms in which such
Derivative Work would infringe any of the copyrights,
including audiovisual copyrights, in the Software..
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(13) "Errors" shall mean (i) defects in the Software that cause it
not to operate in conformance with the Specifications; and
(ii) defects in the documentation, if supplied by CBMX, that
render it inaccurate, erroneous, unreliable, or not in
conformance with the Specifications.
(14) "Object Code" means Software written in machine readable form
generated by compilation of the Source Code and contained in a
medium that permits it to be loaded in and operated on an
electronic computer.
(15) "Source Code" means Software written in programming language
in a form intelligible to trained programmers and capable of
being translated into Object Code readable and usable by
machines.
(16) "Deliverable(s)" shall mean the Deliverables as listed in
Annex I to this Agreement as accepted by RDG according to the
Specifications in Annex II ("Acceptance"). For Software, the
following shall also be part of the Deliverables:
o the Source Code of the Software
o the Object Code of the Software
o a detailed description of the development platform
o documentation containing the algorithms and the
mathematical routines behind them
2. OBLIGATIONS OF CBMX
2.1 EXPANSION. Subject to the terms of this Agreement, CBMX shall endeavour
using reasonable and diligent efforts with technical support from RDG if needed
to conduct the development pursuant to the Development Program and deliver the
Results of according to the Development Program and the Specifications.
2.2 MODIFICATIONS. The Parties may further modify the Specifications and
Development Program for the products listed in Annex 1 based upon the advice and
guidance of the DSC. However, both Parties must mutually agree in the DSC to any
such modifications. RDG and CBMX may both propose changes of and additions to
the Specifications with the goal of improving performance and quality. The
change notification procedures to be implemented in such updating of the
Specifications shall be agreed upon by the DSC.
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2.3 MODIFICATIONS OF SRD'S. Notwithstanding the above paragraph and anything
else in this Agreement, regarding the Specifications (Software Requirement
Documents) of the Software to be developed under the Development Program RDG
will have the continuing right to modify the Specifications after consultation
with CBMX prior to CBMX delivery and RDG's final acceptance. CBMX will develop
the Software to conform to such modifications of the Specifications at no
additional charge, unless any such modification of the Specifications by RDG
does require CBMX's expenditure of more time and effort, in which case both
Parties have to agree to the changes and will negotiate an appropriate
consideration. CBMX shall also have the right to propose changes to the
Specifications and such changes may be implemented upon RDG's prior
approval.
2.4 MAINTENANCE, UPDATES AND NEW VERSIONS OF SOFTWARE. Following the Acceptance
of Software by RDG, CBMX will provide resources at RDG's request to promptly
correct any Errors or bugs that RDG becomes aware of at terms and conditions to
be negotiated between the Parties. Subject to future payments, terms and
conditions, CBMX will also at RDG's request provide resources for updates
and new versions of Software during the lifetime of the commercialisation of
Software and Licensed Products using Software.
3. COLLABORATION STRUCTURE
3.1 EXCHANGE OF INFORMATION. The Parties hereto agree that the success of the
mutual collaboration is dependent in part on mutual trust and on a regular
exchange of information between both Parties. To this extent the Parties shall
exchange regularly, depending on the progress made, experiences, information and
all Results in appropriate written or oral form, preferably through the exchange
of electronic files. The exchange of information relating to the Development
Program shall be made to all members of the DSC.
3.2 COMMITTEE FORMATION. Upon execution of this Agreement by both Parties, the
DSC shall be formed and shall consist of three (3) individuals designated from
time-to-time by RDG and three (3) individuals designated from time-to-time by
CBMX. The DSC shall be co-chaired by one representative from RDG and one
representative from CBMX. The DSC shall manage the collaboration, and if
necessary amend the Development Program and Payment Schedule and the
Specifications. The DSC shall meet at least once every calendar quarter year in
person alternating between Europe and the Seattle area and shall meet more
frequently through other means (E.G., video conferencing, telephone
conferencing, emails, etc.) as needed. The DSC has the following
responsibilities:
o to change and amend the Development Program,
o to approve, change and amend the Specifications,
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o to attest the fulfilment of research milestones and to trigger
the related milestone payments to affect, and if necessary
change and amend milestones under the Development Program,
o to keep track of progress with respect to the Development
Program,
o to inform each other about the acquisition of additional
funding (e.g. external R&D funding from national government
and/or EU bodies),
o to approve publications by CBMX and by RDG, as the case may
be,
o to recommend and supervise the patenting strategy for Results
that constitute new inventions in the Field.
3.3 COMMUNICATIONS. All communications regarding this Agreement between the
Parties, other than communications among the DSC members, shall be directed to
the persons set forth below:
for RDG: Roche Diagnostics GmbH
Legal Department
Xxxxxxxxx Xxxxxxx 000
00000 Xxxxxxxx
Xxxxxxx
Tel.: 0000-000 0000
Fax: 0000-000 0000
cc: Head of R&D
Xxxxxxxxxx 0,
00000 Xxxxxxxx,
Xxxxxxx
for CBMX: Combimatrix Corporation
0000 Xxxxxxx Xxxxxxx Xxxxxxx
Xxxxxxxx, XX 00000
XX
Attn: General Counsel
Tel x000 000 0000
Fax + 000 000 0000
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3.4 Decisions of the Development Steering Committee require the majority of each
of the members designated by each Party either at a meeting or by written
consent. All decisions and meetings of the Development Steering Committee shall
also be recorded in meeting minutes and signed by both Parties. The Development
Steering Committee shall cast votes only when at least 2 members of each Party
are present. In the event that the Development Steering Committee - despite
good-faith efforts - should be unable to reach a decision on any issue, it will,
upon request of the members of either Party, submit the issue to an executive
panel consisting of one member (member of the DSC or executive) appointed by the
President of each Party. If this panel is unable to solve the issue in mutual
agreement, the Parties will appoint a panel of three arbitrators. Each Party
shall have the right to appoint one arbitrator and the two arbitrators will then
appoint a third arbitrator. The arbitration procedures will take place in New
York, NY according to the rules laid out in Section 11.2 of the License
Agreement. The arbitration panel shall make decisions with the majority of its
members and such decision shall be final and binding on both Parties with regard
to the issue in question.
4. CONSIDERATION FOR DEVELOPMENT EFFORTS
4.1 PAYMENTS. In consideration of CBMX development efforts and delivery of the
Deliverables under this Agreement, RDG shall make the payments according to the
Development Program and Payment Schedule according to Section 4.2 within thirty
(30) days from the date of each invoice by CBMX.
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4.2 PAYMENTS BASED ON MILESTONE. The payments for fulfilment of milestones are
contingent upon timely delivery of the Deliverables in Annex 1 according to the
Development Program and the Specifications, that each is themselves subject to
change by the Development Steering Committee. If such timely delivery cannot be
achieved by CBMX and such delay has not previously been considered by the
Development Steering Committee by way of a revision of the timeline in the
Development Schedule or the Specifications, the payments under this 4.2 and the
Payment Schedule in Annex 1 shall be put on hold until the milestone has been
completed. If the Milestone cannot be completed according to revised
Specifications within 3 months from the original date or 3 months from the date
of Specification revisions (if the Specification revision was made to provide
for a more achievable metric), the Development Steering Committee shall decide
on a further course of action. For Software, CBMX will promptly correct any
Errors in any Software set forth in a statement of Errors to be submitted by RDG
to CBMX within 20 days from delivery of a testable version of the respective
Software prior to its acceptance. CBMX will redeliver a corrected version to RDG
within thirty (30) working days after receipt of the statement of Errors (unless
CBMX is unable to provide such cure within such time period without unreasonable
effort or expense, in which case the cure period shall extend beyond thirty (30)
days so long as CBMX diligently pursues a cure). RDG will, within ten (10)
working days after such redelivery, provide CBMX with written acceptance or
another statement of Errors. The procedure set forth in this Section will be
repeated until RDG's Acceptance of the Software.
4.3 PAYMENTS UPON TERMINATION. In the event of a termination by RDG of the
License Agreement under Section 9.4 therein and concurrent or subsequent
termination of this Agreement under Section 8.1 d), all payments due at such
time for Deliverables ready for delivery or Deliverables for which payments by
CBMX are due to a Third Party shall be paid by RDG upon delivery of Deliverables
according to the Specifications and the Development Program. For commenced
projects under the Development Program where no Deliverables are due and
deliverable upon termination and payment has not already been made, RDG shall
reimburse CBMX for the actual internal costs spent by CBMX up until the
effective date of termination. Such cost calculation shall be provided to RDG by
CBMX and prepared according to US GAAP accounting rules. RDG shall have the
right and opportunity to audit the correctness of such calculation.
5. INTELLECTUAL PROPERTY
5.1 RESULTS. Any and all Results under this Agreement shall be owned by the
Party or its employees, agents or consultants obligated to assign to a Party who
generated or invented such Results. Joint Results and related intellectual
property (E.G., patents and patent applications) shall be owned jointly and
either party may pursue or license its interest therein without the approval of
or accounting to the other party. Inventorship of any inventions arising from
work performed under this Agreement shall be determined according to the
applicable patent laws of the country where the invention has occurred. The
strategy about how best to exploit the Results in the Field will be determined
jointly by the Development Steering Committee and patent counsel for RDG and
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CBMX, as well as any issues regarding the cost of obtaining and maintaining
patents covering the Results. Any and all Results within the Field that are
Licensed Products and owned partly or entirely by CBMX shall automatically and
without further payments be part of the Technology of the License Agreement and
fall under the License grant in Section 2 of the License Agreement on an
exclusive basis if so elected by RDG without any further up-front payments or
minimum royalties and at running royalty terms and conditions to be negotiated
by the Parties in good faith at such time when the Result is commercialized by
RDG, unless the Parties have previously agreed to a running royalty.
5.2 PRODUCTS. Miniarrays, Chiplettes, Desk Top Synthesizers or any other
products developed partially or in their entirety under this Agreement for use
in the Field shall automatically be included without further initial payments in
the definition of Licensed Products and the license grant under the License
Agreement. In addition the rights to the Mono-Cassette that is designed to only
fit the Hybridizer/Reader shall be exclusive to RDG as detailed in the license
grant of the License Agreement.
6. CONFIDENTIALITY
The confidentiality provisions under Section 10 the License Agreement shall also
apply for this Agreement.
7. PUBLICATIONS
In case of scientific publications that concern the Development Program, each
Party agrees to take the other Party' s interests into account. Therefore, each
Party will send the other Party a manuscript of any intended publication prior
to its publication in order to give the other Party the opportunity to make
comments and to make sure that any applications for intellectual property rights
are not endangered by such publication. Each Party will send its comments within
three weeks after receipt of the manuscript. Special agreements can be made for
"abstracts" because of their urgency.
8. TERM AND TERMINATION
8.1 TERM AND TERMINATION. This Agreement shall commence on the Effective Date
and shall continue thereafter for five years from the Effective Date unless
terminated in accordance with the clauses set forth herein. 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:
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(a) If the other Party commits a material breach of any of the terms
and conditions of this Agreement or the License 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 ceases
to do business, or otherwise terminates its business operations; or
(d) Either party may terminate this Agreement if the License Agreement
is terminated by the other Party, such termination to be effective upon
the later of termination of the License Agreement and thirty (30) days
after the written notice of termination or RDG may terminate this
Agreement with 120 days prior notice concurrently with RDG's
termination of the License Agreement for any reason it deems reasonable
and upon effectiveness of such of termination shall make the payments
as described in Section 4.3 of this Agreement and Section 9.4 of the
License Agreement.
8.2 EFFECTS OF TERMINATION. Subject to this Section 8.2, upon any
termination or expiration of this Agreement, the Parties' rights and
obligations under this Agreement shall terminate and expire. Upon any
termination or expiration of this Agreement, the rights and obligations
of the Parties as set forth out in Paragraphs 5-11 of this Agreement
and any accrued obligations under this Agreement at the date of such
termination or expiration shall survive any termination or expiration
as well as any other provision intended by their nature to survive
termination or expiration of this Agreement.
9. DISPUTE RESOLUTION
9.1 FIRST STAGE CONSULTATION. The Parties agree to first try in good faith to
resolve and settle all disputes, controversies and differences that may arise
between them in respect of this Agreement, including specifications, through
mutual consultation among senior representatives of the Parties within thirty
(30) days of a written settlement request of either Party.
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9.2 ICC ARBITRATION. Any disputes arising out of or in connection with this
Agreement, including specifications and 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 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
documents shall be at the sole expense of the Party submitting such documents.
Any arbitration arising pursuant to this Agreement shall be held in New York,
N.Y., and discovery shall only be admissible to the extent permitted under or
not prohibited under Art. 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
Arbitrator 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 or improper use of 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.
10. 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 without regard to 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.
11. MISCELLANEOUS.
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11.1 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 except for the accompanying License
Agreement.
11.2 AMENDMENTS. Any modification of or amendment to this Agreement must be made
in writing. The same applies to any agreement waiving this requirement.
11.3 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.
11.4 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.
11.5 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.
11.6 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.
11.7 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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11.8 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.
11.9 ASSIGNMENT. This Agreement, and the rights and duties contained in this
Agreement shall not be assigned by RDG to any Third Party, except as part of a
sale of substantially all 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 substantially
all 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
reasonable 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.
11.10 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 to 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.
11.10 SURVIVORSHIP. The Agreement will be binding upon and will inure to the
benefit of the Parties hereto and their respective successors and permitted
assigns.
11.11 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.
11.12 INTERPRETATION. When a reference is made in this Agreement to Paragraphs
or Sections, such reference will be to a Paragraph 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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11.13 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.
11.14 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.
11.16 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.
Research & Development Agreement, Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
C O N F I D E N T I A L
-15-
IN WITNESS WHEREOF the Parties hereto have signed this Agreement:
Mannheim, Germany, September 25, 2002 Mukilteo, Washington .......2002
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
Research & Development Agreement, Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
C O N F I D E N T I A L
-16-
ANNEX I
DEVELOPMENT PROGRAM AND PAYMENT SCHEDULE
----------------------------------------
A * SYSTEM
Product Due Date Deliverable Milestone Payment
in Mio US $
----------------------------------------------------------------------------------------------------------------------
Hybridizer/ * Delivery of a total of * of *
Reader Hybridizer/Readers according to
including Hybridizer/Reader Specifications (Attachment
operating 1a and 8). Acceptance and payment when * have
software passed according to Specs. (1a + 8) *
Old Lic&Supply additional * until * at *.). * additional *
until * at *.
----------------------------------------------------------------------------------------------------------------------
Flowcell
*)
* * Acceptance and payment when * have passed *
according to Flowcell Specifications and (Manufacturing Transfer Payment
functional test assay specs (attachment 8). according to Section 4.4 of the
License Agreement)
Availability of * Flowcell in quantities
* according to forecast made by Roche
(attachment 9).
Series production established at * according
* to Flowcell Specifications. Acceptance and *
payment when series Flowcells have passed (Manufacturing Transfer Payment
functional test according to Flowcell Specs according to Section 4.4 of the
(att. 2 and 1b, 8). License Agreement)
Delivery of * Mono-Cassette (based on *)
data, comparing * versus * side by side
* showing * experiment. (according to
attachment 7 and 8) *
----------------------------------------------------------------------------------------------------------------------
Research & Development Agreement, Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
C O N F I D E N T I A L
-17-
Mono-Cassette * Acceptance and payment when * have passed
* according to Mono-Cassette Specs (Attachment *
MFG 3) and functional test assay specs (Manufacturing Transfer Payment
(Attachment 8). Availability of * according to Section 4.4. of the
Mono-Cassette in quantities according to License Agreement)
forecast made by Roche.
* Acceptance and payment when series *
Mono-Cassette have passed functional test (Manufacturing Transfer Payment
according to Mono-Cassette Specifications according to Section 4.4. of the
(Attachment 3 and 1b, 8). License Agreement)
----------------------------------------------------------------------------------------------------------------------
* including
operating
/synthesis
software * Delivery of * and * to CBMX from * according
to specifications. (OldLic&Supply)
*
Acceptance of * and * according to
Specifications (Attachment 4 and 8). Delivery
* of * and * (* in *, * in *) *
(Manufacturing Transfer Payment
Final Specifications for * Instrument according to Section 4.4. of the
available - mutual agreed. Production License Agreement)
manufacturer identified.
*
Availability of * instrument and accepted by
Roche according to * Specifications
* * if not manufactured by RDG
----------------------------------------------------------------------------------------------------------------------
Probe Design
and layout
software * Delivery of *according to Probe Design *
Software Specifications and accepted by Roche (Manufacturing Transfer Payment
according to Specifications. according to Section 4.4. of the
License Agreement)
----------------------------------------------------------------------------------------------------------------------
Research & Development Agreement, Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
C O N F I D E N T I A L
-18-
Data Extraction
Software Delivery of * according to Data Extraction
Additional * Software Specifications (Attachment 6) and
* (invoice * payment in *)
accepted by Roche according to Specifications.
* Delivery of * according to Specifications and
acceptance by Roche according to
Specifications.
----------------------------------------------------------------------------------------------------------------------
* System * Acceptance of Roche of the * System according
to functional test and System Specifications. *
(Attachment 1b and 8)
----------------------------------------------------------------------------------------------------------------------
Desk Top * Milestones and * Specifications will be
Synthesizer decided in the Steering Committee.
Including *
synthesis Expected development time from architectural
software and drawings to launch are *
reagents
Project 3 from
July 1st 2001
R&D
----------------------------------------------------------------------------------------------------------------------
B
* System and other development projects
--------------------------------------------------------------------------------------------------------------
* Project 5 * Milestones and Specifications will be decided in the Steering
Committee. *
--------------------------------------------------------------------------------------------------------------
* * Milestones and Specifications will be decided in the Steering
Project 5 Committee. *
--------------------------------------------------------------------------------------------------------------
* * Milestones and Specifications will be decided in the Steering *
Project 2 from Committee.
July 1st 2001
R&D
--------------------------------------------------------------------------------------------------------------
Research & Development Agreement, Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
C O N F I D E N T I A L
-19-
ANNEX II
SPECIFICATIONS
ATTACHEMENTS 1 - 9
------------------------------------------------------------------------------------------------------------------
Titel File Responsible
------------------------------------------------------------------------------------------------------------------
Attachment 1a Hybridizer/ Reader see attached *
Specifications
------------------------------------------------------------------------------------------------------------------
Attachment 1b System Specifications see attached *
------------------------------------------------------------------------------------------------------------------
Attachment 2 Flowcell specifications see attached *
------------------------------------------------------------------------------------------------------------------
Attachment 3 Mono-Cassette see attached *
specifications
------------------------------------------------------------------------------------------------------------------
Attachment 4a * Spec see attached *
------------------------------------------------------------------------------------------------------------------
Attachment 4b * spec see attached *
Final version in *
------------------------------------------------------------------------------------------------------------------
Attachment 5 Probe Design Software SRD see attached *
------------------------------------------------------------------------------------------------------------------
Attachment 6 Data Extraction Software see attached *
(and Run software)
------------------------------------------------------------------------------------------------------------------
Attachment 7 Project 4 see attached *
------------------------------------------------------------------------------------------------------------------
Attachment 8 Functional Test for * see attached *
maybe adopted according to Final version *
development status/
mutually agreed)
------------------------------------------------------------------------------------------------------------------
Attachment 9 Mono-Cassette/ Flowcell see attached *
forecast
------------------------------------------------------------------------------------------------------------------
Research & Development Agreement, Combimatrix September 25th 2002
* Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote commissions.
