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EXHIBIT 10.14
COLLABORATION AGREEMENT
This Collaboration Agreement ("Agreement") dated as of the 25th day of
April, 1998 between SOANE BIOSCIENCES, INC., 0000 Xxxxx Xxx, Xxxxxxx, Xxxxxxxxxx
00000-0000 (hereinafter "SBio") and THE XXXXXX-XXXXX CORPORATION, having its PE
Applied Biosystems Division at 000 Xxxxxxx Xxxxxx Xxxxx, Xxxxxx Xxxx, XX 00000
(hereinafter "Xxxxxx-Xxxxx").
WHEREAS, SBio has proprietary technology and know-how with respect to
microfluidic electrophoresis devices; and
WHEREAS, SBio has certain skills and know-how related to the manufacture
of such devices; and
WHEREAS, Xxxxxx-Xxxxx has certain skills and know-how related to genetic
analysis systems utilizing electrophoresis, and the marketing, sales and
support of products incorporating such systems; and
WHEREAS, SBio and Xxxxxx-Xxxxx desire to enter into a collaboration with
the objective of developing genetic analysis systems incorporating such
microfluidic electrophoresis devices; and
WHEREAS, both Parties recognize that each has rights to pre-existing
intellectual properties which may directly or indirectly contribute to the
commercialization of such genetic analysis systems and understand that in the
process of developing the genetic analysis systems contemplated by the
collaboration, both parties will reveal to each other relevant intellectual
property that existed prior to the effective date of the collaboration under
appropriate confidentiality and nondisclosure provisions, irrespective of
whether the intellectual property is an issued patent, a pending patent
application, a trade secret, know-how or otherwise; and
WHEREAS, SBio desires to manufacture such microfluidic electrophoresis
devices and supply Perkin-Elmer's requirements therefor; and
WHEREAS, SBio is willing to grant exclusive rights to Xxxxxx-Xxxxx to make
and sell genetic analysis systems; and
WHEREAS, SBio is willing to grant co-exclusive rights to Xxxxxx-Xxxxx to
use such genetic analysis systems; and
WHEREAS, the Parties have entered into a certain Series E Redeemable
Preferred Stock Purchase Agreement at a later date (the "Equity Agreement").
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NOW THEREFORE, in considerations of the mutual covenants and promises
contained in this Agreement, the parties agree as follows:
1. DEFINITIONS
1.1. "Affiliates" will mean any corporation, firm, partnership or other
entity, whether de jure or de facto, which directly or indirectly
owns, is owned by or is under common ownership with a Party to this
Agreement, as the case may be, to the extent of at least fifty
percent of the equity (or such lesser percentage which is the maximum
allowed to be owned by a foreign corporation in a particular
jurisdiction) having the power to vote on or direct the affairs of
the entity.
1.2. "Intellectual Property Rights" will mean all intellectual property
rights worldwide arising under statutory or common law, and whether
or not perfected, including, without limitation, all (1) patents,
patent applications and patent rights; (2) rights associated with
works of authorship including copyrights, copyright applications,
copyright registrations, mask works, mask work applications, mask
work registrations; (3) rights relating to the protection of trade
secrets and confidential information, (4) any right analogous to
those set forth in this definition and any other proprietary rights
relating to intangible property (other than trademark, trade dress,
or service xxxx rights); and (5) divisions, continuations, renewals,
reissues, continuing prosecution, and extensions of the foregoing (as
and to the extent applicable) now existing, hereafter filed, issue or
acquired.
1.3. "Pre-Collaboration SBio Intellectual Property" will mean all
Intellectual Property Rights relating to Microfluidic Eletrophoresis
Devices that are owned by, either partially or wholly, or licensed
to, SBio as of the Effective Date. In particular, Pre-Collaboration
SBio Intellectual Property will include U.S. Patent No. 5,126,022 and
any Related Patents.
1.4. "Collaboration SBio Intellectual Property" will mean all Intellectual
Property Rights arising out of work performed pursuant to the
obligations of this Agreement, conceived and/or reduced to practice
during the Contact Period solely by one or more employees or agents
of SBio.
1.5. "Collaboration Joint Intellectual Property" will mean all
Intellectual Property Rights arising out of work performed pursuant
to the obligations of this Agreement, which is jointly conceived and/
or reduced to practice during the Contract Period by one or more
employees or agents of SBio, and by one or more employees or agents
of Xxxxxx-Xxxxx.
1.6. "Collaboration Xxxxxx-Xxxxx Intellectual Property" will mean all
Intellectual Property Rights arising out of work performed pursuant
to the
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obligations of this Agreement, conceived and/or reduced to practice
during the Contract Period solely by one or more employees or agents
of Xxxxxx-Xxxxx.
1.7. "Contract Period" or "Contract Term" will mean the term beginning on
the Effective Date and ending on the date of termination.
1.8. "Effective Date" will mean the date of this Agreement first written
above or such later date as the Parties will determine by mutual
agreement.
1.9. "Net Sales" will mean (1) with respect to sales by a Party, or an
Affiliate of a Party, or a distributor of a Party to non-affiliated
third party purchasers, the actual amount of gross sales of Licensed
Product(s) to a third party, less: trade, cash and quantity discounts
granted at the time invoice, if any, actually allowed, amounts
refunded for faulty or defective product, returns, rejections,
freight, insurance and other transportation costs (except income
taxes), tariffs, duties and similar governmental charges paid, to the
extent included in gross sales price, (2) with respect to sales by a
Party made to any Affiliate or to any person, firm or corporation
enjoying a special course of dealing with a Party, the Net Sales will
be determined based on the first resale in a bona fide arms-length
transaction of Licensed Product(s) by such Affiliate, person, firm or
corporation to third parties, and (3) with respect to Licensed
Product(s) which are used by a Party, or an Affiliate of a Party, to
supply services or information to a third party for commercial
purposes, or are otherwise disposed of, the Net Sales shall be
determined as if such Licensed Product(s) has been sold at the
average Net Sales for such Licensed Product(s) during the past one
hundred and twenty days.
1.10. "Party" will mean SBio or Xxxxxx-Xxxxx and, when used in the plural,
will mean SBio and Xxxxxx-Xxxxx.
1.11. "Licensed Patent" will mean any patent or patent application claiming
or disclosing Pre-Collaboration SBio Intellectual Property,
Collaboration SBio Intellectual Property, and/or Collaboration Joint
Intellectual Property, including any Related Patents.
1.12. "Licensed Product" will mean any product for use in the Licensed
Field which, but for the license granted hereunder, manufacture, use
or sale thereof would infringe at least one Valid Claim of a Licensed
Patent.
1.13. "Valid Claim" will mean a claim of a patent which has not been held
invalid or otherwise unenforceable by a court of competent
jurisdiction or has not otherwise finally been held unpatentable by
an appropriate.
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administrative agency.
1.14. "Prosecute" will mean, in the context of prosecuting pending Patent
Applications, taking necessary actions, including conducting
oppositions and interferences, to perfect the patent rights to an
invention.
1.15. "Genetic Analysis Field" will mean any method comprising an
analysis of nucleic acids [*].
1.16. "Licensed Field" means the Genetic Analysis Field.
1.17. "Microfluidic Electrophoresis Device" will mean a device [*], glass
or plastic, which, but for the license granted hereunder,
manufacture, use or sale thereof would infringe at least one Valid
Claim of a Licensed Patent.
1.18. "Genetic Analysis Systems" will mean instrument systems for
performing Genetic Analysis which utilize a Microfluidic
Electrophoresis Device.
1.19. "Related Patent" will mean a patent or patent application which
(1) discloses and/or claims substantially the same subject matter
as a Licensed Patent, (2) discloses and/or claims improvements to
inventions disclosed or claimed in a Licensed Patent and requires
rights under the Licensed Patent to exploit such improvements,
and/or (3) claims priority to a Licensed Patent, including but not
limited to continuation applications and patents,
continuation-in-part applications and patents, divisional
applications and patents, reexamination applications and patents,
reissue applications and patents, and continuing prosecution
applications and patents, and (4) any foreign equivalents of
Licensed Patents.
1.20. "Start Development Checkpoint" will mean that point in a project at
which a report is produced which documents that the following
parameters have been established with respect to a Licensed
Product(s): [*].
1.21. "Technology Access Partners" will mean third parties who receive
early access to Genetic Analysis Systems and Microfluidic
Electrophoresis Devices developed under the Work Plan for their
internal use only, pursuant to a Technology Access Agreement.
1.22. "Technology Access Agreement" will mean an agreement between one or
both Parties and a Technology Access Partner defining the terms and
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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conditions under which the Technology Access Partner receives early
access to Genetic Analysis Systems and Microfluidic Electrophoresis
Devices.
1.23. "Confidential Information" will include confidential knowledge,
know-how, practices, processes, equipment or information which (1)
is obtained or generated during the course of this work and (2) is
related thereto and, except for generated information (3) is
identified at the time of disclosure as "CONFIDENTIAL" and, in the
case of disclosures in non-written form, is identified in writing
within thirty days as confidential. Notwithstanding the above,
Confidential Information will not include, and nothing in Section 6
will in any way restrict the rights of either SBio or Xxxxxx-Xxxxx
to use, disclose or otherwise deal with, any information which:
(a) can be demonstrated to have been in the public domain
as of the Effective Date or comes into the public domain during the
term of this Agreement through no act of the recipient; or
(b) can be demonstrated to have been independently known to
the recipient prior to the receipt thereof, or made available to
the recipient as a matter of lawful right by a third party; or
(c) can be demonstrated to have been rightfully received by
the recipient from a third party who did not require the recipient
to hold it in confidence or limit its use and who did not acquire
it, directly or indirectly, from the other Party to this Agreement
under a continuing obligation of confidentiality; or
(d) will be required for disclosure to any governmental
regulatory agencies pursuant to approval for use; or
(e) is independently conceived, invented or acquired by
researchers of the recipient who have not been personally exposed
to the information provided to the recipient hereunder; or
(f) is published by a governmental agency as part of the
normal patent filing and prosecution process.
2. FEASIBILITY PHASE
2.1 Purpose. During the "Feasibility Phase" the Parties will work both
jointly and independently to establish the technical and commercial
feasibility of all proposed Licensed Product(s). All proposed
Licensed Product(s), whether under this Agreement or otherwise,
must be approved by the Joint Steering Committee per Section 4. The
Feasibility Phase of a project will
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continue until a Start Development Checkpoint has been achieved for
that product.
2.2 Work Plan. Feasibility of Licensed Product(s) will be established by
the Parties in accordance with a Work Plan. The Work Plan will set
forth a plan of action to achieve a Start Development Checkpoint. The
Work Plan will be defined and modified as required from time to time
by the Joint Steering Committee.
2.3 Commitment of Resources. Each Party will commit at least [*] over a
period of four years to the execution of the Work Plan.
2.4 Feasibility Teams. Each Party will assign personnel to its feasibility
team with the appropriate skills and experience to accomplish the work
established in the Work Plan. It is expected that such teams will work
together to accomplish the objective of the collaboration including,
if appropriate, conducting efforts at the same facility.
2.5 Technology Access Program. Funding for the Work Plan may be obtained
through Technology Access Agreements between one or both Parties and a
Technology Access Partner. A Technology Access Agreement must be
mutually agreed to by the Parties. Neither Party will enter into a
Technology Access Agreement without the prior written consent of the
other Party. However, terms and conditions relating directly to the
purchase of equity in SBio will be at the sole discretion of SBio.
3. COMMERCIALIZATION PHASE
3.1 Purpose. The purpose of this phase of the collaboration is the
facilitation of a cost effective manufacturing program for Licensed
Product(s) and the development and implementation of a plan for the
marketing, sales and support of Licensed Product(s). This
"Commercialization Phase" with respect to each Licensed Product, will
commence upon reaching a Start Development Checkpoint for the Licensed
Product.
3.2 Marketing, Sales and Support. In order to effectively market Licensed
Product(s) the Parties agree that:
3.2.1. Licensed Product(s) will be exclusively marketed, sold and
supported (including customer training and application
support of customers) through the sales and service
organization of Xxxxxx-Xxxxx, its Affiliates and
distributors, in accordance with a marketing plan to be
developed by Xxxxxx-Xxxxx.
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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3.2.2. Xxxxxx-Xxxxx will be responsible for all expenses
related to the marketing, sales and support of Licensed
Product(s); and
3.2.3. Xxxxxx-Xxxxx will include appropriate statements in its
marketing literature concerning Licensed Product(s) to
indicate that such Licensed Product(s) is being
manufactured under a license from SBio.
3.3 Sale and Purchase. Subject to the terms and conditions of this
Agreement, SBio will sell to Xxxxxx-Xxxxx and Xxxxxx-Xxxxx will
purchase from SBio units of the Microfluidic Electrophoresis
Devices.
3.3.1. Supply Agreement. Upon the Parties reaching a
Start Development Checkpoint, the Parties will
develop and enter into a supply agreement which,
consistent with this Agreement, will govern the
purchase and sale of Microfluidic
Electrophoresis Devices by SBio to Xxxxxx-Xxxxx.
Such supply agreement will contain provisions
which, in addition to customary warranty,
representations and indemnification provisions,
will (1) set forth a commercially reasonable
plan for SBio to supply Microfluidic
Electrophoresis Devices to Xxxxxx-Xxxxx in
satisfaction of Perkin-Elmer's requirements as
to volume, cost, physical specifications,
regulatory requirements and schedule, and (2)
obligate SBio to provide technical support to
Xxxxxx-Xxxxx (but not directly to Perkin-Elmer's
customers). Reasonable minimum purchase
quantities will be negotiated between the
Parties in good faith.
3.3.1.1. Transfer Price. The transfer price of
the Microfluidic Electrophoresis
Devices will be determined before their
development by the Joint Steering
Committee. In the event a price change
of a Microfluidic Electrophoresis
Device becomes necessary for any
reason, such as a model change, a major
change of the competitive situation
with respect to price performance or
any other reasonable cause, the Parties
will, in good faith, negotiate,
primarily through the Joint Steering
Committee, to establish a reasonable
transfer price.
3.3.2. SBio Unwilling or Unable to Supply Microfluidic
Electrophoresis Devices to Xxxxxx-Xxxxx. If SBio
is unable or unwilling to supply Microfluidic
Electrophoresis Devices to Xxxxxx-Xxxxx in
accordance with Section 3.3.1, such Microfluidic
Electrophoresis Devices will be made by
Xxxxxx-Xxxxx or its designate and SBio will
receive a share of Net Sales of such
Microfluidic Electrophoresis Devices as set
forth in Section 3.3.2.1 below, provided,
however, that SBio will
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have [*] following notice by Xxxxxx-Xxxxx, to
remedy any cause for non-compliance with the
requirements of Section 3.3.1.
3.3.2.1. Share of Net Sales. Where SBio is not
the supplier of Microfluidic
Electrophoresis Devices as provided in
Section 3.3.2, Xxxxxx-Xxxxx will pay
SBio a revenue share of [*] of Net
Sales of Microfluidic Electrophoresis
Devices sold by Xxxxxx-Xxxxx, its
Affiliates, distributors and
sublicensees. Following
commercialization of Licensed
Product(s), after the end of each
fiscal month, Xxxxxx-Xxxxx will provide
SBio with a report of the estimated Net
Sales of Microfluidic Electrophoresis
Devices sold during the previous month,
including information concerning total
units sold during the month. Based upon
this report, Xxxxxx-Xxxxx will submit
payment of an estimated revenue share
to SBio within thirty days after the
end of each month. Within sixty days
after the end of each fiscal quarter,
Xxxxxx-Xxxxx will provide SBio with a
report of actual Net Sales of
Microfluidic Electrophoresis Devices
for that fiscal quarter and shall
compute an actual revenue share owed by
Xxxxxx-Xxxxx to SBio. Payment of such
actual revenue share will accompany
this report. In the event that there is
a difference between the estimated Net
Sales and the actual Net Sales of
Microfluidic Electrophoresis Devices,
for a given fiscal quarter, the Parties
will make an adjustment to the actual
revenue share to reflect this
difference.
3.3.3. Payments. All payments under this Section 3.3
shall be made in United States dollars by wire
transfer to a bank account designated by SBio in
full, without deductions of taxes charges and
any other duties that may be imposed. For
converting payments due on sales made in
currencies other than United States dollars into
United States dollars, Xxxxxx-Xxxxx will convert
such payments at the closing commercial sell
rate of exchange for United States dollars and
each currency involved as quoted by Citibank,
N.A., or any successor thereto, in New York on
the last business day of the relevant period.
3.4. Xxxxxx-Xxxxx Contributes to Manufacture of Microfluidic
Electrophoresis Device. In the event that the manufacture of
Microfluidic Electrophoresis Devices requires the participation
of Xxxxxx-Xxxxx, the Parties will negotiate the terms of such
participation in good faith.
3.5. Provision of Genetic Analysis Systems to SBio.
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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3.5.1. Xxxxxx-Xxxxx will provide prototype Genetic Analysis Systems
to SBio at Perkin-Elmer's internal transfer cost, for SBio's
internal use only, as such systems become available. The
number of systems so provided will be determined by the
Parties.
4. JOINT STEERING COMMITTEE
4.1. Purpose. A Joint Steering Committee will be established to oversee the
collaboration throughout the term of this Agreement. The purpose of
the Joint Steering Committee will be:
(a) to oversee all aspects of the collaboration, including
development and implementation of the Work Plan, manufacturing
(supply), marketing, sales, and support of Licensed Product(s);
(b) to review and evaluate progress under the Work Plan with
respect to the development of Licensed Product(s), including annual
budgets;
(c) to recommend and ensure implementation of changes to the
Work Plan as appropriate; and
(d) to organize the Feasibility Team(s) and oversee and direct
their activities.
4.2. Membership. The Joint Steering Committee will be comprised of four
employees each from SBio and Xxxxxx-Xxxxx, appointed at the sole
discretion of the respective Parties. Substitute employees may be
appointed at any time. The Joint Steering Committee will be chaired in
the first year by a senior representative from SBio, and thereafter on
a rotating annual basis, by a senior representative from SBio or
Xxxxxx-Xxxxx.
4.3. Meetings. The Joint Steering Committee will meet as often as is
reasonably necessary to accomplish its purpose but at least quarterly,
on a mutually agreeable date and at a place selected initially by SBio
and then by each party in turn thereafter. Representatives of SBio or
Xxxxxx-Xxxxx, or both, in addition to members of the Joint Steering
Committee, may attend such meetings at the invitation of either Party.
4.4. Joint Steering Committee Decisions and Dispute Resolution. Decisions
regarding Development and Commercialization of Licensed Product(s)
will be made by consensus. If the Joint Steering Committee is unable
to reach agreement, within ten days the matter will be submitted for
resolution to the President of SBio and the President of the PE
Applied
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Biosystems Division of Xxxxxx-Xxxxx. In the event that the Presidents
for each Party cannot reach agreement within ten days after receiving
notice from the Joint Steering Committee, which period may be extended
by mutual agreement of the Parties, then either Party may initiate
arbitration in accordance with this section under the rules of the
American Arbitration Association then in effect. A Party will notify
the other in writing should it intend to arbitrate. The Parties will
select, by mutual agreement, a neutral expert from the National Panel
of Arbitrators of the AAA, within thirty days after receipt of such
notice. Should no arbitrator be chosen within the above period, the
AAA will appoint the arbitrator within thirty days after the end of
such period. The laws of the State of California will apply to the
arbitration proceedings. The decision of the arbitrators with respect
to this agreement will be final and binding on the Parties and their
legal successors.
4.5 Expenses. The Parties shall each bear all expenses of their respective
members related to their participation on the Joint Steering
Committee.
5. INTELLECTUAL PROPERTY; PATENT PROSECUTION AND LITIGATION; LICENSES
5.1. Ownership of Intellectual Property
5.1.1. Pre-Collaboration SBio Intellectual Property and Collaboration
SBio Intellectual Property. All rights and title to
Pre-Collaboration SBio Intellectual Property and Collaboration
SBio Intellectual Property, whether patentable or copyrighted
or not, will belong to SBio and will be subject to the terms
and conditions of this Agreement.
5.1.2. Collaboration Joint Intellectual Property. All rights and title
to Collaboration Joint Intellectual Property, whether
patentable or copyrightable or not, will belong jointly to
Xxxxxx-Xxxxx and SBio and will be subject to the terms and
conditions of this Agreement.
5.1.3. Collaboration Xxxxxx-Xxxxx Intellectual Property. All rights
and title to Collaboration Xxxxxx-Xxxxx Intellectual Property,
whether patentable or copyrightable or not, will belong to
Xxxxxx-Xxxxx. Such Xxxxxx-Xxxxx Intellectual Property will be
subject to the terms and conditions of this Agreement.
5.2. Invention Disclosures. SBio and Xxxxxx-Xxxxx agree to use reasonable
efforts to report inventions conceived and/or reduced to practice that
are within the scope of the collaboration intellectual property
described in Sections 1.3, 1.4, 1.5 and 1.6 within thirty days of
their identification
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thereof.
5.3 Filing of Patent Applications.
5.3.1. Collaboration SBio Intellectual Property. SBio will have the
first right, using in-house or outside legal counsel selected
by SBio's sole discretion, to prepare, file, Prosecute,
maintain and extend patent applications for Collaboration SBio
Intellectual Property in countries of SBio's choosing, and SBio
will bear all costs relating to such activities which occur at
SBio's request or direction. SBio will solicit Perkin-Elmer's
advice and review of SBio applications relating to Licensed
Product(s) and take into consideration Perkin-Elmer's advice
thereon. If SBio elects not to prepare, file, Prosecute or
maintain certain of such patent applications or certain claims
encompassed within such applications, in one or more countries,
SBio will give Xxxxxx-Xxxxx notice thereof within a reasonable
period prior to allowing such patents or claims to lapse or
become abandoned or unenforceable, and Xxxxxx-Xxxxx will
thereafter have the right, at its sole expense, to prepare,
file, Prosecute, and maintain such applications in its own name
in such one or more countries. SBio will, at SBio's expense,
provide reasonable assistance to Xxxxxx-Xxxxx to facilitate the
filing and prosecution of all such applications and will
execute all documents deemed necessary or desirable therefor.
Xxxxxx-Xxxxx and SBio will each hold all information it
presently knows or acquires under this Section as confidential
information in accordance with Section 6.
5.3.2. Collaboration Xxxxxx-Xxxxx Intellectual Property. Xxxxxx-Xxxxx
will have the first right, using in-house or outside legal
counsel selected by Perkin-Elmer's sole discretion, to prepare,
file, Prosecute, maintain and extend patent applications for
Collaboration Xxxxxx-Xxxxx Intellectual Property in countries
of Perkin-Elmer's choosing, and Xxxxxx-Xxxxx will bear all
costs relating to such activities which occur at Perkin-Elmer's
request or direction. Xxxxxx-Xxxxx will solicit SBio's advice
and review of Perkin-Elmer's applications relating to Licensed
Product(s) and take into consideration SBio's advice thereon.
If Xxxxxx-Xxxxx elects not to prepare, file, Prosecute or
maintain certain of such patent applications or certain claims
encompassed within such applications, in one or more countries,
Xxxxxx-Xxxxx will give SBio notice thereof within a reasonable
period prior to allowing such patents or claims to lapse or
become abandoned or unenforceable, and SBio will thereafter
have the right, at its sole expense, to prepare, file,
Prosecute, and maintain such applications
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in its own name in such one or more countries. Xxxxxx-Xxxxx
will, at Perkin-Elmer's expense, provide reasonable
assistance to SBio to facilitate the filing and prosecution
of all such applications and will execute all documents
deemed necessary or desirable therefor. Xxxxxx-Xxxxx and SBio
will each hold all information it presently knows or acquires
under this Section as confidential information in accordance
with Section 6.
5.3.3. Collaboration Joint Intellectual Property. With respect to
Collaboration Joint Intellectual Property, Xxxxxx-Xxxxx and
SBio will jointly determine the advisability of filing a
patent application or application for other intellectual
property thereon. The Joint Steering Committee, as
appropriate, will appoint one of the Parties the
responsibility to prepare, file, Prosecute diligently and
maintain such application(s). The Parties will share equally
all reasonable costs incurred in connection with such
activities (the non-prosecuting Party will promptly reimburse
the prosecuting Party); provided that either Party may avoid
its responsibility for such costs by assigning its rights in
such Collaboration Joint Intellectual Property to the other
Party. If either Party assigns to the other its rights in
such Collaboration Joint Intellectual Property as set forth
above, the other Party will be free to decide, in its sole
discretion, whether or not to file or continue prosecution or
maintain any such application(s), and whether or not to
maintain any protection issuing thereon in the U.S. and in
any foreign country. Any such filing, prosecution or
maintenance will then be at the assignee's sole expense.
5.4. SBio's License of Intellectual Property to Xxxxxx-Xxxxx.
5.4.1. Exclusive License. SBio grants to Xxxxxx-Xxxxx an exclusive
license under Licensed Patents to make, have made, offer to
sell and sell Licensed Product(s) in the Licensed Field,
subject to SBio's rights set forth in Section 3.3 and the
exclusion of Section 5.4.3.
5.4.2. Co-Exclusive License. SBio grants to Xxxxxx-Xxxxx a
co-exclusive license under the Licensed Patents to use
Licensed Product(s) in the Licensed Field, including the
right to grant a sublicense to customers to use Licensed
Product(s), subject to the exclusion of Section 5.4.3.
5.4.3. [*] Exclusion From Licenses. The exclusive license
granted in Section 5.4.1 and the co-exclusive license granted
in Section
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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5.4.2 expressly exclude the sale of Licensed Product(s)
[*].
5.4.4. Grantback from Perking-Xxxxx to SBio. In the event that the
Joint Steering Committee decides, pursuant to Section 2.1,
that SBio will independently develop Licensed Product(s)
outside of a Workplan, Xxxxxx-Xxxxx grants to SBio a
non-exclusive license under Licensed Patents to make, have
made, offer to sell and sell such independently-developed
Licensed Product(s) in the Licensed Field.
5.5. PATENT LITIGATION.
5.1.1. In the event of the institution of any suit by a third party
against SBio or Xxxxxx-Xxxxx alleging that the manufacture,
use, sale, distribution or marketing of Licensed Product(s)
infringes a third party patent, the Party sued will promptly
notify the other Party in writing. The other Party will have
the right but not the obligation to defend or participate in
the defense of such suit at its own expense. SBio and
Xxxxxx-Xxxxx will assist one another and cooperate in any
such litigation at the other's reasonable request without
expense to the requesting Party. The Party conducting such
action will have full control over its conduct, including
settlement thereof provided such settlement will not be made
without the prior written consent of the other Party if it
would adversely affect the rights of the other Party, such
consent not to be unreasonably withheld or delayed.
5.5.2. In the event that SBio or Xxxxxx-Xxxxx becomes aware of
actual or threatened infringement of a patent resulting from
Collaboration SBio Intellectual Property, Collaboration
Xxxxxx-Xxxxx Intellectual Property, or Collaboration Joint
Intellectual Property, that Party will promptly notify the
other Party in writing. Either owner of a patent resulting
from such intellectual property will have the first right
but not the obligation to bring, at its own expense, an
infringement action against any third party and to use the
other Party's name in connection therewith. If an owner of
the patent does not commence a particular infringement
action within ninety (90) days, the other Party, after
notifying the owner in writing, will be entitled to bring
such infringement action at its own expense. The Party
conducting such action will have full control over its
conduct, including settlement thereof provided such
settlement will not be made without the prior written
consent of the other Party if it would adversely affect the
rights of the other Party, such consent not to be
unreasonably withheld or delayed. In any event, SBio and
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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Xxxxxx-Xxxxx will assist one another and cooperate in any
such litigation at the other's reasonable request
without expense to the requesting Party.
5.5.3 SBio and Xxxxxx-Xxxxx have the right to recover their
respective actual out-of-pocket expenses, or equitable
proportions thereof, associated with any litigation or
settlement thereof from any recovery made by any Party. Any
excess amount will be shared between Xxxxxx-Xxxxx and SBio
in an amount proportional to their respective expenses.
5.5.4 The Parties must keep one another reasonably informed of the
status of their respective activities regarding any such
litigation or settlement thereof.
5.6 Effect of Bankruptcy. All rights and licenses granted under or
pursuant to this Agreement by one Party to the other Party are, and
will irrevocably be deemed to be, "intellectual property" as defined
in Section 101(56) of the Bankruptcy Code. In the event of the
Commencement of a case by or against either Party under any Chapter of
the Bankruptcy Code, this Agreement will be deemed an executory
contract and all rights and obligations hereunder will be determined
in accordance with Section 365(n) thereof.
5.7 Trademarks and Non-Proprietary Names
5.7.1. Xxxxxx-Xxxxx, at its expense, will be responsible for the
selection, registration and maintenance of all trademarks
which it employs in connection with Licensed Product(s),
except for Microfluidic Electrophoresis Devices, and will
own and control such trademarks. Nothing in this Agreement
will be construed as a grant of rights, by license or
otherwise, to SBio to use such trademarks for any purpose
other than co-promotion as provided in this Agreement.
5.7.2. Xxxxxx-Xxxxx, at its expense, will be responsible for the
selection of non-proprietary names for Licensed Product(s)
sold by Xxxxxx-Xxxxx.
5.7.3 SBio, at its expense, will be responsible for the selection,
registration and maintenance of all trademarks that it
employs in connection with Microfluidic Electrophoresis
Devices, and will own and control such trademarks. Nothing
in this agreement will be construed as a grant of rights, by
license or otherwise, to Perkin-
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Xxxxx to use such trademarks for any purpose other than
co-promotion as provided in this Agreement.
6. CONFIDENTIALITY
6.1 Duties of Confidentiality. Because SBio and Xxxxxx-Xxxxx will be
cooperating with each other in this collaboration, each may reveal
Confidential Information to the other in the course of this program.
The Parties agree, by using the same degree of care as each uses for
information of like importance, but not less than a reasonable degree
of care (1) to hold in confidence any Confidential Information
disclosed by the other Party hereunder, and (2) not to disclose same
to any third party without the express written consent of the other,
or, except as may be required for purposes of advancing the
developing, manufacturing or marketing of Licensed Product(s), or to
carry out any litigation concerning the same, provided that each such
third party is informed of the confidentiality of such information and
that each said third party agrees to be bound to at least the same
degree of confidentiality as the Parties are bound under this
Agreement. This confidentiality requirement will remain in force for a
period of three years following termination of this Agreement.
6.2 Responsibility over Employees and Agents. Each of the Parties agrees
to assume individual responsibility for the actions and omissions of
its respective employees, agents and assigns in conjunction with this
research, and to inform same of the responsibilities for
confidentiality and disclosure under this Agreement, and to obtain
their Agreement to be bound in the same manner that the Party is
bound.
6.3 Affiliates. Nothing herein will be construed as preventing either
Party from disclosing any information to an Affiliate of Xxxxxx-Xxxxx
or SBio or to a sub-licensee, distributor or joint venture or other
associated company of either Party for the purpose of developing or
commercializing Licensed Product(s), provided such Affiliate,
sub-licensee, distributor or joint venture or other associated company
has undertaken a similar obligation of confidentiality with respect to
the Confidential Information.
6.4 Bankruptcy. All Confidential Information disclosed by one Party to the
other will remain the intellectual property of the disclosing Party.
In the event that a court or other legal or administrative tribunal,
directly or through an appointed master, trustee or receiver, assumes
partial or complete control over the assets of a Party to this
Agreement based on the insolvency or bankruptcy of such Party, the
bankrupt or insolvent Party will promptly notify the court or other
tribunal (1) that Confidential Information received from the other
Party under this Agreement remains
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the property of the other Party and (2) of the confidentiality
obligations under this Agreement. In addition, the bankrupt or
insolvent Party will, to the extent permitted by law, take all
steps necessary or desirable to maintain the confidentiality of
the other Party's Confidential Information and to ensure that
the court, other tribunal or appointed maintains such
information in confidence in accordance with the terms of this
Agreement.
6.5. Publication. Neither Xxxxxx-Xxxxx nor SBio will submit for
written or oral publication any manuscript, abstract or the like
which includes data or other information generated and provided
by the other Party or otherwise developed by either Party in the
performance of activities in furtherance of this Agreement
without first obtaining the prior written consent of the other
Party, which will not be unreasonably withheld, except that the
foregoing will not apply to the customary literature which is
prepared for marketing and sales purposes.
6.6. Publicity. Within thirty days following the Effective Date, the
Parties will agree on the form and language of a joint press
release related to this agreement.
6.7. Compliance with Statutory Requirements. For the avoidance of
doubt, nothing in this Agreement will be construed as
preventing or in any way inhibiting either Party from complying
with statutory and regulatory requirements governing the
development, manufacture, use and sale or other distribution of
products in any manner which it reasonably deems appropriate,
including, for example, by disclosing to regulatory authorities
Confidential Information or other information received from a
Party or third parties. The Parties will take reasonable
measures to assure that no unauthorized use or disclosure is
made by others to whom access to such information is granted.
7. REPRESENTATIONS, WARRANTIES AND COVENANTS
7.1. Each Party represents, warrants and covenants to the other
Party that:
7.1.1. it has the corporate power and authority and legal
right to enter into this Agreement and to perform its
obligations hereunder;
7.1.2. the execution and delivery of this Agreement and the
performance of the transactions contemplated thereby
have been duly authorized by all necessary corporate
action of such Party;
7.1.3. the execution and delivery of this Agreement and the
performance by such Party of any of its obligations
under this Agreement do not and will not (1) conflict
with, or constitute a breach or violation of,
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any other contractual obligation to which it is a
party, any judgment of any court or governmental body
applicable to such Party or its properties or, to such
Party's knowledge, any statute, decree, order, rule or
regulation of any court or governmental agency or body
applicable to such Party or its properties, and (2)
with respect to the execution and delivery of the
Agreement, require any consent or approval of any
governmental authority or other person;
7.1.4. each Party will to the best of its knowledge without
undertaking a special investigation, disclose to the
other Party any material adverse proceedings, claims or
actions that arise, relating to their technology which
would materially interfere with that Party's
performance of its obligations under this Agreement;
7.1.5. each Party's employees have executed or will execute
agreements whereby all right, title and interest in any
technology and invention(s) will be assigned to their
respective employers.
8. INDEMNIFICATION
8.1. Xxxxxx-Xxxxx Indemnification of SBio. Xxxxxx-Xxxxx will defend,
indemnify and hold harmless SBio, Affiliates of SBio, and their
respective directors, officers, shareholders in their capacity
as shareholders, agents and employees, from and against any and
all liability, loss, damages and expenses (including attorneys'
fees) as the result of claims, demands, costs or judgments
which may be made or instituted against any of them by a third
party arising out of (1) the untruth, inaccuracy, breach, or
nonfulfillment of any representation or warranty or any
covenant or agreement of Xxxxxx-Xxxxx contained in or made
pursuant to this Agreement or (2) the manufacture,
distribution, sale or other disposition by or through
Xxxxxx-Xxxxx or its Affiliates of Licensed Product(s) or part
thereof. Perkin-Elmer's obligation to defend, indemnify and
hold harmless will include claims, demands, costs or judgments,
whether for money damages or equitable relief by reason of
alleged personal injury (including death) to any person or
alleged property damage, provided, however, the indemnity will
not extend to any claims against an indemnified Party which
results (i) from the negligence or willful misconduct of such
indemnified Party, or (ii) a claim of patent infringement.
Xxxxxx-Xxxxx will have the exclusive right to control the
defense of any action which is to be indemnified in whole by
Xxxxxx-Xxxxx hereunder, including the right to select counsel
acceptable to SBio to defend SBio and to settle any claim,
provided that, without the written consent of SBio (which will
not be unreasonably withheld or delayed), Xxxxxx-Xxxxx will not
agree to settle any claim against SBio to the extent such claim
has a material
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adverse effect on SBio. The provisions of this Section will survive
and remain in full force and effect after any termination,
expiration or cancellation of this Agreement and Perkin-Elmer's
obligations hereunder will apply whether or not such claims are
rightfully brought.
8.2. SBio Indemnification of Xxxxxx-Xxxxx. SBio will defend, indemnify
and hold harmless Xxxxxx-Xxxxx, Affiliates of Xxxxxx-Xxxxx and
their respective directors, officers, shareholders in their
capacity as shareholders, agents and employees, from and against
any and all liability, loss, damages and expenses (including
attorneys' fees) as the result of claims, demands, costs or
judgments which may be made or instituted against any of them by a
third party arising out of (1) the untruth, inaccuracy, breach, or
nonfulfillment of any representation or warranty or any covenant or
agreement of SBio contained in or made pursuant to this Agreement
or (2) the manufacture by or through SBio or its Affiliates of any
Licensed Product(s) or part thereof. SBio's obligation to defend,
indemnify and hold harmless will include claims, demands, costs or
judgments, whether for money damages or equitable relief by reason
of alleged personal injury (including death) to any person or
alleged property damage, provided, however, the indemnity will not
extend to any claims against an indemnified Party which results (i)
from the negligence or willful misconduct of such indemnified
Party, or (ii) a claim of patent infringement, or (iii) where such
claims result from a modification of Licensed Product(s) by
Xxxxxx-Xxxxx which was not approved by SBio. SBio will have the
exclusive right to control the defense of any action which is to be
indemnified in whole by SBio hereunder, including the right to
select counsel acceptable to Xxxxxx-Xxxxx to defend Xxxxxx-Xxxxx and
to settle any claim, provided that, with the written consent of
Xxxxxx-Xxxxx (which will not be unreasonably withheld or delayed),
SBio will not agree to settle any claim against Xxxxxx-Xxxxx to the
extent such claim has a material adverse effect on Xxxxxx-Xxxxx. The
provisions of this Section will survive and remain in full force and
effect after any termination, expiration or cancellation of this
Agreement and SBio's obligations hereunder will apply whether or not
such claims are rightfully brought.
8.3. Notice; Choice of Attorney. A Party that intends to claim
indemnification under this Section 8 (the "Indemnitee") will
promptly notify the other Party (the "Indemnitor") of any loss,
claim, damage, liability or action in respect of which the
Indemnitee intends to claim such indemnification, and the
Indemnitor, after it determines that indemnification is required of
it, will assume the defense thereof with counsel mutually
satisfactory to the Parties; provided, however, that an Indemnitee
will have the right to retain its own counsel, with the fees and
expenses to be paid by the Indemnitor if Indemnitor does not assume
the defense; or, if representation of such Indemnitee by the
counsel retained by the Indemnitor would be
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inappropriate due to actual or potential differing interests
between such Indemnitee and any other Party represented by such
counsel in such proceedings. The failure to deliver notice to the
Indemnitor within a reasonable time after the commencement of any
such action, if prejudicial to its ability to defend such action,
will relieve such Indemnitor of any liability to the Indemnitee
under this Section 8, but the omission so to deliver notice to the
Indemnitor will not relieve it of any liability that it may have to
any Indemnitee otherwise than under this Section 8.
8.4. Consent Required. The indemnity agreement in this Section 8 will
not apply to amounts paid in settlement of any loss, claim, damage,
liability or action if such settlement is effected without the
consent of the Indemnitor, which consent will not be withheld
unreasonably.
8.5. Cooperation. The Indemnitee under this Section 8, its employees and
agents, will cooperate fully with the Indemnitor and its legal
representatives in the investigations of any action, claim or
liability covered by this indemnification. In the event that each
Party claims indemnity from the other and one Party is finally held
liable to indemnify the other, the Indemnitor will additionally be
liable to pay the reasonable legal costs and attorneys' fees
incurred by the Indemnitee in establishing it claim for indemnity.
9. TERM AND TERMINATION
9.1. Term. Unless terminated earlier as provided herein, this Agreement
will commence on the Effective Date and will remain in full force
until terminated as provided herein.
9.2. Termination. This Agreement may be terminated as follows:
9.2.1. by mutual written agreement of SBio and Xxxxxx-Xxxxx,
effective as of the time specified in such written
agreement; or
9.2.2. by either Party,
9.2.2.1. in the event the other Party will file in any court
or agency pursuant to any statute or regulation of
any state or country, a petition in bankruptcy or
insolvency or for reorganization or for an
arrangement or for the appointment of a receiver or
trustee of the Party or of its assets, or if the
other Party proposes a written agreement of
composition or extension of its debts, or if the
other Party will be served with an involuntary
petition against it, filed in any insolvency
proceeding, and such petition will not be dismissed
within
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sixty days after the filing thereof, or if the other Party
will propose or be a Party to any dissolution or
liquidation, or if the other Party will make an assignment
for the benefit of creditors.
9.2.2.2. upon any material breach of this Agreement by the other
Party; provided that the Party alleging such breach must
first give the other Party written notice thereof, which
notice must state the nature of the breach in reasonable
detail and the Party receiving such notice must have failed
to cure such alleged breach within sixty days after receipt
of such notice.
9.3. Survival of Obligations. Upon any termination of this Agreement,
neither Party will be relieved of any obligations incurred prior to
such termination. Notwithstanding any termination of this Agreement,
the obligations of the Parties under Sections 3.3, 5, 6, 7, 8, 9.3,
and 11, as well as under any licenses which are maintained in effect
and any other provisions which by their nature are intended to
survive any such termination, will survive and continue to be
enforceable. With respect to the survival of licenses granted in
Section 5.4, if termination of this Agreement is a result of a
material breach of this Agreement by Xxxxxx-Xxxxx, such licenses will
not survive the termination of this Agreement to the extent that such
licenses relate to Licensed Product(s) which have not yet been
commercialized.
10. CHANGE OF CONTROL OF SBio
10.1. Notice of Offer. SBio will promptly notify Xxxxxx-Xxxxx in writing of
any written offer to acquire control of SBio ("control" being defined
herein as the acquisition of a majority of the outstanding voting
securities of SBio), such notice to be provided at least forty five
days before a closing date for the acquiring transaction. Such notice
will contain the name of the Party offering to acquire control of
SBio and a description of the offer including the price and other
material terms and conditions. Information contained in the notice
will be considered Confidential Information.
11. MISCELLANEOUS
11.1. Force Majeure. If the performance of any part of this Agreement by
either Party, or of any obligation under this Agreement, is
prevented, restricted, interfered with or delayed by reason of any
cause beyond the reasonable control of the Party liable to perform,
unless conclusive evidence to the contrary is provided, the Party so
affected will, upon giving written notice to the other Party, be
excused from such performance to the extent of such
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prevention, restriction, interference or delay, provided that the
affected Party will use its reasonable best efforts to avoid or
remove such causes of non-performance and will continue performance
with the utmost dispatch whenever such causes are removed. When such
circumstances arise, the Parties will discuss what, if any,
modification of the terms of this Agreement may be required in order
to arrive at an equitable solution.
11.2. Governing Law. This Agreement will be deemed to have been made in the
State of California and its form, execution, validity, construction
and effect will be determined in accordance with the laws of the
State of California.
11.3. Separability.
11.3.1. In the event any portion of this Agreement will be held
illegal, void or ineffective, the remaining portions hereof
will be interpreted to maintain the intent of the Parties.
11.3.2. If any of the terms or provisions of this Agreement are in
conflict with any applicable statute or rule of law, then
such terms or provisions will be deemed inoperative to the
extent that they may conflict therewith and will be deemed to
be modified to conform with such statute or rule of law.
11.4. Entire Agreement. The Agreement and the Equity Agreement constitute
the sole agreements between the Parties relating to the subject
matter hereof and supersede all previous writings and understandings.
Confidential disclosures made pursuant to previously executed
Confidentiality Agreements between SBio and Xxxxxx-Xxxxx will remain
subject to the terms of those Confidentiality Agreements. No terms or
provisions of this Agreement will be varied or modified by any prior
or subsequent statement, conduct or act of either of the Parties,
except that the Parties may amend this Agreement by written
instruments specifically referring to and executed in the same manner
as this Agreement.
11.5. Assignment. This Agreement and the licenses herein granted will be
binding upon and inure to the benefit of the successors in interest
of the respective Parties. Neither this Agreement nor any interest
hereunder will be assignable by either Party without the written
consent of the other provided, however, that Xxxxxx-Xxxxx or SBio may
assign this Agreement or any of its rights or obligations hereunder
to any Affiliate or to any third party with which it may merge or
consolidate, or to which it may transfer all or substantially all of
its assets to which this Agreement relates, without obtaining the
consent of the other Party, subject to the other Party assuming all
liabilities and obligations under the Agreement and, in the
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case of SBio, subject to Perkin-Elmer's right of notice pursuant 10.
11.6. Counterparts. This Agreement may be executed in any number of
counterparts, and each such counterpart will be deemed an original
instrument, but all such counterparts together will constitute but
one agreement.
11.7. Notices. Any notice required or permitted under this Agreement will
be sent by air mail, postage pre-paid, to the following addresses of
the Parties:
If to SBio:
Soane BioSciences, Inc. with copy to Venture Law Group
0000 Xxxxx Xxx 0000 Xxxx Xxxx Xxxx
Xxxxxxx, XX 00000-0000 Xxxxx Xxxx, XX 00000
Attn.: President Attn.: Xxxx Medeaus
If to Xxxxxx-Xxxxx:
The Xxxxxx-Xxxxx Corp. with copy to The Xxxxxx-Xxxxx Corp.
000 Xxxxxxx Xxxxxx Xxxxx 000 Xxxxxxx Xxxxxx Xxxxx
Xxxxxx Xxxx, XX 00000 Xxxxxx Xxxx, XX 00000
Attn.: Xxxxxxx Xxxxx Attn.: Legal Department
IN WITNESS WHEREOF, the Parties, through their authorized officers, have
executed this Agreement as of the date first written above.
SOANE BIOSCIENCES, INC. THE XXXXXX-XXXXX CORPORATION,
THROUGH ITS PE APPLIED
BIOSYSTEMS DIVISION
By: /s/ XXXXXX X. XXXXXX By: /s/ XXXXXXX XXXXXXXXXXX
-------------------- -----------------------
Name: Xxxxxx X. Xxxxxx Name: Xxxxxxx Xxxxxxxxxxx
------------------ ---------------------
Title: President, C.E.O. Title: Vice President
----------------- --------------------
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