[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT 10.26
PURCHASE AGREEMENT
This PURCHASE AGREEMENT (the "Agreement") is made as of March 5, 2002
(the "Effective Date"), by and between Geron Corporation, a Delaware corporation
("Buyer") and Lynx Therapeutics, Inc., a Delaware corporation ("Seller").
RECITALS
A. Seller owns certain proprietary technology relating to
oligonucleotide N3'->P5' phosphoramidates, their manufacture, and their uses in
a variety of fields ("Amidate Technology").
B. Buyer desires to acquire from Seller, and Seller desires to
transfer to Buyer on the terms and conditions set forth herein, Seller's right,
title and interest to certain patents and patent applications owned by Seller
and incorporating the Amidate Technology.
AGREEMENT
NOW, THEREFORE, in consideration of the foregoing recitals and the
mutual covenants, representations, warranties, conditions, and agreement
hereinafter expressed, the parties hereby agree as follows:
ARTICLE I
DEFINITIONS
1.1 "Affiliate" means any person, corporation, partnership, limited
liability company, limited liability partnership, joint venture, association,
company, or other legal entity that directly, or indirectly through one or more
intermediaries, controls, is controlled by, or is under common control with, the
referenced party. In this definition, "control" means the possession, direct or
indirect, of the power to direct or cause the direction of the management and
policies of a party, whether through ownership of securities, by contract, or
otherwise.
1.2 "Amidate Product" means any product which contains, incorporates,
is based upon, is derived in whole or in part from, or is made with the use of,
any one or more of the Lynx Patents.
1.3 "Lynx Patents" means the patents and patent applications listed
on Exhibit B hereto; and with respect to U.S. patents and applications; any
division, continuation, continuation-in-part, substitute, renewal, reissue,
extension, confirmation, reexamination, registration, patent term extension or
supplemental protection certificate thereof; all foreign equivalents of any of
the foregoing patents and applications; and all patents issuing on any of the
foregoing applications.
1.4 "Northwestern Patents" means the patents and patent applications
listed on Exhibit C hereto; and with respect to U.S. patents and applications;
any division, continuation, continuation-in-part, substitute, renewal, reissue,
extension, confirmation, reexamination,
1
registration, patent term extension or supplemental protection certificate
thereof; all foreign equivalents of any of the foregoing patents and
applications; and all patents issuing on any of the foregoing applications.
1.5 "Northwestern License" means the license agreement dated October
27, 1993 between the Seller and Northwestern University ("Northwestern"), which
is attached hereto as Exhibit D, pursuant to which Northwestern licensed to the
Seller certain rights to the Northwestern Patents.
1.6 "Patent Assignment" means the form of instrument attached hereto
as Exhibit A.
1.7 "Sublicenses" means, collectively, (i) the license agreement
dated as of June 15, 1998 between the Seller and Cruachem, Inc., which is
attached hereto as Exhibit E, and (ii) the license agreement dated as of January
29, 1999 between the Seller and JBL Scientific, Inc., which is attached hereto
as Exhibit F, pursuant to each of which Seller has sublicensed certain rights
under the Lynx Patents and the Northwestern Patents.
ARTICLE II
PURCHASE AND SALE
2.1 Lynx Patents. Seller hereby sells, assigns, conveys, and
transfers to Buyer, all right, title and interest of the Seller in and to the
Lynx Patents. For the avoidance of doubt, the agreement to assign, convey and
transfer in the preceding sentence (i) is subject to the rights granted to the
sublicensees under the Sublicenses, and (ii) does not include any assignment,
conveyance, transfer of, or any other interest in, any rights in or to the
Northwestern Patents.
2.2 Northwestern Patents and License. Seller hereby, assigns,
conveys, and transfers to Buyer, all right, title and interest of the Seller in
and to the Northwestern Patents and the Northwestern License. For the avoidance
of doubt, the agreement to assign, convey and transfer in the preceding sentence
(i) is subject to the terms and conditions of the Northwestern License,
including Section 9.1 of the Northwestern License; (ii) is subject to the rights
granted to the sublicensees under the Sublicenses, and (iii) does not include
any assignment, conveyance, transfer of, or any other interest in, any rights in
or to the Lynx Patents. Seller will promptly seek and diligently pursue
Northwestern's unconditional consent to this assignment, will keep Buyer
regularly informed of its progress in obtaining such consent, and will use its
best efforts to obtain such consent by no later than [*]. If Northwestern does
not consent unconditionally to the assignment by [*], Buyer may, at any time
thereafter by written notice to Seller, obtain from Seller, in lieu of the
assignment of the Northwestern Patents and the Northwestern License, an
exclusive sublicense under the Northwestern License, subject to its terms and
conditions and subject to the Sublicenses, on the terms and conditions specified
in Exhibit G attached hereto. The parties acknowledge that Seller has not been
able to provide Buyer with all relevant documents with respect to the
Northwestern Patents, and as a result Buyer has not been able to perform
complete due diligence with respect to the Northwestern Patents. Within [*] days
of the Effective Date, Seller will provide to Buyer complete file histories of
the Northwestern Patents, and Buyer will have [*] days thereafter to perform
such due diligence. If Buyer concludes as a result of such due diligence that
the value of the Northwestern Patents is substantially different than Buyer
believed, Buyer will so notify Seller within [*] days after Seller provides such
complete file histories, and Seller and Buyer will negotiate in good faith
concerning an appropriate adjustment of the terms of this Agreement, provided
that the purchase price
2
payable under Section 2.5 will not be changed.
2.3 Sublicenses. Seller hereby, assigns, conveys, and transfers to
Buyer, all right title and interest of the Seller in and to the Sublicenses,
subject to their terms.
2.4 Deliveries of Seller. Simultaneously with execution of this
Agreement, Seller shall execute and deliver the Patent Assignment to Buyer.
Within five (5) days after the Effective Date, Seller will deliver to Buyer
originals or complete and accurate copies of all documents in Seller's
possession, custody, or control relating to the Lynx Patents or the Northwestern
Patents. If Seller has documents that, in Seller's reasonable judgment, would be
necessary or useful in defending any of the Lynx Patents or the Northwestern
Patents against claims of invalidity, Seller will deliver such documents to
Buyer at Buyer's request, and will not after the date of this Agreement destroy
any such documents without offering Buyer the opportunity to take possession of
such documents for Buyer's potential future use.
2.5 Purchase Price.
In consideration of the sale and assignment of Seller's right,
title and interest in the Lynx Patents, the Northwestern Patents, and the
Northwestern License or exclusive sublicense thereunder as provided in paragraph
2.2, Buyer will pay Seller a total purchase price of Two Million Five Hundred
Thousand dollars ($2,500,000), payable as follows:
One Million Dollars ($1,000,000) in cash payable in immediately
available funds within one (1) business day after the Effective
Date.
Two Hundred Ten Thousand (210,000) shares of Buyer's Common
Stock,), delivered simultaneously with the execution of, and
subject to the terms of, the Stock Purchase Agreement attached as
Exhibit H.
ARTICLE III
REPRESENTATIONS AND WARRANTIES
3.1 Representations of Seller. Seller represents and warrants to
Buyer as follows:
(a) Seller is a corporation, duly organized, validly existing
and in good standing under the laws of the state of Delaware, and has all
requisite powers and all licenses, authorizations, consents and approvals
required to carry on its business as now conducted.
(b) The execution, delivery and performance by Seller of this
Agreement, and the consummation by Seller of the transactions contemplated
hereby and thereby, are within Seller's legal powers and have been duly
authorized by all necessary action on the part of Seller, and, to the best of
Seller's knowledge and belief, will not infringe or violate the rights of any
other party. This Agreement is a valid and binding agreement of Seller,
enforceable in accordance with its terms.
(c) Seller is the sole and exclusive owner of the Lynx Patents
and has the lawful right to perform its obligations under this Agreement.
Seller's interest in the Lynx Patents is not subject to any lien, pledge, grant
of security interests, or any other encumbrance. To the best of Seller's
knowledge and belief, all filings have been made and all fees have been paid and
all such other things have been done as to maintain the Lynx Patents
3
in good standing. Seller does not own or control any patents or patent
applications relating to Amidate Technology other than the Lynx Patents and the
Northwestern Patents.
(d) The Northwestern License and the Sublicenses are in full
force and effect and have not been amended. Seller is in compliance with its
obligations under the Northwestern License, and has received no notice of any
claim to the contrary. Seller's rights to the Northwestern Patents under the
Northwestern License are not subject to any lien, pledge, grant of security
interests, or any other encumbrance. To the best of Seller's knowledge and
belief, all filings have been made and all fees have been paid and all such
other things have been done as to maintain the Northwestern Patents in good
standing.
(e) The Lynx Patents and Seller's interest in the Northwestern
Patents are assigned and transferred WITHOUT WARRANTY OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED.
SELLER MAKES NO REPRESENTATION OR WARRANTY THAT THE LYNX PATENTS OR THE
NORTHWESTERN PATENTS ARE VALID OR WILL NOT INFRINGE ANY PATENT OR OTHER PROPERTY
RIGHT.
(f) As at the date of this Agreement, to the best of its
knowledge, information and belief after reasonable inquiry, Seller has not
received any notices or communications alleging that the Lynx Patents or the
Northwestern Patents are invalid or infringe the rights of any third party.
There is no action, suit, investigation, or proceeding of which Seller has
received written notice, pending or, to the knowledge of Seller, threatened,
before any court or arbitrator or any governmental body, agency or official that
has or could materially affect the Lynx Patents, the Northwestern Patents or the
Northwestern License or which in any matter challenges or seeks to prevent,
enjoin, alter or materially delay the transaction contemplated hereby or would
have a material adverse effect on Seller's ability to perform its obligations
under this Agreement.
(g) As of the date of this Agreement, no third party has any
rights or licenses in respect of the Lynx Patents, the Northwestern Patents, or
the Northwestern License, other than as reflected in the Sublicenses.
(h) Nothing in this Agreement shall be construed as: (i) a
warranty or representation by Seller as to the validity, enforceability, or
scope of any of the Lynx Patents or the Northwestern Patents hereunder or
elsewhere; (ii) a warranty or representation that any Amidate Products or
anything else made, used, sold, or otherwise disposed of under the Lynx Patents
or the Northwestern Patents is or will be free from infringement of patents of
third parties; (iii) an obligation to bring or prosecute actions or suits
against third parties for patent infringement; (iv) conferring by implication,
estoppel, or otherwise, any license or rights under any patents or patent
applications of Seller other than those of the Lynx Patents and the Northwestern
Patents; or (v) an obligation to furnish any know- how not provided in the Lynx
Patents themselves.
3.2 Representations of Buyer. Buyer represents and warrants to Seller
as follows:
(a) Buyer is a corporation, duly organized, validly existing
and in good standing under the laws of the state of Delaware, and has all
requisite powers and all licenses, authorizations, consents and approvals
required to carry on its business as now conducted.
4
(b) The execution, delivery and performance by Buyer of this
Agreement, and the consummation by Buyer of the transactions contemplated hereby
and thereby, are within Buyer's legal powers and have been duly authorized by
all necessary action on the part of Buyer. This Agreement is a valid and binding
agreement of Buyer, enforceable in accordance with its terms.
(c) There is no action, suit, investigation or proceeding
pending against, or to the knowledge of Buyer threatened against or affecting,
Buyer before any court or arbitrator or any governmental body, agency or
official which in any matter challenges or seeks to prevent, enjoin, alter or
materially delay the transaction contemplated hereby or would have a material
adverse effect on Buyer's ability to perform its obligations under this
Agreement.
ARTICLE IV
INDEMNIFICATION
4.1 By Seller. Seller shall indemnify and hold Buyer harmless,
and hereby forever releases and discharges Buyer, from and against all losses,
liabilities, damages and expenses (including reasonable attorneys' fees and
costs) resulting from all claims, demands, actions and other proceedings by any
third party to the extent arising from (a) any misrepresentation or breach by
Seller of any representation or warranty or other provision of this Agreement or
(b) any claim that the performance of this Agreement by Seller would violate or
infringe the rights of any third party, or (c) any claim arising out of the
Northwestern License or the Sublicenses based on Seller's alleged breach, or
Seller's acts or failure to act, or obligations of Seller that accrued, before
the Effective Date), or (d) the gross negligence or willful misconduct of Seller
in its performance under this Agreement.
4.2 By Buyer. Buyer shall indemnify and hold Seller harmless,
and hereby forever releases and discharges Seller, from and against all losses,
liabilities, damages and expenses (including reasonable attorneys' fees and
costs) resulting from all claims, demands, actions and other proceedings by any
third party to the extent arising from (a) any misrepresentation or breach by
Buyer of any representation or warranty or other provision of this Agreement,
(b) the research, use, development, manufacturing, commercialization or
marketing of Amidate Products or the use of Lynx Patents by Buyer or its
Affiliates, or (c) the gross negligence or willful misconduct of Buyer in its
performance under this Agreement.
4.3 Procedure. A party (the "Indemnitee") that intends to
claim indemnification hereunder shall promptly notify the other party (the
"Indemnitor") of any claim, demand, action or other proceeding for which the
Indemnitee intends to claim such indemnification. The Indemnitor shall have the
right to participate in and to assume the defense thereof with counsel selected
by the Indemnitor; provided, however, that the Indemnitee shall have the right
to retain its own counsel, with the fees and expenses to be paid by the
Indemnitor, if representation of the Indemnitee by the counsel retained by the
Indemnitor would be inappropriate due to actual or potential differing interests
between the 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 notice of any such claim or demand, or the commencement any such
action or other proceeding, if prejudicial to its ability to defend such claim,
demand, action or other proceeding, shall relieve such Indemnitor of any
liability to the Indemnitee hereunder with respect thereto, but the omission so
to deliver notice to the Indemnitor shall not relieve it of any liability that
it may otherwise have to the Indemnitee.
5
The Indemnitor may not settle or otherwise consent to an adverse judgment in
such claim, demand, action or other proceeding, that diminishes the rights or
interests of Indemnitee without the prior express written consent of the
Indemnitee, which consent shall be unreasonably withheld or delayed. The
Indemnitee, its employees and agents, shall reasonably cooperate with the
Indemnitor and its legal representatives in the investigation of any claim,
demand, action or other proceeding covered hereby.
ARTICLE V
MISCELLANEOUS
5.1 Survival of Obligations. The representations and warranties set
forth in Article III hereof shall survive for ten years following the date of
this Agreement. The rights and obligations set forth in Articles IV and V hereof
shall survive indefinitely.
5.2 Binding Agreement. This Agreement shall be binding upon and shall
inure to the benefit of the parties hereto and to their respective successors
and permitted assigns.
5.3 Confidentiality. Neither party shall issue any press release or
make any other announcement with respect to this Agreement or the transactions
contemplated hereby, except as required by law, without the prior consent of the
other party (which shall not be unreasonably withheld or delayed).
5.4 Remedies. Nothing contained herein is intended to or shall be
construed to limit the remedies which either party may have against the other in
the event of a breach of or default under this Agreement, it being intended that
any remedies shall be cumulative and not exclusive.
5.5 Further Assurances. Each party agrees to take such further action
and execute, deliver and/or file such documents or instruments as are necessary
to carry out the terms and purposes of this Agreement; provided, however, that
reasonable expenses for such further action shall be borne by the requesting
party.
5.6 Entire Agreement and Modification. This Agreement, including the
schedules and exhibits hereto and the documents delivered pursuant hereto,
constitutes the entire agreement between the parties. No amendments to,
modifications of, or additions to this Agreement shall be valid unless the same
shall be in writing and signed by all parties hereto.
5.7 Severability. If any provision of this Agreement shall be
determined to be contrary to law and unenforceable by any court of law, the
remaining provisions shall be severable and enforceable in accordance with their
terms.
5.8 Counterparts. This Agreement may be executed in one or more
counterparts and by facsimile signature, each of which shall be deemed an
original but all of which together will constitute one and the same instrument.
5.9 Headings; Interpretation. The section headings contained in this
Agreement are inserted for convenience only and shall not affect in any way the
meaning or interpretation of the Agreement.
6
5.10 Notices. All notices, requests, demands and other communications
hereunder shall be deemed to have been duly given if the same shall be in
writing and shall be delivered or sent by registered or certified mail, postage
prepaid, and addressed as set forth below:
(a) If to Buyer: Geron Corporation.
000 Xxxxxxxxxxxx Xxxxx
Xxxxx Xxxx, XX
Fax: 000-000-0000
Attention: Xxxxx Xxxxxxxxx
(b) If to Seller: Lynx Therapeutics, Inc.
00000 Xxxxxxxxxx Xxxx.
Xxxxxxx, XX 00000
Fax: 000-000-0000
Attention: Xxxxxx Xxxxxxx
Any such notice shall be effective upon receipt. Either party may change the
address to which notices are to be addressed by giving the other party notice in
the manner herein set forth.
5.11 Governing Law. This Agreement shall be construed and interpreted
according to the laws of the State of California, without regard to its conflict
of laws principles.
IN WITNESS WHEREOF, the parties hereto have executed this Purchase
Agreement by their duly authorized representatives as of the day and year first
above written.
LYNX THERAPEUTICS, INC.
By /s/ Xxxxxx X. X. Xxxxxxx
-----------------------------------------
Name: Xxxxxx X. X. Xxxxxxx
Title: President and Chief Executive Officer
GERON CORPORATION
By /s/ Xxxxx X. Xxxxxxxxx
-----------------------------------------
Name: Xxxxx X. Xxxxxxxxx
Title: Chief Financial Officer and Senior
Vice President, Corporate Development
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
7
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT A
ASSIGNMENT
In consideration of good and valuable consideration paid to the
undersigned Assignor, Lynx Therapeutics, Inc., a corporation organized under the
laws of Delaware, having an office at 00000 Xxxxxxxxxx Xxxx., Xxxxxxx, XX 00000,
by the Assignee, Geron Corporation, Inc., a corporation organized under the laws
of Delaware, having an office at 000 Xxxxxxxxxxxx Xxxxx, Xxxxx Xxxx, XX 00000,
the receipt of which is hereby acknowledged, the undersigned Assignor by these
presents hereby sells, assigns, transfers, and sets over unto the Assignee the
entire right, title, and interest in and to the patents and patent applications
described in Appendix A hereto and the inventions described therein, together
with any division, continuation, continuation-in-part, substitute, renewal,
reissue, extension, confirmation, reexamination, registration, patent term
extension or supplemental protection certificate thereof; all foreign
equivalents of any of the foregoing patents and applications; and all patents
issuing on any of the foregoing applications, including all treaty and
convention rights and the right to xxx for present, past, and future
infringement, the same to be held and enjoyed by said Assignee, its successors,
assigns, or other legal representatives, to the full ends of the terms for which
all patents therefor may be granted, as fully and entirely as the same would
have been held and enjoyed by the undersigned if this assignment and sale had
not been made.
And by this covenant the undersigned will execute or procure any
further necessary assurance of title to said patent applications and patents;
and at any time, upon the request and at the expense of said Assignee, will
execute and deliver any and all papers that may be necessary or desirable to
perfect the title to said patent applications or patents which may be granted
therefor in said Assignee, its successors, assigns or other legal
representatives, and, upon the request and at the expense of said Assignee, will
execute any additional or divisional applications for patents for said
inventions, or any part or parts thereof, and for the reissue of any patents
granted or to be granted therefor, and will make all rightful oaths and do all
lawful acts requisite for procuring the same or for aiding therein, without
further compensation, but at the expense of said Assignee, its successors,
assigns, or other legal representatives.
-----------------------
Witness: By
---------------------------------------
Name
-----------------------------
Name:
---------------------------------------
Title
AFFIX SEAL
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY FILED WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF
1934, AS AMENDED.
EXHIBIT B
LYNX PATENTS
LYNX CNTRY TYPE STATUS APP. NO. FILING PATENT ISSUE PUB. NO. PUB.
REF. DATE NO. DATE DATE
----------------------------------------------------------------------------------------------------------------------------------
005 US ORD Transfer'd 08/214,599 18-Mar-94 5599922 4-Feb-97
005-05us US PCT Granted 08/700,448 10-Jan-97 5965720 12-Oct-99
005-01 US DIV Granted 08/477,306 06-Jun-95 5837835 00-Xxx-00
000-00 US DIV Granted 08/478,470 06-Jun-95 5591607 07-Jan-97
005-03 US DIV Granted 08/473,015 06-Jun-95 5631135 20-May-97
005-06 US CON Granted 08/923,386 03-Sep-97 6169170 02-Jan-01
[ * ] [ * ] [ * ] Pending [ * ] [ * ]
005-05wo WO ORD Gone Nat'l 95/03575 00-Xxx-00
000-00xx XX PCT Published 7524793 20-Mar-95 9-510714 28-Oct-97
005-05au AU PCT Granted 2190095 20-Mar-95 704549 05-Aug-99 704549 05-Mar-99
005-05ep EP PCT Pending 95914800.8 20-Mar-95
[ * ] [ * ] [ * ] Pending [ * ] [ * ]
[ * ] [ * ] [ * ] Pending [ * ] [ * ]
[ * ] [ * ] [ * ] Pending [ * ] [ * ]
[ * ] [ * ] [ * ] Pending [ * ] [ * ]
[ * ] [ * ] [ * ] Pending [ * ] [ * ]
[ * ] [ * ] [ * ] Pending [ * ] [ * ]
000 XX XXX Granted 08/603,566 21-Feb-96 5684143 00-Xxx-00
000-00 US CIP Granted 08/663,918 14-Jun-96 5824793 20-Oct-98
035-02 US CIP Granted 08/771,789 20-Dec-96 5859233 12-Jan-99
[ * ] [ * ] [ * ] Pending [ * ] [ * ]
035wo WO ORD Gone Nat'l 96/10418 14-Jun-96 WO97/31009 28-Aug-97
[ * ] [ * ] [ * ] Pending [ * ] [ * ]
035au AU PCT Granted 6178996 14-Jun-96 703509 08-Jul-99
035ep EP PCT Allowed 96919449.7 14-Jun-96 882059 09-Dec 98
035hu HU PCT Published P9902526 14-Jun-96 P9902526 28-Dec-99
[ * ] [ * ] [ * ] Pending [ * ] [ * ]
[ * ] [ * ] [ * ] Pending [ * ] [ * ]
000 XX XXX Granted 08/929,620 15-Sep-97 5998604 07-Dec-99
038wo WO ORD Transferred 98/19273 14-Sep-98 99/14227 25-Mar-99
[ * ] CLIENT REF TITLE FILING DATE STATUS
---------------------- ---------- ----- ----------- ------
[ * ] [ * ] [ * ] [ * ] [ * ]
[ * ] [ * ] [ * ] [ * ] [ * ]
[ * ] [ * ] [ * ] [ * ] [ * ]
[ * ] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
25
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT C
NORTHWESTERN PATENTS
---------------------------------------------------------------------------------------
LYNX REF. SUBJECT MATTER FILING ISSUE PATENT NO. STATUS
DATE DATE
---------------------------------------------------------------------------------------
[*]
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT D
NORTHWESTERN LICENSE
LICENSE AGREEMENT
This AGREEMENT made this twenty seventh day of October, 1993, by and
between NORTHWESTERN UNIVERSITY ("NORTHWESTERN"), an Illinois corporation having
a principal office at 000 Xxxxx Xxxxxx, Xxxxxxxx, Xxxxxxxx 00000, and Lynx
Therapeutics Inc., a Delaware corporation having a principal office at 000
Xxxxxxx Xxxxxx Xxxxx, Xxxxxx Xxxx, Xxxxxxxxxx 00000 (hereinafter "LYNX").
WITNESSES THAT:
WHEREAS, NORTHWESTERN represents that Xxxxxx Xxxxxxxxx, an employee of
NORTHWESTERN, and Xxxxxx Xxxxxxxx, a former employee of Northwestern (the
Inventors), have made a certain invention entitled [*] while employed at
NORTHWESTERN, and that a patent application has been filed thereon, having
United States Serial Number [*] entitled [*].
WHEREAS, NORTHWESTERN, subject to U.S. grant obligations has the right
to make, use, sell, and grant licenses under the INVENTION and PATENT RIGHTS as
defined herein; and NORTHWESTERN wishes to have the INVENTION, as defined by the
PATENT RIGHTS, utilized for the public interest; and
WHEREAS LYNX desires to obtain a license to manufacture, sell, and use
the INVENTION and PATENT RIGHTS defined herein and upon the terms and conditions
hereinafter set forth;
NOW, THEREFORE, in consideration of the promises and the faithful
performance of the covenants contained herein, IT IS AGREED:
1.0 DEFINITIONS
For the purposes of this Agreement, and solely for that purpose, the
terms hereinafter set forth shall be defined as follows:
1.1 "INVENTION" shall mean the invention as described in EXHIBIT A,
and/or as covered in the PATENT RIGHTS.
1.2 "PATENT RIGHTS" shall mean the United States patent resulting from
the
1
application having United States Serial Number [*] entitled [*] for the
INVENTION together with any divided, continuation, or other continuation-in-part
applications based thereon, and any reissues or extensions based on any such
patents, and any foreign counterparts pending or issued thereof.
1.3 "LICENSED PRODUCT" shall mean any products covered by, or the
manufacture, use, or sale of which is covered by, any INVENTION as described by
any valid claim in an issued and unexpired patent, which patent application or
patent is included in the PATENT RIGHTS.
1.4 "FIELD OF USE" shall mean the use of the INVENTION and PATENT RIGHTS
for human therapeutics.
1.5 "NET SALES PRICE" shall mean the gross sales price of any LICENSED
PRODUCT or INVENTION made and sold pursuant to this Agreement, less allowances
to customers for damaged or returned products and the amounts of discounts,
transportation charges, and all sales and excise taxes and duties paid,
absorbed, or allowed.
2.0 LICENSE
2.1 NORTHWESTERN hereby grants to LYNX and LYNX hereby accepts from
NORTHWESTERN, upon the terms and conditions herein specified, an exclusive
(except as herein specified), worldwide, and non-assignable (except as herein
specified) License to use the INVENTION and PATENT RIGHTS to test, evaluate, and
develop the INVENTION and LICENSED PRODUCT covered hereby and to make, have
made, use and sell the products thereof during the term of this Agreement, and
during the term of any extension thereof, unless sooner terminated as
hereinafter provided.
2.2 NORTHWESTERN hereby grants to LYNX and LYNX hereby accepts from
NORTHWESTERN, upon the terms and conditions herein specified, the right to
extend the License granted hereunder to its sublicensee(s). LYNX shall promptly
notify NORTHWESTERN in writing that a sublicense has been granted no later than
the effective date of the sublicense. LYNX may negotiate such terms as it
chooses for each sublicense, provided that NORTHWESTERN shall receive a royalty
for all sales made by sublicensee(s) at a rate not less than that provided for
in this Agreement plus fifty percent (50%) of any lump sum amounts received by
LYNX from sublicensee(s) where there is no royalty.
2.3 If LYNX shall so notify NORTHWESTERN in advance thereof in writing,
any sublicensee(s) to whom the License shall have been extended pursuant to
Paragraph 2.2 hereof may make the reports and royalty payments specified in
Paragraph 4.0 hereof directly to NORTHWESTERN on behalf of LYNX; otherwise, such
reports and payments on account of sales by such sublicensee(s) shall be made by
LYNX.
2.4 NORTHWESTERN retains a non-exclusive, royalty-free, irrevocable
License to
2
make, have made and use the INVENTION, PATENT RIGHTS and LICENSED PRODUCT for
its own use.
2.5 Outside the scope of the License between NORTHWESTERN and LYNX no
other, further, or different license or right, and no further power to
sublicense is hereby granted or implied.
3.0 LICENSE ISSUE FEE
3.1 LYNX shall pay to NORTHWESTERN, upon execution and delivery of this
Agreement, a license issue fee of [*]
3.2 The total of the license issue fee provided for in the foregoing
Article 3.1 shall not be refundable and shall not be applied against any
royalties which may become payable under this Agreement.
4.0 ROYALTIES, RECORDS AND REPORTS
4.1 During the term of this Agreement, unless sooner terminated, LYNX
shall pay to NORTHWESTERN, in the manner hereinafter provided, earned royalties
at the rate of [*] percent ([*]%) of the NET SALES PRICE of all LICENSED PRODUCT
sold by LYNX and its sublicensee(s), anywhere in the world.
4.2 LICENSED PRODUCT shall be considered sold when sold or invoiced, and
if not sold or invoiced, when delivered to a third party.
4.3 LYNX shall be responsible for the performance hereunder of all
obligations including payment of royalties, keeping of records, and reporting by
LYNX and any sublicensee(s) to whom the License shall have been extended
pursuant to this Agreement.
4.4 So long as this Agreement remains in force, LYNX shall deliver to
NORTHWESTERN, within sixty (60) days after the first day of January and July of
each year, a true and accurate report, giving such particulars of the business
conducted by LYNX and its sublicensee(s) during the preceding six (6) months
under this Agreement as are necessary to accurately account for sales subject to
royalties under this Agreement.
4.5 Simultaneously with the delivery of each report required by the
preceding paragraph 4.4, LYNX shall pay to NORTHWESTERN the net royalties and
any other such payment due under this Agreement for the period covered by such
report. If no royalties are due, it shall be so reported.
4.6 All payments from LYNX to NORTHWESTERN shall be in U.S. dollars. The
rates of exchange for such payments shall be midpoint between the buying and
selling rates for U.S. dollars as quoted by the Chase Manhattan Bank in New
York, New York at the close of business
3
on the last business day preceding the date payment is due.
4.7 In case of any delay in payment by LYNX to NORTHWESTERN not
occasioned by force majeure, interest at the rate of one percent (1%) per month,
assessed from the thirty-first day after the due date of said payment, shall be
due by LYNX without any special notice.
4.8 Royalties shall accrue in accordance with this Agreement, upon the
first commercial sale of a licensed product.
4.9 LYNX shall keep full, true, and accurate books of account containing
all particulars which may be necessary for the purpose of showing the amount
payable to NORTHWESTERN by way of royalty as aforesaid or by way of any other
provision hereunder. Said books of account shall be kept at LYNX'S principal
place of business. Said books and the supporting data shall be open at all
reasonable times, for three (3) years following the end of the calendar year to
which they pertain, to inspection by NORTHWESTERN for the purpose of verifying
LYNX'S royalty statements, or LYNX'S compliance in other respects with this
Agreement.
4.10 LYNX shall reimburse NORTHWESTERN for all out-of-pocket costs of
filing, prosecution and maintenance for all patent applications and all patents
issuing thereon filed and made at the request of LYNX. All such patents and
patent applications shall become part of the PATENT RIGHTS licensed to LYNX
hereunder. Such reimbursements shall be made to NORTHWESTERN within sixty (60)
days of receipt of invoice by LYNX. Any reimbursements made by LYNX hereunder
shall be creditable by LYNX against royalty payable by it pursuant to Article
4.1 above. With respect to each payment due NORTHWESTERN, LYNX may deduct up to
50% of each such payment for the above-referenced costs and expenses incurred by
LYNX in filing, prosecuting, or maintaining any patent or patent application
until LYNX has been fully reimbursed for all such costs and expenses incurred.
United States patent costs shall be credited to earned royalties on the NET
SALES PRICE of LICENSED PRODUCTS in the United States and foreign patent costs
shall be credited to foreign NET SALES PRICE.
5.0 AUDITING
5.1 NORTHWESTERN and its representatives will be entitled to examine and
audit all reports of sales of the LICENSED PRODUCT by LYNX and any sublicensee
at any time during normal business hours. In the event that an audit reveals any
underpayment or undercredit or royalties and/or milestone payments by LYNX
subject to the provisions herein, LYNX will promptly pay or credit to
NORTHWESTERN, as the case may be, the full amount of that underpayment or
undercredit, together with interest thereon at a rate of one percent (1%) per
month, assessed from the thirty-first day after said payment was due. In the
event that the audit reveals an underpayment or undercredit of more than 3% of
the amount which should have been reported and paid, LYNX or sublicensee, as the
case may be, will promptly pay the entire cost of that audit.
6.0 PERFORMANCE
4
6.1 LYNX shall use commercially reasonable efforts to commence and
maintain regular commercial production and sale of LICENSED PRODUCT.
6.2 If earned royalties for the years 1994, 1995, 1996 and 1997 and
thereafter are less than ten thousand dollars ($10,000), fifteen thousand
dollars ($15,000), twenty thousand dollars ($20,000), and twenty five thousand
dollars ($25,000) respectively, the following minimum royalty payments shall be
due to NORTHWESTERN on the following dates:
ten thousand dollars ($10,000) due January 1, 1995;
fifteen thousand dollars ($15,000) due January 1, 1996;
twenty thousand dollars ($20,000) due January 1, 1997;
twenty five thousand dollars ($25,000) due January 1, 1998
and each year thereafter during the term of this Agreement or any extensions
thereof.
7.0 TERM AND EXTENSION
7.1 This exclusive License shall continue until the expiration of the
last to expire of any patents under PATENT RIGHTS.
8.0 TERMINATION
8.1 If LYNX shall become bankrupt or insolvent and/or if the business of
LYNX shall be placed in the hands of a Receiver, Assignee, or Trustee, whether
by the voluntary act of LYNX or otherwise, this License will be deemed to have
automatically terminated as of a date [*] ([*]) days prior to that event,
provided, however, that such termination shall not terminate any obligations
which may have accrued prior thereto.
8.2 Notwithstanding provisions of Article 6.1, upon any breach or
default under this Agreement by LYNX, NORTHWESTERN may terminate this License by
sixty (60) days written notice by registered mail to LYNX. Said notice shall
become effective at the end of said period, unless during said period LYNX shall
cure such breach or default and notify NORTHWESTERN thereof.
8.3 LYNX may terminate this License at any time upon ninety (90) days
written notice by registered mail to NORTHWESTERN.
8.4 Upon termination of this License for any reason, all rights granted
hereunder shall revert to NORTHWESTERN for the sole benefit of NORTHWESTERN.
5
8.5 Termination of this License shall result in all sublicenses being
assigned to NORTHWESTERN.
8.6 LYNX's responsibilities and obligations to report to NORTHWESTERN
and pay royalties to NORTHWESTERN as to any LICENSED PRODUCTS produced or sold
by LYNX or its sublicensees under this Agreement prior to termination or
expiration hereof shall survive such termination or expiration.
8.7 In the event that this Agreement is terminated by either party, LYNX
agrees to provide NORTHWESTERN with names and addresses of sublicensees and
copies of all Sublicense Agreements between LYNX and sublicensees as then known
to LYNX.
9.0 ASSIGNMENT
9.1 This Agreement may be assigned by NORTHWESTERN.
This Agreement may be assigned by LYNX to the successor of its entire business,
or to any wholly-owned subsidiary, but shall not be otherwise assignable by LYNX
without the written consent of NORTHWESTERN.
10.0 INFRINGEMENT
10.1 NORTHWESTERN agrees to protect its patents within the PATENT RIGHTS
from infringement and prosecute infringers when in its reasonable judgment such
action may be proper and justified. LYNX shall have the right to xxx infringers
in its own name if NORTHWESTERN elects not to do so.
10.2 In the event either party hereto shall initiate or carry on legal
proceedings to enforce the PATENT RIGHTS against an alleged infringer, the other
party hereto shall fully cooperate with the party initiating or carrying on such
proceedings.
10.3 In the event NORTHWESTERN or LYNX shall institute suit or other
legal proceedings to protect or enforce PATENT RIGHTS as provided herein, the
other party shall have the option to join in such proceedings and shall be
entitled to be represented by counsel of its own choosing. From any recovery
awarded as a result of such suit or legal proceedings, (i) the initiating party
may recover the full amount of its expenses of prosecuting the same (including
attorney's fees and court costs); (ii) the other party may then recover, to the
extent possible after full payment of (i) above, the full amount of its costs of
participating in the same; (iii) NORTHWESTERN, after full payment of (i) and
(ii) above, shall receive [*] percent ([*]%) of any remainder; and (iv) the
initiating party may retain the balance. A party shall not discontinue or settle
any such suit or legal proceedings brought by it without obtaining prior
concurrence of the other party, and giving the other party a timely opportunity
to continue such proceedings in its own name, under its sole control, at its
sole expense, and at its sole recovery.
6
11.0 SEVERABILITY
11.1 Should any part or provision of this Agreement be unenforceable or
otherwise in conflict with or in violation of the law of any jurisdiction, the
remainder of this Agreement shall remain binding upon the parties.
12.0 INDEMNITY AND NEGATION OF WARRANTIES
12.1 LYNX agrees to indemnify, hold harmless and defend NORTHWESTERN,
its officers, employees, and agents against any and all claims, suits, losses,
damages, costs, fees, and expenses resulting from or arising out of the
production or use of the LICENSED PRODUCTS by LYNX, its sublicensees, and others
purchasing, using and/or receiving the LICENSED PRODUCTS.
12.2 LYNX shall maintain appropriate insurance, in good standing, at
least in the amount of [*] dollars ($[*]) per occurrence, the amount subject to
change from time to time as designated by NORTHWESTERN in writing, naming
NORTHWESTERN as additional insured. LYNX shall deliver to NORTHWESTERN a copy of
such insurance policy and all extensions thereof.
12.3 Nothing in this Agreement shall be construed as:
12.31 a warranty or representation by NORTHWESTERN as to the
validity or scope of any Patent Rights; or
12.32 a warranty or representation that anything made, used, sold
or otherwise disposed of under any license granted in this Agreement is or will
be free from infringement of patents of third parties; or;
12.33 an obligation by NORTHWESTERN to bring or prosecute actions
or suits against third parties for infringement.
12.4 NORTHWESTERN makes no representation other than those specified in
this Agreement. NORTHWESTERN MAKES NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR PURPOSE OF LICENSED PRODUCT.
13.0 GENERAL
13.1 LYNX shall not use the name of any Inventor listed in PATENT
RIGHTS, of any institution with which he has been or is connected, nor of
NORTHWESTERN, nor any adaptation of any of them, in any advertising, promotional
or sales literature, without prior written consent obtained from NORTHWESTERN in
each case.
7
13.2 Any notice required or permitted to be given by this Agreement
shall be given postpaid first class certified mail; unless otherwise stated:
TO LYNX: LYNX THERAPEUTICS, INC.
000 Xxxxxxx Xxxxxx Xxxxx
Xxxxxx Xxxx, Xxxxxxxxxx 00000
Attn: Xx. Xxxxxxx Xxxxxx
TO LICENSOR: NORTHWESTERN UNIVERSITY
Technology Transfer Program
000 Xxxxx Xxxxxx
Xxxxxxxx, Xxxxxxxx 00000
Attn: Administrator
Technology Transfer Program
Such addresses may be altered by written notice. If no time limit is specified
for a notice required or permitted to be given under this Agreement, the time
limit therefore shall be twenty (20) full business days, not including the day
of mailing.
13.3 This Agreement and its effect is subject to and shall be construed
and enforced in accordance with the laws of the State of Illinois, United States
of America.
13.4 The parties to this Agreement recognize and agree that each is
operating as an independent contractor and not as an agent of the other.
13.5 The captions herein are for convenience only and shall not be
deemed to limit or otherwise affect the construction thereof.
13.6 Any waiver by either party of the breach of any term or condition
of this agreement will not be considered as a waiver of any subsequent breach of
the same or any other term or condition hereof.
14.0 ENTIRE AGREEMENT
14.1 This Agreement sets forth the entire agreement and understanding
between the parties as to the subject matter of this Agreement, and merges all
prior discussion's between them. Neither of the parties shall be bound by any
conditions, definitions, warranties, or representations with respect to the
subject matter of this Agreement or as duly set forth on or subsequent to the
date hereof in writing unless signed by a proper and duly authorized
representative of the party to be bound thereby.
IN WITNESS WHEREOF, the parties hereto have hereunto set their hands and
duly executed this Agreement as of the day and the year first above written.
8
NORTHWESTERN UNIVERSITY
ATTEST: By: /s/ X. X. Xxxx
----------------------- -----------------------------------
Asst. Secretary C. Xxxxxxx Xxxx
Vice President for Research
Date: 10/29/93 Date: October 29, 1993
------------------------- ---------------------------------
LYNX THERAPEUTICS
ATTEST /s/ Xxxx X. Xxxxx By: /s/ Xxxxxxx Xxxxxx
------------------------ ---------------------------------------
Xxxxxxx Xxxxxx Ph.D.
Vice President,
Technology Development
Manufacturing and Operations
Date: November 3, 1993 Date: 3 November 1993
------------------------- -------------------------------------
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
9
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT E
CRUACHEM, INC. SUBLICENSE
LICENSE AGREEMENT
This License Agreement ("Agreement") is effective as of the 15th day of
June, 1998 ("Effective Date"), by and between Cruachem, Inc., a Delaware
corporation, having its principal office at 00 Xxxxx Xxxxxxxx Xxxxx, Xxxxx,
Xxxxxxxxxxxx 00000 ("Licensee"), and Lynx Therapeutics, Inc., a Delaware
corporation, having its principal office at 0000 Xxx Xxxxxx Xxxxx, Xxxxxxx,
Xxxxxxxxxx, XXX ("Licensor").
RECITALS
WHEREAS, Licensor owns and is an exclusive licensee of proprietary
technology relating to oligonucleotide N3'->P5' phosphoramidates, their
manufacture, and their uses in a variety of fields ("Amidate Technology");
WHEREAS, Licensee has expertise in nucleic acid chemistry and is in the
business of manufacturing, marketing, selling, and distributing nucleic acid
compounds; and
WHEREAS, Licensee desires to acquire from Licensor, and Licensor desires
to grant to Licensee in exchange for the consideration described below the right
to use Licensor's Amidate Technology to manufacture, market, sell, and
commercialize oligonucleotide N3'-->P5' phosphoramidates in the Research Field.
NOW, THEREFORE, in view of the foregoing premises and in consideration
of the mutual promises and covenants contained in the Agreement, Licensor and
Licensee agree as follows:
1
ARTICLE 1. DEFINITIONS.
1.1 "Affiliate" means a corporation, partnership, entity, person, firm,
company or joint venture that controls, is controlled by or is under the common
control with the referenced Party. For the purposes of this definition the word
"control" (including, with correlative meaning, the terms "controlled by" or "is
under the common control with") means the power to direct or cause the direction
of the management and policies of such entity, or the ownership of at least
fifty percent (50%) of the voting stock of such entity.
1.2 "Licensed Product" shall mean any product(s) whose manufacture, use,
or sale in any country would, but for this Agreement, comprise an infringement,
including contributory infringement, of one or more Valid Claims.
1.3 "Monomer Licensed Product" shall mean a Licensed Product which is a
monomer used in the synthesis of an oligonucleotide N3'--->P5' phosphoramidate.
1.4 "Net Sales" means the total amount invoiced or otherwise charged by
Licensee or its Affiliates or its sublicensee on account of the final or end
product sale of a Licensed Product to a non-Affiliate, less the following
deductions to the extent actually incurred or allowed based upon the sale of
such Licensed Product:
(a) credits, allowances, discounts and rebates to, and chargebacks from
the account of, such non-Affiliate for spoiled, damaged, out dated and returned
Licensed Product;
(b) freight and insurance costs for transporting such Licensed Product,
to the extent invoiced to the purchaser;
(c) sales, value-added and other direct taxes on the sale of the
Licensed Product;
(d) customs duties, surcharges and other governmental charges incurred
in connection with the exportation or importation of such Licensed Product;
(e) trade, cash, and quantity discounts off of the invoiced price and
similar promotional discounts (such as management fees required by hospital
buying groups) off the invoiced price, all to the extent consistent with normal
practice in the industry;
2
(f) amounts reflecting retroactive price adjustments on sale of Licensed
Products, to the extent not previously deducted from Net Sales; and
(g) rebates or chargebacks made on the sale of such Licensed Product, to
the extent consistent with the normal practice in the industry, and provided
that any and all of the foregoing are calculated in accordance with generally
accepted accounting principles applicable to the locality where the invoices are
prepared and consistently applied.
1.5 "Patent Rights" shall mean the patents and patent applications
listed in Exhibit A; and with respect to U.S. patents and applications, all
foreign equivalents thereof; and patents issuing on said foreign and U.S. patent
applications. "Patent Rights" shall also include any divisional, continuation,
reissue, reexamination or extension of the above-described patent applications
and resulting patents, along with any extended or restored term, and any
confirmation patent, registration patent, or patent of addition.
1.6 "Research Field" shall mean any use in the field of scientific or
commercial research, excepting any use that Involves treating humans in any way
whatsoever for any condition or any use that involves diagnosis of, testing for,
or detection of, a disease condition, or the predisposition or susceptibility
thereto, or the clinical progress thereof.
1.7 "Valid Claim" means any claim(s) in an unexpired patent or pending
in a patent application included within the Patent Rights which has not been
held unenforceable, unpatentable, or invalid by a decision of a court or other
governmental agency of competent jurisdiction, unappealable or unappealed within
the time allowed for appeal, and which has not been admitted to be invalid or
unenforceable through reissue or disclaimer.
ARTICLE 2. GRANT.
2.1 Subject to all the terms and limitations of this Agreement, Licensor
hereby grants to Licensee and its Affiliates a worldwide non-exclusive
royalty-bearing license, without the right to sublicense, under the Patent
Rights to make, market, distribute, and sell Licensed Products
3
and/or Monomer Licensed Products in the Research Field; provided, however, that
Monomer Licensed Products shall be distributed or sold only to qualified
licensees of Licensor under the Patent Rights.
2.2 Licensee covenants that it will not make, use, market, distribute,
and sell Licensed Products outside the Research Field, nor shall Licensee or any
of its Affiliates promote the use, marketing, distribution, or sale of Licensed
Products outside the Research Field.
2.3 Licensee will promptly disclose and hereby grants back to Licensor a
worldwide, royalty-free, sublicensable license of a scope that permits Licensor
to fully exploit any improvement made in the manufacture, purification, or
quality control of oligonucleotide N3'---> P5' phosphoramidates during the term
of this Agreement; provided that such improvements would be covered by or within
the scope of a Valid Claim of a patent or patent application licensed hereunder.
For other improvements made in the manufacture, purification, or quality control
of oligonucleotide N3'--->P5' phosphoramidates during the term of this Agreement
that are not covered by or within the scope of a Valid Claim of a patent or
patent application licensed hereunder, Licensee hereby grants Licensor an option
to a worldwide royalty-bearing license, with right to Sublicense, to make, use,
and sell such improvements under reasonable terms.
ARTICLE 3. ROYALTIES.
3.1 In consideration of the rights and licenses herein granted to it,
Licensee shall pay to Licensor a royalty of [*] percent ([*]%) on the Net Sales
of Licensed Products and Monomer Licensed Products sold by Licensee or its
Affiliates, provided, however, that from and after the first anniversary of the
Effective Date of the Agreement, Licensee shall pay to Licensor a royalty amount
which is the greater of [*] Dollars ($[*]) and [*] percent ([*]%) of the Net
Sales of Licensed Products and Monomer Licensed Products sold by Licensee or its
Affiliates. Royalties on Net Sales of Licensed Products are payable by Licensee
until the last patent under Patent Rights, embodying a Valid Claim, expires.
4
3.2 Payments of royalties on Net Sales of Licensed Products (other than
the minimum annual royalties whose payment schedule is set forth below) under
this Article are to be made to Licensor within forty-five (45) days of the end
of each December and June for sales invoiced in the six month period prior to
the end of each of those months. Royalties shall be accompanied by a statement
that shall include for each country in which sales of products occurred: the
gross sales and Net Sales in each country's currency; the royalty rate; the
related amounts payable in each country's currency; the applicable exchange rate
to convert from each country's currency to U.S. dollars; and the amounts payable
in U.S. dollars. Royalties shall first be calculated in the currency of the
country in which sales took place and then directly converted to U.S. Dollars
using the exchange rate as reported in the Wall Street Journal for the last
business day of the calendar quarter of sales. All payments hereunder shall be
made to Licensor in U.S. dollars by bank wire transfer in immediately available
funds to such account designated by Licensor. The paying party shall provide
notice at least five (5) business days prior to the wire transfer date of the
amount of payment, the nature of the payment (with reference to the applicable
section of the subject agreement) and the date of receipt of good funds. Such
notice should be given to the Controller of Licensor at the address set forth at
the beginning of this Agreement or such other address directed by Licensor.
3.3 Any payment under this Article not paid by the payment due date
shall bear interest at the rate which is the lesser of ten percent (10%) per
annum or the maximum rate permitted by applicable law, calculated on the number
of days such payment is delinquent.
3.4 The payments under this Article shall be free and clear of any
taxes, duties, levies, fees or charges, except for withholding taxes (to the
extent applicable). The paying party shall make any withholding payments due on
behalf of Licensor and shall promptly provide Licensor with written
documentation of any such payment sufficient to satisfy the reasonable
requirements of an appropriate tax authority concerning an application by
Licensor for a foreign tax credit for such payment or for similar treatment. The
paying party agrees to take such reasonable and lawful steps as Licensor may
request to minimize the amount of tax to which the payments to Licensor are
subject.
5
ARTICLE 4. DUE DILIGENCE.
4.1 Licensee shall at its expense:
(a) use its best efforts to promote the sale of the Licensed Products
and Monomer Licensed Products and to satisfy market demand for them;
(b) engage in advertising and sales promotion of Licensed Products and
Monomer Licensed Products; and
(c) maintain an active and suitably trained sales force to carry out
such efforts.
4.2 Licensee's due diligence obligation shall be deemed satisfied
hereunder by documented expenditures of at least [*] dollars ($[*]) on sales
promotion and marketing of Licensed Products in the following amounts in the
following periods:
Sale promotion & marketing expenses Period during which amount is expended
---------------------------------------------------------------------------------------
$ [*]. From Effective Date to 1st anniversary thereof
$ [*]. From 1st anniversary to 2nd anniversary
$ [*]. From 2nd anniversary to 3rd anniversary
ARTICLE 5. QUALITY ASSURANCE.
5.1 Licenses shall use its best efforts to make Licensed Products and
Monomer Licensed Products of the highest quality for their intended use.
Licensee shall make Licensed Products and Monomer Licensed Products with the
minimal purity standards set forth in Exhibit B.
ARTICLE 6. BOOKS AND RECORDS.
6.1 Licensee shall keep, for at least three (3) years, records of all
sales of products in sufficient detail to permit Licensor to confirm the
accuracy of Licensee's payment calculations.
6
Once a year, at the request and the expense of Licensor, upon at least five (5)
days prior written notice, Licensee shall permit a nationally recognized,
independent, certified public accountant, appointed by Licensor and acceptable
to Licensee, access to these records during regular business hours solely to the
extent necessary to verify such calculations, provided that such an accountant
has entered into a confidentiality agreement with Licensee with terms
substantially similar to the confidentiality provisions of this Agreement,
limiting the use and disclosure of such information to purposes germane to this
section. Results of any such examination shall be made available to both parties
to this Agreement. If such examination reveals an underpayment of amounts by
five percent (5%) or more, Licensee shall pay all costs of such examination. In
the event such accountant concludes that additional payments are owed, the
additional payments shall be paid within thirty (30) days of the date Licensor
delivers to Licensee the accountant's written report reflecting such conclusion.
This section shall survive any termination of this Agreement for ten (10) years.
ARTICLE 7. TERM AND TERMINATION.
7.1 Unless otherwise terminated by operation of law or by acts of the
parties in accordance with the terms of this Agreement, this Agreement shall be
in force from the Effective Date and shall remain in effect for the life of the
last-to-expire patent licensed under this Agreement, or until the last patent
application licensed under this Agreement is abandoned.
7.2 Any termination of this Agreement will not affect the rights and
obligations set forth in the following Articles:
Article 3. Royalties
Article 6. Books and Records
Article 10. Indemnification
Article 11. Confidentiality
Article 12. Use of Names
7.3 If Licensee should violate or fail to perform any material term or
covenant of this
7
Agreement, then Licensor may give written notice of such default ("Notice of
Default") to Licensee. If Licensee should fail to repair such default within
sixty (60) days after the date of such Notice of Default, Licensor shall have
the right to terminate this Agreement and the licenses herein by a second
written notice ("Notice of Termination") to Licensee. If a Notice of Termination
is sent to Licensee, this Agreement shall automatically terminate on the date
such notice takes effect. Such termination shall not relieve Licensee of its
obligation to pay any royalty or license fees owing at the time of such
termination and will not impair any accrued right of Licensor. Material terms
under this Agreement include, but are not limited to, Article 2 (Grant), Article
3 (Royalties), Article 4 (Due Diligence), Article 5 (Quality Assurance), Article
6 (Books and Records), and Article 10 (Indemnification).
7.4 Licensee shall have the right at any time to terminate this
Agreement by giving notice in writing to Licensor. Such Notice of Termination
shall be effective sixty (60) days after the date thereof.
7.5 Any termination pursuant to the above paragraph shall not relieve
Licensee of any obligation or liability accrued hereunder prior to such
termination or rescind anything done by Licensee or any payments made to
Licensor hereunder prior to the time such termination becomes effective, and
such termination shall not affect in any manner rights of Licensor arising under
this Agreement prior to such termination.
ARTICLE 8. REPRESENTATIONS AND WARRANTIES.
8.1 Licensor warrants and represents to Licensee that it has the lawful
right to grant the license under this Agreement and that the Licensor has made
all filings and paid all fees and done all such other things as to maintain the
Patent Rights in good standing.
8.2 This license and the associated inventions are provided WITHOUT
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER
WARRANTY, EXPRESS OR IMPLIED. LICENSOR MAKES NO REPRESENTATION OR
8
WARRANTY THAT THE INVENTION OR LICENSED PRODUCTS WILL NOT INFRINGE ANY PATENT OR
OTHER PROPERTY RIGHT.
8.3 Nothing in this Agreement shall be construed as: (a) a warranty or
representation by Licensor as to the validity, enforceability, or scope of any
of the Patent Rights hereunder, or elsewhere; (b) a warranty or representation
that anything made, used, sold, or otherwise disposed of under any license
granted in this Agreement is or will be free from infringement of patents of
third parties; (c) an obligation to bring or prosecute actions or suits against
third parties for patent infringement, except as provided in Article 11; (d)
conferring by implication, estoppel, or otherwise, any license or rights under
any patents or patent applications of Licensor other than those of the Patent
Rights as defined herein; or (e) an obligation to furnish to Licensee any
know-how or other information relating to the Patent Rights.
ARTICLE 9. LIMITATION OF LIABILITY.
9.1 In no event shall Licensor be liable for any incidental, special, or
consequential damages resulting from exercise of the license granted herein or
the use of any invention described in any of the Patent Rights or the use of any
Licensed Products.
ARTICLE 10. INDEMNIFICATION.
10.1 Licensee will indemnity hold harmless, and defend Licensor, its
officers, employees, and agents against any and all claims, suits, losses,
damage, costs, fees, and expenses resulting from or arising out of exercise of
this license. This indemnification will include, but will not be limited to, any
product liability.
10.2 Licensor will indemnity, hold harmless, and defend Licensee, its
officers, employees, and agents against any and all claims, suits, losses,
damage, costs, fees, and expenses resulting from or arising out of acts or
omissions which are the sole responsibility of Licensor. This indemnification
will include, but will not be limited to, any product liability.
9
ARTICLE 11. CONFIDENTIALITY.
11.1 Licensee and Licensor respectively will treat and maintain the
proprietary business, patent prosecution, software, engineering drawings,
process and technical information, and other proprietary information
("Proprietary Information") of the other party in confidence using at least the
same degree of care as that party uses to protect its own proprietary
information of a like nature for a period from the date of disclosure until five
years after the date of termination of this Agreement.
11.2 All Proprietary Information will be labeled or marked confidential
or as otherwise similarly appropriate by the disclosing party, or if the
Proprietary Information is orally disclosed, it will be reduced to writing or
some other physically tangible form, marked and labeled as set forth above by
the disclosing party, and delivered to the receiving party within 30 days after
the oral disclosure as a record of the disclosure and the confidential nature
thereof Notwithstanding the foregoing, Licensee and Licensor may use and
disclose Proprietary Information to its employees, agents, consultants,
contractors, provided that any such parties are bound by a like duty of
confidentiality.
11.3 Nothing contained herein will in any way restrict or impair the
right of Licensee or Licensor to use, disclose, or otherwise deal with any
Proprietary Information:
11.3a that recipient can demonstrate by written records was previously
known to it;
11.3b that is now, or becomes in the future, public knowledge other than
through acts or omissions by recipient.
11.3c that is lawfully obtained without restrictions by recipient from
sources independent of the disclosing party;
10
11.3d that is required to be disclosed to a governmental entity or
agency in connection with seeking any governmental or regulatory approval, or
pursuant to the lawful requirement or request of a governmental entity or
agency; or
11.3e that is furnished to a third party by the recipient with similar
confidentiality restrictions imposed on such third party, as evidenced in
writing.
11.4 Upon termination of this Agreement, Licensee and Licensor will
destroy or return to the disclosing party proprietary information received from
the other in its possession within 15 days following the effective date of
termination. Licensee and Licensor will provide each other, within 30 days
following termination, with a written notice that Proprietary Information has
been returned or destroyed. Each party may, however, retain one copy of
Proprietary Information for archival purposes in non-working files.
ARTICLE 12. USE OF NAMES.
12.1 Neither party shall use the name or trademarks of the other party
without the prior written consent of the other party. Notwithstanding the
previous sentence, Licensee shall prominently display in catalogues, brochures,
or other advertisements or materials describing Licensed Products, Licensor's
name in association with such products in one of the following forms: "LYNX",
"Lynx", "Lynx Therapeutics", or "Lynx Therapeutics, Inc."
ARTICLE 13. NOTICES.
13.1 Any notice or payment required to be given to either party will be
deemed to have been properly given and to be effective (a) on the date of
delivery if delivered in person or (b) five days after mailing if mailed by
first-class certified mail, postage paid, to the respective addresses given
below, or to another address as it may designate by written notice given to the
other party.
11
As to Licensor: Lynx Therapeutics, Inc.
0000 Xxx Xxxxxx Xxxxx
Xxxxxxx, XX 00000
Attn: CEO
As to Licensee: Cruachem, Inc.
00 Xxxxx Xxxxxxxx Xxxxx
Xxxxx, XX 00000
Attn: CEO
ARTICLE 14. ASSIGNABILITY.
14.1 Neither this Agreement nor any rights or benefits hereunder shall
be assignable or transferable by Licensee without the prior written consent of
Licensor, except that Licensee may assign its rights and obligations under this
Agreement as a part of the sale or transfer of its entire business.
ARTICLE 15. GOVERNING LAWS.
15.1 This Agreement shall be considered to have been made in the United
States, and shall be interpreted in accordance with the laws of the State of
California.
ARTICLE 16. MISCELLANEOUS.
16.1 Headings. The headings of the several sections are inserted for
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this Agreement.
12
16.2 Entire Agreement. This Agreement embodies the entire understanding
of the parties and will supersede all previous communication, representations or
understandings, either oral or written, between the parties relating to the
subject matter hereof. No amendment or modification hereof will be valid or
binding upon the parties unless made in writing and signed on behalf of each
party.
16.3 Severability. In case any of the provisions contained in the
Agreement are held to be invalid, illegal, or unenforceable in any respect, such
invalidity, illegality, or unenforceability will not affect any other provisions
hereof, but this Agreement will be construed as if such invalid or illegal or
unenforceable provisions had never been contained herein.
16.4 Waiver. It is agreed that no waiver by either party hereto of any
breach or default of any of the covenants or agreements herein set forth will be
deemed a waiver as to any subsequent and/or similar breach or default.
16.5 No Agency. Nothing herein shall be deemed to create an agency,
joint venture, or partnership relationship between Licensee and Licensor.
13
16.7 Export Control Laws. Licensee will observe all applicable United
States and foreign laws with respect to the transfer of Licensed Products and
related technical data to foreign countries, including, without limitation, the
International Traffic in Arms Regulations (ITAR) and the Export Administration
Regulations.
16.8 Patent Marking. Licensee will xxxx all Licensed Products made,
distributed, or sold under the terms of this Agreement, or their containers, in
accordance with the applicable patents marking laws. Licensee shall prominently
display in catalogues, brochures, or other advertisements or materials
describing Licensed Products, a label license statement with the following, or
comparable, restriction:
Purchase of this product is accompanied by a license under U.S. patents
5,599,922; 5,591,607; 5,631,135; 5,726,297; 5,476,925; 5,646,260; their
foreign counterparts, and other pending patents, owned or exclusively
licensed by Lynx Therapeutics, Inc., to use this product for research
only. Use in humans or use for diagnostic purposes is not authorized.
In Witness Whereof, Licensee and Licensor have caused this Agreement to
be duly executed by their duly authorized representatives as of the date first
shown herein.
LYNX THERAPEUTICS, INC. CRUACHEM, INC.
By: ______________________________ By:_______________________________
Title:____________________________ Title:____________________________
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
14
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT A. (TO CRUACHEM, INC. SUBLICENSE)
PATENT RIGHTS.
Filing
Date Issue
Docket No. Subject Matter (m-d-y) Ser. No. Date Xxx. No.
005 meth enhancing nuclease resist. 3-18-94 08/214,599 2-4-97 5,599,922
005-01 ss- 100% amidates 4-50-mers 6-6-95 08/477,306
005-02 amidate triplexes 6-6-95 08/478,470 1-7-97 5,591,607
005-03 meth enhancing hybrid/diag kits 6-6-95 08/473,015 5-20-97 5,631,135
005-05us PCT nat'l -- incl LR3280 seq,etc 3-20-95 08/700,448
005-06 amidate duplexes 9-3-97 08/923,386
005-05wo 3-20-95 PCT/US95/03575
[ * ] [ * ] [ * ]
005 05ca 2,184,375
[ * ] [ * ]
005-05ep 95914800.8
[ * ] [ * ] [ * ]
[ * ] [ * ] [ * ]
[ * ] [ * ] [ * ]
[ * ] [ * ] [ * ]
[ * ] [ * ] [ * ]
[ * ] [ * ] [ * ]
006-01 ss amidate compounds; hairpins 6-5-95 08/465,368 3-10-98 5,726,297
035-01 amidate synth. via amidite Xfer 6-14-96 08/663,918
[ * ] [ * ] [ * ] [ * ]
035-02 add G monomer & example 12-20-96 08/771,789
038 hydrophob. Prot/amidate synth. 9-15-97 08/929,620
9213 oligos w/1-4 amidate linkages 1-23-95 08/376,000 00-00-00 5,476,925
[ * ] [ * ] [ * ] [ * ]
9213B chimeric amidates w/thio&diester 6-6-95 08/471,248 7-8-97 5,646,260
9213C meth synth ofigo w/3'term amine 6-6-95 08/467,219 7-15-97 5,648,480
9213E meth synth amidates via AT oxid. 6-7-96 08/659,924
[ * ] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
15
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT B. (TO CRUACHEM, INC. SUBLICENSE)
MINIMUM QUALITY ASSURANCE.
1. Oligonucleotide N3'->P5' phosphoramidates:
Minimum purity of [*] percent ([*]%) as measured by ion exchange
chromatograpy or capillary electrophoresis.
11. Monomers:
Minimum purity of [*] percent ([*]%) as measured by reverse phase HPLC.
16
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT F
JBL SCIENTIFIC, INC. SUBLICENSE
LICENSE AGREEMENT
This License Agreement ("Agreement") is effective as of _______________
("Effective Date"), by and between JBL Scientific. Inc., a corporation, having
its principal xxxxxx xx 000 Xxxxxxx Xxxxx, Xxx Xxxx Xxxxxx, Xxxxxxxxxx, XXX.
("Licensee") and Lynx Therapeutics. Inc., a Delaware corporation having its
principal office at 0000 Xxx Xxxxxx Xxxxx, Xxxxxxx Xxxxxxxxxx, XXX ("Licensor").
RECITALS
WHEREAS, Licensor owns and is an exclusive licensee of proprietary
technology relating to oligonucleotide N3'--->P5' phosphoramidates, their
manufacture, and their uses in a variety of fields ("Amidate Technology");
WHEREAS, Licensee has expertise in nucleic acid chemistry and is in the
business of manufacturing. marketing, selling, and distributing nucleic acid
compounds; and
WHEREAS, Licensee desires to acquire from Licensor, and Licensor desires
to grant to Licensee in exchange for the consideration described below the right
to use Licensor's Amidate Technology to manufacture, market, sell, and
commercialize oligonucleotide N3'-->P5' phosphoramidates in the Research Field.
NOW, THEREFORE, in view of the foregoing premises and in consideration
of the mutual promises and covenants contained in the Agreement, Licensor and
Licensee agree as follows:
1
ARTICLE 1. DEFINITIONS.
1.1 "Affiliate" means a corporation, partnership, entity, person, firm,
company or joint venture that controls, is controlled by or is under the common
control with the referenced Party. For the purposes of this definition the word
"control" (including, with correlative meaning, the terms "controlled by" or "is
under the common control with") means the power to direct or cause the direction
of the management and policies of such entity, or the ownership of at least
fifty percent (50%) of the voting stock of such entity.
1.2 "Licensed Product" shall mean any product(s) whose manufacture, use,
or sale in any country would, but for this Agreement, comprise an infringement,
including contributory infringement, of one or more Valid Claims.
l.3 "Monomer Licensed Product" shall mean a Licensed Product which is a
monomer used in the synthesis of an oligonucleotide N3'->P5' phosphoramidate.
1.4 "Net Sales" means the total amount invoiced or otherwise charged by
Licensee or its Affiliates or its sublicensee on account of the final or end
product sale of a Licensed Product to a non-Affiliate, less the following
deductions to the extent actually incurred or allowed based upon the sale of
such Licensed Product:
(a) credits, allowances, discounts and rebates to, and chargebacks from
the account of, such non-Affiliate for spoiled, damaged, out dated and returned
Licensed Product;
(b) freight and insurance costs for transporting such Licensed Product,
to the extent invoiced to the purchaser,
(c) sales, value-added and other direct taxes on the sale of the
Licensed Product;
(d) customs duties, surcharges and other governmental charges incurred
in connection with the exportation or importation of such Licensed Product;
(e) trade, cash, and quantity discounts off of the invoiced price and
similar promotional discounts (such as management fees required by hospital
buying groups) off the invoiced price, all to the extent consistent with normal
practice in the industry;
2
(f) amounts reflecting retroactive price adjustments on sale of Licensed
Products, to the extent not previously deducted from Net Sales; and
(g) rebates or chargebacks made on the sale of such Licensed Product, to
the extent consistent with the normal practice in the industry, and provided
that any and all of the foregoing are calculated in accordance with generally
accepted accounting principles applicable to the locality where the invoices are
prepared and consistently applied.
1.5 "Patent Rights" shall mean the patents and patent applications
listed in Exhibit A; and with respect to U.S. patents and applications, all
foreign equivalents thereof, and patents issuing on said foreign and U.S. patent
applications. "Patent Rights" shall also include any divisional, continuation,
reissue, reexamination or extension of the above-described patent applications
and resulting patents, along with any extended or restored term, and any
confirmation patent, registration patent, or patent of addition.
1.6 "Research Field" shall mean any use in the field of scientific or
commercial research, excepting any use that involves treating humans in any way
whatsoever for any condition or any use that involves diagnosis of, testing for,
or detection of, a disease condition, or the predisposition or susceptibility
thereto, or the clinical progress thereof
1.7 "Valid Claim" means any claim(s) in an unexpired patent or pending
in a patent application included within the Patent Rights which has not been
held unenforceable, unpatentable, or invalid by a decision of a court or other
governmental agency of competent jurisdiction, unappealable or unappealed within
the time allowed for appeal, and which has not been admitted to be invalid or
unenforceable through reissue or disclaimer.
ARTICLE 2. GRANT.
2.1 Subject to all the terms and limitations of this Agreement, Licensor
hereby grants to Licensee and its Affiliates a worldwide non-exclusive
royalty-bearing license, without the right to sublicense. Under the Patent
Rights to make, market, distribute, and sell Licensed Products
3
and/or Monomer Licensed Products in the Research Field.
2.2 Licensee covenants that it will not make, use, market, distribute,
and sell Licensed Products outside the Research Field, nor shall Licensee or any
of its Affiliates promote the use, marketing, distribution, or sale of Licensed
Products outside the Research Field.
2.3 Licensee will promptly disclose and hereby grants back to Licensor a
worldwide, royalty-free sublicensable license of a scope that permits Licensor
to fully exploit any improvement made in the manufacture, purification, or
quality control of oligonucleotide N3'->P5' phosphoramidates during the term of
this Agreement; provided that such improvements would be covered by or within
the scope of a Valid Claim of a patent or patent application licensed hereunder.
For other improvements made in the manufacture, purification, or quality control
of oligonucleotide N3'->P5' phosphoramidates during the term of this Agreement
that are not covered by or within the scope of a Valid Claim of a patent or
patent application licensed hereunder, Licensee hereby grants Licensor an option
to a worldwide royalty-bearing license, with right to sublicense, to make, use,
and sell such improvements under reasonable terms.
ARTICLE 3. ROYALTIES.
3.1 In consideration of the rights and licenses herein granted to it,
Licensee shall pay to Licensor a royalty of [*] percent ([*]%) on the Net Sales
of Licensed Products and Monomer Licensed Products sold by Licensee or its
Affiliates; provided, however, that from and after the first anniversary of the
Effective Date of the Agreement, Licensee shall pay to Licensor a royalty amount
which is the greater of [*] dollars ($[*]) and [*] percent ([*]%) of the Net
Sales of Licensed Products and Monomer Licensed Products sold by Licensee or its
Affiliates. Royalties on Net Sales of Licensed Products are payable by Licensee
until the last patent under Patent Rights, embodying a Valid Claim, expires.
3.2 Payments of royalties on Net Sales of Licensed Products (other than
the minimum
4
annual royalties whose payment schedule is set forth below) under this Article
are to be made to Licensor within forty-five (45) days of the end of each
December and June for sales invoiced in the six month period prior to the end of
each of those months. Royalties shall be accompanied by a statement that shall
include for each country in which sales of products occurred: the gross sales
and Net Sales in each country's currency; the royalty rate; the related amounts
payable in each country's currency; the applicable exchange rate to convert from
each country's currency to U.S. dollars; and the amounts payable in U.S.
dollars. Royalties shall first be calculated in the currency of the country in
which sales took place and then directly converted to U.S. Dollars using the
exchange rate as reported in the Wall Street Journal for the last business day
of the calendar quarter of sales. All payments hereunder shall be made to
Licensor in U.S. dollars by bank wire transfer in immediately available funds to
such account designated by Licensor. The paying party shall provide notice at
least five (5) business days prior to the wire transfer date of the amount of
payment, the nature of the payment (with reference to the applicable section of
the subject agreement) and the date of receipt of good funds. Such notice should
be given to the Controller of Licensor at the address set forth at the beginning
of this Agreement or such other address directed by Licensor.
3.3 Any payment under this Article not paid by the payment due date
shall bear interest at the rate which is the lesser of ten percent (10%) per
annum or the maximum rate permitted by applicable law calculated on the number
of days such payment is delinquent.
3.4 The payments under this Article shall be free and clear of any
taxes, duties, levies, fees or charges, except for withholding taxes (to the
extent applicable). The paying party shall make any withholding payments due on
behalf of Licensor and shall promptly provide Licensor with written
documentation of any such payment sufficient to satisfy the reasonable
requirements of an appropriate tax authority concerning an application by
Licensor for a foreign tax credit for such payment or for similar treatment. The
paying party agrees to take such reasonable and lawful steps as Licensor may
request to minimize the amount of tax to which the payments to Licensor are
subject.
5
ARTICLE 4. DUE DILIGENCE.
4.1 Licensee shall at its expense:
(a) use its best efforts to promote the sale of the Licensed Products
and Monomer Licensed Products and to satisfy market demand for them;
(b) engage in advertising and sales promotion of Licensed Products and
Monomer Licensed Products; and
(c) maintain an active and suitably trained sales force to carry out
such efforts.
4.2 Licensee's due diligence obligation shall be deemed satisfied
hereunder by documented expenditures of at least [*] dollars ($[*]) on sales
promotion and marketing of Licensed Products in the following amounts in the
following periods:
Sale promotion & marketing expenses Period during which amount is expended
--------------------------------------------------------------------------------------
$ [*]. From Effective Date to 1st anniversary thereof
$ [*]. From 1st anniversary to 2nd anniversary
$ [*]. From 2nd anniversary to 3rd anniversary
ARTICLE 5. QUALITY ASSURANCE.
5.1 Licensee shall use its best efforts to make Licensed Products and
Monomer Licensed Products of the highest quality for their intended use.
Licensee shall make Licensed Products and Monomer Licensed Products with the
minimal purity standards set forth in Exhibit B.
ARTICLE 6. BOOKS AND RECORDS.
6.1 Licensee shall keep, for at least three (3) years, records of all
sales of products in sufficient detail to permit Licensor to confirm the
accuracy of Licensee's payment calculations. Once a year at the request and the
expense of Licensor, upon at least five (5) days prior written notice, Licensee
shall permit a nationally recognized, independent, certified public accountant,
appointed by Licensor and acceptable to Licensee, access to these records during
regular
6
business hours solely to the extent necessary to verify such calculations,
provided that such an accountant has entered into a confidentiality agreement
with Licensee with terms substantially similar to the confidentiality provisions
of this Agreement, limiting the use and disclosure of such information to
purposes germane to this section. Results of any such examination shall be made
available to both parties to this Agreement. If such examination reveals an
underpayment of amounts by five percent (5%) or more, Licensee shall pay all
costs of such examination. In the event such accountant concludes that
additional payments are owed, the additional payments shall be paid within
thirty (30) days of the date Licensor delivers to Licensee the accountant's
written report reflecting such conclusion. This section shall survive any
termination of this Agreement for ten (10) years.
ARTICLE 7. TERM AND TERMINATION.
7.1 Unless otherwise terminated by operation of law or by acts of the
parties in accordance with the terms of this Agreement, this Agreement shall be
in force from the Effective Date and shall remain in effect for the life of the
last-to-expire patent licensed under this Agreement, or until the last patent
application licensed under this Agreement is abandoned.
7.2 Any termination of this Agreement will not affect the rights and
obligations set forth in the following Articles:
Article 3. Royalties
Article 6. Books and Records
Article 10. Indemnification
Article 11. Confidentiality
Article 12. Use of Names
7.3 If Licensee should violate or fall to perform any material term or
covenant of this Agreement, then Licensor may give written notice of such
default ("Notice of Default") to Licensee. If Licensee should fail to repair
such default within sixty (60) days after the date of
7
such Notice of Default, Licensor shall have the right to terminate this
Agreement and the licenses herein by a second written notice ("Notice of
Termination") to Licensee. If a Notice of Termination is sent to Licensee, this
Agreement shall automatically terminate on the date such notice takes effect.
Such termination shall not relieve Licensee of its obligation to pay any royalty
or license fees owing at the time of such termination and will not impair any
accrued right of Licensor. Material terms under this Agreement include, but are
not limited to, Article 2 (Grant), Article 3 (Royalties), Article 4 (Due
Diligence), Article 5 (Quality Assurance), Article 6 (Books and Records), and
Article 10 (Indemnification).
7.4 Licensee shall have the right at any time to terminate this
Agreement by giving notice in writing to Licensor. Such Notice of Termination
shall be effective sixty (60) days after the date thereof
7.5 Any termination pursuant to the above paragraph shall not relieve
Licensee of any obligation or liability accrued hereunder prior to such
termination or rescind anything done by Licensee or any payments made to
Licensor hereunder prior to the time such termination becomes effective, and
such termination shall not affect in any manner rights of Licensor arising under
this Agreement prior to such termination.
ARTICLE 8. REPRESENTATIONS AND WARRANTIES.
8.1 Licensor warrants and represents to Licensee that it has the lawful
right to grant the license under this Agreement and that the Licensor has made
all filings and paid all fees and done all such other things as to maintain the
Patent Rights in good standing.
8.2 This license and the associated inventions are provided WITHOUT
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER
WARRANTY, EXPRESS OR IMPLIED. LICENSOR MAKES NO REPRESENTATION OR WARRANTY THAT
THE INVENTION OR LICENSED PRODUCTS WILL NOT INFRINGE ANY PATENT OR OTHER
PROPERTY RIGHT.
8
8.3 Nothing in this Agreement shall be construed as: (a) a warranty or
representation by Licensor as to the validity, enforceability, or scope of any
of the Patent Rights hereunder, or elsewhere; (b) a warranty or representation
that anything made, used, sold, or otherwise disposed of under any license
granted in this Agreement is or will be free from infringement of patents of
third parties: (c) an obligation to bring or prosecute actions or suits against
third parties for patent infringement, except as provided in Article 11; (d)
conferring by implication, estoppel, or otherwise, any license or rights under
any patents or patent applications of Licensor other than those of the Patent
Rights as defined herein; or (e) an obligation to furnish to Licensee any
know-how or other information relating to the Patent Rights.
ARTICLE 9. LIMITATION OF LIABILITY.
9.1 In no event shall Licensor be liable for any incidental, special, or
consequential damages resulting from exercise of the license granted herein or
the use of any invention described in any of the Patent Rights or the use of any
Licensed Products.
ARTICLE 10. INDEMNIFICATION.
10.1 Licensee will indemnify, hold harmless, and defend Licensor, its
officers, employees, and agents against any and all claims, suits, losses,
damage, costs, fees, and expenses resulting from or arising out of exercise of
this license. This indemnification will include, but will not be limited to, any
product liability.
ARTICLE 11. CONFIDENTIALITY.
11.1 Licensee and Licensor respectively will treat and maintain the
proprietary business, patent prosecution, software, engineering drawings,
process and technical information, and other proprietary information
("Proprietary Information") of the other party in confidence using at least the
same degree of care as that party uses to protect its own proprietary
information of a like
9
nature for a period from the date of disclosure until five years after the date
of termination of this Agreement.
11.2 All Proprietary Information will be labeled or marked confidential
or as otherwise similarly appropriate by the disclosing party, or if the
Proprietary Information is orally disclosed, it will be reduced to writing or
some other physically tangible form, marked and labeled as set forth above by
the disclosing party, and delivered to the receiving party within 30 days after
the oral disclosure as a record of the disclosure and the confidential nature
thereof. Notwithstanding the foregoing, Licensee and Licensor may use and
disclose Proprietary Information to its employees, agents, consultants,
contractors, provided that any such parties are bound by a like duty of
confidentiality.
11.3 Nothing contained herein will in any way restrict or impair the
right of Licensee or Licensor to use, disclose. or otherwise deal with any
Proprietary Information:
11.3a that recipient can demonstrate by written records was previously
known to it;
11.3b that is now, or becomes in the future, public knowledge other than
through acts or omissions by recipient.
113c that is lawfully obtained without restrictions by recipient from
sources independent of the disclosing party;
11.3d that is required to be disclosed to a governmental entity or
agency in connection with seeking any governmental or regulatory approval, or
pursuant to the lawful requirement or request of a governmental entity or
agency; or
11.3e that is furnished to a third party by the recipient with similar
confidentiality restrictions imposed on such third party, as evidenced in
writing.
10
11.4 Upon termination of this Agreement, Licensee and Licensor will
destroy or return to the disclosing party proprietary information received from
the other in its possession within 15 days following the effective date of
termination. Licensee and Licensor will provide each other, within 30 days
following termination, with a written notice that Proprietary Information has
been returned or destroyed. Each party may, however, retain one copy of
Proprietary Information for archival purposes in non-working files.
ARTICLE 12. USE OF NAMES.
12.1 Neither party shall use the name or trademarks of the other party
without the prior written consent of the other party. Notwithstanding the
previous sentence, Licensee shall prominently display in catalogues, brochures,
or other advertisements or materials describing Licensed Products, Licensor's
name in association with such products in one of the following forms: "LYNX",
"Lynx", "Lynx Therapeutics", or "Lynx Therapeutics, Inc."
ARTICLE 13. NOTICES.
13.1 Any notice or payment required to be given to either party will be
deemed to have been properly given and to be effective (a) on the date of
delivery if delivered in person or (b) five days after mailing if mailed by
first-class certified mail, postage paid, to the respective addresses given
below, or to another address as it may designate by written notice given to the
other party.
As to Licensor: Lynx Therapeutics, Inc.
0000 Xxx Xxxxxx Xxxxx
Xxxxxxx, XX 00000
Attn: CEO
As to Licensee: JBL Scientific, Inc.
11
000 Xxxxxxx Xxxxx
Xxx Xxxx Xxxxxx, XX 00000
Attn: President
ARTICLE 14. ASSIGNABILITY.
14.1 Neither this Agreement nor any rights or benefits hereunder shall
be assignable or transferable by Licensee without the prior written consent of
Licensor, except that Licensee may assign its rights and obligations under this
Agreement as a part of the sale or transfer of its entire business.
ARTICLE 15. GOVERNING LAWS.
15.1 This Agreement shall be considered to have been made in the United
States and shall be interpreted in accordance with the laws of the State of
California.
12
ARTICLE 16. MISCELLANEOUS.
16.1 Headings. The headings of the several sections are inserted for
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this Agreement.
16.2 Entire Agreement. This Agreement embodies the entire understanding
of the parties and will supersede all previous communication, representations or
understandings, either oral or written, between the parties relating to the
subject matter hereof. No amendment or modification hereof will be valid or
binding upon the parties unless made in writing and signed on behalf of each
party.
16.3 Severability. In case any of the provisions contained in the
Agreement are held to be invalid, illegal, or unenforceable in any respect, such
invalidity, illegality, or unenforceability will not affect any other provisions
hereof, but this Agreement will be construed as if such invalid or illegal or
unenforceable provisions had never been contained herein.
16.4 Waiver. It is agreed that no waiver by either party hereto of an
breach or default of any of the covenants or agreements herein set forth will be
deemed a waiver as to any subsequent and/or similar breach or default.
16.5 No Agency. Nothing herein shall be deemed to create an agency,
joint venture, or partnership relationship between Licensee and Licensor.
16.7 Export Control Laws. Licensee will observe all applicable United
States and foreign laws with respect to the transfer of Licensed Products and
related technical data to foreign countries, including, without limitation, the
International Traffic in Arms Regulations (ITAR) and the Export Administration
Regulations.
16.8 Patent Marking. Licensee will xxxx all Licensed Products made,
distributed, or sold
13
under the terms of this Agreement, or their containers, in accordance with the
applicable patents marking laws. Licensee shall prominently display in
catalogues, brochures, or other advertisements or materials describing Licensed
Products, a label license statement with the following, or comparable,
restriction:
Purchase of this product is accompanied by a license under U.S. patents
5,599,922; 5,837,835; 5,591,607; 5,631,135; 5,726,297; 5,684,143;
5,824,793; 5,859,233; 5,476.925; 5,646,260; 5,648,480; their foreign
counterparts, and other pending patents, owned or exclusively licensed
by Lynx Therapeutics, Inc., to use this product for research only. Use
in humans or use for diagnostic purposes is not authorized.
14
In Witness Whereof, Licensee and Licensor have caused this Agreement to
be duly executed by their duly authorized representatives as of the date first
shown herein.
LYNX THERAPEUTICS, INC. JBL SCIENTIFIC, INC.
By:_________________________________ By:_________________________________
Title:______________________________ Title:______________________________
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
15
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT A. (TO JBL SCIENTIFIC, INC. SUBLICENSE)
PATENT RIGHTS.
Filing
Date Issue
Docket No. Subject Matter (m-d-y) Ser. No. Date Xxx. No.
005 meth enhancing nuclease resist. 3-18-94 08/214,599 2-4-97 5,599,922
005-01 ss- 100% amidates 4-50-mers 6-6-95 08/477,306 11-17-98 5,837,835
005-02 amidate triplexes 6-6-95 08/478,470 1-7-97 5,591,607
005-03 meth enhancing hybrid/diag kits 6-6-95 08/473,015 5-20-97 5,631,135
005-05us PCT nat'l -- incl LR3280 seq,etc 3-20-95 08/700,448
005-06 amidate duplexes 9-3-97 08/923,386
005-05wo 3-20-95 PCT/US95/03575
[ * ] [ * ] [ * ]
005 05ca 2,184,375
[ * ] [ * ]
005-05ep 95914800.8
[ * ] [ * ] [ * ]
[ * ] [ * ] [ * ]
[ * ] [ * ] [ * ]
[ * ] [ * ] [ * ]
[ * ] [ * ] [ * ]
[ * ] [ * ] [ * ]
006-01 ss amidate compounds; hairpins 6-5-95 08/465,368 3-10-98 5,726,297
035 2-fluoromidates 2-21-96 08/603,566 11-4-97 5,684,143
035-01 amidate synth. via amidite Xfer 6-14-96 08/663,918 10-20-98 5,824,793
[ * ] [ * ] [ * ] [ * ]
035-02 add G monomer & example 12-20-96 08/771,789 1-12-99 5,859233
038 hydrophob. Prot/amidate synth. 9-15-97 08/929,620
[ * ] [ * ]
9213 oligos w/1-4 amidate linkages 1-23-95 08/376,291 12-19-95 5,476,925
[ * ] [ * ] [ * ] [ * ]
9213B chimeric amidates w/thio&diester 6-6-95 08/471,248 7-8-97 5,646,260
9213C meth synth ofigo w/3'term amine 6-6-95 08/467,219 7-15-97 5,648,480
9213E meth synth amidates via AT oxid. 6-7-96 08/659,924
[ * ] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
16
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT B. (TO JBL SCIENTIFIC, INC. SUBLICENSE)
MINIMUM QUALITY ASSURANCE.
I. Oligonucleotide N3'-->P5' phosphoramidates:
Minimum purity of [*] percent ([*]%) as measured by ion exchange
chromatograpy or capillary electrophoresis.
II. Monomers
Minimum purity of [*] percent ([*]%) as measured by reverse phase HPLC.
17
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT G
TERMS FOR EXCLUSIVE SUBLICENSE UNDER NORTHWESTERN LICENSE
Definitions: Same as in Northwestern License
License Grant: Exclusive worldwide sublicense of all Lynx's rights under
the Northwestern License, subject to the terms and
conditions of the Northwestern License
License Fee: None
Royalties: As provided in Section 4.1 of the Northwestern License,
payable directly to Northwestern
Patent Costs: Reimbursement to Northwestern as provided in Section 4.10
of the Northwestern License
Minimum Royalty: As provided in Section 6.2 of the Northwestern License,
payable directly to Northwestern
Term: Equal to the term of the Northwestern License
Termination: Lynx will not terminate the Northwestern License without
the express prior written consent of Geron
Indemnity: Indemnification of Northwestern as provided in Sections
12.1 and 12.2 of the Northwestern License
Existing Sublicenses: Geron's rights will be subject to the
existing Sublicenses, and Geron will be entitled to all
royalties and other sublicensor rights (and responsible
for all sublicensor obligations) under such Sublicenses,
including without limitation the obligation to pay
Northwestern its share, if any, of royalties from such
Sublicenses.
Other Terms: As negotiated by the parties, [*]
[*] = 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 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT H
STOCK PURCHASE AGREEMENT
Exhibit H is herein incorporated by reference to Exhibit 10.27 of this same Form
8-K/A.
1
