EXHIBIT 10.54
***TEXT OMITTED AND FILED SEPARATELY
CONFIDENTIAL TREATMENT REQUESTED
UNDER 17 C.F.R. SECTIONS 200.80(b)(4)
AND 240.24B-2
TRC LICENSE AGREEMENT
BETWEEN
TOSOH CORPORATION
AND
GEN-PROBE INCORPORATED
EFFECTIVE AS OF JANUARY 1, 2004
TABLE OF CONTENTS
PAGE
ARTICLE I DEFINITIONS........................................................ 1
ARTICLE II GRANT OF RIGHTS.................................................... 4
2.1 Grant of License Under Tosoh Patent Rights............................... 4
2.2 Sublicensing............................................................. 5
2.3 Ownership; No Implied Rights............................................. 5
ARTICLE III RUNNING ROYALTIES.................................................. 5
3.1 Running Royalties........................................................ 5
3.2 Accrual of Running Royalties............................................. 6
3.3 [...***...].............................................................. 7
3.4 Running Royalties Payments............................................... 7
3.5 Withholding Taxes........................................................ 7
3.6 Royalty Reports.......................................................... 7
3.7 Books of Accounts and Records............................................ 8
3.8 Late Payments............................................................ 8
ARTICLE IV REPRESENTATIONS AND WARRANTIES, ETC................................ 8
4.1 Legal Right.............................................................. 8
4.2 Authorization............................................................ 8
4.3 Required Actions......................................................... 8
4.4 Tosoh Patent Rights...................................................... 9
4.5 No Claim................................................................. 9
4.6 Disclaimer............................................................... 9
4.7 Limitation of Liability.................................................. 9
ARTICLE V INDEMNIFICATION.................................................... 9
5.1 Indemnification by Gen Probe............................................. 9
5.2 Procedures............................................................... 10
ARTICLE VI TERM AND TERMINATION............................................... 10
6.1 Term..................................................................... 10
6.2 Material Breach By Gen Probe............................................. 10
6.3 Material Breach by Tosoh................................................. 10
6.4 Survival................................................................. 10
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TABLE OF CONTENTS
(CONTINUED)
PAGE
ARTICLE VII PATENT MARKING..................................................... 11
7.1 Patent Marking........................................................... 11
ARTICLE VIII ARBITRATION........................................................ 11
8.1 Arbitration.............................................................. 11
ARTICLE IX MISCELLANEOUS...................................................... 11
9.1 Assignment............................................................... 11
9.2 Governing Law............................................................ 11
9.3 Counterparts............................................................. 11
9.4 No Third Party Benefits.................................................. 12
9.5 Headings................................................................. 12
9.6 Binding Effect........................................................... 12
9.7 Compliance With Law...................................................... 12
9.8 Notices.................................................................. 12
9.9 Amendment and Waiver..................................................... 12
9.10 Severability............................................................. 12
9.11 Attorneys' Fees.......................................................... 13
9.12 Confidentiality.......................................................... 13
9.13 Entire Agreement......................................................... 13
9.14 Press Release............................................................ 13
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12/02/2003
TRC LICENSE AGREEMENT
THIS TRC LICENSE AGREEMENT (this "AGREEMENT"), effective as of January
1, 2004 ("EFFECTIVE DATE"), entered into by and between the following parties:
TOSOH CORPORATION, a corporation duly organized under the laws of Japan, having
its principal place of business at 0-0-0, Xxxxx, Xxxxxx-xx, Xxxxx, 000-0000,
Xxxxx ("TOSOH"), and
GEN-PROBE INCORPORATED, a corporation duly organized under the laws of the State
of Delaware, having its principal place of business at 00000, Xxxxxxx Xxxxxx
Xxxxx, Xxx Xxxxx, Xxxxxxxxxx, 00000-0000, U.S.A. ("Gen-Probe").
PREAMBLE
A. Tosoh has developed and owns proprietary technologies relative
to the amplification of genetic targets for use in nucleic acid tests for
detection of infectious diseases, cancers, and microorganisms (including without
limitation viruses), referred to as the Transcription Reverse-Transcription
Concerted Amplification Method or the "TRC" and the detection probe and method
referred to as the Intercalation Activating Fluorescence Probe or the "INAF
Probe", and has the right to grant licenses under the Tosoh Patent Rights as
defined below.
B. Gen-Probe has developed proprietary technology relative to the
amplification of genetic targets for use in nucleic acid tests for the detection
of infectious diseases, cancers, and microorganisms (including without
limitation viruses), referred to as the Transcription-Mediated Amplification
Method.
C. Gen-Probe desires to obtain from Tosoh a license to develop,
make, have made, use, sell or offer for sale Licensed Products as defined below,
and practice Licensed Methods as defined below.
D. Tosoh is willing to grant such a license on the terms and
conditions provided herein.
NOW, THEREFORE, in consideration of the mutual covenants set forth
hereinafter, the parties hereby agree as follows:
ARTICLE I
DEFINITIONS
For purposes of this Agreement, except as otherwise expressly provided herein or
unless the context herein otherwise requires, the following initially
capitalized terms shall have the meanings specified below:
"AFFILIATE" means a corporation or other legal entity that controls, is
controlled by or is under common control with either Party directly or
indirectly through one or more
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intermediaries. For purposes of this definition, "control" means the legal or
beneficial ownership, directly or indirectly, of more than fifty percent (50%)
of the outstanding equity securities of a corporation which are entitled to vote
in the election of directors or persons performing similar functions, or of more
than fifty percent (50%) interest in the net assets or profits of an entity
which is not a corporation; provided that such corporation or entity shall be
deemed to be an Affiliate for purposes of this Agreement only so long as such
Party maintains such ownership or control. Notwithstanding the foregoing, if,
due to compliance by either Party with the requirements imposed by a foreign
investment law or similar law, such Party is not able to own more than fifty
percent (50%) of the outstanding shares of a joint venture company established
in the country of such law, such Party shall be entitled to regard a joint
venture company of which it owns fifty percent (50%) or less of such shares to
be its Affiliate as long as such Party has the veto power to the decisions of
major corporate matters of such joint venture company, upon written prior notice
to the other Party as to the name of such joint venture and the requirements of
such law, together with documentary proof of such requirements.
"ASIAN COUNTRIES" means Japan, People's Republic of China, Xxxxxx,
Xxxxxxxx xx Xxxxx, Xxxxx Xxxxx, Xxxxxxxx, Xxxx Xxxx, Xxxxxxxx of the
Philippines, Socialist Republic of Vietnam, Kingdom of Cambodia, Lao People's
Democratic Republic, Kingdom of Thailand, Singapore, Federation of Malaysia,
Republic of Indonesia, Democratic Republic of East Timor, Brunei, Union of
Myanmar, Kingdom of Bhutan, Kingdom of Nepal, People's Republic of Bangladesh,
India, Sri Lanka, Republic of Maldives, Islamic Republic of Pakistan, Republic
of Turkey, Islamic Republic of Iran, Islamic State of Afghanistan, Azerbaijan
Republic, Republic of Armenia, Republic of Uzbekistan, Republic of Turkmenistan,
Republic of Tadzhikistan, Republic of Kazakhstan, Kyrgyz Republic and Republic
of Russia.
"CALENDAR YEAR" means a calendar year commencing on January 1 and
ending on December 31.
"DISPUTE" means any dispute, controversy or claim between the Parties
relating to, arising out of, or in any way connected to, any provision of this
Agreement or any ancillary agreements hereto.
"EFFECTIVE DATE" means the date first set forth above.
"EXCHANGE RATE" means, with respect to any amount to be converted from
a foreign currency to Japanese Yen hereunder, the TTS rate quoted by the Bank of
Tokyo-Mitsubishi, Limited, New York Branch on the closing of the last banking
day in New York of a Royalty Period.
[...***...] shall mean [...***...] and [...***...].
"FIELD" means the field of [...***...].
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"FIRST COMMERCIAL SALE" means the first sale by Gen-Probe or its
Affiliate of any Licensed Product or the first practice by Gen-Probe or its
Affiliate of any Licensed Method for consideration (and not for demonstration,
government approval, testing or promotional purposes), whichever is earlier.
"INAF PATENTS" means (a) the patents and patent applications as
classified as such on Exhibit A; (b) all other patents and applications therefor
claiming priority from any of such patents or patent applications; and (c) all
reissues, reexaminations, renewals and extensions, continuations,
continuations-in-part, amendments and divisions of any of the foregoing patents
or patent applications set forth in (a) and (b).
"ISSUED VALID CLAIM" means any claim of the issued and unexpired
patents included within the Tosoh Patent Rights that has not been held
unenforceable or invalid by any court, governmental agency, regulatory
authority, arbitral tribunal or other body of competent jurisdiction in any
unappealable or unappealed decision.
"JAPANESE YEN" means the lawful currency of Japan. All references in
this Agreement to monetary amounts shall be to Japanese Yen, unless otherwise
stated.
"LICENSED METHOD" means any method, (a) the use or practice of which
would constitute, but for the license granted herein, an infringement of any
Issued Valid Claim, and (b) utilizes the TMA Method.
"LICENSED PRODUCT" means any product, (a) the developing, making,
using, selling, offering for sale, disposal or importation of which would
constitute, but for the license granted herein, an infringement of any Issued
Valid Claim and (b) utilizes the TMA Method.
"NET SALES" means the aggregate amount of revenue in Japanese Yen
(converted as necessary for sales made in a currency other than Japanese Yen
into Japanese Yen at the applicable Exchange Rate in accordance with the
definition of "Exchange Rate") received or receivable by Gen-Probe and/or its
Affiliates with respect to all Licensed Products sold or otherwise disposed of
and all Licensed Methods practiced by Gen-Probe or its Affiliates for
consideration during a Royalty Period (for any such Licensed Product sold or
otherwise disposed of, or Licensed Method practiced for consideration other than
cash, the sales price shall be deemed to be the average price at which identical
or similar (after reasonable adjustments) Licensed Products or Licensed Methods
sold or practiced by Gen-Probe or its Affiliates during the same Royalty Period
in "arms length" transactions), less only the following:
(a) the total amount of all credits and allowances
reasonably granted by Gen-Probe and its Affiliates (if any) for such Licensed
Products and Licensed Methods during such Royalty Period on account of refunds,
price reductions, price discounts or rebates, whether arising out of recalls,
rejections, returns or otherwise relating to Licensed Products sold or Licensed
Method practiced prior to such Royalty Period (and for which royalties were
previously paid hereunder);
(b) the total amount of all excise taxes, sales taxes,
value added taxes, consumption taxes, customs duties and other taxes or duties
(excluding income taxes or franchise taxes) imposed with respect to such
Licensed Products sold and such Licensed Method practiced;
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(c) the total amount of all separately itemized
transportation charges (including packing, insurance, and freight costs)
actually incurred in connection with the sales of such Licensed Products and
practice of Licensed Method; and
(d) the portion of the revenues received or receivable of
the Licensed Products (to the extent previously included in the calculation of
"Net Sales" above) reasonably allocable to recovery of costs of the rented
instruments, analyzers or similar equipment pursuant to "reagent/rental"
programs or comparable sale or lease programs (including instrument
upgrade/maintenance programs).
"PARTY" or "PARTIES" means, in the singular, Tosoh or Gen-Probe and in
the plural, Tosoh and Gen-Probe.
"ROYALTY PERIOD" means a [...***...] period beginning on each
[...***...] or [...***...], without regard to whether such date is otherwise a
business day.
"TERM" means the term of this Agreement set forth in Section 6.1
hereof.
"TERRITORY" means the Japan and all other countries in the world.
"TMA METHOD" means the method defined as such in the TMA License
Agreement.
"TMA LICENSE AGREEMENT" means that certain TMA License Agreement of
even date herewith made and entered into by and between the Parties.
"TOSOH PATENT RIGHTS" means the INAF Patents and TRC Patents. As used
herein, "Tosoh Patent Rights" shall not include rights to specific nucleic acid
sequences claimed by any of the above patents and patent applications.
"TRC PATENTS" means (a) the patents and patent applications as
classified as such on Exhibit A; (b) all other patents and applications therefor
claiming priority from any of such patents or patent applications; and (c) all
reissues, reexaminations, renewals and extensions, continuations,
continuations-in-part, amendments and divisions of any of the foregoing patents
or patent applications set forth in (a) and (b).
ARTICLE II
GRANT OF RIGHTS
2.1 GRANT OF LICENSE UNDER TOSOH PATENT RIGHTS. Subject to the
terms and conditions of this Agreement, Tosoh hereby grants Gen-Probe, and
Gen-Probe hereby accepts, a non-exclusive, non-transferable, royalty-bearing
license under the Tosoh Patent Rights to develop, make, have made, use, import,
offer for sale, sell, have sold or otherwise dispose of Licensed Products and to
practice Licensed Methods, in the Field (a) in the Territory excluding the Asian
Countries for a period of [...***...] following the Effective Date, and (b) in
the Territory including the Asian Countries following the expiration of such
[...***...] period and continuing for the term of this Agreement; provided,
however, that (A) specifically excluded from such license granted by Tosoh are
(i) any product or method for the [...***...]
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[...***...], and (ii) [...***...], and (B) (i) for a period of [...***...]
following the Effective Date, such license Grant by Tosoh expressly excludes (I)
making, having made, using, importing, offering for sale, selling, having sold
or otherwise disposing of any Licensed Product in any country that determines
the presence or amount of nucleic acid derived from an Excluded Organism, and
(II) practicing any Licensed Method in any country that determines the presence
or amount of nucleic acid derived from an Excluded Organism, and (ii) following
the expiration of such [...***...] period and continuing for the term of this
Agreement, such license grant by Tosoh expressly excludes (I) making, having
made, using, importing, offering for sale, selling, having sold or otherwise
disposing of any Licensed Product in any country other than the United States
that determines the presence or amount of nucleic acid derived from an Excluded
Organism, and (II) practicing any Licensed Method in any country other than the
United States that determines the presence or amount of nucleic acid derived
from an Excluded Organism.
2.2 SUBLICENSING. Gen-Probe shall have the right to sublicense to
its Affiliates the licenses granted by Tosoh to Gen-Probe under Section 2.1
above but without any right to sublicense further. Gen-Probe shall not have the
right to grant a sublicense to any party other than its Affiliates under the
Tosoh Patent Rights without the prior written consent of Tosoh.
2.3 OWNERSHIP; NO IMPLIED RIGHTS. Tosoh shall retain the
unrestricted right to use, and/or license for use for any purpose whatsoever the
Tosoh Patent Rights inside or outside the Field, except that Tosoh may not
exercise such right in contravention of, or in conflict with, the express terms
and conditions hereof. Except for the licenses and rights expressly granted
hereunder, no right, title, or interest in any discovery, invention or other
technology, data or information or any patent, copyright, trademark, or other
intellectual property rights therein owned by Tosoh or its Affiliates shall be
granted to Gen-Probe under this Agreement. Tosoh shall not be under any
obligation to grant to Gen-Probe any additional licenses and rights other than
those granted hereby.
ARTICLE III
RUNNING ROYALTIES
3.1 RUNNING ROYALTIES. In consideration of the licenses granted
under the Tosoh Patent Rights, Gen-Probe agrees to pay to Tosoh a royalty on the
total Net Sales of all the Licensed Products sold or otherwise disposed of by
Gen-Probe and its Affiliates for consideration and all the Licensed Methods
practiced by Gen-Probe and its Affiliates during a Royalty Period, for
consideration, at the following flat rates:
(a) with respect to the Licensed Products or the Licensed
Methods practicing the TRC Patents:
(i) [...***...] on all sales and depositions
made in Japan;
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(ii) [...***...] on all sales and depositions
made in an Asian Country except Japan; and
(iii) [...***...] on all sales and depositions
made in any country other than the Asian Countries; and
(b) with respect to the Licensed Products or the Licensed
Methods practicing the INAF Patents:
(i) [...***...] on all sales and depositions
made in Japan;
(ii) [...***...] on all sales and depositions
made in an Asian Country except Japan;
(iii) [...***...] on all sales and depositions
made in any country other than the Asian Countries.
3.2 ACCRUAL OF RUNNING ROYALTIES. Running royalties shall accrue
on Licensed Products or Licensed Methods only to the extent that Gen-Probe or
its Affiliates make, have made, use, sell, offer to sell, import or otherwise
dispose of such Licensed Products or practice such Licensed Method for
consideration in a country in the Territory in which such act would infringe an
Issued Valid Claim in that country but for the license granted hereunder;
provided, however, that no royalty shall accrue with respect to a reasonable
number of Licensed Products sold or otherwise disposed by Gen-Probe for
demonstration, government approval, development, quality assurance, testing or
promotional purposes.
For the avoidance of doubt:
(a) Any running royalty shall not accrue with respect to
Licensed Products made, had made, used, imported, sold, offered for sale or
otherwise disposed of or Licensed Methods practiced, in a country in the
Territory in which (i) there exists no Issued Valid Claim or (ii) such act would
not infringe an Issued Valid Claim in that country;
(b) If and when Licensed Products are made or had made in
a country in the Territory in which such act would infringe an Issued Valid
Claim in that country but for the license granted hereunder and sold or
otherwise disposed of for consideration in a country, whether or not there
exists an Issued Valid Claim in that country or whether or not such sales or
disposal would not infringe an Issued Valid Claim in that country, then the Net
Sales of the sales and disposal by Gen-Probe or its Affiliates of such Licensed
Products to or in the country in the Territory in which the Licensed Products
are sold or otherwise disposed of shall be used for the purpose of calculating
the running royalties.
(c) If and when Licensed Products are made or had made in
a country in the Territory in which such act would not infringe an Issued Valid
Claim in that country and sold or otherwise disposed of for consideration in a
country in which such act would infringe an Issued Valid Claim in that country,
then the Net Sales of the sales and disposal by Gen-Probe or its Affiliates of
such Licensed Products in the country in the Territory in which the Licensed
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Products are sold or otherwise disposed of shall be used for the purpose of
calculating the running royalties.
(d) No running royalties shall accrue at the time of the
transfer, sale or disposal of Licensed Products by Gen-Probe to any of its
Affiliates or by any of its Affiliates to another Affiliate. In such event,
running royalties shall accrue at the time of the sale or disposal of Licensed
Products by such Affiliate to any third party.
3.3 [...***...]
3.4 RUNNING ROYALTIES PAYMENTS. The running royalties accrued
under Section 3.2 above shall be paid by Gen-Probe on a Royalty Period basis.
Payments shall be made within [...***...] of the end of each Royalty Period. All
running royalties payable under Section 3.2 shall first be calculated in the
currency of sale and then converted into Japanese Yen based upon the Exchange
Rate, and shall be made in Japanese Yen without deduction of exchange fees and
bank commissions charged by the sending bank in the United States. Payments
shall be made by Gen-Probe to Tosoh by wire transfer to the bank account as
instructed by Tosoh in writing.
3.5 WITHHOLDING TAXES. In the event that Gen-Probe is required to
withhold taxes imposed on any payment to Tosoh hereunder by virtue of applicable
law or regulations in the United States and/or in a country in which its
Affiliate sublicensed hereunder is located, then such withholding tax shall be
paid by Gen-Probe to the appropriate tax authorities on a timely basis by
deducting it from the payment due Tosoh, and Gen-Probe shall provide Tosoh with
official documentation and/or tax receipt on such withholdings supporting such
payment of taxes as may be required by Tosoh for its tax records. Upon request
by Tosoh, Gen-Probe and Tosoh shall cooperate in obtaining a reduced tax rate
under an international tax convention.
3.6 ROYALTY REPORTS. A royalty report containing the following
information shall accompany each royalty payment:
(a) The total revenues of Licensed Products sold and
Licensed Method practiced by Gen-Probe and its Affiliates during the applicable
Royalty Period;
(b) Calculation of Net Sales for the applicable Royalty
Period;
(c) Total Net Sales in Japanese Yen for the applicable
Royalty Period, together with the Exchange Rates used for conversion; and
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(d) Calculation of the royalty amount payable to Tosoh
for the applicable Royalty Period.
If no running royalties are due Tosoh for a Royalty Period, the royalty report
shall so state. All royalty reports shall be maintained in strict confidence by
Tosoh.
3.7 BOOKS OF ACCOUNTS AND RECORDS. Gen-Probe shall keep, and shall
cause its Affiliates to which sublicenses have been granted under Section 2.2
hereof to keep, for a period of three (3) years after the close of each fiscal
year of Gen-Probe and such Affiliates, complete, true and accurate books of
account and other records containing all information and data which may be
necessary to ascertain and verify the amount of running royalties payable to
Tosoh hereunder, including, without limitation, detailed backup for the
computations of Net Sales. During the term of this Agreement and for a period of
two (2) years thereafter, Tosoh shall have the right (which Tosoh may not
exercise more than once during each fiscal year) to cause an independent public
accounting firm selected by Tosoh and acceptable to Gen-Probe to inspect, at
Tosoh's own cost, the books and records of Gen-Probe and its Affiliates to which
sublicenses have been granted for the sole purpose of determining the accuracy
of the royalty report and calculation of running royalties. Such inspection
shall be made during normal business hours of Gen-Probe and such Affiliates and
with at least thirty (30) day prior notice. All the information disclosed to or
obtained by the independent public accounting firm shall not be disclosed to
anyone including Tosoh (except as required by applicable law or by any court,
governmental agency or regulatory authority) and shall be held in strict
confidence, except that the independent public accounting firm may disclose to
Tosoh whether any discrepancy in running royalties payment has been found and
the amount of such discrepancy.
3.8 LATE PAYMENTS. In the event that any amount due Tosoh by
Gen-Probe hereunder is not paid when due, Gen-Probe shall on Tosoh's demand pay
to Tosoh interest on overdue amount at the rate of [...***...] per annum from
the due date of such amount until the date such overdue payment is actually
received by Tosoh.
ARTICLE IV
REPRESENTATIONS AND WARRANTIES, ETC.
4.1 LEGAL RIGHT. Each Party represents and warrants that it has
all requisite power, authority and legal right to enter into this Agreement, and
to perform its obligations set forth herein.
4.2 AUTHORIZATION. Each Party represents and warrants that the
execution, delivery and performance by it (a) have been duly authorized by all
necessary corporate or other actions of it, and (b) do not contravene, conflict
with or result in a breach of any permit, authorization or license, any charter
or any other organizational document, or any law, regulation, judgment, order,
agreement or legal or contractual obligations or restriction binding on or
otherwise affecting it.
4.3 REQUIRED ACTIONS. Each Party represents and warrants that all
acts, conditions and things required to be done, fulfilled and performed by it
in order (a) to enable it to lawfully
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enter into or to perform its obligations under this Agreement, (b) to ensure
that its obligations under this Agreement are legal, valid and binding and (c)
to make this Agreement enforceable and admissible in evidence, have been done,
fulfilled and performed and will be done, fulfilled and performed.
4.4 TOSOH PATENT RIGHTS. Tosoh represents and warrants that it has
the full legal power and right to grant the licenses and rights under the Tosoh
Patent Rights as set forth in this Agreement.
4.5 NO CLAIM. Tosoh represents and warrants that there are no
claims, actions, suits, or proceedings pending or, to the knowledge of Tosoh,
threatened against or affecting the Tosoh Patent Rights before any court,
governmental agency, regulatory authority, arbitral tribunal or other body.
4.6 DISCLAIMER. Except otherwise expressly represented and
warranted hereunder, the licenses and rights herein granted by Tosoh to
Gen-Probe are provided WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED. TOSOH MAKES NO
REPRESENTATION OR WARRANTY THAT THE LICENSED PRODUCTS OR LICENSED METHOD WILL
NOT INFRINGE ANY PATENT OR PROPRIETARY RIGHT OF OTHERS. NOTHING IN THIS
AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION OR WARRANTY MADE BY TOSOH THAT
ANY PATENT OR UTILITY MODEL WILL ISSUE BASED UPON ANY PENDING APPLICATION
THEREFOR OR THAT ANY PATENT OR UTILITY MODEL IS OR WILL BE VALID.
4.7 LIMITATION OF LIABILITY. IN NO EVENT SHALL EITHER PARTY BE
LIABLE FOR ANY INDIRECT, INCIDENTAL, SPECIAL, EXEMPLARY OR CONSEQUENTIAL
DAMAGES, LOSSES, COSTS OR EXPENSES OF ANY KIND, HOWEVER CAUSED ON ANY THEORY OF
LIABILITY AND WHETHER BASED IN CONTRACT OR TORT (INCLUDING NEGLIGENCE),
INCLUDING LOST PROFITS OR REVENUES AND LOSS OF GOODWILL, REGARDLESS OF WHETHER
SUCH PARTY KNOWS OR HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES OR
LOSSES.
ARTICLE V
INDEMNIFICATION
5.1 INDEMNIFICATION BY GEN PROBE. Subject to the provisions of
Section 4.7, Gen-Probe shall indemnify, defend, and hold harmless Tosoh and its
Affiliates and their directors, officers, employees, and agents and their
respective successors and permitted assigns against any and all claims, suits,
losses, liability, damages, or expenses (including reasonable attorney's fees
and expenses of litigation) resulting from or arising out of the exercise by
Gen-Probe and its Affiliates of the licenses and rights granted herein under the
Tosoh Patent Rights including any manufacture, use or sale of a Licensed Product
or practice of a Licensed Method. This indemnification shall include, but not be
limited to, any product liability.
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5.2 PROCEDURES. In the event that any such claim, action or demand
is made against Tosoh, Tosoh shall promptly upon becoming aware of any such
claim, demand or suit, notify in writing as to the nature and particulars of the
same, promptly furnish Gen-Probe with copies of any and all documents (inclusive
of all correspondence and pleadings other than attorney-client communications)
pertaining thereto, and provide Gen-Probe at the cost of Gen-Probe with
reasonable cooperation for Gen-Probe to mitigate a loss or damage arising from
any such claim, demand or suit. Tosoh shall also keep Gen-Probe continuously and
fully informed in a timely manner as to the status of the same and shall provide
Gen-Probe with copies of any additional documents pertaining thereto in a timely
manner. The obligations of Gen-Probe under Section 5.1 shall be contingent upon
(a) Tosoh giving prompt written notice to Gen-Probe of any indemnified claim,
action or demand as provided above, (b) Tosoh allowing Gen-Probe to control the
defense and related settlement negotiations, including the selection of one
attorney or law firm to represent Tosoh (who may also be Tosoh's attorney or law
firm), and (c) Tosoh fully assisting in the defense so long as Gen-Probe agrees
to pay Tosoh's out of pocket expenses.
ARTICLE VI
TERM AND TERMINATION
6.1 TERM. This Agreement shall commence on the Effective Date and
shall remain in effect until the last patent in Tosoh Patent Rights to expire,
unless earlier terminated as provided in this Article VI.
6.2 MATERIAL BREACH BY GEN PROBE. If Gen-Probe violates or fails
to perform any material term or covenant of this Agreement, Tosoh may give
written notice of such default to Gen-Probe. If Gen-Probe fails to take
appropriate steps to cure such default within sixty (60) days of the effective
date of such notice of default, Tosoh shall have the right to terminate this
Agreement by issuing a written notice of termination to Gen-Probe without
prejudice to any rights or remedies available under this Agreement, at law or in
equity.
6.3 MATERIAL BREACH BY TOSOH. If Tosoh violates or fails to
perform any material term or covenant of this Agreement, Gen-Probe may give
written notice of such default to Tosoh. If Tosoh fails to take appropriate
steps to cure such default within sixty (60) days of the effective date of such
notice of default, Gen-Probe shall have the right to (a) continue this Agreement
in full force and effect, or (b) terminate this Agreement as a whole by issuing
a written notice of termination to Tosoh. In all events, Gen-Probe may pursue
all available remedies under this Agreement, at law or equity against Tosoh by
reason of such breach.
6.4 SURVIVAL. The following shall survive the expiration or
termination of this Agreement:
(a) Gen-Probe's obligations to pay running royalties that
have accrued prior to termination; and
(b) The provisions of Sections 3.7, 4.6, 4.7, 5.1, 5.2,
8.1, 9.2, 9.7, 9.8, 9.11, 9.12 and this Section 6.4.
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ARTICLE VII
PATENT MARKING
7.1 PATENT MARKING. If reasonably requested by Tosoh, Gen-Probe
agrees to xxxx a container or insert therein containing a Licensed Product under
the Tosoh Patent Rights manufactured by Gen-Probe or its Affiliates hereunder
with such patent notice as may be required by the laws of a country where such
Licensed Product is sold.
ARTICLE VIII
ARBITRATION
8.1 ARBITRATION. In the event of any Dispute, the Parties shall
seek to settle their differences amicably between themselves, including entering
into non-binding mediation. Any unresolved Dispute shall be resolved by final
and binding arbitration in accordance with this Article. Whenever a Party shall
decide to institute arbitration proceedings, it shall give written notice to
that effect to the other Party. The Party giving such notice shall refrain from
instituting the arbitration proceedings for a period of ten (10) days following
such notice to allow the Parties to attempt to resolve the Dispute. If the
Parties are still unable to resolve the Dispute, the Party giving notice may
institute the arbitration proceedings under the rules of Arbitration of the
International Chamber of Commerce as then in effect (the "ICC RULES").
Arbitration shall be held in The Hague, Netherlands. The arbitration shall be
conducted in English before three arbitrators, with each Party to select one
arbitrator and with the third arbitrator to be appointed in accordance with the
ICC Rules. The arbitrators shall not have the power to award punitive damages or
any award of multiple damages under this Agreement and such awards are expressly
prohibited. Any arbitration award shall be final and binding on the Parties.
Judgment on the award may be entered in any court having jurisdiction. Nothing
contained in this Article shall prevent either Party from seeking temporary
restraining orders, temporary or permanent injunctions or such other relief in
any court of competent jurisdiction.
ARTICLE IX
MISCELLANEOUS
9.1 ASSIGNMENT. Neither Party to this Agreement shall have the
right to assign, delegate or otherwise transfer any rights or obligations under
this Agreement without the prior written consent of the other Party, which shall
not be unreasonably withheld. Any such purported transfer without such prior
written consent shall be deemed void and without effect.
9.2 GOVERNING LAW. This Agreement will be construed and governed
by the laws of Japan, without giving effect to conflict of law provisions.
9.3 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, and all of which
together shall be deemed to be one and the same instrument.
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9.4 NO THIRD PARTY BENEFITS. Nothing in this Agreement, express or
implied, is intended to confer on any person other than the Parties and their
Affiliates or their respective successors or permitted assigns, any benefits,
rights or remedies.
9.5 HEADINGS. All headings in this Agreement are for convenience
only and shall not affect the meaning of any provision hereof.
9.6 BINDING EFFECT. This Agreement shall inure to the benefit of
and be binding upon the Parties and their Affiliates and their respective
successors and assigns.
9.7 COMPLIANCE WITH LAW. Nothing contained in this Agreement shall
be construed so as to require the commission of any act contrary to law, and
wherever there is any conflict between any provision of this Agreement and any
statute, law, ordinance or treaty, the latter shall prevail, but in such event
the affected provisions of the Agreement shall be conformed and limited only to
the extent necessary to bring it within the applicable legal requirements.
9.8 NOTICES. All notices, requests, demands and other
communications required or permitted to be given pursuant to this Agreement
shall be in writing and in English, and shall be deemed to have been duly given
upon the date of receipt if delivered by hand, recognized international
overnight courier, confirmed facsimile transmission, or registered or certified
mail, return receipt requested, postage prepaid to the following addresses or
facsimile numbers:
If to Tosoh: If to Gen-Probe:
Tosoh Corporation Gen-Probe Incorporated
3-8-2, Shiba, Minato-ku 10210 Genetic Center Drive
Tokyo 105 8623 Xxx Xxxxx, Xxxxxxxxxx 00000-0000
Japan U.S.A.
Attn: Senior General Manager Attn: Chairman
Scientific Instruments
Division
Facsimile: [...***...]
Either Party may change its designated address and facsimile number by notice to
the other Party in the manner provided in this Section.
9.9 AMENDMENT AND WAIVER. This Agreement may be amended,
supplemented, or otherwise modified only by means of a written instrument signed
by both Parties. Any waiver of any rights or failure to act in a specific
instance shall relate only to such instance and shall not be construed as an
agreement to waive any rights or fail to act in any other instance, whether or
not similar.
9.10 SEVERABILITY. In the event that any provision of this
Agreement shall, for any reason, be held to be invalid, or unenforceable in any
respect, such invalidity or unenforceability shall not affect any other
provision hereof, and the Parties shall negotiate in good faith to modify the
Agreement to preserve (to the extent possible) their original intent.
*CONFIDENTIAL TREATMENT REQUESTED
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9.11 ATTORNEYS' FEES. If either Party commences an arbitration or
other action against the other Party to enforce any of the terms hereof or
because of the material breach by such other Party of any of the terms or
covenants hereof, the prevailing Party shall be entitled, in addition to any
other relief granted, to all reasonable out-of-pocket costs and expenses
incurred by the prevailing Party in connection with such action, including,
without limitation, all reasonable attorneys' fees, and a right to such costs
and expenses shall be deemed to have accrued upon the commencement of such
action and shall be enforceable whether or not such action is prosecuted to
judgment.
9.12 CONFIDENTIALITY. Except as required by law or a court or
administrative order, the terms of this Agreement and all information disclosed
hereunder and designated as confidential shall be considered as confidential
information of the disclosing Party and the receiving Party shall use the same
care to protect such information as it uses to protect its own confidential
information of like kind. This confidentiality obligation shall not apply:
(a) to information which was generally available to the
public at the time of disclosure, or information which becomes available to the
public after disclosure by the disclosing Party other than through fault of the
receiving Party; or
(b) to information which has been already known to the
receiving Party prior to its receipt from the disclosing Party; or
(c) to information which is obtained at any time lawfully
from a third party under circumstances permitting its disclosure to others; or
(d) to information which is developed independently by
the receiving Party other than through knowledge of the information received
from the disclosing Party.
Notwithstanding the foregoing, promptly after the execution of this
Agreement the Parties shall agree upon the substance of information that can be
used to describe the terms of the transaction contemplated by this Agreement so
that the Parties can disclose such information, as may be modified by mutual
written agreement from time to time, without the other party's consent.
9.13 ENTIRE AGREEMENT. This Agreement constitutes the entire
agreement between the Parties with respect to the subject matter hereof.
9.14 PRESS RELEASE. Neither Party hereto shall issue any press
release or other public announcement relating to this Agreement without
obtaining the other Party's written approval, which will not be unreasonably
withheld.
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IN WITNESS WHEREOF, the undersigned have duly executed and delivered
this Agreement as a sealed instrument effective as of the date first above
written.
TOSOH CORPORATION
By: /s/ Madoka Tashiro
-------------------------------------
Madoka Tashiro
Chief Executive Officer and Chairman
GEN-PROBE INCORPORATED
By: /s/ Xxxxx X. Xxxxxxxx
-------------------------------------
Xxxxx X. Xxxxxxxx
Chief Executive Officer and Chairman
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EXHIBIT A
[...***...]
*CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT B
[...***...]
[...***...]
*CONFIDENTIAL TREATMENT REQUESTED
