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EXHIBIT 10.2
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NON-EXCLUSIVE LICENSE AGREEMENT
PAGE 1
ORCHID BIOSCIENCES, INC. HAS REQUESTED THAT THE MARKED PORTIONS OF THIS DOCUMENT
BE ACCORDED 406 CONFIDENTIAL TREATMENT PURSUANT TO RULE 406 UNDER THE SECURITIES
ACT, AS AMENDED.
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED WITH THE SECURITIES AND EXCHANGE
COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
NON-EXCLUSIVE LICENSE AGREEMENT
Effective June 12, 2000 (the "Effective Date"), Orchid BioSciences, Inc., a
Delaware corporation having a principal place of business at 303 College Road
East, Princeton, NJ 08540 (hereafter "Orchid"), and Amersham Pharmacia Biotech,
Inc., a Delaware corporation having a principal place of business at 800
Centennial Ave. Piscataway, NJ 08855 (hereafter "LICENSEE") agree as follows:
WHEREAS, Orchid owns patents relating to Primer Extension regarding
detection of single nucleotide polymorphisms; and
WHEREAS, LICENSEE desires to take a non-exclusive license to said patents
relating to the Primer Extension;
WHEREAS, Orchid is willing to grant to LICENSEE a royalty-bearing,
nonexclusive license under said patents relating to Primer Extension under the
following terms;
NOW, THEREFORE, the parties agree as follows:
ARTICLE I - DEFINITIONS
1.1 "Approved Instruments" mean instruments used for gel electrophoretic
separation for nucleotide analysis that are approved by Orchid for the
purposes of this license. [*]
1.2 "End User" means any Third Party licensed to use a Licensed Product
pursuant to an End User License received in connection with the purchase by
such Third Party of a Licensed Product.
1.3 "End User License" means a limited non-transferable license in form and
substance as set forth in Appendix A, granted by Orchid to End Users to use
only the material included in the Licensed Product in the Licensed Field to
perform the specified number of Genotypes specified in the literature
(packaging, product inserts, catalog listings, promotional items, etc)
supplied by LICENSEE with each unit of Licensed Product.
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED WITH THE SECURITIES AND EXCHANGE
COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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1.4 "Genotype" means the detection or quantification of an individual SNP
within a single sample.
1.5 "Kit" means a product designed for performing Primer Extension comprising
one or more Reagents, the sale or offer for sale of which, without the
licenses granted herein, would infringe or contribute to the infringement
of at least one claim of a Licensed Patent.
1.6 "Licensed Field" means the use of a Licensed Product on an Approved
Instrument for Research Purposes only.
1.7 "Licensed Product" means a Kit and an End User License.
1.8 "Licensed Patents" means US Patent No. 5,888,819 and 6,004,744 and any
divisionals, continuations, reissues, and foreign counterparts thereof. To
date foreign patents include the Australian Patent No. 660,173.
1.9 "Primer Extension" means a nucleic acid template-dependent primer
extension reaction to determine the identity of a single nucleotide base at
a specific position in a nucleic acid of interest in which the reaction is
performed in the presence of two or more terminators and in the absence of
extendible nucleotide
1.10 "Reagent" means an enzyme, buffer, primer extension chain-terminating
compound or other composition useful for Primer Extension.
1.11 "Related Company" means (a) any entity that, or an individual who, owns at
least a 20% interest in LICENSEE by stock ownership or otherwise; (b) any
entity in which LICENSEE owns at least a 20% interest by stock ownership or
otherwise; or (c) any entity in which at least a 20% interest by stock
ownership or otherwise is owned by any entity that, or an individual who,
also owns at least at 20% interest in LICENSEE by stock ownership or
otherwise.
1.12 Bona Fide Collaboration means a substantive research and/or development
collaboration or agreement between an End-User and any Third Party which
includes the ability for End-User to obtain samples from and share data
with such Third Parties. For the avoidance of doubt, End-Users shall not
be allowed to charge such collaborators on a fee for service basis or
perform genotyping services for such collaborators.
1.13 "Research Purposes" means the detection and analysis of SNPs in samples
for research and development purposes only, either alone or in Bona Fide
Collaborations with one or more Third Parties, and specifically excludes
performing services for a Third Party, and further excludes any and all
diagnostic or therapeutic uses.
1.14 "Sales Price" means the most recent list price of LICENSEE's United States
list
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price for a single unit of a Licensed Product, as set forth in the most
recent LICENSEE catalogs or such other documentation as may be employed by
Licensee (and provided by LICENSEE to Orchid from time to time), and, in
the case that LICENSEE grants a discount on the Sales Price to an End
User, then the Sales Price used to calculate the Royalty due under Section
3 shall not be reduced more than [*] of the list price.
1.15 "SNP" means single nucleotide polymorphism.
1.16 "Third Party" means any person or entity other than Orchid and LICENSEE.
1.17 "Third Party Licensee" means any Third Party that has a valid license from
Orchid to use Kits for purposes other than Research Purposes, as confirmed
by Orchid pursuant to Section 2.2.
1.18 "Territory" means the entire world.
ARTICLE II - LICENSE GRANT
2.1 Non-exclusive License Grant. Orchid hereby grants to LICENSEE under the
Licensed Patents a non-exclusive license, without the right to grant
sublicenses, to research and develop, to make, have made (with prior
notification to Orchid), sell, offer for sale or otherwise dispose of
Licensed Products in the Territory solely for use in the Licensed Field.
Under this license, LICENSEE may use the Licensed Product only to the
extent necessary to perform research and development on Licensed Products
for sale hereunder and/or quality control functions on lots of the
Licensed Products, but under no circumstances may LICENSEE use the
Licensed Products for Research Purposes or for any other purpose within or
outside the Licensed Field.
2.2 Additional Limited License Grant.
2.2.1 Orchid additionally grants to LICENSEE, under the Licensed Patents,
a non-exclusive license, without the right to grant sublicenses, to
research and develop, to make, have made (with prior notification
to Orchid), sell, offer for sale or otherwise dispose of Kits in
the Territory to a Third Party Licensee for use in the Licensed
Field or otherwise consistent with such Third Party Licensee's
license from Orchid. Under this license, LICENSEE may use the Kits
only to the extent necessary for LICENSEE to perform research and
development on Kits for sale hereunder and/or quality control
functions on lots of the Kits, but under no circumstances may
LICENSEE use the Kits for Research Purposes or for any other
purpose within or outside the License Field.
2.2.2 Prior to the promotion, sale, offer to sell or any other marketing
activity by LICENSEE of a Kit to such Third Party Licensee,
LICENSEE will have
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED WITH THE SECURITIES AND EXCHANGE
COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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requested and received from Orchid a written confirmation that such
Third Party is, in fact, a Third Party Licensee pursuant to Section
1.16. The validity and effectiveness of the license granted under
Section 2.2.1 is subject to LICENSEE's compliance with Section
2.2.2.
2.2.3 Notwithstanding anything herein to the contrary, LICENSEE may
recommend that its customers contact Orchid directly to explore the
possibility of becoming Third Party Licensees.
2.2.4 In all cases, LICENSEE will pay royalties pursuant to Section 3.2
for all sales of Kits to Third Party Licensees. In all cases Orchid
shall use reasonable efforts to cause Third Party Licensees to
purchase Kits only from a licensed provider under similar terms.
2.3 Labeling. LICENSEE shall label the Licensed Products sold hereunder in
accordance with Article VI. It is expressly understood, however, that
LICENSEE has no responsibility to police its customers or otherwise ensure
their compliance with the terms of the license granted hereunder. All such
policing and enforcement efforts shall be the responsibility of Orchid.
ARTICLE III - FEES, ROYALTIES, AND REPORTS
3.1 License Fee. Within twenty-one (21) days of the Effective Date of this
Agreement, LICENSEE will pay to Orchid a License Fee of [*]
3.1.1 [*]
3.2 Royalties. LICENSEE will pay Orchid a royalty of [*] of the Sales Price of
all Licensed Products sold or otherwise disposed of.
3.2.1 For purposes of this Article 3, the phrase "otherwise disposed of"
as used in conjunction with a Licensed Product or Kit means (a) any
Licensed Product or Kit not sold but delivered by LICENSEE to a
Third Party regardless of the compensation paid to LICENSEE, if
any.
3.2.2 A Licensed Product or Kit will be considered sold on the date it is
shipped or the date invoiced whichever is earlier. A Licensed
Product or Kit will be considered otherwise disposed of on the date
shipped. Only one Royalty Fee will be due for each Licensed Product
or Kit.
3.3 Reports. Within thirty (30) days after March 31, June 30, September 30,
and
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COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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December 31 of each calendar year, LICENSEE will send to Orchid a
written report setting forth the Licensed Products and Kits, and the
Genotypes enabled thereby, sold or otherwise disposed of during the
preceding three months. The first such report will include all Licensed
Products and Kits sold or otherwise disposed of since the Effective Date.
A report will be sent to Orchid even when no Licensed Products or Kits were
sold or otherwise disposed of during the period subject to the report.
Each such report will be accompanied by payment of the Royalties due
pursuant to Section 3.2 hereof. A final report will be sent to Orchid
within sixty (60) days after termination or expiration of this Agreement
specifying Licensed Products and Kits sold or otherwise disposed of since
the immediately preceding report and Licensed Products made but not sold or
otherwise disposed of as of the date of termination or expiration, and
payment for all such Licensed Products and Kits will accompany the final
report.
3.4 Records. LICENSEE will keep good and accurate books of account sufficient
to permit determination of the Royalties due hereunder and will make such
books of account available for inspection by an independent auditor, who
shall be a Certified Public Accountant, designated by Orchid and reasonably
acceptable to LICENSEE. Such inspections will be no more frequent than
once each calendar year during the term hereof and once within six months
after termination of this Agreement. The designated auditor will retain in
confidence the information in the books of account and will report to
Orchid only the accuracy or inaccuracy of the reports rendered pursuant to
Section 3.3 hereof. Such inspections will be at Orchid's expense unless
the designated accountant identifies underpayment of Royalties due to
Orchid by five percent (5%) or more, in which event LICENSEE will pay for
such inspection. Orchid's failure to inspect will not constitute a waiver
of Orchid's right to object to the accuracy of the reports rendered or
payments made under this Agreement.
ARTICLE IV - TERM AND TERMINATION
4.1 Term. The term of this agreement begins on the Effective Date and will
expire on the last day of the last to expire Licensed Patents.
4.2 Termination for Breach. Either party may terminate this Agreement for a
material breach of the provisions of this Agreement. Such termination will
be effective if the breach has not been cured in fourteen (14) days, if
breach is for failure to make any payment (other than payment of the
License Fee), or in sixty (60) days, if the breach is for any other reason,
after written notice of said breach.
4.3 Surviving Rights. In the event of termination of this Agreement, LICENSEE
will have the right to complete all contracts for the sale or disposition
of Licensed Products or Kits under which LICENSEE is obligated on the date
of termination provided LICENSEE pays the associated Royalties on such
sales or dispositions as required in Article III hereof and provided all
such sales or dispositions are
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completed within three (3) months after the date of termination.
4.4 Remedies. The right of either party to terminate under the provisions of
this Article will not be an exclusive remedy, and either party will be
entitled, if the circumstances warrant, alternatively or cumulatively, to
damages for breach of this Agreement, to an order requiring performance of
the obligations of this Agreement, or to any other legally available
remedy.
ARTICLE V - FURTHER LICENSES AND TECHNICAL ASSISTANCE
5.1 No Implied License. The license granted herein is limited to the Licensed
Patents in the Licensed Field, and under this Agreement no license is
granted under any other patent or technology now or hereafter owned by
Orchid for practice in the Licensed Field or any other purpose, other than
the limited license granted by Orchid to LICENSEE with respect to Third
Party Licensees pursuant to Section 2.2.
5.2 Technical Information. Orchid has no obligation to provide to LICENSEE
with any manufacturing or technical information or any other technical
assistance regarding the Licensed Products or Kits.
ARTICLE VI - MARKING
6.1 Patent Marking. LICENSEE will prominently display on all Licensed Products
and Kits on a visible surface thereof or, if impractical, on tags, labels,
manuals, and other materials with which Licensed Products and Kits are
sold, with the applicable numbers of the Licensed Patents under applicable
law to enable the patent rights to be enforced to their full extent in any
country where the Licensed Products or Kits are made, used or sold.
6.2 License Marking.
6.2.1 LICENSEE will prominently display on the outside of each unit of
Licensed Product (1) an End User License; (2) a label license
limiting the use of the Licensed Products to a specified number of
Genotypes; (3) a label license indicating that the Licensed Product
may not be used outside the Field; and (4) the fact that U.S. Patent
Nos. 5,888,819 and 6,004,704 and their foreign counterparts are
owned by Orchid BioSciences, Inc.
6.2.2 LICENSEE will prominently display on each Kit (1) a label license
indicating that the Kit may not be used outside the field for which
the Third Party has a license from Orchid; and (2) the fact that
U.S. Patent Nos. 5,888,819 and 6,004,704 and their foreign
counterparts are owned by Orchid BioSciences, Inc.
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ARTICLE VII - ASSIGNMENT
7.1 LICENSEE Assignment. This Agreement has been entered into by Orchid in
reliance on the particular qualifications of LICENSEE and is personal to
LICENSEE. Neither this Agreement nor any rights or obligations hereunder
may be assigned, pledged, or encumbered by LICENSEE without the express
prior written approval of Orchid.
ARTICLE VIII- INFRINGEMENT
8.1 Infringement. LICENSEE will use reasonable efforts to promptly notify
Orchid of any Third Party LICENSEE believes may be infringing a Licensed
Patent and will, to the greatest extent possible, provide to Orchid any
information LICENSEE has in support of such belief. Orchid will have the
right, but not the obligation, to use such information in an infringement
action against such Third Party. LICENSEE agrees to cooperate with Orchid
in any action for infringement of a Licensed Patent brought by Orchid, and
Orchid will reimburse LICENSEE for all reasonable costs incurred by it in
providing cooperation requested by Orchid.
ARTICLE IX - PRODUCT SPECIFICATIONS & LITERATURE REPORTING
9.1 Copies of Literature. LICENSEE will provide Orchid with copies of product
specification sheets, product inserts, user manuals, user bulletins, and
user product updates and any other customer materials such as copies of web
pages or other electronic information relating to Licensed Products and
Kits at least 10 (ten) days prior to the public release of such
information. The copies of such customer materials provided to Orchid need
not be identical to the customer materials supplied to customers and the
public, provided the material supplied to Orchid by LICENSEE is
substantially the same as the actual customer materials with respect to (1)
the markings required by Article VI of this agreement, (2) the suggested
uses for the Licensed Products and Kits, and (3) the number of Genotypes
enabled by Licensed Products and Kits.
9.2 Promotion. LICENSEE agrees that it will not promote by any means the
Licensed Products or Kits to any Third Party in contradiction to the End
User License, except in the single situation permitted by Section 2.2.3 in
the case of Kits.
[*]
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED WITH THE SECURITIES AND EXCHANGE
COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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ARTICLE XI - REPRESENTATIONS & WARRANTIES
11.1 No Representations. Nothing in this Agreement will be construed as:
11.1.1 A warranty or representation by Orchid as to the validity or scope
of any Licensed Patent;
11.1.2 A warranty or representation by Orchid that anything made, used,
sold, or otherwise disposed of under the license granted in this
Agreement will not infringe patents of third parties;
11.1.3 A requirement that Orchid will file any patent application, secure
any patent, or maintain any patent in force; or
11.1.4 An obligation of Orchid to bring or prosecute actions or suits
against third parties for infringement of any patent; or
11.2 Orchid Authority. Orchid warrants and represents that it has the full
right and power to make promises and grant the licenses and covenants set
forth in this Agreement and that there are no outstanding agreements,
assignments, or encumbrances inconsistent with the provisions of this
Agreement.
11.3 LICENSEE Authority. LICENSEE warrants and represents that it has the full
right and power to make promises and grant the licenses and covenants set
forth in this Agreement and that there are no outstanding agreements,
assignments, or encumbrances inconsistent with the provisions of this
Agreement.
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11.4 Disclaimer. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, ORCHID MAKES
NO OTHER REPRESENTATION OR WARRANTY OF ANY KIND, EITHER EXPRESSED OR
IMPLIED, INCLUDING WARRANTIES AS TO MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE.
ARTICLE XII - INDEMNIFICATION
12.1 LICENSEE Indemnification. LICENSEE agrees to indemnify, defend and hold
harmless Orchid, its subsidiaries or affiliates, their agents, directors,
officers, employees and assigns ("Orchid Indemnitees"), from and against
all losses, liabilities, damages, demands and expenses (including
reasonable attorneys' fees and expenses) arising out of (i) the negligent
actions of LICENSEE, its employees or any third party acting on behalf of
or under authority of LICENSEE in the performance of this Agreement, (ii)
any representation or warranty of LICENSEE in this Agreement; (iii) any
sale or use by LICENSEE of a Licensed Product or Kit; (iv) any use of a
Licensed Product by an End User; and (v) any use of a Kit by a Third Party
Licensee.
12.2 Limitation of Liability. NEITHER PARTY WILL BE LIABLE FOR ANY INCIDENTAL,
SPECIAL OR CONSEQUENTIAL DAMAGES RESULTING FROM THE LICENSE GRANTED
PURSUANT TO THIS AGREEMENT OR FROM THE USE OR COMMERCIAL DEVELOPMENT OF
THE LICENSED PRODUCT OR KIT.
ARTICLE XIII - MISCELLANEOUS
13.1 Entire Agreement. This Agreement constitutes the entire agreement and
understanding of the parties with regard to the subject matter hereof and
merges and supersedes all prior discussions, negotiations, understandings,
and agreements between the parties concerning the subject matter hereof.
Neither party will be bound by any definition, condition, warranty, right,
duty, or covenant other than as expressly stated in this Agreement or as
subsequently set forth in a written document signed by both parties.
13.2 Choice of Laws. This Agreement will be interpreted and construed, and the
legal relations created herein will be determined, in accordance with the
laws of the State of California (excluding conflicts of laws) and of the
United States.
13.3 Press Releases. The press release attached as Appendix B may be released
on the Effective Date of this agreement. Otherwise, no press releases
about this Agreement may be made without the mutual written consent of
both LICENSEE and Orchid.
13.4 Notices. Any and all notices or other communications required or permitted
by this Agreement or by law to be served on or given to either party
hereto by the
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other party will be in writing and delivered or sent to the addresses
specified in the preamble of this Agreement. Each party may change its
address for purposes of this Agreement by written notice to the other
party. All notices or other communications will be deemed duly served and
given on the date when personally delivered to the party to whom it is
directed, when transmitted electronically by telex or facsimile, or when
deposited for delivery in an expedited service such as Federal Express,
DHL, and the like.
13.5 Confidentiality. Neither party may disclose the terms of this Agreement
to any Third Party without the prior written consent to the other party.
13.6 Headings. The headings used in this Agreement are for convenience of
reference only and are not intended to be a part of or to affect the
meaning or interpretation of this Agreement.
13.7 Amendment. No amendment or modification hereof shall be valid or binding
upon the parties unless made in writing and signed by both parties.
13.8 Force Majeure. Any delays in performance by any party under this Agreement
(other than the payment of monies due) shall not be considered a breach of
this Agreement if and to the extent caused by occurrences beyond the
reasonable control of the party affected, including but not limited to,
acts of God, embargoes, governmental restrictions, strikes or other
concerted acts of workers, fire, flood, explosion, riots, wars, civil
disorder, rebellion or sabotage. The party suffering such occurrence shall
immediately notify the other party and any time for performance hereunder
shall be extended by the actual time of delay caused by the occurrence.
13.9 Independent Contractors. In making and performing this Agreement, Orchid
and LICENSEE act and shall act at all times as independent contractors and
nothing contained in this Agreement shall be construed or implied to
create an agency, partnership or employer and employee relationship
between Orchid and LICENSEE. At no time shall one party make commitments
or incur any charges or expenses for or in the name of the other party
except as specifically provided herein.
13.10 Severability. If any term, condition or provision of this Agreement is
held to be unenforceable for any reason, it shall, if possible, be
interpreted rather than voided, in order to achieve the intent of the
parties to this Agreement to the extent possible. In any event, all other
terms, conditions and provisions of this Agreement shall be deemed valid
and enforceable to the full extent.
13.11 Waiver. None of the terms, covenants, and conditions of this Agreement can
be waived except by the written consent of the party waiving compliance.
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IN WITNESS WHEREOF, duly authorized officers of Orchid and LICENSEE have
executed this Agreement in duplicate on the signature page hereof.
Orchid Biosciences, Inc.
AMERSHAM PHARMACIA BIOTECH, INC.
/s/ Donald R. Marvin Name /s/ Peter B. Loggins
----------------------------- ----------------------------
Name Name
SVP, COO & CFO VP Drug Discovery
----------------------------- ----------------------------
Title Title
June 12, 2000 June 7, 2000
----------------------------- ----------------------------
Date Date
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APPENDIX A
END USER LICENSE
"The purchase price of this product includes a limited, non-transferable license
under U.S. Patent Nos. 5,888,819, 6,004,744 and their foreign counterparts owned
by Orchid BioSciences, Inc. of Princeton, New Jersey, to perform only the number
of Genotypes listed on the packaging for this product (For purposes of this End
User License, Genotyping means the detection or quantification of an individual
SNP within a single sample.) solely for the detection and analysis of SNPs in
samples for research and development purposes, either alone or in bona fide
research collaborations with one or more third parties, only and only on an
instrument used for gel electrophoretic separation for nucleotide analysis. This
license specifically excludes performing services for a third party and any and
all diagnostic or therapeutic uses. Information about purchasing licenses to
practice primer extension technology covered by Orchid BioSciences, Inc. patents
for any other use may be obtained by contacting the Senior Director for Business
Development at Orchid BioSciences, Inc., Princeton, New Jersey, U.S.A., at (609)
750-2200.
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Appendix B
Press Release
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