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EXHIBIT 10.1
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
As of July 1, 2000 Orchid BioSciences, Inc., a Delaware corporation having
a principal place of business at 303 College Road East, Princeton, NJ 08540
(hereafter "Orchid"), and PE Biosystems a stock group of the PE Corporation,
Inc., a Delaware corporation having a principal place of business at 850 Lincoln
Centre Drive, Foster City, CA (hereafter "PE") agree as follows:
WHEREAS, Orchid owns patents relating to Primer Extension regarding
detection of single nucleotide polymorphisms; and
WHEREAS, PE desires to take a non-exclusive license to said patents
relating to the Primer Extension;
WHEREAS, Orchid is willing to grant to PE 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 automated electrophoresis nucleotide sequencing
instruments approved by Orchid for the purposes of this license. [*]
1.2 [*]
1.3 "End User" means a Third Party licensed to use a Licensed Product pursuant
to an End User License received in connection with the Third Party's
purchase of the Licensed Product. Where the Third Party is a corporate,
institutional, or other non - person legal entity, End User includes the
licensed Third Party's organizational units and divisions which are not
legal entities separate from the licensed Third Party.
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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1.4 "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 PE with each unit of Licensed Product.
1.5 "Genotype" means the detection or quantification of an individual SNP
within a single sample (whether or not the genome of the sample is
heterozygous for the given SNP).
1.6 "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.
1.7 "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
extendable nucleotides.
1.8 "Licensed Field" means the use of a Licensed Product on Approved
Instruments for Research Purposes only.
1.9 "Licensed Product" means a Kit and an End User License.
1.10 "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.
1.11 "Reagent" means an enzyme, buffer, primer extension chain-terminating
compound or other composition useful for Primer Extension.
1.12 "Related Company" means (a) any entity that, or an individual who, owns at
least a 20% interest in PE by stock ownership or otherwise; (b) any entity
in which PE 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 PE by stock ownership or otherwise.
1.13 "Research Purposes" means the detection and analysis of SNPs in samples
for research purposes only 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 PE's single unit of a
Licensed Product, as set forth in the most recent PE catalogs, and, in the
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NON-EXCLUSIVE LICENSE AGREEMENT
PAGE 3
case that PE grants a discount on the Sales Price to an End User, then the
Sales Price used to calculate the Royalty due under Section 3.03 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 PE.
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 PE under the Licensed
Patents a non-exclusive license, without the right to grant sublicenses, to
make, sell, offer for sale or otherwise dispose of Licensed Products in the
Territory solely for use in the Licensed Field. Under this license, PE may
use the Licensed Products only to the extent necessary for PE to perform
quality control functions on lots of the Licensed Products, but under no
circumstances may PE use the Licensed Products for Research Purposes or for
any other purpose within or outside the License Field.
2.2 Additional Limited License Grant.
2.2.1 Orchid additionally grants to PE, under the Licensed Patents, a non-
exclusive license, without the right to grant sublicenses, to make,
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, PE may use the Kits only to the extent necessary
for PE to perform quality control functions on lots of the Kits, but
under no circumstances may PE 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 PE of a Kit to such Third Party Licensee, PE will have
requested and received from Orchid a written confirmation that such
Third Party is, in fact, a Third Party Licensee pursuant to Section
1.17.
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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2.2.3 Notwithstanding anything herein to the contrary, PE may recommend
that its customers contact Orchid directly to explore the
possibility of becoming Third Party Licensees.
2.2.4 In all cases, PE will pay royalties pursuant to Section 3.2 for all
sales of Kits to Third Party Licensees.
2.2.5 The validity and effectiveness of the license granted under Section
2.2.1 is subject to PE's compliance with Section 2.2.2.
2.3 [*]
ARTICLE III - FEES, ROYALTIES, AND REPORTS
3.1 License Fee. On before July 1, 2000, PE will pay to Orchid a License Fee
[*]
3.2 Royalties. PE will pay Orchid a royalty of [*] of the Sales Price of all
Licensed Products sold or otherwise disposed of to End Users and all Kits
sold or otherwise disposed of to Third Party Licensees.
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 any
Licensed Product or Kit not sold but delivered by PE to a Third
Party or Third Party Licensee, regardless of the compensation paid
to PE, 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 December 31 of each calendar year, PE 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
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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NON-EXCLUSIVE LICENSE AGREEMENT
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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 and Kits
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. PE 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
designated by Orchid and reasonably acceptable to PE.. 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 PE 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 when Orchid receives the License
Fee (the "Effective Date") and will expire on the last day of the last to
expire Licensed Patent.
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, PE will
have the right to complete all contracts for the sale or disposition of
Licensed Products or Kits under which PE is obligated on the date of
termination provided PE pays the associated Royalties on such sales or
dispositions as required in Article III hereof and provided all such sales
or dispositions are 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.
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NON-EXCLUSIVE LICENSE AGREEMENT
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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 PE with respect to Third Party
Licensees pursuant to Section 2.2.
5.2 Technical Information. Orchid has no obligation to provide to PE with any
manufacturing or technical information or any other technical assistance
regarding the Licensed Products or Kits.
ARTICLE VI - MARKING
6.1 Patent Marking. PE 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.
6.1.1 PE will prominently display on 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 Licensed 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.
6.1.2 PE will prominently display on each unit of 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.
ARTICLE VII - ASSIGNMENT
7.1 PE Assignment. This Agreement has been entered into by Orchid in reliance
on the particular qualifications of PE and is personal to PE. Neither this
Agreement nor any rights or obligations hereunder may be assigned, pledged,
or encumbered by PE without the express prior written approval of Orchid.
ARTICLE VIII--INFRINGEMENT
8.1 Infringement. PE will promptly notify Orchid of any Third Party PE knows
to be materially infringing a Licensed Patent and will provide to Orchid
any information
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NON-EXCLUSIVE LICENSE AGREEMENT
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PE has in support of such belief, provide such information is not subject
to a confidentiality agreement. Orchid will have the right, but not the
obligation, to use such information in an infringement action against such
Third Party. PE agrees to cooperate with Orchid in any action for
infringement of a Licensed Patent brought by Orchid, and Orchid will
reimburse PE for all reasonable costs incurred by it in providing
cooperation requested by Orchid.
ARTICLE IX--PRODUCT SPECIFICATIONS & LITERATURE REPORTING
9.1 Copies of Literature. PE 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 or 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 PE 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. PE's duty to supply customer material to Orchid does not
extend to material that is essentially duplicative of customer material
that has previously been supplied to Orchid.
9.2 Promotion. - PE 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 permitted situation described in section
2.2.3 in the case of Kits.
ARTICLE X - [*]
10.1 [*]
10.2 [*]
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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10.3 [*]
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 PE Authority. PE 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.
11.4 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 PE Indemnification. PE 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 PE, its
employees or any third party acting on behalf of or under authority of PE
in the performance of this Agreement, (ii) any representation or warranty
of PE in this Agreement; (iii) any sale or use by PE of a Licensed Product
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EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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NON-EXCLUSIVE LICENSE AGREEMENT
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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. IN NO EVENT WILL ORCHID BE LIABLE FOR ANY
INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES RESULTING FROM THE LICENSES
GRANTED PURSUANT TO THIS AGREEMENT OR THE USE OR COMMERCIAL DEVELOPMENT OF
ANY 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
PE 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 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.
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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 PE 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 PE. 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 PE have executed
this Agreement in duplicate on the signature page hereof.
ORCHID BIOSCIENCES, INC. PE BIOSYSTEMS, INC.
/s/ Dale Pfost /s/ Elaine J. Heron
-------------------------------- -------------------------------------
Name Name
CEO Vice President, PE Biosystems
-------------------------------- -------------------------------------
Title Title
July 5, 2000 July 5, 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 [X] number of
Genotypes (For purposes of this End User License, Genotype 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 purposes only and only on
automated electrophoresis nucleotide sequencers. 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
