<PAGE> 1
EXHIBIT 10.9
THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
October 9, 1995
UNIVERSITY OF CALIFORNIA , BERKELEY
OFFICE OF TECHNOLOGY LICENSING [UNIVERSITY OF CALIFORNIA SEAL]
================================================================================
EXCLUSIVE LICENSE
BETWEEN
AMERSHAM LIFE SCIENCE INC.
AND
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
FOR
ENERGY TRANSFER DYES FOR DNA ANALYSIS
UC Case Nos.: B94-034 and B96-001
U.S. Patent applications
Serial Nos.: 08/189,924,
08/410,808, 08/411,573 and
08/_________________
================================================================================
<PAGE> 2
TABLE OF CONTENTS
<TABLE>
<CAPTION>
<S> <C>
1. BACKGROUND 1
2. DEFINITIONS 2
3. GRANT 5
4. SUBLICENSES 5
5. LICENSE ISSUE FEE 6
6. ROYALTIES 7
7. DUE DILIGENCE 9
8. PROGRESS AND ROYALTY REPORTS 11
9. BOOKS AND RECORDS 11
10. LIFE OF THE AGREEMENT 12
11. TERMINATION BY REGENTS 13
12. TERMINATION BY LICENSEE 13
13. DISPOSITION OF PRODUCTS ON HAND UPON TERMINATION 14
14. PATENT PROSECUTION AND MAINTENANCE 14
15. MARKING 16
16. USE OF NAMES AND TRADEMARKS 16
17. LIMITED WARRANTIES 17
18. PATENT INFRINGEMENT 18
19. INDEMNIFICATION 19
20. EXPORT CONTROLS 19
21. FOREIGN GOVERNMENTAL APPROVAL OR REGISTRATION 20
22. ASSIGNMENT 20
23. NOTICES 20
24. LATE PAYMENTS 21
25. WAIVER 21
</TABLE>
<PAGE> 3
<TABLE>
<S> <C> <C>
26. CONFIDENTIALITY 21
27. FORCE MAJEURE 23
28. SEVERABILITY 23
29. APPLICABLE LAW 23
30. SCOPE OF AGREEMENT 23
</TABLE>
<PAGE> 4
October 9, 1995
UNIVERSITY OF CALIFORNIA, BERKELEY
OFFICE OF TECHNOLOGY LICENSING [The University of California Seal]
================================================================================
EXCLUSIVE LICENSE AGREEMENT FOR
ENERGY TRANSFER DYES FOR DNA ANALYSIS
U.C. Case No.: B94-034
U.S. patent applications
Serial Nos.: 08/189,924,
08/410,808 and 08/411,573
And U.C. Case No.: B96-001
================================================================================
Effective October 1, 1995, THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, a
California corporation, whose legal address is 300 Lakeside Drive, Oakland,
California 94612-3550, acting through its Office of Technology Licensing, at
the University of California, Berkeley, 2150 Shattuck Avenue, Suite 510,
Berkeley, CA 94720-1620 ("REGENTS") and AMERSHAM LIFE SCIENCE INC., a U.S.
corporation having a principal place of business at 2636 South Clearbrook
Drive, Arlington Heights, IL 60005 ("LICENSEE"), agree as follows:
1. BACKGROUND
1.1 REGENTS has an assignment of the Energy Transfer Dyes for DNA
Sequencing invented by Drs. Richard A. Mathies, Jingyue Ju and
Alexander N. Glazer, of the University of California at Berkeley,
and ("INVENTION"), as described in REGENTS' Case No. B94-034 and
REGENTS' PATENT RIGHTS as defined below, which are directed to
the INVENTION.
1.2 LICENSEE entered into an Option and Bailment Agreement on
August 15, 1994, expiring on November 15, 1995 for the purpose of
evaluating the commercial potential of the INVENTION, and granting
LICENSEE an exclusive right to negotiate an exclusive license to
the INVENTION.
1.3 LICENSEE has provided REGENTS with a plan of commercialization
outlining the business strategy for commercialization of the
INVENTION.
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1.4 The INVENTION was developed in part under sponsorship by United
States Biochemical Corporation/Amersham Life Science, Inc. and in
part by the United States Department of Energy contract number
DE-FG03-91ER61125 and as a consequence, the U.S. Government has
been granted a NON-EXCLUSIVE, non-transferable, irrevocable, paid-up
license to use the INVENTION for or on behalf of the United States
throughout the world.
1.5 Both parties recognize and agree that royalties due hereunder will
be paid to REGENTS on both pending patent applications and issued
patents.
1.6 REGENTS wish to have said INVENTION perfected and marketed in a
timely manner to provide products for public use and benefit.
1.7 LICENSEE wishes to acquire an exclusive field of use license under
the REGENTS' PATENT RIGHTS for the purpose of undertaking
development and to manufacture, use, and distribute LICENSED PRODUCTS
as defined below.
2. DEFINITIONS
2.1 "REGENTS' PATENT RIGHTS" means the following U.S. patent applications:
a) U.C. Case No.: B94-034-1, Serial Number 08/189,924 entitled,
"Probes labeled with energy transfer coupled dyes" filed on
February 1, 1994 by Drs. Mathies, Ju and Glazer and assigned to the
REGENTS, and;
b) U.C. Case No.: B94-034-2 Continuation in part application Serial
Number 08/410,808 entitled, "Primers labeled with energy transfer
coupled dyes for DNA sequencing" filed on March 27, 1995 by Drs.
Mathies, Ju and Glazer and assigned to the REGENTS, and;
c) U.C. Case No.: B94-034-3 Continuation in part application Serial
Number 08/411,573 entitled "Primers labeled with energy transfer
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<PAGE> 6
coupled dyes for DNA sequencing" filed on March 27, 1995 by Drs. Mathies,
Ju and Glazer and assigned to the REGENTS, and;
d) U.C. Case No.: B96-001, U.S. Application entitled, "Universal
Spacer/Energy Transfer Dyes" filed on September 20, 1995 by Drs. Mathies,
Ju and Glazer and assigned to the REGENTS, and;
e) continuing applications of a), b), c) and d) above, including
divisions, substitutions, extensions and continuation-in-part applications
only to the extent, however, that claims in the continuation-in-part
applications are entitled to the priority filing date of patent
application a) and are claimed or described in patent application a), and;
f) any U.S. patents issuing on the applications and the continuing
applications in a) through e) above, including reissues; and any
corresponding foreign patents or applications.
2.2 "LICENSED PRODUCTS" means any product, service, apparatus, kit or
component part thereof or other material produced by, or used in, the
LICENSED METHOD or the manufacture, use or sale of which in a particular
country:
(a) Is covered by a valid claim of an issued, unexpired patent under the
REGENTS' PATENT RIGHTS in that country in which such patent has issued
(claim of an issued, unexpired REGENTS' PATENT RIGHTS shall be
presumed to be valid unless and until it has been held invalid by
a final judgment of a court of competent jurisdiction from which no
appeal can be or is taken) or;
(b) Is covered by a pending claim being prosecuted in a pending patent
application under the REGENTS' PATENT RIGHTS in that country in which
such application is pending.
2.3 "LICENSED METHOD" means any process or method that is covered by the
REGENTS' PATENT RIGHTS in the country in which such process or method is
used to make LICENSED PRODUCTS or the use or practice would constitute,
but for the license granted to the LICENSEE pursuant to this Agreement, an
infringement of any
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<PAGE> 7
issued or pending claim within REGENTS' PATENT RIGHTS in that country in
which the LICENSED METHOD is used or practiced.
2.4 "LICENSED FIELD OF USE" means use for energy transfer primer technology in
DNA analysis.
2.5 "NET SALES" means the gross revenue of the LICENSED PRODUCTS in the form in
which it is sold, leased, used or distributed under license, whether or not
assembled (and without excluding therefrom any components or subassemblies
thereof, whatever their origin and whether or not patent impacted), less
the following items but only insofar as they actually pertain to the
disposition of such LICENSED PRODUCTS by LICENSEE and are included in such
gross income, and (except Item d) are separately billed:
(a) Import, export, excise, and sales taxes, plus custom duties; if custom
duties are part of the licensed price, REGENTS will accept LICENSEE's
statement to that effect provided accounting statement is supplied,
identifying each item and duty amount included.
(b) Costs if insurance, packing, and transportation from the place of
manufacture to the customer's premises or point of installation;
(c) Costs of installation at the place of use; and
(d) Credit for returns, allowances, or trades.
2.6 "LICENSED TERRITORY" means United States of America, its territories and
possessions, any foreign countries where REGENTS have filed or obtained
corresponding foreign patents or applications, and any other foreign
countries throughout the world for which REGENTS may lawfully grant a
license of REGENTS' PATENT RIGHTS.
2.7 AFFILIATES means any company controlled by, controlling, or under common
control with LICENSEE and includes:
(a) any company a majority share of whose voting stock or participating
profit interest is owned or controlled, directly or indirectly, in
whatever country organized, by LICENSEE and,
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Amersham University of California, Berkeley
<PAGE> 8
(b) any company which controls, directly or indirectly a majority
share of the voting stock of LICENSEE and,
(c) any company which LICENSEE or a company owned or controlled by
or owning or controlling LICENSEE at the maximum control or
ownership right permitted in the country where the company exists
and shall include any AFFILIATES of AFFILIATES.
3. GRANT
3.1 Subject to the limitations set forth in this Agreement and subject to
the license granted to the U.S. Government, REGENTS hereby grants and
LICENSEE and AFFILIATES hereby accepts an exclusive license under the
REGENTS' PATENT RIGHTS to make, have made, use, and sell LICENSED
PRODUCTS and to practice LICENSED METHOD in the LICENSED FIELD OF USE
in the LICENSED TERRITORY.
3.2 The license under Article 3.1 shall be exclusive for a term
commencing as of the effective date of this Agreement and ending on
the date of the last to expire patent under the REGENTS' PATENT
RIGHTS.
3.3 REGENTS expressly reserves the right to use the INVENTION and related
technology solely for educational and research purposes.
3.4 LICENSEE shall have a continuing responsibility to keep the REGENTS
informed of its large/small entity status (as defined by the United
States Patent and Trademark Office) of itself and its sublicensees.
4. SUBLICENSES
4.1 LICENSEE shall have the right to sublicense third parties to make,
have made, use, and sell LICENSED PRODUCTS and to practice the
LICENSED METHOD in the LICENSED FIELD OF USE provided that LICENSEE
has current exclusive rights under this AGREEMENT. Every such
sublicense shall contain at least the following:
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Amersham University of California,
Berkeley
<PAGE> 9
THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
(a) A statement setting forth the date upon which LICENSEE's
exclusive rights, privileges, and license hereunder shall expire.
(b) A statement such that, to the extent applicable, the obligations
of this Agreement shall be binding upon the sublicensee as if it
were in place of LICENSEE, except that:
(i) Earned royalty rate and minimum royalties may be at higher
rates than this Agreement; and
(ii) Sublicensee(s) shall be precluded from granting further
sublicenses.
(c) The same provision for indemnification of REGENTS as has been
provided for in this Agreement.
4.2 LICENSEE shall notify REGENTS of each sublicense granted hereunder and
furnish to REGENTS a summary of the material terms of each such
sublicense agreement.
4.3 LICENSEE shall collect and guarantee payment of all royalties due
REGENTS from sublicensees; and deliver all reports due REGENTS and
received from sublicensees.
4.4 Upon termination of this Agreement for any reason, all sublicenses
that are granted by LICENSEE pursuant to this Agreement shall remain
in effect and shall be assigned to REGENTS except that REGENTS shall
not be bound to perform any duties or obligations set forth in any
sublicenses that extend beyond the duties and obligations of REGENTS
set forth in this Agreement.
5. LICENSE ISSUE FEE
5.1 LICENSEE shall pay to REGENTS a non-creditable, non-refundable license
issue fee of $[*] as follows;
$[*] for patents under U.C. Case No. B94-034, and
$[*] for U.C. Case No.: B96-001.
5.2 $[*] when the first patent in THE REGENTS' PATENT RIGHTS
is allowed by either the US or European patents office.
This fee is non-refundable and not an advance against royalties.
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<PAGE> 10
THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
6. ROYALTIES
6.1 LICENSEE shall pay to REGENTS earned royalties at the rate of:
(a) Where LICENSED PRODUCTS are not sold as products in combination
with other materials having biological activity:
[*] percent ([*]%) of the NET SALES of LICENSED PRODUCTS by LICENSEE
or any AFFILIATES of LICENSEE to end users, and
[*] percent ([*]%) of the NET SALES of LICENSED PRODUCTS by LICENSEE
or any AFFILIATES of LICENSEE to distributors, and,
(b) Where LICENSED PRODUCTS are sold as products in combination with
other materials having biological activity:
[*] percent ([*]%) of the NET SALES of LICENSED PRODUCTS by LICENSEE or
any AFFILIATES of LICENSEE to end users, and,
[*] percent ([*]%) of the NET SALES of LICENSED PRODUCTS by LICENSEE
or any AFFILIATES of LICENSEE to distributors.
6.2 Royalties shall be payable on LICENSED PRODUCTS and LICENSED METHODS
covered by both pending patent applications and issued patents.
6.3 Royalties accruing to the REGENTS shall be paid to the REGENTS
semi-annually on or before the following dates of each calendar year:
May 31 for the period ending March 31
November 30 for the period ending September 30
6.4 LICENSEE shall pay to the REGENTS a minimum annual royalty of $[*]
on or before October 1 for each year for the life of this
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<PAGE> 11
Agreement. The first minimum annual royalty will be payable on or
before October 1, 1996. This minimum annual royalty will be credited
against the earned royalty due and owing for the next twelve months
ending on September 30 of each year.
6.5 All royalties due the REGENTS shall be payable in United States funds
collectible at par in San Francisco, California. When LICENSED
PRODUCTS are sold for monies other than United States dollars, the
earned royalties will first be determined in the foreign currency of
the country in which the LICENSED PRODUCTS were licensed and then
converted into equivalent United States funds. The exchange rate will
be that rate quoted in the Wall Street Journal on the last business
day of the reporting period.
6.6. Earned royalties on licensed distribution of LICENSED PRODUCTS
occurring in any country outside the United States shall not be
reduced by any taxes, fees, or other charges imposed by the government
of such country on the remittance of royalty income. The LICENSEE
shall also be responsible for all bank transfer charges.
6.7 LICENSEE shall make all payments under this Agreement to "The Regents
of the University of California" and forward it to REGENTS at the
address shown in Article 23.
6.8 In the event that any patent or any claim thereof included within the
REGENTS' PATENT RIGHTS expires or shall be held invalid in a final
decision by a court of competent jurisdiction and last resort and from
which no appeal has been or can be taken, all obligation to pay
royalties for LICENSED PRODUCTS based on, covered by, or made using
such patent or claims or any claims patentably indistinct therefrom
shall cease as of the date of such expiration or final decision.
LICENSEE shall not, however, be relieved from paying any royalties for
LICENSED PRODUCTS that accrued before such expiration or decision or
that are based on another valid patent or claim not expired or
involved in such decision.
6.9 No royalties will be collected or paid hereunder on LICENSED PRODUCTS
distributed to or used by the United States Government.
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<PAGE> 12
THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
LICENSEE agrees to reduce the amount charged for LICENSED PRODUCTS
distributed to the United States Government by an amount equal to the
royalty for such LICENSED PRODUCTS otherwise due the REGENTS as
provided herein.
7. DUE DILIGENCE
7.1 LICENSEE, upon execution of this Agreement, shall use diligent
commercial efforts to proceed with the development, manufacture, and
distribution under license of LICENSED PRODUCTS and shall use diligent
commercial efforts to market them in quantities sufficient to meet the
market demand. LICENSEE shall be entitled to exercise prudent and
reasonable business judgment in meeting its due diligence obligations
hereunder.
7.2 LICENSEE specifically commits to achieving the following objectives in
its due diligence activities hereunder:
(a) Initiate automated kit development in the fourth calendar quarter
of 1995.
(b) Full product automated ET-primer kit availability in the first
six months of 1996.
(c) First product introduction by September 1, 1996.
7.3 If LICENSEE is unable to meet any of its due diligence obligations set
forth in Article 7.2, then LICENSEE shall so notify REGENTS of failure
to perform. LICENSEE shall have the right and option to extend the
target date of such due diligence obligation for a period of six (6)
months upon the payment of $[*] within thirty (30) days of the
extension date for each six (6) months extension option exercised by
LICENSEE. Each target date may be extended two times upon payment of
the $[*] extension fee. These payments are creditable toward the
minimum royalty payments specified in Article 6.4. Should LICENSEE opt
not to extend the obligation or fail to meet it by the extended target
date, then REGENTS shall have the right and option either to terminate
this Agreement or to reduce the LICENSEE's
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<PAGE> 13
exclusive license to a non-exclusive royalty bearing license. This
right, if exercised by REGENTS, supersedes the rights granted in
Article 3. The right to terminate this Agreement or reduce LICENSEE's
exclusive license granted hereunder to a non-exclusive license shall
be REGENTS' sole remedy for breach of Article 7. However, if LICENSEE
is unable to perform any of the due diligence obligations set forth
in Article 7.2 due to hardships beyond LICENSEE's control, including
but not limited to delay while LICENSEE is obtaining a license
covering patents owned by a third party, while LICENSEE has
demonstrated diligent commercial efforts to perform these
obligations, then REGENTS will extend the dates as appropriate (after
conferring with LICENSEE in good faith and, in any event, on at least
a day to day basis) in writing to LICENSEE, and REGENTS shall not
terminate this Agreement or reduce LICENSEE's exclusive license to a
non-exclusive license.
7.4 At the request of either party, any controversy or claim arising out
of or relating to the diligence provisions of Article 7.2 shall be
settled by arbitration conducted in San Francisco, CA in accordance
with the then current Licensing Agreement Arbitration Rules of the
American Arbitration Association. Judgment upon the award rendered by
the arbitrator(s) shall be binding on the parties and may be entered
by either party in the court or forum, state or federal, having
jurisdiction. In determination of due diligence, the arbitrator may
determine solely the issues of fact or law with respect to
termination of LICENSEE's or REGENTS' respective rights under this
Agreement but shall not have the authority to award monetary damages
or grant equitable relief.
7.5 To exercise either the right to terminate this Agreement or to reduce
the license to a non-exclusive license for lack of diligence required
in Article 7.2, REGENTS must give LICENSEE written notice of the
deficiency. The LICENSEE thereafter has sixty (60) days to cure the
deficiency or to request arbitration. If REGENTS has not received a
written request for arbitration or satisfactory tangible evidence
that the deficiency has been cured by the end of the sixty (60) day
period, then REGENTS may, at its option, either terminate the
Agreement or reduce LICENSEE's exclusive license to a non-exclusive
license by giving written notice to LICENSEE. These notices shall be
subject to Article 23 (Notices).
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<PAGE> 14
8. PROGRESS AND ROYALTY REPORTS
8.1 Beginning March 1, 1996, and semi-annually thereafter, LICENSEE shall
submit to REGENTS a progress report covering LICENSEE's activities
related to the development and testing of all LICENSED PRODUCTS and
the obtaining of the governmental approvals necessary, if any, for
marketing in the United States. These progress reports shall be made
for all LICENSED PRODUCTS until the first commercial sale of such
LICENSED PRODUCTS occurs in the United States.
8.2 LICENSEE also agrees to report to REGENTS in its immediately
subsequent progress and royalty reports, the date of first commercial
distribution under license of LICENSED PRODUCTS.
8.3 After the first commercial sale of LICENSED PRODUCTS anywhere in the
world, LICENSEE will make quarterly royalty reports to REGENTS within
sixty (60) days after the quarters ending March 31, June 30,
September 30, and December 31, of each year. Each such royalty report
shall include at least the following:
(a) The number of LICENSED PRODUCTS manufactured and the number sold;
(b) Gross revenue for LICENSED PRODUCTS;
(c) NET SALES pursuant to Article 2.4;
(d) Total royalties due REGENTS; and
(e) Names and addresses of any new sublicensees along with a summary
of the material terms of each new sublicense agreement entered
into during the reporting quarter.
8.4 If no distribution under license of LICENSED PRODUCTS has been made
during the report period, a statement to this effect is required.
9. BOOKS AND RECORDS
9.1 LICENSEE shall keep full, true, and accurate books of accounts
containing all particulars that may be necessary for the purpose of
showing the amount of royalties payable to REGENTS. Said books of
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<PAGE> 15
accounts shall be kept at LICENSEE's principal place of business or
the principal place of business of the appropriate division of
LICENSEE to which this Agreement relates. Said books and the
supporting data shall be open at all reasonable times during normal
business hours upon reasonable notice, for three (3) years following
the end of the calendar year to which they pertain, to the inspection
and audit by an independent certified public accountant retained by
REGENTS for the purpose of verifying LICENSEE's royalty statement or
compliance in other respects with this Agreement. Such independent
certified accountant shall be bound to hold all information in
confidence except as necessary to communicate LICENSEE's
non-compliance with this AGREEMENT to REGENTS.
9.2 The fees and expenses of REGENT's representatives performing such an
examination shall be borne by REGENTS. However, if an error in
underpaid royalties to REGENTS of more than five percent (5%) of the
total royalties due for any year is discovered, then the fees and
expenses of these representatives shall be borne by LICENSEE.
10. LIFE OF THE AGREEMENT
10.1 Unless otherwise terminated by the 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 recited on page one and
shall remain in effect for the life of the last-to-expire patent
licensed under this Agreement.
10.2 In the event this Agreement is terminated for any reason whatsoever
not including expiration, LICENSEE shall provide to REGENTS, in
writing and at no cost to REGENTS, all technical information, data,
and know how that has been reduced to some tangible form and developed
by LICENSEE and directly relating to the LICENSED PRODUCTS, but
specifically excluding proprietary technology belonging to LICENSEE,
within ninety (90) days of such termination. LICENSEE hereby grants to
REGENTS a non-exclusive right to use, and sublicense others the right
to use the technical information, data, and know-how, and LICENSEE
reserves the right to use, sublicense others to use, and otherwise
exploit all such technical information,
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data and know-how to the extent that such use does not conflict with
the other provisions of this Agreement.
10.3 Any termination of this Agreement shall not affect the rights and
obligations set forth in the following articles:
Article 4 Sublicenses
Article 9 Books and Records
Article 10 Life of the Agreement
Article 13 Disposition of PRODUCTS on
Hand Upon Termination
Article 16 Use of Names and Trademarks
Article 19 Indemnification
Article 24 Late Payments
Article 26 Confidentiality
10.4 Any termination of this Agreement shall not relieve LICENSEE of its
obligation to pay any monies due or owing at the time of such
termination and shall not relieve any obligations, of either party to
the other party, established prior to termination.
11. TERMINATION BY REGENTS
If LICENSEE should violate or fail to perform any term or covenant of this
Agreement, then REGENTS may give written notice of such default ("Notice of
Default") to LICENSEE. If LICENSEE should fail to repair such default
within sixty (60) days of the effective date of such notice, REGENTS 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 effective date of such notice. Such termination shall not
relieve LICENSEE of it obligation to pay any royalty or license fees owing
at the time of such termination and shall not impair any accrued rights of
REGENTS. These notices shall be subject to Article 23 (Notices).
12. TERMINATION BY LICENSEE
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12.1 LICENSEE shall have the right at any time to terminate this Agreement
in whole or as to any portion of REGENTS' PATENT RIGHTS by giving
notice in writing to REGENTS. Such notice of termination shall be
subject to Article 23 (Notices) and termination of this Agreement
shall be effective ninety (90) days from the effective date of such
notice.
12.2 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 REGENTS hereunder prior to the time such termination becomes
effective, and such termination shall not affect in any manner any
rights of REGENTS arising under this Agreement prior to such
termination.
13. DISPOSITION OF PRODUCTS ON HAND UPON TERMINATION
Upon termination of this Agreement LICENSEE shall have the privilege of
disposing of all previously made or partially made LICENSED PRODUCTS, but
no more, within a period of one hundred and twenty (120) days following the
effective date of termination, provided, however, that the sale of such
LICENSED PRODUCTS shall be subject to the terms of this Agreement
including, but not limited to, the payment of royalties at the rate and at
the time provided herein and the rendering of reports thereon.
14. PATENT PROSECUTION AND MAINTENANCE
14.1 REGENTS shall diligently prosecute and maintain the United States and
foreign patent applications and patents under REGENTS' PATENT RIGHTS
using counsel of its choice, provided that the continued use of such
counsel at any point in the patent prosecution process subsequent to
initial filing of a U.S. patent application covering the INVENTION,
including preparation and filing of divisions, substitutions,
extensions, continuation-in-part applications, and corresponding
foreign applications, shall be subject to the approval of LICENSEE.
REGENTS shall promptly provide LICENSEE with copies of all relevant
documentation so that LICENSEE may be currently informed and apprised
of the continuing prosecution and LICENSEE
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<PAGE> 18
agrees to keep this documentation confidential in accordance with
Article 26 herein. LICENSEE may comment upon such documentation,
provided, however, that if LICENSEE has not commented upon such
documentation prior to the deadline for filing a response with the
relevant government patent office, REGENTS shall be free to respond
appropriately without consideration of LICENSEE's comments. LICENSEE
and LICENSEE's patent counsel shall have the right to consult with
patent counsel chosen by REGENTS.
14.2 REGENTS shall use all reasonable efforts to prepare or amend any
patent application to include claims reasonably requested by LICENSEE
to protect the products contemplated to be sold, or methods or
procedures to be practiced under this Agreement.
14.3 Subject to Articles 14.4 and 14.6, all past, present, and future costs
for preparing, filing, prosecuting, and maintaining all United States
and foreign patent applications, and patents issuing thereon and
contemplated by the executed Letter Agreement dated January 13, 1995,
and this Agreement shall be borne by LICENSEE, so long as the licenses
granted to LICENSEE herein are exclusive. If, however, REGENTS reduces
the exclusive licenses granted herein to nonexclusive licenses
pursuant to Articles 7.3, 7.4, or 7.5 and REGENTS grants additional
license(s), the costs of preparing, filing, prosecuting and
maintaining such patent applications and patents shall be divided
equally among the licensed parties from the effective date of each
subsequently granted license agreement.
14.4 REGENTS shall file, prosecute and maintain, at the request of
LICENSEE, patent applications and patents covered by REGENTS' PATENT
RIGHTS in foreign countries, if available, and if LICENSEE so desires.
LICENSEE must notify REGENTS within nine (9) months of the filing of
the corresponding United States application of its decision to obtain
foreign patents. The notice concerning foreign filing shall be in
writing and must identify the countries desired. The absence of such a
notice from LICENSEE to REGENTS within such nine (9) month period
shall be considered an election not to secure foreign rights. REGENTS
shall have the right to file patent applications at its own expense in
any country which LICENSEE has
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not included in the list of desired countries and such application and
resultant patents shall not be subject to this Agreement.
14.5 All patents and patent applications under this Agreement shall be held
in the name of REGENTS, and shall be subject to the terms and
provisions hereof. REGENTS shall take into consideration LICENSEE's
reasonable suggestions in the preparation and prosecution of REGENTS'
PATENT RIGHTS covering the INVENTION in order to obtain the broadest
claims and protection.
14.6 LICENSEE's obligation to underwrite and to pay all domestic and
foreign patent filing, prosecution, and maintenance costs shall
continue for so long as this Agreement remains in effect, provided,
however, that LICENSEE may terminate its obligations with respect to
any given patent application or patent in any or all designated
countries upon three (3) months written notice to REGENTS. REGENTS
will use its best efforts to curtail patent costs when such a notice
is received from LICENSEE. REGENTS may continue prosecution and/or
maintenance of such application(s) or patent(s) at its sole
discretion and expense; provided, however, that LICENSEE shall have no
further right or licenses thereunder.
15. MARKING
Prior to the issuance of patents under REGENTS' PATENT RIGHTS, LICENSEE
agrees to mark LICENSED PRODUCTS (or their containers or labels) made,
sold, licensed or otherwise disposed of by it in the United States under
the license granted in this Agreement with the words "Patent Pending," and
following the issuance in the United States of one or more patents under
REGENTS' PATENT RIGHTS, with the numbers of the REGENTS' PATENT RIGHTS.
16. USE OF NAMES AND TRADEMARKS
Nothing contained in this Agreement shall be construed as conferring any
right to use in advertising, publicity or other promotional activities any
name, trademark, trade name, or other designation of either party hereto
(including any contraction, abbreviation, or simulation of any of the
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foregoing). Unless required by law or consented to in writing by REGENTS,
the use of the name "The Regents of the University of California" or the
name of any University of California campus is expressly prohibited.
17. LIMITED WARRANTIES
17.1 REGENTS warrants to LICENSEE that it has the lawful right to grant
this license.
17.2 These licenses and the associated INVENTION are provided without
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR
ANY OTHER WARRANTY, EXPRESSED OR IMPLIED. REGENTS MAKES NO
REPRESENTATIONS OR WARRANTIES THAT THE LICENSED PRODUCTS OR LICENSED
METHOD WILL NOT INFRINGE ANY PATENT OR OTHER PROPRIETARY RIGHTS.
17.3 IN NO EVENT WILL REGENTS BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THE LICENSE GRANTED
HEREUNDER OR THE USE OF THE INVENTION OR LICENSED PRODUCTS.
17.4 Nothing in this Agreement is or shall be construed as:
(a) A warranty or representation by REGENTS as to the validity or
scope of any REGENTS' PATENT RIGHTS; or
(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;
or
(c) An obligation to bring or prosecute actions or suits against
third parties for patent infringement, except as provided in
Article 18; or
(d) Conferring by implication, estoppel, or otherwise any license or
rights under any patents of REGENTS other than REGENTS' PATENT
RIGHTS as defined herein; or
(e) An obligation to furnish any know how, not provided in REGENTS'
PATENT RIGHTS.
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THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
18. PATENT INFRINGEMENT
18.1 In the event that LICENSEE shall learn of the substantial
infringement of any REGENTS' PATENT RIGHTS under this Agreement,
LICENSEE shall promptly inform REGENTS with reasonable evidence of
such infringement. Both parties to this Agreement agree that during
the period and in a jurisdiction where LICENSEE has exclusive rights
under this Agreement, neither will notify a third party of the
infringement without first obtaining consent of the other party,
which consent shall not be unreasonably denied. Both parties, in
cooperation with each other shall agree on a mutually acceptable
approach to terminate such infringement without litigation.
18.2 LICENSEE may request that REGENTS take legal action against the
infringement. Such request shall be made in writing and shall include
reasonable evidence of such infringement and damages to LICENSEE. If
the infringing activity has not been abated within ninety (90) days
following the effective date of such request, REGENTS shall have the
right to:
(a) Commence suit on its own account; or
(b) Refuse to participate in such suit.
REGENTS shall give notice of its election in writing to LICENSEE
within ninety (90) days after receiving such request from LICENSEE
and absent refusal to participate in such suit, shall commence suit
promptly thereafter. LICENSEE shall have the right to join or
intervene at its own expense in any such suit commenced by REGENTS.
LICENSEE may bring suit for patent infringement if, and only if,
REGENTS elects not to commence suit and if the infringement occurred
during the period and in a jurisdiction where LICENSEE had exclusive
rights under this Agreement. However, in the event LICENSEE elects to
bring suit in accordance with this paragraph, REGENTS may thereafter
join such suit at its own expense.
18.3 [*]
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THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
[*]
18.4 Each party agrees to cooperate with the other in legal proceedings
instituted hereunder but at the expense of the party on account of
whom suit is brought. Such legal proceedings shall be controlled by
the party bringing the action, except that REGENTS may be represented
by counsel of its choice, at its sole expense, in any action brought
by LICENSEE and LICENSEE may be represented by counsel of its choice,
at its sole expense, in any action brought by REGENTS.
19. INDEMNIFICATION
LICENSEE agrees, and agrees to require its sublicensees, to indemnify, hold
harmless, and defend REGENTS and its officers, employees, and agents;
sponsor(s) of the research that led to the INVENTION; and the inventors of
the patents and patent applications in REGENTS' PATENT RIGHTS and their
employees against any and all liability, claims, suits, losses, damages,
costs, fees, and expenses for death, illness, personal injury, property
damage, and improper business practices arising out of the manufacture,
use, sale, lease or other disposition of the INVENTION, REGENTS' PATENT
RIGHTS, or LICENSED PRODUCTS by LICENSEE, by its sublicensees, or each of
their customers except to the extent such arises from the negligence or
default of REGENTS whereupon the obligation to indemnify contained in this
clause should be reduced in proportion to such negligence or default.
20. EXPORT CONTROLS
LICENSEE understands that REGENTS are subject to United States laws and
regulations (including the Arms Export Control Act, as amended, and the
Export Administration Act of 1979), controlling the export of technical
data, computer software, laboratory prototypes and other commodities, and
REGENTS' obligations under this Agreement are contingent on compliance with
such laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United
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States Government and/or written assurances by LICENSEE that LICENSEE shall
not export such technical data and/or commodities to certain foreign
countries without prior approval of such agency. REGENTS neither represent
that a license shall not be required nor that, if required, it shall be
issued.
21. FOREIGN GOVERNMENTAL APPROVAL OR REGISTRATION
If this Agreement or any associated transaction is required by the law of
any nation to be either approved or registered with any governmental
agency, LICENSEE shall assume all legal obligations to do so.
22. ASSIGNMENT
This Agreement is binding upon and shall inure to the benefit of REGENTS,
its successors and assigns, provided, however, this Agreement shall be
personal to LICENSEE and AFFILIATES and assignable by LICENSEE only with
the written consent of REGENTS, which consent shall not be unreasonably
withheld, except that LICENSEE may freely assign this Agreement to an
acquirer of all or substantially all of LICENSEE's stock, assets or
business.
23. NOTICES
All notices under this Agreement shall be deemed to have been fully given
when done in writing and deposited in the United States mail, registered or
certified, and addressed as follows:
To REGENTS: Office of Technology Licensing
2150 Shattuck Avenue, Suite 510
Berkeley, CA 94720-1620
Attn.: Director (UC Case No.: B94-034)
To LICENSEE: Amersham Life Science Inc.
2636 S. Clearbrook Drive
Arlington Heights, IL U.S.A. 60005
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Attn.: President
Either party may change its address upon written notice to the other party.
24. LATE PAYMENTS
In the event royalty payments or fees are not received by REGENTS when due,
LICENSEE shall pay to REGENTS interest charges at a rate of ten percent
(10%) per annum. Such interest shall be calculated from the date payment
was due until actually received by REGENTS.
25. WAIVER
25.1 The failure of either party to assert a right hereunder or to insist
upon compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent
failure to perform any such term or condition by the other party.
25.2 None of the terms, covenants, and conditions of this Agreement can be
waived except by the written consent of the party waiving compliance.
26. CONFIDENTIALITY
26.1 LICENSEE and REGENTS respectively shall hold the other party's
proprietary business, terms of this Agreement, patent prosecution
material, and technical information and other proprietary information
in confidence and against disclosure to third parties with at least
the same degree of care as it exercises to protect its own data and
license agreements of a similar nature.
26.2 Nothing contained herein shall in any way restrict or impair the right
of LICENSEE or REGENTS to use, disclose, or otherwise deal with any
information or data which:
(a) at the time of disclosure to a receiving party is generally
available to the public or thereafter becomes generally available
to the public by publication or otherwise through no act of the
receiving party;
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(b) the receiving party can show by written record was in its possession
prior to the time of disclosure to it hereunder and was not acquired
directly or indirectly from the disclosing party;
(c) is independently made available to the receiving party without
restrictions as a matter of right by a third party;
(d) is subject to disclosure under the California Public Records Act or
other requirements of law.
26.3 It is understood that REGENTS shall be free to release to the inventors and
senior administrators employed by REGENTS the terms and conditions of this
Agreement upon their request. If such release is made, REGENTS shall inform
such employees of the confidentiality obligations set forth above and shall
request and use its best efforts to ensure that they do not disclose such
terms and conditions to others. It is further understood that should a
third party inquire whether a license to REGENTS' PATENT RIGHTS is
available, REGENTS may disclose the existence of this Agreement and the
extent of the grant in Article 3 to such third party, but shall not
disclose the name of LICENSEE, except where REGENTS are required to release
information under either the California Public Records Act or other
applicable law, provided REGENTS shall give prior written notice to
LICENSEE of such disclosure.
26.4 LICENSEE and REGENTS agree to destroy or return to the disclosing party
proprietary information received from the other in its possession within
fifteen (15) days following the effective date of termination of this
Agreement. However, each party may retain one copy of proprietary
information of the other solely for archival purposes in non-working files
for the sole purpose of verifying the ownership of the proprietary
information, provided such proprietary information shall be subject to the
confidentiality provisions set forth in Article 26.1. LICENSEE and REGENTS
agree to provide each other, within thirty (30) days following termination
of this Agreement, with a written notice that proprietary information has
been returned or destroyed.
26.5 The terms of this Article 26 (Confidentiality) shall expire in five (5)
years from the official date of termination of this Agreement.
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27. FORCE MAJEURE
The parties to this Agreement shall be excused from any performance
required hereunder if such performance is rendered impossible or unfeasible
due to any catastrophes or other major events beyond their reasonable
control, including, without limitation, war, riot, and insurrection; laws,
proclamations, edicts, ordinances, or regulations; strikes, lockouts, or
other serious labor disputes; and floods, fires, explosions, or other
natural disasters. When such events have abated, the parties' respective
obligations hereunder shall resume.
28. SEVERABILITY
The provisions of this Agreement are severable, and in the event that any
provision of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of law, such invalidity or
enforceability shall not in any way affect the validity or enforceability
of the remaining provisions hereof.
29. APPLICABLE LAW
THIS AGREEMENT SHALL BE CONSTRUED, INTERPRETED, AND APPLIED IN ACCORDANCE
WITH THE LAWS OF THE STATE OF CALIFORNIA. QUESTIONS CONCERNING THE LAW AND
EFFECT OF THE REGENTS' PATENT RIGHTS SHALL BE DETERMINED BY THE LAW OF THE
COUNTRY IN WHICH THE PATENT WAS GRANTED.
30. SCOPE OF AGREEMENT
This Agreement (except for the Letter Agreement dated January 13, 1995 and
extension thereof, which shall continue to the extent it is not
inconsistent with this Agreement) incorporates the entire agreement between
the parties with respect to the subject matter hereof, and this Agreement
may be altered or modified only by written amendment duly executed by the
parties hereto.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement in
duplicate originals by their duly authorized officers or representatives.
THE REGENTS OF THE AMERSHAM LIFE SCIENCE, INC.
UNIVERSITY OF CALIFORNIA
By /s/ William A. Hoskins By /s/ C.G. Marlow
------------------------------ --------------------------------
William A. Hoskins C. G. Marlow
Director President
Office of Technology Licensing
Date Oct. 30, 1995 Date 10/16/95
---------------------------- -------------------------------
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UNIVERSITY OF CALIFORNIA, BERKELEY
OFFICE OF TECHNOLOGY LICENSING [SEAL]
--------------------------------------------------------------------------------
AMENDMENT #1 TO
EXCLUSIVE LICENSE AGREEMENT FOR
ENERGY TRANSFER DYES FOR DNA ANALYSES
U.C. Case No.: B94-094
--------------------------------------------------------------------------------
Effective April 2, 1998, THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, a
California corporation, whose legal address is 300 Lakeside Drive, Oakland,
California 94612-3550, acting through its Office of Technology Licensing, at
the University of California, Berkeley, 2150 Shattuck Avenue, Suite 510,
Berkeley, CA 94720-1620 ("REGENTS") and AMERSHAM PHARMACIA BIOTECH, INC. a U.S.
corporation having a principal place of business at 2636 South Clearbrook
Drive, Arlington Heights, IL 60005 ("LICENSEE"), agree as follows:
Article 2.4: Substitute the following:
2.4 "LICENSED FIELD OF USE" means use for energy transfer technology in
DNA analysis.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in
duplicate originals by their duly authorized officers or representatives.
THE REGENTS OF THE AMERSHAM PHARMACIA BIOTECH, INC.
UNIVERSITY OF CALIFORNIA (formerly known as AMERSHAM LIFE SCIENCE, INC)
By: /s/ William A. Hoskins By: /s/ R.E. Long
----------------------------- --------------------------------
William A. Hoskins R.E. Long
Director Director
Office of Technology Licensing
Date: April 3rd, 1998 Date: April 3rd, 1998
--------------------------- ------------------------------
U.C. Case No.: B94-094 B95-001 Proprietary and Confidential
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