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UNITED STATES
SECURITIES AND EXCHANGE COMMISSION
Washington, D.C. 20549
FORM 10-K/A-3
Mark one
|X| ANNUAL REPORT PURSUANT TO SECTION 13 or 15(d) OF
THE SECURITIES EXCHANGE ACT OF 1934 (FEE REQUIRED)
For the fiscal year ended July 31, 1996
or
|_| TRANSITION REPORT PURSUANT TO SECTION 13 or 15(d) OF
THE SECURITIES EXCHANGE ACT OF 1934 (NO FEE REQUIRED)
For the transition period from ______________ to ____________________
Commission File Number 1-9974
ENZO BIOCHEM, INC.
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(Exact name of registrant as specified in its charter)
New York 13-2866202
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(State or other jurisdiction (I.R.S. Employer
of incorporation or organization) Identification No.)
60 Executive Boulevard,
Farmingdale, New York 11735
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(Address of principal executive offices) (Zip Code)
(5l6) 755-5500
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(Registrant's telephone number,
including area code)
Securities registered pursuant to Section 12(b) of the Act:
Common Stock, $.01 par value The American Stock Exchange
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(Title of Class) (Name of each Exchange on which registered)
Securities registered pursuant to Section 12(g) of the Act:
NONE
Indicate by check mark whether the registrant (1) has filed all reports
required to be filed by Section 13 or 15(d) of the Securities Exchange Act of
1934 during the preceding 12 months (or for such shorter period that the
registrant was required to file such reports), and (2) has been subject to such
filing requirements for the past 90 days.
Yes |X| No |_|
Indicate by check mark if disclosure of delinquent filers pursuant to Item
405 of Regulation S-K is not contained herein, and will not be contained, to the
best of registrants knowledge, in definitive proxy or information statements
incorporated by reference in Part III of this Form 10-K or any amendment to this
Form 10-K. |X|
As of October 21, 1996, the Registrant had 21,951,349 shares of Common
Stock outstanding.
The aggregate market value of the Common Stock held by nonaffiliates as of
October 21, 1996 was approximately $316,492,296.
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PART IV
Item 14. Exhibits, Financial Statement Schedules, and Reports
on Form 8-K
---------------------------------------------
(a) (1) Consolidated Financial Statements
Consolidated Balance Sheet - July 31, 1996 and 1995
Consolidated Statement of Operations-
Years ended July 31, 1996, 1995 and 1994
Consolidated Statement of Stockholders' Equity-
Years ended July 31, 1996, 1995 and 1994
Consolidated Statement of Cash Flows-
Years ended July 31, 1996, 1995 and 1994 Notes to Consolidated
Financial Statements.
(2) Financial Statement Schedule
Schedule II - Valuation and Qualifying Accounts
All other schedules have been omitted because the required information is
included in the consolidated financial statements or the notes thereto or
because they are not required.
(3) Exhibits
The following documents are filed as Exhibits to this Annual Report on Form
10-K:
Exhibit
No Description
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3(a) Certificate of Incorporation, as amended March 17, 1980. (1)
3(b) June 16, 1981 Certificate of Amendment of the Certificate of
Incorporation. (2)
3(c) Certificate of Amendment to the Certificate of Incorporation. (11)
3(d) Bylaws. (1)
4(d) Form of Note Indenture. (3)
10(a) 1980 Stock Option Plan. (1)
10(b) Investment Agreement between the registrant and Johnson & Johnson
Development Corp. dated June 25, 1982. (4)
10(c) Agreement between the registrant and Ortho Diagnostic System, Inc.
dated June 25, 1982. (5)
10(d) 1983 Incentive Stock Option Plan.(6)
10(e) Letter Agreement between the Company and Ortho Diagnostic Systems,
Inc. dated as of January 1, 1985. (7)
10(f) Lease Agreement dated as of December 1, 1985. (8)
10(g) Indenture of Mortgage and Trust dated as of December 1, 1985. (8)
10(h) Letter of Credit Agreement dated as of December 1, 1985.(8)
10(i) Leasehold Mortgage and Security Agreement dated as of February 5,
1986. (8)
10(j) Loan Agreement dated as of December 31, 1985. (8)
10(k) Restricted Stock Plan. (8)
10(p) Agreement with First New York Bank for Business. (14)
10(q) Agreement with BioHealth Laboratories, Inc. shareholders filed
herewith. (15)
10(r) Agreement with Johnson & Johnson, Inc. filed herewith. (16)
10(s) 1993 Incentive Stock Option Plan. (16)
10(t) Employment Agreement with Elazar Rabbani. (16)
10(u) Employment Agreement with Shahram Rabbani. (16)
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10(v) Employment Agreement with Barry Weiner. (16)
10(w) 1994 Stock Option Plan (17).
10(x) Stipulation of Settlement with the City of New York (18).
10(y) Agreement with Corange International Limited (Boehringer Mannheim)
effective April 1994. (19)
10(z) Agreement with Amersham International effective February 1995.
(18)(19)
10(aa) Agreement with Dako A/S effective May 1995. (18) (19)
10(bb) Agreement with Baxter Healthcare Corporation (VWR Scientific
Products) effective September 1995. (18) (19)
10(cc) Agreement with Yale University and amendments thereto. (19)
10(dd) Agreement with The Research Foundation of the State of New York
effective May 1987. (18) (19)
11 Computation of per-share earnings (18).
21 Subsidiaries of the registrant:
Enzo Clinical Labs, Inc., a New York Corporation
Enzo Diagnostics, Inc., a New York Corporation
Enzo Therapeutics, Inc., a New York Corporation
23 Consent of Independent Auditors (18).
Notes to (a)(3)
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(1) The exhibits were filed as exhibits to the Company's Registration Statement
on Form S-18 (File No. 2-67359) and are incorporated herein by reference.
(2) This exhibit was filed as an exhibit to the Company's Form 10-K for the
year ended July 31, 1981 and is incorporated herein by reference.
(3) These exhibits were filed as exhibits to the Company's Current Report on
Form 8-K dated April 4, 1986 and are incorporated herein by reference.
(4) This exhibit was filed as an exhibit to the Company's Current Report on
Form 8-K dated June 29, 1982 and is incorporated herein by reference.
(5) This exhibit was filed as an exhibit to the Company's Annual Report on Form
10-K for the year ended July 31, 1983 and is incorporated herein by
reference.
(6) This exhibit was filed with the Company's definitive proxy statement dated
February 4, 1983 and is incorporated herein by reference.
(7) This exhibit was filed with the Company's Annual Report on Form 10-K for
the year ended July 31, 1985 and is incorporated herein by reference.
(8) These exhibits were filed as exhibits to the Company's Quarterly Report on
Form 10- Q for the quarter ended January 31, 1986 and are incorporated
herein by reference.
(9) This exhibit was filed as an exhibit to the Company's Registration
Statement on Form S-2(33-7657) and is incorporated herein by reference.
(10) This exhibit was filed as an exhibit to the Company's Current Report on
Form 8-K dated July 12, 1990 and is incorporated herein by reference.
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(11) This exhibit was filed with the Company's Annual Report on Form 10-K for
the year ended July 31, 1989 and is incorporated herein by reference.
(12) This exhibit was filed with the Company's Annual Report on Form 10-K for
the year ended July 31, 1990 and is incorporated herein by reference.
(13) This exhibit was filed with the Company's Annual Report on Form 10-K for
the year ended July 31, 1991 and is incorporated herein by reference.
(14) This exhibit was filed with the Company's Annual Report on Form 10-K for
the year ended July 31, 1992 and is incorporated herein by reference.
(15) This exhibit was filed as an exhibit to the Company's Registration
Statement on Form S-3 (33-72170) and is incorporated herein by reference.
(16) This exhibit was filed with the Company's Annual Report on Form 10-K for
the year ended July 31, 1994 and is incorporated herein by reference.
(17) This exhibit was filed with the Company's Annual Report on Form 10-K for
the year ended July 31, 1995 and is incorporated herein by reference.
(18) This exhibit was filed with the Company's Annual Report on Form 10-K for
the year ended July 31, 1996 or previously filed Amendment thereto and is
incorporated by reference.
(19) These exhibits are subject to a confidential treatment request pursuant to
Securities Exchange Act Rule 24b-2
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(b) The Company's Current Reports on Form 8-K filed during the quarter ended
July 31, 1996 -- none.
(c) See Item 14(a)(3), above.
(d) See Item 14(a)(2), above.
*************
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S I G N A T U R E S
Pursuant to the requirements of Section 13 or 15(d) of the Securities
Exchange Act of 1934, the registrant has duly caused this report to be signed on
its behalf by the undersigned, thereunto duly authorized.
ENZO BIOCHEM, INC.
Date: February 4, 1997 By: /s/ Elazar Rabbani
---------------------
Chairman of the Board
Pursuant to the requirements of the Securities Exchange Act of 1934, this
report has been signed below by the following persons on behalf of the
registrant and in the capacities and on the dates indicated.
/s/ Elazar Rabbani February 4, 1997
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Elazar Rabbani,
Chairman of Board of Directors
(Principal Executive Officer)
/s/ Shahram K. Rabbani February 4, 1997
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Shahram K. Rabbani,
Chief Operating Officer, Treasurer
and Director (Principal Financial
and Accounting Officer)
/s/ Barry W. Weiner February 4, 1997
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Barry W. Weiner,
President, Secretary and Director
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John B. Sias, Director
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John J. Delucca, Director
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EXHIBIT INDEX
Exhibit
No Description
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10(y) Agreement with Corange International Limited (Boehringer Mannheim)
effective April 1994. (1)
10(cc) Agreement with Yale University and amendments thereto. (1)
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(1) These exhibits are subject to a confidential treatment request pursuant to
Securities Exchange Act Rule 24b-2
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EXHIBIT 10(y)
DISTRIBUTION AND SUPPLY AGREEMENT
BETWEEN ENZO BIOCHEM, INC. AND CORANGE INTERNATIONAL LIMITED
April 25, 1994
This agreement is entered into effective this 25th day of April, 1994, by
and among Enzo Biochem, Inc. and Enzo Diagnostics, Inc., a wholly-owned
subsidiary of Enzo Biochem, Inc. (collectively referred to hereafter as "ENZO"),
New York corporations having their principal places of business at 60 Executive
Boulevard, Farmingdale, NY 11735, U.S.A., and Corange International Limited, a
Bermuda corporation having its principal place of business at 22 Church Street,
Hamilton, Bermuda HM HX ("CIL").
WHEREAS, ENZO owns or has rights to certain PATENTS listed in APPENDIX A
("PATENTS");
WHEREAS, CIL wishes to market and sell certain PRODUCTS ("PRODUCT(S)"),
covered by claims of PATENTS, into the research products market worldwide;
WHEREAS, ENZO wishes CIL to market and sell certain PRODUCTS, covered by
claims of PATENTS, into the research products market worldwide;
WHEREAS, ENZO manufactures or will manufacture certain PRODUCTS;
WHEREAS, ENZO desires to have CIL manufacture for ENZO certain PRODUCTS
within the scope of this Agreement;
NOW, THEREFORE, in consideration of the mutual agreements hereinafter set
forth, the parties hereto agree as follows:
I. Definitions
AFFILIATE means an entity controlled by or under common control with
another entity within the Corange Limited group of companies. For purposes of
this Agreement, control shall mean the ownership of a majority of the common
stock or the majority of the voting equity interest. Unless the context
otherwise requires, "CIL" shall be deemed to refer to Corange International
Limited and its AFFILIATES.
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GROUP A PRODUCT means a product that is a nucleotide, oligonucleotide or
polynucleotide with a signal generating moiety, the manufacture, use or sale of
which is covered by claims of a PATENT and that is not a group A1 product. The
current GROUP A PRODUCTS are listed on EXHIBIT A to this Agreement.
GROUP A1 PRODUCT means a product that is a nucleotide, oligonucleotide or
polynucleotide with a signal generating moiety, the manufacture, use or sale of
which is covered by claims of a PATENT and that requires additional complex
proprietary manufacturing know-how CIL. The current GROUP A1 PRODUCTS are listed
on EXHIBIT A1 to this Agreement.
GROUP C PRODUCT means a product (i) is not a GROUP A PRODUCT or a GROUP A1
PRODUCT, the use of which is covered by claims of a PATENT. The current GROUP C
PRODUCTS are listed on EXHIBIT C to this Agreement.
GROUP D PRODUCT means a product that may or may not infringe claims of a
patent which the parties have agreed that CIL shall manufacture, or have
manufactured, and sell.
GROUP E1 PRODUCT means a KIT manufactured by ENZO. The current GROUP E1
PRODUCTS are listed on EXHIBIT E1 to this Agreement.
GROUP E2 PRODUCT means a product currently manufactured by ENZO that is not
part of a KIT. The current GROUP E2 PRODUCTS are listed on EXHIBIT E2 to this
Agreement.
GROUP K PRODUCT means a KIT sold by CIL that contains RAW MATERIALS. The
current GROUP K PRODUCTS are listed on EXHIBIT K to this Agreement.
GROUP K1 PRODUCT means (i) a KIT sold by CIL that does not contain RAW
MATERIALS but contains a component that, if sold individually, would be a GROUP
K1 PRODUCT, or (ii) a component requiring manufacturing processes in addition to
labeling on the base, sugar or phosphate. The current GROUP K1 PRODUCTS are
listed on EXHIBIT K1 to this Agreement.
2
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ENZ-1 DIV 3 CLAIMS means the claims contained in the U.S. patent
application USSN 07/130,170, filed December 7, 1987, as allowed by the United
States Patent and Trademark Office in the notice of allowance dated November,
1993, or the equivalent claims (or equivalent composition claims) in a foreign
patent.
ENZ-7 COMPOSITION CLAIMS means composition or apparatus claims contained in
U.S. Patent No. 4,994,373 (USSN 385986 filed July 20, 1989) or any patent
issuing from any parent, continuation, reissue or division of such patent, or
any foreign counterpart thereto or comparable claims in any PATENT, that, in
mutual agreement between CIL and ENZO or through the final judgment of a court
of law, are infringed by a product sold by CIL.
ENZO SELLING PRICE means the higher of (i) the actual selling price of a
GROUP A1, C, K OR K1 product less the usual trade discounts actually allowed,
and credits actually given for returns allowances or trades; or *.
PATENTS means patents throughout the world owned or licensed by ENZO.
Issued PATENTS are listed in APPENDIX A to this Agreement, which APPENDIX is
subject to periodic supplementation upon the issuance of PATENTS.
PRODUCTS means collectively all GROUP A PRODUCTS, GROUP A1 PRODUCTS, GROUP
C PRODUCTS, GROUP D PRODUCTS, GROUP E1 PRODUCTS, GROUP E2 PRODUCTS, GROUP K
PRODUCTS, and GROUP K1 PRODUCTS.
FORCE MAJEURE means a cause beyond the control of a party, including but
not limited to acts of God, acts, laws or regulations of any government, civil
disorder, strikes, destruction of production facilities or material by fire,
water, earthquake or storm, epidemics and failures of public utilities or common
carriers.
KIT means a PRODUCT containing two or more vials of reagents or other
components that are optimized to allow the user to perform a function.
RAW MATERIALS means a GROUP A PRODUCT or a material that is included as a
component of a KIT for which ENZO has PATENTS.
MANUFACTURING TRANSITION PERIOD is defined in Section VII.
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* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
3
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SELLING PRICE means the actual selling price of a PRODUCT to a CIL customer
that is the end user of the PRODUCT, less the usual trade discounts actually
allowed, and credits actually given for returns, allowances or trades.
II. Sale Of PRODUCTS.
ENZO hereby appoints, and CIL accepts appointment, subject to the
conditions set forth herein, as a nonexclusive distributor for the distribution
and sale of PRODUCTS to the research market subject to the conditions of this
Agreement.
A. GROUP A PRODUCTS.
1. Manufacture and Sale. ENZO or its designee shall manufacture, sell
and deliver to CIL and CIL shall purchase exclusively from ENZO (after the
MANUFACTURING TRANSITION PERIOD with respect to each GROUP A PRODUCT) such
quantities of the GROUP A PRODUCTS as CIL may order in accordance with this
Agreement. CIL shall have the right to sell GROUP A PRODUCTS worldwide within
the scope of this Agreement.
2. Packaging. Each of the GROUP A PRODUCTS shall be packaged in
CIL-designated packaging and labeling; provided, however, that such packaging
shall acknowledge ENZO as provided in this Agreement and that such packaging
shall not be changed by CIL to become unduly burdensome to ENZO.
3. Specifications. Each GROUP A PRODUCT shall conform to the
specifications for it agreed to by ENZO and by CIL.
4. Changes to Exhibit A. CIL may request that ENZO add to EXHIBIT A
and manufacture and sell to CIL additional products that are nucleotides,
oligonucleotides or polynucleotides with a signal generating moiety, which CIL
believes to be GROUP A PRODUCTS, the manufacture, use or sale of which are
covered by PATENTS, provided that CIL may not add any additional product for any
period during which ENZO has a prior exclusive commitment to a third party. If
ENZO desires to manufacture such additional products, then such additional
products shall be added to EXHIBIT A and the parties shall immediately enter
into good faith negotiations on specifications and price. If ENZO does not
desire to manufacture such additional products, such additional products shall
be added to EXHIBIT A1 for manufacture by or for CIL under the terms of this
Agreement.
4
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ENZO shall have the right at any time, upon its representation to CIL that
it desires to commence manufacture and supply of such additional products, to
transfer such additional products from the status of GROUP A1 PRODUCTS to GROUP
A PRODUCTS.
B. GROUP A1 PRODUCTS.
1. Manufacture and Sale. ENZO shall engage CIL to manufacture GROUP A1
PRODUCTS in accordance with ENZO's specifications. CIL shall have the right to
sell GROUP A1 PRODUCTS worldwide within the scope of this Agreement.
2. Changes to Exhibit A1. CIL may add to EXHIBIT A1 additional products
that fall within the definition of GROUP A1 PRODUCTS by giving ENZO notice to
that effect. In the event CIL gives notice to ENZO of an additional product to
be included as a GROUP A1 PRODUCT, and ENZO proves by its laboratory and other
documentary evidence, that it has been working on a project within the last six
(6) months to develop commercially the same PRODUCT and added to EXHIBIT A.
C. GROUP C PRODUCTS.
1. Manufacture and Sale. ENZO shall engage CIL to manufacture GROUP C
PRODUCTS. CIL shall have the right to sell GROUP C PRODUCTS worldwide within the
scope of this Agreement.
2. Changes to Exhibit C. CIL may add additional products to EXHIBIT C
by giving ENZO notice to that effect.
D. GROUP D PRODUCTS.
1. Manufacture and Sale. CIL shall have the right to manufacture, have
manufactured, and sell GROUP D PRODUCTS worldwide.
2. Changes to Exhibit D. The parties may mutually consent to include
additional products as GROUP D PRODUCTS, which consent shall not be unreasonably
withheld.
3. No Acknowledgement. The foregoing does not constitute an
acknowledgement by CIL that any agreement or license from ENZO is necessary in
order for CIL to sell or CIL's customers to use GROUP D PRODUCTS.
5
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E. GROUP K PRODUCTS.
1. Manufacture and Sale of KITS. ENZO shall engage CIL to manufacture
(except for RAW MATERIALS, which shall be manufactured by ENZO subject to the
terms of this Agreement) GROUP K PRODUCTS in accordance with ENZO's
specifications. CIL shall have the right to sell GROUP K PRODUCTS worldwide
within the scope of this Agreement.
2. Supply of RAW MATERIALS. ENZO shall supply to CIL and CIL shall
purchase exclusively from ENZO (after the MANUFACTURING TRANSITION PERIOD) such
quantities of the RAW MATERIALS as CIL may order in accordance with this
Agreement.
3. RAW MATERIAL Specifications. RAW MATERIALS shall conform to the
specifications agreed to by ENZO and by CIL.
4. Changes Exhibit K. CIL may add additional products to EXHIBIT K by
giving ENZO notice to that effect, provided that CIL may not add any additional
product for any period during which ENZO has a prior exclusive commitment to a
third party. ENZO shall use its best efforts to manufacture and sell RAW
MATERIALS for such additional GROUP K products to CIL. Until such time as ENZO
elects to scale up manufacture of such RAW MATERIAL, ENZO shall request that CIL
manufacture the RAW MATERIALS for such additional GROUP K PRODUCTS.
F. GROUP K1 PRODUCTS.
1. Manufacture and Sale of KITS. ENZO shall engage CIL to manufacture,
or have manufactured, GROUP K1 PRODUCTS worldwide within the scope of this
Agreement. CIL shall have the right to sell GROUP K1 PRODUCTS worldwide within
the scope of this Agreement.
2. Changes to Exhibit K1. CIL may add to EXHIBIT K1 additional
products that fall within the definition of GROUP K1 PRODUCTS by giving ENZO
notice to that effect.
G. GROUP E1 PRODUCTS.
1. Manufacture and Sale. ENZO shall manufacture, sell and deliver to
CIL, and CIL shall purchase exclusively from ENZO such quantities of the GROUP
E1 PRODUCTS as CIL may order in accordance with this Agreement. CIL shall have
the right to sell GROUP E1 PRODUCTS worldwide within the scope of this
Agreement.
2. Packaging. Each of the GROUP E1 PRODUCTS shall be packaged in
CIL-designated packaging and labeling; provided, however, that such packaging
shall acknowledge ENZO as provided in this Agreement and that such packaging
shall not be unduly burdensome to ENZO.
6
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3. Specifications. Each GROUP E1 PRODUCT shall conform to the
specifications for it agreed to by ENZO and by CIL.
4. Changes to EXHIBIT E1. CIL may request from time to time that ENZO
add to EXHIBIT E1. Upon acceptance, ENZO shall use its best efforts to
manufacture and sell such products to CIL. ENZO shall inform CIL, under the
terms of this Agreement, of any changes in its product offering that may be
added to EXHIBIT E1.
H. GROUP E2 PRODUCTS.
1. Manufacture and Sale of KITS. ENZO shall manufacture, sell and
deliver to CIL, and CIL shall purchase exclusively from ENZO such quantities of
the GROUP E2 PRODUCTS as CIL may order in accordance with this Agreement. CIL
shall have the right to sell GROUP E2 PRODUCTS worldwide within the scope of
this Agreement.
2. Packaging. Each of the GROUP E2 PRODUCTS shall be packaged in
CIL-designated packaging and labeling; provided, however, that such packaging
shall acknowledge ENZO as provided in this Agreement and that such packaging
shall not be unduly burdensome to ENZO.
3. Specifications. Each GROUP E2 PRODUCT shall conform to the product
specifications agreed upon by ENZO and CIL.
4. Changes to EXHIBIT E2. CIL may request from time to time that ENZO
add to EXHIBIT E2. Upon acceptance, ENZO shall use its best efforts to
manufacture and sell such products to CIL. ENZO shall inform CIL, under the
terms of this Agreement, of any changes in its product offering that may be
added to EXHIBIT E2.
III. Sale of GROUP A1, C, K and K1 PRODUCTS BY ENZO.
CIL appoints, and ENZO accepts appointment, subject to the conditions set
forth herein, as a non-exclusive distributor for the worldwide distribution and
sale of GROUP A1, C, K, and K1 PRODUCTS, subject to the following conditions:
A. SUPPLY ARRANGEMENT.
ENZO shall purchase its requirements for GROUP A1, C, K and K1
PRODUCTS from CIL. Such supply arrangement shall
7
<PAGE>
be on an exclusive basis worldwide. If, at any time after the first anniversary
of the issuance of a United States patent to CIL covering digoxigenen labeled
nucleotides, oligonucleotides or polynucleotides (a "dig patent"), and during
the term of this Agreement, such dig patent is or appears to be infringed by a
third party in connection with the sale of a product in competition with the
PRODUCTS described herein, the party having knowledge thereof shall notify the
other and the parties shall consult to consider what, if any, action should be
taken. The decision regarding institution of proceedings to abate the
infringement shall be at CIL's discretion, and in the event CIL elects to
initiate legal proceedings, ENZO shall give CIL all reasonable assistance in
such proceedings. In the event CIL shall elect not to institute infringement
proceedings, and if ENZO can show, by market research performed by a researcher
mutually acceptable to both parties, that infringing sales exceed 20% of the
market for a particular PRODUCT, the payment to CIL for such PRODUCT pursuant to
this Agreement shall be reduced by 25% until CIL commences legal action against
such infringer of settlement has been reached between such infringer and CIL.
The foregoing sentence does not constitute a validation, endorsement or belief
(express or implied) on the part of ENZO in the validity of any CIL patent
claims. PRODUCT specifications, etc. shall be identical in all respects to
PRODUCT distributed by CIL. Labeling of any such PRODUCTS shall not include any
reference to CIL except as may be required by law.
B. SALE TO END USERS.
ENZO shall sell PRODUCT exclusively to end users, and not for
distribution or resale.
C. PAYMENT TO CIL.
In consideration of the right to distribute GROUP A1, C, K AND K1
PRODUCTS, ENZO will pay CIL:
1. For all GROUP A1 PRODUCTS sold by ENZO to end users, ENZO will pay
CIL an amount equal to * of the ENZO SELLING PRICE of such GROUP A1 PRODUCTS.
Notwithstanding the foregoing, ENZO will pay CIL an amount equal to * of the
ENZO SELLING PRICE of any such GROUP A1 PRODUCTS sold in any country where a dig
patent has not issued
2. For all GROUP C PRODUCTS sold by ENZO to end users, ENZO will pay
CIL an amount equal to * of the ENZO SELLING PRICE of such GROUP C PRODUCTS.
Notwithstanding the foregoing, ENZO will pay CIL an amount equal to *% of the
ENZO SELLING PRICE of any such GROUP C PRODUCTS sold in any country where a dig
patent has not issued
3. For all GROUP K PRODUCTS sold by ENZO to end users, ENZO will pay
CIL an amount equal to * of the ENZO SELLING PRICE of such GROUP K PRODUCTS.
- ----------
* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
8
<PAGE>
4. For all GROUP K1 PRODUCTS sold by ENZO to end users, ENZO will pay
CIL an amount equal to * of the ENZO SELLING PRICE of such GROUP K1 PRODUCTS.
Notwithstanding the foregoing, ENZO will pay CIL an amount equal to *% of the
ENZO SELLING PRICE of any such GROUP K1 PRODUCTS sold in any country where a dig
patent has not issued.
D. Shipping Terms. All PRODUCTS ordered by ENZO for sale on its own
account shall be shipped by CIL pursuant to ENZO's written instructions. FOP
Penzberg, Germany.
E. Warranty. CIL warrants that the PRODUCTS sold to ENZO for sale on its
own account shall meet the specifications agreed upon by the parties. CIL's sole
obligation under this warranty is to promptly replace the PRODUCTS without cost
or expense therefor to ENZO. THIS WARRANTY IS EXPRESSLY IN LIEU OF ANY OTHER
WARRANTIES OR LIABILITIES, EXPRESS OR IMPLIED, INCLUDING THE WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
F. Miscellaneous Terms. The provisions of Section V, Paragraphs A through
D, shall be applied to ENZO's purchase of PRODUCTS from CIL in the same fashion
as such provisions apply to CIL's purchases from ENZO.
IV. Price to CIL
A. GROUP A PRODUCTS:
1. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Not Issued. For all GROUP A PRODUCTS manufactured by ENZO and sold
by CIL in any country where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have
Not Issued, ENZO's price to CIL shall be an amount equal to * of the SELLING
PRICE of such GROUP, A PRODUCTS.
2. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. For all GROUP A PRODUCTS manufactured by ENZO and sold by
CIL in any country where the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have
Issued, ENZO's supply price to CIL shall be an amount equal to * of the SELLING
PRICE of such GROUP A PRODUCTS.
3. GROUP A PRODUCTS Manufactured By CIL. For all GROUP A PRODUCTS
manufactured for ENZO by CIL during the MANUFACTURING TRANSITION PERIOD pursuant
to Section VII B, C, and D of this Agreement, ENZO's supply price to CIL for
such GROUP A PRODUCTS shall be an amount equal to (i) *% of the SELLING PRICE of
GROUP A PRODUCTS sold by CIL in any country where the ENZ 1 DIV 3 CLAIMS or ENZ
7 COMPOSITION CLAIMS have not issued, plus CIL's contract supply price for such
PRODUCTS to ENZO (ii) *% of the SELLING PRICE of GROUP A PRODUCTS which are
manufactured or sold by CIL in any country where the ENZ 1 DIV 3 CLAIMS or ENZ 7
COMPOSITION CLAIMS have issued, plus CIL's contract supply price for such
PRODUCTS to ENZO and (iii) *% of the SELLING PRICE of GROUP A PRODUCTS
worldwide, plus CIL's contract supply price for such PRODUCTS to ENZO, at such
time as the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS have issued in both
Europe and the United States.
*.
- ----------
* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
9
<PAGE>
B. GROUP A1 PRODUCTS:
1. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Not Issued. For all GROUP A1 PRODUCTS sold by CIL in any country
Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Not Issued in such
country, ENZO's supply price to CIL shall be an amount equal to * of the SELLING
PRICE of such GROUP A1 PRODUCTS, plus CIL's contract supply price for such
PRODUCT TO ENZO.
2. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. For all GROUP A1 PRODUCTS sold by CIL in any country ENZ 1
DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Issued, ENZO's supply price to CIL
shall be an amount equal to * of the SELLING PRICE of such GROUP A1 PRODUCTS,
plus CIL's contract supply price for such PRODUCTS TO ENZO.
3. Sale In Countries When ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. At such time as ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS are issued both in the United States and Europe, ENZO's supply price for
all GROUP A1 PRODUCTS sold by CIL shall be an amount equal to * of the SELLING
PRICE of such GROUP A1 PRODUCTS, worldwide.
C. GROUP C PRODUCTS:
1. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Not Issued. For all GROUP C PRODUCTS sold by CIL in any country
where the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Not Issued, ENZO's
supply price of such GROUP C PRODUCTS, shall be an amount equal to *% of the
SELLING PRICE of such GROUP C PRODUCTS, plus CIL'S contract supply price for
such PRODUCTS to ENZO, provided, however, that ENZO shall rebate to CIL as a
discount * paid pursuant to Section IV, C, 1 .
2. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. For all GROUP C PRODUCTS sold by CIL in any country where
the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Issued, ENZO's supply
price to CIL shall be an amount equal to * of the SELLING PRICE of such GROUP C
PRODUCTS, plus CIL's contract supply price for such PRODUCT TO ENZO.
3. Sale In Countries When ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. At such time as ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS are issued both in the United States and Europe, ENZO's supply price for
all GROUP C PRODUCTS sold by CIL shall be an amount equal to * of the SELLING
PRICE of such GROUP C PRODUCTS worldwide, plus CIL's contract supply price for
such PRODUCT TO ENZO.
- ----------
* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
10
<PAGE>
D. GROUP D PRODUCTS:
1. CIL shall not owe ENZO any amounts on sales of GROUP D PRODUCTS.
2. Nothing contained in this Section IV D, shall be construed as a
waiver of any rights that ENZO may have against any third party with regard to
its PATENTS. In the event ENZO enters into any agreement with any supplier of a
GROUP D PRODUCT, ENZO will rebate to CIL any monies or value received from that
supplier resulting from such sales of GROUP D PRODUCT to CIL.
E. GROUP K PRODUCTS:
1. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Not Issued. For all GROUP K PRODUCTS which are sold by CIL in any
country where the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Not
Issued, ENZO's supply price to CIL for such GROUP K PRODUCTS shall be an amount
equal to * of the SELLING PRICE of such GROUP K PRODUCTS, plus CIL's contract
supply prices for such products to ENZO.
2. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. For all GROUP K PRODUCTS, which are sold by CIL in any
country where the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Issued,
ENZO's supply price to CIL shall be an amount equal to * of the SELLING PRICE of
such GROUP K PRODUCTS, plus CIL's contract supply prices for such products to
ENZO
3. Sale In Countries When ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. At such time as ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS are issued both in the United States and Europe, ENZO's supply price for
all GROUP K PRODUCTS sold by CIL shall be an amount equal to * of the SELLING
PRICE of such GROUP K PRODUCTS worldwide, plus CIL's contract supply prices for
such products to ENZO.
F. GROUP K1 PRODUCTS:
1. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Not Issued. For all GROUP K1 PRODUCTS which are sold by CIL in any
country where the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Not
Issued, ENZO's supply price to CIL for such GROUP K1 PRODUCTS shall be an amount
equal to * of the SELLING PRICE of such GROUP K1 PRODUCTS, plus CIL's contract
supply prices for such products to ENZO.
- ----------
* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
11
<PAGE>
2. Sale In Countries Where ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. For all GROUP K1 PRODUCTS, which are sold by CIL in any
country where the ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION CLAIMS Have Issued,
ENZO's supply price to CIL shall be an amount equal to * of the SELLING PRICE of
such GROUP K1 PRODUCTS, plus CIL's contract supply price for such products to
ENZO.
3. Sale In Countries When ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS Have Issued. At such time as ENZ 1 DIV 3 CLAIMS or ENZ 7 COMPOSITION
CLAIMS are issued both in the United States and Europe, ENZO's supply price for
all GROUP K1 PRODUCTS sold by CIL shall be an amount equal to * of the SELLING
PRICE of such GROUP K1 PRODUCTS worldwide, plus CIL's contract supply price for
such products to ENZO.
G. GROUP E1 PRODUCTS.
1. For GROUP E1 PRODUCTS, ENZO's supply price to CIL shall be an
amount equal to * of the SELLING PRICE of such products.
H. GROUP E2 PRODUCTS.
For GROUP E2 PRODUCTS, ENZO's supply price to CIL shall be an amount equal
to * of the SELLING PRICE of such products.
I. Manufacturing, Use and Sale of Products Prior to This Agreement.
CIL shall pay to ENZO the amount of * (U.S. dollars) for manufacture, use
and sale, by CIL and CIL customers, of all PRODUCTS that have claims that would
be infringed by any PATENTS, wherein the manufacture, use or sale occurred prior
to this Agreement. This payment of * made by CIL to ENZO shall constitute full
payment for manufacture, use and sale of all PRODUCTS manufactured, used or sold
by CIL or CIL customers prior to this Agreement. This payment of * shall also
release CIL and customers of CIL of any liability for the manufacture, use, and
sale of any PRODUCTS manufactured, used or sold prior to this Agreement.
J. Method for Determining and Making Payment.
CIL shall pay ENZO according to the method set forth on Appendix B to
this Agreement. Appendix B describes the method for estimating Worldwide Average
Unit Prices based upon Worldwide Mannheim. CIL agrees to permit its books and
records to be examined by ENZO from time to time to the extent necessary, but
not more often than twice per year to verify receipts. Such examination is to
- ----------
* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
12
<PAGE>
be made by ENZO, at ENZO's expense, except in the event that the results of the
audit reveal a discrepancy in ENZO's favor of five (5%) or more, then the audit
fees shall be paid by CIL.
K. *.
V. Forecasts and Purchase Orders
A. Forecasts. During the mid-month of each calendar quarter after the
effective date of this Agreement, CIL shall provide to ENZO a non-binding
forecast covering its estimated requirements for GROUP A PRODUCTS, RAW
MATERIALS, GROUP E1 PRODUCTS, GROUP E2 PRODUCTS and other material manufactured
by ENZO under this Agreement for the succeeding two (2) calendar quarters. Such
forecast shall be made for planning purposes only and is not a purchase
commitment.
B. Purchase Orders. Purchase orders will be issued to ENZO by CIL at least
sixty (60) days in advance of the requested delivery of such products. Each
purchase order will indicate specific delivery and/or shipping requirements.
ENZO shall meet such requirements provided that the quantities of products
ordered are within 130% of the forecast for such quarter. If a purchase order is
for a quantity in excess of 130% of the forecast amount for such quarter, the
parties agree to negotiate in good faith to agree upon delivery and/or shipping
requirements that are reasonable under the circumstances.
C. Cancellation of Purchase Orders. Purchase orders may be cancelled by CIL
no later than fifteen (15) after issuance. If CIL desires to cancel an order
later than fifteen (15) after the issuance of such purchase order, the parties
agree to negotiate in good faith to determine a reasonable resolution of such
order. In the event CIL cancels a purchase order to ENZO under this paragraph,
CIL will reimburse ENZO for materials specifically purchased to fill such order,
as well as manufacturing costs directly attributable to such fulfillment,
incurred prior to the receipt of notice of cancellation.
D. Conflicting Purchase Order or Order Acceptance. Each purchase order
shall be governed by the relevant provisions of this agreement (unless otherwise
expressly provided in the individual purchase order and confirmed in writing by
ENZO), and no conflicting term or condition which may appear in the preprinted
matter in CIL's purchase order form or ENZO's confirmation or acceptance form
shall be binding on either party
- ----------
* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
13
<PAGE>
or apply to any transaction under this agreement unless agreed to by both
parties in writing.
E. Shipping Terms. All PRODUCTS, ordered by CIL shall be shipped by ENZO
pursuant to CIL's written instructions, FOB Farmingdale, New York 11735.
VI. Quality Control and Product Acceptance
A. GROUP E1 PRODUCTS and GROUP E2 PRODUCTS. ENZO shall provide CIL with
GROUP E1 PRODUCT and GROUP E2 PRODUCT specifications and package inserts within
thirty (30) days of the execution of this Agreement and promptly after the
introduction of any new GROUP E1 PRODUCT or GROUP E2 PRODUCT. Such
specifications and package inserts shall be subject to CIL's approval, which
shall not be unreasonably withheld.
B. All Other Products. Before manufacturing any PRODUCTS or RAW MATERIALS
other than GROUP E1 PRODUCTS or GROUP E2 PRODUCTS for CIL, ENZO shall provide to
CIL (under an appropriate confidentiality and non-use agreement, if ENZO so
requests) a detailed description of the manufacturing process ENZO will use in
such manufacture. CIL shall have the right to approve such manufacturing
process: CIL's approval shall not be unreasonably withheld. Once ENZO begins
manufacturing any GROUP A PRODUCT or RAW MATERIALS for CIL, ENZO shall provide
documentation to CIL showing that ENZO has manufactured the products in
accordance with the manufacturing process that has been approved by CIL. CIL
shall have the right to periodically audit ENZO's documentation and
manufacturing process to ensure such compliance. Within one (1) year of the time
CIL becomes ISO 9000 certified for PRODUCTS, ENZO shall become ISO 9000
certified for such PRODUCTS. CIL shall provide consultative assistance to ENZO
to facilitate such certification.
C. Quality Testing. CIL shall have the right to test PRODUCTS and RAW
MATERIALS for the conformance with the specifications upon receipt of such
PRODUCTS, and agrees to notify ENZO of acceptance or non-acceptance based on
such conformity with the specifications within thirty (30) days in the case of
RAW MATERIALS and ten (10) days in case of all other PRODUCTS. Acceptance shall
not be unreasonably withheld.
D. Disagreement on Quality. If the parties disagree as to whether a RAW
MATERIAL PRODUCT shipment meets specifications, the parties shall use their best
efforts to resolve such disagreement expeditiously. If the parties are unable to
resolve the disagreement, ENZO and CIL shall jointly evaluate the disputed
product at CIL's facility in Penzberg, Germany or such other site as CIL deems
appropriate. In such event, CIL shall pay the reasonable travel expenses of ENZO
personnel to Penzberg or such other site.
E. Storage and Stock Rotation.
1. ENZO and CIL agree to share all necessary storage and stock
rotation practices which apply to the PRODUCTS.
14
<PAGE>
2. CIL further agrees to take diligent care not to ship PRODUCTS which
have expired, been damaged in storage and handling, or improperly stored. CIL
will be responsible for damage or liability arising from its shipment of
expired, damaged or improperly stored PRODUCTS.
F. Product Complaint File. CIL agrees to allow ENZO, at ENZO's expense,
access to its Product Complaint File on a periodic basis, not to exceed once
every six months (under an appropriate confidentiality and non-use agreement, if
CIL so requests). If, in ENZO's opinion, an undue number of complaints exist
concerning the quality of an individual product, then ENZO and CIL shall meet
and discuss the means of ensuring improved quality.
VII. Manufacturing By CIL
A. Manufacturing Transition Period. At the time of the commencement of this
Agreement for GROUP A PRODUCTS or RAW MATERIALS, ENZO may request that CIL
manufacture such materials for a limited amount of time until ENZO can initiate
manufacturing activities. This manufacturing transition period cannot be a time
greater than 6 months.
B. Quality/Capacity Issues. If, after the MANUFACTURING TRANSITION PERIOD
with respect to any GROUP A PRODUCTS or RAW MATERIALS, ENZO becomes unable to
supply CIL's supply needs, either because of capacity or quality issues
(including, with limitation, a failure to comply with the terms of Section VI
B. CIL may manufacture the affected PRODUCT(S) or RAW MATERIALS for ENZO, and
purchase such products at the prices set forth in Section IV with respect to
such products, until ENZO certifies to CIL that it has corrected the capacity or
quality problem and will be able to meet CIL's requirements.
C. FORCE MAJEURE. If ENZO becomes unable to supply CIL's product needs as a
result of FORCE MAJEURE, CIL may manufacture the affected PRODUCTS for ENZO, and
the purchase of such products at the prices set forth in Section IV with respect
to such products, until ENZO is able to resume supplying CIL.
VIII. Sales Promotions and Technical Service
CIL shall exert on its own account, its best efforts in sales promotions
and advertisement of PRODUCTS such as direct mailings, catalog listings and
promotions, except in the case where CIL determines that it no longer wishes to
sell PRODUCTS. ENZO agrees to provide CIL with such technical support for the
PRODUCTS and RAW MATERIALS as CIL may reasonably request. ENZO will provide CIL
with one copy of any literature, technical data, specifications and the like
describing the PRODUCTS and RAW MATERIALS
15
<PAGE>
as they are currently produced for the assistance of CIL in the preparation of
advertising material and catalogs for existing and new products. CIL will list
GROUP E1 PRODUCTS and GROUP E2 PRODUCTS in its next available or published
product catalog(s) or in a supplemental catalog in which these PRODUCTS can be
listed after the effective date of this agreement. CIL will modify the listings
of PRODUCTS in its product catalog(s) as soon as reasonably possible to conform
with the list of such PRODUCTS. CIL will modify the listings of GROUP E1
PRODUCTS and GROUP E2 PRODUCTS in its product catalog(s), or a supplemental
catalog, at CIL's discretion, as soon as reasonably possible after any
corresponding modification of the PRODUCTS in the EXHIBITS of this Agreement.
IX. Product Labels
Labels on the outside of PRODUCTS (excluding GROUP D PRODUCTS) including
vials and boxes and package inserts shall contain the following wording:
"Sold through an arrangement with Enzo Diagnostics, Inc."
X. Warranty
A. GROUP E1 PRODUCTS and GROUP E2 PRODUCTS. ENZO warrants that the GROUP E1
PRODUCTS and GROUP E2 PRODUCTS sold by ENZO to CIL shall met the specifications
agreed to by CIL and described in ENZO's PRODUCT or package inserts. ENZO's sole
obligation under this warranty is to promptly replace the GROUP E1 PRODUCTS and
GROUP E2 PRODUCTS without cost or expense therefor to CIL. THIS WARRANTY IS
EXPRESSLY IN LIEU OF ANY OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING THE
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
B. ALL OTHER PRODUCTS and RAW MATERIALS. ENZO warrants that the PRODUCTS
and RAW MATERIALS sold by ENZO to CIL shall meet the specifications agreed to by
CIL. ENZO's sole obligation under this warranty is to promptly replace the
PRODUCTS and RAW MATERIALS without cost or expense therefor to CIL. THIS
WARRANTY IS EXPRESSLY IN LIEU OF ANY OTHER WARRANTIES OR LIABILITIES, EXPRESS OR
IMPLIED, INCLUDING THE WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE.
1. PRODUCT REPLACEMENT. Notwithstanding the foregoing warranties, ENZO
agrees to replace, at no cost to CIL,
16
<PAGE>
any PRODUCTS and RAW MATERIALS manufactured by ENZO upon the request of any CIL
customer so long as it remains CIL's policy to do the same with respect to its
own products. Notwithstanding the foregoing, ENZO shall not be required to
replace PRODUCTS and RAW MATERIALS replaced as a result of shipping or handling
errors by CIL.
XI. Relationship Between ENZO and CIL
Nothing herein creates or constitutes a partnership or an agreement of
agency between the parties with respect to any activities whatsoever. The
relationship between ENZO and CIL shall be that of seller and buyer, and neither
party shall conclude any contract or agreement or make any commitment,
representation or warranty which binds the other party or otherwise act in the
name of or on behalf of the other party. Furthermore, this agreement is not a
license or an implied license of ENZO's PATENTS. ENZO maintains full rights
under its PATENTS. The foregoing statements are paramount to this Agreement.
XII. FORCE MAJEURE
Subject to Section VII D, each of the parties shall be excused from the
performance of its obligations under this Agreement in the event performance is
prevented by FORCE MAJEURE. The party incurring a FORCE MAJEURE condition shall
notify the other that such condition exists within five (5) days of the time
such party learns of such condition. Should such FORCE MAJEURE condition
continue for forty-five (45) days after such notice, the non-affected party may,
at its option, terminate this Agreement. At such termination all designations
that are the subject of this Agreement are revoked with the exception of the
Confidentiality and Non Use Agreement.
If ENZO's capacity to manufacture and deliver PRODUCTS and RAW MATERIALS
under this agreement is diminished by circumstances beyond its control, then
ENZO shall employ its existing capacity to supply CIL in accordance with this
agreement in a manner fair and equitable to all its customers.
XIII. Confidentiality and Non-Disclosure
ENZO and CIL agree that any confidential information relating to ENZO's
PATENTS and/or ENZO's or CIL's proprietary technical information and/or ENZO's
or CIL's business development in the area of the PRODUCTS will not be disclosed
while this Agreement is in effect to third parties except with the prior written
consent of the non requesting party or if the confidential information can be
shown by documentary evidence that it was:
17
<PAGE>
(i) in the possession of the receiving party prior to disclosure thereof
by the other party;
(ii) is or through no fault of the receiving party becomes part of the
public knowledge or literature;
(iii) lawfully becomes available without limitation by its disclosure from
an outside source; or
(iv) the receiving party can prove it was developed independently.
XIV. Term and Termination
A. Term. This Agreement shall become effective as of the date first above
written and shall continue until the expiration of the last PATENT to expire.
B. Termination for Breach. In the event either party breaches a material
provision of this Agreement, the non- breaching party may, after giving the
breaching party written notice of such breach and ninety (90) days in which to
cure such breach, terminate this Agreement upon written notice to the non-
breaching party. Either party may terminate this Agreement forthwith by giving
written notice to the other party in the event the other party shall:
(i) Become insolvent, admit its inability to pay its debts as they mature,
or has a petition in bankruptcy filed by or against it or a receiver
appointed for all or substantially all of its business or assets; or
(ii) Make a general assignment of all or substantially all of its business
or assets for the benefit of its creditors; or
(iii) Cease to carry on its business in the ordinary course.
C. Termination. If CIL ceases to offer, or has not sold GROUP A, A1, C, K
and K1 PRODUCTS, for a period of six (6) months, CIL shall have the right to
terminate this Agreement upon thirty (30) days' written notice to ENZO. Upon
termination of this Agreement, the distribution relationship between ENZO and
CIL shall no longer exist.
D. Assignment. This Agreement may not be assigned or otherwise transferred
by either party (except to an affiliate of such party) without the written
consent of the non-assigning party. Any attempted assignment or transfer without
such consent shall be void.
- ----------
* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
18
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XV. Use of Products
Unless otherwise specified in writing and agreed to by both parties, all
PRODUCTS are for research use only and are not intended for or to be used for
diagnostic or therapeutic use.
XVI. Indemnification and Insurance
A. Indemnification.
ENZO agrees to and shall defend, indemnify and hold CIL, its employees,
agents and officers harmless, including attorneys' fees, from and against any
suit or proceeding alleging death or injury to persons or property and any
liability, damages or penalties awarded therein and resulting from or arising
from ENZO's negligence in the manufacture, storage or transport of PRODUCTS and
RAW MATERIALS prior to their receipt by CIL. CIL agrees to and shall defend,
indemnify and hold ENZO, its employees, agents and officers harmless, including
attorneys fees, from and against any suit or proceeding alleging death or injury
to persons or property and any liability, damages or penalties awarded therein
and resulting from or arising from CIL's negligence in handling, storage or
transport of PRODUCTS and RAW MATERIALS after receipt thereof from ENZO.
B. Insurance Each party shall at all times during the term of this
Agreement purchase and maintain comprehensive general liability insurance
including products liability, contractual liability and broad form property
damage with combined single limits for bodily injury and/or death and property
damage of $5,000,000 for any one occurrence. Such insurance shall also require
thirty (30) days' prior written notice of cancellation or material change in
coverage.
XVII. Third Party Patents.
ENZO agrees to and shall defend, indemnify and hold CIL and its customers
harmless, including attorneys fees, from and against any suit, proceeding, claim
or loss and any damages or penalties awarded therein so far as such suit or
proceeding is based upon an assertion that the use or sale of PRODUCTS and RAW
MATERIALS are, in such suit or proceeding, held to infringe and their further
use or sale is enjoined. ENZO shall, at its sole cost and expense, either (i)
procure for CIL and its customers the right to continue using and selling such
PRODUCTS and RAW MATERIALS, (ii) replace such PRODUCTS and RAW MATERIALS with
non-infringing equivalents, (iii) modify such PRODUCTS and RAW MATERIALS so
that they become non-infringing, or (iv) discontinue the use or sale of such
PRODUCTS and RAW MATERIALS if no alternative recourse is possible.
19
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XVIII. Patent Infringement.
Infringement Proceedings. If, at any time after the first anniversary of
the issuance of * and during the term of this Agreement, one or more of the
PATENTS is or appears to be infringed by a third party in connection with the
sale of a product in competition with the PRODUCTS described herein, the party
having knowledge thereof shall notify the other and the parties shall consult to
consider what, if any, action should be taken. The decision regarding
institution of proceedings to abate the infringement shall be at ENZO's
discretion, and in the event ENZO elects to initiate legal proceedings, CIL
shall give ENZO all reasonable assistance in such proceedings. In the event ENZO
shall elect not to institute infringement proceedings, and if CIL can show, by
market research performed by a researcher mutually acceptable to both parties,
that infringing sales exceed 20% of the market for a particular PRODUCT, the
payment to ENZO for such PRODUCT pursuant to this Agreement shall be reduced by
25% until ENZO commences legal action against such infringer or settlement has
been reached between such infringer and ENZO.
XIX. Invoicing and Payment. Invoices by each party to the other for work
performed and product supplied hereunder shall be issued at the end of each
calendar quarter. The net amount due shall be paid within thirty (30) days of
the end of each quarter.
XX. Miscellaneous
A. Waiver.
A waiver of any provision of this Agreement must be in writing. Waiver by
ENZO or CIL of any provision of this agreement shall not be deemed a waiver of
future compliance therewith and such provision as well as all other provisions
hereunder shall remain in full force and effect.
B. Governing Law. This Agreement is made under and shall be governed by the
laws of the State of New York.
C. Severability. In the event that any clause of this Agreement shall be
found to be void or unenforceable, such finding shall not be construed to render
any other clause of this Agreement either void or unenforceable, and all other
clauses shall remain in full force and effect.
D. Headings. All headings of the sections and paragraphs of this Agreement
are inserted for convenience only and shall not affect any construction or
interpretation of this Agreement.
- ----------
* The information omitted is confidential and has been filed separately with
the Commission pursuant to Rule 24b-2.
20
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E. Notices. All notices to be given with respect to this Agreement shall be
in writing and shall be deemed effectively given:
(a) when delivered personally;
(b) seven calendar days after being deposited in the mail, registered or
certified mail, return receipt requested
addressed as set forth below, or to such other address that either party
designates by written notice to the other party:
ENZO: Enzo Diagnostics, Inc.
60 Executive Boulevard
Farmingdale, NY 11735
Attention: Mr. Shahram K. Rabbani
Executive Vice President
and Chief Operating Officer
Fax No.: 1 (516) 755-5509
Phone No.: 1 (516) 755-5500
CIL: Boehringer Mannheim Corporation
9115 Hague Road
Indianapolis, IN 46220
Attn.: General Manager-Biochemicals
North America
Fax No.: 1 (317) 576-7317
Phone No.: 1 (317) 845-2000
F. Entirety. This Agreement together with the Appendix and Exhibits
attached hereto embodies the entire understanding between CIL and ENZO, and
there are no contracts or prior drafts of the agreement, understandings,
conditions, warranties or representations, oral or written, express or implied,
with reference to the subject matter hereof which are not merged herein. No
modification hereto shall be of any force or effect unless (1) reduced to
writing and signed by both parties hereto, and (2) expressly referred to as
being modifications of this agreement.
G. Mutuality. This Agreement has been drafted after considerable
negotiation by the parties and on the basis of mutual understanding; neither
party shall be prejudiced as being the drafter thereof.
H. Public Announcements. Any press release or other public announcement
relating to this Agreement shall be approved by both parties prior to its
release.
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IN WITNESS WHEREOF, the parties have cause this Agreement to be executed by
their duly authorized representatives.
ENZO BIOCHEM, INC. CORANGE INTERNATIONAL LIMITED
By: /s/ Dean Lee Engelhardt By: /s/ William Petrovic
----------------------------- ----------------------------------
Dean Lee Engelhardt, Ph.D William Petrovic
Senior Vice President Treasurer
April 25, 1994 April 25, 1994
----------------------------- ----------------------------------
DATE DATE
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PRODUCT CLASSIFICATION
EXHIBIT A
Seq # BM Group Name
396 A Biotin-16dUTP, sale
669 A DNA mol wt mk VI, padigxgn
1671 A DNA MWM II BIOTIN LABELED
1673 A DNA MWM III BIOTIN LABELED
1675 A DNA MWM VI BIOTIN LABELED
1717 A RNA Marker III-DIG label
1721 A Fluorescein-12-eeUTP
1778 A Biotin 16-ddUTP
1779 A Fluorescein-12-ddUTP
1780 A Fluorescein-12-UTP
1782 A Hydroxy-cuomarin-6-dUTP
1784 A Biotin-11-UTP
1809 A Dig DNA MWM VIII
1903 A DNA Mol Wt XI, dig-labeled
1904 A DNA Mol Wt XII, dig label
1975 A Rhod-6-dUTP
5002 A RNA MWM I DIGOXIGENIN LABEL **
5003 A RNA MWM I DIG-LABEL **
5004 A Dig-16-dATP
EXHIBIT A1
589 A1 DIGOXIGENIN 11-DUTP **(HAZ)
590 A1 Digoxigenin-11-UTP
1662 A1 DIG RNA LABELING _____________
1663 A1 DIG-11-ddUTP
1974 A1 AMCA-8-dUTP
5005 A1 Dig-11-dUTP
5012 A1 Dig-11-dUTP, alk label
5013 A1 Dig-11-dUTP, alk label
EXHIBIT C
115 C Anti-digoxigenin-(Fab)-AP
114 C Anti-digoxigenin-(Fab)-POD
113 C Anti-digoxigenin-(Fab)-flu
116 C Anti-digoxigenin-(Fab)- ___
1652 C ANTI-DIG (MONO)
1765 C Anti-Fluor-AP, Fab
1
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EXHIBIT D
BM Group
Seq # Name
112 D Anti-digoxigenin (Fab)
410 D Blocking Reagent, hybrid
672 D DNA polymerase I
673 D DNA pol I, enconuc-free
674 D DNA pol I, klenow frag
1131 D Nick translation Kit
1178 D Nylon membranes, positive
1356 D Primer, Random pd(N)G
1397 D Random Primed Labeling Kit
1521 D RNA polymerase, E. coli
1522 D SPG RNA polymerase
1523 D RNA polymerase, 13
1524 D RNA polymerase, 17
1548 D Streptavicin-AP, NA det
1574 D Terminal transferase
1592 D Transcription Kit, SP6/T7
1653 D _________________________________________
1672 D DNA MWM II DIG LABELED **
1674 D DNA MWM III DIG LABELED **
1883 D HEXANUCLEOTIDE MIXTURE IOX
1886 D Lumi-Phos 530
1766 D Anti-FluorPOD,Fab
1785 D Lumigen PPD
1799 D [Fluorescein]-unconj(Mab)
1915 D anti-dig gold conj.
1978 D [dig]-AMCA, Feb Frag
5019 D SPG primer, dig
5020 D T3 primer, dig
5021 D T7 primer, dig
5022 D lambda ___________ rev.primer, dig
5023 D lambda ___________ primer, dig
5024 D DIG Wash and Block buffer set
EXHIBIT K
658 K DNA 3-End Labeling Kit
660 K Genius 2 DNA Labeling Kit
661 K Genius 1 DNA Label/Det Kit
1168 K Genius 3 NA Det. Kit
1661 K DIG DNA LABELING MIXTURE
16__ K GENIUS 5 OLIGO LABEL KIT
1755 K Genius 6 Oligo ___________ Kit
1768 K Genius 7 Lumin. Det. Kit
2
<PAGE>
Seq # BM Group Name
1803 K DIG DNA Sequencing Kit
1890 K Genius 4 RNA Labeling Kit
1976 K Genius 5 End Labeling Set
5000 K MULTI-COLOR DNA DETECTION SET
5001 K ET-Assay Kit
K ____________________________________________
5028 K Biotin High Prime
5027 K Fluor High Prime
EXHIBIT K1
1951 K1 Actin RNA probe-DIG labeled
5006 K1 HUMAN CHROMOSOME,ALL,PROB,DIG **
5007 K1 Human Chr. Y, dig
5008 K1 Human Chr Y, flu
5009 K1 Human chr. 1, dig
5010 K1 Human chr. 1, flu
5011 K1 Human chr. ______, flu
5014 K1 PCR DIG labelling mix
5015 K1 DIG labeled control DNA
5016 K1 DIG labeled control RNA
5017 K1 DIG labeled control oligo
5018 K1 S. cerevisiae chr. probe, dig
3
<PAGE>
EXHIBIT E-1
CATEGORY E1
Enzo
Category Cat. No. Product
- -------- -------- -------
E1 42803 Nick Translation System (containing Bio-11-dUTP
E1 42804 Nick Translation System (to be used with nucleotide of choice)
E1 42809 Terminal Labeling Kit
E1 42810 Random Priming Kit
E1 42813 BioBridge(R) Labeling System
E1 42807 RNA Labeling System - T3/T7
E1 42808 RNA Labeling System - SP6
E1 43818 DETEK(R)I-f (double antibody fluorescence)
E1 43820 DETEK(R)-hrp Kit
E1 43822 DETEK(R)-alk Kit
E1 43823 DETEK(R)-Enhancer Kit (double antibody alk phos)
E1 43825 Peroxidase Substrate Kit (AEC)
E1 43826 Peroxidase Substrate Kit (DAB)
E1 43827 Alkaline Phosphate Substrate Kit (NBT/BCIP)
E1 43900 ImmunoDETEK(R) Kit (Peroxidase)
E1 43910 ImmunoDETEK(R) Kit (Alkaline Phosphatase)
<PAGE>
EXHIBIT E-2
CATEGORY E1
Enzo
Category Cat. No. Product
- -------- -------- -------
E2 42814 BioBridge(R) Labeling Molucule
E2 42806 Bio-11-dUTP (0.3mM)
E2 42806-50 Bio-11-dUTP (1.0mM)
E2 42811 Bio-16-dUTP (0.3mM)
E2 42811-50 Bio-16-dUTP (1.0mM)
E2 42816 Bio-11-dCTP (0.3mM)
E2 42816-50 Bio-11-dCTP (1.0mM)
E2 42819 Bio-7-dATP (0.3mM)
E2 42819-50 Bio-7-dATP (1.0mM)
E2 42812 Bio-AP3-dCTP (0.3mM)
E2 42815 Bio-11-UTP (20mM)
E2 42801 Bio-11-CTP (20mM)
E2 42817 Allylamine UTP (20mM)
E2 43861 IgG fraction rabbit anti biotin
E2 43805 DETEK(R)-fav (fluoresceinated avidin)
E2 43406 ENZOTIN(R) Biotinylating Reagent
2
<PAGE>
ENZO DIAGNOSTICS, INC.-BOEHRINGER MANNHEIM GMBH
DISTRIBUTORSHIP AGREEMENT
EXHIBIT A - AMENDMENT A DATED
AUGUST 19, 1994
ENZO BIOCHEM, INC.
UNITED STATES ISSUED PATENTS
================================================================================
Grant of
Patent
Patent Number Title/Inventor Published
- --------------------------------------------------------------------------------
4,687,732 Visualization Polymers and Their Aug. 18. 1987
Application to Diagnostic Medicine
David C. Ward et al.
- --------------------------------------------------------------------------------
4,707,352 Method of Radioactively Labeling Nov. 17. 1987
Diagnostic and Therapeutic Agents
Containing a Chelating Group
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
4,707,440 Nucleic Acid Hybridization Assay and Nov. 17, 1987
Detectable Molecules Useful in Such
Assay
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
4,711,955 Modified Nucleotides and Methods of Dec. 8. 1987
Preparing and Using Same
David C. Ward et al.
- --------------------------------------------------------------------------------
4,746,604 Specific Binding Assays Utilizing A May 24, 1988
Viable Cell as a Label
Solomon Mowshowitz
- --------------------------------------------------------------------------------
4,755,458 Composition and Method for the Jul. 5, 1988
Detection of the Presence of a Polynucleotide Sequence of
Interest Elazar Rabbani et al.
- --------------------------------------------------------------------------------
5,328,824 Methods of Using Labeled Jul. 12, 1994
Nucleotides
David C. Ward
- --------------------------------------------------------------------------------
5,241,060 Base Moiety-Labeled Detectable Aug. 31, 1993
Nucleotide
Dean Englehardt et al.
- --------------------------------------------------------------------------------
5,260,433 Saccharide Specific Binding System Nov. 9, 1993
Labeled Nucleotides
Dean Englehardt et al.
- --------------------------------------------------------------------------------
1
<PAGE>
================================================================================
Grant of
Patent
Patent Number Title/Inventor Published
- --------------------------------------------------------------------------------
4,767,609 Therapeutic and Diagnostic Processes Aug. 30, 1988
Using Isotope Transfer to Chelator-
Target Recognition Molecule Conjugate
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
4,772,548 Radiosotopicassay Using Isotope Sept. 20, 1988
Transfer to Chelator-Target
Recognition Molecule Conjugate
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
4,843,122 Detectable Molecules, Method of June 27, 1989
Preparation and Use
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
4,849,208 Detectable Molecules, Method of Jul. 18, 1989
Preparation and Use
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
4,849,505 Detectable Molecules, Method of Jul. 18, 1989
Preparation and Use
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
4,868,103 Analyte Detection by Means of Energy Sep. 19, 1989
Transfer
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
4,889,798 Hetarologous System for the Detection Dec. 26, 1989
of Chemically Labeled DNA and other
Biological Materials Providing a
Receptor or Target Moiety Therson
Elazar Rabbani
- --------------------------------------------------------------------------------
4,894,325 Hybridization Method for the Detection Jan. 16, 1990
of Genetic material
Dean Englehardt et al.
- --------------------------------------------------------------------------------
4,900,669 Necleotide Sequence Composition and Feb. 13, 1990
Method for Detection for Neissera
Gonorrhoeae and Method for Screening
for a Nucleotide Sequence that is
Specific for a Genetically Distinct
Group
Andrew Lo et al.
- --------------------------------------------------------------------------------
4,943,523 Detectable Molecules, Method of Jul. 24, 1980
Preparation and Use
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
2
<PAGE>
================================================================================
Grant of
Patent
Patent Number Title/Inventor Published
- --------------------------------------------------------------------------------
4,952,665 Detectable Molecules, Method of Aug. 28, 1990
Preparation and Use
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
4,987,065 In Vivo Labelling of Polynucleotide
Sequences
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
4,994,373 Method and Structures Employing Feb. 19, 1991
Chemically-Labelled Polynucleotide
Probes
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
5,002,885 Detectable Molecules, Method of Mar. 26, 1991
Preparation and Use
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
5,013,831 Detectable Molecules, Method of May 7, 1991
Preparation and Use
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
5,024,933 Method and Kit for Sample Adherence to June 18, 1991
Test Substrate
Huey-Lang Yang et al.
- --------------------------------------------------------------------------------
5,061,076 Time-Resolved Fluorometer Oct. 29, 1991
Ian Hurley
- --------------------------------------------------------------------------------
5,082,830 End Labeled Nucleotide Probe Jan. 21, 1992
Christine L. Brakel et al.
- --------------------------------------------------------------------------------
5,175,269 Compound and Detectable Molecules Dec. 29, 1992
Having An Oligo-or Polynucleotide with
Modifiable Reactive Group
Jannis G. Stavrianopoulos
- --------------------------------------------------------------------------------
5,288,609 Capture Sandwich Hybridization Method Feb. 22, 1994
and Composition
Dean Engelhardt et al.
- --------------------------------------------------------------------------------
5,328,824 Methods of using Labeled Neucleotides Jul. 12, 1994
================================================================================
3
<PAGE>
APPENDIX B
WORLD-WIDE LOCAL NET SALES FOR DIG PRODUCTS ARE CALCULATED FOR 1994 BY APPLYING
A FACTOR OF 1.85 ON EX MANNHEIM NET SALES.
THE FACTOR OF 1.85 REFLECTS THE RATIO BETWEEN LOCAL WORLD-WIDE NET SALES AND EX
MANNHEIM SALES.
IT SHALL BE REVISED AND AGREED UPON MUTUALLY ON A YEARLY BASIS ACCORDING TO THE
ACTUAL SITUATION OF THE CURRENT YEAR AND BE APPLIED FOR THE FOLLOWING YEAR.
AVERAGE LOCAL UNIT PRICE SHALL BE CALCULATED BY APPLYING THE NUMBER OF UNITS
SOLD EX MANNHEIM.
- 1 -
<PAGE>
EXHIBIT 10(cc)
AGREEMENT FOR LICENSE BETWEEN
YALE UNIVERSITY AND ENZO BIOCHEM, INC.
THIS AGREEMENT entered into as of the fourth, (4th) day of December, 1981,
by and between Yale University (hereinafter called Yale) a corporation organized
and existing under and by virtue of a charter granted by the General Assembly of
the Colony and State of Connecticut and located in New Haven, Connecticut 06510,
and Enzo Biochem, Inc. (hereinafter called Enzo), a corporation of the State of
New York having its principal office at 325 Hudson Street, New York, New York
10013;
WITNESSETH THAT:
IN CONSIDERATION OF the mutual promises herein contained THE PARTIES HAVE
AGREED AND DO AGREE AS FOLLOWS:
I. LICENSE GRANT
A. Yale hereby grants to Enzo, upon and subject to all the terms and
conditions of this agreement, an EXCLUSIVE LICENSE of limited term as defined by
Article II B, to make, use and sell the invention covered by the LICENSED
PATENTS as defined by Article III, in the countries where the LICENSED PATENTS
are effective or applications are pending.
B. Yale grants to Enzo a NONEXCLUSIVE LICENSE for a residual term as
defined by Article II C to make, use and sell the invention covered by the
LICENSED PATENTS as defined by Article III in the countries where the LICENSED
PATENTS are effective or applications are pending.
<PAGE>
C. Yale further grants to Enzo the right to sublicense third parties under
terms and conditions no greater than those acquired by Enzo and provided that
the terms and provisions of the following clauses of this agreement are met
where applicable.
D. All rights granted by Yale to Enzo under this agreement are subject to
any rights required to be granted to the Government and any rights reserved or
determined by the Government thereunder.
II. TERMS OF AGREEMENT
A. The terms, conditions and obligations of this agreement become effective
as of the date of signing.
B. The term of the EXCLUSIVE LICENSE granted under this agreement shall be
for ten (10) years commencing with the effective date pursuant to Article XXIII
of this agreement or for a shorter period as may be determined or approved by
the Federal Government or any agency thereof.
C. The term of the NONEXCLUSIVE LICENSE granted under this agreement shall
be for the remaining years of the life of each patent, domestic or foreign, of
the LICENSED PATENTS exceeding the EXCLUSIVE LICENSE term.
III. LICENSED PATENTS
As used in the agreement, the phrase "LICENSED PATENTS" shall mean and
include:
A. United States Patent Application Serial No. 255,223, entitled "Modified
Nucleotides and Methods of
2
<PAGE>
Preparing and Using Same," filed April 17, 1981, by David C. Ward, Pennina R.
Langer and Alexander A. Waldrop III (hereinafter called the Ward application);
B. Any divisional, continuation or substitute United States patent
application which shall be based on the Ward application;
C. Any patents which shall issue on any of the above- described patent
applications, and any reissues and extensions thereof;
D. And, foreign patents or patent applications corresponding to each of the
above-described patent applications.
IV. PATENT PROSECUTION
A. If not already accomplished at the time of execution of this agreement,
the patent applications included within the LICENSED PATENTS shall be prepared,
filed and prosecuted to issuance, grant or final disposition by Enzo at its own
cost and expense.
B. Enzo shall prepare and file foreign patent applications corresponding to
the LICENSED PATENTS within the Paris Convention time period in those countries
where valid patent protection is obtainable, including at least the Common
Market European Countries, Japan and Canada, and in other foreign countries
mutually agreeable to Yale and Enzo. Enzo shall prosecute these applications,
and any renewals or extensions thereof at its own cost and expense.
3
<PAGE>
C. Any taxes, annuities, working fees, maintenance fees, renewal and
extension charges with respect to each patent application and patent subject to
this agreement shall be punctually paid by Enzo. A mutually acceptable patent
counsel for these purposes shall be engaged by Enzo.
V. ROYALTIES
A. During the EXCLUSIVE LICENSE term as defined by Article II B, Enzo shall
pay to Yale a royalty of:
1. * percent of all domestic or foreign sales covered by the LICENSED
PATENTS in each country in which the invention is manufactured, sold or used
and,
2. * percent of the unit price of diagnostic kits applied to the
diagnosis of human or animal disorders and in which the invention of the
LICENSED PATENTS is a component part.
3. * percent of the unit price of research kits (e.g., nick
translation, cDNA kits) in which the invention of the LICENSED PATENTS is a
component part.
B. After the expiration of the EXCLUSIVE LICENSE term and during the
NONEXCLUSIVE LICENSE term as defined by Article II, Enzo shall pay a royalty of:
1. * percent of all domestic and foreign sales covered by the LICENSED
PATENTS which includes the unit price of diagnostic kits applied to the
diagnosis of human
- ----------
* The information omitted is confidential and has been filed separately with the
Commission pursuant to Rule 24b-2.
4
<PAGE>
or animal disorders and in which the invention of the LICENSED PATENTS is a
component part, in each country in which the invention is manufactured, sold or
used.
2. * percent of the unit price of research kits (e.g., nick
translation, cDNA kits) in which the invention of the LICENSED PATENTS is a
component part.
C. As used in this agreement, "sales" shall mean Enzo's billings for
products, processes, kits, etc. covered by the LICENSED PATENTS, less the sum of
the following:
1. Sales and/or use taxes directly imposed upon and with particular
reference to particular sales of apparatus;
2. Outbound freight separately charged or prepaid;
3. Special packing or crating separately charged;
4. Refunds paid for sales previously credited.
D. In countries where no patent application is filed and Enzo licenses
others to practice the invention of the LICENSED PATENTS, Enzo shall pay to Yale
a royalty of *
- ----------
* The information omitted is confidential and has been filed separately with the
Commission pursuant to Rule 24b-2.
5
<PAGE>
VI. PAYMENTS AND REPORTS
A. On or before the last business day of January, April, July and October
of each year of this agreement, Enzo shall submit to Yale a written report
stating:
1. The billings by Enzo issued during the preceding calendar quarter
for sales covered by the LICENSED PATENTS;
2. Any deductions therefrom under Article V B 1-4;
3. a) A calculation of the minimum payment due as defined by Article
VII; b) a calculation of the amount of royalty due; and a payment to
Yale each quarter of an amount equal to the greater of the aforesaid
calculations a) or b).
B. Enzo shall maintain at its principal office usual books of account and
records showing its actions under this agreement. Such books and records shall
be open to inspection and copying, during usual business hours, by an
independent certified public accountant to whom Enzo has no reasonable
objection, for two (2) years after the calendar quarter to which they pertain,
for the purposes of verifying the accuracy of the royalties paid by Enzo under
this agreement.
VII. MINIMUM PAYMENTS
A. Enzo agrees to pay to Yale the following annual minimum payments for the
licenses herein granted under the LICENSED PATENTS. The term of the minimum
payments schedule
6
<PAGE>
commences with the Effective Date of this Agreement of Article XXIII January 1,
1982 and payments shall be made quarterly whether or not any annual sales of the
invention covered by the LICENSED PATENTS have been made:
First year $ 5,000.00 Sixth year $100,000.00
Second year $10,000.00 Seventh year $200,000.00
Third year $15,000.00 Eighth year $300,000.00
Fourth year $20,000.00 Ninth year $400,000.00
Fifth year $25,000.00 Tenth year $500,000.00
B. Each quarter one-fourth of the annual minimum payment shall become due
and payable in accordance with the provision of Article VI. Royalty payments due
and payable during each quarter shall be credited against any minimum payment
due for the particular quarter.
C. Enzo may terminate the EXCLUSIVE LICENSE granted under this Agreement at
the end of the sixth year without incurring future liabilities under the minimum
payment provisions of this Agreement. Termination under this paragraph must be
made in writing by Enzo to Yale during the ninety (90) days immediately
proceeding the conclusion of the sixth anniversary year of this Agreement. If
this Agreement is terminated by Enzo under this paragraph, all royalties accrued
under this agreement shall immediately become due. Yale may immediately seek
another licensee to succeed Enzo.
D. In the event that Enzo fails to pay fully and promptly any of the
minimum payments or the royalties due under this agreement, Enzo shall be in
material breach of the agreement. If after notice thereof to Enzo by Yale, Enzo
fails to cure its failure to pay within thirty (30) days of notice, Yale may by
ten (10) days notice to Enzo terminate this agreement. Upon such termination for
failure to pay, the full
7
<PAGE>
amount of minimum payments shall immediately become due and payable. Upon
payment by Enzo of the unpaid minimum payments, Yale will grant to Enzo a
nonexclusive license to the LICENSED PATENTS without the right to sublicense
others. Payment of royalties under such nonexclusive license shall be off-set by
the amount paid under the termination minimum payment provision.
VIII. TERM OF PAYMENTS
A. Royalties due under Article VI and minimum payments due under Article
VII shall be payable as long as the Ward application or any division,
continuation, reissue or extension which is the subject of the LICENSED PATENTS,
remains pending in the appropriate countries wherein the royalty was incurred.
Upon said application's issuance as a patent, the royalty shall be payable for
the term of the patent.
B. In the event that the patent lapses or if all of its claims are declared
invalid by a court of competent jurisdiction through no fault or cause of Enzo,
the obligation to pay the patent royalty for that patent shall terminate but the
Agreement shall remain in effect as to the remaining applications or patents. In
the event that the patent lapses, terminates or all of its claims are declared
invalid through fault or cause by Enzo then as to Enzo its obligations under
this agreement remain in effect and Yale does not waive rights to sue for any
wrongful acts of Enzo.
8
<PAGE>
IX. BEST EFFORTS
A. For the license granted herein, Enzo shall employ its best efforts to
perfect and market the invention. Best efforts shall be judged by Yale using an
objective standard and the reports and records provided by Enzo as well as other
resources and literature available to or developable by Yale. Should there be
disagreement as to the use of best efforts, a mutually acceptable impartial
third party shall be appointed who shall objectively judge the efforts of Enzo.
Said party shall have suitable scientific and business training in the field or
fields to which the invention applies.
B. Marketing shall include sales, offers for sale, sales development,
technical consultation pursuant to sales, manufacture, production or processing
pursuant to the invention and sale or possible sale thereof, detailing to
suitable buyers, advertisement, publication of technical reports, sponsorship of
scientific meetings pursuant to or directed to the invention, and further
activities of similar types.
C. Yale on its part shall employ its best efforts to obtain for Enzo a
ten-year exclusive license under this Agreement.
X. RESEARCH AND DEVELOPMENT
A. For the licenses granted herein, Enzo shall furthermore plan, initiate
and maintain research and development efforts related to the invention covered
by the LICENSED PATENTS, which are directed to commercial application of said
invention. Such commercial applications include but are not limited to use of
the invention for analytic or investigative purposes in hospitals and other
health institutions, production of useful and
9
<PAGE>
valuable products from "DNA" based tissue or cells, detection and analysis of
human pathological conditions and disease and other similar uses.
B. Pursuant to this effort, Enzo shall spend a minimum of $300,000.00
annually for each of the first three years of this agreement, to conduct
research and development of new and improved diagnostic procedures in which the
sensitivity for detection and/or quantification of genetic material from
microbial or multicellular organisms is increased. Payments made by Enzo under
this Article X for research and development during the first year of this
Agreement in excess of $300,000 shall be credited to the second year and,
payments made during the first and second years in excess of $600,000 shall be
credited to the third year. It is recognized that ENZO, prior to the signing of
this Agreement, has made expenditures for research and development and a credit
of $150,000 for this effort shall be applied against the $300,000 obligation of
the third year.
1. As a part of this minimum expense, Enzo shall employ the following
minimum personnel, who shall devote their full efforts and time to
this work:
a. An Organic Chemist trained in suitable fields of research and
having a Ph.D. degree or its equivalent;
b. An Immunologist trained in suitable fields of research and
having an M.D. degree
10
<PAGE>
or a Ph.D. degree or the equivalent thereof; and
c. A Molecular Biologist trained in suitable fields of research
and having a Ph.D. degree or the equivalent thereof.
2. As a further part of this minimum expense, Enzo shall purchase or
rent the appropriate laboratory and/or clinical equipment, computer
capacity and other materials appropriate for the work required by the
foregoing personnel.
C. A written report describing the development efforts shall be given
annually by Enzo to Yale. An annual audit of the expenditures made in
conjunction with the development efforts including an audit of the minimum
required expenditures shall be made at Yale's expense by an independent,
mutually acceptable auditor or accountant and the audit shall be reported to
Yale. Material produced by Enzo to Yale under this Agreement which has been
marked "confidential" and contains confidential or proprietary information of
Enzo shall not be disclosed by Yale without first obtaining from Enzo written
approval.
D. Failure to perform substantially the provisions of this article or to
spend the minimum amount for research and development herein set forth, shall
constitute a material breach by Enzo.
11
<PAGE>
XI. SUBLICENSES
The right to sublicense granted by Yale to Enzo shall be exclusive,
coterminable and transferable with this agreement and the license granted under
it. Enzo may grant one or more sublicenses under the LICENSED PATENTS which
shall be treated according to the terms and provisions hereunder. In the event
that the same royalty schedule is applied by Enzo to its sublicense agreement as
is herein applied, the royalty payment due from Enzo to Yale shall include the
sales of Enzo's sublicensee or sublicensees. In the event that a different
royalty schedule is applied by Enzo to its sublicense agreement, Yale shall
receive an amount of the royalties paid by the sublicensee or sublicensees to
Enzo as if Enzo had manufactured and sold the products.
XII. TERMINATION
This agreement and the license granted under it may be terminated:
A. By Yale, upon thirty (30) days notice to Enzo, for Enzo's material
breach of the agreement and Enzo's failure to cure in accordance with Article
XIII B.
B. At any time, by Enzo, after the sixth anniversary of this agreement and
upon sixty (60) days notice to Yale and upon payment of the minimum payments
defined in Article VII.
C. Should Enzo commit any act of bankruptcy, become insolvent, file a
petition under any bankruptcy or insolvency act or have any such petition filed
against it, or offer any general composition to its creditors, without notice to
Yale and because of the happening of such act, event or offer;
D. Upon any termination of this agreement and any license granted under it,
Enzo shall have the right for one year
12
<PAGE>
to dispose of all products of the invention or substantially completed products
thereof then on hand which would bear royalty under this agreement, and to
complete all orders for such products of the invention then on hand, and
royalties shall be paid with respect to such products of the invention as though
this agreement had not terminated;
E. Upon any termination of this agreement all sublicensees granted by Enzo
under it shall terminate simultaneously, subject nevertheless to Article XII D.
F. Termination of this agreement shall not terminate Enzo's obligation to
pay all royalties which shall have been accrued hereunder.
G. It is understood and agreed that should Yale for any reason grant a
license having a more favorable royalty rate than that charged herein, Yale will
give to Enzo the benefit of such more favorable rate from and after the date of
its establishment.
XIII. BREACH, CURE
A. In addition to the applicable legal standards, Enzo shall be in material
breach of this agreement for the following reasons:
1. Failure to use best efforts pursuant to Article IX;
2. Failure to pay royalties or minimum payments pursuant to Articles V
and VII;
3. Breach pursuant to Article X;
13
<PAGE>
4. Failure to prosecute reasonably the U.S. and foreign patent
applications which are the subject of the LICENSED PATENTS, such
failure including failure to appoint adequate mutually acceptable
counsel, failure to pay all fees and monies due, failure to pay
maintenance taxes, failure to follow advice of counsel and
failure to meet prosecution deadlines after being so notified by
counsel. Such failure shall not include failure caused by Yale;
and
5. Failure to pay patent taxes.
Termination of this agreement by Enzo or by any act of Enzo shall not
terminate Enzo's obligation to pay any remaining minimum payments under Article
VII.
B. Enzo shall have the right to cure its material breach; the cure shall be
effected within a reasonable time or within the specific time period set forth
for breach pursuant to Article VII C and in no event later than sixty (60) days
after notice of breach given by Yale. If complete cure cannot be rendered, Enzo
shall have the right to make a substantial cure using its best efforts as judged
according to Article IX A.
XIV. INFRINGEMENT, PATENT MARKINGS
A. Enzo shall notify Yale of the infringement by a third party of any claim
of any of the LICENSED PATENTS, and Enzo shall proceed to take steps to end such
infringement. Enzo shall
14
<PAGE>
initiate all legal actions and shall in consultation with Yale select counsel
mutually acceptable and prosecute such actions.
B. Enzo shall pay the first $100,000 in legal fees and disbursements
pursuant to legal action taken in regard to infringement.
The remainder of the legal fees and disbursements shall be paid three
quarters by Enzo, one quarter by Yale but in no event shall Yale's payment
exceed the amount of royalties due or minimum payment due from Enzo to Yale
whichever is greater.
C. Any recovery awarded for patent infringement shall first be used to
reimburse Enzo and Yale for legal fees, disbursements and costs incurred
pursuant to XIV B. Excess recovery over reimbursement shall be * between Yale
and Enzo.
D. Enzo agrees, and agrees to require its sublicensees, to mark all
products of the invention manufactured under this agreement and the license
granted under it, and under any sublicense granted by it hereunder, in
accordance with the pertinent local patent law.
E. Any actions brought by third parties against Enzo for products or
processes made, used or sold by Enzo under this agreement are the sole
responsibility of Enzo and do not terminate Enzo's obligations under this
agreement.
15
<PAGE>
XV. TITLE, OWNERSHIP
A. Ownership and legal title to all inventions made by Yale or its
employees with funds not provided by Enzo and covered by the LICENSED PATENTS,
and ownership and legal title to the corresponding domestic and foreign patent
applications and the prospective patents which may issue, shall remain with
Yale.
B. Ownership and legal title to all inventions made by Enzo or its
employees which are related to the field of art covered by the LICENSED PATENTS
and made pursuant to Enzo's further research and development, and ownership and
legal title to the corresponding domestic and foreign patent applications and
prospective patents which may issue, shall remain with Enzo. Yale shall have a
nonexclusive, royalty free license to make and use said inventions and a
nonexclusive, royalty free license under said patent applications and
prospective patents.
C. Ownership and legal title to all inventions, patent applications and
prospective patents which may issue and which are sponsored or are made jointly
by Enzo and Yale or their employees and are related to the field of art covered
by the LICENSED PATENTS and made pursuant to Yale's and Enzo's further research
efforts, shall remain with Yale. Enzo shall have a limited EXCLUSIVE LICENSE for
a term defined in Article II B and a residual NONEXCLUSIVE LICENSE for the life
of the patent Article II C to make, use and sell embodiments of said inventions.
The filing and prosecution of said patent
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applications and prospective patents, which shall conform in all respects to the
terms of this agreement.
XVI. NOTICE
Any notice which is required to be or may be given under this agreement
shall be deemed duly given if given in writing, and dispatched by prepaid first
class registered or certified mail addressed to the party notified at its
address stated in the preamble of this agreement. Each party reserves the right
to change that address from time to time by notice so given.
XVII. ASSIGNABILITY
This agreement and the license granted under it may be assigned by Enzo
with substantially all its related business, or to any firm or corporation
directly or indirectly controlling, controlled by, or under common control with
Enzo. Enzo shall promptly advise Yale of any such assignment.
XVIII. WARRANTY
Nothing in this agreement shall be construed as a warranty or
representation by either party as to the validity of any prospective, domestic
or foreign patent which may issue pursuant to the LICENSED PATENTS covering the
invention. Further, nothing in this agreement shall be construed as a warranty
or representation by either party that anything made, used, sold or otherwise
disposed of under any license granted under this agreement is or will be free
from infringement of domestic or foreign patents of third parties.
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XIX. PROHIBITION AGAINST USE OF YALE NAME
The use of the name Yale, Yale University, or Yale Medical School in any
form for public distribution is prohibited unless written approval is first
obtained from an officer of the University or Dean of the Medical School.
XX. COMPLIANCE WITH GOVERNMENTAL OBLIGATIONS
A. Notwithstanding any provisions in this agreement, Yale disclaims any
obligations or liabilities arising under the license provisions if Enzo is
charged in a governmental action for not complying with or fails to comply with
governmental regulations to take effective steps to bring the invention to a
point of practical application. Enzo shall bear the entire cost of justifying
and defending any action brought by any governmental agency.
B. Enzo shall comply with all governmental requests directed to either Yale
or Enzo and to provide all information and assistance necessary to comply with
the government requests. Failure to take necessary action and to comply with
said requests will be a material breach.
C. Enzo shall insure that research, development, and marketing under this
agreement will comply with all governmental regulations including, but not
limited to, Federal, State, and municipal legislation and that Enzo will hold
Yale harmless for any of its acts or failure to act arising under this
agreement.
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XXI. U.S. GOVERNMENTAL APPROVAL
This agreement and the licenses herein granted shall be conditioned upon
United States governmental approval of the ten- year EXCLUSIVE LICENSE herein
described or for any other shorter period as determined or approved by the
Federal Government or any agency thereof. Yale shall take all reasonable and
necessary action to secure such approval from the appropriate governmental
agencies such as the National Institute of Health.
XXII. APPLICABLE LAW
This agreement shall be construed, interpreted and applied in accordance
with the laws of the State of Connecticut.
XXIII. EFFECTIVE DATE
The effective date for establishing and calculating all rights and
obligations under this Agreement shall be January 1, 1982.
IN WITNESS WHEREOF, each of the parties has caused this agreement to be
executed in duplicate originals by its duly authorized representative.
YALE UNIVERSITY
/s/ D W By /s/ J Owens
- --------------------------- -------------------------
Acknowledgement Title
ENZO BIOCHEM, INC.
/s/ By /s/
- --------------------------- -------------------------
Acknowledgement Title
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AGREEMENT, entered into this 10th day of April, 1986, by and between
Yale University ("Yale"), a corporation organized and existing under and by
virtue of a charter granted by the General Assembly of the Colony and State of
Connecticut and located in New Haven, Connecticut; and Enzo Biochem, Inc.
("Enzo"), a New York corporation having its principal office at 325 Hudson
Street, New York, New York 10013.
W I T N E S S E T H :
WHEREAS, Yale and Enzo, as of December 4, 1981, entered into a License
Agreement relating to the invention covered by U.S. Serial No. 255,223 entitled
"Modified Nucleotides and Methods of Preparing and Using Same" (the "License
Agreement"); and
WHEREAS, Yale subsequently filed U.S. Patent Application Serial No.
503,298 entitled "Novel Visualization Polymers and their Application to
Diagnostic Medicine" and corresponding foreign patent applications, covering an
invention owned by Yale; and
WHEREAS, the applicability of provisions of the License Agreement to
the invention described in Application Serial No. 503,298 has been disputed by
Yale and Enzo, and Yale and Enzo desire hereby to resolve such dispute; and
WHEREAS, this Agreement is entered into in a spirit of compromise and
will not be used in any proceeding to suggest impropriety by either of the
parties or their employees or agents prior to the date hereof; and
<PAGE>
WHEREAS, Yale and Enzo desire to modify and amend certain terms and
conditions of the License Agreement;
NOW THEREFORE, in consideration of the foregoing and of the mutual
promises herein contained, the parties hereto do agree as follows:
1. The invention described in U.S. Patent Application Serial No.
503,298 and counterpart foreign patent applications, and any divisional,
continuation, or substitute patent applications, and any patents that issue
therefrom, shall be deemed to be a "Licensed Patent" under the License
Agreement.
2. Promptly following execution hereof, Yale shall cause to be
transferred to patent counsel mutually agreed upon by Yale and Enzo existing
file documents pertaining to U.S. patent application Serial No. 503,298 and to
counterpart foreign applications filed by Yale. Enzo shall assume the
obligation, under Article IV of the License Agreement, at its own expense and
through such mutually agreed upon patent counsel, to prosecute to issuance,
grant or final disposition the foregoing patent applications, including any
divisional, continuation, or substitute patent applications and any reissues and
extensions of any patents issued with respect to such applications. Enzo shall
use its best efforts to furnish or cause to be furnished to Yale for comments in
advance of their filing all documents prepared in connection with the
prosecution and issuance of such patent applications. Upon receipt by patent
counsel of the file documents transferred as descried above in this paragraph 2,
Enzo
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shall reimburse Yale $50,400 for amounts expended by Yale prior to the date
hereof in preparing and filing such patent applications.
3. Article IV of the License Agreement shall be and hereby is amended
to add the following Section D:
"D. Notwithstanding any other provision of this or any other
agreement, with respect to any Licensed Patent for which Enzo is
a non-exclusive licensee, Enzo shall be responsible only for its
pro-rata share of patent prosecution expenses, taxes, annuities,
working and maintenance fees, renewal and extension charges,
based upon the total number of non-exclusive licensees of such
patent at the time such expenses are incurred."
4. Subject, in the case of U.S. Patent Application Serial No. 255,223,
to the approval by the U.S. Government of Yale's request for the right to extend
the term of exclusive license, which request Yale shall pursue with its best
efforts, the Exclusive License term defined in Article IIB of the License
Agreement, shall be and hereby is extended to a term of fourteen years. At the
end of the fourteenth year of the term of Exclusive License and if Enzo is then
in compliance with all of the material terms and conditions of the License
Agreement, with an opportunity for curing any breach having been provided, Enzo
shall have the option to further extend the term of the Exclusive License until
the expiration of the life of the first U.S. Patent to issue under U.S. Patent
Application Serial No. 255,223 or if no such patent shall issue, April 17, 2003.
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5. The schedule set forth in Section A of Article VII "Minimum
Payments" of the License Agreement shall be and hereby is amended to read as
follows:
First Year 5,000 Seventh Year 55,000
Second Year 10,000 Eighth Year 70,000
Third Year 15,000 Ninth Year 85,000
Fourth Year 20,000 Tenth Year 100,000
Fifth Year 25,000 Eleventh year through 200,000
the end of the term per year
of Exclusive License
Sixth Year 40,000
Notwithstanding the preceding, there shall be no Minimum Payments
payable with respect to any period during which the invention
described in Patent Application U.S. Serial No. 503,298, and any
foreign patent applications, divisional, continuation or substitute
patent applications and any patents issued thereon, are the sole
Licensed Patents for which an Exclusive License is in effect."
6. Section C of Article VII of the License Agreement shall be and
hereby is amended to read as follows:
"Enzo shall have the right to convert the EXCLUSIVE LICENSE
granted under this Agreement to a NONEXCLUSIVE LICENSE, or to
terminate this Agreement, at the end of the tenth or fourteenth
year of this Agreement without incurring subsequent liabilities
under the minimum payments provision hereof. An election to
convert or terminate under this Section must be made in writing
by Enzo to Yale within 90 days preceding the conclusion of the
year of this Agreement in which the right is exercised. If this
Agreement is terminated by Enzo under this Section, all royalties
accrued hereunder shall at once become due, and Yale may
immediately seek another licensee or licensees to succeed Enzo."
7. Article XIV of the License Agreement shall be and hereby is amended
to add new Sections F and G as follows:
* The information omitted is confidential and has been filed separately with the
Commission pursuant to Rule 24b-2.
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"F. Should Enzo become a non-exclusive licensee under this
Agreement, during such period:
(i) Yale shall, in the first instance have the right to
bring and prosecute or settle at its expense any suit for
patent infringement and shall be entitled to retain any
damages collected therefrom; and
(ii) Should Yale decline to bring any such suit after notice
by Enzo of a substantial infringer then Enzo shall have the
right to bring and conduct at its expense a patent
infringement suit against such infringer. Enzo shall, in
such event, be entitled to retain any damages collected
therefrom. A substantial infringer shall be one who has at
least 10% of the market for products within scope of the
Licensed Patents.
G. Under this Article XIV Yale shall have ninety (90) days
within which to initiate any action contemplated by
subsection F(i) and Enzo shall not be permitted to bring any
suit against an infringer while an action by Yale with
respect to the same patent is pending against that or
another infringer."
8. Article XV, Section C of the License Agreement shall be and hereby
is amended to read as follows:
"Ownership and legal title to all inventions, patent
applications and prospective patents which may issue and which
are sponsored or are made jointly by Enzo and Yale or their
employees and which are related to the field of art covered by
the LICENSED PATENTS and made pursuant to Yale's and Enzo's
further research efforts, under a written agreement stipulating
such sponsorship by Enzo or joint effort by Enzo and Yale and
referring to this Section of this Agreement, shall remain with
Yale. Enzo shall have, and hereby is granted, a limited EXCLUSIVE
LICENSE for a term defined in such agreement and a residual
NONEXCLUSIVE LICENSE for the life of the patent as described in
Article IIC to make, use and sell embodiments of said inventions.
The filing and prosecution of patent applications with respect to
such inventions shall be carried out in accordance with the
provisions of Article IV of this
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Agreement, Enzo shall use its best efforts to provide copies of
all documents pertaining to the filing and prosecution of such
patent applications to Yale for comment in advance of filing. Any
written agreement referred to in this Article XVC shall be
binding upon on Yale only if signed by a representative duly
authorized by vote of the Yale Corporation to execute funding
agreements on behalf of Yale."
9. Enzo hereby releases Yale and its Officers, fellows, employees
(including without limitation Dr. David Ward) and agents from and against any
and all claims, demands, causes of action and liability arising out of any and
all acts or omissions heretofore by Yale or its employees or agents within the
scope of his or their employment or agency and relating to the subject matter of
the invention described in U.S. Patent Application Serial No. 503,298 (and
corresponding foreign applications, any divisional, continuation or substitute
patent applications, and any patents issued therefrom) or of the License
Agreement as related thereto.
IN WITNESS WHEREOF, the parties have hereby executed this Agreement as
of the day above written by their duly authorized representatives.
YALE UNIVERSITY
By:
------------------------------------------
Its VICE PRESIDENT FOR FINANCE
ENZO BIOCHEM, INC.
By:
------------------------------------------
Its E.V.P.
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YALE UNIVERSITY
July 18, 1996
Dr. Elazer Rabbani
Enzo Biochem, Inc.
575 Fifth Avenue
New York, NY 10017
Dear Dr. Rabbani:
Yale University has now concluded its investigation of Enzo's
compliance with the material terms and conditions of the Yale-Enzo Agreement.
Based upon the information made available to us, and Enzo's
representations as to the accuracy and completeness of such information, the
University has concluded that Enzo was in compliance with its obligations to
Yale as of January 1, 1996. Accordingly, Enzo is entitled to exercise the option
provided by Paragraph 4 of the 1986 Amendment to the 1981 Yale-Enzo Agreement to
extend the term of its Exclusive License.
In light of Mr. Fedus' letter of October 31, 1995, which we have
interpreted as indicating Enzo's desire to exercise the extension option, it is
the position of the University that Enzo's option has now been exercised, and
that the term of Enzo's Exclusive License has, since January 1, 1996, been
extended, subject to the terms of the existing Yale-Enzo Agreement of 1981, as
amended, "until the expiration of the life of the first U.S. Patent to issue
under U.S. Patent Application Serial No. 255,223 or if no such patent shall
issue, April 17, 2003."
As you may know, I only recently became Director of the Office of
Cooperative Research. I look forward to meeting with you upon your return from
Europe. I hope this letter which disposes the issues of compliance and the
exercise of the January 1, 1996 option will allow the two of us to initiate
discussions on how to conduct this relationship in a way that benefits both Enzo
and Yale.
Sincerely yours,
Gregory E. Gardiner
- ----------------------------
Gregory E. Gardiner, Ph.D.
Director
cc: J. L. Auerbach
R. J. Bickerton
W. D. Stempel
