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UNITED STATES
SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
FORM 10-Q/A
AMENDMENT NO. 1
(Mark One)
[X] QUARTERLY REPORT PURSUANT TO SECTION 13 OR 15(d) OF THE SECURITIES EXCHANGE
ACT OF 1934
For the quarterly period ended September 30, 1996
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[ ] TRANSITION REPORT PURSUANT TO SECTION 13 OR 15(d) OF THE SECURITIES
EXCHANGE ACT OF 1934
For the transaction period from ______________ to _______________
Commission file number: 0-26642
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MYRIAD GENETICS, INC.
(Exact name of registrant as specified in its charter)
Delaware 87-0494517
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(State or other jurisdiction (I.R.S. Employer Identification No.)
of incorporation or organization
320 Wakara Way, Salt Lake City, UT 84108
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(Address of principal executive offices) (Zip Code)
Registrant's telephone number, including area code: (801) 584-3600
390 Wakara Way, Salt Lake City, Utah
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(Former address, if changed since last report)
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 [ ]
As of November 5, 1996, the registrant had 8,730,725 shares of common stock
outstanding.
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The Purpose of this Form 10-Q/A Amendment No. 1 is to amend the previously
filed Form 10-Q of Myriad Genetics, Inc. for the quarterly period ended
September 30, 1996 by augmenting Item 6(a) of Part II thereto to include revised
Exhibits 10.1 and 10.4 which are herewith resubmitted and redacted pursuant to
that certain Confidentiality Request of Myriad Genetics, Inc. filed with the
Securities and Exchange Commission on November 12, 1996, as amended by letter
dated December 23, 1996. Such item is set forth in this Form 10-Q/A Amendment
No. 1
2
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Item 6. Exhibits and Reports on Form 8-K.
(a) Exhibits
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The following is a list of exhibits filed as part of this Quarterly
Report on Form 10-Q.
<TABLE>
<CAPTION>
Exhibit
Number Description
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<S> <C>
10.1 Patent and Technology License Agreement dated September 26, 1996 among the Board of Regents of The
University of Texas System, The University of Texas M.D. Anderson Cancer Center and the Company. The
Company has excluded from this Exhibit 10.1 portions of the Patent and Technology License Agreement for
which the Company has requested confidential treatment from the Securities and Exchange Commission. The
portions of the Patent and Technology License Agreement for which confidential treatment has been
requested are marked "[ ]" and such confidential portions have been filed separately with the
Securities and Exchange Commission.
10.2 Lease Agreement, dated October 12, 1995, between The Boyer Research Park Associates V, by its general
partner, The Boyer Company and the Company.
10.3 Amendment to Lease Agreement, dated March 29, 1996, between The Boyer Research Park Associates V, by
its general partner, The Boyer Company and the Company.
10.4 Letter Agreement, dated March 4, 1996, among The University of Utah, Genetic Epidemiology and the
Company regarding Extension of Standard Research Agreement and Form of License Agreement between the
Company and The University of Utah, effective January 1, 1993, as amended (Genes Predisposing to
Cancer). The Company has omitted from this Exhibit 10.4 portions of the Letter Agreement for which the
Company has requested confidential treatment from the Securities and Exchange Commission. The portions
of the Letter Agreement for which confidential treatment has been requested are marked "[ ]" and such
confidential portions have been filed separately with the Securities and Exchange Commission.
11.1 Statement Regarding Computation of Net Loss Per Share
27.1 Financial Data Schedule
</TABLE>
(b) Reports on Form 8-K
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No reports on Form 8-K were filed during the quarter ended September 30, 1996.
3
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SIGNATURES
Pursuant to the requirements 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.
MYRIAD GENETICS, INC.
Date: April 17, 1997 /s/ Jay M. Moyes
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Jay M. Moyes
Vice President of Finance
(principal financial and accounting officer)
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MYRIAD GENETICS, INC.
EXHIBIT INDEX
<TABLE>
<CAPTION>
Exhibit
Number Description
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<S> <C>
10.1 Patent and Technology License Agreement dated September 26, 1996 among the Board of Regents of The
University of Texas System, The University of Texas M.D. Anderson Cancer Center and the Company. The
Company has excluded from this Exhibit 10.1 portions of the Patent and Technology License Agreement for
which the Company has requested confidential treatment from the Securities and Exchange Commission. The
portions of the Patent and Technology License Agreement for which confidential treatment has been
requested are marked "[ ]" and such confidential portions have been filed separately with the
Securities and Exchange Commission.
10.2 Lease Agreement, dated October 12, 1995, between The Boyer Research Park Associates V, by its general
partner, The Boyer Company and the Company.
10.3 Amendment to Lease Agreement, dated March 29, 1996, between The Boyer Research Park Associates V, by
its general partner, The Boyer Company and the Company.
10.4 Letter Agreement, dated March 4, 1996, among The University of Utah, Genetic Epidemiology and the
Company regarding Extension of Standard Research Agreement and Form of License Agreement between the
Company and The University of Utah, effective January 1, 1993, as amended (Genes Predisposing to
Cancer). The Company has omitted from this Exhibit 10.4 portions of the Letter Agreement for which the
Company has requested confidential treatment from the Securities and Exchange Commission. The portions
of the Letter Agreement for which confidential treatment has been requested are marked "[ ]" and such
confidential portions have been filed separately with the Securities and Exchange Commission.
11.1 Statement Regarding Computation of Net Loss Per Share
27.1 Financial Data Schedule
</TABLE>
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EXHIBIT 10.1
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MYRIAD GENETICS, INC. HAS OMITTED FROM THIS EXHIBIT 10.1 PORTIONS OF THE
AGREEMENT FOR WHICH MYRIAD GENETICS, INC. HAS REQUESTED CONFIDENTIAL TREATMENT
FROM THE SECURITIES AND EXCHANGE COMMISSION. THE PORTIONS OF THE AGREEMENT FOR
WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED ARE MARKED "[ ]" AND SUCH
CONFIDENTIAL PORTIONS HAVE BEEN FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION.
PATENT AND TECHNOLOGY LICENSE AGREEMENT
This thirteen (13) page AGREEMENT ("AGREEMENT") is made on this 26th day of
September, 1996 by and between the BOARD OF REGENTS ("BOARD") of THE UNIVERSITY
OF TEXAS SYSTEM ("SYSTEM"), an agency of the State of Texas, whose address is
201 West 7th Street, Austin, Texas 78701, THE UNIVERSITY OF TEXAS M. D.
ANDERSON CANCER CENTER ("MDA"), a component Institution of the SYSTEM and Myriad
Genetics, Inc., a Delaware corporation having a principal place of business
located at 390 Wakara Way, Salt Lake City, Utah 84108 ("LICENSEE").
TABLE OF CONTENTS
<TABLE>
<S> <C> <C>
RECITALS........................................ 3
I. EFFECTIVE DATE............................................ 3
II. DEFINITIONS............................................... 3
III. LICENSE................................................... 4
IV. CONSIDERATION, PAYMENTS AND REPORTS....................... 5
V. PUBLICATION............................................... 8
VI. PATENTS AND INVENTIONS.................................... 8
VII. INFRINGEMENT BY THIRD PARTIES............................. 8
VIII. PATENT MARKING............................................ 9
IX. INDEMNIFICATION........................................... 9
X. USE OF BOARD AND COMPONENT'S NAME......................... 9
XI. CONFIDENTIAL INFORMATION.................................. 10
XII. ASSIGNMENT................................................ 10
</TABLE>
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<TABLE>
<S> <C> <C>
XIII. TERMS AND TERMINATION..................................... 10
XIV. WARRANTY: SUPERIOR-RIGHTS................................ 12
XV. GENERAL................................................... 13
SIGNATURES................................................ 14
EXHIBIT I................................................. 15
</TABLE>
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RECITALS
A. BOARD owns certain TECHNOLOGY RIGHTS related to LICENSED SUBJECT MATTER,
which were developed at MDA, a component institution of SYSTEM.
B. BOARD desires to have the LICENSED SUBJECT MATTER developed in the LICENSED
FIELD and used for the benefit of LICENSEE, BOARD, SYSTEM, MDA, the
inventor, and the public as outlined in the Intellectual Property Policy
promulgated by the BOARD.
C. LICENSEE wishes to obtain a license from BOARD to practice LICENSED SUBJECT
MATTER.
NOW, THEREFORE, in consideration of the mutual covenants and premises herein
contained, the parties hereto agree as follows:
I. EFFECTIVE DATE
1.1 Subject to approval by BOARD, this AGREEMENT shall be effective as of the
date written herein above ("EFFECTIVE DATE").
II. DEFINITIONS
As used in this AGREEMENT, the following terms shall have the meanings
indicated:
2.1 AFFILIATE shall mean any business entity more than 50% owned by LICENSEE,
any business entity which owns more than 50% of LICENSEE, or any business
entity that is more than 50% owned by a business entity that owns more than
50% of LICENSEE.
2.2 LICENSED FIELD shall mean all human and animal diagnostic, preventive and
therapeutic applications within the LICENSED SUBJECT MATTER.
2.3 LICENSED PRODUCTS shall mean any product or service SOLD by LICENSEE
comprising or making use of LICENSED SUBJECT MATTER pursuant to this
AGREEMENT.
2.4 LICENSED SUBJECT MATTER shall mean inventions and discoveries defined
herein as PATENT RIGHTS or as TECHNOLOGY RIGHTS.
2.5 LICENSED TERRITORY shall mean the entire world.
2.6 NET SALES shall mean the gross amounts invoiced by LICENSEE
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from the SALE of LICENSED PRODUCTS less sales discounts actually granted in
amounts customary in the trade, including but not limited to pharmacy
incentive programs and all other similar sales incentive programs, all
governmental and healthcare rebates, hospital performance incentive program
rebates or charge backs, sales and/or use taxes actually paid, import
and/or export duties actually paid, outbound transportation actually
prepaid or allowed, insurance and postage, amounts actually allowed or
credited due to returns (not exceeding the original billing or invoice
amount) and any uncollectable amounts owed to LICENSEE from SALES of
LICENSED PRODUCTS.
2.7 PATENT RIGHTS shall only mean any and all of BOARD'S rights in information
or discoveries claimed in invention disclosures, patents, and/or patent
applications, whether domestic or foreign, and all divisionals,
substitutions, renewals, continuations, continuations-in-part, reissues,
reexaminations or extensions thereof, and any letters patent that issue
thereon as set forth in Exhibit I hereto, subject to the limitations, if
any, set forth therein.
2.8 SALE or SOLD shall mean the transfer or disposition of a LICENSED PRODUCT
for value to a party other than LICENSEE or an AFFILIATE.
2.9 Subject to the limitations, if any, set forth in Exhibit I hereto,
TECHNOLOGY RIGHTS shall mean BOARD'S rights in any technical information,
know-how, process, procedure, composition, device, method, formula,
protocol, technique, software, design, drawing or data created by the
inventors listed in Exhibit I hereto and relating to the subject matter of
PATENT RIGHTS which is not claimed in PATENT RIGHTS but which is necessary
for practicing PATENT RIGHTS.
III. LICENSE
3.1 BOARD, through MDA, hereby grants to LICENSEE a royalty-bearing, exclusive
license under LICENSED SUBJECT MATTER to make, have made, use and/or sell
LICENSED PRODUCTS within LICENSED TERRITORY for use within LICENSED FIELD
and, subject to Paragraph 4.5 herein, shall extend to BOARD's undivided
interest in any LICENSED SUBJECT MATTER developed during the term of this
AGREEMENT and jointly owned by BOARD and LICENSEE. This grant shall be
subject to Paragraph 14.2 and 14.3, herein below, the payment by LICENSEE
to BOARD of all consideration as provided in Paragraph 4.2 of this
AGREEMENT, and shall be further subject to rights retained by BOARD and MDA
to:
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(a) Publish the general scientific findings from research related to
LICENSED SUBJECT MATTER, subject to ARTICLE V herein under; and
(b) Subject to the provisions of ARTICLE XI herein below, use any
information contained in LICENSED SUBJECT MATTER for research,
teaching, patient care, and other educationally related purposes.
3.2 LICENSEE shall have the right to extend the license granted herein to any
AFFILIATE provided that such AFFILIATE consents to be bound by all of the
terms and conditions of this AGREEMENT.
3.3 Subject to the Paragraph 3.4 herein below, LICENSEE shall have the right to
grant sublicenses under LICENSED SUBJECT MATTER consistent with the terms
of this AGREEMENT provided that LICENSEE shall be responsible for its
sublicensees relevant to this AGREEMENT, and for diligently collecting all
amounts due LICENSEE from sublicensees. In the event a sublicensee
pursuant hereto becomes bankrupt, insolvent or is placed in the hands of a
receiver or trustee, LICENSEE, to the extent allowed under applicable law
and in a timely manner, agrees to use its best reasonable efforts to
collect any and all consideration owed to LICENSEE and to have the
sublicense agreement confirmed or rejected by a court of proper
jurisdiction.
3.4 LICENSEE agrees to deliver to MDA a true and correct copy of each
sublicense granted by LICENSEE, and any modification or termination
thereof, within thirty (30) days after execution, modification, or
termination.
3.5 Upon termination of this AGREEMENT, BOARD and MDA agree to accept as
successors to LICENSEE, existing sublicensees in good standing at the date
of termination provided that such sublicensees consent in writing to be
bound by all of the terms and conditions of this AGREEMENT.
IV. CONSIDERATION, PAYMENTS AND REPORTS
4.1 In consideration of rights granted by BOARD to LICENSEE under this
AGREEMENT, LICENSEE agrees to pay MDA the following:
(a) All out-of-pocket expenses incurred by MDA in filing, prosecuting,
enforcing and maintaining PATENT RIGHTS licensed hereunder, for so
long as, and in such
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countries as, this AGREEMENT remains in effect. MDA will invoice
LICENSEE upon a quarterly basis for expenses incurred by MDA, and the
amounts invoiced will be due and payable by LICENSEE within thirty
(30) days thereafter, and
(b) A non-refundable license documentation fee in the amount of [ ]
which shall not reduce the amount of any other payment provided for in
this ARTICLE IV, and which shall be due and payable within thirty (30)
days after approval of this AGREEMENT by BOARD as invoiced by MDA; and
(c) A milestone payment in the amount of [ ] which shall be due and
payable within thirty (30) days after the [ ]
[ ] set forth in Exhibit I is isolated by LICENSEE and
MDA, and a patent application is filed.
(d) A running royalty equal to [ ] of LICENSEE'S NET SALES of
LICENSED PRODUCTS in LICENSED FIELD of therapeutics, and a running
royalty equal to [ ] of LICENSEE'S NET SALES
of LICENSED PRODUCTS in LICENSED FIELD of diagnostics, in national
political jurisdictions in the LICENSED TERRITORY where LICENSED
SUBJECT MATTER is covered by one (1) or more issued patents or pending
patent applications. Such royalties shall be reduced to [
] of above applicable rates respectively for LICENSEE'S NET SALES
of LICENSED PRODUCTS in national political jurisdictions in the
LICENSED TERRITORY where BOARD and LICENSEE decide not to file patent
applications and therefore LICENSED SUBJECT MATTER is not covered by
one (1) or more issued patents or pending patent applications.
(e) [ ] of all consideration (royalties not included)
other than Research and Development ("R&D") money and direct equity
investment received by LICENSEE from (i) any sublicensee pursuant to
Paragraphs 3.3 and 3.4 herein above and (ii) any assignee pursuant to
Paragraph 12.1 herein below, including but not limited to up-front
payments, marketing, distribution, franchise, option, license, or
documentation fees, bonus and milestone payments, plus [
] of NET SALES of sublicensee and LICENSEE (if applicable) in the
LICENSED FIELD of the therapeutics and [ ]
of NET SALES of sublicensee and LICENSEE (if applicable) in the
LICENSED FIELD of diagnostics, all payable within thirty (30) days
after
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March 31, June 30, September 30, and December 31 of each year during
the term of this AGREEMENT, at which time LICENSEE shall also deliver
to BOARD and MDA a true and accurate report, giving such particulars
of the business conducted by LICENSEE and its sublicensees, if any
exist, during the preceding three (3) calendar months under this
AGREEMENT as necessary for BOARD to account for LICENSEE'S payments
hereunder. Such report shall include all pertinent data, including,
but not limited to: (a) the total quantities of LICENSED PRODUCTS
produced; (b) the total SALES, (c) the calculation of royalties
thereon; (d) the total royalties (or minimum royalties) so computed
and due MDA; and (e) all other amounts due MDA herein. Simultaneously
with the delivery of each such report, LICENSEE shall pay to MDA the
amount, if any, due for the period of such report. If no payments are
due, it shall be so reported. Should LICENSEE be obligated to pay
running royalties to third parties to avoid infringing such third
parties' patent rights which otherwise because of infringement would
preclude LICENSEE from practicing LICENSED SUBJECT MATTER, LICENSEE
may reduce the running royalty due MDA by such running royalties to
such third parties, provided, however, the running royalty due MDA
shall in no case be less than one-half the rates stated herein.
4.2 During the Term of this AGREEMENT and for one (1) year thereafter, LICENSEE
shall keep complete and accurate records of its and its sublicensees' SALES
and NET SALES of LICENSED PRODUCTS to enable the royalties payable
hereunder to be determined. LICENSEE shall permit MDA or its
representatives, at MDA's expense, to periodically examine its books,
ledgers, and records once annually during regular business hours and with
reasonable advanced notice for the purpose of and to the extent necessary
to verify any report required under this AGREEMENT. In the event that the
amounts due to MDA are determined to have been underpaid in an amount equal
to or greater than five percent (5%) of the total amount due during the
period of time so examined, LICENSEE shall pay the cost of such
examination, and accrued interest at the highest allowable rate.
4.3 Upon the request of MDA but not more often than once per calendar year,
LICENSEE shall deliver to MDA a written report as to LICENSEE'S (and
sublicensees') efforts and accomplishments during the preceding year in
diligently commercializing LICENSED SUBJECT MATTER in the LICENSED
TERRITORY and LICENSEE'S (and sublicensees') commercialization plans for
the upcoming year.
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4.4 All amounts payable hereunder by LICENSEE shall be payable in United States
funds without deductions for taxes, assessments, fees, or charges of any
kind. Checks shall be made payable to The University of Texas M. D.
Anderson Cancer Center and mailed by U.S. Mail to Box 297402, Houston,
Texas 77297 Attention: Manager, Sponsored Programs.
4.5 No payments due or royalty rates under this AGREEMENT shall be reduced as
the result of co-ownership of LICENSED SUBJECT MATTER by BOARD and another
party, including LICENSEE.
V. PUBLICATION
5.1 MDA shall have the right to publish the general scientific findings related
to the LICENSED SUBJECT MATTER, provided such publication, presentation or
public disclosure is submitted to LICENSEE at least sixty (60) days prior
to submitting it to a journal, editor, or other third party. LICENSEE
shall have sixty (60) days after receipt to review the proposed
publication, presentation or public disclosure.
5.2 MDA and LICENSEE shall jointly decide on the content and timing of any
publication, presentation or public disclosure of any jointly owned
inventions or discoveries that result from the LICENSED SUBJECT MATTER.
VI. PATENTS AND INVENTIONS
6.1 If after consultation with LICENSEE it is agreed by MDA and LICENSEE that a
new patent application should be filed for LICENSED SUBJECT MATTER, MDA
will prepare and file appropriate patent applications, and LICENSEE will
pay the cost of searching, preparing, filing, prosecuting and maintaining
same. If LICENSEE notifies MDA that it does not intend to pay the cost of
an application, or the prosecution or maintenance thereof in a national
political jurisdiction, then MDA may file, prosecute or maintain such
application at its own expense and LICENSEE shall have no rights to such
patent application or patent in that national political jurisdiction. MDA
shall provide LICENSEE with a copy of the application for which LICENSEE
has paid the cost of filing, as well as copies of any documents received or
filed during prosecution thereof.
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VII. INFRINGEMENT BY THIRD PARTIES
7.1 LICENSEE shall have the obligation of enforcing at its expense any patent
exclusively licensed hereunder against infringement by third parties and
shall be entitled to retain recovery from such enforcement. LICENSEE shall
pay MDA a royalty on any monetary recovery to the extent that such monetary
recovery by LICENSEE is held to be damages or a reasonable royalty in lieu
thereof. In the event that LICENSEE does not file suit against a
substantial infringer of such patents within six (6) months of knowledge
thereof, then BOARD and MDA shall have the right to enforce any patent
licensed hereunder on behalf of itself and LICENSEE, with MDA retaining all
recoveries from such enforcement.
7.2 In any suit or dispute involving an infringer, the parties shall cooperate
fully, and upon the request and at the expense of the party bringing suit,
the other party shall make available to the party bringing suit at
reasonable times and under appropriate conditions all relevant personnel,
records, papers, information, samples, specimens, and the like which are in
its possession.
7.3 In the event that an action for infringement is brought against LICENSEE,
its AFFILIATES or sublicensees by a third party because of manufacture, use
or sale of LICENSED PRODUCTS, LICENSEE shall defend, at its own cost, any
such third party claim or action. MDA shall cooperate fully in such
defense and furnish to LICENSEE all evidence and assistance.
VIII. PATENT MARKING
8.1 LICENSEE agrees that all packaging containing individual LICENSED
PRODUCT(S), and documentation therefor, sold by LICENSEE, SUBSIDIARIES, and
sublicensees of LICENSEE will be marked permanently and legibly with the
number of the applicable patent(s) licensed hereunder in accordance with
each country's patent law, including Title 35, United States Code.
IX. INDEMNIFICATION
9.1 LICENSEE shall hold harmless and indemnify BOARD, SYSTEM, MDA, its Regents,
officers, employees, students, and agents from and against any claims,
demand, or causes of action whatsoever, costs of suit and reasonable
attorney's fees, including without limitation, those costs arising on
account of any injury or death of persons or damage to property
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caused by, or arising out of, or resulting from, the exercise or practice
of the license granted hereunder by LICENSEE or its officers, employees,
agents or representatives.
X. USE OF BOARD AND COMPONENT'S NAME
10.1 LICENSEE shall not use the name of (or the name of any employee of) MDA,
SYSTEM or BOARD without the advance, express written consent of BOARD
secured through:
The University of Texas
M. D. Anderson Cancer Center
Office of Public Affairs
1515 Holcombe Boulevard
Box 229
Houston, Texas 77030
ATTENTION: Stephen C. Stuyck
XI. CONFIDENTIAL INFORMATION
11.1 MDA and LICENSEE each agree that all information contained in documents
marked "confidential" which are forwarded to one by the other shall be
received in strict confidence, used only for the purposes of this
AGREEMENT, and not disclosed by the recipient party (except as required by
law or court order), its agents or employees without the prior written
consent of the other party, unless such information (a) was in the public
domain at the time of disclosure, (b) later became part of the public
domain through no act or omission of the recipient party, its employees,
agents, successors or assigns, (c) was lawfully disclosed to the recipient
party by a third party having the right to disclose it, (d) was already
known by the recipient party at the time of disclosure, (e) was
independently developed or (f) is required to be submitted to a government
agency pursuant to any preexisting obligation.
11.2 MDA'S and LICENSEE'S obligation of confidence hereunder shall be fulfilled
by using the same degree of care with the other party's confidential
information as it uses to protect its own confidential information. This
obligation shall exist while this AGREEMENT is in force and for a period of
three (3) years thereafter.
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XII. ASSIGNMENT
12.1 Except in connection with merger, consolidation or sale of substantially
all of LICENSEE'S assets to a third party, this AGREEMENT may not be
assigned by LICENSEE without the prior written consent of BOARD.
XIII. TERMS AND TERMINATION
13.1 Subject to Articles 13.2, 13.3 and 13.4 herein below, the term of this
AGREEMENT shall extend from the Effective Date set forth herein above to
(i) the full end of the term or terms for which PATENT RIGHTS have not
expired, or (ii) if only TECHNOLOGY RIGHTS are licensed and no PATENT
RIGHTS are applicable, for a term of fifteen (15) years.
13.2 BOARD and MDA shall have the right at any time after two (2) years from the
EFFECTIVE DATE of this AGREEMENT to terminate the license granted herein in
any national political jurisdiction within the LICENSED TERRITORY if
LICENSEE, within ninety (90) days after written notice from MDA of such
intended termination, fails to provide written evidence satisfactory to MDA
that LICENSEE has commercialized or is actively and effectively attempting
to commercialize an invention licensed hereunder within such
jurisdiction(s). Accurate, written evidence provided by LICENSEE to MDA
within said ninety (90) day period that LICENSEE has an effective, ongoing
and active research, development, manufacturing, marketing, or sales
program, as appropriate, directed toward obtaining regulatory approval
and/or production and/or sale of LICENSED PRODUCTS incorporating PATENT
RIGHTS or incorporating TECHNOLOGY RIGHTS within such jurisdiction shall be
deemed satisfactory evidence.
13.3 Subject to any rights herein which survive termination, this AGREEMENT will
earlier terminate in its entirety:
(a) automatically if LICENSEE shall become bankrupt or insolvent and/or if
the business of LICENSEE shall be placed in the hands of a receiver or
trustee, whether by voluntary act of LICENSEE or otherwise; or
(b) (i) upon thirty (30) days written notice by MDA if LICENSEE shall
breach or default on the payment obligations of ARTICLE IV, or use of
name obligations of ARTICLE X; or (ii) upon ninety (90) days written
notice by MDA if LICENSEE shall breach or default on any other
obligation under this AGREEMENT; provided, however, LICENSEE may avoid
such termination if before the end of such thirty (30) or ninety (90)
day period if LICENSEE provides notice and accurate, written
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evidence satisfactory to MDA that such breach has been cured and the
manner of such cure; or
(c) at any time by mutual written agreement between LICENSEE, MDA and
BOARD, or without cause upon one hundred eighty (180) days written
notice by LICENSEE to MDA and, subject to any terms herein which
survive termination.
13.4 Upon termination of this AGREEMENT for any cause:
(a) nothing herein shall be construed to release either party of any
obligation matured prior to the effective date of such termination.
(b) LICENSEE covenants and agrees to be bound by the provisions of
ARTICLES IX, X AND XI of this AGREEMENT.
(c) LICENSEE may, after the effective date of such termination, sell all
LICENSED PRODUCTS and parts therefore that it may have on hand at the
date of termination, provided that LICENSEE pays the earned royalty
thereon and any other amounts due pursuant to ARTICLE IV of this
AGREEMENT.
XIV. WARRANTY: SUPERIOR-RIGHTS
14.1 Expcept for the rights, if any, of the Government of the United States as
set forth herein below, BOARD represents and warrants its belief that it is
the owner of the entire right, title, and interest in and to LICENSED
SUBJECT MATTER, and that it has the sole right to grant licenses
thereunder, and that it has not knowingly granted licenses thereunder to
any other entity that would restrict rights granted hereunder except as
stated herein.
14.2 LICENSEE understands that the LICENSED SUBJECT MATTER may have been
developed under a funding agreement with the Government of the United
States of America and, if so, that the Government may have certain rights
relative thereto. This AGREEMENT is explicitly made subject to the
Government's rights under any such agreement and any applicable law or
regulation, including P.L. 96-517 as amended by P.L. 98-620. To the extent
that there is a conflict between any such agreement, applicable law or
regulation and this AGREEMENT, the terms of such Government agreement,
applicable law or regulation shall prevail.
14.3 LICENSEE understands and agrees that BOARD, by this
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AGREEMENT, makes no representation as to the operability or fitness for any
use, safety, efficacy, approvability by regulatory authorities, time and
cost of development, patentability, and/or breadth of the LICENSED SUBJECT
MATTER. BOARD, by this AGREEMENT, makes no representation as to whether
there are any patents now held, or which will be held, by others or by
BOARD in the LICENSED FIELD, nor does BOARD make any representation that
the inventions contained in PATENT RIGHTS do not infringe any other patents
now held or that will be held by others or by BOARD.
14.4 LICENSEE, by execution hereof, acknowledges, covenants and agrees that
LICENSEE has not been induced in anyway by BOARD, SYSTEM, MDA or employees
thereof to enter into this Agreement, and further warrants and represents
that (i) LICENSEE has conducted sufficient due diligence with respect to
all items and issues pertaining to Article XIV herein and all other matters
pertaining to this Agreement; and (ii) LICENSEE has adequate knowledge and
expertise, or has utilized knowledgeable and expert consultants, to
adequately conduct such due diligence, and agrees to accept all risks
inherent herein.
XV. GENERAL
15.1 This AGREEMENT constitutes the entire and only AGREEMENT between the
parties for LICENSED SUBJECT MATTER and all other prior negotiations,
representations, agreements and understandings are superseded hereby. No
agreements altering or supplementing the terms hereof may be made except by
means of a written document signed by the duly authorized representatives
of the parties.
15.2 Any notice required by this AGREEMENT shall be given by prepaid, first
class, certified mail, return receipt requested, and addressed in the case
of BOARD to:
BOARD OF REGENTS
The University of Texas System
201 West Seventh Street
Austin, Texas 78701
ATTENTION: Office of General Counsel
with copy to: The University of Texas
M. D. Andersen Cancer Center
Office of Technology Development
1020 Holcombe Boulevard, Suite 1405
Houston, Texas 77030
ATTENTION: William J. Doty
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<PAGE>
or in the case of
LICENSEE to: Myriad Genetics, Inc.
390 Wakara Way
Salt Lake City, Utah 84108
ATTENTION: President
or such other address as may be given from time to time under the terms of
this notice provision.
15.3 LICENSEE covenants and agrees to comply with all applicable federal, state
and local laws and regulations in connection with its activities pursuant
to this AGREEMENT.
15.4 This AGREEMENT shall be construed and enforced in accordance with the laws
of the United States of America and of the State of Texas.
15.5 Failure of BOARD to enforce a right under this AGREEMENT shall not act as a
waiver of that right or the ability to later assert that right relative to
the particular situation involved.
15.6 Headings included herein are for convenience only and shall not be used to
construe this AGREEMENT.
15.7 If any provision of this AGREEMENT shall be found by a court to be void,
invalid or unenforceable, the same shall be reformed to comply with
applicable law or stricken if not so conformable, so as not to affect the
validity or enforceability of this AGREEMENT.
IN WITNESS WHEREOF, parties hereto have caused their duly authorized
representatives to execute this AGREEMENT.
THE UNIVERSITY OF TEXAS BOARD OF REGENTS OF THE
M. D. ANDERSON CANCER CENTER UNIVERSITY OF TEXAS SYSTEM
By /s/ David J. Bachrach By /s/ Ray Farabee
--------------------- ------------------
David J. Bachrach Ray Farabee
Executive Vice President Vice Chancellor and
for Administration and Finance General Counsel
APPROVED AS TO CONTENT: APPROVED AS TO FORM:
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<PAGE>
By /s/ William J. Doty By /s/ Dudley R. Dobie, Jr.
-------------------- ------------------------
William J. Doty Dudley R. Dobie, Jr.
Director, Technology Manager, Intellectual
Development Property
MYRIAD GENETICS, INC.
By /s/ Peter D. Meldrum
--------------------
Peter D. Meldrum
President and CEO
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<PAGE>
EXHIBIT I
[ ]
[ ]
[ ]
[ ]
[ ]
[ ]
[ ]
THE DATA REFERENCED ABOVE IS AGREED TO BE CONFIDENTIAL AND SUBJECT TO THE
CONDITIONS OF ARTICLE XI OF THE AGREEMENT TO WHICH THIS EXHIBIT IS ATTACHED.
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<PAGE>
EXHIBIT 10.4
------------
MYRIAD GENETICS, INC. HAS OMITTED FROM THIS EXHIBIT 10.4 PORTIONS OF THE
AGREEMENT FOR WHICH MYRIAD GENETICS, INC. HAS REQUESTED CONFIDENTIAL TREATMENT
FROM THE SECURITIES AND EXCHANGE COMMISSION. THE PORTIONS OF THE AGREEMENT FOR
WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED ARE MARKED "[ ]" AND SUCH
CONFIDENTIAL PORTIONS HAVE BEEN FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION.
March 4, 1996
Dr. Lisa Cannon-Albright
Genetic Epidemiology
University of Utah
391 Chipeta Way #D-2
Salt Lake City, Utah 84108
RE: Sub-contract titled: Isolation and Characterization of Genes Predisposing
to Cancer. University Acct. No. 5-20639
Dear Dr. Cannon-Albright:
This modification is made and entered into by and between the University of Utah
and Myriad Genetics, Inc. As the original agreement states, any extension must
be mutually agreed upon in writing between the parties.
The purpose of this modification is to approve an additional year of funding in
the amount of [ ] ([ ] and [ ] costs of [ ])
(see attached budget) from March 1, 1996 to February 28, 1997.
<PAGE>
The Principal Investigator will be Lisa Cannon-Albright for this new year
funding.
Approval Signatures: Myriad Genetics, Inc.
/s/ Peter Meldrum
------------------------------
Peter Meldrum-President
Genetic Epidemiology
/s/ Dr. Lisa Cannon-Albright
------------------------------
Dr. Lisa Cannon-Albright
University of Utah
/s/ Robert G. Glass
-------------------------------
Acting for
Nancy V. Dyke,Associate Director
Office of Sponsored Projects
-2-
<PAGE>
BUDGET FOR 1996 - 1997
<TABLE>
<S> <C>
Salaries and Wages $ [ ]
Fringe Benefits $ [ ]
Total Personnel $ [ ]
Supplies $ [ ]
Total Direct Costs $ [ ]
Indirect Costs
([ ]MTDC) $ [ ]
Total $ [ ]
</TABLE>
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