License Agreement - Sarasep Inc., Prof. Dr. Gunthern Bonn, Dr. Christian Huber and Dr. Peter Oefner
LICENSE AGREEMENT
This agreement, entered into and effective as of the first day of
September, 1994, by and between Sarasep, Inc., a corporation of the state of
Nevada, having a place of business at 1600 Wyatt Drive, Suite 10, Santa Clara,
CA 95054 (hereinafter "LICENSEE"), and a group of inventors consisting of Prof.
Dr. Gunther Bonn, Bahnhof Umgebung Nr. 3, A-6170 Zirl, Austria, Dr. Christian
Huber, Ulmenstrasse 65, A-6064 Rum, Austria, and Dr. Peter Oefner,
Unterbergerstrasse 19a/5, A-6020 Innsbruck, Austria, presently at 1300 Oak Creek
Drive, Apartment 221, Palo Alto, California US 94306-2008, inventors represented
by Prof. Dr. Bonn (hereinafter "LICENSOR"). Prof. Dr. Bonn will be the interface
for all contact between LICENSEE AND LICENSOR unless directed otherwise by Dr.
Bonn.
WITNESSETH:
WHEREAS, LICENSOR is the owner of polymer technology and is the owner
of patent applications set forth in Schedule A appended to this Agreement
relating to nonporous, chromatographic, polymer resins;
WHEREAS, LICENSEE wishes to obtain and Licensor is willing to grant a
exclusive, royalty-bearing license under this technology.
NOW, THEREFORE, the parties intending to be legally bound agree as
follows:
ARTICLE 1 - DEFINITIONS
1.01 "TECHNOLOGY RIGHTS" shall mean the technology and/or patents
applications or patents issued from said applications listed in Schedule A, or
as later amended by written agreement of the parties.
1.02 "PRODUCTS" shall mean columns and bulk material listed in Schedule
for the separation and/or solid phase clean-up of DNA, DNA fragments or
oligonucleotides.
1.03 "NET SALES" shall mean the actual gross amount of the invoices
covering all of LICENSEE's sales of PRODUCTS to customers other than affiliates,
less cash discounts and rebates actually given, duties, returns and free
replacements. NET SALES of PRODUCTS used by LICENSEE or AFFILIATES shall be the
highest price paid during the reporting period by another to LICENSEE or any
AFFILIATE for such PRODUCTS. In the event the NEW SALES price of PRODUCTS sold
cannot be reasonably determined, the NET SALES price shall be the cost of
manufacture plus 300% of the cost of manufacture as determined by normal
accounting practices. In the event of sales or transfer to an AFFILIATE for
eventual sales to an end-user or an intermediary, the royalty shall be paid by
LICENSEE based on the NET SALES by the AFFILIATE to the end-user or
intermediary.
1.04 "AFFILIATE" shall mean any entity in which at least forty-nine
percent (49%) of the stock normally entitles to vote for the election of
directors is directly or indirectly owned or controlled by LICENSEE.
ARTICLE 2 - GRANT
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LICENSOR hereby grants to LICENSEE, and LICENSEE hereby accepts,
subject to the terms and conditions set forth in this Agreement, a exclusive
license under the TECHNOLOGY RIGHTS to make use and sell PRODUCTS to LICENSEE's
customers for PRODUCTS purchased from LICENSEE, provided that only to the extent
that LICENSEE has paid royalties due to LICENSOR under this Agreement.
This Agreement is for columns sold to affiliates, users, distributors
or instrument manufacturers or for bulk media sold to affiliates or directly to
HPLC users for DNA separations. Bulk media shall not be sold to column
manufacturers or instrument manufacturers unless by mutual agreement of LICENSEE
AND LICENSOR.
This Agreement covers the sale and distribution of nonporous columns or
media for DNA separations as shown in Schedule A. Sale of HPLC instrumentation
employing said columns or shall require a separate agreement to determine the
terms of royalty payment to LICENSOR. Should LICENSOR or its assigns not pursue
sale and distribution of HPLC instrumentation for DNA separations, it is
understood that LICENSOR shall attempt to negotiate agreement or agreements with
one or more instrument manufacturers for the sale and distribution of HPLC
instrumentation DNA separations using the technology as shown in Schedule A. It
is also understood that LICENSOR shall have the right to negotiate an agreement
with an instrument manufacturer, through mutual agreement of LICENSOR AND
LICENSEE.
ARTICLE 3 - MARKING
LICENSEE shall mark and label product literature or packages for the
PRODUCTS with the following legend:
This product is subject to one or more US or World patent applications.
When patent applications have been granted the LICENSEE shall mark and
label product literature or packages for the PRODUCTS with the following legend
where x denotes the patent number.
The Purchaser is entitled to utilize this product under Patent Number x
for the separation of DNA fragments.
In addition, all literature, product packages or performance sheets
shall carry relevant citations of the inventors. The list of citations is shown
in Schedule A and shall be updated by mutual agreement of LICENSOR and LICENSEE.
ARTICLE 4 - PAYMENTS AND REPORTS
4.01 For the rights granted under this Agreement, LICENSEE shall pay to
LICENSOR as licensing fee, ** for every column for the first ** columns sold to
users. LICENSOR shall provide packing material for said columns. The first
material for packing columns shall be available starting January 9, 1995. The
Licensee fee shall be paid quarterly for only those columns that have been
actually sold.
4.02 For the rights granted under this Agreement, LICENSEE shall pay to
LICENSOR as a royalty ** of NET SALES of columns and bulk media sold beyond the
first ** columns. A minimum royalty payment of ** per year shall be paid on a
quarterly basis. Royalty payments shall be effective starting January 1, 1995,
but amount of royalty payment shall be deducted from licensing fee until the
first ** columns have been sold.
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4.03 LICENSEE shall make written reports to LICENSOR within sixty (60)
days after the end of each calendar quarter during the term of this Agreement.
Each report shall state the net sales of the PRODUCT during the calendar
quarter. The report shall also set forth the manner in which the license fee and
royalty has been computed. The license fee and royalty for PRODUCTS sold during
each calendar quarter shall be due and payable with the report for that quarter.
4.04 LICENSEE shall maintain sufficiently detailed book and records for
the PRODUCT sold or used by LICENSEE and AFFILIATES to enable LICENSOR to verify
the payments made to LICENSOR by LICENSEE. LICENSEE shall permit an accountant,
appointed by LICENSOR and reasonably acceptable to LICENSEE, to inspect, at
reasonable times and upon reasonable notice, but not to exceed once per year,
the book and records of licensee relating to the sale of PRODUCT. The accountant
shall report to LICENSOR only whether the amounts reported and paid to LICENSOR
by LICENSEE are accurate. In no event, however, shall an examination of
LICENSEE's book be made for a period prior to three (3) years before the date
such audit is requested by LICENSOR. In the event the accountant reports to
LICENSOR that LICENSEE has underpaid the amounts due to LICENSOR by more than
ten percent (10%), then LICENSEE shall bear the costs of such audit.
4.05 LICENSEE shall pay all reasonable costs for US and Europe patent
costs and shall make reasonable efforts to argue the prosecution of the
application to the appropriate patent examiners. LICENSEE shall have the right
to pursue patent rights in any other country that LICENSEE determines to be
commercially in the best interest of LICENSEE. LICENSEE shall inform LICENSOR of
all steps of prosecution and defense of the patent applications or patents
thereof. Should LICENSEE intend to abandon or assign any application or any part
thereof, LICENSEE will provide the possibility for LICENSOR to acquire said
applications or parts thereof. LICENSOR shall be responsible for the
reassignment costs. LICENSOR will retain a non-exclusive license.
ARTICLE 5 - PATENTS AND TECHNOLOGY
5.01 LICENSOR shall provide reasonable support to LICENSEE of technical
information and other information to allow LICENSEE to argue the prosecution of
the various patent applications before the patent examiners.
5.02 LICENSEE shall pay for patents costs as set forth in Article 4
above.
5.03 LICENSOR has assigned patent rights to LICENSEE in accordance to
document signed prior to US patent application and World PCT patent application
and specific country and Europe applications.
5.04 LICENSOR AND LICENSEE both agree to keep confidential synthesis or
manufacturing procedures except to the extent required in journal publications
or patent applications. LICENSOR and LICENSEE both agree that synthesis
descriptions in journals or other publications shall be stated in general terms
and not state key manufacturing details.
ARTICLE 6 - TERM AND TERMINATION
6.01 In the event that LICENSEE is able to obtain European and/or US
patent rights, this Agreement shall remain in effect for twenty (20) years. In
the event that LICENSEE is not able to obtain either European or US patent
rights, this Agreement shall be in effect for five (5) years.
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6.02 LICENSEE may terminate the Agreement and the licenses granted
under this Agreement by giving LICENSOR three (3) months prior written notice of
LICENSEE's intention to terminate.
6.03 LICENSOR, at it discretion, may terminate the Agreement for one of
the following reasons by giving notice to LICENSEE:
(1) If there is a proceeding commenced against LICENSEE under any
bankruptcy act or under any present or future law for relief of debtors, or a
receiver or trustee is appointed for LICENSEE or LICENSEE's asset, or an action
or proceeding is commenced to dissolve LICENSEE, or LICENSEE makes an assignment
for the benefit of creditors or ceases to carry on business for any reason; or
(2) If LICENSEE fails to perform or observe any of the agreements,
provisions, duties or obligations under the Agreement such as the timely
reporting and payment of royalties, and does not remedy the failure within
thirty (30) days after receipt of notice from LICENSOR, provided, however, that
repeated failures by LICENSEE shall constitute an independent basis for LICENSOR
to terminate this Agreement.
6.04 The termination of the Agreement shall not prejudice any rights or
remedies which shall have accrued to either party prior to the date of such
termination.
6.05 LICENSOR shall keep confidential all technology manufacturing
processes. Confidentiality shall survive this agreement for a period of ten (10)
years beyond termination of this agreement.
ARTICLE 7 - ASSIGNMENT
This Agreement and the right granted in this Agreement are personal to
LICENSEE. LICENSEE shall have the right to assign rights of this Agreement
provided that assignee assumes all rights and responsibilities of the Agreement.
ARTICLE 8 - NOTICES
Any notice required or provided for by the terms of this Agreement
shall be in writing. All notices shall be sent by first class mail, postage
prepaid, to the business address of the party to be given notice. The business
addresses of the parties shall be as follows:
Sarsep, Inc. Prof. Dr. Gunther Bonn
1600 Wyatt Dr., Suite 10 Bahnhof Umgebung Nr. 3
Santa Clara, CA 95054 A-6170 Zirl
USA Austria
Attn: President
Either party may change its business address by notice to the other party.
ARTICLE 9 _- AGREEMENT
This Agreement is full and complete and replaces Marketing Agreement
dated November 27, 1993.
ARTICLE 10 - MISCELLANEOUS
10.01 This Agreement shall be construed and the legal relations between
the parties determined in accordance with the laws of California.
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10.02. Neither party shall be deemed to have waived any of its rights
under this Agreement by failure to take any actin to enforce any of its rights
at any particular time.
10.03 This Agreement is the entire Agreement between the parties and
there are no other terms, obligation, covenants, representation, statements or
conditions, oral or otherwise, of any kind. This Agreement may not be changed,
modified, or amended in whole or in part except by written document signed by
the duly-authorized officers of the parties.
10.04 The provisions of the Agreement shall be deemed separable. A
holding by a court of competent jurisdiction that any provision of this
Agreement which is not material to the consideration provided by either party is
void or unenforceable shall not affect the validity or enforceability of the
remaining provisions of the Agreement.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed in duplicate to be effective as of September 1, 1994.
SARASEP, INC. LICENSOR
By /s/ Douglas T. Gjerde By /s/ Gunther Bonn
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Douglas T. Gjerde, President Prof. Dr. Gunther Bonn
Date 1-5-95 Date 6.2.1995
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By /s/ Christian Huber
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Dr. Christian Huber
Date January 6th, 1995
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By /s/ Dr. Peter Oefner
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Dr. Peter Oefner
Date January 6th, 1995
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AGREEMENT
This Agreement is made and entered into this 14th day of March, 1997.
This Agreement is intended to amend and modify Original Agreement dated
September 1, 1994 by and among Sarsep, Inc., a corporation, herein and therein
referred to as "Licensee" and a group of Inventors consisting of Prof. Dr.
Gunther Bonn, Dr. Christian Huber, and Dr. Peter Oefner. Original Agreement
sates that the inventors are represented by Prof. Dr. Gunther Bonn herein and
therein referred to as "Licensor." Prof. Dr. Bonn will be the interface for
contact between the Licensor and Licensee. All definitions in the original
Agreement are incorporated herein.
WHEREAS, the Original Agreement among the parties provided in Article 2
that the Licensee with the mutual agreement of the Licensor would have the right
to negotiate an agreement with an equipment manufacturer, and
WHEREAS, the Licensee wishes to develop and market the equipment to be
used with the DNA Technology Rights and the Products and the Licensor is
agreeable to granting the Licensee this right.
NOW THEREFORE based upon the mutual covenants and considerations
contained herein, the parties agree as follows:
1. Licensee shall have the exclusive right to develop and manufacture
the instrumentation necessary to use the DNA Products and the Technology Rights.
The Licensor agrees to work exclusively with the licensee on the method of use
of the products and the Technology rights and the Licensor in this regard agrees
not to disclose method of use, proprietary information or competitive
information to any third party.
2. Licensor agrees to work diligently with Licensee in the development
and application of instrumentation for the Technology Rights and Products.
3. The parties further agree that ** will be paid with respect to the
instrumentation but the minimum royalty fee set out in paragraph 4.02 shall be
increased to ** per year payable at the rate of ** per quarter. The parties
understand and agree that the Licensee will form a new corporation which will
acquire the Licensee's interest in the Agreement. The principal purpose of the
new corporation will be to promote and develop DNA separation technology. The
new minimum license fee shall begin on the first quarterly payment date
following the funding of the new corporation with a minimum of One Million Five
Hundred Thousand Dollars ($1,500,000.00) of capital. Licensee shall have 18
months from date of this Agreement to complete funding of the new corporation.
If funding is not completed within 18 months, then this Agreement shall expire
but the Original Agreement shall continue.
4. The parties understand and agree that the inventors use
instrumentation utilizing said DNA separation technology in the course of
performing their research. The inventors shall have the right to develop,
assemble and use instrumentation for the purpose of performing research and
developing new methods and new instrumentation.
5. In all other respects, the original Agreement is confirmed and
ratified.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed to be effective as of February 1, 1997.
SARASEP, INC. LICENSOR
By /s/ Douglas T. Gjerde By /s/ Gunther Bonn
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Douglas T. Gjerde, Ph.D. President Prof. Dr. Gunther Bonn
Date 3-14-97 Date
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By /s/ Dr. Peter Oefner
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Dr. Peter Oefner
Date 3-29-97
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By /s/ Dr. Christian Huber
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Dr. Christian Huber
Date April 7, 1997
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** Certain confidential portions of this Exhibit were omitted by means of
redacting a portion of the text indicated by two double-stricken through
asterisks "**". This Exhibit has been filed separately with the Secretary of the
Commission without the ** pursuant to the Registrant's Application Requesting
Confidential Treatment under Rule 406 of the Securities Act.
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