License Agreement - Stanford University and Transgenomic Inc.
AGREEMENT
Effective as of August 20, 1997 ("Effective Date"), THE BOARD OF TRUSTEES OF THE
LELAND STANFORD JUNIOR UNIVERSITY, a body having corporate powers under the laws
of the State of California ("STANFORD"), and TRANSGENOMIC, INC., a Delaware
corporation having a principal place of business at 5600 South 42nd Street,
Omaha, Nebraska 68107 ("LICENSEE"), agree as follows:
1. BACKGROUND
1.1 STANFORD has an assignment of "Detection of DNA Heteroduplices by
Denaturing High Performance Liquid Chromatography" from the laboratory
of Dr. Peter Oefner and Dr. Peter Underhill, as described in Stanford
Docket S95-024, ("Invention(s)") and any Licensed Patent(s), as
hereinafter defined.
1.2 STANFORD desires to have the Invention(s) perfected and marketed at the
earliest possible time in order that products resulting therefrom may
be available for public use and benefit.
1.3 LICENSEE desires a license under said Invention(s) and Licensed
Patent(s) for commercialization of this technology.
1.4 The Invention(s) were made in the course of research supported by the
National Institutes of Health.
2. DEFINITIONS
2.1 "Invention(s)" means any invention disclosed in Stanford Docket
S95-024.
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2.2 "Licensed Patent(s)" means STANFORD's U.S. Patent Application, Serial
Number 512,681 filed August 8, 1995 and any divisions, continuations,
continuations-in-part, reexaminations or reissues of any such patent
applications or patents.
2.3 "Licensed Field of Use" is for the detection of nucleic acid
heteroduplex molecules.
3. GRANT
3.1 STANFORD hereby grants and LICENSEE hereby accepts a non-exclusive
license to the Invention(s) and to the Licensed Patents in the Licensed
Field of Use.
3.2 Said license of Paragraph 3.1 shall commence on August 20, 1997 and
continue until expiration of the last to expire of Licensed Patent(s).
3.3 STANFORD acknowledges that future inventions and discoveries relating
to this technology may be useful to LICENSEE in its development and/or
commercialization process. Subject to STANFORD's obligations to
sponsored research, STANFORD will, as soon as practicable, bring any
such new invention and discovery related to this technology to
LICENSEE's attention and provide LICENSEE a reasonable opportunity to
negotiate a license therefor.
4. GOVERNMENT RIGHTS
This Agreement is subject to all of the terms and conditions of Title 35 United
States Code Sections 200 through 204, and LICENSEE agrees to take all reasonable
action necessary on its part as licensee to enable STANFORD to satisfy its
obligation thereunder, relating to Invention(s).
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5. REPORTS
PROGRESS REPORT -- On or before August 25 of each year, beginning August 25,
1998, during the term of the Agreement, LICENSEE shall make a written annual
report to STANFORD covering the preceding year ending July 31, regarding the
progress of LICENSEE toward commercial use of the Invention(s) and Licensed
Patent(s). Such report shall include, as a minimum, information sufficient to
enable STANFORD to satisfy reporting requirements of the U.S. Government and for
STANFORD to ascertain progress by LICENSEE toward commercializing the
Invention(s) and Licensed Patent(s).
6. ROYALTIES
6.1 LICENSEE agrees to pay to STANFORD a nonrefundable license issue
royalty of ** upon signing this Agreement. Such payment is due August
25, 1997.
6.2 On August 25, 1998 and each August 25 thereafter, LICENSEE agrees to
pay to STANFORD annual royalty payments of ** each year.
6.3 LICENSEE will also pay to STANFORD a one time, nonrefundable patent
issue royalty of ** after the issuance of a Licensed Patent(s). Such
payment is due within thirty (30) days after notification from
STANFORD.
7. NEGATION OF WARRANTIES
7.1 Nothing in this Agreement is or shall be construed as:
(a) A warranty or representation by STANFORD as to the
validity or scope of any Licensed Patent(s);
(b) A warranty or representation that anything made,
used, sold, or otherwise disposed of under any
license granted in this Agreement is or will be free
from infringement of patents, copyrights, and other
rights of third parties;
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(c) An obligation to bring or prosecute actions or suits
against third parties for infringement; or
(d) Granting by implication, estoppel, or otherwise any
licenses or rights under patents or other rights of
STANFORD or other persons other than to the
Invention(s) and Licensed Patent(s), regardless of
whether such patents or other rights are dominant or
subordinate to any Licensed Patent(s).
7.2 Except as expressly set forth in this Agreement, STANFORD MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS
OR IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF
THE LICENSED PATENT(S) WILL NOT INFRINGE ANY PATENT, COPYRIGHT,
TRADEMARK, OR OTHER RIGHTS OR ANY OTHER EXPRESS OR IMPLIED WARRANTIES.
7.3 LICENSEE agrees that nothing in this Agreement grants LICENSEE any
express or implied license or right under or to:
(a) U.S. Patent No. 4,237,224, "Process for Producing
Biologically Functional Molecular Chimeras," U.S.
Patent No. 4,468,464 and U.S. Patent No. 4,740,470,
both entitled, "Biologically Functional Molecular
Chimeras" (collectively known as the Cohen/Boyer
patents) or reissues thereof; or
(b) U.S. Patent 4,656,134 "Amplification of Eucaryotic
Genes" or any patent application corresponding
thereto.
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8. INDEMNITY
8.1 LICENSEE agrees to indemnify, hold harmless, and defend STANFORD and
Stanford Health Services and their respective trustees, officers,
employees, students, and agents against any and all claims for death,
illness, personal injury, property damage, and improper business
practices arising out of the manufacture, use, sale, or other
disposition of Invention(s), Licensed Patent(s), or Licensed Product(s)
by LICENSEE, or their customers.
8.2 STANFORD shall not be liable for any indirect, special, consequential,
or other damages whatsoever, whenever grounded in tort (including
negligence), strict liability, contract or otherwise. STANFORD shall
not have any responsibilities or liabilities whatsoever with respect to
Licensed Product(s).
8.3 LICENSEE shall at all times comply, through insurance or
self-insurance, with all statutory workers' compensation and employers'
liability requirements covering any and all employees with respect to
activities performed under this Agreement.
8.4 In addition to the foregoing, LICENSEE shall maintain, during the term
of this Agreement, Comprehensive General Liability Insurance, including
Products Liability Insurance, with reputable and financially secure
insurance carrier(s) to cover the activities of LICENSEE. Such
insurance shall provide minimum limits of liability of Two Million
Dollars ($2,000,000) and shall include STANFORD, Stanford Health
Services, their trustees, directors, officers, employees, students, and
agents as additional insureds. Such insurance shall be written to cover
claims incurred, discovered, manifested, or made during or after the
expiration of this Agreement. At STANFORD's request, LICENSEE shall
furnish a Certificate of Insurance evidencing primary coverage and
requiring thirty
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(30) days prior written notice of cancellation or material change to
STANFORD. LICENSEE shall advise STANFORD, in writing, that it maintains
excess liability coverage (following form) over primary insurance for
at least the minimum limits set forth above. All such insurance of
LICENSEE shall be primary coverage; insurance of STANFORD or Stanford
Health Services shall be excess and noncontributory.
9. STANFORD NAMES AND MARKS
9.1 LICENSEE agrees not to identify STANFORD in any promotional advertising
or other promotional materials to be disseminated to the public or any
portion thereof or to use the name of any STANFORD faculty member,
employee, or student or any trademark, service mark, trade name, or
symbol of STANFORD or Stanford Health Services, or that is associated
with either of them, without STANFORD's prior written consent.
9.2 LICENSEE with respect to sales, marketing, advertising or promotional
materials disseminated concerning the technology covered by the
Invention(s) and Licensed Patent(s) shall have the right to refer to
and use the name, number(s), and owner(s) of the Invention(s) and
Licensed Patent(s), as referred to in Paragraphs 2.1 and 2.2. LICENSEE
may optionally use the following citation, and LICENSEE agrees when
using said citation for sales, marketing, advertising, or promotional
materials to use the entire citation written as follows:
Oefner, Peter J., and Underhill, Peter A. (1995). Comparative DNA
sequencing by denaturing high-performance liquid chromatography
(DHPLC), Am. J. Hum. Genet. 57 {Suppl.}, A266.
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10. INFRINGEMENT BY OTHERS: PROTECTION OF PATENTS
During the Non-exclusive period of this Agreement, STANFORD and LICENSEE agree
to discuss the appropriate course of action to be taken should either party be
aware of any suspected infringement of any Licensed Patent(s) by a third party.
11. SUBLICENSE(S)
Purchasers of equipment, columns, reagents and software from
LICENSEE for use in the Licensed Field of Use shall be deemed to have an implied
license under the Licensed Patent(s) to practice the inventions thereof and
shall be free from any suit brought based on the Licensed Patent(s). Otherwise,
LICENSEE may not grant sublicense(s).
12. TERMINATION
12.1 LICENSEE may terminate this Agreement by giving STANFORD notice in
writing at least thirty (30) days in advance of the effective date of
termination selected by LICENSEE.
12.2 STANFORD may terminate this Agreement if LICENSEE:
(a) Is in default in payment of royalty or providing of
reports;
(b) Is in breach of any provision hereof; or
(c) Provides any false report;
and LICENSEE fails to remedy any such default, breach, or false report
within ninety (90) days after written notice thereof by STANFORD.
12.3 Surviving any termination are:
(a) Any cause of action or claim of LICENSEE or STANFORD,
accrued or to accrue, because of any breach or default by
the other party; and
(b) The provisions of Articles 7 and 8.
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13. ASSIGNMENT
This Agreement may not be assigned except to a successor in business of all or
substantially all the assets of LICENSEE.
14. ARBITRATION
14.1 Any controversy arising under or related to this Agreement, and any
disputed claim by either party against the other under this Agreement
excluding any dispute relating to patent validity or infringement
arising under this Agreement, shall be settled by arbitration in
accordance with the Commercial Arbitration Rules of the American
Arbitration Association.
14.2 Upon request by either party, arbitration will be by a third party
arbitrator mutually agreed upon in writing by LICENSEE and STANFORD
within thirty (30) days of such arbitration request. Judgment upon the
award rendered by the arbitrator shall be final and nonappealable and
may be entered in any court having jurisdiction thereof.
14.3 The parties shall be entitled to discovery in like manner as if the
arbitration were a civil suit in the California Superior Court. The
Arbitrator may limit the scope, time and/or issues involved in
discovery.
14.4 Any arbitration shall be held at Stanford, California, unless the
parties hereto mutually agree in writing to another place.
15. NOTICES
All notices under this Agreement shall be deemed to have been fully given when
done in writing and deposited in the United States mail, registered or
certified, and addressed as follows:
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To STANFORD: Office of Technology Licensing
Stanford University
900 Welch Road, Suite 350
Palo Alto, CA 94304-1850
Phone: (650) 723-0651
Fax: (650) 725-7295
Attention: Director
To LICENSEE: Transgenomic, Inc.
5600 South 42nd Street
Omaha, Nebraska 68107
Phone: (402) 738-5480
Fax: (402) 733-1264
Attention: P. Thomas Pogge
General Counsel
Either party may change its address upon written notice to the other party.
16. WAIVER
None of the terms of this Agreement can be waived except by the written consent
of the party waiving compliance.
17. APPLICABLE LAW
This Agreement shall be governed by the laws of the State of California
applicable to agreements negotiated, executed and performed wholly within
California.
This Agreement constitutes the entire agreement between LICENSEE and STANFORD
and supersedes all prior communications, understandings and agreements with
respect to all matters covered in the Agreement.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement in duplicate
originals by their duly authorized officers or representatives.
THE BOARD OF TRUSTEES OF THE LELAND
STANFORD JUNIOR UNIVERSITY
Signature /s/ Katharine Ku
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Name Katharine Ku
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Title Director, Technology Licensing
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Date August 25, 1997
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LICENSEE
Signature /s/ Collin D'Silva
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Name Collin D'Silva
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Title Chief Executive Officer
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Date August 28, 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.