License Agreement - Molecular Chimerics Corp and Invitrogen Corp.
LICENSE AGREEMENT
This Agreement made this 10 day of May, 1990 by and between Molecular
Chimerics Corporation, a Wisconsin corporation doing business at 3802 Packers
Avenue, Madison, Wisconsin 53704 (hereinafter referred to as "LICENSOR"), and
Invitrogen, a California corporation having offices at 11588 Sorrento Valley
Road #20, San Diego, California 92121 (hereinafter referred to as "LICENSEE").
WHEREAS, LICENSOR has developed a proprietary cloning system for cloning
the products of PCR (polymerase chain reaction) procedures and maintains the
proprietary rights to this system;
WHEREAS, LICENSOR desires to have the technology incorporated in their
products sold throughout the world and recognizes that a successful marketing
effort requires advertising, manufacturing, warehousing, sales, distribution,
and customer service capability;
WHEREAS, LICENSEE manufactures, sells, and services products for molecular
biology research and has an established world-wide sales network and
distribution network; and
WHEREAS, LICENSEE desires to be licensed to sell the products which
incorporate the propietary cloning system developed by LICENSOR;
Therefore, in consideration of the mutual covenants contained herein,
LICENSOR and LICENSEE agree as follows:
ARTICLE 1 - DEFINITIONS
The following terms, when used in this Agreement, shall have the following
meanings:
1.1 "TA cloning" shall mean the proprietary direct cloning system
developed by LICENSOR for cloning the products of PCR processes including, but
not limited to, the preparation of vectors with a single thymidine overhang on
both ends to prevent self ligation and to accept DNA that has been synthesized
by Taq polymerase leaving a single adenine overhang.
1.2 "Know-how" and "trade secret" shall mean all information presently
known to LICENSOR which is necessary to manufacture and service kits for direct
TA cloning of PCR amplified DNA.
1.3 "Kit" shall mean a combination of reagents, enzymes, prepared vectors,
and instructions for TA cloning PCR amplified DNA directly without the addition
of linkers thereto.
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1.4 "Patent" shall mean any patents currently being considered, written,
or applied for based on the composition, process for manufacture, or
applications of the TA cloning technology.
1.5 "Net Domestic Sales" shall mean the revenues generated by sales of
LICENSOR's product in the United States less any legitimate refunds, returns,
or uncollectible bills derived from or resulting from sales of the kit.
1.6 "Net Foreign Sales" shall mean the revenues generated by sales of
LICENSOR's product outside of the United States less any legitimate refunds,
returns, or uncollectible bills derived from or resulting from the sales of the
kit.
ARTICLE 2 - GRANT OF RIGHTS
LICENSOR hereby grants to LICENSEE a field-of-use exclusive license to use
the TA cloning technology including the know-how and trade secrets appurtenant
thereto for the manufacture and sale of TA cloning products and kits anywhere in
the world. The field of use for which the license is granted is for kits and
reagents for the cloning of PCR amplified DNA products, but specifically
excluding reagents and kits specifically designed for sequencing, as opposed
to cloning, procedures and specifically excluding reagents and kits designed
for use with phage M13 vectors.
LICENSOR specifically reserves the right to
*
If a
patent is filed or obtained through the procedure described in this Agreement,
such patent shall also be subject to the same field-of-use exclusive license
granted herein to the know-how and trade secret TA cloning technology.
ARTICLE 3 - PAYMENTS
3.1 Payment Schedule.
In consideration for the delivery of the know-how and trade secret
information relating to TA cloning to LICENSEE, and the grant of right to
manufacture and sell kits for TA cloning as described above, LICENSEE will
pay an initial licensing fee to LICENSOR of * , due and
payable in four (4) installments, * upon
delivery of the trade secret and know-how information to LICENSEE, and an
additional amount equal to * * due each successive
thirty (30) days thereafter. In addition, LICENSEE shall pay to LICENSOR a
royalty equal to * of net domestic sales of any reagents or kits
incorporating the TA cloning technology as described herein and *
* foreign sales of such regents or kits. The initial
licensing fee shall not be applied against subsequent royalty obligations.
If a patent is obtained covering the TA
* "Confidential portion has been omitted and filed separately with the
Commission."
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cloning technology, the royalty rate shall be * * of net
domestics sales and * * of net foreign sales of any such
reagents or kits during the term of said patent.
3.2 Payment of Royalties.
Royalty payments shall be made quarterly within sixty (60) days of the end
of each calendar quarter of the license.
3.3 Royalty Reports.
LICENSEE shall furnish to LICENSOR a written report stating the quantity
and description of kits sold by LICENSEE and the nature of sales, domestic or
foreign, and the returns, refunds, and uncollected bills resulting from or
derived from sales of said kits and such reports shall accompany each royalty
payment delivered from LICENSEE to LICENSOR.
ARTICLE 4 - PATENT
LICENSEE, at its discretion, may request LICENSOR to file an
application for a patent in the United Sates or Canada on the TA cloning
technology. If LICENSEE desires that such a patent be filed, LICENSEE agrees
to pay to LICENSOR the reasonable costs of their attorney's fees and expenses
in procuring said patent, said fees to be credited against royalties
otherwise due from LICENSEE to LICENSOR. If a patent actually issues in the
United States covering this product, the royalty amount for all kits covered
by the claims of any such U.S. patent owed by LICENSEE to LICENSOR shall be
adjusted as per Article 3 during the term of such patent.
ARTICLE 5 - DUTIES OF LICENSOR
LICENSOR agrees to inform LICENSEE in a confidential basis of any
innovations or improvements to TA cloning that could improve the kit or would
result in additional products. Should any additional products result from the
research conducted by LICENSOR relating to TA cloning in the field of use
described herein, LICENSOR shall grant to LICENSEE the right to negotiate in
good faith the right to market those products.
ARTICLE 6 - ATTRIBUTION
LICENSOR reserves the right to and intends to submit for publication a
scientific paper describing the TA cloning technology. If such a paper is
published, LICENSEE agrees, upon the written request of LICENSOR, to include a
citation to the published paper in any printed advertisements or printed
promotional pieces which LICENSEE may choose to print about its reagents or kits
for the TA cloning technology.
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* "CONFIDENTIAL PORTION HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE COMMISSION."
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ARTICLE 7 - PATENTS TO OTHERS
LICENSOR expressly disclaims any warranty, express or implied, as to
whether the making, using or selling of reagents and kits using the TA
cloning technology might infringe any patents owned by any other entities.
ARTICLE 8 - TERM AND TERMINATION
8.1 Term
The term of this Agreement shall commence as of the date thereof and shall
expire on the tenth anniversary of the date hereof.
8.2 Termination
This Agreement may be terminated by either party effective immediately upon
written notice if:
(a) The other party has committed a material breach of the terms and
provisions of this Agreement, unless such breach has been cured within
thirty (30) days following written notice of said breach.
(b) The other party dissolves or liquidates, makes a general
assignment for the benefit of creditors, files a voluntary petition under
the federal estate bankruptcy or insolvency laws, or has filed against it a
petition which is not dismissed within ninety (90) days after filing.
8.3 Effects of Termination
Upon the termination or expiration of this Agreement the obligations of
LICENSEE and LICENSOR shall immediately terminate provided that LICENSEE shall
have the right to continue to sell kits and components of kits as described
herein.
ARTICLE 9 - RELATIONSHIP OF THE PARTIES
Each party shall act as an independent contractor in carrying out its
obligations under this Agreement. Nothing contained in this Agreement shall
be construed to imply a joint venture, partnership, or a principal-agent
relationship between the parties, and neither party by virtue of the
Agreement shall have the right, power, or authority to act or create any
obligation, express or implied, on behalf of the other party. This Agreement
shall not be construed to create rights, express or implied, on behalf of or
for the use of any party aside from LICENSEE and LICENSOR.
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* "CONFIDENTIAL PORTION HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE COMMISSION."
<PAGE>
ARTICLE 10 - ENTIRE AGREEMENT
This Agreement constitutes the entire agreement between the parties and
supersedes all written, oral or prior agreements and understandings. This
Agreement shall be construed in accordance with the laws of the State of
Wisconsin.
LICENSOR:
Molecular Chimerics Corporation
By: /s/ David Mead
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Title: Research Director
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LICENSEE:
Invitrogen
By: [Illegible] 5/30/90
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Title: President
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