Research Agreement - Boston University and Sequenom Inc.
Agreement
between
Community Technology Fund, Office of Technology Transfer of Community
Technology Fund and Center for Advanced Biotechnology (BU) represented by Matt
Burns, Heather Tullar, Ashley Stevens and Charles Cantor.
and
Sequenom, San Diego, CA and Sequenom GmbH, Germany represented by Hubert
Koster.
1) The patents *** will be moved from the "Field of Use Limited
License" category to the Exclusive License category, as marked in Exhibit A.
2) As a precondition of Sequenom submitting payment of all retroactive and
future patent costs according to Section 3, BU will supply to Sequenom copies of
all relevant documents regarding the patent fillings and prosecution of said
cases.
3) Sequenom agrees that in the case that a license agreement is entered into
between BU and Packard Investments, it will pay retroactive and prospective
patent costs in the amount of *** of the "Field of Use Limited License"
category (estimated through 6/30/97 to be $95,995.00 divided by 2) and 100% of
the "Exclusive License" category (estimated through 6/30/97 to be $80,712.98)
immediately upon receipt of documents described in Section 2.
Should the License Agreement between BU and Packard not be fully executed
within ten (10) days of this Letter of Agreement, Sequenom agrees to pay the
full cost for retroactive and future patent costs for both the "Field of Use
Limited License" category and the "Exclusive License" category as previously
described. This payment is due immediately upon both delivery of the documents
described in Section 2 and notification of the canceling of the proposed License
Agreement between BU and Packard.
BU will make a good faith effort to recover a pro rata share of previously
incurred costs for the "Field of Use Limited License" category in future license
agreements and, if successful, will reimburse Sequenom the pro rata share.
4) The Sponsored Research Agreement will be continued from 9/15/96 through
9/14/98 with payments as listed in the letter from Sequenom dated 9/16/97
attached hereto as Exhibit B.
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
<PAGE>
5) The License Agreement between BU and Sequenom dated 6/1/96 will cover
inventions and patents describing developments in the laboratory of Dr. Charles
Cantor for the duration of the Sponsored Research Agreement in the field of
***
*** This will be clarified by an addendum to the existing license
agreement .
6) The scientific program of collaboration between Sequenom and BU will be
formulated and continuously updated by the Principal Investigator and Sequenom.
Agreed in Boston on October 8, 1997
/s/ illegible
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Sequenom
/s/ illegible
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Community Technology Fund
/s/ illegible
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Office of Technology Transfer
/s/ illegible
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Center for Advanced Biotechnology
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
<PAGE>
Invoice
-------
Licensee Sequenom
Bill Prepared 8/27/97
Law Firm Baker & Botts
Agreement Date 7/1/96
Limited Field-of-Use License
BU Case Docket Services Amount
------- ------ -------- ------
92-42 0107 Inception - 5/15/97 $ 14,597.25
92-42 0124 Inception - 5/15/97 $ 24,354.30
92-42 0162 Inception - 5/15/97 $ 9,384.62
92-42 0168 Inception - 5/15/97 $ 28,923.45
92-42B 0186 Inception - 5/15/97 $ 14,677.37
92-42 0187 Inception - 5/15/97 $ 17,105.36
92-42 0215 Inception - 5/15/97 $ 6,347.31
92-42 0217 Inception - 5/15/97 $ 2,679.20
92-42B 0228 Inception - 5/15/97 $ 8,283.84
92-42 0325 Inception - 5/15/97 $ 1,245.45
---------------------------- ----------------------- ------------------
Total $ 127,598.15
Exclusive License
92-42C 0167 Inception - 5/15/97 $ 22,618.71
92-42C 0216 Inception - 5/15/97 $ 2,672.64
92-42C 0276 Inception - 5/15/97 $ 10,010.08
92-42C 0302 Inception - 5/15/97 $ 13,808.90
--------------------------- ---------------------------- ----------------------- ------------------
Total $ 49,110.33
Grand Total $ 176,708.48
----------- ------------------
Payments Received 6/27/97 $ (19,330.05)
----------------------------
7/27/97 $ (19,330.05)
------------------
Balance Due $ 138,048.38
<PAGE>
September 16, 1997
Charles Cantor
Center for Advanced Biotechnology
Boston University
36 Cummington Street
Boston, MA 02215
Dear Charles,
It was a pleasure having you at our facility in San Diego.
This letter comprises in principle our intention to move forward on a
renegotiated Research Agreement in return for a "field of use" on related
technology developed in your lab. It includes our budget proposal for the
retroactive period including September 1996 through September 1997 and outlines
the budget for September 1997 through September 1998.
The following budget proposals include consideration of the August 29, 1997 memo
from Matt Barber regarding the lab budgets for 9/96 - 9/97 and 9/97 - 9/98.
1996 - 1997 Budget
------------------
Our attached budget proposal for 1996 - 1997 of $112,454 though less than your
budget of $130,903 is a significant increase from our original proposal of
$81,657. The salary of the lab manager and reduced supplies are the material
items reduced from your proposal.
1997 - 1998 Budget
------------------
Budget restraints require us to reduce your 1997 - 1998 budget proposal. The
major items deleted include reducing Dr. Cantor's time reduced to 20% and
deleting the Lab Manager and grad student. The supplies and other expenses were
also reduced by 45%. The adjusted budget total of $219,013 still represents a
major investment over the coming year.
We hope you view this proposal as a significant commitment to continue our
valuable relationship with Boston University.
Best Regards,
/s/ Steve Zaniboni
Steve Zaniboni
Vice President, Finance & Administration
CC: H. Koster
M. Barber
<PAGE>
Sequenom,
Boston University Lab Budget
September 1996 to September 1997
Salary F.T.E.
C. Cantor - academic $155,687 10% $ 15,667
C. Cantor - summer $ 53,000 10% $ 5,300
J. Cantor - annual $ 32,887 76% $ 5,100
A. Hatch - annual $ 25,000 20% $ 5,101
C. Smith - academic $ 84,558 4.5% $ 3,805
C. Smith - summer $ 28,600 4.5% $ 1,287
Secretary $ 24,312 4.8% $ 1,167
Total Salary $ 37,327
Fringe
23.6% rate $ 6,809
Total Salary & Fringe $ 46,138
Direct Costs
Supplies
Chemicals $ 3,738
Biochemicals $ 4,486
Radioscopes $ 2,243
Photographic $ 748
Disposables $ 6,230
$ 17,444
Other Expenses
Communications $ 908
Equip. Maintenance $ 1,997
Publications $ 320
Journals & books $ 160
Miscellaneous $ 171
$ 3,557
Total Direct Costs $ 67,137
Indirect Costs 67.5% 45,317
Total Direct and Indirect Costs $112,454
<PAGE>
Sequenom,
Boston University Lab Budget
September 1996 to September 1997
Salary F.T.E
C. Cantor - academic $162,533 20% $ 32,507
C. Cantor - summer $ 55,120 20% $ 11,024
J. Graber - annual $ 5,236 75% $ 5,236
C. Smith - academic $ 87,707 4.5% $ 3,947
C. Smith - summer $ 29,744 4.5% $ 1,338
Post Doc $ 28,747 100% $ 28,747
Secretary $ 24,312 5.5% $ 1,337
Total Salary $ 84,136
Fringe
23.8% rate $ 19,858
Total Salary & Fringe $ 103,992
Direct Coals
Suppliers
Chemicals $ 5,294
Biochemicals $ 6,353
Racfiosdopas $ 3,176
Photographic $ 1,059
Disposables $ 5,294
$ 21,175
Other Expenses
Communications $ 1,426
Equip. Maintenance $ 3,137
Publications $ 503
Journals & books $ 252
Miscellaneous $ 288
$ 5,587
Total Direct Costs $ 130,754
Indirect Costs 67.5% 88,259
Total Direct and Indirect Costs $ 219,013