License Agreement - Johns Hopkins University and Sequenom Inc.
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement") dated as of the 3rd day of July,
1997 (the "Effective Date"), is made by and between The Johns Hopkins
University, a corporation organized under the laws of Maryland (hereinafter
referred to as ("UNIVERSITY"), and Sequenom, Inc., a corporation organized under
the laws of Delaware (Sequenom, Inc. and any Affiliate of Sequenom, Inc.
hereinafter referred to as "LICENSEE").
WITNESSETH
WHEREAS, UNIVERSITY and LICENSEE have entered into a certain Research
Agreement, effective as of October 1, 1994 (the "Sponsored Research Agreement"),
pursuant to which UNIVERSITY granted to LICENSEE the right to negotiate for an
Exclusive worldwide license to certain technology and a Non-Exclusive license to
certain other technology; and
WHEREAS, UNIVERSITY and LICENSEE wish to set forth the terms of such
licenses;
NOW, THEREFORE, in consideration of the foregoing premises and the mutual
covenants herein contained, the parties hereby agree as follows:
ARTICLE 1
DEFINITIONS
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For purposes of the Agreement, the terms defined in this article shall have
the respective meanings set forth below:
1.1 "Affiliate" shall mean, with respect to any Person, any other Person
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which directly or indirectly controls, is controlled by, or is under common
control with, such Person. A Person shall be regarded as in control of another
Person if it directly or indirectly possesses the power to direct or cause the
direction of the management and policies of the other Person by any means
whatsoever.
1.2 "Curved Filed Reflectron Patent Rights" shall mean the invention
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claimed in U.S. Patent No. 5,464,985, entitled "Non-Linear Field Reflectron."
1.3 "Field" shall mean ***.
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1.4 "First Commercial Sale" shall mean, with respect to any Licensed
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Product, the first sale for use or consumption by the general public of such
Licensed Product.
1.5 "Improvements" shall mean all inventions, discoveries, processes,
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methods, compositions, formulae, procedures, protocols, software developments
and improvements, techniques, results of experimentation and testing,
information and data, which are conceived by employees or others acting on
behalf of the Mass Spectrometry Lab of the School of Medicine of UNIVERSITY,
either alone or jointly with others, and which constitute improvements to the
*** Portions of this page have been omitted pursuant to Confidential Treatment
request and filed separately with the commission.
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UNIVERSITY Patent Rights, the Curved Field Reflectron Patent Rights, the
Inventions, or the Licensed Technology all to the extent and only to the extent
conceived, developed or reduced to practice by employees or others acting on
behalf of the Mass Spectrometry Lab of the School of Medicine of UNIVERSITY,
either alone or jointly with others, arising out of research conducted pursuant
to the Sponsored Research Agreement.
1.6 "Inventions" shall mean all inventions arising out of research
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conducted pursuant to the Sponsored Research Agreement by the employees of the
Mass Spectrometry Lab of the School of Medicine of UNIVERSITY or by others whose
work is funded by the Sponsored Research Agreement.
1.7 "Licensed Product" shall mean products or components arising out of or
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using Inventions or methods related to mass spectrometer instruments or other
products or components which if made, used or sold would infringe one or more
Valid Patent Claims but for the license granted by the Agreement, or which
otherwise uses, incorporates or was conceived, developed or reduced to practice
using the Licensed Technology.
1.8 "Licensed Service" shall mean a service that employs methods or
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procedures covered by a Valid Patent Claim or that embodies or uses Licensed
Products.
1.9 "Licensed Technology" shall mean all UNIVERSITY Patent Rights, and all
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Inventions, together with all inventions, discoveries, processes, methods,
compositions, formulae, procedures, protocols, software developments and
improvements, techniques, results of experimentation and testing, information
and data, which are not generally known, embodying or produced through
inventions conceived, discovered or reduced to practice, whether alone or with
others, by employees of the Mass Spectrometry Lab of the School of Medicine of
UNIVERSITY or with facilities or equipment of such Mass Spectrometry Lab,
including any Improvements thereto; all to the extent and only to the extent
that UNIVERSITY has the right to grant licenses thereunder and all arising out
of research conducted pursuant to the Sponsored Research Agreement.
1.10 "Net Selling Price" shall mean the gross amount billed or invoiced on
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sales by LICENSEE of a mass spectrometer instrument or component thereof that is
a Licensed Product, or a Licensed Service, respectively, less the following: (i)
trade, quantity, or cash discounts and commissions to non-affiliated brokers or
agents to the extent actually allowed and taken; (ii) amounts repaid or credited
by reason of rejection or return; and (iii) any taxes, imposts, tariffs, custom
duties or other governmental charges levied on the production, sale,
transportation, delivery, or use of such product or service which are paid by or
on behalf of LICENSEE. The Net Selling Price for a Licensed Product that is a
mass spectrometer instrument or a component thereof shall be the Net Selling
Price of the entire mass spectrometer instrument, if the Licensed Product
contains at least a component that would infringe a Valid Patent Claim.
1.11 "Person" shall mean an individual, corporation, partnership, trust,
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business trust, association, joint stock company, limited liability company,
limited liability partnership, joint venture, pool, syndicate, sole
proprietorship, unincorporated organization, governmental authority or any other
form of entity not specifically listed herein.
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1.12 "Territory" shall mean all jurisdictions worldwide.
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1.13 "Third Party" shall mean any Person other than UNIVERSITY, LICENSEE
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and their respective Affiliates.
1.14 "UNIVERSITY Patent Rights" shall mean (a) all patent application,
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heretofore or hereafter filed or having legal force in any country within the
Territory, embodying or claiming Inventions conceived, discovered or reduced to
practice, whether alone or with others, by UNIVERSITY employees or with
UNIVERSITY facilities or equipment, in the course of any Research Program under
the Sponsored Research Agreement, (b) all patents that have issued or in the
future issue from the patent applications described in clause (a) above,
including utility, model and design patents and certificates of invention, and
(c) all divisions, continuations, continuations-in-part, reissues, renewals,
extensions or additions to any such patent applications and patents, and any
Improvements thereto upon which a patent application has been filed or a patent
has issued; provided, however, that UNIVERSITY Patent Rights shall not include
Curved Field Reflectron Patent Rights.
1.15 "Valid Patent Claim" shall mean a claim of an issued and unexpired
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patent included within the UNIVERSITY Patent Rights or Curved Field Reflectron
Patent Rights that has not been held permanently revoked, unenforceable or
invalid by a decision of a court or other governmental agency of competent
jurisdiction, which decision is unappealable or has not been appealed within the
time allowed for appeal, and that has not been admitted to be invalid or
unenforceable through reissue or disclaimer or otherwise.
ARTICLE 2
REPRESENTATIONS AND WARRANTIES
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Each party hereby represents and warrants to the other party as follows:
2.1 Existence and Power. Such Party is duly organized, validly existing
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and in good standing under the laws of jurisdiction in which it is incorporated.
2.2 Authorization and Enforcement of Obligations. Such party (a) has the
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power and authority and the legal right to enter into this Agreement and to
perform its obligations hereunder and (b) has taken all necessary action on its
part to authorize the execution and delivery of this Agreement and the
performance of its obligations hereunder. This Agreement has been duly executed
and delivered on behalf of such party and constitutes a legal, valid and binding
obligation of such party, enforceable against such party in accordance with its
terms.
2.3 No Consents. All necessary consents, approvals and authorizations of
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all governmental authorities and other Persons required to be obtained by such
party in connection with this Agreement have been obtained.
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2.4 No Conflict. The execution and delivery of this Agreement and the
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performance of such party's obligations hereunder (a) do not conflict with or
violate any requirement of applicable laws or regulations, and (b) do not
conflict with, or constitute a default under, any contractual obligation of it.
2.5 Third Party Claims. UNIVERSITY represents and warrants that, to the
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best of its knowledge as of the signing of this Agreement, no claim has been
made by or is available to any Third Party that any activity permitted by the
licenses granted to LICENSEE pursuant to this Agreement constitutes an
infringement of any right of any such Third Party anywhere in the world,
including, without limitation, any right under any copyright, trademark, trade
secret, patent, or other proprietary right of such Third Party.
2.6 Warranty: Warranty Disclaimer. UNIVERSITY warrants that it has good
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and marketable title to its interest in the inventions claimed under UNIVERSITY
Patent Rights and Curved Field Reflectron Patent Rights with the exception of
certain retained rights of the United States government. UNIVERSITY does not
warrant the validity of any patents or that practice under such patents shall be
free of infringement. EXCEPT AS EXPRESSLY SET FORTH IN THIS PARAGRAPH 2,
LICENSEE, AFFILIATED COMPANIES AND SUBLICENSEES AGREE THAT THE PATENT RIGHTS ARE
PROVIDED "AS IS", AND THAT UNIVERSITY MAKES NO REPRESENTATION OR WARRANTY WITH
RESPECT TO THE PERFORMANCE OF LICENSED PRODUCT(S) AND LICENSED SERVICES
INCLUDING THEIR SAFETY, EFFECTIVENESS, OR COMMERCIAL VIABILITY. UNIVERSITY
DISCLAIMS ALL WARRANTIES WITH REGARD TO PRODUCT(S) AND SERVICES LICENSED UNDER
THIS AGREEMENT, INCLUDING, BUT NOT LIMITED TO, ALL WARRANTIES, EXPRESS OR
IMPLIED, OF MERCHANTABILITY AND FITNESS FOR ANY PARTICULAR PURPOSE.
NOTWITHSTANDING ANY OTHER PROVISION OF THIS AGREEMENT, UNIVERSITY ADDITIONALLY
DISCLAIMS ALL OBLIGATIONS AND LIABILITIES ON THE PART OF UNIVERSITY AND
INVENTORS, FOR DAMAGES, INCLUDING, BUT NOT LIMITED TO, DIRECT, INDIRECT,
SPECIAL, AND CONSEQUENTIAL DAMAGES, ATTORNEYS' AND EXPERTS' AND COURT COSTS
(EVEN IF UNIVERSITY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, FEES OR
COSTS), ARISING OUT OF OR IN CONNECTION WITH THE MANUFACTURE, USE, OR SALE OF
THE PRODUCT(S) AND SERVICES LICENSED UNDER THIS AGREEMENT. LICENSEE, ITS
AFFILIATES, AND ITS SUBLICENSEES ASSUME ALL RESPONSIBILITY AND LIABILITY FOR
LOSS OR DAMAGE CAUSED BY A PRODUCT AND SERVICE MANUFACTURED, USED OR SOLD BY
LICENSEE, ITS SUBLICENSEES AND AFFILIATES WHICH IS A LICENSED PRODUCT OR
LICENSED SERVICE AS DEFINED IN THIS AGREEMENT.
ARTICLE 3
LICENSE GRANT
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3.1 License Grant to LICENSEE. UNIVERSITY hereby grants LICENSEE the
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following licenses:
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(a) a royalty-bearing, exclusive world-wide license, including the
right to grant sublicenses, in all fields, under all of UNIVERSITY's right,
title and interest, whether presently held or hereafter acquired, in and to the
University Patent Rights to develop, make, have made, use, sell, license, market
and otherwise exploit Licensed Products and Licensed Services or other products
or services in any field; and
(b) a non-exclusive royalty free license to develop, make, have made,
use, sell, license, market and otherwise exploit Licensed Product and Licensed
Services based on nonpatented Licensed Technology (i.e., not covered by a Valid
Patent Claim).
(c) a royalty-bearing, non-exclusive world-wide license, including
the right to grant sublicenses, under all of UNIVERSITY's right, title and
interest, whether presently held or hereafter acquired, in and to the Curved
Field Reflectron Patent Rights to develop, make, have made, use, sell, license,
market and otherwise exploit Licensed Products and Licensed Services within the
Field. LICENSEE acknowledges the existence of the licenses granted to Shimadzu-
Kratos and JEOL. UNIVERSITY will not grant any licenses under U.S. Patent No,
5,464,985, other than the existing licenses to ***. LICENSEE acknowledges that
without the consent of LICENSEE the licenses to *** may be assigned in
connection with an acquisition by either of them or may be terminated and a
substitute license be put in place that does not conflict with the existing or
target business of LICENSEE within the Field.
3.2 Reservation of Certain Rights. Notwithstanding the foregoing, the
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license granted to LICENSEE by the Agreement is subject to the reservation of:
(a) the rights of the United States of America as set forth in Public Laws 96-
517 and 98-620 (codified at 35 U.S.C. 200 et seq.) if U.S. Government funding
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is used and (b) the retained rights of UNIVERSITY to use the UNIVERSITY Patent
Rights or Curved Field Reflectron Patent Rights for its internal research
purposes. UNIVERSITY shall have the right to render non-exclusive the license
set forth in Section 3.1(a) above with respect to particular "subject
inventions," as defined in the Bayh-Dole Act, if and only if: (i) LICENSEE is
not demonstrably engaged in a significant research, development, manufacturing,
marketing or licensing program with respect to such subject inventions; or (ii)
at any time after *** after the Effective Date, within ninety (90) days after
written notice from UNIVERSITY, LICENSEE has not put the subject inventions into
commercial use and is not keeping such subject inventions reasonably available
to the public; and (iii) such failure does not result from actions or inactions
of any agency whose approval is required for commercial sales. This right shall
be UNIVERSITY's sole remedy for failure by LICENSEE to put products to
commercial use or make them available to the public.
3.3 Technical Assistance.
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(a) Upon execution of the Agreement, UNIVERSITY shall disclose and
make available to LICENSEE all information available to UNIVERSITY and not
previously disclosed to LICENSEE regarding the Licensed Technology.
(b) During the term of the Agreement, upon reasonable notice and
during normal business hours, UNIVERSITY, acting through Dr. Robert J. Cotter,
(a) shall provide
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request and filed separately with the Commission.
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such technical assistance regarding the Licensed Technology as LICENSEE
reasonably requests to conduct its activities contemplated by the Agreement, (b)
shall make available to LICENSEE such technical personnel of UNIVERSITY as
reasonably necessary to provide the foregoing technical assistance, and (c)
shall disclose and make available to LICENSEE all information available to
UNIVERSITY and not previously disclosed to LICENSEE regarding the use of the
Licensed Technology. LICENSEE shall reimburse UNIVERSITY for research or
consulting costs agreed by the parties for any such technical assistance,
together with such reasonable out-of-pocket travel and other expenses incurred
by UNIVERSITY in providing such technical assistance as are approved in advance
by LICENSEE. UNIVERSITY shall provide LICENSEE with estimates of the anticipated
costs of any requested technical assistance prior to undertaking such technical
assistance. If such technical assistance requires a significant level of
research the UNIVERSITY and LICENSEE will negotiate a separate sponsored
research agreement to cover such research.
ARTICLE 4
PAYMENTS
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4.1 Processing Fee. LICENSEE will pay UNIVERSITY a processing fee of
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*** promptly after execution of this Agreement.
4.2 Maintenance Fee. LICENSEE will pay UNIVERSITY a maintenance fee of
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*** within thirty days after each anniversary of execution of this Agreement,
in order to maintain the licenses granted pursuant to Article 3.
4.3 Royalty. LICENSEE shall pay UNIVERSITY one or the other of the
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following royalties, if applicable:
(a) *** of the Net Selling Price received by LICENSEE of its
Affiliate for each Licensed Product having one or more features covered by a
Valid Patent Claim for which LICENSEE has an exclusive license, or *** of the
Net Selling Price received by LICENSEE for each such Licensed Product having one
or more features covered by a Valid Patent Claim for which LICENSEE has a non-
exclusive license;
(b) *** of the entire income stream received by LICENSEE or its
affiliates attributable to service income based in whole or in part on use of
either: (i) a Licensed Product in any jurisdiction where at least a component is
covered by a Valid Patent Claim, or (ii) methods or procedures covered by a
Valid Patent Claim, or (iii) components (other than a Licensed Product) covered
by a Valid Patent Claim, or used according to a method covered by a Valid Patent
Claim, where such Licensed Product, method, procedure or component or invention
is one for which LICENSEE has an exclusive license, or *** of the entire income
stream received by LICENSEE attributable to service income based in whole or in
part on use of either: (x) a Licensed Product in any jurisdiction where at least
a component is covered by a Valid Patent Claim, or (y) methods or procedures
covered by a Valid Patent Claim, or (z) components (other than a Licensed
Product) covered by a Valid Patent Claim, or used according to a method
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request and filed separately, with the Commission.
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covered by a Valid Patent Claim, where such Licensed Product, method, procedure
or component or invention is one for which LICENSEE has a non-exclusive license;
(c) *** of the entire sublicensing income received by LICENSEE
attributable in whole or in part to use of Licensed Products or other components
or methods covered by a Valid Patent Claim for which LICENSEE has an exclusive
LICENSE, or *** of the entire sublicensing income received by LICENSEE
attributable in whole or in part to use of Licensed Products or other components
or methods covered by a Valid Patent Claim for which LICENSEE has a non-
exclusive license;
(d) *** of the Net Selling Price received by LICENSEE for
consumables, including chips, not covered by items (b) and (c) above, but sold
for use on mass spectrometer instruments for which LICENSEE has an exclusive
license or for use according to methods or procedures covered by a Valid Patent
Claim for which Licensee has an exclusive license, or *** of the Net Selling
Price received by LICENSEE for consumables, including chips, not covered by
items (b) and (c) above, but sold for use on mass spectrometer instruments for
which LICENSEE has a non-exclusive license or for use according to methods or
procedures covered by a Valid Patent Claim for which Licensee has a non-
exclusive license.
LICENSEE shall be required to pay royalties only with respect to jurisdictions
where its sale or income is attributable to activities that are covered by a
Valid Patent Claim for which LICENSEE has a license hereunder.
4.4 Payments. All royalties pursuant to Section 4.3 shall accrue on the
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date on which LICENSEE actually receives payment with respect to sales or income
with respect to particular Licensed Product or Licensed Services. All royalties
pursuant to Section 4.3 shall be paid on a quarterly basis, within 60 days
following the end of the quarter in which they accrued. Each payment shall be
accompanied by a report setting forth the calculation of the amount due.
4.5 Credits.
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(a) If LICENSEE must pay royalties to Third Parties for a product of
service for which it is also paying royalties to UNIVERSITY under Section 4.3
above, LICENSEE may credit against any amounts due UNIVERSITY *** of such
payment to Third Parties for such particular product or service. In addition, if
license fees and royalties payable to UNIVERSITY and to Third Parties on a
LICENSEE product or component thereof exceed *** of the net sales price of such
product of component or *** of LICENSEE's net income with respect to services or
sublicenses in any jurisdiction, LICENSEE may reduce any amounts due UNIVERSITY
pro rata with the amounts due Third Parties so that the total license fees and
royalties are reduced to *** or such net sales price or such net income,
respectively. In no event shall any payment otherwise due UNIVERSITY be reduced
by more than ***.
(b) LICENSEE may credit against any amounts due UNIVERSITY under this
Agreement, from sale or income generated in the jurisdiction of the infringement
suit, its share of expenses relating to the prosecution, defense or settlement
of infringement claims relating to the
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request and filed separately, with the Commission.
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practice of the licenses granted hereunder or the Inventions or the Curved Field
Reflectron Invention; however such credit may not decrease the royalty due
UNIVERSITY by more than *** in any year, the difference being carried forward
as a credit for future years.
ARTICLE 5
INFRINGEMENT ACTIONS BY THIRD PARTIES
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UNIVERSITY shall indemnify and hold harmless LICENSEE and LICENSEE's
permitted sublicensees and customers from and against any and all losses, costs,
damages and expenses, including reasonable attorney's fees, resulting from any
suit or action arising out of or relating to any infringement or alleged
infringement by LICENSEE or by LICENSEE's permitted sublicensees or customers of
a Third Party's patent rights in the Territory through the use, sale,
manufacture, or practice of a process, method or composition claimed under the
Licensed Technology. LICENSEE promptly shall notify UNIVERSITY in writing of any
such suit or action, and UNIVERSITY shall have the right, at its expense, to
intervene and assume control of such action; provided, however, that LICENSEE
shall have the rights to participate in any such suit or action, to be
represented by advisory counsel of its own selection at its own expense, and to
offset *** of the expenses incurred in such action against any
amounts due UNIVERSITY. Neither party shall settle such suit or action without
the consent of the other, which consent shall not be unreasonably withheld or
delayed. Each party shall cooperate fully in the defense of such suit or action
and shall furnish to the other all evidence and assistance in its control.
ARTICLE 6
PUBLICITY AND CONFIDENTIALITY
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6.1 Publicity. The parties shall agree on the form of a mutually
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acceptable public announcements of the transaction contemplated hereby. Each
party shall otherwise hold the financial terms of this transaction in
confidence, except that LICENSEE may reveal such terms to any other licensee for
purposes of calculating license fees or royalties due subject to an obligation
of confidentiality, or to any prospective investor.
6.2 Confidential Information. Each party shall exercise reasonable care to
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maintain in confidence all information of the other party (including samples)
disclosed by the other party and identified as, or acknowledged to be,
confidential (the "Confidential Information"), and shall not use, disclose or
grant rights to use of the Confidential Information except on a need-to-know
basis to those directors, officers, employees, agents, permitted sublicensees
and permitted assignees, to the extent such disclosure is reasonably necessary
in connection with such party's activities as authorized under this Agreement.
Each party shall notify the other promptly upon discovery of any unauthorized
use or disclosure of the other party's Confidential Information.
6.3 Permitted Disclosures. The nonuse and nondisclosure obligations
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contained in this article shall not apply to the extent that (a) any receiving
party (the "Recipient") is required (i) to disclose information by law, order or
regulation of a governmental agency or a court of
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request and filed separately, with the Commission.
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competent jurisdiction, or (ii) to disclose information to any governmental
agency for purposes of obtaining approval to test or market a product or to
apply for a patent, provided that the Recipient shall provide written notice
thereof to the other party and sufficient opportunity to object, time
permitting, to any such disclosure or to request confidential treatment thereof;
or (b) the Recipient can demonstrate that (i) the information was public
knowledge at the time of such disclosure by the Recipient, or thereafter became
public knowledge, other than as a result of acts attributable to the Recipient
in violation hereof; (ii) the information was rightfully known by the Recipient
(as shown by its written records) prior to the date of disclosure to the
Recipient on an unrestricted basis by a Third Party not under a duty of
confidentiality to the other party; or (iv) the information was independently
developed by employees or agents of the Recipient without access to the
Confidential Information of the other party.
ARTICLE 7
INVENTIONS AND PATENTS
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7.1 Ownership of Inventions. Ownership of Licensed Technology developed
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by individuals providing technical assistance on behalf of UNIVERSITY pursuant
to Section 3.3 of this Agreement shall be governed as if such Licensed
Technology were developed pursuant to the Sponsored Research Agreement.
7.2 Patent Rights Generally. Control over, and associated expenses for,
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the filing, prosecution, and maintenance of patents and patent applications
relating to inventions licensed hereunder will be allocated according to the
Sponsored Research Agreement. In the event that UNIVERSITY obtains additional
licensees under any invention licensed by LICENSEE, LICENSEE shall pay only its
pro-rata share of patent-related expenses. LICENSEE shall have the right to
cease paying for the filing, prosecution, or maintenance of any patent or patent
application in any country upon thirty (30) days prior written notice to
UNIVERSITY. In such event, LICENSEE will have no further rights under this
Agreement with respect to such patent or patent application in such country, and
LICENSEE agrees to assign to UNIVERSITY any rights LICENSEE may have in such
patent or patent application in such country.
7.3 Reimbursement of Expenses. LICENSEE shall reimburse UNIVERSITY for
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the reasonable expenses incurred by UNIVERSITY in relation to the filing,
prosecution, and maintenance of patents and patent applications licensed
hereunder; provided, however, that such expenses shall be equally divided among
LICENSEE and any other licensees of the Licensed Technology. Without limiting
the generality of the foregoing, LICENSEE will reimburse UNIVERSITY only one-
third of such expenses with respect to the Curved Field Reflectron Invention.
7.4 Enforcement of UNIVERSITY Patent Rights. UNIVERSITY shall notify
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LICENSEE of any infringement in the Territory known to UNIVERSITY of the
Licensed Technology and shall provide LICENSEE with the available evidence, if
any, of such infringement. LICENSEE, at its expense, shall have the right to
determine the appropriate course of action to enforce rights in the Licensed
Technology or otherwise abate the infringement thereof, to take (or refrain from
taking) appropriate action to enforce the rights in
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the Licensed Technology, to control any litigation or other enforcement action
and to enter into, or permit, the settlement of any such litigation or other
enforcement action with respect to the Licensing Technology. UNIVERSITY shall
cooperate fully with LICENSEE in connection with such litigation or other
enforcement action and shall furnish to LICENSEE all evidence and assistance in
its control. The proceeds of any monetary judgement, reward or settlement from
such litigation or other enforcement action shall be used first to reimburse
LICENSEE for its expenses. UNIVERSITY will receive a percentage of such proceeds
remaining after deduction of such expenses equal to the running royalty rate set
forth in Section 4.3(a), (b), (c) or (d) most nearly applicable to the activity
in question, and LICENSEE will retain any remaining amounts.
ARTICLE 8
TERM AND TERMINATION
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8.1 Term. This Agreement shall expire upon the expiration of the last to
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expire patent included within the UNIVERSITY Patent Rights or Curved Field
Reflectron Patent Rights.
8.2 Termination by LICENSEE. LICENSEE may terminate the Agreement, in its
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sole discretion, upon written notice to UNIVERSITY.
8.3 Termination for Cause. Except as otherwise provided in the article
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below regarding force majeure, either party may terminate the Agreement upon or
after the breach of any material provision of the Agreement by the other party,
if the other party has not cured such breach within sixty (60) days after
written notice thereof by the non-breaching party.
8.4 Effect of Expiration or Termination. Expiration of termination of the
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Agreement shall not relieve the parties of any obligation accruing prior to such
expiration or termination, and the provisions of Articles 5, 6, and 10 shall
survive the expiration or termination of the Agreement. Upon expiration of the
Agreement under Section 8.1 above, LICENSEE shall have a fully-paid, non-
exclusive license to make, have made, use, sell, license, market and otherwise
exploit Licensed Products and Licensed Technology anywhere in the world.
ARTICLE 9
FORCE MAJEURE
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Neither party shall be held liable or responsible to the other party nor be
deemed to have defaulted under or breached the Agreement for failure or delay in
fulfilling or performing any term of this Agreement to the extent, and for so
long as, such failure or delay is caused by or results from causes beyond the
reasonable control of the affected party including but not limited to fires,
earthquakes, floods, embargoes, wars, acts of war (whether war is declared or
not), insurrections, riots, civil commotions, strikes, lockouts or other labor
disturbances, acts of God or acts, omissions or delays in acting by any
governmental authority or other party.
ARTICLE 10
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MISCELLANEOUS
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10.1 Limited Liability. In no event shall either party be liable to the
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other or any Third Party for any special, consequential or incidental damages
arising out of or related to this Agreement or with respect to any claim,
demand, action or other proceeding relating to this Agreement however caused, or
any theory of liability (including negligence), whether or not the party has
been advised of the possibility of such damages.
10.2 Notices. Any consent, notice or report required or permitted to be
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given or made under this Agreement by one party to the other party shall be in
writing, shall be delivered personally, by confirmed facsimile transmissions, or
by U.S. first class mail, courier or nationally-recognized delivery service, and
shall be addressed to the other party at its address indicated below, or to such
other address as the addressee shall have last furnished in writing to the
addressor. Except as otherwise provided in the Agreement, such consent, notice
or report shall be effective upon receipt by the addressee.
If to UNIVERSITY:
The Johns Hopkins University School of Medicine
Office of Technology Licensing
2024 E. Monument Street, Suite 2-100
Baltimore, Maryland 21205
Attention: Howard W. Califano, Esq.
Tel: (410) 955-4666
Fax: (410) 955-1245
If to LICENSEE:
Sequenom, Inc.
11555 Sorrento Valley Road, Suite C
San Diego, California 92121
Attention: Dr. Hubert Koster
Tel: (619) 350-0345
Fax: (619) 350-0344
with a copy to:
David R. Pierson, Esq.
Foley, Hoag & Eliot LLP
One Post Office Square
Boston, Massachusetts 02109
Tel: (617) 832-1000
Fax: (617) 832-7000
10.3 Governing Law. This Agreement shall be governed by, and construed
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and enforced in accordance with, the laws of the State of California, without
regard to the conflicts of
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law principles thereof, and shall not be governed by the United Nations
Convention on Contracts for the International Sale of Goods.
10.4 U.S. Export Laws and Regulations. Each party hereby acknowledges
--------------------------------
that the rights and obligations of this Agreement are subject to the laws and
regulations of the United States relating to the export of products and
technical information. Without limitation, each party shall comply with all
such laws and regulations.
10.5 No Other Rights. This Agreement shall not be construed to grant any
---------------
license or other rights to either party in any patent rights, know-how or other
technology of the other, except as expressly provided in this Agreement.
10.6 Waivers and Amendments. No change, modification, extension,
----------------------
termination or waiver of this Agreement, or any of the provisions herein
contained, shall be valid unless made in writing and signed by duly authorized
representatives of the parties hereto.
10.7 Entire Agreement. This Agreement and the Sponsored Research
----------------
Agreement embody the entire understanding between the parties and supersede any
prior understanding and agreements between them respecting the subject matter
hereof. There are no representations, agreements, arrangements or
understandings, oral or written, between the parties hereto relating to the
subject matter of this Agreement and the Sponsored Research which are not fully
expressed herein and therein.
10.8 Independent Contractors. UNIVERSITY and LICENSEE are independent
-----------------------
contractors and are not, and shall not represent themselves as, principal and
agent, partners or joint venturers. Neither party shall attempt to act, or
represent itself as having the power, to bind the other or create any obligation
on behalf of the other. Each party shall be solely responsible for the
employment, direction and control of its employees and their acts.
10.9 Severability. Whenever possible, each provision of this Agreement
------------
will be interpreted in such a manner as to be effective and valid under
applicable law. The parties agree that (i) the provisions of this Agreement
shall be severable in the event that any of the provisions here are for any
reason whatever invalid, void or otherwise unenforceable, (ii) such invalid,
void or otherwise unenforceable provisions shall be replaced by other provisions
which are as similar as possible in terms to such invalid, void or otherwise
unenforceable provisions but are valid and enforceable, and (iii) the remaining
provisions shall remain enforceable to the fullest extent permitted by law.
10.10 Captions. The captions herein have been inserted solely for
--------
convenience of reference and in no way define or limit the scope or substance of
any provision of this Agreement.
10.11 Use of Names. Neither party will use the name of the other party or
------------
of any investigator in any advertising or other form of publicity without the
prior written permission of the other, except that LICENSEE shall have the right
to identify UNIVERSITY and to disclose the terms of this Agreement in any
prospectus, offering memorandum, or other document or
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filing required by applicable securities laws or other applicable law or
regulation, provided that LICENSEE shall have given to UNIVERSITY at least five
(5) days prior written notice of the proposed text of any such identification of
disclosure for the purpose of giving UNIVERSITY the opportunity to comment on
such proposed text.
10.12 No Control; Indemnification. UNIVERSITY and the inventors of
---------------------------
Licensed Products and Licensed Services will not under the provisions of this
Agreement or otherwise, have control over the manner in which LICENSEE or its
Affiliates or its sublicensees or those operating for its account or third
parties who purchased Licensed Products or Licensed Services from any of the
foregoing entities, practice the inventions of Licensed Products or Licensed
Services. The LICENSEE shall defend and hold the UNIVERSITY, The Johns Hopkins
Health Systems, their present and former regents, trustees, officers, inventors
of PATENT RIGHTS, agents, faculty, employees and students harmless as against
any judgements, fees, expenses, or other costs arising from or incidental to any
product liability or other lawsuit, claim, demand or other action brought as a
consequence of the practice of said inventions by any of the foregoing entities,
whether or not JHU or said inventors, either jointly or severally, is named as a
party defendant in any such lawsuit, provided that any party claiming
indemnification under this Section 10.12 provided Sequenom with assistance and
sole control in the defense or settlement of any lawsuit, claim, demand or other
action. Practice of the inventions covered by Licensed Products and Licensed
Services by an Affiliate or an agent or a sublicensee or a third party on behalf
of or for the account of the LICENSEE or by a third party who purchases Licensed
Products and Licensed Services from the LICENSEE, shall be considered LICENSEE's
practice of said inventions for purposes of this Section 10.12. The obligation
of the Company to defend and indemnify as set out in this Section 10.12 shall
survive the termination of this Agreement.
10.13 Insurance. Prior to initial human testing or first commercial sale
---------
of any Licensed Product or Licensed Service as the case may be in any particular
country, the LICENSEE shall establish and maintain, in each country in which
LICENSEE, an Affiliate or sublicensee shall test or sell Licensed Products or
Licensed Services, product liability or other appropriate insurance coverage
appropriate to the risks involved in marketing Licensed Products and Licensed
Services and will annually present evidence to the UNIVERSITY that such coverage
is being maintained. Upon UNIVERSITY's request, the LICENSEE will furnish
UNIVERSITY with a Certificate of Insurance of each product liability insurance
policy obtained and agrees to increase or change the kind of insurance
pertaining to the Licensed Products and Licensed Services at the reasonable
request of the UNIVERSITY. The UNIVERSITY shall be listed as an additional
insured in LICENSEE's said insurance policies.
10.14 Certain Additional Definitions. As used in this Agreement, "herein"
------------------------------
and "hereof" shall refer to this Agreement as a whole, and "including" shall
mean "including but not limited to."
10.15 Additional Licenses. It is the intention of UNIVERSITY and LICENSEE
-------------------
that if UNIVERSITY and LICENSEE hereafter enter into additional sponsored
research agreements, any licenses granted to LICENSEE with respect to inventions
made pursuant thereto shall be on terms comparable to those set forth herein,
unless UNIVERSITY and LICENSEE otherwise agree in writing in such additional
sponsored research agreement.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
and delivered as a document under seal by their duly authorized officers, as of
the date first above written.
SEQUENOM, INC. THE JOHNS HOPKINS UNIVERSITY
/s/ Hubert Koster /s/ illegible
------------------------------ ----------------------------
By: Dr. Hubert Koster By:
Its: Executive Vice President Its:
Chief Technical Officer
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