License Agreement - Millipore Corp. and Cruachem Holdings Ltd.
LICENSE AGREEMENT
This Agreement, effective this 1st day of December, 1989 by and between
Millipore Corporation, a corporation of the Commonwealth of Massachusetts having
a place of business in Bedford, Massachusetts ("LICENSOR") and Cruachem Holdings
Limited, a corporation of the United Kingdom having a place of business in
Glasgow, Scotland ("LICENSEE").
RECITALS
LICENSOR is the owner of United States Patent No. 4,725,677, issued
February 16, 1988, entitled "Process for the Preparation of Oligonucleotides"
(the "'677 Patent").
LICENSEE is desirous of obtaining a license under the '677 Patent, and
LICENSOR is willing to grant such license under the terms and conditions
hereinafter set forth.
In consideration of the above recitals and the mutual covenants and
obligations set forth herein, the parties agree as follows:
ARTICLE I. DEFINITIONS
1.1 "Licensed Patent" shall mean the '677 Patent, all reissues,
continuations and extensions thereof, as well as all foreign patents and patent
applications corresponding thereto.
1.2 "Licensed Product" shall mean any product or process covered by a claim
of any unexpired, issued Licensed Patent which has not been disclaimed,
forfeited or held invalid by a decision beyond the right of review.
1.3 "Net Sales" means the gross selling price of Licensed Product sold by
LICENSEE less: (i) allowances for damaged and returned goods; (ii) discounts
actually credited to customers; and (iii) sales and excise taxes actually paid
by LICENSEE with respect to the sale of Licensed Product. The Net Sales of
Licensed Product used, but not sold, by LICENSEE shall be calculated as though
such Licensed Product had been sold by LICENSEE during the same time period to a
third party in a "bona fide arms-length transaction. A Licensed Product is
considered sold hereunder when invoiced or, if not invoiced, when shipped or
mailed or otherwise delivered, or when paid for before delivery.
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ARTICLE II. GRANT
2.1 LICENSOR hereby grants, subject to the terms and conditions herein, to
LICENSEE and LICENSEE hereby accepts a non-exclusive, non-transferable license
under the Licensed Patent to manufacture, use and sell Licensed Product.
2.2 LICENSEE shall have no right to grant sublicenses under this Agreement.
Notwithstanding the foregoing, LICENSEE shall have a right to grant sub-licenses
under this Agreement to a company which is a subsidiary of or otherwise
controlled by LICENSEE and only upon such terms as are herein contained for the
performance and observance of obligations by LICENSEE, and LICENSEE shall notify
LICENSOR of any such sub-license and provide evidence to LICENSOR of its
subsidiary or controlled status.
ARTICLE III. ROYALTIES AND PAYMENTS
3.1 In consideration of the rights granted by LICENSOR to LICENSEE under
this Agreement, LICENSEE agrees to pay LICENSOR:
(a) One-hundred thousand US dollars (US $100,000) payable in
installments as set forth in Section 3.3 below.
(b) A royalty of ** of Net Sales of all Licensed Product manufactured,
used or sold by LICENSEE during the term of this Agreement.
3.2 LICENSEE shall also pay to LICENSOR in installments at the times
hereinafter provided an amount equal to (CONFIDENTIAL TREATMENT REQUESTED) of
Net Sales of all Licensed Product manufactured, used or sold by LICENSEE (i) in
the United States of America during the period February 16, 1986 through June
30, 1989 and (ii) worldwide during the period July 1, 1989 through November 30,
1989.
3.3 Each of the installments referred to in Sections 3.l(a) and 3.2 shall
together amount to $15,000 and the first payment shall be made at the time of
execution of this Agreement. Subsequent payments of $15,000 shall be made within
45 days of the last day of February, May, August and November of each year
commencing on February 28, 1990 and continuing until the payments called for in
Sections 3.l(a) and 3.2 are paid in full. The first of such subsequent payments
shall be accompanied by a written accounting of all Licensed Products
manufactured, used or sold (i) in the United States of America for the period
February 16, 1988 through June 30, 1989 and (ii) worldwide for the period July
1, 1989 through November 30, 1989 in sufficient detail to permit a calculation
of the royalties due thereon.
ARTICLE IV. REMITTANCES, RECORDS AND REPORTS
4.1 Commencing in 1990, LICENSEE agrees to deliver to LICENSOR within
forty-five (45) days of the last day of February, May, August and November of
each year during the term of this Agreement a written accounting of all Licensed
Product used or sold by it during the preceeding three
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months in sufficient detail to permit a calculation of the royalties due
thereon. LICENSEE agrees to accompany such accounting with the payment due
thereon.
4.2 LICENSEE agrees to maintain adequate records in sufficient detail to
enable the royalties payable by LICENSEE hereunder to be determined. It is
further agreed that LICENSOR shall have the right, at its own expense and during
regular business hours no more than once in any calendar year during the term of
this Agreement and for one (1) year thereafter, to have such records examined by
an independent auditor acceptable to both LICENSOR and LICENSEE.
4.3 Any payment hereunder which is made more than thirty (30) days past due
sha11 be subject to interest payments calculated from the due date at the prime
rate (i.e., the base rate on corporate 1oans given at large U.S. commercial
banks) plus one percent (1%).
ARTICLE V. MOST FAVORED LICENSEE
5.1 In the event that LICENSOR shall hereafter grant a license to a third
party under the Licensed Patent at a more favorable royalty rate, LICENSEE shall
have the right to substitute the more favorable royalty rate granted to such
third party, but only if LICENSEE shall accept any less favorable terms that may
be included in such license. Any change in royalty rate hereunder shell be by
written amendment and shall be effective only for the period during which the
more favorable royalty is in effect under such other license.
5.2 The provisions of Section 5.1 shall not apply where:
(a) LICENSOR has received, in lieu of or in addition to a cash
royalty, a grant of proprietary rights, a license or immunity from suit, or
other considerations in exchange for such license; or
(b) A more favorable royalty is given only in consideration of the
settlement of a claim of past infringement and does not apply in respect of
future infringement.
ARTICLE VI. INFRINGEMENT
6.1 If LICENSEE is charged with a claim of patent infringement through its
sale of Licensed Product by a third party, and such claim substantially
interferes with LICENSEE'S ability to exercise in a commercially reasonable
manner its rights under this Agreement, LICENSEE shall give LICENSOR notice of
such claim. If, after reasonable and diligent defense against such claim,
including conferring with LICENSOR regarding the merits thereof, LICENSEE is
required to obtain a license under the patent
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rights of such third party, LICENSEE may at its election reduce the royalty rate
provided for in Section 3.1(b) by up TO fifty percent (50%), provided that said
reduction shall be by no more than fifty percent (50%) of any royalties paid to
such third party.
6.2 The provisions of Section 6.1 shall not apply to any claim arising from
U.S. Patent Nos. 4,458,066 and/or 4,415,722, or under any patent rights
(domestic or foreign) issuing from or corresponding to said aforementioned
patents.
ARTICLE VII. PATENT MARKING
7.1 LICENSEE agrees to mark labels, product literature, and packages for
Licensed Products which are sold with the following legend:
"This product contains reagents manufactured under patent license from
Millipore Corporation
--U.S. Patent No. 4,725,677."
ARTICLE VIII. RESTRICTED WARRANTY AND INDEMNITY; INFRINGEMENT OF LICENSED PATENT
AND MAINTENANCE
8.1 LICENSOR warrants that it has full authority to enter into this
Agreement and that it has no knowledge of any third party rights that would
affect its ability to grant the license hereunder. However, LICENSOR makes no
representation or warranty, express or implied, as to the validity of the
Licensed Patent nor to the merchantability of Licensed Product that is sold by
LICENSEE. LICENSOR does not assume any liability for any infringement or alleged
infringement of any patent or other rights of third parties due to LICENSEE's
activities under the license set forth herein.
8.2 LICENSEE agrees to defend, indemnify and hold LICENSOR harmless from
any claims of whatever nature arising from LICENSEE's making, using and/or
selling Licensed Product unless such claims can be established to be based on
LICENSOR's negligence.
8.3 Should LICENSOR be made aware of any apparent infringement of the
Licensed Patent upon receipt of written notice from LICENSEE to that effect by
any of the following entities: Applied Biosystems, Inc.; Beckman Instruments,
Inc.; Biosearch, Inc.; E.I. DuPont DeNemours & Co., Inc.; Pharmacia LKB
Biotechnology AB; Sigma Chemical Company; Vega Biotechnologies, Inc.; American
Bionetics, Inc., E Merck AG Damstadf; or Glen Research Corporation and any other
person(s) or legal entity, corporate body or otherwise, which is not licensed by
LICENSOR and which LICENSEE states is having a significant effect on its
business in Licensed Product (collectively referred to herein as an
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"unlicensed entity"). LICENSOR shall provide LICENSEE written notice that such
unlicensed entity has either (1) accepted a license, (2) been found not to
infringe the Licensed Patent and the reasons therefor or (3) been contacted
concerning its unlicensed use. In the event of item (3) above, LICENSOR will
commence legal action for infringement against any such unlicensed entity if no
satisfactory response is received within a reasonable period of time or if
discussions become stalled for an unreasonable period of time.
LICENSOR"S obligation to pursue action against an unlicensed entity shall
only apply if LICENSEE can demonstrate that such unlicensed entity has annual
net sales of Licensed Product which exceed $400,000, provided that if the
unlicensed entity's annual net sales of Licensed Product do not exceed $400,000
and LICENSEE shall insist that LICENSOR take action then the costs of LICENSOR
in taking such action as aforesaid will be paid by LICENSEE. In the event of
LICENSOR being required by LICENSEE to take action against an unlicensed entity
having net sales less than $400,OOO, LICENSOR shall assume full control over
such action or any settlement thereof, and LICENSOR may terminate such action if
LICENSEE fails to pay any invoice for legal expenses within 30 days of receipt
from LICENSOR. LICENSOR shall be obligated to pursue only one infringement
action at a time against an unlicensed entity, in an order to be solely
determined by LICENSOR.
8.4 LICENSOR will use its reasonable best efforts to ensure that all
registrations of the Licensed Patent are maintained in full force and effect to
protect the interests hereunder of LICENSEE.
ARTICLE IX. TERM AND TERMINATION
9.1 Unless earlier terminated as provided in this Article IX, this
Agreement shall continue in full force and effect until February 16, 2005.
9.2 LICENSEE shall have the right to terminate this Agreement and surrender
the license granted hereunder at any time upon ninety (90) days written notice
to LICENSOR.
9.3 If LICENSEE defaults in the performance of any of the obligations under
this Agreement including the failure to make any of the payments provided for in
Article III at the times specified therein and such default is not cured within
thirty (30) days after LICENSOR has given to LICENSEE written notice specifying
the nature of the default, LICENSOR shall have the right to terminate this
Agreement by giving written notice of termination to LICENSEE. Upon the receipt
of such notice of termination by LICENSEE this Agreement shall immediately
terminate.
9.4 If during the term of this Agreement, LICENSEE becomes bankrupt or
insolvent, or if the business of LICENSEE is placed in the hands of a receiver
or trustee, whether by voluntary act of LICENSEE or otherwise, this Agreement
shall immediately terminate.
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9.5 The termination of this Agreement for any reason shall be without
prejudice to LICENSOR's right to receive all payments accrued and unpaid at the
effective date of such termination and to the remedy of either party hereto with
respect to any previous breach or default in respect to any of the covenants
contained herein.
ARTICLE X. NOTICE
10.1 Any notice or other communication relating to this Agreement shall be
sent by registered mail or overnight express prepaid to the address of the party
to be served therewith which is shown below and shall be deemed to have been
given upon the date the notice or communication was mailed:
If to LICENSOR: Millipore Corporation
80 Ashby Road
Bedford, Massachusetts 01730
Attention: General Counsel
If to LICENSEE: Cruachem Holdings Limited
Todd Campus
West of Scotland Science Park
Acre Road
Glasgow G20 OVA
Scotland
ARTICLE XI. RIGHT OF ASSIGNMENT
11.1 Neither this Agreement nor any of the rights and powers created herein
may be assigned, in whole or in part, by either party hereto, without the
written consent of the other party and any attempted assignment or transfer
thereof without such consent shall be void, except that without securing such
prior written consent, either party may assign this Agreement to a successor of
all or substantially all of the business and good will in Licensed Patent or
Licensed Product by giving the other party thirty (30) days written notice
thereof.
ARTICLE XII. GENERAL PROVISIONS
12.1 This Agreement is binding upon and inures to the benefit of the
parties hereto. This Agreement and the license granted herein is personal to
LICENSEE and cannot be assigned or transferred by LICENSEE except as provided
for in Article XI.
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12.2 This Agreement is to be construed under the laws of the Commonwealth
of Massachusetts.
12.3 This Agreement constitutes the entire agreement between the parties
hereto and there are no representations or warranties of any kind not expressly
set forth herein. No modification, amendment or waiver of any of its provisions
shall have any force or effect unless it be in writing and signed by the parties
to be bound thereby.
12.4 This Agreement has been drafted on the basis of mutual understanding
and neither party shall be prejudiced as the draftor thereof.
12.5 The waiver by either LICENSOR or LICENSEE of any right or failure to
perform or of any breach by the other shall not be deemed as a waiver of any
other right hereunder or of any other breach of failure by the other, whether of
a similar nature or otherwise.
12.6 If any provision of this Agreement shall be held to be invalid,
illegal, or unenforceable, the validity, legality and enforceability of the
remaining provisions shall not in any way be affected or impaired thereby.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
signed in duplicate counterparts in their behalf by an authorized representative
as of the date and year first above written.
MILLIPORE CORPORATION CRUACHEM HOLDINGS LIMITED
(LICENSOR) (LICENSEE)
By /s/ [ILLEGIBLE] By /s/ Ian Wilke
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Title President Title Chief Executive
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Millipore-Bioresearch
Division
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