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Title: |
Exclusive License Agreement |
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Entities: |
Apbiotech; Regents of the University of California; University of California, Berkeley |
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Date: |
2000 |
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Preview shows 12KB of 68KB total |
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$36 |
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ID: |
#1384927 |
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BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
October 20, 1993
UNIVERSITY OF CALIFORNIA, BERKELEY [UNIVERSITY OF CALIFORNIA LOGO]
OFFICE OF TECHNOLOGY LICENSING
================================================================================
EXCLUSIVE LICENSE AGREEMENT
CAPILLARY ARRAY CONFOCAL FLUORESCENSE SCANNER
AND METHOD
BETWEEN
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
AND
MOLECULAR DYNAMICS
UC Case No.: B92-024-1
================================================================================
<PAGE> 3
October 20, 1993
TABLE OF CONTENTS
<TABLE>
<CAPTION>
ARTICLE TITLE PAGE
------- ----- ----
<S> <C> <C>
1. BACKGROUND ................................................ 1
2. DEFINITIONS ............................................... 2
3. GRANT ..................................................... 4
4. SUBLICENSES ............................................... 5
5. LICENSE ISSUE FEE ......................................... 6
6. ROYALTIES ................................................. 7
7. DUE DILIGENCE ............................................. 9
8. PROGRESS AND ROYALTY REPORTS .............................. 11
9. BOOKS AND RECORDS ......................................... 12
10. LIFE OF THE AGREEMENT ..................................... 13
11. TERMINATION BY REGENTS .................................... 13
12. TERMINATION BY LICENSEE ................................... 14
13. DISPOSITION OF LICENSED PRODUCTS ON HAND UPON TERMINATION . 14
14. PATENT PROSECUTION AND MAINTENANCE ........................ 14
15. MARKING ................................................... 17
16. USE OF NAMES AND TRADEMARKS ............................... 17
17. LIMITED WARRANTIES ........................................ 17
18. PATENT INFRINGEMENT ....................................... 18
19. INDEMNIFICATION ........................................... 20
20. EXPORT CONTROLS ........................................... 22
21. FOREIGN GOVERNMENTAL APPROVAL OR REGISTRATION ............. 22
22. ASSIGNMENT ................................................ 22
23. NOTICES ................................................... 22
24. LATE PAYMENTS ............................................. 23
25. WAIVER .................................................... 23
26. CONFIDENTIALITY ........................................... 23
27. FAILURE TO PERFORM ........................................ 25
28. FORCE MAJEURE ............................................. 25
29. SEVERABILITY .............................................. 25
30. APPLICABLE LAW ............................................ 26
31. SCOPE OF AGREEMENT ........................................ 26
</TABLE>
<PAGE> 4
UNIVERSITY OF CALIFORNIA, BERKELEY [University of California SEAL]
OFFICE OF TECHNOLOGY LICENSING
================================================================================
EXCLUSIVE LICENSE AGREEMENT
FOR CAPILLARY ARRAY CONFOCAL FLUORESCENCE SCANNER AND METHOD
UC Case No.: B92-024-1
================================================================================
Effective September 15, 1993, THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, a
California Corporation, whose legal address is 300 Lakeside Drive, Oakland,
California 94612-3550, acting through its Office of Technology Licensing, at
the University of California, Berkeley, 2150 Shattuck Avenue, Suite 510,
Berkeley, CA 94704-1318, ("REGENTS") and MOLECULAR DYNAMICS having a principal
place of business at 880 East Arques Ave., Sunnyvale, Ca. 94086 ("LICENSEE"),
agree as follows:
1. BACKGROUND
1.1 REGENTS have an assignment of "Capillary Array Confocal Fluorescence
Scanner and Method" ("INVENTION"), as described in REGENTS' Case No.
B92-024-1 and LICENSED PATENTS as defined below, which are directed
to the INVENTION.
1.2 LICENSEE entered into a Confidential Disclosure Agreement with
REGENTS effective September 13, 1991, and terminating on September
13, 1996 for the purpose of evaluating the INVENTION.
1.3 LICENSEE further entered into a Letter Agreement effective
February 24, 1992 covering the LICENSEE's commitment to reimburse
REGENTS' patent costs during the period of good-faith negotiation
for an exclusive license.
1.4 The development of the INVENTION was sponsored in part by the US
Department of Energy and as a consequence, title is passed to
REGENTS and REGENTS in turn, grants back to the U.S. Government a
non-exclusive, non-transferrable, irrevocable, paid-up license to
practice or have practiced the
Page 1 of 26 Pages BP 2024
MolDyn, 1993
<PAGE> 5
INVENTION for or on behalf of the United States Government
throughout the world.
1.5 Both parties recognize and agree that royalties due hereunder will
be paid to REGENTS on both pending patent applications and issued
patents.
1.6 REGENTS are desirous to have said INVENTION perfected and marketed
at the earliest possible time in order that products resulting
therefrom may be available for public use and benefit.
1.7 LICENSEE has executed an exclusive license agreement with REGENTS
for US Patent No. 5,091,652 entitled "Laser Excited Confocal
Microscope Fluorescence Scanner and Method" and corresponding
foreign patents and patent applications described in UC Case No.
B90-001-2, effective January 16, 1991 (hereinafter referred to as
1991 LICENSE AGREEMENT).
1.8 LICENSEE will execute a non-exclusive license agreement with REGENTS
for US Patent Application Serial No. 07/854,375 entitled "Multiple
Tag Labeling Method for DNA Sequencing" and corresponding foreign
patents and patent applications described in UC Case No. B92-057-1,
effective August 15, 1993 (hereinafter referred to as 1993
NON-EXCLUSIVE LICENSE AGREEMENT).
1.9 LICENSEE wishes to acquire a license under the LICENSED PATENTS, for
the purpose of undertaking development, to manufacture, use, sell
and distribute LICENSED PRODUCTS as defined below.
1.10 REGENTS have disclosed to LICENSEE certain information and technical
data pertaining to the INVENTION and such disclosure gives the
LICENSEE an economic advantage in bringing the INVENTION to market.
2. DEFINITIONS
2.1 "LICENSED PATENTS" means any Letters Patent issued upon REGENTS'
U.S. Patent Application, Serial Number 07/840,501 entitled
"Capillary Array Confocal Fluorescence Scanner and Method" filed
February 24, 1992, by
Page 2 of 26 Pages BP 2024
MolDyn, 1993
<PAGE> 6
Professor Richard Mathies, Xiaohua Chen Huang and Mark A. Quesada and
assigned to REGENTS; and continuing applications thereof including
divisions, substitutions, extensions and continuation-in-part applications
(only to the extent, however, that claims in the continuation-in-part
applications are entitled to the priority filing date of the parent patent
application; but excluding all other continuations-in-part), any patents
issuing on said application or continuing applications including reissues;
and any corresponding foreign patents or applications.
2.2 "LICENSED PRODUCTS" means any product, apparatus, or component part thereof
or other material produced by the LICENSED METHOD to the extent the
manufacture, use or sale of which is in a particular country:
(a) Is covered by a valid claim of an issued, unexpired patent under the
LICENSED PATENTS in that country in which such patent has issued
(claim of an issued, unexpired LICENSED PATENTS shall be presumed to
be valid unless and until it has been held to be invalid by a final
judgment of a court of competent jurisdiction from which no appeal can
be or is taken) or;
(b) Is covered by a pending claim being prosecuted in a pending patent
application under the LICENSED PATENTS in that country in which such
application is pending.
2.3 "LICENSED METHOD" means any process or method that is covered by the
LICENSED PATENTS in the country in which such process or method is used to
make LICENSED PRODUCTS or the use or practice would constitute, but for the
license granted to the LICENSEE pursuant to this Agreement, an infringement
of any issued or pending claim within LICENSED PATENTS in that country in
which the LICENSED METHOD is used or practiced.
2.4 "LICENSED FIELD-OF-USE" means the manufacture, use, sale or distribution of
any LICENSED PRODUCTS in any instrumentation.
2.5 "NET SALES" means the gross revenue of the LICENSED PRODUCTS in the form in
which it is sold, leased, used, or distributed, whether or not assembled
(and without excluding therefrom any components or subassemblies thereof,
Page 3 of 26 Pages BP 2024
MolDyn, 1993
<PAGE> 7
whatever their origin and whether or not patent impacted, except that
all separate optional items and products such as, without limitation,
printers, external storage devices, application software, network
connections or reagent kits which are not LICENSED PRODUCTS but which
are sold, leased, used or distributed for use in connection with the
system comprising LICENSED PRODUCTS shall be excluded), less the
following items but only insofar as they actually pertain to the
disposition of such LICENSED PRODUCTS by LICENSEE and are included in
such gross income, and (except Item d) are separately billed:
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