EXHIBIT 10.33
CONFIDENTIAL PORTIONS HAVE BEEN OMITTED BASED UPON A REQUEST
FOR CONFIDENTIAL TREATMENT PURSUANT TO RULE 24b-2 OF THE
SECURITIES EXCHANGE ACT OF 1934 AND HAVE BEEN SEPARATELY FILED
WITH THE COMMISSION.
EXECUTION COPY
EXCLUSIVE DISTRIBUTION AND LICENSE AGREEMENT
THIS EXCLUSIVE DISTRIBUTION AND LICENSE AGREEMENT is made and entered
into as of the 25th day of July 2002 (this "Agreement"), between EPOCH
BIOSCIENCES, INC., a Delaware corporation ("Epoch"), and AMERSHAM BIOSCIENCES
CORP., a Delaware corporation ( "Amersham").
R E C I T A L S
A. Amersham develops, manufactures, markets, distributes and sells
proprietary instruments and reagents used to perform genomic analysis.
B. Epoch wishes to appoint Amersham as its exclusive distributor of
Products (as defined below) on the terms and subject to the conditions set forth
in this Agreement, and Amersham is willing to accept such appointment.
A G R E E M E N T
NOW, THEREFORE, in consideration of the foregoing, and for other good
and valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, on the terms and subject to the conditions set forth herein, the
parties hereby agree as follows:
1. DEFINITIONS. When used herein, the following capitalized terms shall have the
following meanings:
"AFFILIATE" means, in respect of any specified Person, any other Person
which, directly or indirectly, controls, is controlled by, or is under common
control with, such specified Person. The term "control" means the possession,
directly or indirectly, of the power to direct or cause the direction of the
management or policies of a Person, through the ownership of voting securities
or other equity interests, and the terms "controlled" and "common control" have
correlative meanings.
"AGREEMENT" has the meaning set forth in the preamble.
"AMERSHAM" has the meaning set forth in the preamble.
Page 2
[*]
"CHANGE IN CONTROL" means a change in ownership or control of Epoch
effected through (i) the acquisition, directly or indirectly, by any Person or
related group of Persons, of beneficial ownership of securities possessing more
than fifty percent (50%) of the total combined voting power of Epoch's
outstanding securities, or (ii) a merger or consolidation in which securities
possessing more than fifty percent (50%) of the total combined voting power of
Epoch's outstanding securities are transferred to a Person or Persons different
from the persons holding those securities immediately prior to such transaction;
or (iii) the sale, transfer or other disposition of all or substantially all of
Epoch's assets in complete liquidation or dissolution of Epoch.
"CATALOGUE PROBE SET" means one or more MGB Eclipse Probes for a
specific target, designed by Epoch, pre-validated with synthetic or genomic DNA,
and supplied pre-diluted, with the probe, primers and hybridisation buffer in
separate containers (but Catalogue Probe Set shall not include any [*]).
"CONFIDENTIAL INFORMATION" has the meaning set forth in Section 11.1.
"CUSTOM PROBE SET" means one or more MGB Eclipse Probes, with a probe
sequence specified by the customer (which may be determined using the MGB
Eclipse Software), and supplied pre-diluted, with the probe, primers and
hybridisation buffer in separate containers.
"EPOCH" has the meaning set forth in the preamble.
"EPOCH MARKS" means any and all trademarks, trade names, service marks,
service names, logos and similar proprietary rights owned, controlled or
licensed, or adopted from time to time, by Epoch and used in connection with the
marketing, distribution and sale of the Products.
"FIELD" means the use of oligonucleotide probes for research use only,
and specifically excluding: (i) any human or animal diagnostic uses (including
any use of the results of any testing performed with any Product for patient
management), (ii) any industrial (including food industry) testing, (iii) any
forensic testing, and (iv) any environmental testing (including bio-terrorism
and bio-warfare).
"FOREIGN LIST PRICE" has the meaning set forth in Section 4.1.
"FTE" OR "FULL-TIME EQUIVALENT" means the services of a person suitably
qualified for the designated task for a period of one thousand eight-hundred and
fifty (1,850) hours on an annualized basis.
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 3
"KEY CUSTOMERS" shall mean significant customers or potential customers
for Catalogue Probe Sets and/or Custom Probe Sets in the Field, who the parties
hereto reasonably expect will order a minimum of [*]units of such Products per
year.
"LIST PRICE" has the meaning set forth in Section 4.1.
"MGB ECLIPSE PROBE" shall mean an oligonucleotide hybridization probe
containing a minor groove binder proprietary to Epoch and a quencher proprietary
to Epoch at the [*] end of the oligonucleotide and a fluorescent dye at the [*]
end of the oligonucleotide.
"MGB ECLIPSE SOFTWARE" means Epoch's computer software which provides a
means to choose oligonucleotides for DNA and RNA based laboratory methods, as
more fully described in the MGB Eclipse Software License.
"MGB ECLIPSE SOFTWARE LICENSE" shall have the meaning set forth in
Section 5.1.
"ON SITE TECHNICAL SALES AND SUPPORT SERVICES" means the provision of
personnel at customer locations to (i) provide technical assistance in
conjunction with the activities of sales representatives to develop customer use
of the Products, and (ii) provide more advanced technical assistance to
customers of the Products in the use of the Products than can be provided as
part of the Primary Product Support Services.
"PERSON" means any natural person or any corporation, partnership,
limited liability company, business association, joint venture or other entity.
"PRIMARY PRODUCT TECHNICAL SERVICES" means the provision of personnel to
provide assistance to customers of the Products seeking technical assistance in
the use of the Products, via telephone, email or similar remote means.
"PRODUCTS" means Custom Probe Sets and Catalogue Probe Sets and shall
exclude [*].
"SOFTWARE TECHNICAL SERVICES" means the provision of personnel to
provide assistance to customers of the Products seeking technical assistance in
use of the MGB Eclipse Software, via telephone, email or similar remote means.
"SUPPORT SERVICES AGREEMENT" shall have the meaning set forth in Section
7.1.
"TERRITORY" means the entire world.
"U.S. LIST PRICE" has the meaning set forth in Section 4.1.
2. DISTRIBUTION AND LICENSE RIGHTS.
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 4
2.1 APPOINTMENT AS EXCLUSIVE DISTRIBUTOR. Epoch hereby appoints Amersham
as Epoch's exclusive (subject to Section 2.2) distributor to market, distribute
and sell the Products in the Field in the Territory.
2.2 RESERVED RIGHTS OF EPOCH.
(a) As an exception to Amersham's exclusive rights, Epoch shall
have a limited right to manufacture MGB Eclipse Probes for a third party for [*]
only. The third party may market, promote, sell and distribute under its label
Custom Probe Sets on a limited basis and Catalogue Probe Sets on a repeat basis.
Nothing herein shall limit Amersham's right to market Products for [*].
(b) As a further exception to Amersham's exclusive rights, Epoch
may sell Products to [*] in the Field in the Territory, for use only by [*] and
its Affiliates and not for resale by [*]. Amersham agrees that during the term
of this Agreement it shall not sell or otherwise provide Products to [*]. Epoch
may also sell Products to customers of [*] who order such Products directly or
indirectly through [*] website ("[*] Web Customers"). To the extent permitted
under confidentiality agreements with [*] and/or [*] Web Customers, Epoch shall
report all sales of Products to [*] Web Customers to Amersham, on a quarterly
basis, not more than forty five (45) days after the end of each calendar
quarter. Epoch agrees that Amersham may thereafter pursue sales to such
identified [*] Web Customers.
(c) Amersham agrees and acknowledges that it has no rights with
respect to [*] and that Epoch may sell such probes, directly or indirectly to
customers.
2.3 TECHNOLOGY LICENSE. During the term and only for the purpose, of
this Agreement, Epoch grants Amersham a non-exclusive, non-assignable,
non-sublicensable (except to end-user customers of Amersham) and limited license
under Epoch's intellectual property rights, including patent rights, to market,
promote, sell, import, export and distribute the Products for use in the Field
in the Territory, subject to the restrictions and limitations herein.
2.4 FIELD LIMITATION. Amersham shall not (i) sell or transfer the
Products to any Person for use outside the Field, or (ii) sell the Products to
any Person which Amersham knows or has reason to know will use, or further sell
or transfer for use, outside the Field. In the event that Amersham learns of any
use outside the Field of the Products sold hereunder by any Person, it shall (i)
promptly notify such Person that such use is in violation of Epoch's
intellectual property rights, (ii) cease providing Products to such Person, and
(iii) notify Epoch of its actions. All labeling of the Products and all
instructions for use of the Products will conform to the requirements of Section
2.5 below.
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 5
2.5 LABEL REQUIREMENTS. All labeling for the Products will contain the
Epoch and Amersham names and logos in equal prominence, designating Epoch as the
manufacturer and Amersham as the distributor. All advertising and catalogue
entries with respect to the Products shall include, in a manner that is
reasonably prominent, the name "Epoch MGB Eclipse," or other mutually agreed
upon designation, and an acknowledgement that Epoch is the manufacturer of such
Product. Amersham may only resell Products that contain a label that clearly and
conspicuously states and includes the following: (a) that the Products are for
research purposes only, and may not be used for any other commercial, clinical,
diagnostic or any other use, and (b) that more information regarding the
foregoing can be found in the product insert accompanying such Product.
2.6 PRODUCT INSERTS. Each Product shall include a product insert that
clearly and conspicuously includes:
(a) all instructions for the use of the Product provided by Epoch
to Amersham for inclusion on such product insert; and
(b) the following information:
(i) that the Products are for research purposes only, and
may not be used for any other commercial, clinical, diagnostic or any other use,
including, without limitation any: (A) human or animal diagnostic uses
(including any use of the results of any testing performed with any Product for
patient management), (B) industrial (including food industry) testing, (C)
forensic testing, and (D) environmental testing (including bio-terrorism and
bio-warfare); and
(ii) that the Products or portions thereof are subject to
proprietary rights of Epoch and are made and sold under license from Epoch under
the patents and patent applications as may be designated by Epoch from time to
time set forth; and
(iii) that there is no implied license for any other use
with respect to the Products; and
(iv) that a license must be obtained directly from Epoch
with respect to any other proposed use of the Products.
2.7 EXPANSION OF FIELD AND PRODUCTS. The parties agree that they may
discuss expansion of the Field and expansion of the definition of Products in
connection with additional consideration from Amersham to Epoch, [*]. However,
both parties shall have the right to accept or reject any proposal from the
other party regarding expansion of the Field and/or the Products.
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 6
2.8 TRADEMARK LICENSE. Epoch hereby grants to Amersham a non-exclusive,
royalty-free right and license to use the Epoch Marks in connection with the
marketing, promotion, distribution, sale, technical assistance and support of
the Products. Amersham agrees not to alter or remove any Epoch Marks displayed
on any Product or its packaging. Except as provided in this Agreement, nothing
herein shall grant to Amersham any right, title or interest in Epoch Marks.
2.9 INSPECTION RIGHTS. During the term of this Agreement, Amersham will
have the right, at its sole cost and expense, during normal business hours and
upon reasonable notice, but not more than two (2) times each calendar year, to
have a representative inspect the relevant portions of Epoch's facilities where
the Products are manufactured in order to ensure that the manufacturing quality
control procedures with respect to the Products are in accordance with the terms
of this Agreement, provided, that Amersham's representative will not
unreasonably interfere with operations at such facilities. Such representative
shall at all times comply with the applicable safety and security rules of Epoch
as well as any applicable restrictions on the disclosure or use of confidential
information belonging to Epoch. Epoch may have a representative of Epoch
accompany the Amersham's representative at all times.
2.10 NO OTHER RIGHTS. Except as expressly provided in this Agreement, no
other right, title, or interest is granted by Epoch to Amersham hereunder. Epoch
may distribute products other than Products within the Territory, either
directly or indirectly through distributors, and no right, title or interest is
granted by Epoch to Amersham relating to such products.
3. SUPPLY, FORECASTS, ORDERS.
3.1 SUPPLY AND PURCHASE OBLIGATIONS. During the term of this Agreement,
Epoch shall supply the Products to Amersham for resale during the term of this
Agreement, subject to the terms, conditions, and restrictions herein, including
without limitation, the restrictions on the Field. Amersham shall purchase
Catalogue Probe Sets under this Agreement to the extent set forth in written
purchase orders provided to Epoch by Amersham and accepted by Epoch, subject to
the minimum commitments and binding forecasts set forth below. Amersham shall
purchase Custom Probe Sets utilizing the order placement function of the MGB
Eclipse Software, and each electronic submission of such an order shall
constitute a purchase order placed by Amersham with Epoch. In the event that a
Key Customer has installed the MGB Eclipse Software on a computer server owned
or controlled by such Key Customer, the Key Customer may place orders for Custom
Probe Sets utilizing the order placement function of the MGB Eclipse Software,
and the electronic submission of each such order shall constitute a purchase
order placed by Amersham with Epoch on behalf of such Key Customer; provided,
however, that Epoch shall promptly notify Amersham of each such order, and
Amersham shall be responsible for collection, payment and all other obligations
associated with such order in Amersham's capacity as a distributor as if
Amersham had itself placed the order, such order having been sent electronically
to Epoch by the Key Customer via the MGB Eclipse Software for the purpose of
convenience only. Amersham shall purchase all of its requirements of Products
from Epoch.
Page 7
3.2 MINIMUM STOCKING ORDERS. Within ten (10) days of the date hereof,
Amersham shall place a purchase order for at least [*] of each Catalogue Probe
Set listed in Epoch's current catalogue, as set forth on Exhibit A. Upon
development of any additional Catalogue Probe Sets, Amersham shall place a
purchase order for at least [*] units of such additional Catalogue Probe Set.
3.3 FORECASTS. Within six (6) months of the date hereof, and thereafter
not less than forty-five (45) days prior to the first day of each calendar
quarter Amersham shall provide Epoch with a written, good faith forecast of the
quantities of Catalogue Probe Sets that Amersham expects to purchase during each
quarter of the next four (4) calendar quarters. The quantities of the Catalogue
Probe Sets specified for each of the first calendar quarter of such forecast
shall be binding on Amersham, and Epoch shall require Amersham to take delivery
and pay for such amount of the Catalogue Probe Sets. Amounts for additional
quarters beyond the first quarter of each forecast shall be considered a
non-binding forecast. During any calendar quarter, Epoch shall not be required
to fill any order or series of orders in excess of one hundred (100%) of the
quantities forecasted for such quarter pursuant to the binding portion of the
forecast under this Section 3.3. In the event that Amersham shall provide Epoch
with orders in excess of such quantities, Epoch shall use commercially
reasonable efforts, but is not required to, supply additional Catalogue Probe
Sets.
3.4 MINIMUM BATCH SIZES. Unless otherwise agreed by Epoch, all orders
for Catalogue Probe Sets placed by Amersham shall be in batches of not less than
[*] units of a particular Catalogue Probe Set.
3.5 ORDERS. Amersham shall issue to Epoch from time to time purchase
orders which shall confirm quantities and shipping arrangements for Products.
Each such purchase order shall be in writing in a form reasonably acceptable to
Epoch (or submitted electronically using the MGB Eclipse Software, as
contemplated in Section 3.1), and shall specify the description of the
Product(s) ordered, the quantity ordered and the shipping arrangements. Such
purchase orders shall be issued no later than [*] days in advance of the
specified date of delivery. In the event of a conflict between the terms and
conditions of any purchase order (or terms included by the party placing an
order using the MGB Eclipse Software) and this Agreement, the terms and
conditions of this Agreement shall prevail.
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 8
3.6 DELIVERY AND ACCEPTANCE.
(a) DELIVERY. All Products supplied under this Agreement shall be
delivered by Epoch at its place of manufacture, and Amersham shall purchase such
Products, Exworks (EXW-INCOTERMS 2000), Epoch's place of manufacture. Amersham
shall have the right to designate shipping arrangements upon advance notice to
Epoch; provided, however, that if Amersham fails to designate a carrier, Epoch
shall arrange shipping on Amersham's behalf at Amersham's expense, to such
location as designated by Amersham in the applicable purchase order. Amersham
shall pay all freight, insurance charges, taxes, import and export duties,
inspection fees and other charges applicable to the sale and transport of
Products purchased by Amersham hereunder. Title and risk of loss and damages to
Products purchased by Amersham hereunder shall pass to Amersham upon delivery to
the carrier. Epoch shall provide for each lot of Product shipped hereunder, a
Certificate of Analysis (in substantially the form of Exhibit H attached hereto)
evidencing such lot's conformity with the specifications for such Product.
(b) REJECTION. If a shipment of Products or any portion thereof
does not contain those Products actually ordered by Amersham pursuant to the
applicable purchase order, then Amersham shall have the right to reject such
portion of the shipment of Products. Amersham shall give written notice to Epoch
of its rejection hereunder, within ten (10) days after Amersham's receipt of
such shipment, specifying the grounds for such rejection. In the event that
Amersham refuses acceptance, Epoch, upon its confirmation of the reasons for
refusal of the Products, shall either replace the defective Product or refund
the purchase price, as Epoch may elect, and the nonconforming portion of the
shipment of Products shall be held for Epoch's disposition, or shall be returned
to Epoch, in each case at Epoch's expense, and as directed by Epoch. If Epoch
and Amersham do not agree on the refusal or rejection of the Products, then
either party may refer the matter for final analysis to a specialized laboratory
of national reputation acceptable to both parties for the purpose of determining
the results. Any determination by such laboratory shall be final and binding
upon the parties hereto. The party in error shall bear all the expenses of such
specialized laboratory testing.
4. PRICE AND PAYMENT TERMS.
4.1 PRICES. Epoch shall establish list prices for all Products (the
"List Prices"). List Prices for current Products to be distributed in the U.S.,
or any territory other than Japan, Europe or the U.K. (the "U.S. List Price")
are to be established by Epoch and are attached hereto as Exhibit A. Separate
List Prices for current Products to be distributed in each of Europe, Japan or
the U.K. (the "Foreign List Price") shall be determined by Epoch in good faith
based on market conditions in each such territory, within thirty (30) days of
the date hereof, subject to Amersham's reasonable and good faith approval of the
methodology for determining such prices in relation to the corresponding U.S.
List Price for the same Product. List Prices for any new Products shall be
determined Solely by Epoch upon their introduction. Epoch may adjust List
Prices[*], at the end
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 9
of each [*], based upon (i) market conditions, or (ii) other reasons as
determined by Epoch, provided that increases pursuant to this subsection (ii)
shall be implemented no more often than[*], and shall not result in an [*] List
Price increase pursuant to subsection (ii) in excess of [*] of the increase
indicated by the U.S. Department of Labor Consumer Price Index in the prior
year.
(a) CATALOGUE PROBE SETS. Foreign List Prices for Catalogue Probe
Sets shall be provided to Amersham in U.S. Dollars based upon a conversion of
the applicable Foreign List Price determined by Epoch as described in Section
4.1 above, into U.S. Dollars based upon the trailing twelve (12) month average
exchange rate with respect to Yen, Euros or Pounds Sterling, as applicable
(based on the published exchanges rate in the U.S. edition of the Wall Street
Journal). In addition to the List Price Adjustments permitted pursuant to
Section 4.1 above, Epoch may adjust List Prices for Catalogue Probe Sets
semi-annually (within 15 days following June 30 and December 31 of each year)
based upon currency exchange rate fluctuations. Amersham shall pay to Epoch in
U.S. Dollars for each Catalogue Probe Set purchased hereunder, [*] percent
([*]%) of the U.S. List Price for such Catalogue Probe Set, subject to
reconciliation as described in Section 4.4. Notwithstanding the foregoing,
during the period that Epoch is providing On Site Technical Sales and Support
Services at its expense under Section 9.2(d) below Amersham shall pay to Epoch
for each Catalogue Probe Set purchased hereunder, [*] percent ([*]%) of the List
Price for such Catalogue Probe Set. All payments to Epoch shall be in U.S.
Dollars. Amersham may sell the Catalogue Probe Sets to its customers at any
price or for any consideration it desires.
(b) CUSTOM PROBE SETS. Foreign List Prices for Custom Probe Sets
shall be provided to Amersham in local currency. All payments to Epoch shall be
in U.S. Dollars, based on the published exchange rate in the U.S. edition of the
Wall Street Journal based on the date of the applicable order. Amersham shall
pay to Epoch for each Custom Probe Set purchased hereunder, [*] percent ([*]%)
of the List Price for such Custom Probe Set. Notwithstanding the foregoing,
during the period that Epoch is providing On Site Technical Sales and Support
Services at its expense under Section 9.2(d) below Amersham shall pay to Epoch
for each Custom Probe Set purchased hereunder, [*] percent ([*]%) of the List
Price for such Custom Probe Set. Amersham may sell the Custom Probe Sets to its
customers at any price or for any consideration it desires.
4.2 CREDIT FOR VOLUME DISCOUNTS.
(a) Epoch acknowledges that Amersham may provide discounts to
customers for volume purchases. To the extent that Amersham actually grants such
discounts, and to the extent the discounted amount does not exceed the
creditable discount amount set forth on Exhibit B, then Epoch will grant to
Amersham a credit equal to [*] percent ([*]%) of such creditable discount
amount. For example, if the List Price for a Product is $[*] and the applicable
creditable discount amount set forth on Exhibit B is [*]%, and if Amersham
actually grants such volume
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 10
discount so that the sale price is $[*], then Epoch will grant Amersham a credit
for [*]% of the $[*]discounted amount, or $[*]. Epoch will provide a credit of
[*]% only to the extent of the creditable discount amount set forth in Exhibit B
and any other discount shall be at Amersham's sole expense. The creditable
discount amount shall only apply to volume purchases under a single purchase
order or multiple releases under a standing purchase order only, and shall not
apply in the event of successive purchase orders from a customer which
ultimately aggregate enough units to otherwise qualify for the creditable
discount amount.
(b) On a quarterly basis, not more than fifteen (15) days after
the end of each calendar quarter, Amersham shall provide Epoch with a report of
such discounts actually granted (along with such documentation that Epoch
reasonably requests), which information may be incorporated into the report
described in Section 4.4 below. If any such discount was granted in a currency
other that U.S. dollars, it shall be converted to U.S. dollars based on the
average exchange rate during the quarter in which such discount was effected,
based on the exchange rates published in the U.S. edition of the Wall Street
Journal.
(c) Notwithstanding the foregoing, during the period that Epoch
is providing On Site Technical Sales and Support Services at its expense under
Section 9.2(d) below Amersham shall not be entitled to receive any credits from
Epoch for volume discounts it may grant its customers, whether or not in
conformity with Exhibit B.
4.3 PAYMENT TERMS. Upon shipment of Products to Amersham, Epoch shall
submit invoices therefor to Amersham. Payment for all Products shipped shall be
net [*] days from the date of invoice. All payment shall be made in U.S.
Dollars. To the extent the terms of any invoice submitted by Epoch conflict with
the terms of this Agreement, the terms of this Agreement shall control and be
binding upon the parties. Any amounts due under this Agreement which are more
than [*] days delinquent shall bear interest at a rate equal to the lesser of
one and one-half percent (1.5%) per month or the maximum rate permitted by
applicable law. Epoch reserves the right to discontinue all services and/or
withhold shipment of Products during any period in which Amersham has any
amounts outstanding and past due.
4.4 RECONCILIATION OF PAYMENTS. On a semi-annual basis, not more than
fifteen (15) days following June 30 and December 31 of each calendar year,
Amersham shall provide Epoch with a report of revenues for such six-month
period, setting forth in reasonable detail in a form acceptable to Epoch, (a)
the number of Products sold (identifying the specific Product, whether it is a
Catalogue Probe Set or Custom Probe Set), (b) the country or territory in which
each Catalogue Probe Set was sold, (c) the sale price of such Catalogue Probe
Set, (d) the applicable transportation costs, packing and shipping charges, and
taxes (including sales, use, turnover value-added and excise taxes) for each
such Catalogue Probe Set, (e) the volume discount provided with respect to such
Catalogue Probe Set, if any, in accordance with the reporting obligations under
Section 4.2, and (f) a reconciliation with respect to the difference between the
U.S. List Price paid by Amersham to Epoch for each Catalogue Probe Set and the
dollar-denominated Foreign List Price applicable to each such Catalogue Probe
Set for resale in the territory in which they were actually sold to customers.
Concurrently with such report, Amersham shall remit payment to Epoch in the
event that amounts are due to Epoch pursuant to subsection (f), and shall
request a credit in the event that amounts are due to Amersham pursuant
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 11
to subsection (f). By way of example, if 100 Catalogue Probe Sets sold to
Amersham based upon a U.S. List Price (in accordance to Section 4.1) are sold by
Amersham to a customer in the European territory, then Amersham shall remit to
Epoch the difference (or request a credit for the difference, as the case may
be) between the applicable percentage ([*]% or [*]%, pursuant to Section 4.1) of
the U.S. List Price that Amersham paid to Epoch upon the purchase of such 100
Catalogue Probe Sets, versus the dollar-denominated Foreign List Price for
Europe established by Epoch pursuant to Section 4.1 that is applicable to the
same Catalogue Probe Sets for purchase by Amersham for resale in Europe.
4.5 AUDIT RIGHTS. During the Term of this Agreement, Amersham shall
maintain complete and accurate records sufficient to enable Epoch to determine,
monitor and confirm the accuracy, for the three (3) prior years, of (a) such
discounts actually granted by Amersham with respect to the Products as described
in Section 4.2, and (b) the reports and payments or credits described in Section
4.4. No more than quarterly, unless otherwise agreed in writing, at the request
and the expense of Epoch, upon at least ten (10) days' prior notice, Amersham
shall permit Epoch to examine these records solely to the extent necessary to
verify the accuracy of (i) such discounts actually granted by Amersham to
customers with respect to the Products as described in Section 4.2, and (ii) the
reports described in Section 4.4. If such examination correctly concludes there
were credits issued to Amersham by Epoch with respect to discounts in excess of
the credits that should have been issued based on the discounts actually granted
pursuant to Section 4.2, or that Epoch was underpaid due to the inaccuracy of
any report pursuant to Section 4.4, then Amersham shall, within thirty (30) days
of notice from Epoch of such error, remit to Epoch the cash value of such
credits issued to Amersham or the amount of such underpayment, and if the
credits actually issued were in excess of ten percent (10%) of the amount of
credits that should have been issued, or if the underpayment was in excess of
ten percent (10%) of the amount that should have been paid to Epoch during such
quarter, then Amersham shall pay all costs of such examination, as well as
interest on such amount due to Epoch, at a rate of 1.5% per month, or the
highest rate permissible under applicable law, whichever is higher. This Section
4.5 shall survive the termination of this Agreement for a period of three (3)
years.
5. MGB ECLIPSE SOFTWARE.
5.1 LICENSE TO MGB ECLIPSE SOFTWARE. Concurrent with the execution of
this Agreement, Amersham and Epoch shall execute a software license agreement,
in the form attached as Exhibit C (the "MGB Eclipse Software License") granting
Amersham the right to install the MGB Eclipse Software on a computer server to
enable customers of Amersham to access the MGB Eclipse Software via a web site
owned and operated by or on behalf of Amersham, for the purpose of designing and
ordering Custom Probe Sets. Additionally, Epoch shall make available to Key
Customers the MGB Eclipse Software upon terms substantially similar to the terms
set forth in the MGB Eclipse Software License.
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 12
5.2 OBLIGATION TO INSTALL MGB ECLIPSE SOFTWARE. Amersham shall, within
thirty (30) days of the date hereof, with reasonable assistance from Epoch,
install and make operational on a web site owned and operated by or on behalf of
Amersham, the MGB Eclipse Software.
5.3 INSTALLATION OF MGB ECLIPSE SOFTWARE AT CUSTOMER SITES. In the event
that Amersham requests that Epoch install the MGB Eclipse Software at a customer
site, Epoch shall use its commercially reasonable efforts to effect such
installation, and Amersham shall reimburse Epoch for the actual cost of such
installation within thirty (30) days of Epoch's invoice reflecting such charges.
Epoch shall not otherwise be entitled to any amounts Amersham may charge its
customers for such installations.
5.4 CUSTOMIZATION OF MGB ECLIPSE SOFTWARE. In the event that Amersham
requests any modifications or customizations of the MGB Eclipse Software
("Software Modifications") reasonably necessary to effect the implementation of
the MGB Eclipse Software in accordance with the terms of this Agreement (or if
Amersham requests other Software Modifications which Epoch agrees in its sole
discretion to undertake), Epoch shall use its commercially reasonable efforts to
effect such Software Modifications, and Amersham shall reimburse Epoch for the
actual cost of such Software Modifications within thirty (30) days of Epoch's
invoice reflecting such charges. All right, title and interest in and to the MGB
Eclipse Software, the Software Modifications, and any intellectual property or
proprietary rights of any kind in connection with the MGB Eclipse Software, the
Software Modifications shall reside in and remain vested in Epoch.
6. JOINT RESEARCH EFFORTS.
6.1 MODIFICATION OF PRODUCTS. Amersham may submit to Epoch a request for
certain modifications or improvements to the Products, and Epoch shall review
and discuss such request with Amersham. Upon mutual agreement by Epoch and
Amersham, Epoch shall undertake the necessary research and development
activities to implement such modifications or improvements. Amersham will
reimburse Epoch all costs associated with such research and development
activities, including personnel costs at an hourly rate of [*] dollars ($[*])
per hour. Payment for such services shall be net thirty (30) days from the date
of Epoch's invoice, which shall include an accounting of the hours spent on such
requested modifications or improvements. All payment shall be made in U.S.
Dollars. "Inventions" shall mean all discoveries, concepts, ideas and other
intellectual property or proprietary rights, whether patentable or not, which
arise from or are directly related to the development activities described in
this Section 6.1, including but not limited to articles, processes, compounds,
methods, formulae, systems and techniques, as well as improvements thereof and
relating to the Products. Any Inventions arising out of the development
activities described in this Section 6.1 for which Amersham has reimbursed Epoch
in full, and which are directly related to modifications or improvements to the
Products, will be jointly owned
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 13
by the Parties. As used herein, the terms "inventor" and "Invention" are defined
to be consistent with those definitions established and set forth in Title 35
U.S.C. and case law pertaining thereto.
7. ADDITIONAL OBLIGATIONS OF AMERSHAM.
7.1 SUPPORT SERVICES. Within ninety (90) days of the date hereof,
Amersham and Epoch shall negotiate and execute a Support Services Agreement
which, subject to approval by Amersham's Vice President of Manufacturing (which
consent shall not be unreasonably withheld), shall obligate Amersham, at Epoch's
option, to (i) lease facilities to Epoch, (ii) provide employees to Epoch and
(iii) provide materials and services to Epoch, all in connection with Epoch's
manufacture of Custom Probe Sets in Europe and Japan, on the terms and
conditions in the Support Services Agreement. When completed, the Support
Services Agreement shall be appended to this Agreement as Exhibit D.
7.2 REGISTRATIONS, LICENSES AND PERMITS. Amersham shall comply in all
material respects with all laws, rules and regulations applicable to the
marketing, promotion, distribution and sale of Products within the Territory. If
and as required from time to time under the laws of any country within the
Territory, Amersham shall apply for and use its commercially reasonable efforts
to obtain all registrations, licenses and permits that are necessary to market,
distribute and sell the Products within such country. Epoch shall reasonably
cooperate with Amersham in connection with Amersham's efforts to obtain such
registrations, licenses and permits.
7.3 PROMOTION OF PRODUCTS; ADVERTISING; LAUNCH AND MARKETING PLAN.
(a) Amersham shall use its best efforts to promote the sale of
the Products within the Territory. Amersham shall advertise, promote and market
the Products in a commercially reasonable manner and furnish appropriate Product
information and promotional materials to its customers. Such efforts shall
include, but not be limited to, at Amersham's expense, preparing promotional
materials in appropriate languages for the Territory, advertising the Products
in appropriate trade publications and journals, participating in appropriate
trade shows (at a minimum the major international meeting trade shows that
relate to the Products and the Field), promoting the Products on Amersham's web
site, providing customer training where required, creating a sales force
sufficient to promote the Products, and directly soliciting orders from
customers for the Products.
(b) Amersham shall expend, out-of-pocket, for promotion and
advertising of the Products, a minimum, [*]dollars ($[*]) in 2002, [*] dollars
($[*]) in 2003, [*] dollars ($[*]) in 2004, and [*] dollars ($[*]) in 2005. For
purposes of the foregoing sentence, such promotion and advertising expenditures
shall include the actual out of pocket costs of printing, mailing, advertising
placement, seminars and trade shows, and shall exclude all internal costs and
costs related to marketing, such as market surveys and the costs of designing
sales literature and
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 14
advertising. To the extent any such expenditures relate to Amersham products
other than the Products, such expenditure shall be pro rated to reflect the
relative exposure given to the Products compared to such other Amersham
Products.
(c) Within sixty (60) days of the date hereof, Amersham shall
provide to Epoch a detailed plan and budget for the launch and subsequent
marketing of the Products by Amersham for discussion. Such plan and budget will
set out the activities and strategies to be undertaken by Amersham as generally
outlined in Section 7.3(a) above, and the use of the annual minimum amounts set
forth in Section 7.3(b) above. Within thirty (30) days after receipt of such
plan and budget, Epoch shall supply any comments thereon to Amersham and, to the
extent commercially reasonable, Amersham shall include any changes requested by
Epoch.
(d) Amersham may indicate to the public that is an "Authorized
Distributor" of the Products in the Territory, and may indicate on its printed
materials and web site that it is an "Authorized Distributor" of Products and,
subject to Epoch's prior approval, may have Epoch Marks included thereon.
7.4 MINIMUM PURCHASES. Amersham shall purchase the amounts of Products
pursuant to the binding forecasts set forth in Section 3.3 above.
7.5 MINIMUM ANNUAL SALES. In the event that Amersham's revenue from
sales of Products to its non-Affiliate customers do not exceed the amounts set
forth below:
Calendar Year Annual Minimum Revenue
------------- ----------------------
2002 $[*]
2003 $[*]
2004 $[*]
2005 $[*]
Epoch shall have the right to convert Amersham's rights under this Agreement to
non-exclusive. For purposes of this Section 7.5, Amersham's revenue shall mean
the amount actually received in a given period by Amersham or its Affiliates
from un-Affiliated Third Parties for purchases of Products, but excluding
transportation costs, packing and shipping charges, and taxes (including sales,
use, turnover value-added and excise taxes) and net of returns, rebates,
adjustments and discounts. Revenue received in currency other than U.S. dollars
shall be converted into U.S. dollars for such calculation on a quarterly basis,
based on the average exchange rate during the applicable quarter, according to
the exchange rates published in the U.S. edition of the Wall Street Journal.
Within thirty (30) days of the end of each calendar year, Amersham shall provide
Epoch with a report of revenues for such year. In the event that such sales do
not exceed the amount set forth above, Epoch may, within sixty (60) days of
receipt of such report, convert Amersham's rights under this Agreement to
non-exclusive, for the balance of the term.
7.6 AUDIT RIGHTS. During the Term of this Agreement, Amersham shall
maintain complete and accurate records sufficient to enable Epoch to determine,
monitor and confirm the
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 15
accuracy of the report described in Section 7.5 above, for the three (3) prior
years. No more than annually, unless otherwise agreed in writing, at the request
and the expense of Epoch, upon at least ten (10) days' prior notice, Amersham
shall permit Epoch to examine these records solely to the extent necessary to
verify the accuracy of the report described in Section 7.5 above. If such
examination determines that Amersham did not meet the targets set forth in
Section 7.5, then Epoch may immediately terminate this Agreement or convert
Amersham's rights to non-exclusive.
7.7 DISTRIBUTION ACTIVITIES. Amersham shall be responsible, at is own
expense, for all order entry, distribution, fulfillment, inventory management,
billing, collection of receivables, and processing of returns for the Products
in the Territory.
7.8 TERMS AND CONDITIONS FOR RESALE OF PRODUCTS. Amersham shall sell all
Products to customers in accordance with terms and conditions of sale which are
in all material respects consistent with Amersham's standard terms and
conditions of sale, including, without limitation, those limited warranty and
limitation of liability provisions attached hereto as Exhibit G (the "Damage
Limitation Provisions"), which Damage Limitation Provisions shall include
Amersham's suppliers and Product manufacturers as parties with respect to whom
claims for such damages are to be limited in nature.
8. ADDITIONAL OBLIGATIONS OF EPOCH.
8.1 MARKETING ASSISTANCE.
(a) PROMOTIONAL MATERIALS. Epoch shall, at Epoch's expense,
design and furnish to Amersham, in electronic format, template Product sales
literature, advertising and promotional materials, as well as supporting Product
technical literature and materials, in all cases in the English language only.
In addition, Epoch shall cooperate with Amersham in preparing promotional
materials for use in the Territory.
(b) PRODUCT POSITIONING AND PRICING. Epoch shall determine the
specific gene or SNP targets with respect to the Catalogue Probe Sets. Epoch
shall determine the List Price for Products as set forth in Section 4.1.
(c) TRADE SHOWS. Amersham may request that Epoch provide a
representative to attend major international meeting trade shows that relate to
the Products and the Field. Subject to acceptance by Epoch of such request,
Amersham shall reimburse Epoch one hundred percent (100%) of its fully-burdened
personnel costs and expenses incurred in providing such Epoch representative.
Page 16
9. TRAINING, TECHNICAL SALES AND SUPPORT.
9.1 INITIAL LAUNCH TRAINING. Epoch agrees to provide an initial training
session of two or three days in duration for up to [*] ([*]) of Amersham's
product managers and technical sales personnel to train such Amersham personnel
to launch the Products, to promote the sale of Products and to perform technical
assistance and support for its customers. Such initial training session will be
conducted one time within three (3) months of the date of this Agreement at
Epoch's facilities in Bothell, Washington or, at Amersham's election and upon
agreement by and under the guidance of Epoch, at Amersham's facilities in
Piscataway, New Jersey. Amersham shall reimburse Epoch for its costs as set
forth below, including the reasonable travel and lodging expenses of Epoch
personnel in the event that such training is conducted at Amersham's facilities
in Piscataway, New Jersey. In all cases Amersham shall bear the cost of travel
and lodging for its own personnel). In addition, Epoch will provide Product
updates and service bulletins as they become available.
9.2 NORTH AMERICAN TECHNICAL SUPPORT AND SALES ASSISTANCE.
(a) GEOGRAPHIC COVERAGE. The provisions of this Section 9.2 shall
apply to activities in the United States and Canada.
(b) SOFTWARE TECHNICAL SERVICES. For a period of three (3) months
from the date of this Agreement, Epoch will (i) provide Software Technical
Services to customers of Amersham, and (ii) train Amersham's internal technical
service personnel on the provision of Software Technical Services to customers.
Amersham shall reimburse Epoch one hundred percent (100%) of its fully-burdened
personnel costs and expenses incurred in provided such services and training,
such costs not to exceed $[*] per man hour (as adjusted annually at the end of
each calendar year based upon the increase indicated by the U.S. Department of
Labor Consumer Price Index in the prior year).
(c) PRIMARY PRODUCT TECHNICAL SERVICES. For a period of three (3)
months from the date of this Agreement, Epoch will (i) provide Primary Product
Technical Services to customers of Amersham, and (ii) train Amersham's internal
technical service personnel on the provision of Primary Product Technical
Services to customers. In the event that after such three (3) month period,
Amersham continues to require Epoch to provide Primary Product Technical
Services, then Epoch shall use commercially reasonable efforts to do so, and
Amersham shall reimburse Epoch one hundred percent (100%) of its fully-burdened
personnel costs and expenses incurred in provided such services and training,
such costs not to exceed $[*] per man hour (as adjusted annually at the end of
each calendar year based upon the increase indicated by the U.S. Department of
Labor Consumer Price Index in the prior year).
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 17
(d) ON SITE TECHNICAL SALES AND SUPPORT SERVICES. For a period of
up to one (1) year from the date of this Agreement, Epoch will provide at least
[*] ([*]) FTEs for On Site Technical Sales and Support Services to Key
Customers, and other important customers to the extent reasonably requested by
Amersham. During such period the special pricing provision in Section 4.1 shall
apply and Amersham shall not be entitled to any credits for volume discounts
under Section 4.2. However, if at the end of such period, (i) the additional
amounts paid by Amersham to Epoch because of the special pricing provisions and
the abatement of credits for volume discounts do not exceed (ii) the aggregate
number of hours expended by Epoch personnel for such services, times [*] dollars
($[*]) (as adjusted annually at the end of each calendar year following the date
hereof based upon the increase indicated by the U.S. Department of Labor
Consumer Price Index in the prior year), then Amersham shall reimburse Epoch for
such shortfall within thirty (30) days of receipt from Epoch of a report setting
out the amount of such shortfall, accompanied by such information in support
thereof as reasonably required by Amersham.
If during or at the end of such one (1) year period,
Amersham has at least [*] qualified FTE's providing On Site Technical Sales and
Support Services to the reasonable satisfaction of Epoch, then Epoch shall cease
providing such services and the special pricing provision in Section 4.1 shall
no longer apply and Amersham shall be entitled to credits for volume discounts
under Section 4.2.
If during or at the end of such one (1) year period,
Amersham does not have at least [*] qualified FTE's providing On Site Technical
Sales and Support Services to the reasonable satisfaction of Epoch, then Epoch
may continue to provide such services and (i) Amersham shall reimburse Epoch one
hundred percent (100%) of its fully-burdened personnel costs and expenses
incurred in provided such services, and (ii) the special pricing provision in
Section 4.1 shall no longer apply and Amersham shall be entitled to credits for
volume discounts under Section 4.2.
(e) ADDITIONAL TRAINING. Additional training may be provided upon
request by Amersham and agreement by Epoch, provided that Amersham reimburses
Epoch one hundred percent (100%) of its fully-burdened personnel costs and
expenses, such costs not to exceed $[*] per man hour (as adjusted annually at
the end of each calendar year based upon the increase indicated by the U.S.
Department of Labor Consumer Price Index in the prior year).
(f) REPORTS AND REIMBURSEMENT. Epoch shall periodically provide
Amersham a reasonably detailed accounting of its costs and expenses under
Sections 9.2 (b), (c), (d) and (e) and Amersham shall pay to Epoch the amounts
listed therein within thirty (30) days of receipt of such accounting.
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 18
9.3 REST OF WORLD TECHNICAL SUPPORT AND SALES ASSISTANCE.
(a) GEOGRAPHIC COVERAGE. The provisions of this Section 9.2 shall
apply to activities outside of the United States and Canada.
(b) ADDITIONAL TERMS. Within ninety (90) days of the date hereof,
the parties shall negotiate in good faith technical support and sales assistance
for the Territory outside of the United States and Canada. The scope and
operational and financial responsibilities of parties shall be comparable in
scope to that set forth in Sections 9.2(b) through (g) above. When complete, the
parties agreement on such matters shall be appended to this Agreement as Exhibit
E.
(c) FAILURE TO AGREE. In the event the parties do not come to
agreement as set forth in Section 9.3 (b) above, Epoch may provide such services
and Amersham shall reimburse Epoch one hundred percent (100%) of its
fully-burdened personnel costs and expenses. Epoch shall periodically provide
Amersham a reasonably detailed accounting of its costs and expenses in providing
such services and Amersham shall pay to Epoch the amounts listed therein within
thirty (30) days of receipt of such accounting.
10. REPRESENTATIONS AND WARRANTIES.
10.1 EPOCH. Epoch represents and warrants to Amersham that (i) Epoch has
all necessary corporate power and authority to enter into this Agreement and to
perform all of its obligations hereunder, (ii) this Agreement has been duly
authorized, executed and delivered by Epoch, (iii) the execution, delivery and
performance by Epoch of this Agreement, and the consummation of the transactions
contemplated hereby, do not violate or conflict with the charter or bylaws of
Epoch, any material contract, agreement or instrument to which Epoch is a party
or by which it or its properties are bound, or any judgment, decree, order or
award of any court, governmental body or arbitrator by which Epoch is bound, or
any law, rule or regulation applicable to Epoch, (iv) to the best of Epoch's
actual knowledge, without investigation, the manufacture, distribution or sale
of the Products, and any parts thereof, does not constitute an infringement of
any patent, copyright, trademark, trade secret or other proprietary rights of a
third party under the laws of the country of destination and (v) there is no
pending or, to its best knowledge, there is no pending or threatened claim,
action, suit or proceeding involving a claim that the manufacture, distribution
or sale of any Products infringes or violates the intellectual, proprietary or
other rights of any other Person.
(a) LIMITED PRODUCT WARRANTY. Epoch warrants to Amersham that,
upon delivery of any Products to Amersham, and for a period of [*] ([*]) months
thereafter, if stored by Amersham and its customers in accordance with the
Product storage and handling requirements
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 19
set forth on Exhibit F hereto, such Products will be free from defects in
material and workmanship, and will substantially meet the general MGB Eclipse
Probe specifications set forth on Exhibit F hereto and the Product
specifications described in the Certificate of Analysis with respect to such
Product. Epoch's sole liability and Amersham's and its customers' sole remedy in
the event of a Product failing to meet the foregoing limited warranty will be,
at Epoch's option, either to (i) replace such deficient Product in a timely
manner at its own expense or (ii) refund to Amersham all costs associated with
the purchase and shipping of such deficient Product.
(b) NO OTHER WARRANTY. EXCEPT AS EXPRESSLY SET FORTH HEREIN,
EPOCH MAKES NO WARRANTIES, EXPRESS OR IMPLIED, WITH RESPECT TO THE PRODUCTS
INCLUDING, WITHOUT LIMITATION, ANY WARRANTY OF MERCHANTABILITY, NONINFRINGEMENT
OR WARRANTY OF FITNESS FOR A PARTICULAR PURPOSE.
10.2 AMERSHAM. Amersham represents and warrants to Epoch that (a)
Amersham has all necessary corporate power and authority to enter into this
Agreement and to perform all of its obligations hereunder, (b) this Agreement
has been duly authorized, executed and delivered by Epoch, and (c) the
execution, delivery and performance by Amersham of this Agreement, and the
consummation of the transactions contemplated hereby, do not violate or conflict
with the Certificate of Incorporation or Bylaws of Amersham, any material
contract, agreement or instrument to which Amersham is a party or by which it or
its properties are bound, or any judgment, decree, order or award of any court,
governmental body or arbitrator by which Amersham is bound, or any law, rule or
regulation applicable to Amersham.
11. CONFIDENTIALITY.
11.1 CONFIDENTIALITY. Each party acknowledges that, in the course of
performing its duties and obligations under this Agreement, certain information
that is confidential or proprietary to such party ("Confidential Information")
will be furnished by the other party or such other party's representatives. Each
party agrees that any Confidential Information furnished by the other party or
such other party's representatives will not be used by it or its representatives
except in connection with, and for the purposes of, the promotion, marketing,
distribution and sale or Products under this Agreement and, except as provided
herein, will not be disclosed by it or its representatives without the prior
written consent of the other party. Notwithstanding the foregoing, the parties
agree that all Confidential Information shall be clearly marked "CONFIDENTIAL"
or, if in furnished in oral form, shall be stated to be confidential by the
party disclosing such information at the time of such disclosure and reduced to
a writing by the party disclosing such information which is furnished to the
other party or such other party's representatives within forty-five (45) days
after such disclosure.
11.2 EXCEPTIONS. The confidentiality obligations of each party under
Section 11.1 do not extend to any Confidential Information furnished by the
other party or such other party's representatives that (a) is or becomes
generally available to the public other than as a result of a disclosure by such
party or its representatives, (b) was available to such party or its
representatives on a non-confidential basis prior to its disclosure thereto by
the other party or such other party's representatives, (c) was independently
developed without the use of the other party's
Page 20
Confidential Information by representatives of such party who did not have
access to the other party's Confidential Information, as established by
contemporaneous written records, or (d) becomes available to such party or its
representatives on an non-confidential basis from a source other than the other
party or such other party's representatives; provided, however, that such source
is not bound by a confidentiality agreement with the other party or such other
party's representatives.
11.3 COMPELLED DISCLOSURE. In the event that either party or its
representatives are requested or become legally compelled (by oral questions,
interrogatories, requests for information or document subpoena, civil
investigative demand or similar process) to disclose any Confidential
Information furnished by the other party or such other party's representatives
or the fact that such Confidential Information has been made available to it,
such party agrees that it or its representatives, as the case may be, will
provide the other party with prompt written notice of such request(s) so that
the other party may seek a protective order or other appropriate remedy and/or
waive compliance with the provisions of this Agreement. In the event that such
protective order or other remedy is not obtained, or that the other party waives
compliance with the provisions of this Agreement, such party agrees that it will
furnish only that portion of such Confidential Information that is legally
required and will exercise its best efforts to obtain reliable assurance that
confidential treatment will be accorded to that portion of such Confidential
Information and other information being disclosed.
11.4 SURVIVAL. The obligations of the parties under this Section 11
shall survive the expiration or earlier termination of this Agreement for a
period of [*] years.
12. INDEMNIFICATION; INSURANCE.
12.1 EPOCH INDEMNITY. Epoch agrees to indemnify, defend and hold
harmless Amersham and its Affiliates from and against any claims, losses,
damages, liabilities, causes of action, suits, costs and expenses, including all
reasonable attorneys' fees and disbursements of counsel and expenses of
investigation, incurred by Amersham or such Affiliates arising out any third
party claim relating to:
(a) any breach by Epoch of its material representations,
warranties, covenants and agreements under this Agreement;
(b) any claim, action, suit or proceeding brought, or threatened
to be brought, against Amersham or its Affiliates by[*], alleging that the use
of any Product, when used in accordance with the instructions for use provided
by Epoch pursuant to Section 2.6 hereof, violates the terms of that certain
license agreement by and between Epoch and [*]dated as of [*].
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 21
(c) Amersham's purchase, use or possession of the Products, or
its customers' purchase, use, possession or disposal of the Products provided
under this Agreement (in all cases, only when used in accordance with the
instructions for use provided by Epoch pursuant to Section 2.6 hereof, in the
Field and in accordance with the terms of this Agreement); except where arising
from breach of this Agreement by Amersham or the bad faith, negligence or
willful default of Amersham, its Affiliates or its customers.
(d) any third party claim, action, suit or proceeding brought, or
threatened to be brought, against Amersham or any of their Affiliates alleging
that the marketing, distribution, use or sale of any Products (in all cases,
only when used in accordance with the instructions for use provided by Epoch
pursuant to Section 2.6 hereof, in the Field and in accordance with the terms of
this Agreement) infringes or violates any U.S. or European patent or trademark
of any third party (except where such infringement arose as a result of Epoch
having followed a design or instruction furnished by Amersham or its Affiliates
or as a result of the independent negligence of Amersham, its Affiliates or its
customers, or unless Epoch to the best of its knowledge did not know of such
infringement).
In the event that the use of a Product (when used in accordance with the
instructions for use provided by Epoch pursuant to Section 2.6 hereof) is
enjoined as infringing against any third party U.S. or European patent or
trademark (except where such infringement arose as a result of Epoch having
followed a design or instruction furnished by Amersham or its Affiliates or as a
result of the independent negligence of Amersham, its Affiliates or its
customers, or unless Epoch to the best of its knowledge did not know of such
infringement), Epoch shall, as soon as practicable, at its own option and
expense, either: (i) procure the right for the Amersham to continue to sell the
infringing Product, (ii) replace the infringing Product with a suitable
non-infringing Product, or (iii) refund amounts paid by Amersham to Epoch for
such infringing Products sold to customers and unused as of such date, accept
the return of any such unsold infringing Products from Amersham, and compensate
Amersham for any costs or expenses directly attributable to refunds made to
Amersham's customers upon return of an affected Product. Epoch's indemnification
obligations pursuant to Section 12.1(c) and 12.1(d) hereof with respect to a
particular Product or third party claim shall be contingent upon Amersham
meeting its obligations pursuant to Section 7.8 hereof with respect to such
Product and such third party to which such claim relates.
12.2 AMERSHAM INDEMNITY. Amersham agrees to indemnify, defend and hold
harmless Epoch and its Affiliates from and against any claims, losses, damages,
liabilities, causes of action, suits, costs and expenses, including all
reasonable attorneys' fees and disbursements of counsel and expenses of
investigation, incurred by Epoch or such Affiliates arising out of a third party
claim relating to any breach by Amersham of its material representations,
warranties, covenants and agreements under this Agreement.
12.3 CLAIMS FOR INDEMNIFICATION. Whenever any indemnification claim
arises under this Agreement, the party seeking indemnification (the "Indemnified
Party") shall promptly notify the other party (the "Indemnifying Party") of the
claim and, when known, the facts constituting the basis of such claim; provided,
however, that failure to give such notice shall not relieve the Indemnifying
Party of its obligation hereunder unless and to the extent that such failure
Page 22
substantially prejudices the Indemnifying Party. The Indemnifying Party may,
upon prior written notice to the Indemnified Party, assume the defense of such
claim with counsel reasonably satisfactory to the Indemnified Party, and shall
thereafter be liable for all expenses incurred in connection with defense
thereof, including attorneys' fees and expenses; provided, however, that if the
Indemnifying Party assumes the defense of any such claim, the Indemnified Party
may participate in such defense at its own expense and with counsel of its
choice; provided further, however, that if there are one or more legal defenses
available to the Indemnified Party that conflict with those available to the
Indemnifying Party or there exists any other conflict of interest, the
Indemnifying Party shall not have the right to assume the defense of such claim
but the Indemnified Party shall have the right to employ separate counsel at the
expense of the Indemnifying Party and to participate in the defense thereof. If
the Indemnifying Party elects to control the defense of such claim, it shall do
so diligently and shall have the right to settle any claim for monetary damages,
provided such settlement includes a complete and absolute release of the
Indemnified Party. Notwithstanding anything to the contrary, the Indemnifying
Party may not settle any claims for fines, penalties or the like without the
prior written consent of the Indemnified Party.
12.4 THIRD PARTY INFRINGEMENT. In the case of any infringement or
violation by any third party of any distribution or other rights granted to
Amersham hereunder, Epoch shall have the right, but not the obligation, at
Epoch's expense, to cause such third party to cease such infringement and to
otherwise enforce such rights. Each party shall promptly notify the other of any
such infringement or violation and Epoch shall keep Amersham informed as to the
prosecution of any action for such enforcement. Amersham shall assist Epoch as
reasonably requested in taking any such actions against any such infringer and
may join with Epoch to recover lost profits in any action, suit or proceeding
commenced, or claim made, by Epoch against such infringer. If Epoch fails to
bring an action or proceeding with respect the foregoing within: (a) sixty (60)
business days following the notice of alleged infringement or violation or (b)
ten (10) days before the time limit, if any, set forth in the appropriate laws
and regulations for the filing of such actions, whichever comes first, Amersham
shall have the right to bring and control any such action, by counsel of its own
choice, at Amersham's own expense. In such event, Epoch shall assist Amersham as
reasonably requested in taking any such actions against any such infringer and
may join with Amersham to recover lost profits in any action, suit or proceeding
commenced, or claim made, by Amersham against such infringer. Any amounts
recovered as a result of any such action, suit, proceeding or claim shall be
applied, first, to reimburse Epoch and Amersham for their out-of-pocket costs
and expenses incurred in connection therewith, and, second, to compensate Epoch
and Amersham for any lost profits resulting from such infringement as may be
agreed upon by the parties.
12.5 LIMITATION ON LIABILITY. IN NO EVENT SHALL EITHER PARTY BE LIABLE
TO THE OTHER PARTY HERETO OR ITS AFFILIATES FOR ANY INDIRECT, SPECIAL,
CONSEQUENTIAL OR INCIDENTAL DAMAGES, HOWEVER CAUSED AND BASED ON ANY THEORY OF
LIABILITY, ARISING OUT OF THIS AGREEMENT, THE PERFORMANCE BY SUCH PARTY OF ITS
OBLIGATIONS HEREUNDER OR THE MARKETING, DISTRIBUTION OR SALE OF PRODUCTS, AND
WHETHER OR NOT THE PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
THIS
Page 23
LIMITATION SHALL APPLY NOTWITHSTANDING ANY FAILURE OF ESSENTIAL PURPOSE OF ANY
LIMITED REMEDY PROVIDED FOR HEREIN.
13. TERM AND TERMINATION.
13.1 TERM. The term of this Agreement shall commence on the date hereof
and shall continue until December 31, 2005, unless earlier terminated pursuant
to Section 13.2. This term of this Agreement may be extended and renewed for
successive one (1) year periods prior to the expiration of this Agreement by
mutual agreement of the parties.
13.2 TERMINATION OF AGREEMENT. This Agreement may be terminated as
follows:
(a) The parties may terminate this Agreement upon their mutual
written agreement.
(b) Epoch may terminate this Agreement if Amersham breaches any
of its material representations, warranties, covenants or obligations under this
Agreement and such breach continues for a period of thirty (30) days following
Amersham's receipt of written notice from Epoch setting forth the nature of such
breach; provided, however, that in the event such breach is not cured within
such thirty (30) day period, Epoch may not terminate this Agreement if Amersham
promptly commences to cure such breach within such thirty (30)day period and
thereafter diligently pursues such cure to completion; provided further,
however, that the cure period for any such breach shall not exceed sixty (60)
days from the date of Amersham's receipt of written notice from Epoch.
(c) Amersham may terminate this Agreement if Epoch breaches any
of its material representations, warranties, covenants or obligations under this
Agreement and such breach continues for a period of thirty (30) days following
Epoch's receipt of written notice from Amersham setting forth the nature of such
breach; provided, however, that in the event such breach is not cured within
such thirty (30) day period, Amersham may not terminate this Agreement if Epoch
promptly commences to cure such breach within such thirty (30) day period and
thereafter diligently pursues such cure to completion; provided further,
however, that the cure period for any such breach shall not exceed sixty (60)
days from the date of Epoch's receipt of written notice from Amersham.
(d) Either party may terminate immediately this Agreement by
written notice upon the occurrence of any of the following events: (i) the other
party is or becomes insolvent or unable to pay its debts as they become due
within the meaning of the United States Bankruptcy Code (or any successor
statute or foreign equivalent); or (ii) the other party appoints or has
appointed a receiver for all or substantially all of its assets, or makes an
assignment for the benefit of its creditors; or (iii) the other party files a
voluntary petition under the United States Bankruptcy Code (or any successor
statute or foreign equivalent); or (iv) the other party has filed against it an
involuntary petition under the United States Bankruptcy Code (or any successor
statute or foreign equivalent), and such petition is not dismissed within ninety
(90) days.
13.3 CHANGE IN CONTROL. In the event of a Change in Control of Epoch and
the surviving or controlling entity desires to distribute Products in any
country in the Territory, then
Page 24
Epoch shall have the right to terminate this Agreement with Amersham, with
respect to such country or countries, in accordance with the following terms:
(a) Epoch shall provide Amersham with a written notice of
termination of this Agreement (the "CIC Notice"), to become effective one
hundred eighty (180) days from the date of the notice (the "Notice Period");
(b) Upon issuance of the CIC Notice, Epoch will accept the return
of any unused Products for such country or countries, in its original packaging,
for credit at the original price paid by Amersham for such Products; and
(c) Provided that as of the effective date of termination,
Amersham's distribution rights have not been converted to non-exclusive pursuant
to the terms of this Agreement, Epoch shall pay to Amersham a "Termination Fee."
The Termination Fee shall be calculated based upon the following percentages of
Amersham's revenue from sales of Products to its non-Affiliate customers in the
country or countries in which Epoch has terminated Amersham's distribution
rights (excluding transportation costs, packing and shipping charges, and taxes
(including sales, use, turnover value-added and excise taxes) and net of
returns, rebates, adjustments and discounts) ("Net Revenue"). Net Revenue
received in currency other than U.S. dollars shall be converted into U.S.
dollars for such calculation on a quarterly basis, based on the average exchange
rate during the applicable quarter, according to the exchange rates published in
the U.S. edition of the Wall Street Journal:
Amount Payable as a % of Net Revenues in 12
Months Preceding
Effective Date of Termination in Applicable
Effective Date of Termination Country or Countries
----------------------------- -------------------------------------------
2002 [*]%
2003 [*]%
2004 [*]%
January 1, 2005 -- June 30, 2005 [*]%
July 1, 2005 -- December 31, 2005 [*]%
Notwithstanding any of the foregoing, in no event shall the
Termination Fee exceed [*] percent ([*]%) of the consideration received by Epoch
or its stockholders pursuant to the Change in Control transaction, as calculated
as of the closing date of such transaction.
The Termination Fee shall be payable to Amersham by Epoch or
Epoch's successor within thirty (30) days following termination of this
Agreement. Amersham shall provide Epoch with a report evidencing Amersham's Net
Revenues for the applicable period and maintain complete and accurate records
sufficient to enable Epoch to determine and confirm the
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 25
accuracy of such report, and at the request and the expense of Epoch, upon at
least ten (10) days' prior notice, Amersham shall permit Epoch to examine these
records solely to the extent necessary to verify the accuracy of the report
above.
13.4 EFFECT OF TERMINATION. The expiration or earlier termination of
this Agreement shall not relieve any party of any of its rights or liabilities
arising prior to or upon such expiration or earlier termination. In addition,
the provisions of Sections 10.1 and 10.1(b), and Articles 11 and 12 shall
survive any expiration and termination. Within ten (10) business days following
the effective date of the expiration or earlier termination of this Agreement,
Amersham shall provide to Epoch a complete inventory of Products in Amersham's
possession, in transit between Amersham's authorized locations or in transit to
Amersham from Epoch or otherwise in Amersham's control. Within twenty (20) days
following the effective date of expiration or earlier termination, Epoch may
repurchase all or part of Amersham's then-existing inventory at a price equal to
the price actually paid by Amersham (plus all taxes, duties, freight and
insurance expenses); provided, however, that Amersham may, at its election,
continue to sell Products within the Territory after the expiration or earlier
termination of this Agreement for ninety (90) days following the effective date
of expiration or earlier termination.
14. GENERAL PROVISIONS.
14.1 FORCE MAJEURE. Neither party shall be liable to the other party for
non-performance of or delay in performing its obligations hereunder (other than
the payment of money) to the extent that performance is rendered impossible by
strike, riot, war, acts of God, earthquake, fire, flood, governmental acts or
orders or restrictions, failure of Epoch's suppliers or vendors to the extent
beyond the reasonable control of Epoch, or any other reason to the extent that
the failure to perform is beyond the reasonable control of the non-performing
party.
14.2 INDEPENDENT CONTRACTORS. The relationship of Epoch and Amersham
established by this Agreement is that of independent contractors, and nothing
shall be deemed to create or imply any employer/employee, principal/agent,
partner/partner or co-venturer relationship, or that the parties are
participants in a common undertaking. Neither party shall have the right to
direct or control the activities of the other party or incur or assume any
obligation on behalf of the other party or bind such other party to any
obligation for any purpose whatsoever.
14.3 GOVERNING LAW. This Agreement and all acts and transactions
pursuant hereto and the rights and obligations of the parties hereto shall be
governed, construed and interpreted in accordance with the laws of the State of
Washington, without reference to rules of conflicts or choice of laws.
14.4 ENTIRE AGREEMENT. This Agreement, including the Exhibits, set forth
the entire agreement and understanding of the parties relating to the subject
matter hereof and supersedes all prior oral and written, and all contemporary
oral, negotiations, agreements and understandings with respect to the same.
14.5 NOTICES. All notices, requests, claims, demands and other
communications hereunder shall be in writing and shall be given (and shall be
deemed to have been duly given upon receipt) by delivery in person, by cable,
telegram, facsimile or telex, or by registered or
Page 26
certified mail (postage prepaid, return receipt requested), to the other party
at the following address (or at such other address for which such party gives
notice hereunder):
If to Amersham, to: AMERSHAM BIOSCIENCES CORP.
▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇ ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
Attention: General Counsel
Telephone: [*]
Telecopier: [*]
If to Epoch, to: EPOCH BIOSCIENCES, INC.
▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇.▇., ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: Chief Executive Officer
Telephone: [*]
Telecopier: [*]
14.6 ASSIGNMENT AND BINDING EFFECT. Except as otherwise provided in this
Agreement, neither party may, directly or indirectly, assign its rights or
delegate its duties under this Agreement without the prior written consent of
the other party, provided however, this Agreement may be assigned by Epoch in
connection with any sale or transfer of the business to which it relates. No
permitted assignment of rights or delegation of duties under this Agreement
shall relieve the assigning or delegating party of its liabilities hereunder.
This Agreement is binding upon, and inures to the benefit of, the parties and
their respective successors and permitted assigns.
14.7 PARTIAL INVALIDITY. If any provision of this Agreement is held to
be invalid by a court of competent jurisdiction, then the remaining provisions
shall remain, nevertheless, in full force and effect. The parties agree to
renegotiate in good faith any term held invalid and to be bound by the mutually
agreed substitute provision in order to give the most approximate effect
intended by the parties.
14.8 NO WAIVER; AMENDMENT. No waiver of any term or condition of this Agreement
shall be valid or binding on any party unless agreed to in writing by the party
to be charged. The failure of either party to enforce at any time any of the
provisions of the Agreement, or the failure to require at any time performance
by the other party of any of the provisions of this Agreement, shall in no way
be construed to be a present or future waiver of such provisions, nor in any way
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 27
affect the validity of either party to enforce each and every such provision
thereafter. This Agreement may not be amended or modified except by the written
agreement of the parties.
14.9 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original and all of which, taken
together, shall constitute one instrument.
14.10 CONSTRUCTION; INTERPRETATION. The headings contained in this
Agreement are for reference purposes only and shall not affect in any way the
meaning or interpretation of this Agreement. Any article, section, recital,
exhibit, schedule and party references are to this Agreement unless otherwise
stated. No party, nor its counsel, shall be deemed the drafter of this Agreement
for purposes of construing the provisions of this Agreement, and all provisions
of this Agreement shall be construed in accordance with their fair meaning, and
not strictly for or against any party.
14.11 FURTHER ASSURANCES. Each party agrees to cooperate fully with the
other and execute such instruments, documents and agreements and take such
further actions to carry out the intents and purposes of this Agreement.
14.12 PRESS RELEASES AND ANNOUNCEMENTS. Except as may be contemplated
hereunder, neither party may issue any press release or make any public
announcement concerning the transactions contemplated by this Agreement without
the prior consent of the other party, except for any releases or announcements
which may be required by or, in such party's discretion, reasonably necessary
under applicable law, in which case the party proposing to make such release or
announcement will allow the other party a reasonable opportunity to review and
comment on such release or announcement in advance of such issuance or making.
14.13 ATTORNEYS' FEES. In the event of any action, suit or proceeding,
the prevailing party shall be entitled, in addition to any other rights and
remedies it may have, to reimbursement for its expenses, including court costs
and reasonable fees of attorneys and other professionals.
14.14 ALTERNATIVE DISPUTE RESOLUTION. The parties shall initially
attempt in good faith to resolve any significant controversy, claim, allegation
of breach or dispute arising out of or relating to this Agreement (hereinafter
collectively referred to as a "Dispute") through negotiations between senior
executives of Amersham and Epoch. If the Dispute is not resolved within thirty
(30) days (or such other period of time mutually agreed upon by the parties) of
notice of the Dispute (the "Executive Resolution Period"), then the parties
agree to submit the Dispute to arbitration as provided herein. Unless otherwise
mutually agreed by the parties, only if the Dispute is not resolved through
negotiations as set forth herein, may a party resort to arbitration.
(a) Any controversy, dispute or claim arising out of or relating
to this Agreement (or the breach hereof) that cannot be resolved by good faith
negotiation between or among the parties shall be finally submitted to the
American Arbitration Association ("AAA") for final and binding arbitration
pursuant to the Commercial Arbitration Rules of the AAA. Such arbitration shall
be held in Seattle, Washington, before a single arbitrator who shall be a
retired federal or Washington state judge. The arbitrator may enter a default
decision against any party who fails to participate in the arbitration
proceedings. The decision of the arbitrator shall be final,
Page 28
unappealable and binding, and judgment on the award rendered by the arbitrator
may be entered in any court having jurisdiction thereof. The arbitrator shall be
authorized to award any relief, whether legal or equitable, to the party so
entitled to such relief.
(b) In respect of any suit, action or other proceeding relating
to the enforcement of any award rendered by the arbitrator, each party
irrevocably submits to the non-exclusive jurisdiction of any state or federal
court located in the City of Seattle, State of Washington.
(c) The arbitrator shall be authorized to apportion its fees and
expenses and the reasonable attorney's fees and expenses of the parties as the
arbitrator deems appropriate. In the absence of any such apportionment, the
prevailing party in any arbitration or other proceeding shall be entitled, in
addition to any other rights and remedies it may have, to reimbursement for its
expenses, including court costs and reasonable fees of attorneys and other
professionals.
(d) The parties agree that this Section 14.14 has been included
to resolve rapidly and inexpensively any claims or disputes between them with
respect to this Agreement, and that this Section 14.14 shall be grounds for
dismissal of any action commenced by any party in any court with respect to any
controversy, dispute or claim arising out of or relating to this Agreement (or
the breach hereof).
Page 29
IN WITNESS WHEREOF, each of the undersigned has caused this Exclusive
Distribution and License Agreement to be duly executed as of the date first
written above.
AMERSHAM BIOSCIENCES CORP.
a Delaware corporation
By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
---------------------------------------
Name: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
--------------------------------------
Title: Vice President, Business Development
-------------------------------------
EPOCH BIOSCIENCES, INC.,
a Delaware corporation
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
----------------------------------------
Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
--------------------------------------
Title: President & Chief Executive Officer
-------------------------------------
Page 30
EXHIBIT C
MGB ECLIPSE SOFTWARE LICENSE
MGB ECLIPSE SOFTWARE LICENSE AGREEMENT
This MGB Eclipse Software License Agreement ("Agreement") is made on July 25th,
2002 (the "Effective Date") between Epoch Biosciences, Inc. ("Licensor"), a
Delaware corporation, and Amersham Biosciences Corp., (the "Licensee"), a
Delaware corporation.
RECITALS
A. Licensor has certain rights and interests in certain computer software which
provides a means to choose oligonucleotides for DNA and RNA based laboratory
methods.
B. Licensee is engaged in the business of providing products and technologies
for analyzing genetic variations.
C. Licensor and Licensee are parties to that certain Distribution and License
Agreement (the "Distribution Agreement"), of even date herewith, pursuant to
which Licensor has appointed Licensee as its exclusive distributor of certain of
its Products in a designated Field (each as defined in the Distribution
Agreement), and Licensee has accepted such appointment.
D. Licensor desires to license to Licensee certain of its computer software on a
limited basis in order to enable Licensee to use such software in the manner
contemplated herein, and Licensee desires to accept such license on the terms
set forth herein.
NOW THEREFORE, in consideration of the terms and conditions of this Agreement,
the parties agree as follows:
1. Grant of License and Use of Product.
(a) Subject to the terms, conditions and restrictions set forth herein, Licensor
grants to Licensee a limited, revocable, non-exclusive, non-sublicensable and
nontransferable license to (i) install and execute a single copy of the software
described on Appendix A hereto in binary executable form only (the "Software"),
on computers or servers owned and operated by or on behalf of Licensee which
host web site(s) owned and operated by or on behalf of Licensee (which web
site(s) are accessible via the Internet using an industry standard web browser),
to enable customers of Licensee to access and use the Software via such web
site(s) to choose oligonucleotides for DNA and RNA based laboratory methods,
(ii) utilize the ordering function of the Software to place orders with Licensor
for Licensor's custom oligonucleotide hybridization probes, subject to the terms
of the Distribution Agreement, and (iii) to use any accompanying documentation
provided to Licensee by Licensor in connection with the license granted in
subsection (i) above. Licensee may make one copy of the Software for backup or
archival purposes; provided that such copy is subject to this Agreement and
contains all proprietary notices. Licensee may not make any other copies of the
Software or any part thereof without the prior permission of Licensor.
(b) Without limiting the foregoing, Licensee may not, and may not permit or
cause others to:
Page 30
Page 31
(i) alter or modify, or create derivative works from the Software or any
accompanying documentation;
(ii) copy any portion of the code that constitutes the Software;
(iii) copy or use any of the parameters or algorithms within the Software for
any purpose;
(iv) publish, rent, sell, loan, lease, distribute, redistribute, transmit,
license, sublicense or otherwise transfer or assign the Software or any
accompanying documentation whether by operation of law or otherwise, with or
without consideration, and through any means including without limitation the
Internet or other electronic means (except as expressly set forth in Section
1(a)(i));
(v) translate, decipher, reverse assemble, reverse compile or reverse engineer
the Software, or otherwise attempt to discover any source code or underlying
Proprietary Information (as that term is defined below);
(vi) publish or provide any results of any tests run, accounts or other
information regarding the Software to any third party without Licensor's prior
written consent or permit any third party to perform such tests; or
(vii) delete, remove or obscure any proprietary notices of Licensor on the
Software or any accompanying documentation.
2. Ownership. Title to, ownership of and intellectual property rights in the
Software, any accompanying documentation, Proprietary Information (as defined
below) and all copies thereof shall, as between Licensor and Licensee, be and at
all times remain with Licensor or its designees, as applicable. All rights not
expressly licensed herein are reserved to Licensor. Any corrections, bug fixes,
enhancements, updates, modifications (including custom modifications),
materials, information, ideas, concepts or know-how to the Software or any
accompanying documentation, provided by Licensee or otherwise, shall be owned by
Licensor, as applicable. Licensee hereby acknowledges that this Agreement is a
license agreement and not an agreement for sale.
3. Consideration. The rights granted to Licensee hereunder are in consideration
of the mutual promises and obligations of the parties pursuant to the
Distribution Agreement. This Agreement does not grant to Licensee the right to
any maintenance or support services, except as provided for in the Distribution
Agreement, or to any enhancement or updates of the Software, other than updates
to the Probeity For Eclipse version of the Software developed by Epoch.
4. Acknowledgments. Licensee expressly acknowledges that Licensee is solely
responsible for any use of the Software, and such use will be entirely at
Licensee's own risk. Licensee agrees that the Software shall not be used for or
in connection with any illegal purpose (including but not limited to
intellectual property infringement, fraud or defamation).
5. Nondisclosure. Licensee acknowledges that, in the course of using the
Software pursuant to this Agreement, Licensee may obtain confidential or
proprietary information relating to the Software, any accompanying documentation
or Licensor, including without limitation all technical, know-how, parameters,
settings, algorithms and specifications ("Proprietary Information"). Such
Proprietary Information shall belong solely to Licensor. Proprietary Information
shall not include information that is or becomes publicly known through no
wrongful act of Licensee or other licensees of the Software. Licensee shall not
use or disclose
Page 31
Page 32
Proprietary Information to third parties without the written consent of
Licensor, and Licensee agrees to undertake reasonable measures to maintain the
Proprietary Information in confidence. Licensee agrees to report immediately to
Licensor any unauthorized use or disclosure of Proprietary Information of which
Licensee has actual knowledge.
6. Warranty Disclaimer. Licensor has no control over the conditions under which
Licensee uses the Software and does not and cannot warrant the results obtained
or not obtained by such use.
LICENSOR HEREBY EXPRESSLY DISCLAIMS ANY WARRANTY THAT LICENSEE'S USE OF THE
SOFTWARE WILL BE UNINTERRUPTED OR THAT THE OPERATION OF THE SOFTWARE WILL BE
ERROR-FREE OR SECURE. LICENSOR FURTHER DISCLAIMS ALL WARRANTIES, EXPRESS OR
IMPLIED, RELATING TO THE SOFTWARE INCLUDING, BUT NOT LIMITED TO, ANY WARRANTIES
AGAINST INFRINGEMENT OF THIRD PARTY RIGHTS, MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE. LICENSEE ACKNOWLEDGES THAT THE SOFTWARE IS PROVIDED "AS IS"
AND MAY NOT BE FUNCTIONAL ON ANY MACHINE OR IN ANY ENVIRONMENT. LICENSEE ASSUMES
ALL RISK OF THE USE, QUALITY, AND PERFORMANCE OF THE SOFTWARE.
7. Limitation of Remedies and Damages. IN NO EVENT SHALL LICENSOR OR ITS
AFFILIATES, OR ANY OF THEIR DIRECTORS, OFFICERS, EMPLOYEES AND AGENTS BE
RESPONSIBLE OR LIABLE FOR ANY LOST PROFITS, LOSS OF GOODWILL, WORK STOPPAGE,
COMPUTER FAILURE, LOSS OF INFORMATION, LOSS OF DATA, OR ANY DIRECT, INDIRECT,
INCIDENTAL, CONSEQUENTIAL, SPECIAL, EXEMPLARY, PUNITIVE OR OTHER DAMAGES (EVEN
IF LICENSOR HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES) UNDER ANY
CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER THEORY ARISING OUT OF OR
RELATING IN ANY WAY TO THE SOFTWARE OR ANY OTHER SUBJECT MATTER OF THIS
AGREEMENT. LICENSOR SHALL NOT BE LIABLE FOR ANY LOSS OR DAMAGE CAUSED BY DELAY
IN FURNISHING THE SOFTWARE OR ANY OTHER PERFORMANCE UNDER THIS AGREEMENT.
LICENSEE'S SOLE REMEDY FOR DISSATISFACTION WITH THE SOFTWARE IS TO TERMINATE
THIS AGREEMENT PURSUANT TO SECTION 14 BELOW. IN NO EVENT SHALL LICENSOR'S
LIABILITY EXCEED THE AMOUNT, IF ANY, THAT LICENSEE HAS ACTUALLY PAID TO LICENSOR
FOR THE RIGHT TO USE THE SOFTWARE. SOME JURISDICTIONS DO NOT ALLOW THE EXCLUSION
OR LIMITATION OF WARRANTY OR LIABILITY, SO THE FOREGOING EXCLUSIONS AND
LIMITATIONS MAY NOT APPLY TO LICENSEE.
8. Indemnification. Licensee shall defend, indemnify and hold Licensor harmless
against any and all claims, damages, losses, costs or other expenses (including
reasonable attorneys' fees) that arise directly or indirectly out of or from
Licensee's breach of this Agreement or the use of the Software by Licensee or by
others to whom Licensee has provided access to the Software.
9. Nonassignability. Neither Licensee's rights nor Licensee's obligations
arising under this Agreement are assignable or otherwise transferable by
Licensee (whether voluntarily or by operation of law) without the express
written consent of Licensor, and any such prohibited assignment or transfer
shall be void and without effect. If Licensor should so consent in writing, the
assignee shall be bound by all of the terms and conditions of this Agreement.
Licensor may assign any or all of its rights or obligations hereunder without
the consent of Licensee. Subject to
Page 32
Page 33
the provisions of this Section 9, this Agreement shall inure to the benefit of
and be binding upon each of the parties hereto and their respective permitted
successors and assigns.
10. Government Licensee. If Licensee is licensing the Software on behalf of any
unit or agency of the United States Government, the following applies: The
Software and any Proprietary Information is provided with RESTRICTED RIGHTS.
Use, duplication or disclosure by the Government is subject to restrictions as
set forth in Subparagraphs (a) through (d) of the Commercial Computer-Restricted
Rights clause at FAR 52.227-19 when applicable, or in Subparagraph 252.227-7013
(c)(1)(ii) of the Rights in Technical Data and Computer Software at DFARS, and
in similar clauses in the NASA FAR Supplement. Contractor/manufacturer is Epoch
Biosciences, Inc. at 21720 -- ▇▇▇▇ ▇▇▇▇▇ ▇▇, #▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇.
11. Applicable Law and Forum. This Agreement is entered into in the State of
Washington and shall be governed by and construed in accordance with the laws of
the State of Washington, exclusive of its choice of law rules. Each party to
this Agreement hereby submits to the exclusive jurisdiction of the state and
federal courts sitting in King County in the State of Washington for the purpose
of resolving any dispute arising under or relating to this Agreement, and each
party hereby waives any jurisdictional, venue or inconvenient forum objections
to such courts. In any action to enforce this Agreement, the prevailing party
will be entitled to costs and attorneys' fees.
12. Entire Agreement. The parties intend that the terms of this Agreement shall
be the final expression of their agreement with respect to the subject matter
hereof and may not be contradicted by evidence of any prior or contemporaneous
agreement. The parties further intend that this Agreement shall constitute the
complete and exclusive statement of its terms and that no extrinsic evidence
whatsoever may be introduced in any judicial, administrative, or other legal
proceeding involving this Agreement. Any modifications of this Agreement must be
in writing and signed by both parties hereto. In the event that any of the
provisions of this Agreement shall be held by a court or other tribunal of
competent jurisdiction to be unenforceable, such provisions shall be limited or
eliminated to the minimum extent necessary so that this Agreement shall
otherwise remain in full force and effect and enforceable. No waiver of any
breach of this Agreement shall be effective unless made in writing and signed by
an authorized representative of the waiving party.
13. Equitable Relief. Licensee acknowledges and agrees that, due to the unique
nature of the Software and Proprietary Information, there can be no adequate
remedy at law for any breach of its obligations hereunder, that any such breach
may allow Licensee or third parties to unfairly compete with Licensor resulting
in irreparable harm to, and therefore, that, upon any such breach or threat
thereof, Licensor shall be entitled to injunctions and other appropriate
equitable relief in addition to whatever remedies they may have at law.
14. Termination. This Agreement shall be effective upon the Effective Date, and
shall terminate concurrently with the termination of the Distribution Agreement.
This Agreement may also be terminated by Licensor immediately upon notice to
Licensee in the event of any breach by Licensee of the terms of this Agreement
or upon Licensee's insolvency, bankruptcy, suspension of business, assignment of
assets for the benefit of creditors, voluntary dissolution, or appointment of a
trustee for all or any substantial portion of Licensee's assets. In the event
that this Agreement is terminated for any reason, Licensee shall not be entitled
to any refund or credit
Page 33
Page 34
of fees paid or payable hereunder. The following provisions shall survive
expiration or termination of this Agreement: Section 2 and Sections 4 through
19, inclusive.
Upon expiration or termination of this Agreement, Licensee will immediately
destroy or erase all copies of the Software and any Proprietary Information and,
upon Licensor's request, promptly confirm destruction of same by signing and
returning to Licensor an "affidavit of destruction" acceptable to Licensor.
15. Export Controls. Licensee acknowledges that none of the Software or
Proprietary Information may be downloaded, transferred or otherwise exported or
re-exported (i) into (or to a national or resident of) Cuba, Iran, Iraq, Libya,
North Korea, Sudan, Syria or any other country to which the United States has
embargoed goods; or (ii) to anyone on the U.S. Treasury Department's list of
Specially Designated Nationals or the U.S. Commerce Department's Table of Denial
Orders. Licensee represents and warrants that he/she/it is not located in, under
the control of, or a national or resident of any such country or on any such
list.
16. Taxes. Licensee will pay all federal, state and local sales, personal
property, ad valorem and any other taxes (but not including Licensor's income
taxes) arising as a result of this Agreement.
17. Relationship of Parties. The parties to this Agreement are independent
contractors. No joint venture, agency or partnership, express or implied, is
granted under this Agreement.
18. Headings. The headings used in this Agreement are for convenience only and
shall not be considered in construing or interpreting this Agreement.
19. Notices. Unless herein provided otherwise, any notices required or permitted
under this Agreement to either party shall be sent to by registered or certified
mail or by express, overnight delivery, to the addresses set forth below each
parties name on the signature page to this Agreement (or at such other address
of which a party may from time to time notify the other party).
Page 34
Page 35
IN WITNESS WHEREOF, the parties have executed this MGB Eclipse Software License
Agreement as of the Effective Date.
LICENSOR LICENSEE
EPOCH BIOSCIENCES, INC. AMERSHAM BIOSCIENCES CORP.
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
------------------------------------ -------------------------------
Print Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ Print Name: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
---------------------------- -----------------------
Its: President & Chief Executive Its: Vice President, Business
Officer Development
----------------------------------- ------------------------------
Page 35
Page 36
APPENDIX A
LICENSED SOFTWARE
1. Licensed Software:
[*]
----------
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
Page 36
