SUPPLY AND LICENSE AGREEMENT FOR AUTOMATED SNP ANALYSIS
THIS AGREEMENT, made this 15th day of September 2000 (the "Effective
Date"), is between Orchid Biosciences, Inc., a Delaware corporation, having a
principal place of business at ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ("Orchid"), and DNAPrint Genomics, Inc., a Florida corporation, having a
principal place of business at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇, ▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇ ("DNAPrint"). The parties agree as follows:
1 Definitions
In this Agreement:
1.1 "Formatting" means the custom design of PCR and SNP-IT primers and quality
control of the primers for amplification and subsequent SNP-IT
functionality.
1.2 "Genotyping Services" means the practice of Primer Extension on behalf of a
third party and the compilation and reporting of the results to the third
party.
1.3 "Improvements" means any and all new and useful processes, manufactures,
compositions of matter or methods of use, first conceived, reduced to
practice or developed during the term of this Agreement, by DNAPrint or its
employees, consultants or contractors.
1.4 "Know-How" means Orchid's proprietary information as of the Effective Date
for performing automated SNP-IT.
1.5 "Orchid Trademarks" means the marks listed in attached Schedule 1.5 and any
stylized version or variation thereof.
1.6 "Primer Extension" means a nucleic acid template-dependent primer extension
reaction to determine the identity of a single nucleotide base at a
specific position in a nucleic acid of interest.
1.7 "DNAPrint's SNPstream Instrument" means the SNPstream Instrument DNAPrint
is purchasing from Orchid to be located at ________.
1.8 "SNP Assay Kit" means the SNPware(TM) preformatted consumable assay kits
containing validated and quality controlled reagents or similar kits for
genotyping.
1.9 "SNP Identification Technology" or "SNP-IT" means an assay that identifies
one and only one base position of a target nucleic acid.
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2 Supply Of SNP Assay Kits
2.1 During the term of this Agreement, Orchid will sell to DNAPrint, and
DNAPrint will purchase from Orchid, all of DNAPrint's requirements of SNP
Assay Kits.
2.2 Orchid will provide Formatting with its supply of SNP Assay Kits to
DNAPrint in accordance with section 3. DNAPrint may not order any SNP Assay
Kit until Orchid completes Formatting for the particular SNP(s) which the
SNP Assay Kit is intended to identify.
2.3 DNAPrint will issue written purchase orders to Orchid for SNP Assay Kits.
The purchase orders are subject to the terms and provisions of this
Agreement which, if other or different than those of the purchase order,
will be controlling even if the purchase order is accepted and filled by
Orchid.
2.4 Orchid will use all commercially reasonable efforts to supply DNAPrint's
reasonable requirements of forecast SNP Assay Kits.
2.5 All purchase orders will be accepted unless Orchid notifies DNAPrint within
ten (10) business days of receipt of the purchase order that Orchid cannot
fill the purchase order.
2.6 DNAPrint may defer or cancel delivery of SNP Assay Kits specified in a
purchase order by notifying Orchid at least twenty (20) business days prior
to the requested delivery date. All permitted SNP Assay Kit cancellations
are subject to cancellation charges of ten percent (10%) of the purchase
price. A request by DNAPrint to defer delivery of SNP Assay Kits for more
than sixty (60) days after the date provided on the purchase order is
considered a cancellation for the purposes of this paragraph.
3 Formatting
3.1 SNP Assay Kits supplied under this Agreement will be Formatted for
particular SNPs of interest to DNAPrint.
3.2 Accordingly, prior to submitting a purchase order for a SNP Assay Kit,
DNAPrint will describe to Orchid the SNP of interest for which the SNP
Assay Kit will be Formatted.
3.3 With respect to a submitted SNP sequence which (i) includes at least fifty
(50) flanking bases both upstream and downstream of the SNP of interest
(e.g. greater than 100 base pairs of interest), (ii) is at least fifty
(50%) known (e.g. no more than five (5) "N" per 101 base sequence, (iii)
has a GC content between thirty five (35) and seventy (70) percent, (iv)
has a quality score of PHRED 20 or higher, and (v) is annotated with SNP
and/or insertion or deletion sites, Orchid will provide the Formatting,
using its standard procedures, free of charge. Orchid's standard Formatting
procedures involve _____.
3.4 In the event that Orchid is unable to properly Format SNP Assay Kits for a
submitted SNP of interest using its standard Formatting procedures,
DNAPrint may request Orchid to use more than its standard Formatting
procedures to attempt to properly Format SNP Assay Kits. DNAPrint will pay
Orchid two thousand dollars ($2,000) per man-day for its efforts beyond its
standard formatting procedures.
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3.5 Both Orchid and DNAPrint recognize that Formatting for a particular SNP of
interest is inexact and may be commercially unreasonable or impossible.
Therefore, neither DNAPrint nor Orchid expect Orchid to be able to Format
for more than X% of the SNPs of interest submitted. In the event, however,
Orchid is unable to Format at least X% of the SNPs DNAPrint submits, then
the Minimum Amount of SNP Assay Kits DNAPrint is committed to purchase
under paragraph 4.1 will be reduced by a factor equal to the percentage of
SNPs Orchid was unable to Format (Y%) divided by X% (i.e. the Minimum
Amount will be reduced in a amount equal to Y%/X% x the Minimum Amount).
4 Minimum
4.1 DNAPrint will purchase, at a minimum, SNP Assay Kits to perform two hundred
thousand (200,000) genotypes during the term of this Agreement (the
"Minimum Amount").
4.2 In the event the quantity of SNP Assay Kits actually purchased by DNAPrint
is less than the Minimum Amount, DNAPrint will pay to Orchid a Shortfall
Fee equal to fifty percent (50%) of the purchase price of the difference in
the Minimum Amount and the amount of SNP Assay Kits it did purchase.
4.3 DNAPrint will pay the Shortfall Fee to Orchid within thirty (30) days of
the expiration or termination date of this Agreement.
4.4 In the event Orchid is unable to fill DNAPrint's purchase order on the
delivery date set forth in the purchase order, then the Minimum Amount will
be reduced by the amount of SNP Assay Kits Orchid is unable to supply.
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5 Delivery
5.1 Orchid will use reasonable efforts to deliver to DNAPrint SNP Assay Kits on
or before the date requested in DNAPrint's purchase order, but will have no
obligation to deliver SNP Assay Kits in less than twenty (20) business days
from receipt of the purchase order.
5.2 Orchid will ship SNP Assay Kits F.O.B. Orchid's manufacturing plant, or its
supplier's plant, freight prepaid, to the address specified in DNAPrint's
purchase order. DNAPrint will be invoiced for all shipping charges,
freight, insurance, special handling (where required) and similar costs,
import permits and duties (if applicable) and all taxes assessed. Title and
the risk of loss with respect to SNP Assay Kits transfer to DNAPrint at
this time.
5.3 DNAPrint, in consultation with Orchid, will select the carrier or freight
forwarder which will be at all times an agent of DNAPrint. Orchid will not
be liable for any damages, loss or penalty for delay in delivery caused by
the carrier or freight forwarder or for failure of the carrier or freight
forwarder to give DNAPrint notice of any delay.
6 Price and Payment
6.1 The purchase price for SNP Assay Kits to be delivered by Orchid under this
Agreement to DNAPrint will be equivalent to seventy cents ($.70) per
genotype.
6.2 All payments for SNP Assay Kits will be made in United States Dollars and
within thirty (30) days of receipt of Orchid's invoice therefor.
6.3 Orchid may add an interest charge equal to 1/1/2% per month (18% per year)
on any amounts payable by DNAPrint that remain unpaid after the payment due
date.
7 Forecasts and Allocation
7.1 Within thirty (30) days of the Effective Date of this Agreement and at the
beginning of each calendar quarter thereafter, DNAPrint will provide Orchid
with a written forecast of its requirements for SNP Assay Kits for the
remainder of the term of this Agreement. The first calendar quarter of a
forecast represents a firm commitment to purchase such SNP Assay Kits in
that quarter (subject to the cancellation provisions of paragraph 2.6). The
remaining portion of each forecast represents a non-binding projection on
which Orchid will base its material procurement and manufacturing plans.
7.2 In the event that demand for any SNP Assay Kit should at any time exceed
Orchid's capacity to fill and deliver all of its customer's orders (and its
own need for SNP Assay Kits), Orchid will notify DNAPrint of the excess
demand. Until such time as the excess demand abates or Orchid's capacity
becomes sufficient to meet such demand, Orchid will have the right to
equitably allocate, in any manner it deems just and fair, its available
supplies, manufacturing capacity, inventory and other resources, among
DNAPrint, itself and its other customers, including those not then under
contract.
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7.3 In the event Orchid is unable, or expects to be unable, to reasonably
supply DNAPrint's requirements of forecast SNP Assay Kits for twenty (20)
consecutive business days from the delivery date set out in DNAPrint's
purchase order, DNAPrint may obtain from any other source, reasonably
acceptable to Orchid, that portion of its requirements for SNP Assay Kits
which Orchid is unable to reasonably supply for so long as Orchid is unable
or expects to be unable to supply that portion of DNAPrint's requirements.
The alternate source will supply only SNP Assay Kits that conform to
Orchid's specifications and are of the same or better quality as those
supplied by Orchid. Orchid will provide DNAPrint with technical assistance
and information as may be reasonably required by DNAPrint to establish an
alternate source of SNP Assay Kits, including a license under any patent to
which Orchid has rights to license on the method of manufacture of the SNP
Assay Kits or on the method of use of the SNP Assay Kits authorized in this
Agreement.
7.4 In the event that both Orchid and sources reasonably acceptable to Orchid
are unable to deliver forecast SNP Assay Kits for thirty (30) consecutive
business days from the original purchase order delivery date, then DNAPrint
at its sole discretion may elect to terminate this Agreement upon ten (10)
days prior written notice to Orchid. In the event DNAPrint terminates this
Agreement pursuant to this paragraph, DNAPrint will be relieved of its
obligations to purchase the Minimum Amount and to pay the Shortfall Fee.
8 Inspection and Acceptance
8.1 DNAPrint may conduct acceptance testing upon receipt of SNP Assay Kits to
verify conformance with their specifications. In the absence of written
notice to Orchid of nonconformance and nonacceptance within twenty five
(25) business days of delivery, the SNP Assay Kits will be deemed accepted.
Orchid will provide to DNAPrint with each SNP Assay Kit delivery data
verifying the SNP Assay Kit's conformance with its specifications.
8.2 If Orchid disputes DNAPrint's notice that a SNP Assay Kit fails to conform
to its specifications, such dispute will be resolved by an independent
laboratory, selected by Orchid and reasonably acceptable to DNAPrint, whose
determination will be final and binding. All fees and disbursements
incurred in connection with the independent determination will be borne by
the party which incorrectly determined that the SNP Assay Kit did or did
not conform to its specifications.
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8.3 Orchid promptly will replace any SNP Assay Kit not conforming to its
specifications, at its expense; or, if unable to make prompt replacement,
refund any payment made on the nonconforming SNP Assay Kit. The amount of
any nonconforming SNP Assay Kits that are not replaced will be deducted
from the Minimum Amount.
9 Limited License
9.1 Orchid grants to DNAPrint, for the term of this Agreement, a
non-transferable, non-exclusive license to use the SNP Assay Kits (provided
under this Agreement) on DNAPrint's SNPstream Instrument solely for
research use and only for the detection of genetic polymorphisms by SNP-IT.
DNAPrint may make this use only on its own behalf and in its provision of
Genotyping Services under this Agreement.
9.2 No other license is intended or granted through sale of SNP Assay Kits to
DNAPrint.
9.3 DNAPrint may use the SNP Assay Kits only on DNAPrint's SNPstream Instrument
and only at its facility at a location to be specified prior to September
30, 2000.
9.4 DNAPrint is specifically not authorized to, and is forbidden from, using
SNP Assay Kits for diagnostic or therapeutic purposes or as direct
components in the manufacture or use of any diagnostic or therapeutic
product.
9.5 Purchase by DNAPrint of SNP Assay Kits does not include or carry any right
to resell or transfer the SNP Assay Kits, either as a stand alone product
or as a component of another product, or to disassemble and use any
component or part of any SNP Assay Kit separate from its other components
and parts, or to otherwise commercially exploit the SNP Assay Kits. Any use
of SNP Assay Kits other than the licensed use without the prior, express
written authorization of Orchid is strictly prohibited.
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10 Trademarks
10.1 Orchid grants to DNAPrint, for the term of this Agreement, a
non-transferable, non-exclusive license to use the Orchid Trademarks solely
for and in connection with the marketing, promotion, advertisement, sale
and provision of Genotyping Services under this Agreement.
10.2 DNAPrint may not use the Orchid Trademarks in connection with any products
or services other than the Genotyping Services.
10.3 DNAPrint, in connection with the use of the Orchid Trademarks, will place
adjacent to the Orchid Trademarks the appropriate designation "(TM)",
"(sm)", or "(R)" and indicate on all printed oR electronic materials a
notice to the effect the Orchid Trademarks are the trademarks and service
marks of Orchid and are used under license from Orchid.
10.4 DNAPrint may not use the Orchid Trademarks in any manner that might
adversely reflect on the image of quality symbolized by the Orchid
Trademarks.
10.5 DNAPrint acknowledges Orchid's exclusive right, title and interests in and
to the Orchid Trademarks, and acknowledges that nothing in this Agreement
or DNAPrint's use of the Orchid Trademarks will confer to it or create any
rights for it in the Orchid Trademarks except for the limited license
expressly provide in this Agreement. All goodwill symbolized by and
connected with the use of the Orchid Trademarks will inure solely to the
benefit of Orchid.
10.6 DNAPrint will not use any trademark or service ▇▇▇▇ that is confusingly
similar to, or a colorable imitation of, any Orchid Trademark during the
term of this Agreement or at any time thereafter.
10.7 Except as provided in this Agreement, or with other express written consent
of the other party, neither party will at anytime include the other parties
name in any written material, marketing or advertising brochures, bids,
contracts, proposals, applications or otherwise, except as may be required
by law, or in any way represent or imply that the other party has endorsed
that party or its business.
10.8 Immediately upon expiration or termination of this Agreement, with or
without reason, DNAPrint will cease and not thereafter use in any manner
the Orchid Trademarks.
11 Genotyping Services
11.1 Orchid grants to DNAPrint a non-transferable, non-exclusive license for the
term of this Agreement to provide Genotyping Services.
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11.2 DNA print has no right under this Agreement to provide Genotyping Services
other than solely for research use and not for diagnostic or therapeutic
purposes, unless permitted to do so under a separate written license from
Orchid.
11.3 DNAPrint will inform each third party in writing who requests Genotyping
Services that the employed Primer Extension Technology is proprietary to
Orchid and that DNAPrint is only licensed to provide Genotyping Services
solely for research purposes and not for diagnostic or therapeutic
purposes.
11.4 DNAPrint will include in its printed and electronic marketing, promotional
and advertising materials relating to Genotyping Services notification
clearly stating substantially the following information: (i) Genotyping
Services are subject to proprietary rights of Orchid and are provided by
DNAPrint under license from Orchid; (ii) results of the Genotyping Services
are solely for research use and not for diagnostic or therapeutic purposes;
and (iii) all warnings and statements required by applicable law or
regulation, or provided by Orchid from time to time, for notification to
customers.
11.5 If DNAPrint considers in its reasonable judgment that any third party
requesting Genotyping Services intends to use, or is using, the Genotyping
Services not for research purposes, or for diagnostic or therapeutic
purposes, DNAPrint will not provide, and will immediately cease providing,
any Genotyping Services to that third party, and will notify Orchid in
writing of the third party's name and address, the dates, types and amounts
of Genotyping Services it provided to the third party, and acknowledge that
it has ceased providing Genotyping Services to the third party.
11.6 In the marketing, advertising, promotion, sale or performance of Genotyping
Services, DNAPrint will not be an agent of, hold itself out as an agent of,
or give the appearance of being an agent for Orchid.
12 Maintenance of Quality
12.1 In the course of marketing, promoting, advertising, selling and providing
Genotyping Services under the Orchid Trademarks, DNAPrint will at all times
maintain and adhere to the quality standards adopted by Orchid consistent
with the high reputation of the Orchid Trademarks.
12.2 Prior to using any Orchid Trademark on any type of printed or electronic
marketing, advertising or promotional materials, DNAPrint will submit
samples of the material to Orchid for approval, which approval will not be
unreasonably withheld. Once approved by Orchid, DNAPrint may use the Orchid
Trademarks on printed or electronic marketing, advertising or promotional
materials prepared in accordance with the previously submitted and approved
samples.
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12.3 To further ensure that quality standards are maintained, Orchid will have
the right, but not the obligation, to inspect, monitor and test the
equipment, materials and procedures, including DNAPrint's SNPstream
Instrument and Primer Extension method, and to inspect DNAPrint's books and
records relating to the provision of Genotyping Services to ensure that
DNAPrint is in compliance with Orchid's quality standards. Any inspection
will be with prior notice to DNAPrint and in a manner that does not
unreasonably interfere with the business and affairs of DNAPrint.
13 Royalty
13.1 In consideration of the right and license to use SNP Assay Kits in
performance of Genotyping Services for Permitted Parties, DNAPrint will pay
to Orchid a royalty equal to fifteen percent (15%) of the total gross sales
price invoiced for the Genotyping Services, less one percent (1%) in lieu
of any discounts or offsets.
13.2 Notwithstanding paragraph 13.1, in no event will the royalty payable to
Orchid be less than fifteen percent (15%) of twice DNAPrint's actual cost
(including overhead) in providing the Genotyping Services as determined in
accordance with United States generally accepted accounting principles.
13.3 DNAPrint will pay Orchid the royalties accrued in a calendar quarter within
thirty (30) days after the end of the calendar quarter and accompany each
payment with a report detailing the calculation of the royalties due, which
report Orchid may rely on without independent verification.
13.4 Where the gross price for Genotyping Services comprise non-monetary
consideration, in whole or in part, DNAPrint will pay Orchid the cash
equivalent to the fair market value of the non-monetary consideration.
13.5 All payments will be made in United States Dollars by wire transfer of
funds to an account designated by Orchid or by delivery of an irrevocable
cashier's check to Orchid.
13.6 Orchid may add an interest charge equal to 1/1/2% per month (18% per year)
on any amounts payable by DNAPrint that remain unpaid after the payment due
date.
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14 Records and Inspection
14.1 DNAPrint will keep complete and accurate records of all Genotyping Services
provided, the cost of providing Genotyping Services, the prices invoiced
for Genotyping Services, the names and addresses of third parties to whom
Genotype Services were provided, and all other information reasonably
necessary to permit Orchid to verify the quality of the Genotyping Services
provided and the computation and amount of royalties due Orchid.
14.2 At Orchid's request and expense, DNAPrint will permit an independent
certified public accountant selected by Orchid, and reasonably acceptable
to DNAPrint, to examine all records deemed by the accountant as reasonably
necessary in verifying for Orchid the computation of, and the amount of
royalties accrued, payments made or to be made, and the accuracy of the
royalty reports.
14.3 Each accountant who examines records will agree in writing to treat as
confidential and not to disclose any information other than information
relating solely to the royalties accrued and the accuracy of the royalty
reports and payments required to be made.
14.4 The examination of records in all instances will be conducted during
reasonable business hours, be limited to once per calendar year, and be for
a period of time of no more than three (3) fiscal years immediately
preceding the request for examination.
14.5 In the event any examination reveals that DNAPrint under compensated Orchid
in an amount in excess of five percent (5%) of the amount actually owed,
DNAPrint will pay the fees of the account plus interest at a rate of one
and a half percent (1 1/2%) per month (18% per year) on the amount of
underpayment from the date payment was due to the date payment is made.
15 Warranties
15.1 Orchid warrants that all SNP Assay Kits when delivered to DNAPrint are free
from defects in materials and workmanship and conform to their respective
Specifications.
15.2 THERE ARE NO OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING ANY WARRANTY
OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE AND NONE ARE
CREATED, WHETHER UNDER THE UNIFORM COMMERCIAL CODE, CUSTOM OR USAGE IN THE
INDUSTRY OR THE COURSE OF DEALINGS BETWEEN THE PARTIES.
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15.3 ORCHID MAKES NO WARRANTY OR REPRESENTATION TO DNAPRINT THAT USE OF ANY SNP
ASSAY KIT, FORMATTING, OR KNOW HOW, OR ANY PRODUCT PRODUCED BY SUCH USE,
WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADE SECRET, OR OTHER PROPRIETARY
RIGHT, FOREIGN OR DOMESTIC, OF ANY THIRD PARTY TO WHICH ORCHID HAS NOT
OBTAINED RIGHTS. ORCHID WARRANTS THAT IT IS NOT AWARE OF ANY SUCH
INFRINGEMENT AND HAS NOT RECEIVED ANY NOTICE OF POSSIBLE INFRINGEMENT.
15.4 ORCHID DOES NOT WARRANT, GUARANTEE OR MAKE ANY REPRESENTATION REGARDING THE
USE, OR THE RESULTS OF THE USE, OR THE PERFORMANCE OF THE SNP ASSAY KIT,
FORMATTING, OR KNOW HOW. DNAPRINT REPRESENTS AND WARRANTS THAT ANY
STATEMENTS HERETOFORE OR HEREAFTER MADE BY ORCHID OR ANY AUTHORIZED
REPRESENTATIVE RELATIVE TO THE USE, RESULTS OF THE USE OR PERFORMANCE OF
THE SNP ASSAY KIT, FORMATTING, OR KNOW-HOW WERE AND WILL ALWAYS BE
INDEPENDENTLY VERIFIED BY DNAPRINT AND DNAPRINT AGREES THAT ITS ACCEPTANCE
AND/OR USE OF SUCH STATEMENTS IS ENTIRELY AT ITS OWN RISK.
16 Indemnification
16.1 Orchid agrees to indemnify, defend, and hold harmless DNAPrint from and
against all liabilities, damages, expenses and losses (including reasonable
attorney fees and costs), arising out of (i) the negligent actions of
Orchid, its employees or any third party acting on behalf or under
authority of Orchid in the performance of this Agreement and (ii) any
actual or alleged act of patent infringement, contributory patent
infringement, inducing patent infringement, or copyright infringement
resulting from DNAPrint's use of the SNP Assay Kits, Formatting, Know-How
or any information and materials received, in a manner approved by Orchid.
At any time during the course of any action involving a SNP Assay Kit, or
if in Orchid's opinion a SNP Assay Kit is likely to become the subject of a
patent infringement claim, Orchid may at its option and expense, (i)
procure for DNAPrint the right to continue using the SNP Assay Kit, (ii)
replace or modify the SNP Assay Kit so that it becomes noninfringing or
(iii) accept return of the SNP Assay Kit, refund the purchase price and
terminate this Agreement.
16.2 Orchid will not be liable to DNAPrint under paragraph 16.1 if the patent or
copyright infringement claim is based on an alteration or modification of
the Formatting, or SNP Assay Kit or a use of the SNP Assay Kit not
authorized by Orchid.
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16.3 ORCHID WILL NOT BE LIABLE TO DNAPRINT OR ANY THIRD PARTY WITH RESPECT TO
ANY USE OF THE SNP ASSAY KIT, FORMATTING, OR KNOW-HOW BY DNAPRINT OR ANY
AGENT OR EMPLOYEE OF DNAPRINT, FOR ANY LOSS, CLAIM, DAMAGE OR LIABILITY OF
ANY KIND OR NATURE WHICH MAY ARISE FROM OR IN CONNECTION WITH THE USE,
HANDLING, STORAGE OR DISPOSAL OF THE SNP ASSAY KITS, OR KNOW-HOW, OR ANY
PRODUCTS RESULTING FROM SUCH USE; OR ANY CLAIM FOR LOSS OF PROFITS, LOSS OR
INTERRUPTION OF BUSINESS, OR FOR INDIRECT, SPECIAL OR CONSEQUENTIAL DAMAGES
OF ANY KIND.
16.4 DNAPrint agrees to indemnify, defend and hold harmless Orchid from and
against all liabilities, demands, damages, expenses and losses (including
reasonable attorney fees and costs) arising out of (i) DNAPrint's use,
handling, storage and disposal of SNP Assay Kits, Formatting, Know-How and
any information and materials received from Orchid, except those resulting
from Orchid's (or its employees or agents) negligence or willful
misconduct, (ii) any products developed or made by DNAPrint as a result of
the use of the SNP Assay Kits, Formatting, Know-How and any information and
materials received from Orchid, (iii) DNAPrint's provision of Genotyping
Services, and (iv) any actual or alleged act of patent infringement,
contributory patent infringement, inducing patent infringement, or
copyright infringement resulting from DNAPrint's use of the SNP Assay Kits,
Formatting, Know-How and any information and materials received, in any
manner not approved by Orchid or in DNAPrint's manufacture, use or sale of
any product resulting from such use.
16.5 A party seeking indemnification under this Agreement will give prompt
written notice to the indemnifying party of the commencement of any action
(and any prior claims relating to such action) for which the party seeks
indemnification. An indemnifying party will have no liability or
responsibility of any kind to the party seeking indemnification if it is
not promptly notified and does not have adequate opportunity to defend. The
indemnifying party will have sole control of the defense of the action and
of all negotiations for its settlement or compromise.
16.6 This section 16 survives any termination or expiration of this Agreement.
17 Improvements
17.1 Upon, or before, delivery of DNAPrint's initial order of SNP Assay Kits,
and subject to section 18, Orchid will disclose in confidence to DNAPrint
its Know How regarding the ordered SNP Assay Kits.
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17.2 DNAPrint agrees to grant and hereby grants to Orchid a perpetual,
world-wide, nonexclusive, royalty-free license to any Improvements directly
related to the SNP Assay Kits, Formatting, and Know How related thereto.
This paragraph survives any termination or expiration of this Agreement.
18 Confidentiality
18.1 Orchid agrees not to disclose publicly or to any third party, and to keep
in strictest confidence, all (i) all information identified by DNAPrint as
being secret or confidential, and (iii) all information which by its nature
or the circumstances should be treated as confidential.
18.2 DNAPrint agrees not to disclose publicly or to any third party, and to keep
in strictest confidence, all (i) prices and price schedules, (ii) Know How,
(iii) all information identified by Orchid as being secret or confidential,
and (iv) all information which by its nature or the circumstances should be
treated as confidential.
18.3 The obligation of confidentiality under this section 18 does not apply to
information which the recipient can demonstrate is known publicly, is in
the public domain or enters the public domain without the fault of the
recipient, is disclosed to the recipient by a third party not under
obligation of confidence, or with respect to Technical Data was known to
DNAPrint prior to the Effective Date of this Agreement, or with respect to
Assay Data and Know How was known to the recipient prior to the disclosure
thereof.
18.4 The obligations of this section 18 survive and continue for a period of
five (5) years after any termination or expiration of this Agreement.
19 PUBLICITY
19.1 DNAPRINT MAY REFER TO ORCHID AS A LICENSEE FOR THE PERFORMANCE OF
GENOTYPING SERVICES IN ITS MARKETING AND PROMOTIONAL MATERIALS. WITHIN
TWENTY (20) DAYS OF THE EFFECTIVE DATE OF THIS AGREEMENT, ORCHID AND
DNAPRINT WILL ISSUE A MUTUALLY ACCEPTABLE JOINT PRESS RELEASE (DESCRIBED IN
10.1 OF THE "OPTION AGREEMENT" IF IN FACT SAID AGREEMENT IS EXECUTED),
DISCLOSING THE CONFERRAL OF THIS LICENSE.
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20 Term and Termination
20.1 Notwithstanding 11.1, unless extended by mutual agreement of Orchid and
DNAPrint, this Agreement will expire and terminate one year (1) from the
Effective Date of this Agreement.
20.2 THE TERM OF THE LICENSE TO PROVIDE GENOTYPING SERVICES (11.1) WILL BE FOR A
PERIOD OF 5 YEARS, UNLESS DNAPRINT BREACHES ANY OF THE TERMS OF THIS
AGREEMENT, AND WILL BE AUTOMATICALLY RENEWED FOR A SUCCESSIVE 5 YEAR PERIOD
UNLESS DNAPRINT IS FOUND TO BE IN BREACH OF ANY PROVISIONS OF THIS
AGREEMENT.
20.3 Orchid and DNAPrint have the right to terminate this Agreement if the other
fails to make any payment due and owing, or commits a breach of any
material provision of this Agreement and fails to make such payment within
thirty (30) days or remedy such breach within sixty (60) days after
receiving written notice of such default or breach.
20.4 Orchid and DNAPrint each have the right to terminate this Agreement if any
proceeding is instituted by or against the other party seeking to
adjudicate it bankrupt or insolvent, or seeking liquidation, winding up,
reorganization, arrangement, adjustment, protection, relief or composition
of it or its debts under any law relating to bankruptcy, insolvency or
reorganization or relief of debtors, or seeking an entry of an order for
relief or the appointment of a receiver, trustee or other similar official
for it or any substantial part of its property or taking any action to
authorize any of the foregoing or similar actions. No assignee for the
benefit of creditors, receiver, liquidator, sequestiator, trustee in
bankruptcy, sheriff or any other office of the court or official charged
with taking over custody of DNAPrint's assets or business will have any
right to continue the performance of this Agreement.
20.5 Upon expiration or termination of this Agreement for any cause or reason
neither DNAPrint nor Orchid will be released from any obligation
theretofore accrued.
21 Miscellaneous
21.1 The relationship of Orchid and DNAPrint under this Agreement is that of
seller and buyer. The provisions of this Agreement may not be construed to
create between Orchid and DNAPrint the relationship of principal and agent,
joint venturers, co-partners or any other similar relationship, the
existence of which is hereby denied by Orchid and DNAPrint. Neither party
hereto is liable in any way for any engagement, obligation, liability,
contract, representation or warranty of the other party to or with any
third party. Orchid is not an agent for DNAPrint and DNAPrint is not an
agent for Orchid for any purpose whatsoever and each party has no right or
authority to assume or create any obligations, express or implied, on
behalf or in the name of the other party.
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21.2 No amendment, variation, modification or waiver of any breach of any
provision of this Agreement will be binding unless executed in writing by
an authorized officer of the party to be bound. No waiver of any breach of
any provision of this Agreement will constitute a waiver of any prior,
concurrent or subsequent breach of the same or any other provision of this
Agreement.
21.3 Any notice required or permitted under this Agreement will be deemed to
have been sufficiently provided and effectively made if sent by facsimile
and either hand-delivered or sent by overnight express courier (e.g.
Federal Express) and addressed to the receiving party at its respective
address as follows:
Orchid Biosciences, Inc. DNAPrint Genomics, Inc.
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇ Facsimile:
Attn: ▇▇▇▇▇ ▇▇▇▇ Attn:
With a courtesy copy to: With a courtesy copy to:
Kalow & Springut LLP
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇ Facsimile:
Attn: ▇▇▇▇▇ ▇. ▇▇▇▇▇ Attn:
or such other address of which the receiving party has given notice
pursuant to this paragraph. The effective date of the notice is the date of
receipt of the hand or courier delivery.
21.4 In the event that the performance of this Agreement or of an obligation
hereunder, other than the payment of money, is prevented, restricted or
interfered with by reason of any cause not within the control of the
respective party, and which could not by reasonable diligence have been
avoided by such party, the party so affected, upon the giving of prompt
notice to the other party, as to the nature and probable duration of such
event, is excused from such performance to the extent and for the duration
of such prevention, restriction or interference, provided that the party so
affected uses its reasonable efforts to avoid or remove such cause of
non-performance and continues performance under this Agreement whenever and
to the extent such cause or causes are removed. For the purpose of this
15
paragraph, but without limiting the generality hereof, the following will
be considered as not being within the control of a party: acts of God; acts
or omissions of a governmental agency or body; compliance with requests,
recommendations, rules, regulations, or orders of any governmental
authority or any officer, department, agency, or instrument thereof; flood;
storm; earthquake; fire; war; insurrection; riot; accidents; acts of the
public enemy; invasion; quarantine restrictions; strike; labor lockout;
differences with workmen; embargoes; delays or failures in transportation;
and acts of a similar nature.
21.5 If any provision of this Agreement is held to be invalid, illegal,
unenforceable or void, such will be without effect on the validity,
legality and enforceability of the remaining provisions or this Agreement
as a whole. Both parties will endeavor to replace the invalid, illegal,
unenforceable or void provision with a valid and enforceable one which in
its equitable effect is most consistent with the prior provision.
21.6 The paragraph headings are for convenience only and cannot have any effect
on the interpretation or construction of this Agreement.
21.7 The laws of the State of New Jersey, excluding the principles of conflicts
of laws (and the 1980 U.N. Convention on Contracts for the International
Sale of Goods), govern this Agreement. Any legal action arising from a
dispute or question regarding the terms and conditions, or performance of
this contract may be instituted only in the Superior Court for ▇▇▇▇▇▇
County New Jersey or the United States District Court for the District of
New Jersey. Both DNAPrint and Orchid consent to the personal jurisdiction
and waive any objection to the venue of these courts. Both DNAPrint and
Orchid further consent that any service of process may be served by
overnight courier or express mail at its address stated in paragraph 20.3.
21.8 The rights provided herein are personal to DNAPrint and may not be
sub-licensed, sub-contracted or otherwise transferred without the prior
express written approval of Orchid except in connection with the sale or
acquisition of substantially all of the assets or stock of DNAPrint related
to this Agreement.
21.9 This Agreement is binding upon and inures to the benefit of the heirs,
successors and assigns of the parties hereto, provided that this Agreement,
in whole or in part, is not assignable by either party without the prior
written consent of the other party, such consent not to be unreasonably
withheld, except that Orchid may assign this Agreement to an affiliate
without any such consent. Any effort to assign in violation hereof is
considered void. In the event of any assignment, the assigning party must
provide the other party with appropriate documentation of the assignment.
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21.10Each party acknowledges that it has read this Agreement, understands it,
and agrees to be bound by its terms and further agrees that it constitutes
the complete and exclusive understanding between the parties, which
supersedes and merges all prior proposals, understandings and all other
agreements, oral and written, between the parties regarding the subject
matter of this Agreement; and no party has relied on any representation not
expressly set forth or referred to in this Agreement.
21.11DNAPrint and Orchid acknowledge that (i) its counsel reviewed the terms of
this Agreement, (ii) the rule of construction to the effect that any
ambiguities are resolved against the drafting party will not be employed in
the interpretation of this Agreement, and (iii) the terms of this Agreement
are to be construed fairly as to both parties and not in favor or against
either party, regardless of which party was generally responsible for the
preparation of this Agreement.
21.12This Agreement may be executed in two or more counterparts, all of which
constitute one and the same legal instrument.
21.13DNAPrint and Orchid agree to execute, acknowledge, and deliver any further
instruments and to do all other acts as may be necessary or appropriate to
effect the purpose and intent of this Agreement.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the Effective
Date.
DNAPrint Genomics, Inc. Orchid Biosciences, Inc.
By:________________________ By: _______________________
Title:______________________ Title:_______________________
