SEQUENOM BETA TEST AGREEMENT [LOGO] 1/6
EXHIBIT 10.22
BETA TEST AGREEMENT
This Agreement, dated April ...., 1999, is made by and between SEQUENOM, Inc., a
corporation with its principal place of business located at 00000 Xxxxxxxx
Xxxxxx Xx, Xxx Xxxxx, XX, XXX, ("Company"), represented by SEQUENOM GmbH, and
Priv.-Doz. Dr. med. Xxxxxx Xxxxx, with his principal place of operations at
Universitat Munster, Xxxxxx Xxxxxxxxxx-Xxxx(XXXX)x 00, X-00000, Xxxxxxx, Xxxxxxx
Xxxxxxxx of Germany, ("Recipient").
WHEREAS, Company is willing to supply within the protection of a
confidential relationship, the DNA MassArray(TM) Basic System Plus and related
materials listed on Schedule A attached hereto ("Evaluation Item") to Recipient
solely for evaluating whether to enter in the currently proposed business
arrangement with Company ("Evaluation");
WHEREAS, Recipient desires to have access to the Evaluation Item and is
aware of the nature of the Evaluation Item, and is willing to enter in a
confidential relationship and to use and test the Evaluation Item and report to
Company on the performance of the Evaluation Item;
NOW, THEREFORE, in consideration of the foregoing and the mutual covenants
hereinafter set forth, the parties hereby agree as follows:
1. Use of DNA MassArray(TM) Basic System and SpectroChip(TM) License.
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Subject to the terms of this Agreement Company grants to Recipient ***
nonsublicensable, nonexclusive license to use the Evaluation Item ***
during the term of this Agreement. The Company shall at all times retain all
title to and ownership of the Evaluation Item and all ancillary products
thereof. Recipient agrees to use the Evaluation Item only in the ordinary course
of testing and comparing it's performance against comparable technologies in the
Recipient's facility, and Recipient will not reproduce or modify the Evaluation
Item or any portion thereof. Recipient shall not rent, sell, lease or otherwise
transfer the Evaluation Item or any part thereof or use it for the benefit of a
third party. Recipient shall not reverse assemble, reverse compile or reverse
engineer the Evaluation Item, or otherwise attempt to discover any Evaluation
Item underlying Proprietary Information (as that term is defined below).
2. Business Terms. All payments herein are for the use of Company's
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Evaluation Item and the services required for the operation of the Evaluation
Item including training and support.
i. *** for the Company's Evaluation Item for the
first six months after the initiation of the first test.
After the completion of the initial 6-month
Beta-test period the Evaluation Item cost will be ***
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
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SEQUENOM BETA TEST AGREEMENT [LOGO] 2/6
ii. *** fee during the Beta-site period for all tests performed for
comparison of Evaluation Item with other DNA analysis methods and with
results of comparison tests reported to SEQUENOM. All samples being
analyzed using the Evaluation Item for routine laboratory testing, shall
have an Element fee of *** (the 'Element Fee'); An "Element represents one
Biomass PROBE reaction unit (Patent US 5,605,798) on Company's
SpectroChip(TM) and includes the reaction unit and reagents necessary to
characterize a PCR product for SNP analysis.
iii. Monthly Maintenance Fee of *** that includes Evaluation Item
support and the Company Bioinformatics Workstation updates *** six (6)
months commencing upon installation of the Evaluation Item.
iv. A *** Royalty will be assessed on all reimbursements for test
results obtained using the Evaluation Item on routine laboratory tests
outside of the evaluation activities.
v. One Company senior scientist designated for on-site support during the
Beta-test period to facilitate the technology transfer and SYSTEM start-up.
Recipient shall provide the Company scientist full access to the Contracted
Item at the Recipient's facility during regular business hours.
vi. Agreement is contingent on the use of authorized consumables provided from
Company.
3. Confidentiality; Ownership. Recipient acknowledges that, in the course
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of using the Evaluation Item and performing its duties under this Agreement, it
may obtain information relating to the Evaluation Item and/or Company
("Proprietary Information"). Such Proprietary Information shall belong solely to
Company and includes, but, is not limited to, the existence of the Evaluation
Item, its features and mode of operation, this Agreement, trade secrets, know-
how, inventions (whether or not patentable), techniques, processes, programs,
ideas, algorithms, schematics, testing procedures, software design and
architecture, computer code, internal documentation, design and function
specifications, product requirements, problem reports, analysis and performance
information, software documents, and other technical, business, product,
marketing and financial information, plans and data. In regard to this
Proprietary Information:
(a) Recipient shall not during the term of this Agreement and for a period
of at least three (3) years after its termination, use (except as expressly
authorized by this Agreement) or disclose Proprietary Information without
the prior written consent of Company unless such Proprietary Information
becomes part of the public domain without breach of this Agreement by
Recipient, its officers, directors, employees or agents.
(b) During the period specified in (a) above, Recipient agrees to take all
reasonable measures to maintain the Proprietary Information and Evaluation
Item in confidence.
(c) During the period specified in (a) above, Recipient will disclose the
Evaluation Item and Proprietary Information only to those of its employees
and consultants as are necessary for the use expressly and unambiguously
licensed hereunder, and only after such employees and contractors have
agreed in writing to be bound by the provisions of this Agreement.
Recipient shall not, without the prior written consent of Company,
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
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SEQUENOM BETA TEST AGREEMENT [LOGO] 3/6
disclose or otherwise make available the Evaluation Item or any ancillary
products to any third party.
(d) Recipient hereby assigns to Company any invention, idea or know-how
(whether or not patentable) that is conceived, learned or reduced to
practice in the course of performance under this Agreement and any patent
rights, trade secret rights, mask work rights, sui generis database rights
and all other intellectual and industrial property rights of any sort with
respect thereto. Recipient agrees to take any action reasonably requested
by Company to evidence, perfect, obtain, maintain, enforce or defend the
foregoing.
4. Reports.
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Company senior scientist, assisted by Recipient, shall provide written
reports bi-monthly commencing after the date of this Agreement. Reports
shall disclose: (1) which portions of the Evaluation Item have been used,
(2) the nature of that use, (3) the extent or amount of use, (4) all errors
or difficulties discovered, (5) suggestions on improving the Evaluation
Item, (6) the characteristic conditions and symptoms of the errors and
difficulties, in sufficient detail to allow the Company to recreate the
errors and difficulties itself, (7) a performance comparison with other
available systems and methods in use at the Recipients facility, including
but not limited to, accuracy, time of assay, repeat tests performed and
instrument down-time, and if possible (8) the amount of financial
reimbursement per reportable result versus comparable methods of DNA
analysis.
5 WARRANTY DISCLAIMER.
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The parties acknowledge that the Evaluation Item is for use in a Beta test.
COMPANY DISCLAIMS ALL WARRANTIES RELATING TO THE EVALUATION ITEM, EXPRESS OR
IMPLIED, INCLUDING, BUT NOT LIMITED TO, ANY WARRANTIES AGAINST INFRINGEMENT OF
THIRD-PARTY RIGHTS, MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
6. Limitation of Remedies and Damages.
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COMPANY SHALL NOT BE RESPONSIBLE OR LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF
THIS AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER THEORY
(A) FOR LOSS OR INACCURACY OF DATA OR COST OF PROCUREMENT OF SUBSTITUTE GOODS,
SERVICES OR TECHNOLOGY, OR (B) FOR ANY INDIRECT, INCIDENTAL OR CONSEQUENTIAL
DAMAGES INCLUDING, BUT NOT LIMITED TO LOSS OF REVENUES AND LOSS OF PROFITS.
COMPANY SHALL NOT BE RESPONSIBLE FOR ANY MATTER BEYOND ITS REASONABLE CONTROL.
7. Nonassignability. Neither the rights nor the obligations arising under
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this Agreement are assignable or transferable by Recipient, and any such
attempted assignment or transfer shall be void and without effect.
8. Execution of Agreement, Controlling Law, Attorneys' Fees and
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Severability. This Agreement shall become effective only upon its execution by
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both Company and Recipient and it shall be governed by and construed in
accordance with the laws of the Federal Republic of
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Germany without regard to the conflicts of laws provisions therein. In any
action to enforce this Agreement the prevailing party will be entitled to costs
and attorneys' fees. 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.
9. Entire Agreement. This Agreement constitutes the entire agreement
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between the parties pertaining to the subject matter hereof, and any and all
written or oral agreements previously existing between the parties are expressly
cancelled. Any modifications of this Agreement must be in writing and signed by
both parties.
10. Equitable Relief. Recipient acknowledges and agrees that due to the
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unique nature of Company's Proprietary Information, there can be no adequate
remedy at law for any breach of its obligations hereunder, that any such breach
may allow Recipient or third parties to unfairly compete with Company resulting
in irreparable harm to Company, and therefore, that upon any such breach or
threat thereof, Company shall be entitled to injunctions and other appropriate
equitable relief in addition to whatever remedies it may have at law.
11. Termination. This Agreement may be terminated by Company without cause
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with fourteen (14) days' written notice to the Recipient at the address listed
above, or immediately upon notice of any breach by Recipient of the provisions
of this Agreement, and in any case will terminate six (6) months after the
initiation of the first reportable test at the Recipient's facility. Company and
Recipient will enter into good faith discussions sixty (60) days prior to the
termination of the Beta Site Agreement to negotiate a full DNA MassArrayTM
license Agreement. If no full license Agreement has been established upon
termination, the license granted hereunder shall terminate and Recipient shall
immediately return the Evaluation Item, together with any and all documents,
notes and other materials regarding the Evaluation Item to Company, including,
without limitation, all Proprietary Information and all copies and extracts of
the foregoing, but the terms of this Agreement will otherwise remain in effect.
12. PUBLIC ANNOUNCEMENTS. Any announcements or similar publicity with
respect to the execution of this Agreement shall be agreed upon between the
Parties in advance of such announcement, with such approval not unreasonable
withheld. Both Parties understand that this Agreement is likely to be of
interest to investors, analysts and others, and that the Parties therefore may
make such public announcements with respect thereto. The Parties agree that any
such announcement will not contain confidential business or technical
information and, if disclosure of confidential business or technical information
is required by law or regulation, will make reasonable efforts to minimize such
disclosure and obtain confidential treatment for any such information which is
disclosed to a governmental agency or group. Each Party agrees to provide to the
other Parties a copy of any public announcement as soon as reasonably
practicable under the circumstances prior to its scheduled release. Except under
extraordinary circumstances, each Party shall provide the other with an advance
copy of any press release at least five (5) business days prior to the scheduled
disclosure. Each Party shall have the right to expeditiously
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review and recommend changes to any announcement regarding this Agreement or the
subject matter of this Agreement. Except as otherwise required by law, the Party
whose press release has been reviewed shall remove any information the reviewing
Party reasonably deems to be inappropriate for disclosure.
13. PUBLICATION - Recipient shall have the right to publish the results of
the work conducted by University under this Agreement to the extent such results
do not contain Confidential Information of Company as per Article 3. and
provided Company has the opportunity to review and comment on any proposed
manuscripts describing said work thirty (30) days prior to their submission for
publication. Recipient agrees to consider Company's comments prior to
publication. However, if such submission would cause the loss of significant
foreign patent rights, Recipient will, at its option, either delete the enabling
portion of the proposed publication, or withhold publication for an additional
sixty (60) days until patent filings are completed.
SEQUENOM, GmbH Dr. med. Xxxxxx Xxxxx, Universitat Munster
By: /s/ illegible By: /s/ Xxxxxx Xxxxx
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Name (Print): illegible Xxxxxxx Name (Print): Xxxxxx Xxxxx
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Title: Director Business Development Title: Priv. - Doz.
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By: /s/ R. Raist By: /s/ illegible
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Name (Print): R. Raist Name (Print): Xxxxxx
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Title: Commercial Director Title: Administrative Officer
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Schedule A
DNA MassArray(TM) Basic System Plus Evaluation Items include:
. High-speed Bruker/SEQUENOM Array Mass Spectrometer
. GeSIM/SEQUENOM Monochannel Nanoplotter
. SEQUENOM BioMASS Informatics Workstation
. Xxxxxxx MultimekTM Instrument with SEQUENOM magnetic lifters
The SEQUENOM 96 D SpectroChip(TM) - including the reaction unit and reagents
necessary to characterize a PCR Product for SNP analysis - will be made
available *** during the Beta test period for all tests that are
performed for comparison of DNA MassArray(TM) performance with other DNA
analysis methods with result reported to SEQUENOM. For all samples being
analyzed using DNA MassArray(TM) for routine laboratory testing (without a
performance report to SEQUENOM)a price of ***
***.
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
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