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EXHIBIT 10.32
AMENDMENT TO COLLABORATION AND LICENSE AGREEMENT
This Amendment ("Amendment") is entered into by and between PACKARD INSTRUMENT
COMPANY, INC., a Delaware corporation, having offices at 000 Xxxxxxxx Xxxxxxx,
Xxxxxxx, Xxxxxxxxxxx, 00000, and AURORA BIOSCIENCES CORPORATION, a Delaware
corporation having offices at 00000 Xxxxxxxxx Xxxx, Xxx Xxxxx, Xxxxxxxxxx 00000.
The parties hereto agree as follows:
1.0 DEFINITIONS
1.1 "Affiliates" has the meaning set forth in Collaboration Agreement
for AFFILIATE.
1.2 "Amendment Date" means the date of the last party to sign hereto.
1.3 ***.
1.4 "Aurora" has the meaning set forth in Collaboration Agreement for
AURORA.
1.5 ***.
1.6 "Collaboration Agreement" means the Collaboration and License
Agreement of April 24, 1996 between Aurora and Packard.
1.7 ***.
1.8 "Control" means, with respect to intellectual property or licenses,
a party's ability to grant a license or sublicense as provided for
herein without violating the terms of any agreement with or other
arrangement with a third party.
1.9 "Packard" has the meaning set forth in Collaboration Agreement for
PACKARD.
1.10 ***.
Unless expressly defined in the Amendment, all defined terms shall have the
meaning expressly set forth in the Collaboration Agreement.
2.0 NANO-PLATES
2.1 NANO-PLATE DEVELOPMENT
2.1.1 After the Amendment Date, Aurora will be responsible for ***. Packard's
obligations and rights under the Collaboration Agreement concerning all future
***. In addition, Packard's rights associated with the ***. Packard will *** to
Aurora as necessary. In addition, Packard will pay to Aurora *** within thirty
days of the Amendment Date. All rights ***. In Addition, Packard, at its expense
***.
2.1.2 As of the Amendment Date, Aurora grants to Packard and its Affiliates ***.
Packard agrees to use ***. The use of such trademarks ***.
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2.2 SUPPLY TO PACKARD OF ***
2.2.1 Beginning on ***, Aurora will use reasonable efforts to supply Packard and
its Affiliates with *** are to be used ***, and limited in quantities suitable
***. Packard will pay Aurora for such ***of such ***.
2.2.2 Beginning on ***, Aurora will use reasonable efforts to supply Packard and
its Affiliates with ***. Such ***may be delivered subject to the terms of a
supply agreement negotiated by the parties in good faith, similar in scope and
nature to the *** by Aurora and Packard. In such supply *** at a price equal to
***.
2.2.3 Beginning on ***, Aurora will use reasonable efforts to supply Packard and
its Affiliates ***. Such plates may be delivered subject to the terms of a
supply agreement negotiated by the parties in good faith, similar in scope and
nature to the *** by Aurora and Packard. In such supply agreement ***
2.2.4 Beginning on ***Aurora grants Packard and its Affiliates a ***.
***.
3.0 ***
3.1 LICENSES AND ROYALTIES
3.1.1 Aurora hereby grants to Packard and its Affiliates ***.
3.1.2 As of January 1, 1999, Aurora grants to Packard and Affiliates ***.
3.1.3 As of July 1, 1999, Aurora grants to Packard and its ***.
3.1.4 The licenses granted under Section 3.1.1, 3.1.2 and 3.1.3 are not subject
to an ***; provided, however that all such licenses are subject to the payment
of royalties by Packard to Aurora and Packard will begin ***. Such royalties are
calculated *** (calculated in the same manner as NET SALES) by Packard and its
Affiliates for plates sold under such licenses. Beginning one year after the
Amendment Date, Packard will pay Aurora a maintenance fee for such licenses,
creditable against any royalties paid by Packard or its Affiliates under this
Section 3.1.4, *** per year within thirty (30) days of the respective
anniversary of the Amendment Date. Further the licenses granted under Sections
3.1.1, 3.1.2, and 3.1.3 of the Amendment will ***, and July 1, 2005,
respectively, and each license may be extended by the mutual written agreement
of the parties. Except as expressly set forth herein, Packard agrees not to, and
not permit to any Affiliate to***. Packard further agrees ***. In addition,
Packard will supply ***.
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4.0 PIEZO-DEVICES
4.1 DISTRIBUTION OF MARKETING RIGHTS
4.1.1 From the Amendment Date through ***, Packard agrees not to, and not to
permit an Affiliate to, market or sell in any market any device containing
greater than ***.
4.1.2 From *** through ***, Packard agrees not to, and not to permit any
Affiliate to, market or sell in any *** market any device containing *** Packard
agrees to supply and sell devices containing *** to Aurora for sale by Aurora or
its use during or after such period.
After ***.
4.1.3 ***.
4.1.4 Beginning on ***, Packard and its Affiliates will not be restricted ***,
and Packard and its Affiliates will ***.
4.1.5 Beginning on ***or, if Aurora satisfies its synthesis obligations
described in Section 4.1.3, ***, Packard and its Affiliates will be restricted
from selling devices as set forth in Sections 4.1.3 for ***.
4.1.6 From the Amendment Date, Packard ***.
4.1.7 ***.
5.0 ***
***
5.1.3 Beginning on ***, Packard and its Affiliates will not be restricted from
selling devices as set forth in Sections 5.1.1 and 5.1.2 herein and Packard and
its Affiliates will be free to operate according to its normal business
practices, except as provided Section 5.1.4 herein.
5.1.4 From the Amendment Date through ***.
5.1.5 Beginning on ***, Packard and its Affiliates will not be restricted from
selling devices as set forth in Section 5.1.4 and Packard and its Affiliates
will be free to operate according to normal business practices.
5.1.6 Aurora and Packard agree that *** of the Collaboration Agreement will no
longer be in force and shall have no effect as of the Amendment Date.
5.1.7 Licenses granted by Packard to Aurora and its Affiliates under this ***.
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6.0 ENTIRE AGREEMENT AND TERMINATION
The Amendment and the Collaboration Agreement represent the parties entire
understanding and agreement on the subject matter herein and supersedes all
other oral or written understandings not set forth in the Amendment and the
Collaboration Agreement. Any further amendment must be made by the mutual
written consent of the parties. Unless otherwise stated herein, termination of
the Amendment will be controlled by the Collaboration Agreement and all licenses
granted in the Amendment will terminate upon such termination.
IN WITNESS WHEREOF, the parties has caused this Amendment to be executed in
multiple counterparts by their duly authorized representatives.
PACKARD INSTRUMENT AURORA BIOSCIENCES
COMPANY CORPORATION
By: /s/ XXX X. XXXXXX By: /s/ XXXXX XXXXXX
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Name: Xxx X. Xxxxxx Name: Xxxxx Xxxxxx
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Title: Treasurer Title: Vice President
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Date: February 7, 1998 Date: February 7, 1998
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