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EXHIBIT 10.37
February 24, 1998
[ * ]
Dear [ * ]:
This letter sets forth the terms and conditions of an option agreement between
[ * ] and Xenometrix, Inc. ("Xenometrix") as follows:
1) Xenometrix hereby grants [ * ] an exclusive, [ * ] option to acquire a
license under Xenometrix's gene expression profiling patents and patent
applications as set forth in Exhibit A attached hereto. The field for such
option and a license would be [ * ], such definition to be more precisely
negotiated in the final agreement. Terms and conditions of the license,
including those relating to exclusivity, are to be negotiated. Xenometrix
will not enter into any agreements with third parties relating to the
potential license in the field during the option period. The parties will
begin good faith negotiations for completion of a full license, the
detailed terms of which will be negotiated and the parties anticipate will
be completed within the sixty days. The option period may be extended by
mutual agreement of the parties.
2) The parties anticipate that the full license will be negotiated over the
next 60 day period. During the sixty day period [ * ] and Xenometrix will :
o Negotiate such a license in good faith. It is anticipated that the
terms of the license will provide for exclusivity in the field of [ *
], with reasonable cooperative rights of enforcement and sublicensing
only in such field. The license will provide for payment of
reasonable royalties and/or milestone payments resulting from sales
of licensed products and services, and will provide for stacking
provisions accounting for any required royalty payments to others.
The parties do not anticipate that the royalty rate for covered
products will exceed about [ * ]% of net sales of products and
services covered by the license (anticipated to include products sold
for study of comparative analysis of expression with exposure to
potential therapeutic agents) or, in the alternative, will provide
for annual fixed fee or milestone based payments. Such license will
include other conventional licensing conditions;
o Explore, discuss and potentially negotiate [ * ];
o Explore, discuss and potentially negotiate develop a research and
development funding plan whereby Xenometrix would develop [ * ]; and
* CERTAIN CONFIDENTIAL MATERIAL CONTAINED IN THIS DOCUMENT HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE
24B-2 OF THE SECURITIES AND EXCHANGE ACT OF 1934, AS AMENDED.
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o Explore, discuss and potentially negotiate the development of [ * ],
possibly involving third parties.
3) In return for the option and other consideration set forth herein, [ * ]
agrees to pay Xenometrix [ * ] upon execution of this letter agreement. In
the event that an agreement is not completed within sixty (60) days, [ * ]
will pay Xenometrix [ * ] decreased by [ * ]% per month until an agreement
is completed or the [ * ] option period expires. [ * ] may, at its option,
terminate this agreement after sixty (60) days, with no further obligation
to Xenometrix. All payments will be creditable to the payment of any
royalties or milestone payments provided for in the license.
We look forward to working with you to form a strategic alliance which we
believe will result in exciting business opportunities for both of our
companies.
Sincerely,
XENOMETRIX, INC.
/s/ Xxxxxxx X. Xxxxxxxx 2/24/98
---------------------------------------------
By: Xxxxxxx X. Xxxxxxxx
Title: President and Chief Executive Officer
Accepted and approved as of the date stated
above:
[ * ]
By: [ * ]
Title: [ * ]
* CERTAIN CONFIDENTIAL MATERIAL CONTAINED IN THIS DOCUMENT HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE
24B-2 OF THE SECURITIES AND EXCHANGE ACT OF 1934, AS AMENDED.
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EXHIBIT A
EUKARYOTIC GENE PROFILING
Country Patent/Application # Filing Date Issue Date Comments
US 08/008,896 1/21/93 Abandoned
US 08/374,641 7/21/95 CIP; Notice of Allowance 2/17/98
Australia 61243/94 1/21/94
Canada 2154265 1/21/94
EPC 0 680 517 1/21/94 Issued 11/12/97; issue date 11/12/97
Austria, Belgium, Denmark, France, UK,
Germany, Greece, Ireland, Italy,
Luxembourg, Monaco, Portugal, Spain,
Sweden, Switzerland
Japan 6-517147 1/21/94
Singapore 9601405-5 2/13/96
PCT US94/00583 1/21/94
Germany 694 06 772.5-08 11/25/97
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EXHIBIT A
BACTERIAL GENE PROFILING
Country Patent/Application # Filing Date Issue Date Comments
U.S. 08/367,122 1/6/95 12/31/96 Patent No. 5,589,337
EPO 0651825 7/6/93 1/14/98 Issued
U.S. 08/231,990 4/21/94 12/17/96 Patent No. 5,585,232
Singapore 9601688-6 2/14/96
Canada 2,139,667 7/6/93
Japan 6-503562 7/6/93
Korea 95-700038 7/6/93
U.S. 07/910793 7/6/92 Abandoned
Australia 45884/93 7/6/93
Norway 95.0040 7/6/93