SECOND AMENDED AND RESTATED COLLABORATION, LICENSE AND SUPPLY AGREEMENT

Exhibit 10.49

 

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

 

SECOND AMENDED AND RESTATED COLLABORATION,

LICENSE AND SUPPLY AGREEMENT

 

This Second Amended and Restated Collaboration, License and Supply Agreement (“Agreement”) dated as of August 17, 2000 (“Second Amendment Date”), amends and restates the License and Supply Agreement (the “Original Agreement”) dated as of January 11, 1999 (“Effective Date”) as amended June 30, 1999, and as amended by the Amended and Restated License and Supply Agreement dated as of November 1, 1999 (the “First Amended and Restated Agreement”) between EPOCH PHARMACEUTICALS, INC., (doing business as Epoch Biosciences, Inc.,) 12277 134 ^th Court NE, Suite 100, Redmond, WA (“Epoch”) and PE CORPORATION (formerly known as THE PERKIN-ELMER CORPORATION) having its Applied Biosystems Group at 850 Lincoln Centre Drive, Foster City, CA 94404 (“ABG”).

 

ARTICLE I. BACKGROUND OF THE AGREEMENT

 

1.01    Epoch represents that it has rights under certain patents pertaining to oligonucleotides having a minor-groove binding moiety covalently attached thereto (“MGB Oligonucleotide”), and methods for making and using such MGB Oligonucleotides.

 

1.02    ABG wishes to acquire exclusive and non-exclusive licenses, depending on fields of use, under such patents.

 

1.03    Epoch represents that it has certain know-how relating to the synthesis of MGB Oligonucleotides, including MGB Oligonucleotides containing modified bases, and the design of sequence-specific probes comprising such oligonucleotides.

 

1.04    Epoch has research facilities and experienced scientists, research associates and other personnel at its facilities in Redmond, Washington which enable it to conduct research and development activities.

 

1.05    ABG desires to sponsor research by Epoch to develop improved nucleic acid probes and methods for the manufacture of such probes for use in the Exclusive Licensed Field and the Non-Exclusive Licensed Field.

 

1.06    ABG is engaged in the research, development, marketing, manufacturing and distribution of products, including in the Exclusive Licensed Field and the Non-Exclusive Licensed Field.

1.07    ABG has research and development facilities and experienced scientists, research associates and other personnel at its facilities in Foster City, California, which enable it to conduct research and development activities.

 

1.08    ABG wishes to have Epoch supply (i) intermediate compounds useful for making MGB Oligonucleotides, (ii) Bare Probes, and (iii) information with respect to chemical synthesis and purification know-how relating to the production of MGB Oligonucleotides using such intermediate compounds.

 

1.09    In this Agreement, in partial consideration for ABG’s obligation to pay minimum royalties and to incorporate Epoch’s technology in certain of its products comprising nucleic acid probes and the addition of a Supplemental License Fee, Epoch has reduced the royalty rate owed by ABG for the sale of Licensed Products as compared to that owed under the Original Agreement.

 

1.10    Concurrently with the First Amended and Restated Agreement, ABG and Epoch entered into a Know-How Escrow Agreement, pursuant to which Epoch deposited into escrow documentation of know-how necessary to enable a person skilled in oligonucleotide chemistry to manufacture MGB Intermediates. The Know-How Escrow Agreement was entered into between Epoch and ABG to provide that ABG will have access to the know-how required to manufacture MGB Intermediates if Epoch should be unable to meet its obligations to supply ABG MGB Intermediates pursuant to this Agreement.

 

1.11    In connection with the Original Agreement, Epoch granted ABG a security interest in a Licensed Patent, in order to induce ABG to provide a pre-payment of [*] ($[*]) under the Original Agreement. Pursuant to a Stock Purchase Agreement between Epoch and the Investors Listed on Schedule A thereto, dated November 1, 1999 (the “Stock Purchase Agreement”), ABG used One Million Dollars ($1,000,000) of this pre-payment, and an additional One Million Dollars ($1,000,000) in cash, to purchase Eight Hundred Thousand (800,000) shares of Common Stock of Epoch, at a purchase price of Two Dollars And Fifty Cents ($2.50) per share. It is the Parties intent that the Security Agreement previously executed by the Parties in conjunction with the Original Agreement, and attached thereto as Exhibit A, will remain in effect to secure any unused portion of the pre-payments made by ABG pursuant to Section 6.12 of this Agreement.

 

*CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.

ARTICLE II .

 

DEFINITIONS

 

2.01    “Affiliates” means any corporation, firm, partnership or other entity, whether de jure or de facto , which directly or indirectly owns, is owned by or is under common ownership with a Party to this Agreement, as the case may be, to the extent of at least fifty percent of the equity (or such lesser percentage which is the maximum allowed to be owned by a foreign corporation in a particular jurisdiction) having the power to vote on or direct the affairs of the entity.

 

2.02    “Net Sales” means (1) with respect to sales by a Party, or an Affiliate of a Party, to non-affiliated third party purchasers, the actual amount of gross sales of Licensed Product(s) to a third party, less: trade, cash and quantity discounts granted at the time invoiced, if any, actually allowed, amounts refunded for faulty or defective product, returns, rejections, freight, insurance and other transportation costs (except income taxes), tariffs, duties and similar governmental charges paid, to the extent included in gross sales price, (2) with respect to sales by a Party made to any Affiliate or to any person, firm or corporation enjoying a special course of dealing with a Party, the Net Sales will be determined based on the first resale in a bona fide arms-length transaction of Licensed Product(s) by such Affiliate, person, firm or corporation to third parties, and (3) with respect to Licensed Product(s) which are used by a Party, or an Affiliate of a Party, to supply services or information to a third party for commercial purposes, or are otherwise disposed of, the Net Sales will be determined as if such Licensed Product(s) had been sold at the average Net Sales for such Licensed Product(s) during the past one hundred and twenty days prior to the supply of such services or information.

 

With respect to Licensed Product comprising Licensed Know-How in the form of software embodying algorithms for determining the melting temperature of MGB Oligonucleotides, Net Sales for software sold separately shall be calculated as set forth above, and Net Sales for software sold or otherwise transferred in combination with equipment, other software or other products, or otherwise provided by ABG to its customers, will be determined as if such software had been sold at the average Net Sales price for such software during the past one hundred and twenty (120) days prior to such sale, transfer or disposition.

 

2.03    “License Year” means the twelve month period beginning on the first day of January, April, July or October next following the Second Amendment Date, and each twelve month period thereafter, except that the first License Year will include the period from the Second Amendment Date to the first day of the twelve month period.

 

2.04    “Party” means Epoch or ABG and, when used in the plural, will mean Epoch and ABG.

 

2.05    “Licensed Patents” means (1) U.S. Patent No. 5,801,155 titled Covalently Linked Oligonucleotide Minor Groove Binder Conjugates, issued September 1, 1998, (2) U.S. Patent No. 6,084,102 titled Covalently Linked Oligonucleotide Minor Groove Binder Conjugates,

issued July 4, 2000, (3) any patent covering Collaboration Intellectual Property, and (4) any patent covering Modified Bases to the extent set forth in Sections 4.01 and 4.02.

 

2.06    “Related Patent” means any patent or patent application owned, held, or otherwise controlled, in whole or in part by Epoch that (1) discloses and/or claims substantially the same subject matter as a Licensed Patents, (2) discloses and/or claims improvements to inventions disclosed or claimed in a Licensed Patent and requires rights under the Licensed Patent to exploit such improvements, (3) claims priority to, a Licensed Patent, including but not limited to continuation applications and patents, continuation-in-part applications and patents, divisional applications and patents, reexamination applications and patents, reissue applications and patents, and continuing prosecution applications and patents, (4) is a parent of U.S. Patent No. 5,801,155, and/or (5) any foreign equivalents of a Licensed Patent or any patent or patent application in (1), (2), (3) or (4) above.

 

2.07    “Licensed Product” means any product for use in the Exclusive Licensed Field or the Non-Exclusive Licensed Field (1) which, but for the license granted hereunder, manufacture, use or sale thereof would infringe at least one Valid Claim of a Licensed Patent or a patent licensed to ABG for Collaboration Epoch Intellectual Property or Epoch’s interest in Collaboration Joint Intellectual Property pursuant to Section 4.01 below, or (2) which otherwise uses, incorporates or was developed or manufactured using Licensed Know-How or Collaboration Epoch Intellectual Property or Epoch’s interest in Collaboration Joint Intellectual Property pursuant to Section 4.01 below.

 

2.08    “MGB Oligonucleotide” means Licensed Product comprising an oligonucleotide having a minor-groove binding moiety covalently attached thereto, and, at ABG’s option, further comprising a [*]. A Purified MGB Oligonucleotide means an MGB Oligonucleotide that is at least [*]% pure based on the HPLC assay specified in Exhibit A.

 

2.09    “MGB Intermediate” means an intermediate useful for the synthesis of an MGB Oligonucleotide, including but not limited to [*]. The identity of a MGB Intermediate will be confirmed based on an assay which shall be mutually agreed upon by the Parties, and included in an amendment to Exhibit C within ninety (90) days from the Second Amendment Date.

 

2.10    “Probe Unit” means that amount of MGB Intermediate required to make [*] of a Purified MGB Oligonucleotide.

 

2.11    “Kits” means products containing MGB Oligonucleotides packaged with other materials and reagents, such other reagents including but not limited to enzymes, reaction buffers and nucleotide triphosphates. Also included within the definition of Kits are microfluidic devices containing or packaged with MGB Oligonucleotides.

 

2.12    “Bare Probe” means a MGB Oligonucleotide provided alone.

 

2.13    “Valid Claim” means a claim of a Licensed Patent (or pending application

 

*CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.

included in the Related Patents) which has not been held permanently invalid or otherwise unenforceable by a court of competent jurisdiction, unappealable or unappealed within the time allowed for appeal, or has not otherwise finally been held unpatentable by an appropriate administrative agency, unappealable or unappealed within the time allowed for appeal.

 

2.14    “Exclusive Licensed Field” means the 5’-Nuclease Assay Field.

 

2.15     “Real-Time Nucleic Acid Amplification Monitoring Field” means the monitoring of a polymerase chain reaction by detecting a change in a magnitude of a detectable signal as a function of reaction cycle practiced outside of the HIVD Field only.

 

2.16     “5’-Nuclease Assay Field” means the detection of a nucleic acid sequence based on the cleavage of a nucleic acid probe that is hybridized to the nucleic acid sequence by a 5’ to 3’ nuclease activity of a polymerase enzyme, as generally described in U.S. Patent No. 5,487,972, practiced outside of the HIVD Field only.

 

2.17     “Non-Exclusive Licensed Field” means (1) use of MGB Oligonucleotides as ligation probes in an oligonucleotide ligation assay, generally as described in U.S. Patent No. 4,883,750; (2) use of MGB Oligonucleotides in an assay employing a [*]; (3) use of MGB Oligonucleotides as primers in a primer extension reaction, including but limited to a PCR reaction or a DNA sequencing reaction, and (4) use of MGB Oligonucleotides in the Real-Time Nucleic Acid Monitoring Field, to the extent that (1), (2), (3) and (4) are practiced outside of the Exclusive Licensed Field and practiced outside the HIVD Field.

 

2.18     “Human In Vitro Diagnostics Field (“HIVD Field”) means products and processes for the measurement of attributes practiced outside of the HIVD Field, characteristics, diseases, traits or other conditions of a human being for the medical management of that human being.

 

2.19     “Licensed Know-How” means trade secrets, technical information, experimental data, software and other knowledge now existing and controlled by Epoch relating to (1) the chemical synthesis and purification of MGB Oligonucleotide using MGB Intermediate, (2) algorithms and related software for determining the melting temperature of MGB Oligonucleotide, as described in 6.05 and Exhibit B, (3) Collaboration Intellectual Property, and (4) Modified Bases to the extent set forth in Sections 4.01 and 4.02, to the extent that such technical information, experimental data, software and other knowledge is not publicly available.

 

2.20     “Confidential Information” means information received by one Party (Receiving Party) from the other Party (Disclosing Party) (1) that the Receiving Party has a reasonable basis to believe is confidential to the Disclosing Party, or is treated by the disclosing Party as confidential, (2) is identified at the time of disclosure as “CONFIDENTIAL” and, (3) in the case of disclosures in non-written form, is identified in writing within thirty (30) days as confidential. Notwithstanding the above, Confidential Information will not include any information which:

 

*CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.

(a) can be demonstrated to have been in the public domain as of the Second Amendment Date or comes into the public domain during the term of this Agreement through no act of the recipient; or

 

(b) can be demonstrated to have been independently known to the recipient prior to the receipt thereof, or made available to the recipient as a matter of lawful right by a third party; or

 

(c) can be demonstrated to have been rightfully received by the recipient from a third party who did not require the recipient to hold it in confidence or limit its use and who did not acquire it, directly or indirectly, from the other Party to this Agreement under a continuing obligation of confidentiality; or

 

(d) will be required for disclosure to any governmental regulatory agencies pursuant to approval for use, provided the Disclosing Party is given reasonable notice of such proposed disclosure and, if requested by the Disclosing Party, the Receiving Party uses reasonable efforts to maintain the confidentiality of such information in such governmental submission; or

 

(e) is independently conceived, invented or acquired by researchers of the recipient who have not been personally exposed to the information provided to the recipient hereunder; or

 

2.21     “Large Scale Order” means an order from a customer of ABG for at least [*] Bare Probes represented to the customer as having been manufactured at a synthesis scale intended to yield greater than or equal to [*]of MGB Oligonucleotide.

 

2.22     “Research Committee” shall mean the joint committee of representatives of ABG and Epoch as described in Section 3.08 hereof.

 

2.23     “FTE” means a full-time employee having the appropriate skill and experience to conduct the Research Program who is dedicated to the conduct of the Research Program or, in the case of less than full-time dedication, a full-time equivalent person-year, based on a total of forty-six and ¼ (46.25) weeks or one thousand eight hundred fifty (1,850) hours per year, of work on or directly related to the Research Program.

 

2.24     “Research Funding Payment” shall have the meaning set forth in Section 5.03.

 

2.25     “Research Term” shall be for a period of two (2) years from the Second Amendment Date unless otherwise extended pursuant to Section 3.03.

 

*CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH THE COMMISSION.

2.26    “Research Plan” shall mean the plan, as amended from time to time by the Research Committee, for the conduct of the Research Program, which plan, including all amendments, shall be agreed to by the Parties within thirty (30) days of the Second Amendment Date and attached to this Agreement as Schedule 2.26.

 

2.27    “Research Program” shall mean the collaborative research and development program for identifying and evaluating improved nucleic acid probes, and cost-effective methods for producing such probes, undertaken by the Parties pursuant to this Agreement.

 

2.28    “Collaboration Joint Intellectual Property” means all writings, inventions, discoveries, improvements and other technology, whether or not patentable or copyrightable, and any patent applications, patents or copyrights based thereon, arising from work performed under the Research Program, that are jointly conceived by one or more employees or agents of Epoch, and by one or more employees or agents of ABG.

 

2.29    “Collaboration Epoch Intellectual Property” means all writings, inventions, discoveries, improvements and other technology, whether or not patentable or copyrightable, and any patent applications, patents or copyrights based thereon, arising from work performed under the Research Program, that are conceived by one or more employees or agents of Epoch.

 

2.30    “Collaboration ABG Intellectual Property” means all writings, inventions, discoveries, improvements and other technology, whether or not patentable or copyrightable, and any patent applications, patents or copyrights based thereon, arising from work performed under the Research Program, that are conceived by one or more employees or agents of ABG.

 

2.31    “Collaboration Intellectual Property” means Collaboration Joint Intellectual Property, Collaboration Epoch Intellectual Property and Collaboration ABG Intellectual Property.

 

2.32    “Modified Base” means any modified nucleotide, including but not limited to pyrazolopyrimidine (ppn) nucleobase analogs, e.g., ppA and ppG analogs, including methods for making or using such modified nucleotides.

 

2.33    “Pre-Collaboration ABG Intellectual Property” means all writings, inventions, discoveries, improvements and other technology, whether or not patentable or copyrightable, and any patent applications, patents or copyrights based thereon, that are owned by, either partially or wholly, or licensed to, or otherwise controlled by, ABG or its Affiliates as of the Second Amendment Date.

 

2.34    “Pre-Collaboration Epoch Intellectual Property” means all writings, inventions, discoveries, improvements and other technology, whether or not patentable or copyrightable, and any patent applications, patents or copyrights based thereon, that are owned by, either partially or wholly, or licensed to, or otherwise controlled by, Epoch or its Affiliates as of the Second Amendment Date.

2.35    “Manufacturing Cost” means the fully-burdened manufacturing cost of a product as determined using a Party’s customary practices and procedures for like products in accordance with United States generally accepted accounting principles (“GAAP”) including the following: direct material cost, material overhead cost, direct labor cost, fixed manufacturing overhead cost, variable manufacturing overhead cost, and manufacturing variance cost.

 

ARTICLE III .

 

SCOPE, STRUCTURE AND ADMINISTRATION OF THE COLLABORATION

 

3.01     General . Epoch and ABG wish to establish the Research Program and develop and conduct the Research Plan. The Parties shall use all commercially reasonable endeavors to comply with the terms of the Research Plan.

 

3.02     Collaboration Data . Each Party shall use good scientific practices and shall comply in all material respects with applicable regulations and customary good laboratory and clinical practices in the performance of the Research Program (including all data in the form required to be maintained under any applicable governmental regulations). Such records shall comprise books, results, reports, research notes, charts, graphs, comments, computations, analyses, recordings, photographs, computer programs and documentation thereof, computer information storage means, samples of materials and other graphic or written data generated in connection with the Research Program. Each Party shall provide the other Party the right to inspect its data, and shall provide summaries of its data, to the extent reasonably required for the performance of each Party’s obligations under this Agreement and the Research Plan; provided, however, that each Party shall maintain such records and the information of the other Party contained therein in confidence in accordance with Article XI below and shall not use such records or information of the other Party except to the extent otherwise permitted by this Agreement.

 

3.03     Research Term . The Research Term shall commence on the Second Amendment Date and be for an initial term of two (2) years from that date, and may be extended an additional two (2) year term, provided ABG provides notice of such extension at least ninety (90) days prior to the end of the initial term.

 

3.04     Research Plan . The Research Plan will be agreed upon Parties within sixty (60) days of the Second Amendment Date and updated and approved by the Research Committee as necessary. The Research Plan in effect at any time may not be amended except as agreed in writing by the Research Committee. If at any time during the Research Term either Party determines that a change to the Research Plan would be beneficial to the collaboration of the Parties, such Party shall prepare and submit to the Research Committee a written proposal detailing its proposed changes to the Research Plan. The Research Committee shall promptly convene a meeting to consider any such proposal.

 

3.05     Subcontracts . Either Party may subcontract portions of the Research Program to be performed by it in the normal course of its business to third parties with the prior consent of

the Research Committee; provided, however, that such third parties enter into appropriate confidentiality agreements unless such subcontracting would not require the transfer of confidential information to the third party.

 

3.06     Availability of Employees . Each Party agrees to make its employees and nonemployee consultants reasonably available at their respective places of employment to consult with the other Party on issues arising during the Research Program. If ABG requests Epoch personnel to consult other than at Epoch’s facility, ABG shall reimburse Epoch the reasonable travel and lodging expenses of such personnel.

 

3.07     Visit of Facilities . Representatives of either Party may, upon reasonable notice and at times reasonably acceptable to the other Party, visit the other Party’s facilities where the Research Program is being conducted, and consult informally, during such visits and by telephone, with personnel performing work on the Research Program. Each Party’s representatives shall abide by all reasonable operating procedures and rules of such facilities with respect to safety and confidentiality.

 

3.08     Research Committee.

 

(a) Formation and Composition . A joint committee comprised of three (3) named representatives of each of ABG and of Epoch, (the “Research Committee”) shall be appointed promptly after the date hereof and shall meet as needed, but not less than once each quarter during the Research Term. Such meetings shall be at such times agreed to by Epoch and ABG and shall be held alternately at the facilities of Epoch and ABG, or at such locations as the members of the Research Committee shall agree. The initial composition of the Research Committee will be as follows:

 

 

(b) Functions and Powers . The principal functions of the Research Committee will include the following: (i) discuss and approve the Research Plan, material changes to the Research Plan, including budgets and schedules, and allocation of responsibilities, (ii) monitor work conducted under the Research Plan, and (iii) attempt to resolve any disputes arising under this Agreement as set forth in Section 12.03 . The Research Committee shall have the power to appoint other committees as appropriate. The Research Committee shall endeavor in good faith to make decisions unanimously, failing which the procedures set out in Section 12.03 shall apply.

 

(c) Members; Approval; Chairs . A Party may change one or more of its representatives to the Research Committee at any time. Members of the Research Committee

may be represented at any meeting by another member of the Research Committee, or by a deputy. Either Party may permit additional employees and consultants to attend and participate (on a non-voting basis) in the Research Committee meetings, subject to the confidentiality provisions of Article XI. Any approval, determination or other action agreed to by all of the members of the Research Committee or their deputies present at the relevant meeting shall be the approval, determination or other action of the Research Committee, provided that at least two (2) representatives of each Party are present at such meeting. The Research Committee shall be chaired by Michael Lucero.

 

(d) Records and Reports . The Research Committee shall be responsible for keeping accurate records of their deliberations and decisions and all actions recommended or taken. Periodically, the Chair of the Research Committee shall provide a brief written report of such activities to the Parties. All records of the committees shall be available to both Parties.

 

3.09     Ownership of Inventions, Cooperation of Employees . Inventorship, with respect to inventions made pursuant to the work carried out under the Research Program shall be determined in accordance with United States rules of inventorship. All Collaboration Epoch Intellectual Property shall be owned by Epoch. All Collaboration ABG Intellectual Property shall be owned by ABG. All Collaboration Joint Intellectual Property shall be owned jointly by ABG and Epoch.

 

(a) Right to Practice . Subject to the licenses granted herein, each Party will have the right to independently practice the Collaboration Joint Intellectual Property, without accounting to the other Party, only to the extent that the practice of the Collaboration Joint Intellectual Property by ABG does not require rights under Pre-Collaboration Epoch Intellectual Property, Collaboration Epoch Intellectual Property, or any other intellectual property rights owned by, either partially or wholly, or licensed to Epoch, and that practice of the Collaboration Joint Intellectual Property by Epoch does not require rights under Pre-Collaboration ABG Intellectual Property, Collaboration ABG Intellectual Property, or any other intellectual property rights owned by, either partially or wholly, or licensed to ABG.

 

(b) Joint Invention Not Patentable Over Prior Invention of a Party . In the event that a Party is the owner of a prior invention that would render a patent under Collaboration Joint Intellectual Property unpatentable for being obvious or anticipated under United States patent law, to assure the patentability of the Collaboration Joint Intellectual Property, the other party will assign sole ownership of the Collaboration Joint Intellectual Property to the first Party. The first Party will then grant a royalty-free non-exclusive license with a right to sublicense under the Collaboration Joint Intellectual Property back to the other Party.

 

(c) Enforcement . Each Party will have the right but not the obligation to bring, at its own expense, an infringement action against any third party under its interest in Joint Collaboration Intellectual Property, subject to the same limitations set forth in Section 3.09(a) with respect to the practice of the Joint Collaboration Intellectual Property by Epoch or ABG. The Parties will assist one another and cooperate in any such litigation at the other’s reasonable

request, and, if a Party is necessary in order to institute or maintain an infringement suit by the other Party as defined by law, that Party agrees to be joined in the suit.

 

3.10     Filing, Prosecution and Maintenance of Technology, Patent Rights and Joint Inventions . When Collaboration Intellectual Property may reasonably be considered to be patentable the Parties shall discuss the protection thereof. Unless otherwise agreed by the Parties, the provisions of this Section 3.10 shall govern the filing, prosecution and maintenance of patent applications. If Collaboration Epoch Intellectual Property or Collaboration Joint Intellectual Property useable in the Exclusive Licensed Field is involved, a priority patent application shall be filed as soon as reasonably possible, prosecuted and maintained at Epoch’s expense by Epoch in the countries set forth is Section 4.05. If Collaboration Epoch Intellectual Property or Collaboration Joint Intellectual Property not useable in the Exclusive Licensed Field is involved, such filings shall be made at Epoch’s discretion and such application shall be filed by Epoch, in such countries as reasonably determined by Epoch after consultation with ABG. Epoch shall bear the expense of such filing for Collaboration Epoch Intellectual Property and the Parties will share the expense for Collaboration Joint Intellectual Property. If Collaboration ABG Intellectual Property is involved, such application may be filed by ABG, at its expense, in such countries as reasonably determined by ABG, after consultation with Epoch. In the event that ABG does not file, prosecute and maintain any such patent application or patent for Collaboration ABG Intellectual Property, or pay its share of expenses for Collaboration Joint Intellectual Property, it shall give Epoch forty-five (45) days’ notice before any relevant deadline and transmit all information reasonable and appropriate relating to such patent application or patent, and Epoch shall have the right to pursue, at its own expense, filing, prosecution and maintenance thereof, in which event ABG shall assign all of its rights therein to Epoch. In the event that Epoch does not file, prosecute and maintain any such patent application or patent for Collaboration Epoch Intellectual Property, or pay its share of expenses for Collaboration Joint Intellectual Property, it shall give ABG forty-five (45) days’ notice before any relevant deadline and transmit all information reasonable and appropriate relating to such patent application or patent, and ABG shall have the right to pursue, at its own expense, filing, prosecution and maintenance thereof, in which event Epoch shall assign all of its rights therein to ABG.

 

3.11     No Other Technology Rights . Except as otherwise expressly provided in this Agreement, under no circumstances shall a Party hereto, as a result of this Agreement, obtain any ownership interest in or other right to any technology, know-how, patents, pending patent applications, products, or biological materials of the other Party, including items owned, controlled or developed by the other Party, or transferred by the other Party to said Party at any time pursuant to this Agreement, by implication, or by estoppel, or otherwise.

 

3.12     Cooperation of Employees . Each Party represents and agrees that (except where such assignment is required by law) all employees or others acting on its behalf in performing its obligations under this Agreement shall be obligated under a binding written agreement to assign to such Party, or as such Party shall direct, all intellectual property rights (including Collaboration Joint Intellectual Property) made or conceived by such employee or other person.

ARTICLE IV.

 

LICENSE GRANT

 

4.01     Exclusive License . Epoch hereby grants to ABG a world-wide exclusive license under Licensed Patents and Licensed Know-How, to make, use, offer to sell, sell and import Licensed Products in the Exclusive Licensed Field, provided however, that ABG shall have the rights under the Licensed Patents and Licensed Know-How with respect to Modified Bases only if (i) ABG extends the Research Term for an additional two (2) year period pursuant to Section 3.03 and pays the two (2) additional [*] Dollar $[*]) technology access payments under Section 5.02 or (ii) ABG does not extend the Research Term and pays one additional [*] Dollar technology access payment as provided in Section 5.02.

 

4.02     Non-Exclusive License . Epoch hereby grants to ABG a world-wide non-exclusive license under Licensed Patents and Licensed Know-How, to make, use, offer to sell, sell and import Licensed Products in the Non-Exclusive Licensed Field, provided however, that ABG shall have the rights under the Licensed Patents and Licensed Know-How with respect to Modified Bases only if (i) ABG extends the Research Term for an additional two (2) year period pursuant to Section 3.03 and pays the two (2) additional [*] Dollar $[*]) technology access payments under Section 5.02 or (ii) ABG does not extend the Research Term and pays one additional [*] Dollar technology access payment as provided in Section 5.02.

 

4.03     Sublicenses . ABG will have no right to sublicense its license rights granted hereunder beyond those rights granted through the sale of Licensed Product to ABG’s customers.

 

4.04     Restrictions . ABG, without undertaking a special investigation, will not knowingly sell, market, make or have made, Licensed Products for use outside the Exclusive Licensed Field or the Non-Exclusive Licensed Field. In the event that ABG does inadvertently sell, market, make or have made, Licensed Products for use outside the Exclusive Licensed Field or the Non-Exclusive Licensed Field, ABG will within thirty (30) days of learning of such activity cease such activity. Epoch will not knowingly sell, market, make or have made MGB Intermediate and/or MGB Oligonucleotide to third parties in the Exclusive Licensed Field. In the event that Epoch does inadvertently sell, market, make or have made MGB Intermediate and/or MGB Oligonucleotide to third parties in the Exclusive Licensed Field, Epoch will within thirty (30) days of learning of such activity cease such activity. Licensed Products comprising Licensed Know-How in the form of software embodying algorithms for determining the melting temperature of MGB Oligonucleotide, as described in Section 6.05 and Exhibit B, will only be sold or marketed pursuant to a limited-use non-exclusive license agreement consistent with ABG’s normal practice for the sale and marketing of like software products.

 

*CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH THE COMMISSION.

4.05     Patent Prosecution . To the extent commercially practicable, Epoch will file and diligently prosecute patent applications wi