AMENDED PATENT ASSIGNMENT

ORCHID BIOSCIENCES, INC. HAS REQUESTED THAT THE MARKED PORTIONS OF THIS DOCUMENT BE ACCORDED 406 CONFIDENTIAL TREATMENT PURSUANT TO RULE 406 UNDER THE SECURITIES ACT OF 1933, AS AMENDED.

 

[*] CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.

 

Exhibit 10.25

 

Agreement to Amend Patent Assignment and License Agreement

 

DATED JULY 7, 2003 (“AMENDMENT DATE”)

 

 

AGREE AS FOLLOWS:

 

1. BACKGROUND

 

1.1 ASSIGNORS assigned to AFFYMETRIX, INC. (“ AFFYMETRIX”) certain rights relating to a Patent entitled “Detection of a Nucleic Acid Sequence or a Change Therein” pursuant to a Patent Assignment and License Agreement dated February 28, 2000 and effective as of March 20, 2000 (“Original Agreement”). Those rights are defined as “ASSIGNED PATENT RIGHTS” in the Original Agreement.

 

1.2 With the consent of ASSIGNORS, ORCHID thereafter acquired from AFFYMETRIX the ASSIGNED PATENT RIGHTS and assumed all of AFFYMETRIX’s rights and obligations under the Original Agreement, under an Assignment Agreement dated as of July 18, 2001 (“Assignment Agreement”). subject to the terms and conditions of the Original Agreement.

 

1.3 ORCHID and ASSIGNORS have agreed to amend certain payment and other obligations under the Original Agreement and to otherwise amend and restate the Original Agreement in its entirety and to reaffirm their continuing obligations thereunder as set forth herein.

 

2. AMENDMENT

 

2.1 ASSIGNORS and Orchid agree effective as of the AMENDMENT DATE, the provisions of the Original Agreement are varied as set out in Schedule 1 to this Agreement. Subject to the amendments specified in Schedule 1 to this Agreement, the parties reaffirm the provisions of the Original Agreement as between them following the execution by ORCHID and AFFYMETRIX of the Assignment Agreement.

3. APPLICABLE LAW

 

3.1 This Agreement will be construed, interpreted, and applied in accordance with the laws of the State of California in the United States.

 

IN WITNESS WHEREOF, the parties hereto have executed this Agreement in duplicate originals by their duly authorized officers or representatives.

 

By:

 

DIATECH
By:				By:
Name:				Name:
Title:				Title:
Date:				Date:
GENECO
By:				By:
Name:				Name:
Title:				Title:
Date:				Date:

QUT
By:				By:
Name:				Name:
Title:				Title:
Date:				Date:
ORCHID BIOSCIENCES, INC.
By:				By:
Name:				Name:
Title:				Title:
Date:				Date:

SCHEDULE 1

AMENDMENTS TO ORIGINAL AGREEMENT

 

Patent Assignment and License Agreement

 

Dated: February 28, 2000

 

 

AGREE AS FOLLOWS:

 

1. BACKGROUND

 

1.1 GENECO is the current owner of a Patent entitled “Detection of a Nucleic Acid Sequence or a Change Therein” and ASSIGNED PATENT RIGHTS as defined below.

 

1.2 GENECO granted to QUT a world-wide exclusive license of certain of the ASSIGNED PATENT RIGHTS (attached as Exhibit A), and QUT granted to DIATECH a world-wide exclusive sublicense of those same rights (attached as Exhibit B).

 

1.3 ASSIGNORS assigned the ASSIGNED PATIENT RIGHTS to AFFYMETRIX, who wished to acquire the ASSIGNED PATENT RIGHTS for the purpose of undertaking development and to manufacture, use, and distribute certain reagents.

 

1.4 AFFYMETRIX, with the consent of GENECO, QUT and DIATECH, assigned the ASSIGNED PATENT RIGHTS TO ORCHID.

 

2. DEFINITIONS

 

2.1 “AFFYMETRIX” means AFFYMETRIX Inc., a Delaware corporation having a principal place of business at 3380 Central Expressway, Santa Clara, CA 95051.

2.2 “ASSIGNED PATENT RIGHTS” means the patents, patent applications and license agreements (including all rights of any party contained therein) set forth on Exhibit C and assigned to ORCHID pursuant to Section 3 and the Patent Assignment attached as Exhibit D, which GENECO executed on the EFFECTIVE DATE, including without limitation, the underlying inventions to the patents and patent applications, and any and all Letters Patents whether U.S. or foreign that are or may be granted therefrom including without limitation any extensions, continuations, continuations-in-part, divisions, reissues, improvements and renewals thereof, or other equivalents thereof, and trade secrets and know-how related thereto which are in the possession of ASSIGNORS as of the EFFECTIVE DATE, and further, all rights and privileges pertaining to the ASSIGNED PATENT RIGHTS including without limitation the right, if any, to claim the right to priority thereto and to sue or bring other actions for past, present and future infringement thereof.

 

2.3 “AFFILIATE” means any corporation or other business entity in which ORCHID owns or controls, directly or indirectly, at least ten percent (10%) of the outstanding stock or other voting rights entitled to elect directors or in which ORCHID is owned or controlled directly or indirectly by at least ten percent (10%) of the outstanding stock or other voting rights entitled to elect directors; but in any country where the local law does not permit foreign equity participation of at least ten percent (10%), then an “AFFILIATE” includes any company in which ORCHID owns or controls, or is owned or controlled by, directly or indirectly, the maximum percentage of outstanding stock or voting rights permitted by local law.

 

2.4 “EFFECTIVE DATE” means March 20, 2000 being the date on which GENECO notified AFFYMETRIX in writing that the R&D syndication established by the TRANSACTION DOCUMENTS had wound-up and that GENECO had fulfilled all of its obligations under and to all parties to the TRANSACTIONS DOCUMENTS.

 

2.5 “TERRITORY” means Australia.

 

2.6 “MEMBER(S)” shall mean members of the CRC that have signed an agreement with CRC for such membership.

 

2.7 “TRANSACTION DOCUMENTS” means the following agreements, complete copies of which were provided to ORCHID for due diligence purposes prior to the execution of this Agreement, which established the R&D syndication knows as the Cystic Fibrosis Joint Venture:

 

(a) License Agreements dated 30 June 1994 between:

 

(i) GENECO and Australasian Drug Development Limited (“ADDL”) and

 

(ii) Auspep Pty Ltd and ADDL.

(b) Procedures Memorandum dated 30 June 1994 between all parties to the Cystic Fibrosis Joint Venture.

 

(c) License, Research and Commercialisation Agreement dated 30 June 1994 between ADDL, GENECO, Auspep Pty Ltd, and each of Radtel 1 Pty Ltd, Radmed 2 Pty Ltd and Radtel 3 Pty Ltd (together “Investor”).

 

(d) Deposit Agreement dated 30 June 1994 between Bankers Trust Australia Limited (“Lender”), ADDL and GENECO.

 

(e) Company Put Option Agreements dated 30 June 1994 between:

 

(i) GENECO, ADDL, Edingbay Pty Ltd, the Lender and BT Financial Management Pty Ltd (“Manager”);

 

(ii) GENECO, ADDL, Twentieth Apelda Pty Ltd, the Lender and the Manager; and

 

(iii) GENECO, ADDL, Edzell Holdings Pty Ltd, the Lender and the Manager.

 

3. ASSIGNMENT

 

3.1 Assignment. On the EFFECTIVE DATE the ASSIGNORS hereby jointly and severally assign, transfer and convey to ORCHID all of ASSIGNORS’ right, title, and interest throughout the world in and to said ASSIGNED PATENT RIGHTS.

 

3.2 Further Assignment. On the EFFECTIVE DATE the ASSIGNORS jointly and severally further assign to and empower ORCHID, its successors, assigns or nominees, all rights to make applications for patents or other forms of protection for ASSIGNED PATENT RIGHTS, as well as to claim and receive the benefit of the right of priority provided by the International Convention for the Protection of Industrial Property, as amended, or by any convention which may henceforth be substituted for it, and the right to invoke and claim such right of priority without further written or oral authorization.

 

3.3 Authorization of Patent and Trademark Office to Record. ASSIGNORS jointly and severally further agree that the agreement attached as Exhibit D, which GENECO must execute on the EFFECTIVE DATE, shall be deemed a full legal and formal equivalent of any assignment, consent to file or like document which may be required in any country for any purpose regarding the subject matter hereof, as well as constituting proof of the right of ORCHID or its successors, assigns or nominees to apply for patent or other proper protection for said inventions, and to claim the aforesaid benefits of the right of priority provided by the International Convention for the Protection of Industrial Property, as amended, or by any convention which may henceforth be substituted for it.

3.4 Further Assurances. ASSIGNORS jointly and severally agree to take such further actions and to execute such documents as ORCHID may reasonably request to effect or confirm the conveyance to ORCHID of the ASSIGNED PATENT RIGHTS and any improvements thereunder.

 

4. GRANT OF LICENSES TO THE TECHNOLOGY

 

4.1 Research License. Subject to the terms and conditions of this Agreement, ORCHID hereby grants to the ASSIGNORS a non-exclusive, non-transferable (except as permitted by this Agreement), fully-paid right to use the ASSIGNED PATENT RIGHTS solely for the purpose of conducting internal non-commercial, non-profit research purposes, solely in the TERRITORY. Such license shall be sublicensable only by DIATECH and only to MEMBERS as approved by ORCHID pursuant to Section 4.3.

 

4.2 Genotyping Service License. Subject to the terms and conditions of this Agreement, ORCHID hereby grants to DIATECH, with the right to sublicense only to CRC members as approved by ORCHID pursuant to Section 4.3, a non-transferable (except as permitted by this Agreement), non-exclusive, fully-paid right to use the ASSIGNED PATENT RIGHTS to offer genotyping services (but only genotyping services that do not use micro-arrays) only I the TERRITORY and provided that DIATECH and the MEMBERS only offer and perform such services on genetic materials originating or derived solely in the TERRITORY.

 

4.3 Member Approved Rights. A list of MEMBERS approved by ORCHID to receive a sublicense from DIATECH under Sections 4.1 and 4.2 above is attached as Exhibit E. DIATICH may make additions to this list by written consent which shall not be unreasonably withheld (for the avoidance of doubt, the withholding of consent regarding a competitor of ORCHID shall not be considered unreasonable). Such request shall designate the name of the member, any affiliates of the member who will have LICENSED RIGHTS (defined as any rights licensed to a member under Sections 4.1 or 4.2 of this agreement) under this agreement through their affiliation with the member if such member is approved by ORCHID, the address of such parties, a brief description of the Business of the member, and a general description of the research to be performed. ORCHID shall have 30 days from a request to add to Exhibit E to respond to such request with its consent or denial of such request. If ORCHID fails to respond within 30 days, the member shall be deemed to have been approved and shall be added to the list. Upon the grant of a sublicense under Sections 4.1 and 4.2 to a member, such member shall sign a license agreement with DIATECH that is at least as protective of ORCHID as t