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”)
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BETWEEN:
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Diatech Pty Ltd
(ACD 069052 197) a corporation whose legal address is c/o School of
Life Sciences, Queensland University of Technology, 2 George
Street, Brisbane, Queensland 4000 ( “DIATECH” ),
GeneCo Pty Ltd (CAN 010 737 603) a corporation, whose legal address
is 4 th Floor, O Block Podium, Queensland
University of Technology, 2 George Street, Brisbane, Queensland
4000, Australia ( “GENECO” ) and Queensland
University of Technology, a body corporate constituted pursuant to
the provisions of the Queensland University of Technology Act 1998
(Qld) whose legal address is 2 George Street, Brisbane, Queensland
4000 Australia ( “QUT” )
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(together the
“ASSIGNORS” )
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AND
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ORCHID
BIOSCIENCES, INC. , a
Delaware corporation having a principal place of business at 4390
U.S. Route One, Princeton, NJ 08540
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( “ORCHID”
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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.
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DIATECH
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By:
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By:
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Name:
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Name:
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Title:
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Title:
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Date:
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Date:
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GENECO
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By:
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By:
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Name:
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Name:
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Title:
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Title:
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Date:
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Date:
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QUT
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By:
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By:
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Name:
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Name:
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Title:
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Title:
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Date:
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Date:
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ORCHID BIOSCIENCES, INC.
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By:
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By:
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Name:
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Name:
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Title:
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Title:
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Date:
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Date:
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SCHEDULE 1
AMENDMENTS TO ORIGINAL
AGREEMENT
Patent Assignment and License
Agreement
Dated: February 28, 2000
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BETWEEN:
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Diatech Pty Ltd
(ACD 069052 197) a corporation whose legal address is c/o School of
Life Sciences, Queensland University of Technology, 2 George
Street, Brisbane, Queensland 4000 ( “DIATECH” ),
GeneCo Pty Ltd (CAN 010 737 603) a corporation, whose legal address
is 4 th Floor, O Block Podium, Queensland
University of Technology, 2 George Street, Brisbane, Queensland
4000, Australia ( “GENECO” ) and Queensland
University of Technology, a body corporate constituted pursuant to
the provisions of the Queensland University of Technology Act 1998
(Qld) whose legal address is 2 George Street, Brisbane, Queensland
4000 Australia ( “QUT” )
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(together the
“ASSIGNORS” )
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AND:
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ORCHID
BIOSCIENCES, INC., a
Delaware corporation having a principal place of business at 4390
U.S. Route One, Princeton, NJ 08540
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ORCHID
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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 this agreement. Such
license agreement shall als