Confidential
CERTAIN PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED PURSUANT TO RULE
24B-2 AND
ARE SUBJECT TO A CONFIDENTIAL TREATMENT REQUEST. COPIES OF THIS
EXHIBIT
CONTAINING THE OMITTED INFORMATION HAVE BEEN FILED SEPARATELY WITH
THE
SECURITIES AND EXCHANGE COMMISSION. THE OMITTED PORTIONS OF THIS
DOCUMENT ARE
MARKED WITH A [***].
Exhibit 10.1
RESEARCH AND OPTION AGREEMENT
This Research and Option Agreement ("Agreement") is effective as of
May
16, 2008 (the "Effective Date") by and between Accelr8 Technology
Corporation,
having a place of business at 7000 North Broadway, Building 3-307,
Denver,
Colorado 80221 ("Accelr8"), and Becton, Dickinson and Company, a
corporation
organized under the laws of the State of New Jersey, having a place
of business
at 1 Becton Drive, Franklin Lakes, New Jersey 07417, for itself
("BD"). BD and
Accelr8 are together hereinafter collectively referred to as the
"Parties" and
individually referred to as a "Party".
WHEREAS, Accelr8 has a technology platform directed to, among
other
things, infectious disease identification and antimicrobial
susceptibility or
resistance testing;
WHEREAS, BD makes and sells products for diagnostic purposes,
including, among other things, infectious disease identification
and
antimicrobial susceptibility or resistance testing; and
WHEREAS, BD is interested in funding research work by Accelr8 in
order
to assess the capabilities of Accelr8's technology platform, and
assess BD's
interest in licensing Accelr8's technology (such assessments
collectively the
"Stated Purpose").
NOW, THEREFORE, in consideration of the mutual promises and other
good
and valuable consideration, the receipt and sufficiency of which is
hereby
acknowledged, the Parties agree as follows:
1
DEFINITIONS
A.
"Accelr8 Background IP" shall mean, collectively, the Accelr8
Background
Know-How and the Accelr8 Background Patent Rights
B.
"Accelr8 Background Know-How" shall mean any and all technical and
other
information, in existence as of October 31, 2009 which is not in
the public
domain and which is not embodied in a patent, (i) relating to the
BACcel
Platform or (ii) which is reasonably necessary to enable BD and
its
Affiliates to commercially exploit the rights granted to BD and
its
Affiliates by Accelr8. Accelr8 Background Know-How does not include
Program
IP.
C.
"Accelr8 Background Patent Rights" shall mean and collectively
include
(a)
the patents and patent applications in Appendix D; (b) any
other
patents or patent applications now or in the future owned or
Controlled by
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Accelr8 directed to the BACcel Platform and applicable in the
Field, other
than
Program IP; (c) all U.S., foreign, and international patent
applications that claim priority to, are entitled to claim priority
to,
rely
for priority on, or to which priority is claimed by, the
foregoing
patents or patent
applications; (d) any reissues, reexaminations,
extensions, substitutions, divisions, continuations and
continuations-in-part of the foregoing; and (e) all patents that
issue from
any
of the foregoing, and any reissues, reexaminations and
extensions
thereof.
D.
"Affiliates" shall mean any corporation or other business entity
which
controls, is controlled by, or is under common control with, a
Party. For
purposes of this Article 1D, "control" means direct or indirect
ownership
of
(i) at least fifty percent (50%) of the outstanding stock or of
the
other voting rights entitled to elect directors, or (ii) in any
country
where the local law shall not permit foreign equity participation
of at
least fifty percent 50%, then the maximum percentage of such
outstanding
stock or voting rights permitted by local law.
E.
"BACcel Platform" shall mean the technology embodied in
Accelr8's
BACcel(TM) system as of the Effective Date, or technology for
processes or
systems (or components thereof) directed to one or more of the
following:
i) concentration of live bacteria onto a surface,
ii) immobilization of such bacteria on such surface,
iii) mapping individual bacterium locations on the surface,
iv) identifying such immobilized bacteria,
v) testing antimicrobial susceptibility or antimicrobial
resistance
testing of such immobilized bacteria,
vi) testing other characteristics or properties of such
immobilized
bacteria, and
vii) use of microscopy and/or image analysis to perform the
mapping,
identifying and/or testing steps.
F.
"BD Background IP" shall mean any intellectual property,
including
patents, patent applications, inventions, innovations, techniques,
trade
secrets, discoveries, technologies, software or know-how made,
developed,
owned, licensed or acquired by BD and its Affiliates before the
Effective
Date of this Agreement
or during the term of the Agreement.
G.
"Confidential Information" shall mean and include all
proprietary
information, including, without limitation, Accelr8 Background IP,
BD
Background IP and the results of the Research Program, that is
disclosed by
one
Party or its Affiliate to the other Party or its Affiliate in
connection with this Agreement and the Research Program, the
Exclusive
License Agreement or the Non-Exclusive License Agreement, which
is
designated in writing
whether by letter or by the use of an appropriate
stamp or legend such as "confidential," "proprietary," or
"sensitive" by
the
disclosing Party prior to or at the time of disclosure, which is
orally
or
visually disclosed and indicated to be proprietary at the time
of
disclosure, or which is of a nature such that the receiving party
would
reasonably treat such information as proprietary. The terms of
this
Agreement and any related agreements between the Parties shall also
be
considered Confidential Information.
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H.
"Control" or "Controlled" shall mean with respect to a particular
item
of
intellectual property, the ability to grant access to or a license
or
sublicense under such item as set forth for herein, without
violating the
terms of any agreement or other arrangement with, or the right of,
any
third party.
I.
"Exclusive License Agreement" shall mean the license agreement
attached
hereto as Appendix B.
J.
"Field" shall mean products or processes for Infectious Disease
Diagnostics.
K.
"Infectious Disease Diagnostics" shall mean activities directed to
the
presence or absence of diseases in humans that are caused by one or
more
infectious agents, non-infectious carriers or bioproducts of agents
or
carriers, such activities including but not limited to,
screening,
monitoring, detecting, identifying, diagnosing and/or prognosing
such
diseases, as well as performing epidemiological analyses of such
diseases.
By
way of example, Infectious Disease Diagnostics shall include but
not be
limited to: (a) measuring or monitoring one or more markers
associated with
an
infectious agent, (b) measuring or monitoring one or more
surrogate
markers (including host response markers) indicative of the
presence of an
infectious agent or of a disease caused by an infectious agent,
(c)
identification of an infectious agent, (d) identification of
antimicrobial
resistance mechanisms or antimicrobial resistance markers of an
infectious
agent, and (e) identification of antimicrobial susceptibility of
an
infectious agent.
L.
"Non-Exclusive License Agreement" shall mean the license
agreement
attached hereto as Appendix C. M. "Option Date" shall mean the
later of
October 31, 2009 or thirty (30) days after completion of the
Research
Program.. N. "Program IP" shall mean any intellectual property,
including
patents, patent applications, inventions, innovations, techniques,
trade
secrets, discoveries, technologies, software or know-how conceived
or
reduced to practice solely by employees of Accelr8 or jointly by
employees
of
BD or a BD Affiliate and Accelr8 in the course of performing
the
Research Program, including improvements or modifications to
Accelr8
Background IP. O. "Research Program" shall mean the research
and
development program set forth in Appendix A attached hereto and
hereby
incorporated by reference.
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2 RESEARCH PROGRAM
A.
The Parties shall perform their respective obligations under
the
Research Program. In case of any dispute over whether the Research
Program
has been completed,
the Party's disagreement shall be submitted to binding
arbitration in New York City. The arbitration shall be conducted
in
accordance with the Commercial Arbitration Rules of the
American
Arbitration Association ("AAA"), except as set forth in this
Section. Each
Party shall bear its own costs. The arbitration shall be governed
by the
substantive laws of the State of New Jersey, without regard to
conflicts-of-law rules, and by the arbitration law of the
Federal
Arbitration Act (Title 9, U.S. Code). Judgment upon the award
rendered may
be
entered in any court having jurisdiction. Should arbitration result
in a
judgment that the Research Program had been completed, the Option
Date
shall be thirty (30) days after the date of such judgment.
B.
The Research Program shall be under the joint supervision of an
individual to be named by BD and an individual to be named by
Accelr8
("Principal Collaborators").
C.
The Research Program described in Appendix A can only be changed
or
extended by written agreement between the Parties.
D.
BD shall make payments to Accelr8 under this Agreement, upon
receipt of
an
invoice from Accelr8, as follows:
o $[***]
upon execution of this Agreement
o $[***]
on July 1, 2008
o $[***]
on October 1, 2008
o $[***]
on January 1, 2009
o $[***]
on April 2, 2009
o $[***]
on July 1, 2009
E.
The Parties shall keep each other fully informed of the progress of
the
Research Program through regular meetings, telephone conferences
and/or
electronic mail, or as otherwise set forth in the Research Program
or as
otherwise requested by either Party.
F.
Subject to the exclusivity provisions of Article 3 and subject
to
Article 4B, each Party acknowledges that the other Party may at its
sole
discretion conduct research outside of the Research Program, and
that such
research is not subject to this Agreement.
G.
Provided Accelr8 has made good faith efforts to complete the
Research
Program, BD's and BD Affiliate's sole remedy and Accelr8's
exclusive
liability for any breach of Accelr8's failure to complete the
Research
Program shall be re-performance of the relevant tasks. THE RESEARCH
PROGRAM
IS
PERFORMED ON AN AS-IS BASIS, AND ACCELR8 DISCLAIMS ALL
WARRANTIES,
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INCLUDING THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR
A
PARTICULAR PURPOSE. IN NO EVENT WILL ACCELR8 BE LIABLE FOR ANY
INCIDENTAL,
SPECIAL OR CONSEQUENTIAL DAMAGES RESULTING FROM PERFORMANCE UNDER
THIS
AGREEMENT.
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3 EXCLUSIVITY
A.
From the Effective Date of the Agreement until the earlier of the
Option
Date
or the date of early termination if any, Accelr8 shall not,
directly
or
indirectly, solicit, initiate, facilitate, encourage or participate
in
any
discussions or negotiations with parties other than BD or BD
Affiliates, directed to (i) joint development or other
collaborative
activity with such third party relating to the BACcel Platform in
the
Field, with the exception of contracted research with
non-commercial
laboratories or submission for grants from non-commercial
institutions or
agencies, provided such work does not in any way interfere with the
rights
granted in the Agreement, the ELA or the NELA, as applicable; or
(ii)
licensing of Accelr8 Background IP, or other intellectual property
relating
to
the BACcel Platform, in the Field, or (iii) any other activity
that
might affect BD's rights as set forth in this Agreement, and
Accelr8
further represents that it is not currently involved in any of
the
activities set forth in (i) through (iii) as of the Effective Date
of the
Agreement.
4 CONFIDENTIALITY
A.
In the performance of the Research Program, it may be necessary for
the
Parties to disclose Confidential Information to each other.
B.
Confidential Information shall be maintained by the receiving Party
as
confidential, using the same care and discretion that the receiving
Party
uses
with its own Confidential Information, but, in any event, no less
than
a
reasonable degree of care. Subject to Article 6, Confidential
Information: (a) shall remain the exclusive property of the
disclosing
Party, (b) will be used by the receiving Party solely for the
Stated
Purpose; and (c) will not be disclosed by the receiving Party to
any other
persons or entities, except its employees on a need-to-know basis,
unless
written permission is obtained in advance from the disclosing
Party.
C.
Notwithstanding the foregoing, or any other provision contained
herein
to
the contrary, the receiving Party's obligations under Article 4B
shall
not
apply to the extent that the receiving Party can prove by
written
evidence that the respective Confidential Information:
(i) was known by a Party at or prior to the Effective Date of
this
Agreement, except to the extent unlawfully appropriated by a Party;
or
(ii) is or becomes generally known in the trade or business
pertaining
to such information or otherwise becomes publicly known at or
after
the time of disclosure by the disclosing Party, through no
wrongful
act of the receiving Party; or
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(iii) is rightfully received by a Party from a third party
without
restriction and without breach of this Agreement; or (iv) is
developed
by a Party independent of any Confidential Information of the
other
Party, such independent development being performed solely by
persons
not having access whatsoever to the other Party's Confidential
Information; or
(v) is required to be disclosed by a court or judicial or
governmental
authority of competent jurisdiction, and in such event, only after
the
Party required to disclose the other Party's Confidential
Information
provides prompt written notice to that Party so as to enable
that
Party to resist any such required disclosure and/or to obtain
suitable
protection regarding such required disclosure.
D.
The foregoing provisions and obligations of this Article 4 shall
remain
in
effect and survive for five (5) years after termination or
expiration of
this
Agreement, except that trade secrets designating in writing as such
by
the
disclosing party shall remain secret subject to Article 4C and
applicable laws.
5 PUBLICATION
A.
Accelr8, BD, and BD Affiliates shall not have the right to publish
or
publicly present any of the research and development activities
in
connection with and/or results of the Research Program without the
written
approval of the other Party ("the second Party") with the exception
of
collaborations with non-commercial laboratories that have
agreements in
place as of the Effective Date, where such agreements contain
provisions
allowing publications, provided such publication does not in any
way
interfere with the rights and obligations set forth in the
Agreement, the
Exclusive License Agreement or the Non-Exclusive License Agreement,
as
applicable.
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6 OPTION AND
INTELLECTUAL PROPERTY
A.
From the Effective Date through the date that is the earlier of:
the
Option Date or the date at which BD exercises the Option pursuant
to
Article 6D, intellectual property rights and ownership shall be as
follows:
i) Program IP shall be jointly owned by the Parties, but neither
party
may use such Program IP other than for purposes of this Agreement
in
the Field. Program IP conceived or reduced to practice solely
by
employees of Accelr8 shall be assigned to Accelr8, which shall
then
assign an undivided half-interest in such Program IP to BD, subject
to
the terms of this Agreement. Program IP conceived or reduced to
practice by employees of Accelr8 and employees of BD or BD
Affiliates
shall be jointly assigned.
ii) Accelr8 Background IP shall remain the property of Accelr8, and
BD
or BD Affiliates shall have no rights thereunder.
iii) BD Background IP shall remain the property of BD and/or BD
Affiliates, and Accelr8 shall have no rights thereunder.
iv) The Parties agree to cooperate in identifying Program IP.
The
Parties shall share the costs and expenses 50/50 in preparing,
filing,
prosecuting, maintaining and extending patents and patent
applications
directed to Program IP using counsel reasonably agreeable to
both
parties.
v) The Parties agree to cooperate fully in providing information
and
executing all documents needed to prepare, file and prosecute
any
patent application hereunder.
B.
Accelr8 hereby grants BD an option ("Option") to take an
exclusive
license to Accelr8 Background IP in the Field. i) The Option shall
exist
from
the Effective Date up to and including the Option Date. BD shall
have
the
right to exercise the Option upon written notice to Accelr8.
ii) If BD exercises the Option:
(a) BD shall make a single, lump sum payment of [***] dollars
($[***]) to Accelr8 within thirty (30) days of the written
notice, which shall not be creditable against running royalties
due under the Exclusive License Agreement; and
(b) The Exclusive License Agreement attached hereto as Appendix
B
shall immediately come into effect upon (i) Accelr8's receipt
of
the payment under Article 6B(ii)(a), and (ii) Accelr8's receipt
of cumulative payments of [***] Dollars ($[***]) under Article
2D.
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iii) If BD does not exercise the Option:
(a) No additional payment to Accelr8 is required, beyond those
set forth in Article 2 of this Agreement; and
(b) The Non-Exclusive License Agreement attached hereto as
Appendix C shall immediately come into effect the day after the
Option Date, and the Exclusive License Agreement attached
hereto
as Appendix B shall become null and void.
iv) If Accelr8 has not completed the Research Program, by October
31,
2009, then at any time after October 31, 2009, BD shall have the
right
to decline the Option upon written notice to Accelr8. Should BD
decline the Option:
(a) No additional payment to Accelr8 is required, beyond those
set forth in Article 2 of this Agreement; and
(b) The
Non-Exclusive License Agreement attached hereto as
Appendix C shall immediately come into effect upon receipt of
the
written notice by Accelr8, and the Exclusive License Agreement
attached hereto at Appendix B shall become null and void.
7 TERM and TERMINATION
A.
This Agreement shall become effective as of the Effective Date and
shall
terminate upon the Exclusive License Agreement or the Non-Exclusive
License
Agreement coming into effect pursuant to Article 6, unless
terminated
earlier under this Article 7.
B.
This Agreement shall be terminable upon the material breach or
default
of
either Party. In the event of a material breach or default by a
Party
("Defaulting Party"), the other Party ("non-Defaulting Party")
shall give
the
Defaulting Party written notice of the default and its election
to
terminate this Agreement effective at the expiration of a period of
sixty
(60)
days from the date of the notice. If the Defaulting Party fails
to
resolve the default in the probation period by (i) curing the
default, (ii)
providing a written explanation satisfactory to the Non-Defaulting
Party
that
a default has not occurred, or (iii) entering into a written
agreement
with
the Non-Defaulting Party for the cure or other resolution of
the
default, then this Agreement shall terminate upon the expiration of
such
sixty (60) day period. All termination rights shall be in addition
to and
not in substitution
for any other remedies that may be available to the
Non-Defaulting Party. Termination pursuant to this Article shall
not
relieve the Defaulting Party from liability and damages to the
Non-Defaulting Party for default.
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i) Upon termination by BD for Accelr8's material breach, the
Option
shall remain in effect for thirty (30) days after termination of
the
Agreement, and either the Exclusive License Agreement or
Non-Exclusive
License Agreement shall then come into force and effect, as
applicable.
ii) Upon termination by Accelr8 for BD's material breach, the
Option
shall terminate upon termination of the Agreement, and the
Non-Exclusive License Agreement shall then come into force and
effect.
C.
Any termination of this Agreement for any reason does not relieve
either
Party of any obligation or liability accrued prior to the
termination or
rescind anything done by either Party and the termination does not
affect
in
any manner any rights of either Party arising under this Agreement
prior
to
the termination.
D.
The terms and conditions of the following provisions shall
survive
termination or expiration of this Agreement for as long as
necessary to
permit their full discharge: Articles 4 (CONFIDENTIALITY), 5
(PUBLICATION),
6
(OPTION AND INTELLECTUAL PROPERTY), 8 (USE OF NAMES), 9 (NOTICES),
11
(RIGHTS NOT GRANTED), 13 (GOVERNING LAW) and 15
(MISCELLANEOUS).
8 USE OF NAMES
A.
Neither Party shall use the name of the other Party or any
adaptation
thereof in any publication, advertising, promotion, sales
literature or
packaging without the prior written consent of the other Party. Any
press
release, public announcement or similar publicity by the Parties
with
respect to this Agreement shall be subject to the prior consent of
the
other Party, which consent shall not be unreasonably withheld,
unless such
communication is required to be made by law or pursuant to the
rules and
regulations of the Securities and Exchange Commission or the New
York Stock
Exchange listing requirements or an equivalent agency and after
consultation and coordination between the Parties. Such press
release,
public announcement or similar publicity shall be limited to the
existence
of
the Agreement and shall not disclose the terms thereof. In the case
of
required communication to agencies such as listed above, the terms
of the
Agreement shall be redacted unless prohibited by applicable laws or
rules.
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9 NOTICES
A.
Any notices required to be given or which shall be given under
this
Agreement shall be in writing delivered by certified
return-receipt
requested first-class mail or overnight courier with tracking or
facsimile
addressed to the Parties as follows:
For BD:
Becton, Dickinson and Company
7 Loveton Circle
Sparks, Maryland 21152
Fax: 410-316-4081
Attention: Director / Strategic Planning and Business
Development
with a copy to :
Becton, Dickinson and Company
1 Becton Drive
MC089
Franklin Lakes, NJ
07417
Fax: (201)
848-9228
Attention: Vice
President, Chief Intellectual Property Counsel
For Accelr8:
Accelr8 Technology Corporation
7000 North Broadway
Bldg. 3-307 Denver, Colorado 80221 Fax: 303-863-1218
Attention: Thomas V. Geimer, Chairman and CEO
10 INDEPENDENT PARTIES
A.
For purposes of this Agreement the Parties hereto shall be
independent
contractors and neither shall at any time be considered an agent or
an
employee of the other. No joint venture, partnership or like
relationship
is
created between the Parties by this Agreement.
11 RIGHTS NOT GRANTED
A.
Except as explicitly set forth herein, no other rights or licenses
in or
to
the BD Background IP, Accelr8 Background IP or Program IP are
granted by
this
Agreement.
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12 ASSIGNMENT
A.
Any assignment by either Party without prior written consent of
the
other Party shall be void.
B.
The provisions of the Agreement shall be binding upon and inure to
the
benefit of the Parties and the respective successors and assigns of
each of
the
Parties. To the extent permitted by law, if any Party hereto
("Bankrupt
Party") shall become insolvent, or shall suspend business or shall
file a
voluntary petition or answer admitting the jurisdiction of the
Court or the
material allegations of a petition, or shall consent to an
involuntary
petition pursuant to or purporting to be pursuant to any
reorganization or
insolvency law of any
jurisdiction, or shall make an assignment for the
benefit of creditors, or shall apply for or consent to the
appointment of a
receiver or trustee of a substantial part of its property
("Bankruptcy
Event"), then it is the Parties' intent that this Agreement and the
rights
granted to BD hereunder by the Bankrupt Party must be adopted by
any
bankruptcy trustee or relevant third Party charged with the
disposition of
same, and cannot be rejected. The Parties acknowledge that this
Agreement
contemplates the manner in which the Parties may retain the rights
granted
to
them hereunder by the Bankrupt Party, if they choose to do so
in
accordance with Section 365(n) of the Bankruptcy Code. It is the
Parties'
intent that, upon the occurrence of any Bankruptcy Event, BD shall
be
entitled to retain the rights granted to them hereunder by the
Bankrupt
Party in all items delivered or required to be delivered under
this
Agreement.
13 GOVERNING LAW
A.
This Agreement shall be interpreted and construed in accordance
with the
laws
of the State of New Jersey, without reference to choice of law
doctrine.
14 FORCE MAJEURE
A.
Except as provided below, no failure or omission by a Party
(the
"Affected Party") in the performance of any obligation of this
Agreement
shall be deemed a breach of this Agreement nor create any liability
to the
other Party (the "Unaffected Party") if such failure or omission
shall
arise from any cause
or causes beyond the reasonable control of the
Affected Party; including, without limitation, the following: acts
of God;
fire; storm; flood; earthquake; war; sabotage; quarantine
restrictions;
government action; labor strike or freight embargo (hereinafter
"Force
Majeure"). In the event of any delay or inability to perform
arising
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pursuant to Force Majeure, the Affected Party's performance shall
be
postponed by such length of time (the "Suspension Period") as may
be
reasonably necessary to compensate for said delay or inability to
perform,
and
the Unaffected Party's performance shall likewise be postponed by
a
length of time equal to the Suspension Period. In the event a Force
Majeure
shall suspend the Affected Party's obligations hereunder for more
than
ninety (90) days, the Unaffected Party shall have the right to
terminate
this
Agreement, with no further payments due under Articles 2D. Upon
such
termination, the Non-Exclusive License Agreement shall come into
force and
effect.
15 MISCELLANEOUS
A.
The Parties agree that the terms of this Agreement are binding upon
them
as
well as any of their respective employees who may assist in the
Research
Program.
B.
The Parties represent and warrant that they are not under
obligation to
any
third party that would interfere with the rendering of services to
the
other Party or which would be inconsistent with any
responsibilities or
obligations (including rights granted) under this Agreement.
C.
The provisions of this Agreement shall not be extended, varied,
changed,
modified or supplemented other than by agreement in writing signed
by the
Parties hereto.
D.
The headings used herein are for ease of reference only and are not
to
be
used in the interpretation or construction of this Agreement.
E.
If and to the extent any court of competent jurisdiction shall hold
any
provision (or any part thereof) of this Agreement to be invalid
or
unenforceable, such holding shall in no way affect the validity of
the
remainder of this Agreement.
F.
Except as otherwise provided herein, the failure of a Party hereto
to
enforce any of the provisions of this Agreement or any rights with
respect
thereto or to exercise any election provided for herein, shall in
no way be
considered a waiver of such provisions, rights or elections or in
any way
affect the validity of this Agreement. No term or provision hereof
shall be
deemed waived and no breach excused, unless such waiver or consent
shall be
in
writing and signed by the Party claimed to have so waived or
consented.
G.
In case of a conflict between the terms of this Agreement and
either the
Exclusive License Agreement or the Non-Exclusive License Agreement,
the
applicable License Agreement
shall govern.
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IN WITNESS WHEREOF, the persons executing this Agreement in
duplicate
originals, on behalf of the Parties hereto, represent and warrant,
that they are
duly authorized officers and representatives and have authority to
execute such
Agreement on behalf on their respective Party.
ACCELR8 TECHNOLOGY CORPORATION
BECTON, DICKINSON AND COMPANY
By:
_________________________
By: _________________________________
Thomas V. Geimer
Philippe Jacon
Chairman and CEO
President
- Microbiology Systems
BD Diagnostics
Date:
Date:
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Appendix A - Research Program
[***][1 page total]
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CERTAIN PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED PURSUANT TO RULE
24B-2 AND
ARE SUBJECT TO A CONFIDENTIAL TREATMENT REQUEST. COPIES OF THIS
EXHIBIT
CONTAINING THE OMITTED INFORMATION HAVE BEEN FILED SEPARATELY WITH
THE
SECURITIES AND EXCHANGE COMMISSION. THE OMITTED PORTIONS OF THIS
DOCUMENT ARE
MARKED WITH A [***].
Appendix B
----------
EXCLUSIVE LICENSE AGREEMENT
This Exclusive License Agreement ("ELA") is made and entered
into
effective pursuant to Article 6 of the Agreement ("ELA Effective
Date"), by and
between Accelr8 Technology Corporation, having a place of business
at 7000 North
Broadway, Building 3-307, Denver, Colorado 80221, ("Accelr8") and
Becton,
Dickinson and Company, a corporation duly organized under the laws
of the State
of New Jersey and having its principal office in 1 Becton Drive
Franklin Lakes,
NJ 07417 for itself and its Affiliates ("BD"), (each a "Party" and
collectively
the "Parties").
WITNESSETH
----------
WHEREAS, the Parties entered into a Research and Option
Agreement
("Agreement") effective May 16, 2008 to which this ELA is
attached;
WHEREAS, Article 6 of the Agreement provided BD with the Option for
an
exclusive license to certain Accelr8 intellectual property; and
WHEREAS, the Parties agreed that upon exercise of the Option, this
ELA
would immediately come into force and effect;
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein, the Parties hereto agree as
follows:
ARTICLE 1 - DEFINITIONS
-----------------------
Capitalized terms not defined herein shall have the meaning set
forth
in the Agreement. For the purposes of this ELA, the following words
and phrases
shall have the following meanings:
1.1 "Commercial Sales" shall mean any sale of a Licensed Product in
any
country in the world, excluding sales for purposes of testing,
validation
studies, marketing evaluations or clinical trials, or provided as
marketing
samples.
1.2 "Development Costs" shall mean direct research and product
development expenditure incurred by BD in the research and product
development
of a BACcel Platform product. Development Costs shall not include
any overhead
expenses, and shall be pro-rated with respect to expenditures
applicable both to
the BACcel Platform and to other BD activities. In addition,
Development Costs
does not include any amounts paid under the Agreement or any
royalties due under
this ELA.
1.3 "Kit" shall mean a combination product offered or sold by BD
that
includes a Licensed Product in combination with identifiable
products having a
separate use or purpose not licensed hereunder.
1.4 "Licensed Product" shall mean collectively any process or
product,
the making, using, offering for sale, selling, importing or
practice of which
would, but for this ELA, infringe or contribute to infringement of
a Valid Claim
of an issued patent within Accelr8 Background Patent Rights, in the
country
where such activity takes place.
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1.5 "Net Sales" shall mean the sum of all amounts invoiced by BD
for
the sale, lease, rental or other mode of transfer, whether
permanent or
temporary, of a Licensed Product to third parties, less, to the
extent not
already reflected in the invoiced amount:
1.5.1 reasonable cash discounts to purchasers allowed and
taken;
1.5.2 amounts for transportation or shipping charges from the
place of manufacture to the customer's location actually paid by
BD;
1.5.3 taxes and duties imposed on the sale of Licensed Product,
levied and actually paid;
1.5.4 refunds, rebates, or allowances;
1.5.5 transfers for non-commercial testing, validation studies,
marketing evaluations and clinical trials; and/or
1.5.6 free distribution (not in exchange for services or
payments) of Licensed Product used solely as marketing samples to
develop or
promote the Licensed Product.
In the case of sale or other transfer of the Licensed Product as
part
of a Kit, the Net Sales shall be determined as follows: If the
Licensed
Product is also sold separately from the Kit, the Net Sales on
which
the royalty rate is applied shall be an amount equal to the Net
Sales
of the Licensed Product if sold separately in a similar
transaction
involving similar
volumes of Licensed Product at about the same time as
the transaction involving such Kit.
If the Licensed Product or the identifiable products are not
sold
separately from the Kit, the applicable Net Sales for royalty
purposes
shall be determined by multiplying the Net Sales of the Kit by
the
fraction A/(A+B) where A equals the standard fully absorbed cost to
BD
of the Licensed Product and B equals the fully absorbed cost to BD
of
the
remaining products in the Kit, such costs determined by using
BD
standard accounting principles in accordance with generally
accepted
accounting practice.
In the case where an instrument is placed pursuant to a reagent
rental
agreement or an analogous agreement in which a purchaser is
provided an
instrument for use in conjunction with Licensed Products, including
but
not limited to a service contract in conjunction with the
instrument,
and the costs
associated with the placement and use of the instrument
are not separately billed but instead represent some portion of
the
purchase price of the Licensed Products, then BD shall be entitled
to
reduce the Net Sales of such Licensed Products to allow for
deduction
of instrument-related charges such as interest for the financing of
the
instrument supplied, training, warranty and post-warranty cost
of
instrument service, using BD standard accounting principles in
accordance with generally accepted accounting practice.
The term Net Sales in the case of non-cash sales, shall mean the
fair
market value of all equivalent or other consideration received by
BD.
If such fair market value of the non-cash consideration is not
readily
and undisputably ascertainable, the Parties shall discuss in good
faith
the cash value of such non-cash consideration, and payment to
Accelr8
shall be based on such cash value.
Where the Licensed Product is part of a Research Use Only system
that
incorporates a BD instrument capable of use in other systems, such
as a
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multi-purpose imaging instrument, the applicable Net Sales for
such
system shall be only the Net Sales of any consumables sold with or
for
such system.
1.6 "Research Purposes" shall mean any and all activities directed
to
technology or product research but excluding actual commercial
manufacture or
commercial sale of a product.
1.7 "Valid Claim" shall mean an issued claim of an unexpired
patent
which shall not have been withdrawn, canceled or disclaimed or held
invalid or
unenforceable in an unappealed or unappealable decision.
ARTICLE 2 - GRANT
-----------------
2.1 Accelr8 hereby grants to BD and BD Affiliates a world-wide,
paid-up, exclusive license, including the right to grant
sublicenses, under
Accelr8's rights and interest in Program IP, to make, have made,
use, practice,
offer for sale, sell, import and otherwise dispose of Licensed
Products, and to
otherwise practice Program IP in the Field.
2.2 Accelr8 hereby grants to BD and BD Affiliates a world-wide,
exclusive license, including the right to grant sublicenses, under
Accelr8
Background IP, to make, have made, use, practice, offer for sale,
sell, import
and otherwise dispose of Licensed Products, and to otherwise
practice Accelr8
Background IP, in the Field. The license shall be royalty-bearing
with respect
to Accelr8 Background Patent Rights pursuant to Article 3.1, and
shall be
royalty-free with respect to Accelr8 Background Know-How.
2.3 Accelr8 further grants to BD and BD Affiliates a
world-wide,
paid-up, non-exclusive license under Accelr8 Background IP, for
Research
Purposes. For purposes of this Article 2.3 only, "commercially
exploit" as used
in the definition of Accelr8 Background Know-How shall include
research and
development activities directed toward commercial exploitation. For
avoidance of
doubt, this Article 2.3 does not provide BD with any rights to
commercialize
Licensed Products outside the Field.
2.4 If BD has not spent at least [***] dollars ($[***]) in
Development
Costs ("Minimum Development Cost Commitment") by the date that is
three (3)
years from the ELA Effective Date, Accelr8 shall be entitled, upon
ninety (90)
days written notice, to convert BD's license grant under Article
2.2 to a
non-exclusive license, unless BD meets the Minimum Development Cost
Commitment
during such ninety (90) day period. Upon such conversion: (i) the
royalty rate
set forth in Article 3.1 shall be reduced to [***] percent
([***]%), (ii) the
stacking provisions of Article 3.5 shall continue to apply, with
the minimum
royalty thereunder reduced to [***] percent ([***]%), and (iii)
BD's rights
under Articles 5.6 and 5.7 with respect to Accelr8 Background IP
shall cease
(BD's rights under Articles 5.6 and 5.7 with respect to Program IP
shall
continue). For avoidance of doubt, monies paid under Article 2D of
the Agreement
shall not be credited toward the Minimum Development Cost
Commitment. As of the
date of a commercial launch by BD of a BACcel Platform product,
Accelr8 shall no
longer have a right to convert the license grant to a non-exclusive
license
under this Article 2.4.
2.5 If BD (i) has not spent at least the Minimum Development
Cost
Commitment by the date that is five (5) years from the ELA
Effective Date, or
(ii) does not spend at least [***] dollars ($[***]) in annual
Development Costs
thereafter until such time as BD enters clinical trials and
regulatory review
for a BACcel Platform product (to be pro-rated in the year in which
BD enters
such clinical trials and regulatory review), Accelr8 shall be
entitled, in its
sole discretion, to terminate this ELA upon ninety (90) days
written notice,
unless BD meets the Minimum Development Cost Commitment during such
ninety (90)
day period. For avoidance of doubt, monies paid under Article 2D of
the
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Agreement shall not be credited toward the Minimum Development Cost
Commitment.
As of the date of a commercial launch by BD of a BACcel Platform
product,
Accelr8 shall no longer have a right to terminate this license
under this
Article 2.5.
