Exhibit 10.26
EXCLUSIVE PATENT LICENSE
AGREEMENT
This Exclusive Patent License
Agreement (this “Agreement”) is made effective as of
the Effective Date (as defined below) by and between Orchid
BioSciences, Inc. (“ORCHID”), a Delaware corporation
and Saint Louis University, a non-profit organization organized and
existing under the laws of the State of Missouri
(“SLU”). ORCHID and SLU are hereinafter referred to
collectively as the “Parties.”
RECITALS:
A. WHEREAS, SLU is the owner of U.S.
Patent No. 5,846,710, entitled Method for the Detection of
Genetic Diseases and Gene Sequence Variations by Single Nucleotide
Primer Extension , issue date December 8, 1998 (the
“‘710 Patent or the “Licensed
Patent”).
B. WHEREAS, ORCHID commenced a
declaratory judgment action in the United States District Court for
the Southern District of California that was transferred to the
United States District Court for the Eastern District of Missouri
(Civil Action No. 4:02CV00179JCH, U.S.D.C., E.D. of MO) against SLU
in connection with the parties’ rights and obligations with
respect to the ‘710 Patent (the
“Action”).
C. WHEREAS, SLU filed a counterclaim
against ORCHID alleging patent infringement of the ‘710
Patent.
D. WHEREAS, the Parties have entered
into that certain Settlement Agreement dated August 6th, 2002 (the
“Settlement Agreement”). All capitalized terms not
defined herein shall have the meaning as set forth in the
Settlement Agreement.
E. WHEREAS, Pursuant to the terms
and conditions of the Settlement Agreement, SLU assigned,
transferred and set over to ORCHID its entire right, title and
interest in and to the ‘710 Patent.
F. WHEREAS, NIH failed to issue its
approval to the assignment and transfer of the ‘710 Patent to
ORCHID as requested by the terms of the Settlement Agreement,
therefore rendering the ‘710 Patent assignment and transfer
void, and thereby requiring SLU, under the terms of the Settlement
Agreement, to grant a license to ORCHID as set forth
therein.
AGREEMENT
NOW THEREFORE, in consideration of
the foregoing, and the mutual promises, covenants, and agreements
hereinafter set forth and each act to be performed hereunder, and
other good and valuable consideration (the receipt, adequacy and
sufficiency of which are hereby acknowledged by the Parties by
their execution hereof), the Parties agree as follows:
1. Grant of License and
Duration
1.1 License Grant . Effective
as of February 25, 2003 (the “Effective Date”), SLU
hereby grants to ORCHID, and ORCHID accepts from SLU, an exclusive
(subject only to the rights of the National Institute of Health
(“NIH”), the Existing Third Party Agreements (as
described in Section 3.4 below) and SLU’s right to use the
Licensed Patent solely for internal research and development
purposes), worldwide license, including the right to grant
sublicenses to all or any portion of its rights hereunder, under
the Licensed Patent, to research, develop, make have made, use,
have used, sell, offer for sale, have sold, import, have imported,
export and have exported Licensed Products, for any and all uses,
and to otherwise commercially exploit such Licensed Patent for any
and all uses subject to the other terms and conditions of this
Agreement. In consideration of the rights granted hereunder, ORCHID
shall make the payments to SLU described in Section 5 of this
Agreement. For purposes of this Section 1.1, the term
“internal research and development purposes” shall mean
any purpose that does not involve the financial support of,
and grant of rights to, any third party commercial
entity.
1.2 Effective Date . This
Agreement shall be in full force and effect from the date first
herein written and shall remain in effect in perpetuity unless
terminated by operation of law or by the acts of the Parties in
accordance with Section 10 of this Agreement.
2. Ownership of the Licensed
Patent
ORCHID acknowledges that nothing in
this Agreement shall give ORCHID any right, title or interest in
the Licensed Patent, other than in accordance with the terms of the
license granted hereunder.
3. Patent Use and
Ownership
3.1 Exclusive Ownership .
ORCHID acknowledges that SLU is the sole and exclusive owner of the
Licensed Patent and ORCHID hereby agrees that it neither has had
nor shall have any other rights with respect to such Licensed
Patent except as provided herein.
3.2 Use of SLU Name . ORCHID
agrees that it will not state or imply either directly or
indirectly that ORCHID or ORCHID’s activities, other than
those permitted by this Agreement, are supported, endorsed, or
sponsored by SLU and, upon the direction of SLU, shall issue
express disclaimers to that effect. ORCHID agrees not to use the
name of SLU in business or affairs except for the use of the
Licensed Patent as authorized herein, as required by law or as may
be incidental to its financial and internal reports.
3.3 Use of Licensed Patent .
ORCHID agrees it will use the Licensed Patent only as authorized by
this Agreement and will comply in all material respects with all
appropriate local, state and national laws.
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3.4 Agreements . On and after
the date of this Agreement, SLU shall promptly provide ORCHID with
true and correct copies of all agreements pursuant to which the
Licensed Patent is licensed to any third party (the “Existing
Third Party Agreements”), including any agreements between
SLU and Nanogen and SLU and Illumina; provided ,
however , that SLU shall have the right to redact from such
copies confidential financial or other information solely to the
extent that any such redacted provisions do not bind ORCHID
. It is agreed that all monies received by SLU under the
Existing Third Party Agreements on and after the Effective Date
will be held by SLU for the benefit of Orchid and will be forwarded
by SLU to ORCHID in a timely manner.
4. Filing, Prosecution And
Maintenance Of Patent Rights
4.1 Patent Filing, Prosecution
and Maintenance . Subject to the other terms of this Section 4,
ORCHID shall be responsible for maintaining, at its sole cost and
expense, the Licensed Patent . Payment for maintenance fees
incurred by SLU with respect to the Licensed Patent on and after
the Effective Date shall be provided to SLU by ORCHID in a timely
manner upon ORCHID’s receipt of written notice of same from
SLU and SLU shall promptly forward such payment onto the U.S.
Patent and Trademark Office and shall provide ORCHID with
reasonable evidence of same. SLU (a) will provide ORCHID with a
copy of any communication between SLU and the U.S. Patent Office
concerning the Licensed Patent for review and comment reasonably in
advance of any applicable filing deadline (which shall under no
circumstances be in excess of thirty (30) days), and (b) will keep
ORCHID reasonably informed of the status of such communication,
including, without limitation, (i) by providing ORCHID with copies
of all communications received from or filed in patent office(s)
with respect thereto, and (ii) by providing ORCHID, a reasonable
time prior to taking or failing to take any action that would
affect the scope or validity thereof, with prior written notice of
such proposed action or inaction so that ORCHID has a reasonable
opportunity to review and comment.
4.2 Notice of Infringement .
If, during the Term of this Agreement, either Party learns of any
actual, alleged or threatened infringement by a Third Party of the
Licensed Patent, such Party shall promptly notify the other Party
and shall provide such other Party with available evidence of such
infringement.
4.3 Infringement of Patent
Rights . SLU shall have the first right (but not the
obligation), at its own expense and with legal counsel of its own
choice, to bring suit (or take other appropriate legal action)
against any actual, alleged or threatened infringement by a Third
Party of the Licensed Patent either as a plaintiff or counterclaim
plaintiff. ORCHID shall have the right, at its own expense, to be
represented in any such action by SLU by counsel of ORCHID’s
own choice; provided , however , that under no
circumstances shall the foregoing affect the right of SLU to
control the suit as described in the first sentence of this Section
4.3. If SLU does not file any action or proceeding against such
infringement within sixty (60) days after the later of (a)
SLU’s notice to ORCHID under Section 4.2 above, (b)
ORCHID’s notice to SLU under Section 4.2 above, or (c) a
written request from ORCHID to take action with respect to such
infringement, then ORCHID shall have the right (but not the
obligation), at its own expense, to bring suit (or take other
appropriate legal action) against such actual, alleged or
threatened infringement, with legal counsel of its own choice. Any
damages, monetary awards or other amounts recovered, whether by
judgment or settlement, pursuant to any suit, proceeding or other
legal action taken under this Section 4.3, shall be applied as
follows:
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First, (a) if SLU exercises its
first right as set forth above, then SLU will be reimbursed for its
costs and expenses (including reasonable attorneys’ fees and
costs) incurred in prosecuting such enforcement action and (b) if
SLU does not exercise its first right and ORCHID brings an action,
then ORCHID will be reimbursed for its costs and expenses
(including reasonable attorneys’ fees and costs) in
prosecuting such enforcement action;
Second, to ORCHID in reimbursement
for damages, as set forth in 35 USC, Section 284, paragraph 1 (not
to include enhanced damages under paragraph 2 of Section 284 or
attorneys’ fees under 35 USC, Section 285, if any),
associated with Licensed Products as determined in the litigation
to the extent there are monies available after the reimbursement to
SLU or ORCHID as set forth above and in the final sentence of this
Section 4.3; and
Third, any amounts remaining shall
be allocated as follows: (a) if SLU is the Party bringing such suit
or proceeding or taking such other legal action, seventy-five
percent to SLU and twenty-five percent to ORCHID, (b) if ORCHID is
the Party bringing such suit or proceeding or taking such other
legal action, one hundred percent (100%) to ORCHID.
If a Party brings any such action or
proceeding hereunder, the other Party agrees to be joined as party
plaintiff if necessary to prosecute such action or proceeding, and
to give the Party bringing such action or proceeding reasonable
assistance and authority to file and prosecute the suit; provided,
however, that neither Party shall be required to transfer any
right, title or interest in or to any property to the other Party
or any Third Party to confer standing on a Party hereunder. In the
event both Parties are necessary for the prosecution of the action,
then both Party’s costs and expenses shall be paid first
before ORCHID is reimbursed for damages as described above, if any,
and any monies remaining after ORCHID is so reimbursed will be
split equally.
4.4 Third Party Patents . If
any Third Party claims that a patent it owns or controls claims any
aspect of the Licensed Patent or the manufacture, use or sale of
any Licensed Product, the Party with notice of such claim shall
notify the other Party promptly, and the Parties shall as soon as
practicable thereafter discuss in good faith regarding a
response.
5. Payment
In consideration for the license
granted herein, ORCHID agrees to make payments to SLU in accordance
with the Settlement Agreement, which has been amended
