1
EXHIBIT 10.20
▇▇▇▇▇▇▇▇ ▇▇▇▇▇ + ▇▇▇▇
SOLICITORS
GENOMIC SOLUTIONS LIMITED
SALE OF SHARES
IN HD TECHNOLOGIES LIMITED
JANUARY 2000
CONTENTS:
1. SHARE SALE AGREEMENT- (25.1.00) - between Genomic Solutions Limited (1),
SC ▇▇▇▇▇ and AD ▇▇▇▇▇▇▇▇ (2) and HD Technologies
Limited (3)
2. LICENCE AGREEMENT:- (25.1.00) - between Genomic Solutions Limited (1)
and HD Technologies Limited (2)
3. 2 X SIDE LETTERS from Thermo Quest:
a) re: Collaboration Agreement (16.4.98)
b) re: Contract Manufacturing Agreement (13.7.99)
4. MISCELLANEOUS PAPERS:
a) Notice by GSL of removal of ▇.▇. ▇▇▇▇ as Nominated Director of HDT
b) Form 288(b)
c) Copy letter from Nat West Bank Plc
d) Form of release - White Pines
e) 2 x Stock transfer forms
5. CONTRACT MANUFACTURING AGREEMENT:- (13.7.99) - copy included for completeness
2
DATED 25 January 2000
---------------------
GENOMIC SOLUTIONS LIMITED (1)
S C ▇▇▇▇▇ (2)
A D ▇▇▇▇▇▇▇
- and -
H D TECHNOLOGIES LIMITED (3)
-------------------------
AGREEMENT
for the sale of shares in
HD Technologies Limited
-------------------------
tumer ▇▇▇▇▇▇▇▇▇
Solicitors
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇ ▇▇▇
Ref: NGM
3
THIS AGREEMENT is made on 25th January 2000
--------------
BETWEEN:
-------
(1) GENOMIC SOLUTIONS LIMITED (No 2315315) whose registered office is at
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇ ("GSL");
(2) The persons whose names and addresses are set out in Schedule 1 ("THE
PURCHASERS"); and
(3) H D TECHNOLOGIES LIMITED (No 2916498) whose registered office is at ▇
▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇ ("THE COMPANY").
WHEREAS:
-------
Genomic wishes to sell and the Purchasers wish to acquire the Sale Shares (as
hereinafter defined) on and subject to the terms of this Agreement.
NOW IT IS HEREBY AGREED as follows:
1. DEFINITIONS AND INTERPRETATION
1.1 In this Agreement, unless the context otherwise requires:
(a) the following words have the following meanings:
"BUSINESS DAY" means a day (other than Saturday or Sunday) when
banks are open for ordinary banking business in London;
"COLLABORATION AGREEMENT means the collaboration agreement dated
16 April 1998 between the Company (1) and GSL (2);
"CONTRACT MANUFACTURING AGREEMENT" means the contract manufacturing
agreement dated 13 July 1999 between the Company (1) and GSL (2);
"COMPLETION" means completion of the sale and purchase of the Sale
Shares in accordance with clause 5;
"ENCUMBRANCE" includes any interest or equity of any person
(including any right to acquire, option or right of pre-emption) or
any mortgage, charge, pledge, lien, assignment, hypothecation,
security interest (including any created by law), title retention or
other security agreement or arrangement or a rental, hire purchase,
credit sale or other agreement for payment on deferred terms;
4
"GROUP" means either the GSL Group or the ThermoQuest Group, according to
the context;
"GSL GROUP" means:
(a) GSL;
(b) any Holding Company of GSL from time to time;
(b) any Subsidiary from time to time of such Holding Company; and
(c) any Subsidiary from time to time of GSL,
"GSI" means Genomic Solutions Inc;
"HOLDING COMPANY" AND "SUBSIDIARY" have the meanings given to them in
section 736 of the Companies ▇▇▇ ▇▇▇▇;
"OPTION AGREEMENTS" means the non-qualified stock option agreements in the
agreed form relating to the granting of options to purchase common stock of
Genomic Solutions Inc in favour of each of the Purchasers;
"SALE SHARES" means the 300 Convertible Redeemable Preference Shares of
Pound Sterling 1 each of the Company registered in the name of GSL whether
or not converted;
"THE SUBSCRIPTION AGREEMENT" means the subscription agreement dated 16
April 1998 made between GSL (1) GSI (2) the Company (3) and the Purchasers
(4);
"THE THERMOQUEST AGREEMENT" means an agreement proposed to be entered into
between the Purchasers (1) and ThermoQuest or any member of the ThermoQuest
Group (2);
"THERMOQUEST" means ThermoQuest Corporation;
"THERMOQUEST GROUP" means:
(a) ThermoQuest;
(b) any Holding Company of ThermoQuest from time to time;
(c) any Subsidiary from time to time of such Holding Company; and
(d) any Subsidiary from time to time of ThermoQuest;
"THE WARRANTIES" means the warranties, undertakings and representations set
out in clause 6;
5
(b) any reference to a recital, clause or Schedule is to the relevant
recital, clause or Schedule of or to this Agreement and any
reference to a sub-clause or paragraph is to the relevant
sub-clause or paragraph of the clause or Schedule in which it
appears;
(c) the clause headings are included for convenience only and shall
not affect the interpretation of this Agreement;
(d) use of the singular includes the plural and vice versa;
(e) use of any gender includes the other genders;
(f) any reference to "persons" includes natural persons, firms,
partnerships, companies, corporations, associations,
organisations, governments, states, foundations and trusts (in
each case whether or not having separate legal personality);
(g) any reference to a document being "in the agreed form" means a
document in a form agreed by the parties and initialled by, or on
behalf of, all of them for the purpose of identification as such;
(h) any phrase introduced by the terms "including", "include", "in
particular" or any similar expression shall be construed as
illustrative and shall not limit the sense of the words preceding
those terms;
(i) the Schedules form part of this Agreement and shall have effect
as if set out in full in the body of this Agreement and any
reference to this Agreement includes the Schedules.
2. SALE OF SHARES
2.1 Subject to the terms of this Agreement, GSL with full title guarantee shall
sell and the Purchasers shall relying on the Warranties purchase, free from
all Encumbrances and together with all rights now or hereafter attaching
thereto, the Sale Shares.
2.2 Neither the Purchasers nor GSL shall be obliged to complete the purchase of
any of the Sale Shares unless the purchase of all the Sale Shares is
completed simultaneously.
3. CONSIDERATION
3.1 The total consideration for the Sale Shares shall be the sum of US
$600,000.
4. CONDITION
4.1 Completion is conditional upon the ThermoQuest Agreement being entered into
and becoming, in accordance with its terms, unconditional in all respects
6
(other than in respect of any condition relating to the Completion of this
Agreement) and in the event that the foregoing condition shall not have
been satisfied on or before 29 February 2000 this Agreement shall lapse and
no party shall make any claim against any other in respect hereof, save for
any antecedent breach.
5. COMPLETION
5.1 Completion shall take place at the offices of the Company's solicitors,
being ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇.
5.2 On Completion GSL shall deliver to the Purchaser:
(a) duly executed transfers of the Sale Shares by the registered holder
thereof in favour of the Purchasers or their nominees together with
the relative share certificate;
(b) such waivers or consents as the Purchasers may require to enable the
Purchasers or its nominees to be registered as holders of the Sale
Shares; and
(c) notification in accordance with the Articles of Association of the
Company removing the Nominated Director (as defined in the
Subscription Agreement);
(d) a duly executed licence in the form set out in Schedule 2.
5.3 On Completion the Purchasers shall:
(a) pay the consideration for the Sale Shares as provided by clause 3,
payment to be made by way of telegraphic transfer to the client
account of Messrs ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ and ▇▇▇▇, Cambridge, Solicitors; and
(b) deliver to GSL a duly executed licence in the form set out in Schedule
2.
5.4 GSL shall procure that GSI shall deliver to the Purchasers as soon as
practicable following Completion amended Option Agreements in a form
acceptable to the Purchasers providing, inter alia, for such agreements to
subsist notwithstanding the employment of the Purchasers by a member of the
ThermoQuest Group.
5.5 If in any respect the obligations of GSL or the Purchasers are not complied
with on the date of Completion the party not in default may:
(a) defer Completion to a date not more than 28 days after the date of
Completion (and so that the provisions of this clause 5.5, apart from
this item, shall apply to Completion as so deferred); or
7
(b) proceed to Completion so far as practicable (without prejudice to its
rights hereunder); or
(c) rescind this Agreement.
6. WARRANTIES
6.1 GSL warrants, represents and undertakes that:
(a) GSL is the beneficial and legal owner of the Sale Shares and is
entitled to sell the Sale Shares will full title guarantee to the
Purchasers free from all Encumbrances without the consent of any third
party;
(b) GSL has full power and authority to enter into this Agreement, and any
other documents to be executed in connection with it, all of which
constitute (or will when executed constitute) legal and valid binding
obligations on it enforceable in accordance with their respective
terms;
(c) the Sale Shares constitute the whole of the issued share capital of
the Company under the legal or beneficial ownership or control of GSL
and are fully paid;
(d) no member of the GSL Group has the right (whether exercisable now or
in the future and whether contingent or not) to call for the
allotment, conversion, issue, sale or transfer or any share or loan
capital or any other security giving rise to a right over the capital
of the Company under any other agreement (including conversion rights
or rights of pre-emption).
7. RELEASE
7.1 In consideration of the Purchasers entering into this Agreement, GSL hereby
irrevocably releases the Company and the Purchasers from all and any
obligations and liabilities to GSL incurred by the Company and/or the
Purchasers pursuant to the Subscription Agreement including, without
limitation, from any obligation to enter into any negotiations concerning a
licence for the manufacture and exploitation of the Orbitrap Spectrometer
as provided by clause 8 of the Subscription Agreement.
7.2 The parties hereby acknowledge that nothing contained herein shall operate
so as to bring to an end the continuing obligations of any of them pursuant
to the Collaboration Agreement or the Contract Manufacturing Agreement.
8. FURTHER ASSURANCE
8.1 At any time after the date hereof GSL shall, at the request and cost of the
Purchasers, execute or procure the execution of such documents and do or
procure the doing of such acts and things as the Purchasers may reasonably
require for the purpose of vesting the Sale Shares in the Purchasers or its
8
nominees and giving to the Purchasers the full benefit of all the
provisions of this Agreement.
9. INVALIDITY
9.1 If any provision of this Agreement shall be held to be illegal, void,
invalid or unenforceable under the laws of any jurisdiction, the legality,
validity and enforceability of the remainder of this Agreement in that
jurisdiction shall not be affected, and the legality, validity and
enforceability of the whole of this Agreement in any other jurisdiction
shall not be affected.
10. NOTICES
10.1 Any notice or other communication required to be given under this Agreement
or in connection with the matters contemplated by it shall, except where
otherwise specifically provided, be in writing in the English language and
shall be addressed as provided in clause 10.2 and may be:
(a) personally delivered, in which case it shall be deemed to have been
given upon delivery at the relevant address; or
(b) if within the United Kingdom, sent by first class pre-paid post, in
which case it shall be deemed to have been given two Business Days
after the date of posting; or
(c) if from or to any place outside the United Kingdom, sent by pre-paid
priority airmail, in which case it shall be deemed to have been given
seven Business Days after the date of posting; or
(d) sent by fax, in which case it shall be deemed to have been given when
despatched, subject to confirmation or uninterrupted transmission by a
transmission report provided that any notice despatched by fax after
17.00 hours (at the place where such fax is to be received) on any day
shall be deemed to have been received at 08.00 on the next Business
Day.
10.2 The address and the other details of the parties referred to in clause
100.1 are, subject to clause 10.3:
Genomic Solutions Limited
▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇▇▇
▇▇▇▇ ▇▇▇
Fax number: ▇▇▇▇▇ ▇▇▇▇▇▇
9
H D Technologies Limited
▇▇-▇▇ ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇▇ ▇▇▇
Fax number: ▇▇▇▇ ▇▇▇ ▇▇▇▇
cc. General Counsel
▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇
▇▇ ▇▇▇▇▇-▇▇▇▇
▇▇▇
Fax number: ▇▇ ▇ ▇▇▇ ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇: as set out in Schedule 1
▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇: as set out in Schedule 1
10.3 Any party to this Agreement may notify the other parties of any
change to its address or other details specified in clause 10.2,
provided that such notification shall be effective only on the
date specified in such notice or five Business Days after the
notice is given, whichever is later.
11. ASSIGNMENT
11.1 No party shall be entitled to assign or transfer its rights and
obligations under this Agreement (whether in whole or part)
without the prior consent of the other parties, unless such
assignment or transfer is to a member of the assigning party's
Group.
12. LAW AND JURISDICTION
12.1 This Agreement shall be governed by, and construed in accordance
with, English law.
12.2 In relation to any legal action or proceedings to enforce this
Agreement or arising out of or in connection with this Agreement
("PROCEEDINGS") each of the parties irrevocably submits to the
jurisdiction of the English courts and waives any objection to
proceedings in such courts on the grounds of venue or on the
grounds that the proceedings have been brought in an inconvenient
forum.
IN WITNESS whereof this Agreement has been executed as a deed on the
day and year first before written.
10
SCHEDULE 1
The Purchasers
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇
▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇
▇▇▇▇ ▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇▇ ▇▇▇
11
SCHEDULE 2
----------
THIS AGREEMENT is made on 2000
BETWEEN:
(1) GENOMIC SOLUTIONS LIMITED (No 2315315) whose registered office is at ▇
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇ ("GSL"); and
(2) H D TECHNOLOGIES LIMITED (No 2916498) whose registered office is at ▇
▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇ ("HDT").
WHEREAS:
(A) GSL is the registered proprietor of the Patent (as defined below).
(B) By an agreement dated of even date it was agreed between the parties
thereto that GSL would grant to HDT a licence under the said Patent and HDT
would grant to GSL a licence back as herein set forth.
(C) Accordingly, the parties have now agreed to execute this Agreement.
NOW IT IS HEREBY AGREED as follows:
1. DEFINITIONS
1.1 this Schedule, unless the context otherwise requires:
(a) the following terms shall have the following meanings
"COPYRIGHT" means all copyright and all rights in databases and
database rights and rights in the nature of copyright to which either
party may now be or may subsequently become entitled in or in respect
of all drawings and other documents, recordings in any form and all
other materials bearing or embodying any part of the Technical
Information including without limitation any such materials consisting
of or containing software or databases;
"EXCLUSIVE FIELD" means any and all applications and uses including
without limitation, applications using Tandem Instruments but
excluding those relating to MALDI-TOF Spectrometry and other
proteomics applications;
"FIELD" means the Sole Field and/or the Exclusive Field;
"GROUP" means either the GSL Group or the HDT Group, according to the
context;
12
"GSL GROUP" means:
(a) GSL;
(b) any Holding Company of GSL from time to time;
(c) any Subsidiary from time to time of such Holding Company; and
(d) any Subsidiary from time to time of GSL;
"GSL IMPROVEMENT" means any improvement, modification or alteration to
the invention claimed in the Patent made by the GSL Group during the
Term;
"HDT GROUP" means:
(a) HDT;
(b) the ThermoQuest Corporation ("THERMOQUEST");
(c) any Holding Company of HDT or ThermoQuest from time to time;
(d) any Subsidiary from time to time of such Holding Company; and
(e) any Subsidiary from time to time of HDT or ThermoQuest;
"HOLDING COMPANY" and "SUBSIDIARY" have the meanings given to them in
section 736 of the Companies ▇▇▇ ▇▇▇▇;
"INSTRUMENT" means an instrument relating to the Field and which
incorporates the invention contained in the Patent;
"LICENCE" means the provisions of this Agreement;
"MAJOR COUNTRIES" means Japan and the United States of America and
each of the countries which are signatories to the European Patent
Convention and "MAJOR COUNTRY" shall mean any of them;
"MALDI-TOF SPECTROMETRY" means matrix-assisted laser description
ionisation time-of-flight spectrometry;
"PATENTS" means:
(a) the patent application short particulars whereof are set out in
Annexure A hereto;
13
(b) all patent applications that have been or may hereafter be filed
in the Territory by or on behalf of any member of the GSL Group
which are based on or claim priority from the foregoing patent
application;
(c) all patent applications that have been or may hereafter be filed
in the Territory by or on behalf of any member of the GSL Group
for GSL Improvements made to the invention claimed in the patent
application, short particulars of which are set out in Annexure
A; and
(d) all patents which may be granted pursuant to any of the foregoing
patent applications in (a), (b) or (c) above;
"SOLE FIELD" means any and all applications and uses in the field of
proteomics including without limitation any and all applications and
uses of Tandem Instruments with a matrix-assisted laser desorption
ionisation spectrometer but excluding MALDI-TOF Spectrometry;
"TANDEM INSTRUMENTS" means a mass spectrometer instrument employing
more than one mass analyser within the same instrument;
"TECHNICAL INFORMATION" means all identifiable know-how, experience,
data and all other technical or commercial information relating to the
Patent whether in human or machine readable form and whether stored
electronically or otherwise and which might reasonably be of
commercial interest to either party in connection with the use or
exploitation of the Patent;
"TERM" has the meaning set out in clause 6.1;
"TERRITORY" means the world.;
(b) reference to "the parties" or "either party" or similar expression
shall mean GSL and HDT or either of them.
(c) reference to the singular includes a reference to the plural and vice
versa.
2. GRANT OF RIGHTS
2.1 GSL hereby grants to HDT an exclusive world-wide licence during the Term
to:
(a) use the Patents and the Copyright and use the Technical Information
owned or under the control of any member of the GSL Group and use any
GSL Improvements; and
14
(b) manufacture and sell products made using the Patents, the
Copyright and using the Technical Information owned or under the
control of any member of the GSL Group or using any GSL
Improvements;
in each case within the scope of the Exclusive Field anywhere in the
Territory. GSL shall effect the necessary licences or assignments by
other members of the GSL Group to GSL to enable GSL to grant the
licence provided in this clause 2.1.
2.2 GSL hereby grants to HDT a sole world-wide licence during the Term to:
(a) use the Patent and the Copyright and use the Technical
Information owned or under the control of any member of the GSL
Group and use any GSL Improvements; and
(b) manufacture and sell products made using the Patent, the
Copyright and using the Technical Information owned or under the
control of any member of the GSL Group and using any GSL
Improvements;
in each case within the scope of the Sole Field anywhere in the
Territory. GSL shall effect the necessary licences or assignments by
other members of the GSL Group to GSL to enable GSL to grant the
licence provided in this clause 2.2.
2.3 The licences granted under clauses 2.1 and 2.2 contain no right to
grant sublicences save that HDT may grant sublicences to other members
of the HDT Group only.
2.4 HDT shall pay to GSL, in a manner requested by GSL, the sum of
$US20,000 as an advance against future royalties within thirty days of
completion of the Agreement between ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ and
ThermoQuest or any of its Subsidiaries for the sale and purchase of
all of the share capital of HDT.
2.5 Except as provided in clause 2.6, HDT shall pay to GSL a royalty of
US$2,000 on the eleventh and each subsequent Instrument (but not on
the first ten Instruments) sold or otherwise supplied for money or
money's worth by HDT or any other member of the HDT Group,
2.6 Royalties under clause 2.5 shall be due and payable in each country
within the Territory in which HDT or any other member of the HDT Group
shall sell or supply for money or money's worth or manufacture or have
manufactured Instruments until whichever shall be the later of:
(a) the expiry or lapse of all patents applied for or granted
pursuant to the Patent within such country within the Territory;
(b) in respect of such part of the Territory where patents are not
registered or applied for pursuant to the Patent, or where all
such patents or patent applications have lapsed or been withdrawn
or have expired, the expiry of a period of 10 years from the
first sale or supply for money or
15
money's worth by HDT or any other member of the HDT Group of an
Instrument within such part of the Territory.
2.7 Payments due under clause 2.5 shall be made within 30 days of the end
of each calendar quarter in respect of royalties accruing on
Instruments invoiced in that calendar quarter.
2.8 Without prejudice to GSL's rights of termination under clause 6.2, if
any payment or any part thereof is overdue then HDT shall pay interest
thereon before and after judgment at an annual rate (but with interest
accruing on a daily basis) at 4 per cent above the base rate from time
to time of Barclays Bank Plc such interest to run from the date upon
which payment of such sum became due until payment thereof in full
together with such interest by HDT.
2.9 All sums due under this Agreement are exclusive of any Value Added Tax
which shall be payable in addition and GSL shall, where appropriate,
promptly provide a Value Added Tax invoice in the correct amount.
2.10 HDT agrees to keep true and accurate records and books of account
containing all data necessary for the determination of royalties
payable under clause 2.5 which records and books of account shall upon
reasonable notice by GSL be open at all reasonable times during normal
business hours for inspection by an independent accountant selected by
GSL and acceptable to HDT (which acceptance shall not be unreasonably
withheld or delayed) for the purpose of verifying the accuracy of
HDT's statements hereunder. The accountant may take copies of the
records and books of account but shall not disclose to GSL any
information relating to the business or affairs of HDT other than such
information as properly should have been contained in any statement
required to be furnished by HDT to GSL. GSL shall be solely
responsible for the costs of the accountant unless he certifies that
any reports are inaccurate by more than 5% in which event HDT shall
promptly reimburse GSL for his costs.
2.11 HDT shall submit to GSL within 30 days of the end of each calendar
quarter a statement setting forth with respect to the operations of
HDT hereunder during that period the quantity of Instruments sold and
the royalties payable.
2.12 GSL agrees to maintain confidential all financial information received
with respect to HDT's operations pursuant to the foregoing clauses
2.10 and 2.11 and not to use such information for purposes other than
to verify the amount of any licence fees payable under this Agreement.
2.13 GSL shall as soon as reasonably possible disclose to HDT any GSL
Improvements generated during the Term and such GSL Improvements
shall be licensed to HDT according to the provisions of clauses 2.1
and 2.2.
2.14 GSL hereby warrants, represents and undertakes that it is the legal
and beneficial owner of the Patent, the Copyright and the Technical
Information and that GSL has not licensed the Patent, the Copyright
and the Technical
16
Information to any other party for use within the Exclusive Field or the
Sole Field.
2.15 Subject to the provisions of clause 2.16, GSL hereby undertakes not during
the Term to license the Patent, the Copyright or the Technical Information
to any other party for use within the Exclusive Field or the Sole Field
provided that GSL shall itself be entitled to exploit all of the aforesaid
within the Sole Field within the Territory during the Term.
2.16 If within two years of the date hereof HDT (or another member of the HDT
Group) has not been able to demonstrate to GSL's satisfaction that HDT (or
another member of the HDT Group) has a serious intention to develop and
commercially exploit the intellectual property licensed under clauses 2.1
and 2.2 then GSL may forthwith by written notice make each of the licences
granted under clauses 2.1 and 2.2 non-exclusive and GSL shall thereafter be
free to:
(a) itself use and exploit the Patent, the Copyright and the Technical
Information within the Exclusive Field; and
(b) appoint other licensees of the Patent, the Copyright and the
Technical Information within the Sole Field and the Exclusive Field.
In such event, HDT's obligation to pay royalties under clause 2.5 shall
nevertheless continue in full force and effect. For the purpose of this
clause "serious intention to develop and commercially exploit" shall mean
having implemented a fully up and running, ongoing development programme
and having constructed at least one prototype Instrument.
3 LICENCE BACK
3.1 HDT hereby grants to GSL a non-exclusive irrevocable, royalty-free,
world-wide licence for the Term (with the right to grant sublicences within
the GSL Group only) to use, exploit (including by manufacturing and selling
products) or deal in:
(a) any improvements made in the field of MALDI-TOF Spectrometry by HDT or
another member of the HDT Group to the Patent or the Technical
Information; HDT shall disclose all such improvements to GSL as soon
as reasonably possible as and when they arise; and
(b) any intellectual property in the field of MALDI-TOF Spectrometry owned
as at the date hereof or subsequently generated by HDT or another
member of the HDT Group in relation to the Patent or the Technical
Information; HDT shall disclose all such intellectual property to GSL
as soon as reasonably possible as and when it arises.
17
3.2 HDT undertakes promptly to procure all licences or assignments to HDT
by other members of the HDT Group necessary for HDT to grant the
licences required under clause 3.1
3.3 HDT may forthwith by written notice terminate the licence granted
under clause 3.1 if GSL uses, exploits or applies the improvements
and/or the intellectual property licensed in clause 3.1 outside the
scope of the field of MALDI-TOF Spectrometry. In such event GSL shall
promptly return to HDT all HDT and HDT Group confidential information
and all documentation (whether hard copy or electronic) evidencing the
intellectual property licensed under clause 3.1.
4. CONFIDENTIALITY
4.1 Each party agrees to maintain secret and confidential all confidential
information obtained from the other both pursuant to this Agreement
(including any Technical Information which is secret or confidential)
and prior to and in contemplation of it and all other information that
it may acquire from the other, to use the same exclusively for the
purposes of this Agreement, and to disclose the same only to those
employees, agents, representatives and contractors pursuant to this
Agreement (if any) to whom and to the extent that such disclosure is
reasonably necessary for the purposes of this Agreement.
4.2 The foregoing obligations of clause 4.1 above shall not apply to
confidential information or other information which:
(a) prior to receipt thereof from one party was in the possession of
the recipient party and at its free disposal;
(b) is subsequently disclosed to the recipient party without any
obligations of confidence by a third party who has not derived it
directly or indirectly from the disclosing party; or
(c) is or becomes generally available to the public through no act or
default of the recipient party or its agents or employees.
4.3 The obligation of confidentiality contained in this clause 4 shall
last for the Term and continue without limitation in time thereafter.
5. PATENTS AND OTHER INTELLECTUAL PROPERTY
5.1 GSL shall at its own cost use reasonable endeavours to diligently
prosecute to grant all patent applications within the Patent in at
least the Major Countries and so as to secure the broadest monopoly
reasonably obtainable consistent with avoiding serious prejudice to
the validity of such granted patents and to maintain all such patents
granted in respect of the Patent in force for the full term thereof.
Notwithstanding the foregoing, GSL shall not be absolutely obliged to
take such action as may be necessary to defend any claim by any third
party challenging the validity of the Patent or the Technical
Information
18
Provided Always that in the event that GSL refrains from such action within
four weeks of a request by HDT to take such action HDT as licensee
hereunder shall be entitled at its own cost and expense to maintain and
defend such Patent or Technical Information (insofar as it relates to the
Field) and in such circumstances GSL will provide HDT with all such advice
and assistance (subject to reimbursement of its reasonable expenses) as may
reasonably be required by HDT in connection with the defence of the Patent
(or the Technical Information). If HDT takes such action, HDT shall bear
all costs and expenses relating to it and HDT will be entitled to all
damages and other recoveries made as a result of such action.
5.2 In the event that GSL shall not pursue further any application within the
Patent or shall not continue to maintain any patent from time to time
within the Patent, GSL shall notify HDT and shall if so requested promptly
assign all rights it may have therein to HDT and HDT may elect to take over
the pursuit of any such application or maintenance of any such granted
patents and pay for all consequent expenditure itself. If HDT does so elect
it shall inform GSL of that decision in writing. Thereafter, as long as HDT
keeps up such pursuit/maintenance (as applicable) HDT shall not be obliged
to pay to GSL any royalties in respect of Instruments manufactured, sold or
supplied in the part of the Territory where it has assumed such
pursuit/maintenance.
5.3 Each party shall notify the other promptly in the event that it becomes
aware of:
(a) any infringement or alleged infringement by any third party of the
rights in the other party's intellectual property within any part of
the Territory; or
(b) any allegation by any third party that the use and exploitation of the
other party's intellectual property infringes any intellectual
property rights of any such third party in any part of the Territory;
and subsequently supply to the other party such detailed information
concerning any such infringement, alleged infringement or third party
allegation as may be available to it and extend such co-operation as the
other party shall reasonably request (at the other party's request) in
countering such infringement, alleged infringement or third party
allegation.
6 TERM AND TERMINATION
6.1 Subject as hereinafter provided in this clause 6.1 and in clause 6.2, the
Licence shall commence on the date hereof and shall continue in force in
perpetuity save that:
(a) in respect of all patents within the Patents: the Licence shall
continue in force in respect of each patent within the Patent until
such patent expires;
19
(b) in respect of all Technical Information licensed under this
Agreement: the Licence shall continue in force until such
information is no longer secret or substantial; and
(c) in respect of all Copyright which is not secret or substantial:
the Licence shall continue in force in each country of the
Territory until expiry of the Copyright in such country.
6.2 GSL may forthwith by written notice terminate the licence granted
under clauses 2.1 and 2.2 if:
(a) HDT or any sublicensee of HDT uses, exploits or applies the
Patent, the Technical Information, the Copyright or any GSL
Improvements outside the scope of the Field. In such event HDT
shall promptly return to GSL all GSL confidential information and
all documentation (whether hard copy or digital) evidencing the
intellectual property licensed under clauses 2.1 and 2.2; or
(b) without prejudice to any of its other rights under this Agreement
any undisputed sum due to GSL under clause 2.5 (including
interest accrued under clause 2.8) remains unpaid in full 30 days
after receipt by HDT of written notification that such sum is
overdue for payment.
7. ASSIGNMENT
7.1 Neither party shall be entitled to assign or transfer its rights and
obligations under this Agreement (whether in whole or part) without
the other party's prior consent, unless such assignment or transfer is
to a member of the assigning party's Group.
8. NOTICES
8.1 All notices required to be served by the parties to this Agreement
under the terms hereof shall be sufficiently served if despatched by
first class post or by fax to the address or fax number of the
recipient party as set out below or such other address or fax number
as is notified pursuant to this clause 8:
HD Technologies Limited
▇▇-▇▇ ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇▇ ▇▇▇
Fax: ▇▇▇▇ ▇▇▇ ▇▇▇▇
20
cc. General Counsel
▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇
▇▇ ▇▇▇▇▇-▇▇▇▇
▇▇▇
Fax: ▇▇ ▇ ▇▇▇ ▇▇▇ ▇▇▇▇
Genomic Solutions Limited
▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇▇▇
▇▇▇▇ ▇▇▇
Fax: ▇▇▇▇▇ ▇▇▇▇▇▇
Provided That:
(a) if served by facsimile it will be deemed received when sent, subject
to issue of a valid transmission slip; and
(b) if served by first class post it will be deemed received 2 days after
posting.
9. CHOICE OF LAW AND JURISDICTION
9.1 Any controversy or claim of whatsoever nature arising out of or relating in
any manner whatsoever to this Agreement or any breach of any terms of this
Agreement shall be governed by and construed in accordance with the Laws of
England.
9.2 Each party hereby irrevocably acknowledges and agrees that the courts of
England shall have exclusive jurisdiction to resolve any controversy or
claim of whatsoever nature arising out of or relating in any manner to this
Agreement any terms of this Agreement or any breach of this Agreement or
any such terms.
IN WITNESS whereof this Agreement has been executed as a deed on the day and
year first before written.
21
ANNEXURE A
The following patent application
Filing No: PCT/GB99/02244
Filing Date: 13 07 1999
Applicant: Genomic Solutions Limited
Short Title: Improved Mass Spectrometer
Basic UK App: 9815457.8
22
/s/ P. ▇▇▇▇ ▇▇▇▇
EXECUTED and delivered as a deed ) ---------------------------
by GENOMIC SOLUTIONS LIMITED ) Director
acting by its authorised officers ) /s/ ▇▇▇▇ ▇▇▇▇▇▇▇
---------------------------
Director/Secretary
/s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
EXECUTED and delivered as a deed ) ---------------------------
by H D TECHNOLOGIES LIMITED ) Director
acting by its authorised officers ) /s/ ▇▇▇▇▇ ▇▇▇▇▇
---------------------------
Director/Secretary
23
/s/ P. ▇▇▇▇ ▇▇▇▇
EXECUTED and delivered as a deed ) ---------------------------
by GENOMIC SOLUTIONS LIMITED ) Director
acting by its authorized officers: ) /s/ ▇▇▇▇ ▇▇▇▇▇▇▇
---------------------------
Director/Secretary
EXECUTED and delivered as a deed )
by ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇ ) /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇
in the presence of )
EXECUTED and delivered as a deed )
by ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇ ) /s/ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇
in the presence of: )
/s/ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇
EXECUTED and delivered as a deed ) ---------------------------
by H D TECHNOLOGIES LIMITED ) Director
acting by its authorized officers: ) /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇
---------------------------
Director/Secretary
24
THIS AGREEMENT is made on 25th January, 2000
BETWEEN:
(1) GENOMIC SOLUTIONS LIMITED (No 2315315) whose registered office
is at ▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇ ("GSL");
and
(2) H D TECHNOLOGIES LIMITED (No 2916498) whose registered office is
at ▇ ▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇ ("HDT").
WHEREAS:
(A) GSL is the registered proprietor of the Patent (as defined below).
(B) By an agreement dated of even date it was agreed between the parties
thereto that GSL would grant to HDT a licence under the said Patent and
HDT would grant to GSL a licence back as herein set forth.
(C) Accordingly, the parties have now agreed to execute this Agreement.
NOW IT IS HEREBY AGREED as follows:
1. DEFINITIONS
1.1 this Schedule, unless the context otherwise requires:
(a) the following terms shall have the following meanings
"COPYRIGHT" means all copyright and all rights in databases and
database rights and rights in the nature of copyright to which
either party may now be or may subsequently become entitled in
or in respect of all drawings and other documents, recordings
in any form and all other materials bearing or embodying any
part of the Technical Information including without limitation
any such materials consisting of or containing software or
databases;
"EXCLUSIVE FIELD" means any and all applications and uses
including without limitation, applications using Tandem
Instruments but excluding those relating to MALDI-TOF
Spectrometry and other proteomics applications;
"FIELD" means the Sole Field and/or the Exclusive Field;
"GROUP" means either the GSL Group or the HDT Group, according
to the context;
25
"GSL GROUP" means:
(a) GSL;
(b) any Holding Company of GSL from time to time;
(c) any Subsidiary from time to time of such Holding Company;
and
(d) any Subsidiary from time to time of GSL;
"GSL IMPROVEMENT" means any improvement, modification or
alteration to the invention claimed in the Patent made by the
GSL Group during the Term;
"HDT GROUP" means:
(a) HDT;
(b) the ThermoQuest Corporation ("THERMOQUEST");
(c) any Holding Company of HDT or ThermoQuest from time to
time;
(d) any Subsidiary from time to time of such Holding Company;
and
(e) any Subsidiary from time to time of HDT or ThermoQuest;
"HOLDING COMPANY" and "SUBSIDIARY" have the meanings given to
them in section 736 of the Companies ▇▇▇ ▇▇▇▇;
"INSTRUMENT" means an instrument relating to the Field and which
incorporates the invention contained in the Patent;
"LICENCE" means the provisions of this Agreement;
"MAJOR COUNTRIES" means Japan and the United States of America
and each of the countries which are signatories to the European
Patent Convention and "MAJOR COUNTRY" shall mean any of them;
"MALDI-TOF SPECTROMETRY" means matrix-assisted laser description
ionisation time-of-flight spectrometry;
"PATENTS" means:
(a) the patent application short particulars whereof are set
out in Annexure A hereto;
26
(b) all patent applications that have been or may hereafter be
filed in the Territory by or on behalf of any member of
the GSL Group which are based on or claim priority from
the foregoing patent application;
(c) all patent applications that have been or may hereafter be
filed in the Territory by or on behalf of any member of
the GSL Group for GSL Improvements made to the invention
claimed in the patent application, short particulars of
which are set out in Annexure A; and
(d) all patents which may be granted pursuant to any of the
foregoing patent applications in (a), (b) or (c) above;
"SOLE FIELD" means any and all applications and uses in the
field of proteomics including without limitation any and all
applications and uses of Tandem Instruments with a matrix-
assisted laser desorption ionisation spectrometer but excluding
MALDI-TOF Spectrometry;
"TANDEM INSTRUMENTS" means a mass spectrometer instrument
employing more than one mass analyser within the same
instrument;
"TECHNICAL INFORMATION" means all identifiable know-how,
experience, data and all other technical or commercial
information relating to the Patent whether in human or machine
readable form and whether stored electronically or otherwise and
which might reasonably be of commercial interest to either party
in connection with the use or exploitation of the Patent;
"TERM" has the meaning set out in clause 6.1;
"TERRITORY" means the world.;
(b) reference to "the parties" or "either party" or similar
expression shall mean GSL and HDT or either of them.
(c) reference to the singular includes a reference to the plural and
vice versa.
2. GRANT OF RIGHTS
2.1 GSL hereby grants to HDTan exclusive world-wide licence during the
Term to:
(a) use the Patents, and the Copyright and use the Technical
Information owned or under the control of any member of the GSL
Group and use any GSL Improvements; and
27
(b) manufacture and sell products made using the Patents, the
Copyright and using the Technical Information owned or under
the control of any member of the GSL Group or using any GSL
Improvements;
in each case within the scope of the Exclusive Field anywhere in the
Territory. GSL shall effect the necessary licences or assignments by
other members of the GSL Group to GSL to enable GSL to grant the
licence provided in this clause 2.1.
2.2 GSL hereby grants to HDT a sole world-wide licence during the Term to:
(a) use the Patent and the Copyright and use the Technical
Information owned or under the control of any member of the
GSL Group and use any GSL Improvements; and
(b) manufacture and sell products made using the Patent, the
Copyright and using the Technical Information owned or under
the control of any member of the GSL Group and using any GSL
Improvements;
in each case within the scope of the Sole Field anywhere in the
Territory. GSL shall effect the necessary licences or assignments by
other members of the GSL Group to GSL to enable GSL to grant the
licence provided in this clause 2.2.
2.3 The licences granted under clauses 2.1 and 2.2 contain no right to
grant sublicences save that HDT may grant sublicences to other members
of the HDT Group only.
2.4 HDT shall pay to GSL, in a manner requested by GSL, the sum of
$US20,000 as an advance against future royalties within thirty days of
completion of the Agreement between ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ and
ThermoQuest or any of its Subsidiaries for the sale and purchase of all
of the share capital of HDT.
2.5 Except as provided in clause 2.6, HDT shall pay to GSL a royalty of
US$2,000 on the eleventh and each subsequent Instrument (but not on the
first ten Instruments) sold or otherwise supplied for money or money's
worth by HDT or any other member of the HDT Group.
2.6 Royalties under clause 2.5 shall be due and payable in each country
within the Territory in which HDT or any other member of the HDT Group
shall sell or supply for money or money's worth or manufacture or have
manufactured Instruments until whichever shall be the later of:
(a) the expiry or lapse of all patents applied for or granted
pursuant to the Patent within such country within the
Territory;
(b) in respect of such part of the Territory where patents are not
registered or applied for pursuant to the Patent, or where all
such patents or patent applications have lapsed or been
withdrawn or have expired, the expiry of a period of 10 years
from the first sale or supply for money or
28
money's worth by HDT or any other member of the HDT Group
of an Instrument within such part of the Territory.
2.7 Payments due under clause 2.5 shall be made within 30 days of the end
of each calendar quarter in respect of royalties accruing on
Instruments invoiced in that calendar quarter.
2.8 Without prejudice to GSL's rights of termination under clause 6.2, if
any payment or any part thereof is overdue then HDT shall pay interest
thereon before and after judgment at an annual rate (but with interest
accruing on a daily basis) at 4 per cent above the base rate from time
to time of Barclays Bank Plc such interest to run from the date upon
which payment of such sum became due until payment thereof in full
together with such interest by HDT.
2.9 All sums due under this Agreement are exclusive of any Value Added Tax
which shall be payable in addition and GSL shall, where appropriate,
promptly provide a Value Added Tax invoice in the correct amount.
2.10 HDT agrees to keep true and accurate records and books of account
containing all data necessary for the determination of royalties
payable under clause 2.5 which records and books of account shall upon
reasonable notice by GSL be open at all reasonable times during normal
business hours for inspection by an independent accountant selected by
GSL and acceptable to HDT (which acceptance shall not be unreasonably
withheld or delayed) for the purpose of verifying the accuracy of HDT's
statements hereunder. The accountant may take copies of the records and
books of account but shall not disclose to GSL any information relating
to the business or affairs of HDT other than such information as
properly should have been contained in any statement required to be
furnished by HDT to GSL. GSL shall be solely responsible for the costs
of the accountant unless he certifies that any reports are inaccurate
by more than 5% in which event HDT shall promptly reimburse GSL for his
costs.
2.11 HDT shall submit to GSL within 30 days of the end of each calendar
quarter a statement setting forth with respect to the operations of HDT
hereunder during that period the quantity of Instruments sold and the
royalties payable.
2.12 GSL agrees to maintain confidential all financial information received
with respect to HDT's operations pursuant to the foregoing clauses 2.10
and 2.11 and not to use such information for purposes other than to
verify the amount of any licence fees payable under this Agreement.
2.13 GSL shall as soon as reasonably possible disclose to HDT any GSL
Improvements generated during the Term and such GSL Improvements shall
be licensed to HDT according to the provisions of clauses 2.1 and 2.2.
2.14 GSL hereby warrants, represents and undertakes that it is the legal and
beneficial owner of the Patent, the Copyright and the Technical
Information and that GSL has not licensed the Patent, the Copyright and
the Technical
29
Information to any other party for use within the Exclusive Field or
the Sole Field.
2.15 Subject to the provisions of clause 2.16, GSL hereby undertakes not
during the Term to license the Patent, the Copyright or the Technical
Information to any other party for use within the Exclusive
Field or the Sole Field provided that GSL shall itself be entitled to
exploit all of the aforesaid within the Sole Field within the Territory
during the Term.
2.16 If within two years of the date hereof HDT (or another member of the
HDT Group) has not been able to demonstrate to GSL's satisfaction that
HDT (or another member of the HDT Group) has a serious intention to
develop and commercially exploit the intellectual property licensed
under clauses 2.1 and 2.2 then GSL may forthwith by written notice make
each of the licences granted under clauses 2.1 and 2.2 non-exclusive
and GSL shall thereafter be free to:
(a) itself use and exploit the Patent, the Copyright and the
Technical Information within the Exclusive Field; and
(b) appoint other licensees of the Patent, the Copyright and the
Technical Information within the Sole Field and the Exclusive
Field.
In such event, HDT's obligation to pay royalties under clause 2.5 shall
nevertheless continue in full force and effect. For the purpose of this
clause "serious intention to develop and commercially exploit" shall
mean having implemented a fully up and running, ongoing development
programme and having constructed at least one prototype Instrument.
3 LICENCE BACK
3.1 HDT hereby grants to GSL a non-exclusive irrevocable, royalty-free,
world-wide licence for the Term (with the right to grant sublicences
within the GSL Group only) to use, exploit (including by manufacturing
and selling products) or deal in:
(a) any improvements made in the field of MALDI-TOF Spectrometry
by HDT or another member of the HDT Group to the Patent or the
Technical Information; HDT shall disclose all such
improvements to GSL as soon as reasonably possible as and when
they arise; and
(b) any intellectual property in the field of MALDI-TOF
Spectrometry owned as at the date hereof or subsequently
generated by HDT or another member of the HDT Group in
relation to the Patent or the Technical Information; HDT shall
disclose all such intellectual property to GSL as soon as
reasonably possible as and when it arises.
30
3.2 HDT undertakes promptly to procure all licences or assignments to
HDT by other members of the HDT Group necessary for HDT to grant the
licences required under clause 3.1.
3.3 HDT may forthwith by written notice terminate the licence granted under
clause 3.1 if GSL uses, exploits or applies the improvements and/or the
intellectual property licensed in clause 3.1 outside the scope of the
field of MALDI-TOF Spectrometry. In such event GSL shall promptly
return to HDT all HDT and HDT Group confidential information and all
documentation (whether hard copy or electronic) evidencing the
intellectual property licensed under clause 3.1.
4. CONFIDENTIALITY
4.1 Each party agrees to maintain secret and confidential all confidential
information obtained from the other both pursuant to this Agreement
(including any Technical Information which is secret or confidential)
and prior to and in contemplation of it and all other information that
it may acquire from the other, to use the same exclusively for the
purposes of this Agreement, and to disclose the same only to those
employees, agents, representatives and contractors pursuant to this
Agreement (if any) to whom and to the extent that such disclosure is
reasonably necessary for the purposes of this Agreement.
4.2 The foregoing obligations of clause 4.1 above shall not apply to
confidential information or other information which:
(a) prior to receipt thereof from one party was in the possession
of the recipient party and at its free disposal;
(b) is subsequently disclosed to the recipient party without any
obligations of confidence by a third party who has not derived
it directly or indirectly from the disclosing party; or
(c) is or becomes generally available to the public through no act
or default of the recipient party or its agents or employees.
4.3 The obligation of confidentiality contained in this clause 4 shall last
for the Term and continue without limitation in time thereafter.
5. PATENTS AND OTHER INTELLECTUAL PROPERTY
5.1 GSL shall at its own cost use reasonable endeavours to diligently
prosecute to grant all patent applications within the Patent in at
least the Major Countries and so as to secure the broadest monopoly
reasonably obtainable consistent with avoiding serious prejudice to the
validity of such granted patents and to maintain all such patents
granted in respect of the Patent in force for the full term thereof.
Notwithstanding the foregoing, GSL shall not be absolutely obliged to
take such action as may be necessary to defend any claim by any third
party challenging the validity of the Patent or the Technical
Information
31
Provided Always that in the event that GSL refrains from such action
within four weeks of a request by HDT to take such action HDT as
licensee hereunder shall be entitled at its own cost and expense to
maintain and defend such Patent or Technical Information (insofar as it
relates to the Field) and in such circumstances GSL will provide HDT
with all such advice and assistance (subject to reimbursement of its
reasonable expenses) as may reasonably be required by HDT in connection
with the defence of the Patent (or the Technical Information). If HDT
takes such action, HDT shall bear all costs and expenses relating to it
and HDT will be entitled to all damages and other recoveries made as a
result of such action.
5.2 In the event that GSL shall not pursue further any application within
the Patent or shall not continue to maintain any patent from time to
time within the Patent, GSL shall notify HDT and shall if so requested
promptly assign all rights it may have therein to HDT and HDT may elect
to take over the pursuit of any such application or maintenance of any
such granted patents and pay for all consequent expenditure itself. If
HDT does so elect it shall inform GSL of that decision in writing.
Thereafter, as long as HDT keeps up such pursuit/maintenance (as
applicable) HDT shall not be obliged to pay to GSL any royalties in
respect of Instruments manufactured, sold or supplied in the part of
the Territory where it has assumed such pursuit/maintenance.
5.3 Each party shall notify the other promptly in the event that it becomes
aware of:
(a) any infringement or alleged infringement by any third party of
the rights in the other party's intellectual property within
any part of the Territory; or
(b) any allegation by any third party that the use and
exploitation of the other party's intellectual property
infringes any intellectual property rights of any such third
party in any part of the Territory;
and subsequently supply to the other party such detailed information
concerning any such infringement, alleged infringement or third party
allegation as may be available to it and extend such co-operation as
the other party shall reasonably request (at the other party's request)
in countering such infringement, alleged infringement or third party
allegation.
6 TERM AND TERMINATION
6.1 Subject as hereinafter provided in this clause 6.1 and in clause 6.2,
the Licence shall commence on the date hereof and shall continue in
force in perpetuity save that:
(a) in respect of all patents within the Patents: the Licence
shall continue in force in respect of each patent within the
Patent until such patent expires;
32
(b) in respect of all Technical Information licensed under this
Agreement: the licence shall continue in force until such
information is no longer secret or substantial; and
(c) in respect of all Copyright which is not secret or
substantial: the Licence shall continue in force in each
country of the Territory until expiry of the Copyright in such
country.
6.2 GSL may forthwith by written notice terminate the licence granted under
clauses 2.1 and 2.2 if:
(a) HDT or any sublicensee of HDT uses, exploits or applies the
Patent, the Technical Information, the Copyright or any GSL
Improvements outside the scope of the Field. In such event HDT
shall promptly return to GSL all GSL confidential information
and all documentation (whether hard copy or digital)
evidencing the intellectual property licensed under clauses
2.1 and 2.2; or
(b) without prejudice to any of its other rights under this
Agreement any undisputed sum due to GSL under clause 2.5
(including interest accrued under clause 2.8) remains unpaid
in full 30 days after receipt by HDT of written notification
that such sum is overdue for payment.
7. ASSIGNMENT
7.1 Neither party shall be entitled to assign or transfer its rights and
obligations under this Agreement (whether in whole or part) without the
other party's prior consent, unless such assignment or transfer is to a
member of the assigning party's Group.
8. NOTICES
8.1 All notices required to be served by the parties to this Agreement
under the terms hereof shall be sufficiently served if despatched by
first class post or by fax to the address or fax number of the
recipient party as set out below or such other address or fax number as
is notified pursuant to this clause 8:
HD Technologies Limited
▇▇-▇▇ ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇▇ ▇▇▇
Fax: ▇▇▇▇ ▇▇▇ ▇▇▇▇
33
cc. General Counsel
▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇
▇▇ ▇▇▇▇▇-▇▇▇▇
▇▇▇
Fax: ▇▇ ▇ ▇▇▇ ▇▇▇ ▇▇▇▇
Genomic Solutions Limited
▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇▇▇
▇▇▇▇ ▇▇▇
Fax: ▇▇▇▇▇ ▇▇▇▇▇▇
Provided That:
(a) if served by facsimile it will be deemed received when sent,
subject to issue of a valid transmission slip; and
(b) if served by first class post it will be deemed received 2 days
after posting.
9. CHOICE OF LAW AND JURISDICTION
9.1 Any controversy or claim of whatsoever nature arising out of or
relating in any manner whatsoever to this Agreement or any breach of
any terms of this Agreement shall be governed by and construed in
accordance with the Laws of England.
9.2 Each party hereby irrevocably acknowledges and agrees that the courts
of England shall have exclusive jurisdiction to resolve any controversy
or claim of whatsoever nature arising out of or relating in any manner
to this Agreement any terms of this Agreement or any breach of this
Agreement or any such terms.
IN WITNESS whereof this Agreement has been executed as a deed on the day and
year first before written.
34
ANNEXURE A
The following patent application
Filing No: PCT/GB99/02244
Filing Date: 13 07 1999
Applicant: Genomic Solutions Limited
Short Title: Improved Mass Spectrometer
Basic UK App: 9815457.8
35
/s/ P. ▇▇▇▇ ▇▇▇▇
EXECUTED and delivered as a deed ) ------------------------
by GENOMIC SOLUTIONS LIMITED ) Director
acting by its authorised officers ) /s/ ▇▇▇▇ ▇▇▇▇▇▇▇
------------------------
Director/Secretary
/s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
EXECUTED and delivered as a deed ) ------------------------
by H D TECHNOLOGIES LIMITED ) Director
acting by its authorised officers ) /s/ ▇▇▇▇▇ ▇▇▇▇▇
------------------------
Director/Secretary
36
[THERMOQUEST LETTERHEAD]
▇▇ ▇. ▇▇▇▇
Genomic Solutions Limited
▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇▇▇
▇▇▇▇ ▇▇▇
19 January, 2000
Dear ▇▇ ▇▇▇▇
COLLABORATION AGREEMENT BETWEEN GENOMIC SOLUTIONS LIMITED AND HEAVY DUTY
TECHNOLOGIES LIMITED DATED 16 APRIL 1998 ("AGREEMENT")
Masslab Limited ("Masslab") is considering purchasing all of the issued share
capital of H.D. Technologies Limited.
Masslab is happy to offer to Genomic Solutions Inc. the comfort that should
Masslab acquire all of the issued share capital of H.D. Technologies Limited,
then:
(1) Masslab shall and shall procure that H.D Technologies Limited, or any
Subsidiary (as defined in section 736 of the Companies Act 1985) of
ThermoQuest Corporation to which the Agreement is assigned or
transferred will carry out the obligations of H.D. Technologies Limited
under or pursuant to the Agreement; and
(2) Dr ▇▇▇▇▇▇▇ ▇▇▇▇▇ and Mr ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ shall be, so long as (a) they
are employees of ThermoQuest Corporation or any of its Subsidiaries;
and (b) the Agreement has not been terminated and has not expired; and
(c) the obligations described at (1) above have not been completed:
- at any given point in time employed by ThermoQuest Corporation or
such of its Subsidiaries which at the same time owns the business
of H.D. Technologies Limited; and
- primarily responsible for the carrying out of the obligations
described at (1) above.
(3) This comfort will be given in consideration for Genomic Solutions
Limited accepting and agreeing that:
(a) it irrevocably and absolutely waives all rights and claims
which it has or may in future have against H.D. Technologies
Limited, in respect of any failure up to the date of this
letter by H.D. Technologies Limited to achieve the Milestones
(as defined in the Agreement) on the dates specified for such
Milestones, including without limitation the right to withhold
or not make payments which would be payable save for such
failure; and
(b) agreeing that the Agreement shall be varied as follows:
(i) in Clause 7 (f) under "Due Date", the following words
shall be deleted:
"12 calendar months from Commencement Date"
and shall be replaced by the following words:
"31 March 2000".
(ii) adding at the end of Clause 11, the following:
"and provided always that this Agreement may be
assigned by HDTL to any Subsidiary (as defined in
section 736 of the Companies Act 1985) of
37
ThermoQuest Corporation without having first obtained
GSL's prior consent or approval in writing".
The above variations are to be read together with, and form an
integral part of, the Agreement.
In the event of any inconsistency between the terms of section
(3) of this letter and the Agreement, the terms of section (3)
of this letter shall prevail.
This letter is governed by English law and Genomic Solutions Limited and Masslab
Limited hereby submit to the exclusive jurisdiction of the English Courts.
Please confirm your acceptance of the terms of this letter by signing, dating
and returning the enclosed copy of this letter.
Yours sincerely
/s/ ▇▇ ▇. ▇▇▇▇▇▇▇▇
▇▇ ▇. ▇▇▇▇▇▇▇▇
for and on behalf of:
MASSLAB LIMITED
▇▇ ▇. ▇▇▇▇
Accepted for and on behalf of:
GENOMIC SOLUTIONS LIMITED
/s/ P. ▇▇▇▇▇▇▇▇ ▇▇▇▇
-------------------------------
Date:
--------------------------
2
38
[THERMOQUEST LETTERHEAD]
▇▇ ▇. ▇▇▇▇▇▇▇▇
Genomic Solutions Inc.
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇
19 January, ▇▇▇▇
▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇▇
CONTRACT MANUFACTURING AGREEMENT BETWEEN GENOMIC SOLUTIONS INC. AND HEAVY DUTY
TECHNOLOGIES LIMITED DATED 13 JULY 1999 ("AGREEMENT")
Masslab Limited ("Masslab") is considering purchasing all of the issued share
capital of H.D. Technologies Limited.
Masslab is happy to offer to Genomic Solutions Inc. the comfort that should
Masslab acquire all of the issued share capital of H.D. Technologies Limited,
then:
(1) Masslab shall and shall procure that H.D Technologies Limited, or any
Subsidiary (as defined in section 736 of the Companies Act 1985) of
ThermoQuest Corporation to which the Agreement is assigned or
transferred will carry out the obligations of H.D. Technologies Limited
under or pursuant to the Agreement; and
(2) Dr ▇▇▇▇▇▇▇ ▇▇▇▇▇ and Mr ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ shall be, so long as (a) they
are employees of ThermoQuest Corporation or any of its Subsidiaries;
and (b) the Agreement has not been terminated and has not expired; and
(c) the obligations described at (1) above have not been completed:
- at any given point in time employed by ThermoQuest Corporation or
such of its Subsidiaries which at the same time owns the business
of H.D. Technologies Limited; and
- primarily responsible for the carrying out of the obligations
described at (1) above.
(3) This comfort will be given in consideration for Genomic Solutions Inc.
accepting and agreeing that:
(a) it did not require delivery of three units of Product (as
defined in the Agreement) by December 15 1999 and Genomic
Solutions Inc. and waiving irrevocably and absolutely all
rights and claims which it have or may in future have against
H.D. Technologies Limited, in respect of any failure of H.D.
Technologies Limited to deliver three units of Product by
December 15 1999; and
(b) the Agreement shall be varied as follows:
(i) In Clause 4.1 the following words shall be deleted:
"three units of Product by December 15,
1999"
and shall be replaced by the following:
"two units of Product by 30 June, 2000".
(ii) The last sentence of Clause 1.3 shall be deleted and
be replaced with the following:
"Notwithstanding the foregoing, for the two
units due by 30 June 2000, the Purchaser
shall advance to the Manufacturer two (2)
separate payments of forty five thousand
(45,000) pounds Sterling, the first by the
end of December 1999 and the second by the
end of January 2000".
39
(iii) In Clause 11.5, after the words: "...which consent
may be withheld for any reason..." the following
words shall be added:
"save always that this Agreement may be
assigned by the Manufacturer to any
Subsidiary (as defined in section 736 of the
Companies Act 1985) of ThermoQuest
Corporation without having first obtained
the Purchaser's prior consent or approval in
writing".
The above variations are to be read together with, and form an
integral part of, the Agreement.
In the event of any inconsistency between the terms of section
(3) of this letter and the Agreement, the terms of section (3)
of this letter shall prevail.
This letter is governed by English law and Genomic Solutions Inc. and Masslab
Limited hereby submit to the exclusive jurisdiction of the English Courts.
Please confirm your acceptance of the terms of this letter by signing, dating
and returning the enclosed copy of this letter.
Yours sincerely
/s/ ▇▇ ▇. ▇▇▇▇▇▇▇▇
▇▇ ▇. ▇▇▇▇▇▇▇▇
for and on behalf of:
MASSLAB LIMITED
▇▇ ▇. ▇▇▇▇▇▇▇▇
Accepted for and on behalf of:
GENOMIC SOLUTIONS INC.
/S/ ▇▇ ▇. ▇▇▇▇▇▇▇▇
---------------------------------
Date:
----------------------------
40
[GENOMIC SOLUTIONS LOGO]
The Directors
HD Technologies Limited
▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇▇ ▇▇
25th January 2000
Dear Sirs
Further to disposal of our shareholding in the Company and in accordance with
the provisions of the Articles of Association of the Company we hereby give you
notice that ▇▇ ▇ ▇ ▇▇▇▇ is hereby removed as the Nominated Director as such term
is defined in a Subscription Agreement dated 16 April 1998 and made between our
Company (1), Genomic Solutions Inc (2), the Company (3) and we hereby
acknowledge that the Company has no further liability in respect of the
Nominated Director.
Yours faithfully
/s/ ▇▇▇▇ ▇▇▇▇▇▇▇
For and on behalf of
Genomic Solutions Limited
[GENOMIC SOLUTIONS LTD LETTERHEAD]
41
288b
[BOOKS ON SCREEN GRAPHIC(TM)]
Please complete in typescript,
or in bold black capitals.
CHFP021
RESIGNATION OF DIRECTOR OR SECRETARY
(NOT FOR APPOINTMENT (USE FORM 288A) OR CHANGE
OF PARTICULARS (USE FORM 288C))
COMPANY NUMBER 2916498
COMPANY NAME IN FULL H D TECHNOLOGIES LIMITED
RESIGNATION Day Month Year
FORM DATE OF RESIGNATION 25 01 2000
RESIGNATION AS ▇▇▇▇▇▇▇▇ ▇ as secretary [ ] Please ▇▇▇▇ the
appropriate box. If
resignation is as a
director and
secretary ▇▇▇▇ both
boxes.
NAME *Style/Title *Honours etc __________________
Please insert
details as Forename(s) ▇▇▇▇ ▇▇▇▇▇▇▇▇
previously
notified to Surname ▇▇▇▇
Companies House.
Day Month Year
*Date of Birth 05 06 1939
If cessation is other than
resignation, please state reason __________________________________________
A SERVING DIRECTOR, SECRETARY ETC MUST SIGN
THE FORM BELOW.
SIGNED /s/ ▇▇▇▇▇▇ ▇▇▇▇▇ DATE 25/1/00
(**serving director/secretary/administrator/
administrative receiver/receiver
* Voluntary details. manager/receiver)
+ Directors only.
** Delete as appropriate
Please give the name, address, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, PICKFORDS WHARF, CLINK STREET
telephone number and, if ▇▇▇▇▇▇, ▇▇▇ ▇▇▇
available, a DX number and REF: AYD Tel ▇▇▇▇ ▇▇▇ ▇▇▇▇
Exchange of the person Companies DX number 39904 DX EXCHANGE LONDON BRIDGE 5
House should contact if there
is any query.
Companies House receipt date When you have completed and signed the form
barcode please send it to the Registrar of Companies
at:
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇
DX ▇▇▇▇▇ ▇▇▇▇▇▇▇
for companies registered in England and Wales
OR
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇,
▇▇▇ ▇▇▇
42
[BEDFORD CORPORATE BUSINESS CENTRE LETTERHEAD]
[NATWEST LOGO]
20 December 1999
To: ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ FROM: ▇▇▇ ▇▇▇▇▇
______________________________________ __________________________________________________________________
Re: Genomic Solutions Limited
_______________________________________________________________________________________________________________
Number of sheets (including this sheet): 1 THIS MESSAGE IS SENT UNAUTHORISED
IN CONFIDENCE FOR RECIPIENTS MUST
THE ADDRESSEE ONLY. PRESERVE THIS
THE CONTENTS ARE NOT CONFIDENTIALITY AND
TO BE DISCLOSED TO SHOULD PLEASE ADVISE
ANYONE OTHER THAN THE SENDER
THE ADDRESSEE. IMMEDIATELY OF ANY
ERROR IN
TRANSMISSION.
Further to my telephone conversation with ▇▇▇▇▇▇ ▇▇▇▇▇▇▇'▇ secretary on 10th
December 1999 1 can advise you that having checked with our Securities Centre in
Nottingham, there are no shares held under the Mortgage Debenture dated
24.11.99.
/s/ S Glass
S Glass
Corporate Officer
43
FORM OF RELEASE
Debenture dated 24 November 1999 ("the Debenture") and made between Genomic
Solutions Limited (1) ("the Company") and White Pines Management LLC as
Security Trustee for and on behalf of the Lenders (2) pursuant to a Business
Loan Agreement dated 23 April 1999.
WHEREAS
1. By Clause 2 of the Debenture a fixed charge was created over the
stocks, shares and other securities of the Company in favour of the
Security Trustee on behalf of the Lenders;
2. The Company owns 300 Convertible Redeemable Preference Shares of Pound
Sterling each in the capitol of HD Technologies Limited ("HDT") a
private company incorporated in the United Kingdom;
3. The Company desires to dispose of the whole of its shareholding in
HDT and has requested a release of the said shareholding from the
fixed charge created by the Debenture
the Security Trustee on behalf of the Lenders hereby releases the shareholding
in HDT charged by the Debenture from all moneys secured by and from all claims
and demands under the Debenture
SIGNED AND DELIVERED
BY /s/ ▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
---------------------------------------
▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇, Chairman
FOR AND ON BEHALF OF WHITE PINES MANAGEMENT LLC
44
TRANSFER
FORM
(TRANSFER BY (Above this line for Registrars only)
COMPANY)
Certificate lodged with the Registrar
Consideration Money $300,000 (For completion by the Registrar/Stock Exchange)
NAME OF UNDERTAKING. H. D. TECHNOLOGIES LIMITED (No. 2916498)
DESCRIPTION OF SECURITY. Convertible Redeemable Preference Shares of Pound Sterling 1.00
NUMBER OR AMOUNT OF SHARES, Words Figures
STOCK OR OTHER SECURITY AND, One hundred and fifty
IN FIGURES COLUMN ONLY, (150 units of Pound Sterling l.00)
NUMBER AND DENOMINATION
OF UNITS, IF ANY.
NAME AND ADDRESS OF In the name(s) of
REGISTERED HOLDER SHOULD BE GENOMIC SOLUTIONS LIMITED (No. 2315315)
GIVEN IN FULL. R/O ▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇
▇▇▇▇ ▇▇▇
We hereby transfer the above security out of the name(s) aforesaid to the Stamp of Selling Broker(s) or, for transactions
person(s) named below. which are not stock exchange transactions of
Agent(s), if any, acting
for the Transferor(s)
Signed by GENOMIC SOLUTIONS LIMITED
...............................................
.........................................................
acting by: /s/ P. ▇▇▇▇▇▇▇▇ ▇▇▇▇
......................................................... Director
/s/ ▇▇▇▇ ▇▇▇▇▇▇▇
......................................................... Director/Secretary
(DELETE AS APPROPRIATE) Date 25/1/00
......................................
FULL NAME(S). FULL POSTAL ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇
ADDRESS(ES)(INCLUDING COUNTY 8 Flash Lane
OR, IF APPLICABLE, POSTAL Bollington
DISTRICT NUMBER) OF THE Macclesfield
PERSON(S) TO WHOM THE Cheshire
SECURITY IS TRANSFERRED. SK10 5AQ
PLEASE STATE TITLE, IF ANY, OR
WHETHER MR. MRS. OR MISS.
PLEASE COMPLETE IN TYPE
OR IN BLOCK CAPITALS.
I/We request that such entries be made in the register as are necessary to give
effect to this transfer.
STAMP OF BUYING BROKER(S) (IF ANY). STAMP OR NAME AND ADDRESS OF
PERSON LODGING THIS FORM
(IF OTHER THAN THE
BUYING BROKER(S)).
45
TRANSFER
FORM
(TRANSFER BY (Above this line for Registrars only)
COMPANY)
Certificate lodged with the Registrar
Consideration Money $300,000 (For completion by the Registrar/Stock Exchange)
NAME OF UNDERTAKING. H. D. TECHNOLOGIES LIMITED (No. 2916498)
DESCRIPTION OF SECURITY. Convertible Redeemable Preference Shares of Pound Sterling 1.00
NUMBER OR AMOUNT OF SHARES, Words Figures
STOCK OR OTHER SECURITY AND, One hundred and fifty
IN FIGURES COLUMN ONLY, (150 units of Pound Sterling l.00)
NUMBER AND DENOMINATION
OF UNITS, IF ANY.
NAME AND ADDRESS OF In the name(s) of
REGISTERED HOLDER SHOULD BE GENOMIC SOLUTIONS LIMITED (No. 2315315)
GIVEN IN FULL. R/O ▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇
▇▇▇▇ ▇▇▇
We hereby transfer the above security out of the name(s) aforesaid to the Stamp of Selling Broker(s) or, for transactions
person(s) named below. which are not stock exchange transactions of
Agent(s), if any, acting
for the Transferor(s)
Signed by GENOMIC SOLUTIONS LIMITED
...............................................
.........................................................
acting by: /s/ P. ▇▇▇▇▇▇▇▇ ▇▇▇▇
......................................................... Director
/s/ ▇▇▇▇ ▇▇▇▇▇▇▇
......................................................... Director/Secretary
(DELETE AS APPROPRIATE) Date 25/1/00
......................................
FULL NAME(S). FULL POSTAL ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇
ADDRESS(ES)(INCLUDING COUNTY ▇▇ ▇▇▇▇▇ ▇▇▇▇
OR, IF APPLICABLE, POSTAL Didsbury
DISTRICT NUMBER) OF THE Manchester
PERSON(S) TO WHOM THE M20 2Q1
SECURITY IS TRANSFERRED.
PLEASE STATE TITLE, IF ANY, OR
WHETHER MR. MRS. OR MISS.
PLEASE COMPLETE IN TYPE
OR IN BLOCK CAPITALS.
I/We request that such entries be made in the register as are necessary to give
effect to this transfer.
STAMP OF BUYING BROKER(S) (IF ANY). STAMP OR NAME AND ADDRESS OF
PERSON LODGING THIS FORM
(IF OTHER THAN THE
BUYING BROKER(S)).
46
CONTRACT MANUFACTURING AGREEMENT
This contract manufacturing agreement (the "Agreement") is made as of this
13th day of July, 1999, by and between HD Technologies, Ltd. (the
"Manufacturer") with offices at ▇▇-▇▇ ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇
▇▇▇, ▇▇▇▇▇▇▇ and Genomic Solutions Inc., a Delaware corporation with offices at
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ (the "Purchaser").
WHEREAS, the manufacturer develops and manufactures mass spectrometers;
WHEREAS, the Purchaser and Manufacturer have entered into an agreement
whereby the Manufacturer is designing and developing a MALDI-TOF mass
spectrometer (the "Product") for the Purchaser;
WHEREAS, the Purchaser desires to have the Manufacturer manufacture the
Product, and the Manufacturer desires to manufacture and sell the Product to
the Purchaser;
NOW, THEREFORE, in consideration of the premises and the mutual agreements
and covenants hereinafter set forth, the parties hereto agree as follows:
1. MANUFACTURE AND SALE OF THE PRODUCT.
1.1 General. Subject to the terms and conditions of this
Agreement, the Manufacturer shall manufacture and test the Product for the
Purchaser in accordance with the attached product specifications (the "Product
Specifications") and this Agreement. The Purchaser shall purchase, accept
delivery of and pay for all such ordered Product which the Manufacturer shall so
manufacture and deliver to the Purchaser in accordance with the requirements
for manufacture and delivery of Product in the applicable Purchase Order and
this Agreement.
1.2 Changes to Specifications. If the Purchaser wishes to change
the Product Specifications used to manufacture the Product or any part thereof,
the Purchaser shall notify the Manufacturer in writing and the Manufacturer
shall provide a quote for additional design work and manufacturing required to
modify the existing Product for the production of Product according to the
amended Product Specifications. The Manufacturer shall not be obliged to
commence the additional work required until the additional price for such work
and terms of payment thereof have been agreed in writing by both parties.
1.3 Raw Materials. The Manufacturer shall order and purchase
all raw materials for the manufacture of the Product in an expeditious manner
after the receipt of a Purchase Order from Purchaser. Purchaser shall
provide Manufacture a cash advance of forty five thousand (45,000) pounds
Sterling to cover the raw material costs for each unit of Product ordered on
the Purchase Order within thirty days of submitting the Purchase Order to the
Manufacturer. Notwithstanding the forgoing, for the next three
1
47
units, the Purchaser shall advance to the Manufacturer three (3) separate
payments of forty five thousand (45,000) pounds Sterling each by the end of
July, August and September of 1999.
2. ROLLING FORECAST. The Purchaser's estimate of its requirement for the
Product during the twelve months following the Effective Date (as hereinafter
defined) is set forth in Exhibit B hereto. The Purchaser shall thereafter
provide to the Manufacturer a forecast covering its requirements for Products to
be delivered during each subsequent twelve (12) month period. The parties
acknowledge and agree that the forecasts provided pursuant to this Section 2 are
solely intended to aid the Manufacturer in marking preparations to timely
provide the Purchaser with the ordered quantity of Products.
3. RELATIONSHIP OF PARTIES. This Agreement shall not constitute either
party the agent or legal representative of the other party for any purpose
whatsoever, and neither party shall hold itself out as an agent of the other
party. This Agreement creates no relationship of joint venturers, partners,
associates, employment or principal and agent between the parties, and both
parties are acting as independent contractors. Neither party is granted herein
any right or authority to, and shall not attempt to, assume or create any
obligation of responsibility or make any representation for or on behalf of
the other party.
4. TERMS OF PURCHASE ORDERS AND SALES.
4.1 Terms to Govern. This Agreement shall govern all orders
for Product by the Purchaser and sales of Product by the Manufacturer to the
Purchaser. Any different, conflicting or additional terms (other than terms as
to quantities and proposed delivery dates) in any Purchaser Order or other
writing from the Purchaser shall be of no force or effect unless they shall
constitute a waiver, modification or amendment of this agreement duly made in
accordance with Section 11.4. Each Purchase Order shall specify a quantity and
delivery date and shall be faxed or sent by overnight mail to the Manufacturer
not less than 18 weeks prior to the requested date of delivery. Notwithstanding
the foregoing, the Manufacturer shall make a reasonable best effort to deliver
three units of Product by December 15, 1999.
4.2 Purchase Orders. The Purchaser shall forward all Purchase
Orders to the Manufacturer at its office in Manchester, England. A Purchase
Order shall be deemed accepted if not rejected within five (5) business days
after it is sent by the Purchaser.
4.3 Shipment, Delivery and Title. All products will be
tendered and shipped F.O.B. the Manufacturer's factory. The Purchaser will
select the method of delivery and carrier and pay the cost thereof. The
Manufacturer will not be deemed to assume any liability in connection with any
shipment because of the selection of a carrier. Title and risk of loss or damage
to each of the Products will pass to the Purchaser when delivery is made to the
possession of a carrier or the Purchaser, whichever occurs first. Claims in
relation to Product damaged in transit shall be reported by the Purchaser to the
carrier, if any, upon the receipt of the Product by the Purchaser.
Nothwithstanding the foregoing, Manufacturer shall be responsible for properly
packaging and crating the
2
48
Product for shipment.
4.4 Price. The price to be paid for each unit of Product by
the Purchaser to the Manufacturer shall be sixty five thousand (65,000) pounds
Sterling. This price shall be offset by any advances provides to Manufacturer
for the purchase of raw materials. Nothwithstanding the foregoing, both
parties agree the intent of this Agreement is for the Purchaser to pay the
Manufacturer a fee of twenty thousand (20,000) pound Sterling for the
manufacture and test of each unit of Product. Therefore, based on current
estimates of 45,000 pounds per unit for raw material costs, the price at which
Manufacturer will sell product to Purchaser (hereafter the "Transfer Price")
has been preliminarily set at 65,000 pounds. Both parties agree to adjust the
Transfer Price as necessary to maintain the fee per unit paid by the Purchaser
to the Manufacturer for manufacture and test at 20,000 pounds Sterling.
4.5 Terms of Payment. Terms of payment for Products will be
upon receipt of Product and the invoice from the Manufacturer by the
Purchaser.
5. WARRANTIES, TECHNICAL SUPPORT AND TRAINING.
5.1 Limited Warranty. The Manufacturer warrants to the Purchaser
that each Product manufactured and tested by it shall be free from defects in
workmanship and materials in normal use and service for a period of thirteen
(13) months from the date of delivery to the Purchaser. Manufacturer further
warrants that each unit of Product shall be manufactured substantially in
accordance with the Manufacturer's customary procedures for such manufacture and
the applicable Product Specification. If any Product covered by this warranty
should cease to operate within Product Specifications within the warranty period
set forth above, then Manufacturer shall repair or replace any defective part
and provide technical advise and assistance to representatives of Purchaser or
Purchaser's customer via phone, fax, or e-mail, or in person at the
Manufacturer's offices at no charge to the Purchaser. The foregoing
notwithstanding, the Manufacturer will not be responsible for damage to any
product resulting from misuse, negligence or accident or resulting from repairs
or alterations made by any person or firm other than the Manufacturer or a
trained service representative of the Purchaser.
5.2 Training. Manufacturer agrees to provide up to three (3)
weeks of technical and service training for up to four (4) representatives of
the Purchaser at the Manufacturer's offices. All travel, lodging, and related
costs shall be born by the Purchaser.
6. INTENTIONALLY OMITTED
7. TERM. This Agreement shall become effective on the date hereof (the
"Effective Date") and shall continue for a term of three (3) years, unless
terminated prior to the expiration of this term in accordance with this
Agreement. This Agreement shall automatically renew for successive three (3)
year periods unless terminated in accord with paragraph 8.1.
3
49
8. TERMINATION OF AGREEMENT.
8.1 Termination. The Purchaser and the Manufacturer shall
each have the right to terminate this Agreement upon the giving of at least
twelve (12) months prior written notice to the other party. In the event of any
termination of this Agreement, the Manufacturer shall return to the Purchaser
all unconsumed raw materials, all finished Product, and all designs, drawings,
notes, technical documentation or other supporting documentation related to the
design, development, manufacture or testing of the Product. Purchaser shall pay
within thirty (30) days all monies owed Manufacture for invoices received by
the Purchaser or labor related to work in progress for the Product.
8.2 Bankruptcy, etc. Either party upon written notice to the
other party may terminate this Agreement at any time in the event the other
party shall make any assignment or trust mortgage for the benefit of its
creditors, or shall file a voluntary petition under the bankruptcy,
reorganization, insolvency, or similar laws of any jurisdiction to which it is
subject, or shall suffer an involuntary petition under such laws to be filed
against it, or shall be adjudicated bankrupt or insolvent, or have an order for
relief in bankruptcy entered concerning it, under the laws of any jurisdiction
to which it is subject.
9. NOTICES. Any Notice or other communication in connection with this
Agreement shall be in writing and shall be deemed to be duly delivered if
addressed as provided below and if sent by certified or registered air mail,
postage prepaid, return receipt requested, or by Federal Express or other
express courier service, or by hand delivery, addressed as follows:
(a) If to the Manufacturer:
HD Technologies Ltd.
▇▇-▇▇ ▇▇▇▇▇ ▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇
▇▇▇▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
(b) If to the Purchaser:
Genomic Solutions Inc.
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
Or to such other address as the addressee shall have specified in a notice
actually received by the addressor.
10. LICENSE AND INTELLECTUAL PROPERTY.
4
50
10.1 License Grant to the Manufacturer. The Purchaser grants to
the Manufacturer a non-exclusive, royalty-free license to use the Purchaser's
trade marks in relation to the Products and all copyrights, patents, patent
applications, know-how, design rights, trade secrets, confidential information,
proprietary information and other rights (together "Proprietary Information")
necessary for the manufacture and testing of the Products. Use of Purchaser's
Proprietary Information shall be limited to the manufacturing of Products for
the Purchaser.
10.2 Confidentiality. In, order to facilitate the purpose of
this Agreement, either party (the "Disclosing Party") may, but shall not be
obligated to, disclose certain confidential information to the other party (the
"Receiving Party"). The information may be disclosed orally, in writing, on
film, on magnetic media, or in some other form (the "Information").
Information may include, but is not limited to, some or all of the following:
technical specifications, computer programming techniques, software,
documentation, product plans, business plans, customer lists and information,
and financial, marketing or sales data. Dissemination of the Information by the
Receiving Party shall be limited to the Receiving Party's employees who have a
need to know and who shall be notified of the provisions of this Agreement. The
foregoing notwithstanding, information will not constitute Information, and the
Receiving Party will have no obligation to the Disclosing Party with respect to
such information, if:
(a) Such information is or becomes publicly known or otherwise enters the
public domain through no wrongful act of the Receiving Party;
(b) Such information is received by the Receiving Party from a third party
which has no obligation to the Disclosing Party to maintain it in
confidence;
(c) Such information is required to be disclosed by law or any legal order.
10.3 No Other Licenses. This Agreement shall not be construed to
grant any license to either Party to use any trademark in any manner or to grant
any other licenses between the parties except that license granted in Section
10.1 hereof.
11. GENERAL.
11.1 Survival of Provisions. The provisions of Section 5, 6, 10.2
and this Section 11.1 shall survive the expiration or earlier termination of
this Agreement for any reason.
11.2 Prior Agreements. This Agreement (including, without
limitation, the Exhibits hereto) contains the entire agreement between the
parties concerning the subject hereof and supersedes all prior agreements and
understandings, written or oral, between them concerning such subject matter.
11.3 Non-Waiver and Amendment. This Agreement and the warranties,
representations and agreements contained herein may not be waived, modified or
amended, in whole or in part, except by written agreement executed by authorized
officers of the two parties, and no course of dealing or failure or delay shall
constitute a
5
51
waiver hereunder.
11.4 Severability. If any provision of this Agreement or any part
thereof shall be found to be invalid, illegal or otherwise unenforceable by a
court of competent jurisdiction, such provision shall to such extent be deemed
null and void and severed from this Agreement, and the remainder of the
Agreement shall remain in full force and effect.
11.5 Assignment and Benefits. Neither this Agreement nor any
interest in it shall be assigned directly or indirectly by either party without
the prior written consent of the other party, which consent may be withheld for
any reason. This Agreement shall be binding upon, and inure to the benefit of,
the parties hereto and their respective legal representatives, successors and
permitted assigns.
IN WITNESS WHEREOF, the parties hereto have entered into this
Agreement as a contract under seal as of the date first above written.
The Purchaser: The Manufacturer:
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇
--------------------------------- -------------------------
Title: President & CEO Title Director
Date: July 19, 1999 Date: July 13, 1999
6
52
Exhibit A
Product Specifications
OVERALL DIMENSIONS: 1845 mm wide x 760 mm deep x 1295 mm High
free standing unit
MASS RESOLUTION: >15000 (FWHM) detector 3, Neurotensin
SENSITIVITY: 10 femtomoles Neurotensin, gives S/N > 20:1
MASS ACCURACY: +/- 10 ppm (Av 6 measurements) at m/z -1000
AUTO LOADER: 5 sample slide capacity cassette mechanism
with loading robot arm
7
