EXHIBIT 10.34
CONFIDENTIAL PORTIONS HAVE BEEN OMITTED BASED UPON A REQUEST
FOR CONFIDENTIAL TREATMENT PURSUANT TO RULE 24b-2 OF THE
SECURITIES EXCHANGE ACT OF 1934 AND HAVE BEEN SEPARATELY FILED
WITH THE COMMISSION.
EXECUTION COPY
CO-EXCLUSIVE LICENSE AND SUPPLY AGREEMENT
THIS CO-EXCLUSIVE LICENSE AND SUPPLY AGREEMENT (this "Agreement") is
made and entered into as of the 4th day of November 2002 (the "Effective Date"),
between EPOCH BIOSCIENCES, INC., a Delaware corporation ("Epoch"), and QIAGEN
NV, a Netherlands corporation ("Qiagen"). Epoch and Qiagen may each be referred
herein individually as a "Party," or collectively as the "Parties."
R E C I T A L S
A. Qiagen develops, manufactures, markets, distributes and sells
proprietary instruments and reagents used to perform genomic analysis.
B. Epoch wishes to supply MGB Eclipse Probes and Epoch Primers (each as
hereinafter defined) with respect to the Products (as hereinafter defined), and
grant certain licenses to Qiagen with respect thereto on a co-exclusive basis on
the terms and subject to the conditions set forth in this Agreement, and Qiagen
is willing to purchase MGB Eclipse Probes and Epoch Primers as hereinafter set
forth.
A G R E E M E N T
NOW, THEREFORE, in consideration of the foregoing, and for other good
and valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, on the terms and subject to the conditions set forth herein, the
parties hereby agree as follows:
1. DEFINITIONS. When used herein, the following capitalized terms shall have the
following meanings:
"AFFILIATE" shall mean any company or entity controlled by, controlling,
or under common control with a Party hereto. For purposes of the foregoing,
"control" shall mean the direct or indirect ownership of fifty percent (50%) or
more of the subject entity's voting stock (or other comparable ownership
interest for an entity other than a corporation) or the equivalent power to
direct the management or policies of such company or entity. If a country does
not permit a foreign entity to own 50% or more of an entity organized under the
laws of that country, "control" shall mean the maximum ownership permitted by
the law of such country.
"AGREEMENT" has the meaning set forth in the preamble.
[*]
"BATCH" shall mean an MGB Eclipse Probe designed for a specific gene
target, each synthesized on a [*] or [*]scale, with respect to a specific
Catalogue Probe Set.
"CHANGE OF CONTROL" shall mean, with respect to a Party, either (a) a
sale of all or substantially all of such Party's assets or business to which
this Agreement relates, (b) a merger or consolidation in which such Party's
corporate entity is not the surviving corporation (other than a merger or
consolidation effected solely in connection with the reincorporating of such
Party's corporate entity), or (c) a transaction or series of transactions
leading to a change in voting control of more than fifty percent (50%) of such
Party's outstanding voting securities (other than by reason of the sale of
voting securities in one or more registered public offerings of such
securities).
"CATALOGUE PROBE SET" means a product listed in a Qiagen product
catalogue, and maintained in Qiagen's inventory, which includes an MGB Eclipse
Probe designed by Qiagen to measure the expression level of specific target
gene, pre-validated with synthetic, genomic or copy DNA, and supplied to
Qiagen's customers. Catalogue Probe Sets shall include:
(i) stock products; (x) which are designed by Qiagen, (y) for which the
MGB Eclipse Probe is then made by Epoch, and (z) which are then put into
inventory by Qiagen and listed in its product catalogue,
(ii) pre-designed products; (x) which are designed by Qiagen and listed
in its product catalogue, (y) for which the MGB Eclipse Probe is then
made by Epoch upon a customer order to Qiagen, and (z) which are then
put into inventory by Qiagen, and
(iii) designed products; (x) which are designed by Qiagen upon request
from a customer of Qiagen, (y) for which the MGB Eclipse Probe is then
made by Epoch, and (z) which are then put into inventory by Qiagen and
listed in its product catalogue.
Notwithstanding the foregoing, the above description is not intended to
preclude Qiagen from listing Catalogue Probe Sets in promotional material that
is equivalent to Qiagen's product catalogue.
Orders for Epoch's MGB Eclipse Probes with respect to Catalogue Probe
Sets shall be filled by Epoch in bulk form (manufactured at either a [*] or [*]
scales) and shipped to Qiagen for aliquotting and packaging as hereinafter
described. The Catalogue Transfer Price for such MGB Eclipse Probes with respect
to Catalogue Probe Sets (for [*] and [*] scales) is attached hereto as Exhibit
A. Additional products may be designated as Catalogue Probe Sets from time to
time in accordance with Section 5.1 hereof. Catalogue Probe sets shall have a
minimum yield of [*] probe and [*] of each primer based upon a [*] synthesis
scale. Catalogue Probe sets shall have a minimum yield of [*] probe and [*] of
each primer based upon a [*] synthesis scale.
"CATALOGUE ROYALTIES" shall have the meaning set forth in Section
4.1(b).
"CATALOGUE TERM" shall mean the period of time beginning upon the
Effective Date and ending upon the date of expiration of the last to expire
issued patent owned by Epoch (excluding patents under
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* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
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license to Epoch) listed on Part III of Exhibit B as of the Effective Date (and
excluding any division, continuation, or continuation-in-part thereof), but
subject to earlier termination in accordance with Section 14.2.
"CATALOGUE TRANSFER PRICE" shall have the meaning set forth in Section
4.1(b).
"COMMERCIAL LAUNCH" shall have the meaning set forth in Section 8.4.
"CONFIDENTIAL INFORMATION" has the meaning set forth in Section 12.1.
"CUSTOM PROBE SET" means an MGB Eclipse Probe, designed to measure the
expression level of a specific target gene with a probe sequence designed by the
customer and determined using the MGB Eclipse Software. Orders for Epoch's MGB
Eclipse Probes with respect to Custom Probe Sets shall be filled by Epoch and
shipped to Qiagen for packaging, at [*], [*] or [*] yield, or any other yield
proposed by Qiagen and agreed to by Epoch, such agreement to not be unreasonably
withheld.
"CUSTOM TERM" shall have the meaning set forth in Section 14.1.
"EPOCH" has the meaning set forth in the preamble.
"EPOCH BLOCKING PATENTS" means any additional patents issued after the
Effective Date with respect to patent applications of Epoch pending as of the
Effective Date anywhere in the Territory, which issued patents are owned by
Epoch, and which would be infringed as a direct result of Qiagen's continued use
of the inventions described in the issued patents listed on Part III of Exhibit
B as of the Effective Date, in Qiagen's manufacture, use or sale of Products
after the expiration of the Catalogue Term in accordance with the terms of this
Agreement.
"EPOCH MARKS" means any and all trademarks, trade names, service marks,
service names, logos and similar proprietary rights owned, controlled or
licensed, or adopted from time to time, by Epoch and used in connection with the
marketing, distribution and sale of the Products.
"EPOCH PRIMERS" means primers for use in conjunction with MGB Eclipse
Probes which may be designed or selected using the MGB Eclipse Software, and
which may include certain of Epoch's proprietary modified bases.
"EVALUATION PROBE SETS" shall have the meaning set forth in Section
4.1(c).
"FIELD" means the use of MGB Eclipse Probes solely for real-time
measurement of gene expression for Research Use Only (as hereinafter defined),
and specifically excluding: (i) any human or animal diagnostic uses, (ii) any
use in Patient Management, (iii) any industrial (including food industry)
testing, (iv) any forensic testing, (v) any environmental testing (including
bio-terrorism and bio-warfare), and (vi) any use of the MGB Eclipse Probes to
provide services of any kind.
"FTE" OR "FULL-TIME EQUIVALENT" means the services of a person suitably
qualified for the designated task for a period of one thousand eight-hundred and
fifty (1,850) hours on an annualized basis.
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* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
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"MANUFACTURING COST" means the fully-burdened cost and expense incurred
in the manufacture of a product, determined using Epoch's customary practices
and procedures for like products in accordance with United States generally
accepted accounting principles ("GAAP"), and which includes, without limitation,
the following: direct material cost, material overhead cost, direct labor cost,
fixed manufacturing overhead cost, variable manufacturing overhead cost, and
manufacturing variance cost.
"MGB ECLIPSE PROBE" shall mean an oligonucleotide hybridization probe
containing a minor groove binder proprietary to Epoch and a quencher proprietary
to Epoch at the [*] end of the oligonucleotide and a fluorescent dye at the [*]
end of the oligonucleotide, without primers or buffers.
"MGB ECLIPSE SOFTWARE" means Epoch's computer software which provides a
means to choose oligonucleotides for DNA and RNA based laboratory methods, as
more fully described in the MGB Eclipse Software License.
"MGB ECLIPSE SOFTWARE LICENSE" shall have the meaning set forth in
Section 6.1.
"NET SALES" shall mean the sales price invoiced on sales of Products by
Qiagen to non-Affiliate third parties, less the following deductions to the
extent actually incurred with respect to such Products: (a) amounts for claims,
allowances or credits for returns, retroactive price reductions, or chargebacks;
(b) freight, postage, shipping, customs duties and insurance charges, (c) all
sales use, excise, value-added or similar taxes, measured by the billing amount
when included in billing, (d) normal and customary trade, cash and quantity
discounts, allowances, rebates and credits (not to exceed [*] percent ([*]%) of
invoiced sales for a calendar quarter), and (e) uncollected amounts to the
extent not exceeding [*] percent ([*]%) of invoiced sales for a calendar
quarter. Notwithstanding the foregoing, in the event that a Party determines in
its sole discretion that it is impractical for it to calculate the above
deductions from the Net Sales with respect to a given Product, such Party may,
calculate Net Sales by reducing the gross invoiced (which invoice shall have
included the items in subsections (b) and (c) above) sales attributable to such
Product by [*] percent ([*]%) exclusive of value added or similar taxes measured
by reference to the amount billed. Any such election shall apply to the full
period for which Net Sales are reported to such Product.
"PATENT RIGHTS" shall mean the patents owned by Epoch or licensed to
Epoch (with a right to sublicense), listed on Part III of Exhibit B as of the
Effective Date, and all foreign counterparts thereof, and any Epoch Blocking
Patents.
"PATIENT MANAGEMENT" shall mean using the results of any testing with
any Product in making therapeutic or treatment decisions for a patient.
"PERSON" means any natural person or any corporation, partnership,
limited liability company, business association, joint venture or other entity.
"PRIMARY PRODUCT TECHNICAL SERVICES" means the provision of personnel to
provide assistance to customers of the Custom Probe Sets seeking technical
assistance in the use of the Custom Probe Sets, via telephone, email or similar
remote means.
"PRODUCTS" means Custom Probe Sets and/or Catalogue Probe Sets and shall
exclude [*] and Evaluation Probe Sets.
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* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
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"PRODUCT DELIVERABLES" shall mean MGB Eclipse Probes with respect to
Catalogue Probe Sets, Evaluation Probe Sets and Custom Probe Sets and Epoch
Primers relevant to the foregoing.
"QIAGEN" has the meaning set forth in the preamble. Any references to
Qiagen shall include Qiagen's Affiliates as appropriate.
"QIAGEN MARKS" means any and all trademarks, trade names, service marks,
service names, logos and similar proprietary rights owned, controlled or
licensed, or adopted from time to time, by Qiagen and used in connection with
the marketing, distribution and sale of the Products.
"RESEARCH USE ONLY" shall mean only for research and development
applications within the life sciences field (including without limitation, drug
discovery, drug development, medical research, fermentation research and
agricultural research), but expressly excluding any research where the results
of any test or assay are used for Patient Management.
"SECONDARY PRODUCT TECHNICAL SERVICES" means the provision of personnel
to provide additional technical support via telephone, email or similar means,
with respect to specific problems that the Primary Product Technical Services
personnel were unable to resolve on behalf of the customers of the Custom Probe
Sets using commercially reasonable best efforts in conformity with industry
standards.
"SIMILAR PRODUCTS" shall mean products containing MGB Eclipse Probes.
"SUGGESTED RETAIL PRICE" shall have the meaning set forth in Section
4.1(a).
"TERRITORY" means the entire world.
"VALID CLAIM" shall mean an unexpired claim of an issued patent of the
Patent Rights which has not been held unenforceable, unpatentable, or invalid by
a decision of a court or other governmental agency of competent jurisdiction,
unappealed within the time allowed for appeal or unappealable, and which claim
has not been admitted to be invalid or unenforceable through reissue,
reexamination, disclaimer or otherwise.
2. SUPPLY AND LICENSE RIGHTS.
2.1 CO-EXCLUSIVE SUPPLY. During the Custom Term, Epoch agrees to supply
to Qiagen, in accordance with the terms hereof, MGB Eclipse Probes with respect
to Custom Probe Sets, and relevant Epoch Primers, and during the Catalogue Term,
Epoch agrees to supply to Qiagen, in accordance with the terms hereof, MGB
Eclipse Probes with respect to Catalogue Probe Sets, and relevant Epoch Primers,
and Qiagen agrees to purchase from Epoch, all of its requirements of Product
Deliverables for packaging, marketing, distribution and sale of Custom Probe
Sets (during the Custom Term) and Catalogue Probe Sets (during the Catalogue
Term) for use in the Field in the Territory.
2.2 RESERVED RIGHTS OF EPOCH.
(a) CO-EXCLUSIVE RIGHT. Epoch shall have a right to appoint or
may have already appointed one additional third party as either Epoch's
co-exclusive distributor and/or licensee to market, distribute and sell Similar
Products in the Field in the Territory. The third party may market, promote,
sell and distribute under its label products substantially similar to Custom
Probe Sets, and other Epoch products, including those which measure the
expression levels of the same gene as any Catalogue Probe
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Set (provided that Epoch agrees that, notwithstanding any other provision of
this Agreement, if it manufactures catalogue products in the Field for itself or
the additional third party which measure the expression levels of the same gene
as targeted by a then-existing Catalogue Probe Set of Qiagen, Epoch will not use
the same probe sequence as designated by Qiagen in such Catalogue Probe Set). If
Epoch has appointed or appoints any third party as co-exclusive distributor
and/or licensee of Similar Products in the Field in the Territory, unless Epoch
has converted Qiagen's rights under this Agreement to non-exclusive pursuant to
Section 8.4, Epoch shall in no event produce and sell under its own label
Similar Products in the Field in the Territory nor appoint another distributor
to sell such Similar Products in the Field in the Territory. For clarification,
notwithstanding any other provision hereof, there will be no more than one
additional party (including Epoch) besides Qiagen authorized to sell Similar
Products for use in the Field in the Territory unless Epoch has converted
Qiagen's rights under this Agreement to non-exclusive pursuant to Section 8.4.
The limitations and restrictions set forth herein do not restrict Epoch from
appointing any third party as a distributor, or from itself acting as a
distributor, outside the Field.
(b) [*]. As a further exception to Qiagen's co-exclusive rights,
subject to compliance with the provisions of Section 12 hereof, Epoch may sell
Similar Products to [*] in the Field in the Territory, for use only by [*] and
its Affiliates and not for resale by [*]. Qiagen agrees that during the Custom
Term and Catalogue Term it shall not sell or otherwise provide Products to [*].
Epoch may also sell Similar Products to customers of [*] who are [*] who order
such Similar Products directly or indirectly through [*] website in connection
with the exercise of such license ("[*] Web Customers").
(c) [*]. Qiagen agrees and acknowledges that it has no rights
hereunder with respect to [*] and that, subject to compliance with the
provisions of Section 12 hereof, Epoch may sell such probes, directly or
indirectly to customers, provided that if Epoch manufactures an [*] which
measures the expression levels of the same gene as targeted by a then-existing
Catalogue Probe Set of Qiagen, and such [*] becomes an item in Epoch's catalogue
of products, Epoch will not use the same probe sequence as designated by Qiagen
in such Catalogue Probe Set.
2.3 TECHNOLOGY LICENSE.
(a) CUSTOM PROBE SETS. During the Custom Term, and only for the
purpose of this Agreement, Epoch grants Qiagen a non-exclusive, non-assignable,
non-sublicensable (except for sublicenses to end-user customers of Qiagen for
the use of the Custom Probe Sets in the Field) and limited license under, and
subject to the restrictions of, Epoch's intellectual property rights, including
the Patent Rights listed in Part III of Exhibit B, to market, package, promote,
sell, import, export and distribute the MGB Eclipse Probes with respect to
Custom Probe Sets for use in the Field in the Territory, subject to the
restrictions and limitations herein.
(b) CATALOGUE PROBE SETS. During the Catalogue Term, and only
for the purpose of this Agreement, Epoch grants Qiagen a non-exclusive,
non-assignable, non-sublicensable (except for sublicenses to end-user customers
of Qiagen for the use of the Catalogue Probe Sets in the Field) and limited
license under, and subject to the restrictions of, the Patent Rights listed in
Part III of Exhibit B, to market, package, promote, sell, import, export and
distribute the MGB Eclipse Probes with respect to Catalogue Probe Sets for use
in the Field in the Territory, subject to the restrictions and limitations
herein.
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(c) EVALUATION PROBE SETS. During the Catalogue Term, and only
for the purpose of this Agreement, Epoch grants Qiagen a non-exclusive,
non-assignable, non-sublicensable and limited license under, and subject to the
restrictions of, the Patent Rights listed in Part III of Exhibit B, to use the
Evaluation Probe Sets solely for Qiagen's internal evaluation purposes, as part
of Qiagen's research to determine which products to offer as Catalogue Probe
Sets (and not for resale or for any use in providing services of any kind to any
third party), subject to the restrictions and limitations set forth herein.
(d) EPOCH PRIMERS. Only for the purpose of this Agreement, Epoch
grants Qiagen a non-exclusive, non-assignable, non-sublicensable (except for
sublicenses to end-user customers of Qiagen for the use of the Epoch Primers in
the Field) and limited license under, and subject to the restrictions of, the
Patent Rights listed in Part III of Exhibit B and Epoch's proprietary rights in
certain modified bases which may be incorporated into the Epoch primers, to
market, package, promote, sell, import, export and distribute the Epoch Primers
for use in the Field in the Territory, solely for use with Custom Probe Sets and
Catalogue Probe Sets, subject to the restrictions and limitations herein. The
license granted in this Section 2.3(d) shall be effective through the Custom
Term with respect to Epoch Primers relevant to Custom Probe Sets, and during the
Catalogue Term with respect to Epoch Primers relevant to Catalogue Probe Sets.
(e) THIRD PARTY INTELLECTUAL PROPERTY. Notwithstanding the
foregoing, Qiagen shall have no rights under Patent Rights or any other patent
rights owned or controlled by Epoch to repackage Products or MGB Eclipse Probes
with any primer, including, without limitation, Epoch Primers. In the event that
Qiagen wishes to repackage MGB Eclipse Probes with any primers, including
without limitation any Epoch Primers, Epoch shall have no liability hereunder
for any claim or action brought by any party in relation thereto, and Qiagen
shall indemnify, defend and hold harmless Epoch for any resulting liabilities as
provided in Section 13.2.
(f) TECHNOLOGY ACCESS FEE. As consideration for the licenses
granted pursuant to Section 2.3, Qiagen shall pay to Epoch a non-refundable
technology access fee of US $[*] upon the Effective Date, and a non-refundable
technology access fee of US$[*] upon Commercial Launch. In addition, within
thirty (30) days of the end of the calendar month in which total cumulative Net
Sales of Products following Commercial Launch reaches US$[*], Qiagen shall pay
to Epoch a non-refundable technology access fee of US$[*].
2.4 LIMITATIONS.
(a) FIELD LIMITATION. Qiagen shall not (i) knowingly sell or
transfer the Products or the Epoch Primers to any Person for use outside the
Field, or (ii) sell the Products or the Epoch Primers to any Person which Qiagen
knows or has reason to know will use, or further sell or transfer for use, the
Products or the Epoch Primers outside the Field. In the event that Qiagen learns
of any use of the Products or the Epoch Primers sold hereunder by any Person
outside the Field, it shall (i) promptly notify such Person that such use is in
violation of Epoch's intellectual property rights, (ii) cease providing Products
and Epoch Primers to such Person, and (iii) notify Epoch of its actions. All
labeling of the Products and Epoch Primers will conform to the requirements of
Section 2.5 below, all advertising and catalogue entries with respect to the
Products and Epoch Primers, and all references to the Products and Epoch Primers
on Qiagen's or its Affiliates' website will conform to the requirements of
Section 2.6
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below, and all instructions for use of the Products and Epoch Primers will
conform to the requirements of Section 2.7 below.
(b) RESALE LIMITATION ON CUSTOM PROBE SETS. Qiagen shall sell
each MGB Eclipse Probe for a Custom Probe Set ordered from Epoch to only a
single customer, and shall not divide any MGB Eclipse Probes supplied by Epoch
for a Custom Probe Set for sale to multiple customers.
(c) RESALE LIMITATION ON CATALOGUE PROBE SETS. Qiagen shall not
aliquot or otherwise divide or alter any MGB Eclipse Probe supplied by Epoch for
a Catalogue Probe Set in order to sell all or any portion of such MGB Eclipse
Probe for a Catalogue Probe set as a Custom Probe Set.
2.5 LABEL REQUIREMENTS. Qiagen shall package and label Products and
Epoch Primers in standard Qiagen packaging. Such packaging shall include, in a
manner that is reasonably prominent in position and size: (a) "Powered by
innovation from Epoch," and (b) "For Research Use Only."
2.6 ADVERTISING, CATALOGUE AND WEBSITE REQUIREMENTS. All advertising and
catalogue entries with respect to the Products and Epoch Primers, and all
references to the Products and Epoch Primers on Qiagen's website(s) shall
include, in a manner that is reasonably prominent in position and size: (a)
"Powered by innovation from Epoch," (b) "Manufactured for Qiagen by Epoch
Biosciences," and (c) the information regarding Epoch patents and intellectual
property rights set forth in Part I of Exhibit B hereto, as may be updated by
Epoch from time to time.
2.7 PRODUCT INSERTS. Each Product and Epoch Primer as resold or
otherwise supplied to a customer by Qiagen shall include a product insert that
clearly and prominently displays the following information: (a) "Manufactured
for Qiagen by Epoch Biosciences," (b) the information regarding Epoch patents
and intellectual property rights set forth in Part I of Exhibit B hereto, as may
be updated by Epoch from time to time, and (c) the information regarding the
Field and restrictions with respect to the Products and Epoch Primers set forth
in Part II of Exhibit B hereto, as may be updated by Epoch from time to time. To
be attached as Exhibit H hereto is a template of the Product insert provided by
Qiagen, conforming to the requirements of this Section 2.7 to be included with
the Products and Epoch Primers; any change to such template shall require
Epoch's prior approval. Qiagen shall not provide any information, written or
oral, which contradicts such materials.
2.8 TRADEMARK LICENSE. Epoch hereby grants to Qiagen a non-exclusive,
royalty-free right and license to use the Epoch Marks in connection with the
marketing, promotion, distribution, sale, technical assistance and support of
the Products and Epoch Primers. Qiagen agrees not to alter or remove any Epoch
Marks displayed on any Product or Epoch Primer as provided to Qiagen in a manner
approved in advance by Qiagen in writing, for packaging by Qiagen. Except as
provided in this Agreement, nothing herein shall grant to Qiagen any right,
title or interest in Epoch Marks, and nothing herein shall grant to Epoch any
right, title or interest in any Qiagen Marks. Notwithstanding the foregoing,
Qiagen may name the Products and Epoch Primers to be marketed and distributed at
its discretion (and is not required to utilize "MGB Eclipse" as part of any such
Product name), subject to Epoch's prior approval of any such name (such approval
not to be unreasonably withheld or delayed).
2.9 NO OTHER RIGHTS. Except as expressly provided in this Agreement, no
other right, title, or interest is granted by Epoch to Qiagen hereunder or by
Qiagen to Epoch hereunder. Without limiting
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the generality of the foregoing, all right, title and interest in and to all
intellectual property rights with respect to the Products and Epoch Primers
(including all trade secrets and the like with respect to the sequencing of the
Epoch proprietary components embodied in such Products), shall reside in and
remain in Epoch. Notwithstanding the foregoing, Epoch shall have no proprietary
rights in any probe sequences designed by Qiagen or any Qiagen customer and
provided to Epoch for use hereunder by virtue of the terms of this Agreement and
all such probe sequence information shall be subject to the provisions of
Section 12 hereof. Subject to compliance with Sections 2.2 and 12 hereof, Epoch
may distribute products other than Products within the Territory, either
directly or indirectly through distributors or licensees, and no right, title or
interest is granted by Epoch to Qiagen relating to such products.
3. SUPPLY, FORECASTS, ORDERS.
3.1 SUPPLY AND PURCHASE OBLIGATIONS. Epoch shall supply to Qiagen for
resale (a) during the Custom Term, the (i) MGB Eclipse Probes to be contained in
Custom Probe Sets to be resold by Qiagen and (ii) Epoch Primers relevant
thereto, and (b) during the Catalogue Term, (I) MGB Eclipse Probes to be
contained in Catalogue Probe Sets to be resold by Qiagen, and (II) Epoch Primers
relevant thereto; subject to the terms, conditions, and restrictions herein,
including without limitation, the restrictions on the Field. During the
Catalogue Term, Epoch shall supply to Qiagen for use as provided herein MGB
Eclipse Probes for Evaluation Probe Sets and relevant Epoch Primers. Qiagen
shall purchase MGB Eclipse Probes to be contained in Catalogue Probe Sets or
Evaluation Probe Sets, and relevant Epoch Primers under this Agreement to the
extent set forth in written purchase orders provided to Epoch by Qiagen and
accepted by Epoch pursuant to Section 3.4 below, subject to the minimum volume
requirements and binding forecasts set forth below. Qiagen shall purchase MGB
Eclipse Probes to be contained in Custom Probe Sets, and relevant Epoch Primers
utilizing either written purchase orders, or the order placement function of the
MGB Eclipse Software, and each electronic submission of such an order shall
constitute a purchase order placed by Qiagen with Epoch. Qiagen shall purchase
all of its requirements of oligonucleotide probes for use in Custom Probe Sets
and Catalogue Probe Sets, and relevant Epoch Primers, from Epoch.
3.2 FORECASTS. Attached hereto as Exhibit C is Qiagen's written, good
faith purchasing forecast of the aggregate quantities of MGB Eclipse Probes to
be contained in the Catalogue Probe Sets and Evaluation Probe Sets, along with
relevant Epoch Primers that Qiagen expects to purchase during each calendar
quarter through June 30, 2003 (the "Initial Forecast"). Not less than forty-five
(45) days prior to the first day of each calendar quarter following the date
hereof, Qiagen shall provide Epoch with a written, good faith purchasing
forecast of the aggregate quantities of MGB Eclipse Probes to be contained in
the Catalogue Probe Sets and Evaluation Probe Sets, along with relevant Epoch
Primers that Qiagen expects to purchase during each quarter of the next four (4)
calendar quarters. The quantities of the MGB Eclipse Probes contained in the
Catalogue Probe Sets and Evaluation Probe Sets, along with relevant Epoch
Primers specified for each of the first calendar quarter of such forecast (and
with respect to the Initial Forecast, both quarters included in such Initial
Forecast) shall be binding on Qiagen, and Epoch shall use its commercially
reasonable efforts to fill any orders or series of orders with respect to the
binding portion of such forecast, and Epoch shall require Qiagen to take
delivery and pay for such amount of the MGB Eclipse Probes contained in such
Catalogue Probe Sets and Evaluation Probe Sets and the relevant Epoch Primers.
Amounts for additional quarters beyond the first quarter of each forecast shall
be considered a non-binding forecast. During any calendar quarter, Epoch shall
not be required to fill any order or series of orders in excess of one hundred
percent (100%) of the quantities forecasted for such quarter pursuant to the
binding portion of the forecast under this Section 3.2. In the event that Qiagen
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shall provide Epoch with orders in excess of such quantities, Epoch shall use
commercially reasonable efforts, but is not required to, supply such additional
quantities.
3.3 MINIMUM VOLUME PER ORDER FOR CATALOGUE PROBE SETS. Unless otherwise
agreed by Epoch, each order placed by Qiagen for MGB Eclipse Probes with respect
to a particular Catalogue Probe Set or relevant Epoch Primer, shall be purchased
in a minimum volume of at least one Batch, synthesized on a [*] or [*] scale.
All material resulting from each such Batch shall be provided to Qiagen,
provided however that Epoch shall reserve a reasonable portion of each Batch for
quality control purposes.
3.4 ORDERS. Qiagen shall issue to Epoch from time to time purchase
orders which shall confirm quantities and shipping arrangements for Product
Deliverables. Each such purchase order shall be in writing in a form reasonably
acceptable to Epoch (or submitted electronically using the MGB Eclipse Software,
as contemplated in Section 3.1), and shall specify the description of the MGB
Eclipse Probe(s) and Epoch Primers ordered, the quantity ordered, the shipping
arrangements (in accordance with Section 3.5) and whether such order is with
respect to materials for an Evaluation Probe Set, Catalogue Probe Set or a
Custom Probe Set. Epoch shall fill all such orders in accordance with the terms
of Section 5 hereof. Epoch shall ship Product Deliverables to the applicable
Qiagen location within a number of days following Epoch's receipt of the
applicable order from Qiagen, as follows: (a) [*] days with respect to MGB
Eclipse Probes for Catalogue Probe Sets or Evaluation Probe Sets and relevant
Epoch Primers, (b) [*] business days with respect to MGB Eclipse Probes for
Custom Probe Sets and relevant Epoch Primers to be shipped to a single Qiagen
location in the U.S., and [*] business days with respect to MGB Eclipse Probes
for Custom Probe Sets and relevant Epoch Primers to be shipped to a single
Qiagen location in each of Europe or Japan. Each purchase order (or order
submitted electronically using the MGB Eclipse Software, as contemplated in
Section 3.1), shall be deemed accepted by Epoch unless written notice to the
contrary is received by Qiagen from Epoch within [*] days after Epoch's receipt
of the purchase order from Qiagen with respect to MGB Eclipse Probes for
Catalogue Probe Sets, Evaluation Probe Sets and relevant Epoch Primers, and
within [*] business days after Epoch's receipt of the purchase order from Qiagen
with respect to MGB Eclipse Probes for Custom Probe Sets and relevant Epoch
Primers. In the event of a conflict between the terms and conditions of any
purchase order (or terms included by the Party placing an order using the MGB
Eclipse Software) and this Agreement, the terms and conditions of this Agreement
shall prevail.
3.5 DELIVERY AND ACCEPTANCE.
(a) DELIVERY. All Product Deliverables supplied under this
Agreement shall be delivered by Epoch at its place of manufacture, and Qiagen
shall purchase such Product Deliverables, Exworks (EXW-INCOTERMS 2000), Epoch's
place of manufacture. Qiagen shall have the right to designate shipping
arrangements upon advance notice to Epoch; provided, however, that if Qiagen
fails to designate a carrier, Epoch shall arrange shipping on Qiagen's behalf at
Qiagen's expense, to such location as designated by Qiagen in the applicable
purchase order. MGB Eclipse Probes for use in Custom Probe Sets will be packaged
by Epoch in packaging materials provided by Qiagen, and shipped only to one of
three specified Qiagen locations designated by Qiagen (one in each of the U.S.,
Europe and Japan), and Qiagen shall be responsible for including product inserts
in such packaging and forwarding all Custom Probe Sets to the appropriate
customer. Epoch Primers relevant to Custom Probe Sets will be packaged by Epoch
in packaging materials provided by Qiagen, and shipped only to one of three
specified Qiagen
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10
locations designated by Qiagen (one in each of the U.S., Europe and Japan), and
Qiagen shall be responsible for including product inserts in such packaging and
forwarding all such Epoch Primers to the appropriate customer. Epoch shall
deliver all MGB Eclipse Probes for use in Catalogue Probe Sets and Evaluation
Probe Sets to a single Qiagen facility to be designated by Qiagen, to permit
Qiagen to perform quality control testing, and Qiagen shall be responsible for
aliquoting and packaging MGB Eclipse Probes as Catalogue Probe Sets and
forwarding all Catalogue Probe Sets to the appropriate customer. Epoch shall
deliver all Epoch Primers relevant to Catalogue Probe Sets and Evaluation Probe
Sets to a single Qiagen facility to be designated by Qiagen, to permit Qiagen to
perform quality control testing, and Qiagen shall be responsible for packaging
such Epoch Primers and forwarding all such Epoch Primers to the appropriate
customer.
Qiagen shall pay all freight, insurance charges, taxes, import and export
duties, inspection fees and other charges applicable to the sale and transport
of Product Deliverables purchased by Qiagen hereunder. Title and risk of loss
and damages to Product Deliverables purchased by Qiagen hereunder shall pass to
Qiagen upon delivery to the carrier. Epoch shall provide for each lot of Product
Deliverables shipped hereunder, a Certificate of Analysis evidencing such lot's
conformity with the specifications for such Product Deliverables.
(b) REJECTION. If a shipment of Product Deliverables or any
portion thereof does not contain those Product Deliverables actually ordered by
Qiagen pursuant to the applicable purchase order, or the Product Deliverables do
not comply with the specifications for the Product Deliverables set forth on
Exhibit D hereto and the Product Deliverables specifications described in the
Certificate of Analysis with respect to such Product Deliverables in all
material respects (so long as the Product Deliverables have been stored by
Qiagen and its customers in accordance with the applicable storage and handling
requirements set forth on Exhibit D hereto), then Qiagen shall have the right to
reject such portion of the shipment of Product Deliverables. Qiagen shall give
written notice to Epoch of its rejection hereunder, within [*] business days
after Qiagen's receipt of such shipment, specifying the grounds for such
rejection. In the event that Qiagen refuses acceptance, Epoch, upon its
confirmation of the reasons for refusal of the Product Deliverables, shall
either replace the defective Product Deliverables or refund the purchase price,
as Epoch may elect, and Qiagen shall use its reasonable efforts to, as directed
by Epoch and at Epoch's expense, either (i) hold the nonconforming portion of
the shipment of Product Deliverables for Epoch's disposition, or (ii) return the
nonconforming portion to Epoch, provided that if Qiagen fails to follow Epoch's
directions to either hold or return such nonconforming portion, then Epoch will
have no obligation to inspect or replace such nonconforming portion or to
provide a refund of any kind with respect to such nonconforming portion. If,
following analysis by Epoch, Epoch and Qiagen do not agree on the refusal or
rejection of the Product Deliverables , then either Party may refer the matter
for final analysis to a specialized laboratory of national reputation acceptable
to both parties for the purpose of determining the results. Any determination by
such laboratory shall be final and binding upon the parties hereto. The Party in
error shall bear all the expenses of such specialized laboratory testing.
(c) NO OTHER WARRANTY. EXCEPT AS EXPRESSLY SET FORTH IN THIS
AGREEMENT, EPOCH MAKES NO WARRANTIES, EXPRESS OR IMPLIED, WITH RESPECT TO THE
PRODUCTS INCLUDING, WITHOUT LIMITATION, ANY WARRANTY OF MERCHANTABILITY,
NONINFRINGEMENT OR WARRANTY OF FITNESS FOR A PARTICULAR PURPOSE.
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4. PRICE AND PAYMENT TERMS.
4.1 PRICES. Prices for the Products shall be determined as follows:
(a) CUSTOM PROBE SETS. Epoch shall establish a "Suggested Retail
Price" for Custom Probe Sets and relevant Epoch Primers based upon actual market
conditions and the competitive environment for similar products. Suggested
Retail Prices shall be established in Euros for Custom Probe Sets and relevant
Epoch Primers to be distributed in Europe, in Yen for Custom Probe Sets and
relevant Epoch Primers to be distributed in Japan, and in U.S. Dollars for
Custom Probe Sets and relevant Epoch Primers to be distributed in all other
locations, which may be adjusted by Epoch from time to time (but at least twice
a year in the first full year after Commercial Launch if necessary) based upon
market conditions.
Qiagen shall pay Epoch for each MGB Eclipse Probe with respect to a Custom Probe
Set and relevant Epoch Primers purchased hereunder, [*] percent ([*]%) of the
Suggested Retail Price for such MGB Eclipse Probe with respect to a Custom Probe
Set and relevant Epoch Primer as of the date of order. Qiagen may sell the
Custom Probe Sets and relevant Epoch Primers to its customers at any price or
for any consideration it desires. The initial Suggested Retail Prices for the
Custom Probe Sets (for [*] or [*] yield) and relevant Epoch Primers are attached
hereto as Exhibit A, set forth in Euros for Custom Probe Sets and Epoch Primers
to be distributed in Europe, in Yen for Custom Probe Sets and Epoch Primers to
be distributed in Japan, and in U.S. Dollars for Custom Probe Sets and Epoch
Primers to be distributed in all other locations.
(b) CATALOGUE PROBE SETS. Qiagen shall establish prices for its
sales of Catalogue Probe Sets and relevant Epoch Primers. Qiagen shall pay to
Epoch, (i) with respect to each Catalogue Probe Set and relevant Epoch Primer
purchased hereunder, a transfer price equal to [*]% of Epoch's Manufacturing
Cost of the MGB Eclipse Probe Set with respect to each Catalogue Probe Set and
[*]% of Epoch's Manufacturing Cost of each relevant Epoch Primer (the "Catalogue
Transfer Price,") and (ii) a royalty equal to [*] percent ([*]%) of Net Sales
with respect to the Catalogue Probe Sets and the relevant Epoch Primers
("Catalogue Royalties"). Catalogue Transfer Prices will be subject to adjustment
from time to time by Epoch (but Epoch agrees to perform such review at least
every [*] and promptly upon any material change in circumstances likely to
materially decrease Manufacturing Cost) based upon changes in efficiencies, cost
of materials, volume or related changes which impact the Manufacturing Costs (as
previously defined). Any such adjustment shall be applied prospectively from the
date of Epoch's determination that such adjustment is warranted, and shall have
no impact on any pricing terms prior to such date. The initial Catalogue
Transfer Price for the MGB Eclipse Probe Set with respect to Catalogue Probe
Sets (for [*] and [*] scales) and relevant Epoch Primers is attached hereto as
Exhibit A.
(c) EVALUATION PROBE SETS. Qiagen may purchase MGB Eclipse
Probes and relevant Epoch Primers from Epoch for Qiagen's internal evaluation
purposes only as part of Qiagen's research to determine which products to offer
as Catalogue Probe Sets (and not for resale or for any use in providing services
of any kind to any third party) ("Evaluation Probe Sets"). The transfer price
for such Evaluation Probe Sets shall be [*] percent ([*]%) of the Manufacturing
Cost incurred in the manufacture of such Evaluation Probe Sets (but no more than
$[*] per Evaluation Probe Set for Evaluation Probe Sets provided at [*]),
including the relevant Epoch Primers. Evaluation Probe Set prices will be
subject to adjustment from time to time by Epoch (but Epoch agrees to perform
such review at least every six (6)
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12
months and promptly upon any material change in circumstances likely to
materially decrease Manufacturing Cost) based upon changes in efficiencies, cost
of materials, volume or related changes which impact the Manufacturing Costs (as
previously defined). Any such adjustment shall be applied prospectively from the
date of Epoch's determination that such adjustment is warranted, and shall have
no impact on any pricing terms prior to such date.
(d) MANUFACTURING COSTS. Epoch shall use good faith efforts to
adopt efficient manufacturing procedures.
4.2 PAYMENT TERMS.
(a) CUSTOM PROBE SETS AND CATALOGUE TRANSFER PRICE. Upon
shipment of Product Deliverables or Evaluation Probe Sets to Qiagen, Epoch shall
submit invoices therefor to Qiagen. Payment for all MGB Eclipse Probes for
Custom Probe Sets and relevant Epoch Primers, Evaluation Probe Sets and relevant
Epoch Primers and the Catalogue Transfer Price for the MGB Eclipse Probes for
the Catalogue Probe Sets, and relevant Epoch Primers shipped shall be net [*]
days from the date of invoice.
(b) CATALOGUE ROYALTIES. The amount of Catalogue Royalties due
shall be calculated quarterly as of the end of each calendar quarter and shall
be paid quarterly within [*] days next following such date. Every such payment
shall be supported by a full and accurate accounting to include the applicable
quarter's Net Sales of Catalogue Probe Sets and relevant Epoch Primers sold by
Qiagen and its Affiliates and total Catalogue Royalties payable to Epoch, broken
down for each of the following territories: (i) Europe, (ii) North America,
(iii) Japan and (iv) Rest of World.
(c) PAYMENTS. All amounts payable to a Party hereunder shall be
payable in United States Dollars and shall be made by check or bank wire
transfer in immediately available funds from the payor's bank, wherever located,
to payee's account located in the United States, each as designated by the
respective Party. Any payments due under this Agreement which are not paid by
the date such payments are due under this Agreement shall bear interest at a
rate equal to the lesser of one and one-half percent (1.5%) per month or the
maximum rate permitted by applicable law. Epoch reserves the right to
discontinue all services and/or withhold shipment of Product Deliverables and
Evaluation Probe Sets during any period in which Qiagen has any amounts
outstanding and past due. This Section 4.2(c) shall in no way limit any other
remedies available to either Party hereto.
(d) TAXES. Epoch shall pay any and all taxes levied on account
of royalties it receives under this Agreement. If laws or regulations require
that taxes be withheld, Qiagen will (i) deduct those taxes from the payments
owed, (ii) timely pay the taxes to the proper taxing authority, and (iii) send
proof of payment to the other Party within sixty (60) days following such
payment. The Parties agree to cooperate to obtain the benefit of any tax treaty
with respect to such royalty payments. Qiagen shall be solely responsible for
the payment of taxes not based on Epoch's income, such as sales tax, customs,
duties, value-added taxes and other taxes imposed by a taxing jurisdiction on
the purchase or resale of Products.
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13
(e) CONFLICTING TERMS. To the extent the terms of any invoice
submitted by Epoch or a purchase order submitted by Qiagen conflict with the
terms of this Agreement, the terms of this Agreement shall control and be
binding upon the parties.
(f) BLOCKED CURRENCY. In each country where the local currency
is blocked and cannot be removed from the country, at the election of the paying
Party, royalties accrued in that country shall be paid to the receiving Party in
the country in local currency by deposit in a local bank designated by the
receiving Party.
(g) FOREIGN EXCHANGE. For the purpose of computing payments in a
currency other than United States Dollars, such currency shall be converted into
United States Dollars at the applicable conversion rate most recently published
in the Wall Street Journal (U.S., West Coast Edition) as of the date when such
payment becomes due.
(h) PAYMENTS TO OR REPORTS BY AFFILIATES. Any payment required
under any provision of this Agreement to be made to either Party or any report
required to be made by any Party shall be made to or by an Affiliate of that
Party if designated by that Party as the appropriate recipient or reporting
entity.
4.3 AUDIT RIGHTS. For a period of three (3) years after the calendar quarter for
which a payment has been made hereunder by Qiagen to Epoch, Qiagen shall keep
(and shall cause its Affiliates to keep) full, complete and proper records and
accounts of all sources and amounts of sales and associated adjustments in
sufficient detail to enable the payment and adjustments under Section 4 for such
calendar quarter to be determined and to ensure Qiagen's compliance with the
terms of this Agreement. For a period of three (3) years after the calendar
quarter for which Manufacturing Costs have been calculated by Epoch, Epoch shall
keep (and shall cause its Affiliates to keep), records sufficient to detail
Epoch's calculation of Manufacturing Costs. Each Party shall have the right to
appoint an independent certified public accounting firm approved by the other
Party, which approval shall not be unreasonably withheld, to audit the records
of the other Party (and its Affiliates' records) as necessary to verify the
amounts payable pursuant to this Agreement (or the calculation of Manufacturing
Costs, as the case may be) and to ensure each Party's compliance with the terms
of this Agreement. The audited Party shall pay to the auditing Party an amount
equal to any adjustment to which the auditing Party is entitled as disclosed by
the audit, plus interest thereon at the rate of one and one-half percent (1.5%)
per month, subject to any limitations on such interest rate imposed by law, and
provided further, that neither Party shall be obligated to pay any interest upon
amounts due to the other Party following such audit which resulted from errors
or miscalculations in such other Party's records. Such audit shall be at the
auditing Party's expense; provided, however, that if the audit discloses that
the auditing Party was underpaid by at least [*] percent ([*]%) in any calendar
quarter, then the audited Party shall reimburse the auditing Party for any such
audit costs, provided however that neither Party shall be obligated to pay such
audit costs if such underpayment resulted from errors or miscalculations in the
other Party's records. A Party may exercise its right of audit hereunder no more
frequently than twice in any calendar year and during the regular business hours
of the audited Party. The accounting firm shall disclose to the auditing Party
only information relating to the accuracy of the payments and to the audited
Party's compliance with the terms of this Agreement. The Parties will endeavor
to minimize disruption of the normal business activities of the Party being
audited to the extent reasonably practicable.
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14
I 4.4 PRICING ADJUSTMENTS. If after the Effective Date of this Agreement,
and during the Custom Term, Epoch grants to a third party a license or signs a
distribution agreement in the Field, with substantially similar or lesser
minimum volume requirements and marketing obligations as those set forth herein,
or if Epoch amends any existing agreement to grant such right(s), and Epoch
offers such third party more favorable pricing for Product Deliverables than is
granted to Qiagen by this Agreement, then within thirty (30) days of the
effective date of any such agreement or amendment, Epoch shall notify Qiagen in
writing of such agreement or amendment and provide Qiagen with the a summary of
the pertinent terms thereof, and offer Qiagen such more favorable pricing, as
adjusted by the parties in good faith to take into account the specific terms of
this Agreement, with respect to orders placed by Qiagen following the effective
date of such third party agreement. Qiagen shall have sixty (60) days to notify
Epoch in writing, if Qiagen elects to accept such new terms. If Qiagen does so
elect to accept such new terms, such terms shall be effective as of the
effective date of the third party agreement or amendment.
5. MANUFACTURE OF PRODUCTS.
5.1 CATALOGUE PROBE SETS. Qiagen shall determine the specific gene
targets with respect to the Catalogue Probe Sets, and instruct Epoch as to the
sequence of the MGB Eclipse Probe and relevant Epoch Primer(s)for each Catalogue
Probe Set. Qiagen may designate new products as Catalogue Probe Sets from time
to time (subject to the restrictions of this Agreement) by providing Epoch with
the necessary sequence of the MGB Eclipse Probe, indicating that such product
will be a Catalogue Probe Set, and complying with the forecast requirements set
forth in Section 3.2 hereof for such Catalogue Probe Set. Epoch shall accept
orders with respect to any probe sequence designated by Qiagen, whether or not
it has manufactured the same or similar sequence for any third party, subject to
any obligations of Epoch to third parties and restrictions with respect to third
party intellectual property rights.
5.2 PLACE OF MANUFACTURE. Epoch shall manufacture the Product
Deliverables in its facilities in the United States. If Epoch determines that
the volume of Custom Probe Sets purchased by Qiagen justifies manufacturing MGB
Eclipse Probes with respect to Custom Probe Sets and relevant Epoch Primers in
the European Union and/or Japan, then Epoch may at its option manufacture such
MGB Eclipse Probes with respect to Custom Probe Sets, and relevant Epoch Primers
at a facility in Europe and/or Japan, provided that the facilities used for
manufacturing are not owned or controlled by a third party that is a distributor
of MGB Eclipse Probes in the Field.
5.3 STANDARD OPERATION PROCEDURES AND QUALITY CONTROL. Current standard
operating procedures with respect to manufacture and quality-control of Product
Deliverables are as defined on Exhibit E (the "Current SOP's"). Epoch agrees not
to materially change components of the Product Deliverables (e.g.,
fluorophor-linker moiety or minor groove binder moiety) or materially vary the
Current SOP's (e.g., synthesis resin, probe or primer purification methods)
without first providing Qiagen with sixty (60) days prior written notice of such
changes. Epoch shall provide Qiagen with sufficient testing material at Epoch's
expense to validate whether such changes materially reduce Product Deliverable
performance. If Qiagen proves that changes in standard operation procedures will
lead to materially reduced Product Deliverable performance in comparison with
Product Deliverables manufactured and quality controlled according to Current
SOP's, then Epoch shall perform its own tests to verify Qiagen's findings. If,
following analysis by Epoch, Epoch and Qiagen do not agree on such findings,
then either Party may refer the matter for final analysis to a specialized
laboratory of national reputation acceptable to both parties for the purpose of
determining whether changes in Current SOP's will lead to materially reduced
Product Deliverable performance. Any determination by such laboratory shall be
final and binding upon the Parties hereto. The Party in error shall bear all the
expenses of such
15
specialized laboratory testing. If a final determination is made jointly by
Epoch and Qiagen, or by the specialized laboratory, that changes in Current
SOP's will lead to materially reduced Product Deliverable performance, then
provided that Qiagen has satisfied its minimum annual sales obligations pursuant
to Section 8.4 through such date, Epoch agrees to provide Product Deliverables
to Qiagen according to then-Current SOP's for a period of at least two (2) years
from the date of the original written notice regarding such changes. Qiagen may
from time to time propose changes to Current SOP's, which Epoch may agree to
implement or not implement in its sole discretion.
5.4 PACKAGING; PACKAGING MATERIALS. MGB Eclipse Probes for use in
Catalogue Probe Sets, and relevant Epoch Primers shall each be shipped by Epoch
to Qiagen in bulk form in ordinary packaging of Epoch's choosing but complying
with product stability needs. MGB Eclipse Probes for use in Custom Probe Sets,
and relevant Epoch Primers shall each be shipped by Epoch to Qiagen in packaging
provided by Qiagen. Qiagen shall be responsible, at its own expense, in the case
of MGB Eclipse Probes for use in Catalogue Probe Sets and relevant Epoch
Primers, for aliquoting and packaging, and in the case of all Products and Epoch
Primers, for labeling (as necessary) and providing and inserting package
inserts, in all cases in compliance with the labeling requirements of Section
2.5 and the insert requirements of Section 2.7), in accordance with the terms of
this Agreement.
5.5 COMPLIANCE. Epoch shall comply in all material respects with all
laws, rules and regulations applicable to the manufacture and shipment of
Product Deliverables hereunder.
6. MGB ECLIPSE SOFTWARE.
6.1 LICENSE TO MGB ECLIPSE SOFTWARE. Concurrent with the execution of
this Agreement, Qiagen and Epoch shall execute a software license agreement, in
the form attached as Exhibit F (the "MGB Eclipse Software License") granting
Qiagen the right to install the MGB Eclipse Software on a computer server to
enable Qiagen and customers of Qiagen to access the MGB Eclipse Software via a
web site owned and operated by or on behalf of Qiagen, for the purpose of
designing and ordering Evaluation Probe Sets (for Qiagen only) and Custom Probe
Sets. Epoch will provide Qiagen with updates to the MGB Eclipse Design Software
for Gene Expression version of the MGB Eclipse Software developed by Epoch when
such updates become generally available, and Epoch shall provide commercially
reasonable assistance to Qiagen with respect to the installation of any such MGB
Eclipse Software updates (and Qiagen shall reimburse Epoch [*] percent ([*]%) of
its fully-burdened personnel costs and any documented, reasonable out-of-pocket
expenses incurred in providing such commercially reasonable assistance with
respect to such MGB Eclipse Software updates).
6.2 OBLIGATION TO INSTALL MGB ECLIPSE SOFTWARE. Qiagen shall, prior to
Commercial Launch as defined in Section 8.4, with reasonable assistance from
Epoch, install and make operational on a web site owned and operated by or on
behalf of Qiagen, the MGB Eclipse Software.
6.3 CUSTOMIZATION OF MGB ECLIPSE SOFTWARE. In the event that Qiagen
requests any modifications or customizations of the MGB Eclipse Software
("Software Modifications") reasonably necessary to effect the implementation of
the MGB Eclipse Software in accordance with the terms of this Agreement (or if
Qiagen requests other Software Modifications which Epoch agrees in its sole
discretion to undertake), Epoch shall use its commercially reasonable efforts to
effect such Software Modifications. If Qiagen requests that the user interface
portions of the MGB Eclipse Software be translated into a
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16
language other than English, such translation shall be undertaken only by Epoch,
and only if agreed upon by Epoch, and any such translation or translations shall
be deemed Software Modifications hereunder. Qiagen shall reimburse Epoch for the
actual cost (as determined in accordance with generally accepted accounting
principles) of such Software Modifications within thirty (30) days of Epoch's
invoice reflecting such charges. All right, title and interest in and to the MGB
Eclipse Software, the Software Modifications, and any intellectual property or
proprietary rights of any kind in connection with the MGB Eclipse Software and
the Software Modifications shall reside in and remain vested in Epoch. If Qiagen
requests that Epoch develop Software Modifications (other than Software
Modifications reasonably necessary to effect the implementation of the MGB
Eclipse Software in accordance with the terms of this Agreement, Software
Modifications to translate the user interface portions of the MGB Eclipse
Software into a language other than English, or Software Modifications which are
necessary for the essential purpose and utility of the MGB Eclipse Software),
and expressly requests that such Software Modifications not be incorporated into
versions of the MGB Eclipse Software to be installed by parties other than
Qiagen, then upon Epoch's agreement to perform such work and payment by Qiagen
of a commercially reasonable amount mutually agreed upon, Epoch shall not
incorporate such Software Modifications into versions of the MGB Eclipse
Software to be installed by parties other than Qiagen.
7. JOINT RESEARCH EFFORTS.
7.1 MODIFICATION OF PRODUCTS. Qiagen may submit to Epoch a request for
certain modifications or improvements to the MGB Eclipse Probes, and Epoch shall
review and discuss such request with Qiagen. Upon mutual agreement by Epoch and
Qiagen, Epoch shall undertake the necessary research and development activities
to implement such modifications or improvements. Qiagen will reimburse Epoch all
costs associated with such research and development activities, including
personnel costs, based on a fully-burdened rate of [*] Dollars ($[*]) per
calendar quarter per FTE during the first year following the date hereof, such
rate to be adjusted at the beginning of each subsequent year by an amount equal
to the increase in the U.S. Department of Labor Consumer Price Index in the
prior year. Payment for such services shall be net thirty (30) days from the
date of Epoch's invoice, which shall include an accounting of the hours spent on
such requested modifications or improvements. All payment shall be made in U.S.
Dollars. "Inventions" shall mean all discoveries, concepts, ideas and other
intellectual property or proprietary rights, whether patentable or not, which
arise from or are directly related to the development activities described in
this Section 7.1, including but not limited to articles, processes, compounds,
methods, formulae, systems and techniques, as well as improvements thereof and
relating to the Products. Any Inventions arising out of the development
activities described in this Section 7.1 will be jointly owned by Epoch and
Qiagen. As used herein, the terms "inventor" and "Invention" are defined to be
consistent with those definitions established and set forth in Title 35 U.S.C.
and case law pertaining thereto.
8. ADDITIONAL OBLIGATIONS OF QIAGEN.
8.1 REGISTRATIONS AND PERMITS. Qiagen shall comply in all material
respects with all laws, rules and regulations applicable to the marketing,
promotion, distribution and sale of Products within the Territory. If and as
required from time to time under the laws of any country within the Territory,
Qiagen shall apply for and use its commercially reasonable efforts to obtain all
registrations and permits that are necessary to market, distribute and sell the
Products within such country. Epoch shall reasonably
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17
cooperate with Qiagen in connection with Qiagen's efforts to obtain such
registrations, licenses and permits.
8.2 PROMOTION OF PRODUCTS; ADVERTISING. Qiagen shall use its best
efforts to promote the sale of the Products within the Territory. Qiagen shall
advertise, promote and market the Products in a commercially reasonable manner
and furnish appropriate Product information and promotional materials to its
customers. Such efforts shall include, but not be limited to, at Qiagen's
expense, preparing promotional materials in appropriate languages for the
Territory, advertising the Products in appropriate trade publications and
journals, participating in appropriate trade shows (at a minimum the major
international meeting trade shows that relate to the Products and the Field),
promoting the Products on Qiagen's web site, providing customer training where
required, using its sales force in a manner sufficient to promote the Products,
and directly soliciting orders from customers for the Products.
8.3 MINIMUM PURCHASES. Notwithstanding any other provision hereof, in
each calendar quarter, Qiagen shall purchase at least the minimum amounts of MGB
Eclipse Probes and Epoch Primers pursuant to the binding forecasts set forth in
Section 3.2.
8.4 MINIMUM ANNUAL SALES. In the event that Qiagen's Net Sales of
Products and Epoch Primers to its non-Affiliate customers in each year set forth
below do not exceed the amounts set forth below:
Year Annual Minimum Net Sales
---- ------------------------
Year 1 US $[*]
Year 2 US $[*]
Year 3 US $[*]
Year 4 US $[*]
Epoch shall have the right to convert Qiagen's rights under this Agreement to
non-exclusive as described below, provided that during the relevant year, there
has been no material disruption of supply of the Product Deliverables which was
beyond the control of Qiagen, that during the relevant year, there has been no
material disruption in access by Qiagen or Qiagen customers to the MGB Eclipse
Software resulting from a defect in the MGB Eclipse Software and which
disruption was not within Qiagen's reasonable control to remedy, and that the
number of Product Deliverables rejected by Qiagen and accepted for replacement
or refund pursuant to Section 3.5(b) has not exceeded [*] percent ([*]%) of the
volume of Product Deliverables delivered in such year. Year 1 shall be the
twelve month period beginning upon "Commercial Launch," which shall be the date
upon which Qiagen sends a launch package (consisting of those items set forth on
Exhibit J hereto) to its Affiliates, subsidiaries and Epoch, which shall be no
later than April 15, 2003. Years ▇, ▇, ▇ ▇▇▇ ▇ ▇▇▇▇▇ ▇▇ the subsequent twelve
(12) month periods following the first year after Commercial Launch.
Notwithstanding the foregoing, solely with respect to Year 1, Qiagen may, at its
option, meet its minimum Net Sales obligation (in which case Epoch shall have no
right to convert Qiagen's rights under this Agreement to non-exclusive for
failure to meet its first year minimum Net Sales obligation) if within sixty
(60) days prior to the end of Year 1, Qiagen places a purchase order for a
volume of Product Deliverables which results in Epoch receiving payment from
Qiagen greater than or equal to [*] percent ([*]%) of the dollar amount by which
Qiagen's Net Sales fell short of [*] Dollars ($[*]), and Qiagen remits payment
to Epoch for such amount (the
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18
"Shortfall Order"). The sale to customers of Products incorporating Product
Deliverables from the Shortfall Order shall not be included in the calculation
of Net Sales for any subsequent year for purposes of determining whether Annual
Minimum Net Sales have been met. For purposes of this Section 8.4, Qiagen's Net
Sales in currency other than U.S. dollars shall be converted into U.S. dollars
for such calculation on a monthly basis, based on the average exchange rate
during the applicable quarter, according to the exchange rates published in the
U.S. West Coast edition of the Wall Street Journal.
Within thirty (30) days of the end of each Year 1, Year 2, Year 3, Year 4 and
Year 5, Qiagen shall provide Epoch with a report of Net Sales for such year. In
the event that such Net Sales do not exceed the amount set forth above (and in
the case of Year 1, if Net Sales do not exceed the amount set forth above and
Epoch has not received payment for the Shortfall Order within sixty (60) days
prior to the end of Year 1), Epoch may, within sixty (60) days of receipt of
such report, convert Qiagen's rights under this Agreement to non-exclusive for
the balance of the Custom Term and Catalogue Term by providing notice to Qiagen.
Upon the termination or expiration of the Custom Term for any reason, Qiagen's
rights hereunder shall automatically be converted to non-exclusive with respect
to Catalogue Probe Sets (and shall have terminated in their entirety with
respect to Custom Probe Sets), however, the parties may mutually agree to extend
co-exclusivity with respect to Catalogue Probe Sets if the parties establish
mutually acceptable minimum annual sales obligations and other material terms.
8.5 DISTRIBUTION ACTIVITIES. Qiagen shall be responsible, at is own
expense, for all final packaging, order entry and collection, distribution,
fulfillment, inventory management, billing, collection of receivables, and
processing of returns for the Products in the Territory.
8.6 COMPLIANCE. Qiagen shall comply in all material respects with all
laws, rules and regulations applicable to its repackaging, sale, marketing,
promotion, use or distribution of Products and Epoch Primers hereunder, and
Qiagen acknowledges that such compliance includes, without limitation,
prohibitions against infringing upon the intellectual property rights of third
parties.
9. ADDITIONAL OBLIGATIONS OF EPOCH.
9.1 PROMOTIONAL MATERIALS. Qiagen shall be responsible for the
preparation of all of its sales literature, advertising and promotional
materials. Qiagen shall provide to Epoch for review examples of all such
materials (along with English translations thereof) at least twenty (20)
business days prior to use by Qiagen. Epoch shall have no right to use or copy
any such materials, or any portion thereof, for any purpose other than for
determining compliance with the terms of this Agreement.
9.2 THIRD PARTY PATENT MATTERS. In case that Epoch is aware or becomes
aware of any patents and patent applications which may compromise the promotion,
sales and/or usage of Products in accordance with the terms of this Agreement
(including the restrictions set forth herein) in certain countries or
applications within the Field, Epoch shall promptly inform Qiagen. Epoch shall
apply for and use its commercially reasonable efforts to obtain, at Epoch's
expense, all licenses that are necessary to manufacture and supply to Qiagen the
Product Deliverables within the Territory within the Field and in accordance
with the terms of this Agreement, and to enable Qiagen to resell Products
incorporating the Product Deliverables in accordance with this Agreement subject
to Epoch's instructions for use as set forth in Exhibit I hereto.
19
9.3 INSPECTIONS. During the Custom Term and Catalogue Term, Epoch shall
permit Qiagen to examine during regular business hours, no more than two (2)
times annually, Epoch's manufacturing and quality control processes for its
compliance with the Current SOP's or any intermediate and agreed changes, as
well as compliance with the provisions of Section 12 hereof, at the request and
the expense of Qiagen and upon at least ten (10) days prior notice. Epoch shall
permit Qiagen, or a mutually agreed independent agent with respect to Section 12
inspections, to examine all relevant production and quality control related
records as well as to visually inspect the production plant solely to the extent
necessary to verify compliance with Section 12 or of the manufacturing and
quality control processes with the Current SOP's or agreed changes to these
procedures. All information and data reviewed in the inspection shall be used
only for the purpose of verifying compliance of manufacturing and quality
control processes for its compliance with the Current SOP's and all such
information disclosed to Qiagen shall be treated as Epoch Confidential
Information subject to the obligations of this Agreement.
9.4 IMPROVED PRODUCTS. If during the Custom Term, Epoch becomes aware of
any information/know-how considering performance, improvements, restrictions,
shipment, stability and usage of the Products, subject to restrictions on
confidentiality and Qiagen's agreement to treat such information as Epoch
Confidential Information, Epoch shall forward such information to Qiagen and
shall co-operate with Qiagen and use reasonable efforts to support Qiagen with
respect to use of such information in its promotion, marketing and product
improvement activities, subject to the Field restrictions and other restrictions
set forth herein.
9.5 BACK-UP MANUFACTURING. Within ninety (90) days of the date hereof,
Qiagen and Epoch shall negotiate in good faith and execute a Back-Up
Manufacturing Agreement which shall, upon the occurrence of and during the
continuation of a Failure to Supply (as hereinafter defined), provide for: (a)
Qiagen to lease facilities and equipment to Epoch and provide employees,
materials and services to Epoch to enable Epoch to manufacture MGB Eclipse
Probes for Products and relevant Epoch Primers for use hereunder at Qiagen
facilities in Europe and/or Japan, and (b) Epoch to provide personnel to
supervise the manufacture of MGB Eclipse Probes for Products and relevant Epoch
Primers at Qiagen facilities in Europe and/or Japan. When completed, the Back-Up
Manufacturing Agreement shall be appended to this Agreement as Exhibit G. For
the purposes of this Section 9.5 and the Back-Up Manufacturing Agreement, a
"Failure to Supply" shall mean that Epoch has failed to fulfill Qiagen's
forecasted production requests with respect to the MGB Eclipse Probes for
Products and relevant Epoch Primers according to the supply timelines as set
forth in Section 3.4, with respect to at least [*] percent ([*]%) of the
forecasted volume in two (2) consecutive calendar quarters, and fails to correct
the cause of any such failure following written notice from Qiagen, which
failure to correct shall be evidenced by a failure to fulfill Qiagen's
forecasted production requests with respect to the MGB Eclipse Probes for
Products and relevant Epoch Primers according to the supply timelines as set
forth in Section 3.4, with respect to at least [*] percent ([*]%) of Qiagen's
forecasted volume during the subsequent calendar quarter. A Failure to Supply
shall be deemed to have ceased once Epoch provides Qiagen with reasonable
evidence that it has corrected the cause of the Failure to Supply.
10. TRAINING AND SUPPORT.
10.1 INITIAL LAUNCH TRAINING. Epoch agrees to provide an initial
training session of two or three days in duration for up to [*] of Qiagen's
personnel to train such Qiagen personnel to perform technical assistance and
support for its customers (including Primary Product Technical Services). Such
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initial training session will be conducted upon Qiagen's request one (1) time
within three (3) months of the date of this Agreement at or near Epoch's
facilities in Bothell, Washington or, at Qiagen's election and upon agreement by
and under the guidance of Epoch, at Qiagen's facilities. Qiagen shall reimburse
Epoch for its costs as set forth below, including the reasonable travel and
lodging expenses of Epoch personnel in the event that such training is conducted
at Qiagen's facilities. In all cases Qiagen shall bear the cost of travel and
lodging for its own personnel. In addition, Epoch will provide Product updates
and service bulletins relevant to Products as they become available.
10.2 TECHNICAL SUPPORT AND SALES ASSISTANCE.
(a) SOFTWARE TECHNICAL SERVICES. During the first three (3)
months following the date hereof, Epoch shall train Qiagen's internal technical
service personnel upon Qiagen's request to provide assistance to customers of
the Products seeking technical assistance in the use of the MGB Eclipse
Software, via telephone, email or similar remote means. Qiagen shall reimburse
Epoch [*] percent ([*]%) of its fully-burdened personnel costs and any
documented, reasonable out-of-pocket expenses incurred in providing such
services and training.
(b) PRIMARY PRODUCT TECHNICAL SERVICES. Qiagen shall provide
Primary Product Technical Services with respect to the Custom Probe Sets. During
the first one hundred and twenty (120) days following Commercial Launch, Epoch
shall, at Qiagen's request, provide assistance to Qiagen with respect to the
Primary Product Technical Services in addition to that set forth in Section
10.1. Qiagen shall reimburse Epoch [*] percent ([*]%) of its fully-burdened
personnel costs and any documented, reasonable out-of-pocket expenses incurred
in providing such services described above.
(c) SECONDARY PRODUCT TECHNICAL SERVICES. During the first one
hundred and twenty (120) days following Commercial Launch, Epoch shall, at
Qiagen's request, provide reasonable Secondary Product Technical Services with
respect to the Custom Probe Sets at no extra-expense. Thereafter, Epoch shall
provide reasonable Secondary Product Technical Services with respect to the
Custom Probe Sets at Qiagen's request, and Qiagen shall reimburse Epoch [*]
percent ([*]%) of its fully-burdened personnel costs and any documented,
reasonable out-of-pocket expenses incurred in providing such Secondary Product
Technical Services.
(d) ADDITIONAL TRAINING. Additional training may be provided
upon request by Qiagen and agreement by Epoch, provided that Qiagen reimburses
Epoch [*] percent ([*]%) of its fully-burdened personnel costs and any
documented, reasonable out-of-pocket expenses.
(e) REPORTS AND REIMBURSEMENT. Epoch shall periodically provide
Qiagen a reasonably detailed accounting of its costs and expenses under Sections
10.2 (a), (b), (c) and (d) and Qiagen shall pay to Epoch in U.S. dollars the
amounts listed therein within thirty (30) days of receipt of such accounting.
11. REPRESENTATIONS AND WARRANTIES.
11.1 EPOCH. Epoch represents and warrants to Qiagen that (a) Epoch has
all necessary corporate power and authority to enter into this Agreement and to
perform all of its obligations hereunder, (b) this Agreement has been duly
authorized, executed and delivered by Epoch, (c) the execution, delivery
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21
and performance by Epoch of this Agreement, and the consummation of the
transactions contemplated hereby, do not violate or conflict with the charter or
bylaws of Epoch, any material contract, agreement or instrument to which Epoch
is a Party or by which it or its properties are bound, or any judgment, decree,
order or award of any court, governmental body or arbitrator by which Epoch is
bound, or any law, rule or regulation applicable to Epoch, and (d) there is no
pending and, to its best knowledge, there is no pending or threatened claim,
action, suit or proceeding involving a claim that the manufacture, distribution
or sale of any Products as contemplated herein would infringe or violate the
intellectual, proprietary or other rights of any other Person, excluding any
activities described in Section 2.3(c).
11.2 QIAGEN. Qiagen represents and warrants to Epoch that (a) Qiagen has
all necessary corporate power and authority to enter into this Agreement and to
perform all of its obligations hereunder, (b) this Agreement has been duly
authorized, executed and delivered by Epoch, and (c) the execution, delivery and
performance by Qiagen of this Agreement, and the consummation of the
transactions contemplated hereby, do not violate or conflict with the
Certificate of Incorporation or Bylaws of Qiagen, any material contract,
agreement or instrument to which Qiagen is a Party or by which it or its
properties are bound, or any judgment, decree, order or award of any court,
governmental body or arbitrator by which Qiagen is bound, or any law, rule or
regulation applicable to Qiagen.
11.3 OWNERSHIP OF INTELLECTUAL PROPERTY/AUTHORITY TO GRANT LICENSES.
Epoch warrants to Qiagen that as of the Effective Date of this Agreement, to the
best of the knowledge of Epoch's officers, the MGB Eclipse Probes, when used in
the Field in accordance with the instructions for use as set forth in Exhibit I
hereto, do not infringe any valid patent, copyright, trademark, or trade secret
of a third party. Pursuant to that certain license agreement by and between
Epoch and [*] (the "[*] License Agreement"), [*] has licensed to Epoch certain
[*] patents which are included in the Patent Rights and sublicensed to Qiagen
hereunder.[*]. In addition, under the [*] License Agreement, [*] agreed that in
the event that subsequent to the date of the [*] License Agreement [*] acquires
patents which would be infringed as a direct result of Epoch's exploitation of
its license, that such additional patents ("[*] Blocking Patents") would also be
covered by the license granted by [*] to Epoch, and available for sublicensing
to Qiagen hereunder consistent with the terms hereof. Epoch agrees that any such
[*] Blocking Patents included under the [*] License Agreement shall be included
in Patent Rights at no additional expense to Qiagen.
12. CONFIDENTIALITY.
12.1 CONFIDENTIALITY. Each Party acknowledges that, in the course of
performing its duties and obligations under this Agreement, certain information
that is confidential or proprietary to such Party ("Confidential Information")
will be furnished by the other Party or such other Party's representatives. In
particular, the probe sequences as designed by Qiagen or its customers and
ordered as MGB Eclipse Probes for Catalog Probe Sets or Custom Probe Sets shall
be deemed Confidential Information of Qiagen. Each Party agrees that except as
set forth in this Agreement, any Confidential Information furnished by the other
Party or such other Party's representatives will not be used by it or its
representatives except in connection with, and for the purposes of, the
manufacture, promotion, marketing, distribution and sale of Products, or
components thereof, in accordance with the terms of this Agreement and, except
as provided herein, will not be disclosed by it or its representatives without
the prior written consent of the other Party. Notwithstanding the foregoing,
except for such information as is automatically deemed Confidential Information
of Qiagen as set forth above, the parties agree that all Confidential
Information shall be clearly marked "CONFIDENTIAL" or, if in furnished in oral
form, shall be stated to be
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confidential by the Party disclosing such information at the time of such
disclosure and reduced to a writing by the Party disclosing such information
which is furnished to the other Party or such other Party's representatives
within forty-five (45) days after such disclosure.
12.2 EXCEPTIONS. The confidentiality obligations of each Party including
its representatives, a "Receiving Party" under Section 12.1 do not extend to any
Confidential Information furnished by the other Party or such other Party's
representatives (the "Disclosing Party") that (a) is or becomes generally
available to the public other than as a result of a disclosure by such Receiving
Party, (b) was available to such Receiving Party on a non-confidential basis
prior to its disclosure thereto by the Disclosing Party, (c) was independently
developed by the Receiving Party without the use of the Disclosing Party's
Confidential Information by representatives of such Receiving Party who did not
have access to the Disclosing Party's Confidential Information, as established
by contemporaneous written records, or (d) becomes available to such Receiving
Party on an non-confidential basis from a source other than the Disclosing Party
having the lawful right to disclose it. For purposes of clarity, the Parties
acknowledge that third parties may order, and Epoch may manufacture for such
parties, MGB Eclipse Probes containing sequences identical to those ordered by
Qiagen hereunder, or vice versa, but Epoch shall not disclose to such third
party or Qiagen whether any such event occurs. Notwithstanding any other
provision hereof to the contrary, Epoch shall not knowingly use the Qiagen
Confidential Information with respect to the sequences as designed by Qiagen or
its customers and ordered as MGB Eclipse Probes for Catalogue Probe Sets or
Custom Probe Sets in designing its own products in the Field or outside the
Field, or in designing products for Epoch's other distributors or licensees in
the Field or outside the Field, and Qiagen agrees that so long as Epoch does not
knowingly use such information in the manner described above, any failure by
Epoch with respect to such use of Qiagen Confidential Information with respect
to the sequences as designed by Qiagen or its customers and ordered as MGB
Eclipse Probes for Catalogue Probe Sets or Custom Probe Sets shall not give rise
to a claim by Qiagen against Epoch for such use. Subject to Section 8.6 hereof,
nothing herein shall prohibit Qiagen from designing a Product using any probe
sequence it desires, including any probe sequence which may be utilized by Epoch
in an [*].
12.3 COMPELLED DISCLOSURE. In the event that a Receiving Party is
requested or becomes legally compelled (by oral questions, interrogatories,
requests for information or document subpoena, civil investigative demand or
similar process) to disclose any Confidential Information furnished by a
Disclosing Party or to disclose the fact that such Confidential Information has
been made available to it, such Receiving Party agrees that it or its
representatives, as the case may be, will provide the Disclosing Party with
prompt written notice of such request(s) so that the Disclosing Party may seek a
protective order or other appropriate remedy and/or waive compliance with the
provisions of this Agreement. In the event that such protective order or other
remedy is not obtained, or that the Disclosing Party waives compliance with the
provisions of this Agreement, such Receiving Party agrees that it will furnish
only that portion of such Confidential Information that is legally required and
will exercise its best efforts to obtain reliable assurance that confidential
treatment will be accorded to that portion of such Confidential Information and
other information being disclosed.
12.4 PUBLICATIONS AND PRESS RELEASES. All publications, press releases
or other public communication by either Party relating to this Agreement shall
be approved in advance by each Party, except for those communications required
by law. Any such approval requested under this Section shall not be unreasonably
withheld or delayed. To the extent a disclosure is required by law, each Party
shall
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provide the other with prior written notification of such disclosure (except for
such disclosures that may be required pursuant to the Securities Act of 1933, as
amended, the Securities Exchange Act of 1934, as amended, and the rules and
regulations promulgated thereunder).
12.5 RETURN OF CONFIDENTIAL INFORMATION. In the event of termination of
the Custom Term or Catalogue Term, at any time thereafter upon the request of
the Disclosing Party, the Receiving Party shall promptly return to the
Disclosing Party or destroy (at the Disclosing Party's option) any of the
Disclosing Party's Confidential Information responsive to such request (relating
to the matters terminated by the termination of the Custom Term or Catalogue
Term, as the case may be), including all copies thereof, except that the
Receiving Party may retain one copy of the Confidential Information (a) to be
used solely to determine the scope of the Receiving Party's obligations under
this Agreement, (b) to be kept secure, and (c) to not be disclosed to others.
The return and/or destruction of such Confidential Information as provided above
shall not relieve the receiving Party of its other obligations under this
Agreement.
12.6 SURVIVAL. The obligations of the parties under this Section 12
shall continue during the term hereof, and shall then survive the expiration or
earlier termination of this Agreement or any continuation thereof for a period
of an additional [*] years.
13. INDEMNIFICATION.
13.1 EPOCH INDEMNITY. Epoch agrees to indemnify, defend and hold
harmless Qiagen and its Affiliates from and against any claims, losses, damages,
liabilities, causes of action, suits, costs and expenses, including all
reasonable attorneys' fees and disbursements of counsel and expenses of
investigation, incurred by Qiagen or such Affiliates arising out any third party
claim relating to any breach by Epoch of its representations, warranties,
covenants and agreements under this Agreement; provided however, that Epoch
shall have no obligation to indemnify Qiagen as a result of any liability
arising out of any matter with respect to which Qiagen is obligated to indemnify
Epoch pursuant to Section 13.2.
13.2 QIAGEN INDEMNITY. Qiagen agrees to indemnify, defend and hold
harmless Epoch and its Affiliates from and against any claims, losses, damages,
liabilities, causes of action, suits, costs and expenses, including all
reasonable attorneys' fees and disbursements of counsel and expenses of
investigation, incurred by Epoch or such Affiliates arising out of:
(a) a third party claim relating to any breach by Qiagen of its
representations, warranties, covenants and agreements under this Agreement, or
(b) any claim that the use, sale, marketing, packaging or
distribution of the Products or Epoch Primers infringes the rights of a third
party (including any intellectual property or proprietary rights), which claim
arises from:
(i) Qiagen's failure to comply with the provisions of
Section 2.7,
(ii) Qiagen's labeling and instructions for use of the
Products (including any such instructions differing from those set forth on
Exhibit I),
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(iii) repackaging of the Products or Epoch Primers by
Qiagen, or
(iv) any action by Epoch (other than manufacture and
supply of Product Deliverables) performed at Qiagen's request in connection with
Qiagen's use, sale, marketing, packaging or distribution of the Products or
Epoch Primers.
13.3 CLAIMS FOR INDEMNIFICATION. Whenever any indemnification claim
arises under this Agreement, the Party seeking indemnification (the "Indemnified
Party") shall promptly notify the other Party (the "Indemnifying Party") of the
claim and, when known, the facts constituting the basis of such claim; provided,
however, that failure to give such notice shall not relieve the Indemnifying
Party of its obligation hereunder unless and to the extent that such failure
materially prejudices the Indemnifying Party. The Indemnifying Party shall
assume the defense of such claim with counsel reasonably satisfactory to the
Indemnified Party, and shall thereafter be liable for all expenses incurred in
connection with defense thereof, including attorneys' fees and expenses;
provided, however, that the Indemnified Party may participate in such defense at
its own expense and with counsel of its choice; provided further, however, that
if there are one or more legal defenses available to the Indemnified Party that
conflict with those available to the Indemnifying Party or there exists any
other conflict of interest, the Indemnifying Party shall have the right to
assume the defense of such claim but the Indemnified Party shall have the right
to employ separate counsel at the expense of the Indemnifying Party and to
participate in the defense thereof. The Indemnifying Party shall, in its defense
of such claim, do so diligently and shall have the right to settle any claim for
monetary damages, provided such settlement includes a complete and absolute
release of the Indemnified Party. Notwithstanding anything to the contrary, the
Indemnifying Party may not settle any claims for fines, penalties or the like
without the prior written consent of the Indemnified Party, which consent shall
not be unreasonably withheld or delayed. In the event the Indemnifying Party
fails to assume the defense of such claim described above, the Indemnified Party
shall have the right to assume the defense of such claim and the Indemnifying
Party shall, on a monthly basis, promptly advance to the Indemnified Party cash
amounts reasonably sufficient to fund all reasonable costs and expenses of such
defense, upon request by the Indemnified Party.
13.4 THIRD PARTY INFRINGEMENT. In the case of any infringement or
violation by any third party of any distribution or other rights granted to
Qiagen hereunder, Epoch shall have the right, but not the obligation, at Epoch's
expense, to cause such third party to cease such infringement and to otherwise
enforce such rights. Each Party shall promptly notify the other of any such
infringement or violation and Epoch shall keep Qiagen informed as to the
prosecution of any action for such enforcement. Qiagen shall assist Epoch as
reasonably requested in taking any such actions against any such infringer and
may join with Epoch to recover lost profits in any action, suit or proceeding
commenced, or claim made, by Epoch against such infringer. If Epoch fails to
bring an action or proceeding with respect the foregoing within: (a) sixty (60)
business days following the notice of alleged infringement or violation or (b)
ten (10) days before the time limit, if any, set forth in the appropriate laws
and regulations for the filing of such actions, whichever comes first, Qiagen
shall have the right to bring and control any such action, by counsel of its own
choice, at Qiagen's own expense. In such event, Epoch shall assist Qiagen as
reasonably requested in taking any such actions against any such infringer and
may join with Qiagen to recover lost profits in any action, suit or proceeding
commenced, or claim made, by Qiagen against such infringer. Any amounts
recovered as a result of any such action, suit, proceeding or claim shall be
applied, first, to reimburse Epoch and Qiagen for their out-of-pocket costs and
expenses incurred in connection therewith, and, second, to compensate Epoch and
Qiagen for any lost profits resulting from such infringement as may be agreed
upon by the parties consistent with the general economic provisions of this
Agreement.
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13.5 LIMITATION ON LIABILITY. IN NO EVENT SHALL EPOCH BE LIABLE TO
QIAGEN OR ANY OTHER PERSON FOR ANY INDIRECT, SPECIAL, CONSEQUENTIAL OR
INCIDENTAL DAMAGES, HOWEVER CAUSED AND BASED ON ANY THEORY OF LIABILITY, ARISING
OUT OF THIS AGREEMENT, THE PERFORMANCE BY EPOCH OF ITS OBLIGATIONS HEREUNDER OR
THE MARKETING, DISTRIBUTION OR SALE OF PRODUCTS, AND WHETHER OR NOT EPOCH HAS
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. THIS LIMITATION SHALL APPLY
NOTWITHSTANDING ANY FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED REMEDY PROVIDED
FOR HEREIN.
14. TERM AND TERMINATION.
14.1 TERM. The provisions of this Agreement relating to the license,
supply and distribution of the Custom Probe Sets (the "Custom Term") shall
commence on the Effective Date, and shall continue for a period of five (5)
years from the date of Commercial Launch, unless earlier terminated pursuant to
Section 14.2. The provisions of this Agreement relating to the license, supply
and distribution of the Catalogue Probe Sets shall commence on the Effective
Date and terminate upon termination of the Catalogue Term, unless earlier
terminated pursuant to Section 14.2. This Agreement shall terminate in its
entirety (except for those provisions which survive termination as set forth
herein) upon the termination of both the Custom Term and Catalogue Term. The
Custom Term may be extended and renewed for successive one (1) year periods
prior to the expiration of the Custom Term by mutual agreement of the parties,
which agreement shall be reached at least ninety (90) days prior to any
expiration thereof.
14.2 TERMINATION OF AGREEMENT. This Agreement (including the Custom Term
and the Catalogue Term) may be terminated as follows:
(a) Upon the mutual written agreement of the Parties.
(b) By Epoch, if Qiagen breaches any of its material
representations, warranties, covenants or obligations under this Agreement and
such breach continues for a period of thirty (30) days following Qiagen's
receipt of written notice from Epoch setting forth the nature of such breach;
provided, however, that in the event such breach is not cured within such thirty
(30) day period, Epoch may not so terminate if Qiagen promptly commences to cure
such breach within such thirty (30) day period and thereafter diligently pursues
such cure to completion; provided further, however, that the cure period for any
such breach shall not exceed sixty (60) days from the date of Qiagen's receipt
of written notice from Epoch.
(c) By Epoch, if Commercial Launch does not occur by [*] or if
the first commercial sale of the Products by Qiagen does not occur by [*].
(d) By Qiagen, if Epoch breaches any of its material
representations, warranties, covenants or obligations under this Agreement and
such breach continues for a period of thirty (30) days following Epoch's receipt
of written notice from Qiagen setting forth the nature of such breach; provided,
however, that in the event such breach is not cured within such thirty (30) day
period, Qiagen may not so terminate if Epoch promptly commences to cure such
breach within such thirty (30) day period and thereafter diligently pursues such
cure to completion; provided further, however, that the cure period for
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any such breach shall not exceed sixty (60) days from the date of Epoch's
receipt of written notice from Qiagen.
(e) Qiagen may terminate this Agreement (i) upon ninety (90)
days prior written notice or (ii) upon thirty (30) days written notice if Epoch
fails, pursuant to Section 9.2, to obtain all licenses that are necessary to
manufacture and supply to Qiagen to the Product Deliverables within the
Territory within the Field and in accordance with the terms of this Agreement,
and to enable Qiagen to resell Products incorporating the Product Deliverables
in accordance with this Agreement subject to Epoch's instructions for use as set
forth in Exhibit I hereto.
(f) Either Party may terminate immediately this Agreement
(including the Custom Term and the Catalogue Term) by written notice upon the
occurrence of any of the following events: (i) the other Party is or becomes
insolvent or unable to pay its debts as they become due within the meaning of
the United States Bankruptcy Code (or any successor statute or foreign
equivalent); or (ii) the other Party appoints or has appointed a receiver for
all or substantially all of its assets, or makes an assignment for the benefit
of its creditors; or (iii) the other Party files a voluntary petition under the
United States Bankruptcy Code (or any successor statute or foreign equivalent);
or (iv) the other Party has filed against it an involuntary petition under the
United States Bankruptcy Code (or any successor statute or foreign equivalent),
and such petition is not dismissed within ninety (90) days.
I 14.3 CHANGE IN CONTROL. In the event of a Change in Control of Epoch
and the surviving or controlling entity desires to distribute Similar Products
to Custom Probe Sets in any country in the Territory, then Epoch shall have the
right to terminate the Custom Term with respect to such country or countries, in
accordance with the following terms:
(a) Epoch shall provide Qiagen with a written notice of
termination of the Custom Term (the Change In Control "CIC Notice"), to become
effective one hundred eighty (180) days from the date of the notice (the "Notice
Period").
(b) Provided that as of the effective date of termination of the
Custom Term pursuant to this Section 14.3, Qiagen has satisfied all of its
minimum annual sales obligations pursuant to Section 8.4 for all years which
were completed prior to such date (which in the case of Year 1, may be
accomplished by means of the Shortfall Order in accordance with Section 8.4),
Epoch shall:
(i) Pay to Qiagen a "Termination Fee" equal to Qiagen's
Net Sales of Custom Probe Sets, in the country or countries in which Epoch has
terminated Qiagen's distribution rights during the [*] months prior to the date
of the CIC Notice. For purposes of this Section 14.3(b)(i) Qiagen's Net Sales in
currency other than U.S. dollars shall be converted into U.S. dollars for such
calculation on a monthly basis, based on the average exchange rate during the
applicable quarter, according to the exchange rates published in the U.S. West
Coast edition of the Wall Street Journal; and
(ii) Continue to supply Custom Probe Sets to Qiagen in
accordance with the terms of this Agreement for a period ending upon the earlier
to occur of [*] from the date of the CIC Notice or [*] from Commercial Launch.
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* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
27
14.4 EFFECT OF TERMINATION. (a) The expiration or earlier termination of
this Agreement, the Custom Term or the Catalogue Term shall not relieve any
Party of any of its rights or liabilities arising prior to or upon such
expiration or earlier termination. In addition, the provisions of Sections 2.9,
3.5(c) and 4.3 and Articles 11, 12, 13 and 15 shall survive any expiration and
termination of this Agreement. (b) Within thirty (30) business days following
the effective date of expiration or earlier termination of the Catalogue Term,
Qiagen shall provide to Epoch a complete inventory of Catalogue Probe Sets and
Epoch Primers in Qiagen's possession, in transit between Qiagen's authorized
locations or in transit to Qiagen from Epoch or otherwise in Qiagen's control.
Upon the effective date of expiration or earlier termination of the Catalogue
Term, Epoch shall, at its option, either permit Qiagen to continue to sell all
or part of those Catalogue Probe Sets in Qiagen's then existing inventory as
described in the foregoing sentence for a period of ninety (90) days following
such expiration or earlier termination, or else repurchase all or part of
Qiagen's then existing inventory, at a price equal to the price actually paid by
Qiagen (plus all taxes, duties, freight and insurance expenses); provided,
however, that Epoch shall destroy all Qiagen packaging and remove all Qiagen
labels before making any further use of such repurchased Catalogue Probe Sets.
14.5 RESIDUAL EPOCH BLOCKING PATENT LICENSE. In the event of the natural
expiration of the Catalogue Term (but not in the event of termination for any
other reason, including without limitation termination pursuant to Section
14.2), Qiagen may, upon written notice delivered to Epoch at least six (6)
months prior to the date of the natural expiration of the Catalogue Term, elect
to receive a license under, and subject to the restrictions of, the Epoch
Blocking Patents (and any [*] Blocking Patents for which Epoch has the right to
sublicense), to market, package, promote, sell, import, export and distribute
the MGB Eclipse Probes with respect to post-term Catalogue Probe Sets, and
relevant Epoch Primers, subject to the following terms:
(a) such license shall be non-exclusive, non-assignable,
non-sublicensable (except for sublicenses to end-user customers of Qiagen for
the use of the post-term Catalogue Probe Sets and Epoch Primers in the Field),
limited to the Field (as of the effective date of termination of the Catalogue
Term);
(b) such license shall be for the Territory (as of the effective
date of termination of the Catalogue Term);
(c) such license shall be subject to Qiagen's continuing
obligation to pay Catalogue Royalties equal to [*] percent ([*]%) of the amount
indicated in Section 4.1(b) with respect to post-term Catalogue Probe Sets and
relevant Epoch Primers for so long as the manufacture, use or sale of such
Catalogue Probe Set and/or relevant Epoch Primers would infringe an Epoch
Blocking Patent in the country where it is manufactured, used or sold,
regardless of the party manufacturing post-term Catalogue Probe Sets and
relevant Epoch Primers; and
(d) such license shall be for a term ending upon date on which
such use ceases to be covered by the Epoch Blocking Patents.
In the event Qiagen elects a license pursuant to this Section 14.5, Section
14.4(b) shall not apply and Qiagen may sell any inventory of Catalogue Probe
Sets in accordance with the terms hereof. Qiagen acknowledges and agrees that if
Qiagen manufactures or has manufactured any post-term Products or Epoch Primers
in connection with this Section 14.5, any such manufacture shall be subject to
the
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* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
28
applicable intellectual property rights of third parties, and Epoch shall have
no liability hereunder for any claim or action brought by any party in relation
thereto, and Qiagen shall indemnify, defend and hold harmless Epoch for any
liabilities resulting therefrom pursuant to the indemnification provisions of
Section 13.2 and 13.3. The following sections of this Agreement shall survive
and remain in effect during the term of, and for the purposes of, the residual
Epoch Blocking Patent license described in this Section 14.5 (in addition to
those provisions surviving any termination of this Agreement pursuant to Section
14.4): Sections 2.4, 2.5, 2.6, 2.7 and 2.9, and Section 4 (to the extent
relevant to Catalogue Royalties). For purposes hereof, "post-term Catalogue
Probe Sets" and "post-term Products" means products equivalent to Catalogue
Probe Sets whether or not components are manufactured by Epoch.
15. GENERAL PROVISIONS.
15.1 FORCE MAJEURE. Neither Party shall be liable to the other Party for
non-performance of or delay in performing its obligations hereunder (other than
the payment of money) to the extent that performance is rendered impossible by
strike, riot, war, acts of God, earthquake, fire, flood, governmental acts or
orders or restrictions, failure of Epoch's suppliers or vendors, or any other
reason to the extent that the failure to perform is beyond the reasonable
control of the non-performing Party.
15.2 INDEPENDENT CONTRACTORS. The relationship of Epoch and Qiagen
established by this Agreement is that of independent contractors, and nothing
shall be deemed to create or imply any employer/employee, principal/agent,
partner/partner or co-venturer relationship, or that the parties are
participants in a common undertaking. Neither Party shall have the right to
direct or control the activities of the other Party or incur or assume any
obligation on behalf of the other Party or bind such other Party to any
obligation for any purpose whatsoever.
15.3 GOVERNING LAW. This Agreement and all acts and transactions
pursuant hereto and the rights and obligations of the parties hereto shall be
governed, construed and interpreted in accordance with the laws of the State of
Delaware, without reference to rules of conflicts or choice of laws.
15.4 ENTIRE AGREEMENT. This Agreement, including the exhibits, set forth
the entire agreement and understanding of the parties relating to the subject
matter hereof and supersedes all prior oral and written, and all contemporary
oral, negotiations, agreements and understandings with respect to the same.
15.5 NOTICES. All notices, requests, claims, demands and other
communications hereunder shall be in writing and shall be given (and shall be
deemed to have been duly given upon receipt) by delivery in person, by cable,
telegram, facsimile or telex, or by registered or certified mail (postage
prepaid, return receipt requested), to the other Party at the following address
(or at such other address for which such Party gives notice hereunder):
29
If to Qiagen, to: QIAGEN NV
▇/▇ ▇▇▇▇▇▇ ▇▇▇▇
▇▇▇-▇▇▇▇▇▇-▇▇▇▇▇▇▇ ▇
▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇
Attention: Peer ▇▇▇▇▇▇ (CFO
Telephone: [*]
Telecopier: [*]
If to Epoch, to: EPOCH BIOSCIENCES, INC.
▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇.▇., ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: Chief Executive Officer
Telephone: [*]
Telecopier: [*]
15.6 ASSIGNMENT AND BINDING EFFECT. Except as otherwise provided in this
Agreement, neither Party may, directly or indirectly, assign its rights or
delegate its duties under this Agreement without the prior written consent of
the other Party, such consent not to be unreasonably withheld, provided however,
this Agreement may be assigned by either Party in connection with any sale of
substantially all of the assets of such Party, whether via merger or otherwise.
No permitted assignment of rights or delegation of duties under this Agreement
shall relieve the assigning or delegating Party of its liabilities hereunder.
This Agreement is binding upon, and inures to the benefit of, the parties and
their respective successors and permitted assigns.
15.7 PARTIAL INVALIDITY. If any provision of this Agreement is held to
be invalid by a court of competent jurisdiction, then the remaining provisions
shall remain, nevertheless, in full force and effect. The parties agree to
renegotiate in good faith any term held invalid and to be bound by the mutually
agreed substitute provision in order to give the most approximate effect
intended by the parties as is legally permissible.
15.8 NO WAIVER; AMENDMENT. No waiver of any term or condition of this
Agreement shall be valid or binding on any Party unless agreed to in writing by
the Party to be charged. The failure of either Party to enforce at any time any
of the provisions of the Agreement, or the failure to require at any time
performance by the other Party of any of the provisions of this Agreement, shall
in no way be construed to be a present or future waiver of such provisions, nor
in any way affect the validity of either Party to enforce each and every such
provision thereafter. This Agreement may not be amended or modified except by
the written agreement of the parties.
15.9 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original and all of which, taken
together, shall constitute one instrument.
15.10 CONSTRUCTION; INTERPRETATION. The headings contained in this
Agreement are for reference purposes only and shall not affect in any way the
meaning or interpretation of this Agreement. Any article, section, recital,
exhibit, schedule and Party references are to this Agreement unless otherwise
stated. No Party, nor its counsel, shall be deemed the drafter of this Agreement
for purposes of construing the provisions of this Agreement, and all provisions
of this Agreement shall be construed in
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* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
30
accordance with their fair meaning, and not strictly for or against any Party.
While this Agreement may be translated into languages other than English for the
sake of convenience, the English version of this Agreement shall govern, and
shall be the sole version used in the interpretation of its terms.
15.11 FURTHER ASSURANCES. Each Party agrees to cooperate fully with the
other and execute such instruments, documents and agreements and take such
further actions to carry out the intents and purposes of this Agreement.
15.12 PRESS RELEASES AND ANNOUNCEMENTS. Except as may be contemplated
hereunder, neither Party may issue any press release or make any public
announcement concerning the transactions contemplated by this Agreement without
the prior consent of the other Party, except for any releases or announcements
which may be required by or, in such Party's reasonable discretion, reasonably
necessary under applicable law, in which case the Party proposing to make such
release or announcement will allow the other Party a reasonable opportunity to
review and comment on such release or announcement in advance of such issuance
or making.
15.13 ALTERNATIVE DISPUTE RESOLUTION. The parties shall initially
attempt in good faith to resolve any significant controversy, claim, allegation
of breach or dispute arising out of or relating to this Agreement (hereinafter
collectively referred to as a "Dispute") through negotiations between senior
executives of Qiagen and Epoch. If the Dispute is not resolved within thirty
(30) days (or such other period of time mutually agreed upon by the parties) of
notice of the Dispute (the "Executive Resolution Period"), then the parties
agree to submit the Dispute to arbitration as provided herein. Unless otherwise
mutually agreed by the parties, only if the Dispute is not resolved through
negotiations as set forth herein, may a Party resort to arbitration. All
proceedings in any arbitration shall be conducted in the English language.
(a) Any controversy, dispute or claim arising out of or relating
to this Agreement (or the breach hereof) that cannot be resolved by good faith
negotiation between or among the parties shall be finally submitted to the
American Arbitration Association ("AAA") for final and binding arbitration
pursuant to the Commercial Arbitration Rules of the AAA. Such arbitration shall
be held in Seattle, Washington (unless otherwise mutually agreed by the
Parties), before a single arbitrator. The arbitrator may enter a default
decision against any Party who fails to participate in the arbitration
proceedings. The decision of the arbitrator shall be final, unappealable and
binding, and judgment on the award rendered by the arbitrator may be entered in
any court having jurisdiction thereof. The arbitrator shall be authorized to
award any relief, whether legal or equitable, to the Party so entitled to such
relief.
(b) In respect of any suit, action or other proceeding relating
to the enforcement of any award rendered by the arbitrator, each Party
irrevocably submits to the non-exclusive jurisdiction of any state or federal
court located in the City of Seattle, State of Washington.
(c) The arbitrator shall be authorized to apportion its fees and
expenses and the reasonable attorney's fees and expenses of the parties as the
arbitrator deems appropriate. In the absence of any such apportionment, the
prevailing Party in any arbitration or other proceeding shall be entitled, in
addition to any other rights and remedies it may have, to reimbursement for its
expenses, including court costs and reasonable fees of attorneys and other
professionals.
(d) The parties agree that this Section 15.13 has been included
to resolve rapidly and inexpensively any claims or disputes between them with
respect to this Agreement, and that this Section
31
15.13 shall be grounds for dismissal of any action commenced by any Party in any
court with respect to any controversy, dispute or claim arising out of or
relating to this Agreement (or the breach hereof).
32
IN WITNESS WHEREOF, each of the undersigned has caused this Co-Exclusive
License and Supply Agreement to be duly executed as of the date first written
above.
QIAGEN NV, a Netherlands corporation
By: /s/ Paer ▇▇▇▇▇▇
-------------------------------------
Name: Paer ▇▇▇▇▇▇
Title: Chief Executive Officer
EPOCH BIOSCIENCES, INC.,
a Delaware corporation
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
-------------------------------------
Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Its: President and Chief
Executive Officer
33
EXHIBIT F
MGB ECLIPSE SOFTWARE LICENSE AGREEMENT
This MGB Eclipse Software License Agreement ("Agreement") is made on
November 4th, 2002 (the "Effective Date") between Epoch Biosciences, Inc.
("Licensor"), a Delaware corporation, and Qiagen NV, (the "Licensee"), a
Netherlands corporation.
RECITALS
A. Licensor has certain rights and interests in certain computer software which
provides a means to choose oligonucleotides for DNA and RNA based laboratory
methods.
B. Licensee develops, manufactures, markets, distributes and sells proprietary
instruments and reagents used to perform genomic analysis.
C. Licensor and Licensee are parties to that certain License and Supply
Agreement (the "Supply Agreement"), of even date herewith, pursuant to which
Licensor has appointed Licensee as its co-exclusive distributor of certain
Products in a designated Field (each as defined in the Supply Agreement), and
Licensee has accepted such appointment.
D. Licensor desires to license to Licensee certain of its computer software on a
limited basis in order to enable Licensee to use such software in the manner
contemplated herein, and Licensee desires to accept such license on the terms
set forth herein.
NOW THEREFORE, in consideration of the terms and conditions of this Agreement,
the parties agree as follows:
1. Grant of License and Use of Product.
(a) Subject to the terms, conditions and restrictions set forth herein, Licensor
grants to Licensee a limited, revocable, non-exclusive, non-sublicensable and
nontransferable license to (i) install and execute a single copy of the software
described on Appendix A hereto in binary executable form only (the "Software"),
on computers or servers owned and operated by or on behalf of Licensee which
host web site(s) owned and operated by or on behalf of Licensee (which web
site(s) are accessible via the Internet using an industry standard web browser),
to enable Licensee or customers of Licensee to access and use the Software via
such web site(s) to choose oligonucleotides for DNA and RNA based laboratory
methods in the Field, (ii) utilize the ordering function of the Software to
place orders with Licensor for Licensor's custom oligonucleotide hybridization
probes, subject to the terms of the Supply Agreement, and (iii) to use any
accompanying documentation provided to Licensee by Licensor in connection with
the license granted in subsection (i) above. Licensee may make one copy of the
Software for backup or archival purposes; provided that such copy is subject to
this Agreement and contains all proprietary notices. Licensee may not make any
other copies of the Software or any part thereof without the prior permission of
Licensor. For the purposes of this Agreement, "Software" includes any updates or
enhancements to the Software provided to Licensee by Licensor pursuant to the
terms of the Supply Agreement.
(b) Without limiting the foregoing, Licensee may not, and may not permit or
cause others to:
(i) alter or modify, or create derivative works from the Software or any
accompanying documentation;
(ii) copy any portion of the code that constitutes the Software;
(iii) copy or use any of the parameters or algorithms within the
Software for any purpose;
(iv) publish, rent, sell, loan, lease, distribute, redistribute,
transmit, license, sublicense or otherwise transfer or assign the Software or
any accompanying documentation whether by operation of law or otherwise, with or
without consideration, and through any means including without limitation the
Internet or other electronic means (except as expressly set forth in Section
1(a)(i));
(v) translate, decipher, reverse assemble, reverse compile or reverse
engineer the Software, or otherwise attempt to discover any source code or
underlying Proprietary Information (as that term is defined below);
(vi) publish or provide any results of any tests run, accounts or other
information regarding the Software to any third party without Licensor's prior
written consent or permit any third party to perform such tests; or
34
(vii) delete, remove or obscure any proprietary notices of Licensor on
the Software or any accompanying documentation.
2. Ownership. Title to, ownership of and intellectual property rights in the
Software, any accompanying documentation, Proprietary Information (as defined
below) and all copies thereof shall, as between Licensor and Licensee, be and at
all times remain with Licensor or its designees, as applicable. All rights not
expressly licensed herein are reserved to Licensor. Any corrections, bug fixes,
enhancements, updates, modifications (including custom modifications),
materials, information, ideas, concepts or know-how to the Software or any
accompanying documentation, provided by Licensee or otherwise, shall be owned by
Licensor, as applicable. Licensee hereby acknowledges that this Agreement is a
license agreement and not an agreement for sale.
3. Consideration. The rights granted to Licensee hereunder are in consideration
of the mutual promises and obligations of the parties pursuant to the Supply
Agreement. This Agreement does not grant to Licensee the right to any
maintenance or support services, or to any enhancement or updates of the
Software, other than updates to the MGB Eclipse Design Software for Gene
Expression version of the Software developed by Epoch.
4. Acknowledgments. Licensee expressly acknowledges that Licensee is solely
responsible for any use of the Software, and such use will be entirely at
Licensee's own risk. Licensee agrees that the Software shall not be used for or
in connection with any illegal purpose (including but not limited to
intellectual property infringement, fraud or defamation).
5. Nondisclosure. Licensee acknowledges that, in the course of using the
Software pursuant to this Agreement, Licensee may obtain confidential or
proprietary information relating to the Software, any accompanying documentation
or Licensor, including without limitation all technical, know-how, parameters,
settings, algorithms and specifications ("Proprietary Information"). Such
Proprietary Information shall belong solely to Licensor. Proprietary Information
shall not include information that is or becomes publicly known through no
wrongful act of Licensee or other licensees of the Software. Licensee shall not
use or disclose Proprietary Information to third parties without the written
consent of Licensor, and Licensee agrees to undertake reasonable measures to
maintain the Proprietary Information in confidence. Licensee agrees to report
immediately to Licensor any unauthorized use or disclosure of Proprietary
Information of which Licensee has actual knowledge.
6. Warranty Disclaimer. Licensor has no control over the conditions under which
Licensee uses the Software and does not and cannot warrant the results obtained
or not obtained by such use.
LICENSOR HEREBY EXPRESSLY DISCLAIMS ANY WARRANTY THAT LICENSEE'S USE OF THE
SOFTWARE WILL BE UNINTERRUPTED OR THAT THE OPERATION OF THE SOFTWARE WILL BE
ERROR-FREE OR SECURE. LICENSOR FURTHER DISCLAIMS ALL WARRANTIES, EXPRESS OR
IMPLIED, RELATING TO THE SOFTWARE INCLUDING, BUT NOT LIMITED TO, ANY WARRANTIES
AGAINST INFRINGEMENT OF THIRD PARTY RIGHTS, MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE. LICENSEE ACKNOWLEDGES THAT THE SOFTWARE IS PROVIDED "AS IS"
AND MAY NOT BE FUNCTIONAL ON ANY MACHINE OR IN ANY ENVIRONMENT. LICENSEE ASSUMES
ALL RISK OF THE USE, QUALITY, AND PERFORMANCE OF THE SOFTWARE.
7. Limitation of Remedies and Damages. IN NO EVENT SHALL LICENSOR OR ITS
AFFILIATES, OR ANY OF THEIR DIRECTORS, OFFICERS, EMPLOYEES AND AGENTS BE
RESPONSIBLE OR LIABLE FOR ANY LOST PROFITS, LOSS OF GOODWILL, WORK STOPPAGE,
COMPUTER FAILURE, LOSS OF INFORMATION, LOSS OF DATA, OR ANY DIRECT, INDIRECT,
INCIDENTAL, CONSEQUENTIAL, SPECIAL, EXEMPLARY, PUNITIVE OR OTHER DAMAGES (EVEN
IF LICENSOR HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES) UNDER ANY
CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER THEORY ARISING OUT OF OR
RELATING IN ANY WAY TO THE SOFTWARE OR ANY OTHER SUBJECT MATTER OF THIS
AGREEMENT. LICENSOR SHALL NOT BE LIABLE FOR ANY LOSS OR DAMAGE CAUSED BY DELAY
IN FURNISHING THE SOFTWARE OR ANY OTHER PERFORMANCE UNDER THIS AGREEMENT.
LICENSEE'S SOLE REMEDY
35
FOR DISSATISFACTION WITH THE SOFTWARE IS TO TERMINATE THIS AGREEMENT PURSUANT TO
SECTION 14 BELOW. IN NO EVENT SHALL LICENSOR'S LIABILITY EXCEED TEN PERCENT
(10%) OF THE TECHNOLOGY ACCESS FEES PAID BY LICENSOR TO LICENSEE PURSUANT TO
SECTION 2.3(f) OF THE SUPPLY AGREEMENT. SOME JURISDICTIONS DO NOT ALLOW THE
EXCLUSION OR LIMITATION OF WARRANTY OR LIABILITY, SO THE FOREGOING EXCLUSIONS
AND LIMITATIONS MAY NOT APPLY TO LICENSEE.
8. Indemnification.
(a) Licensee shall defend, indemnify and hold Licensor harmless against any and
all claims, damages, losses, costs or other expenses (including reasonable
attorneys' fees) that arise directly or indirectly out of or from Licensee's
breach of this Agreement or the use of the Software by Licensee or by others to
whom Licensee has provided access to the Software.
(b) Licensor shall defend, indemnify and hold Licensor harmless against any and
all claims, damages, losses, costs or other expenses (including reasonable
attorneys' fees) that arise from any claim that the Software infringes the
rights of a third party in or to any U.S. or European copyright. If the Software
becomes, or in Licensor's reasonable opinion is likely to become, the subject of
an infringement claim, Licensor may, at its option and expense, either (i)
procure for Licensee the right to continue using the Software, (ii) replace or
modify the Software so that it becomes non-infringing, or, (iii) if neither (i)
nor (ii) above is possible, terminate this Agreement and accept return of the
Software and give Licensee a refund for ten percent (10%) of the technology
access fees paid by Licensor to Licensee pursuant to section 2.3(f) of the
Supply Agreement, less a reasonable allowance for the period of time Licensee
has used the Software. Notwithstanding the foregoing, Licensor will have no
obligation under this section or otherwise with respect to any infringement
claim to the extent such infringement claim is based upon (A) any use of the
Software not in accordance with this Agreement; (B) any use of the Software in
combination with other products, equipment, software, or data not supplied,
authorized in writing or recommended in writing by Licensor, if such
infringement would not have occurred but for such combination; (C) any use of
any release of the Software other than the most current release if such
infringement would not have occurred but for the use of the most current
release, provided that the most current release has been made available to
Licensee hereunder; or (D) any modification of the Software by any person other
than Licensor or its authorized agents or subcontractors. The foregoing states
Licensor's entire liability and Licensee's sole and exclusive remedy for
infringement claims and actions with respect to the Software. The foregoing does
not in any way limit the rights or liabilities of Licensee or Licensor under the
Supply Agreement with respect to any matters other than the Software.
9. Nonassignability. Neither Licensee's rights nor Licensee's obligations
arising under this Agreement are assignable or otherwise transferable by
Licensee (whether voluntarily or by operation of law) without the express
written consent of Licensor, which consent shall not be unreasonably withheld,
and any such prohibited assignment or transfer shall be void and without effect.
If Licensor should so consent in writing, the assignee shall be bound by all of
the terms and conditions of this Agreement. Licensor may assign any or all of
its rights or obligations hereunder without the consent of Licensee. Subject to
the provisions of this Section 9, this Agreement shall inure to the benefit of
and be binding upon each of the parties hereto and their respective permitted
successors and assigns.
10. Government Licensee. If Licensee is licensing the Software on behalf of any
unit or agency of the United States Government, the following applies: The
Software and any Proprietary Information is provided with RESTRICTED RIGHTS.
Use, duplication or disclosure by the Government is subject to restrictions as
set forth in Subparagraphs (a) through (d) of the Commercial Computer-Restricted
Rights clause at FAR 52.227-19 when applicable, or in Subparagraph 252.227-7013
(c)(1)(ii) of the Rights in Technical Data and Computer Software at DFARS, and
in similar clauses in the NASA FAR Supplement. Contractor/manufacturer is Epoch
Biosciences, Inc. at 21720 -- ▇▇▇▇ ▇▇▇▇▇ ▇▇, #▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇.
11. Applicable Law and Forum. This Agreement and all acts and transactions
pursuant hereto and the rights and obligations of the parties hereto shall be
governed, construed and interpreted in accordance with the laws of the State of
Delaware, without reference to rules of conflicts or choice of laws. Any dispute
arising
36
between the parties hereunder shall be governed by the dispute resolution
procedures set forth in the Supply Agreement.
12. Entire Agreement. The parties intend that the terms of this Agreement and
the Supply Agreement shall be the final expression of their agreement with
respect to the subject matter hereof and may not be contradicted by evidence of
any prior or contemporaneous agreement. The parties further intend that this
Agreement and the Supply Agreement shall constitute the complete and exclusive
statement of its terms and that no extrinsic evidence whatsoever may be
introduced in any judicial, administrative, or other legal proceeding involving
this Agreement. Any modifications of this Agreement must be in writing and
signed by both parties hereto. In the event that any of the provisions of this
Agreement shall be held by a court or other tribunal of competent jurisdiction
to be unenforceable, such provisions shall be limited or eliminated to the
minimum extent necessary so that this Agreement shall otherwise remain in full
force and effect and enforceable. No waiver of any breach of this Agreement
shall be effective unless made in writing and signed by an authorized
representative of the waiving party.
13. Equitable Relief. Licensee acknowledges and agrees that, due to the unique
nature of the Software and Proprietary Information, there can be no adequate
remedy at law for any breach of its obligations hereunder, that any such breach
may allow Licensee or third parties to unfairly compete with Licensor resulting
in irreparable harm to, and therefore, that, upon any such breach or threat
thereof, Licensor shall be entitled to injunctions and other appropriate
equitable relief in addition to whatever remedies they may have at law.
14. Termination. This Agreement shall be effective upon the Effective Date, and
shall terminate concurrently with the termination of the Supply Agreement. This
Agreement may also be terminated by Licensor immediately upon notice to Licensee
in the event of any breach by Licensee of the terms of this Agreement or upon
Licensee's insolvency, bankruptcy, suspension of business, assignment of assets
for the benefit of creditors, voluntary dissolution, or appointment of a trustee
for all or any substantial portion of Licensee's assets. In the event that this
Agreement is terminated for any reason, Licensee shall not be entitled to any
refund or credit of fees paid or payable hereunder. The following provisions
shall survive expiration or termination of this Agreement: Section 2 and
Sections 4 through 19, inclusive.
Upon expiration or termination of this Agreement, Licensee will immediately
destroy or erase all copies of the Software and any Proprietary Information and,
upon Licensor's request, promptly confirm destruction of same by signing and
returning to Licensor an "affidavit of destruction" acceptable to Licensor.
15. Export Controls. Licensee acknowledges that none of the Software or
Proprietary Information may be downloaded, transferred or otherwise exported or
re-exported (i) into (or to a national or resident of) Cuba, Iran, Iraq, Libya,
North Korea, Sudan, Syria or any other country to which the United States has
embargoed goods; or (ii) to anyone on the U.S. Treasury Department's list of
Specially Designated Nationals or the U.S. Commerce Department's Table of Denial
Orders. Licensee represents and warrants that he/she/it is not located in, under
the control of, or a national or resident of any such country or on any such
list.
16. Taxes. Licensee will pay all federal, state and local sales, personal
property, ad valorem and any other taxes (but not including Licensor's income
taxes) arising as a result of this Agreement.
17. Relationship of Parties. The parties to this Agreement are independent
contractors. No joint venture, agency or partnership, express or implied, is
granted under this Agreement.
18. Headings. The headings used in this Agreement are for convenience only and
shall not be considered in construing or interpreting this Agreement.
19. Notices. Unless herein provided otherwise, any notices required or permitted
under this Agreement to either party shall be sent to by registered or certified
mail or by express, overnight delivery, to the addresses set forth below each
parties name on the signature page to this Agreement (or at such other address
of which a party may from time to time notify the other party).
37
EXECUTION COPY
IN WITNESS WHEREOF, the parties have executed this MGB Eclipse Software License
Agreement as of the Effective Date.
LICENSOR LICENSEE
EPOCH BIOSCIENCES, INC. QIAGEN NV
By: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ By: /s/ Paer ▇▇▇▇▇▇
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Print Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ Print Name: Paer ▇▇▇▇▇▇
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Its: President and Chief Executive Officer Its: Chief Executive Officer
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Address: Address:
Epoch Biosciences, Inc., QIAGEN NV
Attention: Chief Financial Officer ▇/▇ ▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇ -- 23rd Drive SE, #150 Attention: Peer ▇▇▇▇▇▇ (CFO)
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇-▇▇▇▇▇▇-▇▇▇▇▇▇▇ ▇
▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇
APPENDIX A
LICENSED SOFTWARE
1. LICENSED SOFTWARE:
MGB Eclipse Design Software for Gene Expression
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