EXHIBIT 10.1
Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange
Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as
amended.
EXECUTION COPY - FINAL
LICENSE AMENDMENT AGREEMENT
This License Amendment Agreement (the "Agreement") is made by and between Geron
Corporation, a Delaware corporation having a principal place of business at ▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Geron"), and Transgenomic,
Inc., a Delaware corporation having a principal place of business at ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇, ▇▇ ▇▇▇▇▇, ("Transgenomic"), effective June 2, 2003.
WHEREAS, effective June 15, 1998, Lynx Therapeutics, Inc. ("Lynx") and Cruachem
Inc. ("Cruachem") entered into a License Agreement (the "License Agreement")
under which Lynx granted to Cruachem a license under certain patents owned by
Lynx (the "Lynx Patents") and certain patents owned by Northwestern University
and licensed exclusively to Lynx (the "Northwestern Patents"); and
WHEREAS, Lynx has assigned to Geron all Lynx's rights in the Lynx Patents and
the License Agreement, and granted to Geron an exclusive sublicense (subject to
the License Agreement) to the Northwestern Patents; Geron has assumed all Lynx's
obligations under the License Agreement; and Transgenomic is the successor in
interest to Cruachem with regard to the License Agreement; and
WHEREAS, Transgenomic and Geron now wish to amend the License Agreement to
broaden the scope of Transgenomic's license rights with respect to Licensed
Products (as such term is defined in the License Agreement) covered by the Lynx
Patents, as set forth herein; and
WHEREAS, Geron is willing to grant Transgenomic an option to amend the License
Agreement similarly with respect to Licensed Products covered by the
Northwestern Patents.
EXECUTION COPY - FINAL
NOW, THEREFORE, Transgenomic and Geron hereby agree as follows:
1. AMENDMENT OF LICENSE AGREEMENT. The License Agreement is amended as
indicated in the Amended License Agreement attached as Attachment A to this
Agreement. Added language is indicated by underlining (e.g., Added [text
underscored/example of added text]); deleted language is indicated by
strikethrough (e.g., Deleted [text struckthrough/example of deleted text]).
[See NOTE below] As amended, the License Agreement remains in full force and
effect.
2. CONSIDERATION FOR AMENDMENT. In consideration for Geron's agreement
to amend the License Agreement as described in Section 1, Transgenomic agrees to
pay Geron, in cash, the sum of [***] Dollars ($[***]) and to purchase three
hundred and ten thousand shares (310,000) shares of Geron's Common Stock, at a
price equal to the closing price on the date of issue of such shares, on the
terms and conditions of the Stock Purchase Agreement attached as Attachment B to
this Agreement, to be executed simultaneously with this Agreement.
3. OPTION FOR FURTHER AMENDMENT. Transgenomic shall have the option
(the "Option") to further amend the License Agreement to revise the definition
of "Field of Use" to delete the phrase "(for the Lynx Patents only)" before the
words "Therapeutic Uses." The Option shall be exercisable by written notice to
Geron given at any time before [***], provided that at such time the License
Agreement is in full force and effect and Transgenomic is in full compliance
with all its terms, and further provided that Transgenomic pays to Geron, in
consideration for the amendment, the sum of [***] Dollars ($[***]) in cash, or
other equivalent consideration as may be mutually agreed upon between the
parties.
The parties to this Amendment, having read and understood the foregoing,
acknowledge their legally binding acceptance of this Agreement by the signatures
of their respective authorized representatives below.
NOTE: For purposes of ▇▇▇▇▇ filing, Attachment A is the License Agreement as
amended, but not marked to show additions or deletions.
[***] Confidential portion has been filed separately with the Securities and
Exchange Commission.
-2-
EXECUTION COPY - FINAL
Accepted And Agreed:
GERON CORPORATION TRANSGENOMIC, INC.
/s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ /s/ ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
--------------------------------------- --------------------------------
▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ Name: ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Chief Financial Officer and Senior Title: Vice President,
Vice President, Corporate Secretary and Treasurer
Development
6/20/03 20 Jun 2003
--------------------------------------- --------------------------------
Date Date
-3-
ATTACHMENT A
AMENDED LICENSE AGREEMENT
This License Agreement ("Agreement") is effective as of the 15th day of
June, 1998 ("Effective Date"), by and between Transgenomic, Inc., a Delaware
corporation having its principal office at ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
as successor to Cruachem, Inc., ("Licensee"), and Geron Corporation, a Delaware
corporation having its principal office at ▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇,
▇▇ ▇▇▇▇▇, as assignee of Lynx Therapeutics, Inc., ("Licensor").
RECITALS
WHEREAS, Licensor owns and is an exclusive licensee of proprietary
technology relating to oligonucleotide N3'->P5' phosphoramidates, their
manufacture, and their uses in a variety of fields ("Amidate Technology");
WHEREAS, Licensee has expertise in nucleic acid chemistry and is in the
business of manufacturing, marketing, selling, and distributing nucleic acid
compounds; and
WHEREAS, Licensee desires to acquire from Licensor, and Licensor
desires to grant to Licensee in exchange for the consideration described below
the right to use Licensor's Amidate Technology to manufacture, market, sell, and
commercialize oligonucleotide N3'-->P5' phosphoramidates in the Field of Use.
NOW, THEREFORE, in view of the foregoing premises and in consideration
of the mutual promises and covenants contained in the Agreement, Licensor and
Licensee agree as follows:
ARTICLE 1. DEFINITIONS.
1.1 "Affiliate" means a corporation, partnership, entity, person, firm,
company or joint venture that controls, is controlled by or is under the common
control with the referenced Party. For the purposes of this definition the word
"control" (including, with correlative meaning, the
ATTACHMENT A--Amended License Agreement
Page A-4
terms "controlled by" or "is under the common control with") means the power to
direct or cause the direction of the management and policies of such entity, or
the ownership of at least fifty percent (50%) of the voting stock of such
entity.
1.2 "Licensed Product" shall mean any product(s) whose manufacture,
use, or sale in any country would, but for this Agreement, comprise an
infringement, including contributory infringement, of one or more Valid Claims,
including, without limitation, Monomer Licensed Products and Oligonucleotide
Licensed Products, as defined below.
1.3 "Monomer Licensed Product" shall mean a Licensed Product which is a
monomer used in the synthesis of an oligonucleotide N3'--->P5' phosphoramidate.
1.4 "Net Sales" means the total amount invoiced or otherwise charged by
Licensee or its Affiliates or its sublicensee on account of the final or end
product sale of a Licensed Product to a non-Affiliate, less the following
deductions to the extent actually incurred or allowed based upon the sale of
such Licensed Product:
(a) credits, allowances, discounts and rebates to, and chargebacks from
the account of, such non-Affiliate for spoiled, damaged, out dated and returned
Licensed Product;
(b) freight and insurance costs for transporting such Licensed Product,
to the extent invoiced to the purchaser;
(c) sales, value-added and other direct taxes on the sale of the
Licensed Product;
(d) customs duties, surcharges and other governmental charges incurred
in connection with the exportation or importation of such Licensed Product;
(e) trade, cash, and quantity discounts off of the invoiced price and
similar promotional discounts (such as management fees required by hospital
buying groups) off the invoiced price, all to the extent consistent with normal
practice in the industry;
(f) amounts reflecting retroactive price adjustments on sale of
Licensed Products, to the extent not previously deducted from Net Sales; and
(g) rebates or chargebacks made on the sale of such Licensed Product,
to the extent consistent with the normal practice in the industry, and provided
that any and all of the foregoing are calculated in accordance with generally
accepted accounting principles applicable to the
ATTACHMENT A--Amended License Agreement
Page A-5
locality where the invoices are prepared and consistently applied.
1.5 "Oligonucleotide Licensed Product" shall mean a Licensed Product
which is an oligonucleotide N3'--->P5' phosphoramidate.
1.6 "Patent Rights" shall mean the patents and patent applications
listed in Exhibit A (consisting of the patents and patent applications listed in
Exhibit A-1 (the "Lynx Patents") and the patents and patent applications listed
in Exhibit A-2 (the "Northwestern Patents")); and with respect to U.S. patents
and applications, all foreign equivalents thereof; and patents issuing on said
foreign and U.S. patent applications. "Patent Rights" shall also include any
divisional, continuation, reissue, reexamination or extension of the
above-described patent applications and resulting patents, along with any
extended or restored term, and any confirmation patent, registration patent, or
patent of addition.
1.7 "Field of Use " shall mean Research Uses only for all of the Patent
Rights and both Research and Therapeutic Uses for the Lynx Patents.
1.8 "Valid Claim" means any claim(s) in an unexpired patent or pending
in a patent application included within 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, unappealable or unappealed within
the time allowed for appeal, and which has not been admitted to be invalid or
unenforceable through reissue or disclaimer.
1.9 "Research Uses" shall mean all uses which are neither Therapeutic
Uses, as defined below, nor Prohibited Uses, as defined below.
1.10 "Therapeutic Uses" shall mean the prevention, diagnosis or
treatment of any human disease or medical condition, through the use of any
product, service or application, including, without limitation, human clinical
trials of a product, service or application; provided that Therapeutic Uses
excludes Prohibited Uses.
ATTACHMENT A--Amended License Agreement
Page A-6
1.11 "Prohibited Uses" means any use or application to upregulate,
downregulate, inhibit or modulate the function, activity or expression of
telomerase or any subunit, fragment or component thereof, including telomerase
reverse transcriptase ("hTERT"), telomerase RNA (hTR) or other components or
regulators of the telomerase enzyme complex.
ARTICLE 2. GRANT.
2.1 Subject to all the terms and limitations of this Agreement,
Licensor hereby grants to Licensee and its Affiliates a worldwide non-exclusive
royalty-bearing license, without the right to sublicense, under the Patent
Rights to make, use, and sell Licensed Products in the Field of Use.
2.2 Licensee covenants that it will not make, use, or sell Licensed
Products outside the Field of Use, nor shall Licensee or any of its Affiliates
promote the use, marketing, distribution, or sale of Licensed Products outside
the Field of Use.
2.3 Licensee will promptly disclose and hereby grants back to Licensor
a worldwide, royalty-free, sublicensable license of a scope that permits
Licensor to fully exploit any improvement made in the manufacture, purification,
or quality control of oligonucleotide N3'---> P5' phosphoramidates or monomers
used in the synthesis of oligonucleotide N3'--->P5' phosphoramidates during the
term of this Agreement; provided that such improvements would be covered by or
within the scope of a Valid Claim of a patent or patent application licensed
hereunder. For other improvements made in the manufacture, purification, or
quality control of oligonucleotide N3'--->P5' phosphoramidates during the term
of this Agreement that are not covered by or within the scope of a Valid Claim
of a patent or patent application licensed hereunder, Licensee hereby grants
Licensor an option to a worldwide royalty-bearing license, with right to
Sublicense, to make, use, and sell such improvements under reasonable terms.
ARTICLE 3. ROYALTIES.
3.1 (a) Royalty Payments. In consideration of the rights and
licenses herein granted to it, Licensee shall pay to Licensor a royalty of
ATTACHMENT A--Amended License Agreement
Page A-7
(i) [***] percent ([***]%) on the Net Sales of Licensed Products sold
by Licensee or its Affiliates for Research Uses; and
(ii) [***] percent ([***]%) of Net Sales of Licensed Products sold by
License or its Affiliates for Therapeutic Uses. Royalties on Net Sales
of Licensed Products are payable by Licensee until the last of the
Valid Claims in the Patent Rights expires.
(b) Minimum Annual Royalty. From and after the first
anniversary of the Effective Date of the Agreement, Licensee shall pay to
Licensor a minimum annual royalty of [***] dollars (U.S.$[***]) (the "Minimum
Annual Payment"), as follows: if the royalties payable pursuant to Section
3.1(a) for such period are less than the Minimum Annual Payment, then Licensee
shall, within thirty (30) days after the end of such year, pay Geron the
difference between the Minimum Annual Payment and the amounts previously paid to
Geron pursuant to Section 3.1(a) for such year.
3.2 Payments of royalties on Net Sales of Licensed Products (other than
the minimum annual royalties whose payment schedule is set forth above) under
this Article are to be made to Licensor within forty-five (45) days of the end
of each December and June for sales invoiced in the six month period prior to
the end of each of those months. Royalties shall be accompanied by a statement
that shall include for each country in which sales of products occurred: the
gross sales and Net Sales in each country's currency; the royalty rate; the
related amounts payable in each country's currency; the applicable exchange rate
to convert from each country's currency to U.S. dollars; and the amounts payable
in U.S. dollars. Royalties shall first be calculated in the currency of the
country in which sales took place and then directly converted to U.S. Dollars
using the exchange rate as reported in the Wall Street Journal for the last
business day of the calendar quarter of sales. All payments hereunder shall be
made to Licensor in U.S. dollars by bank wire transfer in immediately available
funds to such account designated by Licensor. The paying party shall provide
notice at least five (5) business days prior to the wire transfer date of the
amount of payment, the nature of the payment (with reference to the applicable
section of the subject agreement) and the date of receipt of good funds. Such
notice should be given to the
[***] Confidential portion has been filed separately with the Securities and
Exchange Commission.
ATTACHMENT A--Amended License Agreement
Page A-8
Controller of Licensor at the address set forth at the beginning of this
Agreement or such other address directed by Licensor.
3.3 Any payment under this Article not paid by the payment due date
shall bear interest at the rate which is the lesser of ten percent (10%) per
annum or the maximum rate permitted by applicable law, calculated on the number
of days such payment is delinquent.
3.4 The payments under this Article shall be free and clear of any
taxes, duties, levies, fees or charges, except for withholding taxes (to the
extent applicable). The paying party shall make any withholding payments due on
behalf of Licensor and shall promptly provide Licensor with written
documentation of any such payment sufficient to satisfy the reasonable
requirements of an appropriate tax authority concerning an application by
Licensor for a foreign tax credit for such payment or for similar treatment. The
paying party agrees to take such reasonable and lawful steps as Licensor may
request to minimize the amount of tax to which the payments to Licensor are
subject.
ARTICLE 4. DUE DILIGENCE.
4.1 Licensee shall at its expense:
(a) use its best efforts to promote the sale of the Licensed Products
and to satisfy market demand for them;
(b) engage in advertising and sales promotion of Licensed Products; and
(c) maintain an active and suitably trained sales force to carry out
such efforts.
4.2 Licensee's due diligence obligation shall be deemed satisfied
hereunder by documented expenditures of at least [***] dollars ($[***]) on sales
promotion and marketing of Licensed Products in the following amounts in the
following periods:
[***] Confidential portion has been filed separately with the Securities and
Exchange Commission.
ATTACHMENT A--Amended License Agreement
Page A-9
Sale promotion & marketing expenses Period during which amount is expended
-----------------------------------------------------------------------------------------------
$ [***]. From Effective Date to 1st anniversary thereof
$ [***]. From 1st anniversary to 2nd anniversary
$ [***]. From 2nd anniversary to 3rd anniversary
ARTICLE 5. QUALITY ASSURANCE.
5.1 Licenses shall use its best efforts to make Licensed Products of
the highest quality for their intended use. Licensee shall make Licensed
Products with the minimal purity standards set forth in Exhibit B.
ARTICLE 6. BOOKS AND RECORDS.
6.1 Licensee shall keep, for at least three (3) years, records of all
sales of products in sufficient detail to permit Licensor to confirm the
accuracy of Licensee's payment calculations. Once a year, at the request and the
expense of Licensor, upon at least five (5) days prior written notice, Licensee
shall permit a nationally recognized, independent, certified public accountant,
appointed by Licensor and acceptable to Licensee, access to these records during
regular business hours solely to the extent necessary to verify such
calculations, provided that such an accountant has entered into a
confidentiality agreement with Licensee with terms substantially similar to the
confidentiality provisions of this Agreement, limiting the use and disclosure of
such information to purposes germane to this section. Results of any such
examination shall be made available to both parties to this Agreement. If such
examination reveals an underpayment of amounts by five percent (5%) or more,
Licensee shall pay all costs of such examination. In the event such accountant
concludes that additional payments are owed, the additional payments shall be
paid within thirty (30) days of the date Licensor delivers to Licensee the
accountant's written report reflecting such conclusion. This section shall
survive any termination of this Agreement for ten (10) years.
[***] Confidential portion has been filed separately with the Securities and
Exchange Commission.
ATTACHMENT A--Amended License Agreement
Page A-10
ARTICLE 7. TERM AND TERMINATION.
7.1 Unless otherwise terminated by operation of law or by acts of the
parties in accordance with the terms of this Agreement, this Agreement shall be
in force from the Effective Date and shall remain in effect for the life of the
last-to-expire patent licensed under this Agreement, or until the last patent
application licensed under this Agreement is abandoned.
7.2 Any termination of this Agreement will not affect the rights and
obligations set forth in the following Articles:
Article 3. Royalties
Article 6. Books and Records
Article 10. Indemnification
Article 11. Confidentiality
Article 12. Use of Names
7.3 If Licensee should violate or fail to perform any material term or
covenant of this Agreement, then Licensor may give written notice of such
default ("Notice of Default") to Licensee. If Licensee should fail to repair
such default within sixty (60) days after the date of such Notice of Default,
Licensor shall have the right to terminate this Agreement and the licenses
herein by a second written notice ("Notice of Termination") to Licensee. If a
Notice of Termination is sent to Licensee, this Agreement shall automatically
terminate on the date such notice takes effect. Such termination shall not
relieve Licensee of its obligation to pay any royalty or license fees owing at
the time of such termination and will not impair any accrued right of Licensor.
Material terms under this Agreement include, but are not limited to, Article 2
(Grant), Article 3 (Royalties), Article 4 (Due Diligence), Article 5 (Quality
Assurance), Article 6 (Books and Records), and Article 10 (Indemnification).
7.4 Licensee shall have the right at any time to terminate this
Agreement by giving notice in writing to Licensor. Such Notice of Termination
shall be effective sixty (60) days after the date thereof.
ATTACHMENT A--Amended License Agreement
Page A-11
7.5 Any termination pursuant to the above paragraph shall not relieve
Licensee of any obligation or liability accrued hereunder prior to such
termination or rescind anything done by Licensee or any payments made to
Licensor hereunder prior to the time such termination becomes effective, and
such termination shall not affect in any manner rights of Licensor arising under
this Agreement prior to such termination.
ARTICLE 8. REPRESENTATIONS AND WARRANTIES.
8.1 Licensor warrants and represents to Licensee that it has the lawful
right to grant the license under this Agreement and that the Licensor has made
all filings and paid all fees and done all such other things as to maintain the
Patent Rights in good standing.
8.2 This license and the associated inventions are provided WITHOUT
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER
WARRANTY, EXPRESS OR IMPLIED. LICENSOR MAKES NO REPRESENTATION OR WARRANTY THAT
THE INVENTION OR LICENSED PRODUCTS WILL NOT INFRINGE ANY PATENT OR OTHER
PROPERTY RIGHT.
8.3 Nothing in this Agreement shall be construed as: (a) a warranty or
representation by Licensor as to the validity, enforceability, or scope of any
of the Patent Rights hereunder, or elsewhere; (b) a warranty or representation
that anything made, used, sold, or otherwise disposed of under any license
granted in this Agreement is or will be free from infringement of patents of
third parties; (c) an obligation to bring or prosecute actions or suits against
third parties for patent infringement, except as provided in Article 11; (d)
conferring by implication, estoppel, or otherwise, any license or rights under
any patents or patent applications of Licensor other than those of the Patent
Rights as defined herein; or (e) an obligation to furnish to Licensee any
know-how or other information relating to the Patent Rights.
ARTICLE 9. LIMITATION OF LIABILITY.
9.1 In no event shall Licensor be liable for any incidental, special,
or consequential
ATTACHMENT A--Amended License Agreement
Page A-12
damages resulting from exercise of the license granted herein or the use of any
invention described in any of the Patent Rights or the use of any Licensed
Products.
ARTICLE 10. INDEMNIFICATION.
10.1 Licensee will indemnity hold harmless, and defend Licensor, its
officers, employees, and agents against any and all claims, suits, losses,
damage, costs, fees, and expenses resulting from or arising out of exercise of
this license. This indemnification will include, but will not be limited to, any
product liability.
10.2 Licensor will indemnity, hold harmless, and defend Licensee, its
officers, employees, and agents against any and all claims, suits, losses,
damage, costs, fees, and expenses resulting from or arising out of acts or
omissions which are the sole responsibility of Licensor. This indemnification
will include, but will not be limited to, any product liability.
ARTICLE 11. CONFIDENTIALITY.
11.1 Licensee and Licensor respectively will treat and maintain the
proprietary business, patent prosecution, software, engineering drawings,
process and technical information, and other proprietary information
("Proprietary Information") of the other party in confidence using at least the
same degree of care as that party uses to protect its own proprietary
information of a like nature for a period from the date of disclosure until five
years after the date of termination of this Agreement.
11.2 All Proprietary Information will be labeled or marked confidential
or as otherwise similarly appropriate by the disclosing party, or if the
Proprietary Information is orally disclosed, it will be reduced to writing or
some other physically tangible form, marked and labeled as set forth above by
the disclosing party, and delivered to the receiving party within 30 days after
the oral disclosure as a record of the disclosure and the confidential nature
thereof Notwithstanding the foregoing, Licensee and Licensor may use and
disclose Proprietary Information to its employees, agents, consultants,
contractors, provided that any such parties are bound by a like
ATTACHMENT A--Amended License Agreement
Page A-13
duty of confidentiality.
11.3 Nothing contained herein will in any way restrict or impair the
right of Licensee or Licensor to use, disclose, or otherwise deal with any
Proprietary Information:
11.3a that recipient can demonstrate by written records was previously
known to it;
11.3b that is now, or becomes in the future, public knowledge other
than through acts or omissions by recipient.
11.3c that is lawfully obtained without restrictions by recipient from
sources independent of the disclosing party;
11.3d that is required to be disclosed to a governmental entity or
agency in connection with seeking any governmental or regulatory approval, or
pursuant to the lawful requirement or request of a governmental entity or
agency; or
11.3e that is furnished to a third party by the recipient with similar
confidentiality restrictions imposed on such third party, as evidenced in
writing.
11.4 Upon termination of this Agreement, Licensee and Licensor will
destroy or return to the disclosing party proprietary information received from
the other in its possession within 15 days following the effective date of
termination. Licensee and Licensor will provide each other, within 30 days
following termination, with a written notice that Proprietary Information has
been returned or destroyed. Each party may, however, retain one copy of
Proprietary Information for archival purposes in non-working files.
ARTICLE 12. USE OF NAMES.
12.1 Neither party shall use the name or trademarks of the other party
without the prior written consent of the other party. Notwithstanding the
previous sentence, Licensee shall
ATTACHMENT A--Amended License Agreement
Page A-14
prominently display in catalogues, brochures, or other advertisements or
materials describing Licensed Products, Licensor's name in association with such
products.
ARTICLE 13. NOTICES.
13.1 Any notice or payment required to be given to either party will be
deemed to have been properly given and to be effective (a) on the date of
delivery if delivered in person or (b) five days after mailing if mailed by
first-class certified mail, postage paid, to the respective addresses given
below, or to another address as it may designate by written notice given to the
other party.
As to Licensor: Geron Corporation
▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: General Counsel
As to Licensee: Transgenomic, Inc.
▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: _________
ARTICLE 14. ASSIGNABILITY.
14.1 Neither this Agreement nor any rights or benefits hereunder shall
be assignable or transferable by Licensee without the prior written consent of
Licensor, except that Licensee may assign its rights and obligations under this
Agreement as a part of the sale or transfer of its entire business.
ARTICLE 15. GOVERNING LAWS.
15.1 This Agreement shall be considered to have been made in the United
States, and shall be interpreted in accordance with the laws of the State of
California.
ATTACHMENT A--Amended License Agreement
Page A-15
ARTICLE 16. MISCELLANEOUS.
16.1 Headings. The headings of the several sections are inserted for
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this Agreement.
16.2 Entire Agreement. This Agreement embodies the entire understanding
of the parties and will supersede all previous communication, representations or
understandings, either oral or written, between the parties relating to the
subject matter hereof. No amendment or modification hereof will be valid or
binding upon the parties unless made in writing and signed on behalf of each
party.
16.3 Severability. In case any of the provisions contained in the
Agreement are held to be invalid, illegal, or unenforceable in any respect, such
invalidity, illegality, or unenforceability will not affect any other provisions
hereof, but this Agreement will be construed as if such invalid or illegal or
unenforceable provisions had never been contained herein.
16.4 Waiver. It is agreed that no waiver by either party hereto of any
breach or default of any of the covenants or agreements herein set forth will be
deemed a waiver as to any subsequent and /or similar breach or default.
16.5 No Agency. Nothing herein shall be deemed to create an agency,
joint venture, or partnership relationship between Licensee and Licensor.
16.7 Export Control Laws. Licensee will observe all applicable United
States and foreign laws with respect to the transfer of Licensed Products and
related technical data to foreign countries, including, without limitation, the
International Traffic in Arms Regulations (ITAR) and the Export Administration
Regulations.
16.8 Patent Marking. Licensee will ▇▇▇▇ all Licensed Products made,
distributed, or sold
ATTACHMENT A--Amended License Agreement
Page A-16
under the terms of this Agreement, or their containers, in
accordance with the applicable patents marking laws. Licensee shall prominently
display in catalogues, brochures, or other advertisements or materials
describing Licensed Products, a label license statement with the following, or
comparable, restriction:
Purchase of this product is accompanied by a license under U.S. patents
5,599,922; 5,591,607; 5,631,135; 5,726,297; 5,476,925; 5,646,260; their
foreign counterparts, and other pending patents, owned or exclusively
licensed by Geron Corporation
ATTACHMENT A--Amended License Agreement
Page A-17
In Witness Whereof, Licensee and Licensor have caused this Agreement to
be duly executed by their duly authorized representatives as of the date first
shown herein.
GERON CORPORATION, AS ASSIGNEE OF TRANSGENOMIC, INC., AS SUCCESSOR TO
LYNX THERAPEUTICS, INC. CRUACHEM, INC
By: ________________________ By:_____________________________
Title:____________________________ Title:____________________________
ATTACHMENT A--Amended License Agreement
Page A-18
EXHIBIT A.
PATENT RIGHTS.
A-1
LYNX PATENTS
Docket No. Subject Matter (m-d-y) Ser. No. Date ▇▇▇. No.
------------------------------------------------------------------------------------------------------------------------
005 meth enhancing nuclease resist. 3-18-94 08/214,599 2-4-97 5,599,922
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005-01 ss-100% amidates 4-50-mers 6-6-95 08/477,306
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005-02 amidate triplexes 6-6-95 08/478,470 1-7-97 5,591,607
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005-03 meth enhancing hybrid/diag kits 6-6-95 08/473,015 5-20-97 5,631,135
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005-05us PCT nat'l--incl. LR3280 seq, etc. 3-20-95 08/700,448 10-12-99 5,965,720
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005-06 amidate duplexes 9-3-97 08/923,386 01-01-02 6,169,170
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005-05wo 3-20-95 PCT/US95/03575
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005-05au 3-20-95 21900/95 08-05-99 704549
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005-05ca 2,184,375
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005-05cz PV 2745-96
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005-05ep 95914800.8
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005-05fi 9-11-96 963581
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005-05hu 3-20-95 P9602549
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005-05jp 3-20-95 7-524793
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005-05kr 9-17-96 96-705131
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005-05no 9-17-96 P963891
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005-05pl 9-17-96 P 316434
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006-01 ss amidate compounds; hairpins 6-5-95 08/465368 3-10-98 5,726,297
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035-01 amidate synth. via amidite Xfer 6-14-96 08/663,918 07-14-96 5,824,793
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035wo amidate synth. via amidite Xfer 6-14-96 PCT/US9610418
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035-02 add G monomer & example 12-20-96 08/771,789 12-20-96 5,859,233
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038 hydrophob. prot/amidate synth 9-15-97 08/929,620
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A-2
NORTHWESTERN PATENTS
Docket No. Subject Matter (m-d-y) Ser. No. Date ▇▇▇. No.
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9213 oligos w/1-4 amidate linkages 1-23-95 08/376,291 12-19-95 5,476,925
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9213A oligos w/3'-terminal amine 6-6-95 08/465,961
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9213B chimeric amidates w/thio&diester 6-6-95 08/471,248 7-8-97 5,646,260
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9213C meth synth oligo w/3'term amine 6-6-95 08/467,219 7-15-97 5,648,480
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9213E meth synth amidates via AT oxid. 6-7-96 08/659,924 08-03-99 5,932,718
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ATTACHMENT A--Amended License Agreement
Page A-19
EXHIBIT B.
MINIMUM QUALITY ASSURANCE.
I. Oligonucleotide N3'->P5' phosphoramidates:
Minimum purity of [***] percent ([***]%) as measured by ion exchange
chromatography or capillary electrophoresis.
II. Monomers:
Minimum purity of [***] percent ([***]%) as measured by reverse phase
HPLC.
[***] Confidential portion has been filed separately with the Securities and
Exchange Commission.
ATTACHMENT A--Amended License Agreement
Page A-20
ATTACHMENT B
STOCK PURCHASE AGREEMENT
Incorporated by reference to Exhibit 4.1 of Geron's Current Report on Form 8-K
filed on June 4, 2003.
ATTACHMENT B-Stock Purchase Agreement
Page B-1