exv10w104






Exhibit 10.104




NONEXCLUSIVE LICENSE

AGREEMENT UNDER VYSIS’ COLLINS PATENTS




THIS NONEXCLUSIVE LICENSE AGREEMENT (the “AGREEMENT”) is made and is effective the 22nd day of
June, 1999 by and between Gen-Probe Incorporated (“GEN-PROBE”), a Delaware corporation having its
principal place of business in San Diego, CA and Vysis, Inc. (“VYSIS”), a Delaware corporation
having its principal place of business in Downers Grove, IL

WITNESSETH:



RECITALS




WHEREAS, certain inventions generally characterized as Target and Background Capture Methods and
Apparatus for Affinity Assays and Target and Background Capture Methods with Amplification for
Affinity Assays are disclosed and claimed in United States Patents No. 5,780,224 and No. 5,750,338
by Collins and Collins, et al., respectively, and foreign counterparts thereto and other patents
and applications claiming priority therefrom (the “Collins Patents”);



WHEREAS, GEN-PROBE and VYSIS are engaged in litigation unrelated to VYSIS’ Collins Patents and
which litigation involves BP Amoco Corporation (“BP AMOCO”), an Indiana Corporation having its
principal place of business in Chicago, IL;



WHEREAS, GEN-PROBE has previously entered into alliances with Chiron Corporation (“CHIRON”) for
blood screening, with Bayer Corporation (“BAYER”) for infectious diseases and with bioMerieux Vitek
S.A. (“BIOMERIEUX”) for infectious diseases;



WHEREAS, in partial fulfillment of a settlement of the litigation between GEN-PROBE and VYSIS,
GEN-PROBE desires to obtain certain license and rights under the Collins Patents for itself and
certain options on behalf of its alliances with CHIRON, BAYER and BIOMERIEUX, and VYSIS desires and
is able to grant certain license and rights to GEN-PROBE for itself and options on behalf of its
alliances;



GEN-PROBE and VYSIS agree hereto as follows:



1. DEFINITIONS




1.1 The term Collins Patents shall mean United States Patents No. 5,780,224, No. 5,750,338 and No.
5,457,025 by Collins, Collins, et al., and Collins et al. respectively, and foreign counterparts
thereto, continuations, divisionals, reissues, and reexaminations thereof and other patents and
applications claiming priority therefrom. A Schedule of Collins Patents is attached as Exhibit 1
hereto and incorporated herein by reference.



1.2 The term Licensed Method shall mean any method, the use or practice of which would constitute,
but for the license granted herein, an infringement of any issued, Valid Claim within the Collins
Patents.



Page 1 of 12









 





1.3 The term Valid Claim shall mean an issued claim of a Collins Patent which has not been ruled
invalid by a court or an administrative agency of competent jurisdiction from which all appeals
have been exhausted.



1.4 The term Licensed Product shall mean any of the following:




(a) Any product specifically intended for use in practicing a Licensed Method;




(b) Any product which lacks substantial use other than in practicing a Licensed Method; and




(c) Any product, the making, using, selling, offering for sale or importing of which, would
constitute, but for the license granted herein, an infringement of any issued, Valid Claim
within the Collins Patents.



1.5 The term GEN-PROBE/CHIRON ALLIANCE shall mean the current alliance for blood screening entered
into by GEN-PROBE and CHIRON by agreement dated June 11, 1998. In the event that CHIRON assigns
substantially all of its rights and obligations under this blood screening alliance agreement to
another party, the alliance with such party shall assume the rights and obligations of CHIRON with
respect to the GEN-PROBE/CHIRON ALLIANCE.



1.6 The term GEN-PROBE/BAYER ALLIANCE shall mean the current alliance for clinical diagnostics
entered into by GEN-PROBE and CHIRON by agreement dated June 11, 1998. CHIRON has assigned its
rights and obligations under the clinical diagnostics alliance agreement to Bayer. In the event
that BAYER assigns substantially all of its rights and obligations under the clinical diagnostics
alliance agreement to another party, the alliance with such party shall assume the rights and
obligations of BAYER with respect to the GEN-PROBE / BAYER ALLIANCE.



1.7 The term End User Net Commercial Sales shall mean the total of the gross invoice prices
received by GEN-PROBE and any other Collins Licensee from end users for Licensed Products or
Licensed Methods less the sum of the following actual and customary deductions where applicable:
cash, trade, or quantity discounts; sales, use, tariff, import/export duties or other excise taxes
imposed upon particular sales; transportation charges and allowances or credits to customers
because of rejections or returns. In the event Licensed Products or Licensed Methods are sold to
end users through distributors, the gross invoice price received by the distributors will be used
to determine End User Net Commercial Sales. Notwithstanding the foregoing, End User Net Commercial
Sales shall not include products transferred for purposes of a clinical trial by GEN-PROBE, the
GEN-PROBE/CHIRON ALLIANCE, and the GEN-PROBE/BAYER ALLIANCE and the use of such products for
clinical trials will not be royalty bearing.



1.8 The term Collins Licensee shall refer to a recipient of license and rights under the Collins
Patents granted hereunder as applicable.





Page 2 of 12









 








1.9 The term GEN-PROBE Core Licensee shall mean a third party to whom Gen-Probe grants a
royalty-bearing license in the field of infectious disease nucleic acid testing under substantial
patented core technology of Gen-Probe (a “Gen-Probe Core Technology License”), including, by way of
example and not of limitation, Transcription Mediated Amplification.



2. GRANTS




2.1 Subject to the terms and conditions of this Agreement, VYSIS hereby grants to GEN- PROBE a
worldwide, royalty-bearing, nonexclusive license without the right to sublicense, to make, use,
sell, offer for sale, or import Licensed Products and practice Licensed Methods under the Collins
Patents for use in the field of infectious disease nucleic acid testing.



2.2 The right to sell Licensed Products granted in Paragraph 2.1 shall extend to distributors of
GEN-PROBE relative to their distribution of Licensed Products from GEN-PROBE with no additional
obligation by the distributors to pay royalties.



2.3 Except as otherwise provided herein, the licenses granted in paragraph 2.1 shall extend from
June 22, 1999 until the date of expiration of the last to expire of the Collins Patents.



2.4 Subject to the terms and conditions of this Agreement, VYSIS hereby agrees to grant the
following options to the following third parties:




(a) For a period of six (6) months following June 22, 1999, VYSIS will grant to the
GEN-PROBE/CHIRON ALLIANCE an option for a license under the Collins Patents. The terms of
the license will be the same terms granted to GEN-PROBE herein, except that such terms shall
not include a license issue fee as provided herein and the license will be granted solely
for purposes of the blood screening aspects of the GEN-PROBE/CHIRON ALLIANCE.




(b) For a period of six (6) months following June 22, 1999, VYSIS will grant to the GEN-
PROBE/BAYER ALLIANCE an option for a license under the Collins Patents. The terms of the
license will be the same terms granted to GEN-PROBE herein, except that such terms shall
not include a license issue fee as provided herein and the license will be granted solely
for purposes of infectious diseases aspects of the GEN-PROBE/BAYER ALLIANCE with the
exception of blood screening.




(c) For a period of twelve (12) months following June 22, 1999, VYSIS will grant to
BIOMERIEUX and its subsidiaries an option for a license under the Collins Patents at terms
similar to the terms granted to GEN-PROBE herein (such terms shall include a license issue
fee of Seven Hundred Fifty Thousand Dollars ($750,000) and running royalty similar to the
royalty provided herein).




Page 3 of 12









 









(d) For a period of six (6) months following the grant by GEN-PROBE of a Gen-Probe Core
Technology License in a field of infectious disease nucleic acid testing to a GEN-PROBE Core
Licensee, VYSIS will grant to the GEN-PROBE Core Licensee an option to a license under the
Collins Patents in the same field of infectious disease nucleic acid testing. The license
under the Collins Patents shall be at reasonable commercial terms which are no greater than
those terms granted by Vysis to other comparable Collins Licensees (excluding the terms
granted to GEN-PROBE, the GEN-PROBE/CHIRON ALLIANCE, the GEN- PROBE/BAYER ALLIANCE and
BIOMERIEUX pursuant to this Agreement) and include a most favored licensee provision
comparable to Paragraph 8.1 herein relative to such other comparable Collins Licensees.



2.5 For all purposes of this Agreement, each license granted pursuant to paragraph 2.4 herein
shall be regarded as a separate license under the Collins Patents and each corresponding licensee
will be regarded as a separate licensee under the Collins Patents.



3. ROYALTIES AND PAYMENTS




3.1 GEN-PROBE agrees for itself and on behalf of the GEN-PROBE/CHIRON ALLIANCE and the
GEN-PROBE/BAYER ALLIANCE receiving licenses as provided in Paragraph 2.1 to make the following
payments for the licenses received hereunder:




(a) A one-time license issue fee of One and One Half Million U.S. Dollars ($1.5
Million) to be paid consistent with the payment provision of Paragraph 27 of the
Definitive Agreement and Release executed concurrently with this Agreement by the
parties hereto.




(b) A running royalty of three percent (3%) of End User Net Commercial Sales of
Licensed Products (the parties agree that a single royalty rate of three percent (3%) of
End User Net Commercial Sales will apply as an aggregate rate in the event that one or
more Collins Patents apply to any End User Net Commercial Sales of Licensed Products);



3.2 Running royalties accruing to VYSIS hereunder shall be paid to VYSIS by each Collins Licensee
as applicable on a calendar quarterly basis for each quarter ending:




(a) March 31;




(b) June 30;




(c) September 30; and




(d) December 31



3.3 Royalty payments accruing hereunder shall be paid within sixty (60) days of the close of each
calendar quarter.






Page 4 of 12









 








3.4 All monies due VYSIS shall be payable in United States Dollars collectible at par in Chicago,
Illinois. When Licensed Products and Licensed Methods are sold for monies other than United States
Dollars, the earned royalties will first be determined in the foreign currency of the country in
which the Licensed Products and Licensed Methods were sold and then converted into equivalent
United States Dollars. The applicable exchange rate will be that established by the Bank of America
in New York, New York on the last day of the reporting period and will be quoted in the Continental
terms method of quoting exchange rates (local currency per U.S. dollar).



3.5 In the event that any Collins Licensee is required to withhold taxes imposed upon VYSIS for
any payment under this Agreement by virtue of the laws or governmental regulations of a country in
which Licensed Products are sold or Licensed Methods are practiced, then such payments will be made
by such Collins Licensee on behalf of VYSIS by deducting from the payment due VYSIS and remitting
such taxes to the proper authorities on a timely basis and the payments provided for under this
Agreement will be adjusted appropriately provided that the Collins Licensee supplies VYSIS with
official documentation and/or tax receipt on such withholdings supporting such taxes and such
payments as may be required by VYSIS for its tax records. The Collins Licensee shall be responsible
for all bank transfer charges.



3.6 In the event royalty payments or fees due hereunder are not received by VYSIS when due, the
applicable Collins Licensee shall pay to VYSIS interest charges at a rate of one percent (1%) per
month. The interest shall be calculated from the date the payment or fee was due to VYSIS until
actually received by VYSIS.



3.7 Royalties paid hereunder shall be accompanied by a report of the following:




(a) Gross sales and End User Net Commercial Sales of Licensed Products and Licensed Methods
by the reporting Collins Licensee in the preceding calendar quarter;




(b) The number of each type of Licensed Product sold and Licensed Method performed;




(c) The royalties, in U.S. dollars, payable hereunder as a result of such sales;




(d) The method used to calculate the royalty; and




(e) The exchange rate used to calculate the royalty in U.S. dollars.



All reports submitted hereunder shall be confidential. VYSIS will use the reports only for the
purpose of monitoring payment of royalties. Except as required by law, VYSIS will not disclose any
report or the information contained in any report to any third party. If VYSIS believes that
disclosure is warranted by law or circumstances, it shall first give the appropriate Collins
Licensee notice and an opportunity to object. VYSIS shall take reasonable steps to minimize the
extent of any proper disclosure made after notice and opportunity to object are provided to the
appropriate Collins Licensee.






Page 5 of 12









 








3.8 If, after a Collins Licensee has made its first commercial sale of License Products or
Licensed Method, no sale of Licensed Products or Licensed Method has been made during any
particular quarterly reporting period, the Collins Licensee shall submit a report indicating that
no sale was made in the period.



3.9 Collins Licensees shall keep books and records accurately showing all Licensed Products
manufactured, used and/or sold and Licensed Methods performed commercially under the terms of this
Agreement. Such books and records shall be preserved for at least five (5) years from the date of
the royalty payment to which they pertain and shall be open to inspection by representatives or
agents of VYSIS at reasonable times and under reasonable conditions. All information contained in
the Collins Licensees’ books and records shall be confidential and VYSIS will use the reports only
for the purpose of monitoring payment of royalties.



4. TERM AND TERMINATION




4.1 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 June 22, 1999 and shall remain
in effect for the life of the last-to-expire of the Collins Patents.



4.2 Any termination of this Agreement shall not affect the following:




(a) A Collins Licensee’s obligations that have accrued prior to termination;




(b) A Collins Licensee’s continuing obligation to indemnify VYSIS; and




(c) VYSIS’ or a Collins Licensee’s continuing obligation to maintain the confidentiality of
the terms of this Agreement and any confidential information received from another party
pursuant to this Agreement.



4.3 If a Collins Licensee should violate or fail to perform any material term or covenant of this
Agreement, VYSIS may give written notice of such default (“Notice of Default”) to the Collins
Licensee. If the Collins Licensee should fail to take appropriate steps to cure such default within
sixty (60) days of the effective date of such Notice of Default, VYSIS shall have the right to
terminate the license and rights granted to the Collins Licensee hereunder by issuing a second
written notice (Notice of Termination) to the Collins Licensee. Thereafter, the license and rights
previously granted to the Collins Licensee shall terminate automatically on the effective date of
the Notice of Termination. Such termination shall not relieve the terminated Collins Licensee of
its obligation to pay any royalty or license fees owing at the time of termination and shall not
impair any accrued right of VYSIS. Such termination shall not act to terminate the license and
right granted hereunder to any other Collins Licensee, provided that, VYSIS may exercise its rights
under this Paragraph 4.3 separately against any Collins Licensee who violates or fails to perform
any material term or covenant of this Agreement.






Page 6 of 12









 








4.4 GEN-PROBE or any other recipient of a license and rights pursuant to Paragraphs 2.4(a) — (d)
may each terminate their respective license and rights (and any license which issues pursuant to
those rights) upon written notice of termination to VYSIS. Thereafter, the license and rights
previously granted to the applicable Collins Licensee shall terminate automatically on the
effective date of the Notice of Termination. Such termination shall have no effect on the license
and rights granted to any other Collins Licensee hereunder.



5. LIMITED WARRANTY




5.1 VYSIS represents and warrants that it is the owner of the Collins Patents and has the lawful
right to grant the license and rights granted hereunder.



5.2 GEN-PROBE represents and warrants that it has the right and authority to accept the rights and
obligations provided herein for itself, the GEN-PROBE/CHIRON ALLIANCE and the GEN- PROBE/BAYER
ALLIANCE.



5.3 The license and rights provided herein are provided WITHOUT WARRANTY OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED. VYSIS MAKES NO
REPRESENTATION OR WARRANTY THAT THE LICENSED PRODUCTS OR LICENSED METHODS WILL NOT INFRINGE ANY
PATENT OR OTHER PROPRIETARY RIGHT.



5.4 IN NO EVENT WILL VYSIS BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES RESULTING
FROM GEN-PROBE’S OR A COLLINS LICENSEE’S EXERCISE OF THIS LICENSE OR ITS USE OF LICENSED PRODUCTS
OR LICENSED METHODS.



6. PATENT MARKING




6.1 GEN-PROBE agrees that GEN-PROBE and each Collins Licensee will mark all Licensed Products
made, used or sold under the terms of this Agreement, or their containers, with the patent number
or numbers of any applicable Collins Patent practiced thereby.



7. NON-PARTY INFRINGEMENT




7.1 As used in this Article 7, the term Substantial Infringement shall mean alleged non-licensed
infringement by a non-party brought to VYSIS’ attention by a Collins Licensee wherein such
non-licensed infringement accounts for at least ten percent (10%) of the total End User Net
Commercial Sales for Licensed Product and Licensed Method in the United States or Europe.






Page 7 of 12









 








7.2 In the event that a Collins Licensee hereunder believes that an unlicensed non-party to this
Agreement is substantially infringing any issued patent within the Collins Patents, the Collins
Licensee shall call this Substantial Infringement to VYSIS’ attention in writing and shall provide
VYSIS with reasonable evidence of such non-licensed infringing activity and the substantiality of
the non-licensed infringing activity by the non-party. However, the Collins Licensee will not
notify the non-party infringer without first obtaining the consent of VYSIS. VYSIS agrees that it
will use its best efforts to terminate such Substantial Infringement.



7.3 In the event the Substantial Infringement of the Collins Patents continues and VYSIS is unable
to cause its termination, the Collins Licensee may request that VYSIS take legal action against the
Substantial Infringement of the Collins Patents by the non-party. Any such request by a Collins
Licensee shall be in writing and shall include reasonable evidence of such infringement and the
damages such infringement is causing to the Collins Licensee. If VYSIS is unable to cause the
termination of such Substantial Infringement within ninety (90) days of the effective date of the
Collins Licensee’s request for same, VYSIS shall, at its discretion, commence litigation against
the non-party infringer to cause the termination of the Substantial Infringement. However, Vysis
shall not be required to initiate more than one such litigation at any one tome.



7.4 If VYSIS fails to initiate litigation to terminate such Substantial Infringement within ninety
(90) days of the effective date of a Collins Licensee’s request for same, the Collins Licensee’s
obligation to pay royalties on End User Net Commercial Sales of Licensed Product and Licensed
Method in the affected country shall be suspended until such time as VYSIS has commenced such
litigation or such Substantial Infringement has ceased.



7.4 VYSIS will maintain sole control of any such litigation for patent infringement, bear all
expenses for such litigation, and retain all recoveries and damages awarded from such litigation as
is initiated pursuant to Paragraph 7.3 above. However, the Collins Licensee requesting termination
of the Substantial Infringement will provide reasonable cooperation to VYSIS in VYSIS’ litigation
against such non-party infringer.



Page 8 of 12









 





8. MOST FAVORED LICENSEE




8.1 If after the effective date of this Agreement, VYSIS grants to a third party unrelated to
the parties of this Agreement a license and rights of substantially the same scope as the
license and rights granted herein but under royalty rates which are more favorable than the
rates granted to GEN-PROBE, and for the GEN-PROBE/CHIRON ALLIANCE, and the GEN-PROBE/BAYER
ALLIANCE, VYSIS shall promptly notify GEN-PROBE, the GEN-PROBE/CHIRON ALLIANCE, and the
GEN-PROBE/BAYER ALLIANCE, as applicable, of such; and for sixty (60) days thereafter, each
shall have the right and option to substitute such more favorable royalty rates for the royalty
rates specified herein. However, the right and option for each to substitute the more
favorable royalty rates granted to said third party shall be contingent upon acceptance by
GEN-PROBE, the GEN-PROBE/CHIRON ALLIANCE, and the GEN-PROBE/BAYER ALLIANCE, as the case may be,
in writing of all other conditions and terms, favorable or unfavorable, under which such more
favorable royalty rates have been granted to such other third party. In the event GEN-PROBE,
the GEN-PROBE/CHIRON ALLIANCE, or the GEN-PROBE/BAYER ALLIANCE, as the case may be, elects to
substitute the more favorable royalty rate for the royalty rate provided herein, the more
favorable royalty rate will be effective as of the effective date of its election to substitute
the more favorable royalty rate for the royalty rate provided herein.



9. INDEMNIFICATION




9.1 Each Collins Licensee hereunder agrees to indemnify, hold harmless and defend VYSIS, its
officers, employees and agents against any and all claims, suits, losses, damages, costs, fees, and
expenses resulting from or arising out of the Collins Licensee’s exercise of the license and rights
granted herein including any sale, manufacture or use of a Licensed Product or performance of a
Licensed Method. This indemnification will include, but not be limited to, any product liability.



9.2 VYSIS shall promptly notify the appropriate Collins Licensee in writing of any claim which
VYSIS believes it may have a right of indemnification under this Agreement.



9.3 VYSIS will provide reasonable cooperation to each Collins Licensee that is indemnifying and
holding VYSIS harmless for a claim, suit, loss or damage pursuant to Paragraph 9.1.



10. NOTICES




10.1 Any notice or payment required to be given to either party shall be deemed to have been
properly given and to be effective (a) on the date of delivery if delivered in person or (b) five
(5) days after mailing by first-class certified mail, postage paid, to the respective addresses
identified below, or to such other address as the applicable party shall designate by written
notice to the other party.






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If to VYSIS:



VYSIS, INC.

3100 Woodcreek Drive

Downers Grove, IL 60515




Attention: Patent Counsel




If to GEN-PROBE:



GEN-PROBE INCORPORATED

10210 Genetic Center Drive

San Diego, CA 92121




Attention: Vice President, Intellectual Property




If to the GEN-PROBE/CHIRON ALLIANCE:



GEN-PROBE INCORPORATED

10210 Genetic Center Drive

San Diego, CA 92121




Attention: Vice President, Intellectual Property




and




CHIRON CORPORATION

4560 Horton Street

Emeryville, California 94608




Attention: General Counsel




If to the GEN-PROBE/BAYER ALLIANCE:



GEN-PROBE INCORPORATED

10210 Genetic Center Drive

San Diego, CA 92121




Attention: Vice President, Intellectual Property




and




BAYER CORPORATION

5260 Horton Street

Emeryville, CA 94608-2916




Attention: VP, NAD Partner Management




Page 10 of 12









 





11. ASSIGNMENT




11.1 This Agreement is binding upon and shall inure to the benefit of VYSIS, it successors and
assigns, but shall be personal to GEN-PROBE, the GEN-PROBE/CHIRON ALLIANCE and the GEN-PROBE/BAYER
ALLIANCE and personal relative to subsequent GEN-PROBE Core Licensees. The applicable license and
rights and options granted herein to GEN-PROBE, the GEN-PROBE/CHIRON ALLIANCE, the GEN-PROBE/BAYER
ALLIANCE and to subsequent GEN-PROBE Core Licensees are not assignable by them except to:




(a) A bona fide purchaser of all or substantially all of the business of the seller to
which the license and rights pertain, provided that such bona fide purchaser agrees to the
terms and conditions of this Agreement; and




(b) A wholly-owned affiliate of GEN-PROBE, the GEN-PROBE/CHIRON ALLIANCE, the
GEN-PROBE/BAYER ALLIANCE, or the GEN-PROBE Core Licensee as the case may be.



12. GOVERNING LAW




12.1 This Agreement is made in partial fulfillment of and reflects terms specified in a Definitive
Agreement and Release entered into by the parties in settlement of litigation in the United States
District Court for the Southern District of California in the matter Gen-Probe, Incorporated v.
Amoco Corp., et al. (Case No. 95-CV-998-J(BTM)). The Agreement and its construction are subject to
the laws of the state of California with the exception of any choice of law provisions which would
direct the application of another state’s laws. The Agreement and its construction are further
subject to the continuing jurisdiction of the United States District Court for the Southern
District of California.



13. CONFIDENTIALITY




13.1 Except as required by law, the terms of this Agreement and all information produced hereunder
and designated as confidential by the producing party shall be considered as confidential
information of the producing party and the party receiving such information shall use the same care
to protect such information as it uses to protect its own information of like kind.



14. MISCELLANEOUS




14.1 No amendment or modification hereof shall be valid or binding upon the parties unless made in
writing and signed by an authorized representative on behalf of each party hereto.



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14.2 This Agreement embodies provisions of a Definitive Agreement and Release entered into
concurrently herewith by the parties in the matter Gen-Probe, Incorporated v. Amoco Corp., et al.
(Case No. 95-CV-998-J(BTM)) in the United States District Court for the Southern District of
California and such other understandings as are included herein. This Agreement and the Definitive
Agreement and Release embody the entire understanding of the parties and shall supercede all
previous communications, representations or understandings either oral or written, between the
parties relating to the subject matter hereof.



14.3 In case any of the provisions contained in this Agreement shall be held invalid, illegal or
unenforceable in any respect, such invalidity, illegality or unenforceability shall not affect any
other provisions hereof and this Agreement shall be construed as if such invalid or illegal or
unenforceable provisions had never been contained herein.



14.4 CHIRON, BAYER, BIOMERIEUX, and GEN-PROBE Core Licensees are third party beneficiaries of this
Agreement as set forth above.



IN WITNESS WHEREOF VYSIS and GEN-PROBE have executed this Agreement, in duplicate originals, by
their respective officers hereunto duly authorized, on the day and year written below.



	 	 	 
	VYSIS, INC.

	 	GEN-PROBE INCORPORATED
	 
	 	 
	By: /s/ [signature illegible]

	 	By: /s/ Henry L. Nordhoff
	 
	 	 
	Title: President & CEO

	 	Title: President & Chief Exec. Officer
	 
	 	 
	Date: 8/10/99

	 	Date: August 10, 1999








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EXHIBIT 1




SCHEDULE OF COLLINS PATENTS*




1) Target and Background Capture Methods And Apparatus For Affinity Assays by Collins




	 	 	 	 	 	 	 	 	 
	Country	 	 	Applcn. No.	 	 	Status/Pat. No.	 
	European

	 	 	87309308.2	 	 	 	0265244	 
	France

	 	 	87309308.2	 	 	 	0265244	 
	Germany

	 	 	87309308.2	 	 	 	P3781860.0	 
	Italy

	 	 	87309308.2	 	 	 	0265244	 
	United Kingdom

	 	 	87309308.2	 	 	 	0265244	 
	Japan

	 	 	268030/87	 	 	 	Pending	 
	Japan

	 	 	104339/99	 	 	 	Pending
	 
	USA

	 	 	08/236,877	 	 	 	5,780,224	 






2) Target And Background Capture Methods With Amplification For Affinity Assays by Collins, et al.




	 	 	 	 	 	 	 	 	 
	Country	 	 	Applcn. No.	 	 	Status/Pat. No.	 
	European

	 	 	88312135.2	 	 	 	0328829	 
	France

	 	 	88312135.2	 	 	 	0328829	 
	Germany

	 	 	88312135.2	 	 	 	P3854470.9	 
	Italy

	 	 	88312135.2	 	 	 	0328829	 
	United Kingdom

	 	 	88312135.2	 	 	 	0328829	 
	Japan

	 	 	323183/88	 	 	 	2817926	 
	USA

	 	 	08/238,080	 	 	 	5,750,338	 








 




			
	*	 	Abandoned Applications/Patents Are Not Identified







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3) Closed Vessel For Isolating Target Molecules And For Performing Amplification by Neri, et. al.




	 	 	 	 	 	 	 
	Country	 	Applcn. No.	 	 	Status/Pat. No.	 
	USA

	 	08/622,491
	 	 	5,714,380	 






4) Methods And Composition For Preventing Interference With Affinity Capture Schemes by Collins,
et. al.




	 	 	 	 	 	 	 	 	 
	Country	 	 	Applcn. No.	 	 	Status/Pat. No.	 
	European

	 	 	90905780.4	 	 	 	0481999	 
	France

	 	 	90905780.4	 	 	 	0481999	 
	Germany

	 	 	90905780.4	 	 	 	69031121.4	 
	Italy

	 	 	90905780.4	 	 	 	0481999	 
	United Kingdom

	 	 	90905780.4	 	 	 	0481999	 
	Japan

	 	 	505451/90	 	 	 	Pending	 
	USA

	 	 	07/976,678	 	 	 	5,457,025	 







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