Exhibit 4.14


 


“CONFIDENTIAL TREATMENT
REQUESTED. CONFIDENTIAL PORTIONS OF THIS DOCUMENT HAVE BEEN OMITTED AND HAVE
BEEN SEPARATELY FILED WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN
REQUESTED WITH RESPECT TO THE OMITTED PORTIONS, WHICH ARE IDENTIFIED BY ***.”


 


PATENT LICENSE
AGREEMENT


 


Effective as of December 1, 2006 (“EFFECTIVE DATE”), GENETIC TECHNOLOGIES LIMITED, having an office at 60 Hanover
Street, Fitzroy, Victoria 3065, Australia (“GTG”) and GENOSENSE
DIAGNOSTICS GMBH, having an office at Donau-City-Strasse 1, A-1220,
Vienna, Austria (“LICENSEE”), agree as follows:


 


ARTICLE I



BACKGROUND


 


1.1                                 GTG
represents that it has certain proprietary and intellectual property rights
pertaining to methods and processes used to extract gene discovery and diagnostic
utility from the non-coding region of genomes. GTG represents and warrants that
it is entitled and able to grant the licenses described and referred to herein,
especially for those patents which have been granted in the name of Genetype AG
(CH).


 


1.2                                 LICENSEE
wishes to acquire a license under, and to obtain access to GTG’s non-coding
patents to perform genetic analysis and genetic diagnostics on behalf of
DIRECT CUSTOMERS (as defined below), the results of which may be used by
the DIRECT CUSTOMERS solely in connection with providing medical advice,
counseling, recommendations and the like to patients of the DIRECT CUSTOMERS
(the “PURPOSE”).


 


1.3                                 GTG
is prepared to grant a non-exclusive license to LICENSEE under its non-coding
patents, subject to the terms and conditions of this AGREEMENT.


 


1.4                                 While,
for the convenience of LICENSEE, payment hereunder has been spread over time,
the parties have agreed to an upfront, fixed license fee for the licenses and
rights granted hereunder during the TERM (as defined below). For the
convenience of the parties, the payment terms herein have been structured to
reduce accounting complexities and accommodate cash flow requirements. Consequently,
any payments to GTG after expiration or termination of this AGREEMENT are for
the exercise of rights by LICENSEE during the TERM. The total license fee
payments hereunder are based on a reasonable estimate of LICENSEE’s usage of
methods covered by the LICENSED PATENTS (as defined below) in view of current
and future revenue forecasts and market analysis. The parties understand and
acknowledge the potential for actual usage fluctuations and accept the risk of
the upfront, fixed license fee structure hereunder.


 


[REMAINDER OF PAGE INTENTIONALLY
LEFT BLANK]


 

















 


ARTICLE II


 


GENERAL DEFINITIONS AND RELATIONSHIPS AMONG DEFINITIONS


 


2.1                                 “AGREEMENT”
means this document, its attachments, all addenda, schedules, exhibits,
appendices, and any amendments to the foregoing.


 


2.2                                 “CONFIDENTIAL
INFORMATION” means any and all secret, tangible and relevant information which
is disclosed by either party to the other verbally, electronically, visually,
or in a written or other tangible form which is confirmed in writing and
reasonably understood or proven to be confidential or proprietary. CONFIDENTIAL
INFORMATION includes, but is not limited to, the specific terms and/or
conditions of this AGREEMENT, trade secrets, ideas, processes, formulas,
programs, software, source of supply, technology, discoveries, developments,
inventions, techniques, marketing plans, strategies, forecasts, unpublished
financial statements, prices, costs, and customer lists.


 


2.3                                 “NON
CONFIDENTIAL INFORMATION” means any information which is public before or is
made public during the present LICENSE TERM or made known to the other party
through third parties. The fact that the present AGREEMENT exists or is about
to exist is NON CONFIDENTIAL, INFORMATION.


 


2.4                                 “DIRECT
CUSTOMER” means a partner according to the business practice performed by
LICENSEE at the EFFECTIVE DATE, especially a partner healthcare practitioner or
medical institution of LICENSEE; provided however that such partner:


 


2.4.1                        requests directly of LICENSEE
the performance of genetic diagnostics or genetic analysis on behalf of a
patient of such partner;


 


2.4.2                        is contractually limited by
LICENSEE to using the results of such genetic diagnostics or genetic analysis
solely for providing healthcare advice, counseling, recommendations and the
like to such patient;


 


2.4.3                        includes in its contracts with
such patient limitations regarding the use of results of such genetic
diagnostics or genetic analysis to personal use by such patient.


 


2.5                                 “FIELD
OF USE” means preventative human genetic diagnostics and analysis, in
particular in the medical fields of gynecology, obstetrics, andrology,
cardiology, nutrigenetics and pharmacology.


 


2.6                                 GTG
and LICENSEE may sometimes hereinafter be collectively referred to as the “parties”
and, individually as a “party” (as required by the context).


 


2.7                                 “INSTALLMENT
PAYMENT(S)” means a fee of *** Euros (€ **) each anniversary of the
EFFECTIVE DATE for nine (9) years, inclusive.


 


2.8                                 “LICENSED
PATENT(S)” means the patents listed in Appendix “A” attached to this AGREEMENT
and all reissues, reexaminations, divisionals, continuations, continuations-in-part,



 


2

















 


substitutions, and extensions of the foregoing, applications therefor,
and patents which may issue upon such applications, and any and all
counterparts of the foregoing.


 


2.9                                 “LICENSED
SERVICE(S)” means genetic testing developed by LICENSEE and carried out by
LICENSEE in a facility of LICENSEE to the extent such genetic testing
(including, without limitation, the performance or provision thereof) would,
but for the licenses granted under this AGREEMENT, infringe or contribute to
the infringement of any claim of a LICENSED PATENT.


 


2.10                           “TERRITORY”
means world-wide.


 


2.11                           The
words “hereof,” “herein” and “hereunder” and words of similar import when used
in this AGREEMENT will refer to this AGREEMENT as a whole and not to any
particular provision of this AGREEMENT and Article, Section and Subsection references
are to this AGREEMENT unless otherwise specified. Whenever the words “include,”
“includes” or “including” are used in this AGREEMENT, they will be deemed to be
followed by the words “without limitation.” The meanings given to terms defined
herein will be equally applicable to both the singular and plural forms of such
terms.


 


ARTICLE III



RELEASE


 


3.1                                 Subject
to the licenses set forth herein, GTG agrees that, providing LICENSEE fully and
faithfully discharges all obligations undertaken by LICENSEE in this AGREEMENT,
including but not limited to the confidentiality obligations and the obligation
to pay the INSTALLMENT PAYMENTS and, provided further, that this AGREEMENT is
not terminated for LICENSEE’s breach of any material term or material condition
hereof, GTG will release LICENSEE and DIRECT CUSTOMERS from all claims,
demands, and rights of action which GTG may have as of the EFFECTIVE DATE
on account of infringement of any LICENSED PATENT prior to the EFFECTIVE DATE
to the extent the acts constituting such infringement would be licensed
hereunder. Failure of LICENSEE at any time to so discharge its obligations
shall constitute a waiver of the benefits of this Section 3.1 and shall
forthwith restore to GTG its full rights as they existed on the EFFECTIVE DATE.


 


ARTICLE IV



GRANTS TO LICENSEE AND DIRECT CUSTOMERS


 


4.1                                 Subject
to the terms and conditions of this AGREEMENT, GTG hereby grants and agrees to
grant to LICENSEE, during the TERM (as defined below), a nonexclusive,
non-transferable, paid-up, perpetual, license under the LICENSED PATENTS
(without the right to sublicense) in the FIELD OF USE and solely for the
PURPOSE to:


 


4.1.1                        perform LICENSED SERVICES
for DIRECT CUSTOMERS located anywhere throughout the TERRITORY;


 


3

















 


4.1.2                        advertise, sell and offer for
sale LICENSED SERVICES to DIRECT CUSTOMERS located anywhere throughout the
TERRITORY; and


 


4.1.3                        internally practice and perform within
facilities of LICENSEE solely for LICENSEE’s legitimate research purposes (and
not for any third parties or as part of a collaboration or research
project involving a third party) any methods covered by the LICENSED PATENTS.


 


4.2                               Subject
to the terms and conditions of this AGREEMENT, GTG hereby grants and agrees to
grant to DIRECT CUSTOMERS, during the TERM (as defined below), a nonexclusive,
non-transferable, paid-up, perpetual, license under the LICENSED PATENTS
(without the right to sublicense) to advertise, resell and offer for sale
LICENSED SERVICES and results of LICENSED SERVICES in the FIELD OF USE
throughout the TERRITORY solely for the PURPOSE.


 


4.3                               The
licenses granted in Sections 4.1 and 4.2 are subject to the following:


 


4.3.1                        LICENSEE will not grant or
purport to grant DIRECT CUSTOMERS rights under the LICENSED PATENTS.


 


4.3.2                        LICENSEE’S contract with DIRECT
CUSTOMERS relating to the purchase of LICENSED SERVICES by such DIRECT
CUSTOMERS will affirmatively disclaim or otherwise clarify that the contract
does not grant to the purchaser any rights or licenses under the LICENSED
PATENTS, except to use any results obtained by LICENSED SERVICES solely for
providing healthcare advice, counseling, recommendations and the like to
patients.


 


4.3.3                        LICENSER shall conspicuously
mark any literature or other materials (in paper, electronic or other format)
distributed with or about any LICENSED SERVICES in such a manner so as to
clarify that (i) except as may be prohibited by applicable law, such
LICENSED SERVICES may not be resold except by DIRECT CUSTOMERS and (ii) the
purchase of such LICENSED SERVICES does not convey any rights or licenses
(expressly or impliedly) to any rights under the LICENSED PATENTS.


 


4.4                               The
rights and licenses granted by GTG in this AGREEMENT are personal to LICENSEE. LICENSEE
shall not assign or otherwise transfer any license or right granted hereunder
or any interest therein without the prior written consent of GTG (which may be
withheld in GTG’s sole and absolute discretion), except to a purchaser of all
or substantially all of the business of LICENSEE to which this AGREEMENT
relates, whether by merger, sale of stock, sale of assets or otherwise;
provided, however that prior to the transfer of ownership such purchaser must
expressly assume in writing LICENSEE’S obligations under this AGREEMENT and
expressly acknowledges in writing that services of such purchaser existing
prior to the transfer of ownership shall not be LICENSED SERVICES under this
AGREEMENT.


 


4.5                               This
AGREEMENT will survive any transfer of the LICENSED PATENTS or the rights
thereto by GTG to a third person or entity. GTG warrants and represents that
any such person or entity to which such rights are transferred shall be fully
informed about this AGREEMENT.


 


4

















 


4.6                                 All
rights not explicitly granted in this AGREEMENT are reserved by GTG. No
additional rights are granted by implication, estoppel or otherwise. Not
limiting the foregoing, LICENSEE acknowledges neither it nor DIRECT CUSTOMERS
are granted any rights to: (i) grant any sublicense without GTG’s prior
written consent; and (ii) any patents or other intellectual property
rights of GTG or any third party other than rights under the LICENSED PATENTS.


 


ARTICLE V



CONSIDERATION


 


5.1                                 As
full consideration for the release of Article III and the rights and
licenses granted by this AGREEMENT, LICENSEE agrees to pay to GTG a
non-refundable license fee of *** payable as follows:


 


***; and


 


(vi)                              INSTALLMENT
PAYMENTS, representing nine (9) equal payments of the remaining balance of
the license fee, shall be due and payable to GTG within fifteen (15) days of
the anniversary of the EFFECTIVE DATE each year for nine (9) years. In
order to secure these payments for the whole period, the parties agree that
INSTALLMENT PAYMENTS 2 to 5 (for the years 2 to 5) shall be paid by quarterly
payments as described above, but without departing from the full license fee
stated above. No other sums or royalties shall be due GTG, its successors,
assigns and/or legal representatives as a result of this AGREEMENT or the
license hereunder.


 


5.2                                 For
purposes of clarity, the parties acknowledge the INSTALLMENT PAYMENTS represent
the payment of a mutually agreed upfront, fixed license fee over time and
without interest. As a result, except as otherwise provided in Section 7,
LICENSEE acknowledges the obligation to make INSTALLMENT PAYMENTS shall survive
termination or expiration of this AGREEMENT until the license fee is paid in
full.


 


5.3                                 The
payment to GTG of the fees, compensation, and other payments provided for in
this AGREEMENT shall be free of and made without deduction of any taxes,
charges, imposts, tariffs, duties, remittance fees and/or other assessments, including,
without limitation all sales, use, goods, VAT, transfer, customs, stamp duty,
excise, withholding, personal property and other applicable taxes and charges
of any kind (“TAXES”), whether levied by federal, state, or municipal
governments in the TERRITORY, or by other authorities, except for such income
tax which may be expressly required by the laws of the governments in the
TERRITORY to be 


 


5

















 


paid for the account of GTG. The payment of
any such income taxes levied upon or withheld from royalties, fees,
compensations, or other payments due to GTG, and the filing of any information
or tax returns with respect thereto, shall be the responsibility of and shall
be borne by LICENSEE. GTG will cooperate to help LICENSEE minimize, in any
lawful manner, the foregoing TAXES and will provide LICENSEE with reasonable
assistance to enable LICENSEE to recover such TAXES as permitted by law. It is
agreed that any national taxes or fees necessary or due in each party’s country
and on each party’s side has to be borne by the party required to pay the tax
or fee.


 


5.4                               All
payments by LICENSEE to GTG shall be sent by electronic wire transfer to:


 


St. George Bank Limited


333 Collins Street, Melbourne


Victoria, 3000 Australia


Bank State Branch Number: 333.030


SWIFT Code: SGBLAU2SMEL


Account Name: Genetic Technologies Limited


Account Number: 700390978


 


5.5                               All
fees payable hereunder by LICENSEE shall be made in Euros (EUR) and are payable
to GTG’s successors, heirs, or assigns, as appropriate.


 


5.6                                 LICENSEE
agrees to pay interest of ten percent (10%) per year or the maximum rate
allowed by law, whichever is less, on payments owed but not paid to GTG when
due.


 


5.7                                 MATERIAL
BREACH: Breach of any material provision of this Article V or part thereof
shall be deemed a material breach.


 


ARTICLE VI



WAIVER


 


6.1                                 No
waiver by either party, express or implied, of any breach of any term,
condition, or obligation of this AGREEMENT by the other party shall be
construed as a waiver of any subsequent breach of that term, condition, or
obligation, or of any other term, condition, or obligation of this AGREEMENT of
the same or different nature.


 


ARTICLE VII



TERM AND TERMINATION OF AGREEMENT


 


7.1                                 This
AGREEMENT shall commence on the EFFECTIVE DATE and shall remain in effect on a
country-by-country basis until the last to expire of the LICENSED PATENTS (“TERM”),
unless terminated earlier as provided below.


 


7.2                                 Either
party shall have the right to terminate this AGREEMENT upon any material breach
of any term or condition of this AGREEMENT by the other party, which has not
been corrected within thirty (30) days after receipt of a notice in writing
with reference to this 


 


6

















 


Section 7.2 and such termination shall
be without prejudice to any other rights or claims the aggrieved party may have
against the other party. Termination shall not affect any obligation owed by
LICENSEE to GTG prior to the termination.


 


7.3                                 LICENSEE
shall have the right to terminate this AGREEMENT if GTG violates its
representation according to Article 1.1, last sentence, and 11.1 of this
AGREEMENT. In the case of this violation any consideration paid by LICENSEE to
GTG hereunder shall be reimbursed by GTG to LICENSEE within fourteen (14) days
upon written notice to GTG.


 


7.4                                 This
AGREEMENT, the licenses granted under this AGREEMENT, and future payment
obligations set forth in this AGREEMENT shall terminate immediately upon entry
of a judgment of a court of competent jurisdiction from which no appeal can be
or is taken that operation of LICENSEE’S business in the manner and scope as of
the EFFECTIVE DATE does not infringe the LICENSED PATENTS. This judgment can
also be a judgment declaring lack of patentability or lack of enforceability of
the LICENSED PATENTS.


 


7.5                                 GTG
shall have the right to terminate this AGREEMENT in the event that LICENSEE
shall become involved in insolvency, dissolution, bankruptcy, or receivership
proceedings affecting the operation of its business, or in the event that
LICENSEE discontinues business for any reason. In the case GTG becomes involved
in insolvency, dissolution, bankruptcy, or receivership proceedings affecting
the operation of its business, or in the event that GTG discontinues business
for any reason, LICENSEE will keep the right to perform its activities
under this AGREEMENT.


 


7.6                                 LICENSEE
has the right to terminate this AGREEMENT at any time after December 1,
2008 by prior written notice to GTG at least three (3) months prior to the
termination date; provided, however that LICENSEE is in compliance with all
terms and conditions of this AGREEMENT as of the date such written notice is
provided to GTG and as of the termination date.


 


7.7                                 In
the event of termination of this AGREEMENT all rights granted to LICENSEE
hereunder shall revert to GTG.


 


7.8                                 SURVIVAL:
Except as provided by this Sections 7, Articles II, VIII, X, XI, and all
payment obligations incurred prior to termination or expiration shall survive
the termination or expiration of this AGREEMENT.


 


ARTICLE VIII



CONFIDENTIALITY


 


8.1                                 The
parties agree that the terms and conditions set forth in this AGREEMENT are
CONFIDENTIAL INFORMATION. The CONFIDENTIAL INFORMATION disclosed in writing by
either party (“DISCLOSING PARTY”) to the other party (“RECEIVING PARTY”)
constitutes the confidential and proprietary information of the DISCLOSING
PARTY and the RECEIVING PARTY agrees to treat all CONFIDENTIAL INFORMATION of
the other in the same manner as it treats its own similar proprietary
information, but in no case will the degree of care be less than reasonable
care. The RECEIVING PARTY shall use CONFIDENTIAL 


 


7

















 


INFORMATION of the DISCLOSING PARTY only in
performing under this AGREEMENT and shall retain the CONFIDENTIAL INFORMATION
in confidence and not disclose to any third party (except as authorized under
this AGREEMENT) without the DISCLOSING PARTY’s express written consent. The
RECEIVING PARTY shall disclose the DISCLOSING PARTY’s CONFIDENTIAL INFORMATION
only to those employees and contractors of the RECEIVING PARTY who have a need
to know such information for the purposes of this AGREEMENT, and such employees
and contractors must have entered into agreements with the RECEIVING PARTY
containing confidentiality provisions covering the CONFIDENTIAL INFORMATION,
with terms and conditions at least as restrictive as those set forth herein.


 


ARTICLE IX



PERMITTED DISCLOSURES


 


9.1                               Notwithstanding
anything to the contrary in Article VIII above or otherwise, to the extent
that either patty is required by any laws, stock exchange rules, subpoena,
regulations, or orders by a competent court or other governmental entity to
disclose any terms or conditions of this AGREEMENT, such party shall be able to
make such disclosures.


 


9.2                               Notwithstanding
anything to the contrary in Article VIII above or otherwise:


 


9.2.1                        each party here to shall have
the right, but not the obligation, to inform DIRECT CUSTOMERS of the terms
and conditions of this AGREEMENT to the extent that such terms and conditions
are applicable to any activity or proposed activity of such DIRECT CUSTOMERS;
and


 


9.2.2                        GTG shall have the right, but
not the obligation, to disclose to other licensees and/or prospective licensees
the identity of LICENSEE and the existence of this AGREEMENT.


 


9.3                               Notwithstanding
anything to the contrary in Article VIII above or otherwise, each party
hereto is permitted to disclose this AGREEMENT and use or disclose the
CONFIDENTIAL INFORMATION disclosed to it by the other party:


 


9.3.1                        to the extent such use or
disclosure is reasonably necessary in connection with complying with stock
exchange rules;


 


9.3.2                        to its legal and/or financial
advisors, provided such advisors maintain the confidentiality of this
AGREEMENT;


 


9.3.3                        to the extent such use or
disclosure is reasonably necessary to enforce its rights under this AGREEMENT
in connection with a legal proceeding or as required to be disclosed by law or
governmental regulation;


 


9.3.4                        to the extent such use or
disclosure is reasonably necessary in connection with prosecuting or defending
litigation, complying with applicable law, court order, submitting information
to tax or other governmental authorities, or otherwise exercising its rights
hereunder;


 


8

















 


9.3.5                        to the extent the use or
disclosure of information as evidenced by written records is already known to
the RECEIVING PARTY without an obligation of confidentiality prior to
disclosure by the DISCLOSING PARTY;


 


9.3.6                        to the extent such information
is or becomes publicly available without fault of the RECEIVING PARTY;


 


9.3.7                        to the extent such information
is rightfully obtained by the RECEIVING PARTY from a third party without
restriction as to disclosure, or is approved for release by written
authorization of the DISCLOSING PARTY; and


 


9.3.8                        to the extent such information
is developed independently by the RECEIVING PARTY without use of or access to
the DISCLOSING PARTY’S CONFIDENTIAL INFORMATION.


 


9.3.9                        In the instances set forth in
Sections 9.3.3 or 9.3.4, the RECEIVING PARTY shall provide reasonable advance
written notice to DISCLOSING PARTY of such disclosure and reasonably cooperate
with the DISCLOSING PARTY in limiting such disclosure.


 


9.4                               PUBLICITY
AND PRESS RELEASES: The parties shall mutually agree upon and jointly issue one
or more appropriate media/press releases with regard to the existence of this
AGREEMENT within seven (7) days of the EFFECTIVE DATE or as soon as
reasonably practical thereafter. Neither party shall issue any other press
releases relating to this AGREEMENT without prior written approval of the other
party; provided however, that each party shall be permitted to post a copy of,
provide a link on its web site to or otherwise summarize any permitted disclosures
made under this AGREEMENT.


 


ARTICLE X



NOTICE


 


10.1                         Any
notice, request or statement hereunder shall be deemed to be sufficiently given
or rendered when personally delivered, delivered by a major commercial rapid
delivery courier service or mailed by certified or registered mail, return
receipt requested, and if given or rendered to LICENSEE, addressed to:


 


Prof. Christian Schneeberger


Chief Executive Officer


Genosense Diagnostics GmbH


Donau-City-Strasse 1


A-1220 Vienna


Austria


 


9

















With a copy to:


 


Dr. Daniel Alge


Sonn & Partner


Riemergasse 14/28


A-1010 Vienna


Austria


 


or, if given or rendered to GTG, addressed
to:


 


Dr. Mervyn Jacobson


Chief Executive Officer


Genetic Technologies Limited


60 Hanover Street


Fitzroy, Victoria 3065


Australia


Ph: +61 419 657 915


Fax: +1 (970) 484-6698


 


with a copy to:


 


Michael A.
DeSanctis, Esq.


Hamilton &
DeSanctis


8555 W. Belleview Ave. G21-139


Littleton, CO 80123


USA


Ph: +1 (303) 284-5103


Fax: +1 (303) 362-0575


 


or, in any case, to such changed address or person as GTG or LICENSEE
shall have specified to the other by written notice.


 


ARTICLE XI



REPRESENTATIONS AND WARRANTIES


 


11.1                           GTG
represents and warrants that it has the full right, power, and authority to
enter into and perform its obligations under this AGREEMENT and grant to
LICENSEE the license and other rights as set forth herein, especially for those
patents which have been granted in the name of Genetype AG (CH), and there are
no outstanding agreements, grants, licenses, encumbrances, liens, or
agreements, either written or implied, inconsistent therewith or pursuant to
which this AGREEMENT or the parties’ performance hereunder would violate,
breach, or cause a default.


 


11.2                           GTG
represents and warrants that the execution, delivery, and performance of this
AGREEMENT have been duly authorized by all necessary corporate actions on the part of
GTG.


 


10

















 


11.3                           LICENSEE
acknowledges that GTG offered LICENSEE the opportunity to pay a reasonably
royalty on actual revenues produced by LICENSED SERVICES; however, for the
parties’ mutual convenience LICENSEE proposed the fixed, upfront license fee
and payment of INSTALLMENT PAYMENTS provided for herein.


 


11.4                           LICENSEE
represents and warrants that it has the full right, power, and authority to
enter into and perform its obligations under this AGREEMENT, and there are
no outstanding agreements, grants, licenses, encumbrances, liens, or
agreements, either written or implied, inconsistent therewith or pursuant to
which this AGREEMENT or the parties’ performance hereunder would violate,
breach, or cause a default.


 


11.5                           LICENSEE
represents and warrants that the execution, delivery, and performance of this
AGREEMENT have been duly authorized by all necessary corporate actions on the part of
LICENSEE.


 


ARTICLE XII



INDEMNIFICATION: DISCLAIMER OF WARRANTIES


 


12.1                           INDEMNIFICATION:


 


12.1.1              BY LICENSEE:


 


12.1.1.1          LICENSEE
agrees to hold GTG harmless from any claims by third parties arising from the
use, performance, sale, offer for sale, or other commercialization of LICENSED
SERVICES by LICENSEE or DIRECT CUSTOMERS. LICENSEE shall indemnify, hold
harmless, and defend GTG, and GTG’s subsidiaries, affiliates, officers,
directors, representatives, employees, or agents against any and all claims,
causes of action, demands, judgments, settlements, expenses, or losses
including, but not limited to, reasonable attorneys’ fees and court costs
arising out of or in connection with: (i) the use, performance, sale,
offer for sale or other commercialization of LICENSED SERVICES; (ii) any
breach by LICENSEE of any representation, warranty, or covenant hereunder, or (iii) the
failure of LICENSEE or DIRECT CUSTOMERS to perform any covenants or
obligations contained in this AGREEMENT.


 


12.1.1.2          LICENSEE
shall be liable to GTG with respect to any amounts, fines, or penalties arising
out of or resulting from any failure, delay or error in discharging the
obligations of Section 5.3.


 


12.1.2                BY GTG: GTG shall indemnify, hold
harmless, and defend LICENSEE, and LICENSEE’s subsidiaries, affiliates,
officers, directors, representatives, employees, or agents against any and all
claims, causes of action, demands, judgments, settlements, expenses, or losses
including, but not limited to, reasonable attorneys’ fees and court costs
arising out of or in connection with: (i) any breach by GTG of any
representation, warranty, or covenant hereunder, or (ii) the failure of
GTG to perform any covenants or obligations contained in this AGREEMENT.


 


11

















 


12.1.3                  The indemnifying party’s
indemnification obligations under this Section 12.1 are conditioned upon
the indemnified party (i) giving prompt notice of the claim to the indemnifying
party; (ii) granting sole control of the defense or settlement of the
claim or action to the indemnifying party; and (iii) providing reasonable
cooperation to the indemnifying party and, at the indemnifying party’s request
and expense, assistance in the defense or settlement of the claim.


 


12.2                         DISCLAIMER
OF WARRANTIES:


 


12.2.1           EXCEPT
AS EXPRESSLY SET FORTH HEREIN, EACH PARTY EXPRESSLY DISCLAIMS, TO THE EXTENT
ALLOWED BY APPLICABLE LAW, ANY AND ALL WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED,
INCLUDING WITHOUT LIMITATION THE WARRANTIES OF DESIGN, MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE (EVEN IF INFORMED OF SUCH PURPOSE), NONINFRINGEMENT OF
THE INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES, OR ARISING FROM A COURSE OF
DEALING, USAGE OR TRADE PRACTICES, IN ALL CASES WITH RESPECT THERETO.


 


12.2.2           EXCEPT
AS EXPRESSLY SET FORTH HEREIN, LICENSEE AGREES THAT THE LICENSED PATENTS ARE
PROVIDED “AS IS,” AND THAT GTG MAKES NO REPRESENTATION OR WARRANTY WITH RESPECT
TO THE USE, PERFORMANCE OR SALE OF LICENSED SERVICES INCLUDING THEIR SAFETY,
EFFECTIVENESS, OR COMMERCIAL VIABILITY. NOTWITH-STANDING ANY OTHER PROVISION OF
THIS AGREEMENT, GTG ADDITIONALLY DISCLAIMS ALL OBLIGATIONS AND LIABILITIES FOR
DAMAGES WHICH ARISE OUT OF OR RESULT FROM THE USE, PERFORMANCE OR SALE OF
LICENSED SERVICES. LICENSEE ASSUMES ALL RESPONSIBILITY AND LIABILITY FOR LOSS
OR DAMAGE CAUSED BY USE, PERFORMANCE OR SALE OF LICENSED SERVICES.


 


12.3                         LIMITATION
OF LIABILITY: EXCEPT FOR BREACH OF PAYMENT TERMS UNDER ARTICLE V OR FOR
LIABILITY FOR BREACH OF ARTICLE VIII, NEITHER PARTY SHALL BE ENTITLED TO
RECOVER FROM THE OTHER PARTY ANY SPECIAL, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE
DAMAGES IN CONNECTION WITH THIS AGREEMENT OR ANY LICENSE GRANTED HEREUNDER. GTG
SHALL NOT BE LIABLE FOR ANY AMOUNTS IN EXCESS OF THE TOTAL AMOUNTS PAID TO GTG
BY LICENSEE HEREUNDER DURING THE TWELVE (12) MONTHS IMMEDIATELY PRECEDING THE
EVENT GIVING RISE TO SUCH LIABILITY.


 


12.4                         Nothing
contained in this AGREEMENT shall be construed as:


 


12.4.1                  a warranty or representation by GTG
as to the validity or scope of any LICENSED PATENT;


 


12

















 


12.4.2                  a warranty or representation that any
manufacture, sale, lease, use or other disposition hereunder will be free from
infringement of patents other than those under which and to the extent to which
licenses are in force hereunder;


 


12.4.3                  an agreement to bring or prosecute
actions or suits against third parties for infringement or conferring any right
to bring or prosecute actions or suits against third parties for infringement;


 


12.4.4                  conferring any right to use by either
party, in advertising, publicity, or otherwise, any trademark, trade name or
name, or any contraction, abbreviation or simulation thereof, of the other
party; or


 


12.4.5                  conferring by implication, estoppel
or otherwise, upon LICENSEE or DIRECT CUSTOMERS, any license or other right
under any intellectual property or patent, except that expressly granted
hereunder.


 


ARTICLE XIII



MISCELLANEOUS


 


13.1                           SERVICE
LITERATURE: LICENSEE will prominently display on any literature or other
materials (in paper, electronic or other format) distributed with or about any
LICENSED SERVICE, a notice indicating that the LICENSED SERVICE is provided
pursuant to a license from GTG under the LICENSED PATENTS, which patents are
owned by GTG.


 


13.2                           COPIES
OF LITERATURE: LICENSEE will provide GTG with copies of literature, bulletins,
and other customer materials, such as copies of web pages or other
electronic information used in connection with LICENSED SERVICES prior to the
public release of such information.


 


13.3                           NO
ASSISTANCE TO THIRD PARTIES: Except as required by law or court order,
LICENSEE, for itself, its successors and assigns, will not knowingly contest
(or assist another to contest) the validity or enforceability of the LICENSED
PATENTS or GTG’s ownership interests thereto.


 


13.4                           CONSTRUCTION:
This AGREEMENT has been negotiated by the parties and their respective counsel.
This AGREEMENT shall be interpreted fairly in accordance with its terms and
without any strict construction in favor of or against either party. This
AGREEMENT shall not be construed in favor or against either party by reason of
the authorship of any provisions hereof. The existence or absence of any term
or condition of this AGREEMENT shall not be used in the construction or
interpretation of any other agreement between the parties. The existence or
absence of any term or condition of any other agreement between the parties
shall not be used in the construction or interpretation of this AGREEMENT.


 


13.5                           NOTICE
REGARDING INFRINGEMENT: LICENSEE shall promptly notify GTG of any third party
that it reasonably believes to be infringing a LICENSED PATENT, and will use
reasonable efforts to provide to GTG any non-confidential information it has in
support of such belief. LICENSEE agrees to use its commercially reasonable best
efforts to cooperate, at 


 


13

















 


GTG’s expense, with GTG in any action for
infringement of a LICENSED PATENT brought by GTG against a third party.


 


13.6                         MARKINGS: LICENSEE shall use
markings as GTG may reasonably request from time to time, including, but
not limited to, marking literature, bulletins, and other materials associated
with LICENSED SERVICES with appropriate patent nurnber(s).


 


13.7                         MODIFICATION:
This AGREEMENT sets forth the entire agreement and understanding between the
parties as to the subject matter of this AGREEMENT and merges all prior
discussions between the parties, and no one of the parties shall be bound by
any modification of this AGREEMENT, or by any conditions, definitions,
warranties, or representations with respect to the subject matter of this
AGREEMENT, other than as expressly provided for herein, or as duly set forth on
or subsequent to the EFFECTIVE DATE in writing and signed by duly authorized
representatives of the party to be bound thereby.


 


13.8                         FORUM
SELECTION AND CHOICE OF LAW:


 


13.8.1                  The exclusive venue for any
controversy or claim arising out of or in connection with this AGREEMENT
brought by LICENSEE shall be Denver County, Colorado, United States of America
(USA) and the parties hereto submit and consent to jurisdiction and venue in
Denver County, Colorado, USA, except to the extent preempted by federal
jurisdiction in which case such jurisdiction shall be in the Federal courts of
Colorado; and in connection with any such controversy or claim, this AGREEMENT
and matters connected with the performance thereof shall be construed,
interpreted, applied and governed in all respects in accordance with the laws
of the State of Colorado (excluding conflicts of laws) and of the USA.


 


13.8.2                  The exclusive venue for any
controversy or claim arising out of or in connection with this AGREEMENT
brought by GTG shall be the Commercial Court of Vienna and the parties hereto
submit and consent to jurisdiction and venue in Vienna, Austria; and in
connection with any such controversy or claim, this AGREEMENT and matters
connected with the performance thereof shall be construed, interpreted, applied
and governed in all respects in accordance with the laws of Austria.


 


13.9                         EQUITABLE
REMEDIES: LICENSEE acknowledges that its failure to perform any of the
material terms or conditions of this AGREEMENT may result in immediate and
irreparable damage to GTG. LICENSEE also acknowledges that there may be no
adequate remedy at all for such failures and that in the event thereof, GTG
shall be entitled to equitable relief in the nature of an injunction, pre-award
attachment of assets, and/or other equitable remedies.


 


13.10                   COSTS AND FEES:
Upon resolution of any claim or controversy arising under this AGREEMENT, the
prevailing party shall be awarded its reasonable attorneys’ fees, expert
witness fees, as well as reasonable costs associated with such an action in
addition to any other amount awarded.


 


13.11                   NON-DISPARAGEMENT:
LICENSEE shall not make any disclosures, issue any statements or otherwise
cause to be disclosed any information, statement, press release or other 


 


14

















 


public disclosure, whether oral, written, express or implied, which
disparages, defames, criticizes, slanders, or libels, or denigrates GTG, its
shareholders, officers, directors, or employees, any aspect of the management,
policies, operations, practices, or decisions of GTG, the LICENSED PATENTS,
this AGREEMENT, or GTG’s patent licensing activities (“STATEMENTS”). Additionally,
LICENSEE shall not permit its officers, directors or employees to issue any
such STATEMENTS.


 


13.12                     INDEPENDENT
BUSINESS: The parties acknowledge that their business operations are completely
independent and neither party shall at any time hold itself out as an agent or
representative of the other party. No partnership, joint venture, or other relationship
shall be deemed to exist by virtue of this AGREEMENT.


 


13.13                     INDEPENDENT
TERMS: All the terms of this AGREEMENT shall be independent and unconditional
so that the performance of any one term shall not be subject to any set off or
counterclaim.


 


13.14                     SEVERABILITY:
In the event any clause or term of this AGREEMENT is determined to be void,
invalid, or unenforceable, the clause shall be reformed to the extent necessary
in order to overcome the limitation and as revised this AGREEMENT shall remain
in full force and effect.


 


13.15                     HEADINGS: The
headings contained within this AGREEMENT are for convenience and reference
purposes only. They do not form a part hereof and shall not affect
the meaning or interpretation of this AGREEMENT.


 


13.16                     FURTHER ASSURANCES:
The parties hereto shall execute such further documents and perform such
further acts as may be necessary to comply with the terms of this
AGREEMENT and consummate the transactions herein provided.


 


13.17                     FORCE
MAJEURE: Neither party shall be held responsible if the fulfillment of any
terms or provisions of this AGREEMENT are delayed or prevented by wars,
revolutions, fires, floods, acts of God, acts of terrorism whether actual or
threatened, or other causes similar to those enumerated and not within the
control of the party whose performance is interfered with, and which by the
exercise of reasonable diligence, the party is unable to prevent.


 


13.18                     COUNTERPARTS:
This AGREEMENT may be executed in counterparts (and evidenced by facsimile
signatures), each of which will be deemed an original and all of which together
constitute one instrument.


 


13.19                     So long as
LICENSEE is in compliance with the terms and conditions of this AGREEMENT, GTG
will not negatively influence or not try to negatively influence any of its
customers or other licensees with respect to its customer’s or other licensee’s
business with LICENSEE. More specifically, so long as LICENSEE is in compliance
with the terms and conditions of this AGREEMENT, GTG or any of its affiliates
will not impede the customer relation LICENSEE has with its suppliers or DIRECT
CUSTOMERS.


 


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15

















 


IN WITNESS WHEREOF, the parties hereto have caused their authorized
representatives to execute this AGREEMENT.


 


	
  GTG: 

  	
  LICENSEE: 

  
	
   

  	
   

  
	
  GENETIC TECHNOLOGIES LIMITED
  

  	
  GENOSENSE DIAGNOSTICS GMBH
  

  
	
   

  	
   

  
	
   

  	
   

  
	
  By 

  	
   

  	
   

  	
  By 

  	
   

  	
   

  
	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  Printed Name / Date 

  	
  Printed Name / Date 

  
	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  Title

  	
  Title

  



 


16

















 


APPENDIX “A”


 


LICENSED PATENTS


 


1.                                       EP
0 414 469 B1, especially AT 144797


 


2.                                       Non-US-counterparts
to EP 0 414 469 B1, especially in AU, CA, HK, JP, NZ, SG and ZA


 


3.                                       US
5,789,568


 


4.                                       US
5,192,659


 


5.                                       US
5,612,179


 


6.                                       US
5,851,762


 


7.                                       any
and all non-US applications and patents corresponding to these US patents


 


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APPENDIX “B”


 


Article 7.6, last sentence, shall be amended by the following
clause:


 


...and provided that LICENSEE has fulfilled his payment obligations for
the time periods prior to the termination date. It is being understood between
the parties that after rightful termination of the AGREEMENT according to the
provisions hereunder (7.6) LICENSEE shall not be obliged to make further
INSTALLMENT PAYMENTS as provided in Article V, para 5.1 vi).


 


	
   

  	
   

  	
   

  
	
  Dr. Mervyn Jacobson

  	
   

  
	
  CEO, GTG

  	
   

  
	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  Dr. Christian Schneeberger

  	
   

  
	
  CEO, GENOSENSE Diagnostics

  	
   

  
	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  Dr. Manfred Mueller

  	
   

  
	
  President, GENOSENSE Diagnostics

  	
   

  



 


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