Exhibit 4.16


 


Execution
Version


 


“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 ***.”


 


genetic technologies

Limited


 


LICENSE AGREEMENT AND RELEASE


 


Effective as of June 29, 2007 (“EFFECTIVE DATE”), GENETIC TECHNOLOGIES LIMITED, having an office at 60 Hanover
Street, Fitzroy, Victoria 3065, Australia (“GTG”), and THERMO
FISHER SCIENTIFIC INC., having an office at 81 Wyman Street,
Waltham, MA, 02454-9045, USA (“THERMO”), 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.


 


1.2                               THERMO wishes to acquire
a license under, and to obtain access to GTG’s non-coding patents.


 


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


 


ARTICLE II


GENERAL DEFINITIONS AND RELATIONSHIPS AMONG
DEFINITIONS


 


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


 


2.2                               “CONFIDENTIAL
INFORMATION” means any and all information which is disclosed by either party
to the other verbally, electronically, visually, or in a written or other
tangible form which is either identified or should be reasonably
understood 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marketing plans, strategies, forecasts, unpublished financial statements,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                               “FIELD OF USE” means
gene-based, human genetic research and human diagnostics, but excluding certain
genetic testing that is proprietary Myriad Genetics, Inc. and known as
BRACAnalysis®, COLARISSM, COLARIS APSM
, MELARISSM, and CardiaRisk®.


 

















 


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


 


2.5                               “LICENSED PATENT(S)”
means the United States Patents listed in Appendix “A” attached to this
AGREEMENT and all reissues, reexaminations, divisionals, continuations
continuations-in-part, substitutions, and extensions of the foregoing,
applications therefor, and patents which may issue upon such applications.


 


2.6                               “LICENSED PRODUCT(S)”
means:


 


2.6.1                        products manufactured by THERMO
or on behalf of THERMO of its own design; and


 


2.6.2                        activities and diagnostic
services performed by THERMO;


 


2.6.3                        that but for the license
granted herein would infringe or contribute to the infringement of one or more
claims of a LICENSED PATENT.


 


2.7                               “THERMO” means Thermo
Fisher Scientific Inc. and its wholly owned subsidiaries existing as of the
EFFECTIVE DATE.


 


2.8                               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,” “include?
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 terms and
conditions of this AGREEMENT, GTG agrees that, providing THERMO fully and
faithfully discharges all obligations undertaken by THERMO in this AGREEMENT,
namely, the confidentiality obligations and the obligation to pay the license
issue fee, GTG will release THERMO 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.


 


ARTICLE IV


GRANT TO THERMO


 


4.1                               Subject to the terms and
conditions of this AGREEMENT, GTG hereby grants and agrees to grant to THERMO a
worldwide, nonexclusive, non-transferable, perpetual, irrevocable, paid-up
license under the LICENSED PATENTS (without the right to sublicense) to make,
use, sell, offer for sale, and import LICENSED PRODUCTS in the 


 


2

















 


FIELD OF USE.
The rights granted herein shall pass through to end-users solely to the extent
required for internal use of LICENSED PRODUCTS by such end-users.


 


4.2                               The rights and licenses
granted by GTG in this AGREEMENT are personal to THERMO. THERMO 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 THERMO or any of its wholly owned
subsidiaries, 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 the
obligations of THERMO or one of its subsidiaries, as the case may be,
under this AGREEMENT and expressly acknowledges in writing that products and/or
services of such purchaser existing prior to the transfer of ownership shall
not be LICENSED PRODUCTS.


 


4.3                               All rights not
explicitly granted to THERMO are reserved by GTG. Not limiting the foregoing,
THERMO acknowledges that it is not granted any rights to any other patents or
other intellectual property rights of GTG or any third party.


 


ARTICLE V


CONSIDERATION


 


5.1                               As consideration for the
licenses and rights granted by this AGREEMENT, THERMO agrees to pay to GTG a
one-time, nonrefundable license issue fee of *** in cash on the EFFECTIVE DATE.


 


5.2                               ***


 


5.3                               All payments by THERMO
to GTG shall be sent by electronic wire transfer to:


 


Key Bank

#307070267

1130 Haxton Drive

Fort Collins, Colorado 80525 

Account: Genetic Technologies Limited 

Account Number: 76009 000 2576


 


5.4                               All fees payable
hereunder by THERMO shall be made in United States Dollars (USD) and are
payable to GTG’s successors, heirs, or assigns, as appropriate.


 


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.


 


3

















 


ARTICLE VII


CONFIDENTIALITY, PUBLICITY AND PRESS RELEASES


 


7.1                                 LIMITATIONS ON USE AND
DISCLOSURE: The parties agree that the terms and conditions set forth in this
AGREEMENT are CONFIDENTIAL INFORMATION, The CONFIDENTIAL INFORMATION disclosed
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 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. Notwithstanding the foregoing, each party’s confidentiality
obligations hereunder shall not apply to information which as evidenced by
written records:


 


7.1.1                      is already known to the RECEIVING
PARTY without an obligation of confidentiality prior to disclosure by the
DISCLOSING PARTY;


 


7.1.2                      is or becomes publicly available
without fault of the RECEIVING PARTY;


 


7.1.3                      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;


 


7.1.4                      is developed independently by the
RECEIVING PARTY without use of or access to the DISCLOSING PARTY’s CONFIDENTIAL
INFORMATION.


 


7.2                                 PERMITTED USE AND
DISCLOSURE: Each party hereto is permitted to disclose this AGREEMENT and use
or disclose the CONFIDENTIAL INFORMATION disclosed to it by the other party:


 


7.2.1                      To the extent such use or
disclosure is reasonably necessary in connection with complying with stock
exchange rules.


 


7.2.2                      To its legal and/or financial
advisors, provided such advisors maintain the confidentiality of this AGREEMENT.


 


4

















 


7.2.3                      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,


 


7.2.4                      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.


 


7.2.5                      In the instances set forth in
Sections 7.2.1 or 1.2.4, 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.


 


7.3                                 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:


 


7.3.1                      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;


 


7.3.2                      GTG shall be able to disclose to
other licensees and/or prospective licensees the identity of THERMO and the
existence of this AGREEMENT; and


 


7.3.3                      THERMO shall be able to disclose
to customers and/or prospective customers the identity of GTG and the existence
of this AGREEMENT.


 


ARTICLE VIII


NOTICE


 


8.1                                 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 THERMO, addressed to:


 


Peter Y. Lee, Esq.

Director Intellectual Property 

81 Wyman Street 

Post Office Box 9046 

Waltham, MA

02454-9046 

USA


 


5

















 


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


 


Dr. Melvyn
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 & Cha, LLP 

225 Union Blvd., Ste. 305 

Lakewood, CO 80228 

USA 

Ph: +1 (303) 284-5103 

Fax: +1 (303) 362-0575


 


or, in any case, to such changed address or person as such parties
shall have specified to each other by written notice.


 


ARTICLE IX


REPRESENTATIONS AND WARRANTIES


 


9.1                               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 THERMO the license and other
rights as set forth herein, 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.


 


9.2                               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.


 


9.3                               THERMO 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.


 


9.4                               THERMO 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 THERMO.


 


6

















 


9.5                               INDEMNIFICATION:


 


9.5.1                      BY THERMO: THERMO agrees to hold
GTG harmless from any claims by third parties arising from the manufacture,
use, sale, importation, or other disposition of LICENSED PRODUCTS. THERMO 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 the design, development, manufacture, use,
sale, packaging, distribution, or shipment of LICENSED PRODUCTS.


 


9.5.2                      BY GTG: GTG shall indemnify, hold
harmless, and defend THERMO, 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.


 


9.5.3                      The indemnifying party’s
indemnification obligations under this Section 9.5 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.


 


9.6                               DISCLAIMER OF
WARRANTIES:


 


9.6.1                      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.


 


9.6.2                      EXCEPT AS EXPRESSLY SET FORTH
HEREIN, THERMO AGREES THAT THE LICENSED PATENTS ARE PROVIDED “AS IS,” AND THAT
GTG MAKES NO REPRESENTATION OR WARRANTY WITH RESPECT TO THE PERFORMANCE OR SALE
OF LICENSED PRODUCTS INCLUDING THEIR SAFETY, EFFECTIVENESS, OR COMMERCIAL
VIABILITY. NOTWITHSTANDING ANY OTHER PROVISION OF THIS AGREEMENT, GTG
ADDITIONALLY DISCLAIMS ALL OBLIGATIONS AND LIABILITIES FOR DAMAGES WHICH ARISE
OUT OF OR RESULT FROM 


 


7

















 


THE PERFORMANCE OR SALE OF LICENSED PRODUCTS. THERMO ASSUMES ALL
RESPONSIBILITY AND LIABILITY FOR LOSS OR DAMAGE CAUSED BY PERFORMANCE OR SALE
OF LICENSED PRODUCTS.


 


9.7                                 LIMITATION OF
LIABILITY: 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 THERMO HEREUNDER DURING
THE TWELVE (12) MONTHS IMMEDIATELY PRECEDING THE EVENT GIVING RISE TO SUCH
LIABILITY.


 


9.8                                 Nothing contained in
this AGREEMENT shall be construed as:


 


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


 


9.8.2                      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; or


 


9.8.3                      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; or


 


9.8.4                      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


 


9.8.5                      conferring by implication,
estoppel or otherwise, upon THERMO, any license or other right under any
intellectual property or patent, except that expressly granted hereunder.


 


ARTICLE X


MISCELLANEOUS


 


10.1                           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 fervor 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.


 


8

















 


10.2                         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.


 


10.3                         CHOICE OF LAW: 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 United
States.


 


10.4                         FORUM SELECTION: The exclusive
venue for any controversy or claim arising out of or in connection with this
AGREEMENT shall be Denver County, Colorado and the parties hereto submit and
consent to jurisdiction and venue in Denver County, Colorado, except to the
extent preempted by federal jurisdiction in which case such jurisdiction shall
be in the Federal courts of Colorado.


 


10.5                         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.


 


10.6                         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.


 


10.7                         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.


 


10.8                         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.


 


10.9                         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.


 


10.10                   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.


 


9

















 


10.11                 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,


 


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10

















 


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


 


	
  GTG:

  	
  THERMO:

  
	
   

  	
   

  
	
  GENETIC
  TECHNOLOGIES LIMITED

  	
  THERMO FISHER
  SCIENTIFIC INC.

  
	
   

  	
   

  
	
   

  	
   

  
	
  By

  	
   

  	
   

  	
  By

  	
   

  	
   

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  Printed Name
  / Date

  	
   

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  Title

  	
  Title

  
								



 


11

















 


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


 


	
  GTG:

  	
  THERMO:

  
	
   

  	
   

  
	
  GENETIC
  TECHNOLOGIES LIMITED

  	
  THERMO
  FISHER SCIENTIFIC INC.

  
	
   

  	
   

  
	
   

  	
   

  
	
  By

  	
   

  	
   

  	
  By

  	
   

  	
   

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  Printed Name
  / Date

  	
   

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  Title

  	
  Title

  
								



 


12

















 


APPENDIX “A”


LICENSED PATENTS


 


	
  US Patent No.

  	
   

  	
  Earliest Priority 

  Date

  	
   

  	
  Filing Date

  	
   

  	
  Issue Date

  	
   

  	
  Expiration Date

  	
   

  
	
  5,612,179

  	
   

  	
  8/25/1989

  	
   

  	
  9/23/1992

  	
   

  	
  3/18/1997

  	
   

  	
  3/9/2010

  	
   

  
	
  5,789,568

  	
   

  	
  8/25/1989

  	
   

  	
  7/16/1996

  	
   

  	
  8/04/1998

  	
   

  	
  8/25/2009

  	
   

  
	
  5192,659

  	
   

  	
  8/25/1989

  	
   

  	
  7/11/1990

  	
   

  	
  3/09/1993

  	
   

  	
  3/09/2010

  	
   

  
	
  5,851,762

  	
   

  	
  7/11/1990

  	
   

  	
  8/22/1994

  	
   

  	
  12/22/1998

  	
   

  	
  12/22/2015

  	
   

  



 


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