**Exhibit 4.14**

 

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

 

**PATENT LICENSEAGREEMENT**

 

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

 

**ARTICLE IBACKGROUND**

 

1.1                                 GTGrepresents that it has certain proprietary and intellectual property rightspertaining to methods and processes used to extract gene discovery and diagnosticutility from the non-coding region of genomes. GTG represents and warrants thatit 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                                 LICENSEEwishes to acquire a license under, and to obtain access to GTG’s non-codingpatents to perform genetic analysis and genetic diagnostics on behalf ofDIRECT CUSTOMERS (as defined below), the results of which may be used bythe DIRECT CUSTOMERS solely in connection with providing medical advice,counseling, recommendations and the like to patients of the DIRECT CUSTOMERS(the “PURPOSE”).

 

1.3                                 GTGis prepared to grant a non-exclusive license to LICENSEE under its non-codingpatents, 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 andrights granted hereunder during the TERM (as defined below). For theconvenience of the parties, the payment terms herein have been structured toreduce accounting complexities and accommodate cash flow requirements. Consequently,any payments to GTG after expiration or termination of this AGREEMENT are forthe exercise of rights by LICENSEE during the TERM. The total license feepayments hereunder are based on a reasonable estimate of LICENSEE’s usage ofmethods covered by the LICENSED PATENTS (as defined below) in view of currentand future revenue forecasts and market analysis. The parties understand andacknowledge the potential for actual usage fluctuations and accept the risk ofthe upfront, fixed license fee structure hereunder.

 

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

 

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

 

2.4                                 “DIRECTCUSTOMER” means a partner according to the business practice performed byLICENSEE at the EFFECTIVE DATE, especially a partner healthcare practitioner ormedical institution of LICENSEE; provided however that such partner:

 

2.4.1                        requests directly of LICENSEEthe performance of genetic diagnostics or genetic analysis on behalf of apatient of such partner;

 

2.4.2                        is contractually limited byLICENSEE to using the results of such genetic diagnostics or genetic analysissolely for providing healthcare advice, counseling, recommendations and thelike to such patient;

 

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

 

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

 

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

 

2.7                                 “INSTALLMENTPAYMENT(S)” means a fee of *** Euros (€ **) each anniversary of theEFFECTIVE DATE for nine (9) years, inclusive.

 

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

 

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

 

2.9                                 “LICENSEDSERVICE(S)” means genetic testing developed by LICENSEE and carried out byLICENSEE 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 tothe infringement of any claim of a LICENSED PATENT.

 

2.10                           “TERRITORY”means world-wide.

 

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

 

**ARTICLE IIIRELEASE**

 

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

 

**ARTICLE IVGRANTS TO LICENSEE AND DIRECT CUSTOMERS**

 

4.1                                 Subjectto the terms and conditions of this AGREEMENT, GTG hereby grants and agrees togrant 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 thePURPOSE to:

 

4.1.1                        perform LICENSED SERVICESfor DIRECT CUSTOMERS located anywhere throughout the TERRITORY;

 

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4.1.2                        advertise, sell and offer forsale LICENSED SERVICES to DIRECT CUSTOMERS located anywhere throughout theTERRITORY; and

 

4.1.3                        internally practice and perform withinfacilities of LICENSEE solely for LICENSEE’s legitimate research purposes (andnot for any third parties or as part of a collaboration or researchproject involving a third party) any methods covered by the LICENSED PATENTS.

 

4.2                               Subjectto the terms and conditions of this AGREEMENT, GTG hereby grants and agrees togrant 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 saleLICENSED SERVICES and results of LICENSED SERVICES in the FIELD OF USEthroughout the TERRITORY solely for the PURPOSE.

 

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

 

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

 

4.3.2                        LICENSEE’S contract with DIRECTCUSTOMERS relating to the purchase of LICENSED SERVICES by such DIRECTCUSTOMERS will affirmatively disclaim or otherwise clarify that the contractdoes not grant to the purchaser any rights or licenses under the LICENSEDPATENTS, except to use any results obtained by LICENSED SERVICES solely forproviding healthcare advice, counseling, recommendations and the like topatients.

 

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

 

4.4                               Therights and licenses granted by GTG in this AGREEMENT are personal to LICENSEE. LICENSEEshall not assign or otherwise transfer any license or right granted hereunderor any interest therein without the prior written consent of GTG (which may bewithheld in GTG’s sole and absolute discretion), except to a purchaser of allor substantially all of the business of LICENSEE to which this AGREEMENTrelates, whether by merger, sale of stock, sale of assets or otherwise;provided, however that prior to the transfer of ownership such purchaser mustexpressly assume in writing LICENSEE’S obligations under this AGREEMENT andexpressly acknowledges in writing that services of such purchaser existingprior to the transfer of ownership shall not be LICENSED SERVICES under thisAGREEMENT.

 

4.5                               ThisAGREEMENT will survive any transfer of the LICENSED PATENTS or the rightsthereto by GTG to a third person or entity. GTG warrants and represents thatany such person or entity to which such rights are transferred shall be fullyinformed about this AGREEMENT.

 

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4.6                                 Allrights not explicitly granted in this AGREEMENT are reserved by GTG. Noadditional rights are granted by implication, estoppel or otherwise. Notlimiting the foregoing, LICENSEE acknowledges neither it nor DIRECT CUSTOMERSare granted any rights to: (i) grant any sublicense without GTG’s priorwritten consent; and (ii) any patents or other intellectual propertyrights of GTG or any third party other than rights under the LICENSED PATENTS.

 

**ARTICLE VCONSIDERATION**

 

5.1                                 Asfull consideration for the release of Article III and the rights andlicenses granted by this AGREEMENT, LICENSEE agrees to pay to GTG anon-refundable license fee of *** payable as follows:

 

***; and

 

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

 

5.2                                 Forpurposes of clarity, the parties acknowledge the INSTALLMENT PAYMENTS representthe payment of a mutually agreed upfront, fixed license fee over time andwithout interest. As a result, except as otherwise provided in Section 7,LICENSEE acknowledges the obligation to make INSTALLMENT PAYMENTS shall survivetermination or expiration of this AGREEMENT until the license fee is paid infull.

 

5.3                                 Thepayment to GTG of the fees, compensation, and other payments provided for inthis 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 chargesof any kind (“TAXES”), whether levied by federal, state, or municipalgovernments in the TERRITORY, or by other authorities, except for such incometax which may be expressly required by the laws of the governments in theTERRITORY to be 

 

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

 

5.4                               Allpayments 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                               Allfees payable hereunder by LICENSEE shall be made in Euros (EUR) and are payableto GTG’s successors, heirs, or assigns, as appropriate.

 

5.6                                 LICENSEEagrees to pay interest of ten percent (10%) per year or the maximum rateallowed by law, whichever is less, on payments owed but not paid to GTG whendue.

 

5.7                                 MATERIALBREACH: Breach of any material provision of this Article V or part thereofshall be deemed a material breach.

 

**ARTICLE VIWAIVER**

 

6.1                                 Nowaiver by either party, express or implied, of any breach of any term,condition, or obligation of this AGREEMENT by the other party shall beconstrued as a waiver of any subsequent breach of that term, condition, orobligation, or of any other term, condition, or obligation of this AGREEMENT ofthe same or different nature.

 

**ARTICLE VIITERM AND TERMINATION OF AGREEMENT**

 

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

 

7.2                                 Eitherparty shall have the right to terminate this AGREEMENT upon any material breachof any term or condition of this AGREEMENT by the other party, which has notbeen corrected within thirty (30) days after receipt of a notice in writingwith reference to this 

 

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Section 7.2 and such termination shallbe without prejudice to any other rights or claims the aggrieved party may haveagainst the other party. Termination shall not affect any obligation owed byLICENSEE to GTG prior to the termination.

 

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

 

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

 

7.5                                 GTGshall have the right to terminate this AGREEMENT in the event that LICENSEEshall become involved in insolvency, dissolution, bankruptcy, or receivershipproceedings affecting the operation of its business, or in the event thatLICENSEE discontinues business for any reason. In the case GTG becomes involvedin insolvency, dissolution, bankruptcy, or receivership proceedings affectingthe operation of its business, or in the event that GTG discontinues businessfor any reason, LICENSEE will keep the right to perform its activitiesunder this AGREEMENT.

 

7.6                                 LICENSEEhas 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 thetermination date; provided, however that LICENSEE is in compliance with allterms and conditions of this AGREEMENT as of the date such written notice isprovided to GTG and as of the termination date.

 

7.7                                 Inthe event of termination of this AGREEMENT all rights granted to LICENSEEhereunder shall revert to GTG.

 

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

 

**ARTICLE VIIICONFIDENTIALITY**

 

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

 

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

 

**ARTICLE IXPERMITTED DISCLOSURES**

 

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

 

9.2                               Notwithstandinganything to the contrary in Article VIII above or otherwise:

 

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

 

9.2.2                        GTG shall have the right, butnot the obligation, to disclose to other licensees and/or prospective licenseesthe identity of LICENSEE and the existence of this AGREEMENT.

 

9.3                               Notwithstandinganything to the contrary in Article VIII above or otherwise, each partyhereto is permitted to disclose this AGREEMENT and use or disclose theCONFIDENTIAL INFORMATION disclosed to it by the other party:

 

9.3.1                        to the extent such use ordisclosure is reasonably necessary in connection with complying with stockexchange rules;

 

9.3.2                        to its legal and/or financialadvisors, provided such advisors maintain the confidentiality of thisAGREEMENT;

 

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

 

9.3.4                        to the extent such use ordisclosure is reasonably necessary in connection with prosecuting or defendinglitigation, complying with applicable law, court order, submitting informationto tax or other governmental authorities, or otherwise exercising its rightshereunder;

 

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

 

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

 

9.3.7                        to the extent such informationis rightfully obtained by the RECEIVING PARTY from a third party withoutrestriction as to disclosure, or is approved for release by writtenauthorization of the DISCLOSING PARTY; and

 

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

 

9.3.9                        In the instances set forth inSections 9.3.3 or 9.3.4, the RECEIVING PARTY shall provide reasonable advancewritten notice to DISCLOSING PARTY of such disclosure and reasonably cooperatewith the DISCLOSING PARTY in limiting such disclosure.

 

9.4                               PUBLICITYAND PRESS RELEASES: The parties shall mutually agree upon and jointly issue oneor more appropriate media/press releases with regard to the existence of thisAGREEMENT within seven (7) days of the EFFECTIVE DATE or as soon asreasonably practical thereafter. Neither party shall issue any other pressreleases relating to this AGREEMENT without prior written approval of the otherparty; 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 disclosuresmade under this AGREEMENT.

 

**ARTICLE XNOTICE**

 

10.1                         Anynotice, request or statement hereunder shall be deemed to be sufficiently givenor rendered when personally delivered, delivered by a major commercial rapiddelivery courier service or mailed by certified or registered mail, returnreceipt 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

 

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With a copy to:

 

Dr. Daniel Alge

Sonn & Partner

Riemergasse 14/28

A-1010 Vienna

Austria

 

or, if given or rendered to GTG, addressedto:

 

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 LICENSEEshall have specified to the other by written notice.

 

**ARTICLE XIREPRESENTATIONS AND WARRANTIES**

 

11.1                           GTGrepresents and warrants that it has the full right, power, and authority toenter into and perform its obligations under this AGREEMENT and grant toLICENSEE the license and other rights as set forth herein, especially for thosepatents which have been granted in the name of Genetype AG (CH), and there areno outstanding agreements, grants, licenses, encumbrances, liens, oragreements, either written or implied, inconsistent therewith or pursuant towhich this AGREEMENT or the parties’ performance hereunder would violate,breach, or cause a default.

 

11.2                           GTGrepresents and warrants that the execution, delivery, and performance of thisAGREEMENT have been duly authorized by all necessary corporate actions on the part ofGTG.

 

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11.3                           LICENSEEacknowledges that GTG offered LICENSEE the opportunity to pay a reasonablyroyalty on actual revenues produced by LICENSED SERVICES; however, for theparties’ mutual convenience LICENSEE proposed the fixed, upfront license feeand payment of INSTALLMENT PAYMENTS provided for herein.

 

11.4                           LICENSEErepresents and warrants that it has the full right, power, and authority toenter into and perform its obligations under this AGREEMENT, and there areno outstanding agreements, grants, licenses, encumbrances, liens, oragreements, either written or implied, inconsistent therewith or pursuant towhich this AGREEMENT or the parties’ performance hereunder would violate,breach, or cause a default.

 

11.5                           LICENSEErepresents and warrants that the execution, delivery, and performance of thisAGREEMENT have been duly authorized by all necessary corporate actions on the part ofLICENSEE.

 

**ARTICLE XIIINDEMNIFICATION: DISCLAIMER OF WARRANTIES**

 

12.1                           INDEMNIFICATION:

 

12.1.1              BY LICENSEE:

 

12.1.1.1          LICENSEEagrees to hold GTG harmless from any claims by third parties arising from theuse, performance, sale, offer for sale, or other commercialization of LICENSEDSERVICES by LICENSEE or DIRECT CUSTOMERS. LICENSEE shall indemnify, holdharmless, 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 lossesincluding, but not limited to, reasonable attorneys’ fees and court costsarising out of or in connection with: (i) the use, performance, sale,offer for sale or other commercialization of LICENSED SERVICES; (ii) anybreach by LICENSEE of any representation, warranty, or covenant hereunder, or (iii) thefailure of LICENSEE or DIRECT CUSTOMERS to perform any covenants orobligations contained in this AGREEMENT.

 

12.1.1.2          LICENSEEshall be liable to GTG with respect to any amounts, fines, or penalties arisingout of or resulting from any failure, delay or error in discharging theobligations of Section 5.3.

 

12.1.2                BY GTG: GTG shall indemnify, holdharmless, and defend LICENSEE, and LICENSEE’s subsidiaries, affiliates,officers, directors, representatives, employees, or agents against any and allclaims, causes of action, demands, judgments, settlements, expenses, or lossesincluding, but not limited to, reasonable attorneys’ fees and court costsarising out of or in connection with: (i) any breach by GTG of anyrepresentation, warranty, or covenant hereunder, or (ii) the failure ofGTG to perform any covenants or obligations contained in this AGREEMENT.

 

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12.1.3                  The indemnifying party’sindemnification obligations under this Section 12.1 are conditioned uponthe indemnified party (i) giving prompt notice of the claim to the indemnifyingparty; (ii) granting sole control of the defense or settlement of theclaim or action to the indemnifying party; and (iii) providing reasonablecooperation to the indemnifying party and, at the indemnifying party’s requestand expense, assistance in the defense or settlement of the claim.

 

12.2                         DISCLAIMEROF WARRANTIES:

 

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

 

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

 

12.3                         LIMITATIONOF LIABILITY: EXCEPT FOR BREACH OF PAYMENT TERMS UNDER ARTICLE V OR FORLIABILITY FOR BREACH OF ARTICLE VIII, NEITHER PARTY SHALL BE ENTITLED TORECOVER FROM THE OTHER PARTY ANY SPECIAL, INCIDENTAL, CONSEQUENTIAL OR PUNITIVEDAMAGES IN CONNECTION WITH THIS AGREEMENT OR ANY LICENSE GRANTED HEREUNDER. GTGSHALL NOT BE LIABLE FOR ANY AMOUNTS IN EXCESS OF THE TOTAL AMOUNTS PAID TO GTGBY LICENSEE HEREUNDER DURING THE TWELVE (12) MONTHS IMMEDIATELY PRECEDING THEEVENT GIVING RISE TO SUCH LIABILITY.

 

12.4                         Nothingcontained in this AGREEMENT shall be construed as:

 

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

 

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12.4.2                  a warranty or representation that anymanufacture, sale, lease, use or other disposition hereunder will be free frominfringement of patents other than those under which and to the extent to whichlicenses are in force hereunder;

 

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

 

12.4.4                  conferring any right to use by eitherparty, in advertising, publicity, or otherwise, any trademark, trade name orname, or any contraction, abbreviation or simulation thereof, of the otherparty; or

 

12.4.5                  conferring by implication, estoppelor otherwise, upon LICENSEE or DIRECT CUSTOMERS, any license or other rightunder any intellectual property or patent, except that expressly grantedhereunder.

 

**ARTICLE XIIIMISCELLANEOUS**

 

13.1                           SERVICELITERATURE: LICENSEE will prominently display on any literature or othermaterials (in paper, electronic or other format) distributed with or about anyLICENSED SERVICE, a notice indicating that the LICENSED SERVICE is providedpursuant to a license from GTG under the LICENSED PATENTS, which patents areowned by GTG.

 

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

 

13.3                           NOASSISTANCE 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 LICENSEDPATENTS 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 andwithout any strict construction in favor of or against either party. ThisAGREEMENT shall not be construed in favor or against either party by reason ofthe authorship of any provisions hereof. The existence or absence of any termor condition of this AGREEMENT shall not be used in the construction orinterpretation of any other agreement between the parties. The existence orabsence of any term or condition of any other agreement between the partiesshall not be used in the construction or interpretation of this AGREEMENT.

 

13.5                           NOTICEREGARDING INFRINGEMENT: LICENSEE shall promptly notify GTG of any third partythat it reasonably believes to be infringing a LICENSED PATENT, and will usereasonable efforts to provide to GTG any non-confidential information it has insupport of such belief. LICENSEE agrees to use its commercially reasonable bestefforts to cooperate, at 

 

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

 

13.6                         MARKINGS: LICENSEE shall usemarkings as GTG may reasonably request from time to time, including, butnot limited to, marking literature, bulletins, and other materials associatedwith LICENSED SERVICES with appropriate patent nurnber(s).

 

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

 

13.8                         FORUMSELECTION AND CHOICE OF LAW:

 

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

 

13.8.2                  The exclusive venue for anycontroversy or claim arising out of or in connection with this AGREEMENTbrought by GTG shall be the Commercial Court of Vienna and the parties heretosubmit and consent to jurisdiction and venue in Vienna, Austria; and inconnection with any such controversy or claim, this AGREEMENT and mattersconnected with the performance thereof shall be construed, interpreted, appliedand governed in all respects in accordance with the laws of Austria.

 

13.9                         EQUITABLEREMEDIES: LICENSEE acknowledges that its failure to perform any of thematerial terms or conditions of this AGREEMENT may result in immediate andirreparable damage to GTG. LICENSEE also acknowledges that there may be noadequate remedy at all for such failures and that in the event thereof, GTGshall be entitled to equitable relief in the nature of an injunction, pre-awardattachment of assets, and/or other equitable remedies.

 

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

 

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

 

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public disclosure, whether oral, written, express or implied, whichdisparages, defames, criticizes, slanders, or libels, or denigrates GTG, itsshareholders, 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 anysuch STATEMENTS.

 

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

 

13.13                     INDEPENDENTTERMS: All the terms of this AGREEMENT shall be independent and unconditionalso that the performance of any one term shall not be subject to any set off orcounterclaim.

 

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 necessaryin order to overcome the limitation and as revised this AGREEMENT shall remainin full force and effect.

 

13.15                     HEADINGS: Theheadings contained within this AGREEMENT are for convenience and referencepurposes only. They do not form a part hereof and shall not affectthe meaning or interpretation of this AGREEMENT.

 

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

 

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

 

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

 

13.19                     So long asLICENSEE is in compliance with the terms and conditions of this AGREEMENT, GTGwill not negatively influence or not try to negatively influence any of itscustomers or other licensees with respect to its customer’s or other licensee’sbusiness with LICENSEE. More specifically, so long as LICENSEE is in compliancewith the terms and conditions of this AGREEMENT, GTG or any of its affiliateswill not impede the customer relation LICENSEE has with its suppliers or DIRECTCUSTOMERS.

 

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

 
| GTG:                             | LICENSEE:                      |
|----------------------------------|--------------------------------|
|                             |                           |
| **GENETIC TECHNOLOGIES LIMITED** | **GENOSENSE DIAGNOSTICS GMBH** |
| ** **                       | ** **                     |
| ** **                       | ** **                     |
| By                               |                           |   | By |   |   |
|                             |                           |
|                             |                           |   |   |
| Printed Name / Date    | Printed Name / Date  |
|                             |                           |
|                             |                           |   |   |
| Title                            | Title                          |

 

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**APPENDIX “A”**

 

**LICENSED PATENTS**

 

1.                                       EP0 414 469 B1, especially AT 144797

 

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

 

3.                                       US5,789,568

 

4.                                       US5,192,659

 

5.                                       US5,612,179

 

6.                                       US5,851,762

 

7.                                       anyand 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 followingclause:

 

...and provided that LICENSEE has fulfilled his payment obligations forthe time periods prior to the termination date. It is being understood betweenthe parties that after rightful termination of the AGREEMENT according to theprovisions hereunder (7.6) LICENSEE shall not be obliged to make furtherINSTALLMENT 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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