Exhibit 10.3
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential treatment under Rule 24b-2 of the Exchange Act.
AGREEMENT
Effective as of May 5, 2000 ("Effective Date"), THE BOARD OF TRUSTEES OF THE
LELAND STANFORD JUNIOR UNIVERSITY, a body having corporate powers under the laws
of the State of California ("STANFORD"), and Xenogen Corporation, a California
corporation, having a principal place of business at 860 Atlantic Avenue,
Alameda, CA
94501 ("LICENSEE"), agree as follows:
1.
BACKGROUND
1.1
STANFORD HAS AN ASSIGNMENT OF THE INVENTION
ENTITLED "USING LIGHT TO DETECT AND TRACK PATHOGENS IN LIVING HOSTS", FROM THE
LABORATORY OF DR. CHRISTOPHER CONTAG ("INVENTION[S]"), AS DESCRIBED IN STANFORD
DOCKET S94-044, AND ANY LICENSED PATENT(S), AS HEREINAFTER DEFINED, WHICH MAY
ISSUE TO SUCH INVENTION(S).
1.2
STANFORD DESIRES TO HAVE THE INVENTION(S)
PERFECTED AND MARKETED AT THE EARLIEST POSSIBLE TIME IN ORDER THAT PRODUCTS
RESULTING THEREFROM MAY BE AVAILABLE FOR PUBLIC USE AND BENEFIT.
1.3
LICENSEE DESIRES A LICENSE UNDER SAID
INVENTION(S), LICENSED MATERIALS AND LICENSED PATENT(S) TO DEVELOP, MAKE, HAVE
MADE, USE, IMPORT, OFFER FOR SALE AND SELL LICENSED PRODUCT(S) IN THE LICENSED
FIELD OF USE, AND/OR TO SUBLICENSE SAID INVENTION(S), LICENSED MATERIALS AND
LICENSED PATENT(S) IN THE LICENSED FIELD OF USE.
1.4
LICENSEE AND STANFORD HAVE A PRIOR AGREEMENT
AND AMENDMENTS TO THE PRIOR AGREEMENT FOR INVENTION(S), LICENSED MATERIALS AND
LICENSED PATENT(S).
THE PARTIES ACKNOWLEDGE THAT PURSUANT TO THE PRIOR
AGREEMENT, (I) LICENSEE HAS PAID TO STANFORD A NONCREDITABLE, NONREFUNDABLE
LICENSE ISSUE ROYALTY OF [***] DOLLARS [***], AND (II) LICENSEE HAS PAID TO
STANFORD [***] FOR REIMBURSEMENT OF PAST PATENT EXPENSES.
THE PRIOR AGREEMENT
AND AMENDMENTS ARE SUPERSEDED BY THIS AGREEMENT.
1.5
THE INVENTION(S) WAS MADE IN THE COURSE OF
RESEARCH SUPPORTED BY ONE OR MORE OF THE FOLLOWING: THE AMERICAN FOUNDATION FOR
AIDS RESEARCH, THE NATIONAL INSTITUTES OF HEALTH, THE UNITED STATES PUBLIC
HEALTH SERVICE, AND THE OFFICE OF NAVAL RESEARCH.
2.
DEFINITIONS
2.1
"LICENSED PATENT(S)" MEANS ANY (I) U.S.
PATENT APPLICATION SERIAL NUMBER 270,631 FILED JULY 1, 1994 (ISSUED ON JULY 22,
1997 AS U.S. PATENT NUMBER 5,650,135), (II) ALL DIVISIONS, SUBSTITUTIONS, AND
CONTINUATIONS IN WHOLE OR PART OF ANY OF THE PRECEDING, (III) ALL FOREIGN
PATENT APPLICATIONS CORRESPONDING TO OR CLAIMING PRIORITY FROM (INCLUDING
INTERNATIONAL APPLICATION NUMBER PCT/US95/15040 AND ALL NATIONAL APPLICATIONS
CLAIMING PRIORITY THEREFROM), AND (IV) ALL U.S. AND FOREIGN PATENTS ISSUING ON
ANY OF THE PRECEDING, INCLUDING PATENTS OF ADDITION, REEXAMINATIONS, REISSUES
AND EXTENSIONS.
2.2
"LICENSED MATERIALS" MEANS THOSE BIOLOGICAL
MATERIALS LISTED IN EXHIBIT A, AND SUCH OTHER AGREED MATERIALS AS STANFORD MAY
PROVIDE TO LICENSEE DURING THE TERM OF THIS AGREEMENT, WHICH SHALL BE ADDED TO
EXHIBIT A.
2.3
"LICENSED PRODUCT(S)" MEANS ANY PRODUCT OR
PART THEREOF IN THE LICENSED FIELD OF USE, THE MANUFACTURE, USE, OR SALE OF
WHICH:
(A)
IS COVERED BY A VALID CLAIM OF AN ISSUED,
UNEXPIRED LICENSED PATENT(S) DIRECTED TO THE INVENTION(S).
A CLAIM OF AN
ISSUED, UNEXPIRED LICENSED PATENT(S) SHALL BE PRESUMED