Exhibit 10.323
CONFIDENTIAL
REDACTED VERSION
[***] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
HCV PROBE LICENSE AND OPTION AGREEMENT - EUROPEAN UNION
between
CHIRON CORPORATION
F. HOFFMANN-LA ROCHE LTD.
and
ROCHE MOLECULAR SYSTEMS, INC.
HCV PROBE LICENSE AND OPTION AGREEMENT -
EUROPEAN UNION
TABLE OF CONTENTS
Page
RECITALS
1
ARTICLE 1
DEFINITIONS
1
ARTICLE 2
LICENSE GRANTS
8
ARTICLE 3
PAYMENTS, ROYALTIES
9
ARTICLE 4
RECORDS AND REPORTS
10
ARTICLE 5
OTHER ACTIONS
11
ARTICLE 6
REPRESENTATIONS AND WARRANTIES
12
ARTICLE 7
TERM AND TERMINATION
14
ARTICLE 8
CONFIDENTIALITY
15
ARTICLE 9
INDEMNITY
16
ARTICLE 10
ALTERNATIVE DISPUTE RESOLUTION
17
ARTICLE 11
MISCELLANEOUS
18
ARTICLE 12
FIELD RESTRICTIONS AND OTHER COVENANTS
20
ARTICLE 13
INFRINGEMENT BY THIRD PARTIES
23
ARTICLE 14
EUROPEAN COMMUNITY PROVISIONS
24
EXHIBIT A:
COMPENSATION TO CHIRON
EXHIBIT B:
CHIRON PATENT LIST
EXHIBIT C:
ROCHE PATENT LIST
EXHIBIT D:
CHIRON LICENSED PRODUCTS & UNIT SIZES
EXHIBIT E:
FORM OF REPORT
EXHIBIT F:
EXISTING LICENSES
HCV PROBE LICENSE AND OPTION AGREEMENT - EUROPEAN UNION
This agreement (hereinafter "Agreement") is made by and between CHIRON
CORPORATION, a Delaware corporation, of 4560 Horton Street, Emeryville,
California 94608 (hereinafter referred to as "CHIRON"), F. HOFFMANN-LA
ROCHE LTD., a Swiss corporation, of Grenzacherstrasse 124, Basel, Switzerland
(hereinafter referred to as "ROCHE PARENT"), and ROCHE MOLECULAR SYSTEMS, INC.,
a Delaware corporation, of 1145 Atlantic Avenue, Suite 100, Alameda, California
94501 (hereinafter referred to as "RMS" and collectively with ROCHE PARENT,
"ROCHE").
BACKGROUND
WHEREAS, CHIRON and ROCHE currently own or control certain patent rights
relating to the hepatitis C virus ("HCV"), as defined below.
WHEREAS, CHIRON and ROCHE entered into that certain Settlement Agreement
dated October 20, 2000 (the "Settlement Agreement") pertaining to the settlement
of the certain litigation matters described therein.
WHEREAS, in consideration of and subject to the execution and delivery
of the Settlement Agreement, CHIRON granted licenses to ROCHE under certain
patent rights relating to HCV for use in assays for the detection of nucleic
acid sequences for use in in vitro diagnostics (excluding use in Blood
Screening, as defined below, but without limiting the effect of the Blood
Screening Agreements, as defined below, or the provisions of Section 12 of this
Agreement), all on the terms and conditions set forth in the HCV Probe License
and Option Agreement dated as of October 10, 2000, as amended from time to time
(the "Original License Agreement").
WHEREAS, in consideration of and subject to the execution and delivery
of the Settlement Agreement, ROCHE granted options for the grant of licenses to
CHIRON under certain patent rights relating to HCV for use in assays for the
detection of nucleic acid sequences for use in Blood Screening and the
Transplantation Field, as defined below, all on the terms and conditions set
forth in the Original License Agreement.
WHEREAS, the parties wish to amend the Original License Agreement by
entering into a separate license and option agreement containing certain terms