Exhibit 10.322
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
BLOOD SCREENING
HIV PROBE LICENSE AGREEMENT -
EUROPEAN UNION
between
CHIRON CORPORATION
F. HOFFMANN-LA ROCHE LTD.
and
ROCHE MOLECULAR SYSTEMS, INC.
BLOOD SCREENING HIV PROBE LICENSE AGREEMENT - EUROPEAN UNION
TABLE OF CONTENTS
Page
RECITALS
1
ARTICLE 1
DEFINITIONS
1
ARTICLE 2
LICENSE AND OPTION GRANTS
5
ARTICLE 3
PAYMENTS, ROYALTIES
7
ARTICLE 4
RECORDS AND REPORTS
7
ARTICLE 5
OTHER ACTIONS
9
ARTICLE 6
REPRESENTATIONS AND WARRANTIES
10
ARTICLE 7
TERM AND TERMINATION
11
ARTICLE 8
CONFIDENTIALITY
13
ARTICLE 9
INDEMNITY
14
ARTICLE 10
ALTERNATIVE DISPUTE RESOLUTION
15
ARTICLE 11
MISCELLANEOUS
15
ARTICLE 12
FIELD RESTRICTIONS AND OTHER COVENANTS
18
ARTICLE 13
INFRINGEMENT BY THIRD PARTIES
19
ARTICLE 14
OTHER EUROPEAN COMMUNITY PROVISIONS
20
EXHIBIT A:
COMPENSATION TO CHIRON
EXHIBIT B:
CHIRON PATENT LIST
EXHIBIT C:
ROCHE PATENT LIST
EXHIBIT D:
CHIRON LICENSED PRODUCTS
EXHIBIT E:
FORM OF REPORT
EXHIBIT F:
EXISTING LICENSES
BLOOD SCREENING HIV PROBE LICENSE 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 human immunodeficiency virus ("HIV"), as defined below.
WHEREAS, CHIRON and ROCHE entered into that certain Settlement Agreement
dated as of October 10, 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 HIV for use in assays for the detection of nucleic
acid sequences for use in Blood Screening, under that certain Blood Screening
HIV Probe License Agreement dated as of January 1, 2001 (the "Original License
Agreement").
WHEREAS, the parties wish to amend the Original License Agreement by
entering into a separate license agreement containing terms and conditions
mutually agreed upon by the parties for the region of the European Union, all on
the terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the above provisions and the mutual
covenants contained herein, CHIRON and ROCHE hereby agree as follows:
ARTICLE 1
DEFINITIONS
In this Agreement the following words and phrases shall have the
following meanings:
1.1
"ADR" means Alternative Dispute Resolution in accordance with
Article 10.
1.2
"Affiliate" means an entity that directly, or indirectly through
one or more intermediaries, controls or is controlled by or is under common
control with, a specified entity. For the purposes of this definition, "control"
(including with correlative meanings, the terms