REDACTED
[**] 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
between
CHIRON CORPORATION
F. HOFFMANN-LA ROCHE LTD.
and
ROCHE MOLECULAR SYSTEMS, INC.
BLOOD SCREENING HIV PROBE LICENSE AGREEMENT
TABLE OF CONTENTS
Page
RECITALS
3
ARTICLE 1: DEFINITIONS
3
ARTICLE 2: LICENSE AND OPTION GRANTS
7
ARTICLE 3: PAYMENTS, ROYALTIES
9
ARTICLE 4: RECORDS AND REPORTS
9
ARTICLE 5: OTHER ACTIONS
12
ARTICLE 6: REPRESENTATIONS AND WARRANTIES
12
ARTICLE 7: TERM AND TERMINATION
13
ARTICLE 8: CONFIDENTIALITY
15
ARTICLE 9: INDEMNITY
16
ARTICLE 10: ALTERNATIVE DISPUTE RESOLUTION
16
ARTICLE 11: MISCELLANEOUS
18
ARTICLE 12: FIELD RESTRICTIONS AND OTHER COVENANTS
20
ARTICLE 13: INFRINGEMENT BY THIRD PARTIES
21
ARTICLE 14: EUROPEAN COMMUNITY PROVISIONS
22
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
EXHIBIT G: REGIONS
2
BLOOD SCREENING HIV PROBE LICENSE AGREEMENT
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, subject to certain geographic and time
limitations, under that certain Blood Screening HCV/HIV Probe License Agreement
dated as of October 10, 2000 (the "Interim Agreement").
WHEREAS, CHIRON and ROCHE now desire to enter into a long term, worldwide
collaboration in Blood Screening, superceding the terms and conditions of the
Interim Agreement, 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 "controlling", "controlled by"
and "under common control