EXHIBIT 10.13
CONFIDENTIAL TREATMENT REQUESTED
AGREEMENT
This AGREEMENT is made on the 24th day of December 1998
BETWEEN
UNILEVER PLC, an English company having its principal place of business at
Unilever House, Blackfriars, London EC4P 4BQ, England and UNILEVER NV, a
Netherlands company having its principal place of business at Weena 455, 3013 AL
Rotterdam, Netherlands (hereinafter collectively "Unilever"),
AND
ADEZA BIOMEDICAL Corporation, a Delaware, United States of America company,
having its principal place of business at 1240 Elko Drive, Sunnyvale, California
94089 (hereinafter "Licensee").
1. DEFINITIONS
1.1 "Patent Rights" shall mean the patents and patent applications listed in
attached Exhibit 1, any pending or granted counterparts claiming priority
thereof, or claiming the same priorities as the patents and patent
applications listed in attached Exhibit 1 filed anywhere throughout the
world, and any continuations, continuations in part, divisions, reissues
or reexaminations of the foregoing.
1.2 "Territory" shall mean all those territories where there are subsisting
Patent Rights.
1.3 "Licensed Product" shall mean any device for qualitative or quantitative
detection of the analytes specified in Appendix 2a covered by or made in
accordance with, or adapted for use within a claim of a patent or
published patent application within the Patent Rights.
THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
CONFIDENTIAL TREATMENT REQUESTED
1.4 "Products Under Option" shall mean any device for qualitative or
quantitative detection of the analytes specified in Appendix 2b covered by
or made in Appendix 2b covered by or made in accordance with, or adapted
for use within a claim of a patent or published patent applications with
the Patent Rights.
1.5 "Net Sales" shall mean the amount invoiced by the Licensee or an Affiliate
upon arms-length sale to an independent third party of Licensed Product or
Products Under Option less any customary trade, quantity or cash discounts
and non-affiliated broker's or agent's commissions actually allowed and
taken, amounts repaid or credited by reason of rebate, rejection, return,
short-dating or outdating, and less any import, value added or excise
taxes and customs duties levied and any other governmental charges made as
to production, sale, transportation, delivery or use to the extent such
charges are paid by the Licensee or Affiliate and are separately
identified on invoices.
1.6 "Effective Date" shall mean the date first above written.
1.7 "Calendar Half-year" shall mean the respective six month periods ending on
the last business days of June and December respectively.
1.8 "Affiliate" in relation to the Licensee shall mean any company of which
Licensee owns or controls a majority of the ordinary share capital.
2. LICENCE GRANT
2.1 Unilever hereby grants to the Licensee and the Licensee hereby accepts
with effect from the Effective Date a non-exclusive royalty-bearing
licence under the Patent Rights in the Territory to make, use and sell
Licensed Products.
2.2 Unilever hereby grants to the Licensee and the Licensee hereby accepts
with effect from the Effective Date a non-exclusive option to a
royalty-bearing licence to make, use and sell Products Under Option. This
option may be exercised on a
THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
CONFIDENTIAL TREATMENT REQUESTED
per analyte basis at any time within the two (2) year period subsequent to
the Effective Date of the Agreement, whereupon it will cease on a per
analyte basis.
2.3 It is hereby expressly agreed that no licence is granted under any other
Unilever patent rights whatsoever and no licence is granted for any
analyte other than those under Appendix 2a and Appendix 2b, should the
licence option be exercised.
2.4 There will be no right to sub-licence without prior written consent of
Unilever.
2.5 The licence to the Licensee shall not be assigned or otherwise transferred
in whole or in part except to the purchaser of all the material business
assets and goodwill of the Licensee with respect to all the Licensed
Products, who shall have agreed with Unilever in writing prior to such
assignment or transfer to accept all of the Licensee's obligations under
this Agreement with respect to the Licensed Products, and any such licence
so transferred may thereafter continue to be used by the purchaser only in
connection with the Licensee's business assets which are so purchased.
3. PAYMENTS
3.1 In consideration of the licence granted in clause 2.1 hereof, the Licensee
will pay to Unilever an initial non-returnable sum of [***] and provided
that [***] will be fully credited until exhausted against royalty payments
due under clause 3.3 made on and subsequent to the Effective Date until
31st December 1999. No part of the fully creditable [***] will be credited
against royalty payments due under clause 3.3 after 31st December 1999. In
the event royalty payments due under clause 3.3 made on and subsequent to
the Effective Date until 31st December 1999 do not amount to [***], the
remaining part of the credit will be lost. The initial non-returnable sum
of [***] will be paid by Licensee in [***] instalments of [***] by the
following dates (the due dates):
THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
CONFIDENTIAL TREATMENT REQUESTED
First instalment: within thirty (30) days from the Effective date
Effective date
Second Instalment: by 31 March 1999
Third Instalment: by 30 June 1999
Fourth Instalment: by 30 September 1999
3.2 In consideration of the licence option granted in clause 2.2 hereof, the
Licensee will pay to Unilever a non-returnable sum of [***] per analyte
upon exercise of the licence option, within thirty (30) days upon exercise
of the licence option.
3.3 The licensee will pay to Unilever a royalty on Licensed Products and on
Products Under Option at a rate of [***] of all Net Sales made by Licensee
and Affiliates on and after the Effective Date.
3.4 Only one royalty shall be paid upon sale of any Licensed Product
regardless of the number of claims or patents within the Patent rights
that may be otherwise infringed by the Licensed Product or its use. In the
event that a Patent Right is declared invalid in a country by a decision
by a court of competent jurisdiction and final resort, or a decision by an
inferior tribunal from which no appeal has or can be taken, Licensee's
obligation to royalties with respect to this Patent Right in said country
will terminate immediately.
4. ACCOUNTING AND AUDIT
4.1 Within [***] after the end of each Calendar Half-year for the
remainder of the term of this Agreement, the Licensee shall furnish
to Unilever at the address in clause 7.3 hereof, a written report
certified as correct by the Licensee's chief executive officer or
senior qualified accountant setting forth the number, name and type
of all Licensed Product in each country of sale upon which the
Licensee is obligated to pay royalties and the computation of the
royalties payable with respect thereto, together with the remittance
of the amount due. A report will be furnished to Unilever whether or
not any sales have been made in that Calendar Half-year. Any
payments of royalties which are sent more than [***] after the
THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
CONFIDENTIAL TREATMENT REQUESTED
end of the Calendar Half-year shall bear interest at [***] percent per
annum from the date on which payment was due to the date on which payment
is received by Unilever.
4.2 Fees and royalties shall be paid in Pounds sterling by cheque payable to
Unilever PLC at the address in clause 7.3 hereof, or otherwise as Unilever
shall direct. All currency translations from the currency of sale to
Pounds sterling will be made based on the mid-rate of exchange published
by the Financial Times (London Edition) on the last business day of the
relevant Calendar Half-year for calculation of royalties due under clause
3.3.
4.3 All royalty payments provided for under this Agreement shall be made to
Unilever in full, provided however that in any event and to the extent
that any royalty or other sum payable hereunder is subject to [***], the
Licensee has the right to [***]. All payments due under this Agreement are
[***] where applicable.
4.4 The Licensee shall keep accurate records in sufficient detail to enable
royalties payable hereunder to be determined, and shall permit such
records to be inspected once per year with reasonable notice. In the event
Unilever does not request an inspection of the records within three years
following a royalty report the Licensee may dispose of the records. Any
inspection of records shall be made during reasonable business hours by a
certified accountant reasonably acceptable to the Licensee and appointed
by Unilever at its expense for this purpose, but only to the extent
necessary to verify the amount of royalties payable. The accountant shall
be required to execute a non-disclosure agreement with Licensee, prior to
such inspection, which will enable the accountant to report to Unilever
the amount of royalty due and payable. Any amount of royalty found to be
underpaid shall be promptly remitted to Unilever together with any
interest at a rate of [***] per annum, and any amount or royalty found to
be overpaid shall be deductible from subsequent royalty remittances, and
if the amount of royalty found to be underpaid shall exceed [***] of the
royalty payment for the respective period, the Licensee shall pay to
Unilever the cost of the inspection of the records by the certified
Accountant.
THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
CONFIDENTIAL TREATMENT REQUESTED
5. APPLICABLE LAW
5.1 This Agreement shall be deemed to have been made in and shall be construed
in accordance with the laws of England for all matters (other than scope
and validity of the Patent Rights which shall be construed and governed in
accordance with laws of the jurisdiction in which the Patent Rights have
been granted) and the parties submit to the jurisdiction of the English
Courts.
6. TERMINATION
6.1 The Licensee may terminate the licence granted in this Agreement at any
time upon ninety (90) days written notice subject to payment of royalties
in respect of sales of all Licensed Product and Product Under Option until
termination.
6.2 Upon material default by either Party in the performance of any obligation
to be performed by the other Party other than the payment under Clause
3.1, the other Party may give written notice specifying the thing or
matter in default. Unless the default is cured within sixty (60) days
following the giving of notice, the Party making notice may give further
written notice to the other Party forthwith terminating the licence
granted hereunder. If any payment under Clause 3.1 is not made by the date
at which it is due (the due date), the licence granted maybe terminated by
Unilever thirty (30) days after receipt of written notice by Licensee from
Unilever.
6.3 Licensee shall be authorized to challenge any Patent right.
6.3.1 In the event that Licensee challenges, directly or indirectly, any
Patent Right outside the territory of the U.S.A., Unilever shall have the
right to terminate the license under this Patent Right immediately in the
country in which the Patent Right is challenged.
THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
CONFIDENTIAL TREATMENT REQUESTED
6.3.2 In the event that Licensee challenges any Patent Right in the
territory of the U.S.A., Licensee will still be obliged to continue paying
the royalties due under this Patent Right until a decision by a court of
competent jurisdiction and final resort, or a decision by an inferior
tribunal from which no appeal has or can be taken, has been issued.
6.4 Unilever may terminate upon written notice the licence rights of Licensee
forthwith if the Licensee shall be declared bankrupt or shall enter into
liquidation or receivership or similar state.
6.5 Unilever may terminate the licence rights of the Licensee forthwith if the
Licensee manufactures, uses or sells (or procures any third party so to
do), any product which is covered by the Patent Rights in the country of
such manufacture use or sale, other than a Licensed Product or Product
Under Option on which royalty is paid pursuant to this Agreement.
6.6 Unilever can terminate the licence on a per analyte basis on thirty (30)
days written notice if the Licensee makes no sales of the particular
Licensed Product or if the royalties received by Unilever are less than;
- [***] per analyte in the period starting from the Effective Date of the
Agreement and ending on 31st December 1999
- [***] within any period of 12 months starting 1st January 2000,
- unless Licensee makes up the difference between royalties owed for that
period and the minimum royalties due to Unilever for such period.
6.7 Unilever can terminate the licence on a per analyte basis on thirty days
(30) written notice if the Licensee makes no sales or Product Under Option
or if the royalties received by Unilever are less than [***] per analyte
within any period of 12 months starting one year after exercise of the
option for the particular Product Under Option, unless Licensee makes up
the difference between royalties owed for that period and the minimum
royalties due to Unilever for such period.
THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
CONFIDENTIAL TREATMENT REQUESTED
6.8 Termination pursuant to clauses 6.1 to 6.7 hereof shall not relieve either
party of any obligations accrued prior to the termination.
6.9 Unless sooner terminated as provided above, the licence rights granted
hereunder shall continue until expiration of the last to expire of the
patents within the Patent Rights.
7. GENERAL PROVISIONS
7.1 This Agreement supersedes all previous oral and written agreements between
the parties and is the only and entire understanding existing between the
parties with respect to the subject matter of this Agreement. Any
amendment thereto shall be in writing and signed by the parties.
7.2 The provisions of this Agreement shall be deemed separable, and if any
part of this Agreement is rendered void, invalid, or unenforceable, such
rendering shall not affect the validity or enforceability of the remainder
of the Agreement unless the part or parts which are void, invalid or
unenforceable shall substantially impair the value of the whole Agreement
to either party.
7.3 All notices and reports shall be sent to the parties at the addresses
shown below. Such notice or report shall be deemed received when sent
addressed to the party at the address shown below by registered mail with
correct postage affixed and by facsimile on the same date and confirmed by
mail within 14 days. The addresses for notices and reports may be changed
by timely written notice to the other party.
For the Licensee: Attention: Chief Executive Officer
Adeza Biomedical Corporation
1240 Elko Drive
Sunnyvale, California 94089
USA
FAX: 408 745 7074
THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
CONFIDENTIAL TREATMENT REQUESTED
For Unilever: Attention: The Senior Agreements Advisor
UNILEVER PLC
Patent Department
Colworth House
Sharnbrook
Bedfordshire MK 44 1LQ
England
Fax: 01234 222 633
7.4 Unilever represents and warrants that they own directly or indirectly all
right title and interest in and to the Patent Rights or are otherwise
authorised to enter into this Agreement. Unilever expressly does not
warrant the validity of any of the Patent Rights but is not aware of any
ground for invalidity thereof. The Licensee will promptly inform Unilever
of any apparent infringements of the Patent Rights which come to its
notice, and the parties will on request discuss the action to be taken in
that respect. It is Unilever's intention to use reasonable efforts to
enforce the Patent Rights, but Unilever shall not be compelled to take
Court action against third party infringers. Unilever will advise the
Licensee every six months of the status of the Patent Rights.
7.5 Unilever expressly does not warrant that any Licensed Product or Product
Under Option is free from infringement of any third party patent or other
intellectual property rights. The Licensee accepts full responsibility for
the manufacture use and sale of all Licensed Product and Product Under
Option and Unilever shall not be liable to Licensee for the consequences
of any such infringement of third party rights or other damages caused to
any third party by such manufacture use or sale, and the Licensee shall
hold harmless and indemnify Unilever from any and all judgements of any
kind which arise from such manufacture, use and sale of Licensed Product
and Product Under Option.
7.6 The Licensee shall not make any use of the Unilever name or any trademark
of Unilever or of any company in the Unilever Group in connection with the
THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
CONFIDENTIAL TREATMENT REQUESTED
manufacture use or sale of Licensed Product or Product Under Option or
otherwise without the prior written consent of Unilever.
7.7 No licence is hereby granted to the Licensee by implication, estoppel or
otherwise under any letters patent or application thereof other than under
the Patent Rights.
7.8 Failure by either party to enforce any provision of this Agreement shall
not be construed as a waiver of such provision and shall not affect the
validity of the Agreement or any part thereof or the right of that party
to enforce any provision thereof.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed in
duplicate originals.
UNILEVER PLC ADEZA
BY /s/ BY: /s/
TITLE: Alain Eric Phillippe TITLE: President
(Authorised Signatory)
UNILEVER NV
BY(1): /s/
TITLE: Alain Eric Phillippe
(Authorised Signatory)
BY(2): /s/
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BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
CONFIDENTIAL TREATMENT REQUESTED
TITLE: J. P. Van Gent
(authorised signatory)
THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
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APPENDIX 1
a) Granted rights
COUNTRY NUMBER
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- - designated states under the European patent are: -
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OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
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APPENDIX 1 (cont.)
b) Pending Rights
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THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
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APPENDIX 2
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THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.