Exhibit 10
CONFIDENTIAL
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1. This Agreement is made this 27th day of August 1996 among:
(A) Chiron Corporation of 4560 Horton Street, Emeryville,
California, United States of America ("Chiron
Corporation") on its behalf and on behalf of its
Affiliates (collectively "Chiron").
(B) Johnson & Johnson/Ortho Diagnostics Systems Inc. of
Route 202 Raritan, New Jersey, United States of America
("ODSI") on its behalf and on behalf of its Affiliates
(collectively "Ortho").
(C) International Murex Technologies Corporation of Du
Moulin Black, 10th Floor, 595 Howe Street, Vancouver,
BC, V6C2T5, Canada ("IMTC") on its behalf and on behalf
of its Affiliates (collectively "Murex").
(D) Chiron Corporation, ODSI and IMTC are collectively the
"Parties".
2. The following terms bear the following meanings for the
purposes of this Agreement:
"Affiliate" means, with respect to any specified Person, any
other Person who or which directly, or indirectly through
one or more intermediaries or otherwise, is controlled by,
or is under common Control with such specified Person.
"Control" means, as to any Person, the ability, whether
exercised or not, to direct or to influence, directly or
indirectly the management, affairs, policies or business
practices of such Person, whether through the ownership of
securities, through contract or other agreement, through
proxy or other instrument, through a course of conduct or a
business relationship, or otherwise. Without limiting the
generality of the foregoing, a Person shall conclusively be
deemed to have the "ability" to "direct or to influence" the
"management, affairs, policies, or business practices" of
another Person if (i) such Person, or an Affiliate of such
Person, "beneficially owns" (within the meaning of Rule 13d-
3 under the Securities Exchange Act of 1934, as amended)
twenty percent (20%) or more of any class of securities of
the other Person, or (ii) such Person, or an Affiliate of
such Person, has the ability, directly or indirectly, and
whether exercised or not, through the ownership of
securities, through contract or other agreement, through
proxy or other instrument, or otherwise, to elect or
appoint, or cause the election or appointment of, a
representative to the Board of Directors, or other similar
managing body, of the other Person; provided, that
notwithstanding anything to the contrary contained herein,
Ciba-Geigy Limited shall not be deemed an "Affiliate" of
Chiron for purposes of this Agreement. "Controlled",
"controlling" and other derivations of "control" shall have
a correlative meaning.
"Chiron's HCV Patents" means (a) the patents and patent
applications (or patents granted pursuant to such
applications) set out in Schedule 1 hereto, and any
divisionals, continuations, continuations-in-part, reissues,
and foreign counterparts thereof, and (b) any other patent,
patent application, divisional, continuation, continuation-
in-part, reissue, or foreign counterpart thereof having a
priority date or an earliest effective patent application
filing date that is on or before the effective date of this
Agreement or based upon an invention reduced, to practice
prior to the date of this Agreement, which is owned or
controlled with right to sublicense by Chiron or Ortho as of
the date of this Agreement and which contains a valid claim
that (i) is specifically directed to HCV antigens, HCV
antibodies, HCV antigen substitutes, HCV antibody
substitutes, or immunoassays or kits for the detection,
typing or determination of HCV, and (ii) is infringed by any
HCV Product.
"HCV Antibody" means any antibody, or fragment thereof, or
other anti-ligand immunologically reactive with HCV or a
portion of HCV and which is used to diagnose or screen for
hepatitis.
"HCV Antigen" means any peptide, polypeptide or ligand which
reacts immnologically with antibodies which are
immunologically reactive with HCV or a portion of HCV and
which is used to diagnose or screen for hepatitis.
"HCV Kit" means the following HCV Products manufactured and
sold by or on behalf of Murex: VK45, VK46, VK47, VK48, VK68,
HC01 and HC02.
"HCV Product" means each immunoassay, immunoassay kit or
immunoassay test configuration, the manufacture, use or sale
of which utilise or contains one or more HCV Antigen, HCV
Antibody, HCV Antigen substitute or HCV Antibody substitute.
For purposes of this definition, the term "immunoassay"
refers to both antigen/ immunoglobulin binding, and other
ligand/anti-ligand binding phenomena, excluding nucleic acid
hybridisation. The term "HCV Product" includes, without
limitation, HCV Kits, HCV ELISA test kits, HCV Western blot
kits, HCV immunoblot kits, HCV serotyping immunoassay kits,
agglutination assays, radioimmunoassays, and the like.
"Licensed Subsidiary" means any corporation, partnership
(general or limited), limited liability company or joint-
stock company of which IMTC owns, directly or indirectly,
more than fifty percent (50%) of the voting and
participating profit interests.
"Person" means any individual, corporation, partnership
(general or limited), limited liability company, limited
liability partnership, firm, joint venture, association,
company, affiliation, joint-stock company, trust, estate,
unincorporated organisation, governmental or regulatory
body, or any other entity, association, organisation, or
vehicle of any type whatsoever.
"The UK Proceedings" means the infringement proceedings
relating to infringement of UK Patent No. 2,212,511, Action
Numbers CH 1992 C No 1513 and CH 1993 C No. 6942.
The "Dutch Proceedings" mean proceedings: in the District
Court in The Hague, docket No. 96/1034; in the Court of
Appeals in The Hague, docket No. 95/0813, appeal by SDL to
the Decision of the President of The Hague District Court of
8 May 1995; and in the Supreme Court of The Netherlands,
docket No. 16.206, appeal in caseation, filed by SDL against
the Decision of the Court of Appeals in The Hague of 7
December 1995.
The "German Proceedings" mean infringement proceedings in
the District Court in Dusseldorf, official file number 4 0
357/93 and in the Higher Regional Court in Dusseldorf,
official file number 2 U 12/95, and nullity proceedings in
the Federal Court of Munich, official file number 3 Ni
40/94.
The "Italian Proceedings" mean the proceedings between
Chiron Corporation, ODSI and Murex Diagnostic S.p.A and Alfa
Biotech S.p.A. in the Court of Rome General Register No.
58441/94.
The "Belgian Proceedings" mean the appeal by Murex
Diagnostics N.V. against the decision of the Judge of
Seizures of Dendermonde of February 24th 1995.
The "Australian Patent Infringement Proceedings" mean
Proceedings No. G1 06 of 1994 commenced in the Federal Court
of Australia, New South Wales District Registry, General
Division.
The "Australian Anti-Trust and Compulsory Licence
Proceedings" mean Proceedings No. G380 of 1996 in the
Federal Court of Australia, New South Wales District
Registry, General Division.
Save where the context otherwise requires words importing
the singular number include the plural and vice versa.
3. IMTC on behalf of Murex agrees to pay Chiron on behalf of
Chiron and Ortho the sum [ ].
4. Subject as otherwise provided herein:
(a) Chiron and Ortho severally agree, undertake and
covenant to indemnify and hold Murex its directors,
officers, employees, distributors, servants, partners
and agents, together with their heirs, executors
administrators, successors and assigns, harmless and
free from liability and suit, including all costs,
damages, expenses and liabilities whatsoever (including
legal expenses when incurred) arising out of any claim
by any other licensee of Chiron's HCV Patents or any
Chiron collaborator relating to any past or current
infringement of Chiron's HCV Patents by Murex, its
directors, officers, employees, distributors, servants,
partners or agents.
(b) Chiron and Ortho each hereby releases and discharges
Murex its directors, officers, employees, distributors,
servants, partners and agents together with their
heirs, executors, administrators, successors and
assigns for all actions, causes of action, suits,
debts, dues, sums of money, accounts, reckonings,
bonds, bills, specialities, covenants, contracts,
controversies, agreements, obligations, promises,
variances, trespasses, damages, judgements, extents,
executions, claims and demands whatsoever, in law,
admiralty or equity, whether known or unknown, which
Chiron or Ortho, or their successors and assigns, ever
had, now have or hereafter can, shall, or may have
against Murex and the other parties described above,
with respect to or arising out of Chiron's HCV Patents,
including such litigation and proceedings specifically
listed in clause 7 below, from the beginning of the
world to and including the day of the date of this
Agreement.
(c) Murex hereby releases and discharges Chiron and Ortho
and their respective directors, officers, employees,
distributors, servants, licensees, partners and agents
together with their heirs, executors, administrators,
successors and assigns for all actions, causes of
action, suits, debts, dues, sums of money, accounts,
reckonings, bonds, bills, specialities, covenants,
contracts, controversies, agreements, promises,
obligations, variances, trespasses, damages,
judgements, extents, executions, claims and demands
whatsoever, in law, admiralty or equity, whether known
or unknown, which Murex, or its successors and assigns,
ever had, now have or hereafter can, shall, or may have
against Chiron or Ortho or the other parties described
above, arising out of or relating to Chiron's HCV
Patents, including such litigation and proceedings
specifically listed in clause 7 below, from the
beginning of the world to and including the day of the
date of this Agreement.
(d) In the event that Alfa Biotech S.p.A. ("Alfa") notifies
Chiron and Ortho that they wish to discontinue their
involvement in the Italian Proceedings, Chiron and
Ortho will release Alfa on terms similar to those
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* Brackets denotes where information was deleted due to the
confidential nature of the material.
contained in subclause (d) above upon receipt of a
release from Alfa on terms similar to those contained
in subclause (c) above.
5. [Reserved]
6. IMTC shall obtain the agreement of the joint liquidators of
Specialist Diagnostics Limited (in liquidation) ("SDL"): (a)
to withdraw SDL's petition for leave to appeal to the House
of Lords in the UK proceedings, (b) to terminate SDL's
involvement in and to abandon any of SDL's claims related to
any of the proceedings listed below in clause 7 and (c) to
terminate SDL's involvement in any opposition to Chiron's
European Patent No 318216 by foregoing any appeal of the
Opposition Division's decision and filing an express
abandonment of its opposition all of which shall be
evidenced by the delivery to Chiron Corporation of a letter
from the joint liquidators in a form reasonably satisfactory
to Chiron and Ortho, subject only to delivery by or on
behalf of Chiron and Ortho of the confirmation referred to
in Clause 11 below.
7. Chiron Corporation and ODSI shall apply simultaneously with
the joint liquidators of SDL to withdraw their petition for
leave to appeal to the House of Lords in the UK Proceedings.
Further the Parties shall procure the prompt and permanent
termination on the terms set out below in this clause 7 of:-
(a) the UK Proceedings;
(b) the European Patent Office Proceedings in respect of
Chiron's EP patent 318216;
(c) the Dutch Proceedings;
(d) the German Proceedings;
(e) the Italian Proceedings (other than as to Alfa, unless
Alfa elects to enter into cross-releases with Chiron
and Ortho as provided in clause 4(d));
(f) the Belgian Proceedings;
(g) the Australian Patent Infringement Proceedings and any
and all opposition to Chiron HCV Patents in Australia;
(h) the Australian Anti-Trust and Compulsory Licence
Proceedings;
(i) any other proceeding (whether current, pending or
threatened) whatsoever or wheresoever concerning
Chiron's HCV Patents (including, but not limited to,
proceedings in which validity, infringement,
inventorship or licensing are at issue) involving
Murex, its directors, officers, employees,
distributors, servants, licensees, partners or agents;
and in all cases such termination shall be on the basis that:
(i) all orders for costs outstanding shall be deemed
discharged;
(ii) there shall be no further provision for the payment of
money or costs or the granting of other relief whether
legal or equitable;
(iii) any court or tribunal or registry or like fees required
to be paid to bring about the termination shall be met
equally by Chiron Corporation and/or ODSI on the one
hand and IMTC on the other;
(iv) All injunctions will remain outstanding and fully
enforceable by Chiron and Ortho; provided that Chiron
and Ortho agree not to enforce such injunctions unless
the arbitrators, in accordance with the arbitration
provisions of clause 17 of this Agreement, have
determined that Murex is in breach of this Agreement
and that injunctive relief is appropriate.
8. Murex will not itself, directly or indirectly, actively
participate in or initiate (or assist any Person in
participating in or initiating) any proceedings or
investigations arising in any way from the alleged
licensing, pricing or business policies of Chiron and Ortho
relating to Chiron's HCV Patents provided that nothing
herein shall prevent Murex responding to any lawful requests
for information from any relevant investigating authority
referenced in clause 13 or from enforcing the provisions of
this Agreement in accordance with its terms.
9. Neither Chiron nor Ortho will wilfully make or assist any
Person in making any untrue statement, whether written or
oral, disparaging Murex's HCV Products that materially,
adversely impacts the HCV immunodiagnostics business of
Murex, and Murex will not wilfully make or assist any Person
in making any untrue statement, whether written or oral,
disparaging Chiron' s or Ortho's HCV Products that
materially, adversely impacts the HCV immunodiagnostics
business of Chiron or Ortho. In the event that either
Chiron or Ortho, on the one hand, or Murex, on the other,
seeks to contend that other party is in material breach of
the foregoing provision written notice to that effect shall
be delivered to the President of the other parties setting
out in detail the particulars of the alleged breach. In the
event that Chiron or Ortho, on the one hand, or Murex, as
the case may be, shall assert that the other party
thereafter has wilfully persisted in the breach and has
failed within 30 days of receipt of written notice to take
immediate and reasonable measures to bring the breach to an
end, then the provisions of clause 17 below as to
arbitration shall apply, and if the arbitrators determine
that Chiron, Ortho, or Murex is in wilful material breach of
such provision, the arbitrators shall award such damages or
equitable relief as they determine appropriate. Such
arbitral award shall be the aggrieved party's sole remedy
for breach of this provision.
10. In the event that, despite Murex's compliance with clause 8
above and clause 13 below, the European Commission or other
competent authority deems Chiron's HCV Patents to be an
essential facility or technology that must be freely
licensed, Murex will not be barred by virtue of this
Agreement from seeking a licence from Chiron and Ortho and
Chiron and Ortho shall not unreasonably discriminate against
Murex in awarding any such license.
11. Upon the obtaining of the joint liquidators' agreement
pursuant to clause 6 above, Chiron and Ortho shall forthwith
withdraw their claims in the liquidation of SDL and release
to the joint liquidators of SDL the sum of [ ] held by
Bristows Cooke and Carpmael in respect of costs in the UK
Proceedings and shall give a confirmation to the joint
liquidators in such form as they shall reasonably require.
12. It is further agreed that:
(a) Save as permitted by clauses 15 and 16 Murex will not
henceforth infringe any of Chiron's HCV Patents in the
following territories (the "Excluded Territories"):
Japan, USA, Canada, Mexico, Switzerland, Norway,
Iceland and Liechtenstein and all the current countries
of European Union which, for the avoidance of any
doubt, are listed at Schedule 2.
(b) For territories other than the Excluded Territories set
out above (the "Permitted Territories"), Chiron and
Ortho grant to IMTC and the Licensed Subsidiaries a
non-exclusive license under Chiron's HCV Patents for
the life of Chiron's HCV Patents to make, have made,
use and sell HCV Products in the Permitted Territories.
The grant of such license shall be further evidenced by
a license agreement to be agreed upon by the parties
[ ], which license agreement shall include the
following economic terms:
(i) For the first seven years, IMTC, on behalf of
IMTC and the Licensed Subsidiaries, shall pay to
Chiron, on behalf of Chiron and Ortho, a [ ]
commencing September 30, 1996.
(ii) In year seven and thereafter, IMTC, on behalf
of IMTC and Licensed Subsidiaries shall pay to
Chiron, on behalf of Chiron and Ortho, a royalty
on sales of all HCV Kits and all other HCV
Products which are covered by a Chiron HCV Patent
in countries in which a Chiron HCV Patent is
issued to Chiron[ ]. Such license be non-
transferable and not subject to sublicense, and
shall include warranties, representations, and
indemnities typical of such licenses. For the
avoidance of doubt: in year seven, and only year
seven, royalties shall be payable under both
subclauses (i) and (ii) of this clause 12(b).
(iii) Notwithstanding anything to the contrary
contained in this clause 12(b), during the first
six years of this Agreement the royalty payable on
sales to an unaffiliated third parties of HCV
Products in [ ]. Thereafter the royalty will
be[ ]. During the first six years of this
Agreement, such royalty shall be creditable
against royalties owed under clause 12(b)(i).
(c) Effective immediately and continuing until such time as
such license agreement is executed, Chiron and Ortho
and their successors and assigns, on the same economic
terms applicable to a license under clause 12(b)(i) and
(ii), grant to IMTC and the Licensed Subsidiaries and
their distributors and agents and their respective
directors, officers, employees, executors,
administrators, successors and assigns immunity from
suit for infringement, liability for damages or
compensation and for all actions, causes of action,
suits, debts, dues, sums of money, accounts,
reckonings, bonds, bills, specialities, obligations
covenants, contracts, controversies, agreements,
promises, variances, trespasses, damages, judgements,
extents, executions, claims and demands whatsoever, in
law, admiralty or equity, whether known or unknown,
which Chiron or Ortho, or their successors and assigns,
ever had, now have or hereafter can, shall, or may have
against Murex and the other parties described above,
(the "Actions") in respect of Chiron's HCV Patents and
relating to the manufacture, use and/or sale of the HCV
Kits by Murex in the Permitted Territories for so long
as any of Chiron's HCV Patents shall subsist. Chiron
and Ortho agree fully to indemnify IMTC and the
Licensed Subsidiaries and their respective directors,
officers, employees, distributors, servants, and agents
together with the heirs, executors, administrators,
successors and assigns harmless and free from liability
and suits, including all costs, damages, expenses, and
liabilities whatsoever (including reasonable legal
expenses when incurred) arising out of any claim by any
licensee of Chiron's HCV Patents or any Chiron
collaborator of infringement by IMTC or its Licensed
Subsidiaries of Chiron's HCV Patents (including but not
limited to losses occasioned by the grant of injunctive
or similar relief and/or the payment of any monetary
compensation).
(d) In the event that any territory in the Permitted
Territories becomes a member of the European Union or
the EEA, then such territory will be included in the
definition of the Excluded Territories upon payment to
IMTC or as it may direct of such amount as it shall
certify to be [ ]in respect of HCV
Products otherwise permitted under clause (b) above, as
follows:
[ ]
(e) Murex grants to Chiron and Ortho a non-exclusive,
worldwide, fully paid-up, patent and know-how license
to any technology owned by Murex relating to or
concerning the Sample Addition Monitor. The grant of
such license shall be further evidenced by a license
agreement to be agreed in conjunction with the license
referred to in clause 12(b).
13. Murex will not itself and will not directly or indirectly
assist any Person to bring or prosecute any proceedings
relating to the validity, inventorship, ownership, control
or licensing of any of Chiron's HCV Patents (including the
compulsory licensing thereof). Notwithstanding the
foregoing (or any other provisions of this Agreement), Murex
shall not be prevented from responding to any lawful
requests for information from any governmental,
supragovernmental or other authority which can legally
require Murex to respond. In the event that either Chiron
or Ortho seeks to contend that Murex is in material breach
of the foregoing provision written notice to that effect
shall be delivered to the President of IMTC setting out in
detail the particulars of the alleged breach. In the event
that Chiron or Ortho shall assert that Murex thereafter has
wilfully persisted in such material breach and has failed
within 30 days of receipt of written notice to take
immediate and reasonable measures to bring such material
breach to an end, then the provisions of clause 17 below as
to arbitration shall apply, and if the arbitrators determine
that Murex is in wilful material breach of such provision,
the license (and, if still applicable, freedom from suit)
granted or to be granted to Murex under clause 12(b) shall
automatically terminate.
14. In the event that Murex seeks to contend that Chiron or
Ortho is in wilful material breach of clause 12(b) or the
license granted thereunder, written notice to that effect
shall be delivered to the Presidents of Chiron and Ortho
setting out in detail the particulars of the alleged breach.
In the event that Murex shall assert that Chiron or Ortho
has thereafter wilfully persisted or acquiesced in such
material breach or has failed within 30 days of receipt of
written notice to take immediate and reasonable measures to
bring such material breach to an end, the provisions of
clause 17 shall apply and if the arbitrators determine that
Chiron or Ortho is in wilful material breach of clause 12(b)
or the license granted thereunder, the license granted to
IMTC and the Licensed Subsidiaries under clause 12(b) shall
thereafter be [ ] effective from the date of such wilful
material breach.
15. It is further agreed that:
(a) Chiron and Ortho grant to IMTC and the Licensed
Subsidiaries a world-wide non-exclusive licence, which
shall be non-transferable and without the right to
grant sublicenses, under Chiron's HCV Patents to make,
have made, use and sell HCV Products for determining
HCV serotypes for the life of such patents, such
licence bearing a royalty rate of [ ] of all
such products sold by IMTC and the Licensed
Subsidiaries, provided, however, that in the event
Chiron and Ortho elect to enter into an agreement for
the worldwide private label sale of Murex's HCV
serotyping products, such license shall be [ ]
and the agreement for such private label sale shall
provide that Murex shall sell such HCV serotyping
products to Chiron and Ortho at [ ] to
customers purchasing like quantities. The grant of
such license shall be further evidenced by a license
agreement to be agreed in conjunction with the license
referred to in clause 12(b).
Chiron and Ortho acknowledge that IMTC and the Licensed
Subsidiaries have the right to conduct research and
preclinical development related to HCV in the United
Kingdom.
Murex hereby grants to Chiron and Ortho the right, in
their sole discretion, to require IMTC and the Licensed
Subsidiaries to take, within two years from the date of
this Agreement, a non-exclusive license under Chiron's
HCV Patents for the life of such patents to manufacture
HCV Products in the United Kingdom for the sole purpose
of exporting such HCV Products to the Permitted
Territories and with no right to sell, distribute or
dispose of such HCV Products to or in the Excluded
Territories. IMTC, on behalf of IMTC and the Licensed
Subsidiaries, shall pay to Chiron, on behalf of Chiron
and Ortho, [ ]. Such license shall be on
the same economic terms as the license granted under
clause 12(b).
16. In order to enable the smooth transfer of HCV business to
Ortho or such other supplier as determined by Murex's
customer, Murex shall be permitted to cease selling its HCV
Products in the Excluded Territories in a timely and
efficient manner [ ]. During such transfer period
Murex will work with Ortho to effect a smooth transfer of
business including the use of instrumentation used by
customers to run HCV assays. Murex shall pay to Chiron on
behalf of Chiron and Ortho of [ ].
17. Any disagreement or dispute that shall have arisen among the
parties with respect to this Settlement Agreement must be
referred to and settled by final and binding arbitration to
be held in New York, New York, and conducted expeditiously
in accordance with the Patent Arbitration Rules, as from
time to time amended and in effect (the "Rules"), of the
American Arbitration Association ("AAA"). Provided however
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that notwithstanding the foregoing, nothing contained in
this Section 17 shall restrict the right of Murex its
directors, officers, employees, distributors, servants,
partners or agents to join Chiron and Ortho, or to require
that Chiron and Ortho be joined, as a party to any action or
proceeding, brought against Murex or any other indemnitee in
any forum whatsoever, in respect of which Murex claims a
right to indemnification under clause 4(a) or 12(b) of this
Agreement. Judgement upon award having been rendered by the
arbitrators may be entered in any court (i) having
jurisdiction thereof, (ii) having jurisdiction over the
party against whom enforcement thereof is sought, or (iii)
having jurisdiction over any such party's assets. The
procedures and law applicable during the arbitration of any
controversy, dispute or claim will be both the Rules and the
internal laws of the State of New York (excluding, and
without regard to, its or any other jurisdictions rules
concerning any conflict of laws). In any arbitration
pursuant to this Agreement, the award or decision must be
rendered by at least a majority of the members of an
arbitration panel consisting of three (3) members, one of
whom will be appointed by each of Murex on the one part and
Chiron and Ortho on the second part and the third of whom
will be the chairman of the panel and will be appointed by
mutual agreement of the two party appointed arbitrators.
All arbitrators must be persons who are not employees,
agents, or former employees or agents of any party. In the
event of failure of the two party-appointed arbitrators to
agree within sixty (60) days after submission of the dispute
to arbitration upon the appointment of the third arbitrator,
the third arbitrator will be appointed by the AAA in
accordance with the Rules. In the event that any of the
Parties hereto fails to appoint an arbitrator within thirty
(30) days after submission of the dispute to arbitration,
such arbitrator, as well as the third arbitrator, will be
appointed by the AAA in accordance with the Rules. The
arbitrator shall have the power to issue injunction relief
for appropriate purposes, including specific performance,
but shall not award punitive damages. As part of the
resolution of the arbitration, the arbitration panel shall
award reasonable costs to the prevailing party, or apportion
costs if no party prevails on all issues.
18. Confidentiality Provision
The Parties agree to keep the terms of this Agreement
confidential with exception of such information which in the
opinion of counsel to the disclosing party is required to be
disclosed by applicable law, rule, regulation or generally
accepted accounting practice, including any rules of
applicable stock exchanges and other self-regulatory
authorities or organisations; Provided however that in the
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event a party shall be required to disclose any of the terms
of this Agreement, whether pursuant to subpoena, deposition,
interrogatory, or otherwise or a party shall otherwise
propose to disclose any of the terms of this Agreement
(except in connection with such party's required disclosures
under any applicable securities laws, the rules of any
applicable stock exchange or other self regulatory authority
or organization or other reporting requirements) such
disclosing party shall provide the other Parties with prompt
written notice of such requirement so that the other Parties
may seek a protective order or other appropriate remedy
and/or waive compliance with the terms of this Agreement.
No prior written notice shall be required in connection with
any party's required compliance with applicable securities
laws, the rules of any applicable stock exchange or other
self-regulatory authority or organization or other reporting
requirements. Notwithstanding the foregoing, any party
shall be permitted to submit this Agreement as evidence in
any proceeding including, without limitation, any
notification of this Agreement pursuant to clause 19 below
or in connection with any dispute between or among the
Parties. The provisions of this Clause 18 shall not
restrict a party from making any disclosure of any terms of
this Agreement to the extent such terms become generally
available to the public (other than as a result of a
disclosure by such party in violation of this Agreement) or
to the extent such disclosure relates to the right to
manufacture, market and/or to sell in such territory.
19. Chiron and Ortho shall have the right in their discretion to
notify this Agreement to the European Commission. Murex
shall promptly provide any reasonably necessary information
and perform any reasonably necessary acts upon request to
permit such notification.
20. If one or more provisions contained in this Agreement shall
be invalid, illegal or unenforceable in any respect under
any applicable law or regulation the validity, legality and
enforceability of the remaining provisions shall not be
affected or impaired in any way. The Parties to this
Agreement shall replace the aforementioned invalid, illegal
or unenforceable provisions by valid, legal and enforceable
provisions as close in terms as possible to the replaced
provisions so as to take effect from the date hereof. In
the event the Parties cannot agree on the terms of such
replacement provisions, such replacement provisions will be
determined by arbitration as provided herein.
21. Schedule 4 sets out the form of agreed Press Release as an
exception to the general confidentiality provisions.
22. Each party warrants that it has any and all necessary power
to enter into this Agreement, both for it and its
Affiliates.
23. Remedies and Waivers
No delay or omission on the part of the Parties in
exercising any right,
power, or remedy (whether in whole or in part) under this
Agreement shall:
(i) impair such right, power or remedy; or
(ii) operate as a waiver thereof.
24. Further Assurance
Each of the Parties shall, from time to time on being
required to do so by another, now or at any time in the
future, do or procure the doing of all such acts and/or
execute or procure the execution of all such documents in a
form satisfactory to the others as may reasonably be
considered necessary for giving full effect to this
Agreement.
25. Entire Agreement
This Agreement contains the entire agreement of the Parties
regarding the subject matter hereof and supersedes all prior
agreements, understandings and negotiations regarding the
same. The Parties acknowledge that there have been various
statements, both oral and written, pertaining to the making
of this Agreement and the Parties' performance hereunder.
The Parties agree that none of them has relied on any such
statements, but instead have relied upon the representations
and warranties explicitly set forth herein. This Agreement
may not be changed, modified, amended or supplemented except
by a written instrument signed by the Parties hereto.
26. This Agreement shall be governed by the law of New York,
USA, without regard to its conflict of law provisions.
Infringement shall be governed by the law of the country in
which infringement is at issue.
27. Change in Control
In the event that IMTC experiences one or more of the
following events (a "Change in Control"):
(i) Any person or group (other than Chiron or Ortho or
a group including one of them or a Person owning more
than five percent of the combined voting power of Murex
as of the date hereof, as described in Schedule 3
hereto) becomes, or makes an offer to become, after the
date hereof, whether by tender or exchange offer or
otherwise the beneficial owner, directly or indirectly,
of securities of IMTC representing 50% or more of the
combined voting power of IMTC's then outstanding voting
securities; or
(ii) The Board of Directors of IMTC approve a plan of
merger, consolidation, or liquidation (which would not
result in IMTC being the continuing entity) or the sale
or disposition of all or substantially all of IMTC's
assets,
then, IMTC shall promptly notify Chiron and Ortho in
writing, describing such event in reasonable detail and
shall offer Chiron and Ortho the option, to be exercised in
writing within fifteen (15) business days to purchase at
fair value the HCV immunoassay business of IMTC, such value
to take into account, among other things, I the diminution
in value of IMTC's overall business without, or the loss of
the opportunity to sell, the HCV immunoassay business.
28. Assignment
No party shall be entitled to assign its rights as a
licensee under this Agreement without the prior written
consent of the other parties hereto; provided, however, that
any party may assign its rights as a licensee, subject to
clause 27, (i) a Person into which such party shall merge or
consolidate or (ii) a Person who acquires all or
substantially all of such party's assets.
AGREED BY
CHIRON CORPORATION
By: /s/ Edward E. Penhote
-------------------------------
Title:
JOHNSON & JOHNSON
By: /s/ S Harris
-------------------------------
Title: Asst. Secy./Gen. Counsel
ORTHO DIAGNOSTIC SYSTEMS INC.
By: /s/ J. W.
-------------------------------
Title: President
INTERNATIONAL MUREX TECHNOLOGIES CORPORATION
By: /s/ F. Michael P. Warren /s/ C. Robert Cusick
------------------------------- CFO
Title: Chairman