Sample Business Contracts

Technology Transfer Agreement - Molecular Analytical Systems Inc. and Lumigen Corp.

TECHNOLOGY TRANSFER AGREEMENT

between

MOLECULAR ANALYTICAL SYSTEMS, INC.

and

LUMIGEN CORPORATION

This Technology Transfer Agreement (this “Agreement”), dated September, 1, 1999 (the “Effective Date”), is made and entered into by and between Molecular Analytical Systems, Inc. (“MAS”), a Texas corporation, with an address at 101 First Street, Suite 478, Los Altos, CA 94022, and LumiGen Corporation, Inc. (“LumiGen”), a California corporation, with an address c/o Wagner, Kirkman, Blaine & Youmans, 1792 Tribute Road, Suite 450, Sacramento, CA 95815.

WITNESSETH:

WHEREAS, pursuant to the Baylor Technology Transfer Agreement, MAS is the exclusive licensee of certain rights and interest in and to the Baylor Technology (as such terms are defined below); and

WHEREAS, MAS has retained all of its rights in the Baylor Technology, Improvements, and MAS Technology (as these terms are defined individually and defined collectively below as “Subject Technology”) for use or license in certain markets; and

WHEREAS, MAS has retained all of its rights in the Subject Technology for use or license in connection with products other than instruments, devices, or consumables, without limitation as to market; and

WHEREAS, MAS has retained rights in the Subject Technology to make or use devices, instruments, and consumables for its own and its Affiliates use in the drug discovery market; and

WHEREAS, MAS desires to grant to LumiGen and LumiGen desires to obtain an exclusive, worldwide sublicense (with the right to further sublicense) to use the Subject Technology, with a right to develop, make and have made, use, sell, offer for sale, import, market and otherwise commercially exploit all products, including information and services, in all markets other than those defined as Laboratories (as that term is defined below) doing bioanalytical or biological measurements or assays; and

	“Highly Confidential-Attorneys’
	Eyes Only” Pursuant to
	Protective Order

WHEREAS, MAS desires to grant to LumiGen and LumiGen desires to obtain an exclusive, worldwide sublicense (with the right to further sublicense) to use the Subject Technology, with a right to develop, make and have made, use, sell, offer for sale, import, market and otherwise commercially exploit all products, other than instruments, devices, and non-drug consumables, including information and services, in markets defined as Laboratories (as that term is defined below) doing bioanalytical or biological measurements or assays; and

WHEREAS, MAS desires to grant to LumiGen and LumiGen desires to obtain a non-exclusive worldwide sublicense (with a right to further sublicense) to make and use the Subject Technology to design and discover drugs, to develop drugs, and to sell drugs derived from use of the Subject Technology.

NOW, therefore, in consideration of the premises and the mutual covenants and agreements hereinafter set forth and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the parties hereto agree as follows:

1. DEFINITIONS

As used herein, the terms “Agreement,” “MAS,” “Effective Date,” and “LumiGen” shall have the meanings indicated above. As used herein, the following terms shall have the following meanings:

1.1 “Affiliate” shall mean any person, corporation, association or other entity which directly or indirectly controls, is controlled by or is under common control with the party in question. As used in this definition of “Affiliate,” the term “control” shall mean direct or indirect beneficial ownership of more than 25% of the voting or income interest in such corporation or other business entity.

1.2 “Baylor” shall mean the Baylor College of Medicine, a Texas non-profit corporation having its principal place of business at One Baylor Plaza, Houston, Texas 77030.

1.3 “Baylor Technology” shall mean all Technology (as such term is defined in the Baylor Technology Transfer Agreement) which is licensed from Baylor to MAS pursuant to the Baylor Technology Transfer Agreement.

1.4 “Baylor Technology Transfer Agreement” shall mean that Technology Transfer Agreement, dated September 14, 1993, between MAS and Baylor. A copy of the Baylor Technology Transfer Agreement is attached hereto as Exhibit A.

1.5 “Ciphergen” shall mean Ciphergen Biosystems, Inc., a California corporation having its principal place of business at 490 San Antonio Road, Palo Alto, CA 94306.

1.6 “CTI” shall mean Ciphergen Technologies, Inc. (formerly ISP Acquisition Corporation), a California corporation, and wholly-owned subsidiary of Ciphergen Biosystems, Inc., having its principal place of business at 490 San Antonio Road, Palo Alto, CA 94306.

1.7 “CTI Technology Transfer Agreement” shall mean the Technology Transfer Agreement between MAS and CTI dated April 7, 1997. A copy of the CTI Technology Transfer Agreement is attached hereto as Exhibit B.

1.8 “Date of First Commercial Sale” shall mean the date on which LumiGen or any Sublicensee first transfers title, rights to use or other rights in or to a Royalty-Bearing Product to a Third Party (other than an Affiliate of such Sublicensee) for monetary consideration or otherwise results in Net Sales received by MAS.

1.9 “Entities” shall mean any individual person or persons, collection of persons, organization, business, location, environment, laboratory, market, network or thing.

1.10 “Field of Use” shall mean use of the Subject Technology for doing bioanalytical or biological measurements or assays, for the detection and characterization of various biomolecules, biomolecular assemblies and cells, and the detection and characterization of other analytes, including non-biological analytes, that are derived from biological materials, including fluids, tissues, cells, extracts and other preparations.

1.11 “IllumeSys” shall mean IllumeSys Pacific, Inc., a California corporation and a wholly-owned subsidiary of Ciphergen Biosystems, Inc., having its principal place of business at 490 San Antonio Road, Palo Alto, CA 94306.

1.12 “IllumeSys Technology Transfer Agreement” shall mean the Technology Transfer Agreement between MAS and IllumeSys dated April 7, 1997. A copy of the IllumeSys Technology Transfer Agreement is attached hereto as Exhibit C.

1.13 “Improvements” shall have the meaning set forth in the Baylor Technology Transfer Agreement.

1.14 “Laboratories” shall mean all laboratories and laboratory environments.

1.15 “Products” shall mean (i) all products, including, but not limited to, instruments, devices, non-drug consumables, consumables, services, information, and software; (ii) service products (including biomarker discovery, drug design and discovery, and drug development services); (iii) information products (including, any molecular and protein composition, protein recognition patterns; diagnostic protein patterns or “fingerprints,” databases), database products, data analysis software, and information system products (e.g., software); and (iv) drugs and other therapeutic agents. For the avoidance of doubt, Products shall include all Products described in (i) through (iv) above for Entities, including but not limited to, products for individual persons, consumers, and patients, products for physician’s offices and point-of-care environments, products for environmental monitoring, and products for manufacturing environments.

1.16 “MAS Technology” shall mean all inventions, know-how, information, processes, formulae, patterns, compilations, programs, devices, methods, techniques, compounds, products, data, preparations and usage information or materials and sources thereof, whether or not patentable, which have been developed or otherwise acquired by MAS (i) prior to the Effective Date or (ii) after the Effective Date and prior to the ten-year anniversary of the Effective Date.

1.17 “Net Sales” shall mean all monies and/or equivalent goods and services received directly by LumiGen or an Affiliate of LumiGen from the manufacture, use, sale, offer for sale, import, or any other commercial exploitation of Royalty-Bearing Products by LumiGen or an Affiliate of LumiGen, less any separately identified discounts and allowances to customers (actually granted), refunds for returned or damaged goods, excise and sales taxes, customs duties and costs of transportation (including without limitation packing and insurance) actually paid.

1.18 “Patent Rights” shall have the meaning set forth in the Baylor Technology Transfer Agreement.

1.19 “Royalty-Bearing Products” shall mean any Products which use all or any part of the Subject Technology.

1.20 “Subject Technology” shall mean the Baylor Technology, Improvements, and the MAS technology.

1.21 “Sublicensee” shall mean any Third Party to whom LumiGen grants a further sublicense under the Subject Technology, as permitted by Section 2.1 of this Agreement.

1.22 “Third Party” shall mean any party other than MAS, LumiGen or any Affiliate of MAS or LumiGen.

2. GRANT OF LICENSE AND LICENSE FEE

2.1 Grant of Licenses to LumiGen.

(a) Subject to the terms and conditions hereof and subject to the terms of subsections (a), (b) and (c) of Section 2.1 of the Baylor Technology Transfer Agreement, effective as of the Effective Date, MAS hereby grants to LumiGen an exclusive, royalty-bearing, worldwide license and sublicense (with the right to further sublicense) to use the Subject Technology solely within the Field of Use to do any or all of the following:

(i) use the Subject Technology to develop, make and have made, use, sell, offer for sale, import, market and otherwise commercially exploit all Products in all markets other than those defined as Laboratories; and

(ii) use the Subject Technology to develop, make and have made, use, sell, offer for sale, import, market and otherwise commercially exploit all Products, other than instruments, devices, and non-drug consumables, in markets defined as Laboratories.

(b) Subject to the terms and conditions hereof and subject to the terms of subsections (a), (b) and (c) of Section 2.1 of the Baylor Technology Transfer Agreement, effective as of the Effective Date, MAS hereby grants to LumiGen a non-exclusive, royalty-bearing, worldwide license and sublicense (with the right to further sublicense) to use the Subject Technology solely within the Field of Use to do any or all of the following:

(i) use the Subject Technology to design and discover drugs, to develop drugs, and to sell drugs otherwise derived from use of the Subject Technology.

(c) Except as expressly set forth above, MAS reserves all of this rights in the Subject Technology and shall have the absolute right and discretion to use and exploit the Subject Technology in any manner that does not conflict with the express rights granted to LumiGen.

2.2 License Fee. In consideration in part for the grant by MAS of the rights set forth in Section 2.1, LumiGen agrees to pay MAS a license fee of five hundred thousand dollars ($500,000) over a five year period according to the following schedule: The first two hundred fifty thousand dollars ($250,000) is due within 120 days of the Effective Date; thereafter, LumiGen will make annual license fee payments under this Section 2.2 of fifty thousand dollars ($50,000) payable on each of (i) the first anniversary of the Effective Date, (ii) the second anniversary of the Effective Date, (iii) the third anniversary of the Effective Date, (iv) the fourth anniversary of the Effective Date, and (v) the fifth anniversary of the Effective Date. LumiGen

may prepay any license fee installment prior to its due date. If LumiGen fails to pay any license fee installment when due, interest shall accrue on such outstanding amount at the rate of two percent (2%) over the prime rate in effect at Bank of America as of such due date. After payment in full of all license fees, this Section 2.2 shall have no further force and effect and no further fees shall be owed to MAS by LumiGen under this Agreement.

2.3 Royalties. In consideration in part for the grant by MAS of rights set forth in Section 2.1, LumiGen agrees to pay MAS an amount equal to two percent (2%) of Net Sales received by LumiGen or a LumiGen Affiliate from the Date of First Commercial Sale until the tenth (10^th) anniversary of the Date of First Commercial Sale. Notwithstanding the foregoing, the obligation of LumiGen to make payments under this Section 2.3 shall not exceed $1,000,000 during each twelve-month period commencing on the Date of First Commercial Sale and on each anniversary date of the Date of First Commercial Sale thereafter up to and including the tenth (10^th) anniversary date of the Date of First Commercial Sale. LumiGen may prepay any royalty prior to its due date. If LumiGen fails to pay any royalty when due, interest shall accrue on such outstanding amount at the rate of two percent (2%) over the prime rate in effect at Bank of America as of such due date. After payment in full of all royalties due as on the tenth (10^th) anniversary of the Date of First Commercial Sale, this Section 2.3 shall have no further force and effect and no further royalty shall be owed to MAS by LumiGen under this Agreement.

2.4 Equity. In consideration in part for the grant by MAS of rights set forth in Section 2.1, LumiGen agrees to deliver to MAS, without further consideration to be paid, 111,111 shares (the “Shares”) of its duly authorized, validly issued, fully paid and non-assessable common stock, within 90 days from the date of this Agreement. The Shares when issued and delivered to MAS will represents 10% of the total number of shares of common stock of LumiGen then issued and outstanding. MAS will have no further rights of any kind to acquire any common stock or other securities of LumiGen, including having any pre-emptive rights to maintain its 10% equity ownership share of MAS.

3. warranties and representation

3.1 MAS. Except as set forth on Schedule 3.1 attached hereto, MAS represents and warrants that:

(a) MAS is validly existing and in good standing under the laws of the State of Texas.

(b) the execution, delivery and authority to execute and deliver this Agreement has been duly authorized by all necessary action on the part of MAS.

(c) MAS has the power and authority to execute and deliver this Agreement and to perform its obligations under this Agreement.

(d) as of the date of this Agreement, it is not a party to any agreement or arrangement with any third party or under any obligation or restriction, including pursuant to its Articles of Incorporation or Bylaws, which in any way limits or conflicts with its ability to fulfill any of its obligations under this Agreement.

(e) it is the owner of the entire right, title, and interest in and to the MAS Technology, that it has the sole right to grant licenses thereunder, and that it has not granted, and will not grant, licenses thereunder to any other entity that would restrict the rights granted to LumiGen hereunder. MAS also further represents that there are three (3) written agreements involving the MAS Technology and that it has delivered to LumiGen and its counsel all three of the written agreements relating to the MAS Technology (see Exhibits A, B, and C).

(f) it is the exclusive licensee of the entire right, title, and interest in and to the Baylor Technology and the Improvements, that it has the sole right to grant sublicenses thereunder, and that it has not granted, and will not grant, sublicenses thereunder to any other entity that would restrict the rights granted to LumiGen hereunder. MAS also further represents that there are three (3) written agreements involving the Baylor Technology and Improvements and that it has delivered to LumiGen and its counsel all three of the written agreements relating to the Baylor Technology and Improvements (see Exhibits A, B, and C).

(g) to the best of its knowledge, there is no action, suit, proceeding, or investigation pending or currently threatened against MAS that questions the validity of this Agreement, the rights of MAS to the Subject Technology or the right of MAS to enter into this Agreements, or to consummate the transactions contemplated hereby.

(h) on the date hereof it is not aware of any infringement of or by the Patent Rights or any claims by any other party in and to the Subject Technology.

(i) it is not currently in breach of the Baylor Technology Transfer Agreement, knows of no grounds for early termination of the Baylor Technology Transfer Agreement and will not breach the Baylor Technology Transfer Agreement during the term of this Agreement. Within five (5) business days of receipt of any notice from Baylor or delivery of any notice to Baylor under the Baylor Technology Transfer Agreement, it will provide a copy of such received or delivered notice to LumiGen.

(j) except as may be expressly set forth herein, MAS hereby disclaims and negates any and all warranties, whether express or implied, with respect to the Subject Technology or any rights hereunder transferred, including but not limited to, any IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FR ANY PARTICULAR PURPOSE. Without limiting the generality of the foregoing, MAS makes no representations or warranties as to the patentability, noninfringement, use or other application of the Subject Technology, or as to the likelihood of the success of any research, development, testing, marketing or other utilization of the Subject Technology.

3.2 LUMIGEN. LumiGen represents and warrants that:

(a) it is a corporation duly organized, validly existing and in good standing under the laws of the State of California.

(b) the execution, delivery and performance of this Agreement have been duly authorized by all necessary corporate action on the part of LumiGen.

(c) LumiGen has the corporate power and authority to execute and deliver this Agreement and to perform its obligations under this Agreement.

3.3 No Assurance of Patents. MAS represents and warrants to LumiGen that, and LumiGen represents and warrants to MAS that it understands that, there is no assurance that any patents included in the Patent Rights or any patent applications subsequently filed on the Baylor Technology will actually be issued. In the event that any claim within the Patent Rights is disallowed in a final rejection by the United States Patent Office, then the provisions of Section 2.3 will be effectively deleted from this Agreement. However, in respect to Section 2.3, there shall be no reimbursement of, or any other retroactive adjustment in, the royalties previously paid to MAS.

4. financial statements.

At the close of each calendar quarter from the Date of First Commercial Sale through the tenth anniversary of the Date of First Commercial Sale, the Net Sales shall be computed by LumiGen, and the amounts due thereon pursuant to Section 2.3 shall be paid to MAS within sixty (60) days after the close of said quarter. With each royalty payment, LumiGen shall furnish to MAS a written accounting report for the closed quarter stating the Net Sales, the amounts due to MAS and the amounts already paid to MAS. LumiGen agrees, for three (3) years following a given calendar quarter, to maintain written records with respect to its operations pursuant to this Agreement for such calendar quarter, in sufficient detail to enable MAS or its designated certified public accountants to compute the amount of royalties due to MAS, and further agrees to permit said records to be examined from time to time, on reasonable notice during normal business hours to the extent necessary to verify the amount of royalties due MAS hereunder. MAS shall pay the costs of said examination unless it is determined that LumiGen underpaid royalties by more than five percent (5%) for the period being audited by MAS, in which case LumiGen shall reimburse MAS for the audit expenses.

5. protection of property rights

5.1 Confidentiality. Except as provided below, each party receiving information of the other party hereunder agrees to keep confidential all information of the disclosing party which is in the process or comes into the possession of the receiving party during the term of this Agreement, together with any and all documentation and other physical manifestations or embodiments thereof. In carrying out its obligations hereunder each receiving party shall use at least the same degree of care, effort and procedures in protecting such confidential information as such party utilizes in connection with protecting its own information of similar character.

5.2 Exemptions. The foregoing provisions of Section 5.1 shall not apply to information which:

(a) was in the public domain at the time of disclosure;

(b) later became part of the public domain through no act or omission of the receiving party, its employees, agents, successors or assigns;

(d) was already known by the receiving party at the time of disclosure, other than as a result of previous disclosure by the disclosing party;

(e) was independently and lawfully developed by the receiving party; or

(f) is required by court or governmental order, law or regulation to be disclosed, provided, however, that the receiving party required to disclose such information shall provide the other party with reasonable advance notice of any such proposed disclosure to give such party a reasonable period of time in which to object to such disclosure.

5.3 Disclosures. Notwithstanding the foregoing, the parties understand and agree that LumiGen may, to the extent it deems necessary or appropriate, disclose the Subject Technology and any improvement to potential Sublicensees or investors, but LumiGen agrees to use its reasonable efforts to make such disclosures subject to a confidentiality agreement containing terms substantially similar to those contained in Sections 5.1 and 5.2.

5.4 Rights to Subsequent Technologies. MAS shall have no rights in any subsequent discoveries, inventions, and/or technologies resulting from the development of the Subject Technology by LumiGen, any Affiliate of LumiGen or any Sublicensee.

5.5 Patent Applications. It is understood by the parties that; pursuant to the Baylor Technology Transfer Agreement, MAS has the responsibility for filing, prosecution and maintenance of patent applications covering the Baylor Technology.

(a) MAS agrees to cooperate with LumiGen to whatever extent is reasonably necessary to procure patent protection of any rights regarding the Subject Technology and agrees to execute any and all documents to give LumiGen the full benefit of the sublicenses and licenses granted herein.

(b) MAS represents and warrants that, as of the Effective Date, it has not received any notices from Baylor pursuant to Section 5.5(c) or Section 5.5(d) of the Baylor Technology Transfer Agreement. In the event MAS receives any notices from Baylor pursuant to Section 5.5(c) or 5.5(d) of the Baylor Technology Transfer Agreement after the Effective Date, MAS will provide a copy of such notice to LumiGen. MAS will then take all actions requested by LumiGen within five (5) business days of receipt of such notice by MAS to allow LumiGen to

retain its rights granted under this Agreement, including, but not limited to, promptly notifying Baylor in the event LumiGen elects to proceed with actions described under Section 5.5(a) of this Agreement.

6. INFRINGEMENT BY third parties

6.1 Enforcement of Baylor Intellectual Property against Third Parties. It is understood by the parties that MAS has certain rights under Article 6 of the Baylor Technology Transfer Agreement with respect to suspected infringement, misuse, misappropriation, theft or breach of confidence of other proprietary rights in the Patent Rights, the Baylor Technology and the Improvements (the “Baylor Technology Infringement”). It is further understood by the parties that, as a sublicensee under such intellectual property in the Field of Use as expressly provided in this Agreement, LumiGen has an interest in any actions against third parties which may be taken or contemplated as a result of any Baylor Technology Infringement. Accordingly, the parties hereby agree that with respect to any Baylor Technology Infringement:

(a) MAS promptly will provide LumiGen with copies of any notices received or sent by MAS pursuant to Article 6 of the Baylor Technology Transfer Agreement.

(b) MAS will, if requested by LumiGen, provide notice to Baylor under any of the circumstances permitting notice pursuant to Article 6 of the Baylor Technology Transfer Agreement;

(c) with respect to any legal action permitted under Article 6 of the Baylor Technology Transfer Agreement, MAS will use legal counsel reasonably acceptable to LumiGen;

(d) with respect to any legal action permitted under Article 6 of the Baylor Technology Transfer Agreement, all decisions of MAS (whether substantive or procedural) concerning whether to bring an action, how to proceed with such action and whether and how to settle such action shall be made with reasonable consideration to input and advice from LumiGen; and

(e) with respect to any legal action permitted under Article 6 of the Baylor Technology Transfer Agreement, any recoveries which may be obtained by MAS as a result of such action shall be allocated between MAS and LumiGen on the basis of their relative expenses and losses as a result of such infringement.

6.2 Enforcement of MAS Technology against Third Parties. LumiGen shall have the right, but not the obligation, to enforce at its expense any patent contained in the Subject Technology against infringement by Third Parties and shall be entitled to retain recovery from such enforcement. In the event that LumiGen does not file suit against a substantial infringer of such patents within six (6) months of knowledge thereof, then MAS shall have the right, but not the obligation, to enforce at its expense any patent contained in the MAS Technology against infringement by Third Parties and shall be entitled to retain recovery from such enforcement.

6.3 Cooperation. In any suit or dispute involving an infringer, the parties shall cooperate fully, and upon the request and at the expense of the party bringing suit, the other party shall make available to the party bringing suit at reasonable times and under appropriate conditions all relevant personnel, records, papers, information, samples, specimens, and the like which are in its possession. In the event a party brings suit under Section 6 the other party agrees to be joined as a party plaintiff with respect to such suit, provided that the party bringing suit reimburses each other party for all out-of-pocket costs incurred by such other party in its role as party plaintiff.

7. infringement of third party intellectual property

In the event of any infringement or likely infringement by any of the Subject Technology of any Third Party’s intellectual property, the parties shall cooperate in good faith and on a mutual and reasonable basis, with each party responsible for its respective expenses, to negotiate and settle any dispute with any such Third Party concerning the Subject Technology, and otherwise resolve any such infringement and secure MAS’s and LumiGen’s continued rights to the Subject Technology.

8. independent contractor

It is agreed that the relationship of LumiGen to MAS in the performance of this Agreement is as an independent licensee and that neither LumiGen nor MAS is an agent of the other party. Each party agrees to refrain from representing itself as being the agent of the other party in performing or acting pursuant to this Agreement. Neither party shall have the power or authority to bind or otherwise commit the other party and shall not attempt to do so.

9. INDEMNIFICATION; damages

9.1 Indemnification. Each of LumiGen and MAS agrees to indemnify and hold harmless the other party and such other party’s Affiliates and their respective employees, agents, officers, directors and permitted assigns (such party’s “Indemnified Group”) from and against any claims by a third party resulting in the award or payment of any judgments, expenses (including reasonable attorney’s fees), damages and awards (collectively a “Claim”) arising out of or resulting from (i) the indemnifying party’s negligence or misconduct, (ii) a breach of any of the indemnifying party’s representations, warranties or obligations hereunder, or (iii) the indemnifying party’s research, development, manufacture, use, promotion, marketing or sale of any Royalty-Bearing Product, except to the extent that such Claim arises out of or results from the negligence or misconduct of the party seeking to be indemnified and held harmless or the negligence or misconduct of a member of such party’s Indemnified Group. A condition of this obligation is that, whenever a member of the Indemnified Group has information from which it may reasonably

conclude an incident has occurred which could give rise to a Claim, such indemnified party shall immediately give notice to the indemnifying party of all pertinent data surrounding such incident and, in the event a Claim is made, all members of the Indemnified Group shall assist the indemnifying party and cooperate in the gathering of information with respect to the time, place and circumstances and in obtaining the names and addresses of any injured parties and available witnesses. No member of the Indemnified Group shall voluntarily make any payment or incur any expense in connection with any such Claim or suit without the prior written consent of the indemnifying party. The obligations set forth in this Section 9.1 shall survive the expiration or termination of this Agreement.

9.2 Insurance. Commencing with the Date of First Commercial Sale, LumiGen and/or each of its Affiliates and Sublicensees, as applicable, shall, for so long as LumiGen or its Affiliates or Sublicensees manufactures, sells, tests, operates, leases or uses the Royalty-Bearing Products, maintain in full force and effect policies of (i) general liability insurance with limits of not less than one minion dollars ($1,000,000) per occurrence and three million dollars ($3,000,000) in the aggregate and (ii) product liability insurance with limits of not less than one million dollars ($1,000,000) per occurrence and three million dollars ($3,000,000) in the aggregate. Such coverage(s) shall name MAS and its Affiliates as additional insureds. LumiGen shall promptly provide verification of such insurance coverages to MAS.

10. term and termination

10.1 Expiration; Effect of Expiration. This Agreement shall expire, on a country-by-country basis, on the date of expiration of the last to expire patent included within the Subject Technology in that country or, if no patents in the Subject Technology issue in such country, twenty (20) years from the Effective Date. In the event this Agreement expires and has not been terminated early pursuant to Section 10.2, the license grants set forth in Section 2.1 will survive such expiration, except that all such licenses will become non-exclusive upon the expiration date. It is understood by the parties that the Baylor Technology Transfer Agreement may expire on a date which is earlier than the expiration date provided for in the first sentence of this Section 10.1 and that the sublicense granted pursuant to Section 2.1 may therefore expire on such earlier date.

10.2 Early Termination for Bankruptcy or Breach. This Agreement will earlier terminate:

(a) automatically if LumiGen shall become bankrupt or insolvent and/or if the business of LumiGen shall be placed in the hand of a receiver or trustee, whether by voluntary act of LumiGen or otherwise; or

(b) upon ninety (90) days written notice from one party if the other party shall commit a material breach of any of such other party’s obligations under this Agreement; provided, however, such breaching party may avoid such termination if, before the

end of such ninety (90) day period, it cures such material breach and provides the non-breaching party with a notice stating that such cure has occurred and stating the manner of such cure.

10.3 Effect of Termination. Upon termination of all or part of this Agreement for any cause, nothing herein shall be construed to release either party of any obligation that matured prior to the effective date of such termination. LumiGen may, after the effective date of such termination, sell all Royalty-Bearing Products and parts thereof that it may have on hand at the date of termination.

10.4 Survival. The following provisions will survive expiration or termination of this Agreement: Article 4 and Sections 5.1, 5.2, 9.1 and 10.1.

11. Assignment

11.1 Assignment by MAS. MAS may not assign its rights or obligations under this Agreement without the prior written consent of LumiGen.

11.2 Assignment by LumiGen. LumiGen may not assign its rights or obligations under this Agreement without the prior written consent of MAS.

12. MlSCELLANEOUS

12.1 Further Assurances. Without further consideration, MAS hereby agrees to execute and deliver, and to cause its respective officers, trustees, directors, employees, and agents to execute and deliver, such other instruments, and to take such other action as LumiGen hereunder may reasonably request to more effectively license and sublicense to LumiGen the rights granted hereunder, and to assist LumiGen in the recordation of same as necessary, all in such form and substance as LumiGen may reasonably request and at its expense.

12.2 Entire Agreement. This Agreement constitutes the entire and only agreement between the parties with respect to the subject matter of this Agreement, including the Subject Technology, and all other prior negotiations, representations, agreements and understandings are superseded hereby. No agreements altering or supplementing the terms hereof may be made except by means of a written document signed by the duly authorized representatives of the parties.

12.3 Notice. Any notice required by this Agreement shall be in writing and shall be given by prepaid, first class, certified mail, return receipt requested, addressed in the case of LumiGen to:

LumiGen Corporation
Attention: President
C/o Wagner, Kirkman, Blaine & Youmans
1792 Tribute Road, Suite 450
Sacramento, CA 95815

with a copy to:
Flehr, Hohbach, Test, Albritton & Herbert, LLP
Attention: Rick Trecartin
4 Embarcadero Center, Suite 3400
San Francisco, CA 94111-4187

or in the case of MAS:

Molecular Analytical Systems, Inc.
Attention: T. William Hutchens
101 First Street, Suite 478
Los Altos, CA 94022

or such other address as may be given from time to time under the terms of thus notice provision.

12.4 Compliance with Laws. Each party shall comply with all applicable federal, state and local laws and regulations in connection with its activities pursuant to this Agreement.

12.5 Governing Law. This Agreement shall be construed and interpreted in accordance with the laws of the State of California other than those provisions governing conflicts of law. Any claim or controversy arising out of or related to this Agreement or any breach hereof shall be submitted to a court of applicable jurisdiction in the state of California, and each party hereby consents to the jurisdiction and venue of such court.

12.6 No Waiver. Failure of a party to enforce a right under this Agreement shall not act as a waiver of that right or the ability to later assert that right relative to the particular situation involved.

12.7 Headings. Headings included herein are for convenience only and shall not be used to construe this Agreement.

12.8 Severability. If any provision of this Agreement shall be found by a court to be void, invalid or unenforceable, the same shall be reformed to comply with applicable law or stricken if not so conformable, so as not to affect the validity or enforceability of this Agreement.

12.9 Counterparts. This Agreement may be executed in any number of counterparts, each of which shall be an original, but all of which together shall constitute one instrument.

[The remainder of this page has intentionally been left blank.]

In Witness Whereof, the parties hereto have executed this Agreement in multiple originals by their duly authorized officers and representatives.

LumiGen Corporation

Molecular Analytical Systems, Inc.

By:

/s/ T. William Hutchens

By:

/s/ T. William Hutchens

Printed Name

T. William Hutchens

Printed Name

T. William Hutchens

Title

Chairman and CEO

Title

President

By:

/s/ Tai Tung Yip

Printed Name

Tai Tung Yip

Title

Vice President