Confidential - 30 March 2017
DEVELOPER LICENSE AGREEMENT
This DEVELOPER LICENSE AGREEMENT (“Agreement”) is made this
________________,
2017
(the
“Effective
Date”),
by
and
between
__________________________ (hereinafter referred to as “Developer”), a registered
_______________ organized and existing under the laws of England, with offices at
_______________________________ and Oxford Nanopore Technologies Limited (hereinafter
referred to as “Oxford”), a corporation organized and existing under the laws of England and
Wales under company number 05386273 and having its registered office at Edmund Cartwright
House 4 Robert Robinson Avenue, Oxford Science Park, Oxford OX4 4GA.
WHEREAS, (a) Oxford would like to make available certain information, Oxford
Consumables, application programming interfaces, data and software in order for Developer to
(i) develop sample preparation methods and Consumables and/or (ii) develop software tools and
data analysis applications to be used with Oxford’s Devices for improving and/or creating novel
data processing pipelines, including, without limitation, base calling, alignment, SNP calling,
reporting, assembly, variant analysis, and/or visualization, and (b) Developer would like to
develop such sample preparation methods, Consumables, software tools and data analysis
applications and would not like to use such application programming interfaces, data and
software for personal, family, domestic, household or other similar use that would trigger
applicability of the consumer protection laws of the jurisdiction in which Developer is located.
NOW THEREFORE, in consideration of the conditions and mutual covenants set forth
below, the parties hereto agree as follows:
1.
Definitions
1.1.
“Authorized User” shall mean the persons listed on Schedule A.
1.2. “Base Caller Software” shall mean Oxford’s Base Caller Software designed to
convert relevant portions of Instrument Data into Biological Data including, without limitation:
(a) the object code version of the software; (b) all functional specifications associated with the
Base Caller Software made available to Oxford customers on Oxford’s website, as amended
from time to time (the “Base Caller Documentation”) and (c) all updates, replacements,
revisions, enhancements, additions, conversions, modifications, copies, derivative works,
inventions, discoveries, patentable or copyrightable matter, concepts, expertise, techniques,
patents, copyrights, trade secrets and other related legal rights of the foregoing items associated
with the software.
1.3. “Biological Data” shall mean any data that provides a characterization of the
biological, genetic, biochemical and/or physiological properties, compositions, or activities of
the materials to be analyzed using the Goods. Biological Data shall include processed nucleotide
sequence data, but shall exclude Instrument Data.
1.4. “Commercial” shall mean primarily intended for or directed towards commercial
advantages or monetary compensation.
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1.5. “Consumables” shall mean reagents, enzymes and adaptors that enable sample
preparation methods, molecular tethers that enable improved analyte to nanopore binding
through interactions with the membranes, enzymes that allow for controlled transport of analytes
through nanopores, buffered solutions for improved ionic conductance and solutions for washing
the Flow Cells between samples developed by the Developer for use with a Device under the
terms of this Agreement that do not infringe any Intellectual Property Rights of Oxford or its
licensors.
1.6. “Data Processing Software” shall mean the Software and applications in the data
processing pipelines and protocols that Oxford may, in its sole discretion, make available.
1.7.
“Developer” means the party identified in the caption of this Agreement.
1.8. “Developer Applications and Extensions” shall mean any or all of the following
developed by Developer that do not infringe any Intellectual Property Rights of Oxford or its
licensors: (a) new application protocols, (b) sample preparation methods, (c) Consumables, (d)
data analysis tools, such as software written to APIs published by Oxford, (e) modifications or
derivative works of the MinKNOW Software solely for purposes of new applications and/or
protocols, (f) modifications or derivative works of the Epi2me Agent Software solely for the
purposes of developing novel means of processing, storing or transmitting Instrument Data,
and/or (g) modifications or derivative works of the Data Processing Software solely for the
purposes of developing or improving applications for the data processing pipeline, including,
base calling, application alignment, SNP calling, reporting, assembly, variant analysis, and/or
visualization, in each case with respect to data generated using any Device. Developer
Applications and Extensions shall include any subset or component of the foregoing.
1.9. “Developer Kit” shall mean, together, the source code of the Base Caller
Software; the application programming interfaces which control or extract data from the
MinKNOW Software and the Epi2me Agent Software (the “APIs”); information provided by
Oxford regarding compositions, qualities, uses and formulas of Oxford Consumables; samples of
Oxford Consumables provided by Oxford; and such Instrument Data and/or Biological Data as
Oxford elects to make available as part of the Developer Kit. Data components of the Developer
Kit may be provided to Developer on physical storage media or via electronic download from a
website designated by Oxford in its sole discretion.
1.10. “Devices” shall mean those devices listed on Schedule A attached hereto.
1.11. “Effective Date” shall have the meaning given in the preamble.
1.12. “Feedback” shall have the meaning given in Section 4 of this Agreement.
1.13. “Flow Cell” shall mean the flow cell with pre-loaded nanopores, membranes that
hold the nanopores and electrochemistry on a chip surface, designed for the applicable Device.
1.14. “Force Majeure” shall mean an event beyond a Party's reasonable control, and
which could not have been foreseen or which if it could have been foreseen was unavoidable,
such as (without limitation) industrial disputes, strikes, failure of energy sources or transport
networks, acts of God, war, terrorism, riot, civil commotion, failure of technical facilities,
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collapse of building structure, malicious damage, breakdown of machinery or default of suppliers
or subcontractors.
1.15. “Goods” means any or all of Oxford Consumables, Devices or Flow Cells.
1.16. “Instrument Data” means any data generated by or through use of a Device,
including, without limitation, instrument run reports, run parameters, run operating conditions,
and any data generated by or available through use of Epi2me Agent Software or MinKNOW
Software that is not Biological Data.
1.17. “Intellectual Property Rights” shall mean patents, rights to inventions,
copyright and related rights, moral rights, trade marks, business names and domain names, rights
in get-up and trade dress, goodwill and the right to sue for passing off, rights in designs, rights in
computer software, database rights, rights to use, and protect the confidentiality of, confidential
information (including know-how and trade secrets) and all other intellectual property rights, in
each case whether registered or unregistered and including all applications and rights to apply for
and be granted, renewals or extensions of, and rights to claim priority from, such rights and all
similar or equivalent rights or forms of protection which subsist or will subsist now or in the
future in any part of the world.
1.18. “License” shall have the meaning given in Section 2.1 of this Agreement as
limited by other provisions herein.
1.19. “Metrichor Interface ” shall mean a website provided by Metrichor, Ltd. from
which the Software, other applications and data processing pipelines may be accessed, by users
of a Device for purposes of processing Instrument Data and/or Biological Data.
1.20. “Epi2me Agent Software” shall mean Metrichor’s Epi2me Agent Software
made available via download from a website designated by Oxford to manage the transfer of data
files produced by the use of the MinKNOW Software to and from the Metrichor Cloud-based
Environment, including, without limitation: (a) the object code version of the software; (b) all
functional specifications associated with the Epi2me Agent Software made available to Oxford
customers on Oxford’s website, as amended from time to time (the “Epi2me Agent
Documentation”) and (c) all updates, replacements, revisions, enhancements, additions,
conversions, modifications, copies, derivative works, inventions, discoveries, patentable or
copyrightable matter, concepts, expertise, techniques, patents, copyrights, trade secrets and other
related legal rights of the foregoing items associated with the Epi2me Agent Software.
1.21. “Metrichor Cloud-based Environment” shall mean Metrichor Ltd.’s cloudbased infrastructure for computing, data processing, reporting and data storage, accessed via the
Metrichor Interface.
1.22. “Metrichor Ltd.” shall mean Metrichor Limited, a subsidiary of Oxford,
registered in England under company number 08534345 and having its registered office at
Edmund Cartwright House 4 Robert Robinson Avenue, Oxford Science Park, Oxford, OX4
4GA.
1.23. “MinION” shall mean the outer casing into which the Flow Cell fits.
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1.24. “MinKNOW Software” shall mean Oxford’s MinKNOW Software that
Developer must download from a website designated by Oxford to manage Device operations,
including, without limitation: (a) the object code version of the software; (b) all functional
specifications associated with the MinKNOW software made available to Oxford customers on
Oxford’s website, as amended from time to time (the “MinKNOW Documentation”) and (c) all
updates, replacements, revisions, enhancements, additions, conversions, modifications, copies,
derivative works, inventions, discoveries, patentable or copyrightable matter, concepts, expertise,
techniques, patents, copyrights, trade secrets and other related legal rights of the foregoing items
associated with the MinKNOW Software.
1.25. “Non-Commercial” shall mean not intended for or directed towards commercial
advantages or monetary compensation.
1.26. “Order” shall mean Developer’s order for the Developer Kit.
1.27. “Oxford” shall have the meaning given in the preamble.
1.28. “Oxford Confidential Information” shall mean any information disclosed by
Oxford that is disclosed in a manner such that Developer should reasonably understand such
information to be confidential. “Oxford Confidential Information” shall, regardless of marking,
include but shall not be limited to, the Developer Kit (and all components thereof), Software,
Instrument Data, Oxford research, development, trade secrets, software design, data collection,
inventions, source code, APIs, software specifications, software routines, screen displays, data
entry formats, data base structures, data base formats, flow charts, information available on the
Developer portal within the Metrichor Interface or other website provided by Oxford, printouts
and prompting sequences embodied in any software; provided, however, Confidential
Information shall not include: (a) any information already in the public domain (other than as a
result of a violation of any duty of confidentiality) at the time of disclosure by Oxford and (b)
Biological Data.
1.29. “Oxford Proprietary Information” shall mean (a) the Devices, the Developer
Kit (and all components thereof), Oxford Consumables, Software and Instrument Data; and (b)
all other materials owned or licensed by Oxford, including, the design and processes used to
manufacture the Devices, the Developer Kit and the Software, and any Intellectual Property
Rights in or appurtenant to (a) and/or (b) above.
1.30. “Oxford Consumables” shall mean a Wash Kit, Sequencing Kit and any other
nucleic acid library preparation kits, as well as other reagents, chemicals and materials available
from Oxford and used to run samples in the quantity appropriate for Developer’s use, which
standard quantity is stated on Oxford’s website, and of a type and mix suited to Developer’s use,
which type and mix is requested in Developer’s Order. Oxford Consumables include, without
limitation, enzymes and adaptors that enable sample preparation methods, molecular tethers that
enable improved analyte to nanopore binding through interactions with the membranes, enzymes
that allow for controlled transport of analytes through nanopores, buffered solutions for
improved ionic conductance and solutions for washing the Flow Cells between samples.
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1.31. “Party” or “Parties” in singular or plural usage, shall mean Developer or Oxford
as required by the context.
1.32. “Person” shall mean any individual, firm, partnership, company, corporation,
association, organization, government, government agency or other legal entity.
1.33. “Software” shall mean, together, the Base Caller Software, the Epi2me Agent
Software, the MinKNOW Software, other Device software and related documentation for any of
such software.
1.34. “Sequencing Kit” shall mean Oxford’s proprietary DNA sequencing library
preparation kit.
1.35. “Wash Kit” shall mean Oxford’s proprietary kit for flushing and cleaning
nucleic acid samples from Flow Cells.
2.
Developer Kit Access Rights and Obligations
2.1. Grant of License. Contingent upon Developer’s acceptance of this Agreement,
and subject to its terms, Oxford hereby grants, under Oxford’s Intellectual Property Rights, to
Developer (solely for use by Authorized Users) a non-exclusive, non-transferable, limited,
personal, revocable license without the right to sublicense the Developer Kit solely to develop
Developer Applications and Extensions for Developer’s Non-Commercial use (the “License”).
The Developer Kit is licensed to the Developer, not sold, and Developer takes no title to the
Developer Kit. All access to and use of the Developer Kit is governed by the terms of this
Agreement. All development of software, algorithms, data processing tools and data analysis
pipelines that makes use of the Developer Kit must be done within the Developer portal within
either the Metrichor Interface or other website as directed to by Oxford. Access to and use of
such portal will be subject to separate terms and conditions.
2.2. Anti-Competition Restrictions. Developer represents and warrants that during the
term Authorized User is not, and is not affiliated with, a current or potential competitor of
Oxford; (ii) Authorized User will not use the Developer Kit ore any of the individual
components thereof on behalf of or for the benefit of any such competitor; (iii) for the
development of any other product or service (other than a Developer Application or Extension)
that competes or could compete with the products or services of Oxford (except to the extent
applicable laws specifically prohibit such restriction); The Developer Kit or any of the individual
components therein may not be used for monitoring, benchmarking or other competitive
purposes. Developer represents that Developer will not use the Developer Kit in contravention of
this provision. Without limiting the generality of the foregoing, competitor shall (A) be deemed
to include an entity or person that sells or distributes any third party tool, process or system for
genomic sequencing, analysis of nucleic acids or molecule sensing and (B) not be deemed to
include customers of competitors solely because they are customers of competitors or
government agencies by virtue of their funding of research by competitors of Oxford.
2.3. License Restrictions. Developer shall not, and Developer shall not permit a third
party to: (a) use the Developer Kit or any of the individual components thereof other than in
accordance with Oxford’s instructions and the terms of this Agreement; (b) use the Developer
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Kit for a clinical, diagnostic, Commercial or other non-research purpose but Developer may
develop Developer Applications and Extensions intended for such purposes; (c) redistribute,
encumber, sell, rent, lease, sublicense or use the Developer Kit or any of the individual
components thereof in a timesharing or service bureau arrangement or otherwise transfer rights
to the Developer Kit; (d) disclose, transmit or otherwise transfer Instrument Data to any third
party without the express written consent of Oxford; (e) remove or alter any trademark, logo,
copyright or other proprietary notices, legends, symbols or labels in or on the Developer Kit or a
component thereof; or (f) access Instrument Data not made available as part of the Developer
Kit. Unless permitted by mandatory statutory law, Developer shall not reverse engineer any
Oxford products or software, whether or not included in the Developer Kit.
3.
Developer Applications and Extensions Rights and Obligations
3.1. Development Right. Developer may and is encouraged to use Developer Kit or
any subset of components therein to develop Developer Applications and Extensions. Developer
hereby acknowledges that Oxford reserves the right to disable, modify, discontinue or upgrade
all or part of the Developer Kit at any time without notice to Developer and without any form of
compensation or consideration to Developer, regardless of the status of any Developer
Applications and Extensions at that time. Oxford has no obligation to ensure that an upgrade of
all or part of the Developer Kit will continue to be compatible with existing Developer
Applications and Extensions.
3.2. Obligations and Restrictions on Development Right. Developer’s right to use
Developer Kit to develop Developer Applications and Extensions is conditioned on Developer’s
compliance with this Agreement:
3.2.1. Developer is encouraged to share any Developer Applications and
Extensions with Oxford, and shall provide Oxford, within 30 days of Oxford’s request, a
description, and, if applicable, a copy of any Developer Applications and Extensions;
3.2.2. Developer shall reproduce all titles and trademarks, copyright, patent
marking and restricted rights notices on any materials embodying Developer Applications and
Extensions, to the extent such reproduction is not specifically prohibited by applicable law;
3.2.3. Developer shall ensure that any materials embodying any Developer
Applications and Extensions carry prominent notices stating that such Developer Application
and Extension is an extension of Oxford technology, the development date of such Developer
Application and Extension, and that it must be used only with a Device;
3.2.4. Developer shall not use nor permit others to use Developer Applications
and Extensions for a clinical, diagnostic, Commercial or other non-research purpose but
Developer may develop Developer Applications and Extensions intended for such purpose.
3.3. Restrictions on Developer Applications and Extensions Activity. Developer will
use best efforts to ensure that Developer Applications and Extensions will not (a) upload or
otherwise transmit content Developer has no legal or contractual right to transmit; (b) upload or
otherwise transmit content in violation of any patent, trademark, trade secret, copyright or other
proprietary rights of any Person; (c) upload or otherwise transmit material that contains software
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viruses or other computer code, files or programs designed to interrupt, destroy or limit the
functionality of any computer software or hardware or telecommunications equipment; or (d)
interfere with or disrupt servers or computer systems, whether Oxford’s or a third party’s.
3.4. Distribution of Developer Applications and Extensions. Developer shall not, and
shall not permit any third party to use, sell, lease, license, distribute, transmit, pledge, encumber,
or otherwise transfer or permit a lien on any rights in or to Developer Applications or Extensions
(a) until the earlier of (i) one year following disclosure of the same to Oxford or (ii) consent of
Oxford, and (b) except under terms and conditions that include the following: “The [name of
Developer Application or Extension] may only be used with devices developed by Oxford
Nanopore Technologies Ltd. or Metrichor Ltd. and may require access to real time data
generated from such devices that may only be available via the Software [include link] and may
be subject to your agreement to additional terms and conditions. The [name of Developer
Application or Extension] was not developed by Oxford Nanopore Technologies Ltd. or
Metrichor Ltd. The [name of Developer Application or Extension] is licensed solely for noncommercial research use only. Such license does not include a right to redistribute or create
derivative works (except by persons with an active Developer License Agreement [include link]
with Oxford Nanopore. The [name of Developer Application or Extension] is provided “AS IS”
and “Where Available.” Developer, Oxford Nanopore Technologies Ltd. and Metrichor Ltd.
disclaim all warranties expressed or implied. Oxford reserves all rights in its Intellectual Property
Rights not expressly granted herein and no implied licenses may be created acts or omissions.
TO THE MAXIMUM EXTENT PERMITTED BY APPLICABLE LAW, IN NO EVENT
SHALL THE AUTHORS OR COPYRIGHT HOLDERS BE LIABLE FOR ANY CLAIM,
DAMAGES OR OTHER LIABILITY, WHETHER IN AN ACTION OF CONTRACT, TORT
(INCLUDING IN NEGLIGENCE) OR OTHERWISE, ARISING FROM, OUT OF OR IN
CONNECTION WITH THE [NAME OF THE DEVELOPER APPLICATION OR
EXTENSION] OR THE USE OR OTHER DEALINGS IN THE [NAME OF THE
DEVELOPER APPLICATION OR EXTENSION]. This notice shall be included in all copies or
substantial portions of the [name of the Developer Application or Extension].”
4.
Feedback License. Developer hereby grants Oxford a worldwide, non-exclusive,
perpetual, irrevocable, royalty free, fully paid up right and license to use, copy, modify, sell,
publish, distribute, sub-license and create derivative works using suggestions, comments,
feedback, modifications to or derivative works of Oxford Proprietary Information (collectively,
“Feedback”) in any manner and for any purpose. Oxford may, in its sole discretion, and without
compensation to or attribution of Developer or any third party, use Feedback Developer provides
in any way, including in future modifications of the Developer Kit, Software and Devices.
Developer warrants that Developer’s Feedback is not subject to any license terms that would
purport to require Oxford to comply with any additional obligations with respect to any products
that incorporate any Feedback.
5.
Developer’s Obligations
5.1. Storage. Developer is responsible for storing Consumables under proper
environmental conditions as recommended by Oxford.
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5.2. No Infringement. Developer shall take no action that, in any way, would infringe,
violate Intellectual Property Rights or data of Oxford, or misappropriate Intellectual Property
Rights or Oxford Confidential Information. Developer shall not remove any proprietary,
copyright, confidential or trade secret legend from any portion of anything provided to
Developer by Oxford.
5.3. Compliance. Developer represents and warrants that Developer is authorized to
enter into this Agreement and comply with its terms. Furthermore, Developer represents and
warrants that Developer will at any and all times meet Developer’s obligations hereunder, as
well as any and all laws, regulations and policies that may apply to the use of the Developer Kit.
5.4. Third Party Rights. Developer shall not incorporate into any Developer
Applications and Extensions: (a) third-party technologies, formats, inventions, intellectual
property or other materials or processes subject to the proprietary rights of a third party to which
Developer does not have a license that includes the right to create derivative works and the right
to disclose the same to Oxford; or (b) any software subject to a license that requires as a
condition of its use, distribution or modification, the disclosure and/or licensing of such software
or modification thereof, including, without limitation, software subject to any of the following
licenses: the GNU General Public License, the GNU Lesser General Public License, the Mozilla
Public License and any other copyleft license. Furthermore, Developer represents and warrants
that Developer’s rights to develop Developer Applications and Extensions under this Agreement
or to ownership of any Developer Applications and Extensions developed under this Agreement
are not subject to the rights of any third party.
6.
Orders and Fees
6.1. Development License Fee. The required annual development licensee fee will be
as set forth on Schedule A. The initial such fee shall be payable on the Effective Date and prior
to any anniversary of the Effective Date during the term of this Agreement.
6.2. Delivery. Oxford may, in its sole discretion, provide Developer with Goods at no
charge (or solely for shipping and handling fees identified prior to shipment) in furtherance of
the purposes of this Agreement. Goods made available to Developer herein may be provided for
beta testing and, if so, will be so identified. Developer agrees to return all Goods provided
hereunder, including any used or unused Flow Cells except any Flow Cells that have been used
with or otherwise been in contact with materials of Biohazard Level 3 or higher (“Contaminated
Flow Cells”) must not be returned to Oxford; provided, that, Developer provides Oxford proof of
legal and appropriate destruction of any Contaminated Flow Cells.
6.3. Guaranteed Delivery. Oxford will entertain Orders for guaranteed delivery of
Goods per a specified schedule (e.g. a delivery every four (4) weeks or next day delivery), each
for a fee available at www.nanoporetech.com. Such guaranteed delivery may be conditioned on
return of unused previously delivered Flow Cells and/or Devices.
6.4. Taxes. If any taxes (including any value added tax (“VAT”)), charges or
government fees (including import or export duty) apply, Developer will be responsible for
paying them and Oxford will add them to the invoice where appropriate. The price of the Goods
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is also exclusive of insurance, transport and delivery costs and Oxford will charge Developer and
Developer agrees to pay the delivery fee specified in an order. This fee will be included on the
invoice.
6.5. Payment Terms. Developer agrees to pay the invoice in full and in cleared funds
within 30 days of the date of the invoice, in the manner specified on the invoice. Payment must
be made to the account specified by Oxford on the invoice in US Dollars. Time of payment is of
the essence.
6.6. Suspension for Non-Payment. If Developer fails to make any payment due to
Oxford under this Agreement by the due date for payment, Developer’s rights hereunder,
including all licenses, will be suspended until the account is fully paid up or until this Agreement
is terminated.
6.7. No Continuing Support Obligation. Oxford provides no assurance that any
specific errors or discrepancies in any Goods will be corrected. Limited technical support,
documentation and other literature will be available at www.nanoporetech.com. Developer will
have access to www.nanoporetech.com during the term of this Agreement. Oxford reserves the
right, but does not have the obligation to provide additional support at no additional cost, or for a
fee to be agreed in an Order. Provision of the Goods under this Agreement is solely to enable
Developer to develop Developer Applications and Extensions and shall not create any obligation
for Oxford to continue to develop, productize, support, repair, offer for sale or in any other way
continue to provide or develop Goods either to Developer or to any other party.
6.8. Limited Remedy. If Goods are defective or dysfunctional, Oxford will provide
replacement Goods at no additional cost, provided the Goods have not been misused, mishandled
or stored improperly. This is Oxford’s sole and exclusive obligation and Developer’s sole and
exclusive remedy in respect of Goods which are defective or dysfunctional.
6.9. Contact Information. Developer grants Oxford and its affiliates full right to retain
and re-use any and all personal information included or made available by Developer for
purposes of providing notices, support, to facilitate completion of orders, and to make Developer
aware of new products and services available from Oxford.
7.
Ownership; Confidentiality
7.1. Ownership of Intellectual Property by Oxford. Oxford, its affiliates and its
licensors, as applicable, are the sole and exclusive owners of the Intellectual Property Rights in
the Oxford Proprietary Information (including the Developer Kit), and in all media, printouts,
papers, support materials, or hard copies containing or bearing such Intellectual Property Rights.
Except where prohibited under applicable law, Developer agrees not to contest Oxford’s
ownership of any copyright or any other applicable Intellectual Property Right in the Oxford
Proprietary Information (including the Developer Kit). Developer shall have a license to use the
Developer Kit, and the Intellectual Property Rights therein, only to the extent specifically
provided in this Agreement and further limited to the extent such is reasonably necessary for
Developer’s performance under this Agreement.
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7.2. Reservation of Rights. Each party reserves all of its rights. Except for any
express license herein, no license is granted.
7.3. Ownership of Intellectual Property by Developer. Subject to the terms and
conditions herein, Developer shall retain its rights with respect to any Developer Application and
Extension Developer may create hereunder as well as to any Biological Data resulting from its
use of Devices.
7.4. Disclosing Development Applications and Extensions. It is expressly understood,
acknowledged and agreed that Developer shall, regardless of whether or not formally requested
to do so, disclose to Oxford any and all modifications to or derivative works of Oxford
Proprietary Information.
7.5. Oxford Independent Development. Nothing in this Agreement will impair
Oxford’s right to develop, acquire, license, market, promote or distribute products, software or
technologies that perform the same or similar functions as, or otherwise compete with, any other
products, software, or technologies that Developer may develop, produce, market or distribute.
7.6.
Confidential and Proprietary Information.
7.6.1. Developer agrees not to disclose to third parties and to use Developer’s
best efforts to keep confidential at all times all Oxford Confidential Information Developer
receives from Oxford. Developer agrees not to use Oxford Confidential Information other than
for the purposes contemplated by this Agreement. Developer acknowledges and agrees that,
unless otherwise specifically provided herein or agreed by Oxford in writing, the Developer Kit,
including the specific design and structure of individual programs, and the compositions,
qualities, uses and formulas of Oxford Consumables provided to Developer by Oxford
constitutes confidential proprietary information and trade secret of Oxford. Developer shall
permit only Authorized Users under this Agreement to use or access the Developer Kit.
Developer agrees not to transfer, copy, disclose, provide or otherwise make available Oxford
Confidential Information, including, without limitation, the Developer Kit in any form, to any
Person other than an Authorized User without the prior written consent of Oxford.
7.6.2. Developer agrees to use best efforts to maintain the security of the
Developer Kit and any other Oxford Confidential Information provided to Developer by Oxford.
Developer will use its best efforts to cooperate with and assist Oxford in identifying and
preventing any unauthorized use, copying, or disclosure of the Developer Kit. Developer shall
secure and protect all printed materials, manuals, software programs, disks, copies and other
media, if any, that embody, contain, or describe any Oxford Confidential Information in a
manner consistent with the protection of Oxford’s rights therein and to take appropriate action by
instruction or agreement with its employees to satisfy its obligations hereunder. Developer
further agrees that it shall be strictly liable for all damages to Oxford that result from any
disclosure of any Oxford Confidential Information or any portion of the Developer Kit to any
third party.
7.6.3. Developer may publish an article, paper, abstract, presentation or similar
publication regarding Developer’s development efforts hereunder; provided, however, before
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Developer publishes any such article, paper, abstract, presentation or similar publication,
Developer must deliver to Oxford a copy of the manuscript and permit Oxford 45 days to review
the proposed publication to ensure that Oxford Confidential Information and Oxford Proprietary
Information are protected. To the extent such proposed publication contains any Oxford
Confidential Information or Oxford Proprietary Information, Developer must first obtain the
written consent of Oxford before publishing. Oxford may request in writing that the proposed
publication be delayed for up to 60 additional days following receipt of a manuscript by Oxford
as necessary to file a patent application.
7.6.4. Developer acknowledges that the means used by Oxford that are designed
to secure software, data and systems related to this Agreement may require that a Device or set
of Devices and/or a Flow Cell or set of Flow Cells match a user ID assigned to Developer and/or
that such Devices and Flow Cells are matched according to the Developer’s Order and/or that
particular workstations match a unique Oxford-issued keys. Developer acknowledges this may
limit Developer’s ability to share Devices and that, notwithstanding these measures (and other
reasonable administrative, physical and technical safeguards), Oxford cannot ensure the security
of information or other materials made available hereunder in Oxford’s custody or control but
shall comply with all relevant laws applicable to Oxford, including, but not limited to, as
applicable to Oxford data protection relating to those materials. Developer further acknowledges
that use of Goods may be dependent on rights to use software separately licensed on a nontransferable basis.
7.7. Restricted Rights Notice. The Developer Kit made available under this
Agreement includes commercial computer software programs developed exclusively at private
expense. Use, duplication and disclosure by civilian agencies of the U.S. Government shall be in
accordance with FAR 52.227-19 or similar local law (c) or other agency data rights provisions,
as may be applicable. Use, duplication and disclosure by DOD agencies are subject solely to the
terms of this Agreement, a standard software license agreement as stated in DFARS 227.7202 or
similar local law. If Developer is a government entity and/or Developer’s use is funded by the
government, Developer is hereby on notice that any data to be made available hereunder is
“limited rights data” developed at private expense that embody trade secrets or are commercial
or financial and confidential or privileged. This data may be reproduced and used by the
government with the express limitation that it will not, without written permission of Oxford, be
used for purposes of manufacture nor disclosed outside the government. Oxford reserves all
rights and licenses not expressly granted under this Agreement, including, without limitation, all
rights in trademarks and associated goodwill.
8.
Termination
8.1. Termination. Oxford shall have the right to terminate this Agreement after
provision to Developer of ten (10) days’ prior written notice (assuming such breach is not cured
or such concern regarding liability is not reasonably mitigated): if (a) in Oxford’s sole and
reasonable judgment Developer has breached the terms of this Agreement or otherwise engaged
in activity that may cause liability to Oxford; (b) Developer files an action or commences a
proceeding contesting Oxford’s ownership of or the validity or novelty of any Oxford patent. In
any case, Oxford may terminate this Agreement with Developer upon 30 days’ prior written
notice for any reason and without cause; or (c) any fees owed hereunder are not paid when due.
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Developer may terminate this Agreement and the License granted hereunder at any time by
ceasing access to and use of the Developer Kit and notifying Oxford in writing of its intent to
terminate.
8.2. Effect of Termination. Upon any expiration or termination of this Agreement, (a)
the rights and licenses granted to Developer under this Agreement shall immediately terminate
and (b) Developer shall immediately cease using and uninstall, if applicable, all instances of the
Developer Kit including any unused Oxford Consumables, and return, or, at Oxford's request,
destroy, all tangible embodiments of the Developer Kit and any other Oxford Confidential
Information in Developer’s possession or control, together with all related materials, copies or
derivative versions thereof in any form. The expiration or termination of this agreement shall
have no impact on the continuing rights of Oxford under Sections 3 and 4 of this Agreement.
9.
DISCLAIMER; LIMITED WARRANTIES. THE DEVELOPER KIT IS PROVIDED
“AS IS” AND, EXCEPT FOR ANY WARRANTY, CONDITION OR GUARANTEE THAT
CANNOT BE EXCLUDED BY LAW, ALL WARRANTIES IMPLIED OR OTHERWISE ARE
EXCLUDED. TO THE MAXIMUM EXTENT PERMITTED BY APPLICABLE LAW AND
SUBJECT TO ANY SUCH WARRANTIES, CONDITIONS OR GUARANTEES WHICH
CANNOT LAWFULLY BE EXCLUDED, OXFORD DOES NOT MAKE, AND HEREBY
DISCLAIMS, ANY REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED,
REGARDING THE ACCURACY, ADEQUACY, TIMELINESS, COMPLETENESS,
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR NONINFRINGEMENT OF ANY KIND WITH RESPECT TO THE DEVELOPER KIT,
INCLUDING BUT NOT LIMITED TO, WARRANTIES OF FITNESS FOR ANY
PARTICULAR PURPOSE (INCLUDING ANY PURPOSE RELATING TO A DEVELOPER’S
LEGAL OR REGULATORY COMPLIANCE OBLIGATIONS). WITHOUT LIMITATION OF
THE FOREGOING, OXFORD EXPRESSLY DOES NOT WARRANT THAT THE
DEVELOPER KIT WILL MEET DEVELOPER’S REQUIREMENTS OR THAT OPERATION
OF THE DEVELOPER KIT WILL BE UNINTERRUPTED OR ERROR FREE. Oxford makes
no warranty or representation and gives no indemnity in respect of any third party's products,
whether or not obtained from Oxford. Oxford’s supply of any such third party-produced
products will be subject to separate terms and conditions of the manufacturer or licensor, which
will be specified at the time of purchase in relation to such product. Any samples, training
materials, descriptive material or advertising related to the Developer Kit, whether or not
produced by Oxford and any descriptions contained in or on Oxford’s websites or in Oxford’s
marketing materials or product literature are produced for the purpose of general information
only and shall not form part of this Agreement or have any contractual force. Developer
acknowledges that Developer has not relied on any statement, promise, representation, assurance
or warranty made or given by Oxford or its agents which is not set out in the Agreement.
10.
LIMITATION OF LIABILITY. EXCEPT FOR ANY LIABILITY THAT CANNOT BE
EXCLUDED BY LAW AND EXCEPT FOR ANY CLAIM ARISING FROM DEVELOPER’S
MISAPPROPRIATION OF OXFORD’S INTELLECTUAL PROPERTY OR PROPERTY OR
BREACH OF OBLIGATIONS OF CONFIDENTIALITY, NEITHER PARTY WILL BE
LIABLE TO THE OTHER PARTY, WHETHER IN CONTRACT, TORT, BREACH OF
STATUTORY DUTY OR OTHERWISE, FOR ANY LOSS OF PROFIT OR SAVINGS OR
ANY INDIRECT, SPECIAL, PUNITIVE, INCIDENTAL OR CONSEQUENTIAL LOSS OR
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DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGE AND
HOWSOEVER ARISING (WHETHER IN TORT) (INCLUDING FROM OXFORD’S
NEGLIGENCE), IN CONTRACT, UNDER STATUTE OR OTHERWISE). EXCEPT FOR
ANY CLAIM ARISING FROM DEVELOPER’S MISAPPROPRIATION OF OXFORD’S
INTELLECTUAL PROPERTY OR PROPERTY OR BREACH OF OBLIGATIONS OF
CONFIDENTIALITY, IN ALL EVENTS INCLUDING WITH REPSECT TO A PARTY’S
INDEMNIFICATION OBLIGATIONS THE MAXIMUM DAMAGES OF ANY TYPE FOR
WHICH EITHER PARTY SHALL BE LIABLE UNDER OR RELATED TO THIS
AGREEMENT IS THE GREATER OF THE AMOUNTS PAID BY DEVELOPER TO
OXFORD UNDER THIS AGREEMENT IN THE TWELVE MONTHS PRIOR TO THE DATE
THE MOST RECENT CLAIM AROSE OR ONE MILLION DOLLARS ($1,000,000.00).
11.
Indemnification. Developer, on behalf of itself, and any employees, agents, successors,
parent corporations, affiliate corporations, predecessor corporations and successor corporations,
in all capacities, including individually, agree to indemnify and hold Oxford and its officers,
directors, employees and agents harmless from any and all losses, claims, detriment, damages,
charges, costs and expenses arising out of or resulting from the Developer’s use of the Developer
Kit or any of the individual components thereof that is not strictly in accordance with the terms
of this Agreement.
12.
General Provisions
12.1. Export Controls. Developer represents and warrants that Developer is not a
citizen, national, or resident of, and is not under control of, the government of Cuba, Iran, Sudan,
Libya, North Korea, Syria, nor any country to which the United States or the EU has prohibited
export and that Developer and relevant Developer personnel are not listed on the United States
Department of Treasury lists of Specially Designated Nationals, Specially Designated Terrorists,
and Specially Designated Narcotic Traffickers, nor is Developer listed on the United States
Department of Commerce Table of Denial Orders. The Developer Kit, Developer Applications
and Extensions or part of either may be subject to local export control laws and regulations.
Developer must not, directly or indirectly, sell, export, re-export, transfer, divert or otherwise
send the Developer Kit, Developer Applications and Extensions or associated information or
technology to any destination or person prohibited under US, EU or other local laws or
regulations, and Developer shall not use the Developer Kit or Developer Applications and
Extensions for, and shall not allow the Developer Kit or Developer Applications and Extensions
to be used for, any purposes prohibited by United States or EU law, including, without
limitation, for the development, design, manufacture or production of nuclear, chemical or
biological weapons of mass destruction. The Developer Applications and Extensions may only
be used in the jurisdiction to which the Developer Kit is delivered and Developer shall prohibit
redistribution of the Developer Applications and Extensions except in accordance with the
process outlined in 3.4 of this Agreement and in accordance with applicable laws.
12.2. New Zealand Developers. If the Developer is located in New Zealand, to the
extent permitted by applicable law, each party agrees (a) that it is “in trade” (as such term is
generally understood under the laws of New Zealand) and (b)(i) to contract out of Sections 9,
12A, 13 and 14(1) of the Fair Trading Act 1986 and (ii) that it is fair and reasonable that the
parties be bound by this provision.
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12.3. Australian Developers. This Section 12.3 applies if the Developer is located in
Australia. Nothing in this Agreement excludes, restricts or modifies any right or remedy, or any
guarantee, warranty or other term of condition, implied or imposed by any legislation that cannot
lawfully be excluded or limited, including under the Competition and Consumer 2010 (Cth)
(“Non-Excludable Provision”). To the maximum extent permitted by law, Oxford’s entire
liability for breach of a Non-Excludable Provision in relation to this Agreement or the
Developer’s use of the Developer Kit is limited to (at Oxford’s option): (i) replacing the relevant
Developer Kit or (ii) supplying the relevant Developer Kit again.
12.4. United Kingdom Developers. This Section 12.4 applies if the Developer is located
in the United Kingdom. Nothing in this Agreement excludes, restricts or modifies any right or
remedy, or any guarantee, warranty or other term of condition, implied or imposed by any
legislation that cannot lawfully be excluded or limited, including under the Unfair Contract
Terms Act 1977, as amended by the Consumer Rights Act 2015 (the “UTCA”) (a “NonExcludable Provision”). To the maximum extent permitted by law, the Parties agree that any
limitation of liability, remedy, warranty, guarantee or other term of condition set forth in this
Agreement is reasonable (as such term is defined in the UTCA). To the maximum extent
permitted by law, in the event any limitation of liability, remedy, warranty, guarantee or other
term of condition set forth in this Agreement (i) is deemed not to be reasonable (as such term is
defined in the UTCA) and is therefore not excludable or (ii) is otherwise deemed to be a NonExcludable Provision, Oxford’s entire liability for breach of a Non-Excludable Provision in
relation to this Agreement or the Developer’s use of the Developer Kit is limited to (at Oxford’s
option): (i) replacing the relevant Developer Kit or (ii) supplying the relevant Developer Kit
again.
12.5. Severability. If any provision of this Agreement is found to be invalid, illegal or
unenforceable, it shall be deemed modified to the minimum extent necessary to make it valid,
legal and enforceable. If such modification is not possible, the relevant provision shall be
deemed deleted. Any such modification or deletion shall not affect the validity and
enforceability of the rest of the Agreement.
12.6. Non-Waiver. A waiver by Oxford of any right or remedy arising under this
Agreement or by law is only effective if given in writing and will not be deemed to be a waiver
of any subsequent breach or default. No failure or delay to exercise any right or remedy
provided under the Agreement or by law will constitute a waiver by that Party of that or any
other right or remedy, nor will it prevent or restrict the further exercise of that or any other right
or remedy.
12.7. Governing Law. If Developer is organized under the laws of a jurisdiction in
North America or South America, this Agreement, and any dispute or claim arising out of or in
connection with it or its subject matter or formation, will be governed by and construed in
accordance with the laws of the State of New York except for any conflict of laws rules that
would give rise to application of the substantive law of another jurisdiction. If Developer is
organized under the laws of a jurisdiction outside of North America or South America, this
Agreement, and any dispute or claim arising out of or in connection with it or its subject matter
or formation, will be governed by and construed in accordance with the laws of England and
Wales. If Developer is organized under the laws of a jurisdiction in North America or South
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America, Developer hereby consents to the exclusive jurisdiction of the state and federal courts
located in the State of New York for resolution of any dispute or claim arising in connection with
this Agreement. If Developer is organized under the laws of a jurisdiction outside North
America or South America, Developer hereby consents to the exclusive jurisdiction of the courts
located in England for resolution of any dispute or claim arising in connection with this
Agreement. Notwithstanding the foregoing, Oxford may, at its sole option, enforce this
Agreement in any jurisdiction in which Developer is subject to suit.
12.8. No Joint Venture. Nothing in this Agreement shall constitute or create a joint
venture, partnership, agency or other similar arrangement between Oxford and Developer.
12.9. Successors and No Third Party Beneficiaries. A person who is not a party to this
Agreement shall have no right to enforce its terms, except for Metrichor Ltd., Oxford and their
respective affiliates, who are express third-party beneficiaries of this Agreement. This
Agreement is binding upon each party’s respective successors and assigns.
12.10. Titles. The titles to the sections and paragraphs of this Agreement are solely for
the convenience of the Parties and are not an aid in the interpretation of the Agreement.
12.11. Entire Agreement and Acknowledgement. This Agreement, together with the
incorporated terms and conditions, constitutes the complete and exclusive agreement between
Developer and Oxford with respect to the subject matter hereof (development as opposed to
standard use rights), and supersedes all prior or contemporaneous oral or written
communications, proposals, representations, understandings, or agreements not specifically
incorporated herein. To the extent permitted under applicable law, the terms of this Agreement
apply to the exclusion of any other terms that Developer may seek to impose or incorporate, or
which are implied by statute, trade, custom, practice or course of dealing. This Agreement may
not be amended except in a writing duly signed by Developer and an authorized representative of
Oxford. Oxford may update these terms from time to time on notice to Developer; provided that,
if Developer is adversely affected by such update, Developer has the option to terminate this
Agreement by providing written notice to Oxford of its intent to terminate within five (5) days
after such notice is published, and if Developer does not provide such notice of intent to
terminate within such five-day period, the updated terms shall apply to Developer. This
Agreement shall control over inconsistent terms in other agreements between Developer and
Oxford with respect to the subject matter of this Agreement.
12.12. Construction of Agreement. For the purposes of this Agreement, the use of the
singular shall include the plural, and vice versa, and the use of the conjunctive shall include the
disjunctive and vice versa. References to currency expressed as “U.S.D.” shall be measured in
United States dollars. References to currency expressed as “G.B.P.” shall be measured in British
Pounds.
12.13. Assignment. Oxford may at any time assign, transfer, mortgage, charge,
subcontract or deal in any other way with any or all of our rights and obligations under this
Agreement in connection with a merger, change of control or sale of assets. Developer may not
assign, transfer, mortgage, charge, subcontract, declare a trust over or deal in any other way with
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any or all of Developer’s rights and obligations under this Agreement without Oxford’s prior
written consent.
12.14. Notices. All Any notice or other information required or authorised by this
Agreement to be given by either party to the other shall be given by delivering the same by hand,
sending the same by pre-paid registered post at the address given below:
12.15. Survival. The provisions of Sections 2.2, 2.3, 3.2, 3.3, 3.4, 4, 5, 6 (excluding
subsection 6.2), 7, 8.2 and 9 through 12 shall survive any expiration or termination of this
Agreement for any reason.
[Signature Page Follows]
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Confidential - 30 March 2017
IN WITNESS WHEREOF, the parties have caused this Agreement to be duly executed by their
respective duly authorized officers in counterpart originals, as of the date first above written.
[DEVELOPER]
OXFORD NANOPORE TECHNOLOGIES, LTD.
By:
By:
Name:
Name:
Title:
Title:
Date:
Date:
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Confidential - 30 March 2017
SCHEDULE A
Devices
1. MinION
2. GridION
3. PromethION, if and when made available by Oxford
Fees
1. Annual Development License Fee, which fee shall be waived for 2016
2. Shipping & Handling Fees, which fee shall be waived for 2016
Authorized Users
4.
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Schedule A to Developer License