EXCLUSIVE PATENT LICENSE AGREEMENT
This Exclusive Patent License Agreement (this “Agreement”) is made effective as of the Effective Date (as defined below)
by and between Orchid BioSciences, Inc. (“ORCHID”), a Delaware corporation and Saint Louis University, a non-profit
organization organized and existing under the laws of the State of Missouri (“SLU”). ORCHID and SLU are hereinafter referred
to collectively as the “Parties.”
A. WHEREAS, SLU is the owner of U.S. Patent No. 5,846,710, entitled Method for the Detection of Genetic Diseases and
Gene Sequence Variations by Single Nucleotide Primer Extension , issue date December 8, 1998 (the “‘710 Patent or the
B. WHEREAS, ORCHID commenced a declaratory judgment action in the United States District Court for the Southern
District of California that was transferred to the United States District Court for the Eastern District of Missouri (Civil Action
No. 4:02CV00179JCH, U.S.D.C., E.D. of MO) against SLU in connection with the parties’ rights and obligations with respect to
the ‘710 Patent (the “Action”).
C. WHEREAS, SLU filed a counterclaim against ORCHID alleging patent infringement of the ‘710 Patent.
D. WHEREAS, the Parties have entered into that certain Settlement Agreement dated August 6th, 2002 (the “Settlement
Agreement”). All capitalized terms not defined herein shall have the meaning as set forth in the Settlement Agreement.
E. WHEREAS, Pursuant to the terms and conditions of the Settlement Agreement, SLU assigned, transferred and set over
to ORCHID its entire right, title and interest in and to the ‘710 Patent.
F. WHEREAS, NIH failed to issue its approval to the assignment and transfer of the ‘710 Patent to ORCHID as requested
by the terms of the Settlement Agreement, therefore rendering the ‘710 Patent assignment and transfer void, and thereby
requiring SLU, under the terms of the Settlement Agreement, to grant a license to ORCHID as set forth there