EXHIBIT 10(y) DISTRIBUTION AND SUPPLY AGREEMENT BETWEEN ENZO BIOCHEM, INC. AND CORANGE INTERNATIONAL LIMITED April 25, 1994 This agreement is entered into effective this 25th day of April, 1994, by and among Enzo Biochem, Inc. and Enzo Diagnostics, Inc., a wholly-owned subsidiary of Enzo Biochem, Inc. (collectively referred to hereafter as "ENZO"), New York corporations having their principal places of business at 60 Executive Boulevard, Farmingdale, NY 11735, U.S.A., and Corange International Limited, a Bermuda corporation having its principal place of business at 22 Church Street, Hamilton, Bermuda HM HX ("CIL"). WHEREAS, ENZO owns or has rights to certain PATENTS listed in APPENDIX A ("PATENTS"); WHEREAS, CIL wishes to market and sell certain PRODUCTS ("PRODUCT(S)"), covered by claims of PATENTS, into the research products market worldwide; WHEREAS, ENZO wishes CIL to market and sell certain PRODUCTS, covered by claims of PATENTS, into the research products market worldwide; WHEREAS, ENZO manufactures or will manufacture certain PRODUCTS; WHEREAS, ENZO desires to have CIL manufacture for ENZO certain PRODUCTS within the scope of this Agreement; NOW, THEREFORE, in consideration of the mutual agreements hereinafter set forth, the parties hereto agree as follows: I. Definitions AFFILIATE means an entity controlled by or under common control with another entity within the Corange Limited group of companies. For purposes of this Agreement, control shall mean the ownership of a majority of the common stock or the majority of the voting equity interest. Unless the context otherwise requires, "CIL" shall be deemed to refer to Corange International Limited and its AFFILIATES. GROUP * PRODUCT means a product that is a nucleotide, oligonucleotide or polynucleotide with a signal generating moiety, the manufacture, use or sale of which is covered by claims of a PATENT *. The current GROUP * PRODUCTS are listed on EXHIBIT * to this Agreement. GROUP * PRODUCT means a product that is a nucleotide, oligonucleotide or polynucleotide with a signal generating moiety, the manufacture, use or sale of which is covered by claims of a PATENT *. The current GROUP * PRODUCTS are listed on EXHIBIT * to this Agreement. GROUP * PRODUCT means a product that (i) is not a GROUP * PRODUCT or a GROUP * PRODUCT, the use of which is covered by claims of a PATENT *. The current GROUP * PRODUCTS are listed on EXHIBIT * to this Agreement. GROUP * PRODUCT means a product * that which the parties have agreed that * shall manufacture, or have manufactured, and sell. GROUP * PRODUCT means a KIT manufactured by ENZO. The current GROUP * PRODUCTS are listed on EXHIBIT * to this Agreement. GROUP * PRODUCT means a product currently manufactured by ENZO that is not part of a KIT. The current GROUP * PRODUCTS are listed on EXHIBIT * to this Agreement. GROUP * PRODUCT means a KIT sold by CIL that contains *. The current GROUP * PRODUCTS are listed on EXHIBIT * to this Agreement. GROUP * PRODUCT means (i) a KIT sold by CIL that does not contain * but contains a component that, if sold individually, would be a GROUP * PRODUCT, or (ii) a component requiring manufacturing processes in addition to labeling on the base, sugar or phosphate. The current GROUP * PRODUCTS are listed on EXHIBIT * to this Agreement. - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 2 * means the claims contained in the *, as allowed by the United States Patent and Trademark Office in the notice of allowance dated *, or the equivalent claims (or equivalent composition claims) in a foreign patent. * means composition or apparatus claims contained in U.S. * or any patent issuing from any parent, continuation, reissue or division of such patent, or any foreign counterpart thereto or comparable claims in any PATENT, that, in mutual agreement between CIL and ENZO or through the final judgment of a court of law, are infringed by a product sold by CIL. ENZO SELLING PRICE means the higher of (i) the actual selling price of a * less the usual trade discounts actually allowed, and credits actually given for returns allowances or trades; or *. PATENTS means patents throughout the world owned or licensed by ENZO. Issued PATENTS are listed in APPENDIX A to this Agreement, which APPENDIX is subject to periodic supplementation upon the issuance of PATENTS. PRODUCTS means collectively all GROUP * PRODUCTS, GROUP * PRODUCTS, GROUP * PRODUCTS, GROUP * PRODUCTS, GROUP * PRODUCTS, GROUP * PRODUCTS, GROUP * PRODUCTS, and GROUP * PRODUCTS. FORCE MAJEURE means a cause beyond the control of a party, including but not limited to acts of God, acts, laws or regulations of any government, civil disorder, strikes, destruction of production facilities or material by fire, water, earthquake or storm, epidemics and failures of public utilities or common carriers. KIT means a PRODUCT containing two or more vials of reagents or other components that are optimized to allow the user to perform a function. RAW MATERIALS means a GROUP * PRODUCT or a material that is included as a component of a KIT for which ENZO has PATENTS. MANUFACTURING TRANSITION PERIOD is defined in Section VII. - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 3 SELLING PRICE means the actual selling price of a PRODUCT to a CIL customer that is the end user of the PRODUCT, less the usual trade discounts actually allowed, and credits actually given for returns, allowances or trades. II. Sale Of PRODUCTS. ENZO hereby appoints, and CIL accepts appointment, subject to the conditions set forth herein, as a nonexclusive distributor for the distribution and sale of PRODUCTS to the research market subject to the conditions of this Agreement. A. GROUP * PRODUCTS. 1. Manufacture and Sale. ENZO or its designee shall manufacture, sell and deliver to CIL and CIL shall purchase exclusively from ENZO (after the MANUFACTURING TRANSITION PERIOD with respect to each GROUP * PRODUCT) such quantities of the GROUP * PRODUCTS as CIL may order in accordance with this Agreement. CIL shall have the right to sell GROUP * PRODUCTS worldwide within the scope of this Agreement. 2. Packaging. Each of the GROUP * PRODUCTS shall be packaged in CIL-designated packaging and labeling; provided, however, that such packaging shall acknowledge ENZO as provided in this Agreement and that such packaging shall not be changed by CIL to become unduly burdensome to ENZO. 3. Specifications. Each GROUP * PRODUCT shall conform to the specifications for it agreed to by ENZO and by CIL. 4. Changes to Exhibit *. CIL may request that ENZO add to EXHIBIT * and manufacture and sell to CIL additional products that are nucleotides, oligonucleotides or polynucleotides with a signal generating moiety, which CIL believes to be GROUP * PRODUCTS, the manufacture, use or sale of which are covered by PATENTS, provided that CIL may not add any additional product for any period during which ENZO has a prior exclusive commitment to a third party. If ENZO desires to manufacture such additional products, then such additional products shall be added to EXHIBIT * and the parties shall immediately enter into good faith negotiations on specifications and price. If ENZO does not desire to manufacture such additional products, such additional products shall be added to EXHIBIT * for manufacture by or for CIL under the terms of this Agreement. - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 4 ENZO shall have the right at any time, upon its representation to CIL that it desires to commence manufacture and supply of such additional products, to transfer such additional products from the status of GROUP * PRODUCTS to GROUP * PRODUCTS. B. GROUP * PRODUCTS. 1. Manufacture and Sale. ENZO shall engage CIL to manufacture GROUP * PRODUCTS in accordance with ENZO's specifications. CIL shall have the right to sell GROUP * PRODUCTS worldwide within the scope of this Agreement. 2. Changes to Exhibit *. CIL may add to EXHIBIT * additional products that fall within the definition of GROUP * PRODUCTS * commercially the same PRODUCT and added to EXHIBIT *. C. GROUP * PRODUCTS. 1. Manufacture and Sale. ENZO shall engage CIL to manufacture GROUP * PRODUCTS. CIL shall have the right to sell GROUP * PRODUCTS worldwide within the scope of this Agreement. 2. Changes to Exhibit *. CIL may add additional products to EXHIBIT * by giving ENZO notice to that effect. D. GROUP * PRODUCTS. 1. Manufacture and Sale. CIL shall have the right to manufacture, have manufactured, and sell GROUP * PRODUCTS worldwide. 2. Changes to Exhibit *. The parties may mutually consent to include additional products as GROUP * PRODUCTS, which consent shall not be unreasonably withheld. 3. No Acknowledgement. The foregoing does not constitute an acknowledgement by CIL that any agreement or license from ENZO is necessary in order for CIL to sell or CIL's customers to use GROUP * PRODUCTS. - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 5 E. GROUP PRODUCTS. 1. Manufacture and Sale of KITS. ENZO shall engage CIL to manufacture * GROUP * PRODUCTS in accordance with ENZO's *. CIL shall have the right to sell GROUP * PRODUCTS worldwide within the scope of this Agreement. 2. *. 3. *. 4. Changes Exhibit *. CIL may add additional products to EXHIBIT * by giving ENZO notice to that effect, provided that CIL may not add any additional product for any period during which ENZO has a prior exclusive commitment to a third party. *. F. GROUP *. PRODUCTS. 1. Manufacture and Sale of KITS. *. CIL shall have the right to sell GROUP * PRODUCTS worldwide within the scope of this Agreement. 2. Changes to Exhibit *. CIL may add to EXHIBIT * additional products that fall within the definition of GROUP * PRODUCTS by giving ENZO notice to that effect. G. GROUP * PRODUCTS. 1. Manufacture and Sale. ENZO shall manufacture, sell and deliver to CIL, and CIL shall purchase exclusively from ENZO such quantities of the GROUP * PRODUCTS as CIL may order in accordance with this Agreement. CIL shall have the right to sell GROUP * PRODUCTS worldwide within the scope of this Agreement. 2. Packaging. Each of the GROUP * PRODUCTS shall be packaged in CIL-designated packaging and labeling; provided, however, that such packaging shall acknowledge ENZO as provided in this Agreement and that such packaging shall not be unduly burdensome to ENZO. - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 6 3. Specifications. Each GROUP * PRODUCT shall conform to the specifications for it agreed to by ENZO and by CIL. 4. Changes to EXHIBIT *. CIL may request from time to time that ENZO add to EXHIBIT *. Upon acceptance, ENZO shall use its best efforts to manufacture and sell such products to CIL. ENZO shall inform CIL, under the terms of this Agreement, of any changes in its product offering that may be added to EXHIBIT *. H. GROUP * PRODUCTS. 1. Manufacture and Sale of KITS. ENZO shall manufacture, sell and deliver to CIL, and CIL shall purchase exclusively from ENZO such quantities of the GROUP * PRODUCTS as CIL may order in accordance with this Agreement. CIL shall have the right to sell GROUP * PRODUCTS worldwide within the scope of this Agreement. 2. Packaging. Each of the GROUP * PRODUCTS shall be packaged in CIL-designated packaging and labeling; provided, however, that such packaging shall acknowledge ENZO as provided in this Agreement and that such packaging shall not be unduly burdensome to ENZO. 3. Specifications. Each GROUP * PRODUCT shall conform to the product specifications agreed upon by ENZO and CIL. 4. Changes to EXHIBIT *. CIL may request from time to time that ENZO add to EXHIBIT *. Upon acceptance, ENZO shall use its best efforts to manufacture and sell such products to CIL. ENZO shall inform CIL, under the terms of this Agreement, of any changes in its product offering that may be added to EXHIBIT *. III. Sale of GROUP * and * PRODUCTS BY ENZO. CIL appoints, and ENZO accepts appointment, subject to the conditions set forth herein, as a non-exclusive distributor for the worldwide distribution and sale of GROUP *, and * PRODUCTS, subject to the following conditions: A. SUPPLY ARRANGEMENT. ENZO shall purchase its requirements for GROUP * and * PRODUCTS from CIL. Such supply arrangement shall - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 7 be on an exclusive basis worldwide. If, at any time after the first anniversary of the issuance of a United States patent to CIL covering digoxigenen labeled nucleotides, oligonucleotides or polynucleotides (a "dig patent"), and during the term of this Agreement, such dig patent is or appears to be infringed by a third party in connection with the sale of a product in competition with the PRODUCTS described herein, the party having knowledge thereof shall notify the other and the parties shall consult to consider what, if any, action should be taken. The decision regarding institution of proceedings to abate the infringement shall be at CIL's discretion, and in the event CIL elects to initiate legal proceedings, ENZO shall give CIL all reasonable assistance in such proceedings. In the event CIL shall elect not to institute infringement proceedings, and if ENZO can show, by market research performed by a researcher mutually acceptable to both parties, that infringing sales exceed * of the market for a particular PRODUCT, the payment to CIL for such PRODUCT pursuant to this Agreement shall be reduced by * until CIL commences legal action against such infringer of settlement has been reached between such infringer and CIL. The foregoing sentence does not constitute a validation, endorsement or belief (express or implied) on the part of ENZO in the validity of any CIL patent claims. PRODUCT specifications, etc. shall be identical in all respects to PRODUCT distributed by CIL. Labeling of any such PRODUCTS shall not include any reference to CIL except as may be required by law. B. SALE TO END USERS. *. C. PAYMENT TO CIL. *. 1. For all GROUP * PRODUCTS sold by ENZO to end users, ENZO will pay CIL an amount equal to * of the ENZO SELLING PRICE of such GROUP * PRODUCTS. *. 2. For all GROUP * PRODUCTS sold by ENZO to end users, ENZO will pay CIL an amount equal to * of the ENZO SELLING PRICE of such GROUP * PRODUCTS. *. 3. For all GROUP * PRODUCTS sold by ENZO to end users, ENZO will pay CIL an amount equal to * of the ENZO SELLING PRICE of such GROUP * PRODUCTS. - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 8 4. For all GROUP * PRODUCTS sold by ENZO to end users, ENZO will pay CIL an amount equal to * of the ENZO SELLING PRICE of such GROUP * PRODUCTS. *. D. Shipping Terms. *. E. Warranty. CIL warrants that the PRODUCTS sold to ENZO for sale on its own account shall meet the specifications agreed upon by the parties. CIL's sole obligation under this warranty is to promptly replace the PRODUCTS without cost or expense therefor to ENZO. THIS WARRANTY IS EXPRESSLY IN LIEU OF ANY OTHER WARRANTIES OR LIABILITIES, EXPRESS OR IMPLIED, INCLUDING THE WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. F. Miscellaneous Terms. The provisions of Section V, Paragraphs A through D, shall be applied to ENZO's purchase of PRODUCTS from CIL in the same fashion as such provisions apply to CIL's purchases from ENZO. IV. Price to CIL A. GROUP * PRODUCTS: 1. Sale In Countries Where *. for all GROUP * PRODUCTS manufactured by ENZO and sold by CIL in any country where * price to CIL shall be an amount equal to * of the SELLING PRICE of such GROUP * PRODUCTS. 2. Sale In Countries Where *. For all GROUP * PRODUCTS manufactured by ENZO and sold by CIL in any country where the *. ENZO's supply price to CIL shall be an amount equal to * of the SELLING PRICE of such GROUP * PRODUCTS. 3. GROUP * PRODUCTS Manufactured By CIL. For all GROUP * PRODUCTS manufactured for ENZO by CIL during the MANUFACTURING TRANSITION PERIOD pursuant to Section VII B, C, and D of this Agreement, ENZO's supply price to CIL for such GROUP * PRODUCTS shall be an amount equal to * of the SELLING PRICE of GROUP * PRODUCTS sold by CIL in any country where the *. - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 9 B. GROUP * PRODUCTS: 1. Sale In Countries Where *. For all GROUP * PRODUCTS sold by CIL in any country * in such country, ENZO's supply price to CIL shall be an amount equal to * of the SELLING PRICE of such GROUP * PRODUCTS, *. 2. Sale In Countries Where *. For all GROUP * PRODUCTS sold by CIL in any country *. ENZO's supply price to CIL shall be an amount equal to * of the SELLING PRICE of such GROUP * PRODUCTS, *. 3. Sale In Countries When *. At such time as * ENZO's supply price for all GROUP * PRODUCTS sold by CIL shall be an amount equal to * of the SELLING PRICE of such GROUP * * PRODUCTS, *. C. GROUP * PRODUCTS: 1. Sale In Countries Where *. For all GROUP * PRODUCTS sold by CIL in any country where the *. ENZO's supply price of such GROUP * PRODUCTS *. 2. Sale In Countries Where *. For all GROUP * PRODUCTS sold by CIL in any country where the *. ENZO's supply price to CIL shall be an amount equal to * of the SELLING PRICE of such GROUP * PRODUCTS: *. 3. Sale In Countries When *. At such time as *. ENZO's supply price for all GROUP * PRODUCTS sold by CIL shall be an amount equal to * of the SELLING PRICE of such GROUP * * PRODUCTS * worldwide, *. - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 10 D. GROUP * PRODUCTS: 1. CIL shall * on sales of GROUP * PRODUCTS. 2. Nothing contained in this Section IV D, shall be construed as a waiver of any rights that ENZO may have against any third party with regard to its PATENTS. In the event ENZO enters into any agreement with any supplier of a GROUP * PRODUCT, ENZO will *. E. GROUP * PRODUCTS: 1. Sale In Countries Where *. For all GROUP * PRODUCTS which are sold by CIL in any country where the *. ENZO's supply price to CIL for such GROUP * PRODUCTS shall be an amount equal to * of the SELLING PRICE of such GROUP * PRODUCTS, *. 2. Sale In Countries Where *. For all GROUP * PRODUCTS, which are sold by CIL in any country where the *, ENZO's supply price to CIL shall be an amount equal to * of the SELLING PRICE of such GROUP * PRODUCTS, *. 3. Sale In Countries When *. At such time as *, ENZO's supply price for all GROUP * PRODUCTS sold by CIL shall be an amount equal to * of the SELLING PRICE of such GROUP * * PRODUCTS worldwide, *. F. GROUP * PRODUCTS: 1. Sale In Countries Where *. For all GROUP * PRODUCTS which are sold by CIL in any country where the *, ENZO's supply price to CIL for such GROUP * PRODUCTS shall be an amount equal to * of the SELLING PRICE of such GROUP * PRODUCTS, *. - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 11 2. Sale In Countries Where *. For all GROUP * PRODUCTS, which are sold by CIL in any country where the *, ENZO's supply price to CIL shall be an amount equal to * of the SELLING PRICE of such GROUP * PRODUCTS, *. 3. Sale In Countries When *. At such time as *, ENZO's supply price for all GROUP * PRODUCTS sold by CIL shall be an amount equal to * of the SELLING PRICE of such GROUP * * PRODUCTS worldwide, *. G. GROUP * PRODUCTS. 1. For GROUP * PRODUCTS, ENZO's supply price to CIL shall be an amount equal to * of the SELLING PRICE of such products. H. GROUP * PRODUCTS. For GROUP * PRODUCTS, ENZO's supply price to CIL shall be an amount equal to * of the SELLING PRICE of such products. I. Manufacturing, Use and Sale of Products Prior to This Agreement. CIL shall pay to ENZO the amount of * (U.S. dollars) for manufacture, use and sale, by CIL and CIL customers, of all PRODUCTS that have claims that would be infringed by any PATENTS, wherein the manufacture, use or sale occurred prior to this Agreement. This payment of * made by CIL to ENZO shall constitute full payment for manufacture, use and sale of all PRODUCTS manufactured, used or sold by CIL or CIL customers prior to this Agreement. This payment of * shall also release CIL and customers of CIL of any liability for the manufacture, use, and sale of any PRODUCTS manufactured, used or sold prior to this Agreement. J. Method for Determining and Making Payment. CIL shall pay ENZO according to the method set forth *. * describes the method for estimating * Unit Prices based upon *. CIL agrees to permit its books and records to be examined by ENZO from time to time to the extent necessary, but not more often than twice per year to verify receipts. Such examination is to - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 12 be made by ENZO, at ENZO's expense, except in the event that the results of the audit reveal a discrepancy in ENZO's favor of five (5%) or more, then the audit fees shall be paid by CIL. K. *. V. Forecasts and Purchase Orders A. Forecasts. During the mid-month of each calendar quarter after the effective date of this Agreement, CIL shall provide to ENZO a * forecast covering its estimated requirements for GROUP * PRODUCTS, *, GROUP * PRODUCTS, GROUP * PRODUCTS and other material manufactured by ENZO under this Agreement for the succeeding two (2) calendar quarters. Such forecast shall be made for planning purposes only and is not a purchase commitment. B. Purchase Orders. Purchase orders will be issued to ENZO by CIL at least sixty (60) days in advance of the requested delivery of such products. Each purchase order will indicate specific delivery and/or shipping requirements. ENZO shall meet such requirements provided that the quantities of products ordered are within * of the forecast for such quarter. If a purchase order is for a quantity in excess of * of the forecast amount for such quarter, the parties agree to negotiate in good faith to agree upon delivery and/or shipping requirements that are reasonable under the circumstances. C. Cancellation of Purchase Orders. Purchase orders may be cancelled by CIL no later than * after issuance. If CIL desires to cancel an order later than * after the issuance of such purchase order, the parties agree to negotiate in good faith to determine a reasonable resolution of such order. In the event CIL cancels a purchase order to ENZO under this paragraph, CIL will reimburse ENZO for materials specifically purchased to fill such order, as well as manufacturing costs directly attributable to such fulfillment, incurred prior to the receipt of notice of cancellation. D. Conflicting Purchase Order or Order Acceptance. Each purchase order shall be governed by the relevant provisions of this agreement (unless otherwise expressly provided in the individual purchase order and confirmed in writing by ENZO), and no conflicting term or condition which may appear in the preprinted matter in CIL's purchase order form or ENZO's confirmation or acceptance form shall be binding on either party - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 13 or apply to any transaction under this agreement unless agreed to by both parties in writing. E. Shipping Terms. All PRODUCTS, ordered by CIL shall be shipped by ENZO pursuant to CIL's written instructions, FOB Farmingdale, New York 11735. VI. Quality Control and Product Acceptance A. GROUP * PRODUCTS and GROUP * PRODUCTS. ENZO shall provide CIL with GROUP * PRODUCT and GROUP * PRODUCT specifications and package inserts within thirty (30) days of the execution of this Agreement and promptly after the introduction of any new GROUP * PRODUCT or GROUP * PRODUCT. *. B. All Other Products. Before manufacturing any PRODUCTS or RAW MATERIALS other than GROUP * PRODUCTS or GROUP * PRODUCTS for CIL, ENZO shall provide to CIL (under an appropriate confidentiality and non-use agreement, if ENZO so requests) a detailed description of the manufacturing process ENZO will use in such manufacture. *. C. Quality Testing. CIL shall have the right to test PRODUCTS and * for the conformance with the specifications upon receipt of such PRODUCTS, and agrees to notify ENZO of acceptance or non-acceptance based on such conformity with the specifications within * other PRODUCTS. Acceptance shall not be unreasonably withheld. D. Disagreement on Quality. If the parties disagree as to whether a * PRODUCT shipment meets specifications, the parties shall use their best efforts to resolve such disagreement expeditiously. If the parties are unable to resolve the disagreement, ENZO and CIL shall jointly evaluate the disputed product at CIL's facility in Penzberg, Germany or such other site as CIL deems appropriate. In such event, CIL shall pay the reasonable travel expenses of ENZO personnel to Penzberg or such other site. E. Storage and Stock Rotation. 1. ENZO and CIL agree to share all necessary storage and stock rotation practices which apply to the PRODUCTS. - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 14 2. CIL further agrees to take diligent care not to ship PRODUCTS which have expired, been damaged in storage and handling, or improperly stored. CIL will be responsible for damage or liability arising from its shipment of expired, damaged or improperly stored PRODUCTS. F. Product Complaint File. CIL agrees to allow ENZO, at ENZO's expense, access to its Product Complaint File on a periodic basis, not to exceed once every six months (under an appropriate confidentiality and non-use agreement, if CIL so requests). If, in ENZO's opinion, an undue number of complaints exist concerning the quality of an individual product, then ENZO and CIL shall meet and discuss the means of ensuring improved quality. VII. Manufacturing By CIL A. Manufacturing Transition Period. At the time of the commencement of this Agreement for GROUP * PRODUCTS or *. ENZO may request that CIL manufacture such materials for a limited amount of time until ENZO can initiate manufacturing activities. *. B. Quality/Capacity Issues. If, after the MANUFACTURING TRANSITION PERIOD with respect to any GROUP * PRODUCTS or *, ENZO becomes unable to supply CIL's supply needs, *, CIL may manufacture the affected PRODUCT(S) or * for ENZO, and purchase such products at the prices set forth in Section IV with respect to such products, until ENZO * will be able to meet CIL's requirements. C. FORCE MAJEURE. If ENZO becomes unable to supply CIL's product needs as a result of FORCE MAJEURE, CIL may manufacture the affected PRODUCTS for ENZO, and the purchase of such products at the prices set forth in Section IV with respect to such products, until ENZO is able to resume supplying CIL. VIII. Sales Promotions and Technical Service CIL shall exert on its own account, its best efforts in sales promotions and advertisement of PRODUCTS such as direct mailings, catalog listings and promotions, except in the case where CIL determines that it no longer wishes to sell PRODUCTS. ENZO agrees to provide CIL with such technical support for the PRODUCTS * as CIL may reasonably request. ENZO will provide CIL with one copy of any literature, technical data, specifications and the like describing the PRODUCTS * - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 15 as they are currently produced for the assistance of CIL in the preparation of advertising material and catalogs for existing and new products. CIL will list GROUP * PRODUCTS and GROUP * PRODUCTS in its next available or published product catalog(s) or in a supplemental catalog in which these PRODUCTS can be listed after the effective date of this agreement. CIL will modify the listings of PRODUCTS in its product catalog(s) as soon as reasonably possible to conform with the list of such PRODUCTS. CIL will modify the listings of GROUP * PRODUCTS and GROUP * PRODUCTS in its product catalog(s), or a supplemental catalog, at CIL's discretion, as soon as reasonably possible after any corresponding modification of the PRODUCTS in the EXHIBITS of this Agreement. IX. Product Labels Labels on the outside of PRODUCTS (excluding GROUP * PRODUCTS) including vials and boxes and package inserts shall contain the following wording: "Sold through an arrangement with Enzo Diagnostics, Inc." X. Warranty A. GROUP * PRODUCTS and GROUP * PRODUCTS. ENZO warrants that the GROUP * PRODUCTS and GROUP * PRODUCTS sold by ENZO to CIL shall met the specifications agreed to by CIL and described in ENZO's PRODUCT or package inserts. ENZO's sole obligation under this warranty is to promptly replace the GROUP * PRODUCTS and GROUP * PRODUCTS without cost or expense therefor to CIL. THIS WARRANTY IS EXPRESSLY IN LIEU OF ANY OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING THE WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. B. ALL OTHER PRODUCTS *. ENZO warrants that the PRODUCTS * sold by ENZO to CIL shall meet the specifications agreed to by CIL. ENZO's sole obligation under this warranty is to promptly replace the PRODUCTS * without cost or expense therefor to CIL. THIS WARRANTY IS EXPRESSLY IN LIEU OF ANY OTHER WARRANTIES OR LIABILITIES, EXPRESS OR IMPLIED, INCLUDING THE WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. 1. PRODUCT REPLACEMENT. Notwithstanding the foregoing warranties, ENZO agrees to replace, at no cost to CIL, - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 16 any PRODUCTS * manufactured by ENZO upon the request of any CIL customer so long as it remains CIL's policy to do the same with respect to its own products. Notwithstanding the foregoing, ENZO shall not be required to replace PRODUCTS * replaced as a result of shipping or handling errors by CIL. XI. Relationship Between ENZO and CIL Nothing herein creates or constitutes a partnership or an agreement of agency between the parties with respect to any activities whatsoever. The relationship between ENZO and CIL shall be that of seller and buyer, and neither party shall conclude any contract or agreement or make any commitment, representation or warranty which binds the other party or otherwise act in the name of or on behalf of the other party. Furthermore, this agreement is not a license or an implied license of ENZO's PATENTS. ENZO maintains full rights under its PATENTS. The foregoing statements are paramount to this Agreement. XII. FORCE MAJEURE Subject to Section VII D, each of the parties shall be excused from the performance of its obligations under this Agreement in the event performance is prevented by FORCE MAJEURE. The party incurring a FORCE MAJEURE condition shall notify the other that such condition exists within five (5) days of the time such party learns of such condition. Should such FORCE MAJEURE condition continue for forty-five (45) days after such notice, the non-affected party may, at its option, terminate this Agreement. At such termination all designations that are the subject of this Agreement are revoked with the exception of the Confidentiality and Non Use Agreement. If ENZO's capacity to manufacture and deliver PRODUCTS * under this agreement is diminished by circumstances beyond its control, then ENZO shall employ its existing capacity to supply CIL in accordance with this agreement in a manner fair and equitable to all its customers. XIII. Confidentiality and Non-Disclosure ENZO and CIL agree that any confidential information relating to ENZO's PATENTS and/or ENZO's or CIL's proprietary technical information and/or ENZO's or CIL's business development in the area of the PRODUCTS will not be disclosed while this Agreement is in effect to third parties except with the prior written consent of the non requesting party or if the confidential information can be shown by documentary evidence that it was: - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 17 (i) in the possession of the receiving party prior to disclosure thereof by the other party; (ii) is or through no fault of the receiving party becomes part of the public knowledge or literature; (iii) lawfully becomes available without limitation by its disclosure from an outside source; or (iv) the receiving party can prove it was developed independently. XIV. Term and Termination A. Term. This Agreement shall become effective as of the date first above written and shall continue *. B. Termination for Breach. In the event either party breaches a material provision of this Agreement, the non- breaching party may, after giving the breaching party written notice of such breach and ninety (90) days in which to cure such breach, terminate this Agreement upon written notice to the non- breaching party. Either party may terminate this Agreement forthwith by giving written notice to the other party in the event the other party shall: (i) Become insolvent, admit its inability to pay its debts as they mature, or has a petition in bankruptcy filed by or against it or a receiver appointed for all or substantially all of its business or assets; or (ii) Make a general assignment of all or substantially all of its business or assets for the benefit of its creditors; or (iii) Cease to carry on its business in the ordinary course. C. Termination. *. D. Assignment. This Agreement may not be assigned or otherwise transferred by either party (except to an affiliate of such party) without the written consent of the non-assigning party. Any attempted assignment or transfer without such consent shall be void. - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 18 XV. Use of Products Unless otherwise specified in writing and agreed to by both parties, all PRODUCTS are for research use only and are not intended for or to be used for diagnostic or therapeutic use. XVI. Indemnification and Insurance A. Indemnification. ENZO agrees to and shall defend, indemnify and hold CIL, its employees, agents and officers harmless, including attorneys' fees, from and against any suit or proceeding alleging death or injury to persons or property and any liability, damages or penalties awarded therein and resulting from or arising from ENZO's negligence in the manufacture, storage or transport of PRODUCTS * prior to their receipt by CIL. CIL agrees to and shall defend, indemnify and hold ENZO, its employees, agents and officers harmless, including attorneys fees, from and against any suit or proceeding alleging death or injury to persons or property and any liability, damages or penalties awarded therein and resulting from or arising from CIL's negligence in handling, storage or transport of PRODUCTS * after receipt thereof from ENZO. B. Insurance Each party shall at all times during the term of this Agreement purchase and maintain comprehensive general liability insurance including products liability, contractual liability and broad form property damage with combined single limits for bodily injury and/or death and property damage of $5,000,000 for any one occurrence. Such insurance shall also require thirty (30) days' prior written notice of cancellation or material change in coverage. XVII. Third Party Patents. ENZO agrees to and shall defend, indemnify and hold CIL and its customers harmless, including attorneys fees, from and against any suit, proceeding, claim or loss and any damages or penalties awarded therein so far as such suit or proceeding is based upon an assertion that the use or sale of PRODUCTS * are, in such suit or proceeding, held to infringe and their further use or sale is enjoined. ENZO shall, at its sole cost and expense, either (i) procure for CIL and its customers the right to continue using and selling such PRODUCTS *, (ii) replace such PRODUCTS * with non- infringing equivalents, (iii) modify such PRODUCTS * so that they become non-infringing, or (iv) discontinue the use or sale of such PRODUCTS * if no alternative recourse is possible. - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 19 XVIII. Patent Infringement. Infringement Proceedings. If, at any time after the first anniversary of the issuance of * and during the term of this Agreement, one or more of the PATENTS is or appears to be infringed by a third party in connection with the sale of a product in competition with the PRODUCTS described herein, the party having knowledge thereof shall notify the other and the parties shall consult to consider what, if any, action should be taken. The decision regarding institution of proceedings to abate the infringement shall be at ENZO's discretion, and in the event ENZO elects to initiate legal proceedings, CIL shall give ENZO all reasonable assistance in such proceedings. In the event ENZO shall elect not to institute infringement proceedings, and if CIL can show, by market research performed by a researcher mutually acceptable to both parties, that infringing sales exceed * of the market for a particular PRODUCT, the payment to ENZO for such PRODUCT pursuant to this Agreement shall be reduced by * until ENZO commences legal action against such infringer or settlement has been reached between such infringer and ENZO. XIX. Invoicing and Payment. Invoices by each party to the other for work performed and product supplied hereunder shall be issued at the end of each calendar quarter. The net amount due shall be paid within thirty (30) days of the end of each quarter. XX. Miscellaneous A. Waiver. A waiver of any provision of this Agreement must be in writing. Waiver by ENZO or CIL of any provision of this agreement shall not be deemed a waiver of future compliance therewith and such provision as well as all other provisions hereunder shall remain in full force and effect. B. Governing Law. This Agreement is made under and shall be governed by the laws of the State of New York. C. Severability. In the event that any clause of this Agreement shall be found to be void or unenforceable, such finding shall not be construed to render any other clause of this Agreement either void or unenforceable, and all other clauses shall remain in full force and effect. D. Headings. All headings of the sections and paragraphs of this Agreement are inserted for convenience only and shall not affect any construction or interpretation of this Agreement. - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 20 E. Notices. All notices to be given with respect to this Agreement shall be in writing and shall be deemed effectively given: (a) when delivered personally; (b) seven calendar days after being deposited in the mail, registered or certified mail, return receipt requested addressed as set forth below, or to such other address that either party designates by written notice to the other party: ENZO: Enzo Diagnostics, Inc. 60 Executive Boulevard Farmingdale, NY 11735 Attention: Mr. Shahram K. Rabbani Executive Vice President and Chief Operating Officer Fax No.: 1 (516) 755-5509 Phone No.: 1 (516) 755-5500 CIL: Boehringer Mannheim Corporation 9115 Hague Road Indianapolis, IN 46220 Attn.: General Manager-Biochemicals North America Fax No.: 1 (317) 576-7317 Phone No.: 1 (317) 845-2000 F. Entirety. This Agreement together with the Appendix and Exhibits attached hereto embodies the entire understanding between CIL and ENZO, and there are no contracts or prior drafts of the agreement, understandings, conditions, warranties or representations, oral or written, express or implied, with reference to the subject matter hereof which are not merged herein. No modification hereto shall be of any force or effect unless (1) reduced to writing and signed by both parties hereto, and (2) expressly referred to as being modifications of this agreement. G. Mutuality. This Agreement has been drafted after considerable negotiation by the parties and on the basis of mutual understanding; neither party shall be prejudiced as being the drafter thereof. H. Public Announcements. Any press release or other public announcement relating to this Agreement shall be approved by both parties prior to its release. 21 IN WITNESS WHEREOF, the parties have cause this Agreement to be executed by their duly authorized representatives. ENZO BIOCHEM, INC. CORANGE INTERNATIONAL LIMITED By: /s/ Dean Lee Engelhardt By: /s/ William Petrovic ----------------------------- ---------------------------------- Dean Lee Engelhardt, Ph.D William Petrovic Senior Vice President Treasurer April 25, 1994 April 25, 1994 ----------------------------- ---------------------------------- DATE DATE 22 PRODUCT CLASSIFICATION Seq # BM Group Name 396 * Biotin-16dUTP, sale 669 * DNA mol wt mk VI, padigxgn 1671 * DNA MWM II BIOTIN LABELED 1673 * DNA MWM III BIOTIN LABELED 1675 * DNA MWM VI BIOTIN LABELED 1717 * RNA Marker III-DIG label 1721 * Fluorescein-12-eeUTP 1778 * Biotin 16-ddUTP 1779 * Fluorescein-12-ddUTP 1780 * Fluorescein-12-UTP 1782 * Hydroxy-cuomarin-6-dUTP 1784 * Biotin-11-UTP 1809 * Dig DNA MWM VIII 1903 * DNA Mol Wt XI, dig-labeled 1904 * DNA Mol Wt XII, dig label 1975 * Rhod-6-dUTP 5002 * RNA MWM I DIGOXIGENIN LABEL * 5003 * RNA MWM I DIG-LABEL * 5004 * Dig-16-dATP 589 * DIGOXIGENIN 11-DUTP * (HAZ) 590 * Digoxigenin-11-UTP 1662 * DIG RNA LABELING _____________ 1663 * DIG-11-ddUTP 1974 * AMCA-8-dUTP 5005 * Dig-11-dUTP 5012 * Dig-11-dUTP, alk label 5013 * Dig-11-dUTP, alk label 115 * Anti-digoxigenin-(Fab)-AP 114 * Anti-digoxigenin-(Fab)-POD 113 * Anti-digoxigenin-(Fab)-flu 116 * Anti-digoxigenin-(Fab)- ___ 1652 * ANTI-DIG (MONO) 1765 * Anti-Fluor-AP, Fab - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 1 Seq # BM Group Name 112 * Anti-digoxigenin (Fab) 410 * Blocking Reagent, hybrid 672 * DNA polymerase I 673 * DNA pol I, enconuc-free 674 * DNA pol I, klenow frag 1131 * Nick translation Kit 1178 * Nylon membranes, positive 1356 * Primer, Random pd(N)G 1397 * Random Primed Labeling Kit 1521 * RNA polymerase, E. coli 1522 * SPG RNA polymerase 1523 * RNA polymerase, 13 1524 * RNA polymerase, 17 1548 * Streptavicin-AP, NA det 1574 * Terminal transferase 1592 * Transcription Kit, SP6/T7 1653 * _________________________________________ 1672 * DNA MWM II DIG LABELED * 1674 * DNA MWM III DIG LABELED * 1883 * HEXANUCLEOTIDE MIXTURE IOX 1886 * Lumi-Phos 530 1766 * Anti-FluorPOD,Fab 1785 * Lumigen PPD 1799 * [Fluorescein]-unconj(Mab) 1915 * anti-dig gold conj. 1978 * [dig]-AMCA, Feb Frag 5019 * SPG primer, dig 5020 * T3 primer, dig 5021 * T7 primer, dig 5022 * lambda ___________ rev.primer, dig 5023 * lambda ___________ primer, dig 5024 * DIG Wash and Block buffer set 658 * DNA 3-End Labeling Kit 660 * Genius 2 DNA Labeling Kit 661 * Genius 1 DNA Label/Det Kit 1168 * Genius 3 NA Det. Kit 1661 * DIG DNA LABELING MIXTURE 16__ * GENIUS 5 OLIGO LABEL KIT 1755 * Genius 6 Oligo ___________ Kit 1768 * Genius 7 Lumin. Det. Kit - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 2 Seq # BM Group Name 1803 * DIG DNA Sequencing Kit 1890 * Genius 4 RNA Labeling Kit 1976 * Genius 5 End Labeling Set 5000 * MULTI-COLOR DNA DETECTION SET 5001 * ET-Assay Kit * ____________________________________________ 5028 * Biotin High Prime 5027 * Fluor High Prime 1951 * Actin RNA probe-DIG labeled 5006 * HUMAN CHROMOSOME,ALL,PROB,DIG * 5007 * Human Chr. Y, dig 5008 * Human Chr Y, flu 5009 * Human chr. 1, dig 5010 * Human chr. 1, flu 5011 * Human chr. ______, flu 5014 * PCR DIG labelling mix 5015 * DIG labeled control DNA 5016 * DIG labeled control RNA 5017 * DIG labeled control oligo 5018 * S. cerevisiae chr. probe, dig - ---------- * The information omitted is confidential and has been filed separately with the Commission pursuant to Rule 406. 3 Enzo Biochem, Inc. ("Enzo") and Boehringer Mannheim Corporation ("BMC") hereby acknowledge that they are currently negotiating in good faith to reach an agreement on certain distribution and supply arrangements relating to products covered by patents owned by Enzo. The parties had previously agreed that negotiations would be concluded by April 1, 1994. In light of the current progress of negotiations, the parties now agree to use their best efforts to conclude negotiations by April 15, 1994. Dated: March 24, 1994 ENZO BIOCHEM, INC. BOEHRINGER MANNHEIM CORPORATION By: /s/ Dean Engelhardt By: /s/ Dennert O. Ware ---------------------------- --------------------------------- Dean Engelhardt, Ph.D. Dennert O. Ware Senior Vice President Senior Vice President and General Manager, Biochemicals North America 4 ENZO DIAGNOSTICS, INC.-BOEHRINGER MANNHEIM GMBH DISTRIBUTORSHIP AGREEMENT EXHIBIT A - AMENDMENT A DATED AUGUST 19, 1994 ENZO BIOCHEM, INC. UNITED STATES ISSUED PATENTS ================================================================================ Grant of Patent Patent Number Title/Inventor Published - -------------------------------------------------------------------------------- 4,687,732 Visualization Polymers and Their Aug. 18. 1987 Application to Diagnostic Medicine David C. Ward et al. - -------------------------------------------------------------------------------- 4,707,352 Method of Radioactively Labeling Nov. 17. 1987 Diagnostic and Therapeutic Agents Containing a Chelating Group Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 4,707,440 Nucleic Acid Hybridization Assay and Nov. 17, 1987 Detectable Molecules Useful in Such Assay Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 4,711,955 Modified Nucleotides and Methods of Dec. 8. 1987 Preparing and Using Same David C. Ward et al. - -------------------------------------------------------------------------------- 4,746,604 Specific Binding Assays Utilizing A May 24, 1988 Viable Cell as a Label Solomon Mowshowitz - -------------------------------------------------------------------------------- 4,755,458 Composition and Method for the Jul. 5, 1988 Detection of the Presence of a Polynucleotide Sequence of Interest Elazar Rabbani et al. - -------------------------------------------------------------------------------- 5,328,824 Methods of Using Labeled Jul. 12, 1994 Nucleotides David C. Ward - -------------------------------------------------------------------------------- 5,241,060 Base Moiety-Labeled Detectable Aug. 31, 1993 Nucleotide Dean Englehardt et al. - -------------------------------------------------------------------------------- 5,260,433 Saccharide Specific Binding System Nov. 9, 1993 Labeled Nucleotides Dean Englehardt et al. - -------------------------------------------------------------------------------- 1 ================================================================================ Grant of Patent Patent Number Title/Inventor Published - -------------------------------------------------------------------------------- 4,767,609 Therapeutic and Diagnostic Processes Aug. 30, 1988 Using Isotope Transfer to Chelator- Target Recognition Molecule Conjugate Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 4,772,548 Radiosotopicassay Using Isotope Sept. 20, 1988 Transfer to Chelator-Target Recognition Molecule Conjugate Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 4,843,122 Detectable Molecules, Method of June 27, 1989 Preparation and Use Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 4,849,208 Detectable Molecules, Method of Jul. 18, 1989 Preparation and Use Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 4,849,505 Detectable Molecules, Method of Jul. 18, 1989 Preparation and Use Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 4,868,103 Analyte Detection by Means of Energy Sep. 19, 1989 Transfer Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 4,889,798 Hetarologous System for the Detection Dec. 26, 1989 of Chemically Labeled DNA and other Biological Materials Providing a Receptor or Target Moiety Therson Elazar Rabbani - -------------------------------------------------------------------------------- 4,894,325 Hybridization Method for the Detection Jan. 16, 1990 of Genetic material Dean Englehardt et al. - -------------------------------------------------------------------------------- 4,900,669 Necleotide Sequence Composition and Feb. 13, 1990 Method for Detection for Neissera Gonorrhoeae and Method for Screening for a Nucleotide Sequence that is Specific for a Genetically Distinct Group Andrew Lo et al. - -------------------------------------------------------------------------------- 4,943,523 Detectable Molecules, Method of Jul. 24, 1980 Preparation and Use Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 2 ================================================================================ Grant of Patent Patent Number Title/Inventor Published - -------------------------------------------------------------------------------- 4,952,665 Detectable Molecules, Method of Aug. 28, 1990 Preparation and Use Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 4,987,065 In Vivo Labelling of Polynucleotide Sequences Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 4,994,373 Method and Structures Employing Feb. 19, 1991 Chemically-Labelled Polynucleotide Probes Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 5,002,885 Detectable Molecules, Method of Mar. 26, 1991 Preparation and Use Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 5,013,831 Detectable Molecules, Method of May 7, 1991 Preparation and Use Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 5,024,933 Method and Kit for Sample Adherence to June 18, 1991 Test Substrate Huey-Lang Yang et al. - -------------------------------------------------------------------------------- 5,061,076 Time-Resolved Fluorometer Oct. 29, 1991 Ian Hurley - -------------------------------------------------------------------------------- 5,082,830 End Labeled Nucleotide Probe Jan. 21, 1992 Christine L. Brakel et al. - -------------------------------------------------------------------------------- 5,175,269 Compound and Detectable Molecules Dec. 29, 1992 Having An Oligo-or Polynucleotide with Modifiable Reactive Group Jannis G. Stavrianopoulos - -------------------------------------------------------------------------------- 5,288,609 Capture Sandwich Hybridization Method Feb. 22, 1994 and Composition Dean Engelhardt et al. - -------------------------------------------------------------------------------- 5,328,824 Methods of using Labeled Neucleotides Jul. 12, 1994 ================================================================================ 3