EXHIBIT 10.22
*** TEXT OMITTED AND FILED SEPARATELY
CONFIDENTIAL TREATMENT REQUESTED
UNDER 17 C.F.R. SECTIONS 200.80(b)(4)
200.83 AND 230.406.
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement") dated as of June 11, 1999
(the "Effective Date") is made by and between ELITRA PHARMACEUTICALS, INC., a
corporation organized under the laws of the State of California (the
"Company"), and SAN DIEGO STATE UNIVERSITY FOUNDATION, a California nonprofit
public benefit corporation (the "Foundation").
RECITALS
WHEREAS, the Foundation possesses chitobiase, a proprietary enzyme
useful for the discovery and development of chemical compounds;
WHEREAS, the Company is engaged in the discovery, development and
commercialization of chemical compounds for therapeutic applications; and
WHEREAS, the Foundation wishes to grant to the Company, and the
Company wishes to obtain from the Foundation, an exclusive license to such
enzyme, including patent rights and know-how related thereto, on the terms
and subject to the conditions set forth herein.
AGREEMENT
NOW, THEREFORE, in consideration of the mutual covenants and
promises hereinafter set forth, the parties hereby agree as follows:
ARTICLE 1
DEFINITIONS
1.1 "AFFILIATE" means any corporation or other entity which
controls, is controlled by, or is under common control with, a party to this
Agreement. A corporation or other entity shall be regarded as in control of
another corporation or entity if it owns or directly or indirectly controls
more than 50% of the voting stock or other ownership interest of the other
corporation or entity, or if it possesses, directly or indirectly, the power
to direct or cause the direction of the management and policies of the
corporation or other entity.
1.2 "CONFIDENTIAL INFORMATION" means any confidential or
proprietary information of a party, including information relating to the
Licensed Technology and any information relating to any compound, research
project, work in process, future development, scientific, engineering,
manufacturing, marketing, business plan, financial or personnel matter
relating to such party, its present or future products, sales, suppliers,
customers, employees, investors or business, whether in oral, written,
graphic or electronic form. Notwithstanding the foregoing, Confidential
Information shall not include any information which the receiving party can
prove by competent written evidence:
(a) is now, or hereafter becomes, through no act or failure
to act on the part of the receiving party, generally known or available;
(b) is known by the receiving party at the time of
receiving such information, as evidenced by its records;
(c) is hereafter furnished to the receiving party by a
Third Party, as a matter of right and without restriction on disclosure;
(d) is independently developed by the receiving party
without the aid, application or use of information of the other party; or
(e) is the subject of a written permission to disclose
provided by the disclosing party.
1.3 "CONTROL" means possession of the ability to grant a license or
sublicense as provided for herein without violating the terms of any
agreement or other arrangement with any Third Party.
1.4 "ENZYME" means the chitobiase enzyme expressed as a cytoplasmic
protein for use as a reporter to measure gene transcription.
1.5 "FIRST COMMERCIAL SALE" means the first sale of the Enzyme for
use in research in a given country. Sale to an Affiliate or sublicensee shall
not constitute a First Commercial Sale unless the Affiliate or Sublicensee is
the end user of the Enzyme.
1.6 "KNOW-HOW" means all know-how, trade secrets, inventions, data,
processes, techniques, procedures, compositions, devices, methods, formulas,
protocols and information, whether or not patentable, under the Control of
the Foundation, which are not covered by the Patent Rights, but which are
necessary or appropriate for use of the Enzyme, and which are not generally
publicly known, including, without limitation, all chemical, biochemical,
toxicological and scientific research information.
1.7 "LICENSED TECHNOLOGY" means the Patent Rights and the Know-How.
1.8 "NET SALES" means the gross amounts invoiced for sales of the
Enzyme, or any analogue or derivative thereof, by the Company and its
Affiliates to a Third Party, less (a) discounts actually granted, (b) credits
or allowances actually granted upon claims, damaged goods, rejections or
returns of the Enzyme, including recalls, (c) freight, postage, shipping and
insurance charges actually allowed or paid for delivery of the Enzyme, to the
extent billed (with the understanding that the shipping costs are normally
paid by the buyer), and (d) taxes, duties or other governmental charges
(other than income taxes) levied on, absorbed or otherwise imposed on sales
of the Enzyme. In the event that a product sold by the Company or its
Affiliates is comprised in part of the Enzyme and in part of one or more
other components (E.G. a substrate), Net Sales shall equal the fair market
value of the Enzyme.
1.9 "PATENT RIGHTS" means all rights under any patent or patent
application related to the Enzyme which is under the Control of the
Foundation and any and all patents issuing therefrom (including utility,
model and design patents and certificates of invention), together with any
and all substitutions, extensions (including supplemental protection
certificates),
2.
registrations, confirmations, reissues, divisionals, continuations,
continuations-in-part, re-examinations, renewals and foreign counterparts of
the aforementioned.
1.10 "SUBLICENSEE" means any Third Party to whom the Company grants
a sublicense of its rights under Section 2.1.
1.11 "TERM" shall have the meaning set forth in Section 7.1.
1.12 "THIRD PARTY" means any person or entity other than the Company
or the Foundation or an Affiliate of the Company or the Foundation.
ARTICLE 2
GRANT OF LICENSE
2.1 LICENSE GRANT. Subject to the terms and conditions of this
Agreement, the Foundation hereby grants to the Company an exclusive,
worldwide license, including the right to grant sublicenses through multiple
tiers of sublicense, under the Licensed Technology to develop, make, have
made, use, offer for sale, sell and import the Enzyme or any product which is
identified, discovered or developed using the Enzyme.
2.2 SUBLICENSES. The Company shall notify any Sublicensee hereunder
of all rights and obligations of the Company under this Agreement which are
sublicensed to such Sublicensee. The Company shall notify the Foundation of
any sublicense to the Licensed Technology granted hereunder.
2.3 RESERVATION OF RIGHTS. Notwithstanding the license grant set
forth in Section 2.1, the United States government reserves all statutory
rights under 35 U.S.C. Sections 201-211, and the regulations promulgated
thereunder, with respect to Licensed Technology wholly or partially funded by
the United States government.
ARTICLE 3
ROYALTY PAYMENTS; RECORDS; AUDITS
3.1 ROYALTIES.
(a) The Company will pay to the Foundation a royalty equal
to [... *** ...]% of Net Sales.
(b) The Company will pay to the Foundation a royalty equal
to [... *** ...]% of amounts received by the Company from any Sublicensee for
sales by such Sublicensee of the Enzyme for use in research.
(c) Notwithstanding the foregoing, no royalty or other
payment shall be due to the Foundation (i) for sales of any product which is
identified, discovered or developed using the Enzyme, or (ii) for use of the
Enzyme by the Company or any of its Affiliates or any Third Party in
collaboration with the Company or any of its Affiliates for their own
research purposes, including, without limitation, use of the Enzyme for drug
discovery.
*CONFIDENTIAL TREATMENT REQUESTED
3.
3.2 PAYMENT; REPORTS. Royalty payments shall be calculated and
reported for each calendar quarter. All royalty payments due to the
Foundation under this Agreement shall be paid within 60 days of the end of
each calendar quarter, unless otherwise specifically provided herein. Each
payment of royalties shall be accompanied by a report in sufficient detail to
permit confirmation of the accuracy of the royalty payment made, including,
without limitation, Net Sales, the royalties payable in United States
dollars, the method used to calculate the royalty and the exchange rates used.
3.3 EXCHANGE RATE; MANNER AND PLACE OF PAYMENT. All payments due
hereunder shall be payable in United States dollars. With respect to each
quarter, for countries other than the United States, whenever conversion of
payments from any foreign currency shall be required, such conversion shall
be made at the rate of exchange reported in THE WALL STREET JOURNAL on the
last business day of the applicable reporting period. All payments owed under
this Agreement shall be made by wire transfer, unless otherwise specified in
writing by the Foundation.
3.4 RECORDS AND AUDITS. During the Term and for a period of five
years thereafter, the Company shall keep complete and accurate records in
sufficient detail to permit the Foundation to confirm the accuracy of all
payments due hereunder. The Foundation shall have the right to cause an
independent, certified public accountant reasonably acceptable to the Company
to audit such records to confirm royalty payments for the preceding year.
Such audits may be exercised during normal business hours no more than once
in any 12-month period upon at least 30 working days' prior written notice to
the Company. The Foundation shall bear the full cost of such audit unless
such audit discloses an underpayment by more than 5% of the amount due under
this Agreement. In such case, the Company shall bear the full cost of such
audit.
3.5 TAXES. All taxes levied on account of the royalty payments
accruing to the Foundation under this Agreement shall be paid by the
Foundation for its own account, including taxes levied thereon as income to
the Foundation. If provision is made in law or regulation for withholding,
such tax shall be deducted from the royalty payments made by the Company to
the proper taxing authority and a receipt of payment of the tax secured and
promptly delivered to the Foundation. Each party agrees to assist the other
party in claiming exemption from such deductions or withholdings under any
double taxation or similar agreement or treaty from time to time in force.
3.6 PROHIBITED PAYMENTS. Notwithstanding any other provision of this
Agreement, if the Company is prevented from paying any such royalty by virtue
of the statutes, laws, codes or governmental regulations of the country from
which the payment is to be made, then such royalty may be paid by depositing
funds in the currency in which accrued to the Foundation's account in a bank
acceptable to the Foundation in the country whose currency is involved.
ARTICLE 4
CONFIDENTIALITY
During the Term and for a period of five years thereafter, each
party shall maintain all Confidential Information of the other party as
confidential and shall not disclose any Confidential Information of the other
party to any Third Party or use any Confidential Information of the other
party for any purpose, except (a) as expressly authorized by this
4.
Agreement, (b) to file and prosecute patent applications, (c) as required by
law, rule, regulation or court order (provided that the disclosing party
shall use commercially reasonable efforts to obtain confidential treatment of
any such Confidential Information required to be disclosed and shall promptly
notify the other party of any law, rule, regulation or court order requiring
disclosure of such Confidential Information as soon as it becomes known to
the disclosing party and shall refrain from objecting or opposing reasonable
and lawful efforts of the disclosing party to prevent disclosure), or (d) to
its Affiliates, sublicensees, employees, agents, consultants and other
representatives, as well as to potential collaborators or sublicensees, so
long as such persons are under an obligation of confidentiality no less
stringent than as set forth herein. Each party may use such Confidential
Information only to the extent required to accomplish the purposes of this
Agreement. Each party shall use at least the same standard of care as it uses
to protect its own Confidential Information to ensure that its Affiliates,
sublicensees, employees, agents, consultants and other representatives do not
disclose or make any unauthorized use of Confidential Information of the
other party. Each party shall promptly notify the other party upon discovery
of any unauthorized use or disclosure of Confidential Information of the
other party.
ARTICLE 5
INTELLECTUAL PROPERTY RIGHTS
5.1 APPLICATION, PROSECUTION AND MAINTENANCE OF PATENT RIGHTS. From
and after the Effective Date, the Company shall, at its expense, be
responsible for filing, prosecuting and maintaining patents and/or patent
applications in the United States for those inventions covered by the Patent
Rights. The Company will keep the Foundation advised of the status of the
filing, prosecution and maintenance of the Patent Rights and will provide to
the Foundation copies of official actions, amendments and responses with
respect to such filing, prosecution and maintenance. In the event that the
Company desires to abandon any Patent Rights, or if the Company later
declines responsibility for any Patent Rights, the Company shall provide
reasonable prior written notice to the Foundation of such intention to
abandon or decline responsibility, and the Foundation shall have the right,
at its expense, to file, prosecute, and maintain such Patent Rights.
5.2 INFRINGEMENT BY THIRD PARTIES. The Company and the Foundation
shall promptly notify the other in writing of any alleged or threatened
infringement of any patent or patent application covered by the Patent Rights
or misappropriation of Know-How, of which they become aware. Both parties
shall use their best efforts in cooperating with each other to terminate such
infringement or misappropriation without litigation. The Company shall have
the first right to bring and control any action or proceeding with respect to
such infringement or misappropriation, at its own expense and by counsel of
its own choice, and the Foundation shall have the right to participate in
such action, at its own expense and by counsel of its own choice, if there
are claims or defenses which are not shared with the Company, or if the
Company fails to prosecute or raise claims or defenses that are shared by the
Company and the Foundation. If the Company fails to bring an action or
proceeding within (a) 90 days following the notice of alleged infringement or
misappropriation, or (b) 10 days before the time limit, if any, set forth in
the appropriate laws and regulations for the filing of such actions,
whichever comes first, the Foundation shall have the right to bring and
control any such action, at its own expense and by counsel of its own choice,
and the Company shall have the right to be represented in any such
5.
action, at its own expense and by counsel of its own choice. In the event a
party brings an infringement action, the other party shall cooperate fully,
including if required to bring such action, the furnishing of a power of
attorney of reasonable scope. Neither party shall have the right to settle
any patent infringement litigation or misappropriation under this Section 5.2
in a manner that diminishes the rights or interests of the other party
without the prior written consent of the other party. Except as otherwise
agreed to by the parties as part of a cost sharing arrangement, any recovery
realized as a result of such litigation, after reimbursement of any
litigation expenses of the Company and the Foundation, shall belong to the
party who brought the action.
5.3 INFRINGEMENT OF THIRD PARTY RIGHTS. The Company and the
Foundation shall promptly notify the other in writing of any allegation by a
Third Party that the exercise of the rights granted to the Company under this
Agreement infringes or may infringe the intellectual property rights of such
Third Party. The Company shall have the first right to control any defense of
such claim, at its own expense and by counsel of its own choice, and the
Foundation shall have the right to participate in such action, at its own
expense and by counsel of its own choice, if there are counterclaims or
defenses which are not shared with the Company, or if the Company fails to
prosecute or raise counterclaims or defenses that are shared by the Company
and the Foundation. If the Company fails to proceed in a timely fashion with
regard to such defense, the Foundation shall have the right to control any
such defense of such claim, at its own expense and by counsel of its own
choice, and the Company shall have the right to be represented in any such
action, at its own expense and by counsel of its own choice. Neither party
shall have the right to settle any patent infringement litigation under this
Section 5.3 in a manner that diminishes the rights or interests of the other
party or obligates the other party to make any payment or take any action
without the prior written consent of the other party. Except as otherwise
agreed to by the parties as part of a cost sharing arrangement, any recovery
realized as a result of such litigation, after reimbursement of any
litigation expenses of the Company and the Foundation, shall belong to the
party who brought the action.
ARTICLE 6
REPRESENTATIONS, WARRANTIES AND COVENANTS
6.1 CORPORATE POWER. Each party hereby represents and warrants that
it is duly organized and validly existing under the laws of the state of its
incorporation and has full corporate power and authority to enter into this
Agreement and to carry out the provisions hereof.
6.2 DUE AUTHORIZATION. Each party hereby represents and warrants
that such party is duly authorized to execute and deliver this Agreement and
to perform its obligations hereunder.
6.3 BINDING AGREEMENT. Each party hereby represents and warrants
that this Agreement is a legal and valid obligation binding upon it and is
enforceable in accordance with its terms. The execution, delivery and
performance of this Agreement by such party does not conflict with any
agreement, instrument or understanding, oral or written, to which it is a
party or by which it may be bound, nor violate any law or regulation of any
court, governmental body or administrative or other agency having authority
over it.
6.
6.4 OWNERSHIP OF PATENT RIGHTS. The Foundation represents and
warrants that (a) it is the sole owner of all right, title and interest in
and to the Patent Rights, (b) it has not granted any license under the Patent
Rights to any Third Party and is under no obligation to grant any such
license except to the Company, and (c) there are no outstanding liens,
encumbrances, agreements or understandings of any kind, either written, oral
or implied, regarding the Patent Rights which are inconsistent or in conflict
with this Agreement.
6.5 PATENT PROCEEDINGS. The Foundation represents and warrants that,
to the best of its knowledge, no patent application within the Patent Rights
is the subject of any pending interference, opposition, cancellation or other
protest proceeding.
6.6 DISCLAIMER OF WARRANTIES. EXCEPT AS EXPRESSLY SET FORTH IN THIS
AGREEMENT, NEITHER PARTY MAKES ANY REPRESENTATION OR WARRANTY TO THE OTHER
PARTY OF ANY KIND, EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, ANY
WARRANTY OF NON-INFRINGEMENT, MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE.
6.7 LIMITATION OF LIABILITY. NEITHER PARTY SHALL BE ENTITLED TO RECOVER
FROM THE OTHER PARTY ANY SPECIAL, INCIDENTAL, EXEMPLARY, CONSEQUENTIAL OR
tPUNITIVE DAMAGES IN CONNECTION WITH THE BREACH OF THIS AGREEMENT OR ANY CLAIM
ARISING OUT OF THE LICENSED TECHNOLOGY.
6.8 INDEMNIFICATION BY THE COMPANY. The Company hereby agrees to
indemnify, save, defend and hold harmless the Foundation and its trustees,
officers, employees, students and agents from and against any and all suits,
claims, actions demands, liabilities, expenses and losses, including
reasonable legal expense and attorneys' fees ("Losses"), arising directly or
indirectly out of the breach of any representation or warranty made by the
Company hereunder or out of the practice by the Company of the license
granted hereunder, except to the extent such Losses result from the gross
negligence or the willful misconduct of the Foundation. In the event the
Foundation seeks indemnification under this Section 6.7, the Foundation shall
inform the Company of a claim as soon as reasonably practicable after the
Foundation receives notice of the claim, shall permit the Company to assume
direction and control of the defense of the claim (including the right to
settle the claim solely for monetary consideration), and shall cooperate as
requested (at the expense of the Company) in the defense of the claim.
6.9 INDEMNIFICATION BY THE FOUNDATION. The Foundation hereby agrees to
indemnify, save, defend and hold harmless the Company from and against any and
all Losses arising directly or indirectly out of the breach of any
representation or warranty made by the Foundation hereunder, except to the
extent such Losses result from the gross negligence or the willful misconduct of
the Company. In the event the Company seeks indemnification under this Section
6.8, the Company shall inform the Foundation of a claim as soon as reasonably
practicable after the Company receives notice of the claim, shall permit the
Foundation to assume direction and control of the defense of the claim
(including the right to settle the claim solely for monetary consideration), and
shall cooperate as requested (at the expense of the Foundation) in the defense
of the claim.
7.
6.10 DUE DILIGENCE. The Company agrees to use commercially
reasonable efforts to commercialize the Enzyme. If the Foundation believes
that the Company has not used commercially reasonable efforts to
commercialize the Enzyme, then the Foundation may seek resolution pursuant to
Article 8 of this Agreement. In the event the arbitrator determines that the
Company has not used commercially reasonable efforts to commercialize the
Enzyme, the license set forth in Section 2.1 shall become a non-exclusive
license for the Company, alone or in its drug discovery collaborations, to
use the Enzyme for drug identification, discovery and development, and the
Company shall have no further right to develop, make, have made, use, offer
for sale, sell or import the Enzyme.
ARTICLE 7
TERM; TERMINATION
7.1 TERM. This Agreement shall commence as of the Effective Date and
shall continue until the expiration of the last to expire patent under the
Patent Rights or, if no patent issues under the Patent Rights, 15 years after
the Effective Date, unless terminated earlier as provided herein (the
"Term"). Following the expiration of this Agreement, the Company shall have a
license on the same terms as set forth in Section 2.1, except that the
license shall be a non-exclusive, worldwide, fully-paid, irrevocable license.
7.2 TERMINATION. Either party may terminate this Agreement prior to
the expiration of the Term upon the occurrence of any of the following:
(a) Upon or after the bankruptcy, insolvency, dissolution
or winding up of the other party (other than dissolution or winding up for
the purposes of reorganization or consolidation); or
(b) Upon or after the breach of any material provision of
this Agreement by the other party if the breaching party has not cured such
breach within 60 days after written notice thereof by the other party.
7.3 EFFECT OF TERMINATION.
(a) Upon termination of this Agreement by the Foundation,
all rights to the Licensed Technology will revert to the Foundation.
(b) Within 30 days following termination of this Agreement,
each party shall return to the other party, or destroy, upon the written
request of the other party, any and all Confidential Information of the other
party in its possession.
(c) Expiration or termination of this Agreement shall not
relieve the parties of any obligation accruing prior to such expiration or
termination, including, without limitation, payment of accrued royalties. The
provisions of Sections 3.4, 4.1, 6.6, 6.7, 6.8, 6.9 and 7.3 and Articles 1, 8
and 9 shall survive termination or expiration of this Agreement.
(d) Upon termination of this Agreement, any sublicenses
granted hereunder by the Company shall remain in full force and effect, but
shall be assigned to the Foundation.
8.
ARTICLE 8
DISPUTE RESOLUTION
If any dispute arises between the parties relating to the
interpretation, breach or performance of this Agreement or the grounds for
the termination thereof, and the parties cannot resolve the dispute within 30
days of a written request by either party to the other party, the parties
agree to hold a meeting, attended by individuals with decision-making
authority regarding the dispute, to attempt in good faith to negotiate a
resolution of the dispute prior to pursuing other available remedies. If,
within 60 days after such meeting, the parties have not succeeded in
negotiating a resolution of the dispute, such dispute shall be submitted to
final and binding arbitration under the then current commercial rules and
regulations of the American Arbitration Association (the "AAA") relating to
voluntary arbitrations. The arbitration shall be held in San Diego,
California. The arbitration shall be conducted by one arbitrator, who is
knowledgeable in the subject matter at issue in the dispute and who will be
selected by mutual agreement of the parties or, failing such agreement, shall
be selected in accordance with AAA rules. Each party shall initially bear its
own costs and legal fees associated with such arbitration. The prevailing
party in any such arbitration shall be entitled to recover from the other
party actual attorneys' fees, costs and expenses incurred by the prevailing
party in connection with such arbitration. The decision of the arbitrator
shall be final and binding on the parties. The arbitrator shall prepare and
deliver to the parties a written, reasoned opinion conferring its decision.
Judgment on the award so rendered may be entered in any court having
competent jurisdiction thereof.
ARTICLE 9
MISCELLANEOUS
9.1 FORCE MAJEURE. Neither party shall be held liable or responsible
to the other party nor be deemed to have defaulted under or breached this
Agreement for failure or delay in fulfilling or performing any term of this
Agreement when such failure or delay is caused by or results from causes
beyond the reasonable control of the affected party, including, without
limitation, fire, floods, embargoes, war, acts of war (whether war be
declared or not), insurrections, riots, civil commotions, strikes, lockouts
or other labor disturbances, acts of God or acts, omissions or delays in
acting by any governmental authority or the other party.
9.2 ASSIGNMENT. Except as expressly provided hereunder, neither this
Agreement nor any rights or obligations hereunder may be assigned or
otherwise transferred by either party without the prior written consent of
the other party (which consent shall not be unreasonably withheld); PROVIDED,
HOWEVER, that either party may assign this Agreement and its rights and
obligations hereunder without the other party's consent (a) in connection
with the transfer or sale of all or substantially all of the business of such
party to which this Agreement relates to a Third Party, whether by merger,
sale of stock, sale of assets or otherwise, or (b) to any Affiliate.
Notwithstanding the foregoing, any such assignment to an Affiliate shall not
relieve the assigning party of its responsibilities for performance of its
obligations under this Agreement. The rights and obligations of the parties
under this Agreement shall be binding upon and inure to the benefit of the
successors and permitted assigns of the parties. Any assignment not in
accordance with this Agreement shall be void.
9.
9.3 GOVERNMENTAL INTEREST. The parties acknowledge that the
Foundation has received, and expects to continue to receive, funding from the
United States government in support of the research conducted at the
Foundation. The Company and the Foundation acknowledge and agree that their
respective rights and obligations pursuant to this Agreement with respect to
any Licensed Technology shall be subject to the Foundation's obligations to,
and the rights of, the United States government, if any, which arise out of
or result from the Foundation's receipt of research funding from the United
States government.
9.4 GOVERNING LAW; VENUE. This Agreement shall be governed by the
laws of the State of California, as those laws are applied to contracts
entered into and to be performed entirely in California by California
residents. Any claim or controversy arising out of or related to this
Agreement or any breach hereof shall be submitted to a court of applicable
jurisdiction in San Diego County, California, and each party hereby consents
to the jurisdiction and venue of such court.
9.5 NOTICES. Any notices or communications provided for in this
Agreement to be made by either of the parties to the other shall be in
writing and delivered personally or sent by United States mail, registered or
certified, postage paid, by overnight delivery service such as FedEx or UPS
or by facsimile, with confirmation of receipt, addressed as follows:
IF TO THE COMPANY: ELITRA PHARMACEUTICALS, INC.
3510 Dunhill
San Diego, CA 92121
Attn: Chief Financial Officer
Phone No. (619) 410-3000
Fax No. (619) 410-3810
IF TO THE FOUNDATION: SAN DIEGO STATE UNIVERSITY FOUNDATION
5250 Campanile Drive
San Diego, CA 92182-1934
Attn: Stuart G. Gordon, Ph.D.
Director, Technology Transfer Office
Phone No. (619) 594-0516
Fax No. (619) 594-0354
Either party may by like notice specify or change an address to
which notices and communications shall thereafter be sent. Notices sent by
facsimile shall be effective upon confirmation of receipt, notices sent by
mail or overnight delivery service shall be effective upon receipt, and
notices given personally shall be effective when delivered.
9.6 WAIVER. Except as specifically provided for herein, the waiver
from time to time by either of the parties of any of their rights or their
failure to exercise any remedy shall not operate or be construed as a
continuing waiver of the same rights or remedies or of any other of such
party's rights or remedies provided in this Agreement.
10.
9.7 SEVERABILITY. In case any provision of this Agreement shall be
invalid, illegal or unenforceable, the validity, legality and enforceability
of the remaining provisions shall not in any way be affected or impaired
thereby.
9.8 ENTIRE AGREEMENT; AMENDMENT. This Agreement sets forth all of
the agreements and understandings between the parties hereto with respect to
the subject matter hereof, and supersedes and terminates all prior agreements
and understandings between the parties with respect to the subject matter
hereof. There are no agreements or understandings with respect to the subject
matter hereof, either oral or written, between the parties other than as set
forth herein. No subsequent amendment, modification or addition to this
Agreement shall be binding upon the parties hereto unless reduced to writing
and signed by the respective authorized officers of the parties.
9.9 PUBLICITY. The parties agree that neither party will originate
any press release or other public announcement, written or oral, or otherwise
make any disclosure relating to the existence or terms of or performance
under this Agreement without the prior written consent of the other party,
except as may otherwise be required by law.
9.10 INDEPENDENT CONTRACTORS. It is expressly agreed that the
Foundation and the Company shall be independent contractors and that the
relationship between the two parties shall not constitute a partnership,
joint venture or agency of any kind. Neither party shall have the authority
to make any statements, representations or commitments of any kind, or to
take any action, which shall be binding on the other party, without the prior
written consent of the other party.
9.11 HEADINGS. The captions contained in this Agreement are not a
part of this Agreement, but are merely guides or labels to assist in locating
and reading the several Articles hereof.
9.12 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
11.
IN WITNESS WHEREOF, the parties have executed this Agreement as of
the date first set forth above.
ELITRA PHARMACEUTICALS, INC.
/s/ Alana Wheeler
- ----------------------------------------------
Alana B. Wheeler
Chief Financial Officer and
Vice President, Business Development
SAN DIEGO STATE UNIVERSITY FOUNDATION
By: /s/ Stuart G. Gordon
- ----------------------------------------------
Name: Stuart G. Gordon, PhD.
- ----------------------------------------------
Title: Director, Technology Transfer Office
- ----------------------------------------------
By: /s/ Steven A. Bloom
- ----------------------------------------------
Steve Bloom
Associate General Manager, SDSU Foundation
LICENSE AGREEMENT