Exhibit 99.3
CONFIDENTIAL PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED PURSUANT TO REGULATION
240.24B-2B OF THE SECURITIES EXCHANGE ACT OF 1934. [*] INDICATES OMITTED
MATERIAL THAT IS THE SUBJECT OF A CONFIDENTIAL TREATMENT REQUEST AND IS FILED
SEPARATELY WITH THE COMMISSSION.
LICENSE AGREEMENT
-----------------
This License Agreement (the "Agreement") is made and entered into as of this
23rd day of November, 1998 ("Effective Date"), by and between Ribozyme
Pharmaceuticals Incorporated, a Delaware corporation with offices located at
2950 Wilderness Place, Boulder, CO 80301 (hereinafter "RIBOZYME") and ATUGEN
organized under the laws of Germany, and having its principal office in Berlin,
Germany (hereinafter ATUGEN) (together, the "Parties").
WHEREAS, RIBOZYME is engaged in research, development and commercialization of
certain patented and/or proprietary nucleic acid technology for therapeutic,
agricultural, animal health, diagnostic and functional genomics applications
(the "RIBOZYME Technology");
WHEREAS, RIBOZYME has the right to grant licenses under the RIBOZYME Patent
Rights (as hereinafter defined);
WHEREAS ATUGEN is interested in conducting research, development and
commercialization activities in the field of Target Validation and Discovery
(TVD), as more fully described in the Business Plan of July 30, 1998 and a
certain Participation Agreement which is incorporated by reference herein;
WHEREAS, ATUGEN desires to obtain from RIBOZYME, and RIBOZYME is willing to
grant, certain rights in and to RIBOZYME Patent Rights, as defined herein, and
certain aspects of the RIBOZYME TECHNOLOGY; and
WHEREAS, RIBOZYME is sublicensing to ATUGEN rights to the Cech Patents (as
defined herein) pursuant to a separate Manufacturing and Supply Agreement and
Sublicense Agreement of even date herewith (the "Sublicense").
NOW THEREFORE, in consideration of the mutual covenants herein contained and
intending to be legally bound hereby, the Parties hereto agree as follows:
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Section 1
DEFINITIONS
1.1 "Affiliate" shall mean any corporation or other business entity controlled
---------
by, controlling, or under common control with ATUGEN. For purpose of this
Section 1.1, "control" shall mean direct or indirect beneficial ownership
of more than thirty percent (30%) of the voting stock or equity, or more
than thirty percent (30%) interest in the income of such corporation or
other business entity.
1.2 "Acquirer" shall mean an entity that intends to or does gain control of
--------
RIBOZYME operations.
1.3 "ATUGEN Invention" shall have the meaning set forth in the Section 3.1.1
1.4 "ATUGEN Patent Rights" shall mean, collectively, all right, title and
--------------------
interest of ATUGEN in, to and under (i) Patents covering ATUGEN Inventions
and (ii) Patents to which ATUGEN is a licensee with the right to sublicense
rights thereunder to RIBOZYME.
1.5 "Cech Patents" shall mean the inventions and discoveries which are the
------------
subject of, or which are covered in whole or in part by, the claims
included in (i) U.S. Patent Application Serial Number 937,327, filed
December 3, 1986 entitled RNA RIBOZYME POLYMERASES, DEPHOSPHORYLASES,
RESTRICTION ENDORIBONUCLEASES AND METHODS (the "'327 Patent Application"),
(ii) the United States Patents listed in Appendix A, and any patents
issuing thereon as well as any corresponding patent applications or any
patents that may issue thereon throughout the world, including any
extensions, renewals, divisions, continuations, continuations-in-part,
patents of addition, and/or reissues thereof, including any patent
application and any patents issuing thereon throughout the world, including
any extensions, renewals, continuations, continuations-in-part, divisions,
patents of additions and/or reissues thereof, filed upon any invention the
practice of which would infringe the claims covered by the foregoing
patents, which invention was made by Thomas R. Cech, Arthur J. Zaug and
Michael D. Been, and/or persons acting under their direction and control at
the University of Colorado, which is the work product of the Research
Support Funding Agreement between USB and the University of Colorado
Foundation entered into on May 20, 1987 (the "RSFA") and which was
conceived or reduced to practice during the term of the RSFA.
1.6 "Change of Control of RIBOZYME" shall mean a merger or acquisition by,
-----------------------------
with or of RIBOZYME in which the equity holders of RIBOZYME immediately
prior to such event do not hold at least 51% of the equity of the resulting
entity, and a single new Acquirer controls at least 51% of the equity
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of the resulting entity or the sale of all or substantially all the assets
of RIBOZYME to a third party.
1.7 "COGS" means RIBOZYME's fully-burdened cost of supplying Nucleic Acid
----
Molecules, Delivery Reagents and other reagents to ATUGEN, including raw
materials, direct labor, quality control testing, labeling, packaging and
shipping costs, calculated in accordance with RIBOZYME's accounting methods
consistently applied and in compliance with U.S. generally accepted
accounting principles (GAAP)
1.8 "Collaborator" shall mean any entity or person engaged in an active
------------
research and development collaboration with ATUGEN in its Target Validation
and Discovery program.
1.9 "Combination Patents" shall have the meaning set forth in section 3.2.4.
1.10 "Confidential Information" shall mean confidential and proprietary
------------------------
information of ATUGEN or RIBOZYME, including without limitation scientific
data, technical reports and business information, disclosed to the other
Party, provided that such information is in writing and marked
"CONFIDENTIAL" or with a similar legend, or is disclosed orally and is
reduced to writing and marked "CONFIDENTIAL" or with a similar legend
within 30 days after such disclosure.
1.11 "Delivery Reagents" shall mean all RIBOZYME's reagents useful for the
-----------------
delivery of Nucleic Acid Molecules to cells that are covered under RIBOZYME
Patent Rights or RIBOZYME TECHNOLOGY.
1.12 "Escrow Technology" shall have the meaning provided under Section 8.7.
-----------------
1.13 "Excluded Patents List" shall have the meaning set forth in Section 3.2.4
1.14 "Existing Licensee" shall mean third parties to whom RIBOZYME has already
-----------------
granted certain licenses under RIBOZYME Patent Rights in the Field each of
which is listed in the enclosed Appendix B.
1.15 "Existing Rights" shall have the meaning set forth in section 3.2.5.
1.16 "Field" shall mean any and all applications of Nucleic Acid molecules in
-----
the field of human therapeutic Target Validation and Discovery. Such Field
will include functional genomics or gene function identification in human
systems, in which the function of a gene is determined by using a Nucleic
Acid Molecule. The Field shall also include use of Nucleic Acid Molecules
to validate a human therapeutic target.
1.17 "Invention" shall mean any possibly patentable discovery or invention that
---------
is conceived and reduced to practice.
1.18 "Investor" shall mean BB BioVentures, L.P., and its affliates, all of whom
--------
are managed by MPM Asset Management, LLC., an affiliate of MPM Capital LP.
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1.19 "Licensed Technology" shall mean any technology that is either: (i)
-------------------
covered by RIBOZYME Patent Rights; or (ii) constitutes Non-Patented
Technology ; provided however, Excluded Patents as defined in section 3.2.5
herein, shall not be included under Licensed Technology as provided in that
section.
1.20 "Licensed Technology List" shall have the meaning provided under section
3.2.5.
1.21 "Lipid Market Price" shall mean the average arms-length retail selling
------------------
cost of the two market leading reagents for cell-based transfection. These
two market leading reagents shall be identified based on mutual agreement
of the Parties.
1.22 "New Invention" shall mean any possibly patentable discovery or invention
-------------
conceived and/or reduced to practice by RIBOZYME AND/or ATUGEN in the
Field, or by ATUGEN in the RIBOZYME Field.
1.23 "Non-Patented Technology" means know-how, trade secrets or other
-----------------------
information or materials that are not patentable or, for a possibly
patentable discovery or invention, on which the parties choose not to file
a patent, which are either: (i) made under this Agreement; or (ii) are
owned or controlled by RIBOZYME on the date of this Agreement and are
useful or necessary to ATUGEN in the Field, except for know-how, trade
secrets or other information or materials that cannot be used, practiced,
performed, made or sold without infringing on the Cech Patents.
1.24 "Nucleic Acid Molecules" shall mean enzymatic nucleic acid molecules,
----------------------
GeneBlock (TM) reagents or nucleic acid probes. The term Nucleic Acid
Molecules, as used herein, shall not include [*]
1.25 "Nucleic Acid Product" means any substance that (i) is or is intended to be
--------------------
developed and sold commercially for administration to humans or animals or
plants or for therapeutic or diagnostic use and (ii) contains a non-
protein, non-peptide encoding oligonucleotide, including, but not limited
to, Nucleic Acid Molecules.
1.26 "Oligonucleotide Market Price" [*]
----------------------------
1.27 "Participation Agreement" shall mean the participation agreement of August
------------------------
24, 1998, and all amendments thereof, executed by ATUGEN and founders of
ATUGEN, including RIBOZYME.
1.28 "Patents" shall mean (i) patents (including inventor's certificates) that
-------
include one or more Valid Claims, including without limitation any
substitution, extension (including supplemental protection certificate),
registration, confirmation, reissue, reexamination or renewal thereof, (ii)
pending applications, including provisional applications, continuations,
divisionals,
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and continuations-in-part of any of the foregoing.
1.29 "Patent Right" shall mean RIBOZYME and/or ATUGEN Patent Rights.
------------
1.30 "RIBOZYME Patent Rights" shall mean collectively, all right, title and
----------------------
interest of RIBOZYME in, to and under those Patents which cover a RIBOZYME
Invention or which are listed in the Licensed Technology List provided
under section 3.2.5, herein. RIBOZYME Patent Rights, however, shall not
include the Cech Patents and the Patents shall not be RIBOZYME Patent
Rights while on the Excluded Patents List.
1.31 "RIBOZYME Field" shall mean any and all applications of Nucleic Acid
--------------
Molecules, including but not limited to, as a human or animal therapeutic
or diagnostic products or an agricultural product but excluding any
application of Nucleic Acid Molecules in the Field of Target Validation and
Discovery (TVD).
1.32 Ribozyme Invention" shall have the meaning set forth in Section 3.1.1.
1.33 "RIBOZYME's Supply Profit" [*]
------------------------
1.34 "Service Agreement" shall mean the Service Agreement between ATUGEN and
-----------------
RIBOZYME dated November 23, 1998, and any amendment(s) thereof, all of
which are incorporated by reference herein.
1.35 "Target" means a gene or partial sequence thereof, and those elements
------
necessary for its expression or regulation, or its transcription,
translation, or replication product or intermediates or portions thereof.
1.36 "Target Discovery Technology" shall have the meaning provided in the ATUGEN
---------------------------
Business Plan of July 30, 1998.
1.37 "Target Validation and Discovery ("TVD")" means a research program in
---------------------------------------
which a nucleic acid molecule, including Nucleic Acid Molecules, is used to
determine the utility of a gene or gene product, as a therapeutic or a
therapeutic target, and/or for the discovery of genes or gene products as
potential therapeutics or therapeutic targets or as tools for the
identification of potential therapeutics or therapeutic targets. Such a
program is usually performed on behalf of a third party Collaborator, but
may be performed solely for ATUGEN's benefit or may consist of technology
rights which are licensed or sold to third parties for use in their own
non-Nucleic Acid-Molecule-based product development programs outside the
RIBOZYME Field.
1.38 "TVD Patents" shall have the meaning set forth in section 3.2.4.
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1.39 "Validated Target" shall mean a Target that has been validated in vitro
----------------
or in vivo as part of a TVD program by ATUGEN or its Collaborator.
1.40 "Valid Claim" shall mean either (i) a claim of an issued and unexpired
-----------
patent included within the Patent Rights, provided that such claim has not
been held permanently revoked, unenforceable or invalid by a decision of a
court or other governmental agency of competent jurisdiction, unappealable
or unappealed within the time allowed for appeal, and has not been admitted
to be invalid or unenforceable through reissue, disclaimer or otherwise, or
(ii) a claim of a patent application within the Patent Rights actively
being prosecuted.
Section 2
GRANT AND CONSIDERATIONS
2.1 Grant to ATUGEN.
---------------
2.1.1 RIBOZYME hereby grants to ATUGEN an exclusive, with a right to sub-
license as set forth in section 2.1.2 below, worldwide ("Territory")
right and license to the RIBOZYME Patent Rights, and Non Patented
Technology for the duration of the Term:
(i) to develop, promote, market, distribute, use, sell, offer
to sell or otherwise dispose of, use and import Licensed
Technology in the Field; and
(ii) to practice and use methods and processes described or
claimed in the RIBOZYME Patent Rights within the Field.
Notwithstanding the foregoing, such license shall be co-exclusive
with respect to RIBOZYME to the extent that RIBOZYME uses the
RIBOZYME Patent Rights and Non-Patented Technology solely for the
following purposes:
(a) for RIBOZYME's internal research purposes;
(b) to serve the Existing Licensees, if applicable, in the
Field, provided that no rights may be granted to any
Existing Licensee to any New Invention for use in the Field
unless RIBOZYME is currently contractually obligated to do
so, as of August 24, 1998;
(c) for use in collaboration(s) with third parties to conduct
research, develop and commercialize human therapeutic
Nucleic Acid Products, where such use, with each such third
party collaborator, will involve, over any given six-month
period, examination of no more than five (5)
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Targets for each disease indication. RIBOZYME, however,
will not use the Target Discovery Technology to identify
new Targets in the Field under a collaboration with a third
party nor shall RIBOZYME permit any such third party to
conduct any of its own discovery efforts using the Target
Discovery Technology. It is also understood and agreed by
the parties that RIBOZYME shall not develop its own TVD
program using any ATUGEN Patent Rights or any RIBOZYME
Patent Rights or any Non-Patented Technology in the Field
licensed to ATUGEN herein, subject to the provisions of
this Section 2.1.1.
2.1.2 ATUGEN shall have no right to grant sublicenses to any Licensed
Technology, other than Licensed Technology sold or licensed by ATUGEN
in the regular course of its business in the Field or pursuant to a
collaborative drug development or discovery agreement with a third
party in the Field but subject in all cases to the limitations of
Section 2.1.7. Such sublicensee shall not have the right to further
sublicense any Licensed Technology under this Agreement without
RIBOZYME's prior written consent, which consent shall not be
unreasonably withheld, particularly in the case of territorial
sublicenses by a collaborative partner.
2.1.3 RIBOZYME agrees to use reasonable best efforts to prosecute and
obtain issuance of any and all pending patent applications under the
RIBOZYME Patent Rights. Notwithstanding the foregoing, RIBOZYME shall
not be liable for failure to obtain issued patents for the pending
applications. ATUGEN shall have the right to prosecute any Patents
that RIBOZYME decides not to prosecute in the United States and
ATUGEN shall bear the cost of prosecuting such Patents.
2.1.4 RIBOZYME agrees not to grant licenses under RIBOZYME Patent Rights in
the Field to a third party other than pursuant to its existing
agreements with the Existing Licensees.
2.1.5 RIBOZYME hereby grants to ATUGEN an exclusive, royalty free worldwide
fully paid-up right and license, with no right to sub-license other
than as provided in Section 2.1.2 above, to new Inventions covered
under RIBOZYME Patent Rights, including RIBOZYME Inventions, and Non
Patented Technology owned by RIBOZYME in the Field, for the duration
of the Term (i) to develop, promote, market, distribute, use, sell,
offer to sell or otherwise dispose of, use and import such New
Inventions solely in the Field, and (ii) to practice and use methods
and processes described or claimed in such New Inventions solely
within the Field.
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2.1.6 ATUGEN hereby grants to RIBOZYME at no cost to RIBOZYME, an
exclusive, royalty free worldwide right and license, with a right to
sublicense (as provided below), to New Inventions covered under
ATUGEN Patent Rights, including ATUGEN Inventions, and Non Patented
Technology owned by ATUGEN in the RIBOZYME Field, until there are no
Valid Claims in existence: (i) to develop, promote, market,
distribute, make, have made, use, sell, offer to sell or otherwise
dispose of, use and import such New Invention solely in the RIBOZYME
Field, (ii) to practice and use methods and processes described or
claimed in such New Inventions solely within the RIBOZYME Field;
(iii) to serve the Existing Licensees if required by an existing
agreement with an Existing Licensee, which was effective as of August
24, 1998. RIBOZYME may not sublicense or otherwise transfer any
ATUGEN Patent Rights or ATUGEN Inventions to a third party, except in
connection with a collaborative agreement with a third party for the
development of a Nucleic Acid Product in the RIBOZYME Field but
solely for the purpose of developing, commercializing, testing,
validating, making and selling such Nucleic Acid Product.
2.1.7 Notwithstanding the foregoing, RIBOZYME shall retain an exclusive
right to develop and commercialize Nucleic Acid Products in the
RIBOZYME Field. ATUGEN agrees, that it will clearly stipulate in its
TVD Agreements that RIBOZYME shall retain an exclusive right to
develop and commercialize Nucleic Acid Products against the Validated
Target identified under such TVD Agreements. ATUGEN shall provide a
list of Validated Targets to RIBOZYME once every quarter; provided
however, that in the event of Change of Control of RIBOZYME as set
forth in section 8.8, ATUGEN will not be required to provide such
list to RIBOZYME or its successor.
2.1.8 RIBOZYME will transfer its contracts with the Existing Licensees to
ATUGEN under a separate Service Agreement which is incorporated by
reference herein, provided such transfer is legally possible and the
Existing Licensees agree to such a transfer. RIBOZYME agrees to use
its best efforts to obtain such approvals.
2.1.9 The parties recognize that the rights granted to RIBOZYME by ATUGEN
under this Agreement might be restricted according to the principles,
guidelines, conditions and collateral provisions of public or semi-
public German entities providing or intending to provide grants to
ATUGEN, and the Parties will comply with them.
2.2 Consideration.
-------------
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2.2.1 As a consideration for the rights and license granted to ATUGEN
hereunder, ATUGEN will pay to RIBOZYME a one-time technology access
fee of two million U.S. dollars (US $2 million) (the "License Fee");
provided, however, that in the event that RIBOZYME has not, by
December 28, 1998, obtained either: (i) the release of the liens set
forth in the schedule of exceptions provided to the Investor
("Liens"); or (ii) the subordination of the Liens to this License
Agreement and the Manufacturing and Supply Agreement and Sub-license
Agreement, in a form reasonably satisfactory to ATUGEN, then the
amount of the License Fee shall be reduced by an amount equal to the
aggregate outstanding principal balance plus the aggregate interest
owed upon the debt underlying the Liens ("Debts"). In the event of
such a reduction, ATUGEN will use the difference between US $2M and
the adjusted License Fee to repay the Debts and to release the Liens.
2.2.2 All payments to be made to RIBOZYME by ATUGEN under this Section 2
shall be due on or before December 31, 1998. Checks for all payments
to RIBOZYME under this Agreement shall be deposited in the following
bank account of RIBOZYME.
Name of the Bank: Norwest Bank of Denver
Address: 1740 Broadway Street, Denver, CO 80204
[*]
For further credit to Norwest Bank of Boulder, Ribozyme
Pharmaceuticals Inc.,
Account No.: [*]
2.2.3 In the event that any payment due to RIBOZYME by ATUGEN is
delinquent, interest shall accrue on any overdue amount at the rate
of one percent (1%) per month or the maximum rate permitted by law,
whichever is less.
Section 3
PATENT PROSECUTION, ENFORCEMENT AND DEFENSE
3.1 Inventorship.
------------
3.1. Any New Invention that is made (i) solely by one or more
representatives of RIBOZYME shall be deemed invented solely by
RIBOZYME (a "RIBOZYME Invention"); (ii) solely by one or more
representatives of ATUGEN shall be deemed invented solely by ATUGEN
(an "ATUGEN Invention"); and (iii) jointly by one or more
representatives of RIBOZYME and one or more representatives of ATUGEN
shall be deemed invented jointly by RIBOZYME and ATUGEN (a "Joint
Invention"). Any Non-Patented Technology that is made (i) solely by
one or more representatives of RIBOZYME shall be deemed invented
solely by RIBOZYME, (ii) solely by one or more
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representatives of ATUGEN shall be deemed invented solely by ATUGEN;
and (iii) jointly by one or more representatives of RIBOZYME and one
or more representatives of ATUGEN shall be deemed invented jointly by
RIBOZYME and ATUGEN. Determination of inventorship shall be made in
accordance with the patent laws of the United States of America.
3.1.2 In the event of a dispute concerning inventorship between RIBOZYME
and ATUGEN, the Parties hereby agree that each will attempt to
resolve such dispute by agreement between two U.S. patent attorneys
(one chosen by each Party) according to U.S. patent laws. If those
two attorneys fail within 30 days to reach a resolution, then the
Parties agree to reach a binding agreement by negotiation between
those two attorneys and a third patent attorney chosen by those two
attorneys. The three attorneys will reach a binding agreement with
regard to the dispute by a majority vote of the three attorneys. Such
dispute will be resolved in this manner within 60 days from the date
of the initial dispute.
3.2 Patent Management.
-----------------
3.2.1 The Party owning the Invention shall be responsible for the
preparation, filing, prosecution, and maintenance (the "Patent
Management") of a Patent (the "Filing Party"), subject to the
provisions of Section 3.2.2.
3.2.2 ATUGEN, at its expense, shall take any and all actions necessary with
respect to the Patent Management of Patents, for any ATUGEN
Inventions discovered or identified as a result of any TVD program.
RIBOZYME shall take any and all actions necessary with respect to the
Patent Management of Patents for all other Inventions arising out of
or in connection with this Agreement including Patents claiming
Nucleic Acid Molecules or Delivery Reagents discovered or identified
other than as a result of a TVD program. ATUGEN has the right to
pursue prosecution of those New Inventions or Joint Inventions, which
RIBOZYME chooses not to pursue, at ATUGEN's expense, and RIBOZYME has
the right to pursue prosecution of those ATUGEN Inventions, which
ATUGEN chooses not to pursue, at RIBOZYME's expense.
3.2.3 Each Party agrees to cooperate fully in the Patent Management of any
Patent Rights under this Agreement. Such cooperation includes, but is
not limited to: (i) turning over to the Filing Party all files,
papers and documents relating to such Patent; (ii) executing all
papers and instruments, or requiring its employees or agents, to
execute such
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papers and instruments, so as to effectuate the ownership of Patent
Rights as set forth herein and to enable the other Party to apply for
and to prosecute Applications in any country; and (iii) promptly
informing the other Party of any matters coming to such Party's
attention that may affect the Patent Management of any such
Application. Each Party will notify the other Party promptly of any
New Inventions developed solely or jointly by the Parties.
3.2.4 ATUGEN shall pay to RIBOZYME all expenses, including the attorneys'
fees, relating to the prosecution, maintenance, defense and
enforcement of Licensed Technology ("Patent Expense") according to
the following schedule:
(1) For that portion of the Licensed Technology which is applicable
only to the TVD activities of Atugen ("TVD Patents"), Atugen
shall pay [*] of the Patent Expenses.
(2) For that portion of Licensed Technology which is applicable both
to the TVD activities of Atugen and RIBOZYME activities in the
Ribozyme Field ("Combination Patents"), Atugen shall pay [*] of
the Patent Expenses; and
(3) For all Ribozyme Patent Rights that are neither TVD Patents nor
Combination Patents, Atugen shall not be obligated to pay any
Patent Expense and such Patents shall be excluded from the
Licensed Technology herein ("Excluded Patents").
3.2.5 The categories of Licensed Technology set forth in the foregoing
section 3.2.4 shall be determined according to the following
procedure:
(1) Within forty-five (45) days following the signing of this
Agreement, RIBOZYME shall provide to ATUGEN a written list of
RIBOZYME Patent Rights, divided into the three categories listed
under section 3.2.4. ATUGEN then will have one hundred and twenty
(120) days to indicate to RIBOZYME in writing: (i) if the list is
acceptable; and (ii) which of the proposed TVD Patents and
Combination Patents ATUGEN wishes to exclude from Licensed
Technology and therefore to have them included in the Excluded
Patents list. RIBOZYME shall have no obligation to continue
prosecuting any Patents in the Excluded Patents list. RIBOZYME
then shall provide to ATUGEN a new list of Licensed Technology
without the Excluded Patents and this list shall be the "Licensed
Technology List".
(2) RIBOZYME shall provide in writing to ATUGEN an updated list of
Licensed Technology once every twelve months, wherein the updated
list will include: (i) all of the Ribozyme Patent Rights then on
the Licensed Technology List ("the Existing Rights"); and (ii)
all the new Patents filed by RIBOZYME in the Field, that are
available for inclusion in the Licensed Technology List. ATUGEN
then will have thirty (30) days to indicate to RIBOZYME in
writing as to: (a) which of the Existing Rights in the updated
Licensed Technology List that ATUGEN wishes to remove; and (b)
which new Patents ATUGEN wishes to pay Patent Expense for
according to the schedule set forth under 3.2.6, and thereby keep
such new Patents on the Licensed
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Technology List. The Existing Rights which ATUGEN wishes to
remove from the Licensed Technology List and the new Patents for
which ATUGEN does not wish to pay Patent Expense will be added to
the Excluded Patents list. If ATUGEN does not respond within
thirty (30) days, as required under this paragraph 2, then the
new Patents will be automatically be included in the Licensed
Technology List as proposed and the Existing Rights will all
remain on the Licensed Technology List. All new Patents added to
the Licensed Technology List, through ATUGEN's election under
this Agreement, shall be considered Ribozyme Patent Rights for
the purposes of this Agreement.
(3) Except for the annual updates provided above, and the re-entry
provisions described below, the Licensed Technology List shall
not be amended without a mutual written agreement of the Parties.
(4) If ATUGEN wishes to add to the Licensed Technology List, one or
more Excluded Patents, it shall make a written request to
RIBOZYME indicating the specific Excluded Patents it wants added
to the Licensed Technology List ("Re-entry Patents"). RIBOZYME
shall add these Re-entry Patents to the Licensed Technology List,
if such Patents are still in existence and/or have not been
exclusively licensed to a third party pursuant to a license which
would prohibit a license to ATUGEN hereunder. At such time as
ATUGEN requests the Re-entry of a Patent and makes the
appropriate payments to RIBOZYME, such Re-Entry Patents will
thereafter be included in the Licensed Technology. The addition
of Re-entry Patents shall be according to the following
provisions:
(a) ATUGEN shall pay [*] of all Patent Expense incurred on the
Re-entry Patents as of the date of Re-entry and pay [*] of
all Patent Expense to be incurred in the future on such Re-
entry Patents, provided such Re-entry Patents are TVD
Patents;
(b) ATUGEN shall pay [*]of all Patent Expense incurred on all
other Re-entry Patents as of the date of Re-entry and pay
[*] of all Patent Expense incurred in the future on such Re-
entry Patents.
(5) All payments to be made by ATUGEN under this Section, shall be
sent to RIBOZYME within thirty (30) days of its receipt of an
invoice from RIBOZYME. The payments will be made in accordance
with the provisions of Section 2.2.2 above.
3.3 Defense. In the event of any claim(s) against ATUGEN, arising within two
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(2) years after August 19, 1998, for
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infringement of any intellectual property right of any third party as a
direct result of the exercise of the right and license granted by RIBOZYME
to ATUGEN hereunder, RIBOZYME shall indemnify and hold harmless ATUGEN, its
officers, directors, licensees and assigns from any and all such claims,
provided, however, that RIBOZYME's liability under this Section 3.3 and
Section 3.3 of the Sublicense shall not exceed U.S. $8.5 million RIBOZYME
shall have sole control of any such legal action or settlement negotiations
and shall have the right to settle any such litigation by grant of any
rights to the third party provided ATUGEN approves of such grant, which
approval shall not be unreasonably withheld. ATUGEN agrees to assist
RIBOZYME in defending such claims.
3.4 Patent Enforcement. RIBOZYME and ATUGEN shall each provide immediate
------------------
written notice to the other of any infringement of the RIBOZYME Patent
Rights, which may come to such Party's attention. RIBOZYME shall have the
exclusive right to institute and conduct commercially reasonable legal
action against third party infringers of the RIBOZYME Patent Rights in the
Field, or negotiate and enter into settlement agreements as deemed
appropriate by RIBOZYME after consultation with ATUGEN if necessary.
ATUGEN shall provide RIBOZYME with reasonable assistance in any action
taken by RIBOZYME to enforce the RIBOZYME Patent Rights. ATUGEN shall not,
however be entitled to join RIBOZYME as a Party to any such action. Any
award of damages resulting from action taken by RIBOZYME pursuant to this
Section 3.4, after reimbursement of expenses incurred by RIBOZYME and
ATUGEN, respectively in connection with such action, shall be divided
equally between the parties, provided that such infringement was deemed to
have occurred in the Field and specifically involved the Licensed
Technology. ATUGEN shall have the exclusive right to institute and conduct
commercially reasonable legal action against third party infringers of the
ATUGEN Patent Rights, or negotiate and enter into settlement agreements as
deemed appropriate by ATUGEN after consultation with RIBOZYME if necessary.
RIBOZYME shall provide ATUGEN with reasonable assistance in any action
taken by ATUGEN to enforce the ATUGEN Patent Rights. RIBOZYME shall not,
however be entitled to join ATUGEN as a Party to any such action. Any award
of damages resulting from action taken by ATUGEN pursuant to this Section
3, after reimbursement of expenses incurred by ATUGEN in connection with
such action, shall be divided equally between the parties.
3.5 Counsel. In order for RIBOZYME to prosecute, enforce and litigate the
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RIBOZYME Patent Rights discussed in this Section 3, it shall hire counsel
of its own choice, but reasonably acceptable to ATUGEN, to represent
RIBOZYME in such actions. Such counsel may be granted a power of attorney
by inventors of ATUGEN solely for convenience of prosecution and
litigation. It is understood however that such counsel will not represent
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13
ATUGEN or inventors of ATUGEN, and that ATUGEN is free to obtain counsel of
its own choice at its own cost to review the work of RIBOZYME's counsel,
and to have input into the ongoing prosecution, maintenance, and litigation
of RIBOZYME Patent Rights. RIBOZYME shall instruct its counsel to copy
ATUGEN directly on all correspondence relating to prosecution of RIBOZYME
Patent Rights.
Section 4
CONFIDENTIALITY
4.1 Confidential Information. Any Party receiving any Confidential Information
------------------------
from the other Party in connection with the execution, delivery and
performance of this Agreement shall keep, and shall cause its affiliates,
officers, employees, students, technicians, advisors and consultants to
keep, all such Confidential Information in confidence and shall not disclose
such Confidential Information to third parties, except in connection with a
license, sublicense or sale permitted hereunder requiring such disclosure
and containing appropriate confidentiality provisions.
4.2 Inapplicability. The obligations of confidentiality and nonuse set forth
---------------
in this Agreement shall not apply to any portion of the Confidential
Information which:
(1) is or becomes public or available to the general public otherwise than
through the act or default of the receiving Party or its affiliates or
their employees, advisors or consultants; or
(2) is obtained by the receiving Party from a third party without a duty
of confidentiality who is lawfully in possession of such Confidential
Information and is not subject to an obligation of confidentiality
owed to the other Party or others; or
(3) is known, as shown by competent evidence, by the receiving Party or
any of its affiliates prior to disclosure under this Agreement and was
not obtained or derived directly or indirectly from the other Party;
or
(4) is disclosed by the receiving Party or its affiliates pursuant to a
requirement of law, provided that such Party has complied with the
provisions set forth in paragraph 4.3.
4.3 Notice Prior to Disclosure. If the receiving Party, sublicensees or any of
--------------------------
its Affiliates becomes legally required to disclose any Confidential
Information, the receiving Party shall give the other Party to this
Agreement prompt notice of such fact so that such Party may obtain a
protective order or other appropriate remedy concerning any such disclosure
and/or waive compliance with the non-disclosure provisions of this
Agreement. The receiving Party and its Affiliates will fully cooperate with
the other Party to this Agreement
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14
in connection with such Party's efforts to obtain any such order or other
remedy. If any such order or other remedy does not fully preclude
disclosure or the other Party to this Agreement waives such compliance, the
receiving Party and its affiliates will make such disclosure only to the
extent that such disclosure is legally required and will use its best
efforts to have confidential treatment accorded to the disclosed
Confidential Information. Notwithstanding the foregoing provisions, ATUGEN
will be free to disclose the terms of this Agreement to a third party,
including ATUGEN's Collaborators and potential investors, under
confidentiality with such third parties.
4.4 Term. The obligations of ATUGEN and RIBOZYME under this Section 4 shall
----
continue for a period of five (5) years after the expiration of this
Agreement.
4.5 Return of Materials. Upon expiration or termination of this Agreement,
-------------------
each Party shall return all copies of Confidential Information disclosed to
such Party, and all other materials provided to such Party under this
Agreement; provided that one copy of such Confidential Information and such
materials may be retained for archival or legal purposes only.
Section 5
LIABILITY AND INDEMNIFICATION
5.1 Indemnification by ATUGEN. ATUGEN agrees to indemnify, hold harmless and
-------------------------
defend RIBOZYME, its officers, employees, and agents, against any and all
claims, suits, losses, damages, costs, fees, and expenses asserted by third
parties, both government and non-government, resulting from or arising out
of any product manufactured or sold or service performed by ATUGEN pursuant
to the exercise of this license, other than claims covered by RIBOZYME's
indemnification in Section 3.3 above. ATUGEN shall not be responsible for
the negligence or intentional wrong doing of RIBOZYME.
5.2 Insurance. ATUGEN shall maintain in force at its sole cost and expense,
---------
with reputable insurance companies, general liability insurance and
products liability insurance coverage in an amount reasonably sufficient to
protect against liability under paragraph 5.1 above. RIBOZYME shall have
the right to ascertain from time to time that such coverage exists, such
right to be exercised in a reasonable manner.
5.3 Force Majeure. The Parties will not be liable for any failure to perform
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as required by this Agreement, to the extent such failure to perform is
caused by any reason beyond the control of either Party, or by reason of
any of the
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15
following: labor disturbances or disputes of any kind, accidents,
governmental policy, civil disorders, acts of aggression, acts of God,
energy or other conservation measures, failure of utilities, mechanical
breakdowns, material shortages, disease or similar occurrences.
Section 6
REPRESENTATIONS AND WARRANTIES
6.1 Representations of RIBOZYME. RIBOZYME represents that RIBOZYME has the
---------------------------
legal right, authority and power to enter into this Agreement and meet the
obligations set forth herein. RIBOZYME further represents that it has not
previously granted other than the rights previously granted to Existing
Licensees, and will not grant to any third party during the term of this
Agreement, any rights under the RIBOZYME Patent Rights or Inventions that
are inconsistent with the rights granted to ATUGEN herein in the Field.
RIBOZYME represents that the Patents set forth on Appendices D and E hereto
and the Cech Patents are the only Patents held by or owned by RIBOZYME
which are or could be useful with regard to TVD in the Field.
6.2 Representations of ATUGEN. ATUGEN represents and warrants that ATUGEN has
-------------------------
the legal right, authority and power to enter into this Agreement and meet
the obligations set forth herein.
6.3 Disclaimer. NOTHING IN THIS AGREEMENT SHALL BE DEEMED TO BE A
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REPRESENTATION OR WARRANTY BY RIBOZYME OF THE VALIDITY OF ANY OF THE
PATENTS OR THE ACCURACY, SAFETY, EFFICACY, OR USEFULNESS, FOR ANY PURPOSE,
OF ANY INVENTION, LICENSED TECHNOLOGY OR NUCLEIC ACID MOLECULE MANUFACTURED
BY RIBOZYME. RIBOZYME SHALL HAVE NO OBLIGATION, EXPRESS OR IMPLIED, TO
SUPERVISE, MONITOR, REVIEW OR OTHERWISE ASSUME RESPONSIBILITY FOR THE
PRODUCTION, MANUFACTURE, TESTING, MARKETING OR SALE OF ANY LICENSED
PRODUCT, AND RIBOZYME SHALL HAVE NO LIABILITY WHATSOEVER TO ATUGEN OR ANY
THIRD PARTIES FOR OR ON ACCOUNT OF ANY INJURY, LOSS, OR DAMAGE, OF ANY KIND
OR NATURE, SUSTAINED BY, OR ANY DAMAGE ASSESSED OR ASSERTED AGAINST, OR ANY
OTHER LIABILITY INCURRED BY OR IMPOSED UPON ATUGEN OR ANY OTHER PERSON OR
ENTITY, ARISING OUT OF OR IN CONNECTION WITH OR RESULTING FROM:
(1) the production, use, or sale of any Licensed Technology;
(2) the use of any aspect of Inventions; or
(3) any advertising or other promotional activities with respect to any of
the foregoing.
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Section 7
DUE DILIGENCE REQUIREMENTS
7.1 Due Diligence. ATUGEN shall use commercially reasonable efforts to
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commercialize Licensed Technology in the Field through a thorough, vigorous
and diligent program for exploitation of RIBOZYME Patent Rights in the
Field, and to continue active, diligent marketing efforts for Licensed
Technology throughout the life of this Agreement.
7.2 Progress Reports. During the term of this Agreement, ATUGEN will submit
----------------
annual progress reports to RIBOZYME by 28 February of each year which
discuss the progress and results, as well as ongoing plans, with respect to
the RIBOZYME Patent Rights. RIBOZYME shall have the right to request one
meeting per year to discuss such information.
Section 8
MANUFACTURE AND SUPPLY OF NUCLEIC ACID MOLECULES AND DELIVERY REAGENTS
8.1 Manufacture of Nucleic Acid Molecules. RIBOZYME will manufacture or have
-------------------------------------
manufactured by a party acceptable to ATUGEN, provided such acceptance will
not be unreasonably withheld, the Nucleic Acid Molecules required by ATUGEN
under this Agreement. RIBOZYME shall provide such material to ATUGEN at
[*] per Nucleic Acid Molecule or at [*] of the Oligonucleotide Market
Price per Nucleic Acid Molecule, which ever is greater. The price per
Nucleic Acid Molecule, however, shall not exceed [*] of the
Oligonucleotide Market Price. If the price per Nucleic Acid Molecule
exceeds [*] of the Oligonucleotide Market Price, ATUGEN shall have
the option to purchase such Nucleic Acid Molecules from a third party.
Notwithstanding the foregoing, RIBOZYME shall supply to ATUGEN, the Nucleic
Acid Molecules at the rate of [*] for a [*] scale synthesis of
each Nucleic Acid molecule, so long as the Oligonucleotide Market Price for
such Nucleic Acid Molecule exceeds [*] scale synthesis. If the dollar
amount of Nucleic Acid Molecules or Delivery Reagents purchased by ATUGEN
from RIBOZYME exceeds the dollar amount provided in the enclosed Appendix
C, then RIBOZYME shall provide such material to ATUGEN at [*] per
Nucleic Acid Molecule or at [*] of the Oligonucleotide Market Price
per Nucleic Acid Molecule, which ever is greater. The price per Nucleic
Acid Molecule, however, shall not exceed [*] of the Oligonucleotide
Market Price.
8.2 Manufacture of Delivery Reagents. RIBOZYME will manufacture or have
--------------------------------
manufactured the Delivery Reagents required by ATUGEN under this Agreement.
RIBOZYME shall provide such material to ATUGEN [*] per Delivery
Reagent or at [*] of the Lipid Market Price per Delivery Reagent,
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which ever is greater. If the dollar amount of Delivery Reagents purchased
by ATUGEN from RIBOZYME exceeds the dollar amount provided for on Appendix
C attached hereto, then RIBOZYME shall provide such material to ATUGEN at
[*] of the Oligonucleotide Market Price per Nucleic Acid Molecule,
whichever is greater. The price per Nucleic Acid Molecule, however, shall
not exceed [*] of the Oligonucleotide Market Price.
8.3 Exclusivity. During the first [*] from the Effective Date of this
-----------
Agreement, ATUGEN shall purchase all its requirement of Nucleic Acid
Molecules and Delivery Reagents from RIBOZYME (except as provided in
Section 8.1), which may be extended based on mutual agreement of the
Parties. Other than as provided in Sections 8.1, 8.7 and 8.8 herein,
nothing in this Agreement is deemed to grant ATUGEN any right to
manufacture or have manufactured the Nucleic Acid Molecules and the
Delivery Reagents.
8.4 Minimum Purchase. During the first five (5) years of this Agreement,
----------------
ATUGEN shall purchase from RIBOZYME at least sixty percent (60%) of the
amounts of each Nucleic Acid Molecules and Delivery Reagents ("Minimum
Purchase") indicated in Appendix C, provided (i)[*.]
8.5 Minimum Capacity. RIBOZYME agrees to guarantee an annual Minimum Capacity,
----------------
equal to [*] of the minimum levels specified in Appendix C, for the
synthesis of Nucleic Acid Molecules.
8.6 Technology Transfer. It is agreed RIBOZYME will have transferred to
-------------------
ATUGEN, as a result of licenses granted hereunder and under the Sublicense
and other technology transferred under this Agreement, a value of at least
[*] after the deduction of the technology access fee.
8.7 Escrow Technology. RIBOZYME shall from time to time place into escrow
-----------------
written descriptions of its manufacturing and quality control procedures as
may be necessary for ATUGEN to fully manufacture the Nucleic Acid Molecules
("Escrow Technology"). To facilitate the provisions of this Section 8.7,
RIBOZYME shall promptly establish such escrow account and provide ATUGEN
periodic reports of its transfer of information to such account. In the
event that RIBOZYME cannot adequately supply ATUGEN with its requirements
of the Nucleic Acid Molecules within 45 days of written request therefore,
as to amounts or in accordance with ATUGEN's specifications, ATUGEN shall
have the right to access the Escrow technology to manufacture or have
manufactured the Nucleic Acid Molecules. RIBOZYME's intellectual property
trade secrets related to such technology transfer shall be treated as
Confidential Information of RIBOZYME under Article 4. Specifically,
manufacture by third parties will require the same degree of protection
that ATUGEN uses for its most important confidential information. In the
event of a Change in Control of RIBOZYME, ATUGEN shall be entitled to
continued access to the Escrow
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Technology necessary for ATUGEN to manufacture the Nucleic Acid Molecules
for use in the Field.
8.8 Change of Control. In the event of a Change of Control of RIBOZYME, unless
-----------------
provisions have been made, to the Investor's sole satisfaction to protect
ATUGEN's and the Investor's interest in the Escrow Technology, then ATUGEN
shall receive and have access to the Escrow Technology and shall have a
co-exclusive license in the Field to all Patents incorporated therein, if
any one of the following criteria are met:
8.8.1 More than [*] of the Acquirer's annual revenues (according to
the latest reported figures) are from its TVD activities; or
8.8.2 The Acquirer's actions, following the Change of Control of RIBOZYME,
have caused RIBOZYME activities under this Section 8 to be
significantly reduced, as determined by one or more of the following
parameters:
(1) [*]
(2) [*]
8.8.3 The Acquirer terminates the Service Agreement of November 23, 1998
between RIBOZYME and ATUGEN and/or this License Agreement.
8.8.4 ATUGEN unilaterally terminates the Service Agreement of November 23,
1998 between RIBOZYME and ATUGENand/or its obligation to purchase
Nucleic Acid Molecule and Delivery Reagents under this License
Agreement.
8.8.5 If such a transfer of the Escrow Technology to ATUGEN occurs, ATUGEN
agrees to pay to RIBOZYME or its successor according to the
following:
(1) ATUGEN shall pay to RIBOZYME a one-time fee equal [*]
RIBOZYME's Supply Profit during the prior twelve months if the
Service Agreement was terminated by ATUGEN pursuant to section
8.8.1 above or the Acquirer's actions described in section
8.8.2 caused a failure of performance by RIBOZYME under the
Service Agreement.
(2) ATUGEN shall pay to RIBOZYME an amount equal to [*] RIBOZYME's
Supply Profit on an annual basis if the Service Agreement was
terminated by ATUGEN under 8.8.4 above.
(3) ATUGEN shall not owe any payment to RIBOZYME if the Acquirer
terminates the Service Agreement as described in Section 8.8.3.
8.8.6 Payments. All such payments required by this Section 8.8 will be
--------
made within sixty (60) days after the occurrence of the indicated
event, to RPI or its successors by ATUGEN, based upon revenue and
expense records provided
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from RIBOZYME or its successor.
8.8.7 Future Royalties. In the event that the Escrow Technology is
----------------
accessed by ATUGEN as provided in this Section 2.4, ATUGEN will be
responsible for all payments which become due to third parties as a
result of action taken by ATUGEN in the Field.
Section 9
TERM AND TERMINATION
9.1 Term. The Term of this Agreement shall commence on the Effective Date
----
and shall continue until there are no Valid Claims in existence under
the RIBOZYME Patent Rights existing as of the Effective Date of this
Agreement unless terminated earlier as provided in this Section, and
other than as a result of the section 8.8.
9.2 Termination for Cause. Either Party shall have the right to
---------------------
terminate this Agreement following any material breach or default in
performance under this Agreement by the other Party upon sixty (60)
days prior written notice by certified mail to the breaching Party
specifying the nature of the breach or default. Unless the breaching
Party has either cured or taken such steps as may be reasonably
expected to cure the breach or default prior to the expiration of such
sixty (60) day period, the non-breaching Party, at its sole option,
may terminate this Agreement upon written notice to the breaching
Party. Termination of this Agreement shall become effective upon
receipt of such notice by the breaching Party.
9.3 Effect of Termination. In the event RIBOZYME terminates this License
---------------------
Agreement for cause under Section 9.2, RIBOZYME shall retain all the
rights granted to RIBOZYME by ATUGEN and all the rights granted to
ATUGEN by RIBOZYME under this Agreement shall terminate and revert
back to RIBOZYME.
9.4 Rights in Law or Equity. Except as otherwise expressly provided
-----------------------
herein, termination by either Party pursuant to this Section 9 shall
not prejudice any other remedy that a Party might have in law or
equity, except that neither Party may claim compensation for lost
opportunity or like consequential damages arising out of the fact of
such termination.
9.5 Termination for Insolvency. To the extent permitted by applicable
--------------------------
law, either Party may terminate this Agreement immediately upon
written notice without opportunity to cure if the other Party becomes
the subject of a voluntary or involuntary petition in bankruptcy or
any proceeding relating to insolvency, receivership, liquidation, or
composition for the benefit of
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creditors, if such petition or proceeding is not dismissed with
prejudice within ninety (90) days after filing. In the event of a
termination by RIBOZYME for insolvency, the Escrow Technology shall
transfer to ATUGEN at no cost.
9.6 Survival. The following Sections of this Agreement shall survive
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expiration or termination of this Agreement: 3.1, 4, 5, 9.6 and 10.
Section 10
GENERAL PROVISIONS
10.1 Dispute Resolution.
------------------
10.1.1 Any disputes arising between the Parties relating to, arising
out of or in any way connected with this Agreement or any term
or condition hereof, or the performance by either Party of its
obligations hereunder, whether before or after termination of
this Agreement, shall be promptly presented to the Chief
Executive Officer of RIBOZYME and the Chief Executive Officer
of ATUGEN (or their designees) for resolution. If these
individuals cannot promptly (within 30 days) resolve such
disputes, then such dispute shall be finally resolved by
binding arbitration. Whenever a Party shall decide to
institute arbitration proceedings, it shall give written
notice to that effect to the other Party. The Party giving
such notice shall refrain from instituting the arbitration
proceedings for a period of sixty (60) days following such
notice.
10.1.2 In the event that arbitration is instituted by ATUGEN, such
arbitration shall be held in Berlin, Germany. In the event
that arbitration is instituted by RIBOZYME, such arbitration
shall be held in Boulder, Colorado. Judgment on any award
rendered by the arbitrator may be entered in any court having
jurisdiction thereof. The Parties agree that, any provision of
applicable law notwithstanding, they will not request, and the
arbitrator shall have no authority to award, punitive or
exemplary damages against any Party.
10.1.3 Notwithstanding the above, in the event of a dispute
concerning inventorship between RIBOZYME and ATUGEN, the
Parties hereby agree that each will attempt to resolve such
dispute by agreement between two U.S. patent attorneys (one
chosen by each Party) according to U.S. patent laws. If those
two attorneys fail within 30 days to reach a resolution, then
the Parties agree to reach a binding agreement by negotiation
between those two attorneys and a third patent attorney chosen
by those two attorneys. The three attorneys will reach a
binding agreement with regard to the dispute by a majority
vote of the three
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attorneys. Such dispute will be resolved in this manner within
60 days from the date of the initial dispute.
10.2 No Use of Name. Neither Party shall use the name of the other in any
--------------
form of advertising publicity or otherwise, any trade-name, personal
name, trademark, trade device, service mark, symbol, or any
abbreviation, contraction or simulation thereof owned by the other
party; or public promotion without the prior written approval of the
other, or represent, either directly or indirectly, that any product
or service of the other party is a product or service of the
representing party or that it is made in accordance with or utilizes
the information or documents of the other party.
10.3 Governing Law. This Agreement shall be governed by, construed, and
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interpreted in accordance with the laws of Germany, including but not
limited to, export control regulations regarding commodities and
technical data/information. Parties specifically agree not to export
or re-export any commodities and/or data/information in violation of
any applicable U.S.A. or German laws and/or regulations.
10.4 Assignment. This Agreement may not be assigned or transferred by
----------
any of the Parties hereto without the prior written consent of the
other Parties which will not be unreasonably withheld; provided,
however, that ATUGEN may assign or transfer ATUGEN's rights and
obligations under this Agreement to an affiliate of ATUGEN or a
successor to all or substantially all of its assets or business
relating to this Agreement, whether by sale, merger, operation of law
or otherwise upon written notice to RIBOZYME.
10.5 Entire Agreement. This Agreement constitutes the entire and only
----------------
agreement between the Parties relating to the subject matter hereof,
and all prior negotiations, representations, agreements and
understandings are superseded hereby.
10.6 Further Assurances. At any time or from time to time on and after
------------------
the Effective Date, RIBOZYME and ATUGEN shall at the request of the
other (a) deliver to the other such records, data or other documents
consistent with the provisions of this Agreement, (b) execute, and
deliver or cause to be delivered, all such assignments, consents,
documents or further instruments of transfer or license, and (c) take
or cause to be taken all such other actions, as may reasonably deem
necessary or desirable in order to obtain the full benefits of this
Agreement and the transactions contemplated hereby.
10.7 Notices. Any notice or other communication required or permitted
-------
under this Agreement shall be in writing and will be deemed given as
of the date such notice is (a) hand delivered, or (b) mailed, postage
prepaid, first class, certified mail, return receipt requested, or
(c) sent, shipping prepaid, receipt
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requested by national courier service, to the Party at the address
listed below or at such other addresses as may be given from time to
time in accordance with the terms of this notice provision.
If to ATUGEN:
ATUGEN Biotechnology GmbH.
Robert-Rossle-Strasse 10
13125 Berlin
Germany
Attention: Managing Director
If to RIBOZYME:
Ribozyme Pharmaceuticals Inc.
2950 Wilderness Place
Boulder, CO 80301
Attention: President & CEO
10.8 Modification. No modification to this Agreement shall be effective
------------
unless assented to in writing by the Party to be charged.
10.9 Waiver. The failure of a party in any instance to insist upon the
------
strict performance of the terms of this Agreement will not be
construed to be a waiver or relinquishment of any of the terms of
this Agreement, either at the time of the party's failure to insist
upon strict performance or at any time in the future, and such terms
will continue in full force and effect.
10.10 Headings. The headings of the several Sections of this Agreement are
--------
intended for convenience of reference only and are not intended to be
a part of or to affect the meaning or interpretation of this
Agreement.
10.11 Severability. In the event that any provision of this Agreement
------------
becomes or is declared by a court of competent jurisdiction to be
illegal, unenforceable or void, this Agreement shall continue in full
force and effect without said provision; provided that no such
severability shall be effective if the result of such action
materially changes the economic benefit of this Agreement to ATUGEN,
or to RIBOZYME.
10.12 Government Clearance. ATUGEN agrees to use commercially reasonable
--------------------
efforts to have the Inventions cleared for marketing in those
countries in which ATUGEN intends to sell Licensed Technology by the
responsible government agencies requiring such clearance. To
accomplish said clearances at the earliest possible date, ATUGEN
agrees to file, according to the usual practice of ATUGEN, any
necessary data with said government agencies.
10.13 Publication. Each Party shall use its best efforts to provide a copy
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of any
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publication under this Agreement forty-five (45) days in advance of
such submission for approval by the other party.
10.14 Language. A German and an English version of this Agreement exist.
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Only the English version of this Agreement is binding.
10.15 Counterparts. This Agreement may be executed in counterparts, each
------------
of which shall be deemed an original, but all of which together shall
constitute one and the same instrument.
IN WITNESS WHEREOF, the Parties hereto, intending to be legally bound hereby,
have caused this Agreement to be executed by their duly authorized
representatives as of the date first written above.
ATUGEN BIOTECHNOLOGY GmbH
By: /s/ Ralph E. Christoffersen
---------------------------
Name: RALPH E. CHRISTOFFERSEN
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Title: CEO/GESCHAFTSFUHRER
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Date: 11/23/98
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RIBOZYME PHARMACEUTICALS INC.
By: /s/ Larry Bullock
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Name: LARRY BULLOCK
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Title: CFO
---
Date: 11/23/98
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APPENDIX A
CECH PATENTS
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Title/Invention U.S. Patent No. Foreign Patents
- ------------------------------------------------------------------------------------------------
RNA Ribozyme Polymerases, Dephosphorylases, 4,987,071 European Patent
Restriction Endoribonucleases and Methods No. 0291 533
Japanese Patent
No. 2530906
- ------------------------------------------------------------------------------------------------
RNA Ribozyme Polymerases, and Methods 5,037,746 N/A
- ------------------------------------------------------------------------------------------------
RNA Ribozyme Polymerases, Dephosphorylases, 5,093,246 N/A
Restriction Endoribonucleases and Methods
- ------------------------------------------------------------------------------------------------
RNA Ribozyme Restriction Endoribonucleases and 5,116,742 N/A
Methods
- ------------------------------------------------------------------------------------------------
RNA Ribozyme Which Cleaves Substrate RNA Without 5,354,855 N/A
Formation of a Cavalent Bond
- ------------------------------------------------------------------------------------------------
RNA Ribozyme Polymerases, Dephosphorylases, 5,591,610 N/A
Restriction Endoribonucleases and Methods
- ------------------------------------------------------------------------------------------------
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APPENDIX B
- -------------------------------------------------------------
Listing of Existing Licensees Effective Date
- -------------------------------------------------------------
Schering AG, Germany 4/9/97
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Roche Bioscience 5/19/98
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Chiron 5/13/96
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Glaxo-Wellcome 7/16/98
- -------------------------------------------------------------
Parke-Davis 3/2/98
- -------------------------------------------------------------
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