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EXHIBIT 10.8
* CONFIDENTIAL *
TREATMENT REQUESTED
EXCLUSIVE LICENSE AGREEMENT
BETWEEN
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
AND
IMMUSOL, INCORPORATED
FOR
USE OF HIV-1 TARGETED RIBOZYME TO INHIBIT HIV-1 GENE EXPRESSION
*_______________*
NOVEL HIV-2
*_______________*
MULTIPLE DELETION HIV MUTANTS
*____________________*
RIBOZYME GENE THERAPY FOR AIDS
*________________*
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
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TABLE OF CONTENTS
Page
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RECITALS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
1. DEFINITIONS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
2. LIFE OR PATENT EXCLUSIVE GRANT . . . . . . . . . . . . . . . . . . . 4
3. SUBLICENSES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
4. LICENSE-ISSUE FEE . . . . . . . . . . . . . . . . . . . . . . . . . . 5
5. ROYALTIES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
6. DUE DILIGENCE . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
7. PROGRESS AND ROYALTY REPORTS . . . . . . . . . . . . . . . . . . . . 9
8. BOOKS AND RECORDS . . . . . . . . . . . . . . . . . . . . . . . . . . 10
9. LIFE OF THE AGREEMENT . . . . . . . . . . . . . . . . . . . . . . . . 11
10. TERMINATION BY THE REGENTS . . . . . . . . . . . . . . . . . . . . . 11
11. TERMINATION BY LICENSEE . . . . . . . . . . . . . . . . . . . . . . 12
12. DISPOSITION OF LICENSED PRODUCTS ON HAND
UPON TERMINATION . . . . . . . . . . . . . . . . . . . . . . . . . . 12
13. USE OF NAMES AND TRADEMARKS . . . . . . . . . . . . . . . . . . . . 12
14. LIMITED WARRANTY . . . . . . . . . . . . . . . . . . . . . . . . . . 12
15. PATENT PROSECUTION AND MAINTENANCE . . . . . . . . . . . . . . . . . 13
16. PATENT MARKING . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
17. PATENT INFRINGEMENT . . . . . . . . . . . . . . . . . . . . . . . . 15
18. INDEMNIFICATION . . . . . . . . . . . . . . . . . . . . . . . . . . 16
19. NOTICES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
20. ASSIGNABILITY . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
21. LATE PAYMENTS . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
22. WAIVER . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
23. FAILURE TO PERFORM . . . . . . . . . . . . . . . . . . . . . . . . . 18
24. GOVERNING LAWS . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
25. PREFERENCE FOR UNITED STATES INDUSTRY . . . . . . . . . . . . . . . 18
26. FOREIGN GOVERNMENT APPROVAL OR REGISTRATION . . . . . . . . . . . . 18
27. EXPORT CONTROL LAWS . . . . . . . . . . . . . . . . . . . . . . . . 18
28. SECRECY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
29. MISCELLANEOUS . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
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* CONFIDENTIAL *
TREATMENT REQUESTED
*______________________________________*
EXCLUSIVE LICENSE AGREEMENT
FOR
USE OF HIV-1 TARGETED RIBOZYME TO INHIBIT HIV-1 GENE EXPRESSION;
NOVEL HIV-2;
MULTIPLE DELETION HIV MUTANTS; AND
RIBOZYME GENE THERAPY FOR AIDS
THIS LICENSE AGREEMENT (the "Agreement") is made and is effective this
*__* day of *____________*, (the "Effective Date") by and between THE REGENTS OF
THE UNIVERSITY OF CALIFORNIA, a California corporation having its statewide
administrative offices at 300 Lakeside Drive, 22nd Floor, Oakland, California
94612-3550, hereinafter referred to as "The Regents", and IMMUSOL,
INCORPORATED, a California corporation having a principal place of business at
5052 Berean Lane, Irvine, California 92715, hereinafter referred to as the
"Licensee".
RECITALS
WHEREAS, certain inventions, generally characterized as Use Of HIV-1
Targeted Ribozyme To Inhibit HIV-1 Gene Expression (*_________________*), Novel
HIV-2 *________________*, Multiple Deletion HIV Mutants and Ribozyme Gene
Therapy For AIDS *_________________*, hereinafter
collectively referred to as the "Invention", were made in the course of
research at the University of California, San Diego by Drs. Rappaport,
Wong-Staal, Kraus, Talbott, Looney, Yu, Ojwang, Yamada and Steffy, and are
covered by Regents' Patent Rights as defined below;
WHEREAS, the Licensee entered into the following Secrecy Agreements
for the purpose of evaluating the Invention:
*___* Control No. *________*, effective *_______________*, pertaining
to *________________*;
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
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* CONFIDENTIAL *
TREATMENT REQUESTED
*___* Control No. *________*, effective *_______________*, pertaining
to *________________*; and
*___* Control No. *________*, effective *_______________*,
pertaining to *________________*;
WHEREAS, the development of the Invention was sponsored as follows:
*________________*: UCSD start-up funds;
*________________*: NIH grant
*________________*: NIH grant; and
*________________*: NIH and U.S. Army grant
and as a consequence this license is subject to overriding obligations to the
Federal Government as set forth in 35 U.S.C. 200-212 and applicable
governmental implementing regulations;
WHEREAS, the inventorship of *________________* may be changed in the
U.S. Patent and Trademark Office (USPTO) to include a UC inventor, and will be
assigned to The Regents unless additional employment obligations required this
inventor to assign the application to a third party;
WHEREAS, the Licensee is a"small business firm" as defined in 15
U.S.C. 632;
WHEREAS, inasmuch as David Looney (named inventor on *_______*) is an
employee of the Veterans Administration Medical Center, The Regents will ask
Dr. Looney to have the Veterans Administration release its rights to Dr.
Looney; if the Veterans Administration releases its rights to Dr. Looney, then
Dr. Looney will assign his rights to The Regents;
WHEREAS, The Regents is desirous that the Invention be developed and
utilized to the fullest extent so that the benefits can be enjoyed by the
general public;
WHEREAS, the parties hereto entered into a Letter of Intent dated
*___________*, covering *_________________________________* ("the LOI");
WHEREAS, the Licensee is desirous of obtaining certain rights from The
Regents for the commercial development, use, and sale of the Invention, and The
Regents is willing to grant such rights; and
WHEREAS, both parties recognize and agree that royalties due hereunder
will be paid
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
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* CONFIDENTIAL *
TREATMENT REQUESTED
on both pending patent application and issued patents;
--oo 0 oo--
The parties agree as follows:
1. DEFINITIONS
1.1 "Regents' Patent rights" means patent rights to any subject
matter claimed in or covered by any of the following U.S. patent applications
that are assigned to The Regents, as well as continuing applications thereof
including divisions, substitutions and continuation- in-part (c-i-p)
applications (to the extent that such continuation-in-part applications contain
claims supported in the original application) and re-examinations; any patents
issuing on said applications or continuing applications including reissues; and
any corresponding foreign applications or patents:
1.1(a) U.S. patent application Serial No. 07/703,427, filed on
*___________* on behalf of the Biotechnology Research and Development Company
(BRDC).
1.1(a)(i) *________*
1.1(b) a patent application now in preparation, covering subject
matter for *_________* and to be assigned to The Regents and to be paid for by
Licensee under the LOI;
1.1(c) pending U.S. Patent Application Serial No. *__________*
entitled "Multiple Gene Mutants of Immunodeficiency Virus (HIV) for Vaccine
Use", filed *_______________* by Drs. Looney and Wong-Staal and assigned to The
Regents and covered by the LOI *________________*; and
1.1(d) pending U.S. Patent Application Serial No. *_________* entitled
"Ribozyme Gene Therapy For HIV Infection and AIDS", filed *___________* by Drs.
Yu, Yamada, Owjang, Levitt, Ho and Wong-Staal, assigned to The Regents
*__________*.
1.2 "Licensed Products" means any product that is covered by
Regents' Patent Rights,
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
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that is produced by a Licensed method, or that the use of which would
constitute, but for the license granted to the Licensee pursuant to this
Agreement, an infringement of any claim within Regents' Patent Rights.
1.3 "Licensed Method" means any method that is covered by Regents'
Patent Rights, the use of which would constitute, but for the license granted
to the Licensee pursuant to this Agreement, an infringement of any claim within
Regents' Patent Rights.
1.4 "Net Sales" means the total of the gross invoice prices of
Licensed Products sold by Licensee, an Affiliate, or a sublicensee, less the
sum of the following actual and customary deductions where applicable and
actually taken: cash, trade, or quantity discounts; sales, value added, use,
tariffs, import/export duties or other excise taxes imposed upon particular
sales; transportation and insurance charges and allowances or credits to
customers because of rejections or returns.
1.5 "Affiliate" means any corporation or other business entity in
which the Licensee owns or controls, directly or indirectly, at least fifty
percent (50%) of the outstanding stock or other voting rights entitled to elect
directors; provided, however, that in any country where the local law shall not
permit foreign equity participation of at least 50%, then an "Affiliate" shall
include any company in which the Licensee shall own or control, directly or
indirectly, the maximum percentage of such outstanding stock or voting rights
permitted by local law.
1.6 "Shareholders Agreement" means the Shareholders Agreement
attached hereto as Appendix A. This Shareholders Agreement shall be fully
executed and effective as of the execution of this Agreement.
1.7 "Ribozymen Products" means Licensed Products and Licensed methods
for delivering to human patients in need thereof biologically active material
which includes an RNA molecule having catalytic activity (commonly known as a
ribozyme). Ribozymen products include the RNA molecule, its vector and
delivery system, its formulation and packaging for commercial sale, and
services, in connection with the treatment of the patient with the ribozyme
product. A "Not Ribozyme Product" is a Licensed Product that is not a Ribozyme
Product as defined herein, such as a vaccine.
2. LIFE OR PATENT EXCLUSIVE GRANT
2.1 Subject to the limitations set forth in this Agreement, The
Regents hereby grants to the Licensee a world-wide license under Regents'
Patent Rights to make, have made, use, and sell Licensed Products and to
practice License Methods.
2.2 Except as otherwise provided herein, the license granted in
section 2.1 shall be exclusive for the life of the Agreement.
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* CONFIDENTIAL *
TREATMENT REQUESTED
2.3 The license granted hereunder shall be subject to all the
applicable provisions of any License to the United States Government executed
by The Regents. The license granted hereunder shall be subject to the
overriding obligations to the U.S. Government set forth in 35 U.S.C. 200-212
and applicable governmental implementing regulations.
2.4 The Licenses granted in paragraphs 2.1 and 2.2 to make, use and
sell Licensed Products throughout the world shall be limited, in the case of
Ribozyme Products, to products that are sold for use in human health care. For
other Licensed Products that are ribozymes (for example ribozymes useful for
agricultural purposes), Licensee shall have no license hereunder.
2.5 The Regents expressly reserve the right to make and use the
Invention and Licensed Products and to practice the Licensed Method under
Regents' Patent Rights for educational and research purposes.
3. SUBLICENSES
3.1 The Regents also grants to the Licensee the right to issue
sublicenses to third parties to make, have made, use, and sell Licensed
Products and to practice Licensed Methods, provided the Licensee has current
exclusive rights thereto under this Agreement. To the extent applicable, such
sublicenses shall include all of the rights of and obligations due to The
Regents (and, if applicable, the United States Government) that are contained
in this Agreement.
3.2 Licensee shall provide The Regents with a copy of each sublicense
issued hereunder; collect and guarantee payment of all royalties due The
Regents from sublicensees; and summarize and deliver all reports due The
Regents from sublicensees.
3.3 Upon termination of this Agreement for any reason, The Regents,
at its sole discretion, shall determine whether any or all sublicenses shall be
canceled or assigned to The Regents.
4. LICENSE-ISSUE FEE
4.1 The Licensee shall pay to The Regents a LICENSE-ISSUE FEE of
*___________________________________* within *_____* days after the execution of
this Agreement.
4.2 Also as a LICENSE ISSUE FEE, The Licensee shall transfer to The
Regents Immusol preferred stock having a value of *____________________________*
as set forth in the Shareholders Agreement.
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
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* CONFIDENTIAL *
TREATMENT REQUESTED
4.3 Both LICENSE ISSUE FEES are non-refundable and not an advance
against royalties.
5. ROYALTIES
5.1 During the term of this Agreement the Licensee shall also pay to
The Regents (a) an EARNED ROYALTY of *________________* of Net Sales of Licensed
Products which are Not Ribozyme Products, and (b) an EARNED ROYALTY of
*_______________* of Net Sales of Licensed Products which are Ribozyme Products.
5.2 Paragraphs 1.1, 1.2, and 1.3 define Regents' Patent Rights,
Licensed Products and License Methods so that royalties shall be payable on
products and methods covered by both pending patent applications and issued
patents. Earned royalties shall accrue in each country for the duration of
Regents' Patent Rights in that country and shall be payable to The Regents when
Licensed Products are invoiced, or if not invoiced, when delivered to a third
party.
5.3 Royalties accruing to The Regents shall be paid to The Regents
quarterly on or before the following dates of each calendar year:
February 28
May 31
August 31
November 30
Each such payment will be for royalties which accrued within the Licensee's
most recently completed calendar quarter.
5.4 During the term of this Agreement the Licensee shall pay to The
Regents a MINIMUM ANNUAL ROYALTY in the amounts defined below for the life of
Regents' Patent Rights, beginning with the year of the first commercial sale of
a FDA approved Licensed Product. For the first year of applicable commercial
sales, Licensee's obligation to pay the applicable minimum annual royalties
shall be pro-rated for the number of months remaining in that calendar year
when commercial sales commence and shall be due the following February 28. For
subsequent years, the applicable minimum annual royalty shall be paid to The
Regents by February 28 of each year and shall be credited against the
applicable earned royalty (for either a Ribozyme Product or a Not Ribozyme
Product) due and owing for the calendar year in which the minimum payment was
made. The minimum annual royalties shall be in the following amounts: (a) for
Ribozyme Products: *____________________________________* per year for the first
*_______* years, and *________________________________________________* per year
thereafter; and (b) for Not Ribozyme Products: *______________________________*
per year
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
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* CONFIDENTIAL *
TREATMENT REQUESTED
for the first *__________* years and *_________________________________________*
per year thereafter.
5.5 The Licensee shall pay to The Regents an annual license
MAINTENANCE FEE in the amounts recited below, beginning on the one-year
anniversary date of the Effective Date of this Agreement and continuing
annually on each anniversary date of the Effective Date of this Agreement. This
license maintenance fee shall not be due and payable as to a particular
licensed product (Ribozyme Product or Not Ribozyme product) on any anniversary
date of the Effective Date of this Agreement if on said date Licensee is
commercially selling that FDA approved Licensed Product and paying an earned
royalty to The Regents on the sales of that Licensed Product. This license
maintenance fee is non-refundable and not an advance against royalties. The
license maintenance fees shall be as follows: (a) for Ribozyme Products, *____*
per year, going to *_____________________* per year on initiation of a clinical
trial intended to show efficacy which is significant enough to support filing
for marketing approval (NDA, PLA or equivalent), i.e., a Phase II or Phase
II/III clinical trial; and (b) For a Not Ribozyme Product, *_________* per year,
going to *_________________________________________* per year on initiation of a
clinical trial intended to show efficacy which is significant enough to support
filing for marketing approval (NDA, PLA, or equivalent).
5.6 All monies due The Regents shall be payable in United States
funds collectible at par in San Francisco, California. When Licensed Products
are sold for monies other than United States dollars, the earned royalties will
first be determined in the foreign currency of the country in which such
Licensed Products were sold and then converted into equivalent United States
funds. The exchange rate will be that rate quoted in the Wall Street Journal
on the last business day of the reporting period.
5.7 Royalties earned with respect to sales occurring in any country
outside the United States shall not be reduced by any taxes, fees, or other
charges imposed by the government of such country on the remittance of royalty
income. The Licensee shall also be responsible for all bank transfer charges.
Notwithstanding this, all payments made by the Licensee in fulfillment of The
Regents' tax liability in any particular country shall be credited against
earned royalties, royalties or fees due The Regents for that country.
5.8 If at any time legal restrictions prevent the prompt remittance
of part or all royalties by the Licensee with respect to any country where a
Licensed Product is sold, the Licensee may deposit such royalties in local
currency in a local bank on other depository designated by The Regents. The
Licensee shall use its best efforts to transfer such funds to its U.S. account.
If it cannot do so after one year, it shall pay such royalties out of its U.S.
source of funds.
5.9 In the event that any patent or any claim thereof included within
The Regents' Patent Rights shall be held invalid on unenforceable in an
unappealed or unappealable decision by a court of competent jurisdiction, any
obligation to pay royalties based on such patent or claim, or any claim
patentably indistinct therefrom, shall cease as of the date of such decision.
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
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* CONFIDENTIAL *
TREATMENT REQUESTED
The Licensee shall not, however, be relieved from paying any royalties that
accrued before such decision or that are based on another patent or claim with
The Regents' Patent Rights not involved in such decision.
5.10 No royalties shall be collected or paid hereunder on Licensed
Products sold to the account of the U.S. Government, any agency thereof, or any
state or domestic municipal government as provided for in the License to the
Government.
6. DUE DILIGENCE
6.1 The Licensee, upon execution of this Agreement, shall diligently
proceed with the development, manufacture and sale of Licensed Products and
shall diligently endeavor to market the same within a reasonable time after
execution of this Agreement and in quantities sufficient to meet the market
demands therefor. Licensee shall have the right to negotiate an extension of
time for any milestone based on its use of reasonably diligent efforts to meet
the milestone dates.
6.2 The Licensee shall be entitled to exercise prudent and reasonable
business judgment in meeting its due diligence obligations hereunder.
6.3 The Licensee shall endeavor to obtain all necessary governmental
approvals for the manufacture, use and sale of Licensed Products.
6.4 If the Licensee is unable to perform any of the following:
(6.4a) submit an IUD covering a Ribozyme product to the
United States FDA within *________* from the
Effective Date of this Agreement; or
(6.4b) submit an IND covering a Licensed Product that is a
Not Ribozyme Product to the United States FDA within
*_____________* from the Effective Date of this
Agreement; or
(6.4c) submit an application for marketing approval to the
U.S. FDA for a Ribozyme Product within *__________*
from the Effective Date of this Agreement; or
(6.4d) submit an application for marketing approval to the
U.S. FDA for a Licensed Product that is a Not
Ribozyme Product within *_____________* from the
Effective Date of this Agreement; or
(6.4e) market any Licensed Product in the United States
within *____________* of receiving marketing approval
from the U.S. FDA for such Licensed Product; or
(6.4f) reasonably fill the market demand for Licensed
Products following commencement of marketing at any
time during the exclusive period of this Agreement;
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
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* CONFIDENTIAL *
TREATMENT REQUESTED
then The Regents shall have the right and option either to terminate this
Agreement or to reduce the Licensee's exclusive license to a nonexclusive
license. This right, if exercised by The Regents, supersedes the rights
granted in Article 2 (GRANT).
6.5 In addition to the obligations set forth above, the Licensee
shall spend an aggregate of not less than *____________________________*
per year for the development of Licensed Products during the
first *____________* of this Agreement.
6.6 Either party to this Agreement may refer a dispute arising under
Article 6 of this Agreement to binding arbitration. Such referral to
arbitration shall be made by so notifying the other party in writing in
accordance with the provisions of Article 19 hereto (NOTICES), stating the
nature of the dispute to be resolved. Any such arbitration shall be conducted
by three arbitrators controlled by the provisions of the Commercial Arbitration
Rules of the American Arbitration Association then in effect, with the proviso
that the arbitrators shall not be employees of the parties and shall establish
an arbitration timetable resulting in a hearing in San Francisco, California
within 120 days of the original request to arbitrate. The parties shall be
entitled to discovery in like manner as if the arbitration were a civil suit in
the California Superior Court; provided, however, the arbitrator may limit the
scope, time and/or issues involved in discovery. The decision of the
arbitrators shall be enforceable, but not appealable, in any court of competent
jurisdiction. The parties agree that any provision or applicable law
notwithstanding, they will not request and the arbitrators shall have no
authority to award punitive or exemplary damages against any party. The costs
of the arbitration, including administrative fees and fees of the arbitrators
shall be shared equally by the parties. Each party shall bear the cost of its
own attorneys' fees and expert fees.
7. PROGRESS AND ROYALTY REPORTS
7.1 Beginning *_______________* and *___________* thereafter, the
Licensee shall submit to The Regents a detailed progress report covering the
Licensee's activities related to the development and testing of all Licensed
Products and the obtaining of the governmental approvals necessary for
marketing. These progress reports shall be made for each Licensed Product
until the first commercial sale of that Licensed Product occurs in the United
States.
7.2 The progress reports submitted under section 7.1 should include,
but not be limited to, the following topics:
- summary of work completed
- key scientific discoveries
- summary of work in progress
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
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* CONFIDENTIAL *
TREATMENT REQUESTED
- current schedule of anticipated events or milestones
- market plans for introduction of Licensed Products, and
- a summary of resources (dollar value) spent in the reporting period
7.3 The Licensee shall have a continuing responsibility to keep The
Regents informed of the large/small entity status (as defined by the United
States Patent and Trademark Office) of itself and its sublicensees and
Affiliates.
7.4 The Licensee also agrees to report to The Regents the date of
first commercial sale of a Licensed Product in each country.
7.5 After the first commercial sale of a Licensed Product anywhere in
the world, the Licensee will make quarterly royalty reports to The Regents on
or before each February 28, May 31, August 31 and November 30 of each year.
Each such royalty report will cover the Licensee's most recently completed
calendar quarter and will show (a) the gross sales and Net Sales of Licensed
Products sold by the Licensee during the most recently completed calendar
quarter; (b) the number of each type of Licensed Product sold; (c) the
royalties, in U.S. dollars, payable hereunder with respect to such sales; (d)
the method used to calculate the royalty; and (e) the exchange rates used.
7.6 If no sales of Licensed Products has been made during any
reporting period, a statement to this effect shall be required.
8. BOOKS AND RECORDS
8.1 The Licensee shall keep books and records accurately showing all
Licensed Products manufactured, used, and/or sold under the terms of this
Agreement. Such books and records shall be preserved for at least *__________*
from the date of the royalty payment to which they pertain and shall be
open to inspection by representatives or agents of The Regents at reasonable
times *____* per calendar year during the term of this Agreement, for the sole
purpose of verifying the reports and royalty payments made by Licensee. Such
examination shall be made at Licensee's place of business during ordinary
business hours with at least *___________* days prior written notice. The
representative of the Regents shall report to The Regents only whether there
has been a royalty underpayment and, if so, the amount thereof.
8.2 The fees and expenses of The Regents' representatives performing
such an examination shall be borne by The Regents. However, if an error in
royalties of more than *_________________* of the total royalties due for any
year is discovered, then the fees and expenses of these representatives shall
be borne by the Licensee.
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
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* CONFIDENTIAL *
TREATMENT REQUESTED
9. LIFE OF THE AGREEMENT
9.1 Unless otherwise terminated by operation of law or by acts of the
parties in accordance with the terms of this Agreement, this Agreement shall be
in force from the Effective Date and shall remain in effect for the life of the
last-to-expire patent licensed under this Agreement; or for *___________*
from the Effective Date of this Agreement if no patent issues; or until the
last patent application licensed under this Agreement is abandoned and no
patent in Regents' Patent Rights ever issues, whichever occurs first.
9.2 Any termination of this Agreement shall not affect the rights and
obligations set forth in the following Articles:
Article 8 Books and Records
Article 12 Disposition of Licensed Products
on Hand Upon Termination
Article 13 Use of Names and Trademarks
Article 18 Indemnification
Article 23 Failure to Perform
Article 28 Secrecy
Appendix A Shareholders Agreement
10. TERMINATION BY THE REGENTS
10.1 If the Licensee should violate or fail to perform any term or
covenant of this Agreement, then The Regents may give written notice of such
default (Notice of Default) to the Licensee. If the Licensee should fail to
repair such default within *__________* days of receipt of such notice, The
Regents shall have the right to terminate this Agreement and the licenses
herein by a second written notice (Notice of Termination) to the Licensee. If
a Notice of Termination is sent to the Licensee, this Agreement shall
automatically terminate on the effective date of such notice. Such termination
shall not relieve the Licensee of its obligation to pay any royalty or license
fees owing at the time of such termination and shall not impair any accrued
right of The Regents. These notices shall be subject to Article 19 (Notices).
11. TERMINATION BY LICENSEE
11.1 The Licensee shall have the right at any time to terminate this
Agreement in whole or as to any patent application or patent within The
Regents' Patent Rights by giving notice in writing to The Regents. Such notice
of termination shall be subject to Article 19
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
11
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* CONFIDENTIAL *
TREATMENT REQUESTED
(Notices) and termination of this Agreement shall be effective ninety (90) days
from the effective date of such notice.
11.2 Any termination pursuant to the above paragraph shall not
relieve the Licensee of any obligation or liability accrued hereunder prior to
such termination or rescind anything done by the Licensee or any payments made
to The Regents hereunder prior to the time such termination becomes effective,
and such termination shall not affect in any manner any rights of The Regents
arising under this Agreement prior to such termination.
12. DISPOSITION OF LICENSED PRODUCTS
ON HAND UPON TERMINATION
12.1 Upon termination of this Agreement the Licensee shall have the
privilege of disposing of all previously made or partially made Licensed
Products, but no more, within a period of *_______________________________*,
provided, however, that the sale of such Licensed Products shall be subject to
the terms of this Agreement including, but not limited to, the payment of
royalties at the rate and at the time provided herein and the rendering of
reports thereon.
13. USE OF NAMES AND TRADEMARKS
13.1 Nothing contained in this Agreement shall be construed as
conferring any right to use in advertising, publicity, or other promotional
activities any name, trade name, trademark, or other designation of either
party hereto (including contraction, abbreviation or simulation of any of the
foregoing). Unless required by law, the use by Licensee of the name, "The
Regents of the University of California" or the name of any campus of the
University of California is expressly prohibited.
14. LIMITED WARRANTY
14.1 The Regents warrants to the Licensee that it has the lawful
right to grant this license.
14.2 This license and the associated Invention are provided WITHOUT
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER
WARRANTY, EXPRESS OR IMPLIED. THE REGENTS MAKES NO REPRESENTATION OR WARRANTY
THAT THE LICENSED PRODUCTS OR LICENSED METHODS WILL NOT INFRINGE ANY PATENT OR
OTHER PROPRIETARY RIGHT.
14.3 IN NO EVENT WILL THE REGENTS BE LIABLE FOR ANY INCIDENTAL,
SPECIAL OR CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR THE
USE OF THE INVENTION OR LICENSED PRODUCTS.
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
12
15
14.4 Nothing in this Agreement shall be construed as:
** (14.4a) a warranty or representation by The Regents as to the
validity or scope of any Regents' Patent Rights; or
(14.4b) a warranty or representation that anything made,
used, sold or otherwise disposed of under any license
granted in this Agreement is or will be free from
infringement of patents of third parties; or
(14.4c) an obligation to bring or prosecute actions or suits
against third parties for patent infringement except
as provided in Article 17; or
(14.4d) conferring by implication, estoppel or otherwise any
license or rights under any patents of The Regents
other than Regents' Patent Rights as defined herein,
regardless of whether such patents are dominant or
subordinate to Regent's Patent Rights; or
(14.4e) an obligation to furnish any know-how not provided in
Regents' Patent Rights.
15. PATENT PROSECUTION AND MAINTENANCE
15.1 The Regents shall diligently prosecute and maintain the United
States and foreign patents comprising Regents' Patent Rights using counsel of
its choice reasonably acceptable to Licensee. The Regents shall provide the
Licensee with copies of all relevant documentation so that the Licensee may be
informed and apprised of the continuing prosecution and the Licensee agrees to
keep this documentation confidential. The Regents' counsel will take
instructions only from The Regents.
15.2 The Regents shall use all reasonable efforts to amend any patent
application to include claims reasonably requested by the Licensee to protect
any processes or products contemplated to be used or sold under this Agreement.
15.3 Licensee shall apply for an extension of the term of any patent
included within Regents' Patent Rights if appropriate under the Drug Price
Competition and Patent Term Restoration Act of 1984, and/or Japanese and
European counterparts of this law. The Licensee shall prepare all such
documents, and The Regents agrees to execute such documents and to take such
additional action as the Licensee may reasonably request in connection
therewith.
15.4 In the event either party receives notice pertaining to
infringement or potential infringement of any issued patent included within
Regents' Patent Rights pursuant to the Drug Price Competition and Patent Term
Restoration Act of 1984, such party shall notify the other party within ten
(10) days after receipt of such notice.
15.5 The reasonable costs of preparing, filing, prosecuting and
maintaining all United
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* CONFIDENTIAL *
TREATMENT REQUESTED
States patent applications contemplated by this Agreement shall be borne by
Licensee. This includes patent prosecution costs for this Invention incurred
by The Regents prior to the execution of this Agreement. Such prior costs will
be approximately *_______* and will be due upon execution of this Agreement and
billing by The Regents.
15.6 The Licensee shall have the continuing responsibility to notify
The Regents if Licensee or any of its sublicensees is not a small entity under
the provisions of 35 U.S.C. 41(h).
15.7 The Licensee shall have the right to obtain patent protection on
the Invention in foreign countries if available and if it so desires. The
Licensee must notify The Regents within *_____________* of the filing of the
corresponding United States application of its decision to obtain foreign
patents. This notice concerning foreign filing shall be in writing, must
identify the countries desired, and reaffirm Licensee's obligation to
underwrite the costs thereof. The absence of such a notice from the Licensee
to The Regents shall be considered an election not to secure foreign rights.
15.8 The preparation, filing and prosecuting of all foreign patent
applications filed at the Licensee's request, as well as the maintenance of all
resulting patents, shall be at the sole expense of the Licensee. Such patents
shall be held in the name of The Regents and shall be obtained using counsel of
The Regents' choice.
15.9 The Licensee's obligation to underwrite and to pay patent
prosecution costs shall continue for so long as this Agreement remains in
effect, provided, however, that the Licensee may terminate its obligations with
respect to any given patent application or patent upon *______________* written
notice to The Regents. The Regents will use its best efforts to curtail patent
costs when such a notice is received from the Licensee. The Regents may
continue prosecution and/or maintenance of such application(s) or patent(s) at
its sole discretion and expense; provided, however, that the Licensee shall
have no further right or licenses thereunder.
15.10 The Regents shall have the right to file patent applications at
its own expense in any country in which the Licensee has not elected to secure
patent rights, and such applications and resultant patents shall not be subject
to this Agreement.
16. PATENT MARKING
16.1 The Licensee agrees to mark all Licensed Products made, used or
sold under the terms of this Agreement, or their containers, in accordance with
the applicable patent marking laws.
17. PATENT INFRINGEMENT
17.1 In the event that the Licensee shall learn of the substantial
infringement of any
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
14
17
* CONFIDENTIAL *
TREATMENT REQUESTED
patent licensed under this Agreement, the Licensee shall call The Regents'
attention thereto in writing and shall provide The Regents with reasonable
evidence of such infringement. Both parties to this Agreement agree that
during the period and in a jurisdiction where the Licensee has exclusive rights
under this Agreement, neither will notify a third party of the infringement of
any of Regents' Patent Rights without first obtaining consent of the other
party, which consent shall not be unreasonably denied. Both parties shall use
their best efforts in cooperation with each other to terminate such
infringement without litigation.
17.2 The Licensee may request that The Regents take legal action
against the infringement of Regents' Patent Rights. Such request shall be made
in writing and shall include reasonable evidence of such infringement and
damages to the Licensee. If the infringing activity has not been abated within
*______________* following the effective date of such request, The Regents
shall have the right to:
(17.2a) commence suit on its own account; or
(17.2b) refuse to participate in such suit,
and The Regents shall give notice of its election in writing to the Licensee by
the end of the *___________________* day after receiving notice of such request
from the Licensee. The Licensee may thereafter bring suit for patent
infringement if and only if The Regents elects not to commence suit and if the
infringement occurred during the period and in a jurisdiction where the
Licensee had exclusive rights under this Agreement. However, in the event the
Licensee elects to bring suit in accordance with this paragraph, The Regents
may thereafter join such suit at its own expense.
17.3 Such legal action as is decided upon shall be at the expense of
the party on account of whom suit is brought and all recoveries recovered
thereby shall belong to such party, provided, however, that legal action
brought jointly by The Regents and the Licensee and fully participated in by
both shall be at the joint expense of the parties and all recoveries shall be
shared jointly by them in proportion to the share of expense paid by each
party.
17.4 Each party agrees to cooperate with the other in litigation
proceedings instituted hereunder but at the expense of the party on account of
whom suit is brought. Such litigation shall be controlled by the party
bringing the suit, except that The Regents may be represented by counsel of its
choice and at its expense in any suit brought by the Licensee.
18. INDEMNIFICATION
18.1 The Licensee agrees to indemnify, hold harmless and defend The
Regents, its officers, employees, and agents; the sponsors of the research that
led to the Invention; and the inventors of the patents and patent applications
in Regents' Patent Rights and their employers against any and all claims,
suits, losses, damage, costs, fees, and expenses resulting from or arising out
of exercise of this license or any sublicense. This indemnification will
include, but
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
15
18
* CONFIDENTIAL *
TREATMENT REQUESTED
will not be limited to, any product liability.
18.2 The Licensee, at its sole cost and expense, shall insure its
activities in connection with the work under this Agreement and obtain, keep in
force and maintain insurance or an equivalent program of self insurance, said
insurance to have the following limits, as of the date when a Licensed Product
is first used on a human being:
Comprehensive or Commercial Form General Liability Insurance
(contractual liability included) with limits as follows:
(a) Each Occurrence *__________*
(b) Products/Completed Operations Aggregate *__________*
(c) Personal and Advertising Injury *__________*
(d) General Aggregate (commercial form only) *__________*
It should be expressly understood, however, that the coverages and
limits referred to under the above shall not in any way limit the liability of
Licensee. Licensee shall furnish The Regents with certificates of insurance
evidencing compliance with all requirements. Such certificates shall:
(a) Provide for *__________* advance written notice to University
of any modification.
(b) Indicate that The Regents has been endorsed as an additional
Insured under the coverages referred to under the above.
(c) Include a provision that the coverages will be primary and will
not participate with nor will be excess over any valid and collectable
insurance or program of self-insurance carried or maintained by The Regents.
18.3 The Regents shall promptly notify Licensee in writing of any
claim or suit brought against The Regents in respect of which The Regents
intends to invoke the provisions of this Article 18. Licensee will keep The
Regents informed on a current basis of its defense of any claims pursuant to
this Article 18.
19. NOTICES
19.1 Any notice or payment required to be given to either party shall
be deemed to have been properly given and to be effective (a) on the date of
delivery if delivered in person or (b) *_______* days after mailing if mailed by
first-class certified mail, postage paid, to the respective addresses given
below, or to such other address as it shall designate by written notice given
to the other party.
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
16
19
* CONFIDENTIAL *
TREATMENT REQUESTED
In the case of the Licensee: Immusol, Incorporated
5052 Berean Lane
Irvine, California 92715
Attention: President
In the case of The Regents: THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
1320 Harbor Bay Parkway
Suite 150
Alameda, California 94501
Attention: Director;
Office of Technology Transfer
Referring to: *__________________________*
20. ASSIGNABILITY
20.1 This Agreement is binding upon and shall inure to the benefit of
The Regents, its successors and assigns, but shall be personal to the Licensee
and assignable by the Licensee only with the written consent of The Regents,
which consent shall not be unreasonably withheld; provided, however, the
Licensee may assign the Agreement to a successor of all or substantially all
its assets without the consent of The Regents.
21. LATE PAYMENTS
21.1 In the event royalty payments or fees are not received by The
Regents when due, the Licensee shall pay to The Regents interest charges at a
rate of *____________* per annum. Such interest shall be calculated from the
date payment was due until actually received by The Regents.
22. WAIVER
22.1 It is agreed that no waiver by either party hereto of any breach
or default of any of the covenants or agreements herein set forth shall be
deemed a waiver as to any subsequent and/or similar breach or default.
23. FAILURE TO PERFORM
23.1 In the event of a failure of performance due under the terms of
this Agreement and if it becomes necessary for either party to undertake legal
action against the other on account thereof, then the prevailing party shall be
entitled to reasonable attorney's fees in addition to costs and necessary
disbursements.
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
17
20
24. GOVERNING LAWS
24.1 THIS AGREEMENT SHALL BE INTERPRETED AND CONSTRUED IN ACCORDANCE
WITH THE LAWS OF THE STATE OF CALIFORNIA, but the scope and validity of any
patent or patent application shall be governed by the applicable laws of the
country of such patent or patent application.
25. PREFERENCE FOR UNITED STATES INDUSTRY
25.1 Because this Agreement grants the exclusive right to use or sell
the Invention in the United States, the Licensee agrees that any products
embodying this Invention or product through the use thereof will be
manufactured substantially in the United States.
26. FOREIGN GOVERNMENT APPROVAL OR REGISTRATION
26.1 If this Agreement or any associated transaction is required by
the law of any nation to be either approved or registered with any governmental
agency, the Licensee shall assume all legal obligations to do so.
27. EXPORT CONTROL LAWS
27.1 The Licensee shall observe all applicable United States and
foreign laws with respect to the transfer of Licensed Products and related
technical data to foreign countries, including, without limitation, the
International Traffic in Arms Regulations (ITAR) and the Export Administration
Regulations.
28. SECRECY
28.1 With regard to confidential information ("Data"), which can be
oral or written or both, received from The Regents regarding this Invention,
the Licensee agrees:
(1) not to use the Data except for the sole purpose of performing
under the terms of this Agreement;
(2) to safeguard Data against disclosure to others with the same
degree of care as it exercises with its own data of a nature;
(3) not to disclose Data to others (except to its employees,
agents or consultants who are bound to Licensee by a like
obligation of confidentiality) without the express written
permission of The Regents, except that Licensee shall not be
prevented from using or disclosing any of the Data:
(a) which Licensee can demonstrate by written records or
other evidence was previously known to it;
(b) which is now, or becomes in the future, public
knowledge other than through acts or omissions of
Licensee;
(c) which is lawfully obtained by Licensee from sources
independent of The Regents;
(d) is disclosed pursuant to law or the order or
requirement of a court, administrative agency, or
other governmental body; or
18
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* CONFIDENTIAL *
TREATMENT REQUESTED
(e) is disclosed by Licensee to accountants, banks, or
another financing source (or their advisors) or in
connection with a merger, acquisition or securities
offering, subject to a non-disclosure agreement.
(4) that the secrecy obligations of Licensee with respect to Data
shall continue for a period ending *_____* years from the
termination date of this Agreement.
With regard to biological material received from The Regents,
including any cell lines, vectors, derivatives, products progeny or material
derived therefrom ("Biological Material"), Licensee hereby agrees:
(1) not to use Biological Material except for the sole purpose of
performing under the terms of this Agreement;
(2) not to transfer Biological Material to others (except to its
employees, agents or consultants who are bound to the Licensee
by like obligations conditioning and restricting access, use
and continued use of Biological Material) without the express
written permission of The Regents, except that Licensee shall
not be prevented from transferring Biological Material which:
(a) becomes publicly available other than through acts or
omissions of Licensee, or
(b) is lawfully obtained by Licensee from sources
independent of The Regents;
(3) to safeguard Biological Material against disclosure and
transmission to others with the same degree of care as it
exercises with its own biological materials of a similar
nature.
28.2 The Regents shall use due care to maintain any confidential
business information provided by LICENSEE to the Regents, and any reports and
information provided by Licensee to The Regents pursuant to Sections 7 and 8,
in confidence and not disclose such information or reports to any third party,
except as required by law and disclosed after notice to Licensee and after
requesting confidential treatment and a protective order, if available. The
Licensee acknowledges that The Regents is a public institution and is subject
to the California Public Records Act.
29. MISCELLANEOUS
29.1 The headings of the several sections are inserted for
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this Agreement.
29.2 This Agreement will not be binding upon the parties until it has
been signed below on behalf of each party, in which event, it shall be
effective as of the date recited on page one.
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
19
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* CONFIDENTIAL *
TREATMENT REQUESTED
29.3 No amendment or modification hereof shall be valid or binding
upon the parties unless made in writing and signed on behalf of each party.
29.4 This Agreement embodies the entire understanding of the parties
and shall supersede all previous communications, representations or
understandings, either oral or written, between the parties relating to the
subject matter hereof. The Secrecy Agreements dated *_______________*, and the
LOI are hereby terminated.
29.5 In case any of the provisions contained in this Agreement shall
be held to be invalid, illegal or unenforceable in any respect, such
invalidity, illegality or unenforceability shall not affect any other
provisions hereof, but this Agreement shall be construed as if such invalid or
illegal or unenforceable provisions had never been contained herein.
29.6 This Agreement includes Appendix A which is attached hereto as a
Shareholder's Agreement. As long as The Regents is a shareholder, The Regents
shall receive the same notice of all Board of Directors meetings of the Company
as it gives to its regular Board members. A representative of The Regents,
chosen by The Regents after consultation with the Licensee (i.e. the Company),
shall have the right to attend such meetings, except for executive sessions of
the Board. The Regents shall have the right to vote its shares, to inspect
books and records, and to approve corporate actions in accordance with
generally applicable laws and rules of the Company applying to preferred stock
holders.
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
20
23
IN WITNESS WHEREOF, both The Regents and the Licensee have executed
this Agreement, in duplicate originals, by their respective officers hereunto
duly authorized, on the day and year hereinafter written.
IMMUSOL, INCORPORATED THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA
By: /s/ TSVI GOLDENBERG, Ph.D. By: /s/ William T.Davis
--------------------------- -------------------------
(Signature) (Signature)
Name: /s/ TSVI GOLDENBERG, Ph.D. Name: William T. Davis
(Please Print)
Title: Chairman & CEO Title: Associate Director;
Office of Technology
Transfer
Date: 11-19-93 Date: 12-6-93
--------------------- -----------------------
Approved as to legal form: /s/ EDWIN H. BAKER 10-22-93
---------------------------------------------
Edwin H. Baker, ASSOCIATE
OFFICE OF TECHNOLOGY TRANSFER
University OF CALIFORNIA
21
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* CONFIDENTIAL *
TREATMENT REQUESTED
APPENDIX A
SHAREHOLDERS AGREEMENT
1. The authorized and outstanding capital of the Company consists of:
(a) 2,000,000 shares of Preferred Stock (the "Preferred Stock"),
all of which are designated Series A Preferred Stock and outstanding.
(b) 20,000,000 shares. of Common Stock (the "Common Stock"), of
which 7,045,000 shares are outstanding.
(c) 400,000 shares of Common Stock reserved for issuance under the
Company's 1992 Stock Plan, of which 60,000 shares have been issued pursuant to
exercise of an option, 30,000 shares are issuable upon exercise of an
outstanding option, leaving 310,000 shares available for issuance under the
1992 Stock Plan.
2. According to the latest determination of the Company's board of
directors, the Company's Common Stock has a per share value of $*____*.
3. The Company proposes to issue and sell additional shares of capital
stock (most likely Series B Preferred Stock) as part of its next financing (the
"Financing") and anticipates that the Company's capitalization will be
increased by the number of shares of capital stock to be issued and sold
pursuant to the Financing.
4. Pursuant to Section 4.2 of the Exclusive License Agreement between the
Company and the Regents of the University of California, the Company hereby
agrees to transfer to the Regents that whole number of shares of capital stock
issued and sold pursuant to the Financing equal to an aggregate value of
*___________________________________________*.
5. (a) It is hereby agreed that the Company has delivered to The
Regents the offering documents used in connection with the most recently
completed security-based financing of the Company.
(b) Unless otherwise stated herein or in any written agreement
between the Company and the Regents, upon the issuance of the capital stock
pursuant to Section 4 above, the Regents shall have the same rights,
preferences and privileges to be granted to the investors to the Financing.
(c) A stock certificate evidencing the transfer pursuant to
Section 4 above shall be delivered to The Regents within thirty (30) days after
the close of the Financing.
6. It is hereby expressly reiterated that all provisions of the Agreement
relating to indemnification, limited warranty, and use of names apply to this
Shareholders Agreement.
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
22
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* CONFIDENTIAL *
TREATMENT REQUESTED
[UNIVERSITY OF CALIFORNIA LETTERHEAD]
*____________*
IN DUPLICATE VIA FEDERAL EXPRESS
Tsvi Goldenberg, Ph.D.
Chairman and CEO
Immusol, Incorporated
3050 Science Park Road
San Diego, CA 92121
Re: USE OF HIV-1 TARGETED RIBOZYME TO INHIBIT HIV-1 GENE EXPRESSION
*____________________*
NOVEL HIV-2
*____________________*
MULTIPLE DELETION HIV MUTANTS
*_________________________*
RIBOZYME GENE THERAPY FOR HIV
*____________________*
Dear Tsvi:
The Regents acknowledges that Immusol, Inc. ("Immusol") recently issued
shares of Series B1 Preferred Stock pursuant to an equity stock financing. In
compliance with the Exclusive License Agreement *___________________________*
dated *_______________* ("License Agreement"), Immusol issued to The Regents of
the University of California ("The Regents") 7,323 shares of Series B1 Preferred
Stock, certification no. B1-2 (the "Certificate") on *___________*. The Regents
now wishes to return and cancel the Certificate and amend the License Agreement
to receive *______* in cash or check instead of such shares of Series B1
Preferred Stock. Immediately upon receipt of this letter executed by an officer
of Immusol, The Regents agrees to return the Certificate. Subject to receipt of
the Certificate, Immusol hereby agrees to the following:
1. This letter confirms our telephone conversation on *__________*, and
amends the License Agreement.
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
26
* CONFIDENTIAL *
TREATMENT REQUESTED
Tsvi Goldenberg, Ph.D., Immusol Inc., June 15, 1995, page 2
2. The Regents hereby waives all existing and future rights to the
Immusol preferred stock required under Paragraph 4.2 of the License Agreement
in return for *________* in cash. To that end Paragraph 4.2 is hereby replaced
in its entirety with the following:
"4.2 Also as a license issue fee, The Licensee shall pay to The
Regents *_________________________________*, which is due on or before
*___________*."
3. In accordance with the provisions of paragraph 2 of this letter,
the following references to Immusol preferred stock and the corresponding
shareholders' agreement are removed from the License Agreement: Paragraph 1.6;
the last line of Paragraph 9.2; Paragraph 29.6; and Appendix A.
4. Immusol's obligation to pay the Cash Payment is subject to receipt
of the Certificate from The Regents at least * business days prior to payment
of the Cash Payment. Immusol shall pay the Cash Payment on the later of (i)
*___________* or (ii) *_____________* after Immusol's receipt of the
Certificate from The Regents.
If Immusol agrees with this First Amendment, please sign both originals
of this letter and return one original to me for our files.
Sincerely,
/s/ DAVID J. ASTON
David J. Aston
Assistant Director
cc: George Y. Choi - Wilson, Sonsini
- ------------------------------------------------------------------------------
ACCEPTED BY
IMMUSOL INCORPORATED
/s/ TSVI GOLDENBERG
- ---------------------------
Tsvi Goldenberg, Ph.D.
Chairman & CEO
6-27-95
- ---------------------------
Date
Approved as to legal form: /s/ SANDRA S. SCHULTZ 6/19/95
............................. ............
Sandra S. Schultz, Attorney Date
Office of Technology Transfer,
University of California
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Mark"). This Exhibit has been filed separately with the
Secretary of the Commission without the Mark pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.