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Portions of this Exhibit 10.33 have been redacted and are the subject of a
confidential treatment request filed with the Secretary of the Securities and
Exchange Commission.
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EXHIBIT A TO
SUBSCRIPTION AGREEMENT
LICENSE AND SERVICES AGREEMENT
This LICENSE AND SERVICES AGREEMENT, made the 17th day of July, 1997,
by and between Oncogene Science, Inc. ("OSI"), a Delaware corporation having its
principal place of business at 106 Charles Lindbergh Boulevard, Uniondale, New
York 11553, and Helicon Therapeutics, Inc. ("Company"), a Delaware corporation,
having its principal place of business at 106 Charles Lindbergh Boulevard,
Uniondale, New York 11553.
WHEREAS, the Company was organized to discover, develop and market
pharmaceutical products; and
WHEREAS, OSI is engaged in research relating to molecular screening and
modulation transcription; and
WHEREAS, the Company wishes to obtain the use of certain proprietary
technology controlled by OSI for identifying the effect of compounds on genes
and gene expression which is useful in the process of developing products for
the treatment and prevention of human disease; and
WHEREAS, the Company wishes to obtain the services of OSI in molecular
screening;
NOW, THEREFORE, in consideration of the agreements and covenants herein
and for other valuable consideration, receipt of which is hereby acknowledged,
it is mutually agreed and covenanted by and among the parties to this Agreement
that:
1. Licenses.
a. OSI hereby grants to the Company a world-wide, ** ,
non-exclusive license for a period of ten years, beginning as
of the date of the issuance of Preferred Stock, $.01 par value
per share, of the Company ("Preferred Stock") to OSI pursuant
to paragraph 6 of this Agreement, in the Field ("long term
memory and modulation of CREB** activity in synaptic
plasticity"), to use the technology and to commercialize the
products which are the subject of patent
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** This portion has been redacted pursuant to a confidential treatment
request.
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applications with numbers as set forth in Exhibit 1 hereto
("Applications") [and certain other technology, all] covering
a method of screening and modulation transcription. However,
if any patent or patents ("Patents") are issued as the result
of the Applications, the rights granted under this paragraph
1(a) will terminate as to the territory within the scope of
the Patents and the provisions of paragraph 1(b) below shall
apply.
b. OSI hereby grants to the Company a ** , non-exclusive license,
for a period beginning on the date of the first issuance of
the Patents and terminating on the date of the last expiration
of the Patents, in the Field, to use and commercialize the
"Patent Rights," which are (i) all Patents issued from the
Applications or from divisionals or continuations of the
Applications, (ii) all claims of United States and foreign
continuation-in-part applications and patents which are
directed to subject matter specifically described in the
Applications, (iii) all claims of all foreign patent
applications and patents which are directed to subject matter
specifically described in the United States patents and/or
patent applications described in (i) or (ii), and (iv) any
reissues or reexaminations or United States patents described
in (i), (ii) or (iii).
c. The licenses granted in paragraphs 1(a) and 1(b) may by mutual
agreement be extended on a case by case basis.
2. The Company recognizes that the Applications contain highly valuable
proprietary, confidential information ("Confidential Information") and
agrees that, until the Applications have been finally processed by the
applicable governmental entity, it will (i) keep confidential, and
cause its employees to keep confidential, all Confidential Information,
and (ii) not use Confidential Information except as expressly permitted
in this Agreement. The Company also agrees that disclosure of the
Confidential Information to any officer, employee, agent or consultant
shall be made only if and to the extent necessary to carry out the
Company's responsibilities under, first, the Collaborative Research and
License Agreement ("Collaboration Agreement") by and between
Hoffmann-La Roche Inc. and the Company, to be entered, and, second, the
Funded Research and License Agreement ("Research Agreement") by and
between CSHL and the Company, heretofore or hereafter entered, and
shall be limited to the maximum extent possible consistent with such
responsibilities. The Company agrees not to disclose Confidential
Information to any third party under any circumstance without written
permission. The Company shall take such action to preserve the
confidentiality of the Confidential Information as it would customarily
take to preserve the confidentiality of its own confidential
information. The Company represents that all of its employees which
shall have access to the Confidential Information are bound by
agreement to maintain such information in confidence. Confidential
Information will be so designated by OSI in writing at the time of
disclosure
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** This portion has been redacted pursuant to a confidential treatment
request.
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to the Company, and will include that information which as of the date of
disclosure to the Company is not (a) known to the Company other than by
virtue of a prior confidential disclosure to the Company by OSI, or (b)
disclosed in the published literature, or otherwise generally known to the
public, or (c) obtained from a third party that has no obligation of
confidentiality to OSI.
3. OSI represents and warrants to the Company that (a) it is the holder of
the Applications, (b) it has the right to grant the licenses granted in
this Agreement, (c) there are no claims made against the Applications, and
that (d) the licenses granted do not conflict with or violate the terms of
any agreement between CSHL and any third party.
4. Protection of Rights.
a. Each party shall promptly notify the other party in writing of
any alleged or threatened infringement of the Patents of which it
becomes aware. OSI shall have the right but not the obligation
to bring, at its own expense and in its sole control, an
appropriate action against any person or entity infringing the
Patents. The Company shall be entitled to separate
representation in the matter by counsel of its own choice and at
its own expense, and shall fully cooperate with OSI in
prosecuting the action.
b. If OSI or the Company is sued by a third party for infringement
of a patent because of the Company's exercise of the rights
granted in this Agreement, the party which has been sued shall
promptly notify the other party in writing of the institution of
the suit. The Company shall give to OSI all authority (including
the right to exclusive control of the defense of any such suit,
action, or proceeding and the exclusive right to compromise,
litigate, settle or otherwise dispose of any such suit, action or
proceeding), information and assistance necessary to defend or
settle any such suit, action or proceeding. OSI shall bear the
expenses for defending against any alleged infringement due to
the exercise of the rights granted in this Agreement. OSI agrees
to defend, protect, indemnify and hold harmless the Company from
and against any loss or expense arising from any claim of a third
party that it has been granted rights by OSI and that the Company
in exercising its rights granted to it by OSI pursuant to this
Agreement, has infringed upon the rights granted to such third
party by OSI.
5. OSI will provide, during a one year period beginning as of the date of the
issuance of the Preferred Stock by the Company to OSI pursuant to
paragraph 6 of this Agreement, ** . OSI's collaborative rate is based
upon**, allocated in the same manner as OSI does in its other
collaborative research programs; an
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** This portion has been redacted pursuant to a confidential treatment
request.
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example of OSI's collaborative rate calculations is set forth in the
initial budget for the Company. Initially, the collaborative rate for
the Services is as set forth in Schedule A to this Agreement. The
Services will be provided according to a Work Plan which will be
established by the parties on a quarterly basis. For the first three
month period, beginning as of the date of the issuance of the Preferred
Stock by the Company to OSI pursuant to paragraph 6 of this Agreement,
the Work Plan is set forth in Schedule B to this Agreement.
6. In consideration for the rights granted herein, the Company will issue
to OSI ** shares of its Preferred Stock within two days of the date of
this Agreement as more fully set forth in the Subscription Agreement.
7. Should ownership or control of the Company change due to a transaction
or related series of transactions which result in more than fifty
percent of the Company's voting stock being transferred to a single
entity or related group of entities within a six month period, or in
the sale of all or substantially all of the assets of its business, the
Company shall inform OSI in writing of the relevant event within thirty
days of its occurrence. If the acquiring entity does not agree in
writing to assume and be bound by the obligations of this Agreement by
providing written notice thereof to OSI within thirty days of the date
the written notice of the occurrence of the event is provided to OSI,
OSI may, at any subsequent time but not later than ninety days
following receipt of notice of occurrence of the event, terminate the
licenses and the Services provided pursuant to this Agreement upon
giving three months prior written notice.
8. OSI may terminate the licenses and the Services provided pursuant to
this Agreement upon thirty days written notice if, at any time, the
Company files a petition in bankruptcy or insolvency before the courts
or applies for the appointment of a receiver or trustee for all of its
assets or any part thereof, or if the Company proposes a written
agreement of consolidation or extension of debts, or if the Company is
served with an involuntary petition against it, filed in any insolvency
proceeding, and such petition is not dismissed within sixty days after
its filing, or if the Company proposes or is a party to any dissolution
or liquidation, or if the Company makes an assignment for the benefit
of creditors.
9. The parties each represents and warrants that:
a. It is an entity duly organized, validly existing and is in
good standing under the laws of its domicile, is qualified to
do business and is in good standing as a corporation in each
jurisdiction in which the conduct of its business or the
ownership of its properties requires such qualification and
has all requisite power and authority to conduct its business
as now being conducted, to own, lease and operate its
properties and to execute, deliver and perform this Agreement.
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** This portion has been redacted pursuant to a confidential treatment
request.
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b. The execution, delivery and performance by it of this Agreement
have been duly authorized by all necessary action and do not and
will not (i) require any consent or approval of its stockholders
(other than that which has been obtained), (ii) violate any
provision of any law, rule, regulation, writ, judgment,
injunction, decree, determination or award presently in effect
having applicability to it or any provision of its charter,
organization agreement or by-laws or (iii) result in a breach of
or constitute a default under any material agreement, mortgage,
lease, license, permit or other instrument or obligation to which
it is a party or by which it or its properties may be bound or
affected.
c. This Agreement is a legal, valid and binding obligation of it
enforceable against it in accordance with its terms and conditions,
except as such enforceability may be limited by applicable
bankruptcy, insolvency, moratorium, reorganization or similar laws,
from time to time in effect, affecting creditor's rights generally.
10. All notices shall be mailed via certified mail, return receipt requested,
or courier addressed as follows, or to such other address as may be
designated from time to time:
If to OSI: At its address as set forth at the
beginning of this Agreement
Attn.: Arthur Bruskin, Ph.D.
Oncogene Science, Inc.
106 Charles Lindbergh Boulevard
Uniondale, NY 11553
If to the Company: At its address as set forth at the
beginning of this Agreement
Attn.: Walter Lovenberg, Ph.D.
Helicon Therapeutics, Inc.
106 Charles Lindbergh Boulevard
Uniondale, NY 11553
Notices shall be deemed given as of the date of receipt.
11. This Agreement shall be construed in accordance with the laws of the
State of New York.
12. This Agreement shall be binding upon and inure to the benefit of the
parties and their respective legal representatives, successors and
permitted assigns. This Agreement may not be assigned by either party,
except that the parties may assign this Agreement and their rights and
interest, in whole or in part, to any of their affiliates, any
purchaser of all
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or substantially all of its assets or to any successor corporation
resulting from any merger or consolidation with or into such corporation.
13. This Agreement may be amended, modified, superseded or canceled, and any
of its terms may be waived, only by a written instrument executed by each
party or, in the case of waiver, by the party or parties waiving
compliance. The delay or failure of any party at any time or times to
require performance of any provision shall in no manner affect the rights
at a later time to enforce the same.
14. No person not a party to this Agreement shall have or acquire any rights
by reason of this Agreement. Nothing contained in this Agreement shall be
deemed to constitute the parties partners with each other or any other
person or entity.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
by their duly authorized representatives.
Oncogene Science, Inc.
By:__________________________________
Title:_______________________________
Helicon Therapeutics, Inc.
By:__________________________________
Title:_______________________________
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