<PAGE> 1
AS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION ON SEPTEMBER 30, 1997
REGISTRATION NO. 333-32147
================================================================================
SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
------------------------
AMENDMENT NO. 4
TO
FORM S-1
REGISTRATION STATEMENT
UNDER
THE SECURITIES ACT OF 1933
------------------------
CORIXA CORPORATION
(EXACT NAME OF REGISTRANT AS SPECIFIED IN ITS CHARTER)
<TABLE>
<S> <C> <C>
DELAWARE 2836 91-1654387
(STATE OR OTHER JURISDICTION OF (PRIMARY STANDARD INDUSTRIAL (I.R.S. EMPLOYER
INCORPORATION OR ORGANIZATION) CLASSIFICATION CODE NUMBER) IDENTIFICATION NUMBER)
</TABLE>
1124 COLUMBIA STREET, SUITE 200
SEATTLE, WA 98104
(206) 667-5711
(ADDRESS, INCLUDING ZIP CODE, AND TELEPHONE NUMBER, INCLUDING AREA CODE, OF
REGISTRANT'S PRINCIPAL EXECUTIVE OFFICES)
STEVEN GILLIS, PH.D.
PRESIDENT AND CHIEF EXECUTIVE OFFICER
CORIXA CORPORATION
1124 COLUMBIA STREET, SUITE 200
SEATTLE, WA 98104
(206) 667-5711
(NAME, ADDRESS, INCLUDING ZIP CODE, AND TELEPHONE NUMBER, INCLUDING AREA CODE,
OF AGENT FOR SERVICE)
------------------------
COPIES TO:
<TABLE>
<S> <C>
WILLIAM W. ERICSON, ESQ. ALAN C. MENDELSON, ESQ.
KARA DIANE PALMER, ESQ. PATRICK A. POHLEN, ESQ.
JOHN W. ROBERTSON, ESQ. COOLEY GODWARD LLP
VENTURE LAW GROUP FIVE PALO ALTO SQUARE
4750 CARILLON POINT 3000 EL CAMINO REAL
KIRKLAND, WA 98033 PALO ALTO, CA 94306-2155
(425) 739-8700 (650) 843-5000
</TABLE>
------------------------
APPROXIMATE DATE OF COMMENCEMENT OF PROPOSED SALE TO THE PUBLIC:
As soon as practicable after the effective date of this Registration Statement.
------------------------
If any of the securities being registered on this form are to be offered on
a delayed or continuous basis pursuant to Rule 415 under the Securities Act of
1933, check the following box. [ ]
If this form is filed to register additional securities for an offering
pursuant to Rule 462(b) under the Securities Act, please check the following box
and list the Securities Act registration statement number of the earlier
effective registration statement for the same offering. [ ]
If this form is a post-effective amendment filed pursuant to Rule 462(c)
under the Securities Act, check the following box and list the Securities Act
registration statement number of the earlier effective registration statement
for the same offering. [ ]
If delivery of the prospectus is expected to be made pursuant to Rule 434,
please check the following box. [ ]
------------------------
THE REGISTRANT HEREBY AMENDS THIS REGISTRATION STATEMENT ON SUCH DATE OR
DATES AS MAY BE NECESSARY TO DELAY ITS EFFECTIVE DATE UNTIL THE REGISTRANT SHALL
FILE A FURTHER AMENDMENT WHICH SPECIFICALLY STATES THAT THIS REGISTRATION
STATEMENT SHALL THEREAFTER BECOME EFFECTIVE IN ACCORDANCE WITH SECTION 8(A) OF
THE SECURITIES ACT OF 1933 OR UNTIL THIS REGISTRATION STATEMENT SHALL BECOME
EFFECTIVE ON SUCH DATE AS THE COMMISSION, ACTING PURSUANT TO SAID SECTION 8(A),
MAY DETERMINE.
================================================================================
<PAGE> 2
PART II
INFORMATION NOT REQUIRED IN PROSPECTUS
ITEM 13. OTHER EXPENSES OF ISSUANCE AND DISTRIBUTION
The following table sets forth the costs and expenses, other than
underwriting discounts and commissions, payable by the Company in connection
with the sale of Common Stock being registered. All amounts are estimates except
the SEC registration fee and the NASD filing fee.
<TABLE>
<CAPTION>
AMOUNT
TO BE PAID
----------
<S> <C>
SEC registration fee.............................................. $ 13,417
NASD filing fee................................................... 4,928
Nasdaq listing fee................................................ 44,986
Printing and engraving expenses................................... 205,000
Legal fees and expenses........................................... 330,000
Accounting fees and expenses...................................... 160,000
Blue Sky qualification fees and expenses.......................... 5,000
Transfer Agent and Registrar fees................................. 10,500
Miscellaneous fees and expenses................................... 26,169
Total................................................... $ 800,000
</TABLE>
- ---------------
* To be filed by amendment.
ITEM 14. INDEMNIFICATION OF DIRECTORS AND OFFICERS
As permitted by Section 145 of the Delaware General Corporation Law, the
Registrant's Restated Certificate of Incorporation includes a provision that
eliminates the personal liability of its directors for monetary damages for
breach or alleged breach of their duty of care. In addition, as permitted by
Section 145 of the Delaware General Corporation Law, the Bylaws of the
Registrant provide that: (i) the Registrant is required to indemnify its
directors, to the fullest extent permitted by Delaware law, including in those
circumstances in which indemnification would otherwise be discretionary; (ii)
the Registrant may, in its discretion, indemnify officers, employees and agents
in those circumstances where indemnification is not required by law; (iii) the
Registrant is required to advance expenses, as incurred, to its directors in
connection with defending a proceeding (except that it is not required to
advance expenses to a person against whom the Registrant brings a claim for
breach of the duty of loyalty, failure to act in good faith, intentional
misconduct, knowing violation of law or deriving an improper personal benefit);
(iv) the rights conferred in the Bylaws are not exclusive, and the Registrant is
authorized to enter into indemnification agreements with its directors,
executive officers and employees; and (v) the Registrant may not retroactively
amend the Bylaw provisions in a way that it adverse to such directors, executive
officers and employees.
The Registrant's policy is to enter into indemnification agreements with
each of its directors that provide the maximum indemnity allowed to directors
and executive officers by Section 145 of the Delaware General Corporation Law
and the Bylaws, as well as certain additional procedural protections. In
addition, such indemnity agreements provide that directors will be indemnified
to the fullest possible extent not prohibited by law against all expenses
(including attorney's fees) and settlement amounts paid or incurred by them in
any action or proceeding, including any derivative action by or in the right of
the Registrant, on account of their services as directors or executive officers
of the Registrant or as directors or officers of any other Company or enterprise
when they are serving in such capacities at the request of the Registrant. The
Company will not be obligated pursuant to the indemnity agreements to indemnify
or advance expenses to an indemnified party with respect to proceedings or
claims initiated by the indemnified party and not by way of defense, except with
respect to proceedings specifically authorized by the Board of Directors or
brought to enforce a right to indemnification under the indemnity agreement, the
Company's Bylaws or any statute or law. Under the agreements, the Company is not
obligated to indemnify the indemnified party (i) for any expenses incurred by
II-1
<PAGE> 3
the indemnified party with respect to any proceeding instituted by the
indemnified party to enforce or interpret the agreement, if a court of competent
jurisdiction determines that each of the material assertions made by the
indemnified party in such proceeding was not made in good faith or was
frivolous; (ii) for any amounts paid in settlement of a proceeding unless the
Company consents to such settlement; (iii) with respect to any proceeding
brought by the Company against the indemnified party for willful misconduct,
unless a court determines that each of such claims was not made in good faith or
was frivolous; (iv) on account of any suit in which judgment is rendered against
the indemnified party for an accounting of profits made from the purchase or
sale by the indemnified party of securities of the Company pursuant to the
provisions of Section 16(b) of the Exchange Act and related laws; (v) on account
of the indemnified party's conduct which is finally adjudged to have been
knowingly fraudulent or deliberately dishonest, or to constitute willful
misconduct or a knowing violation of the law; (vi) an account of any conduct
from which the indemnified party derived an improper personal benefit; (vii) on
account of conduct the indemnified party believed to be contrary to the best
interests of the Company or its stockholders; (viii) on account of conduct that
constituted a breach of the indemnified party's duty of loyalty to the Company
or its stockholders; or (ix) if a final decision by a court having jurisdiction
in the matter shall determine that such indemnification is not lawful.
The indemnification provision in the Bylaws and the indemnification
agreements entered into between the Registrant and its directors, may be
sufficiently broad to permit indemnification of the Registrant's directors for
liabilities arising under the Securities Act.
ITEM 15. RECENT SALES OF UNREGISTERED SECURITIES
(a) Since September 8, 1994 (the date of incorporation of the Company), the
Company has issued and sold the following securities:
1. In September 1994, the Company issued and sold an aggregate of
2,338,048 shares of Common Stock to nine founders at a purchase price of
$0.017 per share.
2. On September 30, 1994, the Company issued 115,863 shares of Common
Stock in connection with the merger of Iasys Corporation with and into the
Company, in addition the Company repurchased 3,333 shares of common stock
from Iasys.
3. From September 30, 1994 to March 31, 1995, the Company issued and
sold, pursuant to a Series A Preferred Stock Purchase Agreement, an
aggregate of 4,646,131 shares of Series A Preferred Stock to 16 investors
at a purchase price of $3.30 per share.
4. From December 2, 1994 to January 4, 1995, the Company issued
warrants to purchase an aggregate of 413,191 shares of Common Stock at an
exercise price of $0.33 per share.
5. On December 9, 1994, January 1, 1996 and April 1, 1996, the Company
issued warrants to purchase an aggregate of 195,454 shares of Series A
Preferred Stock at exercise prices ranging from $3.30 to $6.60.
6. From January 1, 1995 to August 20, 1997, the Company issued 77,264
shares of Common Stock at values ranging from $0.33 per share to $8.25 per
share in connection with the entering into of certain collaboration
agreements and the reaching of certain milestones or other events pursuant
to such agreements.
7. On October 1, 1995, the Company transferred 5,871 shares of Common
Stock to the Seattle Biomedical Research Institute ("SBRI") and an
individual affiliated with SBRI, 2,537 of which represent a new issuance,
in exchange for certain intellectual property rights.
8. On May 10, 1996, the Company issued and sold, pursuant to a Series
B Preferred Stock Purchase Agreement, an aggregate of 505,050 shares of
Series B Preferred Stock to one investor at a per share price of $9.90.
9. On May 20, 1996 and May 31, 1996, the Company issued warrants to
purchase 38,585 shares of Common Stock at an exercise price of $6.60 per
share.
II-2
<PAGE> 4
10. On May 22, 1996, the Company issued a warrant to purchase 75,757
shares of Common Stock at an exercise price of $0.003 per share.
11. On December 23, 1996, the Company issued warrants to each holder
of Series B Preferred Stock of GenQuest to purchase up to an aggregate of
454,533 shares of the Company's Series B Preferred Stock at an exercise
price of $9.90 per share.
12. From February 1, 1996 through June 30, 1997, the Company issued
117,327 shares of Common Stock at a weighted average exercise price of
$0.43 per share to eleven employees, directors and consultants, pursuant to
the exercise of stock options granted under the 1994 Plan.
The sales and issuances of securities in the transaction described in
paragraphs 1-10 were deemed to be exempt from registration under the Securities
Act of 1933, as amended (the "Securities Act") in reliance on Section 4(2) of
the Securities Act or Regulation D promulgated thereunder as transactions by an
issuer not involving a public offering. The sales and issuances of securities in
the transaction described in paragraph 11 were deemed to be exempt from
registration under the Securities Act, by virtue of Rule 701 promulgated
thereunder in that they were offered and sold either pursuant to written
compensatory benefit plans or pursuant to a written contract relating to
compensation, as provided by Rule 701. The recipients of securities in each such
transaction represented their intentions to acquire the securities for
investment only and not with a view to or for sale in connection with any
distribution thereof, and appropriate legends were affixed to the share
certificates, options and warrants issued in such transactions. All recipients
had adequate access, through their employment or other relationships with the
Company, to information about the Company.
(b) There were no underwritten offerings employed in connection with any of
the transactions set forth in Item 15(a).
ITEM 16. EXHIBITS AND FINANCIAL STATEMENT SCHEDULES
(a) Exhibits
<TABLE>
<CAPTION>
NUMBER DESCRIPTION
-------- ----------------------------------------------------------------------------
<C> <S>
1.1* Form of Underwriting Agreement
3.1* Amended and Restated Certificate of Incorporation of Registrant
3.2* Form of Amended and Restated Certificate of Incorporation of Registrant to
be filed with the Delaware Secretary of State
3.3* Bylaws of Registrant
4.1* Specimen Common Stock Certificate
5.1* Opinion of Venture Law Group, A Professional Corporation
10.1* 1994 Amended and Restated Stock Option and Restricted Stock Plan and forms
of stock purchase and stock option agreement
10.2* 1997 Directors' Stock Option Plan and form of stock option agreement
10.3* 1997 Employee Stock Purchase Plan and form of subscription agreement
10.4* Corixa Corporation 401(k) Savings & Retirement Plan
10.5* Form of Indemnification Agreement
10.6* Amended and Restated Investors' Rights Agreement dated as of May 10, 1996
between Registrant and certain holders of its capital stock
10.7* Lease Agreement dated October 28, 1994 and amended December 29, 1995 between
Registrant and Fred Hutchinson Cancer Research Center
10.8* Lease Agreement dated May 31, 1996 between Registrant and Health Science
Properties, Inc.
10.9+* Tuberculosis Collaboration and License Agreement between Registrant and
SmithKline Beecham Biologicals S.A. dated October 6, 1995
10.10+* Tuberculosis Collaboration and License Agreement Extension between
Registrant and SmithKline Beecham Biologicals S.A. dated February 25, 1997
</TABLE>
II-3
<PAGE> 5
<TABLE>
<CAPTION>
NUMBER DESCRIPTION
-------- ----------------------------------------------------------------------------
<C> <S>
10.11+* Option Agreement between Registrant and SmithKline Beecham Biologicals S.A.
dated March 1, 1997
10.12+* Special Biologicals and Material Transfer Agreement between Registrant and
SmithKline Beecham Biologicals S.A. dated March 1, 1997
10.13+* Breast Cancer Collaboration and License Agreement between Registrant and
SmithKline Beecham Biologicals S.A. dated March 1, 1997
10.14+ Prostate Cancer Collaboration and License Agreement between Registrant and
SmithKline Beecham Biologicals S.A. dated March 1, 1997
10.15+* Research Collaboration and License Agreement between Registrant and CellPro,
Incorporated dated November 1, 1995
10.16+* First Amendment to Research Collaboration and License Agreement between
Registrant and CellPro, Incorporated dated January 1, 1997
10.17+* Research Agreement between Registrant and ZymoGenetics, Inc. dated September
30, 1996
10.18+* Licensing Agreement between Registrant and Dana-Farber Cancer Institute,
Inc. dated January 1, 1995
10.19+* License, Development and Supply Agreement between Registrant and Abbott
Laboratories dated July 24, 1997
10.20+* Option and License Agreement between Registrant and Pasteur Merieux
Connaught dated December 23, 1996
10.21* Amendment to Option and License Agreement between Registrant and Pasteur
Merieux Connaught dated March 28, 1997
10.22+* Amended and Restated License and Research Collaboration Agreement dated
December 23, 1996 between Registrant and GenQuest, Inc.
10.23+* Amendment No. 1 to the Amended and Restated License and Research
Collaboration Agreement dated January 1, 1997 by and between Registrant and
GenQuest, Inc.
10.24* Form of Amended and Restated Call Option Agreement dated December 23, 1996
by and among Registrant, GenQuest, Inc. and investors of GenQuest listed on
Exhibit A thereto
10.25+ Amended and Restated Administrative Services and Management Agreement dated
December 23, 1996 by and between Registrant and GenQuest, Inc.
10.26+* Amended and Restated Research Services and Intellectual Property Agreement
effective as of January 1, 1997 by and between Registrant and the Infectious
Disease Research Institute
10.27+* License Agreement dated November 20, 1995 by and between Registrant and
Health Research, Inc.
10.28* Amendment No. 1 to License Agreement dated January 1, 1997 by and between
Registrant and Health Research, Inc.
10.29+* License Agreement dated May 22, 1996 by and among Registrant, Southern
Research Institute and University of Alabama at Birmingham Research
Foundation
10.30+ Amendment No. 1 to License Agreement dated April 30, 1997 by and among
Registrant, Southern Research Institute and University of Alabama at
Birmingham Research Foundation
11.1* Statement of Computation of Pro Forma Net Loss Per Share
23.1* Consent of Ernst & Young LLP, Independent Auditors
23.2* Consent of KPMG Peat Marwick LLP, Independent Auditors
23.3* Consent of Venture Law Group, A Professional Corporation (included in
Exhibit 5.1)
24.1* Power of Attorney (see page II-6)
27.1* Financial Data Schedule
</TABLE>
- ---------------
* Previously filed.
+ Confidential treatment requested.
II-4
<PAGE> 6
(b) Financial Statement Schedule
Schedule II -- Valuation and Qualifying Accounts
Schedules not listed above have been omitted because the information
required to be set forth therein is not applicable or is shown in the financial
statements or notes thereto.
ITEM 17. UNDERTAKINGS
The undersigned hereby undertakes to provide to the Underwriters at the
closing specified in the Underwriting Agreement, certificates in such
denominations and registered in such names as required by the Underwriters to
permit prompt delivery to each purchaser.
Insofar as indemnification for liabilities arising under the Securities Act
may be permitted to directors, officers and controlling persons of the
Registrant pursuant to the provisions referenced in Item 14 of this Registration
Statement or otherwise, the Registrant has been advised that in the opinion of
the Commission such indemnification is against public policy as expressed in the
Securities Act, and is, therefore, unenforceable. In the event that a claim for
indemnification against such liabilities (other than the payment by the
Registrant of expenses incurred or paid by a director, officer, or controlling
person of the Registrant in the successful defense of any action, suit or
proceeding) is asserted by such director, officer or controlling person in
connection with the securities being registered hereunder, the Registrant will,
unless in the opinion of its counsel the matter has been settled by controlling
precedent, submit to a court of appropriate jurisdiction the question whether
such indemnification by it is against public policy as expressed in the
Securities Act and will be governed by the final adjudication of such issue.
The undersigned Registrant hereby undertakes that:
(1) For purposes of determining any liability under the Securities
Act, the information omitted from the form of Prospectus filed as part of
this Registration Statement in reliance upon Rule 430A and contained in a
form of Prospectus filed by the Registrant pursuant to Rule 424(b)(1) or
(4) or 497(h) under the Securities Act shall be deemed to be part of this
Registration Statement as of the time it was declared effective.
(2) For the purpose of determining any liability under the Securities
Act, each post-effective amendment that contains a form of Prospectus shall
be deemed to be a new Registration Statement relating to the securities
offered therein, and the offering of such securities at that time shall be
deemed to be the initial bona fide offering thereof.
II-5
<PAGE> 7
SIGNATURES
Pursuant to the requirements of the Securities Act of 1933, as amended, the
Company has duly caused this Amendment to the Registration Statement on Form S-1
to be signed on its behalf by the undersigned, thereunto duly authorized in the
City of Seattle, State of Washington, on this 30th day of September, 1997.
CORIXA CORPORATION
By: /s/ STEVEN GILLIS
------------------------------------
Steven Gillis
President and Chief Executive
Officer
POWER OF ATTORNEY
Pursuant to the requirements of the Securities Act of 1933, as amended,
this Amendment to the Registration Statement has been signed by the following
persons in the capacities and on the date indicated below:
<TABLE>
<CAPTION>
SIGNATURE TITLE DATE
- ------------------------------------------ ---------------------------- -------------------
<S> <C> <C>
/s/ STEVEN GILLIS President, Chief Executive September 30, 1997
---------------------------------------- Officer and Director
(Steven Gillis) (Principal Executive
Officer)
/s/ MICHELLE BURRIS* Vice President, Finance and September 30, 1997
---------------------------------------- Administration (Principal
(Michelle Burris) Financial and Accounting
Officer)
/s/ MARK MCDADE* Executive Vice President, September 30, 1997
---------------------------------------- Chief
(Mark McDade) Operating Officer and
Director
/s/ JOSEPH S. LACOB* Chairman of the Board of September 30, 1997
---------------------------------------- Directors
(Joseph S. Lacob)
/s/ ARNOLD L. ORONSKY* Director September 30, 1997
----------------------------------------
(Arnold L. Oronsky)
/s/ ANDREW E. SENYEI* Director September 30, 1997
----------------------------------------
(Andrew E. Senyei)
*By: /s/ STEVEN GILLIS
-------------------------------------
Steven Gillis, Attorney-in-Fact
</TABLE>
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<PAGE> 8
EXHIBIT INDEX
<TABLE>
<CAPTION>
SEQUENTIALLY
NUMBERED
NUMBER DESCRIPTION PAGES
-------- ------------------------------------------------------------------ ------------
<S> <C> <C>
1.1* Form of Underwriting Agreement....................................
3.1* Amended and Restated Certificate of Incorporation of Registrant...
3.2* Form of Amended and Restated Certificate of Incorporation of
Registrant to be filed with the Delaware Secretary of State.......
3.3* Bylaws of Registrant..............................................
4.1* Specimen Common Stock Certificate.................................
5.1* Opinion of Venture Law Group, A Professional Corporation..........
10.1* 1994 Amended and Restated Stock Option and Restricted Stock Plan
and forms of stock purchase and stock option agreement............
10.2* 1997 Directors' Stock Option Plan and form of stock option
agreement.........................................................
10.3* 1997 Employee Stock Purchase Plan and form of subscription
agreement.........................................................
10.4* Corixa Corporation 401(k) Savings & Retirement Plan...............
10.5* Form of Indemnification Agreement.................................
10.6* Amended and Restated Investors' Rights Agreement dated as of May
10, 1996 between Registrant and certain holders of its capital
stock.............................................................
10.7* Lease Agreement dated October 28, 1994 and amended December 29,
1995 between Registrant and Fred Hutchinson Cancer Research
Center............................................................
10.8* Lease Agreement dated May 31, 1996 between Registrant and Health
Science Properties, Inc...........................................
10.9+* Tuberculosis Collaboration and License Agreement between
Registrant and SmithKline Beecham Biologicals S.A. dated October
6, 1995...........................................................
10.10+* Tuberculosis Collaboration and License Agreement Extension between
Registrant and SmithKline Beecham Biologicals S.A. dated February
25, 1997..........................................................
10.11+* Option Agreement between Registrant and SmithKline Beecham
Biologicals S.A. dated March 1, 1997..............................
10.12+* Special Biologicals and Material Transfer Agreement between
Registrant and SmithKline Beecham Biologicals S.A. dated March 1,
1997..............................................................
10.13+* Breast Cancer Collaboration and License Agreement between
Registrant and SmithKline Beecham Biologicals S.A. dated March 1,
1997..............................................................
10.14+ Prostate Cancer Collaboration and License Agreement between
Registrant and SmithKline Beecham Biologicals S.A. dated March 1,
1997..............................................................
10.15+* Research Collaboration and License Agreement between Registrant
and CellPro, Incorporated dated November 1, 1995..................
10.16+* First Amendment to Research Collaboration and License Agreement
between Registrant and CellPro, Incorporated dated January 1,
1997..............................................................
10.17+* Research Agreement between Registrant and ZymoGenetics, Inc. dated
September 30, 1996................................................
10.18+* Licensing Agreement between Registrant and Dana-Farber Cancer
Institute, Inc. dated January 1, 1995.............................
10.19+* License, Development and Supply Agreement between Registrant and
Abbott Laboratories dated July 24, 1997...........................
10.20+* Option and License Agreement between Registrant and Pasteur
Merieux Connaught dated December 23, 1996.........................
10.21* Amendment to Option and License Agreement between Registrant and
Pasteur Merieux Connaught dated March 28, 1997....................
</TABLE>
<PAGE> 9
<TABLE>
<CAPTION>
SEQUENTIALLY
NUMBERED
NUMBER DESCRIPTION PAGES
-------- ------------------------------------------------------------------ ------------
<S> <C> <C>
10.22+* Amended and Restated License and Research Collaboration Agreement
dated December 23, 1996 between Registrant and GenQuest, Inc. ....
10.23+* Amendment No. 1 to the Amended and Restated License and Research
Collaboration Agreement dated January 1, 1997 by and between
Registrant and GenQuest, Inc. ....................................
10.24* Form of Amended and Restated Call Option Agreement dated December
23, 1996 by and among Registrant, GenQuest, Inc. and investors of
GenQuest listed on Exhibit A thereto..............................
10.25+* Amended and Restated Administrative Services and Management
Agreement dated December 23, 1996 by and between Registrant and
GenQuest, Inc. ...................................................
10.26+* Amended and Restated Research Services and Intellectual Property
Agreement effective as of January 1, 1997 by and between
Registrant and the Infectious Disease Research Institute..........
10.27+* License Agreement dated November 20, 1995 by and between
Registrant and Health Research, Inc. .............................
10.28* Amendment No. 1 to License Agreement dated January 1, 1997 by and
between Registrant and Health Research, Inc. .....................
10.29+* License Agreement dated May 22, 1996 by and among Registrant,
Southern Research Institute and University of Alabama at
Birmingham Research Foundation....................................
10.30+ Amendment No. 1 to License Agreement dated April 30, 1997 by and
among Registrant, Southern Research Institute and University of
Alabama at Birmingham Research Foundation.........................
11.1* Statement of Computation of Pro Forma Net Loss Per Share..........
23.1* Consent of Ernst & Young LLP, Independent Auditors................
23.2* Consent of KPMG Peat Marwick LLP, Independent Auditors............
23.3* Consent of Venture Law Group, A Professional Corporation (included
in Exhibit 5.1)...................................................
24.1* Power of Attorney (see page II-6).................................
27.1* Financial Data Schedule...........................................
</TABLE>
- ---------------
* Previously filed.
+ Confidential treatment requested.
<PAGE> 1
EXHIBIT 10.14
PROSTATE CANCER COLLABORATION AND
LICENSE AGREEMENT
BETWEEN
CORIXA CORPORATION
AND
SMITHKLINE BEECHAM BIOLOGICALS MANUFACTURING S.A.
-1-
<PAGE> 2
TABLE OF CONTENTS
<TABLE>
<S> <C>
1. DEFINITIONS 3
2. SCOPE OF RESEARCH PROGRAM 8
3. RESEARCH PROGRAM TERM AND TERMINATION 8
4. LICENSE GRANT 9
5. LICENSE PAYMENTS 10
6. ROYALTIES 12
7. OTHER TERMS 15
8. JOINT RESEARCH TEAM 15
9. INVENTIONS 16
10. PATENTS; PROSECUTION AND LITIGATION 16
11. CONFIDENTIALITY; PUBLICITY; PUBLICATIONS 18
12. GOVERNING LAW; ARBITRATION 20
13. MISCELLANEOUS 21
14. NOTICES 22
15. ASSIGNMENT 22
16. WARRANTIES AND REPRESENTATIONS 23
17. TERM AND TERMINATION 23
18. RIGHTS AND DUTIES UPON TERMINATION 25
19. INDEMNIFICATION 25
EXHIBIT A 27
EXHIBIT B 28
EXHIBIT C 30
EXHIBIT D 31
</TABLE>
-2-
<PAGE> 3
PROSTATE CANCER COLLABORATION AND LICENSE AGREEMENT
This PROSTATE CANCER COLLABORATION AND LICENSE AGREEMENT (together, with the
attachments hereto, the "Agreement") is entered into the ______ day of March,
1997 (the "Effective Date") by and between CORIXA CORPORATION, a Delaware
corporation with its principal place of business located at 1124 Columbia
Street, Suite 464, Seattle, Washington 98104 ("Corixa") and SmithKline Beecham
Biologicals Manufacturing S.A., a Belgian corporation with its principal place
of business at Rue de l'Institut 89, B-1330 Rixensart, Belgium ("SB").
W I T N E S S E T H:
WHEREAS, Corixa and SB desire to collaborate in the research and
development of antigens for the development of Vaccine product(s) for the
prevention and/or treatment of any form of prostate cancer and wish to
memorialize their agreement with respect to such collaboration in this
Agreement;
WHEREAS, Corixa has agreed to license certain intellectual property
rights related to the subject matter of the collaboration subject to the terms
and conditions of this Agreement;
NOW, THEREFORE, for and in consideration of the mutual observance of
the covenants hereinafter set forth and other good and valuable consideration,
the receipt of which is hereby acknowledged, the parties hereto agree as
follows:
1. DEFINITIONS
(a) "Affiliate" shall mean any entity owned, owning or under
common ownership with a party to this Agreement to the extent
of at least fifty percent (50%) of the equity (or such lesser
percentage which is the maximum allowed to be owned by a
foreign corporation in a particular jurisdiction) having the
power to vote on or direct the affairs of the entity and any
person, firm, partnership, corporation or other entity
actually controlled by, controlling or under common control
with a party to this Agreement.
(b) "Antigens" shall mean [***]
(c) "PC" shall mean prostate cancer.
(d) "PC Field" shall mean any and all in vivo administered
prophylactic and/or therapeutic prostate cancer Vaccines for
use in humans.
(e) "Blocking Patents" shall mean any patents and/or patent
applications owned and/or controlled by Third Parties having
claims which would be infringed by SB making, having made,
using, having used, offering for sale, selling or having sold
all or part of
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<PAGE> 4
Product and which would prevent SB from using the intellectual
property rights granted to SB by Corixa hereunder.
(f) "Competition" shall mean a product which would otherwise
infringe Corixa Patents or Joint Research Program Patents.
(g) "Corixa" shall mean Corixa Corporation and its Affiliates.
(h) "Corixa Antigens" shall mean (i) those Antigens identified on
Exhibit A attached hereto and/or (ii) those Antigens solely
discovered by Corixa during the Research Program Term as may
be extended in connection with and as a result of the Research
Program and/or (iii) those Antigens discovered by Corixa as a
result of research directed to PC during the Research Program
Term as may be extended but not in connection with and not as
a result of the Research Program and, subject to SB's exercize
of the option set forth in Paragraph 4(d) below, during a
period of two (2) years after the Research Program Term as may
be extended and/or (iv) subject to SB's compliance with the
terms and conditions of Paragraph 4(c) below, those Antigens
in the PC Field licensed-in or otherwise acquired by Corixa
during the Research Program Term as may be extended and,
subject to Paragraph 4(d) below, during a period of two (2)
years thereafter. As used herein, Corixa Antigens shall not
include Research Program Antigens nor SB Antigens.
(i) "Corixa Patents" shall mean all patents and patent applications
(including those arising from the Research Program) which are
now or become owned and/or controlled by Corixa during the
Research Program Term as may be extended and, subject to
Paragraph 4(d) below, during a period of two (2) years
thereafter and/or under which Corixa otherwise has, now or in
the future, the right to grant licenses, which generically or
specifically claim all or part of Product(s), a process for
manufacturing Product(s), intermediates used in such process or
a use of Product and any and all technology(ies) generated
solely by Corixa in connection with Corixa's performance under
this Agreement during the Research Program Term as may be
extended and, subject to Paragraph 4(d) below, during a period
of two (2) years thereafter. Included with the definition of
Corixa Patents are any continuations, continuations-in-part,
divisions, patents of addition, reissues, renewals or
extensions thereof. Also included within the definition of
Corixa Patents are any patent applications which generically or
specifically claim any improvements on Product or intermediates
or manufacturing processes required or useful for production of
Product which are developed by Corixa, or which Corixa
otherwise has the right to grant licenses, now or in the future
during the Research Program Term as may be extended and,
subject to Paragraph 4(d) below, during a period of two (2)
years thereafter. Corixa Patents shall specifically not include
SB Patents. Corixa Patents in existence as of the Effective
Date are set forth on Exhibit B attached hereto. Exhibit B
also sets forth a list of patents owned and/or controlled by
Corixa which are specifically excluded from the scope of Corixa
Patents and shall not be considered Corixa Patents for the
purpose of this Agreement and to which SB shall have no rights
except as separately agreed by the parties in a written
separate agreement.
(j) "Identified" shall mean that the Know-How is described or
recorded in such a manner as to make it possible to verify
that it fulfills the criteria of secrecy and substantiality
and to
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<PAGE> 5
ensure that SB is not unduly restricted in its exploitation of
its own technology. To be Identified the Know-How can either
be set out in this Agreement or in a separate document or
recorded in any other appropriate form at the latest when the
Know-How is transferred or shortly thereafter, provided that
the separate document or other record can be made available if
the need arises.
(k) "Joint Inventions" shall have the meaning set forth in Section
(l) "Joint Research Program Patents" shall mean all patents and
patent applications which cover Joint Inventions and which
generically or specifically claim Product, a process for
manufacturing Product, and intermediates used in such process
or a use of Product and any and all technology(ies) generated
during the Research Program Term as may be extended. Included
with the definition of Joint Research Program Patents are any
continuations, continuations-in-part, divisions, patents of
addition, reissues, renewals or extensions thereof. Also
included within the definition of Joint Research Program
Patents are any patent applications which cover Joint
Inventions and which generically or specifically claim any
improvements on Product or intermediates or manufacturing
processes required or useful for production of Product. In no
event shall Joint Research Program Patents be deemed to
include Corixa Patents or SB Patents.
(m) "Joint Research Team" shall have the meaning set forth in
Paragraph 8(a).
(n) "Know-How" shall mean all technical information, materials and
know-how owned and/or controlled by Corixa now and/or during
the term of the Research Program Term as may be extended and,
subject to SB's exercize of the option set forth in Paragraph
4(d) below, during a period of two (2) years thereafter, which
directly relates to Product and shall include, without
limitation, all chemical, pharmacological, toxicological,
clinical, assay, control and manufacturing data and any other
information relating to Products and useful for the
development and commercialization of Products and strains,
samples, analytical tools, libraries, clones, etc.
(o) "Licensed Field" shall mean any and all in vivo administered
[***] cancer Vaccines for use [***] and shall [***] adoptive
immunotherapy.
(p) "Milestone" shall mean the technical milestone set forth in
Exhibit C attached hereto, the satisfaction of which shall be
reasonably determined by the Joint Research Team within ten
(10) days of submission of the relevant information and data
by Corixa to the Joint Research Team.
(q) "Net Sales"
(i) For purposes of this Agreement, Net Sales shall be
defined to mean the aggregate amounts invoiced by SB
or its Affiliates, licensees or sublicensees to
non-Affiliate Third Parties from sales of Product
less (i) normal customary trade discounts allowed and
taken; (ii) rebates to wholesalers; (iii) returns;
(iv) amounts for including insurance; (v) shipping
charges to purchasers if invoiced separately; (vi)
taxes (not including any income taxes), and duties
levied on sales;
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<PAGE> 6
transportation(vii) deduction allowed for
government-mandated vaccine insurance premiums, such
as the National Childhood Vaccine Injury Act in the
U.S.; (viii) a deduction, at standard cost, for
special administration devices and the packaging and
filling thereof, such as pre-filled syringes;
provided, in no event shall the total of items (iii)
through (vi) exceed [***] of Net Sales. Any
commercial use of a Product by SB (including its
Affiliates, licensees and sub licensees) shall be
considered a sale hereunder for accounting and royalty
purposes.
(ii) In determining royalty payments hereunder, Net Sales
of Product shall be multiplied by [***].
(iii) In the event of a product incorporating a Product and
one or more non-prostate cancer Vaccines (a
"Combination Product"), Net Sales shall exclude [***].
(r) "Product" shall mean any product comprised at least of one (1)
or more Corixa Antigens and/or Research Program Antigens,
including any combination thereof. In addition to Corixa
Antigens and/or Research Program Antigens Product may also
include SB Antigen(s).
(s) "Research Program" shall have the meaning set forth in
Paragraph 2(a).
(t) "Research Program Antigens" shall mean Antigens discovered by
Corixa and SB during the Research Program Term, as may be
extended, in connection with and as a result of the conduct of
the Research Program.
(u) "Research Program Term" shall have the meaning set forth in
Paragraph 3(a).
(v) "SB" shall mean SmithKline Beecham Biologicals Manufacturing
S.A. and its Affiliates.
(w) "SB Antigens" shall mean Antigens discovered and/or
in-licensed by SB and related physical forms based on such
Antigens including peptides, proteins and nucleic acids other
than Research Program Antigens.
(x) "SB Patents" shall mean all patents and patent applications
which are now or become owned and/or controlled by SB (other
than jointly with Corixa) and/or under which SB
otherwise has, now or in the future, the right to grant
licenses, which generically or specifically claim any Antigen
and/or adjuvant included in Product. Included with the
definition of SB Patents are any continuations,
continuations-in-part, divisions, patents of
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<PAGE> 7
addition, reissues, renewals or extensions thereof. In no
event shall SB Patents be deemed to include either Corixa
Patents or Joint Research Program Patents.
(y) "Secret" shall mean that the Know-How as a body or in the
precise configuration and assembly of its components is not
generally known or easily accessible, so that part of its
value consists in the lead-time SB gains when it is
communicated to it; Know-How is not limited to the narrow
sense that each individual component of the Know-How should be
totally unknown or unobtainable outside the Corixa's business.
(z) "SPC" shall mean all Supplementary Protection Certificates for
medicinal products and their equivalents provided under the
Council Regulation (EEC) N# 1768/92 of June 18, 1992.
(aa) "Substantial" shall mean that the Know-How includes
information which is of importance for the whole or a
significant part of (i) a manufacturing process or (ii) a
product or service, or (iii) for the development thereof and
excludes information which is trivial. Such Know-How must
thus be useful, i.e., can reasonably be expected at the date
of conclusion of the Agreement to be capable of improving the
competitive position of SB, for example by helping SB to enter
a new market or giving SB an advantage in competition with
other manufacturers or providers of services who do not have
access to the licensed Secret Know- How or other comparable
Secret know-how;
(bb) "Territory" shall mean all the countries of the world.
(cc) "Third Party(ies) shall mean any party other than a party to
this Agreement or an Affiliate.
(dd) "Vaccines" shall mean the administration of [***] any
formulation or configuration, for the primary purpose and
effect of eliciting a [***] or [***] immune response directed
directly or indirectly to such [***] contained therein.
[***]
"Interpretive Rules". For purposes of this Agreement, except as
otherwise expressly provided herein or unless the context otherwise
requires : (a) defined terms include the plural as well as the singular
and the use of any gender shall be deemed to include the other gender;
(b) references to "Articles", "Sections" and other subdivisions and to
"Schedules" and "Exhibits" without reference to a document, are to
designated Articles, Sections and other subdivisions of, and to
Schedules and Exhibits to, this Agreement; (c) the use of the term
"including" means "including but not limited to"; and (d) the words
"herein", "hereof", "hereunder" and other words of similar import refer
to this Agreement as a whole and not to any particular provision.
-7-
<PAGE> 8
2. SCOPE OF RESEARCH PROGRAM
(a) During the Research Program Term, the parties will collaborate
in the discovery and development of Antigens for use in
Vaccine(s) for the prevention and/or treatment of PC and any
other tumor type in the Licensed Field to the extent those
Antigens are useful for such tumor types. The program of
activities to be conducted by Corixa and SB during the term of
the Agreement is set forth in Exhibit D (the "Research
Program"). No material deviation in the subject matter and
scope of such Research Program shall be made without the
mutual and written agreement of both parties.
(b) During the Research Program Term and for a period of two (2)
years thereafter, Corixa shall not enter into any commercial
agreement with a Third Party with respect to a collaboration
regarding the PC Field without the prior written consent of SB.
Subject to provisions of Paragraph 4(c), notwithstanding the
preceding sentence, Corixa may enter into research agreements
that provide for the in-licensing of intellectual property that
may be useful in the Research Program, provided that any such
agreement shall provide that Corixa will own and/or control all
intellectual property rights related to the Licensed Field
arising from such agreement and that Corixa Antigens arising
from the use of it shall automatically fall within the scope
of the rights and licences granted to SB by Corixa hereunder.
(c) The objective of the Research Program will be the development
of Product(s). At SB's option, Corixa Antigens and/or
Research Program Antigens shall be combined with SB Antigens
and/or adjuvants of SB, and such combinations may result in
discrete versions of the Product(s), consisting of potentially
different mixtures of Antigens and/or adjuvants and/or Corixa
Antigens and/or Research Program Antigens and/or SB Antigens.
3. RESEARCH PROGRAM TERM AND TERMINATION.
(a) The Research Program will be effective from January 1, 1997 to
December 31, 1998 (the "Research Program Term") and shall be
renewable for up to three (3) additional one (1) year periods.
SB shall have no obligation to renew the Research Program
beyond December 31, 1998, and any such renewal shall be at
SB's entire discretion. Corixa undertakes to : (i) use all
reasonable efforts to materially perform all activities set
forth in the Research Program; (ii) use all reasonable
efforts to achieve the Research Program's objective; and (iii)
use all reasonable efforts to achieve the Milestone within the
initial Research Program Term.
(b) At least four and a half (4 1/2) months prior to the end of
the initial Research Program Term and provided Corixa has met
the Milestone, SB shall have the option, exercisable by giving
Corixa written notice of its intent, to renew the Research
Program for a minimum of one (1) additional year and the
parties shall agree upon the terms and conditions including
the financial elements regarding such renewal, which at a
minimum shall be as set forth in Paragraph 5 (c) below.
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<PAGE> 9
The parties shall at the same time agree upon the scope of the
Research Program during such extended Research Program Term.
Thereafter, or in the event Corixa has not met the Milestone,
SB shall notify Corixa of its intention to renew the Research
Program at least two (2) months before the termination of each
affected Research Program Term, as renewed from time to time.
4. LICENSE GRANT
(a) Subject to the terms and conditions of this Agreement,
including, without limitation, the license payments and
royalty provisions in Sections 5 and 6 below, Corixa hereby
grants to SB an exclusive license, with the right to grant
sublicenses, under Corixa Patents, Joint Research Program
Patents, Know-How and any SPC to make, have made, use, have
used, sell, offer for sale, have sold, keep and import any and
all Products in the Licensed Field in the Territory, in any
formulation, configuration, combination and/or with any
delivery system. For purpose of clarity, the foregoing
license shall include rights of SB to Corixa Antigens and/or
Research Program Antigens in and outside the PC Field but in
the Licensed Field; any commercial use of such Corixa Antigens
and/or Research Program Antigens shall be subject to the
royalties set forth in Section 6 in the same manner as
royalties are paid on Products thereunder.
(b) In the event that a governmental agency in any country or
territory grants or compels Corixa to grant a license to any
Third Party for product(s) that compete(s) with Product, SB
shall have the benefit in such country or territory (and any
other country into which products that compete with Product
are sold by such Third Party compulsory licensee) of the terms
granted to such Third Party to the extent that such terms are
more favourable to the Third Party than those granted to SB
under this Agreement.
(c) During the Research Program Term, if Corixa or SB believes
that technology related to the subject matter of the Research
Program that is controlled by a Third Party including GenQuest
Inc., which may include new Antigens, adjuvants and/or
Blocking Patents ("Additional Technology") would be valuable
or necessary to the Research Program in the Licensed Field
hereunder, Corixa or SB as appropriate shall present such
Additional Technology, along with a written report with
respect thereto to the Joint Research Team. The Joint
Research Team shall then determine, except for Blocking
Patents which shall be at SB's sole discretion subject to
other provisions contained herein, whether licenses to, and/or
acquisitions of, such Additional Technology should be made,
the party that shall approach and negotiate with any Third
Party(ies) and the terms of any agreement(s) with any Third
Parties, including, without limitation, payments for sponsored
research. No such Third Party license and/or acquisition
shall be effective with respect to SB unless and until SB has
specifically agreed in writing to abide by the applicable
terms and conditions of any such license and/or acquisition,
and to make such payments and/or royalties as are mutually
agreed to by the parties and provided further that the access
to and acquisition of any Blocking Patents shall be decided by
SB at its entire discretion, provided however that if Corixa
disagrees on the acquisition by SB of a Blocking Patent, the
matter shall be submitted for resolution to the CEO of Corixa
and the Senior Vice President and General Manager of SB. In
case of persistent disagreement, the matter shall be submitted
to arbitration pursuant to Section 12 below. In any event, the
parties
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<PAGE> 10
shall behave reasonably and adopt a standard of reasonableness
in their assessment of the matter. Notwithstanding the
foregoing, this Paragraph 4(c) shall not be deemed to preclude
either party from acquiring Additional Technology.
(d) Corixa hereby grants SB an option during a two (2) year period
from the end of the Research Program to acquire an exclusive
license under any Corixa Patents filed by Corixa and/or
Know-How developed by Corixa during said two (2) year period
and/or which are owned and/or controlled by Corixa and/or
under which Corixa otherwise has the right to grant licenses
for use in the PC Field during a period of two (2) years after
the Research Program Term as may be extended. License terms
and conditions with respect to licensing-in such Corixa
Patents and/or Know-How shall be negotiated in good faith
between the parties taking into account the value of such
Corixa Patents and/or Know-How and their contribution to the
successful development of Product in the PC Field, but shall
in no event have the effect of rendering the terms of this
Agreement less favourable to Corixa than those currently
agreed upon.
5. LICENSE PAYMENTS. SB will make the following payments to Corixa under
this Agreement by wire transfer of immediately available funds:
(a) Technology access fees in the following amounts :
<TABLE>
<CAPTION>
-----------------------------------------------------------------------------------------------------
PAYMENT DATE PAYMENT AMOUNT (U.S.$)
-----------------------------------------------------------------------------------------------------
<S> <C>
Execution of this Agreement [***]
April 1, 1997 [***]
July 1, 1997 [***]
October 1, 1997 [***]
January 1, 1998 [***]
April 1, 1998 [***]
July 1, 1998 [***]
October 1, 1998 [***]
Second anniversary of this Agreement [***] (the "Milestone
Payment")
-----------------------------------------------------------------------------------------------------
</TABLE>
Notwithstanding the foregoing, SB will only be obligated to
make the Milestone Payment on [***] of this Agreement if the
following conditions are satisfied or waived (the "Milestone
Payment Conditions") : (i) Corixa has achieved the Milestone
(as determined by the Joint Research Team) and (ii) the
Research Program has not been terminated effective on or before
the date the Milestone Payment is due. If SB is not obligated
to make the Milestone Payment on the [***] of this Agreement,
then the Milestone Payment shall be delayed and shall become
due and payable on the [***] of this Agreement provided the
Milestone Payment Conditions have been satisfied or waived, or
if not satisfied or waived, then on the [***] of this Agreement
provided that the Milestone Payment Conditions have by then
been satisfied or waived, or if not satisfied or waived, then
on the [***] of this Agreement provided that the Milestone
Payment Conditions have by then been satisfied or waived. If
SB is not obligated to make the Milestone Payment on or
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<PAGE> 11
before the [***] of this Agreement and if SB extends the
Research Program Term beyond the [***] of this Agreement, then
SB shall pay Corixa a one time non-refundable payment of U.S. $
[***] on the [***] hereof only, which shall be fully creditable
against the Milestone Payment to the extent the latter becomes
due and payable on the [***] of this Agreement.
Notwithstanding the foregoing, if the Milestone Payment
Conditions are not satisfied or waived on or before the [***]
of this Agreement, the balance of the Milestone Payment shall
be forever waived and discharged by Corixa.
(b) In addition to the technology access fees payable pursuant to
Paragraph 5(a) above, SB also agrees to pay Corixa the
following one-time milestone payments, to be made via wire
transfer of immediately available funds in U.S.$, within ten
(10) days of receipt of notice from SB to Corixa of
achievement of each of the following milestones with respect
to the first Product to meet such milestone :
<TABLE>
<CAPTION>
-----------------------------------------------------------------------------------------------------
MILESTONE PAYMENT (U.S.$)
-----------------------------------------------------------------------------------------------------
<S> <C> <C>
(i) Approval of IND $ [***]
(ii) Start of Phase II clinical trials $ [***]
(iii) Start of Phase III clinical trials $ [***]
(iv) Submission for regulatory $ [***]
approval in U.S.
(v) Regulatory approval in at least $ [***]
[***]
(vi) Regulatory approval in U.S. $ [***]
-----------------------------------------------------------------------------------------------------
</TABLE>
the milestones payments set forth in Subparagraphs 5(b)(iv),
(v) and (vi) above are fully creditable against future
royalties payable pursuant to Section 6, provided such
royalties will not be reduced by more than [***]
in any given year. Any uncredited portion will be carried
forward for credit in subsequent years.
(c) In the event SB wishes to extend the Research Program beyond
the second anniversary of this Agreement, the parties estimate
that the following additional technology access fees would be
required, which fees in Subparagraph 5(c)(ii) below are
subject to increase or decrease by mutual agreement of the
parties based upon the scope of work to be conducted:
i) For the [***] year : $ [***] U.S. dollars) per
quarter;
ii) For the [***] years: a minimum of [***]
of the third year funding level.
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<PAGE> 12
6. ROYALTIES. SB will pay Corixa a royalty on Net Sales of Products as
follows:
(a) Subject to Paragraphs 6(d) and 6(e) below, on annual Net Sales
of Products sold in countries where current claims of any
Corixa Patent and/or Joint Research Program Patent are issued
or are pending for up to [***] from the date of first filing
anywhere in the world (the priority date) or if pending after
such [***] period, then not until such time as issued, if ever,
SB shall pay royalties on annual Net Sales of Product (the
"Patent Royalty") payable on each portion of annual Net Sales
of Product as follows :
<TABLE>
<CAPTION>
-----------------------------------------------------------------------------------------------------
Net Sales Patent in Minimum Royalty
Country of Sale
-----------------------------------------------------------------------------------------------------
<S> <C> <C>
[***] [***] [***]
[***] [***] [***]
[***] [***] [***]
-----------------------------------------------------------------------------------------------------
</TABLE>
(b) To the extent the royalties set forth in Paragraph 6 (a) are
not applicable to a Product, then provided SB has actually
received and uses Know-How from Corixa in any Product, which
Know-How is Secret, Substantial and has been Identified by
Corixa, the percentage royalty rates specified below will be
payable for any Product sold into a country where, (x) a patent
application for a Corixa Patent and/or a Joint Research Program
Patent with claims covering the Product has been pending and no
patent with claims covering such Product has issued for a
period of more than [***] or (y) no patent application covering
such Product has been filed in the country of sale (the
"Know-How Royalty"), as adjusted based on the existence of
Competition in the respective country, as follows :
<TABLE>
<CAPTION>
-----------------------------------------------------------------------------------------------------
Net Sales No Patent - No Patent - Minimum
No Competition Royalty
Competition
-----------------------------------------------------------------------------------------------------
<S> <C> <C> <C>
[***] [***] [***] [***]
[***] [***] [***] [***]
[***] [***] [***] [***]
-----------------------------------------------------------------------------------------------------
</TABLE>
(c) Royalties under Paragraph 6 (a) shall be payable on a
country-by-country basis for the life of any valid granted
Corixa Patent and/or Joint Research Program Patent which has
not been successfully opposed by a Third Party or revoked on a
country-by- country basis. Royalties under Paragraph 6(b) shall
expire on a country-by-country basis [***] after first launch
of the first Product in any such country.
(d) Except for Antigens licensed hereunder that are covered by
Blocking Patent which are covered in Paragraph 6(e) below, SB
and Corixa shall share [***] any and all Third Party royalties
payable on Additional Technology or for
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<PAGE> 13
technology that is owned and/or controlled by a Third Party and
which is licensed to SB, incorporated into the Product(s),
which may include but shall not be limited to, royalties
payable for adjuvants such as, by way of an example only, [***]
adjuvants and other technology useful or necessary for the
Product. Corixa's contribution to such share shall be through
[***]. For the Know-How Royalty, the royalty rates, as set
forth in Paragraph 6(b) shall apply on the rates as reduced
according to this Paragraph 6(d), provided SB has royalty
obligations towards Third Party(ies) on its sales in those
countries. In the case both 6(d) and 6(e) apply, reductions in
accordance with 6(d) shall apply first.
(e) In the event of a Blocking Patent covering Corixa Antigens
and/or Research Program Antigens licensed hereunder, royalty
obligations to the Third Party will be [***].
(f) From the first launch of Product anywhere in the Territory SB
shall provide a royalty report and, if applicable, a royalty
payment to Corixa every six (6) months. The report and
payment relating to Net Sales shall be provided within sixty
(60) days after June 30 and December 31 of each calendar year
and shall include all Net Sales of Product by SB and its
Affiliates, licensees or sublicensees. SB shall keep, and
require any Affiliate, licensee and sublicensee to keep, for a
period of not less than five (5) years, complete and accurate
records of all Net Sales of Product. Corixa shall have the
right, at Corixa's sole expense except as hereinafter
provided, through a certified public accountant reasonably
acceptable to SB, and following reasonable notice, to examine
such records during regular business hours during the life of
the SB obligation to pay royalties on Product; provided,
however, that such examination shall not (i) be of records for
more than the prior two (2) years, (ii) take place more often
than once a year, and (iii) cover any records which date prior
to the date of the last examination, and provided further that
such accountants shall report to Corixa only as to the
accuracy of the royalty statements and payments. Copies of
such reports shall be supplied to SB.
In the event the report demonstrates that SB has underpaid
royalties, SB shall pay such royalties immediately upon request
of Corixa and to the extent such under payment is more than
[***] for the audited period, shall reimburse Corixa for the
expense of the audit. If SB has overpaid royalties, SB may
deduct such over-payments from future royalties owed to Corixa.
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<PAGE> 14
(g) In addition to, and simultaneous with, the royalty reports set
described in Paragraph 6(f) above, SB's Senior Vice President
and General Manager shall deliver to Corixa a certificate (the
"Royalty Certificate") stating that during the previous six (6)
month period, the following factors (the "Royalty Factors")
have equalled in the aggregate no more than [five and one-half
percent (5 1/2%)] of total sales of Product during such six (6)
month period: (i) normal customary trade discounts allowed and
taken; (ii) rebates to wholesalers; (iii) any deductions
allowed for government-mandated vaccine insurance premiums,
such as the National Childhood Vaccine Injury Act in the U.S.;
and (iv) any deduction, at standard cost, for special
administration devices and the packaging and filling thereof,
such as pre-filled syringes. In the event the Royalty Factors
exceed [five and one-half percent (5 1/2%)] in any six (6)
month period, SB may deduct such greater percentage for such
six (6) month period only, but shall provide Corixa with a
written explanation setting forth the reasons for such excess
and shall provide Corixa with a certificate that will state
that the pricing of all Products sold by SB and/or its
Affiliates has been on an "arms length" basis and not set so as
to subsidize sales of other products sold by SB and/or its
Affiliates. In the event of a disagreement with respect to
size of the Royalty Factors in any given six (6) month period,
the CEO of Corixa and the Senior Vice President and General
Manager of SB shall first attempt to resolve such disagreement
through good faith negotiation. In the event such resolution
is not achieved, the disagreement shall finally be resolved
through arbitration pursuant to Section 12 hereof.
(h) Royalties shall be paid by SB in U.S. dollars with currency
conversions calculated based upon the applicable closing
exchange rates quoted by the Foreign exchange desk of the
Generale de Banque, Brussels, Belgium on the last business day
of the applicable six (6) month period.
(i) Corixa shall pay to SB any royalty payments it actually
receives from GenQuest related directly to the sale of antibody
therapeutics (a "GenQuest Antibody Product") sold by GenQuest
or one of its licensees ("GenQuest"), provided, however, that
no such royalty shall be paid to SB by Corixa unless all of the
following conditions have been met:
(a) such royalties are paid to Corixa by GenQuest for sale
of GenQuest Antibody Product that is comprised of an
antibody or antibody fragment directed to an Antigen
which is identical to at least one of the Antigens
developed under the Research Program and is contained in
a Vaccine product that is actively being marketed and
sold in Europe and/or North America by SB.
(b) the GenQuest Antibody Product has been approved for use
in the same indication by the appropriate regulatory
authorities in the countries in which it is sold.
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<PAGE> 15
7. OTHER TERMS.
(a) MARKETING RIGHTS. Upon receipt of regulatory approval in the
Territory, SB shall use its reasonable commercial efforts to
launch and market the Product. Under the license granted
herein, SB may select sublicensees to maximize market
penetration. Corixa may review product marketing plans prior
to launch and annually, provided arrangements for such reviews
are made in advance, but SB will have the right to make all
final determinations with respect to any differences of
opinion that arise as part of such review.
(b) MANUFACTURING. Corixa will provide reasonable quantities of
preclinical test material for SB as required through the
course of the Research Program at no additional charge to SB.
These materials will include sufficient quantities of
[***]. It is anticipated that SB will provide for later
stage (clinical) and commercial requirements.
(c) PRODUCT DEVELOPMENT. SB shall have responsibility for, and
control of, the development and commercialization of each
Product arising from this Agreement, including process
development, delivery system and formulation development,
preclinical studies, clinical studies, sales and marketing.
8. JOINT RESEARCH TEAM.
(a) A joint research team will be established within thirty (30)
days after the full execution of this Agreement, responsible
for regular coordination and monitoring of the research
activities as well as patent related activities (the "Joint
Research Team"). The Joint Research Team will consist of at
least two (2) individuals from each of SB and Corixa. To
facilitate such coordination, the parties will share all
research data generated in this collaboration with each other
on a prompt and regular basis, which shall be at a minimum,
every three (3) months during quarterly meetings to be held
alternatively at Seattle and Rixensart. In addition, Corixa
shall provide SB with written monthly reports on the progress
of the Research Program. The data generated shall be subject
to the confidentiality provisions of Section 11 of this
Agreement. The Joint Research Team will review the Research
Program annually, implement any mutually agreeable
modifications and make recommendations related to possible
Research Program extensions to the respective senior
management teams of each company. In the event that the
members of the Joint Research Team are unable to agree on a
particular course of action, any such disagreement shall be
resolved in good faith by the CEO of Corixa and the Senior
Vice President and General Manager of SB together,
respectively. In case the disagreement relates to the
appropriateness of filing a patent application on any
invention arising out of the Research Program, each party
hereto shall be given an opportunity to file for applications
in its own right and in its own name and shall bear the
expenses thereof.
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(b) From the amounts specified in Paragraph 5(a) Corixa shall
allocate U.S. $[***] U.S. dollars) to the performance of the
Research Program for the first two (2) years. In the event the
amounts specified have not been dedicated fully to the Research
Program, the Joint Research Team will decide how these amounts
shall be allocated by Corixa to a further usage of the Research
Program. On an annual basis, Corixa shall provide to the Joint
Research Team a report in reasonable detail setting forth the
use of funds provided by SB to Corixa under Paragraph 5(a) of
this Agreement.
9. INVENTIONS.
Patentable inventions or discoveries which arise from the Research
Program and which are made by an employee or agent of Corixa, solely
or jointly other than with an employee or agent of SB, shall be owned
by Corixa. Patentable inventions or discoveries which arise from the
Research Program and which are made jointly by employees or agents of
Corixa and SB shall be jointly owned by Corixa and SB and treated as
joint inventions under the U.S. laws applicable to joint inventions
(collectively, "Joint Inventions"). Patentable inventions or
discoveries which arise from the Research Program and which are made
by an employee or agent of SB, solely or jointly other than with an
employee or agent of Corixa, shall be owned by SB. Except as
otherwise set forth in this Agreement, SB and Corixa shall retain
their respective unrestricted rights to make, have made, use and sell
all such inventions and discoveries which are owned solely by them .
In the event this Agreement is terminated by either party as a result
of an uncured breach by the other party under Paragraph 17(c) hereof,
without further action on the part of either party, the non-breaching
party will receive an exclusive license to all Joint Research Program
Patents and Joint Inventions in the Licensed Field and Know-How
associated therewith provided, however, that in the case this
Agreement is terminated by Corixa for uncured breach by SB, such
license shall in no event include SB Patents, and provided further
that if the non-breaching party is Corixa, such licence shall be
non-royalty bearing and if the non-breaching party is SB, such licence
shall be royalty bearing as per the present contract but all other
aspects of the contractual relationship other than survival clauses,
including Research Program and Technology Access Fees, shall terminate
forthwith while the licenses and rights granted to SB shall be
maintained. In such event, the breaching party agrees to take all
steps necessary to effectuate such license to the other party in
accordance with this Section 9.
10. PATENTS; PROSECUTION AND LITIGATION.
(a) Corixa shall have the right and the obligation to prosecute
and maintain all Corixa Patents and Joint Research Program
Patents and shall do so in a timely manner. Corixa shall
disclose to SB the complete texts of all patents and patent
applications filed by Corixa which relate to any Product
(including Corixa Patents and Joint Research Program Patents)
as well as all information received concerning the institution
or possible institution of any interference, opposition,
re-examination, reissue, revocation, nullification or any
official proceeding involving any patent licensed herein
anywhere in the Territory. SB shall have the right to review
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all such pending applications and other proceedings and make
recommendations to Corixa concerning them and their conduct.
Corixa agrees to keep SB promptly and fully informed of the
course of patent prosecution or other proceedings including by
providing SB with copies of substantive communications, search
reports and Third Party observations submitted to or received
from patent offices throughout the Territory. Corixa shall
provide such patent consultation to SB at no cost to SB. SB
shall hold all information disclosed to it under this Section
as confidential. SB shall reimburse Corixa for all reasonable
and documented costs incurred by Corixa prior to the Effective
Date in connection with the filing, prosecution and maintenance
of the Corixa Patents and for all reasonable and documented
costs incurred by Corixa during the term of this Agreement in
connection with the filing, prosecution and maintenance of the
Corixa Patents and/or the Joint Research Program Patents up to
an amount of [***] per year to the extent same are not already
reimbursed by SB to Corixa pursuant to the Breast Cancer
Collaboration and Licence Agreement of even date herewith. Any
such costs incurred by Corixa in connection with the filing,
prosecution and maintenance of Corixa Patents and/or Joint
Research Program Patents in excess of said [***] shall be
reimbursed by SB to Corixa only if they have been specifically
approved and authorized by the Joint Research Team, in its
reasonable discretion, and if they are reasonable and
documented. In determining whether to approve such additional
expenses, the Joint Research Team shall apply reasonable
standards taking into consideration the norms of the biotech
industry in general.
(b) In the event Corixa intends to finally abandon any patent or
any part of a patent (including Corixa Patents) covered by
this Agreement, it shall notify SB and SB shall have the right
at its own expense to assume responsibility for any such
patent or part of patent.
(c) In the event of the initiation of any suit by a Third Party
against Corixa, SB or the Affiliates of either for patent
infringement involving the manufacture, use, sale,
distribution or marketing of Product anywhere in the
Territory, the party sued shall promptly notify the other
party in writing. SB shall have the right but not the
obligation to defend such suit at its own expense. Corixa and
SB shall assist one another and cooperate in any such
litigation at the other's request without expense to the
requesting party.
(d) Subject to subparagraph (f) herebelow, in the event of any
threat or initiation of any legal action by a Third Party
challenging the validity of any patent covered by this
Agreement, Corixa shall have, at its own expense, the control
over the conduct and defense of such action in case it is
directed against Corixa Patents and SB shall have, at its own
expense, the control over the conduct and defense of any such
action directed against SB Patents and the first right to
control, at its own expense, the conduct and defense of any
such action directed against Joint Research Program Patents.
If SB elects not to conduct and defend such action directed
against Joint Research Program Patents, Corixa shall have the
right to do it at its own expense.
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(e) In the event that Corixa or SB becomes aware of actual or
threatened infringement of a patent covered by this Agreement
with respect to Products anywhere in the Territory, that party
shall promptly notify the other party in writing. SB shall
have the first right but not the obligation to bring an
infringement action against any Third Party and to use
Corixa's name in connection therewith. If SB does not
commence a particular infringement action within ninety (90)
days, Corixa, after notifying SB in writing, shall be entitled
to bring such infringement action at its own expense. The
party conducting such action shall have full control over its
conduct, provided that in the case Corixa is leading the
action it may not enter into any settlement without SB's
consent. In any event, Corixa and SB shall assist one another
and cooperate in any such litigation at the other's request
without expense to the requesting party.
(f) Corixa and SB shall recover their respective actual
out-of-pocket expenses, or equitable proportions thereof,
associated with any litigation or settlement thereof from any
recovery made by any party. In the event SB takes
responsibility for such actions, it shall bear [***] of the
expenses other than out-of-pocket expenses and Corixa shall
bear the remaining [***], provided that Corixa's remaining
share of the expenses do not exceed [***] of royalties owed to
Corixa by SB. Any excess amount shall be shared between SB and
Corixa, with SB receiving [***] and Corixa receiving [***] of
such excess. In the event Corixa takes responsibility for such
actions, Corixa will undertake all actions at its own entire
expense and recover [***]of any excess.
(g) The parties shall keep one another informed of the status of
their respective activities regarding any litigation or
settlement thereof concerning Product.
(h) DISCLAIMER OF WARRANTIES. CORIXA MAKES NO REPRESENTATIONS OR
WARRANTIES, EXPRESS OR IMPLIED OTHER THAN THOSE CONTAINED IN
SECTION 16 BELOW, WITH RESPECT TO THE CORIXA PATENTS, THE
JOINT RESEARCH PROGRAM PATENTS OR KNOW-HOW, AND ANY PRODUCTS
RELATED THERETO INCLUDING WITHOUT LIMITATION, ANY WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
(i) In the event GenQuest establishes a research and license
agreement with a Third Party, and such partnership includes the
reimbursement of patent expenses by such Third Party to
GenQuest, reasonable patent expenses directly related to any
patents shared between GenQuest and Corixa pursuant to the
Research Program shall be equally shared between SB and the
Third Party, subject to provision to SB of reasonable
documentation supporting such expenses.
11. CONFIDENTIALITY; PUBLICITY; PUBLICATIONS.
(a) During the term of this Agreement, Corixa shall promptly
disclose to SB and/or supply SB in a timely fashion with all
documented Know-How, all Corixa Patents
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and all relevant patent applications filed and/or controlled
by Corixa, all Corixa Antigens and all inventions related to
the Licensed Field arising from the Research Program as may be
extended and during a period of [***] thereafter. In
addition, each party will provide the other party with all
information which is reasonably necessary or useful for
achieving the goals of the Research Program.
(b) During the term of this Agreement, each party shall promptly
inform the other party of any information that it obtains or
develops regarding the utility and safety of any Product and
shall promptly report to the other party any confirmed
information of serious or unexpected reactions or side effects
related to the utilization or medical administration of
Product.
(c) During the term of this Agreement and for five (5) years
thereafter, irrespective of any termination earlier than the
expiration of the term of this Agreement, Corixa and SB shall
not use or reveal or disclose to any Third Party any
confidential information received from the other party or
otherwise developed by either party in the performance of
activities in furtherance of this Agreement without first
obtaining the written consent of the disclosing party, except
as may be otherwise provided herein, or as may be required for
purposes of investigating, developing, manufacturing or
marketing Product or for securing essential or desirable
authorizations, privileges or rights from governmental
agencies, or is required to be disclosed to a governmental
agency, or is necessary to file or prosecute patent
applications concerning Product or to carry out any litigation
concerning Product. This confidentiality obligation shall not
apply to such information which is or becomes a matter of
public knowledge, or is already in the possession of the
receiving party, or is disclosed to the receiving party by a
Third Party having the right to do so, or is subsequently and
independently developed by employees of the receiving party or
Affiliates thereof who had no knowledge of the confidential
information disclosed. The parties shall take reasonable
measures to assure that no unauthorized use or disclosure is
made by others to whom access to such information is granted.
(d) Nothing herein shall be construed as preventing SB from
disclosing any information received from Corixa to an
Affiliate, sublicensee or distributor, provided such Affiliate
is bound by similar confidentiality obligations and such
sublicensee or distributor has undertaken in writing a similar
obligation of confidentiality with respect to the confidential
information, with Corixa stated as a Third Party beneficiary
thereof.
(e) All confidential information disclosed by one party to the
other shall remain the intellectual property of the disclosing
party. In the event that a court or other legal or
administrative tribunal, directly or through an appointed
master, trustee or receiver, assumes partial or complete
control over the assets of a party to this Agreement based on
the insolvency or bankruptcy of such party, the bankrupt or
insolvent party shall promptly notify the court or other
tribunal (i) that confidential information received from the
other party under this Agreement remains the property of the
other party and (ii) of the confidentiality obligations
under this Agreement. In addition, the bankrupt or insolvent
party shall, to the extent
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permitted by law, take all steps necessary or desirable to
maintain the confidentiality of the other party's confidential
information and to insure that the court, other tribunal or
appointee maintains such information in confidence in
accordance with the terms of this Agreement.
(f) The parties to this Agreement may disclose the nature of the
intended Agreement in a press release following signature,
provided, however, except for the disease target under the
Research Program, that the terms of the Agreement are not
disclosed by either party. The wording of any press release
must be agreed to by both parties in advance of its release,
provided that such agreement is not unreasonably withheld by
either party.
(g) Neither party will publish or provide public disclosure of
information or inventions arising from the Research Program (a
"Dissemination") without at least sixty (60) days prior
written notice of such planned publication or disclosure sent
to the other party. In the event any such Dissemination is
determined by the other party to be detrimental to its
intellectual property position, the disseminating party will
delay such publication for a period sufficient to allow the
other party to take the steps necessary to protect such
intellectual property, including the filing of any patent
applications and/or deletion of its confidential information.
12. GOVERNING LAW; ARBITRATION.
This Agreement will be governed by the laws of the State of
Washington, USA. Any dispute, controversy or claim arising out of or
in relation to this Agreement or the breach, termination or invalidity
thereof, that cannot be settled amicably by agreement of the parties
hereto, shall be finally settled by arbitration in accordance with the
arbitration rules of the American Arbitration Association ("AAA"),
then in force, by one or more arbitrators appointed in accordance with
said rules; provided that the appointed arbitrators shall have
appropriate experience in the biopharmaceutical industry; provided
further, however, that arbitration proceedings may not be instituted
until the party alleging breach of this Agreement by the other party
has given the other party not less than sixty (60) days notice (or in
the case of non-payment pursuant to Section 5 or 6 then fourteen (14)
days notice) to remedy any alleged breach and the other party has
failed to do so. The place of arbitration shall be Seattle,
Washington, USA if arbitration is initiated by SB and New York, New
York, USA if initiated by Corixa. The award rendered shall be final
and binding upon both parties. The judgment rendered by the
arbitrator(s) shall include costs of arbitration, reasonable
attorneys' fees and reasonable costs for any expert and other
witnesses. The arbitration in such proceeding may expressly consider
the amounts paid pursuant to Section 5 hereof in considering any claim
of damages. Nothing in this Agreement shall be deemed as preventing
either party from seeking injunctive relief (or any other provisional
remedy) from any court having jurisdiction over the parties and the
subject matter of the dispute as necessary to protect either party's
name, proprietary information, trade secrets, know-how or any other
proprietary rights. Judgment upon the award may be entered in any
court having jurisdiction, or application may be made to such court for
judicial acceptance of the award and/or an order of enforcement as the
case may be.
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13. MISCELLANEOUS.
(a) TRADEMARK. SB shall be responsible for the selection, and SB
shall be responsible for registration and maintenance, of all
trademarks which are employed in connection with Product and
SB shall own and/or control any such trademarks; provided that
prior to selection of such trademarks, SB shall provide Corixa
an opportunity to review and comment on any such trademark.
(b) FORCE MAJEURE. If the performance of any part of this
Agreement by either party, or of any obligation under this
Agreement, is prevented, restricted, interfered with or
delayed by reason of any cause beyond the reasonable control
of the party liable to perform, unless conclusive evidence to
the contrary is provided, the party so affected shall, upon
giving written notice to the other party, be excused from such
performance to the extent of such prevention, restriction,
interference or delay, provided that the affected party shall
use its reasonable best efforts to avoid or remove such causes
of nonperformance and shall continue performance with the
utmost dispatch whenever such causes are removed. When such
circumstances arise, the parties shall discuss what, if any,
modification of the terms of this Agreement may be required in
order to arrive at an equitable solution.
(c) SEVERABILITY.
(i) In the event any portion of this Agreement shall be
held illegal, void or ineffective, the remaining
portions hereof shall remain in full force and
effect;
(ii) If any of the terms or provisions of this Agreement
are in conflict with any applicable statute or rule
of law, then such terms or provisions shall be deemed
inoperative to the extent that they may conflict
therewith and shall be deemed to be modified to
conform with such statute or rule of law.
(d) ENTIRE AGREEMENT. This Agreement, entered into as of the date
first written above, constitutes the entire agreement between
the parties relating to the subject matter hereof and
supersedes all previous writings and understandings except
that the Non Disclosure Agreements dated 17 February 1995 and
10 August 1995, the Tuberculosis collaboration and Licence
Agreement dated October 6, 1995 between Corixa Corporation and
SmithKline Beecham Biologicals S.A., the Breast Cancer
Collaboration and License Agreement of even date herewith and
the Option Agreement of even date herewith remain in full
force and effect. No terms or provisions of this Agreement
shall be varied or modified by any prior or subsequent
statement, conduct or act of either of the parties, except
that the parties may mutually amend this Agreement by written
instruments specifically referring to and executed in the same
manner as this Agreement.
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14. NOTICES.
(a) Any notice required or permitted under this Agreement shall be
deemed given if delivered (i) personally, (ii) by facsimile
transmission (receipt verified), (iii) by registered or
certified mail (return receipt requested), postage prepaid, or
(iv) sent by express courier service (receipt verified), to
the following addresses of the parties :
If to Corixa:
Corixa Corporation
1124 Columbia Street, Suite 464
Seattle, WA 98104
Attention: Chief Operating Officer
Telephone : (206) 667-5711
Telecopy : (206) 667-5715
with a copy to : Venture Law Group
4750 Carillon Point
Kirkland, Washington 98033
Attention : William W. Ericson
Telephone : (206) 739-8700
Telecopy : (206) 739-8750
If to SB:
SmithKline Beecham Biologicals
Manufacturing s.a.
Rue de l'Institut 89
1330 Rixensart, Belgium
Attention: Senior Vice President,
General Manager
Telephone : 32-2-656 8250
Telecopy : 32-2-656 8025
(b) Any notice required or permitted to be given concerning this
Agreement shall be effective upon receipt by the party to whom
it is addressed.
15. ASSIGNMENT.
Neither this Agreement nor any interest hereunder shall be assignable
by either party without the written consent of the other provided,
however, that either party may assign this Agreement and all patents
related to this Agreement to an Affiliate or to any corporation or
other entity with which it may merge or consolidate, and/or to any
corporation or other entity to which it may transfer all or
substantially all of its assets, without obtaining the consent of the
other party; provided that the consent of SB shall be required for any
assignment, whether by way of transfer of all or substantially all
assets of Corixa or by merger or consolidation, that materially alters
the rights of SB under this Agreement. Transfer in contravention of
this Section 15 shall be considered a material
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breach of this Agreement pursuant to Paragraph 17 (c) below. Subject
to other provisions of this Section 15, this Agreement and the licenses
herein granted shall be binding upon and inure to the benefit of the
successors in interest of the respective parties.
16. WARRANTIES AND REPRESENTATIONS.
(a) Each party warrants that it has the right to enter into this
Agreement.
(b) Nothing in this Agreement shall be construed as a warranty
that patents covered by this Agreement are valid or
enforceable or that the commercialization of any product
covered by such patents will not infringe any patent rights of
Third Parties.
(c) Corixa acknowledges that in entering into this Agreement, SB
has relied or will rely upon information supplied by Corixa,
by Corixa's agents and/or representatives to SB pursuant to
confidentiality agreements between the parties and pursuant to
Section 11 hereof (all of such information being hereinafter
referred to collectively as "Product Information") and Corixa
warrants and represents that such Product Information has been
accurate in all material respects.
(d) Corixa hereby grants SB a royalty-free license or sublicense
under any intellectual property rights of GenQuest, Inc., a
Delaware corporation ("GenQuest") available to Corixa and/or
any intellectual property rights of Corixa to use any
information, reagents, testing methods, diagnostic tools and
similar materials developed by GenQuest and or Corixa for the
purpose of research and clinical development with respect to
Products in the Field but not, however, for any commercial
purpose including use of such intellectual property rights
directly in Product. Corixa covenants and agrees that it will
enter into good faith negotiations with GenQuest to seek to
obtain first right of negotiation for certain diagnostic uses
of Antigens in favour of SB. Such negotiations would be
reflected in a subsequent agreement to be established between
SB and GenQuest.
(e) The parties warrant to one another that neither of them has
any present knowledge of the existence of any pre-clinical or
clinical data or information covering Product which suggests
that there may exist toxicity, safety and/or efficacy concerns
which may materially impair the utility and/or safety of
Product.
17. TERM AND TERMINATION.
(a) Unless otherwise terminated this Agreement shall expire upon
the later of (i) expiration, lapse or invalidation of the last
to expire Corixa Patent or Joint Research Program Patent issued
in any country or (ii) ten (10) years after first commercial
sale of a Product in the last country in which a Product is
commercially launched. Expiration of this Agreement under this
provision shall not preclude SB from continuing to market
Product and to use Know-How without any further royalty
payments.
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(b) If this Agreement is terminated by Corixa for breach by SB
under Paragraph 17(c) hereof, all rights to all intellectual
property arising from the Research Program, including but not
limited to Corixa Patents, Joint Research Program Patents and
Know-How, but excluding SB Patents, shall, subject to the
provisions of Section 9, revert to Corixa and SB shall retain
no rights therein. All payments set forth in Subparagraphs
5(a) (i) through (ix) will be guaranteed and non-refundable.
Failure by Corixa to conduct the Research Program materially
as detailed in Exhibit D shall be considered a breach of
Agreement and be subject to Paragraph 17(c) below and any
amount previously paid by SB may be submitted for
consideration in arbitration pursuant to Section 12.
(c) If either party materially breaches the material provisions of
this Agreement and if such breach is not cured within sixty
(60) days (or in the case of non-payment pursuant to Sections
5 or 6, then fourteen (14) days) after receiving written
notice from the other party with respect to such breach, the
non-breaching party shall have the right to terminate this
Agreement by giving written notice to the party in breach
provided the notice of termination is given within six (6)
months of the breach and prior to cure thereof.
(d) SB agrees it will exercise at least the same level of diligence
in the clinical development and commercialization of Product
within the Territory as it currently uses, or in the past has
used, with respect to its own commercially successful products.
However, prior to marketing Product in any given country, SB
may terminate its development efforts and the license granted
hereunder with respect to that country upon ninety (90) days
notice if in SB's reasonable judgment sales in such country
would not be commercially viable. Thereafter, after beginning
Product marketing efforts in any particular country, and
continuing such efforts for [***] years (the "Minimum Diligence
Period"), SB may terminate sales efforts with respect to any
single country by giving Corixa at least six (6 ) months prior
written notice thereof. In that event the licence granted
hereunder to SB with respect to said country of the Territory
shall revert back to Corixa. Such Minimum Diligence Period may
be reduced below [***] by mutual agreement of the parties.
(e) Either party may terminate this Agreement if, at any time, the
other party shall file in any court or agency pursuant to any
statute or regulation of the United States or of any
individual state or foreign country, a petition in bankruptcy
or insolvency or for reorganization or for an arrangement or
for the appointment of a receiver of trustee of the party or
of its assets, or if the other party proposes a written
agreement of composition or extension of its debts, or if the
other party shall be served with an involuntary petition
against it, filed in any insolvency proceeding, and such
petition shall not be dismissed with sixty (60) days after the
filing thereof, or if the other party shall propose or be a
party to any dissolution or liquidation, or if the other party
shall make an assignment for the benefit of creditors.
(f) Notwithstanding the bankruptcy of Corixa, or the impairment of
performance by Corixa of its obligations under this Agreement
as a result of bankruptcy or
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insolvency of Corixa, SB shall be entitled to retain the rights
and licenses granted herein, without any further obligations
to Corixa, subject to Corixa's right to terminate this
Agreement for reasons other than bankruptcy or insolvency as
expressly provided in this Agreement.
(g) SB may terminate this Agreement at any time, on or after the
second anniversary of this Agreement by giving six (6) months
prior written notice to Corixa. In the event SB terminates
this Agreement effective as of the second anniversary of this
Agreement, the Milestone Payment provided for in Paragraph
5(a) shall not be due regardless of whether or not the
Milestone has been achieved. Thereafter, even if the
Milestone has been achieved, SB may still elect to terminate
this Agreement in which case SB shall be relieved of the
obligation to make the Milestone Payment.
18. RIGHTS AND DUTIES UPON TERMINATION.
(a) Upon termination of this Agreement, Corixa shall have the
right to retain any sums already paid by SB hereunder, and SB
shall pay all sums accrued hereunder which are then due,
which, in each case, shall include all payments under
Paragraph 5(a) except to the extent the Milestone Payment has
not become due and payable pursuant to the terms of Paragraphs
5(a) and/or 17(g) and to the extent such payments may be
considered and reviewed by the arbitrator(s) pursuant to
Section 12 hereof.
(b) Upon termination of this Agreement, SB shall notify Corixa of
the amount of Product(s) SB and its subsidiaries and
distributors then have on hand, the sale of which would, but
for the termination, be subject to royalty, and SB and its
sublicensees and distributors shall thereupon be permitted to
sell that amount of Product(s), provided that SB shall pay the
royalty thereon at the time herein provided for.
19. INDEMNIFICATION.
(a) Subject to Paragraph 19(b) hereof, from and after the
Effective Date, except as otherwise herein specifically
provided, each of the parties hereto shall defend, indemnify
and hold harmless the other party and its Affiliates,
successors and assigns, and their respective officers,
directors, shareholders, partners and employees from and
against all losses, damage, liability and expense including
legal fees but excluding punitive or consequential damages
(including lost profits) ("Damages") incurred thereby or
caused thereto arising out of or relating to (i) any breach or
violation of, or failure to properly perform, any covenant or
agreement made by such indemnifying party in this Agreement,
unless waived in writing by the indemnified party; (ii) any
breach of any of the representations or warranties
made by such indemnifying party in this Agreement; or (iii)
the gross negligence or willful misconduct of the indemnifying
party.
(b) If either SB or Corixa, or any Affiliate of SB or Corixa (in
each case an "Indemnified Party"), receives any written claim
which it believes is the subject of
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indemnity hereunder by either SB or Corixa, as the case may be
(in each case an "Indemnifying Party"), the Indemnified Party
shall, as soon as reasonably practicable after forming such
belief, give notice thereof to the Indemnifying Party,
including full particulars of such claim to the extent known to
the Indemnified Party; provided, however, that the failure to
give timely notice to the Indemnifying Party as contemplated
hereby shall not release the Indemnifying Party from any
liability to the Indemnified Party. The Indemnifying Party
shall have the right, by prompt notice to the Indemnified
Party, to assume the defense of such claim with counsel
reasonably satisfactory to the Indemnified Party, and at the
cost of the Indemnifying Party. If the Indemnifying Party does
not so assume the defense of such claim, the Indemnified Party
may assume such defense with counsel of its choice at the sole
expense of the Indemnifying Party. If the Indemnifying Party
so assumes such defense, the Indemnified Party may participate
therein through counsel of its choice, but the cost of such
counsel shall be borne solely by the Indemnified Party.
(c) The party not assuming the defense of any such claim shall
render all reasonable assistance to the party assuming such
defense, and all out-of-pocket costs of such assistance shall
be borne solely by the Indemnifying Party.
(d) No such claim shall be settled other than by the party
defending the same, and then only with the consent of the
other party, which shall not be unreasonably withheld;
provided, however, that the Indemnified Party shall have no
obligation to consent to any settlement of any such claim
which imposes on the Indemnified Party any liability or
obligation which cannot be assumed and performed in full by
the Indemnifying Party.
IN WITNESS WHEREOF, each of the parties hereto has caused this Agreement to be
executed by its duly authorized officer as of the date first written above.
Agreed to and accepted by: Agreed to and accepted by:
CORIXA CORPORATION SMITHKLINE BEECHAM
BIOLOGICALS
MANUFACTURING S.A.
/s/ STEVEN GILLIS /s/ JEAN STEPHENNE
- ----------------- ------------------
Steven Gillis Jean Stephenne
President and CEO Senior Vice President and
General Manager
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EXHIBIT A TO PROSTATE CANCER COLLABORATION AND LICENSE AGREEMENT
CORIXA ANTIGENS
The antigens disclosed in the following patent applications:
PATENT NO./APP. NO. COUNTRY FILING/ISSUE DATE
App. No. [***] [***] Filed [***]
PCT/US[***] [***] Filed [***]
App. No. [***] [***] Filed [***]
App. No. [***] [***] Filed [***]
To be filed [***]
_____________________
[***]
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EXHIBIT B TO PROSTATE CANCER COLLABORATION AND LICENSE AGREEMENT
CORIXA PATENTS
PATENT NO./APP. NO. COUNTRY FILING/ISSUE DATE
App. No. [***] [***] Filed [***]
PCT/US [***] [***] Filed [***]
App. No. [***] [***] Filed [***]
App. No. [***] [***] Filed [***]
To be filed(10) [***]
The following patents, patent applications, invention disclosures, patent
applications thereon and patents issuing on any of the foregoing, including all
continuations, continuations-in-part, divisionals, additions, substitutions,
reissues, renewals and extensions of any of the foregoing, and including all
foreign counterparts of any of the foregoing, are by this listing below
excluded from Corixa Patents:
PATENT NO./APP. NO. COUNTRY FILING/ISSUE DATE
[***]
App. No. [***] Filed [***]
[***] Not yet filed
[***]
Pat. No. [***] [***] Issued [***]
App. No. [***] [***] Filed [***]
[***]
App. No. [***] [***] Filed [***]
App. No. [***] [***] Filed [***]
[***]
Ser. No. [***] [***] Filed [***]
[***]
App. No. [***] [***] Filed [***]
____________________
[***]
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PATENT NO./APP. NO. COUNTRY FILING/ISSUE DATE
[***]
App. No. [***] [***] Filed [***]
[***]
App. No. [***] [***] Filed [***]
App. No. [***] [***] Filed [***]
App. No. [***] [***] Filed [***]
App. No. [***] [***] Filed [***]
App. No. [***] [***] Filed [***]
App. No. [***] [***] Filed [***]
App. No. [***] [***] Filed [***]
App. No. [***] [***] Filed [***]
App. No. [***] [***] Filed [***]
App. No. [***] [***] Filed [***]
Invention Disclosure(11) Not yet filed
Invention Disclosure(12) Not yet filed
____________________
[***]
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EXHIBIT C
PROSTATE CANCER ANTIGEN DISCOVERY
Milestone:
[***]
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<PAGE> 31
EXHIBIT D
SECTION I: WORKPLAN -- PROSTATE CANCER VACCINE ANTIGEN DISCOVERY
[***]
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<PAGE> 32
EXHIBIT D: SECTION I (CON'T):
[***]
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<PAGE> 33
EXHIBIT D: SECTION I (CON'T):
[***]
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<PAGE> 34
[***]
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<PAGE> 35
[***]
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<PAGE> 36
[***]
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EXHIBIT D
SECTION III: STREAMLINED WORKPLAN -- PROSTATE CANCER ANTIGEN DISCOVERY
[***]
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EXHIBIT D: SECTION III (CON'T):
[***]
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<PAGE> 1
EXHIBIT 10.25
AMENDED AND RESTATED
ADMINISTRATIVE SERVICES AND MANAGEMENT AGREEMENT
THIS ADMINISTRATIVE SERVICES AND MANAGEMENT AGREEMENT (this
"Agreement"), dated as of December 23, 1996, is entered into by and between
Corixa Corporation, a Delaware corporation ("Corixa"), and GenQuest, Inc., a
Delaware corporation ("GenQuest").
W I T N E S S E T H:
WHEREAS, Corixa and GenQuest are parties to that certain Amended and
Restated License and Research Collaboration Agreement dated as of the date
hereof (the "Collaboration Agreement"), as may be amended from time to time,
pursuant to which Corixa and GenQuest cross-licensed certain technology and
rights to each other, and GenQuest engaged Corixa to provide research services
with respect thereto;
WHEREAS, in connection with a multi-site scientific and corporate
partnering relationship between GenQuest and Corixa, GenQuest desires that
Corixa provide certain administrative and management services to GenQuest in
addition to the research services to be provided under the Collaboration
Agreement, and Corixa desires to provide such administrative and management
services;
WHEREAS, Corixa and GenQuest are parties to that certain Administrative
Services and Management Agreement dated December 23, 1996 (the "Prior Services
Agreement") pursuant to which Corixa and GenQuest specified the administrative
and management services to be provided by Corixa; and
WHEREAS, Corixa and GenQuest each desire to terminate the Prior
Services Agreement in its entirety and accept the rights and obligations
created pursuant hereto in lieu of the rights and obligations created under the
Prior Services Agreement.
NOW, THEREFORE, in consideration of the mutual covenants expressed
herein and for other good and valuable consideration; the receipt and adequacy
of which are hereby acknowledged, the parties agree as follows:
1. Definitions
1.1 Definitions. The following terms shall have the
following meanings as used in this Agreement:
(a) "Affiliate" means an entity that, directly
or indirectly, through one or more intermediaries, controls, is controlled by or
is under common control with GenQuest or Corixa. For the purposes of this
definition, control means the direct or indirect ownership of (i) at least fifty
percent (50%) or, if less than fifty percent (50%), the maximum percentage as
allowed by applicable law, of the outstanding voting securities of such entity
or (ii) at least fifty percent (50%) of the decision making authority of such
entity; provided, however, that neither Corixa nor GenQuest shall be deemed to
be an Affiliate of the other for purposes of this Agreement.
(b) "Person" shall mean any individual,
partnership, corporation, firm, association, unincorporated organization, joint
venture, trust or other entity.
(c) "Reimbursable Costs" shall mean the FTE
costs, fees and other expenses incurred, paid or accrued by Corixa in accordance
with the annual budget set forth on
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Schedule A hereto. The budget for the 1997 calendar year shall bemutually agreed
upon by the Boards of Directors of Corixa and GenQuest prior to the date hereof
and shall be set forth in Schedule A.
1.2 Singular and Plural. Singular and plural forms, as
the case may be, of terms defined herein shall have correlative meanings.
2. Services to Be Provided
2.1 Services. GenQuest hereby engages Corixa to provide, or
arrange to provide, to GenQuest its general, administrative and management
services, including, without limitation, the services described generally below.
Corixa agrees to use its best efforts to provide, under the direction of the
Board of Directors of GenQuest, specific services within the following general
categories, at the times and in the manner in which Corixa deems necessary or
appropriate to effect the GenQuest business plan dated August 1996 (or
subsequent versions or modifications thereof approved by the GenQuest Board of
Directors) (the "GenQuest Business Plan"):
(a) advice and services with respect to accounting
and financial matters, marketing, government and public relations, industrial
relations, personnel administration, procurement, purchasing, inventory control,
corporate partnering, planning and investigation, management information
systems, administrative matters and insurance;
(b) treasury services, including, without limitation,
maintenance of books and records, bank accounts, preparation of budgets,
forecasts and financial statements, cashier, payment, payroll, credit and
collections and money management assistance;
(c) recordkeeping services, including accounting, tax
records, audits, stockholder, director and committee records and sales records;
(d) for the employees of GenQuest, services with
respect to the provision of certain employee benefits, including medical
(including vision) and dental insurance benefits, disability benefits, and
benefits under any life and accidental death and dismemberment plan,
occupational health services plan, and flexible spending accounts plan;
(e) services with respect to selection, recruiting,
supervision and evaluation of personnel;
(f) advice and services with respect to intellectual
property, regulatory, legal and tax matters, including, without limitation,
filings and hearings before foreign, federal, state and municipal agencies or
authorities; and
(g) such other advice and services as are reasonably
requested by GenQuest in order to implement the GenQuest Business Plan.
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2.2 Standard of Care. In providing services hereunder, Corixa
shall use, and GenQuest hereby agrees to accept in all respects, the same
standard of skill and care that Corixa uses in the course of undertaking similar
services for itself. To the extent reasonably possible, such services will be
substantially identical in nature and quality to the services currently provided
or otherwise obtained by Corixa on its own behalf.
2.3 Corixa Activities. GenQuest hereby acknowledges that
Corixa may have business interests, and engage in business activities, in
addition to those relating to GenQuest for its own account and for the account
of others, without having or incurring any obligation to offer any interest in
such businesses, activities or opportunities to GenQuest other than as provided
under the Collaboration Agreement. GenQuest shall not have any rights by virtue
of this Agreement or the relationship created hereby in any such business
interests, activities or opportunities. Corixa agrees to keep the GenQuest Board
of Directors duly informed of its activities under this Agreement.
2.4 Approval of Contracts and Commitments. Prior to making or
entering into any written commitment or contract on behalf of GenQuest that
involves (a) obligations of or payments by GenQuest in excess of $50,000 or (b)
the grant or in-license of material intellectual property rights, Corixa shall
first obtain the written approval of the Chairman of the GenQuest Board of
Directors.
2.5 Commitment of Resources. It is understood that GenQuest is
entering into this Agreement and the Collaboration Agreement in reliance upon
the commitment by Corixa to make available the services of a management team,
which team consists of Steve Gillis, Mark McDade, Steve Reed, Kate McKereghan,
Michelle Burris, Kenneth Grabstein, Greg Cox and Syamal Raychaudhuri to provide
and oversee appropriate services under this Agreement. Without limiting any
other provision of this Agreement, so long as the members of such management
team remain employed by Corixa, Corixa will use its best efforts to provide that
such individuals are available to perform the services to be provided by Corixa
hereunder.
2.6 Annual Plan and Budget. Not later than October 1 of each
year during the term of this Agreement, Corixa shall prepare and recommend to
the GenQuest Board of Directors an updated Annual Plan and Budget setting forth
the objectives to be obtained during the next calendar year, including the time
such objectives are expected to be met (provided, however, that such time frames
are not binding on either party), and the Reimbursable Costs for such services.
Such Annual Plan and Budget shall be consistent with the fulfillment of Corixa's
responsibilities hereunder. Upon approval of such proposed Annual Plan and
Budget by the GenQuest Board of Directors, with such changes as the Board of
Directors of GenQuest may direct and Corixa may approve, the same shall
constitute the Annual Plan and Budget for such calendar year for all purposes of
this Agreement and will be attached hereto as Schedule A, and the payment of the
Reimbursable Costs set forth therein to Corixa shall be guaranteed by the Board
of Directors of GenQuest.
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<PAGE> 4
2.7 Employee Incentives. Corixa will use its reasonable best
efforts to structure the compensation paid to Corixa employees who work
primarily on GenQuest matters in such a manner that incentivizes such employees
to meet the management goals and objectives of GenQuest by utilizing such goals
and objectives to assess employee performance to the same extent as Corixa
utilizes management goals and objectives of Corixa to assess the performance of
employees who work solely for Corixa. Corixa shall include in its performance
goals, for purposes of its employee stock grant and bonus programs, reasonable
performance goals of GenQuest and shall reasonably reflect the attainment or
nonattainment of such goals in determining stock grants and bonus levels for
Corixa employees.
3. Payment of Reimbursable Costs and Fees
3.1 FTE Reimbursement. During the term of this Agreement,
GenQuest shall reimburse Corixa for each full-time equivalent ("FTE") as set
forth in Schedule A. The amount of such Reimbursable Costs shall be as set forth
on Schedule A. It is understood that, except as provided in Section 3.2 below
and Exhibit A hereto, the Reimbursable Costs to be paid under this Section 3.1
include all costs to be reimbursed to Corixa with respect to Corixa's
performance of services pursuant to this Agreement, and such payments shall be
used solely for the purposes of performing such services.
3.2 Management Fee. In addition to the Reimbursable Costs set
forth in Section 3.1 above, GenQuest shall pay to Corixa an annual management
fee, which fee shall be equal to $ 200,000 for the 1997 calendar year. The
amount of such management fee for subsequent calendar years shall change on an
annual basis and shall be agreed upon by Corixa and the Board of Directors of
GenQuest by no later than October 1 of the preceding year. In the event this
Agreement is terminated prior to the end of any calendar year, such management
fee shall be prorated for the number of days that Corixa actually performs
services, based on three hundred sixty-five (365) days per year.
3.3 Payment. GenQuest shall pay to Corixa quarterly in advance
the amounts provided for in Sections 3.1 and 3.2 above not later than January 1,
April 1, July 1 and October 1 of each year during the term of this Agreement.
4. Representations and Warranties
4.1 Representations and Warranties of Corixa. Corixa
represents and warrants to GenQuest as follows:
(a) Corixa is a corporation duly organized, validly
existing and in good standing under the laws of the State of Delaware with
corporate powers adequate for executing and delivering, and performing its
obligations under, this Agreement;
(b) the execution, delivery and performance of this
Agreement have been duly authorized by all necessary corporate action on the
part of Corixa;
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(c) this Agreement has been duly executed and
delivered by Corixa and is a legal, valid and binding obligation of Corixa,
enforceable against Corixa in accordance with its terms; and
(d) the execution, delivery and performance of this
Agreement do not conflict with or contravene any provision of the charter
documents or Bylaws of Corixa or any agreement, document, instrument, indenture
or other obligation of Corixa.
4.2 Representations and Warranties of GenQuest. GenQuest
represents and warrants to Corixa as follows:
(a) GenQuest is a corporation duly organized, validly
existing and in good standing under the laws of the State of Delaware with
corporate powers adequate for executing and delivering, and performing its
obligations under, this Agreement;
(b) the execution, delivery and performance of this
Agreement have been duly authorized by all necessary corporate action on the
part of GenQuest;
(c) this Agreement has been duly executed and
delivered by GenQuest and is a legal, valid and binding obligation of GenQuest,
enforceable against GenQuest in accordance with its terms; and
(d) the execution, delivery and performance of this
Agreement do not conflict with or contravene any provision of the charter
documents or Bylaws of GenQuest or any agreement, document, instrument,
indenture or other obligation of GenQuest.
5. Term and Termination. This Agreement shall terminate upon the
earlier to occur of (a) at the option of either party, the date that is ninety
(90) days after the date of the Call Option Expiration (as such term is defined
in that certain Call Option Agreement dated as of December 23, 1976 hereof by
and among GenQuest, Corixa and certain investors in GenQuest listed on the
execution pages thereof, as amended and restated from time to time (the "Call
Agreement"), (b) the date that is ninety (90) days after the Call Option
Purchase Date or the Put Option Purchase Date (as such term is defined in the
Call Agreement), as applicable, or (c) at the option of either party, upon the
termination of the Collaboration Agreement.
6. Transfer of Resources. In the event that neither the Call Option nor
the Put Option (as defined in the Put/Call Agreement) is exercised, Corixa will
use its reasonable best efforts as requested by GenQuest to (a) insure that
those individuals who have worked primarily on GenQuest matters become employees
of GenQuest; provided, however, that Corixa will not be required to incur a
material economic disadvantage or initiate any legal action pursuant to this
subsection 6(a), and (b) transfer ownership to GenQuest of that equipment this
is listed on Schedule B attached hereto or that Corixa is separately reimbursed
for by GenQuest under Section 8.2 of the Collaboration Agreement; provided,
however, that GenQuest and Corixa shall agree from time to time, but not less
than once a year, on what equipment shall be included in Schedule B. Schedule B
shall be amended from time to time as agreed by Corixa and GenQuest.
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7. Confidentiality Agreements. Corixa and GenQuest hereby agree that
they will have each of their respective employees, consultants and officers who
have access to confidential or proprietary information of the other party
execute a confidential information and non-disclosure agreement in form and
substance reasonably satisfactory to such other party.
8. Independent Contractor. All debts and liabilities to and contracts
or agreements with any person or entity incurred or entered into in the name of
or on behalf of GenQuest by Corixa in the management or performance of the
services hereunder in accordance with this Agreement shall be the debt and
liability of and be binding upon GenQuest. CORIXA SHALL NOT BE LIABLE TO ANY
PERSON OR ORGANIZATION FOR ANY DEBT, LIABILITY OR OBLIGATION OF GENQUEST
INCURRED OR CREATED PURSUANT TO THIS AGREEMENT OR BY REASON OF CORIXA'S
MANAGEMENT, DIRECTION OR PERFORMANCE OF THE SERVICES HEREUNDER UNLESS CORIXA, BY
WRITTEN AGREEMENT, EXPRESSLY ASSUMES OR GUARANTEES ANY SUCH LIABILITY. CORIXA
SHALL NOT BE REQUIRED, UNDER ANY CIRCUMSTANCES, TO GUARANTEE OR ASSUME ANY
OBLIGATION OR LIABILITY OF GENQUEST AS A RESULT OF THIS AGREEMENT. THE BOARD OF
DIRECTORS OF GENQUEST SHALL BE DEEMED TO CONTROL ALL ASPECTS OF THE MANNER IN
WHICH GENQUEST'S BUSINESS IS CONDUCTED. CORIXA SHALL NOT BE LIABLE BY VIRTUE OF
THE PERFORMANCE OF ITS DUTIES HEREUNDER FOR ANY BREACH OF ANY LICENSING OR OTHER
AGREEMENT BETWEEN GENQUEST AND ANY OTHER PARTY, OR FOR ANY LIABILITY FOR ANY
TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, PATENT INFRINGEMENT OR OTHER
VIOLATION OF THE INTELLECTUAL PROPERTY RIGHTS OF ANOTHER ENTITY AS A RESULT OF
THE MANNER IN WHICH GENQUEST'S BUSINESS IS CONDUCTED, EXCEPT TO THE EXTENT SUCH
VIOLATION IS THE RESULT OF THE GROSS NEGLIGENCE OR WILLFUL MISCONDUCT OF CORIXA.
9. Subcontractors. Subject to GenQuest's written consent, which consent
shall not be unreasonably withheld, Corixa may engage any other Person to
perform all or any portion of Corixa's duties hereunder; provided, however, that
any such other Person shall be bound by the terms of this Agreement; provided
further, however, that no such consent shall be required for the engagement by
Corixa of any other Person to perform such duties if Corixa customarily engages
others to perform similar duties for itself.
10. Indemnification
10.1 Indemnification of Corixa. GenQuest shall indemnify each
of Corixa, its successors and assigns, and the directors, officers, employees,
agents, stockholders and counsel thereof (the "Corixa Indemnitees"), pay on
demand and protect, defend, save and hold each Corixa Indemnitee harmless from
and against, on an after-tax basis, any and all liabilities, damages, losses,
settlements, claims, actions, suits, penalties, fines, costs or expenses
(including, without limitation, reasonable attorneys' and accountants' fees)
(any of the foregoing, a "Claim") incurred by or asserted by a third party
against any Corixa Indemnitee of whatever kind or
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<PAGE> 7
nature, including, without limitation, any claim or liability based upon
negligence, warranty, strict liability, violation of government regulation or
infringement of patent, copyright, trademark, trade secret or other proprietary
rights, arising from or occurring as a result of services provided by Corixa to
GenQuest under this Agreement, including, without limitation, a breach thereof
by GenQuest, or the performance by Corixa of its obligations hereunder, except
claims based upon the gross negligence or willful misconduct of Corixa in
performing the services hereunder in accordance with this Agreement. Corixa
shall promptly notify GenQuest of any Claim, upon becoming aware thereof, and
permit GenQuest at GenQuest's cost to defend such claim or suit and shall
cooperate in the defense thereof. Neither Corixa nor GenQuest shall enter into,
or permit, any settlement of any such suit without the express written consent
of the other party. Corixa may, at its option and expense, have its own counsel
participate in any proceeding that is under the direction of GenQuest and will
cooperate with GenQuest and its insurer in the disposition of any such matter.
The termination of a proceeding by judgment, order, settlement or conviction, or
upon a plea of nolo contendere or its equivalent, shall not, of itself, create a
presumption that an action or inaction involves bad faith, gross negligence or
willful misconduct.
10.2 Indemnification of GenQuest. Corixa shall indemnify each
of GenQuest, its successors and assigns, and the directors, officers, employees,
agents, stockholders and counsel thereof (the "GenQuest Indemnitees"), pay on
demand and protect, defend, save and hold each GenQuest Indemnitee harmless from
and against, on an after-tax basis, any and all Claims incurred by or asserted
against any GenQuest Indemnitee arising from or occurring as a result of the
gross negligence or willful misconduct of Corixa in performing the services to
be provided by Corixa to GenQuest in accordance with this Agreement. GenQuest
shall promptly notify Corixa of any Claim, upon becoming aware thereof, and
permit Corixa at Corixa's cost to defend such claim or suit and shall cooperate
in the defense thereof. Neither GenQuest nor Corixa shall enter into, or permit,
any settlement or any such suit without the express written consent of the other
party. GenQuest may, at its option and expense, have its own counsel participate
in any proceeding that is under the direction of Corixa and will cooperate with
Corixa and its insurer in the disposition of any such matter. The termination of
a proceeding by judgment, order, settlement or conviction, or upon a plea of
nolo contendere or its equivalent shall not, of itself, create a presumption
that an action or inaction involves bad faith, gross negligence or willful
misconduct.
11. No Implied Waivers; Rights Cumulative. No failure on the part of
Corixa or GenQuest to exercise and no delay in exercising any right, power,
remedy or privilege under this Agreement, or provided by statute or at law or in
equity or otherwise, including, without limitation, the right or power to
terminate this Agreement, shall impair, prejudice or constitute a waiver of any
such right, power, remedy or privilege or be construed as a waiver of any breach
of this Agreement or as an acquiescence therein, nor shall any single or partial
exercise of any such right, power, remedy or privilege preclude any other or
further exercise thereof or the exercise of any other right, power, remedy or
privilege.
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12. Force Majeure. Each party shall be excused for any failure or delay
in performing any of its obligations under this Agreement, other than the
obligations of GenQuest to make payments to Corixa pursuant to Section 3 hereof,
if such failure or delay is occasioned by government action, war, fire,
earthquake, explosion, flood, strike, lockout, embargo, act of God, or any other
similar cause beyond the control of the defaulting party, provided that the
party claiming force majeure has exerted all reasonable efforts to avoid or
remedy such force majeure; provided further, however, that in no event shall a
party be required to settle any labor dispute or disturbance.
13. Notices. All notices and other communications hereunder shall be in
writing and shall be deemed given if delivered (a) personally, (b) by facsimile
transmission (receipt verified), (c) by registered or certified mail (return
receipt requested), postage prepaid, or (d) sent by express courier service
(receipt verified), to the party to be notified at the address indicated for
such party specified below (or at such other address for such party as shall be
specified by like notice; provided that notices of a change of address shall be
effective only upon receipt thereof):
If to Corixa, addressed to:
Corixa Corporation
1124 Columbia Street, Suite 464
Seattle, WA 98104
Attention: Chief Operating Officer
Corporate Counsel
Telephone: (206) 667-5711
Facsimile: (206) 667-5715
If to GenQuest, addressed to:
GenQuest, Inc.
c/o Frazier & Company
601 Union Street
Two Union Square, Suite 2110
Seattle, WA 98101
Attention: Alan Frazier
Telephone: (206) 621-7200
Facsimile: (206) 621-1848
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With copies to:
Venture Law Group
4750 Carillon Point
Kirkland, WA 98033
Attention: William W. Ericson
Telephone: (206) 739-8700
Facsimile: (206) 739-8750
Wilson Sonsini Goodrich & Rosati
650 Page Mill Road
Palo Alto, CA 94304-1050
Attention: Kenneth Clark
Telephone: (415) 493-9300
Facsimile: (415) 493-6811
Rosner Bresler Goodman & Bucholz
521 5th Ave.
New York, NY 10175
Attention: Andrew J. Goodman
Telephone: (212) 661-2150
Facsimile: (212) 949-6131
14. Further Assurances. Each of Corixa and GenQuest agrees to duly
execute and deliver, or cause to be duly executed and delivered, such further
instruments and do and cause to be done such further acts and things, including,
without limitation, the filing of such additional assignments, agreements,
documents and instruments, that may be necessary or as the other party hereto
may at any time and from time to time reasonably request in connection with this
Agreement or to carry out more effectually the provisions and purposes of, or to
better assure and confirm unto such other party its rights and remedies under,
this Agreement.
15. Successors and Assigns. The terms and provisions of this Agreement
shall inure to the benefit of, and be binding upon, Corixa, GenQuest, and their
respective successors and assigns; provided, however, that neither Corixa nor
GenQuest may assign or otherwise transfer any of its rights and interests nor
delegate any of its respective obligations hereunder, including, without
limitation, pursuant to a merger or consolidation, without the written consent
of the other party hereto, which consent shall not be unreasonably withheld;
provided further, however, that Corixa may assign its rights and interests and
delegate its obligations hereunder, effective upon written notice thereof, to
any Person that acquires all or substantially all of the assets of Corixa or
that is the surviving Person in a merger or consolidation with Corixa, if (a)
such Person assumes all of the obligations of Corixa hereunder and (b) if such
Person is a solvent corporation or other entity organized and existing under the
laws of the U.S. or any state thereof and such Person shall have, immediately
after giving effect to such assignment or transfer, a tangible net worth
(determined in accordance with generally accepted accounting principles then in
effect) at least
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equal to the tangible net worth (as so determined) of Corixa immediately prior
thereto. Any attempt to assign or delegate any portion of this Agreement in
violation of this Section 15 shall be null and void. Subject to the foregoing,
any reference to Corixa or GenQuest hereunder shall be deemed to include the
successors thereto and assigns thereof.
16. Amendments. No amendment, modification, waiver, termination or
discharge of any provision of this Agreement, nor consent to any departure by
Corixa or GenQuest therefrom, shall in any event be effective unless the same
shall be in writing specifically identifying this Agreement and the provision
intended to be amended, modified, waived, terminated or discharged and signed by
Corixa and GenQuest, and each such amendment, modification, waiver, termination
or discharge shall be effective only in the specific instance and for the
specific purpose for which given. No provision of this Agreement shall be
varied, contradicted or explained by any oral agreement, course of dealing or
performance or any other matter not set forth in an agreement in writing and
signed by Corixa and GenQuest.
17. Dispute Resolution. No arbitration with reference to this Agreement
shall arise until the procedures set forth in this Section 17 have been
satisfied. In the event of any dispute with respect to the interpretation of any
provision of this Agreement or with respect to the performance of either party
under this Agreement, either party may at any time provide the other party
written notice specifying the terms of such disagreement in reasonable detail.
As soon as practicable after receipt of such notice, the Chairman of the Board
of Directors of GenQuest and the Chairman of the Board of Directors of Corixa
shall meet at a mutually agreed upon time and location for the purpose of
resolving such disagreement. They shall engage in discussions and/or
negotiations for a period of up to one hundred twenty (120) days in an effort to
resolve the disagreement or negotiate an interpretation or revision of the
applicable portion of this Agreement that is mutually agreeable to both parties,
without the necessity of formal procedures relating thereto. During the course
of such discussion and/or negotiation, the parties shall reasonably cooperate
and provide information that is not materially confidential in order so that
each of the parties may be fully informed with respect to the issues in dispute.
The commencement of JAMS (as defined below) dispute resolution
procedures to resolve such disagreement may occur only after the earlier of: (a)
the mutual agreement of the Chairman of the Board of Directors of GenQuest and
the Chairman of the Board of Directors of Corixa that resolution of such
disagreement through continued negotiation is not likely to occur, or (b)
following expiration of the one hundred twenty (120) day negotiation period.
Thereafter, either party may seek to resolve such disagreement by initiating an
Alternative Dispute Resolution ("ADR") in which the Judicial Arbitration and
Mediation Services ("JAMS"), Seattle, Washington shall select the arbitrator
("Arbitrator") as provided herein. If JAMS is not in existence at the time of
such dispute the American Arbitration Association, Seattle, Washington shall be
substituted.
(i) Selection of Arbitrator. An ADR shall be initiated by a
party by sending written notice thereof to the other party and JAMS, which
notice shall state the issues to be resolved. Within ten (10) business days
after receipt of such notice, the other party may, by
-10-
<PAGE> 11
sending written notice to the initiating party and JAMS, add issues to be
resolved. Within twenty (20) business days after the date of the original ADR
notice, JAMS shall nominate to the parties at least five (5) qualified nominees
from JAMS' panel. The parties shall have five (5) business days after the
receipt of such nominations to agree on a Arbitrator or, failing to agree, to
rank-order their preferences with the most preferred being given the lowest
number, and mail the rank-order to JAMS. JAMS shall notify the parties of their
selection. If all nominees are unacceptable to a party, the procedure shall be
repeated and, if the parties cannot select an Arbitrator the second time, JAMS
shall select the Arbitrator.
(ii) Arbitrator With Special Expertise. In the event of a
dispute between the parties relating to the amount of other consideration
payable under this Agreement, then, in addition to the procedure set forth in
the previous subsection, the Arbitrator shall (A) be a partner or full member of
an internationally recognized certified public accounting firm that is not an
auditing firm for either party and has not provided material services to either
party during the last two (2) year period prior to the date of ADR initiation
and (B) have a meaningful biotechnology science and industry background.
(iii) ADR Hearing. The Arbitrator shall hold a hearing to
resolve the issues within one hundred twenty (120) business days after
selection. The location of the hearing shall be Seattle, Washington. Each party
may be represented by counsel. The Arbitrator shall have sole discretion
regarding the admissibility of evidence and conduct of the hearing. At least
five (5) business days prior to the hearing, each party shall submit to the
other party and the Arbitrator a copy of all exhibits on which such party
intends to rely at the hearing, a pre-hearing brief (up to thirty (30) pages)
and a proposed disposition of the dispute (up to five (5) pages). The proposed
disposition shall be limited to proposed rulings and remedies on each issue, and
shall contain no argument on or analysis of the facts or issues; provided,
however, that the parties shall not present proposed monetary remedies. Within
five (5) business days after close of the hearing, each party may submit a
post-hearing brief (up to five (5) pages) to the Arbitrator.
(iv) ADR Ruling: Fees and Expenses. The Arbitrator shall
render a disposition on the proposed rulings as expeditiously as possible after
the hearing, but not later than fifteen (15) business days after the conclusion
of the hearing. The Arbitrator shall rule on each issue and shall adopt in its
entirety the proposed ruling of one of the parties on each issue. In the
circumstance where the Arbitrator rules for a party on a claim in the form of a
claim for monetary damages, the parties shall then submit a proposed remedy
within ten (10) days of notice of the ruling. The proposed remedy may be
accompanied by a brief in support of the remedy not to exceed five (5) pages.
The Arbitrator shall rule on and adopt one of the proposed remedies within ten
(10) days of their submission. The Arbitrator's disposition shall be final and
not appealable, except that either party shall have the right to appeal such
disposition on the basis it was affected by fraud or bad faith in connection
with the ADR proceedings. The reasonable fees and expenses of the Arbitrator, as
well as the standard charges of JAMS for its assistance, shall be borne by the
parties as determined by the Arbitrator, who shall, in making such
determination, take into account the equities and disposition of the
proceedings. A judgment on
-11-
<PAGE> 12
the Arbitrator's disposition may be entered in and enforced by any court having
jurisdiction over the parties.
(v) JAMS Rules. Except as otherwise provided in this Section
16, JAMS Rules shall be used in connection with the ADR.
(vi) Notwithstanding anything to the contrary in this Section
17, either Corixa or GenQuest may, on good cause shown in the event such party
reasonably believes that it otherwise will suffer irreparable injury, seek a
temporary restraining order and/or preliminary injuction from a court of
competent jurisdiction, to be effective pending the institution of the
arbitration process and the deliberation and award of the Arbitrator.
18. Governing Law. This Agreement shall in all respects, including all
matters of construction, validity and performance, be governed by, and construed
and enforced in accordance with, the laws of the state of Washington applicable
to contracts entered into in that state between citizens of that state and to be
performed wholly within that state without reference to any rules governing
conflicts of laws.
19. Severability. If any provision hereof should be held invalid,
illegal or unenforceable in any respect in any jurisdiction, then, to the
fullest extent permitted by law, (a) all other provisions hereof shall remain in
full force and effect in such jurisdiction and shall be liberally construed in
order to carry out the intentions of the parties hereto as nearly as may be
possible and (b) such invalidity, illegality or unenforceability shall not
affect the validity, legality or enforceability of such provision in any other
jurisdiction. To the extent permitted by applicable law, Corixa and GenQuest
hereby waive any provision of law that would render any provision hereof
prohibited or unenforceable in any respect.
20. Headings. Headings used herein are for convenience only and shall
not in any way affect the construction of, or be taken into consideration in
interpreting, this Agreement.
21. Execution in Counterparts. This Agreement may be executed in
any number of counterparts, each of which counterparts, when so executed and
delivered, shall be deemed to be an original, and all of which counterparts,
taken together, shall constitute one and the same instrument.
22. Interest on Unpaid Amounts. Any amounts due to Corixa hereunder
that are not paid as and when due shall bear interest at the rate of the lower
of [***] percent ([***]%) per annum or the prime rate of interest as determined
by the Commerce Bank of Washington or its successors as of the date any such
amounts become due [***] percent ([***]%) per annum. Such interest shall be
calculated on the basis of the actual number of days lapsed over a three hundred
sixty-five (365) day year, and shall be in addition to, and not in lieu of,
other remedies afforded Corixa hereunder, at law or in equity for breach of this
Agreement.
23. Entire Agreement. This Agreement, together with Schedule A,
Schedule B and Exhibit A hereto, constitutes, on and as of the date hereof, the
entire agreement of Corixa and
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<PAGE> 13
GenQuest with respect to the subject matter hereof, and all prior or
contemporaneous understandings or agreements, whether written or oral, between
Corixa and GenQuest with respect to such subject matter are hereby superseded in
their entireties.
24. WAIVER OF CONFLICTS. Each party to this Agreement acknowledges
that Venture Law Group ("VLG") is general corporate counsel for Corixa and has
represented Corixa with respect to the negotiation of, and the transactions
contemplated by, this Agreement, the Collaboration Agreement and the Put/Call
Agreement, and that VLG has in the past performed and may continue to perform
legal services for certain investors in GenQuest ("Investors") and for GenQuest
in matters unrelated to the transactions described in this Agreement, including
the representation of certain Investors in venture capital financings and other
matters and the representation of GenQuest in certain transactions and general
corporate matters. In addition, VLG has been requested to, and has agreed to,
provide a legal opinion with respect to certain legal matters regarding the
transactions contemplated by GenQuest's Series B Preferred Stock Purchase
Agreement dated as of the date hereof (the "Opinion"). Accordingly, each party
to this Agreement hereby (a) acknowledges that they have had an opportunity to
ask for information relevant to this disclosure, and (b) gives its informed
written consent to (i) VLG's general corporate representation of Corixa, (ii)
VLG's representation of certain of the Investors in such unrelated matters,
(iii) VLG's representation of GenQuest with respect to the negotiation of, and
the transactions contemplated by, GenQuest's Series B Preferred Stock Purchase
Agreement dated as of the date hereof, GenQuest's Amended and Restated
Investors' Rights Agreement, dated as of the date hereof, GenQuest's Second
Amended and Restated Certificate of Incorporation and the Amendment and
Termination Agreement dated as of the date hereof, (iv) VLG's provision of the
Opinion and the representation of GenQuest in certain unrelated transactions
and general corporate matters, (v) VLG's representation of Corixa with respect
to the negotiation of, and the transactions contemplated by, this Agreement,
the Collaboration Agreement, the Put/Call Agreement and GenQuest's Amended and
Restated Voting Agreement dated as of the date hereof, and (vi) VLG's provision
of services for GenQuest through GenQuest's relationship with Corixa, as set
forth in this Agreement, the Collaboration Agreement and the Put/Call
Agreement. Each party to this Agreement further acknowledges that it has had
the opportunity to confer with legal counsel of its choice in connection with
the transactions contemplated hereby.
-13-
<PAGE> 14
IN WITNESS WHEREOF, the parties hereto have caused this Administrative
Services and Management Agreement to be duly executed and delivered as of the
date first above written.
CORIXA CORPORATION
/s/ MARK McDADE
By:______________________________________
Name:____________________________________
Title:___________________________________
GENQUEST, INC.
/s/ ALAN FRAZIER
By:______________________________________
Name:____________________________________
Title:___________________________________
-14-
<PAGE> 15
Schedule A
1997 REIMBURSABLE COSTS
<TABLE>
<CAPTION>
Administrative position Number Estd Salary/FTE Hire Date
- ---------------------------------------------------------------------------------------------------
<S> <C> <C> <C>
Business Development 1 $100,000 January 1, 1997
Administrative Support 1 $ 25,000 January 1, 1997
Total 2 $125,000
- ----- --- --------
</TABLE>
Total Reimbursable Costs are to be calculated as follows:
(a) once hired, Corixa's fringe benefits rate, 23%, is added to actual
salary to derive salary and fringe benefits rate;
(b) the above salary plus fringe rate is then multiplied by Corixa's G&A
overhead rate, which is 18.4% for 1997. This number does not include
any R&D overhead absorption;
(c) using the above calculation method, and assuming the above heads are
hired in a reasonable fashion over the first quarter of 1997, total
estimated Reimbursable Costs are $182,040. The estimated total expense
may vary due to changes in salary, but the fringe benefits and overhead
rates applied will not change for 1997.
(d) for the Business Development person, reasonable travel and other
out-of-pocket expenses will be reimbursed by GenQuest on a quarterly
basis.
Payment schedule:
(a) Payments are due the first day of each calendar year quarter,
specifically January 1, April 1, July 1 and October 1.
(b) Based on the above, estimated quarterly payments for the 1997 calendar
year are each $45,510, excluding reimbursable travel and other
out-of-pocket expenses. Further, actual salary rates will be used and
may require adjustment to these payments.
(c) Invoices for Reimbursable Costs and other reimbursable travel and
out-of-pocket expenses will be submitted to GenQuest quarterly.
<PAGE> 16
Schedule B
EQUIPMENT
Not applicable
<PAGE> 17
EXHIBIT A
FRAZIER HEALTHCARE II, L.P.
Two Union Square
601 Union Street, Suite 2110
Seattle, WA 98101
(206) 621-7200
December 23, 1996
Mark McDade
Corixa Corporation
1124 Columbia Street, Suite 464
Seattle, WA 98104
Dear Mark:
This will confirm, on behalf of the Purchase of the Series B Preferred Stock of
GenQuest, Inc., that GenQuest and Corixa are authorized to close, as of today,
on the purchase and sale of GenQuest Series B Preferred Stock under the Series
B Preferred Stock Purchase Agreement between GenQuest and the Purchasers,
including the related Amended and Restated License and Collaboration Agreement,
Administrative Services and Management Agreement, Call Option Agreement and
other instruments and agreements contemplated therein.
However, this authorization is based upon the agreement of Corixa, as evidenced
by its signature below, to the Purchasers' understanding of Sections 2.5, 3.1
and 3.2 of the Administrative Services and Management Agreement between
GenQuest and Corixa (the "Services Agreement"). Specifically, it is the
Purchasers' understanding that the [***] per year management fee under
Section 3.2 of the Services Agreement covers any services provided by members
of the Corixa management team named in Section 2.5 (and their successors, if any
such team members leave Corixa), so that no separate FTE charge shall be made
for the services of those individuals under Section 3.1. However, it is
understood that [***] of such Corixa management team
incurred in conducting GenQuest business under the Services Agreement would be
[***].
If the foregoing reflects your understanding, please sign below on behalf of
Corixa and return the countersigned copy to me.
Very truly yours,
/s/ ALAN FRAZIER
- ---------------------------
Alan Frazier
Frazier Healthcare II, L.P.
Agreed and Accepted,
CORIXA CORPORATION
By: /s/ MARK McDADE
------------------------
Mark McDade
Vice President
cc: William Ericson, Esq.
Kenneth A. Clark, Esq.
<PAGE> 1
EXHIBIT 10.30
AMENDMENT NO. 1
TO THE
LICENSE AGREEMENT
This Amendment No. 1 (the "Amendment") to the License Agreement (the
"Agreement") is made effective as of the 30th day of April, 1997 (the "Effective
Date") by and between SOUTHERN RESEARCH INSTITUTE, a non-profit corporation,
having an address at 2000 Ninth Avenue South, Birmingham, Alabama 35205
("Southern"), UNIVERSITY OF ALABAMA AT BIRMINGHAM RESEARCH FOUNDATION, a
non-profit corporation having an address at 1120G Administration Building, 701
20th Street South, Birmingham, Alabama 35294 ("UABRF") and CORIXA CORPORATION, a
Delaware corporation having an address at 1124 Columbia Street, Suite 200,
Seattle, Washington 98014 ("Licensee").
RECITALS
Southern, UABRF and Licensee entered into the Agreement effective May
22, 1996 whereby Southern and UABRF granted certain licenses to
microencapsulation and microcapsule formulation technology to Licensee upon the
terms and conditions set forth in the Agreement.
Southern, UABRF and Licensee now wish to amend the Agreement in certain
respects as hereinafter provided.
Except as otherwise provided herein, definitions of capitalized words
shall be those set forth in the Agreement.
The parties now agree as follows:
AMENDMENTS
Section A. Article 1 of the Agreement is amended to add the following
new definition:
"LICENSED THIRD PARTY PRODUCT" shall mean, subject to Sections 2 and 4
hereof, any [***] deliverable product comprised
at least in part of Licensed Technology or Southern Patent Rights and that
includes in the Cancer Field a proprietary third party antigen or cytokine as a
component, may include a Corixa Adjuvant as a component, but does not include
either a Corixa Antigen or Corixa Cytokine as a component."
Section B. Section 1.11 of Article 1 of the Agreement is amended in its
entirety to read as follows:
"1.11 "LICENSED PRODUCT" shall mean, subject to Sections 2 and 4 hereof,
any [***] deliverable product, other than
Licensed Third Party Products, comprised at least in part of Licensed Technology
or Southern Patent Rights and that, in the case of Licensed Products sold in the
Cancer Field, is also comprised of at least one Corixa Component."
<PAGE> 2
Section C. Section 1.13 of Article 1 of the Agreement is amended to
delete the reference to "product" in the third line and the reference to
"Licensed Product" in subsection (c) thereof and to replace both references with
"Licensed Product or Licensed Third Party Product."
Section D. Article 2 of the Agreement is amended to renumber Section 2.3
to be Section 2.4 and to add a new Section 2.3 which reads as follows:
"2.3 Southern hereby grants under the Southern Patent rights and
Southern and UABRF hereby grant to Licensee under the Licensed Technology an
exclusive, worldwide license, including the right to sublicense, in the Cancer
Field to make, have made, research, use, sell and have sold Licensed Third Party
Products."
Section E. Article 3 of the Agreement is amended to renumber Sections
3.3 through 3.8 to be Sections 3.6 through 3.11, respectively, to reflect such
changes in cross-references to Sections throughout the Agreement, and to add new
Sections 3.3, 3.4 and 3.5 which shall read as follows:
"3.3 Licensee shall pay Southern the following amounts with respect to
Licensed Third Party Products that do not contain any Corixa Adjuvant:
(a) [***] of the cumulative non-research, non-equity license and
milestone payments, if any, received by Licensee for the grant of sublicense
rights to the Licensed Third Party Products; and
(b) [***] of the net royalty or equivalent payments received by
Licensee from sublicensees to whom Licensee has granted sublicense rights to the
Licensed Third Party Products (the "Direct Sublicensees") with respect to Net
Sales by the Direct Sublicensees of Licensed Third Party Products that do not
contain any Corixa Adjuvant; and
(c) the lesser of (i) [***] of net royalty or equivalent payments
received by Licensee from Direct Sublicensees with respect to Net Sales of
Licensed Third Party Products that do not contain any Corixa Adjuvant by
sublicensees of the Direct Sublicensee; or (ii) the royalty otherwise payable
pursuant to Sections 3.1 and 3.2.
3.4 Licensee shall pay Southern the following amounts with respect to
Licensed Third Party Products that do contain one or more Corixa Adjuvants:
(a) [***] of the cumulative non-research, non-equity license and
milestone payments, if any, received by Licensee for the grant of sublicense
rights to the Licensed Third Party Products; and
(b) [***] of the net royalty or equivalent payments received by
Licensee from Direct Sublicensees with respect to Net Sales by the Direct
Sublicensees of Licensed Third Party Products that do contain one or more Corixa
Adjuvants; and
<PAGE> 3
(c) the lesser of (i) [***] of net royalty or equivalent payments
received by Licensee from Direct Sublicensees with respect to Net Sales of
Licensed Third Party Products that do contain one or more Corixa Adjuvants by
sublicensees of the Direct Sublicensee; or (ii) the royalty otherwise payable
pursuant to Sections 3.1 and 3.2.
3.5 In the event that the effective royalty payable (a) by Licensee to
Southern on Net Sales of Licensed Third Party Products pursuant to Section
3.3(c)(i) or 3.4(c)(i) is less than [***] or (b) by a Direct Sublicensee to
Licensee on Net Sales by the Direct Sublicensee of Licensed Third Party Products
is less than [***], Licensee shall not have the right to grant any sublicense to
the Licensed Third Party Products without the prior written consent of
Southern."
Section E. Section 3.3, as amended hereby to be Section 3.6, of Article
3 of the Agreement is hereby amended in its entirety to read as follows:
"3.6 All payments under this Article 3 shall be in U.S. dollars, due and
payable (i) with respect to Licensed Products, within forty-five (45) days after
the end of each calendar quarter for Net Sales during such quarter, and (ii)
with respect to Licensed Third Party Products, within forty-five (45) days after
the receipt of the applicable payment by Licensee from the Direct Sublicensee of
such Licensed Third Party Product. Licensee shall deliver to Southern with each
payment a report setting forth the sales or sublicense revenue during such
quarter or period, as applicable, and a calculation of the royalties or payments
due thereon. Where sales are not made in U.S. dollars, the sales amounts will be
translated using the rate of exchange quoted in The Wall Street Journal on the
last business day of such quarter."
Section F. The first sentence of Section 3.6(b), as amended hereby to be
Section 3.9(b), is hereby amended in its entirety to read as follows:
"(b) Licensee shall grant to Southern a warrant in the form attached
hereto as Exhibit 3.9 (the "Warrant"), for the purchase of two hundred fifty
thousand (250,000) shares of Licensee's Common Stock, which shall become
exercisable automatically and without any further action of Licensee or Southern
for the following number of shares, upon occurrence of the following events:"
Section G. The reference in Section 3.6(b)(ii), as amended hereby to be
Section 3.9(b)(ii) to "Licensed Product" is hereby amended to refer to "Licensed
Product or Licensed Third Party Product."
Section H. Article 3 is hereby further amended to add a new Section 3.12
to read as follows:
"3.12 In its sublicensing efforts, Licensee shall use commercially
reasonable efforts to obtain favorable economic terms for Licensee and Southern,
consistent with the terms and conditions of this Agreement."
Section I. Section 4.6 is hereby amended in its entirety to read as
follows:
<PAGE> 4
"4.6 For so long as Licensee continues to have the option to negotiate
set forth in Section 4.4, on or before June 30th of each calendar year,
commencing with June 30, 1997, Licensee shall (a) pay to Southern an option fee
of [***] and (b) grant to Southern fifteen thousand (15,000) shares of
Licensee's Common Stock, subject to the terms of Licensee's standard form of
investment representation letter."
Section J. The reference to "Licensed Products" in Section 8.2 of
Article 8 is hereby amended to refer to "Licensed Products or Licensed Third
Party Products."
Section K. Article 17 is hereby amended to add a new Section 17.6 as
follows:
"17.6 This Agreement may not be assigned by either party without the
prior written consent of the other party."
ENTIRE AGREEMENT
Except as provided otherwise herein, all other terms and conditions of
the Agreement shall remain in full force and effect.
IN WITNESS WHEREOF, the parties have executed the Amendment in duplicate
original by their proper officers to be effective as of the Effective Date
above.
CORIXA CORPORATION SOUTHERN RESEARCH INSTITUTE
By: /S/ Mark McDade By: /s/ G.E. DWYER
--------------------------- --------------------------------
Mark McDade Name: G.E. Dwyer
Chief Operating Officer --------------------------------
Title: Chief Executive Officer
--------------------------------
Date: April 30, 1997
--------------------------------
Date: May 5, 1997
-------------------------
UAB RESEARCH FOUNDATION
By: /s/ KENNETH J. ROOZEN
--------------------------------
Name: Kenneth J. Roozen
--------------------------------
Title: Executive Director
--------------------------------
Date: May 2, 1997
--------------------------------
