<PAGE> 1
================================================================================
U.S. SECURITIES AND EXCHANGE COMMISSION
Washington, D.C. 20549
FORM 10-KSB/A
---------------
(Mark One)
[X] ANNUAL REPORT UNDER SECTION 13 OR 15 (d) OF THE SECURITIES
EXCHANGE ACT OF 1934 (FEE REQUIRED)
For the fiscal year ended December 31, 1996
or
[ ] TRANSITION REPORT UNDER SECTION 13 OR 15 (d) OF THE SECURITIES
EXCHANGE ACT OF 1934 (NO FEE REQUIRED)
For the transition period from to
-----------
Commission file number 0-27914
RIBOZYME PHARMACEUTICALS, INC.
(Exact Name of Small Business Issuer as Specified in Its Charter)
-------------
DELAWARE 34-1697351
-------- ----------
(State of incorporation) (I.R.S. Employer Identification No.)
2950 WILDERNESS PLACE
BOULDER, COLORADO 80301
(Address of principal executive offices)
Company's telephone number: (303) 449-6500
SECURITIES REGISTERED UNDER SECTION 12(b) OF THE EXCHANGE ACT::
NONE
SECURITIES REGISTERED UNDER
SECTION 12(g) OF THE EXCHANGE ACT:
COMMON STOCK, PAR VALUE $0.01 PER SHARE
Check whether the issuer (1) filed all reports required to be filed
by Section 15 or 15(d) of the Exchange Act during the past 12 months (or for
such period that the Company was required to file such reports), and (2) has
been subject to such filing requirements for the past 90 days. Yes x No
--- ---
Check if there is no disclosure of delinquent filers in response to
Item 405 of Regulation S-B contained in this form, and no disclosure will be
contained, to the best of Company's knowledge, in definitive proxy or
information statements incorporated by reference in Part III of this Form
10-KSB or any amendment to this Form 10-KSB. [ ]
Issuer's revenues for fiscal year ending December 31, 1996 were $1,709,500.
The aggregate market value of the voting stock held by non-affiliates of the
Company, as of May 6, 1997, was approximately $26,490,300.
The number of shares of the Company's common stock, par value $.01 per share,
outstanding as of May 6, 1997, was 6,981,053.
DOCUMENTS INCORPORATED BY REFERENCE:
DOCUMENT PART(S) INTO WHICH INCORPORATED
-------- -------------------------------
Proxy Statement to be used in connection with Part III
the Annual meeting of Stockholders to be held
May 22, 1997 (the "Proxy Statement"), to be
filed with the Commission prior to April 30,
1997, pursuant to Regulation 144 of the
General Rules and Regulations of the
Commission is incorporated by reference herein.
<PAGE> 2
PART I
The Company's Form 10-KSB for the year ended December 31, 1996, filed
on March 31, 1997, is hereby incorporated by reference in its entirety.
PART II
The Company's Form 10-KSB for the year ended December 31, 1996, filed
on March 31, 1997, is hereby incorporated by reference in its entirety.
PART III
ITEM 13. EXHIBITS, LISTS AND REPORTS ON FORM 8-K
(a) 1. INDEX TO FINANCIAL STATEMENTS
Report of Independent Auditors F-1
Balance Sheets F-2
Statements of Operations F-4
Statements of Stockholders' Equity F-5
Statements of Cash Flows F-7
Notes to Financial Statements F-8
The Company's Financial Statements for the year ended December 31,
1996, were filed on March 31, 1997 on Form 10-KSB and are hereby incorporated by
reference in their entirety.
1
<PAGE> 3
2. EXHIBITS
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
- ------- -----------------------
3.1 (1) -- Amended and Restated Certificate of Incorporation dated
April 17, 1996.
3.2 (1) -- By-laws of the Company, as amended.
4.1 (1) -- Reference is made to Exhibits 3.1 and 3.2.
4.2 (1) -- Specimen Stock Certificate.
10.1 (1) -- Form of Indemnity Agreement entered into between the
Company and its directors and officers, with related
schedule.
10.2 (1) -- Company's Incentive Stock Option Plan (the "ISO Plan"),
including form of Incentive Stock Option Agreement
under the ISO Plan.
10.3 (1) -- Company's Non-Qualified Stock Option Plan (the "NQSO
Plan"), including form of Non-Qualified Stock Option under
the NQSO Plan.
10.4 (1) -- Company's 1996 Stock Option Plan (the "Option Plan"),
including forms of Incentive Stock Option and Nonstatutory
Stock Option under the Option Plan.
10.5 (1) -- Company's 1996 Employee Stock Purchase Plan.
10.6 (1) -- Employment Agreement, dated May 1, 1992 between the
Company and Ralph Christoffersen, Addendum to Employment
Agreement dated as of August 30, 1993, Second Addendum
dated January 31, 1994 and Third Addendum dated January 1,
1995.
10.7 (1) -- Incentive Stock Option Agreement between the Company and
Ralph E. Christoffersen, dated as of December 23, 1992.
10.8 (1) -- Incentive Stock Option Agreement between the Company and
Ralph E. Christoffersen, dated as of September 23, 1994.
10.9 (1) -- Warrant Purchase Agreement, dated as of March 15, 1995
between the Company and Hambrecht & Quist Guaranty Finance,
L.P.
10.10 (1) -- Warrant to Purchase Common Stock, dated as of March 15,
1995 issued to Hambrecht & Quist Guaranty Finance, L.P.
10.11 (1) -- Warrant to Purchase Common Stock, dated as of February 21,
1993 issued to LINC Scientific Leasing.
10.12 (1) -- Warrant to Purchase Common Stock, dated as of July 30, 1993
issued to Douglas E. Olson.
10.13 (1) -- Warrant to Purchase Common Stock, dated as of July 30, 1993
issued to Richard J. Warburg and Ruth P. Warburg.
2
<PAGE> 4
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
- ------- -----------------------
10.14 (1) -- Warrant to Purchase Common Stock, dated as of December 28,
1994 issued to Competitive Technologies, Inc.
10.15 (1) -- Warrant to Purchase Common Stock, dated as of December 29,
1995 issued to Silicon Valley Bank.
10.16 (1) -- Warrant to Purchase Common Stock, dated July 26, 1996
issued to Silicon Valley Bank.
10.17 (1) -- Warrant to Purchase Common Stock, dated April 17, 1996,
issued to Chiron Corporation.
10.18 (1) -- Collaborative Research, Development and Commercialization
Agreement, dated July 15, 1994 between the Company and
Chiron Corporation.
10.19 (1) -- Research Collaboration and Licensing Agreement, dated as of
November 1, 1995 between the Company and Pharmacia
Biotech, AB
10.20 (1) -- Research and Development Collaboration Agreement, dated as
of April 19, 1993 between the Company and Parke-Davis
Division of Warner-Lambert Company.
10.21 (1) -- First Amendment to the Research and Development
Collaboration Agreement, dated April 19, 1993, dated as
of April 17, 1995 between the Company and Parke-Davis
Division of Warner-Lambert Company.
10.22 (1) -- Second Amendment to the Research and Development
Collaboration Agreement, dated April 19, 1993, dated as
of February 8, 1996 between the Company and Parke-Davis
Division of Warner-Lambert Company.
10.23 (1) -- Financing Agreement, dated March 16, 1995 among Wilderness
Place Holdings L.L.C., Hambrecht & Quist Guaranty
Finance, L.P. and the Company.
10.24 (1) -- Negotiable Promissory Note, dated October 7, 1992 between
the Company and Ralph Christoffersen and Addendum dated
June 25, 1993.
10.25 (1) -- Employment Agreement, dated January 8, 1996 between the
Company and Lawrence E. Bullock.
10.26 (1) -- Promissory Note, dated February 8, 1996 between the
Company and Lawrence E. Bullock.
10.27 (1) -- Lease for Real Property, dated May 20, 1992 between
Aero-Tech Investments and the Company.
3
<PAGE> 5
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
- ------- -----------------------
10.28 (1) -- Non-Disturbance and Attornment Agreement, dated March
31, 1995 among General American Life Insurance Company,
Aero-Tech Investments, Wilderness Place Holdings L.L.C.
and the Company.
10.29 (1) -- Master Lease Agreement, dated September 2, 1992 between
the Company and LINC Scientific Leasing.
10.30 (1) -- Loan and Security Agreement, dated February 28, 1994
between the Company and Silicon Valley Bank.
10.31 (1) -- Loan Modification Agreement, dated December 21, 1994
between the Company and Silicon Valley Bank.
10.32 (1) -- Loan and Security Agreement, dated December 29, 1995
between the Company and Silicon Valley Bank and MMC/
GATX Partnership No. 1.
10.33 (1) -- Warrant to Purchase Common Stock, dated as of December
29, 1995 issued to MMC/GATX Partnership No. 1
10.34 (1) -- Agreement, dated February 29, 1996 between the Company
and Chiron Corporation relating to research and
development funding.
10.35 (3) -- Amendments to original Employment Agreements between
the Company and Ralph E. Christoffersen, Lawrence E.
Bullock and Nassim Usman, pursuant to letters dated
November 14, 1996, November 22, 1996 and December 15,
1996.
10.36 (3) -- Promissory Note, dated June 4, 1996 between the Company
and Nassim Usman.
10.37 (3) -- Amendment to Lease for Real Property, dated March 13,
1997 between Aero-Tech Investments and the Company.
10.38 (2) -- Employment Agreement, dated May 2, 1996 between the
Company and Nassim Usman.
10.39 (2) -- Collaboration Agreement Regarding Use of Ribozymes to
Determine Gene Function, dated May 13, 1996 between the
Company and Chiron Corporation.
10.40 (4) -- Amended and Restated License Agreement, dated November
20, 1996, between the Company, University Research
Corporation, University of Colorado and United States
Biochemical Corporation.
10.41 -- Amended and Restated Sublicense Agreement, dated
November 20, 1996, between the Company and United
States Biochemical Corporation.
10.42 (4) -- Amended and Restated License Agreement, dated November
20, 1996, between the Company and Competitive
Technologies, Incorporated.
10.43 (1) -- Memorandum of Understanding, dated March 1, 1996
between the Company and DowElanco.
4
<PAGE> 6
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
- ------- -----------------------
10.44 -- Stock Subscription Agreement, dated September 1996,
between the Company and University of Research
Corporation.
10.45 -- Stock Subscription Agreement, dated November 20, 1996,
between the Company and United States Biochemical
Corporation.
10.46 (4) -- Assignment of License and Restated License Agreement,
dated November 20, 1996, among the Company, United
States Biochemical Corporation and Competitive
Technologies.
10.47 -- No exhibit.
10.48 -- No exhibit.
10.49 (4) -- License Agreement dated February 14, 1997, between the
Company and IntelliGene, Ltd.
10.50 (1) -- Subscription Agreement, dated as of April 17, 1995,
between the Company and Parke-Davis Division of Warner-
Lambert Company.
10.51 (1) -- Stock Purchase Agreement, dated as of June 28, 1995,
among the Company and certain investors.
10.52 (1) -- Agreement dated March 1, 1996, between the Company and
DowElanco Corporation relating to the conversion of
preferred stock.
10.53 (1) -- Stock Subscription Agreement dated as of October 30,
1995, between the Company and Gewestelijke
Investeringsmaatschappij voor Vlaanderon n.v.
11.1 (3) -- Statement regarding calculation of net loss per share.
23.1 (3) -- Consent of Ernst & Young LLP, Independent Auditors.
27.1 (3) -- Financial Data Schedule.
(1) Incorporated by reference to the Company's Form S-B2 Registration
Statement, File No. 333-1908-D.
(2) Incorporated by reference to the Company's Form 10-QSB for the quarter
ended June 30, 1996.
(3) Incorporated by reference to the Company's Form 10-KSB for the year ended
December 31, 1996.
(4) The Company has applied for confidential treatment for certain portions
of these exhibits.
(b) REPORTS ON FORM 8-K
No reports on Form 8-K were filed during the quarter
ended December 31, 1996.
5
<PAGE> 7
SIGNATURES
In accordance with Section 13 or 15(d) of the Exchange Act, the
Company caused this report to be signed on its behalf by the undersigned,
thereunto duly authorized.
RIBOZYME PHARMACEUTICALS, INC.
By: /s/ RALPH E. CHRISTOFFERSEN
-----------------------------------
Ralph E. Christoffersen, Ph.D.
Chief Executive Officer and President
Date: May 14, 1997
In accordance with the Exchange Act, this report has been signed below
by the following persons on behalf of the Company and in the capacities and on
the dates indicated.
<TABLE>
<CAPTION>
SIGNATURE TITLE DATE
--------- ----- ----
<S> <C> <C>
/s/ RALPH E. CHRISTOFFERSEN Chief Executive Officer and President May 14, 1997
- ----------------------------------- (Principal Executive Officer)
Ralph E. Christoffersen, Ph.D.
/s/ LAWRENCE E. BULLOCK Vice President, Administration and May 14, 1997
- ----------------------------------- Finance, Chief Financial Officer and Secretary
Lawrence E. Bullock (Principal Financial and Accounting Officer)
/s/ DAVID T. MORGENTHALER Chairman of the Board of Directors May 14, 1997
- -----------------------------------
David T. Morgenthaler
/s/ JEREMY C. COOK Director May 14, 1997
- -----------------------------------
Jeremy C. Cook
/s/ ANTHONY B. EVNIN Director May 14, 1997
- -----------------------------------
Anthony B. Evnin, Ph.D.
/s/ CHARLES M. HARTMAN Director May 14, 1997
- -----------------------------------
Charles M. Hartman
/s/ ANDERS WIKLUND Director May 14, 1997
- -----------------------------------
Anders Wiklund
/s/ LEWIS T. WILLIAMS Director May 14, 1997
- -----------------------------------
Lewis T. Williams
</TABLE>
6
<PAGE> 8
EXHIBIT INDEX
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
- ------- -----------------------
3.1 (1) -- Amended and Restated Certificate of Incorporation
dated April 17, 1996.
3.2 (1) -- By-laws of the Company, as amended.
4.1 (1) -- Reference is made to Exhibits 3.1 and 3.2.
4.2 (1) -- Specimen Stock Certificate.
10.1 (1) -- Form of Indemnity Agreement entered into between the
Company and its directors and officers, with related
schedule.
10.2 (1) -- Company's Incentive Stock Option Plan (the "ISO Plan"),
including form of Incentive Stock Option Agreement
under the ISO Plan.
10.3 (1) -- Company's Non-Qualified Stock Option Plan (the "NQSO
Plan"), including form of Non-Qualified Stock Option
under the NQSO Plan.
10.4 (1) -- Company's 1996 Stock Option Plan (the "Option Plan"),
including forms of Incentive Stock Option and
Nonstatutory Stock Option under the Option Plan.
10.5 (1) -- Company's 1996 Employee Stock Purchase Plan.
10.6 (1) -- Employment Agreement, dated May 1, 1992 between the
Company and Ralph Christoffersen, Addendum to
Employment Agreement dated as of August 30, 1993,
Second Addendum dated January 31, 1994 and Third
Addendum dated January 1, 1995.
10.7 (1) -- Incentive Stock Option Agreement between the Company
and Ralph E. Christoffersen, dated as of December 23,
1992.
10.8 (1) -- Incentive Stock Option Agreement between the Company
and Ralph E. Christoffersen, dated as of September 23,
1994.
10.9 (1) -- Warrant Purchase Agreement, dated as of March 15, 1995
between the Company and Hambrecht & Quist Guaranty
Finance, L.P.
10.10 (1) -- Warrant to Purchase Common Stock, dated as of March 15,
1995 issued to Hambrecht & Quist Guaranty Finance, L.P.
10.11 (1) -- Warrant to Purchase Common Stock, dated as of February
22, 1993 issued to LINC Scientific Leasing.
10.12 (1) -- Warrant to Purchase Common Stock, dated as of July 30,
1993 issued to Douglas E. Olson.
10.13 (1) -- Warrant to Purchase Common Stock, dated as of July 30,
1993 issued to Richard J. Warburg and Ruth P. Warburg.
7
<PAGE> 9
EXHIBIT INDEX
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
- ------- -----------------------
10.14 (1) -- Warrant to Purchase Common Stock, dated as of December
28, 1994 issued to Competitive Technologies, Inc.
10.15 (1) -- Warrant to Purchase Common Stock, dated as of December
29, 1995 issued to Silicon Valley Bank.
10.16 (1) -- Warrant to Purchase Common Stock, dated July 26, 1996
issued to Silicon Valley Bank.
10.17 (1) -- Warrant to Purchase Common Stock, dated April 17, 1996,
issued to Chiron Corporation.
10.18 (1) -- Collaborative Research, Development and
Commercialization Agreement, dated July 15, 1994
between the Company and Chiron Corporation.
10.19 (1) -- Research Collaboration and Licensing Agreement, dated
as of November 1, 1995 between the Company and
Pharmacia Biotech, AB
10.20 (1) -- Research and Development Collaboration Agreement, dated
as of April 19, 1993 between the Company and Parke-
Davis Division of Warner-Lambert Company.
10.21 (1) -- First Amendment to the Research and Development
Collaboration Agreement, dated April 19, 1993, dated as
of April 17, 1995 between the Company and Parke-Davis
Division of Warner-Lambert Company.
10.22 (1) -- Second Amendment to the Research and Development
Collaboration Agreement, dated April 19, 1993, dated as
of February 8, 1996 between the Company and Parke-Davis
Division of Warner-Lambert Company.
10.23 (1) -- Financing Agreement, dated March 16, 1995 among
Wilderness Place Holdings L.L.C., Hambrecht & Quist
Guaranty Finance, L.P. and the Company.
10.24 (1) -- Negotiable Promissory Note, dated October 7, 1992
between the Company and Ralph Christoffersen and
Addendum dated June 25, 1993.
10.25 (1) -- Employment Agreement, dated January 8, 1996 between the
Company and Lawrence E. Bullock.
10.26 (1) -- Promissory Note, dated February 8, 1996 between the
Company and Lawrence E. Bullock.
10.27 (1) -- Lease for Real Property, dated May 20, 1992 between
Aero-Tech Investments and the Company.
8
<PAGE> 10
EXHIBIT INDEX
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
- ------- -----------------------
10.28 (1) -- Non-Disturbance and Attornment Agreement, dated March
31, 1995 among General American Life Insurance Company,
Aero-Tech Investments, Wilderness Place Holdings L.L.C.
and the Company.
10.29 (1) -- Master Lease Agreement, dated September 2, 1992 between
the Company and LINC Scientific Leasing.
10.30 (1) -- Loan and Security Agreement, dated February 28, 1994
between the Company and Silicon Valley Bank.
10.31 (1) -- Loan Modification Agreement, dated December 21, 1994
between the Company and Silicon Valley Bank.
10.32 (1) -- Loan and Security Agreement, dated December 29, 1995
between the Company and Silicon Valley Bank and MMC/
GATX Partnership No. 1.
10.33 (1) -- Warrant to Purchase Common Stock, dated as of December
29, 1995 issued to MMC/GATX Partnership No. 1
10.34 (1) -- Agreement, dated February 29, 1996 between the Company
and Chiron Corporation relating to research and
development funding.
10.35 (3) -- Amendments to original Employment Agreements between
the Company and Ralph E. Christoffersen, Lawrence E.
Bullock and Nassim Usman, pursuant to letters dated
November 14, 1996, November 22, 1996 and December 15,
1996.
10.36 (3) -- Promissory Note, dated June 4, 1996 between the Company
and Nassim Usman.
10.37 (3) -- Amendment to Lease for Real Property, dated March 13,
1997 between Aero-Tech Investments and the Company.
10.38 (2) -- Employment Agreement, dated May 2, 1996 between the
Company and Nassim Usman.
10.39 (2) -- Collaboration Agreement Regarding Use of Ribozymes to
Determine Gene Function, dated May 13, 1996 between the
Company and Chiron Corporation.
10.40 (4) -- Amended and Restated License Agreement, dated November
20, 1996, between the Company, University Research
Corporation, University of Colorado and United States
Biochemical Corporation.
10.41 -- Amended and Restated Sublicense Agreement, dated
November 20, 1996, between the Company and United
States Biochemical Corporation.
10.42 (4) -- Amended and Restated License Agreement, dated November
20, 1996, between the Company and Competitive
Technologies, Incorporated.
10.43 (1) -- Memorandum of Understanding, dated March 1, 1996
between the Company and DowElanco.
9
<PAGE> 11
EXHIBIT INDEX
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
- ------- -----------------------
10.44 -- Stock Subscription Agreement, dated September 1996,
between the Company and University of Research
Corporation.
10.45 -- Stock Subscription Agreement, dated November 20, 1996,
between the Company and United States Biochemical
Corporation.
10.46 (4) -- Assignment of License and Restated License Agreement,
dated November 20, 1996, among the Company, United
States Biochemical Corporation and Competitive
Technologies.
10.47 -- No exhibit.
10.48 -- No exhibit.
10.49 (4) -- License Agreement dated February 14, 1997, between the
Company and IntelliGene, Ltd.
10.50 (1) -- Subscription Agreement, dated as of April 17, 1995,
between the Company and Parke-Davis Division of Warner-
Lambert Company.
10.51 (1) -- Stock Purchase Agreement, dated as of June 28, 1995,
among the Company and certain investors.
10.52 (1) -- Agreement dated March 1, 1996, between the Company and
DowElanco Corporation relating to the conversion of
preferred stock.
10.53 (1) -- Stock Subscription Agreement dated as of October 30,
1995, between the Company and Gewestelijke
Investeringsmaatschappij voor Vlaanderon n.v.
11.1 (3) -- Statement regarding calculation of net loss per share.
23.1 (3) -- Consent of Ernst & Young LLP, Independent Auditors.
27.1 (3) -- Financial Data Schedule.
(1) Incorporated by reference to the Company's Form S-B2 Registration
Statement, File No. 333-1908-D.
(2) Incorporated by reference to the Company's Form 10-QSB for the quarter
ended June 30, 1996.
(3) Incorporated by reference to the Company's Form 10-KSB for the year ended
December 31, 1996.
(4) The Company has applied for confidential treatment for certain portions
of these exhibits.
(b) REPORTS ON FORM 8-K
No reports on Form 8-K were filed during the quarter
ended December 31, 1996.
10
<PAGE> 1
EXHIBIT 10.40
THE CONFIDENTIAL PORTION OF THIS CONTRACT HAS BEEN OMITTED PURSUANT TO
REGULATION 240.25B-2(B) OF THE SECURITIES EXCHANGE ACT OF 1934, AND HAS BEEN
FILED SEPARATELY WITH THE COMMISSION.
AMENDED AND RESTATED LICENSE AGREEMENT
This Amended and Restated License Agreement ("Agreement") is effective
this 23 day of September, 1996, between University Research Corporation, a
Colorado corporation and wholly owned subsidiary of The University of Colorado
Foundation (the "Foundation") having its principal office at 1305 University
Avenue, Boulder, Colorado 80309 ("URC"), the Regents of the University of
Colorado, a body corporate, for and on behalf of the University of Colorado
having its principal office at 914 Broadway, Boulder, Colorado 80309 ("CU"),
and United States Biochemical Corporation, an Ohio corporation having its
principal office in Cleveland, Ohio. ("USB").
WHEREAS, URC has granted to USB the exclusive rights to commercialize
certain Licensed Patents (as more fully identified herein) under that certain
License Agreement between USB, URC and the Regents of the University of
Colorado ("CU") dated September 1, 1993 (the "Prior License Agreement"); and
WHEREAS, USB's rights to commercialize such Licensed Patents were
subsequently licensed by USB to Ribozyme Pharmaceuticals, Inc., a Colorado
corporation (" RPI") pursuant to that certain Sublicense Agreement dated
September 1, 1993, between USB and RPI (the "Prior Sublicense Agreement"); and
WHEREAS, contemporaneously herewith, USB and RPI have entered into an
Amended and Restated Sublicense Agreement (the "Sublicense Agreement") granting
RPI the exclusive rights to commercialize the Licensed Patents in exchange for
the issuance of a certain number of shares of the Common Stock, $.01 par value,
of RPI ("Common Stock") to USB, as set forth therein; and
1
<PAGE> 2
WHEREAS, pursuant to the Prior License Agreement, USB was obligated to
pay a royalty to URC of [ ] of Licensed Products and Licensed Services (as
those terms are defined therein) generated by sublicensees of USB, which
royalty was payable to USB by RPI under the Prior Sublicense Agreement; and
WHEREAS, in exchange for 22,500 shares of the Common Stock of RPI, URC
has agreed to amend the Prior License Agreement and to amend that certain
License Agreement between URC and RPI dated September 1, 1993 (the "RPI License
Agreement") by entering into an Amended and Restated License Agreement with RPI
of even date herewith; and
WHEREAS, contemporaneously herewith, RPI and URC have entered into a
Stock Subscription Agreement regarding URC's acquisition of Common Stock, which
agreement is part of the consideration to URC hereunder and under the Amended
and Restated License Agreement with RPI; and
WHEREAS, pursuant to Section 12.2 thereof, URC, CU and USB desire to
and do hereby amend the Prior License Agreement effective concurrently
herewith.
NOW, THEREFORE, in consideration of the foregoing and the mutual
agreements set forth herein, the parties agree as follows:
1. Definitions: In addition to the terms defined above, for purposes of
this Agreement, the following capitalized terms shall have the meanings
ascribed to them:
1.1 "Improvement" shall mean any invention the practice of which
would infringe the claims of any Licensed Patent, which invention is made by
Dr. Thomas R. Cech, Dr. Daniel Herschlag and/or persons acting under the
direction and control of CU prior to the date of this Agreement.
1.2 "Improvement Patents" shall mean any patent application and any
patents issuing thereon throughout the world including any extensions,
renewals, continuations, continuations-in-part, divisions, patents of addition
and/or reissues thereof filed upon an Improvement, and to
2
<PAGE> 3
which the Foundation or URC had the right to grant licenses during the term of
the Prior License Agreement.
1.3 "Licensed Method" shall mean any method, process, or procedure
which would infringe any valid claim in a Licensed Patent but for the existence
of this License and which involves the manufacture, use or sale of a Licensed
Product.
1.4 "Licensed Patents" shall mean U.S. Patent Application Serial No.
427,707, filed on October 26, 1989, entitled "Ribozyme Inhibitors" and U.S.
Patent Application Serial No. 496,852, filed on November 21, 1990, entitled
"Site Specific Cleavage of Single-Stranded DNA" and any patents issuing
therefrom (including, without limitation, U.S. Patent No. 5,180,818), and any
corresponding foreign patent applications and patents that may issue thereon
throughout the world, and all extensions, renewals, divisions, continuations,
continuations-in-part, patents of addition, and/or reissues thereof and all
Improvement Patents.
1.5 "Licensed Product" shall mean any product covered by a
valid claim in a Licensed Patent, sold by or for USB for use as (by way of
illustration and not of limitation) research reagents, diagnostic products,
pharmaceutical products, agricultural products, veterinary products, cell
culture and/or fermentation products, or otherwise.
1.6 "Licensed Service" shall mean any service which is performed
for remuneration by USB or a sublicensee for a third party which would
infringe any valid claim of a Licensed Patent but for the existence of this
Agreement and which does not involve the manufacture, use or sale of a
Licensed Product.
2. License:
2.1 Grant: URC and CU hereby grant to USB an exclusive, world-wide
fully paid license under the Licensed Patents including, without limitation,
the right to manufacture, use and sell the subject matter described and claimed
therein. The license includes the right to grant sublicenses to third parties
on terms and conditions deemed reasonable in USB's sole discretion subject to
the provisions of this Agreement. URC acknowledges that USB has entered into
the Sublicense Agreement with RPI granting to RPI an exclusive license to
commercialize the Licensed Patents in all fields. The license granted under
this Agreement shall be irrevocable.
3
<PAGE> 4
2.2 Transfer of Biological Materials: Subject to any pre-existing
restrictions imposed on it, CU shall promptly provide to USB any and all
biological materials in its possession necessary to utilize the Licensed
Patents and shall permit USB and its sublicensee RPI to use those materials in
further research, development and commercialization of that technology and the
exercise of its rights under this Agreement.
2.3 Exclusivity: During the term of the License Agreement URC and
CU shall not retain or grant to any third party any rights inconsistent with the
exclusive license to USB, except to the extent that: (1) CU may utilize the
subject matter of the Licensed Patents only for academic, non-commercial
research conducted at CU, and (2) third parties may utilize the subject matter
of the Licensed Patents for academic, non-commercial research to the extent
permitted by 35 U.S.C. (beta)200 et seq. and 37 CFR (beta)401 and required by
prior agreement(s) for funding from the National Institutes of Health to CU and
University Technology Corporation through the Howard Hughes Medical Institute.
3. Payments: As consideration in full for the license granted by URC to
USB hereunder, and the benefit to RPI of same, RPI has issued to URC a total of
68,688 shares of its Common Stock. With the execution hereof, such Common Stock
shall be fully-paid, non-assessable and validly issued to URC.
Contemporaneously herewith, URC has executed a Subscription Agreement for
22,500 such shares of Common Stock containing such representations, warranties
and covenants as RPI has deemed necessary for compliance with applicable
federal and state securities laws. The parties acknowledge that the issuance of
such Common Stock to URC by RPI is also in consideration for that certain
Amended and Restated License Agreement between URC and RPI of even date
herewith.
4. Patents: USB, either directly or through its sublicensee RPI, shall be
responsible for the acquisition and maintenance of Licensed Patents subject to
the following:
4.1 Filing and Maintenance: USB shall apply for, prosecute and
maintain Licensed Patents as it deems appropriate in its sole discretion using
counsel of its own choice, provided that USB shall be reasonably diligent in
the prosecution of such patent applications. USB shall provide to URC copies of
each application and all Patent Office actions and responses. All
4
<PAGE> 5
patents obtained by USB shall be issued in the name of URC as the assignee and
owner. USB shall advise URC of its intention to abandon any such patent
application or patent thirty (30) days prior to taking such action. Thereafter,
all rights in the application or patent shall automatically revert to URC.
4.2 Expenses: USB shall bear the expenses associated with the
filing, prosecution and maintenance of Licensed Patents including, without
limitation, filing, maintenance, and attorneys' fees.
5. Patent Enforcement:
5.1 Enforcement Actions: CU and URC shall promptly notify USB of
any facts which come to their attention indicating that a third party is
violating any of the Licensed Patents. USB (or its sublicensee RPI) shall take
whatever action it deems appropriate to enforce the Licensed Patents in its
sole discretion and at its expense. At the request of USB, CU and URC shall
join in as parties to any enforcement action at USB's expense, provided that
any expenses incurred by CU and URC in connection therewith are approved in
advance by USB and are reasonable in amount. If USB (or its sublicensee RPI)
does not enforce the Licensed Patents against a particular infringer, then USB
shall give notice to CU and URC, and CU and URC may take action to enforce the
Licensed Patents against that infringer in their own names and at their own
expense after giving reasonable prior written notice to USB. CU and URC shall
be entitled to retain the proceeds of any enforcement action initiated and
maintained by either or both of them pursuant to the preceding sentence.
5.2 Expenses of Enforcement: USB shall bear all expenses, e.g.,
costs, attorneys' fees and expert witness fees, incurred by it in connection
with the enforcement of any Licensed Patent.
6. Defense of Patent Rights:
6.1 Declaratory Judgment Actions: In the event a third party brings
an action to obtain a declaration of patent invalidity of a Licensed Patent (a
"DJ Action") against CU, URC or USB (or its sublicensee RPI), the named
defendant(s) shall have the first right to defend said action at its own cost
and expense and to control ensuing litigation. If the named defendant elects
not to defend the DJ Action, the other parties may elect to defend that action
at its own
5
<PAGE> 6
cost and expense and to control the ensuing litigation. In the event that USB
(or its sublicensee RPI) and either or both of CU and/or URC are named as
parties to the DJ Action and either CU and/or URC elect to defend the action,
RPI shall be responsible for the expenses incurred by CU and URC in connection
therewith, provided that such expenses are approved in advance by RPI and are
reasonable in amount. If CU, URC and or USB (or its sublicensee RPI) finally
loses the DJ Action and one or more claims in a Licensed Patent are held to be
invalid, this Agreement and the license granted to USB hereunder shall continue
to the extent that the manufacture, use or sale of Licensed Products or
Licensed Services are covered by any remaining valid claim(s) in any other
Licensed Patent.
6.2 Third Party Patents:
6.2.1 Defense: A party shall notify the others in the event that
it learns that a third party alleges, asserts or otherwise claims,
formally or informally, or brings an action alleging, or in the event
USB (or its sublicensee RPI) forms a good faith belief, that use of
all or any portion of the rights granted to USB may violate any patent
or other intellectual property right of a third party. CU and URC
shall assist USB in the evaluation and defense thereof to the extent
reasonably requested by USB and at USB's expense provided that any
expenses incurred by CU and URC in connection therewith are approved
in advance by RPI and are reasonable in amount. CU and URC shall not
have an obligation to defend USB. USB (or its sublicensee RPI) shall
have the right to defend the allegation at its own cost and expense
and to control any ensuing legal action.
6.2.2 Resolution: In an effort to avoid the expenses of defending
against a patent infringement action and to permit USB to continue to
use the rights granted hereunder, USB (after consulting with URC)
shall be entitled to settle or compromise the infringement allegation
as it deems appropriate including, without limitation, entry into a
cross-license, including the sublicensing of rights granted under this
Agreement, with the third party on terms (including the amount of the
royalty rate, if any) which USB (and its sublicensee RPI) deems to be
reasonable in its discretion and, which at the time of the settlement
or compromise, provide comparable mutual benefits to the licensed
parties. Provided that the rights received by USB under such
cross-license are necessary to practice all or part of the rights
granted under this Agreement, as determined by USB
6
<PAGE> 7
after conferring with CU and URC, then the reciprocal rights granted
by USB to the third party under the cross-license shall be free of any
royalty to URC.
7. Term and Termination:
7.1 Term: This Agreement shall remain in effect until the last of
the Licensed Patents has expired.
7.2 Effect of Termination: Unless otherwise agreed by the parties in
writing, the termination of this Agreement for any reason shall not affect the
rights or obligations of either party arising prior thereto (including, without
limitation, the obligation of USB under paragraph 11.6 to indemnify CU and URC
for acts occurring prior to the termination) and shall not terminate or
otherwise adversely affect any sublicenses granted by USB under this Agreement,
including, without limitation, the sublicense granted to RPI, which sublicenses
shall be assigned to CU and URC.
8. Warranties and Representations:
8.1 USB: USB represents and warrants that it has taken all action
necessary to enter into this Agreement, that it has all rights and authority
necessary to enter into this Agreement and to perform its obligations
hereunder, and that the execution of this Agreement by USB and the performance
of its obligations hereunder will not violate any contractual obligation to any
third party or any obligation imposed on USB as a matter of law.
8.2 CU and URC: CU and URC represent and warrant that they have taken
all action necessary to enter into this Agreement, that they have all rights,
title and authority necessary to enter into this Agreement, to convey the
rights granted hereunder and to perform their obligations hereunder, and that
the execution of this Agreement by CU and URC and the performance of their
obligations hereunder will not violate any contractual obligation to any third
party or any obligation imposed on CU or URC as a matter of law. Further, CU
and URC represent and warrant that they have not previously entered into any
agreement which conveys any rights in Licensed Patents to any third party and
that no third party may validly object to CU and URC's entry into this
Agreement with USB. CU AND URC EXPRESSLY DISCLAIM ANY REPRESENTATION OR
WARRANTY THAT THE LICENSED PATENTS ARE
7
<PAGE> 8
VALID PATENTS OR THAT THEY WILL SURVIVE LITIGATION, THAT THE USE OR PRACTICE OF
THE LICENSED PATENTS WILL NOT INFRINGE THE RIGHTS OF ANY THIRD PARTY, THAT ANY
LICENSED PATENTS CAN BE EMPLOYED IN CLINICAL APPLICATIONS OR THAT THE LICENSED
PRODUCTS, LICENSED SERVICES AND LICENSED METHODS WILL BE OF ANY COMMERCIAL
VALUE TO RPI WHATSOEVER, AND NO SUCH REPRESENTATIONS OR WARRANTIES SHOULD BE
IMPLIED. USB AGREES THAT IT IS OBTAINING THE LICENSES HEREIN GRANTED WITHOUT
ANY REPRESENTATION OF VALUE, MERCHANTABILITY OR FITNESS FOR USE.
9. Preference for U.S. Industry:
In view of Public Law 96-517, Public Law 98-620 and regulations
thereunder, USB agrees that any Licensed Product covered by Licensed Patents or
produced through the use of a Licensed Method for sale in the United States of
America will be manufactured substantially in the United States of America,
unless a waiver of such obligation is obtained from the Federal Agency which
supported in whole or in part said invention. USB shall include the foregoing
provision in any sublicense(s) it grants hereunder.
10. Dispute Resolution:
10.1 Submission to Presidents: In the event of any dispute regarding
the interpretation or enforcement of this Agreement, any party hereto may have
the dispute referred to the Presidents of the respective parties (the
"Presidents") for good-faith resolution. The resolution by the Presidents shall
be final and binding on the parties.
10.2 Arbitration: Any controversy concerning the interpretation or
enforcement of this Agreement shall be settled by final and binding arbitration
in accordance with the then existing rules of the American Arbitration
Association, and judgment upon the award rendered by the arbitrators may be
entered in any court having jurisdiction over the party against whom the award
is entered. Arbitration of disputes referred to the Presidents may not be
initiated unless the Presidents cannot agree to a resolution within thirty (30)
days after submission to them. The arbitration shall be conducted in Boulder,
Colorado. Any such arbitration proceeding
8
<PAGE> 9
shall be heard before a panel of three arbitrators, one to be designated by
USB, another to be designated by CU and URC, and a third to be agreed upon by
the other two arbitrators; provided, however, that if the two party-appointed
arbitrators are unable to agree on a third arbitrator within thirty (30) days
after the second arbitrator is appointed, the third arbitrator shall be
selected by the American Arbitration Association. The arbitrators may award any
remedy provided under this Agreement or otherwise available in law or in equity
and shall award to the prevailing party and assess against the others the
costs, arbitration fees (including the fees of the American Arbitration
Association and the arbitrators) and reasonable attorneys' fees incurred by the
prevailing party in connection with the dispute.
10.3 Exclusive Procedures: The dispute resolution procedures
specified in this paragraph 10 are the exclusive procedures for dispute
resolution regarding the interpretation and enforcement of this Agreement.
11. General Provisions:
11.1 Notices: Any payment or notice to be made hereunder shall be
sufficiently made or given, effective on the day of receipt, by: (a) personal
delivery; (b) United States mail, duly certified or registered; or (c) by
delivery by a recognized national courier service, with postage or fee prepaid
and addressed as follows:
To URC: University Research Corporation
Foundation Center
1305 University Avenue
P.O. Box 1140
Boulder, CO 80309
Attention: Charles G. McCord, President
With a copy to:
Boulder Ventures
1634 Walnut Street
Boulder, CO 80302
Attention: Kyle Lefkoff
9
<PAGE> 10
To CU: University Technology Corporation
3101 Iris Avenue, Suite 250
Boulder, Colorado 80301
Attention: Mike Gabridge,
Assistant Vice President
To USB: United States Biochemical Corporation
26111 Miles Road
Cleveland, OH 44128
Attention: Tom Mann, President
Any party may, from time-to-time, by written notice to the others in
the manner specified, designate a different address or representative to
receive notice.
11.2 Amendment: This Agreement may not be altered, amended or
modified, except in a writing executed by CU, URC and USB.
11.3 Non-Waiver: Failure by a party to enforce any provision of
this Agreement or to assert a claim because of a breach hereof shall not be
deemed a waiver of the right to enforce the same or any other provision of this
Agreement for a subsequent breach.
11.4 Construction: This Agreement shall be interpreted and
construed under the substantive laws of the State of Colorado.
11.5 Assignability: Neither this Agreement nor the rights and
obligations hereunder may be assigned or transferred by CU or URC without the
express prior written permission of USB, except that CU and URC may assign
their rights or obligations hereunder to a related entity owned or controlled
by either or both of them. This Agreement shall inure to the benefit of and
shall be binding upon USB and its successors and assigns.
11.6 Indemnification: USB agrees to indemnify and hold harmless
URC, CU and the inventors of the Licensed Patents from any and all claims,
damages and liabilities asserted by third parties arising from USB's sale of
Licensed Products and/or the purchaser's use thereof. CU and URC shall promptly
notify USB of any such claim or action, shall permit USB to direct the defense
thereof and shall not settle any such claim or action without the prior written
consent of USB.
11.7 Force Majeure: No party shall be liable in damages or have
the right to terminate this Agreement for any delay or default in performing
hereunder if such delay or default is
10
<PAGE> 11
caused by conditions beyond its control including, without limitation, acts of
God, government restrictions, wars or insurrections.
11.8 Further Assistance: CU and URC shall execute such further
documents and take such further action as may be requested by USB to effect
their obligations under this Agreement. USB shall execute such further
documents and take such further action as may be requested by CU and/or URC to
effect its obligations hereunder.
11.9 Non-use of Names: Nothing contained herein shall authorize
USB or its sublicensees to use the names of CU, URC or the Foundation in
advertising or promotional materials for any product sold to the public or shall
authorize CU or URC to use the name of USB or RPI in any print or electronic
media disseminated to the public, without the express prior written
authorization of the entity whose name is to be used. Subject to the foregoing,
the parties may advise others of the existence and nature of this Agreement. The
parties shall agree to the content of a joint announcement regarding the
execution of this Agreement.
11
<PAGE> 12
11.10 Independent Contractors: The parties acknowledge that each of
them is acting as an independent contractor in the exercise of its rights and
the performance of its obligations under this Agreement. Nothing contained
herein shall be construed as making USB the agent of CU or URC, as making CU or
URC the agent or USB or as creating a partnership or joint venture between any
of the parties.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the date first above written.
UNIVERSITY RESEARCH UNITED STATES BIOCHEMICAL
CORPORATION CORPORATION
By: /s/ CHARLES G. MCCORD By: /s/ TOM MANN
--------------------------- ------------------------------
Title: President Title: President
Date: September 23, 1996 Date: September 23, 1996
UNIVERSITY TECHNOLOGY CORPORATION
ON BEHALF OF
THE UNIVERSITY OF COLORADO
By: /s/ MICHAEL G. GABRIDGE
---------------------------
Title: President
Date: September 26, 1996
ACKNOWLEDGED AND AGREED TO:
THE UNIVERSITY OF COLORADO
FOUNDATION
By: /s/ CHARLES G. MCCORD
--------------------------
Title: President
Date: September 23, 1996
12
<PAGE> 1
EXHIBIT 10.41
AMENDED AND RESTATED SUBLICENSE AGREEMENT
This Amended and Restated Sublicense Agreement ("Agreement") is
effective this 20 day of November, 1996, between United States Biochemical
Corporation, an Ohio corporation having its principal office at 26111 Miles
Road, Cleveland, Ohio ("USB") and Ribozyme Pharmaceuticals, Inc., a Delaware
corporation having its principal office at 2950 Wilderness Place, Boulder,
Colorado ("RPI").
WHEREAS, USB has been granted the exclusive rights to commercialize
certain Licensed Patents (as more fully identified herein) from University
Research Corporation ("URC"), a Colorado corporation and wholly owned
subsidiary of the University of Colorado Foundation (the "Foundation"), under
that certain License Agreement between USB, URC and the Regents of the
University of Colorado ("CU") dated September 1, 1993 (the "Prior License
Agreement"); and
WHEREAS, USB and RPI are parties to that certain Sublicense Agreement
dated September 1, 1993, whereby USB's rights to commercialize such Licensed
Patents were subsequently licensed by USB to RPI; and
WHEREAS, contemporaneously herewith, URC, CU and USB have terminated the
Prior License Agreement, and URC, CU and USB have entered into an Amended and
Restated License Agreement (the "License Agreement") granting USB the exclusive
rights to commercialize the Licensed Patents for such consideration as set
forth therein; and
WHEREAS, contemporaneously herewith, USB and RPI, along with Competitive
Technologies, Inc., a Delaware corporation ("CTI"), have entered into an
Assignment of License and Restated License Agreement (the "Restated License
Agreement"), granting RPI the exclusive rights to commercialize certain patents
relating to ribozymes identified therein in exchange for the issuance of 22,500
shares of the Common Stock, $.01 par value, of RPI ("Common Stock") to USB and
the assumption by RPI of all of USB's rights and obligations under a certain
Second Restated License Agreement dated September 1, 1996 between USB and CTI;
and
WHEREAS, contemporaneously herewith, RPI and USB have entered into a
Stock Subscription Agreement regarding USB's acquisition of Common Stock, which
agreement is part of the consideration to USB hereunder and under the Restated
Sublicense Agreement; and
WHEREAS, USB has agreed to sublicense the Licensed Patents to RPI on the
terms and conditions set forth herein, and, pursuant to Section 13.3 thereof,
USB and RPI desire to and do hereby amend the Prior Sublicense Agreement
effective concurrently herewith.
NOW, THEREFORE, in consideration of the foregoing and the mutual
agreements set forth herein, the parties agree as follows:
1
<PAGE> 2
1. Definitions: In addition to the terms defined above, for purposes of
this Agreement, the following capitalized terms shall have the meanings
ascribed to them:
1.1 "Improvement" shall mean any invention the practice of which
would infringe the claims of any Licensed Patent, which invention is made by
Dr. Thomas R. Cech, Dr. Daniel Herschlag and/or persons acting under the
direction and control of CU prior to the date of this Agreement.
1.2 "Improvement Patents" shall mean any patent application and any
patents issuing thereon throughout the world including any extensions,
renewals, continuations, continuations-in-part, divisions, patents of addition
and/or reissues thereof filed upon an Improvement, and to which the Foundation
or URC had the right to grant licenses during the term of the Prior License
Agreement.
1.3 "Licensed Method" shall mean any method, process, or procedure
which would infringe any valid claim in a Licensed Patent but for the existence
of this Agreement and which involves the manufacture, use or sale of a Licensed
Product.
1.4 "Licensed Patents" shall mean U.S. Patent Application Serial No.
427,707, filed on October 26, 1989, entitled "Ribozyme Inhibitors" and U.S.
Patent Application Serial No. 496,852, filed on November 21, 1990, entitled
"Site Specific Cleavage of Single-Stranded DNA" and any patents issuing
therefrom (including, without limitation, U.S. Patent No. 5,180,818), and any
corresponding foreign patent applications and patents that may issue thereon
throughout the world, and all extensions, renewals, divisions, continuations,
continuations-in-part, patents of addition, and/or reissues thereof and all
Improvement Patents.
1.5 "Licensed Product" shall mean any product covered by a valid
claim in a Licensed Patent, sold by or for RPI for use as (by way of
illustration and not of limitation) diagnostic products, pharmaceutical
products, agricultural products, veterinary products, cell culture and/or
fermentation products, or otherwise.
1.6 "Licensed Service" shall mean any service which is performed for
remuneration by RPI or a sublicensee for a third party which would infringe any
valid claim of a Licensed Patent but for the existence of this Agreement and
which does not involve the manufacture, use or sale of a Licensed Product.
2. License:
2.1 Grant: USB hereby grants to RPI an exclusive, world-wide, fully
paid license under the Licensed Patents including, without limitation, the
right to manufacture, use and sell the subject matter described and claimed
therein. The license includes the full right to grant sublicenses to third
parties on terms and conditions deemed reasonable in RPI's sole discretion
subject to the provisions of this Agreement. Except as otherwise provided
herein, USB agrees, during the term hereof, not to grant to any third party any
rights inconsistent with the rights granted to RPI under this Agreement and not
to terminate the License Agreement with CU and URC without the express, prior
written approval of RPI.
2.2 Reservation of Rights in Third Parties: RPI acknowledges that
the rights granted in this Agreement are limited to those which USB has a right
to grant under the License Agreement (a copy of which has been delivered to
RPI) and are subject to any obligations assumed by USB under the License
Agreement. Further, RPI acknowledges that the foregoing sublicense is subject
to any and all rights that: (1) CU may have to utilize the Ribozyme Technology
for academic, non-commercial research conducted at CU and (2) third parties
have
2
<PAGE> 3
to utilize the Ribozyme Technology to the extent permitted by 35 U.S.C. Section
200 et seq. and 37 CFR Section 401 as required by prior agreement(s) for
funding to CU.
3. Payment: As consideration in full for the license granted by USB to RPI
hereunder, RPI shall issue to USB 22,500 shares of its common stock, $.01 par
value (the "Common Stock"). Such Common Stock shall be fully-paid, non-
assessable and validly issued to USB. USB shall execute a Subscription
Agreement for the shares of Common Stock containing such representations,
warranties and covenants as RPI deems necessary for compliance with applicable
federal and state securities laws. The parties acknowledge that the issuance
of such Common Stock to USB by RPI is also in consideration for the Restated
Sublicense Agreement between USB, RPI and CTI of even date herewith.
4. Patents: The parties agree that, consistent with Section 5 of the
Technology Agreement entered into between USB and RPI on February 7, 1992 (the
"Technology Agreement"), RPI shall continue to assume the rights and
responsibilities of USB to file, prosecute and maintain Licensed Patents under
paragraph 4 of the License Agreement.
5. Patent Enforcement: USB shall promptly notify RPI of any facts which
come to USB's attention indicating that a third party is violating any of the
Licensed Patents. RPI shall take whatever action it deems appropriate to
enforce the Licensed Patents in its sole discretion and at its expense and
shall be entitled to obtain any remuneration recovered as a result thereof
subject to fulfilling any obligations of USB to CU and URC under the License
Agreement. At the request of RPI, USB shall join in as a party to any
enforcement action at RPI's expense provided that any expenses incurred by USB
in connection therewith are approved in advance by RPI and are reasonable in
amount. USB acknowledges that CU and URC may have certain rights to enforce
the Licensed Patents, if RPI does not do so. If both RPI and USB do not
enforce the Licensed Patents against a particular infringer, then URC and/or CU
may do so in its own name and at its own expense. CU and URC may retain the
proceeds of any enforcement action initiated and maintained by them pursuant to
the preceding sentence.
6. Defense of Patent Rights:
6.1 Declaratory Judgment Actions: In the event a third party brings
an action to obtain a declaration of patent invalidity of a Licensed Patent (a
"DJ Action") against RPI or USB, RPI shall have the first right to defend said
action (including the right to intervene, if necessary) at its own cost and
expense and to control the ensuing litigation. If RPI elects not to defend the
DJ Action, USB may elect to defend that action at its own cost and expense.
6.2 Third Party Patents: Each party shall notify the other in the
event a third party alleges, asserts or otherwise claims, formally or
informally, or brings an action alleging, or in the event RPI forms a good
faith belief, that use of all or any portion of the rights granted to RPI
hereunder may violate any patent or other intellectual property right of a
third party. USB shall assist RPI in the evaluation and defense thereof to the
extent reasonably requested by RPI, but shall not have an obligation to defend
RPI. RPI shall have the right to defend the allegation at its own cost and
expense and to control any ensuing legal action.
6.3 Resolution: In an effort to avoid the expenses of defending
against a patent infringement action and to permit RPI to continue to use the
rights granted hereunder, RPI (after consulting with USB) shall be entitled to
settle or compromise the infringement allegation as it
3
<PAGE> 4
deems appropriate including, without limitation, entry into a cross-license,
including the sublicensing of rights granted under this Agreement, with the
third party on terms (including the amount of the royalty rate, if any) which
RPI deems to be reasonable in its discretion and, which at the time of the
settlement or compromise, provide comparable mutual benefits to the licensed
parties. Provided that the rights received by RPI under the cross-license are
necessary to practice all or part of the rights granted under this Agreement,
as determined by RPI after conferring with USB, then the reciprocal rights
granted by RPI to the third party under the cross-license shall be free of any
royalty to USB, CU or URC.
7. Term and Termination:
7.1 Term: This Agreement shall remain in effect until the last of
the Licensed Patents has expired or if no such patent issues, ten (10) years
from the effective date of this Agreement.
7.2 Effect of Termination: Unless otherwise agreed by the parties in
writing, the termination of this Agreement for any reason shall not affect the
rights or obligations of either party arising prior thereto (including, without
limitation, the obligation of RPI to indemnify USB, CU and URC under paragraph
11.7 herein) and shall not terminate or otherwise adversely affect any
sublicenses granted by RPI under this Agreement, which sublicenses shall be
assigned to USB upon the termination hereof.
8. Warranties and Representations:
8.1 USB: USB represents and warrants that it has taken all action
necessary to enter into this Agreement, that it has all rights and authority
necessary to enter into this Agreement and to perform its obligations
hereunder, and that the execution of this Agreement by USB and the performance
of its obligations hereunder will not violate any contractual obligation to any
third party or any obligation imposed on USB as a matter of law. USB EXPRESSLY
DISCLAIMS ANY REPRESENTATION OR WARRANTY THAT THE LICENSED PATENTS ARE VALID
PATENTS OR THAT THEY WILL SURVIVE LITIGATION, THAT THE USE OR PRACTICE OF THE
LICENSED PATENTS WILL NOT INFRINGE THE RIGHTS OF ANY THIRD PARTY, THAT ANY
LICENSED PATENTS CAN BE EMPLOYED IN CLINICAL APPLICATIONS OR THAT THE LICENSED
PRODUCTS, LICENSED SERVICES AND LICENSED METHODS WILL BE OF ANY COMMERCIAL
VALUE TO RPI WHATSOEVER, AND NO SUCH REPRESENTATIONS OR WARRANTIES SHOULD BE
IMPLIED. RPI AGREES THAT IT IS OBTAINING THE LICENSES HEREIN GRANTED WITHOUT
ANY REPRESENTATION OF VALUE, MERCHANTABILITY OR FITNESS FOR USE.
8.2 RPI: RPI represents and warrants that it has taken all action
necessary to enter into this Agreement, that it has all rights and authority
necessary to enter into this Agreement and to perform its obligations
hereunder, and that the execution of this Agreement by RPI and the performance
of its obligations hereunder will not violate any contractual obligation to any
third party or any obligation imposed on RPI as a matter of law.
9. Preference for U.S. Industry: In view of Public Law 96-517, Public Law
98-620 and regulations thereunder, RPI agrees that any Licensed Product covered
by Licensed Patents or produced through the use of a Licensed Method for sale
in the United States of America will be manufactured substantially in the
United States of America, unless a waiver of such obligation is
4
<PAGE> 5
obtained from the Federal Agency which supported in whole or in part said
invention. RPI shall include the foregoing provision in any sublicense(s) it
grants hereunder.
10. Dispute Resolution:
10.1 Submission to Presidents: In the event of any dispute regarding
the interpretation or enforcement of this Agreement, any party hereto may have
the dispute referred to the Presidents of the respective parties (the
"Presidents") for good-faith resolution. The resolution by the Presidents
shall be final and binding on the parties.
10.2 Arbitration: Any controversy concerning the interpretation or
enforcement of this Agreement shall be settled by final and binding arbitration
in accordance with the then existing rules of the American Arbitration
Association, and judgment upon the award rendered by the arbitrators may be
entered in any court having jurisdiction over the party against whom the award
is entered. Arbitration of disputes referred to the Presidents may not be
initiated unless the Presidents cannot agree to a resolution within thirty (30)
days after submission to them. The arbitration shall be conducted in Boulder,
Colorado. Any such arbitration proceeding shall be heard before a panel of
three arbitrators, one to be designated by USB, another to be designated by
RPI, and a third to be agreed upon by the other two arbitrators; provided,
however, that if the two party-appointed arbitrators are unable to agree on a
third arbitrator within thirty (30) days after the second arbitrator is
appointed, the third arbitrator shall be selected by the American Arbitration
Association. The arbitrators may award any remedy provided under this
Agreement or otherwise available in law or in equity and shall award to the
prevailing party and assess against the others the costs, arbitration fees
(including the fees of the American Arbitration Association and the
arbitrators) and reasonable attorneys' fees incurred by the prevailing party in
connection with the dispute.
10.3 Exclusive Procedures: The dispute resolution procedures
specified in this paragraph 10 are the exclusive procedures for dispute
resolution regarding the interpretation and enforcement of this Agreement.
11. General Provisions:
11.1 Notices: Any payment or notice to be made hereunder shall be
sufficiently made or given, effective on the day of receipt, by: (a) personal
delivery; (b) United States mail, duly certified or registered; or (c) by
delivery by a recognized national courier service, with postage or fee prepaid
and addressed as follows:
To USB: United States Biochemical Corporation
26111 Miles Road
Cleveland, Ohio 44128
Attention: President
To RPI: Ribozyme Pharmaceuticals, Inc.
2950 Wilderness Place
Boulder, Colorado 80301
Attention: President
Either party may, from time-to-time, by written notice to the other in
the manner specified, designate a different address or representative to
receive notice.
5
<PAGE> 6
11.2 Integration: The parties acknowledge that this Agreement is
subject to the Technology Agreement, except to the extent that the Technology
Agreement is inconsistent with the terms herein, in which event the provisions
of this Agreement shall be controlling.
11.3 Amendment: This Agreement may not be altered, amended or
modified, except in a writing executed by both parties.
11.4 Non-Waiver: Failure by a party to enforce any provision of this
Agreement or to assert a claim because of a breach hereof shall not be deemed a
waiver of the right to enforce the same or any other provision of this
Agreement for a subsequent breach.
11.5 Construction: This Agreement shall be interpreted and construed
under the substantive laws of the State of Colorado.
11.6 Assignability: Neither this Agreement nor any interest hereunder
shall be assignable by operation of law or otherwise by RPI without the prior
written consent of USB, except to a successor in ownership of all or
substantially all of the business assets of RPI, and which successor shall
expressly assume in writing the performance of all the terms and conditions of
this Agreement to be performed by the assigning party.
11.7 Indemnification: In addition to the indemnification contained in
the Technology Agreement, RPI specifically agrees to indemnify and hold
harmless the inventors of the Licensed Patents, USB, URC and CU and the
officers, directors, agents and employees of any of them from any and all
claims, damages and liabilities asserted by third parties arising from the
manufacture, use or sale of Licensed Products, Licensed Methods or Licensed
Services by RPI or its sublicensees.
11.8 Force Majeure: Neither party shall be liable in damages or have
the right to terminate this Agreement for any delay or default in performing
hereunder if such delay or default is caused by conditions beyond its control
including, without limitation, acts of God, government restrictions, wars or
insurrections.
11.9 Non-use of Names: Nothing contained herein shall authorize
either party to use the name of the other in advertising or promotional
materials for any product sold to the public without the express prior written
authorization of the party whose name is to be used. Subject to the foregoing,
the parties may advise others of the existence and nature of this Agreement.
The parties shall agree to the content of a joint announcement regarding the
execution of this Agreement.
11.10 Independent Contractors: The parties acknowledge that each of
them is acting as an independent contractor in the exercise of its rights and
the performance of its obligations under this Agreement. Nothing contained
herein shall be construed as making either party the agent of the other or as
creating a partnership or joint venture between them.
6
<PAGE> 7
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the date first above written.
UNITED STATES BIOCHEMICAL RIBOZYME PHARMACEUTICALS, INC.
CORPORATION
By: /s/ Tom Mann By: /s/ Ralph E. Christoffersen
Title: President Title: President/CEO
Date: November 20, 1996 Date: November 20, 1996
7
<PAGE> 1
EXHIBIT 10.42
THE CONFIDENTIAL PORTION OF THIS CONTRACT HAS BEEN OMITTED PURSUANT TO
REGULATION 240.25B-2(B) OF THE SECURITIES EXCHANGE ACT OF 1934, AND HAS BEEN
FILED SEPARATELY WITH THE COMMISSION.
AMENDED AND RESTATED LICENSE AGREEMENT
BETWEEN
RIBOZYME PHARMACEUTICALS, INC.
AND
COMPETITIVE TECHNOLOGIES, INC.
<PAGE> 2
TABLE OF CONTENTS
<TABLE>
<CAPTION>
Page
----
<S> <C> <C>
ARTICLE I DEFINITIONS 2
ARTICLE II SURVIVAL OF ASSIGNMENT 5
ARTICLE III USE OF PATENTED SUBSTANCES 6
ARTICLE IV THE LICENSE 6
1. Grant 6
2. Sublicenses 7
3. Exclusivity 9
4. Consultation 10
5. Cross-Licensing 10
6. Country of Origin 11
ARTICLE V PRODUCT DEVELOPMENT 11
1. Due Diligence 11
2. Research and Development Information 12
3. Data 12
4. Remedial Action 12
ARTICLE VI PAYMENTS UNDER THE LICENSE 13
1. License Fee 13
2. Royalty Basis 13
3. Royalty Rates 13
4. Guaranteed Minimum Payments 14
ARTICLE VII REMITTANCES, RECORDS AND REPORTS
UNDER THE LICENSES 16
1. Royalties 16
2. Sublicense Fees 17
3. Guaranteed Minimum Payments 17
4. Currency 17
5. Credit for Patent Expenses 17
6. Foreign Royalty Payments 17
7. Inspection 18
8. Price 18
ARTICLE VIII PATENT PROTECTION 18
Patent Filing 18
Recovery of Patent Expenses 19
</TABLE>
<PAGE> 3
<TABLE>
<S> <C> <C>
ARTICLE IX ENFORCEMENT OF LICENSED PATENTS 19
1. Enforcement 19
2. Defense 20
ARTICLE X TERMS OF LICENSE: TERMINATION 21
1. Term 21
2. Termination 21
ARTICLE XI REPRESENTATIONS AND WARRANTIES 22
ARTICLE XII PREFERENCE FOR U. S. INDUSTRY 22
ARTICLE XIII COMMUNICATION 23
ARTICLE XIV ASSIGNMENTS 24
ARTICLE XV MISCELLANEOUS 24
1. Execution 24
2. Construction 24
3. Indemnification 24
4. Anonymity 24
5. Severability 25
6. Jurisdiction 25
7. Headings 25
8. Force Majeure 25
9. No Waiver 25
10. Compliance 25
11. Remedies 25
12. Counterparts 26
</TABLE>
<PAGE> 4
AMENDED AND RESTATED LICENSE AGREEMENT
This Amended and Restated License Agreement ("Agreement") is effective
as of the 20th day of November, 1996 between Competitive Technologies, Inc. a
Delaware corporation having its principal office at 1960 Bronson Road,
Fairfield, Connecticut 06430 (hereinafter referred to as "LICENSOR") and
Ribozyme Pharmaceuticals, Inc., a Delaware corporation having its principal
office at 2950 Wilderness Place, Boulder, Colorado 80301 (hereinafter referred
to as "LICENSEE"), and amends and restates that certain Assignment of License
and Restated License Agreement dated of even date herewith between LICENSOR,
LICENSEE and United States Biochemical Corporation, a corporation having a
place of business at 26111 Miles Road, Cleveland, Ohio 44128 (hereinafter
referred to as "USB") (the "Assignment").
WHEREAS, under a Servicing Agreement between the University of Colorado
Foundation (the "Foundation") and LICENSOR, LICENSOR is assignee of all right,
title and interest of the Foundation to certain patent rights relating to
ribozymes owned by University Research Corporation, a Colorado corporation and
wholly owned subsidiary of the Foundation ("URC"), and has the exclusive right
to license to others the entire interest in such patent rights; and
WHEREAS, pursuant to that certain Second Restated License Agreement
dated September 1, 1993 between LICENSOR (as successor to University Patents,
Inc.) and USB, as amended by that certain Letter Agreement dated October 13,
1994 (the "Prior License Agreement"), USB was the exclusive licensee of
LICENSOR of such patent rights, and pursuant to the Assignment USB has assigned
and delegated all of its rights and obligations under the Prior License
Agreement to LICENSEE, whereby LICENSEE has become the exclusive licensee of
such patent rights; and
WHEREAS, LICENSOR and LICENSEE wish to hereby amend and restate the
terms of such exclusive license.
NOW, THEREFORE, in consideration of the foregoing and the mutual
agreements set forth herein, the parties agree as follows:
1
<PAGE> 5
ARTICLE I DEFINITIONS
1. "Commercial Sale" shall mean any transaction which transfers to a
purchaser physical possession and title to a Product Unit, after which transfer
the seller has no right or power to determine the purchaser's resale price, if
any, and any transaction which involves the performance of Licensed Services
for a third-party after which no further services are performed. Transfer of
possession and title to a Product Unit, or performance of Licensed Services
for, an "Affiliated or Related Interest" shall not constitute a Commercial
Sale. An "Affiliated or Related Interest" means an entity in which LICENSEE
has a direct or indirect ownership interest in excess of fifty percent (50%),
or any entity which directly or indirectly, through one or more intermediaries,
controls, is controlled by, or is under common control with LICENSEE. If a
purchaser of a Product Unit or Licensed Services is not independent of LICENSEE
and if the sale of a Product Unit to such purchaser, or performance of Licensed
Services for such purchaser, is at a lower price than other sales of similar
Product Units to, or the performance of Licensed Services for, independent
purchasers of substantially similar size, in substantially similar amounts,
operating in markets of substantially similar competitive conditions, then the
transfer of the Product Unit to, or performance of Licensed Services for such
nonindependent purchaser shall not constitute a Commercial Sale thereof at the
price charged such purchaser, but the Commercial Sale shall be deemed to have
occurred at the Net Selling Price at which such Product Unit or Licensed
Services was last sold, or would have been sold, to an independent purchaser
under similar conditions.
2. "Improvement" shall mean any invention the practice of which
would infringe the claims covered by the Licensed Patents, which invention was
made by the Inventors and/or persons acting under their direction and control
at the University of Colorado, which is the work product of the Research
Support Funding Agreement between USB and the University of Colorado Foundation
entered into on May 20, 1987 (the "RSFA") and which was conceived or reduced to
practice during the term of the RSFA.
3. "Improvement Patents" shall mean any patent application and any
patents issuing thereon throughout the world including any extensions,
renewals, continuations, continuations-
2
<PAGE> 6
in-part, divisions, patents of additions and/or reissues thereof filed upon an
Improvement, and to which LICENSOR has or shall have the right to grant
licenses during the term hereof.
4. "Intermediate Products" shall mean the RNA enzymes described in
Claims 1-47, 70 and 73 of the '327 Patent Application, RNA enzymes which may be
claimed in any other Licensed Patent and/or Improvement Patent, and plasmids
used as vectors for the delivery of ribozymes (either viral or nonviral), made
and sold in bulk by LICENSEE to Manufacturers.
5. "Inventors" shall mean Thomas R. Cech, Arthur J. Zaug and Michael
D. Been.
6. "Licensed Methods" shall mean any invention, method, process,
procedure or technology which is covered by and/or may be claimed in the
Licensed Patent and any Improvement Patent.
7. "Licensed Patents" shall mean the inventions and discoveries
which are the subject of, or which are covered in whole or in part by, the
claims included in (i) U.S. Patent Application Serial Number 937,327, filed
December 3, 1986 entitled RNA RIBOZYME POLYMERASES, DEPHOSPHORYLASES,
RESTRICTION ENDORIBONUCLEASES AND METHODS (the "'327 Patent Application"), a
copy of the Claims of which is attached hereto and marked EXHIBIT "A", (ii)
the United States Patents listed on EXHIBIT "B" attached hereto, and any
patents issuing thereon as well as any corresponding patent applications or any
patents that may issue thereon throughout the world, including any extensions,
renewals, divisions, continuations, continuations-in-part, patents of addition,
and/or reissues thereof, including Improvement Patents, and to which LICENSOR
has or shall have the right to grant licenses during the term hereof. It is
understood that any reference in this Agreement to claim numbers as recited in
the '327 Patent Application as filed on December 3, 1986, or other Licensed
Patents corresponding thereto or derived therefrom (including but not limited
to those included in EXHIBIT "B"), shall be deemed to refer to any and all
claims which are or have been renumbered, deleted or added during the course of
prosecution of the '327 patent application and are included in such Licensed
Patents.
8. "Licensed Products" shall mean the RNA enzymes described in
Claims 1-47, 70 and 73 of the '327 Patent Application and RNA enzymes which may
be claimed in any other Licensed Patent and/or Improvement Patent, packaged and
sold by LICENSEE for use as (by way of illustration and not of limitation)
research reagents, diagnostic products, pharmaceutical
3
<PAGE> 7
products, agricultural biochemical products, veterinary products, cell culture
and/or fermentation products, or otherwise, and plasmids used as vectors for
the delivery of ribozymes (either viral or nonviral), but shall not include
Intermediate Products.
9. "Licensed Services" shall mean any service which is performed for
a third-party which includes use of a Product Unit or Licensed Method.
10. "Manufacturer" shall mean a business entity which makes and sells
merchandise in finished form and ready for end use without further substantial
alteration incorporating or utilizing Intermediate Product(s).
11. "Market Year" shall mean the twelve (12) month period which
commences upon the first Commercial Sale of Licensed Products or Licensed
Services by LICENSEE, and each ensuing twelve (12) month period during the term
of this Agreement. For the purposes of this definition, the term "Licensed
Products" shall exclude Research Reagents.
12. "Net Selling Price" shall mean the actual gross selling price of
each Product Unit upon its Commercial Sale, including all packaging,
instructional or other charges made to a purchaser, but less customary trade
discounts and refunds or credits allowed for shortages, returns, or defective
articles and transportation or shipping charges and/or taxes billed by LICENSEE
to its customers. In the case of Licensed Services, (i) the term Net Selling
Price shall include the actual gross receipts received for the performance of
Licensed Services upon a Commercial Sale, less customary trade discounts and
refunds or credits and/or taxes billed by LICENSEE to its customers; and (ii)
the term "Commercial Sale" shall include any transaction under which the
Licensee or any sublicensee provides Licensed Services to a person who is not
an Affiliated or Related Interest. The actual selling price of Product Units
to a purchaser or amounts received for the performance of Licensed Services for
a third party, with whom LICENSEE has a reciprocal discount or preferential
price arrangement for merchandise, services or use of technology and which
discount or preferential price arrangement affects the price LICENSEE charges
such purchaser or third-party, shall not be the Net Selling Price thereof, but
the Net Selling Price for such Product Units or Licensed Services shall be the
actual selling price plus the amount(s) of such discounts or price preferences.
13. "Patented Substances" shall mean those materials listed on
EXHIBIT "C" hereof previously supplied to LICENSEE.
4
<PAGE> 8
14. "Product Units" shall mean:
(i) Licensed Products, and
(ii) Intermediate Products
ARTICLE II SURVIVAL OF ASSIGNMENT
LICENSOR and LICENSEE agree that the terms of Article II of the
Assignment, and such other provisions of the Assignment as they pertain to USB,
shall be and remain in full force and effect, and that all other terms and
conditions of the Assignment, including the license granted to LICENSEE by
LICENSOR thereunder, shall be superseded hereby.
ARTICLE III USE OF PATENTED SUBSTANCES
The Foundation and the Inventors having agreed that Patented Substances
shall not be transferred by way of sale, gift, loan or otherwise to any other
person or business entity during the term of the license granted to LICENSEE
hereunder, excepting distribution to the academic community, not for profit, in
accordance with normal academic procedures, and to obtain a written agreement
from such potential academic distributees in advance of such distribution
evidencing agreement that the materials will not be used or distributed for
commercial purposes, LICENSEE affirms that it understands and agrees that the
Inventors may retain and use the Patented Substances for purposes of research.
ARTICLE IV THE LICENSE
1. Grant. Subject to the rights of the United States Government, as
set forth in P.L. 96-517, P.L. 98-620 and 37 CFR 401, as amended, LICENSOR
hereby grants to LICENSEE an exclusive worldwide license under the Licensed
Patents to exercise the following rights:
5
<PAGE> 9
(a) To make, have made, use and sell RNA enzymes alone or when
incorporated in Licensed Products;
(b) To use, practice, or have used or practiced on its behalf,
but not to sell, the Licensed Methods;
(c) To perform, or have performed on its behalf, Licensed
Services which include use of a Product Unit or Licensed
Method;
(d) To make, have made, use and sell plasmids as described or
claimed in the Licensed Patent and any Improvement Patent;
(e) To pass on to its customers for RNA enzymes, Licensed
Products and/or Intermediate Products, or its customers
for Licensed Services, a license for the use thereof as
described or claimed in the Licensed Patents and any
Improvement Patent; and
(f) To make, have made and use Intermediate Products and to
sell Intermediate Products to Manufacturers, and to grant
licenses to Manufacturers to make, use and sell Product
Units, to use and practice Licensed Methods and/or to
perform Licensed Services; provided that, in the case of
the sale of Intermediate Products, LICENSEE has
theretofore entered into royalty-bearing agreements
whereunder LICENSEE obtains royalties from such
Manufacturers based upon said Manufacturers' selling
prices of merchandise:
(i) in which one or more Intermediate Product is a
constituent, and/or
(ii) in the production of which one or more Intermediate
Product is or has been utilized,
in accordance with the provisions of paragraph 3(b) of
Article VI.
(g) To grant sublicenses with respect to any of the foregoing,
subject to the terms of Paragraph 2 of this Article IV.
2. Sublicenses. (a) During the term of exclusivity granted
hereunder, the license hereby granted shall include the right of LICENSEE or
any sublicensee to grant written sublicenses covering Licensed Products,
Licensed Services and Licensed Methods, provided that
6
<PAGE> 10
LICENSEE shall include all sales and receipts therefrom received from
unaffiliated third parties by all sublicensees in LICENSEE'S statements to
LICENSOR as provided in paragraph 1(b) of Article VII and (A) in the case of
sublicenses granted to parties other than to Manufacturers shall pay royalties
to LICENSOR in an amount equal to the greater of (i) [ ]of the royalty income
received from each such sublicensee for the sale of Licensed Products and
Licensed Services and for use of Licensed Methods or (ii) [ ](x) of the Net
Selling Price of each Licensed Product made or sold, or received from the
performance of Licensed Services, by or for such sublicensee or (y) of the
amounts received by or from the sublicense of Licensed Methods and (B) in the
case of any sublicense granted to a Manufacturer in respect of Intermediate
Products pay royalties to LICENSOR as per paragraph 3(b) of Article VI.
LICENSEE and its sublicensees shall be free to grant sublicenses at any royalty
rate they may deem appropriate. Notwithstanding the foregoing, no multiple
royalties shall be payable because a Licensed Product, Licensed Service,
Licensed Method or Intermediate Product are or shall be sold or licensed to or
by a sublicensee in the same transaction.
(b) In addition to the foregoing, LICENSEE agrees that it will remit to
LICENSOR in accordance with paragraph 2 of Article VII, [ ]of any option fee,
license fee, prepaid royalty or other "front-end payment" which it may receive
from a sublicensee or which a sublicensee may receive from its sublicensees.
It is agreed that research and development funding (as defined hereafter) does
not constitute an "option fee, licensee fee, prepaid royalty or 'front-end
payment'" under this paragraph.
For purposes hereof, the term "research and development funding" shall
mean funding received from third parties for (1) LICENSEE's direct or indirect
cost (purchase or lease) of materials, equipment and facilities used in
research and development; (2) salaries, wages, benefits and other related costs
of personnel engaged in or supporting the research and development activity;
(3) the cost to LICENSEE of services performed by others in connection with
LICENSEE's research and development activity; (4) the cost to LICENSEE of
payments to third parties (other than LICENSOR) for patent or other rights
utilized in research and development; (5) a reasonable allocation of general,
administrative and other indirect and overhead costs to research and
development activities; (6) debt or equity investments in LICENSEE and (7)
research and development milestone payments paid to LICENSEE for
7
<PAGE> 11
completion of research and development activities associated with ribozyme
technology and product development. Determinations with respect to research
and development funding shall be made in accordance with generally accepted
accounting principles. Costs associated with selling products and costs
associated with facilities and equipment unrelated to research and development
activities shall not be included in "research and development funding."
LICENSOR shall be promptly advised of any agreement which provides for
such research funding and LICENSOR shall be furnished with a true and correct
copy of any such agreement. LICENSOR shall have the right, upon prior
reasonable notice, to inspect the books and records of LICENSEE or a
sublicensee, as applicable, in accordance with the provisions of paragraph 7 of
Article VII to verify the nature of such research funding. In the event of any
disagreement between the parties with respect to the foregoing, representatives
of LICENSOR and LICENSEE or a sublicensee shall meet and seek to resolve any
such disagreement, as applicable; and if the parties are unable to reach
agreement, then any such disagreement under this paragraph shall be submitted
to arbitration in accordance with the Commercial Arbitration Rules of the
American Arbitration Association then in effect before a panel of one
arbitrator. The place of arbitration shall be New York, New York. Any award
rendered thereon shall be final and binding on the parties and judgment may be
entered on the arbitrator's award in any court having jurisdiction.
LICENSEE agrees to deliver to LICENSOR a true and correct copy of each
and every sublicense entered into by LICENSEE within thirty (30) days after
execution thereof and shall promptly advise LICENSOR in writing of any
modification (and supply same) or termination of each sublicense. Upon
termination of this Agreement for any cause, any and all existing sublicenses
hereunder shall thereupon be assigned to LICENSOR. This shall be made a
condition of any such sublicense that may be granted by LICENSEE.
3. Exclusivity. LICENSOR agrees not to grant to any other party any
option, license or other right under the Licensed Patents to make, have made,
use or sell Product Units, Licensed Services and Licensed Methods during the
period of the exclusive license herein granted.
4. Consultation. The Parties recognize that during the term of this
Agreement, LICENSEE may confer and consult freely with the Inventors in
furtherance of the development
8
<PAGE> 12
and testing of Product Units, Licensed Services and Licensed Methods, in
accordance with such arrangements as they may make among themselves.
5. Cross-Licensing. LICENSOR understands that LICENSEE'S
negotiations with Gene Shears (J&J) for the cross licensing of certain Gene
Shears patented technology to LICENSEE in exchange for the cross licensing of
certain Licensed Patents to Gene Shears is now in suspense. LICENSOR agrees
that in the event these negotiations are re-activated on terms and conditions
similar to or more favorable to LICENSEE than those described in correspondence
between LICENSOR and LICENSEE during the period April 19 to 21, 1994, LICENSOR
will consent to such cross-license. (Said correspondence being incorporated
herein by this reference solely for this purpose.).
In the event that LICENSEE believes that one or more additional cross-
licenses (other than that with Gene Shears referenced above) are necessary
between LICENSEE and any third party, LICENSOR shall negotiate in good faith
with LICENSEE for the grant of LICENSOR's consent thereto in return for
reasonable consideration.
If LICENSEE grants a license (an "RPI License") to any of its patented
technology, or to any of its proprietary technology for which a patent
application is pending ("RPI Technology") to any cross-licensee under this
Agreement, or any third party affiliated with or related to such cross-
licensee, and the license or option fee, royalty basis, royalty rate and/or
minimums of the RPI License are substantially greater than in the cross-
license, then LICENSOR and LICENSEE shall negotiate in good faith a division of
the incremental royalties paid under the license resulting from such
substantially greater license or option fee, royalty basis, royalty rate and/or
minimums (the "Incremental Royalties"). The division of Incremental Royalties
will be based upon the relative value the cross-licensed technology and the
licensed RPI Technology contribute to the products upon which the Incremental
Royalties are paid. In the event an agreement cannot be reached by the
parties, such matter will be arbitrated before a panel of three arbitrators,
one of whom shall be selected by LICENSEE, one of whom shall be selected by
LICENSOR, and the third of whom shall be selected by the two arbitrators so
selected by LICENSEE and LICENSOR. In no event will the payment of any part of
Incremental Royalties to LICENSOR on any license extend beyond the term of this
Agreement. In addition, in no event will LICENSOR be entitled to share in any
license or option fees, royalties and/or minimums in
9
<PAGE> 13
excess of those to which it would be entitled if all license or option fees,
royalties and/or minimums paid under the cross-license and RPI License had
instead been paid pursuant to this Agreement.
6. Country of Origin. The Parties agree that royalties shall be
paid only upon Product Units, Licensed Services and Licensed Methods which are
covered in the country of their manufacture, use or sale by a Licensed Patent.
10
<PAGE> 14
ARTICLE V. PRODUCT DEVELOPMENT
1. Due Diligence. LICENSEE has represented to LICENSOR that it is
experienced in the development and commercialization of Product Units, and that
commencing with the execution of the Prior Sublicense Agreement it committed
itself to a program of developing, obtaining governmental agency approvals for,
and marketing Product Units. LICENSEE agrees that it will diligently continue
the efforts above described. In furtherance of the foregoing, to maximize the
commercial potential of the Licensed Patents and their benefit to mankind,
expanding the number of researchers utilizing ribozyme technologies is
necessary. LICENSEE's activities and programs regarding the technology are
designed to maximize the potential of this technology and shall include the
following activities:
(a) sale and promotion of research reagents to provide tools
to researchers;
(b) sponsorship of meetings and seminars regarding the
technology;
(c) contacting firms in the pharmaceutical, diagnostic and
agbiotech fields to establish potential research
relationships and/or licenses;
(d) support of commercial development activities through
technology development efforts and the expertise of
LICENSEE's scientists.
2. Research and Development Information. LICENSEE agrees to furnish
to LICENSOR in a timely manner, copies of all periodic reports filed by
LICENSEE with the U.S. Securities and Exchange Commission. In addition,
LICENSEE agrees that its President or CEO shall meet with representatives of
LICENSOR no less frequently than once per year at LICENSOR's offices in
Connecticut or in New York City to review progress in developing and
commercializing the Licensed Patents. In addition, LICENSEE shall furnish to
LICENSOR, to the extent it is legally able to do so, copies of any progress
reports LICENSEE receives from its sublicensees and/or cross-licensees
respecting Product Units.
3. Data. LICENSEE and LICENSOR agree that during the term of the
License hereunder, they will provide to patent counsel all information and data
that either party develops or otherwise possesses which may assist patent
counsel in the filing, prosecution and defense of patent applications and
patents included in the Licensed Patents.
11
<PAGE> 15
4. Remedial Action. In the event LICENSOR believes that LICENSEE
has failed to exercise reasonable diligence hereunder, LICENSOR shall have the
right to advise LICENSEE of its belief and request remedial action. If
LICENSOR and LICENSEE disagree, they may bring the matter to arbitration upon
mutual agreement, or lacking such agreement, each shall rely upon such remedies
and defenses as are available to it in law or equity.
ARTICLE VI PAYMENTS UNDER THE LICENSE
1. License Fee. All License Fees payable under the Prior License
Agreement have been paid to LICENSOR, and no additional License Fees shall be
payable by LICENSEE hereunder.
2. Royalty Basis. LICENSEE agrees to pay, as hereinafter provided,
royalties to LICENSOR:
(a) in respect of each Licensed Product made or sold by or for
LICENSEE;
(b) in respect of each Intermediate Product sold by LICENSEE
to a Manufacturer or with respect to which a Manufacturer
has been granted a sublicense as provided in paragraph 2
of Article IV.
(c) in respect of Licensed Services performed by or for
LICENSEE.
3. Royalty Rates.
(a) For each Licensed Product sold by Licensee, which is
subject to paragraph 2(a) of this Article VI, and for
Licensed Services performed by Licensee, which are subject
to paragraph 2(c) of this Article VI, the rate shall be [
]of the Net Selling Price.
(b) For each Intermediate Product which is subject to
paragraph 2(b) of this Article, the rate shall be:
(i) [ ]of the Net Selling Price of such
Intermediate Product, and in addition,
(ii) [ ]of any royalty or fee (except of a sublicense
fee, which shall be payable as set forth in
paragraph 2(b) of Article IV and paragraph 2 of
Article VII), which a Manufacturer pays LICENSEE
upon the
12
<PAGE> 16
manufacture, use, sale or other transfer of
merchandise in which the Intermediate Product is a
constituent or has been utilized.
(c) No multiple royalties shall be payable because a Licensed
Product, Licensed Services and Licensed Method are or
shall be sold, performed and/or licensed in the same
transaction by LICENSEE, so long as LICENSOR receives the
royalties provided for in paragraphs 3(a) or 3(b) of this
Article VI, as applicable.
(d) Notwithstanding the provisions of this Article VI, in the
event that LICENSEE is presented with an opportunity or
opportunities for the exploitation of ribozymes in
diagnostic products, through sublicensing, then LICENSOR
will cooperate in good faith with LICENSEE to revise the
royalty rate structure to permit such exploitation for the
mutual benefit of the parties.
4. Guaranteed Minimum Payments.
(a) To retain its license hereunder, LICENSEE shall pay to
LICENSOR, as minimum annual payments, no less than the
amounts set forth below:
(i) For the first Market Year, [ ];
(ii) For the second Market Year, the amount shall be the
greater of [ ]or [ ]of the royalty actually
earned during the first Market Year;
(iii) For the third Market Year, the amount shall be the
greater of [ ]or [ ]of the royalty actually
earned during the second Market Year;
(iv) [ ]shall be the greater of [ ]or [ ]of
the royalty actually earned during the third Market
Year;
(v) For the fifth Market Year, the amount shall be the
greater of [ ]or [ ]of the royalty actually
earned during the fourth Market Year;
(vi) For the sixth and each ensuing Market Year, the
amount shall be the [ ]or [ ]of the royalty
actually earned during the fifth Market Year.
(vii) Payments shall be payable in accordance with
paragraph 3 of Article VII.
13
<PAGE> 17
(b) In the event LICENSEE does not pay the minimum annual
amounts as aforesaid, LICENSOR shall have the right to
terminate the license granted hereunder; provided,
however, that if LICENSEE shall have paid minimum annual
amounts under the license for a period of ten (10) years,
then the license shall thereafter no longer be terminable
by LICENSOR for failure to pay such minimum annual
amounts; provided LICENSEE is not in any respect in
default hereunder.
(c) Notwithstanding the foregoing, LICENSEE agrees that if it
sells Licensed Products in any country under its exclusive
license and subsequently withdraws such Licensed Products
from sale in that country (except upon governmental
requirement) and has no Commercial Sales therein for a
period of one (1) year thereafter, LICENSOR may convert
LICENSEE's exclusive license in that country to a
nonexclusive license for such Licensed Products.
14
<PAGE> 18
ARTICLE VII REMITTANCES, RECORDS AND REPORTS UNDER THE LICENSES
1. Royalties.
(a) Royalties shall accrue when Product Units or Licensed
Services are first sold or performed by or for LICENSEE.
Product Units shall be considered sold to, and Licensed
Services performed for, third parties when billed out.
(b) Payments of earned royalties shall be made within sixty
(60) days following the end of each half of each Market
Year for the sale of all Product Units sold or otherwise
transferred, and/or Licensed Services performed, by
LICENSEE during said half Market Year. LICENSOR's
participation in royalties from Manufacturers under
paragraph 3(b)(ii) of Article VI shall be paid within
sixty (60) days following the end of each half of each
Market Year, based upon LICENSEE's receipts of such
royalty payments from Manufacturers during each half
Market Year. Such payment shall be accompanied by a
statement certified to LICENSOR by an officer of LICENSEE
which shall give sufficient information from which to
calculate the amount of royalties due hereunder,
including, but not limited to, the total quantity and Net
Selling Price of Product Units and/or Licensed Services
for which royalty has accrued during the preceding half
Market Year and the aggregate royalties due. Statements
shall also be submitted in the event no sales of Product
Units or Licensed Services took place.
(c) Notwithstanding the foregoing paragraph, LICENSEE may
establish a reserve for bad debts in the amount of two
percent (2%) of the Net Selling Price of Product Units
sold or otherwise transferred, and or Licensed Services
performed, by LICENSEE during each Market Year. Such
reserve shall be reconciled at the end of each Market Year
and, in the event that the amount of non-collectible
accounts receivable for the
15
<PAGE> 19
Market Year is less than the amount so reserved, LICENSEE
shall remit to LICENSOR the royalties earned on such
difference; and, in the event that the amount of non-
collectible accounts receivable for the Market Year is
greater than the amount so reserved, LICENSEE shall be
entitled to a credit against the next scheduled royalty
payment to LICENSOR in the amount of the royalties paid by
LICENSEE on such difference.
2. Sublicense Fees. Payment of LICENSOR's share of sublicense fees,
prepaid royalties or "front-end" payments received by LICENSEE from
sublicensees pursuant to paragraph 2(b) of Article IV shall be remitted to
LICENSOR within sixty (60) days following the end of the calendar quarter of
receipt.
3. Guaranteed Minimum Payments. LICENSEE agrees that each minimum
annual payment under paragraph 4 of Article VI shall become a present
obligation of LICENSEE to LICENSOR on the first day of each Market Year; and
LICENSEE agrees that such minimum amounts are to be paid to LICENSOR together
with the remittance made for the last accounting period of the applicable
Market Year, in the event earned royalties for such Market Year do not reach
the minimum amount set forth.
4. Currency. Payment hereunder shall be made in U. S. dollars in
the United States.
5. Credit for Patent Expenses. LICENSEE may deduct as credits from
payment of royalties due under paragraph 1(b) of this Article VII amounts not
to exceed one-half (1/2) of said royalties due during any half Market Year
until [ ]of the expenses incurred by LICENSEE pursuant to paragraph 2 of
Article VIII have been credited.
6. Foreign Royalty Payments. With respect to sales in countries
outside the United States, royalties shall be payable in U. S. dollars at the
rate of exchange published in The Wall Street Journal on the last day of the
accounting period in which the royalty accrues. Royalties shall be paid to
LICENSOR free and clear of all foreign taxes, including withholding and
turnover taxes, except such taxes which LICENSEE may be required to withhold by
a foreign country (provided that LICENSOR can receive full credit for such
taxes with the Internal Revenue Service of the United States).
7. Inspection. LICENSEE shall keep records in sufficient detail to
permit the determination of royalties payable hereunder and, at the request and
expense of LICENSOR, will
16
<PAGE> 20
permit an independent Certified Public Accountant, acceptable to both LICENSOR
and LICENSEE, to examine, in confidence, during ordinary business hours once in
each calendar year such records as may be necessary to verify or determine
royalties paid or payable under this Agreement. For the purposes of this
paragraph, LICENSEE shall be required to retain its records for no more than
three (3) years.
8. Price. LICENSEE shall submit to LICENSOR, no less than once per
year during the life of this Agreement, copies of its customer catalogs in
which Licensed Products and Licensed Services are listed for sale.
ARTICLE VIII PATENT PROTECTION
1. Patent Filing.
(a) LICENSEE shall reimburse LICENSOR promptly following the
presentation of invoices therefore for the prosecution and
maintenance of the '327 Patent Application and any patents
which issue thereunder in the United States.
(b) LICENSEE shall reimburse LICENSOR promptly following the
presentation of invoices therefor for the filing,
prosecution and maintenance of any counterpart foreign
patent applications to the '327 Patent Application and
patents which issue thereunder which LICENSEE, in its sole
discretion, elects to support.
(c) LICENSEE shall reimburse LICENSOR promptly following the
presentation of invoices therefor for the filing,
prosecution, and maintenance of such U.S. and foreign
Improvement Patents which LICENSEE, in its sole
discretion, elects to support.
(d) In the event LICENSEE shall not elect to reimburse
LICENSOR for filing, prosecution and/or maintenance, as
aforesaid, then such patent application(s) and/or any
patent(s) which issues thereunder shall not be included in
Licensed Patents licensed to LICENSEE hereunder.
17
<PAGE> 21
2. Recovery of Patent Expenses. LICENSEE shall bear the expenses
associated with the filing, prosecution and maintenance of Licensed Patents
including, without limitation, filing, maintenance, and attorneys' fees;
provided that, LICENSEE shall be entitled to recover [ ]of such costs from
royalties otherwise to become due to LICENSOR, earned in the country in which
the application was filed, in accordance with paragraph 5 of Article VII.
ARTICLE IX ENFORCEMENT OF LICENSED PATENTS
1. Enforcement. In the event LICENSEE, LICENSOR, the Foundation or
URC becomes aware of any actual or threatened infringement of a Licensed Patent
anywhere in the world, that party shall promptly notify the other parties in
writing. LICENSEE shall have the first right to bring, at its own expense, an
infringement action against any third party and to use the names of LICENSOR,
the Foundation and URC in connection therewith. If LICENSEE does not proceed
with a particular patent infringement action within ninety (90) days, LICENSOR,
after notifying LICENSEE in writing, shall be entitled to take proceedings
against such infringer at its own expense, and shall have the right to settle
infringement litigation by licensing the infringer, unless LICENSEE shall
equally share the cost of enforcement with LICENSOR. The party conducting such
suit shall have full control over its conduct. In any event, LICENSOR, the
Foundation, URC and LICENSEE shall assist one another and cooperate in any such
litigation upon request without expense to the requesting party. Any recovery
as a result of any litigation or settlement thereof shall be the property of
the party bearing the principal responsibility of such litigation.
2. Defense. In the event a third party brings an action to obtain a
declaration of patent invalidity of a Licensed Patent (a "DJ Action") against
LICENSOR and/or LICENSEE:
(a) The named defendants shall have the first right to defend
said action at its own cost and expense and to control
ensuing litigation.
18
<PAGE> 22
(b) If the named defendant elects not to defend the DJ Action,
the other Party may elect to defend the DJ Action at its
own cost and expense and to control the ensuing
litigation.
(c) If a litigating Party finally prevails, it shall retain
all damages which it may collect.
(d) If either Party finally loses because a patent is held
invalid, LICENSEE may thereafter cease paying royalties on
sales of Licensed Products, the performance of Licensed
Services or Product Units and use of Licensed Methods, as
the case may be, in the country in which such invalidity
has been finally adjudicated provided that Licensed
Products, Product Units, Licensed Services and Licensed
Methods, as the case may be, are covered or the use
thereof are covered only by claims which have been held
invalid.
ARTICLE X TERMS OF LICENSE: TERMINATION
1. Term. The term of this Agreement shall be from the date first
written above until the expiration of the last to expire of any patent included
in the Licensed Patents.
2. Termination.
(a) LICENSEE may terminate this Agreement:
(i) For cause; or
(ii) Upon sixty (60) days written notice to LICENSOR,
provided that LICENSEE shall thereafter terminate
the manufacture, sale and/or use of Product Units
except for disposition of inventory on hand, for
which royalties shall be paid in accordance with
Article VI hereof. Disposition of inventory must
be completed within one hundred twenty (120) days
of the aforementioned notice.
(b) If LICENSEE shall at any time default in any obligation
under this Agreement, including but not limited to failing
to make any report, pay
19
<PAGE> 23
any royalties, or permit the inspection of its books and
records as hereinabove required, and such default shall
not be cured within sixty (60) days after written notice
from LICENSOR to LICENSEE specifying the nature of the
default, then LICENSOR shall have the right to terminate
the license granted to LICENSEE hereunder and such
termination shall become effective on the sixtieth (60th)
day after giving such notice.
(c) Any termination pursuant hereto shall not relieve LICENSEE
or LICENSOR of any obligation or liability accrued
hereunder prior to such termination, nor rescind or give
rise to any right to rescind anything done or any payments
made or other consideration given hereunder prior to the
time of such termination and shall not affect in any
manner any rights of either party arising out of this
Agreement prior to such termination.
ARTICLE XI REPRESENTATIONS AND WARRANTIES
LICENSOR represents that it has the right to enter into this Agreement
and that, to the best of LICENSOR's knowledge, no amounts are due LICENSOR from
either LICENSEE or USB under the Prior License Agreement. LICENSOR makes no
other representation or warranty, express or implied, except as herein
provided, nor does LICENSOR assume any liability in respect of any infringement
of any patent or other rights of third parties due to LICENSEE's operation
under the rights herein granted. LICENSEE recognizes that the Patented
Substances and the RNA enzymes produced therefrom have been produced by the
Inventors for research purposes only. THE INVENTORS, THE FOUNDATION, URC, AND
LICENSOR EXPRESSLY DISCLAIM THAT THE PATENTED SUBSTANCES AND/OR THE RNA ENZYMES
PRODUCED THEREFROM WILL BE OF ANY COMMERCIAL VALUE TO LICENSEE WHATSOEVER, AND
NO SUCH REPRESENTATION OR WARRANTY OF SUCH VALUE SHOULD BE IMPLIED. LICENSEE
AGREES THAT IT IS OBTAINING THE LICENSES HEREIN GRANTED WITHOUT ANY
REPRESENTATION OF VALUE, MERCHANTABILITY OR FITNESS FOR USE.
20
<PAGE> 24
ARTICLE XII PREFERENCE FOR U. S. INDUSTRY
In view of Public Law 96-517, Public Law 98-620 and regulations
thereunder, LICENSEE agrees that any Product Unit covered by Licensed Patents
or produced through the use of a method or process claimed in the Licensed
Patents for sale in the United States of America will be manufactured
substantially in the United States of America, unless a waiver of such
obligation is obtained from the Federal Agency which supported in whole or in
part said invention. LICENSEE shall include the foregoing provision in any
sublicense(s) it grants hereunder.
ARTICLE XIII COMMUNICATION
Any payment, notice or other communication required or permitted to be
made or given to a Party pursuant to this Agreement shall be sufficiently made
or given on the date of mailing if sent to such Party by certified or
registered mail, postage prepaid, addressed to it at its address set forth or
to such other address as it shall designate by written notice to the other
Party as follows:
In the case of LICENSOR:
President
Competitive Technologies, Inc.
c/o USET
P.O. Box 340
Fairfield, Connecticut 06430
In the case of LICENSEE:
President
Ribozyme Pharmaceuticals, Inc.
2950 Wilderness Place
Boulder, Colorado 80301
21
<PAGE> 25
ARTICLE XIV ASSIGNMENTS
This Agreement shall not be assignable by LICENSEE without the prior
written consent of LICENSOR except to a successor in ownership of all or
substantially all of the business assets of LICENSEE, and which successor shall
expressly assume in writing the performance of all the terms and conditions of
this Agreement to be performed by the assigning Party.
ARTICLE XV MISCELLANEOUS
1. Execution. This Agreement will not be binding upon the Parties
until it has been signed herein below by or on behalf of each Party, in which
event it shall be effective as of the date first above written. No amendment
or modification hereof shall be valid or binding upon the Parties unless made
in writing and signed as aforesaid.
2. Construction. This Agreement embodies the entire understanding
of the Parties and shall supersede all previous communications, representations
or undertakings, either verbal or written between the Parties relating to the
subject matter hereof.
3. Indemnification. LICENSEE agrees to indemnify and hold harmless
LICENSOR, the Foundation, URC, and the Inventors from and against any and all
claims, damages and liabilities asserted by third parties (private and
governmental) arising from LICENSEE's sale of Product Units and/or the
purchaser's use thereof or from the performance of Licensed Services or use of
Licensed Methods, as the case may be.
4. Anonymity. LICENSEE shall have no right to use the names or
other designation of THE UNIVERSITY OF COLORADO or the Inventors in connection
with any sales or promotion of Product Units, Licensed services and Licensed
Methods, as the case may be without the express written consent of the
University of Colorado or the Inventors, as the case may be.
22
<PAGE> 26
5. Severability. If any provision or provisions of this Agreement
shall be held to be invalid, illegal or unenforceable, the validity, legality
and enforceability of the remaining provisions shall not in any way be affected
or impaired thereby.
6. Jurisdiction. This Agreement shall be construed, and the legal
relations between the Parties determined, in accordance with the law of the
State of Connecticut, U.S.A.
7. Headings. The headings of the several sections are inserted for
convenience of reference only, and are not intended to be part of or to affect
the meaning or interpretation of this Agreement.
8. Force Majeure. Neither of the Parties hereto shall be liable in
damages or have the right to cancel this Agreement for any delay or default in
performing hereunder if such delay or default is caused by conditions beyond
its control, including acts of God, government restrictions, wars or
insurrections.
9. No Waiver. Failure by either party to enforce any provision of
this Agreement or assert a claim on account of breach hereof shall not be
deemed a waiver of its right to enforce the same or any other provision hereof
on the occasion of a subsequent breach.
10. Compliance. LICENSEE agrees to comply voluntarily with and abide
by the United States Department of Health and Human Services, National
Institutes of Health "Guidelines for Research Involving Recombinant DNA
Molecules". June 1981, 46 F.R. 34461, or as subsequently amended, so long as
LICENSEE uses the Patented Substances conveyed to it hereunder.
11. Remedies. The remedies provided in this Agreement are not and
shall not be deemed to be exclusive and shall be in addition to any other
remedies which either party may have at law or in equity.
12. Counterparts. This Agreement may be executed in two (2) or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
23
<PAGE> 27
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be
duly executed as of the date first above written.
COMPETITIVE TECHNOLOGIES, INC.
By: /s/ George M. Stadler
Title: President/Chief Executive Officer
Date: February 18, 1997
RIBOZYME PHARMACEUTICALS, INC.
By: /s/ Ralph E. Christoffersen
Title: President/Chief Executive Officer
Date: February 24, 1997
By its subscription hereto, UNIVERSITY OF COLORADO FOUNDATION, INC.
consents to and acknowledges the terms and conditions of the Agreement within.
By: /s/ Charles G. McCord
Title: President
Date: February 26, 1997
By its subscription hereto, UNIVERSITY RESEARCH CORPORATION consents to
and acknowledges the terms and conditions of the Agreement within.
By: /s/ Charles G. McCord
Title: President
Date: February 26, 1997
24
<PAGE> 28
EXHIBIT A
What is claimed:
[ ]
25
<PAGE> 29
EXHIBIT B
"Licenses Patents"
Patents and Pending Applications
<TABLE>
<CAPTION>
================================================================================
PATENT NO. OR
CLAIMS PATENT APPLICATION NO TITLE
- --------------------------------------------------------------------------------
<S> <C> <C>
1 - 47 U.S. Pat. No. 4,987,071 (Parent) RNA Ribozyme Polymerase
Dephosphorylases Restriction
Endoribonucleases and Methods
- --------------------------------------------------------------------------------
48 - 62 U.S. Pat. No. 5,093,246 RNA Polymerase Dephosphorylases
(Division of U.S. Pat. No. Restriction
4,987,071) Endoribonucleases and Methods
- --------------------------------------------------------------------------------
63 - 66 Pat. No. 4,987,071 See above
- --------------------------------------------------------------------------------
67 and 68 U.S. Pat. No. 5,093,246 See above
- --------------------------------------------------------------------------------
69 U.S. Pat. No. 4,987,071 See above
- --------------------------------------------------------------------------------
70 U.S. Pat. No. 4,987,071 See above
- --------------------------------------------------------------------------------
71 U.S. Pat. No. 5,093,246 See above
================================================================================
72 U.S. Pat. no. 5,037,746 RNA Ribozyme Polymerases and
(Continuation-in-part of Methods
U.S. Pat. No. 4,987,071)
- --------------------------------------------------------------------------------
73 Pat No. 4,987,071 See above
================================================================================
</TABLE>
Notes:
1. U.S. Patent No. 5,116,742 entitled "RNA Ribozyme Restriction
Endoribonucleases and Methods," filed March 24, 1989, is a continuation-in-part
of U.S. Patent No. 4,987,071, and includes additional claims which were not
contained in the original patent application.
2. U.S. Patent Application Serial No. 843,737 entitled "RNA Polymerase
Dephosphorylases Restriction Endoribonucleases and Methods," filed February 28,
1992, is a continuation of U.S. Patent No. 5,093,246. It has been allowed, and
the issue fee is due to be paid on or before February 24, 1994.
26
<PAGE> 30
EXHIBIT C
Patented Substances
[ ]
27
<PAGE> 1
EXHIBIT 10.44
STOCK SUBSCRIPTION AGREEMENT
THIS STOCK SUBSCRIPTION AGREEMENT ("Agreement") is made and entered into
as of this 23 day of September, 1996, by and among Ribozyme Pharmaceuticals,
Inc., a Delaware corporation (the "Company"), and University Research
Corporation (the "Purchaser"), a Colorado corporation and wholly owned
subsidiary of the University of Colorado Foundation.
RECITALS
A. The Company is a publicly held company engaged in the business of
developing and commercializing its ribozyme technology.
B. The Company and the Purchaser have entered into that certain
Amended and Restated License Agreement of even date herewith, granting certain
rights to the Company with respect to certain Licensed Patents identified
therein (the "License Agreement"), and the Purchaser has entered into that
certain License Agreement with United States Biochemical Corporation, an Ohio
corporation ("USB") of even date herewith granting certain rights to USB with
respect to certain Licensed Patents identified therein (the "USB License
Agreement") and which rights have been sublicensed by USB to the Company under
that certain Sublicense Agreement between the Company and USB of even date
herewith.
C. Purchaser administers the Licensed Patents on behalf of the
University of Colorado ("CU") pursuant to a certain Agency Agreement between
Purchaser and CU (the "Agency Agreement") and is authorized to act on CU's
behalf thereunder.
D. As consideration for the rights granted to the Company under the
License Agreement, and the benefit to the Company from the USB License
Agreement and the Sublicense Agreement, the Purchaser desires to acquire and
the Company has agreed to issue to the Purchaser an additional equity
investment in the Company on the terms and conditions set forth in this
Agreement.
1
<PAGE> 2
IN CONSIDERATION OF the mutual promises, representations, warranties and
covenants contained herein, the parties hereto agree as follows:
ARTICLE I. PURCHASE AND SALE OF SHARES
Subject to the terms and conditions set forth in this Agreement, the
Purchaser hereby purchases and the Company hereby sells 22,500 shares
("Shares") of the Company's Common Stock ($.01 par value) ("Common Stock"), in
consideration for the rights granted to the Company under the License
Agreement, and the benefits to the Company from the USB License Agreement and
the Sublicense Agreement, the receipt and sufficiency of which is hereby
acknowledged by the Company. The Company and Purchaser acknowledge that 12,500
of such Shares are being purchased on behalf of CU under the Agency Agreement.
ARTICLE II. REGISTRATION RIGHTS
2.1 At any time on or after April 11, 1997, Purchaser may make
written request to the Company to register the Shares under the Securities Act
of 1933 (the "Act") and any applicable state securities laws (or to qualify or
exempt the Shares thereunder). As soon as reasonably practicable following the
receipt of such request, the Company will use its commercially reasonable best
efforts to (i) file with the Securities and Exchange Commission (the
"Commission") a Registration Statement on Form S-3 (or any alternative or
successor form adopted by the Commission that is appropriate therefor)
registering the Shares under the Act and Rule 415 (or any successor Rule
adopted by the Commission) thereunder, (ii) cause such Registration Statement
to be declared effective as soon thereafter as is practicable and (iii) cause
such Registration Statement to remain effective for a period of not less than
120 days thereafter. Each such request shall be made by delivery of written
notice to the Company by Purchaser, which notice shall (i) request the
preparation of the Registration Statement pursuant to the terms of this Section
2.1, (ii) include the number of shares of Common Stock to be offered by
Purchaser pursuant to such Registration Statement, and (iii) be sent by the
Company to any other Shareholders as provided in Section 2.2 below.
2
<PAGE> 3
2.2 Within 30 calendar days after receipt of notice of any
registration requested hereunder, the Company shall have the right to send a
copy of such notice to any other shareholder that the Company, in its sole
discretion, deems appropriate (collectively, "Shareholders"), which notice
shall be accompanied by an offer by the Company to include all or part of the
Common Stock held by such Shareholder in such registration.
2.3 In the event that the Company is or becomes obligated to file a
Registration Statement under which the Shares are eligible for registration
under the Act, at any time for any other reason other than this Article II, the
Company shall give Purchaser notice of such pending registration accompanied by
an offer by the Company to include the Shares in such Registration Statement.
2.4 Notwithstanding anything contained herein to the contrary, the
Company will not be obligated to effect, or take any further action to effect,
any registration pursuant to this Article II after the Company has effected two
(2) registrations on Form S-3 (or any alternative or successor form adopted by
the Commission that is appropriate for the registration for the Shares) on or
after April 11, 1997, which Registration Statements have been declared or
ordered effective. Purchaser shall not initiate any request for registration
pursuant to Section 2.1 during such time as the Company is using its
commercially reasonable best efforts to cause any Registration Statement
referenced in Section 2.3 to be declared or ordered effective.
ARTICLE III. REPRESENTATIONS OF THE COMPANY
The following are representations and warranties made by the
Company as of the date hereof.
3.1 ORGANIZATION AND STANDING. The Company is a corporation duly
organized, validly existing and in good standing under the laws of the State of
Delaware and has full corporate power and authority to conduct its business as
presently conducted and as proposed to be conducted by it and to enter into and
perform this Agreement and to carry out the transactions contemplated herein.
The Company is duly qualified to do business as a foreign corporation and is in
good standing under the laws of the State of Colorado and under the laws of any
other state in which qualification by the Company to do business is required.
The Company has furnished
3
<PAGE> 4
to the Purchaser true and complete copies of its Amended and Restated
Certificate of Incorporation (the "Certificate of Incorporation") and By-Laws,
each as amended to date and as currently in effect.
3.2 CAPITALIZATION. The authorized capital stock of the Company
consists of (i) 20,000,000 shares of Common Stock, of which 6,856,054 are
issued and outstanding, 348,057 are issuable upon exercise of certain stock
options granted under the Stock Option Plans of the Company, and 487,458 are
reserved for issuance upon exercise of warrants issued by the Company; and (ii)
5,000,000 shares of Preferred stock, $.01 par value per share, none of which
are issued or outstanding. The issued and outstanding shares of Common Stock
are duly and validly issued, fully-paid and non-assessable. Except as set
forth above, (i) no subscription, warrant, option, convertible security or
other right (contingent or otherwise) to purchase or acquire any shares of
capital stock of the Company is authorized or outstanding, and (ii) there is
not any commitment of the Company to issue any subscription, warrant, option,
convertible security or other such right or to issue or distribute to holders
of any shares of its capital stock any evidences of indebtedness or assets of
the Company.
3.3 ISSUANCE OF SHARES. The issuance, sale and delivery of the
Shares in accordance with this Agreement has been duly authorized by all
necessary corporate action on the part of the Company, and the Shares when so
issued, sold and delivered against payment therefor in accordance with the
provisions of this Agreement will be duly and validly issued, fully paid and
nonassessable.
3.4 AUTHORITY FOR AGREEMENT. The execution, delivery and performance
by the Company of this Agreement have been duly authorized by all necessary
corporate action, including actions of the Board of Directors of the Company,
and this Agreement has been duly executed and delivered by the Company. This
Agreement constitutes a valid and binding obligation of the Company enforceable
in accordance with its terms, subject as to enforcement of remedies to
applicable bankruptcy, insolvency, reorganization or similar laws affecting
generally the enforcement of creditors' rights and subject to a court's
discretionary authority with respect to the granting of a decree ordering
specific performance or other equitable remedies. The execution of, and the
Company's performance of the transactions contemplated by, this Agreement and
compliance with its provisions by the Company will not violate any provision of
4
<PAGE> 5
law and will not conflict with or result in any breach of any of the terms,
conditions or provisions of, or constitute a default under, its Certificate of
Incorporation or By-Laws or any indenture, lease, agreement or other instrument
to which the Company is a party or by which it or any of its properties is
bound, or any decree, judgment, order, statute, rule or regulation applicable
to the Company and will not constitute an event which with the lapse of time or
notice by a third party could result in any default under any of the foregoing
or result in the creation of any lien, charge or encumbrance upon the assets or
properties of the Company or upon its stock.
3.5 GOVERNMENTAL CONSENTS. No consent, approval, order or
authorization of, or registration, qualification, designation, declaration or
filing with, any governmental authority is required on the part of the Company
in connection with the execution and delivery of this Agreement or the offer,
issue, sale and delivery of the Shares.
3.6 DISCLOSURES. As of the date of this Agreement, neither this
Agreement nor any exhibit hereto, nor any report, other written statement or
certificate delivered or to be furnished to Purchaser in connection with the
transactions contemplated by this Agreement, when read together, contains or
will contain any material misstatement of fact or omits or will omit to state a
material fact necessary to make the statements contained herein or therein not
misleading.
ARTICLE IV. REPRESENTATIONS OF THE PURCHASER
Purchaser represents and warrants to the Company as follows:
Section 4.1 INVESTMENT. Purchaser is acquiring the Shares, for its
own account and on behalf of CU under the Agency Agreement, for investment and
not with a view to, or for sale in connection with, any public distribution
thereof and, except as contemplated by this Agreement, Purchaser has no present
or contemplated agreement, undertaking, arrangement, obligation, indebtedness
or commitment providing for the disposition thereof.
Section 4.2 AUTHORITY. Purchaser has full power and authority to
enter into and to perform this Agreement in accordance with its terms.
Purchaser has not been organized, reorganized or recapitalized specifically for
the purpose of investing in the Company.
Section 4.3 EXPERIENCE. Purchaser has made detailed inquiry
concerning the Company, its business and its personnel; Purchaser has received
any and all written information
5
<PAGE> 6
which it has requested and all questions and inquiries have been answered to
Purchaser's satisfaction; and Purchaser has sufficient business and financial
experience to be able to evaluate the merits and risks of an investment in the
Company.
Section 4.4 ACCREDITED INVESTOR. Purchaser is an "accredited
investor" within the definition set forth in Rule 501(a) under the Securities
Act.
Section 4.5 BINDING EFFECT. This Agreement has been duly executed and
delivered by Purchaser, constitutes a valid and binding obligation of
Purchaser, and is enforceable in accordance with its terms, subject as to
enforcement of remedies to applicable bankruptcy, insolvency, reorganization or
similar laws affecting generally the enforcement of creditors' rights and
subject to a court's discretionary authority with respect to the granting of a
decree ordering specific performance or other equitable remedies.
Section 4.6 RESTRICTED SECURITIES. Purchaser acknowledges that (i)
the Shares have not been registered under the Securities Act and are
"restricted securities" within the meaning of Rule 144 under the Securities
Act; and (ii) the Shares cannot be sold, transferred or otherwise disposed of
unless they are subsequently registered under the Securities Act or an
exemption from registration is then available. The certificates representing
the shares may contain a legend noting these restrictions.
Section 4.7 PURCHASER AGREEMENTS. Other than the Agency Agreement,
there are no agreements, written or oral, to which Purchaser is a party
relating to the acquisition, disposition or voting of the capital stock of the
Company. In the event any such agreement is entered into by the Purchaser,
Purchaser shall be obligated to deliver a copy thereof to the Company or notify
the Company of any such oral agreement.
ARTICLE V. MISCELLANEOUS
Section 5.1 SURVIVAL OF REPRESENTATIONS, WARRANTIES AND COVENANTS.
All agreements, representations, warranties and covenants contained herein
shall survive the execution and delivery of this Agreement and the closing of
the transactions contemplated hereby.
6
<PAGE> 7
Section 5.2 EXPENSES. Each party shall pay its own expenses in
connection with the investment contemplated herein.
Section 5.3 NOTICES. All notices, requests, consents, and other
communications when deemed given under this Agreement shall be in writing and
shall be delivered by hand, which shall include delivery by express courier
service, or mailed by first class certified or registered mail, return receipt
requested, postage prepaid and notice shall be deemed given when actually
received by the intended recipient:
If to the Company:
Ribozyme Pharmaceuticals, Inc.
2950 Wilderness Place
Boulder, CO 80301
Attention: President
With a copy to:
Herbert H. Davis III
Rothgerber, Appel, Powers & Johnson LLP
1200 17th Street, Suite 3000
Denver, CO 80202-5839
If to Purchaser:
University Research Corporation
Foundation Center
1305 University Avenue
P.O. Box 1140
Boulder, CO 80309
Attention: Charles G. McCord, President
With a copy to:
Boulder Ventures
1634 Walnut Street
Boulder, CO 80302
Attention: Kyle Lefkoff
or at such other address or addresses as may have been furnished in writing
pursuant to the provision of this Section 4.3.
7
<PAGE> 8
Section 5.4 BROKERS. The Company and Purchaser (i) represent and
warrant to the other that it has retained no finder or broker in connection
with the transactions contemplated by this Agreement, and (ii) will indemnify
and save the other party harmless from and against any and all claims,
liabilities or obligations with respect to brokerage or finders' fees or
commissions or consulting fees in connection with the transactions contemplated
by this Agreement asserted by any person on the basis of any statement or
representation alleged to have been made by such indemnifying party.
Section 5.5 ENTIRE AGREEMENT. This Agreement together with the other
agreements referred to herein embody the entire agreement and understanding
between the parties hereto with respect to the subject matter hereof and
supersedes all prior agreements and understandings relating to such subject
matter.
Section 5.6 AMENDMENTS AND WAIVERS. Except as otherwise expressly set
forth in this Agreement, any term of this Agreement may be amended and the
observance of any term of this Agreement may be waived (either generally or in
a particular instance and either retroactively or prospectively), with the
written consent of the Company as to any provision that is for the benefit of
the Company and by the Purchaser.
Section 5.7 COUNTERPARTS. This Agreement may be executed in several
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
Section 5.8 HEADINGS. The headings of the sections, Articles, and
paragraphs of this Agreement have been added for convenience only and shall not
be deemed to be a part of this Agreement.
Section 5.9 SEVERABILITY. The invalidity or unenforceability of any
provision of this Agreement shall not affect the validity or enforceability of
any other provision.
Section 5.10 GOVERNING LAW. This Agreement shall be governed by and
construed in accordance with the laws of the State of Delaware.
Section 5.11 SUCCESSORS AND ASSIGNS. The provisions of this Agreement
shall be binding upon, and inure to the benefit of, the respective successors,
assigns, heirs, executors and administrators of the parties hereto.
8
<PAGE> 9
IN WITNESS WHEREOF, the undersigned have hereunto set their hands as of
the day and year first above written.
RIBOZYME PHARMACEUTICALS, INC. UNIVERSITY RESEARCH CORPORATION
By: /s/ Ralph E. Christoffersen By: /s/ Charles G. McCord
Title: President/CEO Title: President
Date: September 23, 1996 Date: September 23, 1996
9
<PAGE> 1
EXHIBIT 10.45
STOCK SUBSCRIPTION AGREEMENT
THIS STOCK SUBSCRIPTION AGREEMENT ("Agreement") is made and entered into
as of this 20th day of November, 1996, by and among Ribozyme Pharmaceuticals,
Inc., a Delaware corporation (the "Company"), and United States Biochemical
Corporation, an Ohio corporation (the "Purchaser").
RECITALS
A. The Company is a publicly-held company engaged in the business of
developing and commercializing its ribozyme technology.
B. The Company and the Purchaser have entered into that certain
Sublicense Agreement and that certain Assignment of License and Restated
License Agreement, both of even date herewith, granting certain rights to the
Company with respect to certain Licensed Patents identified therein (the
"Licenses").
C. As consideration for such Licenses, the Purchaser desires to
acquire and the Company has agreed to issue to the Purchaser an additional
equity investment in the Company on the terms and conditions set forth in this
Agreement.
IN CONSIDERATION OF the mutual promises, representations, warranties and
covenants contained herein, the parties hereto agree as follows:
1
<PAGE> 2
ARTICLE I. PURCHASE AND SALE OF SHARES
Subject to the terms and conditions set forth in this Agreement, the
Purchaser hereby purchases and the Company hereby sells 22,500 shares
("Shares") of the Company's Common Stock ($.01 par value) ("Common Stock"), in
consideration for the rights granted to the Company under the Licenses, the
receipt and sufficiency of which is hereby acknowledged by the Company. The
certificate or certificates representing such Shares will be issued by the
Company in the name of Amersham Holdings, Inc., as nominee for the Purchaser.
ARTICLE II. REGISTRATION RIGHTS
2.1 At any time on or after April 11, 1997 Purchaser may make written
request to the Company to register the Shares under the Securities Act of 1933
(the "Act") and any applicable state securities laws (or to qualify or exempt
the Shares thereunder). As soon as reasonably practicable following the
receipt of such request, the Company will use its commercially reasonable best
efforts to (i) file with the Securities and Exchange Commission (the
"Commission") a Registration Statement on Form S-3 (or any alternative or
successor form adopted by the Commission that is appropriate therefor)
registering the Shares under the Act and Rule 415 (or any successor Rule
adopted by the Commission) thereunder, (ii) cause such Registration Statement
to be declared effective as soon thereafter as is practicable and (iii) cause
such Registration Statement to remain effective for a period of not less than
120 days thereafter. Each such request shall be made by delivery of written
notice to the Company by Purchaser, which notice shall (i) request the
preparation of the Registration Statement pursuant to the terms of this Section
2.1, (ii) include the number of shares of Common Stock to be offered by
Purchaser pursuant to such Registration Statement, and (iii) be sent by the
Company to any other Shareholders as provided in Section 2.2 below.
2.2 Within 30 calendar days after receipt of notice of any
registration requested hereunder, the Company shall have the right to send a
copy of such notice to any other shareholder that the Company, in its sole
discretion, deems appropriate (collectively,
2
<PAGE> 3
"Shareholders"), which notice shall be accompanied by an offer by the Company
to include all or part of the Common Stock held by such Shareholder in such
registration.
2.3 In the event that the Company is or becomes obligated to file a
Registration Statement for any other reason other than this Article II on or
after April 11, 1997, the Company shall give Purchaser notice of such pending
registration accompanied by an offer by the Company to include the Shares in
such Registration Statement.
2.4 Notwithstanding anything contained herein to the contrary, the
Company will not be obligated to effect, or take any further action to effect,
any registration pursuant to this Article II after the Company has effected two
(2) registrations on Form S-3 (or any alternative or successor form adopted by
the Commission that is appropriate for the registration for the Shares) on or
after April 11, 1997, which Registration Statements have been declared or
ordered effective. Purchaser shall not initiate any request for registration
pursuant to Section 2.1 during such time as the Company is using its
commercially reasonable best efforts to cause any Registration Statement
referenced in Section 2.3 to be declared or ordered effective.
ARTICLE III. REPRESENTATIONS OF THE COMPANY
The following are representations and warranties made by the
Company as of the date hereof.
3.1 ORGANIZATION AND STANDING. The Company is a corporation duly
organized, validly existing and in good standing under the laws of the State of
Delaware and has full corporate power and authority to conduct its business as
presently conducted and as proposed to be conducted by it and to enter into and
perform this Agreement and to carry out the transactions contemplated herein.
The Company is duly qualified to do business as a foreign corporation and is in
good standing under the laws of the State of Colorado and under the laws of any
other state in which qualification by the Company to do business is required.
The Company has furnished to the Purchaser true and complete copies of its
Amended and Restated Certificate of
3
<PAGE> 4
Incorporation (the "Certificate of Incorporation") and By-Laws, each as amended
to date and as currently in effect.
3.2 CAPITALIZATION. The authorized capital stock of the Company
consists of: (i) 20,000,000 shares of Common Stock, of which 6,856,054 are
issued and outstanding, 348,057 are issuable upon exercise of certain stock
options granted under the Stock Option Plans of the Company, and 487,458 are
reserved for issuance upon exercise of warrants issued by the Company; and (ii)
5,000,000 shares of Preferred Stock, $.01 par value per share, none of which
are issued or outstanding. The issued and outstanding shares of Common Stock
are duly and validly issued, fully-paid and non-assessable. Except as set
forth above, (i) no subscription, warrant, option, convertible security or
other right (contingent or otherwise) to purchase or acquire any shares of
capital stock of the Company is authorized or outstanding, and (ii) there is
not any commitment of the Company to issue any subscription, warrant, option,
convertible security or other such right or to issue or distribute to holders
of any shares of its capital stock any evidences of indebtedness or assets of
the Company.
3.3 ISSUANCE OF SHARES. The issuance, sale and delivery of the
Shares in accordance with this Agreement has been duly authorized by all
necessary corporate action on the part of the Company, and the Shares when so
issued, sold and delivered against payment therefor in accordance with the
provisions of this Agreement will be duly and validly issued, fully paid and
nonassessable.
3.4 AUTHORITY FOR AGREEMENT. The execution, delivery and performance
by the Company of this Agreement have been duly authorized by all necessary
corporate action, including actions of the Board of Directors of the Company,
and this Agreement has been duly executed and delivered by the Company. This
Agreement constitutes a valid and binding obligation of the Company enforceable
in accordance with its terms, subject as to enforcement of remedies to
applicable bankruptcy, insolvency, reorganization or similar laws affecting
generally the enforcement of creditors' rights and subject to a court's
discretionary authority with respect to the granting of a decree ordering
specific performance or other equitable remedies. The execution of, and the
Company's performance of the transactions contemplated by, this Agreement and
compliance with its provisions by the Company will not violate any provision of
law and will not conflict with or result in any breach of any of the terms,
conditions or provisions
4
<PAGE> 5
of, or constitute a default under, its Certificate of Incorporation or By-Laws
or any indenture, lease, agreement or other instrument to which the Company is
a party or by which it or any of its properties is bound, or any decree,
judgment, order, statute, rule or regulation applicable to the Company and will
not constitute an event which with the lapse of time or notice by a third party
could result in any default under any of the foregoing or result in the
creation of any lien, charge or encumbrance upon the assets or properties of
the Company or upon its stock.
3.5 GOVERNMENTAL CONSENTS. No consent, approval, order or
authorization of, or registration, qualification, designation, declaration or
filing with, any governmental authority is required on the part of the Company
in connection with the execution and delivery of this Agreement or the offer,
issue, sale and delivery of the Shares.
3.6 DISCLOSURES. As of the date of this Agreement, neither this
Agreement nor any exhibit hereto, nor any report, other written statement or
certificate delivered or to be furnished to Purchaser in connection with the
transactions contemplated by this Agreement, when read together, contains or
will contain any material misstatement of fact or omits or will omit to state a
material fact necessary to make the statements contained herein or therein not
misleading.
ARTICLE IV. REPRESENTATIONS OF THE PURCHASER
Purchaser represents and warrants to the Company as follows:
Section 4.1 INVESTMENT. Purchaser is acquiring the Shares, for its
own account, for investment and not with a view to, or for sale in connection
with, any public distribution thereof and, except as contemplated by this
Agreement, Purchaser has no present or contemplated agreement, undertaking,
arrangement, obligation, indebtedness or commitment providing for the
disposition thereof.
Section 4.2 AUTHORITY. Purchaser has full power and authority to
enter into and to perform this Agreement in accordance with its terms.
Purchaser has not been organized, reorganized or recapitalized specifically for
the purpose of investing in the Company.
Section 4.3 EXPERIENCE. Purchaser has made detailed inquiry
concerning the Company, its business and its personnel; Purchaser has received
any and all written information which it has requested and all questions and
inquiries have been answered to Purchaser's
5
<PAGE> 6
satisfaction; and Purchaser has sufficient business and financial experience to
be able to evaluate the merits and risks of an investment in the Company.
Section 4.4 ACCREDITED INVESTOR. Purchaser is an "accredited
investor" within the definition set forth in Rule 501(a) under the Securities
Act.
Section 4.5 BINDING EFFECT. This Agreement has been duly executed and
delivered by Purchaser, constitutes a valid and binding obligation of
Purchaser, and is enforceable in accordance with its terms, subject as to
enforcement of remedies to applicable bankruptcy, insolvency, reorganization or
similar laws affecting generally the enforcement of creditors' rights and
subject to a court's discretionary authority with respect to the granting of a
decree ordering specific performance or other equitable remedies.
Section 4.6 RESTRICTED SECURITIES. Purchaser acknowledges that (i)
the Shares have not been registered under the Securities Act and are
"restricted securities" within the meaning of Rule 144 under the Securities
Act; and (ii) the Shares cannot be sold, transferred or otherwise disposed of
unless they are subsequently registered under the Securities Act or an
exemption from registration is then available. The certificates representing
the shares may contain a legend noting these restrictions.
Section 4.7 PURCHASER AGREEMENTS. There are no agreements, written or
oral, to which Purchaser is a party relating to the acquisition, disposition or
voting of the capital stock of the Company. In the event any such agreement is
entered into by the Purchaser, Purchaser shall be obligated to deliver a copy
thereof to the Company or notify the Company of any such oral agreement.
ARTICLE V. MISCELLANEOUS
Section 5.1 SURVIVAL OF REPRESENTATIONS, WARRANTIES AND COVENANTS.
All agreements, representations, warranties and covenants contained herein
shall survive the execution and delivery of this Agreement and the closing of
the transactions contemplated hereby.
Section 5.2 EXPENSES. Each party shall pay its own expenses in
connection with the investment contemplated herein.
6
<PAGE> 7
Section 5.3 NOTICES. All notices, requests, consents, and other
communications when deemed given under this Agreement shall be in writing and
shall be delivered by hand, which shall include delivery by express courier
service, or mailed by first class certified or registered mail, return receipt
requested, postage prepaid and notice shall be deemed given when actually
received by the intended recipient:
If to the Company:
Ribozyme Pharmaceuticals, Inc.
2950 Wilderness Place
Boulder, CO 80301
Attention: President
With a copy to:
Herbert H. Davis III
Rothgerber, Appel, Powers & Johnson LLP
1200 17th Street, Suite 3000
Denver, CO 80202-5839
If to Purchaser:
United States Biochemical Corporation
26111 Miles Road
Cleveland, OH 44128
Attention: President
or at such other address or addresses as may have been furnished in writing
pursuant to the provision of this Section 4.3.
Section 5.4 BROKERS. The Company and Purchaser (i) represent and
warrant to the other that it has retained no finder or broker in connection
with the transactions contemplated by this Agreement, and (ii) will indemnify
and save the other party harmless from and against any and all claims,
liabilities or obligations with respect to brokerage or finders' fees or
commissions or consulting fees in connection with the transactions contemplated
by this Agreement asserted by any person on the basis of any statement or
representation alleged to have been made by such indemnifying party.
7
<PAGE> 8
Section 5.5 ENTIRE AGREEMENT. This Agreement together with the other
agreements referred to herein embody the entire agreement and understanding
between the parties hereto with respect to the subject matter hereof and
supersedes all prior agreements and understandings relating to such subject
matter.
Section 5.6 AMENDMENTS AND WAIVERS. Except as otherwise expressly set
forth in this Agreement, any term of this Agreement may be amended and the
observance of any term of this Agreement may be waived (either generally or in
a particular instance and either retroactively or prospectively), with the
written consent of the Company as to any provision that is for the benefit of
the Company and by the Purchaser.
Section 5.7 COUNTERPARTS. This Agreement may be executed in several
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
Section 5.8 HEADINGS. The headings of the sections, Articles, and
paragraphs of this Agreement have been added for convenience only and shall not
be deemed to be a part of this Agreement.
Section 5.9 SEVERABILITY. The invalidity or unenforceability of any
provision of this Agreement shall not affect the validity or enforceability of
any other provision.
Section 5.10 GOVERNING LAW. This Agreement shall be governed by and
construed in accordance with the laws of the State of Delaware.
Section 5.11 SUCCESSORS AND ASSIGNS. The provisions of this Agreement
shall be binding upon, and inure to the benefit of, the respective successors,
assigns, heirs, executors and administrators of the parties hereto.
8
<PAGE> 9
IN WITNESS WHEREOF, the undersigned have hereunto set their hands as of
the day and year first above written.
RIBOZYME PHARMACEUTICALS, INC. UNITED STATES BIOCHEMICAL CORPORATION
By: /s/ Ralph E. Christoffersen By: /s/ Tom Mann
Title: President/CEO Title: President
Date: November 20, 1996 Date: November 20, 1996
9
<PAGE> 1
EXHIBIT 10.46
THE CONFIDENTIAL PORTION OF THIS CONTRACT HAS BEEN OMITTED PURSUANT TO
REGULATION 240.25B-2(B) OF THE SECURITIES EXCHANGE ACT OF 1934, AND HAS BEEN
FILED SEPARATELY WITH THE COMMISSION.
ASSIGNMENT OF LICENSE
AND
RESTATED LICENSE AGREEMENT
This Assignment of License and Restated License Agreement ("Agreement")
dated this 20th day of November, 1996 between Competitive Technologies, Inc. a
Delaware corporation having its principal office at 1465 Post Road East,
Westport, Connecticut 06881 (hereinafter referred to as "LICENSOR"), United
States Biochemical Corporation, a corporation having a place of business at
26111 Miles Road, Cleveland, Ohio 44128 (hereinafter referred to as "USB") and
Ribozyme Pharmaceuticals, Inc., a Delaware corporation having its principal
office at 2950 Wilderness Place, Boulder, Colorado 80301 (hereinafter referred
to as "LICENSEE"), replaces that certain Second Restated License Agreement
dated September 1, 1993 between LICENSOR (as successor to University Patents,
Inc.) and USB, as amended by that certain Letter Agreement dated October 13,
1994 (the "Prior License Agreement") and that certain Restated Sublicense
Agreement dated September 1, 1993 between USB and LICENSEE (the "Prior
Sublicense Agreement"), and upon the execution of this Agreement both the Prior
License Agreement and the Prior Sublicense Agreement shall become null, void
and of no further force or effect except as expressly provided herein.
WHEREAS, under a Servicing Agreement between the University of Colorado
Foundation (the "Foundation") and LICENSOR, LICENSOR is assignee of all right,
title and interest of the Foundation to certain patent rights relating to
ribozymes owned by University Research Corporation, a Colorado corporation and
wholly owned subsidiary of the Foundation ("URC"), and has the exclusive right
to license to others the entire interest in such patent rights; and
WHEREAS, pursuant to the Prior License Agreement USB is the exclusive
licensee of LICENSOR of such patent rights; and
1
<PAGE> 2
WHEREAS, pursuant to the Prior Sublicense Agreement, LICENSEE is the
exclusive sublicensee of USB's rights under the Prior License Agreement with
the exclusive right to develop and commercialize such patent rights, and
pursuant to which LICENSEE is generally obligated to pay a royalty to USB of
[ ] of Product Units and Licensed Services (as those terms are defined therein)
and a royalty and other payments to LICENSOR through USB as required pursuant
to the Prior License Agreement; and
WHEREAS, LICENSEE is the sublicensee of certain subsequent patent rights
relating to ribozymes owned by URC and licensed by URC to USB, pursuant to that
certain Sublicense Agreement dated September 1, 1993, between USB and LICENSEE
(the "USB Sublicense Agreement"); and
WHEREAS, contemporaneously herewith, USB and LICENSEE have amended the
USB Sublicense Agreement by entering into an Amended and Restated Sublicense
Agreement granting LICENSEE the exclusive rights to commercialize the patent
rights licensed to LICENSEE by USB under the USB Sublicense Agreement, in
exchange for 22,500 shares of the Common Stock ($.01 par value) of LICENSEE
("Common Stock"); and
WHEREAS, contemporaneously herewith, LICENSEE and USB have entered into
a Stock Subscription Agreement regarding USB's acquisition of Common Stock,
which agreement is part of the consideration to USB hereunder and under the
Amended and Restated Sublicense Agreement; and
WHEREAS, pursuant to Article XIII thereof, USB and LICENSEE have agreed
that USB may hereby assign to LICENSOR all of its rights and obligations under
the Prior License Agreement, and LICENSOR and LICENSEE desire to amend the
Prior License Agreement hereby;
NOW, THEREFORE, in consideration of the foregoing and the mutual
agreements set forth herein, the parties agree as follows:
2
<PAGE> 3
ARTICLE I.
DEFINITIONS
1. "Commercial Sale" shall mean any transaction which transfers to a
purchaser physical possession and title to each Product Unit, after which
transfer the seller has no right or power to determine the purchaser's resale
price, if any, and any transaction which involves the performance of Licensed
Services for a third-party after which no further services are performed.
Transfer of possession and title to, or performance of a Licensed Services for,
an "Affiliated or Related Interest" shall not constitute a Commercial Sale. An
Affiliated or Related Interest means an entity in which LICENSEE has a direct
or indirect ownership interest in excess of fifty percent (50%), or any entity
which directly or indirectly, through one or more intermediaries, controls, is
controlled by, or is under common control with LICENSEE. If a purchaser of a
Product Unit or Licensed services is not independent of LICENSEE and if the
sale to such purchaser, or performance of Licensed Services, is at a lower
price than other sales of similar Product Units to, or the performance is
Licensed Services for, independent purchasers of substantially similar size, in
substantially similar amounts, operating in markets of substantially similar
competitive conditions, then the transfer of the Product Unit to, or
performance of Licensed Services for such nonindependent purchaser shall not
constitute a Commercial Sale thereof at the price charged such purchaser, but
the Commercial Sale shall be deemed to have occurred at the Net Selling Price
at which such Product Unit or Licensed Services was last sold, or would have
been sold, to an independent purchaser under similar conditions.
2. "Improvement" shall mean any invention the practice of which
would infringe the claims covered by the Licensed Patents, which invention was
made by the Inventors and/or persons acting under their direction and control
at the University of Colorado, which is the work product of the Research
Support Funding Agreement between USB and the Foundation entered into on May
20, 1987 (the "RSFA") and which was conceived or reduced to practice during the
term of the RSFA.
3. "Improvement Patents" shall mean any patent application and any
patents issuing thereon throughout the world including any extensions,
renewals, continuations, continuations-
3
<PAGE> 4
in-part, divisions, patents of additions and/or reissues thereof filed upon an
Improvement, and to which LICENSOR has or shall have the right to grant
licenses during the term hereof.
4. "Intermediate Products" shall mean the RNA enzymes described in
Claims 1-47, 70 and 73 of the '327 Patent Application, RNA enzymes which may be
claimed in any other Licensed Patent and/or Improvement Patent, and plasmids
used as vectors for the delivery of ribozymes (either viral or nonviral), made
and sold in bulk by LICENSEE to Manufacturers.
5. "Inventors" shall mean Thomas R. Cech, Arthur J. Zaug and Michael
D. Been.
6. "License Year" shall mean the twelve (12) month period which
commences upon the effective date of this Agreement, and each ensuing twelve
(12) month period during the term of this Agreement.
7. "Licensed Methods" shall mean any invention, method, process,
procedure or technology which is covered by and/or may be claimed in the
Licensed Patent and any Improvement Patent.
8. "Licensed Patents"shall mean the inventions and discoveries which
are the subject of, or which are covered in whole or in part, by the claims
included in (i) U.S. Patent Application Serial Number 937,327, filed 3 December
1986 entitled RNA RIBOZYME POLYMERASES, DEPHOSPHORYLASES, RESTRICTION
ENDORIBONUCLEASES and METHODS (the "'327 Patent Application") , a copy of the
Claims of which is attached hereto and marked EXHIBIT "A", and (ii) the United
States Patents and the patent applications listed on Exhibit "B" attached
hereto, and any patents issuing thereon as well as any corresponding patent
applications or any patents that may issue thereon throughout the world,
including any extensions, renewals, divisions, continuations, continuations-in-
part, patents of addition, and/or reissues thereof, including Improvement
Patents, and to which LICENSOR has or shall have the right to grant licenses
during the term hereof. It is understood that any reference in this Agreement
to claim numbers as recited in the '327 Patent Application as filed on December
3, 1986, or other Licensed Patents corresponding thereto or derived therefrom
(including but not limited to those included in Exhibit "B"), shall be deemed
to refer to any and all claims which are or have been renumbered, deleted or
added during the course of prosecution of the '327 patent application and are
included in such Licensed Patents.
4
<PAGE> 5
9. "Licensed Products" shall mean the RNA enzymes described in
Claims 1-47, 70 and 73 of the '327 Patent Application and RNA enzymes which may
be claimed in any other Licensed Patent and/or Improvement Patent, packaged and
sold by LICENSEE for use as (by way of illustration and not of limitation)
research reagents, diagnostic products, pharmaceutical products, agricultural
biochemical products, veterinary products, cell culture and/or fermentation
products, or otherwise, and plasmids used as vectors for the delivery of
ribozymes (either viral or nonviral), but shall not include Intermediate
Products.
10. "Licensed Services" shall mean any service which is performed for
a third-party which includes use of a Product Unit or Licensed Method.
11. "Manufacturer" shall mean a business entity which makes and sells
merchandise in finished form and ready for end use without further substantial
alteration incorporating or utilizing Intermediate Product(s).
12. "Market Year" shall mean the twelve (12) month period which
commences upon the first Commercial Sale of Licensed Products, and each ensuing
twelve (12) month period during the term of this Agreement.
13. "Net Selling Price" shall mean the actual gross selling price of
each Product Unit upon its Commercial Sale, including all packaging,
instructional or other charges made to a purchaser, but less customary trade
discounts and refunds or credits allowed for shortages, returns, or defective
articles and transportation or shipping charges and/or taxes billed by LICENSEE
to its customers. In the case of Licensed Services, (i) the term Net Selling
Price shall include the actual gross receipts received for the performance of
Licensed Services upon a Commercial Sale, less customary trade discounts and
refunds or credits; and (ii) the term "Commercial Sale" shall include any
transaction under which the Licensee or any sublicensee provides Licensed
Services to a person who is not an Affiliated or Related Interest. The actual
selling price of Product Units to a purchaser or amounts received for the
performance of Licensed Services for a third party,, with whom LICENSE has a
reciprocal discount or preferential price arrangement for merchandise, services
or use of technology and which discount or preferential price arrangement
affects the price LICENSEE charges such purchaser or third-party shall not be
the Net Selling Price thereof, but the Net Selling Price for such Product Units
5
<PAGE> 6
or Licensed Services shall be the actual selling price plus the amount(s) of
such discounts or price preferences.
14. "Patented Substances" shall mean those materials listed on
EXHIBIT "C" hereof previously supplied to LICENSEE.
15. "Product Units" shall mean:
(i) Licensed Products, and
(ii) Intermediate Products
ARTICLE II.
ASSIGNMENT OF LICENSE/TERMINATION OF SUBLICENSE
1. Assignment of Prior License. USB hereby assigns and delegates to
LICENSEE, and LICENSEE hereby accepts and assumes, all of USB's rights and
obligations under the Prior License Agreement. By its execution hereof,
LICENSOR consents and agrees to such assignment and delegation by USB to
LICENSEE.
2. Termination of Prior Sublicense. Effective herewith, USB and
LICENSEE agree to terminate the Prior Sublicense Agreement, which termination
shall not relieve LICENSEE or USB of any obligation or liability accrued
thereunder, rescind or give rise to any right to rescind anything done, any
payments made or to be made, or other consideration given thereunder, or
otherwise affect in any manner any rights of either party arising thereunder
accruing prior hereto.
3. Issuance of Stock to USB. As consideration in full for the
assignment by USB of the license granted to it under the Prior License
Agreement and the termination of the Prior Sublicense Agreement, LICENSEE shall
issue to USB 22,500 shares of its common stock, $.01 par value (the "Common
Stock"). Such Common Stock shall be fully-paid, non-assessable and validly
issued to USB. USB shall execute a Subscription Agreement for the shares of
Common Stock containing such representations, warranties and covenants as
LICENSEE deems necessary for compliance with applicable federal and state
securities laws. The parties acknowledge that the issuance of such Common
Stock to USB by LICENSEE is also in consideration for that
6
<PAGE> 7
certain Amended and Restated Sublicense Agreement between USB and LICENSEE of
even date herewith.
ARTICLE III.
DELIVERY OF PATENTED SUBSTANCES
The Foundation and the Inventors agree that Patented Substances shall
not hereafter be transferred by way of sale, gift, loan or otherwise to any
other person or business entity during the term of the license hereinafter
granted, excepting distribution to the academic community, not for profit, in
accordance with normal academic procedures. The Inventor(s) shall obtain a
written agreement from such potential academic distributees in advance of such
distribution evidencing agreement that the materials will not be used or
distributed for commercial purposes. LICENSEE understands and agrees that the
Inventors may retain and use the Patented Substances for purposes of research.
ARTICLE IV
THE LICENSE
1. Grant. Subject to the rights of the United States Government, as
set forth in P.L. 96-517, P.L. 98-620 and 37 CFR 401, as amended, LICENSOR
hereby grants to LICENSEE an exclusive worldwide license under the Licensed
Patents to exercise the following rights:
(a) To make, have made, use and sell RNA enzymes alone or when
incorporated in Licensed Products;
(b) To use, practice, or have used or practiced on its behalf,
but not to sell, the Licensed Methods;
(c) To perform, or have performed on its behalf, Licensed
Services which include use of a Product Unit or Licensed
Method;
7
<PAGE> 8
(d) To make, have made, use and sell plasmids as described or
claimed in the Licensed Patent and any Improvement Patent;
(e) To pass on to its customers for RNA enzymes, Licensed
Products and/or Intermediate Products, or its customers
.for Licensed Services, a license for the use thereof as
described or claimed in the Licensed Patents and any
Improvement Patent; and
(f) To sell Intermediate Products to Manufacturers, and to
grant licenses to Manufacturers to make, use and sell
Intermediate Products, to use and practice Licensed
Methods and/or to perform Licensed Services; provided that
in the case of the sale of Intermediate Products, Licensee
has theretofore entered into royalty-bearing agreements
whereunder LICENSEE obtains royalties from such
Manufacturers based upon said Manufacturers' selling
prices of merchandise:
(i) in which one or more Intermediate Product is a
constituent, and/or
(ii) in the production of which one or more Intermediate
Product is or has been utilized,
in accordance with the provisions of paragraph 2(b) and
3(b) of Article VI.
(g) To grant sublicenses with respect to any of the foregoing,
subject to the terms of Paragraph 2 of this Article IV.
2. Sublicenses. During the term of exclusivity granted hereunder,
the license hereby granted shall include the right of LICENSEE or any
sublicensee to grant written sublicenses covering Licensed Products, Licensed
Services and Licensed Methods, provided that LICENSEE shall include all sales
and receipts therefrom received from unaffiliated third parties by all
sublicensees in LICENSEE'S statements to LICENSOR as provided in Article V and
(A) in the case of sublicenses granted to parties other than to Manufacturers
shall pay royalties to LICENSOR in an amount equal to the greater of (i) [ ]
income received from each such sublicensee for the sale of Licensed Products
and Licensed Services and for use of Licensed Methods or (ii)[ ], (x) of the
Net Selling Price of each Licensed Product made or sold, or
8
<PAGE> 9
received from the performance of Licensed Services, by or for such sublicensee
or (y) of the amounts received by or from the sublicense of Licensed Methods
and (B) in the case of any sublicense granted to a Manufacturer in respect of
Intermediate Products pay royalties to LICENSOR as per paragraph 3(b) of
Article VI. LICENSEE and its sublicensees shall be free to grant sublicenses
at any royalty rate they may deem appropriate. Notwithstanding the foregoing,
no multiple royalties shall be payable because a Licensed Product, Licensed
Service, Licensed Method or Intermediate Product are or shall be sold or
licensed to or by a sublicensee in the same transaction.
In addition to the foregoing, LICENSEE agrees that it will remit to
LICENSOR in accordance with paragraph 2 of Article VII,[ ] of any option
fee, license fee, prepaid royalty or other "front end payment" which it may
receive from a sublicensee or which a sublicensee may receive from its
sublicensees. It is agreed that research and development funding (as defined
hereafter) does not constitute an "option fee, licensee fee, prepaid royalty or
'front-end payment'" under this paragraph.
For purposes hereof, the term "research and development funding" shall
mean funding received from third parties for (1) LICENSEE's direct or indirect
cost (purchase or lease) of materials, equipment and facilities used in
research and development; (2) salaries, wages, benefits and other related costs
of personnel engaged in or supporting the research and development activity;
(3) the cost to LICENSEE of services performed by others in connection with
LICENSEE's research and development activity; (4) the cost to LICENSEE of
payments to third parties (other than LICENSOR) for patent or other rights
utilized in research and development; (5) a reasonable allocation of general,
administrative and other indirect and overhead costs to research and
development activities; (6) debt or equity investments in LICENSEE and (7)
research and development milestone payments paid to LICENSEE for completion of
research and development activities associated with ribozyme technology and
product development. Determinations with respect to research and development
funding shall be made in accordance with generally accepted accounting
principles. Costs associated with selling products and costs associated with
facilities and equipment unrelated to research and development activities shall
not be included in "research and development funding."
9
<PAGE> 10
LICENSOR shall be advised of any agreement which provides for such
research funding in the semi-annual summaries submitted in accordance with
paragraph 2 of Article V, and LICENSOR shall be furnished with a true and
correct copy of any such agreement. LICENSOR shall have the right, upon prior
reasonable notice, to inspect the books and records of LICENSEE or a
sublicensee, as applicable, in accordance with the provisions of paragraph 2 of
Article VII to verify the nature of such research funding. In the event of any
disagreement between the parties with respect to the foregoing, representatives
of LICENSOR and LICENSEE or sublicensee shall meet and seek to resolve any such
disagreement, as applicable; and if the parties are unable to reach agreement,
then any such disagreement under this paragraph shall be submitted to
arbitration in accordance with the Commercial Arbitration Rules of the American
Arbitration Association then in effect before a panel of one arbitrator. The
place of arbitration shall be New York, New York. Any award rendered thereon
shall be final and binding on the parties and judgment may be entered on the
arbitrator's award in any court having jurisdiction."
LICENSEE agrees to deliver to LICENSOR a true and correct copy of each
and every sublicense entered into by LICENSEE within thirty (30) days after
execution thereof and shall promptly advise LICENSOR in writing of any
modification (and supply same) or termination of each sublicense. Upon
termination of this Agreement for any cause, any and all existing sublicenses
hereunder shall thereupon be assigned to LICENSOR. This shall be made a
condition of any such sublicense that may be granted by LICENSEE.
3. Exclusivity. LICENSOR agrees not to grant to any other party any
option, license or other right under the Licensed Patents to make, have made,
use or sell Product Units, Licensed Services and Licensed Methods during the
period of the exclusive license herein granted.
4. Consultation. The Parties recognize that during the term of this
Agreement, LICENSEE may confer and consult freely with the Inventors in
furtherance of the development and testing of Product Units, Licensed Services
and Licensed Methods, in accordance with such arrangements as they may make
among themselves.
5. Cross-Licensing. LICENSOR understands that LICENSEE'S
negotiations with Gene Shears (J&J) for the cross licensing of certain Gene
Shears patented technology to LICENSEE in exchange for the cross licensing of
certain Licensed Patents to Gene Shears is now in suspense. LICENSOR agrees
that in the event these negotiations are re-activated on
10
<PAGE> 11
terms and conditions similar to or more favorable to LICENSEE than those
described in correspondence between LICENSOR and LICENSEE during the period
April 19 to 21, 1994, LICENSOR will consent to such cross-license. (Said
correspondence being incorporated herein by this reference solely for this
purpose.).
In the event that LICENSEE believes that one or more additional cross-
licenses (other than that with Gene Shears referenced above) are necessary
between LICENSEE and any third party, LICENSOR shall negotiate in good faith
with LICENSEE for the grant of LICENSOR's consent thereto in return for
reasonable consideration.
If LICENSEE grants a license (an "RPI License") to any of its patented
technology, or to any of its proprietary technology for which a patent
application is pending ("RPI Technology") to any cross-licensee under this
Agreement, or any third party affiliated with or related to such cross-
licensee, and the license or option fee, royalty basis, royalty rate and/or
minimums of the RPI License are substantially greater than in the cross-
license, then LICENSOR and LICENSEE shall negotiate in good faith a division of
the incremental royalties paid under the license resulting from such
substantially greater license or option fee, royalty basis, royalty rate and/or
minimums (the "Incremental Royalties"). The division of Incremental Royalties
will be based upon the relative value the cross-licensed technology and the
licensed RPI Technology contribute to the products upon which the Incremental
Royalties are paid. In the event an agreement cannot be reached by the
parties, such matter will be arbitrated before a panel of three arbitrators,
one of whom shall be selected by LICENSEE, one of whom shall be selected by
LICENSOR, and the third of whom shall be selected by the two arbitrators so
selected by LICENSEE and LICENSOR. In no event will the payment of any part of
Incremental Royalties to LICENSOR on any license extend beyond the term of this
Agreement. In addition, in no event will LICENSOR be entitled to share in any
license or option fees, royalties and/or minimums in excess of those to which
it would be entitled if all license or option fees, royalties and/or minimums
paid under the cross-license and RPI License had instead been paid pursuant to
this Agreement.
6. Country of Origin. The Parties agree that royalties shall be
paid only upon Product Units, Licensed Services and Licensed Methods which are
covered in the country of their manufacture, use or sale by a Licensed Patent.
11
<PAGE> 12
ARTICLE V.
PRODUCT DEVELOPMENT
1. Due Diligence. LICENSEE has represented to LICENSOR that it is
experienced in the development and commercialization of Product Units, and that
commencing with the execution of the Prior Sublicense Agreement it committed
itself to a program of developing, obtaining governmental agency approvals for,
and marketing Product Units. LICENSEE agrees that it will diligently continue
the efforts above described. In furtherance of the foregoing, to maximize the
commercial potential of the Invention and its benefit to mankind, expanding the
number of researchers utilizing ribozyme technologies is necessary. LICENSEE's
activities and programs regarding the technology are designed to maximize the
potential of this technology and shall include the following activities:
(a) sponsorship of meetings, and seminars regarding the
technology;
(b) contacting firms in the pharmaceutical, diagnostic and
agbiotech fields to establish potential research
relationships and/or licenses;
(c) support of commercial development activities through
technology development efforts and the expertise of
LICENSEE's scientists.
2. Research and Development. LICENSEE agrees to prepare and submit
to LICENSOR semiannual summaries of its progress in conducting testing,
research and development of Product Units and LICENSOR shall have the right to
receive such summaries and to consult with LICENSEE during the term of the
License hereunder.
3. Data. LICENSEE and LICENSOR agree that during the term of the
License hereunder, they will provide to patent counsel all information and data
that either party develops or otherwise possesses which may assist patent
counsel in the filing, prosecution and defense of patent applications and
patents included in the Licensed Patents.
4. Development Plans. Pursuant to the Prior Sublicense Agreement, a
development plan (the "Initial Plan") was submitted by LICENSEE, which
described LICENSEE's expected activities for an initial period of 24 months.
Upon the expiration of the Initial Plan, LICENSEE
12
<PAGE> 13
submitted to Licensor a first Renewal Plan, covering its proposed plan of
activities for the time period specified therein. If one or more additional
Renewal Plans are required hereafter, the parties agree that it will be subject
to the process described below:
(a) Each Renewal Plan shall set forth: the time term of the
plan, the objectives of the Plan, the activities to be
performed by or for LICENSEE, the internal resources and
external contractual resources to be allocated to the Plan
(personnel facilities, and materials) and the budget
therefore; LICENSEE shall not allocate to a budget costs
incurred prior to the effective day of this Agreement,
costs of personnel, materials or facilities not directly
incurred in the performance of the Plan, or any portion of
its general and administrative costs;
(b) LICENSEE agrees that it shall budget and expend no less
than [ ] period of each Initial or Renewal Plan, in the
performance thereof, subject to cost of living adjustment,
and such expenditure shall be evidence of diligent
performance of LICENSEE's product development obligations
hereunder; and
(c) LICENSEE agrees that it will submit to Licensor Renewal
Plans and expend the amounts described in clauses (i) and
(ii) of this Subparagraph (b) until LICENSEE"s annual
sales of Product Units shall reach the level of [ ],
whichever shall first occur.
All such reports and plans shall be received by Licensor in strict confidence
and used solely for the purposes provided herein.
5. Remedial Action. In the event LICENSOR believes that LICENSEE
has failed to exercise reasonable diligence in the performance of the Initial
Plan or any Renewal Plan, then LICENSOR shall have the right to advise LICENSEE
of its belief and request remedial action. If LICENSOR and LICENSEE disagree,
they may bring the matter to arbitration upon mutual agreement, or lacking such
agreement, each shall rely upon such remedies and defenses as are available to
it in law or equity.
13
<PAGE> 14
ARTICLE VI.
PAYMENTS UNDER THE LICENSE
1. License Fee. All License Fees payable under the Prior License
Agreement have been paid to LICENSOR, and no additional License Fees shall be
payable by LICENSEE hereunder.
2. Royalty Basis. LICENSEE agrees to pay, as hereinafter provided,
royalties to LICENSOR:
(a) in respect of each Licensed Product made or sold by or for
LICENSEE;
(b) in respect of each Intermediate Product sold by Licensee
to a Manufacturer or with respect to which a Manufacturer
has been granted a sublicense as provided in paragraph
1(f) of Article IV.
(c) in respect of Licensed Services performed by or for
Licensee."
3. Royalty Rates
(a) For each Licensed Product sold by Licensee, which is
subject to paragraph 2 of this Article VI, and for
Licensed Services performed by Licensee, which are subject
to paragraph 2(c) of this Article VI, the rate shall be
[ ] of the Net Selling Price.
(b) For each Intermediate Product which is subject to
paragraph 2(b) of this Article, the rate shall be:
(i) [ ] of the Net Selling Price of such Intermediate
Product, and in addition,
(ii) [ ] of any royalty or fee (except of a
sublicense fee, which shall be payable as set forth
in paragraph 2 of Article IV and paragraph 2 of
Article VII, which a Manufacturer pays LICENSEE
upon the manufacture, use, sale or other transfer
of merchandise in which the Intermediate Product is
a constituent or has been utilized.
(c) No multiple royalties shall be payable because a Licensed
Product, Licensed Services and Licensed Method are or
shall be sold, performed
14
<PAGE> 15
and/or licensed in the same transaction by LICENSEE, so
long as LICENSOR receives the royalties provided for in
paragraphs 3(a) or 3(b) of this Article VI, as applicable.
(d) Notwithstanding the provisions of this Article VI, in the
event that LICENSEE is presented with an opportunity or
opportunities for the exploitation of ribozymes in
diagnostic products, through sublicensing, then LICENSOR
will cooperate in good faith with LICENSEE to revise the
royalty rate structure to permit such exploitation for the
mutual benefit of the parties.
4. Guaranteed Minimum Payments.
(a) To retain its license hereunder, LICENSEE shall pay to
LICENSOR, as minimum annual payments, no less than the
amounts set forth below:
(i) For the first Market Year, [ ];
(ii) For the second Market Year, the amount shall be
[ ] of the royalty actually earned during the
first Market Year;
(iii) For the third Market Year, the amount shall be the
greater of [ ] of the royalty actually earned
during the second Market Year;
(iv) For the fourth Market Year, the amount shall be the
greater of [ ] of the royalty actually earned
during the third Market Year;
(v) For the fifth Market Year, the amount shall be the
greater of [ ] of the royalty actually earned
during the fourth Market Year;
(vi) For the sixth and each ensuing Market Year, the
amount shall be the greater of [ ] of the royalty
actually earned during the fifth Market Year.
(vii) Payments shall be payable in accordance with
paragraph 3 of Article VII.
(b) In the event LICENSEE does not pay the minimum annual
amounts as aforesaid, LICENSOR shall have the right to
terminate the license granted hereunder; provided,
however, that if LICENSEE shall have paid
15
<PAGE> 16
minimum annual amounts under the license for a period of
ten (10) years, then the license shall thereafter no
longer be terminable by LICENSOR for failure to pay such
minimum annual amounts; provided LICENSEE is not in any
respect in default hereunder.
(c) Notwithstanding the foregoing, LICENSEE agrees that if it
sells Licensed Products in any country under its exclusive
license and subsequently withdraws such Licensed Products
from sale in that country (except upon governmental
requirement) and has no Commercial Sales therein for a
period of one (1) year thereafter, LICENSOR may convert
LICENSEE's exclusive license in that country to a
nonexclusive license for such Licensed Products.
ARTICLE VII.
REMITTANCES, RECORDS AND REPORTS UNDER THE LICENSES
1. Royalties.
(a) Royalties shall accrue when Product Units or Licensed
Services are first sold or performed by or for LICENSEE.
Product Units shall be considered sold to, and Licensed
Services performed for, third parties when billed out.
(b) Payments of earned royalties shall be made within sixty
(60) days following the end of each half of each Market
Year for the sale of all Product Units sold or otherwise
transferred and/or licensed services performed by or for
LICENSEE during said half Market Year. LICENSOR's
participation in royalties from Manufacturers under
paragraph 3(b)(ii) of Article VI shall be paid within
sixty (60) days following the end of each half of each
Market Year, based upon LICENSEE's receipts of such
royalty payments from Manufacturers during each half
Market Year. Such payment shall be accompanied by a
statement certified to LICENSOR by an officer of LICENSEE
which shall
16
<PAGE> 17
give sufficient information from which to calculate the
amount of royalties due hereunder, including, but not
limited to, the total quantity and Net Selling Price of
Product Units and/or licensed services for which royalty
has accrued during the preceding half Market Year and the
aggregate royalties due. Statements shall also be
submitted in the event no sales of Product Units took
place.
(c) Notwithstanding the foregoing paragraph, LICENSEE may
establish a reserve for bad debts in the amount of two
percent (2%) of sales of Product Units sold or otherwise
transferred and/or licensed services performed by or for
LICENSEE during each Market Year. Such reserve shall be
reconciled at the end of each Market Year and, in the
event that the amount of non-collectible accounts
receivable for the Market Year is less than the amount so
reserved, LICENSEE shall remit to LICENSOR the royalties
earned on such difference; and, in the event that the
amount of non-collectible accounts receivable for the
Market Year is greater than the amount so reserved,
LICENSEE shall be entitled to a credit against the next
scheduled royalty payment to LICENSOR in the amount of the
royalties paid by LICENSEE on such difference.
2. Sublicense Fees. Payment of LICENSOR's share of sublicense fees,
prepaid royalties or "front-end" payments received by LICENSEE from
sublicensees pursuant to paragraph 2 of Article IV shall be remitted to
LICENSOR within sixty (60) days following the end of the calendar quarter of
receipt.
3. Guaranteed Minimum Payments. LICENSEE agrees that each minimum
annual payment under paragraph 4 of Article VI shall become a present
obligation of LICENSEE to LICENSOR on the first day of each Market Year; and
LICENSEE agrees that such minimum amounts are to be paid to LICENSOR together
with the remittance made for the last accounting period of the applicable
Market Year, in the event earned royalties for such Market Year do not reach
the minimum amount set forth.
4. Currency. Payment hereunder shall be made in U. S. dollars in
the United States.
17
<PAGE> 18
5. Credit for Patent Expenses. LICENSEE may deduct as credits from
payment of royalties due under paragraph (1)(b) of this Article VII amounts not
to exceed of said royalties due during any half Market Year until all expenses
incurred by LICENSEE pursuant to paragraph 2 of Article VIII have been
credited.
6. Foreign Royalty Payments. With respect to sales in countries
outside the United States, royalties shall be payable in U. S. dollars at the
rate of exchange published in The Wall Street Journal on the last day of the
accounting period in which the royalty accrues. Royalties shall be paid to
LICENSOR free and clear of all foreign taxes, including withholding and
turnover taxes, except such taxes which LICENSEE may be required to withhold by
a foreign country (provided that LICENSOR can receive full credit for such
taxes with the Internal Revenue Service of the United States) .
7. Inspection. LICENSEE shall keep records in sufficient detail to
permit the determination of royalties payable hereunder and, at the request and
expense of LICENSOR, will permit an independent Certified Public Accountant,
acceptable to both LICENSOR and LICENSEE, to examine, in confidence, during
ordinary business hours once in each calendar year such records as may be
necessary to verify or determine royalties paid or payable under this
Agreement. For the purposes of this paragraph, LICENSEE shall be required to
retain its records for no more than three (3) years.
8. Price. LICENSEE shall submit to LICENSOR, no less than once per
year during the life of this Agreement, copies of its customer catalogs in
which Licensed Products and Licensed Services are listed for sale.
ARTICLE VIII.
PATENT PROTECTION
1. Patent Filing and Maintenance. LICENSEE shall apply for,
prosecute and maintain all Licensed Patents as it deems appropriate in its sole
discretion using counsel of its own choice, provided that LICENSEE shall be
reasonably diligent in the prosecution of such patent applications. LICENSEE
shall provide to LICENSOR copies of each application and all Patent Office
actions and responses. All patents obtained by LICENSEE shall be issued in the
18
<PAGE> 19
name of LICENSOR as the assignee and owner. RPI shall advise LICENSOR of its
intention to abandon any such patent application or patent thirty (30) days
prior to taking such action. Upon receipt of such notice, all rights in the
application or patent shall automatically revert to LICENSEE.
2. Recovery of Patent Expenses. LICENSEE shall bear the expenses
associated with the filing, prosecution and maintenance of Licensed Patents
including, without limitation, filing, maintenance, and attorneys' fees;
provided that, LICENSEE shall be entitled to recover such costs from royalties
otherwise to become due to LICENSOR, earned in the country in which the
application was filed, in accordance with paragraph 6 of Article VII.
19
<PAGE> 20
ARTICLE IX.
ENFORCEMENT OF LICENSED PATENTS
1. Enforcement. In the event LICENSEE, LICENSOR, the Foundation or
URC becomes aware of any actual or threatened infringement of a Licensed Patent
anywhere in the world, that party shall promptly notify the other parties in
writing. LICENSEE shall have the first right to bring, at its own expense, an
infringement action against any third party and to use the' names of LICENSOR,
the Foundation and URC in connection therewith. If LICENSEE does not proceed
with a particular patent infringement action within ninety (90) days, LICENSOR,
after notifying LICENSEE in writing, shall be entitled to take proceedings
against such infringer at its own expense, and shall have the right to settle
infringement litigation by licensing the infringer, unless LICENSEE shall
equally share the cost of enforcement with LICENSOR. The party conducting such
suit shall have full control over its conduct. In any event, LICENSOR, the
Foundation, Institution and LICENSEE shall assist one another and cooperate in
any such litigation upon request without expense to the requesting party. Any
recovery as a result of any litigation or settlement thereof shall be the
property of the party bearing the principal responsibility of such litigation.
2. Defense. In the event a third party brings an action to obtain a
declaration of patent invalidity of a Licensed Patent (a "DJ Action") against
LICENSOR and/or LICENSEE:
(a) The named defendants shall have the first right to defend
said action at its own cost and expense and to control
ensuing litigation.
(b) If the named defendant elects not to defend the DJ Action,
the other Party may elect to defend the DJ Action at its
own cost and expense and to control the ensuing
litigation.
(c) If a litigating Party finally prevails, it shall retain
all damages which it may collect.
(d) If either Party finally loses because a patent is held
invalid, LICENSEE may thereafter cease paying royalties on
sales of Licensed Products, the performance of Licensed
Services or Product Units and use of Licensed
20
<PAGE> 21
Methods, as the case may be, in the country in which such
invalidity has been finally adjudicated provided that
Licensed Products, Product Units, Licensed Services and
Licensed Methods, as the case may be, are covered or the
use thereof are covered only by claims which have been
held invalid.
ARTICLE X.
TERMS OF LICENSE: TERMINATION
1. Term. The term of this Agreement shall be from the date first
written above until the expiration of the last to expire of any patent included
in the Licensed Patents.
2. Termination. LICENSEE may terminate this Agreement:
(a) For cause; or
(b) Upon sixty (60) days written notice to LICENSOR, provided
that LICENSEE shall thereafter terminate the manufacture,
sale and/or use of Product Units except for disposition of
inventory on hand, for which royalties shall be paid in
accordance with Article VI hereof. Disposition of
inventory must be complete within one hundred twenty (120)
days of the aforementioned notice.
(c) If LICENSEE shall at any time default in any obligation
under this Agreement, including but not limited to failing
to make any report, pay any royalties, or permit the
inspection of its books and records as hereinabove
required, and such default shall not be cured within sixty
(60) days after written notice from LICENSOR to LICENSEE
specifying the nature of the default, then LICENSOR shall
have the right to terminate the license granted to
LICENSEE hereunder and such termination shall become
effective on the sixtieth (60th) day after giving such
notice.
(d) Any termination pursuant hereto shall not relieve LICENSEE
or LICENSOR of any obligation or liability accrued
hereunder prior to such
21
<PAGE> 22
termination, nor rescind or give rise to any right to
rescind anything done or any payments made or other
consideration given hereunder prior to the time of such
termination and shall not affect in any manner any rights
of either party arising out of this Agreement prior to
such termination.
ARTICLE XI.
REPRESENTATIONS AND WARRANTIES
1. Representations of LICENSOR; No Warranties. LICENSOR represents
that it has the right to enter into this Agreement and that, to the best of
LICENSOR's knowledge, no amounts are due LICENSOR from either LICENSEE or USB
under the Prior License Agreement. LICENSOR makes no other representation or
warranty, express or implied, except as herein provided, nor does LICENSOR
assume any liability in respect of any infringement of any patent or other
rights of third parties due to LICENSEE's operation under the rights herein
granted. LICENSEE recognizes that the Patented Substances and the RNA enzymes
produced therefrom have been produced by the Inventors for research purposes
only. THE INVENTORS, THE FOUNDATION, URC, AND LICENSOR EXPRESSLY DISCLAIM THAT
THE PATENTED SUBSTANCES AND/OR THE RNA ENZYMES PRODUCED THEREFROM WILL BE OF
ANY COMMERCIAL VALUE TO LICENSEE WHATSOEVER, AND NO SUCH REPRESENTATION OR
WARRANTY OF SUCH VALUE SHOULD BE IMPLIED. LICENSEE AGREES THAT IT IS OBTAINING
THE LICENSES HEREIN GRANTED WITHOUT ANY REPRESENTATION OF VALUE,
MERCHANTABILITY OR FITNESS FOR USE.
2. Representations of USB. USB represents that no amounts, whether
in the form of royalties, license fees, up-from payments or any other
obligation, are due from it to LICENSOR under the Prior License Agreement, and
no such obligations have accrued thereunder as of the date hereof.
22
<PAGE> 23
ARTICLE XII.
PREFERENCE FOR U. S. INDUSTRY
In view of Public Law 96-517, Public Law 98-620 and regulations
thereunder, LICENSEE agrees that any Product Unit covered by Licensed Patents
or produced through the use of a method or process claimed in the Licensed
Patents for sale in the United States of America will be manufactured
substantially in the United States of America, unless a waiver of such
obligation is obtained from the Federal Agency which supported in whole or in
part said invention. LICENSEE shall include the foregoing provision in any
sublicense(s) it grants hereunder.
23
<PAGE> 24
ARTICLE XIII
COMMUNICATION
Any payment, notice or other communication required or permitted to be
made or given to a Party pursuant to this Agreement shall be sufficiently made
or given on the date of mailing if sent to such Party by certified or
registered mail, postage prepaid, addressed to it at its address set forth or
to such other address as it shall designate by written notice to the other
Party as follows:
In the case of LICENSOR:
President
Competitive Technologies, Inc.
c/o USET
P. 0. Box 340
Fairfield, Connecticut 06430
In the case of LICENSEE:
President
Ribozyme Pharmaceuticals, Inc.
2950 Wilderness Place
Boulder, Colorado 80301
In the case of USB:
President
United States Biochemical Corporation
26111 Miles Road
Cleveland, Ohio 44128
24
<PAGE> 25
ARTICLE XIV.
ASSIGNMENTS
This Agreement shall not be assignable by LICENSEE without the prior
written consent of LICENSOR except to a successor in ownership of all or
substantially all of the business assets of LICENSEE, and which successor shall
expressly assume in writing the performance of all the terms and conditions of
this Agreement to be performed by the assigning Party.
ARTICLE XV.
MISCELLANEOUS
1. Execution. This Agreement will not be binding upon the Parties
until it has been signed herein below by or on behalf of each Party, in which
event it shall be effective as of the date first above written. No amendment
or modification hereof shall be valid or binding upon the Parties unless made
in writing and signed as aforesaid.
2. Construction. This Agreement embodies the entire understanding
of the Parties and shall supersede all previous communications, representations
or undertakings, either verbal or written between the Parties relating to the
subject matter hereof.
3. Indemnification. LICENSEE agrees to indemnify and hold harmless
LICENSOR, the Foundation, URC, and the Inventors from and against any and all
claims, damages and liabilities asserted by third parties (private and
governmental) arising from LICENSEE's sale of Product Units and/or the
purchaser's use thereof or from the performance of Licensed Services or use of
Licensed Methods, as the case may be.
4. Anonymity. LICENSEE shall have no right to use the names or
other designation of THE UNIVERSITY OF COLORADO or the Inventors in connection
with any sales or promotion of Product Units, Licensed services and Licensed
Methods, as the case may be without the express written consent of the
Institution or the Inventors, as the case may be.
25
<PAGE> 26
5. Severability. If any provision or provisions of this Agreement
shall be held to be invalid, illegal or unenforceable, the validity, legality
and enforceability of the remaining provisions shall not in any way be affected
or impaired thereby.
6. Jurisdiction. This Agreement shall be construed, and the legal
relations between the Parties determined, in accordance with the law of the
State of Connecticut, U.S.A.
7. Headings. The headings of the several sections are inserted for
convenience of reference only, and are not intended to be part of or to affect
the meaning or interpretation of this Agreement.
8. Force Majeure. Neither of the Parties hereto shall be liable in
damages or have the right to cancel this Agreement for any delay or default in
performing hereunder if such delay or default is caused by conditions beyond
its control, including acts of God, government restrictions, wars or
insurrections.
9. No Waiver. Failure by either party to enforce any provision of
this Agreement or assert a claim on account of breach hereof shall not be
deemed a waiver of its right to enforce the same or any other provision hereof
on the occasion of a subsequent breach.
10. Compliance. LICENSEE agrees to comply voluntarily with and abide
by the United States Department of Health and Human Services, National
Institutes of Health "Guidelines for Research Involving Recombinant DNA
Molecules". June 1981, 46 F.R. 34461, or as subsequently amended, so long as
LICENSEE uses the Patented Substances conveyed to it hereunder.
11. Remedies. The remedies provided in this Agreement are not and
shall not be deemed to be exclusive and shall be in addition to any other
remedies which either party may have at law or in equity.
12. Counterparts. This Agreement may be executed in two (2) or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
26
<PAGE> 27
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be
duly executed as of the date first above written.
COMPETITIVE TECHNOLOGIES, INC.
By: /s/ Mike Gabridge
Title: Assistant Vice President
Date: November 20, 1996
UNITED STATES BIOCHEMICAL CORPORATION
By: /s/ Tom Mann
Title: President
Date: November 20, 1996
RIBOZYME PHARMACEUTICALS, INC.
By: /s/ Ralph E. Christoffesen
Title: President/CEO
Date: November 20, 1996
27
<PAGE> 28
EXHIBIT A
What is claimed:
[ ]
28
<PAGE> 29
EXHIBIT B
EXHIBIT B
"Licensed Patents"
Patents and Pending Applications
<TABLE>
<CAPTION>
================================================================================
PATENT NO. OR
CLAIMS PATENT APPLICATION NO TITLE
- --------------------------------------------------------------------------------
<S> <C> <C>
1 - 47 U.S. Pat. No. 4,987,071 (Parent) RNA Ribozyme Polymerase
Dephosphorylases Restriction
Endoribonucleases and Methods
- --------------------------------------------------------------------------------
48 - 62 U.S. Pat. No. 5,093,246 RNA Polymerase Dephosphorylases
(Division of U.S. Pat. No. Restriction
4,987,071) Endoribonucleases and Methods
- --------------------------------------------------------------------------------
63 - 66 Pat. No. 4,987,071 See above
- --------------------------------------------------------------------------------
67 and 68 U.S. Pat. No. 5,093,246 See above
- --------------------------------------------------------------------------------
69 U.S. Pat. No. 4,987,071 See above
- --------------------------------------------------------------------------------
70 U.S. Pat. No. 4,987,071 See above
- --------------------------------------------------------------------------------
71 U.S. Pat. No. 5,093,246 See above
- --------------------------------------------------------------------------------
72 U.S. Pat. no. 5,037,746 RNA Ribozyme Polymerases and
(Continuation-in-part of Methods
U.S. Pat. No. 4,987,071)
- --------------------------------------------------------------------------------
73 Pat No. 4,987,071 See above
================================================================================
</TABLE>
Notes:
1. U.S. Patent No. 5,116,742 entitled "RNA Ribozyme Restriction
Endoribonucleases and Methods," filed March 24, 1989, is a continuation-in-part
of U.S. Patent No. 4,987,071, and includes additional claims which were not
contained in the original patent application.
2. U.S. Patent Application Serial No. 843,737 entitled "RNA Polymerase
Dephosphorylases Restriction Endoribonucleases and Methods," filed February 28,
1992, is a continuation of U.S. Patent No. 5,093,246. It has been allowed, and
the issue fee is due to be paid on or before February 24, 1994.
29
<PAGE> 30
EXHIBIT C
PATENTED SUBSTANCES
[ ]
30
<PAGE> 1
EXHIBIT 10.49
THE CONFIDENTIAL PORTION OF THIS CONTRACT HAS BEEN OMITTED PURSUANT TO
REGULATION 240.25B-2(B) OF THE SECURITIES EXCHANGE ACT OF 1934, AND HAS BEEN
FILED SEPARATELY WITH THE COMMISSION.
LICENSE AGREEMENT
This License Agreement ("Agreement") is entered into and effective this
15 day of February, 1997, between Ribozyme Pharmaceuticals, Inc., a Delaware
corporation having its principal place of business in Boulder, Colorado
("RPI"), and IntelliGene, an Israeli company having its principal place of
business in Jerusalem, Israel ("IntelliGene").
WHEREAS, RPI has developed or has licensed certain technology, including
patents, trade secrets, proprietary information and know-how, relating to the
design, synthesis and manufacture of ribozymes and the application of ribozymes
to the diagnosis of human diseases; and
WHEREAS, IntelliGene has developed certain technology, including
patents, trade secrets, proprietary information and know-how relating to
nucleic acid enzymes, and to diagnostic products and services, and proposes to
design, develop and commercialize in vitro diagnostics based on ribozymes; and
WHEREAS, the parties wish to enter into this Agreement for certain
licenses for IntelliGene's use of RPI's ribozyme technology in the Fields (as
defined herein), and sale of certain products and services using ribozymes, as
identified herein;
NOW, THEREFORE, the parties hereto agree as follows:
ARTICLE 1
DEFINITIONS
The following capitalized terms shall have the meanings indicated for
purposes of this Agreement:
1.1 "Affiliate" shall mean any entity which controls, is controlled
by, or is under common control with, a party hereto. An entity shall be
regarded as being in control of another entity if such party owns or controls,
directly or indirectly, 50 percent or more of the shares of
1
<PAGE> 2
the subject entity entitled to vote in the election of directors (or, in the
case of an entity that is not a corporation, for the election of the
corresponding managing authority).
1.2 "Alternative Suppliers" shall mean those suppliers subject to a
Supply License under Section 4.10 hereof or a similar license to manufacture
Ribozymes pursuant to any other manufacturing agreement between the parties.
1.3 "Amplified Nucleic Acid Formats" shall mean methods for
amplification of nucleic acids as specifically disclosed or encompassed within
IntelliGene Technology or RPI Technology.
1.4 "Collaborator" shall mean any non-Affiliate entity or person
engaged in an active collaboration with RPI for the purpose of developing,
enhancing or commercializing the use of Ribozymes.
1.5 "Commercial Sale" shall mean any transaction which transfers to a
purchaser physical possession and title to any Product, after which transfer
the seller has no right or power to determine purchaser's resale price, if any,
and any transaction which involves the performance of Licensed Services for a
third party after which no further related services are performed. Transfer of
possession and title to Product and/or Semi-Finished Product to, or performance
of Licensed Services for, an Affiliate or Corporate Partner for purposes of
resale by such Affiliate or Corporate Partner shall not constitute a Commercial
Sale.
1.6 "Confidential Information" shall mean any technical and business
information, including technical data, trade secrets, know-how or other
proprietary information provided to either Party by the other in furtherance of
this Agreement.
1.7 "Confidential Terms" shall mean those terms of this Agreement
related to the Ribozyme Price, and the amount of any royalties or other
payments payable hereunder, which constitute Confidential Information.
1.8 "Corporate Partner" shall mean any non-Affiliate entity or
independent corporation or company engaged in a contractual relationship with a
party for the purpose of converting Semi-finished Product into Product or
utilizing Semi-finished Product for Licensed Services, including marketing,
sales and distribution.
1.9 "Field" shall mean in vitro diagnostics for the diagnosis of
Target Disease using Ribozymes in Amplified Nucleic Acid Formats.
1.10 "Full Time Equivalent" shall mean efforts equivalent to a
scientist employed or hired by RPI to work full time on the research and
development of Semi-finish Products, Products or Licensed Services, based on at
least 225 full working days per year of scientific work on or directly related
to such Semi-finish Products, Products or Licensed Services.
2
<PAGE> 3
1.11 "FTE Rate" shall mean [ ] per annum for the period ending one
year from the Effective Date. Such FTE Rate shall be increased, but not
decreased, annually in subsequent years, if any, by an amount equal to the FTE
Rate for the preceding year multiplied by the Consumer Price Index, or some
other mutually agreeable index of inflation, or as otherwise agreed by the
parties.
1.12 "Gross Sales" shall mean the total sales proceeds received by
IntelliGene, and its Affiliates and Corporate Partners from the Commercial Sale
of Products or Licensed Services or the total sales proceeds received by RPI
and its Affiliates, Collaborators and Corporate Partners from the Commercial
Sale of products or services (and in the event of a reversion under Section
3.5.4, including Products and Licensed Services) which products or services are
developed, made, used or sold in whole or in part in reliance upon or otherwise
utilizing IntelliGene Technology available to RPI under Sections 2.3, 3.5.4,
5.2, or otherwise under this Agreement. Gross Sales shall not include sales of
Semi-finished Products to a Corporate Partner or an Affiliate.
1.13 "IntelliGene Technology" shall mean the issued patents and patent
applications listed on Exhibit A and foreign counterparts thereof as well as
all U.S. and foreign patents issuing therefrom, including any continuations or
continuations-in-part, divisions, reissues, renewals and extensions thereof,
and any additions thereto issued within ten years of the date hereof, and trade
secrets, know how, and trademark registrations owned or licensed by
IntelliGene.
1.14 "Licensed Services" shall mean any service within the Field,
other than the development, production and sale of a Product or Semi-finished
Product, which is performed for a third-party by IntelliGene, an Affiliate or a
sublicensee hereunder, and which includes use of a Semi-finished Product or
Product or any invention, method, process, procedure or technology which is
included, in whole or in part, in RPI Technology.
1.15 "Manufacturing Cost" shall mean the fully burdened cost,
expressed on a per unit manufactured basis, of manufacturing any given type of
Ribozyme (including rejected or returned units of such Ribozymes), together
with packaging thereof, including the cost of raw materials (with inventory
used for raw materials determined on an FIFO basis), direct labor and benefits,
costs of transition from clinical scale to commercial scale production, and
overhead (including depreciation, indirect costs and general and administrative
expense), all fairly allocable to such Ribozymes as determined in accordance
with generally accepted accounting principles and customary usage in the U.S.
pharmaceutical industry.
1.16 "Major Market" shall mean the [ ]
1.17 "New Ribozyme Technology" shall mean all proprietary technology
related to Ribozymes developed during the Term of this Agreement by or for
IntelliGene, its Affiliates
3
<PAGE> 4
and its Collaborators or licensed by IntelliGene or its Affiliates and which
IntelliGene or its Affiliates has the right to sublicense to RPI during the
Term of this Agreement.
1.18 "Net Sales" shall mean Gross Sales less (i) normal and customary
rebates, cash and trade discounts, (ii) credits for returns and allowances,
(iii) insurance costs borne by the seller, (iv) transportation charges and (v)
sales or other excise taxes or duties imposed upon and paid by the seller with
respect to such sales.
1.19 "Product" shall mean products designed, developed, and sold
against a Target Disease by IntelliGene (or RPI in the event of a reversion
under Section 4.5.4.), or an Affiliate, Collaborator or Corporate Partner and
which is generally in finished form and ready for end use without further
substantial chemical alteration.
1.20 "RPI Technology" shall mean the issued patents identified on
Exhibit B, and foreign counterparts thereof as well as all U.S. and foreign
patents issuing therefrom, including any continuations or continuations-in-
part, divisions, reissues, renewals and extensions thereof, and any additions
thereto issued within [ ] of the date hereof, and registrations and
licenses.
1.21 "Ribozyme" shall mean a nucleic acid molecule capable of
catalyzing reactions including, but not limited to, [ ]
1.22 "Ribozymes For Research" shall mean Ribozymes required by
IntelliGene for purposes of research and development of a Semi-finished
Product, Product or Licensed Service, including those required under a Work
Plan (as defined herein) approved by RPI.
1.23 "Ribozymes For Products" shall mean Ribozymes used in Semi-
finished Products, Products or Licensed Services.
1.24 "Ribozyme Price" shall mean [ ] of RPI's Manufacturing Cost
of Ribozymes meeting the Specifications set forth in the purchase order for
such Ribozymes submitted pursuant to Section 4.4 determined on a per unit
basis.
1.25 "Rolling Forecast" shall mean the forecast of IntelliGene's
projected purchase of Ribozymes prepared by IntelliGene pursuant to the terms
of Section 4.3.1.
1.26 "Semi-finished Product" shall mean ribozymes or products which
have not been substantially transformed by IntelliGene or an Affiliate into a
Product and which are transferred to a Corporate Partner in an arms length
transaction for the purpose of sales of Products and/or Licensed Services.
1.27 "Specifications" shall mean the appropriate specifications and
quality standards for each type of Ribozyme as the parties shall agree from
time to time. The parties initially agree that such Ribozymes shall have [ ]
purity.
4
<PAGE> 5
1.28 "Target Disease" shall mean any one of the human diseases listed
on Exhibit C attached hereto, and any additional human diseases or conditions
for which a Work Plan has been approved by RPI in accordance with Section 3.1.
1.29 "Term of this Agreement" shall mean the term provided for in
Section 7.1.
1.30 "Work Plan" shall mean a plan setting forth the proposed path of
development and marketing, including the anticipated market size and countries
targeted for commercialization, for Semi-finished Products, Products or
Licensed Services with respect to a particular Target Disease as provided under
Section 3.1.
ARTICLE 2
License
2.1 Grant to IntelliGene. Subject to the terms of this Agreement,
RPI hereby grants to IntelliGene a world-wide, exclusive license, with the
right to sublicense within the Field subject to Section 2.2, under the RPI
Technology to make ribozymes only for research purposes and to develop, use,
make and have made and sell Semi-finished Products, Products or perform
Licensed Services against Target Diseases provided, however, IntelliGene shall
have the right to sell Semi-finish Products only to Corporate Partners which
have entered into a sublicense with IntelliGene pursuant to Section 2.2.
IntelliGene's right to make or have made Semi-finished Products, Products and
perform Licensed Services shall be subject at all times to RPI's exclusive
right to manufacture and supply Ribozymes for those purposes under Article 4.
Nothing contained herein shall be construed as granting a license, implied or
otherwise, to IntelliGene or any third party to manufacture Ribozymes using the
RPI technology except under the conditions and as specifically set forth in
Section 4.10.
2.2 Sublicensing. Sublicensing of RPI Technology by IntelliGene, to
the extent permitted hereunder, shall be subject to (a) the express, written
consent of RPI, which consent shall not be unreasonably withheld; and (b) all
of the terms, conditions and limitations set forth in this Agreement, including
the following: (i) all such sublicensees of IntelliGene shall be obligated to
pay royalties, either directly or through IntelliGene, to RPI under terms no
more favorable to the sublicensee than those granted to IntelliGene hereunder;
and (ii) such sublicensees of IntelliGene shall be subject to the same
restrictions on the use, manufacture and sale of Ribozymes and/or RPI
Technology as contained herein with respect to the license granted to
IntelliGene hereunder. IntelliGene shall enter into a sublicense in accordance
with the terms of this Section 2.2 with each of its Corporate Partners.
Nothing in this Section or elsewhere in this Agreement shall be construed to
create an implied right of IntelliGene to sublicense any of the RPI Technology
outside the Field as identified herein or for any purpose other than that
permitted to IntelliGene hereunder.
5
<PAGE> 6
2.3 Grantback to RPI. As partial consideration for the license
granted in this Agreement to IntelliGene by RPI, IntelliGene hereby grants to
RPI, for [ ], an exclusive, worldwide license with the right to sublicense,
subject to the royalties provided for in Section 2.5.4.1 and subject further to
IntelliGene's retained right to practice same, to New Ribozyme Technology and
to enhancements or improvements directly and essentially related to the claimed
subject matter of the patents which comprise the RPI Technology, whether or not
patented or patentable, developed and reduced to practice by IntelliGene, its
Affiliates and its Collaborators during the Term of this Agreement.
2.4 Reservation of All Other Rights. Nothing contained herein shall
be construed as granting a license, implied or otherwise, to IntelliGene or any
third party to manufacture Ribozymes using the RPI Technology except under the
conditions and as specifically set forth in Section 2.1 and Section 4.10.
Except as expressly set forth in this Agreement, nothing contained herein shall
be construed as to create any right of IntelliGene in the RPI Technology or RPI
in IntelliGene Technology or in New Ribozyme Technology or in the other's other
intellectual property including, but not limited to, any U.S. or foreign
patents or patent applications (including any reissues, extensions,
substitutions, confirmations, registrations, revalidations, additions,
continuations, continuations-in-part and divisions thereof) relating to the
design, synthesis, delivery, development, testing, use and sale of Ribozymes or
diagnostic technology.
2.5 Royalties and Fees.
2.5.1 License Fees. Within 30 days of the date hereof, RPI will
be paid a License Fee in the amount of [ ]
2.5.2 Research and Development Payments.
2.5.2.1 For each of the three fiscal years beginning
March 1, 1997, 1998 and 1999 and IntelliGene shall pay RPI [ ] per year,
payable in quarterly installments in advance, for research support as agreed by
the parties to advance commercialization of Product and Licensed Services and
for access to RPI's scientists, including consultants.
2.5.2.2 For each of the three fiscal years beginning
March 1, 1997, 1998 and 1999, RPI agrees to pay [ ]. RPI shall have the
right for non-diagnostic purposes to use all such technology obtained or
licensed by IntelliGene resulting from such research and development funding.
2.5.2.3 Within two months of the end of the first
calendar quarter in which IntelliGene, its Affiliates, its Collaborators and
its Corporate Partners receive for a Product or Licensed Service cumulative Net
Sales in excess of [ ] IntelliGene will pay RPI [ ] in support of RPI's
research on Ribozymes the results of which will be reported to IntelliGene.
6
<PAGE> 7
Such amount will be payable for each Product or Licensed Service achieving in
excess of [ ] in Net Sales.
2.5.3 Royalties Payable to RPI.
2.5.3.1 During the Term of this Agreement, RPI will be
paid a royalty on cumulative Net Sales for each separate Product or Licensed
Service as follows:
[ ] on Net Sales of [ ];
[ ] on Net Sales over [ ]; and
[ ] on Net Sales [ ]
2.5.3.2 In no event shall RPI be due multiple royalties
for sales of the same Product or Licensed Services.
2.5.3.3 Anything herein to the contrary
notwithstanding, [ ] of the royalty otherwise payable shall be paid by
IntelliGene on Net Sales of Products or Licensed Services which would not
infringe on RPI's patent rights even if RPI had not granted the licenses
contained herein because RPI has no patent rights in the jurisdiction in which
Products were sold or the License Services were performed or because RPI's
relevant patent rights had expired, lapsed or were declared invalid or
unenforceable by a court of competent jurisdiction.
2.5.3.4 Anything herein to the contrary
notwithstanding, in the event IntelliGene's rights to a Target Disease are
based on a non-exclusive license from RPI, the royalty payable shall be [ ]
of what such royalty would otherwise be.
2.5.4 Royalties Payable to IntelliGene.
2.5.4.1 IntelliGene will be paid a royalty for any
exploitation by RPI or any of its sublicensees of the rights granted under
Section 2.3 of this Agreement. Such royalty shall be [ ] on Net Sales of
each product or service [ ], [ ] of Net Sales of each product or service
[ ] but [ ]; and [ ] of Net Sales of each product or service of [ ]
2.5.4.2 IntelliGene will be paid a royalty for any
exploitation by RPI or any of its sublicensees of the rights granted under
Section 3.5.4. For each such Semi-finished Product, Product or Licensed
Product, such royalty shall be[ ] on Net Sales of [ ], [ ] of Net Sales
[ ] but [ ]; and [ ] of Net Sales of [ ], and, provided further, that
the royalties paid on Products, Semi-finished Products, and Licensed Services [
].
2.5.4.3 In no event shall IntelliGene be due multiple
royalties for sales of the same product or service.
7
<PAGE> 8
2.5.5 Payment and Reporting. All royalties to be paid under
this Agreement shall be paid quarterly within two (2) months after the close of
each quarter, i.e., on or before the last day of each of the months of
February, May, August and November immediately following each quarterly period
immediately preceding such months for which royalties are due. On each such
quarterly payment date, each party shall furnish the other party with a royalty
statement, setting forth the Net Sales by such party of each product and
service and the total number of units of each product and service sold for the
quarter for which the royalties are due. A party's obligation to pay royalties
shall arise when proceeds are received. Upon termination of this Agreement,
each party shall promptly (i.e., within ninety (90) days) report and pay to the
other the applicable royalty for sales made prior to the termination.
2.5.6 Records/Audit Rights. Each party shall keep accurate
books and accounts of record in connection with sales by or for it of Products
and Licensed Services (and products and services, if relevant) in sufficient
detail to permit accurate determination of all figures necessary for
verification of royalty obligations set forth in the previous paragraph. Each
party shall maintain such records for a period of three (3) years from the end
of each annual sales period. Each party, at its expense, through a certified
public accountant, shall have the right to access such books and records for
the sole purpose of verifying such statements; such access shall be conducted
after reasonable prior notice by such party to the other during ordinary
business hours and shall not be more frequent than once during each calendar
year. The party initiating such verification shall pay the cost of such
verification provided that, if as a result of such verification it is
determined that the verified amount due that party exceeds the amount actually
paid in the period by the lesser of [ ] of such verified amount, the cost of
such verification shall be paid by the other party. Said accountant shall not
disclose any information except that which should be properly contained in a
royalty report required under this Agreement. Each party further agrees to
execute any confidentiality agreement reasonably required by the other to
protect the proprietary nature of any such royalty report and the information
contained therein.
2.5.7 Currency and Taxes. All payments to be made by the paying
party hereunder shall be made in U.S. dollars in the United States to a bank
account designated by the payee party. Royalties earned in U.S. dollars shall
be paid in U.S. dollars. Royalties earned in other currencies shall be first
determined in the currency of the country in which they are earned and
converted by the paying party into U.S. dollars at the buying rates of exchange
for the currencies involved as published in the Wall Street Journal (or its
successor in interest) at the close of business on the last business day of the
quarterly period in which the royalties were earned. Any income or other tax
that a party or its sublicensee is required to withhold and pay on behalf of
the other with respect to the royalties payable under this Agreement shall be
deducted from said royalties prior to remittance; provided, however, that in
regard to any tax so deducted, the paying party shall give or cause to be given
to the other party such assistance as may reasonably be necessary to enable
such party to claim exemption therefrom or credit
8
<PAGE> 9
therefor, and in each case shall furnish to such party proper evidence of the
taxes paid on its behalf.
ARTICLE 3
Product Development
3.1 Target Diseases. In addition to the initial Target Diseases
listed on Exhibit C attached hereto and incorporated by this reference herein,
IntelliGene may identify other specific diseases which it proposes to have RPI
designated as a "Target Disease" and, upon IntelliGene's written request, RPI
shall promptly inform IntelliGene [ ] Nothing contained herein shall be
construed to require RPI to make available for designation as a Target Disease
any disease to the extent that RPI has already granted a license, or an
unrestricted right to obtain a license, to the RPI Technology that would
exclude IntelliGene from using the RPI Technology in the development, use or
sale of a Semi-finished Product, Product or Licensed Service in connection with
such disease. IntelliGene acknowledges that diagnostic applications for
certain diseases are included in the licenses granted previously to Chiron
Corporation and the Parke Davis Division of Warner Lambert Company [ ]
Upon notification to IntelliGene by RPI that the disease identified as a
potential Targeted Disease is available to the designated as an additional
Target Disease, IntelliGene shall have a binding option for ninety (90) days
to notify RPI in writing requesting designation of the disease as an additional
Target Disease. Said notice shall be accompanied by a proposed Work Plan, to
be received as Confidential Information, covering all Major Markets and shall
be supported by any laboratory or clinical data with respect to such disease
that IntelliGene may have produced. RPI shall have the right to approve the
Work Plan, including the marketing plan which is a part thereof, which approval
shall not be unreasonably withheld, and shall be given or withheld within a
reasonable time after RPI has received such Work Plan and supporting data.
Approval of any Work Plan with respect to any additional Target Disease by RPI
shall constitute a grant of an exclusive license under the RPI Technology to
IntelliGene for Semi-finished Products, Products and Licensed Services against
such Target Disease in the Field, unless based on its then existing contractual
agreements RPI is only able to grant IntelliGene a non-exclusive license, in
which case the licenses granted to IntelliGene shall be on a non-exclusive
basis. Upon each approval of a Work Plan by RPI for a Target Disease not
listed in Exhibit C, IntelliGene shall pay RPI [ ] in support of research by
RPI for such new Target Disease.
3.2 Development. IntelliGene will have sole responsibility to
complete the development of Semi-finished Products, Products and Licensed
Services with respect to each Target Disease on a commercially reasonable best
efforts worldwide basis for the specific Targeted Disease, subject to
IntelliGene's obligations of due diligence set forth in Section 3.5, and,
except as may expressly be provided, to pay all costs and expenses associated
with such development, marketing and sales. RPI shall have the right to
develop Semi-finished Products, Products and Licensed Services with respect to
a Target Disease in any country not covered by the Work Plan for such Target
Disease provided, however, if the Work Plan covers all Major Markets and
IntelliGene proceeds with due diligence in all Major Markets generally in
9
<PAGE> 10
accordance with the Work Plan, IntelliGene shall preserve the right to all
countries worldwide. IntelliGene shall commercialize as the first Product or
Licensed Service one Target Disease identified on Exhibit C and thereafter
commercialize [ ] the additional Target Diseases identified on Exhibit C.
Provided however, IntelliGene shall have the right to abandon its right to
develop any Target Disease on Exhibit C under Section 3.5.3 and substitute such
Target Disease with a new Target Disease designated under Section 3.1, without
the payment of [ ].
3.3 RPI Research Support. In the event that IntelliGene requires, in
addition to the research support provided for in Section 2.5.2, research
support from RPI for the development of Semi-finished Products, Products and
Licensed Services, RPI will provide such Full Time Equivalents as the parties
shall mutually agree at the FTE Rate plus materials costs and expenses.
3.4 Regulatory Approval. IntelliGene will be responsible for and
control contacts with worldwide regulatory agencies and will own all
applications to, and all permits or exemptions issued by, the U.S. Food and
Drug Administration and their foreign equivalents with respect to any Semi-
finished Products, Products and Licensed Services, except in those countries
where the rights to such Semi-finished Products, Products and Licensed Services
have reverted to RPI under Sections 3.5.2 and 3.5.3. All such activities shall
be conducted at IntelliGene's sole expense. For joint filings, IntelliGene and
RPI will coordinate contacts with regulatory agencies with IntelliGene acting
as primary contact. Unless otherwise agreed by RPI, IntelliGene will develop
and register Semi-finished Products, Products and Licensed Services first in
the United States, the European Economic Community or Israel. RPI shall, at
RPI's expense, and to the extent necessary, provide such information to the FDA
and to other regulatory authorities, maintain such files internally and with
FDA and such other regulatory authorities, maintain all licenses and other
approvals, allow regulatory inspections, and otherwise cooperate with the FDA,
with other regulatory bodies, and with IntelliGene, as may be required in order
to register, license or otherwise gain marketing approval or clearance in any
county identified in a Work Plan approved by RPI.
3.5 Diligence/Abandonment.
3.5.1 Due Diligence. IntelliGene shall be obligated to use due
diligence in the development, marketing and sale of Semi-finished Products,
Products and Licensed Services, using best efforts consistent with new product
introduction, marketing of existing products and prudent business judgment. If
IntelliGene concludes that the development or marketing and sales of Semi-
finished Products, Products and Licensed Service against a Target Disease in a
country or countries will not be reasonably profitable to IntelliGene, it shall
not be obligated to proceed with due diligence in such country or countries.
In such event, IntelliGene shall be obligated to promptly inform RPI of such
conclusion and that it is abandoning its rights to all Semi-finished Products,
Products and Licensed Services against such Target Disease in such country or
countries pursuant to Section 3.5.3. If IntelliGene is proceeding with due
diligence in the European Economic Community as a whole it shall be presumed
for purposes of this
10
<PAGE> 11
Agreement to be proceeding with due diligence in each member country of the
European Economic Community. If IntelliGene is proceeding in accordance with
the Work Plan for a Target Disease, it shall be conclusively presumed to be
proceeding with due diligence with respect to such Target Disease.
3.5.2 Requirement to Commercialize. Unless IntelliGene shall
have achieved commercial sales of a Product or Licensed Service against at
least one Target Disease in a Major Market prior to July 1, 2000 (the
"Expiration Date"), the licenses granted to IntelliGene shall terminate and all
rights to Semi-finished Products, Products and Licensed Services against the
Target Diseases shall revert to RPI provided, however, the Expiration Date may
be extended by the payment by IntelliGene to RPI of the following minimum
royalties. The Expiration Date may be extended to January 1, 2001, by the
payment by IntelliGene to RPI of minimum royalties in the amount of [ ] on or
prior to July 1, 2000. The Expiration Date may be further extended to July 1,
2001, by the payment by IntelliGene to RPI of minimum royalties in the amount
of [ ] on or prior to January 1, 2001. The Expiration Date may be further
extended to January 1, 2002, by the payment by IntelliGene to RPI of minimum
royalties in the amount of [ ] on or prior to July 1, 2002. The Expiration
Date may not be extended beyond January 1, 2002.
3.5.3 Lack of Diligence/Abandonment. If IntelliGene fails to
develop, market or sell any Semi-finished Products or Products against a Target
Disease diligently in any Major Market and fails to develop, market or sell
Licensed Services against such Target Disease in such Major Market as required
by Section 3.5.1.1, all rights to Semi-finished Products, Products and Licensed
Services against such Target Disease in such Major Market and any other country
in which IntelliGene is not proceeding with due diligence shall automatically
revert to RPI 180 days after notice by RPI if IntelliGene has not corrected
such lack of diligence. If at any time IntelliGene concludes that it will not
pursue, either directly or through a sublicense, the development, marketing or
sale of either a Semi-finished Product, Product or a Licensed Service against a
Target Disease in any country for which it has rights, IntelliGene will timely
notify RPI that it intends to abandon its rights in that country, and all such
rights to Semi-finished Products, Products and Licensed Services against such
Target Diseases in such country shall automatically revert to RPI.
3.5.4 Reversion of Rights. Upon the reversion of rights to any
Semi-finished Product, Product or Licensed Service or to all Products or
Licensed Services in any or all countries to RPI under Sections 3.5.2 and
3.5.3, RPI, at its election, will have the right, upon timely notice to
IntelliGene, thereafter to use all relevant data, including research,
preclinical, clinical and regulatory data, of IntelliGene in the pursuit of its
rights in such country or countries regardless of where the data was generated,
provided, however, that use of such data shall be limited to use for the Semi-
finished Product, Product or Licensed Service for which RPI has reversion
rights. Subject to the provisions of section 2.5.4.2 of this Agreement, RPI
shall have an exclusive license, with full rights to sublicense, to develop,
use, manufacture, and sell any such Semi-finished Product, Product or Licensed
Service in any such country or countries. Such license shall include the
exclusive rights to all IntelliGene's then existing patents,
11
<PAGE> 12
trademarks, know-how, trade secrets, and other technology and intellectual
property, including New Ribozyme Technology, as to such Semi-finished Product,
Product or Licensed Service, but, except as otherwise provided herein,
IntelliGene shall retain all other rights to such technology and property for
all other uses, and for all other countries. RPI shall also be subject to the
payment to IntelliGene of all royalties that IntelliGene may be required to pay
to any third parties under such IntelliGene Technology and intellectual
property as to such Semi-finished Product, Product or Licensed Services.
3.5.5 Reporting and Rights of Inspection. IntelliGene shall
furnish RPI with reports no less frequently than quarterly regarding the
actions taken and progress achieved, including laboratory and clinical data not
previously supplied to RPI by IntelliGene, with respect to the development and
commercialization of each Semi-finished Product, Product or Licensed Service in
each country targeted, which shall be received as Confidential Information. In
addition, upon RPI's request and no more than once every six months,
IntelliGene shall give to RPI a full oral progress report, which shall be
received as Confidential Information. In conjunction with each said oral
progress reports, RPI shall have the right, upon reasonable prior notice and
during normal business hours, to reasonably review IntelliGene's records with
respect to the development and commercialization of Semi-finished Products,
Products or Licensed Services, including the right to audit IntelliGene's
financial records to verify that IntelliGene is using due diligence.
ARTICLE 4
Manufacture and Supply of Ribozymes
4.1 RPI's Rights to Manufacture. RPI shall have the right to
manufacture all Ribozymes For Products. The manufacture of chemically
synthesized Ribozymes shall be on the terms set forth below. The manufacture
of other Ribozymes shall be on terms mutually agreed to by the parties.
4.2 Purchase and Sale of Ribozymes. Subject to the terms, conditions
and limitations hereof, during the Term of this Agreement RPI agrees to supply
to IntelliGene using commercially reasonable efforts, and IntelliGene agrees to
purchase from RPI all of IntelliGene's requirements for Ribozymes For Products
under this Agreement. RPI shall have the right to contract with third parties
for the manufacture and supply of any or all Ribozymes or any component thereof
to be supplied hereunder as long as RPI remains subject to and obligated under
the terms of this Agreement. All Ribozymes shall be ordered and supplied
hereunder according to the Specifications for such Ribozymes.
4.3 Amount of Ribozymes For Products.
4.3.1 Rolling Forecast. In connection with the supply of
Ribozymes For Products by RPI hereunder, IntelliGene shall notify RPI prior to
each calendar quarter in writing
12
<PAGE> 13
of its projected purchases of Ribozymes For Products for each calendar quarter
of the following twelve (12) month period (the "Rolling Forecast"). The
Rolling Forecast shall include for each Product the amount of Ribozymes For
Products projected to be purchased by IntelliGene in each quarter.
4.3.2 Purchase Amounts. IntelliGene agrees to purchase in each
quarter no less than [ ] of the amount of Ribozymes For Products forecast
for such quarter in the last Rolling Forecast provided RPI before the purchase
order is submitted by IntelliGene for such quarter.
4.3.3 Supply Amounts. RPI shall not be obligated to supply
during any quarter more than [ ] of the amount of Ribozymes For Products
forecast for such quarter in the last Rolling Forecast provided RPI before the
purchase order is submitted by IntelliGene for such quarter.
4.4 Purchase Orders. IntelliGene shall place firm purchase orders
with RPI for all Ribozymes, at least ninety (90) days prior to the specified
time for shipment. All orders placed by IntelliGene hereunder shall be in
writing in the form of a purchase order, shall be identified by a purchase
order number, shall include the Specifications for the Ribozymes being
purchased and shall be transmitted to RPI by mail or facsimile. Each purchase
order shall identify the type, quantity, unit price, total purchase order
price, shipping instructions, delivery dates and any other special information
with respect to the Ribozymes purchased. When ordering, IntelliGene may employ
its standard forms, but nothing in such forms shall be construed to modify or
amend the terms of this Agreement, and if there is a conflict between the
provisions of this Agreement and such forms, the provisions of this Agreement
shall control. IntelliGene may place an order by telephone provided that a
written purchase order is submitted within five (5) days of such order.
4.5 Ribozyme Price. IntelliGene shall pay the Ribozyme Price for all
Ribozymes furnished by RPI provided that if the purity and other
characteristics of such Ribozymes exceed the minimum required by the
Specifications, such Ribozyme Price shall not be more than the Ribozyme Price
would have been for Ribozymes meeting the minimum requirements of the
Specifications including the requirements as to purity. The Ribozyme Price for
each ribozyme supplied shall be separately determined semi-annually. Unless
otherwise agreed in writing by the Parties, the Ribozyme Price shall be F.O.B.
RPI's manufacturing facility.
4.6 Records/Audit Rights. RPI shall keep detailed records in
connection with the manufacture of Ribozymes for Products to permit accurate
determination of all figures necessary for verification of the Ribozyme Price.
RPI shall maintain such records for a period of three (3) years from the end of
each annual sales period. IntelliGene, through a certified public accountant,
shall have the right to access such records for the sole purpose of verifying
such Ribozyme Price; such access shall be conducted after reasonable prior
notice by IntelliGene to RPI during ordinary business hours and shall not be
more frequent than twice during each calendar year. IntelliGene shall pay the
cost of such verification provided that, if as
13
<PAGE> 14
a result of such verification it is determined that the Ribozyme Price charged
to IntelliGene by RPI exceeds that amount actually charged to IntelliGene in
the period by 5% of such verified amount, the cost of such verification shall
be paid by RPI. Said accountant shall not disclose any information except that
which should be properly contained in a report verification the Ribozyme Price
for the period in question. IntelliGene further agrees to execute any
confidentiality agreement reasonably required by RPI to protect the proprietary
nature of any such manufacturing report and the information contained therein.
4.7 Shipment. RPI will use commercially reasonable efforts to ship
all Ribozymes in the form and at the time specified by IntelliGene in a
purchase order, with the proper identification on the packaging as required by
applicable authorities. As to each order placed by IntelliGene, RPI shall ship
Ribozymes to such destination and by such carrier identified by IntelliGene.
All shipments shall be F.O.B. RPI's manufacturing facility, and title and risk
of loss as to all goods shipped shall pass upon transfer by RPI to such carrier
at RPI's manufacturing facility. IntelliGene or its designee shall be the
importer of record of each shipment.
4.8 Payment. Within ten days after each shipment ordered and shipped
pursuant to this Agreement, an invoice relating to such shipment shall be
rendered by RPI to IntelliGene, and payment thereon shall be due within thirty
(30) days of the receipt of the invoice. IntelliGene shall pay RPI interest on
overdue payments at the lessor of: (i) 18% per annum or (ii) the maximum rate
allowed under applicable law. All payments shall be made in U.S. dollars.
4.9 Non-Conforming Goods. IntelliGene shall inspect all Ribozymes
delivered by RPI under this Agreement within thirty (30) days after receipt
thereof, and may reject any goods that are not in conformance with the
applicable Specifications, provided that such Ribozymes have not been used,
abused or damaged by IntelliGene or its agents. To reject any ribozyme
delivery, IntelliGene shall notify RPI in writing of the rejection and at RPI's
expense promptly return the rejected goods to RPI. Any notice of rejection
must be submitted to RPI within thirty (30) days of receipt of the non-
conforming goods by IntelliGene accompanied by a written statement as to how
such Ribozymes do not conform to type or fail to meet such Specifications. Any
Ribozymes not properly and timely rejected by IntelliGene shall be deemed
accepted. RPI's liability for non-conforming goods shall be limited to its
obligation to repair or replace such non-conforming goods at its own expense
and within a reasonable time after RPI has confirmed, in its reasonable
judgment, that such goods are non-conforming, but not later than thirty (30)
days after it has received the returned goods, and in no event shall RPI be
liable for damages of any type or nature resulting therefrom including any
consequential or incidental damages.
4.10 Alternative Suppliers. In the event that RPI is unable to supply
Ribozymes For Products within 120 days after receipt of a purchase order from
IntelliGene (i.e., RPI is at least thirty (30) days late in making delivery to
IntelliGene), IntelliGene's sole remedy shall be to
14
<PAGE> 15
obtain alternative supplies of Ribozymes For Products as provided herein. In
such event, IntelliGene or another third party jointly acceptable to RPI and
IntelliGene, which acceptance will not be unreasonably withheld, will be
granted a temporary, royalty-free (to RPI) non-exclusive license (the "Supplier
License") under the RPI Technology to make or have made Ribozymes For Products
in the amounts set out in Section 4.3.3 solely for the purposes set forth in
this Agreement and for the period until 90 days after RPI provides written
notice to IntelliGene that it can again provide Ribozymes For Products. At
that point, RPI shall again be the exclusive supplier and the Supplier License
will terminate. As soon as RPI is aware that it is unable to timely supply
Ribozymes For Products, RPI shall immediately provide IntelliGene or its third
party designee all information, know-how, procedures and other information
necessary or desirable to efficiently, reliably and effectively function as a
supplier of the Ribozymes For Products without any interruption in
IntelliGene's supply. All information, know-how, procedures and other
information supplied by RPI to IntelliGene or its designee and for use in the
manufacture of Ribozymes shall be immediately returned to RPI at the conclusion
of the Supplier License without retaining copies. Any Supplier License shall
be subject to the payment to RPI by such alternative supplier of all royalties
that RPI may be required to pay to any third parties under the RPI Technology
with respect to the Ribozymes manufactured or supplied by such alternative
supplier under the Supplier License. RPI's failure or refusal to supply more
that the amounts specified in Section 4.3.3 shall not be any inability to
supply within the meaning of this Section.
4.11 Permitted Uses. IntelliGene shall use Ribozymes supplied
hereunder solely for the purposes set forth in this Agreement.
4.12 Compliance With Law. IntelliGene shall be responsible, at its
expense, for complying with all applicable regulatory requirements relating to
its export, use, marketing or sale of Semi-finished Products, Products,
Licensed Services, or Ribozymes supplied hereunder. RPI shall be responsible,
at its expense, for complying with all applicable regulatory requirements for
its manufacture of Ribozymes hereunder and RPI hereby warrants that it will
manufacture all Ribozymes supplied hereunder in accordance with the applicable
requirements of the Federal Food, Drug, and Cosmetic Act of 1938, as amended,
and the applicable rules and regulations thereunder. IntelliGene shall have
the right, upon reasonable notice and at reasonable times, to visit RPI's
manufacturing facilities with a representative of RPI present in order to
assure compliance with the requirements of this Section.
4.13 Limitation of Liability; Warranties. RPI warrants that the
Ribozymes supplied hereunder shall be in accordance with the Specifications.
RPI's liability for non-conforming Ribozymes supplied hereunder shall be
limited to its obligation to replace them and in no event shall RPI be liable
for damages of any type or nature whatsoever resulting therefrom including any
consequential or incidental damages. EXCEPT AS OTHERWISE EXPRESSLY PROVIDED
HEREIN, RPI MAKES NO REPRESENTATIONS OR WARRANTIES WITH RESPECT TO THE GOODS
SUPPLIED HEREUNDER INCLUDING ANY WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE OR
15
<PAGE> 16
WARRANTIES THAT GOODS WILL BE FREE OF CLAIMS OF INFRINGEMENT BY THIRD PARTIES.
4.14 Product Handling and Distribution. IntelliGene shall identify
Semi-finished Products and Products sold, used in a Licensed Service or
otherwise distributed by it with a vendor lot number that is traceable to the
specific shipment of Ribozymes purchased from RPI hereunder. Twice a calendar
year, upon reasonable notice and at reasonable times, IntelliGene shall permit
RPI to visit IntelliGene's facilities with a representative of IntelliGene
present in order to review IntelliGene's product handling and distribution
procedures and records to assure compliance with the requirements of this
Section. To the extent RPI exercises its right of inspection under section
3.5.5, RPI's inspection hereunder shall take place at the same time.
4.15 Condition Subsequent. Anything herein to the contrary
notwithstanding, the Grant as set forth in paragraph 2.1 shall only be
contingent on IntelliGene's purchase of its Ribozymes from RPI when, where and
for so long as the patents included in the RPI Technology cover the
manufacture, use and sale of the Ribozymes used in the Semi-finished Products,
Products or Licensed Services. It is further understood and agreed that in the
event a source(s) of an alternative to the Ribozymes to be provided by RPI
should become available, which alternative is not covered by the claims of the
patents included in the RPI Technology (i.e., a non-infringing alternative),
IntelliGene shall have the right and option to fulfill its requirements from
such source(s) without affecting any of its rights under this Agreement,
provided RPI shall have the right of first refusal to furnish such Ribozymes on
the terms offered by such alternative source.
ARTICLE 5
Intellectual Property.
5.1 Intellectual Property. All rights in inventions, discoveries,
biological samples and other research materials created during the course of
the Agreement shall be the property of the creating party. Inventorship will
be determined according to U.S. patent law. IntelliGene and RPI shall promptly
disclose to each other in writing each invention and discovery conceived and/or
reduced to practice related to this Agreement. Inventions or discoveries
whether or not patentable which are made solely by an employee or agent of RPI
shall be owned by RPI. Inventions or discoveries whether or not patentable
which are made jointly by an employee or agent of RPI and IntelliGene shall be
jointly owned by RPI and IntelliGene. Inventions or discoveries whether or not
patentable which are made solely by an employee or agent of IntelliGene shall
be owned by IntelliGene. The parties agree to cooperate in the preparation and
execution of documents necessary to effect such patent filings. RPI shall have
the right to control the prosecution of patents for jointly-owned inventions
and, provided both parties agree that patent protection should be sought, each
party shall pay one-half of the reasonable and necessary cost of such patent
prosecution.
16
<PAGE> 17
5.2 Patents. At its sole discretion, IntelliGene may file and
prosecute at its own expense and cost and using counsel of its choosing any
additional patent applications on inventions owned by it and believed necessary
or desirable for the development and commercialization of Semi-finished
Products, Products or Licensed Services. Subject to the confidentiality
obligations of Article 6, RPI shall have the right to review and comment on all
patent filings (including applications and responses to patent office actions),
but only to the extent such patent filings constitute enhancements or
improvements directly and essentially related to the claimed subject matter in
RPI Technology, which were conceived and/or reduced to practice by IntelliGene
under this Agreement, prior to their being filed by IntelliGene, but provided
that such review and/or comment will not delay submission of materials to the
relevant patent office. In addition, in the event that RPI or any of its
Collaborators are developing therapeutics using Ribozymes against particular
Target Diseases, IntelliGene will grant to RPI for use once a therapeutic
indication for such Targeted Disease is approved for marketing in any Major
Market a non-exclusive field of use license, with the right to sublicense to
such Collaborator, to any such IntelliGene patent issued in connection with any
Semi-finished Product, Product or Licensed Service, limited to use in
applications, other than diagnostics, against the particular Target Diseases in
countries where approval to market such therapeutic indication has been
obtained, or is not needed, on such terms as the parties shall agree.
5.3 Enforcement of Rights.
5.3.1 Markings. On or in connection with each Semi-finished
Product, Product or Licensed Service sold by IntelliGene, IntelliGene shall
legibly mark or provide an appropriate notice of RPI's patent rights in a
reasonable form and substance approved in advance by RPI in writing. Upon
request by RPI, IntelliGene shall provide proof, including specimens,
demonstrating that the obligations of this paragraph have been complied with.
5.3.2 Enforcement Against Third Parties. IntelliGene agrees to
promptly notify RPI of known conduct by any third party which may constitute in
the Field a direct or contributory infringement or the inducement of
infringement of RPI's patent or other rights in or to the RPI Technology or
otherwise constituting a violation of any of the RPI Technology. RPI shall
have 180 days after it becomes aware of such infringement within which to cause
such third party to cease its infringement or bring legal action aimed at
causing the third party to cease such infringement. If such infringement is
not terminated within such 180-day period or a legal action is not initiated by
the party having such rights, then IntelliGene shall have the right but not the
obligation to initiate legal action to protect its rights under the licenses
granted by RPI under this Agreement. Each party shall have the right to join or
intervene in any action initiated by the other. If the non-initiating party
does not join or intervene in any action brought, the initiating party shall
pay all costs of bringing and prosecuting the action and shall be entitled to
keep all damages and other amounts recovered. In such case, the non-initiating
party agrees to cooperate with the initiating party to the extent necessary
provided the initiating party pays the non-initiating party's reasonable
expenses and costs. If the non-initiating party joins or intervenes in the
legal action, all damages and other amounts recovered shall be first
17
<PAGE> 18
used to pay each party's costs and expenses of bringing and prosecuting the
legal action and the remainder shall be split evenly by the parties. If, in
such case, the amount recovered is not sufficient to reimburse each party for
its costs and expenses of bringing and prosecuting such legal action, the
parties will split such amount pro rata based upon each party's total costs and
expenses.
5.3.3 Right to Defend. RPI shall have the sole right and
discretion to defend against any claims that the practice of the RPI Technology
infringes the patent or intellectual property rights of any third party,
provided that IntelliGene shall cooperate with RPI in any such defense. In
addition to the foregoing, RPI shall be responsible, in its sole discretion and
at its own expense, for filing, prosecuting, maintaining and renewing its
rights to the RPI Technology.
5.4 Trademarks. All trademarks resulting from the commercialization
of Semi-finished Products, Products or Licensed Services will be filed,
maintained and owned on a worldwide basis by IntelliGene. If IntelliGene
abandons its right to sell any Semi-finished Product, Product or Licensed
Service in any country, RPI shall have the right and license to use these marks
in that country. IntelliGene shall cause RPI's trademark to be placed on Semi-
finished Product, Product or Licensed Service in all countries except those
where it is not permitted to do so by law or regulation and RPI grants
IntelliGene a license to use its trademark for such purposes.
ARTICLE 6
Confidential Information
6.1 Confidentiality. Each party represents that it maintains
policies and procedures designed to prevent unauthorized disclosure of its own
proprietary data and information. All employees, consultants, Collaborators,
Corporate Partners, Alternative Suppliers and other agents of a party to whom
any of the Confidential Information of the other party is disclosed shall have
either (a) executed written agreements in the normal course of their employment
having the effect of prohibiting the disclosure of Confidential Information
except on the terms permitted in this Agreement, or (b) be required to execute
a written agreement specifically prohibiting the disclosure of Confidential
Information, except on the terms permitted in this Agreement.
6.2 Non-disclosure. Except as expressly provided in this Agreement
or as otherwise agreed in writing: (a) IntelliGene agrees not to disclose any
Confidential Information of RPI except to: (i) its employees, consultants
and/or agents who require access to the Confidential Information in order to
further the derivation, development, production, or marketing of any Semi-
finished Product, Product or Licensed Service; or (ii) to permitted
sublicensees under this
18
<PAGE> 19
Agreement, subject to the restrictions and limitations hereof; (b) RPI agrees
not to disclose any Confidential Information of IntelliGene except to (i) its
employees, consultants and/or agents who require access to the Confidential
Information in order to carry out the terms of this Agreement; or (ii) to
permitted sublicensees under this Agreement, subject to the restrictions and
limitations hereof; and (c) each party agrees not to disclose any Confidential
Information of the other party except: (i) that which is required to be
disclosed by any applicable law or by a rule or regulation by any governmental
agency having jurisdiction over a party or (ii) to third parties for purposes
of obtaining financing or in connection with the evaluation or completion of a
business merger or acquisition if such Confidential Information is material in
the opinion of such parties' counsel and its disclosure is reasonably required
for the purposes of the intended transaction; provided, that prior to any such
disclosure, such third parties shall be subject to a written agreement (or, if
written agreements are not customary in any circumstance, otherwise legally
subject to obligations) prohibiting use and disclosure of Confidential
Information as provided herein, and, in each case, such disclosure shall be
limited only to the extent that such disclosure is reasonably necessary under
the circumstances.
6.3 Non-use. Each party agrees that it will use all Confidential
Information received from the other solely for the purposes authorized under
this Agreement.
6.4 Sub-Licensing Agreements. Each party hereto represents that, in
connection with the permitted sublicense of RPI Technology and IntelliGene
Technology under this Agreement, each shall cause all such sublicensees to be
subject to a sub-license agreement containing non-disclosure and non-use
provisions providing substantially the protection of Confidential Information
as contained herein.
6.5 Publications and Other Disclosures. Each party hereto agrees not
to publish the results of research and development work performed with the
other's technology, the right to which was obtained under this Agreement,
without the express written consent of the other which consent shall not be
unreasonably withheld. In the event that either party proposes to make such
public disclosure, it shall send a copy of the information to be disclosed to
the other, and shall allow the producing party sixty (60) (or, in the case of
proposed oral disclosures, thirty (30) days from the date of mailing in which
to object to such disclosure. If no objection is received prior to the
expiration of such sixty (60) or thirty (30) day period, the producing party
shall be free to proceed with the disclosure. If, due to a valid business
reason (including the assertion that such publication discloses Confidential
Information or should be withheld to protect a party's commercial interest
therein) or a reasonable belief by the receiving party that the disclosure
contains subject matter for which a patent should be sought, then prior to the
expiration of such sixty (60) or thirty (30) day period, the receiving party
shall so notify the producing party of the objection, who shall then refrain
from public disclosure of the information unless and until the parties have
agreed through good faith negotiation on the appropriate protections or changes
to the subject matter to be disclosed or other action to be taken. The
determination of authorship for any paper shall be in accordance with accepted
scientific practice.
19
<PAGE> 20
6.6 Exemption. The non-disclosure and non-use provisions of this
Agreement shall not apply to any Confidential Information which:
(a) was already known to a party through means not involving an
obligation of confidentiality at the time it received such information under
this Agreement, and which prior knowledge is reflected in written records of
such party;
(b) is or becomes generally available to the public or otherwise part
of the public domain through means not involving the breach of any obligation
owed to either party under this Agreement or otherwise;
(c) is subsequently disclosed to a party by a third party through means
not involving the breach of any obligation owed to the other party under this
Agreement or otherwise;
(d) is required to be disclosed by regulation, law or court order; or
(e) is information that is independently developed by a party without
the use of any Confidential Information of the other and which independent
development can be demonstrated by contemporaneous documentation.
6.7 Confidential Terms. No public disclosure of the Confidential
Terms of this Agreement (including press releases, advertising, governmental
filings, discussions with lenders, investment bankers, public officials and the
media and other statements made available generally by a party hereto to the
public) will be permitted without prior review by and express consent of each
party prior to such disclosure, and neither party hereto shall disclose such
Confidential Terms to any third party without the prior consent of the other,
which consent shall not be untimely or unreasonably withheld. In addition, if
either party is required to make public disclosure of the Confidential Terms
pursuant to any law, rule or regulation of any government agency, including the
United States Securities and Exchange Commission or any national securities
exchange or self-regulatory organization, then in each case, the disclosing
party shall endeavor to obtain confidential treatment of such Confidential
Terms to the extent reasonably requested by the other party. Notwithstanding
the above, either party may disclose the Confidential Terms of this Agreement
(a) to its sublicensees in the Field under this Agreement, and (b) to third
parties for purposes of obtaining financing or in connection with the
evaluation or completion of a business merger or acquisition if such terms are
material in the opinion of such parties' legal counsel to the purposes of such
intended transaction; provided, however, that prior to such disclosure the
parties to whom such disclosure is made shall be subject to a written agreement
(or, if written agreements are not customary in any circumstance, otherwise
legally subject to obligations) prohibiting use and disclosure of terms as
provided herein. Each party shall limit such disclosure only to the extent
that such disclosure is reasonably necessary under the circumstances.
20
<PAGE> 21
6.8 Equitable Remedies. Each party acknowledges that its obligations
under the non-disclosure and non-use provisions of this Agreement are unique,
and that, if it should default in its obligations under those provisions of
this Agreement, it would be extremely impracticable to measure the resulting
damages to the other party; accordingly, either party, in addition to any other
available rights or remedies, may sue in equity for specific performance or
injunction, as the case may be, and, in such event, each party expressly waives
the defense that a remedy in damages will be adequate to the other party.
6.9 Non-exclusive Remedy. The non-disclosure and non-use provisions
of this Agreement shall not be exclusive of, or serve as a limitation on, any
other rights and remedies that a party may have with respect to its
intellectual property, including any patent, trademark or copyright laws as may
be applicable.
6.10 Application. Each party recognizes that the other party conducts
its business internationally, and that the non-disclosure and non-use
provisions of this Agreement shall apply in every country in the world.
6.11 Survival of Obligations. The non-disclosure and non-use
provisions of this Agreement shall survive termination of this Agreement.
Nothing contained in this Agreement shall be construed as to impose upon either
party a duty to disclose any Confidential Information to the other, except as
may be specifically provided in this Agreement.
6.12 Return of Confidential Information. Except as otherwise
expressly provided for herein, at the term or termination of this Agreement,
each party shall, upon the request and at the option of the producing party,
return to the producing party or destroy all documents or other media
containing Confidential Information produced to it and shall retain no copies.
The return or destruction of the Confidential Information shall be certified by
an officer of the receiving party within thirty (30) days of the request by the
producing party.
ARTICLE 7
Term and Termination
7.1 Term of this Agreement. This Agreement shall remain in effect
until the later of the expiration of the last patent licenses hereunder or ten
(10) years after the first commercial sale of a Semi-finished Product, Product
or Licensed Service by IntelliGene, unless sooner terminated as provided herein
(the "Term of this Agreement").
7.2 Termination by RPI for Cause. In the event of a material breach
of this Agreement by IntelliGene, and except as otherwise specifically set
forth in this Agreement, RPI shall give written notice of such breach to
IntelliGene and IntelliGene shall have sixty (60) days to cure such breach. If
such breach is not cured within sixty (60) days thereof, RPI shall have all
rights and remedies at law and equity to enforce this Agreement and to collect
all amounts
21
<PAGE> 22
due hereunder, and RPI shall have the right to terminate all licenses granted
to IntelliGene under this Agreement and/or to terminate this Agreement. In
addition, in the event that IntelliGene becomes the subject of a voluntary or
involuntary bankruptcy action that is not terminated within ninety (90) days of
filing during the Term of this Agreement, RPI shall have the right to terminate
the licenses granted to IntelliGene under this Agreement and/or to terminate
this Agreement and shall have no duty to pay any amounts hereunder which have
not accrued as of the expiration of such ninety (90) days. All licenses
granted to RPI by IntelliGene under this Agreement shall survive such
termination.
7.3 Termination by IntelliGene for Cause. In the event of a material
breach of this Agreement by RPI, and except as otherwise specifically set forth
in this Agreement, IntelliGene shall give RPI sixty (60) days to cure such
breach. In addition to the immediately foregoing:
7.3.1 Breach Under Article 4. In the event of a breach by RPI
of its obligations under Article 4, IntelliGene's sole remedies will be as
described in Section 4.10 or Section 4.13.
7.3.2 RPI's Bankruptcy. In the event that RPI becomes the
subject of a voluntary or involuntary bankruptcy action that is not terminated
within ninety (90) days of filing during the Term of this Agreement,
IntelliGene shall have the right to terminate the licenses granted to the RPI
under this Agreement and/or to terminate this Agreement and shall have no duty
to pay any amounts hereunder which have not accrued as of the expiration of
such ninety (90) days.
7.3.3 Remedies. Except as set forth herein, in the event of any
breach by RPI that is not cured within sixty (60) days thereof, IntelliGene
shall have all rights and remedies at law and equity to enforce this Agreement
and IntelliGene shall have the right to terminate all licenses granted to RPI
under this Agreement and/or to terminate this Agreement. All licenses granted
to IntelliGene by RPI under this Agreement shall survive such termination.
7.4 Rights in Bankruptcy. All rights and licenses granted under or
pursuant to this Agreement are, and shall otherwise be deemed to be, for
purposes of Section 365(n) of the U.S. Bankruptcy Code (the "Code"), licenses
of right to "intellectual property" as defined under Section 101 of the Code.
Either party, as licensee of such rights under this Agreement, shall retain and
may fully exercise all of its rights and elections under the Code. In the
event of the commencement of a bankruptcy proceeding by or against either party
under the Code, the party hereto which is not a party to such proceeding shall
be entitled to a complete duplicate of (or complete access to, as appropriate)
any such intellectual property and all embodiments of such intellectual
property, and same, if not already in their possession, shall be promptly
delivered to them (i) upon any such commencement of a bankruptcy proceeding
upon their written request therefor, unless the party subject to such
proceeding elects to continue to perform all of their obligations under this
Agreement or (ii) if not delivered under (i) above, upon the rejection of this
Agreement by or on behalf of the party subject to such proceeding upon written
request therefor by a non-subject party.
22
<PAGE> 23
7.5 Rights and Duties Upon Termination. Termination of this
Agreement, for whatever reason, shall not affect any rights or obligations
accrued by either party prior to the effective date of termination. Without
limiting the generality of the foregoing, upon termination of this Agreement:
(a) each party shall immediately cease using the Confidential Information of
the other party and shall return any such Confidential Information, in whatever
form or format it was provided or then currently exists, to such party; and (b)
Articles 1, 4, 5, 6 and 9 shall survive, and any other provisions which by
their terms extend beyond termination.
ARTICLE 8
Representations and Warranties
8.1 Representations and Warranties of RPI. RPI represents and
warrants to IntelliGene as follows:
8.1.1 Organization of RPI. RPI is a corporation duly organized,
validly existing in good standing under the laws of the State of Delaware and
has the corporate power and authority and possesses all governmental,
regulatory and other permits, licenses and authorizations to carry on its
business as now conducted.
8.1.2 Authority Relative to this Agreement. The execution,
delivery and performance of this Agreement by RPI has been duly and effectively
authorized and approved by all necessary corporate action and no other
additional approval or consent is required. The consummation of the
transactions contemplated by this Agreement will not conflict with, violate or
result in a breach of a default in any (a) term, condition or provision of the
certificate or incorporation or bylaws of RPI; (b) any law, rule, regulation,
order of any court or governmental agency; or (c) any agreement, lease,
mortgage, note, contract, commitment of any kind, oral or written, formal or
informal to which RPI is a party.
8.1.2 Patents. The scope and duration of RPI's interest in the
patents and applications listed in Exhibit B is to be governed by the terms of
RPI ownership or existing licenses. RPI has no knowledge that any such license
agreements are under threat of cancellation or suspension for any reason or
that any basis for cancellation or suspension exists. To the best knowledge of
RPI, no act has occurred which would render any such patent, now issued or when
issued, invalid or unenforceable or would render RPI in breach of any license
under these patents. Except for an opposition filed in the European Patent
Office challenging certain of RPI's licensed patents, RPI has received no
notice of claims that any of the patents listed in Exhibit B are invalid or
infringing on the rights of others. Except as set forth above, RPI makes no
representations or warranties as to its rights, power and authority to the RPI
Technology or to grant to IntelliGene the licenses set forth herein or that the
practice of the RPI Technology will not infringe or violate any domestic or
foreign patent or intellectual property rights of a third party.
23
<PAGE> 24
8.2 Representations and Warranties of IntelliGene. IntelliGene
represents and warrants to RPI as follows:
8.2.1 Organization of IntelliGene. IntelliGene is a corporation
duly organized, validly existing in good standing under the laws of Israel and
has the corporate power and authority and possesses all governmental,
regulatory and other permits, licenses and authorizations to carry on its
business as now conducted.
8.2.2 Authority Relative to this Agreement. The execution,
delivery and performance of this Agreement has been duly and effectively
authorized and approved by all necessary corporate action and no other
additional approval or consent is required. The consummation of the
transactions contemplated by this Agreement will not conflict with, violate or
result in a breach of a default in any (a) term, condition or provision of the
certificate of incorporation or bylaws of IntelliGene; (b) any law, rule,
regulation, order of any court or governmental agency; or (c) any agreement,
lease, mortgage, note, contract, commitment of any kind, oral or written,
formal or informal to which IntelliGene is a party.
8.2.3 Patents. The scope and duration of IntelliGene's interest
in the patents and applications listed in Exhibit A is to be governed by the
terms of IntelliGene ownership or existing licenses. IntelliGene has no
knowledge that any such license agreements are under threat of cancellation or
suspension for any reason or that any basis for cancellation or suspension
exists. To the best knowledge of IntelliGene, no act has occurred which would
render any such patent, now issued or when issued, invalid or unenforceable or
would render IntelliGene in breach of any license under these patents.
IntelliGene has received no notice of claims that any of the patents listed in
Exhibit A are invalid or infringing on the rights of others. Except as set
forth above, IntelliGene makes no representations or warranties as to its
rights, power and authority to the IntelliGene Technology or to grant to RPI
the licenses set forth herein or that the practice of the IntelliGene
Technology will not infringe or violate any domestic or foreign patent or
intellectual property rights of a third party.
ARTICLE 9
Miscellaneous Provisions
9.1 Entire Agreement. This Agreement, including the recitals and the
Exhibits hereto, all of which are incorporated by reference herein, constitutes
the entire understanding and agreement between the parties with respect to the
subject matter hereof and supersedes all prior or contemporaneous oral or
written understandings, agreements, statements and/or representations with
respect thereto. This Agreement may not be amended except in a writing
identified as such and executed by both parties.
24
<PAGE> 25
9.2 Assignment. Neither this Agreement nor any interest, right or
obligation hereunder shall be assignable by operation of law or otherwise by
IntelliGene without the prior written consent of RPI or by RPI without the
prior written consent by IntelliGene, which consents will not be unreasonably
withheld, except to a wholly owned subsidiary or to a successor in ownership of
all or substantially all of the business assets of the assigning party relating
to the subject matter of this Agreement if such successor shall expressly
assume in writing the performance of all the terms and conditions of this
Agreement to be performed by the assigning party.
9.3 Non-agency. Nothing contained herein shall be construed or
interpreted to make either party the authorized agent or representative of the
other or shall be construed to create expressly or by implication a partnership
or joint venture relationship between the parties. Neither party is authorized
to enter into an agreement or create any obligation on behalf of the other.
9.4 Non-use of Names. Except as expressly granted in this Agreement,
nothing herein shall confer on any party any right, title or interest in or to
any name, trademark, trade name or logo of the other party. Neither party
shall use the name, trademark, trade name or logo of the other party nor refer
to this Agreement in any press release, advertising, promotional or sales
literature, or otherwise for commercial purposes, without the prior written
consent of such party.
9.5 Compliance with Law. IntelliGene and RPI shall comply fully with
any and all applicable federal and state laws, rules and regulations, local
ordinances and any foreign laws, rules and regulations and shall obtain and
keep in effect all licenses, permits and other governmental approvals incident
to the development, use and commercialization of the rights granted hereunder.
9.6 Force Majeure. No liability to any party shall result from any
delay in performance or nonperformance directly or indirectly caused by
circumstances beyond the control of the party affected, including acts of God,
fire, explosion, flood, earthquake, war, accident, labor trouble or inability
to obtain equipment, material or transportation, so long as the affected party
shall use all reasonable efforts to correct or mitigate the circumstances
causing such delay in performance or such nonperformance.
9.7 Limitation of Liability. IN NO EVENT SHALL EITHER PARTY NOR ANY
OF ITS RESPECTIVE AFFILIATES BE LIABLE TO THE OTHER PARTY OR ANY OF ITS
AFFILIATES FOR SPECIAL, INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES, WHETHER
IN CONTRACT, WARRANTY, TORT, NEGLIGENCE, STRICT LIABILITY OR OTHERWISE,
INCLUDING LOSS OF PROFITS OR REVENUE.
25
<PAGE> 26
9.8 Indemnification. Except as otherwise provided herein, each party
shall indemnify and hold the other (including its agents, employees and
directors) harmless from and against any and all liability, damage, loss, cost
or expense (including reasonable attorney's fees) arising out of third-party
claims or suits related to activities conducted under this Agreement, but only
to the extent such claims or suits result from the negligence or willful
conduct of the party from whom indemnification is sought. To the extent any
claim or suit results from the activities of both parties, indemnification
shall be awarded only to the extent of their comparative contribution to the
claim or suit. Upon the assertion of any claim or suit, the party seeking
indemnification shall promptly notify the other and shall not settle that claim
or suit without the prior written consent of the party against whom
indemnification is sought. This paragraph will survive the termination of this
Agreement.
9.9 Arbitration. Any controversy concerning the interpretation of
this Agreement, or any breach thereof, shall be first referred to the
Presidents of RPI and IntelliGene for resolution. To the extent such
controversy is based upon a scientific disagreement between the parties, the
Presidents may select a neutral scientific expert who may advise the parties on
a resolution. If the Presidents cannot resolve such controversy, either party
may request that such controversy be settled by final and binding arbitration
in accordance with the then existing rules of the American Arbitration
Association, and judgment upon the award rendered by the arbitrators may be
entered in any court having jurisdiction over the party against whom the award
is entered. The arbitration shall be conducted in the Boulder, Colorado area.
Any such arbitration proceeding shall be heard before a panel of three
arbitrators, one to be designated by each party, and a third to be agreed upon
by the other two; provided, however, that if the two-party appointed
arbitrators are unable to agree on a third arbitrator within thirty (30) days
after the second arbitrator is appointed, the third arbitrator shall be
selected by the American Arbitration Association. The arbitrators may award
any remedy provided under this Agreement or otherwise available in law or in
equity and shall award to the prevailing party and assess against the other the
costs, arbitration fees (including the fees of the American Arbitration
Association and the arbitrators) and reasonable attorneys' fees incurred by the
prevailing party in connection with the dispute.
9.10 Notices. Any payment, notice or other communication required or
permitted to be given to any party under this Agreement shall be given in
writing and shall be delivered by hand, by registered or certified mail,
postage prepaid and return receipt requested, by telex, by facsimile
transmission or by overnight delivery service, addressed to the other party at
the following address or such other address as may be designated by such party
by notice from time to time:
Ribozyme Pharmaceuticals, Inc.
2950 Wilderness Place
Boulder, CO 80301
Attention: President
26
<PAGE> 27
Copy to:
Herbert H. Davis III
Rothgerber, Appel, Powers & Johnson LLP
1200 17th Street, Suite 3000
Denver, CO 80202
IntelliGene, Ltd.
44 Codman Drive
Sudbury, MA 01776
Attention: President
Copy to:
Robert B. Nicholas
McDermott, Will & Emery
1850 K. Street, N.W.
Washington, DC 20006
Any notice or communication given in conformity with this paragraph shall be
deemed effective when received by the addressee, if delivered by hand, by
telex, by facsimile or by overnight delivery service, and three days after
mailing, if mailed.
9.11 Non-waiver. No waiver of any right under this Agreement shall be
deemed effective unless contained in a writing signed by the party charged with
such waiver. The waiver of any breach or failure to perform any provision of
this Agreement by either party shall not be deemed to be a waiver of any future
breach or failure to perform or of the provision itself.
9.12 Governing Law. This Agreement shall be governed by and construed
in accordance with the substantive laws of the State of Colorado and, to the
extent necessary, by the laws and regulations of the United States of America
relating, for example, to patents and the licensing and regulation of
pharmaceutical products.
9.13 Captions; Construction. The captions provided in this Agreement
are for convenience only and will not affect its construction or
interpretation. Unless otherwise expressly provided, all references to
"Section" or "Sections" refer to the corresponding Section or Sections of this
Agreement. Unless otherwise expressly provided, the word "including" does not
limit the preceding words or terms.
9.14 Severability. If any provision of this Agreement is held by a
court of competent jurisdiction to be invalid, illegal or unenforceable, the
remaining provisions of this Agreement shall continue in full force without
being impaired or invalidated in any way, to the maximum extent possible
consistent with the original intent of the parties.
27
<PAGE> 28
9.15 Representation by Counsel. The parties acknowledge that each of
them has been represented by counsel in connection with the negotiation and
drafting of this Agreement and that no rule of strict construction should be
applied to either of them as the drafter of all or any part of this Agreement.
9.16 Further Assurances. Each party agrees to execute such further
documents and do such other acts as may be necessary or desirable to carry out
the intent and purpose of this Agreement.
9.17 Counterparts. This Agreement may be executed in counterparts,
which shall be as effective as this Agreement when delivered and exchanged
between the parties.
9.19 Publicity Announcements. All publicity, press releases and other
announcements relating to this Agreement, and the transactions contemplated
hereby, shall be reviewed and approved in advance by both parties.
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement
as of the date first written above.
INTELLIGENE
BY: /s/ James C. Richards
President
RIBOZYME PHARMACEUTICALS, INC.
BY: /s/ Ralph E. Christoffersen
President
28
<PAGE> 29
Exhibit A - IntelliGene Patents and Patent Applications
[ ]
29
<PAGE> 30
Exhibit B - RPI Patents
CECH PATENTS - US
<TABLE>
<CAPTION>
- --------------------------------------------------------------------------------
TITLE/INVENTION PATENT NO. LICENSER/OWNER
- --------------------------------------------------------------------------------
<S> <C> <C> <C>
1 RNA Ribozyme Polymerases, US 4,987,071 U.S. Biochemical
Dephosphorylases, Restriction Corporation
Endoribonucleases and Methods
- --------------------------------------------------------------------------------
2 RNA Ribozyme Polymerases, and US 5,037,746 U.S. Biochemical
Methods Corporation
- --------------------------------------------------------------------------------
3 RNA Ribozyme Polymerases, US 5,093,246 U.S. Biochemical
Dephosphorylases, Restriction Corporation
Endoribonucleases and Methods
- --------------------------------------------------------------------------------
4 RNA Ribozyme Restriction US 5,116,742 U.S. Biochemical
Endoribonucleases and Methods Corporation
- --------------------------------------------------------------------------------
5 RNA Ribozyme Which Cleaves US 5,354,855 U.S. Biochemical
Substrate RNA Without Formation Corporation
of a Covalent Bond
- --------------------------------------------------------------------------------
6 RNA Ribozyme Polymerases, US 5,591,610 U.S. Biochemical
Dephosphorylases, Restriction Corporation
Endoribonucleases and Methods
- --------------------------------------------------------------------------------
7 Site Specific Cleavage of US 5,180,818 U.S. Biochemical
Single-Stranded DNA Corporation
- --------------------------------------------------------------------------------
</TABLE>
CECH PATENTS - FOREIGN
<TABLE>
<S> <C> <C> <C>
- --------------------------------------------------------------------------------
1 RNA Ribozyme Polymerases, European Patent U.S. Biochemical
Dephosphorylases, Restriction No. 0 291533 B1 Corporation
Endoribonucleases and Methods
- --------------------------------------------------------------------------------
2 RNA Ribozyme Polymerases, Japanese Patent U.S. Biochemical
Dephosphorylases, Restriction No. 2530906 Corporation
Endoribonucleases and Methods
- --------------------------------------------------------------------------------
3 Site Specific Cleavage of Australian Patent U.S. Biochemical
Single-Stranded DNA No. 645083 Corporation
- --------------------------------------------------------------------------------
4 Ribozyme Inhibitors Australian Patent U.S. Biochemical
No. AU 644115 Corporation
- --------------------------------------------------------------------------------
5 Ribozyme Inhibitors European Patent U.S. Biochemical
No. 0 497 820 B1 Corporation
- --------------------------------------------------------------------------------
</TABLE>
30
<PAGE> 31
Exhibit B - RPI Patents
ADDITIONAL PATENTS - U.S.
<TABLE>
<S> <C> <C> <C>
- --------------------------------------------------------------------------------
1 Assay for Ribozyme Target US 5,525,468 RPI
Site Accessibility
- --------------------------------------------------------------------------------
2 Permeability Enhancers US 5,583,020 RPI
for Ionic Therapeutic
Polynucleotides
- --------------------------------------------------------------------------------
3 Enzymatic RNA Targeted US 5,599,704 RPI
Against erbB-2/neu RNA
- --------------------------------------------------------------------------------
4 Enzymatic RNA Targeted US 5,599,706 RPI
Against apo (a) RNA
- --------------------------------------------------------------------------------
</TABLE>
ADDITIONAL PATENTS - FOREIGN
<TABLE>
<S> <C> <C> <C>
- --------------------------------------------------------------------------------
1 Modified Ribozymes Australian Patent Max-Planck-
No. 649074 Gesellschaft
- --------------------------------------------------------------------------------
2 Modified Ribozymes European Patent Max-Planck-
No. 0 552 178 B1 Gesellschaft
- --------------------------------------------------------------------------------
</TABLE>
31
<PAGE> 32
Exhibit C - Target Diseases
32
