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U.S. SECURITIES AND EXCHANGE COMMISSION
Washington, D.C. 20549
FORM 10-KSB/A
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(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
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Commission file number 0-27914
RIBOZYME PHARMACEUTICALS, INC.
(Exact Name of Small Business Issuer as Specified in Its Charter)
---------------
DELAWARE 34-1697351
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(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 September 15, 1997, was approximately $16,403,959.
The number of shares of the Company's common stock, par value $.01 per share,
outstanding as of September 15, 1997, was 7,203,506.
DOCUMENTS INCORPORATED BY REFERENCE:
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DOCUMENT PART(S) INTO WHICH INCORPORATED
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Proxy Statement to be used in connection with the Annual Part III
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.
</TABLE>
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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 STATEMENTSPAGE
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<S> <C>
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
</TABLE>
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.
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2. EXHIBITS
<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
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<S> <C> <C>
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.
</TABLE>
2
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<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
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<S> <C> <C>
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.
</TABLE>
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<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
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<S> <C> <C>
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 * -- 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 (3) -- Amended and Restated Sublicense Agreement, dated November 20, 1996, between the Company and
United States Biochemical Corporation.
10.42 * -- 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.
</TABLE>
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<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
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<S> <C> <C>
10.44 (3) -- Stock Subscription Agreement, dated September 1996, between the Company and University of
Research Corporation.
10.45 (3) -- Stock Subscription Agreement, dated November 20, 1996, between the Company and United States
Biochemical Corporation.
10.46 * -- 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 * -- 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.
</TABLE>
* The Company has applied for confidential treatment for certain portions
of these exhibits.
(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.
(B) REPORTS ON FORM 8-K
No reports on Form 8-K were filed during the quarter ended December 31, 1996.
5
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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: September 18, 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.
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SIGNATURE TITLE DATE
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/s/ Ralph E. Christoffersen Chief Executive Officer and President (Principal September 18, 1997
--------------------------------------- Executive Officer)
Ralph E. Christoffersen, Ph.D.
/s/ Lawrence E. Bullock Vice President, Administration and September 18, 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 September 18, 1997
---------------------------------------
David T. Morgenthaler
/s/ Jeremy C. Cook Director September 18, 1997
---------------------------------------
Jeremy C. Cook
/s/ Anthony B. Evnin Director September 18, 1997
---------------------------------------
Anthony B. Evnin, Ph.D.
/s/ Charles M. Hartman Director September 18, 1997
---------------------------------------
Charles M. Hartman
/s/ Anders Wiklund Director September 18, 1997
---------------------------------------
Anders Wiklund
</TABLE>
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EXHIBIT INDEX
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<CAPTION>
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
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<S> <C> <C>
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.
</TABLE>
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<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
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<S> <C> <C>
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.
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.
</TABLE>
8
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<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
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<S> <C> <C>
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 * -- 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 (3) -- Amended and Restated Sublicense Agreement, dated November 20, 1996, between the Company and
United States Biochemical Corporation.
10.42 * -- 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.
</TABLE>
9
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<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION OF DOCUMENT
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<S> <C> <C>
10.44 (3) -- Stock Subscription Agreement, dated September 1996, between the Company and University of
Research Corporation.
10.45 (3) -- Stock Subscription Agreement, dated November 20, 1996, between the Company and United States
Biochemical Corporation.
10.46 * -- 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 * -- 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.
</TABLE>
* The Company has applied for confidential treatment for certain portions
of these exhibits.
(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.
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
1
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
<PAGE> 2
shares of the Common Stock, $.01 par value, of RPI ("Common Stock") to USB, as
set forth therein; and
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
2
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
<PAGE> 3
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 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
3
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
<PAGE> 4
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.
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. Section 200 et seq. and 37 CFR Section 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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
<PAGE> 5
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 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.
5
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
<PAGE> 6
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 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
6
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
<PAGE> 7
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 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.
7
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
<PAGE> 8
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 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.
8
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
<PAGE> 9
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 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:
9
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
<PAGE> 10
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
10
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
<PAGE> 11
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
11
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
<PAGE> 12
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.
12
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
<PAGE> 13
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
13
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
<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>
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Seurities Exhange Act of 1934, and have been filed
separately with the Commission.
<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
1
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 5
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:
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
2
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 6
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-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
3
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 7
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 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
4
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 8
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.
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,
5
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 9
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:
(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:
6
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 10
(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 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
7
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 11
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."
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
8
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 12
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 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
9
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 13
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.
10
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
12
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 16
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 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.
13
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 17
(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 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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
15
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 19
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(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) .
16
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 20
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.
(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.
17
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 21
(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.
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.
18
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 22
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 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,
19
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 23
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 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
20
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 24
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.
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:
21
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 25
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
22
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 26
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.
23
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 27
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.
24
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 28
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
25
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 29
EXHIBIT A
What is claimed:
[ ]
26
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 30
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 (Division of RNA Polymerase Dephosphorylases
U.S. Pat. No. 4,987,071) Restriction
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 (Continuation- RNA Ribozyme Polymerases and Methods
in-part of
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.
27
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 31
EXHIBIT C
Patented Substances
[ ]
28
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
8
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 9
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.
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
9
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 10
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 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.
10
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 11
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 excess of
those to which it would be entitled if all license or option fees, royalties
and/or
11
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 12
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.
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.
12
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 13
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 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.
13
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 14
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.
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:
14
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 15
(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 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;
15
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 16
(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 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.
16
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 17
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 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
17
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 18
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.
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
18
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 19
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
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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
20
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 21
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. 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.
21
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 22
(d) 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
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
22
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 23
under the Prior License Agreement, and no such obligations have accrued
thereunder as of the date hereof.
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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 28
EXHIBIT A
What is claimed:
[ ]
28
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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 (Division of U.S. RNA Polymerase Dephosphorylases
Pat. No. 4,987,071) Restriction
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 (Continuation-in- RNA Ribozyme Polymerases and Methods
part of 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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 30
EXHIBIT C
PATENTED SUBSTANCES
[ ]
30
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<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,
2
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 3
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.
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 [ ]
3
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 4
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 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.
4
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 5
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.
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
5
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 6
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.
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
6
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 7
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.
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 [ ]
7
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 8
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.
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
8
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 9
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 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.
9
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 10
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
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.
10
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 11
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 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.
11
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 12
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, 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.
12
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 13
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 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
13
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 14
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 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
14
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 15
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 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.
15
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 16
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 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.
16
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 17
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.
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
17
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 18
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 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.
18
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 19
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 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
19
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 20
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.
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.
20
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 21
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.
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
21
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 22
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 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
22
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 23
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.
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:
23
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 24
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.
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
24
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 25
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.
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.
25
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 26
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.
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.
26
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 27
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
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
27
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 28
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.
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.
28
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 29
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
29
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 30
Exhibit A - IntelliGene Patents and Patent Applications
Date: October 24, 1996
TO WHOM IT MAY CONCERN
Dear Sirs,
Re: IntelliGene's Patent Applications Portfolio
Our Ref: G/IntelliGene
Our office is handling all of IntelliGene's patent applications in
Israel and abroad. Currently, all of IntelliGene's applications are still
pending.
The following is a brief summary of IntelliGene's patent applications,
specifying their subject matter and legal status. Group I, Group II and Group
III hereinbelow refer to three groups of corresponding applications. Within
each group all applications are essentially identical. Applications IV, V and
VI refer to single applications.
Group I: Detection of Nucleic Acid Sequences
[ ]
Status: Israel: IL 105895 - (priority application): Last Official
Communication of June 17, 1996, raised only formal issues, which were dealt
with. Notification of Allowance is expected by December 1996 - February 1997,
and grant three months thereafter (provided no opposition is filed).
International: PCT Application US 94/06039 - the Written Opinion by
the International Examiner, which serves as a recommendation for all designated
countries was extremely favorable, withdrawing all objections of prior art and
allowing a very broad scope of protection.
Canada: 2164320 - pending. No Official Communication issued.
Europe: 94919280 - pending. No Official Communication issued.
U.S.: 08/556940 - pending. No Official Communication issued.
30
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 31
Group II: Ribozymes
[ ]
International Application PCT/96/062380 - a Search Report was issued
citing only Innovir's Application WO 94/1383 and Intelligene's prior
application of Group I. Preliminary Examination is expected by November 1996.
Group III: Improvement in a method for the detection of nucleic acid
sequences
Subject matter: Very similar to the invention of Group I, the
difference being:
(a) [ ]
(b) [ ]
(c) [ ]
Status: Israel: IL 95403 - pending. No Official Communication
issued.
International: PCT US 95/111957 - Search Report was issued citing
U.S. 5,369,003 and WO 91/04350 (Cambridge Biotech Corporation). Preliminary
examination expected by December 1996 - January 1997.
Group IV: Cleavage of mismatched hybrids
[ ]
Status: Israel: IL I09906 - pending. No Official Communication
issued.
Group V: Detecting nucleic acid sequences by using a series of probes
[ ]
Status: Israel IL 102486 - pending. No Official Communication
issued. End of priority year - December 8, 1996.
Group VI: Precursor ribozymes prepared by in vitro evolution
[ ]
Status: Israel: IL 102486 - pending. No Official Communication
issued. End of priority year - August 26, 1996.
31
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 32
Our office is also handling a U.S. Application No. 08/399319 in the
name of Dr. Guido Krupp. IntelliGene maintains certain rights associated with
this application.
[ ]
Status U.S. Application 08/399379 - The application is currently
under examination. The Examiner requires to file a continuation in part (CIP).
32
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 33
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 Methods US 5,037,746 U.S. Biochemical
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 Substrate RNA US 5,354,855 U.S. Biochemical
Without Formation of a Covalent Bond Corporation
- ----------------------------------------------------------------------------------------------------
6 RNA Ribozyme Polymerases, US 5,591,610 U.S. Biochemical
Dephosphorylases, Restriciton Corporation
Endoribonucleases and Methods
- ----------------------------------------------------------------------------------------------------
7 Site Specific Cleavage of Single- US 5,180,818 U.S. Biochemical
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 Single- Australian Patent U.S. Biochemical
Stranded DNA
- ----------------------------------------------------------------------------------------------------
4 Ribozyme Inhibitors Australian Patent U.S. Biochemical
- ----------------------------------------------------------------------------------------------------
5 Ribozyme Inhibitors European Patent U.S. Biochemical
- ----------------------------------------------------------------------------------------------------
</TABLE>
33
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 34
Exhibit B - RPI Patents
ADDITIONAL PATENTS - U.S.
<TABLE>
- ----------------------------------------------------------------------------------------------------
<S> <C> <C> <C>
1 Assay for Ribozyme Target Site US 5,525,468 RPI
Accessibility
- ----------------------------------------------------------------------------------------------------
2 Permeability Enhancers for Ionic US 5,583,020 RPI
Therapeutic Polynucleotides
- ----------------------------------------------------------------------------------------------------
3 Enzymatic RNA Targeted Against US 5,599,704 RPI
erbB-2/neu RNA
- ----------------------------------------------------------------------------------------------------
4 Enzymatic RNA Targeted Against US 5,599,706 RPI
apo (a) RNA
- ----------------------------------------------------------------------------------------------------
</TABLE>
ADDITIONAL PATENTS - FOREIGN
<TABLE>
- ----------------------------------------------------------------------------------------------------
<S> <C> <C> <C>
1 Modified Ribozymes Australian Patent Max-Planck-Gesellschaft
No. 649074
- ----------------------------------------------------------------------------------------------------
2 Modified Ribozymes European Patent Max-Planck-Gesellschaft
No. 0 552 178 B1
- ----------------------------------------------------------------------------------------------------
</TABLE>
34
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
<PAGE> 35
Exhibit C - Target Diseases
35
Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934 and have been filed
separately with the Commission.
