<PAGE>
- - -----------------------------------------------------------------------------
- - -----------------------------------------------------------------------------
SECURITIES AND EXCHANGE COMMISSION
Washington, D.C. 20549
_____________________________
FORM 10-Q
(Mark one)
X Quarterly report pursuant to Section 13 or 15(d) of the Securities
- - --- Exchange Act of 1934. For the quarterly period ended March 31, 1996.
or
Transition report pursuant to Section 13 or 15(d) of the Securities
- - --- Exchange Act of 1934. For the transition period from ___________ to
___________.
Commission File Number:
0-24814
_____________________________
SUGEN, INC.
(Exact name of registrant as specified in its charter)
DELAWARE 13-3629196
(State or other jurisdiction of (I.R.S. Employer
incorporation or organization) Identification No.)
515 GALVESTON DRIVE, REDWOOD CITY, CALIFORNIA 94063
(address of principal executive offices)
(415) 306-7700
(Registrant's telephone number, including area code)
_____________________________
INDICATE BY CHECK MARK WHETHER THE REGISTRANT (1) HAS FILED ALL REPORTS
REQUIRED TO BE FILED BY SECTION 13 OR 15(D) OF THE SECURITIES EXCHANGE ACT OF
1934 DURING THE PRECEDING 12 MONTHS (OR FOR SUCH SHORTER PERIOD THAT THE
REGISTRANT WAS REQUIRED TO FILE SUCH REPORTS), AND (2) HAS BEEN SUBJECT TO
FILING REQUIREMENTS FOR THE PAST 90 DAYS. YES X NO
----- -----
INDICATE THE NUMBER OF SHARES OUTSTANDING OF EACH OF THE ISSUER'S CLASSES OF
COMMON STOCK, AS OF THE LATEST PRACTICABLE DATE. COMMON STOCK $.01 PAR
VALUE; 10,496,327 SHARES OUTSTANDING AT APRIL 30, 1996.
This report on form 10-Q, including all exhibits. The exhibit index is
located on page 12 of this report.
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- - -----------------------------------------------------------------------------
1
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SUGEN, INC.
INDEX
PAGE NO.
--------
PART I. FINANCIAL INFORMATION
Item 1. Financial Statements and Notes
Condensed Balance Sheets - March 31, 1996
and December 31, 1995 3
Statements of Operations - for the three months
ended March 31, 1996 and 1995 4
Condensed Statements of Cash Flows - for the three
months ended March 31, 1996 and 1995 5
Notes to Financial Statements 6
Item 2. Management's Discussion and Analysis of Financial
Condition and Results of Operations 7
PART II. OTHER INFORMATION
Item 6. Exhibits and Reports on Form 8-K 10
Signatures 11
Exhibit Index 12
2
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PART I. FINANCIAL INFORMATION
Item 1. FINANCIAL STATEMENTS AND NOTES
SUGEN, INC.
CONDENSED BALANCE SHEETS
(IN THOUSANDS)
MARCH 31, DECEMBER 31,
1996 1995
------------ ------------
ASSETS (unaudited)
Current assets:
Cash and cash equivalents $ 6,193 $ 8,226
Short-term investments 40,411 45,027
Prepaid expenses and other
current assets 1,183 1,034
------------ ------------
Total current assets 47,787 54,287
Property and equipment, net 4,489 4,513
Other assets 646 443
------------ ------------
$ 52,922 $ 59,243
------------ ------------
------------ ------------
LIABILITIES AND STOCKHOLDERS' EQUITY
Current liabilities:
Accounts payable $ 1,182 $ 652
Accrued liabilities 4,456 3,587
Deferred revenue 5,268 6,558
Capital lease obligations -
current portion 1,429 1,354
------------ ------------
Total current liabilities 12,335 12,151
Capital lease obligations -
non-current portion 3,585 3,651
Commitments
Stockholders' equity:
Common stock 79,382 81,802
Deferred compensation (350) (397)
Accumulated deficit (42,030) (37,964)
------------ ------------
Total stockholders' equity 37,002 43,441
------------ ------------
$ 52,922 $ 59,243
------------ ------------
------------ ------------
See accompanying notes.
3
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SUGEN, INC.
STATEMENTS OF OPERATIONS
(IN THOUSANDS, EXCEPT PER SHARE AMOUNTS)
(UNAUDITED)
THREE MONTHS ENDED
MARCH 31,
------------------
1996 1995
-------- -------
Contract revenue (includes
amounts from related party) $3,479 $3,427
Costs and expenses:
Research and development 6,615 4,955
General and administrative 1,380 1,205
-------- -------
Total costs and expenses 7,995 6,160
-------- -------
Operating loss (4,516) (2,733)
Other income and expenses:
Interest income 690 414
Interest expense (180) (105)
Gain on sale of investment in
Selectide Corporation - 1,006
-------- -------
Other income, net 510 1,315
-------- -------
Net loss $(4,006) $(1,418)
-------- -------
-------- -------
Net loss per share $(0.38) $(0.16)
-------- -------
-------- -------
Shares used in computing net loss
per share 10,473 8,602
-------- -------
-------- -------
See accompanying notes.
4
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SUGEN, INC.
CONDENSED STATEMENTS OF CASH FLOWS
INCREASE (DECREASE) IN CASH AND CASH EQUIVALENTS
(IN THOUSANDS)
(UNAUDITED)
<TABLE>
<CAPTION>
THREE MONTHS ENDED
MARCH 31,
----------------------
1996 1995
----------- ---------
<S> <C> <C>
CASH FLOWS FROM OPERATING ACTIVITIES
Net loss $ (4,006) $ (1,418)
Adjustments to reconcile net loss to net cash used in
operating activities:
Depreciation and amortization 506 347
Deferred revenue (1,290) (3,448)
Gain on sale of investment in Selectide Corporation - (1,006)
Changes in operating assets and liabilities:
Prepaid expenses and other current assets (149) (152)
Other assets (203) (44)
Accounts payable 530 (502)
Accrued liabilities 869 377
----------- ---------
Net cash provided by (used in) operating activities (3,743) 1,050
----------- ---------
CASH FLOWS FROM INVESTING ACTIVITIES
Sales/maturities (purchases) of short-term investments, net 4,556 (7,318)
Purchases of property and equipment (435) (194)
Proceeds from sale of investment in Selectide Corporation - 2,923
----------- ---------
Net cash provided by (used in) investing activities 4,121 (4,589)
----------- ---------
CASH FLOWS FROM FINANCING ACTIVITIES
Proceeds from issuance of common stock, net 78 12,439
Repurchase of common stock (2,698) (1,429)
Proceeds from issuance of warrants 200 -
Proceeds from lease financing of property and equipment 332 191
Payments under capital lease obligations (323) (192)
----------- ---------
Net cash provided by (used in) financing activities (2,411) 11,009
----------- ---------
Net increase (decrease) in cash and cash equivalents (2,033) 7,470
Cash and cash equivalents at beginning of period 8,226 12,599
----------- ---------
Cash and cash equivalents at end of period $ 6,193 $ 20,069
----------- ---------
----------- ---------
</TABLE>
See accompanying notes.
5
<PAGE>
SUGEN, INC.
NOTES TO FINANCIAL STATEMENTS
1. BASIS OF PRESENTATION
The financial information at March 31, 1996 and for the three months
ended March 31, 1996 and 1995 is unaudited but includes all adjustments
(consisting only of normal recurring adjustments) which SUGEN, Inc. (the
"Company") considers necessary for a fair presentation of the financial
position at such date and the operating results and cash flows for those
periods. The accompanying condensed financial statements should be read
in conjunction with the financial statements and notes thereto for the
year ended December 31, 1995 included in the Company's Form 10-K, as
amended. The results of the Company's operations for any interim period
are not necessarily indicative of the results of the Company's
operations for a full fiscal year.
2. RESEARCH AND DEVELOPMENT COLLABORATION AGREEMENT
In January 1996, the Company and Amgen Inc. reached an agreement to
conclude their research collaboration one year earlier than originally
planned due to their changed research priorities over the three years.
Under the terms of this wind-down agreement, Amgen made a final cash
payment to the Company of $2.5 million (of which $1.1 million was advanced
in December 1995) and forgave certain advance payments made to the Company
for future research work which will be recorded as wind-down revenue in
1996. Amgen also granted back to SUGEN exclusive worldwide rights to 22
proprietary signal transduction targets discovered in the course of the
collaboration, subject to royalty payments back to Amgen with respect to
potential future product sales. In addition, in January 1996 the Company
redeemed 235,000 shares of its Common Stock from Amgen at a price of $11.48
per share, thereby reducing Amgen's current holdings of the Company's
Common Stock to 152,878 shares. Amgen also purchased in January 1996 for
$200,000 a seven-year warrant to purchase 200,000 shares of Common Stock at
an exercise price of $15.50 per share.
6
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SUGEN, INC.
ITEM 2. MANAGEMENT'S DISCUSSION AND ANALYSIS
OF FINANCIAL CONDITION AND RESULTS OF OPERATIONS
IN ADDITION TO HISTORICAL INFORMATION CONTAINED HEREIN, THE FOLLOWING
DISCUSSION CONTAINS FORWARD-LOOKING STATEMENTS THAT INVOLVE RISKS AND
UNCERTAINTIES. THE COMPANY'S ACTUAL RESULTS COULD DIFFER SIGNIFICANTLY FROM THE
RESULTS DISCUSSED IN THE FORWARD-LOOKING STATEMENTS. FACTORS THAT COULD CAUSE OR
CONTRIBUTE TO SUCH DIFFERENCES INCLUDE THE FACTORS DISCUSSED BELOW AS WELL AS
THE FACTORS DISCUSSED IN THE COMPANY'S FORM 10-K FOR THE YEAR ENDED DECEMBER 31,
1995, AS AMENDED.
OVERVIEW
SUGEN was founded in July 1991 to discover and develop small molecule drugs
that target specific cellular signal transduction pathways. These pathways have
been implicated in diseases such as cancer and diabetes as well as in
dermatologic, immunologic, cardiovascular and neurologic disorders. To date,
substantially all of the Company's revenue has been pursuant to collaborations
with Zeneca Limited ("Zeneca"), ASTA Medica Aktiengesellschaft ("ASTA") and
Amgen Inc. ("Amgen"). The Company intends to pursue its drug discovery programs
independently and in collaboration with other pharmaceutical companies.
In December 1995, the Company established an oncology product development
collaboration with ASTA. The Company received a $4.0 million technology set-up
fee and will receive additional fees upon the achievement of specified
milestones as well as additional consideration in the form of contract services
for non-collaboration work. In addition, ASTA purchased 431,137 shares of SUGEN
Common Stock for $9.0 million, or $20.88 per share. In January 1996, the Company
and Amgen terminated their research collaboration one year prior to the
scheduled expiration. In connection with the termination, Amgen paid SUGEN $2.5
million, forgave amounts previously advanced, and purchased from SUGEN for
$200,000 a warrant for 200,000 shares of Common Stock with an exercise price of
$15.50 per share. In addition, SUGEN repurchased 235,000 of the 387,878 shares
of SUGEN Common Stock held by Amgen at $11.48 per share. The termination
arrangement further provides that the Company will make royalty and certain
other payments to Amgen in the event that designated potential products are
developed and marketed.
In April 1996, the Company established a second multi-project
Collaborative Research and Development Agreement ("CRADA") with the National
Cancer Institute ("NCI") for the application of SUGEN's proprietary
transcript imaging technology, in order to identify the differences in
expression patterns of signal transduction genes that characterize each of
the sixty tumor cell lines which constitute the NCI's screening panel.
Interesting lead compounds from the NCI's collection will be tested in
SUGEN's target-specific signal transduction assays, and lead compounds from
SUGEN also will be tested against the NCI panel. SUGEN will have the option
to license discoveries made through this process, for adoption into SUGEN's
drug discovery programs.
The Company has not been profitable since inception and expects to incur
substantial losses for the foreseeable future, primarily due to the expansion of
its research and development programs, including preclinical studies and
clinical trials. The Company expects that losses will fluctuate from quarter to
quarter and that such fluctuations may be substantial. As of March 31, 1996, the
Company's accumulated deficit was $42.0 million.
RESULTS OF OPERATIONS
Revenues for the three months ended March 31, 1996 and 1995 were $3.5
million and $3.4 million, respectively. Revenues for the three months ended
March 31, 1996 included contract revenue from the Zeneca collaboration, and
the partial recognition of both the $4.0 million technology set-up fee
received in connection with the ASTA collaboration and $4.3 million wind-down
fee associated with the Amgen termination. The Company recognizes the revenue
from technology set-up fees and wind-down fees as the related activities are
7
<PAGE>
performed, generally over a twelve-month period. In connection with the
termination of the Amgen agreement, the Company will recognize $4.3 million
in revenue over the course of 1996. Thereafter, the Company will not
recognize any additional revenue under the Amgen collaboration.
Research and development expenses for the three months ended March 31,
1996 and 1995 were $6.6 million and $5.0 million, respectively. The increase
during 1996 was primarily due to the expenses associated with additional
personnel committed to the Company's research and development programs. In
addition, the progression of clinical activities, including Phase I studies
of the Company's lead anti-cancer compound, SU101, and the advancement of
multiple programs through preclinical development contributed to higher
expenses during 1996. The Company expects that its research and development
expenses will continue to grow significantly during future years due to the
hiring of personnel, additional preclinical studies, the progression of SU101
clinical studies, the initiation of new clinical trials and pursuant to
requirements under the Company's collaborations.
General and administrative expenses for the three months ended March 31,
1996 and 1995 were $1.4 million and $1.2 million, respectively. The increase
was primarily due to additional administrative staffing and the associated
recruiting and relocation expenses. The Company expects that its general and
administrative expenses will continue to increase in order to support the
Company's research and development efforts. In connection with the filing of
a registration statement relating to a proposed follow-on public offering,
the Company has incurred offering related costs which have been deferred as a
result of the Company's determination to postpone the offering indefinitely.
Although amounts are not significant through March 31, 1996, total offering
related costs presently are anticipated to approximate $600,000.
Interest income for the three months ended March 31, 1996 and 1995 was
$690,000 and $414,000, respectively. The increase was due to higher
investment balances arising primarily from issuances of the Company's capital
stock. Interest expense for the three months ended March 31, 1996 and 1995
were $180,000 and $105,000, respectively. This increase was primarily due to
the Company's continued use of capital lease financing for property
improvements and equipment related to the expansion of its facilities. A $1.0
million gain on the sale of the Company's investment in Selectide Corporation
was included in other income during 1995. The Company expects that interest
expense will continue to increase in 1996 due to the continued use of capital
lease financing for equipment and facility improvements.
LIQUIDITY AND CAPITAL RESOURCES
The Company had cash, cash equivalents and short-term investments of
approximately $46.6 million at March 31, 1996 compared with approximately
$53.3 million at December 31, 1995. This decrease in cash and investments
during the three months ended March 31, 1996 was primarily due to the
redemption of the Company's Common Stock from Amgen as discussed herein,
combined with the net loss for the quarter.
Through March 31, 1996, the Company's principal sources of financing
were its initial public offering of Common Stock, placements of the Company's
Preferred and Common Stock and funds received under the Company's
collaborations with ASTA, Zeneca and Amgen. The Company's current principal
sources of liquidity are its research and development collaborations with
ASTA and Zeneca, its cash, cash equivalents and short-term investments and
capital lease financing. The Company has a capital lease line of $3.5 million
for the purchase of equipment and facility improvements. The total amount
available under the facility at March 31, 1996 was $1.6 million.
The Company funds research projects performed by others or in-licenses
compounds from third parties. Some of the agreements may require the Company
to make milestone and royalty payments. Under these programs, commitments
for research funding are approximately $4.0 million and $2.6 million in 1996
and 1997, respectively. Most of these commitments are cancelable within a
three to six month period and limit the amounts payable
8
<PAGE>
by the Company for sponsored research under the programs after notice of
cancellation by the Company.
Net additions of equipment and leasehold improvements for the three
months ended March 31, 1996 were $435,000 compared to $240,000 for the same
period last year. Capital additions increased in 1996 due to the timing of
equipment purchases and facility improvements. Total capital spending for
1996 is anticipated to remain comparable to that of the prior year. The
Company intends to fund future capital expenditures principally through lease
financing arrangements.
The Company estimates that its existing capital resources together with
facility and equipment financing, expected revenues from its collaborations
and net income from investment activities, will be sufficient to fund its
planned operations through mid 1998. There can be no assurance that the
underlying assumed levels of revenue and expense will prove accurate. Whether
or not these assumptions prove to be accurate, The Company will need to raise
substantial additional capital to fund its operations. The Company intends to
seek such additional funding through collaborative arrangements, public or
private equity or debt financings and capital lease transactions; however,
there can be no assurance that additional financing will be available on
acceptable terms or at all. If additional funds are raised by issuing equity
securities, further dilution to stockholders may result. In addition, in the
event that additional funds are obtained through arrangements with
collaborative partners, such arrangements may require the Company to
relinquish rights to certain of its technologies, product candidates or
products that the Company would otherwise seek to develop or commercialize
itself. If adequate funds are not available, the Company may be required to
delay, reduce the scope of or eliminate one or more of its research or
development programs, which would have a material adverse effect on the
Company.
The Company is at an early stage of development and must be evaluated in
light of the uncertainties and complications present in a biotechnology
company. The Company has been in existence only since 1991 and to date a
single drug candidate (SU101) has entered human clinical testing. Products,
if any, resulting from the Company's research and development programs are
not expected to be commercially available for a number of years, even if they
are developed successfully and proven to be safe and effective. In addition,
many of the Company's currently proposed products are subject to development
and licensing arrangements with the Company's collaborators. Therefore, the
Company is dependent on the research and development efforts of these
collaborators with respect to some of its proposed products. Moreover, the
Company is entitled only to a portion of the revenues, if any, realized from
the commercial sale of any of the potential products covered by the
collaborations in many jurisdictions. The Company has experienced
significant operating losses since its inception and expects to incur
significant operating losses at least for the next several years. The
development of the Company's technology and potential products will require a
commitment of substantial funds to conduct these costly and time consuming
activities. Substantially all of the Company's revenues to date have been
received pursuant to the Company's collaborations. Should the Company or its
collaborators fail to perform in accordance with the terms of any of their
agreements, any consequent loss of revenue under the agreements could have a
material adverse effect on the Company's results of operations. The
potential products under development by the Company never have been
manufactured on a commercial scale and there can be no assurance such
products can be manufactured at a cost or in quantities necessary to make
them commercially viable. The Company has no sales, marketing or
distribution capability. If any of its products subject to collaborative
agreements are developed successfully, the Company must rely on its
collaborators to market such products in many jurisdictions. If the Company
develops any products which are not subject to collaborative agreements, it
must either rely on other large pharmaceutical companies to market such
products or must develop a marketing and sales force directly. The foregoing
risks reflect the Company's early stage of development and the nature of the
Company's industry and potential products. Also inherent at the Company's
stage of development is a range of additional risks, including competition,
uncertainties regarding protection of patents and proprietary rights,
government regulation and uncertainties regarding pharmaceutical pricing and
reimbursement.
9
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PART II. OTHER INFORMATION
ITEM 6. EXHIBITS AND REPORTS ON FORM 8-K
(a) Exhibits
Exhibit Number Description
-------------- -----------
3.1 Restated Certificate of Incorporation, filed February 23, 1995. (2)
3.2(ii) Bylaws of the Registrant. (1)
3.3 Certificate of Designation of Series A Junior Participating
Preferred Stock of the Registrant. (3)
10.23+ Amended and Restated Research and License Agreement
between the Registrant and Yissum Research Development
Company of the Hebrew University of Jerusalem (labeled
"Psoriasis").
10.24+ Amended and Restated Research and License Agreement
between the Registrant and Yissum Research Development
Company of the Hebrew University of Jerusalem (labeled
"Papilloma").
10.25+ Amended and Restated Research and License Agreement
between the Registrant and Yissum Research Development
Company of the Hebrew University of Jerusalem (labeled
"Sepsis/Inflammation").
10.26+ Amended and Restated Research and License Agreement
between the Registrant and Yissum Research Development
Company of the Hebrew University of Jerusalem (labeled
"Restenosis").
10.48+ Termination and Redemption Agreement between the
Registrant and Amgen Inc., dated January 9, 1996.
10.49+ Warrant to purchase 200,000 shares of Common Stock of the
Registrant, dated January 19, 1996, issued by the
Registrant to Amgen Inc.
10.50+ License Agreement between the Registrant and Zeneca
Limited, dated January 19, 1996.
27.1 Financial Data Schedule.
- - --------------------------
+ The Registrant has requested confidential treatment with respect to
portions of this Exhibit.
(1) Incorporated by reference to identically numbered exhibits
filed in response to Item 16 "Exhibits" of the Company's
Registration Statement on Form S-1, as amended (File Number
33-77074), which became effective October 4, 1994.
(2) Incorporated by reference to identically numbered exhibits
filed in response to Item 14 "Exhibits" of the Company's
Annual Report of Form 10-K for the year ended December 31,
1994.
(3) Filed as an exhibit to the Form 8-K Current Report dated July
26, 1995 and incorporated herein by reference.
(b) Reports on Form 8-K
No reports on Form 8-K were filed during the quarter ended March 31,
1996.
10
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SUGEN, INC.
SIGNATURES
Pursuant to the requirements of the Securities Exchange Act of 1934, the
registrant has duly caused this report to be signed on its behalf by the
undersigned thereunto duly authorized.
Date: May 13, 1996 SUGEN, Inc.
--------------------
By: /s/ James L. Tyree By: /s/ Christine E. Gray-Smith
-------------------------- ----------------------------------
James L. Tyree Christine E. Gray-Smith
President Senior Director of Finance
(Principal Financial and
Accounting Officer)
11
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SUGEN, INC.
EXHIBIT INDEX
<TABLE>
<CAPTION>
Exhibit No. Description Page in Form 10-Q
- - ----------- ----------- -----------------
<S> <C> <C>
3.1 Restated Certificate of Incorporation, filed February 5, 1995. (2)
3.2(ii) Bylaws of the Registrant. (1)
3.3 Certificate of Designation of Series A Junior Participating
Preferred Stock of the Registrant. (3)
10.23+ Amended and Restated Research and License Agreement
between the Registrant and Yissum Research Development
Company of the Hebrew University of Jerusalem (labeled
"Psoriasis").
10.24+ Amended and Restated Research and License Agreement
between the Registrant and Yissum Research Development
Company of the Hebrew University of Jerusalem (labeled
"Papilloma").
10.25+ Amended and Restated Research and License Agreement
between the Registrant and Yissum Research Development
Company of the Hebrew University of Jerusalem (labeled
"Sepsis/Inflammation").
10.26+ Amended and Restated Research and License Agreement
between the Registrant and Yissum Research Development
Company of the Hebrew University of Jerusalem (labeled
"Restenosis").
10.48+ Termination and Redemption Agreement between the
Registrant and Amgen Inc., dated January 9, 1996.
10.49+ Warrant to purchase 200,000 shares of Common Stock of the
Registrant, dated January 19, 1996, issued by the
Registrant to Amgen Inc.
10.50+ License Agreement between the Registrant and Zeneca
Limited, dated January 19, 1996.
27.1 Financial Data Schedule
</TABLE>
- - ------------------
+ The Registrant has requested confidential treatment with respect to
portions of this Exhibit.
(1) Incorporated by reference to identically numbered exhibits filed in
response to Item 16 "Exhibits" of the Company's Registration
Statement on Form S-1, as amended (File Number 33-77074),
which became effective October 4, 1994.
(2) Incorporated by reference to identically numbered exhibits filed in
response to Item 14 "Exhibits" of the Company's Annual
Report on Form 10-K for the year ended December 31, 1994.
(3) Filed as an exhibit to the Form 8-K Current Report dated July 26, 1995
and incorporated herein by reference.
12
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EXHIBIT 10.23 CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES
EXCHANGE ACT OF 1934, AS AMENDED.
[Execution Copy]
AMENDED AND RESTATED
RESEARCH AND LICENSE AGREEMENT
"PSORIASIS"
THIS AMENDED AND RESTATED AGREEMENT is made January 5, 1996, amending and
restating the Agreement originally effective January 1, 1994 (the "Effective
Date")
BETWEEN:
YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW UNIVERSITY OF
JERUSALEM of 46 Jabotinsky Street, Jerusalem, Israel ("Yissum")
AND:
SUGEN, INC. of 515 Galveston Drive, Redwood City, CA 94063-4720, USA
("Sugen")
WHEREAS:
Sugen wishes to finance research and development which is being, and
will be, carried out and conducted (i) at the Hebrew University of
Jerusalem under the supervision of Professor Alexander Levitzki (the
"Researcher") and (ii) at Related Institutions (as hereinafter
defined) with regard to the Research (as hereinafter defined);
AND WHEREAS:
Yissum is the exclusive representative of the University and of the
Researcher in all respects relating to the Research and/or this
Agreement and all rights whatsoever in the Research and/or the results
thereof shall belong to Yissum, subject to the terms of this
Agreement;
AND WHEREAS:
Yissum has filed patent applications relating to the above, as
detailed in Appendix A to this Agreement;
[]=CONFIDENTIAL TREATMENT REQUESTED
1.
<PAGE>
AND WHEREAS:
Yissum agrees to procure the performance of the Research in
accordance with the terms and conditions of this Agreement and procure
the performance of the University, the Researcher and any Related
Institutions in accordance with the terms and conditions of this
Agreement;
AND WHEREAS:
Sugen wishes to obtain a license from Yissum for the commercial
development, production and marketing of Products based on the
Proprietary Rights as defined below and/or the results thereof and/or
deriving therefrom, subject as provided below in this Agreement;
AND WHEREAS:
Yissum agrees to grant Sugen a license in accordance with and subject
to the terms and conditions of this Agreement;
ACCORDINGLY, IT IS AGREED BETWEEN THE PARTIES AS FOLLOWS:
RECITALS AND DEFINITIONS
1. (a) The recitals hereto constitute an integral part hereof.
(b) In this Agreement the following expressions shall have the meanings
appearing alongside them, unless the context otherwise requires.
"AFFILIATE" - means a person or entity that, directly or indirectly,
through one or more intermediaries, controls, is controlled by, or
is under common control with the entity specified. For purposes of
this definition, control shall mean (i) the direct or indirect
ownership of at least twenty percent of the stock entitled to vote for
the election of directors of such entity; or (ii) a twenty percent or
greater ownership interest in the profits of such entity; or (iii) in
the case of a special purpose research and development entity formed
to fund, in whole or in part, the Research hereunder, the right or
option to acquire directly, or indirectly through one or more
intermediaries, the interest of such entity in the Proprietary Rights,
Products and Research referred to in this Agreement. This definition
shall be subject to the understanding that if a research and
development entity should at any time be an Affiliate it shall remain
an Affiliate thereafter and that a research and development entity
shall only be an Affiliate if it is sublicensed by SUGEN under this
Agreement and has agreed to be bound by the appropriate obligations of
this Agreement with respect to any such sublicense.
[]=CONFIDENTIAL TREATMENT REQUESTED
2.
<PAGE>
"AGREEMENT" - means this agreement (together with all the appendices
and annexes hereto), as the same may be amended and restated.
"COMPANY" - means Sugen together with its Affiliates.
"CONSIDERATION" - has the meaning set forth in Section 3(a) of this
Agreement.
"EFFECTIVE DATE" - means January 1, 1994.
"FIELD" - means the prevention, mitigation, treatment, cure or
diagnosis of [
]
"FDA" - means the Food and Drug Administration of the United States of
America.
"HUJ COMPOUNDS" - means any compound useful in the Field discovered by
the Researcher, and/or students or employees of the University under
the guidance of or in connection or collaboration with the Researcher,
and/or a Related Institution, which discovery either was [
]
"HSC" - means the Hospital for Sick Children, an institution existing
under the laws of Toronto, Ontario, Canada and having a place of
business at 555 University Avenue, Toronto, Ontario M5G 1X8, Canada.
"KNOW-HOW" - means any information or materials useful in the Field
discovered, developed or acquired by or on behalf of students or
employees of the University and/or any Related Institution, including
the Researcher, and under the guidance of, or in connection or
collaboration with, the Researcher, during the term and in the course
of the Research. For the avoidance of doubt any research done under
the auspices of the University, but not done under the guidance of or
in connection or collaboration with the Researcher shall not be
governed by this Agreement.
"LICENSE" - has the meaning set forth in Section 4 of this Agreement.
"MEDICINAL COMPOUND" - means a compound or a modification, analog or
derivative of a compound originally discovered outside of the
Research, which compound, modification, analog or derivative is made
by the Researcher and/or students or employees of the University
and/or a Related Institution under the guidance of or in connection or
collaboration with the Researcher.
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3.
<PAGE>
"MPI" - means collectively, MAX-PLANCK-GESELLSCHAFT zur Foerderung der
Wissenschaften e.V., located in Residenzstrasse la, W-8000 Muenchen 2;
MAX-PLANCK-INSTITUT fur Biochemie, Abteilung Molekularbiologie located
in Am Klopferspitz 18a, W-8033 Martinsried; MAX-PLANCK-INSTITUT fur
Physiologische und Klinische Forschung located in ParkstraBe 1,61231
Bad Nauheim; and GARCHING INSTRUMENTE Gesellschaft zur industiellen
Nutzung von Forschungsergebnissen m.b.H. located in Koeniginstrasse
19, W-8000 Muenchen 22.
"NET SALES" - means all amounts in respect whereof invoices are issued
and paid in connection with the sale of Products or Medicinal
Compounds, respectively, for use in the Field to any person or entity,
other than sales between Sugen and an Affiliate of Sugen, after
deduction of all the following to the extent applicable to such sale:
[
]
"NYU"- means New York University, a university corporation organized
and existing under the laws of the State of New York and having a
place of business at 70 Washington Square South, New York, New York
10012.
"PATENT RIGHTS" - means the University's and Yissum's share in the
patents and patent applications listed in Appendix A and in any other
United States or Foreign patent application and any divisions,
continuations, in whole or in part, reissues, renewals and extensions
thereof, and patents issuing thereon:
(i) which claim inventions covered by the patents and patent
applications listed in Appendix A which Appendix the parties
believe to be, but may not be, a complete list of the applicable
patents and patent applications; or
(ii) which claim inventions useful in the Field that are made, in
whole or in part, [
] which are based on
or arise from the Research.
"PERIODIC REPORT" - has the meaning set forth in Section 7(g) of this
Agreement.
"PRODUCT" - means [
]
"PROPRIETARY RIGHTS" - means all Know-How and Patent Rights.
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4.
<PAGE>
"RELATED INSTITUTION" - means any institution with which Yissum or the
University has entered into a cooperation agreement with respect to
the subject matter of this Agreement, [
]
"RESEARCH" - means the research and development in the Field which is
being carried out and conducted during the Research Period under the
direction of or in connection or collaboration with the Researcher,
and/or by a Related Institution, including but not limited to the
discovery, synthesis and testing of novel compounds.
"RESEARCH PERIOD" - means the period beginning January 1, 1994 and
ending on September 30, 1997 and any extension thereof pursuant to the
terms of this Agreement.
"RESEARCHER" - has the meaning set forth on page one of this
Agreement.
"SCIENTIFIC REPORT" - has the meaning set forth in Section 2(e) of
this Agreement.
"SUBLICENSE" - has the meaning set forth in Section 6 of this
Agreement.
"TERRITORY" - means all the countries of the world.
"UNIVERSITY" - means the Hebrew University of Jerusalem and/or each of
its adjuncts and/or branches.
"WORK PLAN" - means each of the periodic work plans described in
Section 2(b).
"YISSUM" - has the meaning set forth on page one of this Agreement.
THE RESEARCH AND ITS PERFORMANCE
2. (a) Sugen hereby undertakes to finance performance of the Research and
Yissum takes it upon itself to procure the Research's performance in
the University, all as provided below in this Agreement.
(b) Yissum hereby agrees to procure the production of Work Plans, and the
Research's performance in accordance with each Work Plan, in
accordance with this Agreement. Yissum shall cause the Researcher to
produce a Work Plan, in form and substance reasonably satisfactory to
Sugen, for each twelve-month period (or lesser period or periods if
agreed between the parties) during the Research Period prior to the
performance of services thereunder and in no event later than the date
of October 1 (or, if earlier, the date that is the last day of any
agreed to Work Plan) during each year during the Research Period.
Each Work Plan will set forth goals, objectives and a time line and
will include, without
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5.
<PAGE>
limitation, priorities and guidelines in connection with the
Research to be performed.
(c) Sugen may apply to Yissum for an extension of the Research Period for
a further period of one year, provided that written notice thereof is
given to Yissum [
] The parties shall decide between them by agreement
negotiated in good faith the amount of the reasonable supplemental
finance payable by Sugen during the extension pursuant to this
section, Yissum may request an extension to the Research Period for a
further period of [ ] by notice to Sugen at least [ ]
prior to the expiration of the Research Period. Such extension shall
not require Sugen to remit any funds to Yissum for such period.
(d) If the Research Period is extended pursuant to the provisions of
Subsection (c) above, the provisions of this Agreement shall apply to
the additional period.
(e) Yissum shall cause the Researcher to provide Sugen with written
reports detailing the results and conclusions of the Research (each a
"Scientific Report"), no later than the end of each six month period
during the Research Period. Sugen may obtain interim written reports
from the Researcher as Sugen may reasonably request. For the
avoidance of doubt, it is hereby expressed that this Agreement in
general and this section in particular shall not constitute an
obligation and/or confirmation on the part of Yissum that any specific
results and/or conclusions will be achieved in consequence of the
Research's performance and/or that a product may be developed as a
result of the Research.
(f) Sugen may at any time during the Research Period obtain in writing any
information relating to the Research's performance from Yissum,
including plans and documents relating thereto. Sugen's
representative may attend the site where the Research is being carried
out, provided that the time of his attendance is first coordinated
with Yissum and the Researcher. In addition, Yissum shall cause the
Researcher to be available, at Sugen's principal place of business or
such other location as may be mutually agreeable, for at least two
face-to-face meetings with Sugen per twelve-month period to discuss
and report on the Research. Sugen shall reimburse the Researcher for
reasonable expenses that he may incur in attending such meetings upon
presentation of appropriate receipts therefor. In connection with the
third twelve-month period under this Agreement, the first such face-
to-face meeting shall occur in February of 1996.
(g) Yissum shall supply Sugen and its Affiliates with sufficient
quantities of HUJ Compounds or leads for research and development
purposes as Sugen shall reasonably request during the Research Period.
(h) Performance of the Research may be performed in cooperation with the
Related Institutions in accordance with an appropriate cooperation
agreement between
[]=CONFIDENTIAL TREATMENT REQUESTED
6.
<PAGE>
Yissum and the Related Institution, which agreement
shall be subject to the consent of Sugen which consent shall not be
unreasonably withheld. Yissum shall cause each Related Institution to
fully perform all of such Related Institution's obligations (including
without limitation as to matters of confidentiality) under such
cooperation agreement and consistent with the terms and conditions of
this Agreement.
FINANCE OF THE RESEARCH
3. (a) In consideration for the performance of the Research and in order to
finance it, Sugen undertakes to pay Yissum the amount detailed in the
consideration appendix annexed hereto as an integral part hereof and
marked as Appendix B (hereinafter referred to as "the Consideration").
The Consideration shall be paid to Yissum at the times and in the
installments and in accordance with the other terms and conditions
detailed in Appendix B. (Yissum's disbursement to any Related
Institution of any amounts received by Yissum pursuant to this section
shall be as reasonably directed by the Researcher and in accordance
with the Work Plan.)
(b) It is agreed between the parties that the provisions of this Agreement
shall not prevent Yissum and/or the University and/or the Researcher
from obtaining further finance from other entities for the Research,
provided that such other entities shall not be granted rights in the
Research prejudicing or limiting the rights granted to Sugen in
accordance herewith.
(c) Should the Research Period be extended as detailed in Section 2 above
and/or for any other reason, the parties shall determine by agreement
the supplemental finance for the period of the extension and such
reasonable supplement shall be added to the Consideration. The terms
and conditions of this Agreement shall apply MUTATIS MUTANDIS to the
supplemental Consideration.
THE LICENSE
4. Yissum hereby grants and Sugen hereby accepts from Yissum an exclusive
license in the Territory, with the right to sublicense, to practice the
Proprietary Rights to discover, develop, make, have made, use or sell
Products subject always to and in accordance with the terms and conditions
hereof (the "License").
TERM OF THE LICENSE
5. The License shall be effective as of the Effective Date. Unless otherwise
terminated as provided in Section 15, the License shall expire, on a
Product by Product and country by country basis, (i) [
] the last to expire of the relevant patents containing a valid claim
covering a Product in a country, or (ii) if no patent should issue
containing a valid claim covering a Product in a country, [ ]
the first
[]=CONFIDENTIAL TREATMENT REQUESTED
7.
<PAGE>
commercial sale of the Product in such country. After
termination of the License pursuant to this Section 5 in respect of a
Product in a country, Sugen shall have a fully paid up right and license to
continue to practice the Proprietary Rights to discover, develop, make,
have made, use and sell such Product in such country.
SUBLICENSES
6. (a) Sugen shall be entitled to grant sublicenses under the License (each a
"Sublicense) on terms and conditions in compliance with the terms and
conditions of this Agreement to third parties, subject to the
following conditions:
(i) Each Sublicense granted hereunder shall be subject and
subordinate to the terms and conditions of this Agreement and a copy
shall be provided to Yissum;
(ii) Subject to the last sentence of this Subsection (a), the
sublicense shall expire automatically on the termination of the
License pursuant to Section 15(c) because of a material breach or
default by Sugen;
(iii) Any sublicensee of Sugen [
] and
(iv) Both during the term of the Sublicense and thereafter the
sublicensee shall be bound by a confidentiality obligation similar to
that imposed on Sugen in Section 11 below.
In the event that the License is terminated under Section 15 or
otherwise, any Sublicense granted by Sugen under the License and any
further sublicenses thereunder shall, upon the written request of such
sublicensee, remain in full force and effect, provided that [
]
(b) If Sugen should grant a Sublicense to any third party, Sugen will pay
to Yissum [ ] of any sublicense fee or any other
consideration (except for royalties which will be paid as detailed in
Section 7 below) that Sugen may receive for the Sublicense of a
Product [
]
PROVIDED, HOWEVER, that if Sugen is required to make a payment to any
third party, other than MPI, NYU, or HSC, in connection with the
subject matter of such Sublicense, then the
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8.
<PAGE>
amount payable to Yissum shall be reduced by [ ]
but in no event shall Yissum receive less than [ ] and
PROVIDED, FURTHER, that if Sugen is required to make a payment to
MPI and/or NYU and/or HSC in connection with the subject matter of
such Sublicense, then the [ ] share of any such
Sublicense fee or other consideration that would otherwise be payable
to Yissum shall be [ ] Such
payment will be made to Yissum within [ ] from the
date that it is received by Sugen. The Company will provide Yissum
with reasonable documentation regarding [
]
(c) If Sugen should grant a Sublicense as detailed above, and, as part of
such Sublicense, Sugen should receive any funds designated for
research and development purposes with respect to a Product, Sugen
will pay to Yissum [ ] to be
used by Yissum solely for performance of the Research at the
University.
(d) The sublicensee shall agree to indemnify Yissum in a manner
substantially similar to the indemnification provisions in Section 14
of this Agreement.
CONSIDERATION
7. As additional consideration for the grant of the License and during the
term provided in Section 5 with respect to each Product hereunder, the
Company shall pay to Yissum:
(a) A royalty of [ ] of the Net Sales by Sugen and its
sublicensees of a Product which is covered by a valid claim of an
issued patent on a Product by Product and country by country basis;
PROVIDED, HOWEVER, that if Sugen or its sublicensees are required to
pay royalties to a third party other than MPI, NYU or HSC in order to
make, use or sell any Product, Sugen shall be entitled to set off [
] against royalties due to
Yissum with respect to such Product, but in no event shall the
royalties due under this section be less than [ ] except
as set forth in Subsection (c) below; and
(b) (i) A royalty of [ ] of Net Sales of a Product by Sugen and
its sublicensees that is covered by Proprietary Rights which do not
include a valid claim included in an issued patent on a Product by
Product and country by country basis, and (ii) for a period of [
] from the first commercial sale, a royalty of [ ] of Net
Sales on a country by country basis of a Medicinal Compound.
(c) Notwithstanding Subsection (a) above, (i) if Sugen is also required to
pay royalties in order to manufacture, have manufactured, use or sell
any Product to either MPI or NYU or HSC, the royalties payable to
Yissum pursuant to
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9.
<PAGE>
Subsection (a) hereof shall be [ ] and (ii) if
Sugen is required to pay such royalties to any two of
MPI, NYU and HSC the royalties payable to Yissum under Subsection (a)
hereof shall be [ ]
(d) No royalties shall be payable on any Net Sales between Sugen and an
Affiliate of Sugen, but royalties shall be payable on the subsequent
resale of the Product.
(e) Within [ ] following receipt by Sugen or a sublicensee
of final regulatory approval in the United States of America to market
a Product, Sugen shall pay Yissum for such Product the greater of
(i) [
] or (ii) [
] In
any event, Yissum shall receive a minimum of [ ] upon the
final regulatory approval in the United States of America to market
each Product, whether such Product shall be marketed by Sugen or a
sublicensee; PROVIDED, however, that Yissum agrees that it shall not
receive more than one such payment for the final regulatory approval
in the United States of America to market any Product including any
modification of a Product.
(f) Notwithstanding any other provision in this Agreement, the Company
shall only be required to pay one royalty in respect to the Net Sales
of a Product; and notwithstanding Subsection 7(e), the Company shall
only be required to make one payment for receipt of final regulatory
approval in the United States to market a Product no matter how many
indications may ultimately be approved for the Product.
(g) Every [ ] commencing from the date of the first commercial
sale, Sugen shall furnish Yissum with a [ ] report
(hereinafter referred to as "the Periodic Report") detailing the
total sales effected during the Reporting Period and the total
royalties due to Yissum in respect of that period. The Periodic
Report shall be submitted [ ] after
the end of the Reporting Period.
(h) The Periodic Reports shall contain full particulars of all sales made
by the Company or by sublicensees insofar as sublicenses have been
granted as provided herein, including sales broken down according to
countries, a breakdown of the number of Products sold, discounts,
returns, the currency in which the sales were made, invoice date and
all other relevant information enabling the royalties payable to be
determined.
(i) On the date prescribed for submission of each Periodic Report, Sugen
shall pay the royalties due to Yissum in accordance with the report.
Any such royalties relating to transactions in foreign currencies
shall be converted into United States dollars based on the closing
buying rate of the Citibank, N.A. of New York applicable to
transactions for the particular currency on the last business day of
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10.
<PAGE>
the period for which such royalty is due. The royalties shall be
computed in United States dollars and paid in Israeli shekels based on
the closing buying rate of Citibank, N.A. of New York on the date of
actual payment of the royalties, and if no such rate is published as
aforesaid, based on the first sale rate published thereafter. Payment
of Value Added Tax (if charged) shall be [ ] each payment in
accordance with the statutory rate then in force.
(j) Sugen shall maintain, and shall require all of its sublicensees to
maintain for a period of [ ] after the end of the calendar
year to which they relate, true and complete books of account
consistent with standard accounting practice containing an accurate
record of all data necessary for the proper computation of all
payments due to Yissum under the terms of this Agreement.
(k) Yissum shall have the right, through a nationally recognized firm of
independent certified public accountants, to examine the books
referred to in Subsection (i) (not more than once in any calendar
year) within two calendar years after the end of the calendar year to
which they relate for the purpose of verifying the payments due to
Yissum under the terms of this Agreement. Any such examination shall
be made during normal business hours at the place where the records
are regularly kept. Yissum agrees that the information furnished to
it as a result of any such examination shall be limited to a statement
by such firm of certified public accountants to the effect that they
have reviewed such books of account and that the amounts of the
payments due under the terms of this Agreement are in conformity with
such books of account and the applicable provisions of this Agreement,
or setting forth any required adjustment. The fees and expenses of
such examination shall be borne by Yissum; PROVIDED, HOWEVER, that if
such examination reveals an underpayment of more than [ ]
for any period, Sugen shall promptly reimburse Yissum for such
reasonable fees and expenses. Any such accountants shall be required
to keep all information derived from such examination confidential.
Nothing in this Subsection shall impair the obligation of Sugen to pay
the full amount of all royalties due under this Agreement.
(l) Any sum of money which one party hereto is liable to pay the other
which is not duly paid shall bear interest from the due date for
payment until the actual date of payment at the [ ]
for the time being prevailing as set by the London Interbank
offering rate.
(m) The provisions of this section are fundamental terms of the Agreement
and the breach thereof shall constitute a fundamental breach of the
Agreement.
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11.
<PAGE>
DEVELOPMENT AND COMMERCIALIZATION
8. (a) Sugen or its sublicensees shall use reasonable diligence consistent
with prudent commercial practices to evaluate the results of the
Research and any commercial opportunities with regard to Products
arising therefrom.
(b) Sugen shall provide Yissum annually with written reports on any
material activities and actions undertaken by Sugen to develop and
commercialize a Product.
(c) Upon expiration of the Research Period or termination of the Agreement
pursuant to Section 15 (other than because of a material breach or
default by Sugen), Sugen shall provide to Yissum in writing a list of
the compounds that it believes show promise in the Field (the "Listed
Compounds"), together with a Termination Notice in the form attached
hereto as EXHIBIT A. Sugen shall thereby maintain all rights under
the License to the Listed Compounds and any modifications, analogs or
derivatives thereof, and the License shall terminate with respect to
all other HUJ Compounds covered by Proprietary Rights.
(d) If Sugen or its sublicensee has not initiated clinical trials with
respect to [ ] of the Listed Compounds (or a
modification, analog or derivative thereof) within [ ] from
such expiration or termination, the License shall terminate with
respect to all the Listed Compounds. Similarly, if Sugen or its
sublicensee has not initiated clinical trials with respect to [
] of the Listed Compounds (or modifications, analogs or derivatives
thereof) within [ ] from such expiration, the License shall
terminate with respect to the Listed Compounds other than the Listed
Compound (and its modifications, analogs and derivatives) with respect
to which clinical trials had been initiated within the required [
] time period. If any of the Listed Compounds should be covered
by a valid claim of an issued patent or by a claim in any pending
patent application filed not later than [ ] after
expiration of the Research Period, Sugen shall have exclusive rights
for use in the Field to all other compounds covered by such patent or
patent application so long as it maintains rights to the Listed
Compounds. Sugen shall also have exclusive rights for use in the Field
to all other compounds covered by such patent or patent applications
so long as it maintains rights to the Listed Compounds. Sugen agrees
to inform Yissum at any time that it no longer believes that a Listed
Compound shows promise in the Field and to terminate the License with
respect to such Listed Compound.
OWNERSHIP
9. It is expressly agreed between the parties that all rights in the Research
and the Proprietary Rights shall be solely owned by Yissum but licensed to
Sugen as set forth in this Agreement, except to the extent that any
Proprietary Rights are the joint invention of Sugen and Yissum and/or a
Related Institution in which case such Proprietary Rights shall be jointly
owned as determined in accordance with the patent laws of the United
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12.
<PAGE>
States of America. Sugen shall take reasonable steps to
provide full force to Yissum's rights as aforesaid. Notwithstanding
anything to the contrary contained herein, it is expressly
agreed between the parties that all rights in and to Medicinal
Compounds shall be solely owned by Sugen.
PATENTS
10. (a) Yissum will cause the University and any Related Institution to
provide prompt and full disclosure to Sugen in writing of any
inventions made during the Research Period and/or in the course of
and/or based on or which arises from performance of the Research which
may constitute the basis for potential patents. Should patents be
appropriate therein, Sugen agrees to apply for patents in the United
States, Israel, Japan, the European Community and Canada and to comply
with all requirements for their prosecution in respect of appropriate
HUJ Compounds included in Proprietary Rights and/or resulting from or
based on the Research. Sugen shall determine the world wide patent
strategy in consultation with Yissum and agrees to keep Yissum
adequately informed as to the status of such strategy and any patent
applications. Notwithstanding the foregoing, Yissum may at its sole
decision appoint its own patent counsel to prepare the patents in
Israel as long as such counsel is supervised by and cooperates fully
with Sugen's patent counsel, and Yissum provides promptly to Sugen all
relevant materials and communications that it may receive from such
Israeli counsel.
(b) The parties shall consult and make every effort to reach agreement in
all respects relating to the manner of making patent applications and
their prosecution, including the time of making the applications, the
countries where applications will be made and all other particulars
relating to patent prosecution. Sugen shall act diligently in filing
and prosecuting all patent applications that the parties agree shall
be filed. Nevertheless, Sugen in its discretion may determine that it
should not continue the prosecution of any patent application in a
particular country, in which event it shall so notify Yissum in
writing and Yissum may then continue the prosecution solely for its
own account and at its expense and Sugen shall have no further rights
with respect to any patent that may issue in the particular country as
the result of the continued prosecution.
(c) Each patent application shall be made and prosecuted at Sugen's
expense in the name of the inventors and on behalf of Yissum.
(d) Notwithstanding the foregoing, Yissum shall have no obligation that
patents or patent applications will indeed be made and/or registered
and/or registrable in respect of the Proprietary Rights and/or Product
and/or any part thereof, nor that
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<PAGE>
any patent that actually issues will afford due protection against any
third party. Nothing in this Agreement or Appendix A shall constitute
confirmation and/or a representation by Yissum in connection with [
] of any of the Patent Rights, and [
]
(e) The parties shall assist each other in all respects relating to the
preparation of documents for the registration of a patent or any
patent-related right forthwith upon the other's request, and Yissum
shall cause the University and any Related Institution to assist Sugen
in assembling inventorship information and data for filing and
prosecution of patent applications as aforesaid.
(f) In the event a party to this Agreement acquires information that a
third party is infringing one or more of the Patent Rights, the party
acquiring such information shall promptly notify the other party to
the Agreement in writing of such infringement.
(g) In the event of an infringement of a Patent Right, [ ] shall be
privileged but not required to bring suit against the infringer. The
expenses of such suit or suits that [ ] elects to bring, including
any reasonable expenses of [ ] and/or the University incurred in
conjunction with the prosecution of such suit or the settlement
thereof, shall be paid for entirely by [ ] and [ ] shall hold
[ ] and/or the University free, clear and harmless from and
against any and all costs of such litigation, [
] In the event [ ] exercises the right to sue herein
conferred, it shall have the right to first reimburse itself out of
any sums recovered in such suit or in settlement thereof for all
costs and expenses of every kind and character, including [
] and if after
such reimbursement, any funds shall remain from said recovery, [ ]
shall promptly pay to [ ] an amount equal to [ ] of
such remainder and [ ] shall be entitled to receive and retain the
balance of the remainder of such recovery. If [ ] does not bring
suit against said infringer pursuant to this Subsection 10(g) or has
not commenced negotiations with said infringer for discontinuance of
said infringement within ninety days after receipt of such notice, [
] shall have the right, but shall not be obligated, to bring suit
for such infringement and to join [ ] as a party plaintiff. The
expenses of such suit or suits that [ ] elects to bring,
including any reasonable expenses of [ ] incurred in conjunction
with the prosecution of such suit or the settlement thereof, shall be
paid for entirely by [ ] and [ ] shall hold [ ] free,
clear and harmless from and against any and all costs and expenses of
such litigation, [ ] If [
] has commenced negotiations with an alleged infringer of the Patent
Right for discontinuance of such infringement within such ninety-day
period, [ ] shall have an additional ninety days from the
termination of such initial ninety-day period to conclude its
negotiations before [ ] may bring suit for such
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13.
<PAGE>
infringement. In the event [ ] brings suit for infringement
of any Patent Right, [ ] shall have the right to
first reimburse itself out of any sums recovered in such
suit or settlement thereof for all costs and expenses of
every kind and character, [
] any funds shall remain from said recovery, [ ]
shall promptly pay to [ ] an amount equal to [ ] of
such remainder and [ ] shall be entitled to receive and retain
the balance of the remainder of such recovery. [ ] agrees to
cooperate fully with [ ] at the request of [ ], including by
giving testimony and producing documents lawfully requested, in the
prosecution of any suit by [ ] for infringement of a Patent
Right; PROVIDED, HOWEVER, that [ ] shall pay all reasonable
expenses [ ] incurred
by [ ] in connection with such cooperation. [ ] shall, and
shall [
] cooperate fully with [ ]
at the request of [ ], including by giving testimony and
producing documents lawfully requested, in the prosecution of any suit
by [ ] for infringement of a Patent Right; PROVIDED, HOWEVER, that
[ ] shall pay all reasonable expenses [ ]
incurred by [ ] in connection with such cooperation.
(h) Sugen agrees to pay to Yissum the sums paid by Yissum in regard to the
filing and execution costs relating to the Patent/s detailed in
Appendix A so long as such Patent/s are not included in the agreement
effective September 23, 1993, between the parties; provided, however
that such sums shall not exceed [ ] The payment shall be paid to
Yissum within 30 days from the execution of this Agreement. In
addition, Sugen will pay any further expenses reasonably incurred
regarding the patents and patent applications listed in Appendix A
after the Effective Date, provided Sugen will only be required to pay
such further expenses that are first authorized in writing by Sugen.
(i) The provisions of this section are fundamental provisions of the
Agreement, the breach thereof constituting a fundamental breach of the
Agreement if not cured by the Company within sixty days of receipt of
written notice of any such default.
CONFIDENTIALITY
11. (a) Sugen and Yissum each agree that, during the term of this Agreement
and subsequent thereto, they shall maintain in confidence, and Yissum
shall cause the Researcher, the University, any Related Institution
and their employees to maintain in confidence, all information,
details and data which is in and/or comes to their knowledge and/or
that of their employees, representatives and/or any person acting on
their behalf relating to the Research, the Proprietary Rights, any
Product, any Medicinal Compound, Yissum, the University, Sugen, their
researchers and employees. The parties agree not to convey or
disclose any such confidential information, and Yissum shall cause the
Researcher, the University, any Related Institution and their
employees not to convey or disclose any such
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15.
<PAGE>
confidential information, to any entity or person that is not bound
by a written agreement of confidentiality except as may be required
for any regulatory agency filing or otherwise as required by law or
as otherwise necessary for performance (or enjoyment of rights) under
this Agreement. (b) The obligation contained in this section shall
not apply to information which is in the public domain as at the date
hereof or to information which hereafter comes into the public domain,
unless Sugen or Yissum breaches its obligations pursuant to this
Agreement as a result whereof the information comes into the public
domain.
(c) Sugen and Yissum may disclose details and information to their
employees, consultants and sublicensees as necessary for the
performance of their obligations pursuant to this Agreement, PROVIDED,
HOWEVER, that any such employee, consultant or sublicensee is bound in
writing to maintain the confidentiality of such details and
information.
(d) Without prejudice to the foregoing, the Company and its sublicensees
shall not mention the University's name in connection with this
Agreement in any public disclosure without obtaining Yissum's prior
written consent, which consent shall not be unreasonably withheld, or
as may be required by applicable law. The Company shall further
procure that any entity connected with and subordinate to it shall not
mention the University's name in any public disclosure as aforesaid.
(e) Yissum shall cause the University's and any Related Institution's
researchers, employees and/or any other person involved in or
otherwise privy to the Research or the Proprietary Rights to execute
an agreement in writing for the maintenance of confidentiality. At
the request of Sugen, Yissum shall provide to Sugen a copy of any such
agreement.
(f) The breach of this section, including the subsections hereof, by any
person or entity other than Yissum or Sugen shall not be deemed a
breach of the Agreement if [
]
(g) Expiration or termination of this Agreement shall not release either
party from its obligations pursuant to this section.
(h) The provisions of this section are fundamental provisions of the
Agreement and their breach shall constitute a fundamental breach of
the Agreement.
(i) In order to insure the confidentiality of proprietary compounds,
Yissum will cause the University, any Related Institution and the
Researcher not to transfer any HUJ Compound to any third party unless
Sugen is first informed in writing of the proposed transfer, is given
a detailed description of the compound desired to be transferred and
the transferee, and Sugen has not stated in writing within thirty
[]=CONFIDENTIAL TREATMENT REQUESTED
16.
<PAGE>
days after receipt of such notice that it has an interest in
such compound. If Sugen states that it does have an
interest in the compound, no transfer will be made
and Sugen will have six months thereafter to determine
the extent of its interest and whether it should continue to
be held in confidence. Under no circumstances will Yissum allow the
University, any Related Institution or the Researcher to transfer any
Medicinal Compound to any third party without the express written
consent of Sugen. In any event, transfer of a proprietary compound
(whether an HUJ Compound or a Medicinal Compound) to a third party, if
at all, shall only be made pursuant to a Materials Transfer Agreement
signed by the third party and in form satisfactory to Sugen.
PUBLICATIONS
12. (a) Yissum shall ensure that prior to submission for publication of a
manuscript or abstract or any oral presentation at any scientific or
similar meeting describing any aspect of the Research or its results
or any HUJ Compound or Medicinal Compound, the University, any Related
Institution and/or their students and employees including the
Researcher shall send Sugen a copy of the manuscript or abstract to be
submitted or outline of an oral presentation and shall allow Sugen
[ ] from the receipt by Sugen of such mailing to determine
whether the manuscript, abstract, outline or presentation contains
subject matter for which patent protection should be sought prior to
publication thereof or which is otherwise confidential. Should Sugen
believe the subject matter of the manuscript, abstract, outline or
presentation contains a patentable invention or otherwise contains
confidential information, then, prior to the expiration of such
[ ] period, Sugen shall give written notification to Yissum and
the author (if reasonably available) of its determination that such
manuscript, abstract, outline or presentation contains patentable
subject matter for which patent protection should be sought or
otherwise contains confidential information.
(b) After the expiration of such [ ] period, unless Yissum
has received the written notice specified above from Sugen, Yissum,
the University and the Researcher shall be free to submit or to allow
the University's students and employees to submit such manuscript,
abstract, outline or presentation for publication in any manner
consistent with academic standards.
(c) Upon receipt of such written notice from Sugen, Yissum, the
University, any Related Institution, the Researcher and the
University's and any Related Institution's students and employees will
thereafter delay submission of the manuscript, abstract, outline or
presentation for an additional period of [ ] to permit
the preparation and filing, in accordance with Section 10 hereof, of a
patent application on the subject matter to be disclosed in such
manuscript, abstract, outline or presentation. After expiration of
such [ ] period, or the filing of a patent application on
each such invention, whichever shall occur first, Yissum, the
University and the Researcher and the University's students and
employees shall be free to submit the manuscript, abstract, outline or
presentation
[]=CONFIDENTIAL TREATMENT REQUESTED
17.
<PAGE>
and to publish the disclosed results. In no event,
however, will the chemical structure of any compound of interest to
Sugen be made public before it is published in a patent application
unless otherwise expressly approved by Sugen in writing.
(d) The provisions of this section shall not prejudice any other right
which Yissum or Sugen has pursuant to this Agreement and at law.
MASTER AND SERVANT RELATIONSHIP
13. It is hereby agreed and declared between the parties that the parties
shall act in all respects relating to this Agreement as independent
contractors and there neither is nor shall be any master and servant
or principal and agent relationship and/or partnership in the
relationship between the Company and/or any or its employees and/or any
person or entity connected with it on the one hand and Yissum on the other
hand.
LIABILITY AND INDEMNITY
14. (a) Sugen shall, subject to the provisions of Section 14(b), indemnify,
defend and hold harmless Yissum and the University and its employees,
students and agents and their respective successors, heirs and assigns
(the "Indemnitees"), against any liability, damage, loss or expense
(including reasonable attorneys' fees and expenses of litigation)
incurred by or imposed on the Indemnitees in connection with any
claims, suits, actions, demands or judgments (i) arising out of the
production, manufacture, sale, use in commerce or in human clinical
trials, lease or promotion by Sugen or any Affiliate or sublicensee of
Sugen under the License, of any Product, relating to, or developed
pursuant to, this Agreement or (ii) arising out of any other
activities to be carried out by Sugen, or any sublicensee under the
License, pursuant to this Agreement.
(b) Sugen's indemnification obligation under Section 14(a)(i) shall apply
to any liability, damage, loss or expense whether or not it is
attributable to the negligent activities of the Indemnitees. Sugen's
indemnification obligation under Section 14(a)(ii) shall not apply to
any liability, damage, loss or expense to the extent that it is
attributable to the negligent activities of any Indemnitee.
(c) Sugen agrees, at its own expense, to defend against any actions
brought or filed against any Indemnitee with respect to the subject of
indemnity to which such Indemnitee is entitled hereunder whether or
not such actions are rightfully brought.
[]=CONFIDENTIAL TREATMENT REQUESTED
18.
<PAGE>
TERMINATION OF THE AGREEMENT
15. (a) (i) Prior to September 30, 1994 Sugen maintains the right to
reduce the scope of the Research on terms and conditions which will be
approved by Yissum, and/or to cancel it on condition that Sugen gives
written notice to Yissum at least [ ] in advance. After
September 30, 1994 the Company maintains the right to reduce the scope
of the Research, and/or to cancel it on condition that Sugen shall
give written notice to Yissum at least 120 days in advance. If Sugen
decides to reduce the scope of the Research, the payment shall be
reduced in accordance with and in consideration of the obligations
incurred by Yissum that are not able to be canceled. In addition, if
the Researcher should at any time no longer be the active leader of
the Research at the University and he is not replaced by another
individual satisfactory to Sugen in its sole discretion, Sugen may
reduce the scope of or cancel the Research if it gives written notice
to Yissum at least thirty days in advance.
(ii) Should Sugen decide to cancel the Research, Sugen shall pay to
Yissum all reasonable expenses incurred by the Research, and in
accordance with the Work Plan, prior to the date of notice of
cancellation and, in addition, up to [ ] of further expenses
arising from the Research, in accordance with the Work Plan and
irrevocably committed but not yet paid as of the date of notice of
cancellation, against invoices presented, until the date of
cancellation.
(iii) If termination is effected under this Section 15(a), right,
title and interest in the Proprietary Rights shall be governed by
Section 8(c).
(b) Unless terminated pursuant to Section 15(c) below, this Agreement
shall expire upon the expiration of the royalty term of the License in
all countries for all Products as set forth in Section 5 hereof.
(c) At any time prior to the expiration of this Agreement, either Yissum
or Sugen may terminate this Agreement forthwith for cause by the other
party, as "cause" is described below, by giving written notice to the
other party. "Cause" for termination of this Agreement by Sugen shall
be deemed to exist (i) [
] or (ii) [
] during the Research Period prior to the date of [
]
during each year during the Research Period or [
]
"Cause" for termination of this Agreement by Yissum shall be deemed to
exist if [
]
[]=CONFIDENTIAL TREATMENT REQUESTED
19.
<PAGE>
In addition, "Cause" for termination by one party of this Agreement
shall be deemed to exist if, with respect to the other party:
(A) (I) a voluntary case under any applicable bankruptcy, insolvency
or other similar law now or hereafter in effect shall be instituted by
such party, or such party shall consent to the entry of an order for
relief in an involuntary case under any such law; (II) a general
assignment for the benefit of creditors shall be made by such party;
(III) such party shall consent to the appointment of or possession by
a receiver, liquidator, trustee, custodian, sequestrator or similar
official of such party or of any substantial part of its property; or
(IV) such party shall adopt a board resolution in furtherance of any
of the foregoing actions specified in this Subsection (A); or
(B) a decree or order for relief by a court of competent jurisdiction
shall be entered in respect of such party in an involuntary case under
any applicable bankruptcy, insolvency or other similar law now or
hereafter in effect, or appointing a receiver, liquidator, trustee,
sequestrator or other similar official of such party or of any
substantial part winding up or liquidation of its affairs, and any
such decree or order shall remain unstayed or undischarged and in
effect for a period of sixty days.
If any act or omission by any sublicensee under the License (including
any further sublicensee thereunder) shall cause Sugen to be in breach
or default in the performance of observance or any of the provisions
of this Agreement and such Sublicense is terminated, then
notwithstanding anything to the contrary contained in this Agreement,
Yissum shall not have the right to terminate this Agreement for any
such breach or default.
(d) If Sugen shall terminate this Agreement for Cause, [
] If Yissum shall terminate this Agreement for Cause, [
] If Yissum shall
terminate this Agreement for Cause, [
] on the terms and conditions of this
Agreement in connection with any continued or further use of such
intellectual property or such Medicinal Compounds by Sugen.
(e) Termination of this Agreement shall not relieve either party of any
obligation to the other party which it was liable to perform prior to
the Agreement's termination. In addition, if termination shall be
effected by Sugen for Cause, Sugen shall have the rights to all
Proprietary Rights developed prior to such
[]=CONFIDENTIAL TREATMENT REQUESTED
20.
<PAGE>
termination as set forth herein to the extent that Yissum may legally
license such Proprietary Rights and in accordance with the conditions
of such license grant.
(f) Sections 5, 9 (third sentence beginning with "Notwithstanding anything
to the contrary ..." and ending with "... shall be solely owned by
Sugen" only), 10, 11, 12, 14 and 15 hereof shall survive and remain in
full force and effect after any termination or expiration of this
Agreement.
(g) If this Agreement should terminate pursuant to Section 15(c) because
of [
] and it may not make any further use thereof.
(h) Notwithstanding the foregoing, the end or termination of this
Agreement shall not release Sugen or Yissum from the performance of
any obligation which it was liable to perform prior to the Agreement's
end or termination.
LAW
16. The provisions of this Agreement and everything concerning the
relationship between the parties in accordance with this Agreement shall
be governed by law of England and Wales.
ARBITRATION
17. (a) All differences and disputes arising, if at all, between the parties
to this Agreement in connection with the Agreement and/or its
interpretation and/or its performance and/or breach, with everything
relating thereto and deriving therefrom, shall be referred for the
decision of a single arbitrator, who shall be appointed by agreement
between the parties.
(b) Should the parties not reach agreement as to the arbitrator's
identity, the arbitrator shall be appointed in accordance with the
Commercial Arbitration rules of the International Chamber of Commerce
on the application of either of the parties.
(c) The arbitration shall be held in London, England. The arbitrator
shall be released from the civil procedure and laws of evidence but
shall be bound by the substantive law of England and be liable to give
grounds for his decision.
(d) The arbitrator's decision shall be final and bind the parties.
(e) The parties' execution of this Agreement shall constitute the
execution of an arbitration deed.
[]=CONFIDENTIAL TREATMENT REQUESTED
21.
<PAGE>
MISCELLANEOUS
18. (a) Neither Sugen nor Yissum may assign this Agreement or its rights and
duties pursuant to this Agreement to another except as set forth
herein without obtaining the other party's prior written consent;
PROVIDED, HOWEVER, that either party may assign this Agreement or its
rights and duties hereunder to any successor by full merger or
pursuant to the sale of substantially all of its property and assets.
(b) The failure or delay of a party to the Agreement to claim the
performance of an obligation of the other party shall not be deemed a
waiver of the performance of such obligation.
(c) Each party shall bear its own legal expenses involved in the making of
this Agreement.
(d) The headings to the sections in this Agreement are for the sake of
convenience only and shall not serve in the Agreement's
interpretation.
(e) This Agreement constitutes a full and complete agreement between the
parties and may only be waived or amended by a document signed by both
parties. The term "Agreement" as used in this Agreement and all other
instruments and agreements executed hereunder shall for all purposes
refer to the Agreement as amended and restated as of the date first
above written.
(f) This Agreement may be executed separately in counterparts, all of
which together shall constitute one original.
(g) For the avoidance of doubt Yissum and Sugen agree that it is in the
best interests of Yissum and Sugen to keep the work the Researcher
does under the auspices of the University separate from the work done
for Sugen related to the Researcher's employment by Sugen. Such work
related to the Researcher's employment for Sugen shall not be included
in the license granted herein and shall belong solely to Sugen as
provided in any agreement between the Researcher and Sugen.
(h) Also for the avoidance of doubt, Yissum and Sugen agree that if a
compound should be covered by both this Agreement and their prior
agreement effective the 23rd day of September 1993 (as amended and
restated March 27, 1995), the compound shall be considered to be
covered by the said prior agreement rather than by this Agreement.
(i) Sugen hereby represents and warrants to Yissum that the execution and
delivery of this Agreement have been duly authorized by all requisite
action on the part of Sugen. Yissum hereby represents and warrants to
Sugen that the execution and
[]=CONFIDENTIAL TREATMENT REQUESTED
22.
<PAGE>
delivery of this Agreement have been duly
authorized by all requisite action on the part of Yissum.
NOTICES
19. All notices and communications pursuant to this Agreement shall be made in
writing and sent by registered mail or internationally recognized air
courier service to or served at the following addresses:
Yissum: Yissum Research Development Company of the Hebrew University of
Jerusalem, POB 4279 Jerusalem, Israel.
Sugen: SUGEN, INC., 515 Galveston Drive, Redwood City, CA 94063-4720
USA
or such other address furnished in writing by one party to the other. Any
notice sent as aforesaid shall be deemed to have been received four days
after being posted by registered mail or internationally recognized air
courier service or one day after personal service, as the case may be.
AS WITNESS THE HANDS OF THE PARTIES
Agreed and Accepted:
YISSUM RESEARCH DEVELOPMENT
COMPANY OF THE HEBREW UNIVERSITY
OF JERUSALEM
By: /s/ Uri Litvin
---------------------------------
Name: Uri Litvin
Title: Managing Director
SUGEN, INC.
By: /s/ James L. Tyree
--------------------------------
Name:
Title:
[]=CONFIDENTIAL TREATMENT REQUESTED
23.
<PAGE>
EXHIBIT A
FORM OF TERMINATION NOTICE
YISSUM RESEARCH DEVELOPMENT COMPANY
OF THE HEBREW UNIVERSITY OF JERUSALEM
of 46 Jabotinsky Street, Jerusalem
(hereinafter "Yissum"),
and
SUGEN, INC.
of 515 Galveston Drive, Redwood City, California, U.S.A.
(hereinafter "SUGEN"),
WHEREAS
Yissum and SUGEN are parties to an Amended and Restated Research and
License Agreement "Psoriasis" effective January 1, 1994, as amended and restated
January 5, 1996 (the "Research Agreement").
WHEREAS,
[On __________, the Research Period under the Research Agreement ended;]
or
[On __________, the Research Agreement was terminated.]
NOW, THEREFORE, it is hereby declared and agreed between the parties,
intending to be legally bound, as follows:
1. The definitions and references to the Research Agreement in the above
introduction are an integral part of this Notice. All capitalized terms
not defined herein shall have the same meaning as in the Research
Agreement.
2. Yissum hereby acknowledges that all its right, title and interest in the
Proprietary Rights related to the Listed Compounds listed on Appendix I
hereto and any modifications, analogs or derivatives thereof (the
"Technology") are subject to the terms of the Research Agreement.
3. SUGEN hereby assigns to Yissum all its right, title and interest in the
Proprietary Rights related to the HUJ Compounds not included within the
Technology. From the date of the signing of this Notice, Yissum shall be
independently entitled to take any action
[]=CONFIDENTIAL TREATMENT REQUESTED
24.
<PAGE>
regarding the HUJ Compounds not
included within the Technology, including to sell, license or effect any
other disposition thereof and SUGEN shall not have any other rights to such
compounds.
4. SUGEN shall perform all the necessary actions in order to effect the
transfer of rights in the Proprietary Rights to the HUJ Compounds not
included within the Technology, and shall sign the documents necessary to
effect the transfer including the patent assignment documents appropriate
for each involved country and any additional document required to implement
the said transfer and assignment. Yissum shall be responsible for all
legal and governmental fees associated with the preparation, filing and/or
recording of said assignments and documents.
5. The parties further agree that, if it should be determined that any of the
Proprietary Rights with respect to the Technology in the case of SUGEN or
the HUJ Compounds not included within the Technology in the case of Yissum
are dominant to any of the Proprietary Rights of the other party hereto, it
does grant an exclusive license to the other party (with right to
sublicense) to practice any such dominant Proprietary Rights for the sole
and limited purpose of practicing the Proprietary Rights as otherwise set
forth herein.
6. All notices and communications pursuant to this Notice shall be made in
writing by registered mail such as international Federal Express or such
other courier service providing a written record of such mailing and its
receipt, and shall be deemed to have been received by the receiving party
96 hours after being posted, unless the written record provided for herein
establishes that delivery was not made until a later date.
7. The provisions of this Notice and everything concerning the relationship
between the parties in accordance with this Notice shall be governed by
law of England and Wales.
Dated: ___________________
Yissum Research Development Company SUGEN, Inc.
of the Hebrew University of Jerusalem
By: _____________________ By: _____________________
Name: Name:
Title: Title:
[]=CONFIDENTIAL TREATMENT REQUESTED
25.
<PAGE>
APPENDIX A
YI# Serial # Country Filing Date
- - --------------------------------------------------------------------------
[
]
[]=CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
[
]
[]=CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
PSORIASIS - APPENDIX C
[
]
[]=CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
EXHIBIT 10.24 CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE SECURITIES
EXCHANGE ACT OF 1934, AS AMENDED.
[Executed Copy]
AMENDED AND RESTATED
RESEARCH AND LICENSE AGREEMENT
"PAPILLOMA"
THIS AMENDED AND RESTATED AGREEMENT is made January 5, 1996, amending and
restating the Agreement originally effective January 1, 1994 (the "Effective
Date")
BETWEEN:
YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW UNIVERSITY OF
JERUSALEM of 46 Jabotinsky Street, Jerusalem, Israel ("Yissum")
AND:
SUGEN, INC. of 515 Galveston Drive, Redwood City, CA 94063-4720, USA
("Sugen")
WHEREAS:
Sugen wishes to finance research and development which is being, and
will be, carried out and conducted (i) at the Hebrew University of
Jerusalem under the supervision of Professor Alexander Levitzki (the
"Researcher") and (ii) at Related Institutions (as hereinafter
defined) with regard to the Research (as hereinafter defined);
AND WHEREAS:
Yissum is the exclusive representative of the University and of the
Researcher in all respects relating to the Research and/or this
Agreement and all rights whatsoever in the Research and/or the results
thereof shall belong to Yissum, subject to the terms of this
Agreement;
AND WHEREAS:
Yissum has filed patent applications relating to the above, as
detailed in Appendix A to this Agreement;
1. []= CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
AND WHEREAS:
Yissum agrees to procure the performance of the Research in
accordance with the terms and conditions of this Agreement and
procure the performance of the University, the Researcher and any
Related Institutions in accordance with the terms and conditions of
this Agreement;
AND WHEREAS:
Sugen wishes to obtain a license from Yissum for the commercial
development, production and marketing of Products based on the
Proprietary Rights as defined below and/or the results thereof and/or
deriving therefrom, subject as provided below in this Agreement;
AND WHEREAS:
Yissum agrees to grant Sugen a license in accordance with and subject
to the terms and conditions of this Agreement;
ACCORDINGLY, IT IS AGREED BETWEEN THE PARTIES AS FOLLOWS:
RECITALS AND DEFINITIONS
1. (a) The recitals hereto constitute an integral part hereof.
(b) In this Agreement the following expressions shall have the meanings
appearing alongside them, unless the context otherwise requires.
"AFFILIATE" - means a person or entity that, directly or indirectly,
through one or more intermediaries, controls, is controlled by, or
is under common control with the entity specified. For purposes of
this definition, control shall mean (i) the direct or indirect
ownership of at least twenty percent of the stock entitled to vote for
the election of directors of such entity; or (ii) a twenty percent or
greater ownership interest in the profits of such entity; or (iii) in
the case of a special purpose research and development entity formed
to fund, in whole or in part, the Research hereunder, the right or
option to acquire directly, or indirectly through one or more
intermediaries, the interest of such entity in the Proprietary Rights,
Products and Research referred to in this Agreement. This definition
shall be subject to the understanding that if a research and
development entity should at any time be an Affiliate it shall remain
an Affiliate thereafter and that a research and development entity
shall only be an Affiliate if it is sublicensed by SUGEN under this
Agreement and has agreed to be bound by the appropriate obligations of
this Agreement with respect to any such sublicense.
"AGREEMENT" - means this agreement (together with all the appendices
and annexes hereto), as the same may be amended and restated.
2. []= CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
"COMPANY" - means Sugen together with its Affiliates.
"CONSIDERATION" - has the meaning set forth in Section 3(a) of this
Agreement.
"EFFECTIVE DATE" - means January 1, 1994.
"FIELD" - means the prevention, mitigation, treatment, cure or
diagnosis of [
]
"FDA" - means the Food and Drug Administration of the United States of
America.
"HUJ COMPOUNDS" - means any compound useful in the Field discovered by
the Researcher, and/or students or employees of the University under
the guidance of or in connection or collaboration with the Researcher,
and/or a Related Institution, which discovery either was [
]
"HSC" - means the Hospital for Sick Children, an institution existing
under the laws of Toronto, Ontario, Canada and having a place of
business at 555 University Avenue, Toronto, Ontario M5G 1X8, Canada.
"KNOW-HOW" - means any information or materials useful in the Field
discovered, developed or acquired by or on behalf of students or
employees of the University and/or any Related Institution, including
the Researcher, and under the guidance of, or in connection or
collaboration with, the Researcher, during the term and in the course
of the Research. For the avoidance of doubt any research done under
the auspices of the University, but not done under the guidance of or
in connection or collaboration with the Researcher shall not be
governed by this Agreement.
"LICENSE" - has the meaning set forth in Section 4 of this Agreement.
"MEDICINAL COMPOUND" - means a compound or a modification, analog or
derivative of a compound originally discovered outside of the
Research, which compound, modification, analog or derivative is made
by the Researcher and/or students or employees of the University
and/or a Related Institution under the guidance of or in connection or
collaboration with the Researcher.
"MPI" - means collectively, MAX-PLANCK-GESELLSCHAFT zur Foerderung der
Wissenschaften e.V., located in Residenzstrasse la, W-8000 Muenchen 2;
MAX-PLANCK-INSTITUT fur Biochemie, Abteilung Molekularbiologie located
in Am Klopferspitz 18a, W-8033 Martinsried; MAX-PLANCK-INSTITUT fur
Physiologische und Klinische Forschung located in Parkstrabe 1,61231
Bad
3. []= CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
Nauheim; and GARCHING INSTRUMENTE Gesellschaft zur industiellen
Nutzung von Forschungsergebnissen m.b.H. located in Koeniginstrasse
19, W-8000 Muenchen 22.
"NET SALES" - means all amounts in respect whereof invoices are issued
and paid in connection with the sale of Products or Medicinal
Compounds, respectively, for use in the Field to any person or entity,
other than sales between Sugen and an Affiliate of Sugen, after
deduction of all the following to the extent applicable to such sale:
[
]
"NYU"- means New York University, a university corporation organized
and existing under the laws of the State of New York and having a
place of business at 70 Washington Square South, New York, New York
10012.
"PATENT RIGHTS" - means the University's and Yissum's share in the
patents and patent applications listed in Appendix A and in any other
United States or Foreign patent application and any divisions,
continuations, in whole or in part, reissues, renewals and extensions
thereof, and patents issuing thereon:
(i) which claim inventions covered by the patents and patent
applications listed in Appendix A which Appendix the parties
believe to be, but may not be, a complete list of the applicable
patents and patent applications; or
(ii) which claim inventions useful in the Field that are made, in
whole or in part, [
] which are based on
or arise from the Research.
"PERIODIC REPORT" - has the meaning set forth in Section 7(g) of this
Agreement.
"PRODUCT" - means [
]
"PROPRIETARY RIGHTS" - means all Know-How and Patent Rights.
"RELATED INSTITUTION" - means any institution with which Yissum or
the University has entered into a cooperation agreement with respect
to the subject matter of this Agreement, [
]
"RESEARCH" - means the research and development in the Field which is
being carried out and conducted during the Research Period under the
direction of or
4. []= CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
in connection or collaboration with the Researcher,
and/or by a Related Institution, including but not limited to the
discovery, synthesis and testing of novel compounds.
"RESEARCH PERIOD" - means the period beginning January 1, 1994 and
ending on September 30, 1997 and any extension thereof pursuant to the
terms of this Agreement.
"RESEARCHER" - has the meaning set forth on page one of this
Agreement.
"SCIENTIFIC REPORT" - has the meaning set forth in Section 2(e) of
this Agreement.
"SUBLICENSE" - has the meaning set forth in Section 6 of this
Agreement.
"TERRITORY" - means all the countries of the world.
"UNIVERSITY" - means the Hebrew University of Jerusalem and/or each of
its adjuncts and/or branches.
"WORK PLAN" - means each of the periodic work plans described in
Section 2(b).
"YISSUM" - has the meaning set forth on page one of this Agreement.
THE RESEARCH AND ITS PERFORMANCE
2. (a) Sugen hereby undertakes to finance performance of the Research and
Yissum takes it upon itself to procure the Research's performance in
the University, all as provided below in this Agreement.
(b) Yissum hereby agrees to procure the production of Work Plans, and the
Research's performance in accordance with each Work Plan, in
accordance with this Agreement. Yissum shall cause the Researcher to
produce a Work Plan, in form and substance reasonably satisfactory to
Sugen, for each twelve-month period (or lesser period or periods if
agreed between the parties) during the Research Period prior to the
performance of services thereunder and in no event later than the date
of October 1 (or, if earlier, the date that is the last day of any
agreed to Work Plan) during each year during the Research Period.
Each Work Plan will set forth goals, objectives and a time line and
will include, without limitation, priorities and guidelines in
connection with the Research to be performed.
(c) Sugen may apply to Yissum for an extension of the Research Period for
a further period of one year, provided that written notice thereof is
given to Yissum [
] The parties shall decide between them by agreement
negotiated in good faith the amount of the reasonable supplemental
finance payable by Sugen during the extension pursuant to this
section, Yissum may request an extension to the Research Period for a
further
5. []= CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
period of [ ] by notice to Sugen at least [ ]
prior to the expiration of the Research Period. Such extension shall
not require Sugen to remit any funds to Yissum for such period.
(d) If the Research Period is extended pursuant to the provisions of
Subsection (c) above, the provisions of this Agreement shall apply to
the additional period.
(e) Yissum shall cause the Researcher to provide Sugen with written
reports detailing the results and conclusions of the Research (each a
"Scientific Report"), no later than the end of each six month period
during the Research Period. Sugen may obtain interim written reports
from the Researcher as Sugen may reasonably request. For the
avoidance of doubt, it is hereby expressed that this Agreement in
general and this section in particular shall not constitute an
obligation and/or confirmation on the part of Yissum that any specific
results and/or conclusions will be achieved in consequence of the
Research's performance and/or that a product may be developed as a
result of the Research.
(f) Sugen may at any time during the Research Period obtain in writing any
information relating to the Research's performance from Yissum,
including plans and documents relating thereto. Sugen's
representative may attend the site where the Research is being carried
out, provided that the time of his attendance is first coordinated
with Yissum and the Researcher. In addition, Yissum shall cause the
Researcher to be available, at Sugen's principal place of business or
such other location as may be mutually agreeable, for at least two
face-to-face meetings with Sugen per twelve-month period to discuss
and report on the Research. Sugen shall reimburse the Researcher for
reasonable expenses that he may incur in attending such meetings upon
presentation of appropriate receipts therefor. In connection with the
third twelve-month period under this Agreement, the first such face-
to-face meeting shall occur in February of 1996.
(g) Yissum shall supply Sugen and its Affiliates with sufficient
quantities of HUJ Compounds or leads for research and development
purposes as Sugen shall reasonably request during the Research Period.
(h) Performance of the Research may be performed in cooperation with the
Related Institutions in accordance with an appropriate cooperation
agreement between Yissum and the Related Institution, which agreement
shall be subject to the consent of Sugen which consent shall not be
unreasonably withheld. Yissum shall cause each Related Institution to
fully perform all of such Related Institution's obligations (including
without limitation as to matters of confidentiality) under such
cooperation agreement and consistent with the terms and conditions of
this Agreement.
FINANCE OF THE RESEARCH
3. (a) In consideration for the performance of the Research and in order to
finance it, Sugen undertakes to pay Yissum the amount detailed in the
consideration
6. []= CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
appendix annexed hereto as an integral part hereof and
marked as Appendix B (hereinafter referred to as "the Consideration").
The Consideration shall be paid to Yissum at the times and in the
installments and in accordance with the other terms and conditions
detailed in Appendix B. (Yissum's disbursement to any Related
Institution of any amounts received by Yissum pursuant to this section
shall be as reasonably directed by the Researcher and in accordance
with the Work Plan.)
(b) It is agreed between the parties that the provisions of this Agreement
shall not prevent Yissum and/or the University and/or the Researcher
from obtaining further finance from other entities for the Research,
provided that such other entities shall not be granted rights in the
Research prejudicing or limiting the rights granted to Sugen in
accordance herewith.
(c) Should the Research Period be extended as detailed in Section 2 above
and/or for any other reason, the parties shall determine by agreement
the supplemental finance for the period of the extension and such
reasonable supplement shall be added to the Consideration. The terms
and conditions of this Agreement shall apply MUTATIS MUTANDIS to the
supplemental Consideration.
THE LICENSE
4. Yissum hereby grants and Sugen hereby accepts from Yissum an exclusive
license in the Territory, with the right to sublicense, to practice the
Proprietary Rights to discover, develop, make, have made, use or sell
Products subject always to and in accordance with the terms and conditions
hereof (the "License").
TERM OF THE LICENSE
5. The License shall be effective as of the Effective Date. Unless otherwise
terminated as provided in Section 15, the License shall expire, on a
Product by Product and country by country basis, (i) [ ] the
last to expire of the relevant patents containing a valid claim
covering a Product in a country, or (ii) if no patent should issue
containing a valid claim covering a Product in a country, [ ] the
first commercial sale of the Product in such country. After
termination of the License pursuant to this Section 5 in respect of a
Product in a country, Sugen shall have a fully paid up right and license to
continue to practice the Proprietary Rights to discover, develop, make,
have made, use and sell such Product in such country.
SUBLICENSES
6. (a) Sugen shall be entitled to grant sublicenses under the License (each a
"Sublicense) on terms and conditions in compliance with the terms and
conditions of this Agreement to third parties, subject to the
following conditions:
(i) Each Sublicense granted hereunder shall be subject and
subordinate to the terms and conditions of this Agreement and a copy
shall be provided to Yissum;
7. []= CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
(ii) Subject to the last sentence of this Subsection (a), the
sublicense shall expire automatically on the termination of the
License pursuant to Section 15(c) because of a material breach or
sdefault by Sugen;
(iii) Any sublicensee of Sugen [
] and
(iv) Both during the term of the Sublicense and thereafter the
sublicensee shall be bound by a confidentiality obligation similar to
that imposed on Sugen in Section 11 below.
In the event that the License is terminated under Section 15 or
otherwise, any Sublicense granted by Sugen under the License and any
further sublicenses thereunder shall, upon the written request of such
sublicensee, remain in full force and effect, provided that [
]
(b) If Sugen should grant a Sublicense to any third party, Sugen will pay
to Yissum [ ] of any sublicense fee or any other
consideration (except for royalties which will be paid as detailed in
Section 7 below) that Sugen may receive for the Sublicense of a
Product [
] PROVIDED, HOWEVER,
that if Sugen is required to make a payment to any third party, other
than MPI, NYU, or HSC, in connection with the subject matter of such
Sublicense, then the amount payable to Yissum shall be reduced by [
] but in no event shall Yissum receive less than
[ ] and PROVIDED, FURTHER, that if Sugen is required to
make a payment to MPI and/or NYU and/or HSC in connection with the
subject matter of such Sublicense, then the [ ] share of
any such Sublicense fee or other consideration that would otherwise be
payable to Yissum shall be [
] Such payment will
be made to Yissum within [ ] days from the date that it is
received by Sugen. The Company will provide Yissum with reasonable
documentation regarding [
]
(c) If Sugen should grant a Sublicense as detailed above, and, as part of
such Sublicense, Sugen should receive any funds designated for
research and development purposes with respect to a Product, Sugen
will pay to Yissum [
8. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
] to be used by Yissum solely
for performance of the Research at the University.
(d) The sublicensee shall agree to indemnify Yissum in a manner
substantially similar to the indemnification provisions in Section 14
of this Agreement.
CONSIDERATION
7. As additional consideration for the grant of the License and during the
term provided in Section 5 with respect to each Product hereunder, the
Company shall pay to Yissum:
(a) A royalty of [ ] of the Net Sales by Sugen and its
sublicensees of a Product which is covered by a valid claim of an
issued patent on a Product by Product and country by country basis;
PROVIDED, HOWEVER, that if Sugen or its sublicensees are required to
pay royalties to a third party other than MPI, NYU or HSC in order to
make, use or sell any Product, Sugen shall be entitled to set off [
] against royalties due to
Yissum with respect to such Product, but in no event shall the
royalties due under this section be less than [ ] except
as set forth in Subsection (c) below; and
(b) (i) A royalty of [ ] of Net Sales of a Product by Sugen and
its sublicensees that is covered by Proprietary Rights which do not
include a valid claim included in an issued patent on a Product by
Product and country by country basis, and (ii) for a period of [
] from the first commercial sale, a royalty of [ ] of Net
Sales on a country by country basis of a Medicinal Compound.
(c) Notwithstanding Subsection (a) above, (i) if Sugen is also required to
pay royalties in order to manufacture, have manufactured, use or sell
any Product to either MPI or NYU or HSC, the royalties payable to
Yissum pursuant to Subsection (a) hereof shall be [ ]
and (ii) if Sugen is required to pay such royalties to any two of
MPI, NYU and HSC the royalties payable to Yissum under Subsection (a)
hereof shall be [ ]
(d) No royalties shall be payable on any Net Sales between Sugen and an
Affiliate of Sugen, but royalties shall be payable on the subsequent
resale of the Product.
(e) Within [ ] following receipt by Sugen or a sublicensee
of final regulatory approval in the United States of America to market
a Product, Sugen shall pay Yissum for such Product the greater of
(i) [ ]
or (ii) [
]
In any event, Yissum shall receive a minimum of [ ] upon
the final regulatory approval in the United States of America to
market each Product, whether such Product shall be marketed by Sugen
or a sublicensee; PROVIDED, however, that Yissum agrees that it shall
not receive more than one such payment for the final regulatory
approval in the
9. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
United States of America to market any Product including any
modification of a Product.
(f) Notwithstanding any other provision in this Agreement, the Company
shall only be required to pay one royalty in respect to the Net Sales
of a Product; and notwithstanding Subsection 7(e), the Company shall
only be required to make one payment for receipt of final regulatory
approval in the United States to market a Product no matter how many
indications may ultimately be approved for the Product.
(g) Every [ ] commencing from the date of the first commercial
sale, Sugen shall furnish Yissum with a [ ] report
(hereinafter referred to as "the Periodic Report") detailing the
total sales effected during the Reporting Period and the total
royalties due to Yissum in respect of that period. The Periodic
Report shall be submitted [ ] after
the end of the Reporting Period.
(h) The Periodic Reports shall contain full particulars of all sales made
by the Company or by sublicensees insofar as sublicenses have been
granted as provided herein, including sales broken down according to
countries, a breakdown of the number of Products sold, discounts,
returns, the currency in which the sales were made, invoice date and
all other relevant information enabling the royalties payable to be
determined.
(i) On the date prescribed for submission of each Periodic Report, Sugen
shall pay the royalties due to Yissum in accordance with the report.
Any such royalties relating to transactions in foreign currencies
shall be converted into United States dollars based on the closing
buying rate of the Citibank, N.A. of New York applicable to
transactions for the particular currency on the last business day of
the period for which such royalty is due. The royalties shall be
computed in United States dollars and paid in Israeli shekels based on
the closing buying rate of Citibank, N.A. of New York on the date of
actual payment of the royalties, and if no such rate is published as
aforesaid, based on the first sale rate published thereafter. Payment
of Value Added Tax (if charged) shall be [ ] each payment in
accordance with the statutory rate then in force.
(j) Sugen shall maintain, and shall require all of its sublicensees to
maintain for a period of [ ] after the end of the calendar
year to which they relate, true and complete books of account
consistent with standard accounting practice containing an accurate
record of all data necessary for the proper computation of all
payments due to Yissum under the terms of this Agreement.
(k) Yissum shall have the right, through a nationally recognized firm of
independent certified public accountants, to examine the books
referred to in Subsection (i) (not more than once in any calendar
year) within two calendar years after the end of the calendar year to
which they relate for the purpose of verifying the payments due to
Yissum under the terms of this Agreement. Any such
10. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
examination shall be made during normal business hours at the
place where the records are regularly kept. Yissum agrees that
the information furnished to it as a result of any such
examination shall be limited to a statement by such firm of
certified public accountants to the effect that they have
reviewed such books of account and that the amounts of the
payments due under the terms of this Agreement are in conformity
with such books of account and the applicable provisions of this
Agreement, or setting forth any required adjustment. The fees
and expenses of such examination shall be borne by Yissum;
PROVIDED, HOWEVER, that if such examination reveals an
underpayment of more than [ ]for any period, Sugen
shall promptly reimburse Yissum for such reasonable fees and
expenses. Any such accountants shall be required to keep all
information derived from such examination confidential. Nothing
in this Subsection shall impair the obligation of Sugen to pay
the full amount of all royalties due under this Agreement.
(l) Any sum of money which one party hereto is liable to pay the other
which is not duly paid shall bear interest from the due date for
payment until the actual date of payment at the [ ]
for the time being prevailing as set by the London Interbank
offering rate.
(m) The provisions of this section are fundamental terms of the Agreement
and the breach thereof shall constitute a fundamental breach of the
Agreement.
DEVELOPMENT AND COMMERCIALIZATION
8. (a) Sugen or its sublicensees shall use reasonable diligence consistent
with prudent commercial practices to evaluate the results of the
Research and any commercial opportunities with regard to Products
arising therefrom.
(b) Sugen shall provide Yissum annually with written reports on any
material activities and actions undertaken by Sugen to develop and
commercialize a Product.
(c) Upon expiration of the Research Period or termination of the Agreement
pursuant to Section 15 (other than because of a material breach or
default by Sugen), Sugen shall provide to Yissum in writing a list of
the compounds that it believes show promise in the Field (the "Listed
Compounds"), together with a Termination Notice in the form attached
hereto as EXHIBIT A. Sugen shall thereby maintain all rights under
the License to the Listed Compounds and any modifications, analogs or
derivatives thereof, and the License shall terminate with respect to
all other HUJ Compounds covered by Proprietary Rights.
(d) If Sugen or its sublicensee has not initiated clinical trials with
respect to [ ] of the Listed Compounds (or a modification,
analog or derivative thereof) within [ ] from such expiration
or termination, the License shall terminate with respect to all the
Listed Compounds. Similarly, if Sugen or its sublicensee has not
initiated clinical trials with respect to [ ] of the Listed
11. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
Compounds (or modifications, analogs or derivatives thereof) within
[ ] from such expiration, the License shall terminate with
respect to the Listed Compounds other than the Listed Compound (and
its modifications, analogs and derivatives) with respect to which
clinical trials had been initiated within the required [ ]
time period. If any of the Listed Compounds should be covered by a
valid claim of an issued patent or by a claim in any pending patent
application filed not later than [ ] after expiration of the
Research Period, Sugen shall have exclusive rights for use in the
Field to all other compounds covered by such patent or patent
application so long as it maintains rights to the Listed Compounds.
Sugen shall also have exclusive rights for use in the Field to all
other compounds covered by such patent or patent applications so long
as it maintains rights to the Listed Compounds. Sugen agrees to
inform Yissum at any time that it no longer believes that a Listed
Compound shows promise in the Field and to terminate the License with
respect to such Listed Compound.
OWNERSHIP
9. It is expressly agreed between the parties that all rights in the
Research and the Proprietary Rights shall be solely owned by Yissum but
licensed to Sugen as set forth in this Agreement, except to the extent
that any Proprietary Rights are the joint invention of Sugen and Yissum
and/or a Related Institution in which case such Proprietary Rights shall
be jointly owned as determined in accordance with the patent laws of
the United States of America. Sugen shall take reasonable steps to
provide full force to Yissum's rights as aforesaid. Notwithstanding
anything to the contrary contained herein, it is expressly agreed between
the parties that all rights in and to Medicinal Compounds shall be
solely owned by Sugen.
PATENTS
10. (a) Yissum will cause the University and any Related Institution to
provide prompt and full disclosure to Sugen in writing of
any inventions made during the Research Period and/or in the
course of and/or based on or which arises from performance
of the Research which may constitute the basis for potential
patents. Should patents be appropriate therein, Sugen agrees
to apply for patents in the United States, Israel, Japan,
the European Community and Canada and to comply with all
requirements for their prosecution in respect of appropriate
HUJ Compounds included in Proprietary Rights and/or
resulting from or based on the Research. Sugen shall
determine the world wide patent strategy in consultation
with Yissum and agrees to keep Yissum adequately informed as
to the status of such strategy and any patent applications.
Notwithstanding the foregoing, Yissum may at its sole
decision appoint its own patent counsel to prepare the
patents in Israel as long as such counsel is supervised by
and cooperates fully with Sugen's patent counsel, and Yissum
provides promptly to Sugen all relevant materials and
communications that it may receive from such Israeli
counsel.
12. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
(b) The parties shall consult and make every effort to reach agreement in
all respects relating to the manner of making patent applications and
their prosecution, including the time of making the applications, the
countries where applications will be made and all other particulars
relating to patent prosecution. Sugen shall act diligently in filing
and prosecuting all patent applications that the parties agree shall
be filed. Nevertheless, Sugen in its discretion may determine that it
should not continue the prosecution of any patent application in a
particular country, in which event it shall so notify Yissum in
writing and Yissum may then continue the prosecution solely for its
own account and at its expense and Sugen shall have no further rights
with respect to any patent that may issue in the particular country as
the result of the continued prosecution.
(c) Each patent application shall be made and prosecuted at Sugen's
expense in the name of the inventors and on behalf of Yissum.
(d) Notwithstanding the foregoing, Yissum shall have no obligation that
patents or patent applications will indeed be made and/or registered
and/or registrable in respect of the Proprietary Rights and/or Product
and/or any part thereof, nor that any patent that actually issues will
afford due protection against any third party. Nothing in this
Agreement or Appendix A shall constitute confirmation and/or a
representation by Yissum in connection with [
] of any of the Patent Rights, and [
].
(e) The parties shall assist each other in all respects relating to the
preparation of documents for the registration of a patent or any
patent-related right forthwith upon the other's request, and Yissum
shall cause the University and any Related Institution to assist Sugen
in assembling inventorship information and data for filing and
prosecution of patent applications as aforesaid.
(f) In the event a party to this Agreement acquires information that a
third party is infringing one or more of the Patent Rights, the party
acquiring such information shall promptly notify the other party to
the Agreement in writing of such infringement.
(g) In the event of an infringement of a Patent Right, [ ] shall be
privileged but not required to bring suit against the infringer. The
expenses of such suit or suits that [ ] elects to bring, including
any reasonable expenses of [ ] and/or the University incurred in
conjunction with the prosecution of such suit or the settlement
thereof, shall be paid for entirely by [ ] and [ ] shall hold
[ ] and/or the University free, clear and harmless from and
against any and all costs of such litigation, [
] In the event [ ] exercises the right to sue herein
conferred, it shall have the right to first reimburse itself out of
any sums recovered in such suit or in settlement thereof for all costs
and expenses of every kind and character, including [
] and if
after such
13. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
reimbursement, any funds shall remain from said recovery, [ ]
shall promptly pay to [ ] an amount equal to [ ]
of such remainder and [ ] shall be entitled to receive and
retain the balance of the remainder of such recovery. If [ ] does
not bring suit against said infringer pursuant to this Subsection
10(g) or has not commenced negotiations with said infringer for
discontinuance of said infringement within ninety days after receipt
of such notice, [ ] shall have the right, but shall not be
obligated, to bring suit for such infringement and to join Sugen as a
party plaintiff. The expenses of such suit or suits that [ ]
elects to bring, including any reasonable expenses of [ ] incurred
in conjunction with the prosecution of such suit or the settlement
thereof, shall be paid for entirely by [ ] and [ ] shall
hold [ ] free, clear and harmless from and against any and all
costs and expenses of such litigation, [
] If [ ] has commenced negotiations with an alleged
infringer of the Patent Right for discontinuance of such infringement
within such ninety-day period, [ ] shall have an additional ninety
days from the termination of such initial ninety-day period to
conclude its negotiations before [ ] may bring suit for such
infringement. In the event [ ] brings suit for infringement of
any Patent Right, [ ] shall have the right to first reimburse
itself out of any sums recovered in such suit or settlement thereof
for all costs and expenses of every kind and character, [
] any funds shall remain from
said recovery, [ ] shall promptly pay to [ ] an amount equal
to [ ] of such remainder and [ ] shall be entitled
to receive and retain the balance of the remainder of such recovery.
[ ] agrees to cooperate fully with [ ] at the request of
[ ] including by giving testimony and producing documents lawfully
requested, in the prosecution of any suit by [ ] for infringement
of a Patent Right; PROVIDED, HOWEVER, that [ ] shall pay all
reasonable expenses [ ]
incurred by [ ] in connection with such cooperation. [ ]
shall, and shall [
] cooperate fully
with [ ] at the request of [ ] including by giving testimony
and producing documents lawfully requested, in the prosecution of any
suit by [ ] for infringement of a Patent Right; PROVIDED, HOWEVER,
that [ ] shall pay all reasonable expenses [
] incurred by [ ] in connection with such cooperation.
(h) Sugen agrees to pay to Yissum the sums paid by Yissum in regard to the
filing and execution costs relating to the Patent/s detailed in
Appendix A so long as such Patent/s are not included in the agreement
effective September 23, 1993, between the parties; PROVIDED, HOWEVER
that such sums shall not exceed [ ] The payment shall be paid
to Yissum within 30 days from the execution of this Agreement. In
addition, Sugen will pay any further expenses reasonably incurred
regarding the patents and patent applications listed in Appendix A
after the
14. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
Effective Date, provided Sugen will only be required to pay
such further expenses that are first authorized in writing by Sugen.
(i) The provisions of this section are fundamental provisions of the
Agreement, the breach thereof constituting a fundamental breach of the
Agreement if not cured by the Company within sixty days of receipt of
written notice of any such default.
CONFIDENTIALITY
11. (a) Sugen and Yissum each agree that, during the term of this Agreement
and subsequent thereto, they shall maintain in confidence, and Yissum
shall cause the Researcher, the University, any Related Institution
and their employees to maintain in confidence, all information,
details and data which is in and/or comes to their knowledge and/or
that of their employees, representatives and/or any person acting on
their behalf relating to the Research, the Proprietary Rights, any
Product, any Medicinal Compound, Yissum, the University, Sugen, their
researchers and employees. The parties agree not to convey or
disclose any such confidential information, and Yissum shall cause the
Researcher, the University, any Related Institution and their
employees not to convey or disclose any such confidential information,
to any entity or person that is not bound by a written agreement of
confidentiality except as may be required for any regulatory agency
filing or otherwise as required by law or as otherwise necessary for
performance (or enjoyment of rights) under this Agreement.
(b) The obligation contained in this section shall not apply to
information which is in the public domain as at the date hereof or to
information which hereafter comes into the public domain, unless Sugen
or Yissum breaches its obligations pursuant to this Agreement as a
result whereof the information comes into the public domain.
(c) Sugen and Yissum may disclose details and information to their
employees, consultants and sublicensees as necessary for the
performance of their obligations pursuant to this Agreement, PROVIDED,
HOWEVER, that any such employee, consultant or sublicensee is bound in
writing to maintain the confidentiality of such details and
information.
(d) Without prejudice to the foregoing, the Company and its sublicensees
shall not mention the University's name in connection with this
Agreement in any public disclosure without obtaining Yissum's prior
written consent, which consent shall not be unreasonably withheld, or
as may be required by applicable law. The Company shall further
procure that any entity connected with and subordinate to it shall not
mention the University's name in any public disclosure as aforesaid.
(e) Yissum shall cause the University's and any Related Institution's
researchers, employees and/or any other person involved in or
otherwise privy to the Research or the Proprietary Rights to execute
an agreement in writing for the maintenance
15. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
of confidentiality. At the request of Sugen, Yissum shall provide
to Sugen a copy of any such agreement.
(f) The breach of this section, including the subsections hereof, by any
person or entity other than Yissum or Sugen shall not be deemed a
breach of the Agreement if [
]
(g) Expiration or termination of this Agreement shall not release either
party from its obligations pursuant to this section.
(h) The provisions of this section are fundamental provisions of the
Agreement and their breach shall constitute a fundamental breach of
the Agreement.
(i) In order to insure the confidentiality of proprietary compounds,
Yissum will cause the University, any Related Institution and the
Researcher not to transfer any HUJ Compound to any third party unless
Sugen is first informed in writing of the proposed transfer, is given
a detailed description of the compound desired to be transferred and
the transferee, and Sugen has not stated in writing within thirty days
after receipt of such notice that it has an interest in such compound.
If Sugen states that it does have an interest in the compound, no
transfer will be made and Sugen will have six months thereafter to
determine the extent of its interest and whether it should continue to
be held in confidence. Under no circumstances will Yissum allow the
University, any Related Institution or the Researcher to transfer any
Medicinal Compound to any third party without the express written
consent of Sugen. In any event, transfer of a proprietary compound
(whether an HUJ Compound or a Medicinal Compound) to a third party, if
at all, shall only be made pursuant to a Materials Transfer Agreement
signed by the third party and in form satisfactory to Sugen.
PUBLICATIONS
12. (a) Yissum shall ensure that prior to submission for publication of a
manuscript or abstract or any oral presentation at any scientific or
similar meeting describing any aspect of the Research or its results
or any HUJ Compound or Medicinal Compound, the University, any Related
Institution and/or their students and employees including the
Researcher shall send Sugen a copy of the manuscript or abstract to be
submitted or outline of an oral presentation and shall allow Sugen [
] from the receipt by Sugen of such mailing to determine
whether the manuscript, abstract, outline or presentation contains
subject matter for which patent protection should be sought prior to
publication thereof or which is otherwise confidential. Should Sugen
believe the subject matter of the manuscript, abstract, outline or
presentation contains a patentable invention or otherwise contains
confidential information, then, prior to the expiration of such [
] period, Sugen shall give written notification to Yissum and
the author (if reasonably available) of its determination that such
manuscript, abstract,
16. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
outline or presentation contains patentable subject matter for which
patent protection should be sought or otherwise contains confidential
information.
(b) After the expiration of such [ ] period, unless Yissum
has received the written notice specified above from Sugen, Yissum,
the University and the Researcher shall be free to submit or to allow
the University's students and employees to submit such manuscript,
abstract, outline or presentation for publication in any manner
consistent with academic standards.
(c) Upon receipt of such written notice from Sugen, Yissum, the
University, any Related Institution, the Researcher and the
University's and any Related Institution's students and employees will
thereafter delay submission of the manuscript, abstract, outline or
presentation for an additional period of [ ] to permit
the preparation and filing, in accordance with Section 10 hereof, of a
patent application on the subject matter to be disclosed in such
manuscript, abstract, outline or presentation. After expiration of
such [ ] period, or the filing of a patent application on
each such invention, whichever shall occur first, Yissum, the
University and the Researcher and the University's students and
employees shall be free to submit the manuscript, abstract, outline or
presentation and to publish the disclosed results. In no event,
however, will the chemical structure of any compound of interest to
Sugen be made public before it is published in a patent application
unless otherwise expressly approved by Sugen in writing.
(d) The provisions of this section shall not prejudice any other right
which Yissum or Sugen has pursuant to this Agreement and at law.
MASTER AND SERVANT RELATIONSHIP
13. It is hereby agreed and declared between the parties
that the parties shall act in all respects relating to this
Agreement as independent contractors and there neither is nor
shall be any master and servant or principal and agent
relationship and/or partnership in the relationship between the
Company and/or any or its employees and/or any person or entity
connected with it on the one hand and Yissum on the other hand.
LIABILITY AND INDEMNITY
14. (a) Sugen shall, subject to the provisions of Section 14(b), indemnify,
defend and hold harmless Yissum and the University and its employees,
students and agents and their respective successors, heirs and assigns
(the "Indemnitees"), against any liability, damage, loss or expense
(including reasonable attorneys' fees and expenses of litigation)
incurred by or imposed on the Indemnitees in connection with any
claims, suits, actions, demands or judgments (i) arising out of the
production, manufacture, sale, use in commerce or in human clinical
trials, lease or promotion by Sugen or any Affiliate or sublicensee of
Sugen under the License, of any Product, relating to, or developed
pursuant to, this Agreement
17. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
or (ii) arising out of any other activities to be carried out by Sugen,
or any sublicensee under the License, pursuant to this Agreement.
(b) Sugen's indemnification obligation under Section 14(a)(i) shall apply
to any liability, damage, loss or expense whether or not it is
attributable to the negligent activities of the Indemnitees. Sugen's
indemnification obligation under Section 14(a)(ii) shall not apply to
any liability, damage, loss or expense to the extent that it is
attributable to the negligent activities of any Indemnitee.
(c) Sugen agrees, at its own expense, to defend against any actions
brought or filed against any Indemnitee with respect to the subject of
indemnity to which such Indemnitee is entitled hereunder whether or
not such actions are rightfully brought.
TERMINATION OF THE AGREEMENT
15. (a) (i) Prior to September 30, 1994 Sugen maintains the right to
reduce the scope of the Research on terms and conditions which will be
approved by Yissum, and/or to cancel it on condition that Sugen gives
written notice to Yissum at least [ ] in advance. After
September 30, 1994 the Company maintains the right to reduce the scope
of the Research, and/or to cancel it on condition that Sugen shall give
written notice to Yissum at least 120 days in advance. If Sugen
decides to reduce the scope of the Research, the payment shall be
reduced in accordance with and in consideration of the obligations
incurred by Yissum that are not able to be canceled. In addition, if
the Researcher should at any time no longer be the active leader of
the Research at the University and he is not replaced by another
individual satisfactory to Sugen in its sole discretion, Sugen may
reduce the scope of or cancel the Research if it gives written notice
to Yissum at least thirty days in advance.
(ii) Should Sugen decide to cancel the Research, Sugen shall pay to
Yissum all reasonable expenses incurred by the Research, and in
accordance with the Work Plan, prior to the date of notice of
cancellation and, in addition, up to [ ] of further expenses
arising from the Research, in accordance with the Work Plan and
irrevocably committed but not yet paid as of the date of notice of
cancellation, against invoices presented, until the date of
cancellation.
(iii) If termination is effected under this Section 15(a), right,
title and interest in the Proprietary Rights shall be governed by
Section 8(c).
(b) Unless terminated pursuant to Section 15(c) below, this Agreement
shall expire upon the expiration of the royalty term of the License in
all countries for all Products as set forth in Section 5 hereof.
(c) At any time prior to the expiration of this Agreement, either Yissum
or Sugen may terminate this Agreement forthwith for cause by the other
party, as "cause" is described below, by giving written notice to the
other party. "Cause" for
18. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
termination of this Agreement by Sugen shall be deemed to exist (i)
[
]
or (ii) [
] during the
Research Period prior to the date of [
] during each
year during the Research Period or [
] "Cause"
for termination of this Agreement by Yissum shall be deemed to exist
if [
] In addition, "Cause" for termination by
one party of this Agreement shall be deemed to exist if, with respect
to the other party:
(A) (I) a voluntary case under any applicable bankruptcy, insolvency
or other similar law now or hereafter in effect shall be instituted by
such party, or such party shall consent to the entry of an order for
relief in an involuntary case under any such law; (II) a general
assignment for the benefit of creditors shall be made by such party;
(III) such party shall consent to the appointment of or possession by
a receiver, liquidator, trustee, custodian, sequestrator or similar
official of such party or of any substantial part of its property; or
(IV) such party shall adopt a board resolution in furtherance of any
of the foregoing actions specified in this Subsection (A); or
(B) a decree or order for relief by a court of competent jurisdiction
shall be entered in respect of such party in an involuntary case under
any applicable bankruptcy, insolvency or other similar law now or
hereafter in effect, or appointing a receiver, liquidator, trustee,
sequestrator or other similar official of such party or of any
substantial part winding up or liquidation of its affairs, and any
such decree or order shall remain unstayed or undischarged and in
effect for a period of sixty days.
If any act or omission by any sublicensee under the License (including
any further sublicensee thereunder) shall cause Sugen to be in breach
or default in the performance of observance or any of the provisions
of this Agreement and such Sublicense is terminated, then
notwithstanding anything to the contrary contained in this Agreement,
Yissum shall not have the right to terminate this Agreement for any
such breach or default.
(d) If Sugen shall terminate this Agreement for Cause, [
] If Yissum shall terminate this Agreement for Cause, [
] If Yissum shall
19. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
terminate this Agreement for Cause, [
] on the terms and conditions of this
Agreement in connection with any continued or further use of such
intellectual property or such Medicinal Compounds by Sugen.
(e) Termination of this Agreement shall not relieve either party of any
obligation to the other party which it was liable to perform prior to
the Agreement's termination. In addition, if termination shall be
effected by Sugen for Cause, Sugen shall have the rights to all
Proprietary Rights developed prior to such termination as set forth
herein to the extent that Yissum may legally license such Proprietary
Rights and in accordance with the conditions of such license grant.
(f) Sections 5, 9 (third sentence beginning with "Notwithstanding anything
to the contrary ..." and ending with "... shall be solely owned by
Sugen" only), 10, 11, 12, 14 and 15 hereof shall survive and remain in
full force and effect after any termination or expiration of this
Agreement.
(g) If this Agreement should terminate pursuant to Section 15(c) because
of [
] and it may not make any further use thereof.
(h) Notwithstanding the foregoing, the end or termination of this
Agreement shall not release Sugen or Yissum from the performance of
any obligation which it was liable to perform prior to the Agreement's
end or termination.
LAW
16. The provisions of this Agreement and everything concerning the
relationship between the parties in accordance with this Agreement
shall be governed by law of England and Wales.
ARBITRATION
17.(a) All differences and disputes arising, if at all, between the parties
to this Agreement in connection with the Agreement and/or its
interpretation and/or its performance and/or breach, with everything
relating thereto and deriving therefrom, shall be referred for the
decision of a single arbitrator, who shall be appointed by agreement
between the parties.
20. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
(b) Should the parties not reach agreement as to the arbitrator's
identity, the arbitrator shall be appointed in accordance with the
Commercial Arbitration rules of the International Chamber of Commerce
on the application of either of the parties.
(c) The arbitration shall be held in London, England. The arbitrator
shall be released from the civil procedure and laws of evidence but
shall be bound by the substantive law of England and be liable to give
grounds for his decision.
(d) The arbitrator's decision shall be final and bind the parties.
(e) The parties' execution of this Agreement shall constitute the
execution of an arbitration deed.
MISCELLANEOUS
18.(a) Neither Sugen nor Yissum may assign this Agreement or its rights and
duties pursuant to this Agreement to another except as set forth
herein without obtaining the other party's prior written consent;
PROVIDED, HOWEVER, that either party may assign this Agreement or its
rights and duties hereunder to any successor by full merger or
pursuant to the sale of substantially all of its property and assets.
(b) The failure or delay of a party to the Agreement to claim the
performance of an obligation of the other party shall not be deemed a
waiver of the performance of such obligation.
(c) Each party shall bear its own legal expenses involved in the making of
this Agreement.
(d) The headings to the sections in this Agreement are for the sake of
convenience only and shall not serve in the Agreement's
interpretation.
(e) This Agreement constitutes a full and complete agreement between the
parties and may only be waived or amended by a document signed by both
parties. The term "Agreement" as used in this Agreement and all other
instruments and agreements executed hereunder shall for all purposes
refer to the Agreement as amended and restated as of the date first
above written.
(f) This Agreement may be executed separately in counterparts, all of
which together shall constitute one original.
(g) For the avoidance of doubt Yissum and Sugen agree that it is in the
best interests of Yissum and Sugen to keep the work the Researcher
does under the auspices of the University separate from the work done
for Sugen related to the Researcher's employment by Sugen. Such work
related to the Researcher's employment for Sugen shall not be included
in the license granted herein and
21 . [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
shall belong solely to Sugen as provided in any agreement between the
Researcher and Sugen.
(h) Also for the avoidance of doubt, Yissum and Sugen agree that if a
compound should be covered by both this Agreement and their prior
agreement effective the 23rd day of September 1993 (as amended and
restated March 27, 1995), the compound shall be considered to be
covered by the said prior agreement rather than by this Agreement.
(i) Sugen hereby represents and warrants to Yissum that the execution and
delivery of this Agreement have been duly authorized by all requisite
action on the part of Sugen. Yissum hereby represents and warrants to
Sugen that the execution and delivery of this Agreement have been duly
authorized by all requisite action on the part of Yissum.
NOTICES
19. All notices and communications pursuant to this Agreement shall be made in
writing and sent by registered mail or internationally recognized air
courier service to or served at the following addresses:
Yissum: Yissum Research Development Company of the Hebrew University of
Jerusalem, POB 4279 Jerusalem, Israel.
Sugen: SUGEN, INC., 515 Galveston Drive, Redwood City, CA 94063-4720
USA
or such other address furnished in writing by one party to the other. Any
notice sent as aforesaid shall be deemed to have been received four days
after being posted by registered mail or internationally recognized air
courier service or one day after personal service, as the case may be.
22. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
AS WITNESS THE HANDS OF THE PARTIES
Agreed and Accepted:
YISSUM RESEARCH DEVELOPMENT
COMPANY OF THE HEBREW UNIVERSITY
OF JERUSALEM
By: /s/ Uri Litvin
-----------------------------
Name: Uri Litvin
Title: Managing Director
SUGEN, INC.
By: /s/ James L. Tyree
------------------------------
Name: James L. Tyree
Title: President
23. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
<PAGE>
EXHIBIT A
FORM OF TERMINATION NOTICE
YISSUM RESEARCH DEVELOPMENT COMPANY
OF THE HEBREW UNIVERSITY OF JERUSALEM
of 46 Jabotinsky Street, Jerusalem
(hereinafter "Yissum"),
and
SUGEN, INC.
of 515 Galveston Drive, Redwood City, California, U.S.A.
(hereinafter "SUGEN"),
WHEREAS
Yissum and SUGEN are parties to an Amended and Restated Research and
License Agreement "Papilloma" effective January 1, 1994, as amended and restated
January 5, 1996 (the "Research Agreement").
WHEREAS,
[On __________, the Research Period under the Research Agreement ended;]
or
[On __________, the Research Agreement was terminated.]
NOW, THEREFORE, it is hereby declared and agreed between the parties,
intending to be legally bound, as follows:
1. The definitions and references to the Research Agreement in the above
introduction are an integral part of this Notice. All capitalized terms
not defined herein shall have the same meaning as in the Research
Agreement.
2. Yissum hereby acknowledges that all its right, title and interest in the
Proprietary Rights related to the Listed Compounds listed on Appendix I
hereto and any modifications, analogs or derivatives thereof (the
"Technology") are subject to the terms of the Research Agreement.
3. SUGEN hereby assigns to Yissum all its right, title and interest in the
Proprietary Rights related to the HUJ Compounds not included within the
Technology. From the date of the signing of this Notice, Yissum shall be
independently entitled to take any action regarding the HUJ Compounds not
included within the Technology, including to sell,
24 . [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
license or effect any other disposition thereof and SUGEN shall not
have any other rights to such compounds.
4. SUGEN shall perform all the necessary actions in order to effect the
transfer of rights in the Proprietary Rights to the HUJ Compounds not
included within the Technology, and shall sign the documents necessary to
effect the transfer including the patent assignment documents appropriate
for each involved country and any additional document required to implement
the said transfer and assignment. Yissum shall be responsible for all
legal and governmental fees associated with the preparation, filing and/or
recording of said assignments and documents.
5. The parties further agree that, if it should be determined that any of the
Proprietary Rights with respect to the Technology in the case of SUGEN or
the HUJ Compounds not included within the Technology in the case of Yissum
are dominant to any of the Proprietary Rights of the other party hereto, it
does grant an exclusive license to the other party (with right to
sublicense) to practice any such dominant Proprietary Rights for the sole
and limited purpose of practicing the Proprietary Rights as otherwise set
forth herein.
6. All notices and communications pursuant to this Notice shall be made in
writing by registered mail such as international Federal Express or such
other courier service providing a written record of such mailing and its
receipt, and shall be deemed to have been received by the receiving party
96 hours after being posted, unless the written record provided for herein
establishes that delivery was not made until a later date.
7. The provisions of this Notice and everything concerning the relationship
between the parties in accordance with this Notice shall be governed by
law of England and Wales.
Dated: ___________________
Yissum Research Development Company SUGEN, Inc.
of the Hebrew University of Jerusalem
By: _____________________ By: _____________________
Name: Name:
Title: Title:
25. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
APPENDIX A
YI# Serial # Country Filing Date
- - ------------------------------------------------------------------------------
[
]
26. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
[
]
[] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
PAPILLOMA - APPENDIX C
[
]
28. [] = CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
EXHIBIT 10.25 CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24b-2 OF THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.
[Execution Copy]
AMENDED AND RESTATED
RESEARCH AND LICENSE AGREEMENT
"SEPSIS/INFLAMMATION"
THIS AMENDED AND RESTATED AGREEMENT is made January 5, 1996, amending and
restating the Agreement originally effective January 1, 1994 (the "Effective
Date")
BETWEEN:
YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW UNIVERSITY OF
JERUSALEM of 46 Jabotinsky Street, Jerusalem, Israel ("Yissum")
AND:
SUGEN, INC. of 515 Galveston Drive, Redwood City, CA 94063-4720, USA
("Sugen")
WHEREAS:
Sugen wishes to finance research and development which is being, and
will be, carried out and conducted (i) at the Hebrew University of
Jerusalem under the supervision of Professor Alexander Levitzki (the
"Researcher") and (ii) at Related Institutions (as hereinafter
defined) with regard to the Research (as hereinafter defined);
AND WHEREAS:
Yissum is the exclusive representative of the University and of the
Researcher in all respects relating to the Research and/or this
Agreement and all rights whatsoever in the Research and/or the results
thereof shall belong to Yissum, subject to the terms of this
Agreement;
[] = CONFIDENTIAL TREATMENT REQUESTED
1.
<PAGE>
AND WHEREAS:
Yissum has filed patent applications relating to the above, as
detailed in Appendix A to this Agreement;
AND WHEREAS:
Yissum agrees to procure the performance of the Research in
accordance with the terms and conditions of this Agreement and procure
the performance of the University, the Researcher and any Related
Institutions in accordance with the terms and conditions of this
Agreement;
AND WHEREAS:
Sugen wishes to obtain a license from Yissum for the commercial
development, production and marketing of Products based on the
Proprietary Rights as defined below and/or the results thereof and/or
deriving therefrom, subject as provided below in this Agreement;
AND WHEREAS:
Yissum agrees to grant Sugen a license in accordance with and subject
to the terms and conditions of this Agreement;
ACCORDINGLY, IT IS AGREED BETWEEN THE PARTIES AS FOLLOWS:
RECITALS AND DEFINITIONS
1. (a) The recitals hereto constitute an integral part hereof.
(b) In this Agreement the following expressions shall have the meanings
appearing alongside them, unless the context otherwise requires.
"AFFILIATE" - means a person or entity that, directly or indirectly,
through one or more intermediaries, controls, is controlled by, or
is under common control with the entity specified. For purposes of
this definition, control shall mean (i) the direct or indirect
ownership of at least twenty percent of the stock entitled to vote for
the election of directors of such entity; or (ii) a twenty percent or
greater ownership interest in the profits of such entity; or (iii) in
the case of a special purpose research and development entity formed
to fund, in whole or in part, the Research hereunder, the right or
option to acquire directly, or indirectly through one or more
intermediaries, the interest of such entity in the Proprietary Rights,
Products and Research referred to in this Agreement. This definition
shall be subject to the understanding that if a research and
development entity should at any time be an Affiliate it shall remain
an Affiliate thereafter and that a research
[] = CONFIDENTIAL TREATMENT REQUESTED
2.
<PAGE>
and development entity shall only be an Affiliate if it is
sublicensed by SUGEN under this Agreement and has agreed to be
bound by the appropriate obligations of this Agreement with respect
to any such sublicense.
"AGREEMENT" - means this agreement (together with all the appendices
and annexes hereto), as the same may be amended and restated.
"COMPANY" - means Sugen together with its Affiliates.
"CONSIDERATION" - has the meaning set forth in Section 3(a) of this
Agreement.
"EFFECTIVE DATE" - means January 1, 1994.
"FIELD" - means the prevention, mitigation, treatment, cure or
diagnosis of [
]
"FDA" - means the Food and Drug Administration of the United States of
America.
"HUJ COMPOUNDS" - means any compound useful in the Field discovered by
the Researcher, and/or students or employees of the University under
the guidance of or in connection or collaboration with the Researcher,
and/or a Related Institution, which discovery either was [
]
"HSC" - means the Hospital for Sick Children, an institution existing
under the laws of Toronto, Ontario, Canada and having a place of
business at 555 University Avenue, Toronto, Ontario M5G 1X8, Canada.
"KNOW-HOW" - means any information or materials useful in the Field
discovered, developed or acquired by or on behalf of students or
employees of the University and/or any Related Institution, including
the Researcher, and under the guidance of, or in connection or
collaboration with, the Researcher, during the term and in the course
of the Research. For the avoidance of doubt any research done under
the auspices of the University, but not done under the guidance of or
in connection or collaboration with the Researcher shall not be
governed by this Agreement.
"LICENSE" - has the meaning set forth in Section 4 of this Agreement.
"MEDICINAL COMPOUND" - means a compound or a modification, analog or
derivative of a compound originally discovered outside of the
Research, which compound, modification, analog or derivative is made
by the Researcher and/or
[] = CONFIDENTIAL TREATMENT REQUESTED
3.
<PAGE>
students or employees of the University and/or a Related Institution
under the guidance of or in connection orcollaboration with the
Researcher.
"MPI" - means collectively, MAX-PLANCK-GESELLSCHAFT zur Foerderung der
Wissenschaften e.V., located in Residenzstrasse la, W-8000 Muenchen 2;
MAX-PLANCK-INSTITUT fur Biochemie, Abteilung Molekularbiologie located
in Am Klopferspitz 18a, W-8033 Martinsried; MAX-PLANCK-INSTITUT fur
Physiologische und Klinische Forschung located in Parkstrabe 1,61231
Bad Nauheim; and GARCHING INSTRUMENTE Gesellschaft zur industiellen
Nutzung von Forschungsergebnissen m.b.H. located in Koeniginstrasse
19, W-8000 Muenchen 22.
"NET SALES" - means all amounts in respect whereof invoices are issued
and paid in connection with the sale of Products or Medicinal
Compounds, respectively, for use in the Field to any person or entity,
other than sales between Sugen and an Affiliate of Sugen, after
deduction of all the following to the extent applicable to such sale:
[
]
"NYU"- means New York University, a university corporation organized
and existing under the laws of the State of New York and having a
place of business at 70 Washington Square South, New York, New York
10012.
"PATENT RIGHTS" - means the University's and Yissum's share in the
patents and patent applications listed in Appendix A and in any other
United States or Foreign patent application and any divisions,
continuations, in whole or in part, reissues, renewals and extensions
thereof, and patents issuing thereon:
(i) which claim inventions covered by the patents and patent
applications listed in Appendix A which Appendix the parties
believe to be, but may not be, a complete list of the applicable
patents and patent applications; or
(ii) which claim inventions useful in the Field that are made, in
whole or in part, [
] which are based on or arise from the Research.
"PERIODIC REPORT" - has the meaning set forth in Section 7(g) of this
Agreement.
"PRODUCT" - means an [
]
[] = CONFIDENTIAL TREATMENT REQUESTED
4.
<PAGE>
"PROPRIETARY RIGHTS" - means all Know-How and Patent Rights.
"RELATED INSTITUTION" - means any institution with which Yissum or the
University has entered into a cooperation agreement with respect to
the subject matter of this Agreement, [
]
"RESEARCH" - means the research and development in the Field which is
being carried out and conducted during the Research Period under the
direction of or in connection or collaboration with the Researcher,
and/or by a Related Institution, including but not limited to the
discovery, synthesis and testing of novel compounds.
"RESEARCH PERIOD" - means the period beginning January 1, 1994 and
ending on September 30, 1997 and any extension thereof pursuant to the
terms of this Agreement.
"RESEARCHER" - has the meaning set forth on page one of this
Agreement.
"SCIENTIFIC REPORT" - has the meaning set forth in Section 2(e) of
this Agreement.
"SUBLICENSE" - has the meaning set forth in Section 6 of this
Agreement.
"TERRITORY" - means all the countries of the world.
"UNIVERSITY" - means the Hebrew University of Jerusalem and/or each of
its adjuncts and/or branches.
"WORK PLAN" - means each of the periodic work plans described in
Section 2(b).
"YISSUM" - has the meaning set forth on page one of this Agreement.
THE RESEARCH AND ITS PERFORMANCE
2. (a) Sugen hereby undertakes to finance performance of the Research and
Yissum takes it upon itself to procure the Research's performance in
the University, all as provided below in this Agreement.
(b) Yissum hereby agrees to procure the production of Work Plans, and the
Research's performance in accordance with each Work Plan, in
accordance with this Agreement. Yissum shall cause the Researcher to
produce a Work Plan, in form and substance reasonably satisfactory to
Sugen, for each twelve-month period (or lesser period or periods if
agreed between the parties) during the Research Period prior to the
performance of services thereunder and in no event later than the date
of October 1 (or, if earlier, the date that is the last day of any
[] = CONFIDENTIAL TREATMENT REQUESTED
5.
<PAGE>
agreed to Work Plan) during each year during the Research Period.
Each Work Plan will set forth goals, objectives and a time line and
will include, without limitation, priorities and guidelines in
connection with the Research to be performed.
(c) Sugen may apply to Yissum for an extension of the Research Period for
a further period of one year, provided that written notice thereof is
given to Yissum [
] The parties shall
decide between them by agreement negotiated in good faith the amount
of the reasonable supplemental finance payable by Sugen during the
extension pursuant to this section, Yissum may request an extension to
the Research Period for a further period of [ ] by notice to
Sugen at least [ ] prior to the expiration of the Research Period.
Such extension shall not require Sugen to remit any funds to Yissum
for such period.
(d) If the Research Period is extended pursuant to the provisions of
Subsection (c) above, the provisions of this Agreement shall apply to
the additional period.
(e) Yissum shall cause the Researcher to provide Sugen with written
reports detailing the results and conclusions of the Research (each a
"Scientific Report"), no later than the end of each six month period
during the Research Period. Sugen may obtain interim written reports
from the Researcher as Sugen may reasonably request. For the
avoidance of doubt, it is hereby expressed that this Agreement in
general and this section in particular shall not constitute an
obligation and/or confirmation on the part of Yissum that any specific
results and/or conclusions will be achieved in consequence of the
Research's performance and/or that a product may be developed as a
result of the Research.
(f) Sugen may at any time during the Research Period obtain in writing any
information relating to the Research's performance from Yissum,
including plans and documents relating thereto. Sugen's
representative may attend the site where the Research is being carried
out, provided that the time of his attendance is first coordinated
with Yissum and the Researcher. In addition, Yissum shall cause the
Researcher to be available, at Sugen's principal place of business or
such other location as may be mutually agreeable, for at least two
face-to-face meetings with Sugen per twelve-month period to discuss
and report on the Research. Sugen shall reimburse the Researcher for
reasonable expenses that he may incur in attending such meetings upon
presentation of appropriate receipts therefor. In connection with the
third twelve-month period under this Agreement, the first such face-
to-face meeting shall occur in February of 1996.
(g) Yissum shall supply Sugen and its Affiliates with sufficient
quantities of HUJ Compounds or leads for research and development
purposes as Sugen shall reasonably request during the Research Period.
[] = CONFIDENTIAL TREATMENT REQUESTED
6.
<PAGE>
(h) Performance of the Research may be performed in cooperation with the
Related Institutions in accordance with an appropriate cooperation
agreement between Yissum and the Related Institution, which agreement
shall be subject to the consent of Sugen which consent shall not be
unreasonably withheld. Yissum shall cause each Related Institution to
fully perform all of such Related Institution's obligations (including
without limitation as to matters of confidentiality) under such
cooperation agreement and consistent with the terms and conditions of
this Agreement.
FINANCE OF THE RESEARCH
3. (a) In consideration for the performance of the Research and in order to
finance it, Sugen undertakes to pay Yissum the amount detailed in the
consideration appendix annexed hereto as an integral part hereof and
marked as Appendix B (hereinafter referred to as "the Consideration").
The Consideration shall be paid to Yissum at the times and in the
installments and in accordance with the other terms and conditions
detailed in Appendix B. (Yissum's disbursement to any Related
Institution of any amounts received by Yissum pursuant to this section
shall be as reasonably directed by the Researcher and in accordance
with the Work Plan.)
(b) It is agreed between the parties that the provisions of this Agreement
shall not prevent Yissum and/or the University and/or the Researcher
from obtaining further finance from other entities for the Research,
provided that such other entities shall not be granted rights in the
Research prejudicing or limiting the rights granted to Sugen in
accordance herewith.
(c) Should the Research Period be extended as detailed in Section 2 above
and/or for any other reason, the parties shall determine by agreement
the supplemental finance for the period of the extension and such
reasonable supplement shall be added to the Consideration. The terms
and conditions of this Agreement shall apply MUTATIS MUTANDIS to the
supplemental Consideration.
THE LICENSE
4. Yissum hereby grants and Sugen hereby accepts from Yissum an exclusive
license in the Territory, with the right to sublicense, to practice the
Proprietary Rights to discover, develop, make, have made, use or sell
Products subject always to and in accordance with the terms and conditions
hereof (the "License").
TERM OF THE LICENSE
5. The License shall be effective as of the Effective Date. Unless
otherwise terminated as provided in Section 15, the License shall
expire, on a Product by Product and country by country basis, (i)
[ ] of the last to expire of the relevant patents
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7.
<PAGE>
containing a valid claim covering a Product in a country, or (ii)
if no patent should issue containing a valid claim covering a Product
in a country, [ ] the first commercial sale of
the Product in such country. After termination of the License pursuant
to this Section 5 in respect of a Product in a country, Sugen shall
have a fully paid up right and license to continue to practice the
Proprietary Rights to discover, develop, make, have made, use and
sell such Product in such country.
SUBLICENSES
6. (a) Sugen shall be entitled to grant sublicenses under the License (each a
"Sublicense) on terms and conditions in compliance with the terms and
conditions of this Agreement to third parties, subject to the
following conditions:
(i) Each Sublicense granted hereunder shall be subject and
subordinate to the terms and conditions of this Agreement and a copy
shall be provided to Yissum;
(ii) Subject to the last sentence of this Subsection (a), the
sublicense shall expire automatically on the termination of the
License pursuant to Section 15(c) because of a material breach or
default by Sugen;
(iii) Any sublicensee of Sugen [
] and
(iv) Both during the term of the Sublicense and thereafter the
sublicensee shall be bound by a confidentiality obligation similar to
that imposed on Sugen in Section 11 below.
In the event that the License is terminated under Section 15 or
otherwise, any Sublicense granted by Sugen under the License and any
further sublicenses thereunder shall, upon the written request of such
sublicensee, remain in full force and effect, provided that [
]
(b) If Sugen should grant a Sublicense to any third party, Sugen will pay
to Yissum [ ] of any sublicense fee or any other
consideration (except for royalties which will be paid as detailed in
Section 7 below) that Sugen may receive for the Sublicense of a
Product [
] PROVIDED, HOWEVER, that if Sugen is required to make a
payment to any third party, other than MPI, NYU, or HSC, in connection
with the subject
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8.
<PAGE>
matter of such Sublicense, then the amount payable to
Yissum shall be reduced by [ ] but in no
event shall Yissum receive less than [ ] and PROVIDED,
FURTHER, that if Sugen is required to make a payment to MPI and/or NYU
and/or HSC in connection with the subject matter of such Sublicense,
then the [ ] share of any such Sublicense fee or other
consideration that would otherwise be payable to Yissum shall be [
]
Such payment will be made to Yissum within [ ] from the
date that it is received by Sugen. The Company will provide Yissum
with reasonable documentation regarding [
]
(c) If Sugen should grant a Sublicense as detailed above, and, as part of
such Sublicense, Sugen should receive any funds designated for
research and development purposes with respect to a Product, Sugen
will pay to Yissum [
] to be used by Yissum solely
for performance of the Research at the University.
(d) The sublicensee shall agree to indemnify Yissum in a manner
substantially similar to the indemnification provisions in Section 14
of this Agreement.
CONSIDERATION
7. As additional consideration for the grant of the License and during the
term provided in Section 5 with respect to each Product hereunder, the
Company shall pay to Yissum:
(a) A royalty of [ ] of the Net Sales by Sugen and its
sublicensees of a Product which is covered by a valid claim of an
issued patent on a Product by Product and country by country basis;
PROVIDED, HOWEVER, that if Sugen or its sublicensees are required to
pay royalties to a third party other than MPI, NYU or HSC in order to
make, use or sell any Product, Sugen shall be entitled to set off [
] against royalties due to
Yissum with respect to such Product, but in no event shall the
royalties due under this section be less than [ ] except
as set forth in Subsection (c) below; and
(b) (i) A royalty of [ ] of Net Sales of a Product by Sugen and
its sublicensees that is covered by Proprietary Rights which do not
include a valid claim included in an issued patent on a Product by
Product and country by country basis, and (ii) for a period of [
] from the first commercial sale, a royalty of [ ] of Net
Sales on a country by country basis of a Medicinal Compound.
(c) Notwithstanding Subsection (a) above, (i) if Sugen is also required to
pay royalties in order to manufacture, have manufactured, use or sell
any Product to either MPI or NYU or HSC, the royalties payable to
Yissum pursuant to
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9.
<PAGE>
Subsection (a) hereof shall be [
] and (ii) if Sugen is required to pay such royalties to any two of
MPI, NYU and HSC the royalties payable to Yissum under Subsection (a)
hereof shall be [ ]
(d) No royalties shall be payable on any Net Sales between Sugen and an
Affiliate of Sugen, but royalties shall be payable on the subsequent
resale of the Product.
(e) Within [ ] following receipt by Sugen or a sublicensee
of final regulatory approval in the United States of America to market
a Product, Sugen shall pay Yissum for such Product the greater of
(i) [ ]
or (ii) [
] In any event,
Yissum shall receive a minimum of [ ] upon the final regulatory
approval in the United States of America to market each Product,
whether such Product shall be marketed by Sugen or a sublicensee;
PROVIDED, however, that Yissum agrees that it shall not receive more
than one such payment for the final regulatory approval in the United
States of America to market any Product including any modification of
a Product.
(f) Notwithstanding any other provision in this Agreement, the Company
shall only be required to pay one royalty in respect to the Net Sales
of a Product; and notwithstanding Subsection 7(e), the Company shall
only be required to make one payment for receipt of final regulatory
approval in the United States to market a Product no matter how many
indications may ultimately be approved for the Product.
(g) Every [ ] commencing from the date of the first commercial
sale, Sugen shall furnish Yissum with a [ ] report
(hereinafter referred to as "the Periodic Report") detailing the
total sales effected during the Reporting Period and the total
royalties due to Yissum in respect of that period. The Periodic
Report shall be submitted [ ] after
the end of the Reporting Period.
(h) The Periodic Reports shall contain full particulars of all sales made
by the Company or by sublicensees insofar as sublicenses have been
granted as provided herein, including sales broken down according to
countries, a breakdown of the number of Products sold, discounts,
returns, the currency in which the sales were made, invoice date and
all other relevant information enabling the royalties payable to be
determined.
(i) On the date prescribed for submission of each Periodic Report, Sugen
shall pay the royalties due to Yissum in accordance with the report.
Any such royalties relating to transactions in foreign currencies
shall be converted into United States dollars based on the closing
buying rate of the Citibank, N.A. of New York
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10.
<PAGE>
applicable to transactions for the particular currency on the last
business day of the period for which such royalty is due. The
royalties shall be computed in United States dollars and paid in
Israeli shekels based on the closing buying rate of Citibank, N.A.
of New York on the date of actual payment of the royalties, and if
no such rate is published as aforesaid, based on the first sale rate
published thereafter. Payment of Value Added Tax (if charged) shall
be [ ] each payment in accordance with the statutory rate then
in force.
(j) Sugen shall maintain, and shall require all of its sublicensees to
maintain for a period of [ ] after the end of the calendar
year to which they relate, true and complete books of account
consistent with standard accounting practice containing an accurate
record of all data necessary for the proper computation of all
payments due to Yissum under the terms of this Agreement.
(k) Yissum shall have the right, through a nationally recognized firm of
independent certified public accountants, to examine the books
referred to in Subsection (i) (not more than once in any calendar
year) within two calendar years after the end of the calendar year to
which they relate for the purpose of verifying the payments due to
Yissum under the terms of this Agreement. Any such examination shall
be made during normal business hours at the place where the records
are regularly kept. Yissum agrees that the information furnished to
it as a result of any such examination shall be limited to a statement
by such firm of certified public accountants to the effect that they
have reviewed such books of account and that the amounts of the
payments due under the terms of this Agreement are in conformity with
such books of account and the applicable provisions of this Agreement,
or setting forth any required adjustment. The fees and expenses of
such examination shall be borne by Yissum; PROVIDED, HOWEVER, that if
such examination reveals an underpayment of more than [ ]
for any period, Sugen shall promptly reimburse Yissum for such
reasonable fees and expenses. Any such accountants shall be required
to keep all information derived from such examination confidential.
Nothing in this Subsection shall impair the obligation of Sugen to pay
the full amount of all royalties due under this Agreement.
(l) Any sum of money which one party hereto is liable to pay the other
which is not duly paid shall bear interest from the due date for
payment until the actual date of payment at the [ ]
for the time being prevailing as set by the London Interbank offering
rate.
(m) The provisions of this section are fundamental terms of the Agreement
and the breach thereof shall constitute a fundamental breach of the
Agreement.
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11.
<PAGE>
DEVELOPMENT AND COMMERCIALIZATION
8. (a) Sugen or its sublicensees shall use reasonable diligence consistent
with prudent commercial practices to evaluate the results of the
Research and any commercial opportunities with regard to Products
arising therefrom.
(b) Sugen shall provide Yissum annually with written reports on any
material activities and actions undertaken by Sugen to develop and
commercialize a Product.
(c) Upon expiration of the Research Period or termination of the Agreement
pursuant to Section 15 (other than because of a material breach or
default by Sugen), Sugen shall provide to Yissum in writing a list of
the compounds that it believes show promise in the Field (the "Listed
Compounds"), together with a Termination Notice in the form attached
hereto as EXHIBIT A. Sugen shall thereby maintain all rights under
the License to the Listed Compounds and any modifications, analogs or
derivatives thereof, and the License shall terminate with respect to
all other HUJ Compounds covered by Proprietary Rights.
(d) If Sugen or its sublicensee has not initiated clinical trials with
respect to [ ] of the Listed Compounds (or a modification,
analog or derivative thereof) within [ ] from such expiration
or termination, the License shall terminate with respect to all the
Listed Compounds. Similarly, if Sugen or its sublicensee has not
initiated clinical trials with respect to [ ] of the Listed
Compounds (or modifications, analogs or derivatives thereof) within
[ ] from such expiration, the License shall terminate with
respect to the Listed Compounds other than the Listed Compound (and
its modifications, analogs and derivatives) with respect to which
clinical trials had been initiated within the required [ ]
time period. If any of the Listed Compounds should be covered by a
valid claim of an issued patent or by a claim in any pending patent
application filed not later than [ ] after expiration of the
Research Period, Sugen shall have exclusive rights for use in the
Field to all other compounds covered by such patent or patent
application so long as it maintains rights to the Listed Compounds.
Sugen shall also have exclusive rights for use in the Field to all
other compounds covered by such patent or patent applications so long
as it maintains rights to the Listed Compounds. Sugen agrees to
inform Yissum at any time that it no longer believes that a Listed
Compound shows promise in the Field and to terminate the License with
respect to such Listed Compound.
OWNERSHIP
9. It is expressly agreed between the parties that all rights in the Research
and the Proprietary Rights shall be solely owned by Yissum but licensed to
Sugen as set forth in this Agreement, except to the extent that any
Proprietary Rights are the joint invention of Sugen and Yissum and/or a
Related Institution in which case such Proprietary Rights
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12.
<PAGE>
shall be jointly owned as determined in accordance with the patent laws
of the United States of America. Sugen shall take reasonable steps to
provide full force to Yissum's rights as aforesaid. Notwithstanding
anything to the contrary contained herein, it is expressly agreed between
the parties that all rights in and to Medicinal Compounds shall be solely
owned by Sugen.
PATENTS
10. (a) Yissum will cause the University and any Related Institution to
provide prompt and full disclosure to Sugen in writing of any
inventions made during the Research Period and/or in the course of
and/or based on or which arises from performance of the Research which
may constitute the basis for potential patents. Should patents be
appropriate therein, Sugen agrees to apply for patents in the United
States, Israel, Japan, the European Community and Canada and to comply
with all requirements for their prosecution in respect of appropriate
HUJ Compounds included in Proprietary Rights and/or resulting from or
based on the Research. Sugen shall determine the world wide patent
strategy in consultation with Yissum and agrees to keep Yissum
adequately informed as to the status of such strategy and any patent
applications. Notwithstanding the foregoing, Yissum may at its sole
decision appoint its own patent counsel to prepare the patents in
Israel as long as such counsel is supervised by and cooperates fully
with Sugen's patent counsel, and Yissum provides promptly to Sugen all
relevant materials and communications that it may receive from such
Israeli counsel.
(b) The parties shall consult and make every effort to reach agreement in
all respects relating to the manner of making patent applications and
their prosecution, including the time of making the applications, the
countries where applications will be made and all other particulars
relating to patent prosecution. Sugen shall act diligently in filing
and prosecuting all patent applications that the parties agree shall
be filed. Nevertheless, Sugen in its discretion may determine that it
should not continue the prosecution of any patent application in a
particular country, in which event it shall so notify Yissum in
writing and Yissum may then continue the prosecution solely for its
own account and at its expense and Sugen shall have no further rights
with respect to any patent that may issue in the particular country as
the result of the continued prosecution.
(c) Each patent application shall be made and prosecuted at Sugen's
expense in the name of the inventors and on behalf of Yissum.
(d) Notwithstanding the foregoing, Yissum shall have no obligation that
patents or patent applications will indeed be made and/or registered
and/or registrable in respect of the Proprietary Rights and/or Product
and/or any part thereof, nor that any patent that actually issues will
afford due protection against any third party. Nothing in this
Agreement or Appendix A shall constitute confirmation and/or a
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13.
<PAGE>
representation by Yissum in connection with [
] of any of the Patent Rights, and [
]
(e) The parties shall assist each other in all respects relating to the
preparation of documents for the registration of a patent or any
patent-related right forthwith upon the other's request, and Yissum
shall cause the University and any Related Institution to assist Sugen
in assembling inventorship information and data for filing and
prosecution of patent applications as aforesaid.
(f) In the event a party to this Agreement acquires information that a
third party is infringing one or more of the Patent Rights, the party
acquiring such information shall promptly notify the other party to
the Agreement in writing of such infringement.
(g) In the event of an infringement of a Patent Right, [ ] shall be
privileged but not required to bring suit against the infringer. The
expenses of such suit or suits that [ ] elects to bring, including
any reasonable expenses of [ ] and/or the University incurred in
conjunction with the prosecution of such suit or the settlement
thereof, shall be paid for entirely by [ ] and [ ] shall hold
[ ] and/or the University free, clear and harmless from and
against any and all costs of such litigation, [
] In the event [ ] exercises the right to sue herein
conferred, it shall have the right to first reimburse itself out of
any sums recovered in such suit or in settlement thereof for all costs
and expenses of every kind and character, including [
] and if
after such reimbursement, any funds shall remain from said recovery,
[ ] shall promptly pay to [ ] an amount equal to [ ]
of such remainder and [ ] shall be entitled to receive and
retain the balance of the remainder of such recovery. If [ ] does
not bring suit against said infringer pursuant to this Subsection
10(g) or has not commenced negotiations with said infringer for
discontinuance of said infringement within ninety days after receipt
of such notice, [ ] shall have the right, but shall not be
obligated, to bring suit for such infringement and to join [ ] as
a party plaintiff. The expenses of such suit or suits that [ ]
elects to bring, including any reasonable expenses of [ ] incurred
in conjunction with the prosecution of such suit or the settlement
thereof, shall be paid for entirely by [ ] and [ ] shall
hold [ ] free, clear and harmless from and against any and all
costs and expenses of such litigation, [
] If [ ] has commenced negotiations with an
alleged infringer of the Patent Right for discontinuance of such
infringement within such ninety-day period, [ ] shall have an
additional ninety days from the termination of such initial ninety-day
period to conclude its negotiations before [ ] may bring suit for
such infringement. In the event [ ] brings suit for infringement
of any Patent Right, [ ] shall have the right to first reimburse
itself out of any sums recovered in such suit or settlement thereof
for all costs and expenses of every kind and character, [
] any funds shall remain from said
recovery, [ ] shall promptly pay to [ ] an amount equal to [
] of such remainder and [ ] shall be entitled to
receive and retain the balance of the remainder of such recovery.
[ ] agrees to cooperate fully with [ ] at the request of
[ ], including by giving testimony and producing documents
lawfully requested, in the prosecution of any suit by [ ] for
infringement of a Patent Right; PROVIDED, HOWEVER, that [ ] shall
pay all reasonable expenses [
] incurred by [ ] in connection with such cooperation.
[ ] shall, and shall [
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14.
<PAGE>
]
cooperate fully with [ ] at the request of [ ], including by
giving testimony and producing documents lawfully requested, in the
prosecution of any suit by [ ] for infringement of a Patent Right;
PROVIDED, HOWEVER, that [ ] shall pay all reasonable expenses [
] incurred by [ ] in connection with
such cooperation.
(h) Sugen agrees to pay to Yissum the sums paid by Yissum in regard to the
filing and execution costs relating to the Patent/s detailed in
Appendix A so long as such Patent/s are not included in the agreement
effective September 23, 1993, between the parties; provided, however
that such sums shall not exceed [ ] The payment shall be paid
to Yissum within 30 days from the execution of this Agreement. In
addition, Sugen will pay any further expenses reasonably incurred
regarding the patents and patent applications listed in Appendix A
after the Effective Date, provided Sugen will only be required to pay
such further expenses that are first authorized in writing by Sugen.
(i) The provisions of this section are fundamental provisions of the
Agreement, the breach thereof constituting a fundamental breach of the
Agreement if not cured by the Company within sixty days of receipt of
written notice of any such default.
CONFIDENTIALITY
11. (a) Sugen and Yissum each agree that, during the term of this Agreement
and subsequent thereto, they shall maintain in confidence, and Yissum
shall cause the Researcher, the University, any Related Institution
and their employees to maintain in confidence, all information,
details and data which is in and/or comes to their knowledge and/or
that of their employees, representatives and/or any person acting on
their behalf relating to the Research, the Proprietary Rights, any
Product, any Medicinal Compound, Yissum, the University, Sugen, their
researchers and employees. The parties agree not to convey or
disclose any such confidential information, and Yissum shall cause the
Researcher, the University, any Related Institution and their
employees not to convey or disclose any such
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15.
<PAGE>
confidential information,
to any entity or person that is not bound by a written agreement of
confidentiality except as may be required for any regulatory agency
filing or otherwise as required by law or as otherwise necessary for
performance (or enjoyment of rights) under this Agreement.
(b) The obligation contained in this section shall not apply to
information which is in the public domain as at the date hereof or to
information which hereafter comes into the public domain, unless Sugen
or Yissum breaches its obligations pursuant to this Agreement as a
result whereof the information comes into the public domain.
(c) Sugen and Yissum may disclose details and information to their
employees, consultants and sublicensees as necessary for the
performance of their obligations pursuant to this Agreement, PROVIDED,
HOWEVER, that any such employee, consultant or sublicensee is bound in
writing to maintain the confidentiality of such details and
information.
(d) Without prejudice to the foregoing, the Company and its sublicensees
shall not mention the University's name in connection with this
Agreement in any public disclosure without obtaining Yissum's prior
written consent, which consent shall not be unreasonably withheld, or
as may be required by applicable law. The Company shall further
procure that any entity connected with and subordinate to it shall not
mention the University's name in any public disclosure as aforesaid.
(e) Yissum shall cause the University's and any Related Institution's
researchers, employees and/or any other person involved in or
otherwise privy to the Research or the Proprietary Rights to execute
an agreement in writing for the maintenance of confidentiality. At
the request of Sugen, Yissum shall provide to Sugen a copy of any such
agreement.
(f) The breach of this section, including the subsections hereof, by any
person or entity other than Yissum or Sugen shall not be deemed a
breach of the Agreement if [
]
(g) Expiration or termination of this Agreement shall not release either
party from its obligations pursuant to this section.
(h) The provisions of this section are fundamental provisions of the
Agreement and their breach shall constitute a fundamental breach of
the Agreement.
(i) In order to insure the confidentiality of proprietary compounds,
Yissum will cause the University, any Related Institution and the
Researcher not to transfer any HUJ
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16.
<PAGE>
Compound to any third party unless Sugen is first informed in writing
of the proposed transfer, is given a detailed description of the
compound desired to be transferred and the transferee, and Sugen has
not stated in writing within thirty days after receipt of such notice
that it has an interest in such compound. If Sugen states that it
does have an interest in the compound, no transfer will be made and
Sugen will have six months thereafter to determine the extent of its
interest and whether it should continue to be held in confidence.
Under no circumstances will Yissum allow the University, any Related
Institution or the Researcher to transfer any Medicinal Compound to
any third party without the express written consent of Sugen. In any
event, transfer of a proprietary compound (whether an HUJ Compound or
a Medicinal Compound) to a third party, if at all, shall only be made
pursuant to a Materials Transfer Agreement signed by the third party
and in form satisfactory to Sugen.
PUBLICATIONS
12. (a) Yissum shall ensure that prior to submission for publication of a
manuscript or abstract or any oral presentation at any scientific or
similar meeting describing any aspect of the Research or its results
or any HUJ Compound or Medicinal Compound, the University, any Related
Institution and/or their students and employees including the
Researcher shall send Sugen a copy of the manuscript or abstract to be
submitted or outline of an oral presentation and shall allow Sugen
[ ] from the receipt by Sugen of such mailing to determine
whether the manuscript, abstract, outline or presentation contains
subject matter for which patent protection should be sought prior to
publication thereof or which is otherwise confidential. Should Sugen
believe the subject matter of the manuscript, abstract, outline or
presentation contains a patentable invention or otherwise contains
confidential information, then, prior to the expiration of such
[ ] period, Sugen shall give written notification to Yissum
and the author (if reasonably available) of its determination that
such manuscript, abstract, outline or presentation contains
patentable subject matter for which patent protection should be
sought or otherwise contains confidential information.
(b) After the expiration of such [ ] period, unless Yissum has
received the written notice specified above from Sugen, Yissum, the
University and the Researcher shall be free to submit or to allow the
University's students and employees to submit such manuscript,
abstract, outline or presentation for publication in any manner
consistent with academic standards.
(c) Upon receipt of such written notice from Sugen, Yissum, the
University, any Related Institution, the Researcher and the
University's and any Related Institution's students and employees will
thereafter delay submission of the manuscript, abstract, outline or
presentation for an additional period of [ ] to permit
the preparation and filing, in accordance with Section 10 hereof, of a
patent application on the subject matter to be disclosed in such
manuscript, abstract, outline or presentation. After expiration of
such [ ] period, or
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17.
<PAGE>
the filing of a patent application on
each such invention, whichever shall occur first, Yissum, the
University and the Researcher and the University's students and
employees shall be free to submit the manuscript, abstract, outline or
presentation and to publish the disclosed results. In no event,
however, will the chemical structure of any compound of interest to
Sugen be made public before it is published in a patent application
unless otherwise expressly approved by Sugen in writing.
(d) The provisions of this section shall not prejudice any other right
which Yissum or Sugen has pursuant to this Agreement and at law.
MASTER AND SERVANT RELATIONSHIP
13. It is hereby agreed and declared between the parties that the parties
shall act in all respects relating to this Agreement as independent
contractors and there neither is nor shall be any master and servant
or principal and agent relationship and/or partnership in the
relationship between the Company and/or any or its employees and/or
any person or entity connected with it on the one hand and Yissum
on the other hand.
LIABILITY AND INDEMNITY
14. (a) Sugen shall, subject to the provisions of Section 14(b), indemnify,
defend and hold harmless Yissum and the University and its employees,
students and agents and their respective successors, heirs and assigns
(the "Indemnitees"), against any liability, damage, loss or expense
(including reasonable attorneys' fees and expenses of litigation)
incurred by or imposed on the Indemnitees in connection with any
claims, suits, actions, demands or judgments (i) arising out of the
production, manufacture, sale, use in commerce or in human clinical
trials, lease or promotion by Sugen or any Affiliate or sublicensee of
Sugen under the License, of any Product, relating to, or developed
pursuant to, this Agreement or (ii) arising out of any other
activities to be carried out by Sugen, or any sublicensee under the
License, pursuant to this Agreement.
(b) Sugen's indemnification obligation under Section 14(a)(i) shall apply
to any liability, damage, loss or expense whether or not it is
attributable to the negligent activities of the Indemnitees. Sugen's
indemnification obligation under Section 14(a)(ii) shall not apply to
any liability, damage, loss or expense to the extent that it is
attributable to the negligent activities of any Indemnitee.
(c) Sugen agrees, at its own expense, to defend against any actions
brought or filed against any Indemnitee with respect to the subject of
indemnity to which such Indemnitee is entitled hereunder whether or
not such actions are rightfully brought.
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<PAGE>
TERMINATION OF THE AGREEMENT
15. (a) (i) Prior to September 30, 1994 Sugen maintains the right to reduce
the scope of the Research on terms and conditions which will be
approved by Yissum, and/or to cancel it on condition that Sugen gives
written notice to Yissum at least [ ] in advance. After
September 30, 1994 the Company maintains the right to reduce the
scope of the Research, and/or to cancel it on condition that Sugen
shall give written notice to Yissum at least 30 days in advance.
If Sugen decides to reduce the scope of the Research, the payment
shall be reduced in accordance with and in consideration of the
obligations incurred by Yissum that are not able to be canceled.
In addition, if the Researcher should at any time no longer be the
active leader of the Research at the University and he is not
replaced by another individual satisfactory to Sugen in its sole
discretion, Sugen may reduce the scope of or cancel the Research
if it gives written notice to Yissum at least thirty days in advance.
(ii) Should Sugen decide to cancel the Research, Sugen shall pay to
Yissum all reasonable expenses incurred by the Research, and in
accordance with the Work Plan, prior to the date of notice of
cancellation and, in addition, up to [ ] of further expenses
arising from the Research, in accordance with the Work Plan and
irrevocably committed but not yet paid as of the date of notice of
cancellation, against invoices presented, until the date of
cancellation.
(iii) If termination is effected under this Section 15(a), right,
title and interest in the Proprietary Rights shall be governed by
Section 8(c).
(b) Unless terminated pursuant to Section 15(c) below, this Agreement
shall expire upon the expiration of the royalty term of the License in
all countries for all Products as set forth in Section 5 hereof.
(c) At any time prior to the expiration of this Agreement, either Yissum
or Sugen may terminate this Agreement forthwith for cause by the other
party, as "cause" is described below, by giving written notice to the
other party. "Cause" for termination of this Agreement by Sugen shall
be deemed to exist (i) [
]
or (ii) [
]
during the Research Period prior to the date of [
] during each year
during the Research Period or [
[]= CONFIDENTIAL TREATMENT REQUESTED
19.
<PAGE>
] "Cause" for termination of this
Agreement by Yissum shall be deemed to exist if [
] In addition, "Cause" for
termination by one party of this Agreement shall be deemed to exist
if, with respect to the other party:
(A) (I) a voluntary case under any applicable bankruptcy, insolvency
or other similar law now or hereafter in effect shall be instituted by
such party, or such party shall consent to the entry of an order for
relief in an involuntary case under any such law; (II) a general
assignment for the benefit of creditors shall be made by such party;
(III) such party shall consent to the appointment of or possession by
a receiver, liquidator, trustee, custodian, sequestrator or similar
official of such party or of any substantial part of its property; or
(IV) such party shall adopt a board resolution in furtherance of any
of the foregoing actions specified in this Subsection (A); or
(B) a decree or order for relief by a court of competent jurisdiction
shall be entered in respect of such party in an involuntary case under
any applicable bankruptcy, insolvency or other similar law now or
hereafter in effect, or appointing a receiver, liquidator, trustee,
sequestrator or other similar official of such party or of any
substantial part winding up or liquidation of its affairs, and any
such decree or order shall remain unstayed or undischarged and in
effect for a period of sixty days.
If any act or omission by any sublicensee under the License (including
any further sublicensee thereunder) shall cause Sugen to be in breach
or default in the performance of observance or any of the provisions
of this Agreement and such Sublicense is terminated, then
notwithstanding anything to the contrary contained in this Agreement,
Yissum shall not have the right to terminate this Agreement for any
such breach or default.
(d) If Sugen shall terminate this Agreement for Cause, [
] If Yissum shall terminate this
Agreement for Cause, [
] If Yissum shall
terminate this Agreement for Cause, [
[]= CONFIDENTIAL TREATMENT REQUESTED
20.
<PAGE>
] on the terms and
conditions of this Agreement in connection with any continued or
further use of such intellectual property or such Medicinal Compounds
by Sugen.
(e) Termination of this Agreement shall not relieve either party of any
obligation to the other party which it was liable to perform prior to
the Agreement's termination. In addition, if termination shall be
effected by Sugen for Cause, Sugen shall have the rights to all
Proprietary Rights developed prior to such termination as set forth
herein to the extent that Yissum may legally license such Proprietary
Rights and in accordance with the conditions of such license grant.
(f) Sections 5, 9 (third sentence beginning with "Notwithstanding anything
to the contrary ..." and ending with "... shall be solely owned by
Sugen" only), 10, 11, 12, 14 and 15 hereof shall survive and remain in
full force and effect after any termination or expiration of this
Agreement.
(g) If this Agreement should terminate pursuant to Section 15(c) because
of [
] and it may not
make any further use thereof.
(h) Notwithstanding the foregoing, the end or termination of this
Agreement shall not release Sugen or Yissum from the performance of
any obligation which it was liable to perform prior to the Agreement's
end or termination.
LAW
16. The provisions of this Agreement and everything concerning the relationship
between the parties in accordance with this Agreement shall be governed by
law of England and Wales.
ARBITRATION
17. (a) All differences and disputes arising, if at all, between the parties
to this Agreement in connection with the Agreement and/or its
interpretation and/or its performance and/or breach, with everything
relating thereto and deriving therefrom, shall be referred for the
decision of a single arbitrator, who shall be appointed by agreement
between the parties.
(b) Should the parties not reach agreement as to the arbitrator's
identity, the arbitrator shall be appointed in accordance with the
Commercial Arbitration rules of the International Chamber of Commerce
on the application of either of the parties.
[]= CONFIDENTIAL TREATMENT REQUESTED
21.
<PAGE>
(c) The arbitration shall be held in London, England. The arbitrator
shall be released from the civil procedure and laws of evidence but
shall be bound by the substantive law of England and be liable to
give grounds for his decision.
(d) The arbitrator's decision shall be final and bind the parties.
(e) The parties' execution of this Agreement shall constitute the
execution of an arbitration deed.
MISCELLANEOUS
18. (a) Neither Sugen nor Yissum may assign this Agreement or its rights and
duties pursuant to this Agreement to another except as set forth
herein without obtaining the other party's prior written consent;
PROVIDED, HOWEVER, that either party may assign this Agreement or its
rights and duties hereunder to any successor by full merger or
pursuant to the sale of substantially all of its property and assets.
(b) The failure or delay of a party to the Agreement to claim the
performance of an obligation of the other party shall not be deemed a
waiver of the performance of such obligation.
(c) Each party shall bear its own legal expenses involved in the making of
this Agreement.
(d) The headings to the sections in this Agreement are for the sake of
convenience only and shall not serve in the Agreement's
interpretation.
(e) This Agreement constitutes a full and complete agreement between the
parties and may only be waived or amended by a document signed by both
parties. The term "Agreement" as used in this Agreement and all other
instruments and agreements executed hereunder shall for all purposes
refer to the Agreement as amended and restated as of the date first
above written.
(f) This Agreement may be executed separately in counterparts, all of
which together shall constitute one original.
(g) For the avoidance of doubt Yissum and Sugen agree that it is in the
best interests of Yissum and Sugen to keep the work the Researcher
does under the auspices of the University separate from the work done
for Sugen related to the Researcher's employment by Sugen. Such work
related to the Researcher's employment for Sugen shall not be included
in the license granted herein and shall belong solely to Sugen as
provided in any agreement between the Researcher and Sugen.
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22.
<PAGE>
(h) Also for the avoidance of doubt, Yissum and Sugen agree that if a
compound should be covered by both this Agreement and their prior
agreement effective the 23rd day of September 1993 (as amended and
restated March 27, 1995), the compound shall be considered to be
covered by the said prior agreement rather than by this Agreement.
(i) Sugen hereby represents and warrants to Yissum that the execution and
delivery of this Agreement have been duly authorized by all requisite
action on the part of Sugen. Yissum hereby represents and warrants to
Sugen that the execution and delivery of this Agreement have been duly
authorized by all requisite action on the part of Yissum.
NOTICES
19. All notices and communications pursuant to this Agreement shall be made in
writing and sent by registered mail or internationally recognized air
courier service to or served at the following addresses:
Yissum: Yissum Research Development Company of the Hebrew University of
Jerusalem, POB 4279 Jerusalem, Israel.
Sugen: SUGEN, INC., 515 Galveston Drive, Redwood City, CA 94063-4720
USA
or such other address furnished in writing by one party to the other. Any
notice sent as aforesaid shall be deemed to have been received four days
after being posted by registered mail or internationally recognized air
courier service or one day after personal service, as the case may be.
AS WITNESS THE HANDS OF THE PARTIES
Agreed and Accepted:
YISSUM RESEARCH DEVELOPMENT
COMPANY OF THE HEBREW UNIVERSITY
OF JERUSALEM
By: /s/ Uri Litvin
------------------------------
Name: Uri Litvin
Title: Managing Director
SUGEN, INC.
By: /s/ James L. Tyree
------------------------------
Name: James L. Tyree
Title: President
[]= CONFIDENTIAL TREATMENT REQUESTED
23.
<PAGE>
EXHIBIT A
FORM OF TERMINATION NOTICE
YISSUM RESEARCH DEVELOPMENT COMPANY
OF THE HEBREW UNIVERSITY OF JERUSALEM
of 46 Jabotinsky Street, Jerusalem
(hereinafter "Yissum"),
and
SUGEN, INC.
of 515 Galveston Drive, Redwood City, California, U.S.A.
(hereinafter "SUGEN"),
WHEREAS
Yissum and SUGEN are parties to an Amended and Restated Research and
License Agreement "Sepsis/Inflammation" effective January 1, 1994, as amended
and restated January 5, 1996 (the "Research Agreement").
WHEREAS,
[On __________, the Research Period under the Research Agreement ended;]
or
[On __________, the Research Agreement was terminated.]
NOW, THEREFORE, it is hereby declared and agreed between the parties,
intending to be legally bound, as follows:
1. The definitions and references to the Research Agreement in the above
introduction are an integral part of this Notice. All capitalized terms
not defined herein shall have the same meaning as in the Research
Agreement.
2. Yissum hereby acknowledges that all its right, title and interest in the
Proprietary Rights related to the Listed Compounds listed on Appendix I
hereto and any modifications, analogs or derivatives thereof (the
"Technology") are subject to the terms of the Research Agreement.
3. SUGEN hereby assigns to Yissum all its right, title and interest in the
Proprietary Rights related to the HUJ Compounds not included within the
Technology. From the date of
[]=CONFIDENTIAL TREATMENT REQUESTED
24.
<PAGE>
the signing of this Notice, Yissum shall be independently entitled
to take any action regarding the HUJ Compounds not included within
the Technology, including to sell, license or effect any other
disposition thereof and SUGEN shall not have any other rights to such
compounds.
4. SUGEN shall perform all the necessary actions in order to effect the
transfer of rights in the Proprietary Rights to the HUJ Compounds not
included within the Technology, and shall sign the documents necessary to
effect the transfer including the patent assignment documents appropriate
for each involved country and any additional document required to implement
the said transfer and assignment. Yissum shall be responsible for all
legal and governmental fees associated with the preparation, filing and/or
recording of said assignments and documents.
5. The parties further agree that, if it should be determined that any of the
Proprietary Rights with respect to the Technology in the case of SUGEN or
the HUJ Compounds not included within the Technology in the case of Yissum
are dominant to any of the Proprietary Rights of the other party hereto, it
does grant an exclusive license to the other party (with right to
sublicense) to practice any such dominant Proprietary Rights for the sole
and limited purpose of practicing the Proprietary Rights as otherwise set
forth herein.
6. All notices and communications pursuant to this Notice shall be made in
writing by registered mail such as international Federal Express or such
other courier service providing a written record of such mailing and its
receipt, and shall be deemed to have been received by the receiving party
96 hours after being posted, unless the written record provided for herein
establishes that delivery was not made until a later date.
7. The provisions of this Notice and everything concerning the relationship
between the parties in accordance with this Notice shall be governed by
law of England and Wales.
Dated: ___________________
Yissum Research Development Company SUGEN, Inc.
of the Hebrew University of Jerusalem
By: _____________________ By: _____________________
Name: Name:
Title: Title:
[]=CONFIDENTIAL TREATMENT REQUESTED
25.
<PAGE>
APPENDIX A
YI# Serial # Country Filing Date
- - ------------------------------------------------------------------------------
[
]
[]=CONFIDENTIAL TREATMENT REQUESTED
26.
<PAGE>
[
]
October 9, 1995
[]=CONFIDENTIAL TREATMENT REQUESTED
27.
<PAGE>
SEPSIS - APPENDIX C
[
]
[]=CONFIDENTIAL TREATMENT REQUESTED
28.
<PAGE>
EXHIBIT 10.26 CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES
EXCHANGE ACT OF 1934, AS AMENDED
[Execution Copy]
AMENDED AND RESTATED
RESEARCH AND LICENSE AGREEMENT
"RESTENOSIS"
THIS AMENDED AND RESTATED AGREEMENT is made January 5, 1996, amending and
restating the Agreement originally effective January 1, 1994 (the "Effective
Date")
BETWEEN:
YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW UNIVERSITY OF
JERUSALEM of 46 Jabotinsky Street, Jerusalem, Israel ("Yissum")
AND:
SUGEN, INC. of 515 Galveston Drive, Redwood City, CA 94063-4720, USA
("Sugen")
WHEREAS:
Sugen wishes to finance research and development which is being, and
will be, carried out and conducted (i) at the Hebrew University of
Jerusalem under the supervision of Professor Alexander Levitzki (the
"Researcher") and (ii) at Related Institutions (as hereinafter
defined) with regard to the Research (as hereinafter defined);
AND WHEREAS:
Yissum is the exclusive representative of the University and of the
Researcher in all respects relating to the Research and/or this
Agreement and all rights whatsoever in the Research and/or the results
thereof shall belong to Yissum, subject to the terms of this
Agreement;
[ ] = CONFIDENTIAL TREATMENT REQUESTED
1.
<PAGE>
AND WHEREAS:
Yissum has filed patent applications relating to the above, as
detailed in Appendix A to this Agreement;
AND WHEREAS:
Yissum agrees to procure the performance of the Research in
accordance with the terms and conditions of this Agreement and procure
the performance of the University, the Researcher and any Related
Institutions in accordance with the terms and conditions of this
Agreement;
AND WHEREAS:
Sugen wishes to obtain a license from Yissum for the commercial
development, production and marketing of Products based on the
Proprietary Rights as defined below and/or the results thereof and/or
deriving therefrom, subject as provided below in this Agreement;
AND WHEREAS:
Yissum agrees to grant Sugen a license in accordance with and subject
to the terms and conditions of this Agreement;
ACCORDINGLY, IT IS AGREED BETWEEN THE PARTIES AS FOLLOWS:
RECITALS AND DEFINITIONS
1. (a) The recitals hereto constitute an integral part hereof.
(b) In this Agreement the following expressions shall have the meanings
appearing alongside them, unless the context otherwise requires.
"AFFILIATE" - means a person or entity that, directly or indirectly,
through one or more intermediaries, controls, is controlled by, or
is under common control with the entity specified. For purposes of
this definition, control shall mean (i) the direct or indirect
ownership of at least twenty percent of the stock entitled to vote for
the election of directors of such entity; or (ii) a twenty percent or
greater ownership interest in the profits of such entity; or (iii) in
the case of a special purpose research and development entity formed
to fund, in whole or in part, the Research hereunder, the right or
option to acquire directly, or indirectly through one or more
intermediaries, the interest of such entity in the Proprietary Rights,
Products and Research referred to in this Agreement. This definition
shall be subject to the understanding that if a research and
development entity should at
[ ] = CONFIDENTIAL TREATMENT REQUESTED
2.
<PAGE>
any time be an Affiliate it shall remain an Affiliate thereafter and
that a research and development entity shall only be an Affiliate if
it is sublicensed by SUGEN under this Agreement and has agreed to be
bound by the appropriate obligations of this Agreement with respect
to any such sublicense.
"AGREEMENT" - means this agreement (together with all the appendices
and annexes hereto), as the same may be amended and restated.
"COMPANY" - means Sugen together with its Affiliates.
"CONSIDERATION" - has the meaning set forth in Section 3(a) of this
Agreement.
"EFFECTIVE DATE" - means January 1, 1994.
"FIELD" - means the prevention, mitigation, treatment, cure or
diagnosis of [ ].
"FDA" - means the Food and Drug Administration of the United States of
America.
"HUJ COMPOUNDS" - means any compound useful in the Field discovered by
the Researcher, and/or students or employees of the University under
the guidance of or in connection or collaboration with the Researcher,
and/or a Related Institution, which discovery either was [
]
"HSC" - means the Hospital for Sick Children, an institution existing
under the laws of Toronto, Ontario, Canada and having a place of
business at 555 University Avenue, Toronto, Ontario M5G 1X8, Canada.
"KNOW-HOW" - means any information or materials useful in the Field
discovered, developed or acquired by or on behalf of students or
employees of the University and/or any Related Institution, including
the Researcher, and under the guidance of, or in connection or
collaboration with, the Researcher, during the term and in the course
of the Research. For the avoidance of doubt any research done under
the auspices of the University, but not done under the guidance of or
in connection or collaboration with the Researcher shall not be
governed by this Agreement.
"LICENSE" - has the meaning set forth in Section 4 of this Agreement.
"MEDICINAL COMPOUND" - means a compound or a modification, analog or
derivative of a compound originally discovered outside of the
Research, which
[ ] = CONFIDENTIAL TREATMENT REQUESTED
3.
<PAGE>
compound, modification, analog or derivative is made by the Researcher
and/or students or employees of the University and/or a Related
Institution under the guidance of or in connection or collaboration
with the Researcher.
"MPI" - means collectively, MAX-PLANCK-GESELLSCHAFT zur Foerderung der
Wissenschaften e.V., located in Residenzstrasse la, W-8000 Muenchen 2;
MAX-PLANCK-INSTITUT fur Biochemie, Abteilung Molekularbiologie located
in Am Klopferspitz 18a, W-8033 Martinsried; MAX-PLANCK-INSTITUT fur
Physiologische und Klinische Forschung located in Parkstrasse 1,61231
Bad Nauheim; and GARCHING INSTRUMENTE Gesellschaft zur industiellen
Nutzung von Forschungsergebnissen m.b.H. located in Koeniginstrasse
19, W-8000 Muenchen 22.
"NET SALES" - means all amounts in respect whereof invoices are issued
and paid in connection with the sale of Products or Medicinal
Compounds, respectively, for use in the Field to any person or entity,
other than sales between Sugen and an Affiliate of Sugen, after
deduction of all the following to the extent applicable to such sale:
[
]
"NYU"- means New York University, a university corporation organized
and existing under the laws of the State of New York and having a
place of business at 70 Washington Square South, New York, New York
10012.
"PATENT RIGHTS" - means the University's and Yissum's share in the
patents and patent applications listed in Appendix A and in any other
United States or Foreign patent application and any divisions,
continuations, in whole or in part, reissues, renewals and extensions
thereof, and patents issuing thereon:
(i) which claim inventions covered by the patents and patent
applications listed in Appendix A which Appendix the parties
believe to be, but may not be, a complete list of the applicable
patents and patent applications; or
(ii) which claim inventions useful in the Field that are made, in
whole or in part, [
] which are based on or arise from the Research.
"PERIODIC REPORT" - has the meaning set forth in Section 7(g) of this
Agreement.
[ ] = CONFIDENTIAL TREATMENT REQUESTED
4.
<PAGE>
"PRODUCT" - means [
]
"PROPRIETARY RIGHTS" - means all Know-How and Patent Rights.
"RELATED INSTITUTION" - means any institution with which Yissum or the
University has entered into a cooperation agreement with respect to
the subject matter of this Agreement, [ ]
"RESEARCH" - means the research and development in the Field which is
being carried out and conducted during the Research Period under the
direction of or in connection or collaboration with the Researcher,
and/or by a Related Institution, including but not limited to the
discovery, synthesis and testing of novel compounds.
"RESEARCH PERIOD" - means the period beginning January 1, 1994 and
ending on September 30, 1997 and any extension thereof pursuant to the
terms of this Agreement.
"RESEARCHER" - has the meaning set forth on page one of this
Agreement.
"SCIENTIFIC REPORT" - has the meaning set forth in Section 2(e) of
this Agreement.
"SUBLICENSE" - has the meaning set forth in Section 6 of this
Agreement.
"TERRITORY" - means all the countries of the world.
"UNIVERSITY" - means the Hebrew University of Jerusalem and/or each of
its adjuncts and/or branches.
"WORK PLAN" - means each of the periodic work plans described in
Section 2(b).
"YISSUM" - has the meaning set forth on page one of this Agreement.
THE RESEARCH AND ITS PERFORMANCE
2. (a) Sugen hereby undertakes to finance performance of the Research and
Yissum takes it upon itself to procure the Research's performance in
the University, all as provided below in this Agreement.
(b) Yissum hereby agrees to procure the production of Work Plans, and the
Research's performance in accordance with each Work Plan, in
accordance with this Agreement. Yissum shall cause the Researcher to
produce a Work Plan, in form and substance reasonably satisfactory to
Sugen, for each twelve-month
[ ] = CONFIDENTIAL TREATMENT REQUESTED
5.
<PAGE>
period (or lesser period or periods if agreed between the parties)
during the Research Period prior to the performance of services
thereunder and in no event later than the date of October 1 (or, if
earlier, the date that is the last day of any agreed to Work Plan)
during each year during the Research Period. Each Work Plan will set
forth goals, objectives and a time line and will include, without
limitation, priorities and guidelines in connection with the Research
to be performed.
(c) Sugen may apply to Yissum for an extension of the Research Period for
a further period of one year, provided that written notice thereof is
given to Yissum [
] The parties shall
decide between them by agreement negotiated in good faith the amount
of the reasonable supplemental finance payable by Sugen during the
extension pursuant to this section, Yissum may request an extension to
the Research Period for a further period of [ ] by notice to
Sugen at least [ ] prior to the expiration of the Research
Period. Such extension shall not require Sugen to remit any funds to
Yissum for such period.
(d) If the Research Period is extended pursuant to the provisions of
Subsection (c) above, the provisions of this Agreement shall apply to
the additional period.
(e) Yissum shall cause the Researcher to provide Sugen with written
reports detailing the results and conclusions of the Research (each a
"Scientific Report"), no later than the end of each six month period
during the Research Period. Sugen may obtain interim written reports
from the Researcher as Sugen may reasonably request. For the
avoidance of doubt, it is hereby expressed that this Agreement in
general and this section in particular shall not constitute an
obligation and/or confirmation on the part of Yissum that any specific
results and/or conclusions will be achieved in consequence of the
Research's performance and/or that a product may be developed as a
result of the Research.
(f) Sugen may at any time during the Research Period obtain in writing any
information relating to the Research's performance from Yissum,
including plans and documents relating thereto. Sugen's
representative may attend the site where the Research is being carried
out, provided that the time of his attendance is first coordinated
with Yissum and the Researcher. In addition, Yissum shall cause the
Researcher to be available, at Sugen's principal place of business or
such other location as may be mutually agreeable, for at least two
face-to-face meetings with Sugen per twelve-month period to discuss
and report on the Research. Sugen shall reimburse the Researcher for
reasonable expenses that he may incur in attending such meetings upon
presentation of appropriate receipts therefor. In connection with the
third twelve-month period under this Agreement, the first such face-
to-face meeting shall occur in February of 1996.
[ ] = CONFIDENTIAL TREATMENT REQUESTED
6.
<PAGE>
(g) Yissum shall supply Sugen and its Affiliates with sufficient
quantities of HUJ Compounds or leads for research and development
purposes as Sugen shall reasonably request during the Research Period.
(h) Performance of the Research may be performed in cooperation with the
Related Institutions in accordance with an appropriate cooperation
agreement between Yissum and the Related Institution, which agreement
shall be subject to the consent of Sugen which consent shall not be
unreasonably withheld. Yissum shall cause each Related Institution to
fully perform all of such Related Institution's obligations (including
without limitation as to matters of confidentiality) under such
cooperation agreement and consistent with the terms and conditions of
this Agreement.
FINANCE OF THE RESEARCH
3. (a) In consideration for the performance of the Research and in order to
finance it, Sugen undertakes to pay Yissum the amount detailed in the
consideration appendix annexed hereto as an integral part hereof and
marked as Appendix B (hereinafter referred to as "the Consideration").
The Consideration shall be paid to Yissum at the times and in the
installments and in accordance with the other terms and conditions
detailed in Appendix B. (Yissum's disbursement to any Related
Institution of any amounts received by Yissum pursuant to this section
shall be as reasonably directed by the Researcher and in accordance
with the Work Plan.)
(b) It is agreed between the parties that the provisions of this Agreement
shall not prevent Yissum and/or the University and/or the Researcher
from obtaining further finance from other entities for the Research,
provided that such other entities shall not be granted rights in the
Research prejudicing or limiting the rights granted to Sugen in
accordance herewith.
(c) Should the Research Period be extended as detailed in Section 2 above
and/or for any other reason, the parties shall determine by agreement
the supplemental finance for the period of the extension and such
reasonable supplement shall be added to the Consideration. The terms
and conditions of this Agreement shall apply MUTATIS MUTANDIS to the
supplemental Consideration.
THE LICENSE
4. Yissum hereby grants and Sugen hereby accepts from Yissum an exclusive
license in the Territory, with the right to sublicense, to practice the
Proprietary Rights to discover, develop, make, have made, use or sell
Products subject always to and in accordance with the terms and conditions
hereof (the "License").
[ ] = CONFIDENTIAL TREATMENT REQUESTED
7.
<PAGE>
TERM OF THE LICENSE
5. The License shall be effective as of the Effective Date. Unless otherwise
terminated as provided in Section 15, the License shall expire, on a
Product by Product and country by country basis, (i) [ ] the last to
expire of the relevant patents containing a valid claim covering a Product
in a country, or (ii) if no patent should issue containing a valid claim
covering a Product in a country, [ ] the first commercial
sale of the Product in such country. After termination of the License
pursuant to this Section 5 in respect of a Product in a country, Sugen
shall have a fully paid up right and license to continue to practice the
Proprietary Rights to discover, develop, make, have made, use and sell
such Product in such country.
SUBLICENSES
6. (a) Sugen shall be entitled to grant sublicenses under the License (each a
"Sublicense) on terms and conditions in compliance with the terms and
conditions of this Agreement to third parties, subject to the
following conditions:
(i) Each Sublicense granted hereunder shall be subject and
subordinate to the terms and conditions of this Agreement and a copy
shall be provided to Yissum;
(ii) Subject to the last sentence of this Subsection (a), the
sublicense shall expire automatically on the termination of the
License pursuant to Section 15(c) because of a material breach or
default by Sugen;
(iii) Any sublicensee of Sugen [
] and
(iv) Both during the term of the Sublicense and thereafter the
sublicensee shall be bound by a confidentiality obligation similar to
that imposed on Sugen in Section 11 below.
In the event that the License is terminated under Section 15 or
otherwise, any Sublicense granted by Sugen under the License and any
further sublicenses thereunder shall, upon the written request of such
sublicensee, remain in full force and effect, provided that [
]
(b) If Sugen should grant a Sublicense to any third party, Sugen will pay
to Yissum [ ] of any sublicense fee or any other
consideration (except for royalties
[ ] = CONFIDENTIAL TREATMENT REQUESTED
8.
<PAGE>
which will be paid as detailed in Section 7 below) that Sugen may
receive for the Sublicense of a Product [
] PROVIDED, HOWEVER, that if Sugen is
required to make a payment to any third party, other than MPI, NYU, or
HSC, in connection with the subject matter of such Sublicense, then
the amount payable to Yissum shall be reduced by [ ] but
in no event shall Yissum receive less than [ ] and
PROVIDED, FURTHER, that if Sugen is required to make a payment to
MPI and/or NYU and/or HSC in connection with the subject matter of
such Sublicense, then the [ ] share of any such
Sublicense fee or other consideration that would otherwise be payable
to Yissum shall be [
] Such payment will be made to Yissum within [
] from the date that it is received by Sugen. The Company will
provide Yissum with reasonable documentation regarding [
]
(c) If Sugen should grant a Sublicense as detailed above, and, as part of
such Sublicense, Sugen should receive any funds designated for
research and development purposes with respect to a Product, Sugen
will pay to Yissum [
] to be used by Yissum solely for
performance of the Research at the University.
(d) The sublicensee shall agree to indemnify Yissum in a manner
substantially similar to the indemnification provisions in Section 14
of this Agreement.
CONSIDERATION
7. As additional consideration for the grant of the License and during the
term provided in Section 5 with respect to each Product hereunder, the
Company shall pay to Yissum:
(a) A royalty of [ ] of the Net Sales by Sugen and its
sublicensees of a Product which is covered by a valid claim of an
issued patent on a Product by Product and country by country basis;
PROVIDED, HOWEVER, that if Sugen or its sublicensees are required to
pay royalties to a third party other than MPI, NYU or HSC in order to
make, use or sell any Product, Sugen shall be entitled to set off [
] against royalties due to
Yissum with respect to such Product, but in no event shall the
royalties due under this section be less than [ ] except
as set forth in Subsection (c) below; and
[ ] = CONFIDENTIAL TREATMENT REQUESTED
9.
<PAGE>
(b) (i) A royalty of [ ] of Net Sales of a Product by Sugen and
its sublicensees that is covered by Proprietary Rights which do not
include a valid claim included in an issued patent on a Product by
Product and country by country basis, and (ii) for a period of [
] from the first commercial sale, a royalty of [ ] of Net
Sales on a country by country basis of a Medicinal Compound.
(c) Notwithstanding Subsection (a) above, (i) if Sugen is also required to
pay royalties in order to manufacture, have manufactured, use or sell
any Product to either MPI or NYU or HSC, the royalties payable to
Yissum pursuant to Subsection (a) hereof shall be [ ]
and (ii) if Sugen is required to pay such royalties to any two of
MPI, NYU and HSC the royalties payable to Yissum under Subsection (a)
hereof shall be [ ]
(d) No royalties shall be payable on any Net Sales between Sugen and an
Affiliate of Sugen, but royalties shall be payable on the subsequent
resale of the Product.
(e) Within [ ] following receipt by Sugen or a sublicensee
of final regulatory approval in the United States of America to market
a Product, Sugen shall pay Yissum for such Product the greater of
(i) [
] or (ii) [
] In any event, Yissum shall
receive a minimum of [ ] upon the final regulatory approval in
the United States of America to market each Product, whether such
Product shall be marketed by Sugen or a sublicensee; PROVIDED,
however, that Yissum agrees that it shall not receive more than one
such payment for the final regulatory approval in the United States of
America to market any Product including any modification of a Product.
(f) Notwithstanding any other provision in this Agreement, the Company
shall only be required to pay one royalty in respect to the Net Sales
of a Product; and notwithstanding Subsection 7(e), the Company shall
only be required to make one payment for receipt of final regulatory
approval in the United States to market a Product no matter how many
indications may ultimately be approved for the Product.
(g) Every [ ] commencing from the date of the first commercial
sale, Sugen shall furnish Yissum with a [ ] report
(hereinafter referred to as "the Periodic Report") detailing the
total sales effected during the Reporting Period and the total
royalties due to Yissum in respect of that period. The Periodic
Report shall be submitted [ ] after
the end of the Reporting Period.
[ ] = CONFIDENTIAL TREATMENT REQUESTED
10.
<PAGE>
(h) The Periodic Reports shall contain full particulars of all sales made
by the Company or by sublicensees insofar as sublicenses have been
granted as provided herein, including sales broken down according to
countries, a breakdown of the number of Products sold, discounts,
returns, the currency in which the sales were made, invoice date and
all other relevant information enabling the royalties payable to be
determined.
(i) On the date prescribed for submission of each Periodic Report, Sugen
shall pay the royalties due to Yissum in accordance with the report.
Any such royalties relating to transactions in foreign currencies
shall be converted into United States dollars based on the closing
buying rate of the Citibank, N.A. of New York applicable to
transactions for the particular currency on the last business day of
the period for which such royalty is due. The royalties shall be
computed in United States dollars and paid in Israeli shekels based on
the closing buying rate of Citibank, N.A. of New York on the date of
actual payment of the royalties, and if no such rate is published as
aforesaid, based on the first sale rate published thereafter. Payment
of Value Added Tax (if charged) shall be [ ] each payment in
accordance with the statutory rate then in force.
(j) Sugen shall maintain, and shall require all of its sublicensees to
maintain for a period of [ ] after the end of the calendar
year to which they relate, true and complete books of account
consistent with standard accounting practice containing an accurate
record of all data necessary for the proper computation of all
payments due to Yissum under the terms of this Agreement.
(k) Yissum shall have the right, through a nationally recognized firm of
independent certified public accountants, to examine the books
referred to in Subsection (i) (not more than once in any calendar
year) within two calendar years after the end of the calendar year to
which they relate for the purpose of verifying the payments due to
Yissum under the terms of this Agreement. Any such examination shall
be made during normal business hours at the place where the records
are regularly kept. Yissum agrees that the information furnished to
it as a result of any such examination shall be limited to a statement
by such firm of certified public accountants to the effect that they
have reviewed such books of account and that the amounts of the
payments due under the terms of this Agreement are in conformity with
such books of account and the applicable provisions of this Agreement,
or setting forth any required adjustment. The fees and expenses of
such examination shall be borne by Yissum; PROVIDED, HOWEVER, that if
such examination reveals an underpayment of more than [ ]
for any period, Sugen shall promptly reimburse Yissum for such
reasonable fees and expenses. Any such accountants shall be required
to keep all information derived from such examination confidential.
Nothing in this Subsection shall impair the obligation of Sugen to pay
the full amount of all royalties due under this Agreement.
[ ] = CONFIDENTIAL TREATMENT REQUESTED
11.
<PAGE>
(l) Any sum of money which one party hereto is liable to pay the other
which is not duly paid shall bear interest from the due date for
payment until the actual date of payment at the [ ] for the
time being prevailing as set by the London Interbank offering rate.
(m) The provisions of this section are fundamental terms of the Agreement
and the breach thereof shall constitute a fundamental breach of the
Agreement.
DEVELOPMENT AND COMMERCIALIZATION
8. (a) Sugen or its sublicensees shall use reasonable diligence consistent
with prudent commercial practices to evaluate the results of the
Research and any commercial opportunities with regard to Products
arising therefrom.
(b) Sugen shall provide Yissum annually with written reports on any
material activities and actions undertaken by Sugen to develop and
commercialize a Product.
(c) Upon expiration of the Research Period or termination of the Agreement
pursuant to Section 15 (other than because of a material breach or
default by Sugen), Sugen shall provide to Yissum in writing a list of
the compounds that it believes show promise in the Field (the "Listed
Compounds"), together with a Termination Notice in the form attached
hereto as EXHIBIT A. Sugen shall thereby maintain all rights under
the License to the Listed Compounds and any modifications, analogs or
derivatives thereof, and the License shall terminate with respect to
all other HUJ Compounds covered by Proprietary Rights.
(d) If Sugen or its sublicensee has not initiated clinical trials with
respect to [ ] of the Listed Compounds (or a modification,
analog or derivative thereof) within [ ] from such expiration
or termination, the License shall terminate with respect to all the
Listed Compounds. Similarly, if Sugen or its sublicensee has not
initiated clinical trials with respect to [ ] of the Listed
Compounds (or modifications, analogs or derivatives thereof) within
[ ] from such expiration, the License shall terminate with
respect to the Listed Compounds other than the Listed Compound (and
its modifications, analogs and derivatives) with respect to which
clinical trials had been initiated within the required [ ]
time period. If any of the Listed Compounds should be covered by a
valid claim of an issued patent or by a claim in any pending patent
application filed not later than [ ] after expiration of the
Research Period, Sugen shall have exclusive rights for use in the
Field to all other compounds covered by such patent or patent
application so long as it maintains rights to the Listed Compounds.
Sugen shall also have exclusive rights for use in the Field to all
other compounds covered by such patent or patent applications so long
as it maintains rights to the Listed Compounds. Sugen agrees to
inform Yissum at
[ ] = CONFIDENTIAL TREATMENT REQUESTED
12.
<PAGE>
any time that it no longer believes that a Listed Compound shows
promise in the Field and to terminate the License with respect to
such Listed Compound.
OWNERSHIP
9. It is expressly agreed between the parties that all rights in the Research
and the Proprietary Rights shall be solely owned by Yissum but licensed to
Sugen as set forth in this Agreement, except to the extent that any
Proprietary Rights are the joint invention of Sugen and Yissum and/or a
Related Institution in which case such Proprietary Rights shall be jointly
owned as determined in accordance with the patent laws of the United States
of America. Sugen shall take reasonable steps to provide full force to
Yissum's rights as aforesaid. Notwithstanding anything to the contrary
contained herein, it is expressly agreed between the parties that all
rights in and to Medicinal Compounds shall be solely owned by Sugen.
PATENTS
10. (a) Yissum will cause the University and any Related Institution to
provide prompt and full disclosure to Sugen in writing of any
inventions made during the Research Period and/or in the course of
and/or based on or which arises from performance of the Research which
may constitute the basis for potential patents. Should patents be
appropriate therein, Sugen agrees to apply for patents in the United
States, Israel, Japan, the European Community and Canada and to comply
with all requirements for their prosecution in respect of appropriate
HUJ Compounds included in Proprietary Rights and/or resulting from or
based on the Research. Sugen shall determine the world wide patent
strategy in consultation with Yissum and agrees to keep Yissum
adequately informed as to the status of such strategy and any patent
applications. Notwithstanding the foregoing, Yissum may at its sole
decision appoint its own patent counsel to prepare the patents in
Israel as long as such counsel is supervised by and cooperates fully
with Sugen's patent counsel, and Yissum provides promptly to Sugen all
relevant materials and communications that it may receive from such
Israeli counsel.
(b) The parties shall consult and make every effort to reach agreement in
all respects relating to the manner of making patent applications and
their prosecution, including the time of making the applications, the
countries where applications will be made and all other particulars
relating to patent prosecution. Sugen shall act diligently in filing
and prosecuting all patent applications that the parties agree shall
be filed. Nevertheless, Sugen in its discretion may determine that it
should not continue the prosecution of any patent application in a
particular country, in which event it shall so notify Yissum in
writing and Yissum may then continue the prosecution solely for its
own account and at its expense and Sugen shall have no further rights
with respect to any patent that may issue in the particular country as
the result of the continued prosecution.
[ ] = CONFIDENTIAL TREATMENT REQUESTED
13.
<PAGE>
(c) Each patent application shall be made and prosecuted at Sugen's
expense in the name of the inventors and on behalf of Yissum.
(d) Notwithstanding the foregoing, Yissum shall have no obligation that
patents or patent applications will indeed be made and/or registered
and/or registrable in respect of the Proprietary Rights and/or Product
and/or any part thereof, nor that any patent that actually issues will
afford due protection against any third party. Nothing in this
Agreement or Appendix A shall constitute confirmation and/or a
representation by Yissum in connection with [ ] of any of
the Patent Rights, and [
]
(e) The parties shall assist each other in all respects relating to the
preparation of documents for the registration of a patent or any
patent-related right forthwith upon the other's request, and Yissum
shall cause the University and any Related Institution to assist Sugen
in assembling inventorship information and data for filing and
prosecution of patent applications as aforesaid.
(f) In the event a party to this Agreement acquires information that a
third party is infringing one or more of the Patent Rights, the party
acquiring such information shall promptly notify the other party to
the Agreement in writing of such infringement.
(g) In the event of an infringement of a Patent Right, [ ] shall be
privileged but not required to bring suit against the infringer. The
expenses of such suit or suits that [ ] elects to bring, including
any reasonable expenses of [ ] and/or the University incurred in
conjunction with the prosecution of such suit or the settlement
thereof, shall be paid for entirely by [ ] and [ ] shall hold
[ ] and/or the University free, clear and harmless from and
against any and all costs of such litigation, [
] In the event [ ] exercises the right to sue herein
conferred, it shall have the right to first reimburse itself out of
any sums recovered in such suit or in settlement thereof for all costs
and expenses of every kind and character, including [
] and if
after such reimbursement, any funds shall remain from said recovery,
[ ] shall promptly pay to [ ] an amount equal to [ ]
of such remainder and [ ] shall be entitled to receive and retain
the balance of the remainder of such recovery. If [ ] does not
bring suit against said infringer pursuant to this Subsection 10(g) or
has not commenced negotiations with said infringer for discontinuance
of said infringement within ninety days after receipt of such notice,
[ ] shall have the right, but shall not be obligated, to bring
suit for such infringement and to join [ ] as a party plaintiff.
The expenses of such
[ ] = CONFIDENTIAL TREATMENT REQUESTED
14.
<PAGE>
suit or suits that [ ] elects to bring, including any reasonable
expenses of [ ] incurred in conjunction with the prosecution of
such suit or the settlement thereof, shall be paid for entirely by
[ ] and [ ] shall hold [ ] free, clear and harmless from
and against any and all costs and expenses of such litigation, [
] If [ ] has commenced negotiations with an alleged
infringer of the Patent Right for discontinuance of such infringement
within such ninety-day period, [ ] shall have an additional ninety
days from the termination of such initial ninety-day period to
conclude its negotiations before [ ] may bring suit for such
infringement. In the event [ ] brings suit for infringement of
any Patent Right, [ ] shall have the right to first reimburse
itself out of any sums recovered in such suit or settlement thereof
for all costs and expenses of every kind and character, [
] any funds shall remain from said recovery, [ ] shall
promptly pay to [ ] an amount equal to [ ] of such
remainder and [ ] shall be entitled to receive and retain the
balance of the remainder of such recovery. [ ] agrees to
cooperate fully with [ ] at the request of [ ] including by
giving testimony and producing documents lawfully requested, in the
prosecution of any suit by [ ] for infringement of a Patent
Right; PROVIDED, HOWEVER, that [ ] shall pay all reasonable
expenses [ ]
incurred by [ ] in connection with such cooperation. [ ]
shall, and shall [
] cooperate
fully with [ ] at the request of [ ] including by giving
testimony and producing documents lawfully requested, in the
prosecution of any suit by [ ] for infringement of a Patent Right;
PROVIDED, HOWEVER, that [ ] shall pay all reasonable expenses [
] incurred by [ ] in connection with such
cooperation.
(h) Sugen agrees to pay to Yissum the sums paid by Yissum in regard to the
filing and execution costs relating to the Patent/s detailed in
Appendix A so long as such Patent/s are not included in the agreement
effective September 23, 1993, between the parties; provided, however
that such sums shall not exceed [ ] The payment shall be paid to
Yissum within 30 days from the execution of this Agreement. In
addition, Sugen will pay any further expenses reasonably incurred
regarding the patents and patent applications listed in Appendix A
after the Effective Date, provided Sugen will only be required to pay
such further expenses that are first authorized in writing by Sugen.
[ ] = CONFIDENTIAL TREATMENT REQUESTED
15.
<PAGE>
(i) The provisions of this section are fundamental provisions of the
Agreement, the breach thereof constituting a fundamental breach of the
Agreement if not cured by the Company within sixty days of receipt of
written notice of any such default.
CONFIDENTIALITY
11. (a) Sugen and Yissum each agree that, during the term of this Agreement
and subsequent thereto, they shall maintain in confidence, and Yissum
shall cause the Researcher, the University, any Related Institution
and their employees to maintain in confidence, all information,
details and data which is in and/or comes to their knowledge and/or
that of their employees, representatives and/or any person acting on
their behalf relating to the Research, the Proprietary Rights, any
Product, any Medicinal Compound, Yissum, the University, Sugen, their
researchers and employees. The parties agree not to convey or
disclose any such confidential information, and Yissum shall cause the
Researcher, the University, any Related Institution and their
employees not to convey or disclose any such confidential information,
to any entity or person that is not bound by a written agreement of
confidentiality except as may be required for any regulatory agency
filing or otherwise as required by law or as otherwise necessary for
performance (or enjoyment of rights) under this Agreement.
(b) The obligation contained in this section shall not apply to
information which is in the public domain as at the date hereof or to
information which hereafter comes into the public domain, unless Sugen
or Yissum breaches its obligations pursuant to this Agreement as a
result whereof the information comes into the public domain.
(c) Sugen and Yissum may disclose details and information to their
employees, consultants and sublicensees as necessary for the
performance of their obligations pursuant to this Agreement, PROVIDED,
HOWEVER, that any such employee, consultant or sublicensee is bound in
writing to maintain the confidentiality of such details and
information.
(d) Without prejudice to the foregoing, the Company and its sublicensees
shall not mention the University's name in connection with this
Agreement in any public disclosure without obtaining Yissum's prior
written consent, which consent shall not be unreasonably withheld, or
as may be required by applicable law. The Company shall further
procure that any entity connected with and subordinate to it shall not
mention the University's name in any public disclosure as aforesaid.
(e) Yissum shall cause the University's and any Related Institution's
researchers, employees and/or any other person involved in or
otherwise privy to the Research or the Proprietary Rights to execute
an agreement in writing for the maintenance
[ ] = CONFIDENTIAL TREATMENT REQUESTED
16.
<PAGE>
of confidentiality. At the request of Sugen, Yissum shall provide to
Sugen a copy of any such agreement.
(f) The breach of this section, including the subsections hereof, by any
person or entity other than Yissum or Sugen shall not be deemed a
breach of the Agreement if [
]
(g) Expiration or termination of this Agreement shall not release either
party from its obligations pursuant to this section.
(h) The provisions of this section are fundamental provisions of the
Agreement and their breach shall constitute a fundamental breach of
the Agreement.
(i) In order to insure the confidentiality of proprietary compounds,
Yissum will cause the University, any Related Institution and the
Researcher not to transfer any HUJ Compound to any third party unless
Sugen is first informed in writing of the proposed transfer, is given
a detailed description of the compound desired to be transferred and
the transferee, and Sugen has not stated in writing within thirty days
after receipt of such notice that it has an interest in such compound.
If Sugen states that it does have an interest in the compound, no
transfer will be made and Sugen will have six months thereafter to
determine the extent of its interest and whether it should continue to
be held in confidence. Under no circumstances will Yissum allow the
University, any Related Institution or the Researcher to transfer any
Medicinal Compound to any third party without the express written
consent of Sugen. In any event, transfer of a proprietary compound
(whether an HUJ Compound or a Medicinal Compound) to a third party, if
at all, shall only be made pursuant to a Materials Transfer Agreement
signed by the third party and in form satisfactory to Sugen.
[ ] = CONFIDENTIAL TREATMENT REQUESTED
17.
<PAGE>
PUBLICATIONS
12. (a) Yissum shall ensure that prior to submission for publication of a
manuscript or abstract or any oral presentation at any scientific or
similar meeting describing any aspect of the Research or its results
or any HUJ Compound or Medicinal Compound, the University, any Related
Institution and/or their students and employees including the
Researcher shall send Sugen a copy of the manuscript or abstract to be
submitted or outline of an oral presentation and shall allow Sugen [
] from the receipt by Sugen of such mailing to determine
whether the manuscript, abstract, outline or presentation contains
subject matter for which patent protection should be sought prior to
publication thereof or which is otherwise confidential. Should Sugen
believe the subject matter of the manuscript, abstract, outline or
presentation contains a patentable invention or otherwise contains
confidential information, then, prior to the expiration of such [
] period, Sugen shall give written notification to Yissum and
the author (if reasonably available) of its determination that such
manuscript, abstract, outline or presentation contains patentable
subject matter for which patent protection should be sought or
otherwise contains confidential information.
(b) After the expiration of such [ ] period, unless Yissum
has received the written notice specified above from Sugen, Yissum,
the University and the Researcher shall be free to submit or to allow
the University's students and employees to submit such manuscript,
abstract, outline or presentation for publication in any manner
consistent with academic standards.
(c) Upon receipt of such written notice from Sugen, Yissum, the
University, any Related Institution, the Researcher and the
University's and any Related Institution's students and employees will
thereafter delay submission of the manuscript, abstract, outline or
presentation for an additional period of [ ] to permit
the preparation and filing, in accordance with Section 10 hereof, of a
patent application on the subject matter to be disclosed in such
manuscript, abstract, outline or presentation. After expiration of
such [ ] period, or the filing of a patent application on
each such invention, whichever shall occur first, Yissum, the
University and the Researcher and the University's students and
employees shall be free to submit the manuscript, abstract, outline or
presentation and to publish the disclosed results. In no event,
however, will the chemical structure of any compound of interest to
Sugen be made public before it is published in a patent application
unless otherwise expressly approved by Sugen in writing.
(d) The provisions of this section shall not prejudice any other right
which Yissum or Sugen has pursuant to this Agreement and at law.
[ ] = CONFIDENTIAL TREATMENT REQUESTED
18.
<PAGE>
MASTER AND SERVANT RELATIONSHIP
13. It is hereby agreed and declared between the parties that the parties shall
act in all respects relating to this Agreement as independent contractors
and there neither is nor shall be any master and servant or principal and
agent relationship and/or partnership in the relationship between the
Company and/or any or its employees and/or any person or entity connected
with it on the one hand and Yissum on the other hand.
LIABILITY AND INDEMNITY
14. (a) Sugen shall, subject to the provisions of Section 14(b), indemnify,
defend and hold harmless Yissum and the University and its employees,
students and agents and their respective successors, heirs and assigns
(the "Indemnitees"), against any liability, damage, loss or expense
(including reasonable attorneys' fees and expenses of litigation)
incurred by or imposed on the Indemnitees in connection with any
claims, suits, actions, demands or judgments (i) arising out of the
production, manufacture, sale, use in commerce or in human clinical
trials, lease or promotion by Sugen or any Affiliate or sublicensee of
Sugen under the License, of any Product, relating to, or developed
pursuant to, this Agreement or (ii) arising out of any other
activities to be carried out by Sugen, or any sublicensee under the
License, pursuant to this Agreement.
(b) Sugen's indemnification obligation under Section 14(a)(i) shall apply
to any liability, damage, loss or expense whether or not it is
attributable to the negligent activities of the Indemnitees. Sugen's
indemnification obligation under Section 14(a)(ii) shall not apply to
any liability, damage, loss or expense to the extent that it is
attributable to the negligent activities of any Indemnitee.
(c) Sugen agrees, at its own expense, to defend against any actions
brought or filed against any Indemnitee with respect to the subject of
indemnity to which such Indemnitee is entitled hereunder whether or
not such actions are rightfully brought.
TERMINATION OF THE AGREEMENT
15. (a) (i) Prior to September 30, 1996 Sugen maintains the right to
reduce the scope of the Research on terms and conditions which will be
approved by Yissum, and/or to cancel it on condition that Sugen gives
written notice to Yissum at least [ ] in advance. After
September 30, 1996 the Company maintains the right to reduce the scope
of the Research, and/or to cancel it on condition that Sugen shall
give written notice to Yissum at least 30 days in advance. If Sugen
decides to reduce the scope of the Research, the payment shall be
reduced in accordance with and in consideration of the obligations
incurred by Yissum that are not able to be canceled. In addition, if
the Researcher should at any time no longer be the
[ ] = CONFIDENTIAL TREATMENT REQUESTED
19.
<PAGE>
active leader of the Research at the University and he is not replaced
by another individual satisfactory to Sugen in its sole discretion,
Sugen may reduce the scope of or cancel the Research if it gives
written notice to Yissum at least thirty days in advance.
(ii) Should Sugen decide to cancel the Research, Sugen shall pay to
Yissum all reasonable expenses incurred by the Research, and in
accordance with the Work Plan, prior to the date of notice of
cancellation and, in addition, up to [ ] of further expenses
arising from the Research, in accordance with the Work Plan and
irrevocably committed but not yet paid as of the date of notice of
cancellation, against invoices presented, until the date of
cancellation.
(iii) If termination is effected under this Section 15(a), right,
title and interest in the Proprietary Rights shall be governed by
Section 8(c).
(b) Unless terminated pursuant to Section 15(c) below, this Agreement
shall expire upon the expiration of the royalty term of the License in
all countries for all Products as set forth in Section 5 hereof.
(c) At any time prior to the expiration of this Agreement, either Yissum
or Sugen may terminate this Agreement forthwith for cause by the other
party, as "cause" is described below, by giving written notice to the
other party. "Cause" for termination of this Agreement by Sugen shall
be deemed to exist (i) [
] or (ii) [
]
during the Research Period prior to the date of [
]
during each year during the Research Period or [
] "Cause" for termination of this Agreement by Yissum shall
be deemed to exist if [
] In addition, "Cause" for termination by one party of
this Agreement shall be deemed to exist if, with respect to the other
party:
(A) (I) a voluntary case under any applicable bankruptcy, insolvency
or other similar law now or hereafter in effect shall be instituted by
such party, or such party shall consent to the entry of an order for
relief in an involuntary case under any such law; (II) a general
assignment for the benefit of creditors shall be made by such party;
(III) such party shall consent to the appointment of or possession
[ ] = CONFIDENTIAL TREATMENT REQUESTED
20.
<PAGE>
by a receiver, liquidator, trustee, custodian, sequestrator or similar
official of such party or of any substantial part of its property; or
(IV) such party shall adopt a board resolution in furtherance of any
of the foregoing actions specified in this Subsection (A); or
(B) a decree or order for relief by a court of competent jurisdiction
shall be entered in respect of such party in an involuntary case under
any applicable bankruptcy, insolvency or other similar law now or
hereafter in effect, or appointing a receiver, liquidator, trustee,
sequestrator or other similar official of such party or of any
substantial part winding up or liquidation of its affairs, and any
such decree or order shall remain unstayed or undischarged and in
effect for a period of sixty days.
If any act or omission by any sublicensee under the License (including
any further sublicensee thereunder) shall cause Sugen to be in breach
or default in the performance of observance or any of the provisions
of this Agreement and such Sublicense is terminated, then
notwithstanding anything to the contrary contained in this Agreement,
Yissum shall not have the right to terminate this Agreement for any
such breach or default.
(d) If Sugen shall terminate this Agreement for Cause, [
] If Yissum shall terminate this Agreement for
Cause, [
] If Yissum shall terminate this
Agreement for Cause, [
] on the terms and conditions of this
Agreement in connection with any continued or further use of such
intellectual property or such Medicinal Compounds by Sugen.
(e) Termination of this Agreement shall not relieve either party of any
obligation to the other party which it was liable to perform prior to
the Agreement's termination. In addition, if termination shall be
effected by Sugen for Cause, Sugen shall have the rights to all
Proprietary Rights developed prior to such termination as set forth
herein to the extent that Yissum may legally license such Proprietary
Rights and in accordance with the conditions of such license grant.
[ ] = CONFIDENTIAL TREATMENT REQUESTED
21.
<PAGE>
(f) Sections 5, 9 (third sentence beginning with "Notwithstanding anything
to the contrary ..." and ending with "... shall be solely owned by
Sugen" only), 10, 11, 12, 14 and 15 hereof shall survive and remain in
full force and effect after any termination or expiration of this
Agreement.
(g) If this Agreement should terminate pursuant to Section 15(c) because
of [
] and it may not make any further
use thereof.
(h) Notwithstanding the foregoing, the end or termination of this
Agreement shall not release Sugen or Yissum from the performance of
any obligation which it was liable to perform prior to the Agreement's
end or termination.
LAW
16. The provisions of this Agreement and everything concerning the relationship
between the parties in accordance with this Agreement shall be governed by
law of England and Wales.
ARBITRATION
17. (a) All differences and disputes arising, if at all, between the parties
to this Agreement in connection with the Agreement and/or its
interpretation and/or its performance and/or breach, with everything
relating thereto and deriving therefrom, shall be referred for the
decision of a single arbitrator, who shall be appointed by agreement
between the parties.
(b) Should the parties not reach agreement as to the arbitrator's
identity, the arbitrator shall be appointed in accordance with the
Commercial Arbitration rules of the International Chamber of Commerce
on the application of either of the parties.
(c) The arbitration shall be held in London, England. The arbitrator
shall be released from the civil procedure and laws of evidence but
shall be bound by the substantive law of England and be liable to give
grounds for his decision.
(d) The arbitrator's decision shall be final and bind the parties.
(e) The parties' execution of this Agreement shall constitute the
execution of an arbitration deed.
[ ] = CONFIDENTIAL TREATMENT REQUESTED
22.
<PAGE>
MISCELLANEOUS
18. (a) Neither Sugen nor Yissum may assign this Agreement or its rights and
duties pursuant to this Agreement to another except as set forth
herein without obtaining the other party's prior written consent;
PROVIDED, HOWEVER, that either party may assign this Agreement or its
rights and duties hereunder to any successor by full merger or
pursuant to the sale of substantially all of its property and assets.
(b) The failure or delay of a party to the Agreement to claim the
performance of an obligation of the other party shall not be deemed a
waiver of the performance of such obligation.
(c) Each party shall bear its own legal expenses involved in the making of
this Agreement.
(d) The headings to the sections in this Agreement are for the sake of
convenience only and shall not serve in the Agreement's
interpretation.
(e) This Agreement constitutes a full and complete agreement between the
parties and may only be waived or amended by a document signed by both
parties. The term "Agreement" as used in this Agreement and all other
instruments and agreements executed hereunder shall for all purposes
refer to the Agreement as amended and restated as of the date first
above written.
(f) This Agreement may be executed separately in counterparts, all of
which together shall constitute one original.
(g) For the avoidance of doubt Yissum and Sugen agree that it is in the
best interests of Yissum and Sugen to keep the work the Researcher
does under the auspices of the University separate from the work done
for Sugen related to the Researcher's employment by Sugen. Such work
related to the Researcher's employment for Sugen shall not be included
in the license granted herein and shall belong solely to Sugen as
provided in any agreement between the Researcher and Sugen.
(h) Also for the avoidance of doubt, Yissum and Sugen agree that if a
compound should be covered by both this Agreement and their prior
agreement effective the 23rd day of September 1993 (as amended and
restated March 27, 1995), the compound shall be considered to be
covered by the said prior agreement rather than by this Agreement.
(i) Sugen hereby represents and warrants to Yissum that the execution and
delivery of this Agreement have been duly authorized by all requisite
action on the part of Sugen. Yissum hereby represents and warrants to
Sugen that the execution and
[]=CONFIDENTIAL TREATMENT REQUESTED
23.
<PAGE>
delivery of this Agreement have been duly authorized by all requisite
action on the part of Yissum.
NOTICES
19. All notices and communications pursuant to this Agreement shall be made in
writing and sent by registered mail or internationally recognized air
courier service to or served at the following addresses:
Yissum: Yissum Research Development Company of the Hebrew University of
Jerusalem, POB 4279 Jerusalem, Israel.
Sugen: SUGEN, INC., 515 Galveston Drive, Redwood City, CA 94063-4720
USA
or such other address furnished in writing by one party to the other. Any
notice sent as aforesaid shall be deemed to have been received four days
after being posted by registered mail or internationally recognized air
courier service or one day after personal service, as the case may be.
AS WITNESS THE HANDS OF THE PARTIES
Agreed and Accepted:
YISSUM RESEARCH DEVELOPMENT
COMPANY OF THE HEBREW UNIVERSITY
OF JERUSALEM
By: /S/ URI LITVIN
---------------------------------
Name: Uri Litvin
Title: Managing Director
SUGEN, INC.
By: /S/ JAMES L. TYREE
---------------------------------
Name: James L. Tyree
Title: President
[]=CONFIDENTIAL TREATMENT REQUESTED
24.
<PAGE>
EXHIBIT A
FORM OF TERMINATION NOTICE
YISSUM RESEARCH DEVELOPMENT COMPANY
OF THE HEBREW UNIVERSITY OF JERUSALEM
of 46 Jabotinsky Street, Jerusalem
(hereinafter "Yissum"),
and
SUGEN, INC.
of 515 Galveston Drive, Redwood City, California, U.S.A.
(hereinafter "SUGEN"),
WHEREAS
Yissum and SUGEN are parties to an Amended and Restated Research and
License Agreement "Restenosis" effective January 1, 1994, as amended and
restated January 5, 1996 (the "Research Agreement").
WHEREAS,
[On __________, the Research Period under the Research Agreement ended;]
or
[On __________, the Research Agreement was terminated.]
NOW, THEREFORE, it is hereby declared and agreed between the parties,
intending to be legally bound, as follows:
1. The definitions and references to the Research Agreement in the above
introduction are an integral part of this Notice. All capitalized terms
not defined herein shall have the same meaning as in the Research
Agreement.
2. Yissum hereby acknowledges that all its right, title and interest in the
Proprietary Rights related to the Listed Compounds listed on Appendix I
hereto and any modifications, analogs or derivatives thereof (the
"Technology") are subject to the terms of the Research Agreement.
[]=CONFIDENTIAL TREATMENT REQUESTED
25.
<PAGE>
3. SUGEN hereby assigns to Yissum all its right, title and interest in the
Proprietary Rights related to the HUJ Compounds not included within the
Technology. From the date of the signing of this Notice, Yissum
shall be independently entitled to take any action regarding the HUJ
Compounds not included within the Technology, including to sell, license
or effect any other disposition thereof and SUGEN shall not have any other
rights to such compounds.
4. SUGEN shall perform all the necessary actions in order to effect the
transfer of rights in the Proprietary Rights to the HUJ Compounds not
included within the Technology, and shall sign the documents necessary to
effect the transfer including the patent assignment documents appropriate
for each involved country and any additional document required to implement
the said transfer and assignment. Yissum shall be responsible for all
legal and governmental fees associated with the preparation, filing and/or
recording of said assignments and documents.
5. The parties further agree that, if it should be determined that any of the
Proprietary Rights with respect to the Technology in the case of SUGEN or
the HUJ Compounds not included within the Technology in the case of Yissum
are dominant to any of the Proprietary Rights of the other party hereto, it
does grant an exclusive license to the other party (with right to
sublicense) to practice any such dominant Proprietary Rights for the sole
and limited purpose of practicing the Proprietary Rights as otherwise set
forth herein.
6. All notices and communications pursuant to this Notice shall be made in
writing by registered mail such as international Federal Express or such
other courier service providing a written record of such mailing and its
receipt, and shall be deemed to have been received by the receiving party
96 hours after being posted, unless the written record provided for herein
establishes that delivery was not made until a later date.
7. The provisions of this Notice and everything concerning the relationship
between the parties in accordance with this Notice shall be governed by
law of England and Wales.
Dated: ___________________
Yissum Research Development Company SUGEN, Inc.
of the Hebrew University of Jerusalem
By: _____________________ By: _____________________
Name: Name:
Title: Title:
[]=CONFIDENTIAL TREATMENT REQUESTED
26.
<PAGE>
APPENDIX A
YI# Serial # Country Filing Date
- - -----------------------------------------------------------------------
[
]
[]=CONFIDENTIAL TREATMENT REQUESTED
27.
<PAGE>
[
] October 9, 1995
[]=CONFIDENTIAL TREATMENT REQUESTED
28.
<PAGE>
RESTENOSIS - APPENDIX C
[
]
[]=CONFIDENTIAL TREATMENT REQUESTED
29.
<PAGE>
EXHIBIT 10.48 CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES
EXCHANGE ACT OF 1934, AS AMENDED
TERMINATION AND REDEMPTION AGREEMENT
TERMINATION AND REDEMPTION AGREEMENT effective January 9, 1996 (the
"Effective Date") by and between AMGEN INC., a corporation organized under the
laws of Delaware ("AMGEN") with principal offices located at Amgen Center,
Thousand Oaks, California 91320 and SUGEN, INC., a corporation organized under
the laws of Delaware ("SUGEN") with principal offices located at 515 Galveston
Drive, Redwood City, California 94063.
RECITALS
A. AMGEN and SUGEN entered into a Collaboration Agreement dated
December 18, 1992, as subsequently amended by Amendment Number One dated
June 15, 1995 (as amended, the "Collaboration Agreement").
B. AMGEN and SUGEN now desire to terminate the research programs
conducted pursuant to the Collaboration Agreement (the "Research Programs") and
grant certain rights with respect to the subject matter thereof.
C. AMGEN is the owner of 387,878 shares of Common Stock of SUGEN (the
"Shares").
D. SUGEN desires to redeem and AMGEN desires that SUGEN redeem at the
price set forth herein, $2,697,800 in value of the Shares.
E. SUGEN, as a further inducement to AMGEN for the redemption of the
Shares, desires to provide AMGEN with the opportunity to acquire an additional
equity interest in SUGEN though the purchase of a warrant to acquire SUGEN
Common Stock and AMGEN desires to purchase such warrant as set forth herein.
IT IS, THEREFORE, AGREED as follows:
1. DEFINITIONS. The following words shall have the meanings set forth
below whenever used in this Agreement:
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
"AFFILIATE" shall mean a person or entity that, directly or
indirectly, through one or more intermediates, controls, is controlled by, or is
under common control with the person or entity specified. For the purposes of
this definition, control shall mean (i) the direct or indirect ownership of at
least fifty percent (50%) of the shares of stock entitled to vote for the
election of directors in the case of a corporation or (ii) a fifty percent (50%)
or greater ownership interest in any other entity.
"AGREEMENT" shall mean this Agreement.
"CLOSING" shall have the meaning set forth in paragraph 8.2.
"COLLABORATION AGREEMENT" shall have the meaning set forth in
Recital A.
"COLLABORATION MOLECULE(S)" shall mean the molecules listed on
Exhibit A.
"COLLABORATION PATENT RIGHTS" shall mean Patent Rights (i) arising out
of the patent applications and/or patents listed on Exhibit B, (ii) obtained by
SUGEN with respect to Collaboration Molecules and /or (iii) obtained by SUGEN on
any product directly identified using a Collaboration Molecule.
"COLLABORATION PRODUCT" shall mean, on a country by country basis, any
product the making, using or selling of which is claimed in a Collaboration
Patent Right.
"COLLABORATION TECHNOLOGY" shall mean the Collaboration Patent Rights
and Collaboration Products.
"CONFIDENTIAL INFORMATION" shall mean proprietary information,
including, but not limited to, pharmaceutical, chemical, biological and
biochemical materials, products, trade secrets, formulations, know-how,
technical and non-technical data, methods and processes and any drawings, plans,
diagrams, specifications and/or other documents containing such information.
"DEFAULT" with respect to any Party shall mean (i) that the
representations and warranties of such Party set forth in paragraph 9 of this
Agreement shall have been untrue when made and/or (ii) that such Party shall
have failed to comply with any material obligation of such Party set forth in
this Agreement and shall have failed to remedy such failure within sixty (60)
days of written notice thereof from the other Party.
"EFFECTIVE DATE" shall mean January 9, 1996.
"NET SALES" shall mean all revenues recognized in accordance with GAAP
from the sale or other disposition of Collaboration Products, less returns and
allowances (actually paid or allowed, including, but not limited to, prompt
payment and volume discounts, charge backs
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
2.
<PAGE>
from wholesales and other allowances granted to customers or wholesalers of
Collaboration Products, whether in cash or trade), bad debt, freight, shipping,
packing, insurance and sales and other taxes based on sales prices included in
gross sales, but not including taxes when assessed on income derived from such
sale.
"PARTY" shall mean AMGEN or SUGEN and "PARTIES" shall mean AMGEN and
SUGEN.
"PATENT RIGHTS" shall mean valid issued patents and foreign
equivalents and any extensions by existing or future extension mechanisms,
including Supplementary Protection Certificates or the equivalent thereof,
renewals, continuations, continuations-in-part, divisions, patents-of-additions,
and/or reissues of any patent.
"RESEARCH PROGRAMS" shall mean the programs of research conducted by
SUGEN and the Independent Collaborators (as defined in the Collaboration
Agreement) and funded by AMGEN, each pursuant to the Collaboration Agreement.
"SHARES" shall have the meaning set forth in Recital C.
"WARRANT" shall mean the warrant in the form attached hereto as
Exhibit C, which warrant shall have an exercise price equal to fifteen dollars
and fifty cents ($15.50).
2. WAIVER; TERMINATION OF COLLABORATION AGREEMENT.
2.1 WAIVER. The Parties hereby waive the limitation set forth in
Section 15.2 of the Collaboration Agreement on termination of the Research
Programs prior to the fourth anniversary of the effective date thereof.
2.2 NOTICE. SUGEN hereby waives the notice requirement set forth in
Section 15.2 of the Collaboration Agreement with respect to termination of the
Research Programs by AMGEN. Further, SUGEN accepts this Agreement as full and
complete notice by AMGEN of AMGEN's desire to terminate the Research Programs
pursuant to Section 15.2 of the Collaboration Agreement effective as of the
Effective Date.
2.3 TERMINATION. The Research Programs are hereby terminated in
accordance with Section 15.2(a) of the Collaboration Agreement.
3. PAYMENTS BY AMGEN. As full and complete satisfaction of all AMGEN
obligations pursuant to Article 8 of the Collaboration Agreement, and in order
to compensate SUGEN for the costs it expects to incur in connection with the
winding down of its commitments under Article 6 of the Collaboration Agreement,
AMGEN hereby agrees to:
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
3.
<PAGE>
(a) Pay to SUGEN the sum of one million four hundred thousand
dollars ($1,439,000) in immediately available funds, within five (5)
days after the Effective Date; and
(b) Forgive any and all advanced and unearned payments of any
kind or nature that may have been made by AMGEN to SUGEN under the
Collaboration Agreement and release SUGEN from any and all obligations
that it may have to return any such payments to AMGEN, to credit AMGEN
with any amount against future obligations of AMGEN to SUGEN, or to
provide further services or materials to AMGEN in consideration
thereof.
4. TECHNOLOGY SUBJECT TO THIS AGREEMENT; LICENSE.
4.1 LICENSE TO COLLABORATION PATENT RIGHTS. AMGEN hereby grants to
SUGEN an exclusive license, with the right to sublicense, under all of AMGEN's
right, title and interest in the Collaboration Patent Rights to make, have made,
use, sell and have sold Collaboration Products worldwide. The royalty payable by
SUGEN to AMGEN on Net Sales of Collaboration Products shall be as set forth in
paragraph 5.1(a) of this Agreement and the obligation of SUGEN to make other
payments to AMGEN with respect to Collaboration Products shall be as set forth
in paragraph 5.1(b) and (c) of this Agreement.
4.2 OTHER TECHNOLOGY. Except as expressly set forth herein, the
terms and provisions of the Collaboration Agreement with respect to Technology
(as defined in the Collaboration Agreement) other than the Collaboration
Technology shall remain in full force and effect.
4.3 WAIVER. AMGEN waives the provisions of paragraph 15.6
("Acquisition of SUGEN") of the Collaboration Agreement with respect to the
Collaboration Technology.
5. PAYMENT OBLIGATION OF SUGEN.
5.1 PAYMENTS. SUGEN agrees to pay to AMGEN:
(a) [ ] of Net Sales of Collaboration
Products by SUGEN and/or its Affiliates;
(b) The lesser of (i) [ ] of royalties paid to
SUGEN and/or its Affiliates by sublicensees of the Collaboration
Patent Rights on sales of Collaboration Products or (ii) [ ]
of Net Sales of Collaboration Products by sublicensees of the
Collaboration Patent Rights; and
(c) [ ] of any other revenue [
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
4.
<PAGE>
] recognized in accordance with GAAP by
SUGEN and/or its Affiliates from the sublicensing or other
disposition of rights to Collaboration Patent Rights or
Collaboration Products.
5.2 RECORD RETENTION. SUGEN shall keep complete and accurate records
pertaining to the sale and/or sublicense of Collaboration Products in sufficient
detail to permit AMGEN to confirm the accuracy of calculations of all payments
hereunder. Such records shall be retained for a four (4) year period following
the year in which any such payments are made hereunder.
5.3 ROYALTY AUDIT. Once per calendar year, AMGEN shall have the
option to engage, at its own expense, an independent certified public accountant
reasonably acceptable to SUGEN, to examine, in confidence, the records of SUGEN
as may be necessary to determine, with respect to any calendar year for which
records are retained pursuant to paragraph 5.2, the correctness of any payment
hereunder. The report of such accountant shall be limited to a certificate
verifying any report made or payment submitted by SUGEN during such period. All
information contained in any such certificate shall be deemed to be Confidential
Information subject to paragraph 10 hereof. If any audit performed under this
paragraph 5.3 shall indicate that any payment hereunder was in error by more
than ten percent (10%), SUGEN shall pay the cost of the audit.
6. PATENT PROSECUTION.
6.1 PROSECUTION BY SUGEN. SUGEN shall assume all responsibility to
prepare, file, prosecute and maintain any patent applications relating to and
patents included within [ ] SUGEN shall pay for all
costs in connection therewith. AMGEN agrees to cooperate fully with SUGEN in
all such matters, including the signing of any necessary legal papers.
6.2 ELECTION NOT TO PROCEED. SUGEN shall be free, at any time and at
its sole option, to abandon or stop funding of patent prosecution or maintenance
of [
] provided that it gives AMGEN notice of such intention at least
sixty (60) days before a final due date which would result in abandonment of the
patent or patent application. In such case, AMGEN, at its option, may continue
prosecution or maintenance at its own cost.
6.3 LICENSE AGREEMENT PATENTS. AMGEN will promptly request that New
York University and/or Max Planck Gesellschaft et. al., as the case may be, [
]
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
5.
<PAGE>
7. PURCHASE OF WARRANT.
7.1 PURCHASE. AMGEN agrees to purchase from SUGEN and SUGEN agrees
to sell to AMGEN the Warrant for the sum of two hundred thousand dollars
($200,000).
7.2 CLOSING. The Closing of the purchase and sale of the Warrant
shall take place at the time and place set forth in paragraph 8.2.
8. REDEMPTION OF SHARES.
8.1 REDEMPTION. SUGEN agrees to redeem from AMGEN and AMGEN agrees to
submit for redemption by SUGEN, two hundred and thirty five thousand (235,000)
shares of SUGEN Common Stock. SUGEN shall pay to AMGEN for each Share so
redeemed, eleven dollars and forty eight cents ($11.48).
8.2 CLOSING. The Closing of the redemption of the Shares shall take
place at 10:00 a.m. on the tenth day after the Effective Date at the offices of
SUGEN at 515 Galveston Drive, Redwood City, California, or such other time and
place as the Parties may agree. At the Closing, (i) AMGEN shall deliver to
SUGEN the certificate or certificates representing the number of Shares being
redeemed, duly assigned, and SUGEN will, if necessary, deliver to AMGEN a new
certificate for the balance of the Shares being retained by AMGEN and (ii) SUGEN
shall make payment to AMGEN of two million six hundred ninety seven thousand
eight hundred dollars ($2,697,800) in immediately available funds.
9. REPRESENTATIONS, WARRANTIES AND COVENANTS.
9.1 SHARES. AMGEN represents and warrants that it has good title,
free of any lien or right of any third party, to the Shares to be redeemed.
9.2 WARRANT. SUGEN represents and warrants that the Warrant, when
delivered, will be fully paid and duly issued.
9.3 TECHNOLOGY.
(A) INDEPENDENT COLLABORATORS. Joseph Schlessinger represents
and warrants that to his best knowledge all [
] has been
disclosed to SUGEN. Axel Ullrich represents and warrants that to his
best knowledge all [
] has been disclosed to SUGEN.
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
6.
<PAGE>
(B) SUGEN. SUGEN (i) represents and warrants that to its best
knowledge all novel or proprietary SUGEN Collaboration Technology (as
defined in the Collaboration Agreement) in existence on the Effective
Date has been disclosed to AMGEN and (ii) covenants that should
additional novel or proprietary [
] come to SUGEN's attention, SUGEN will promptly disclose
such technology to AMGEN.
(C) JOINT COLLABORATION TECHNOLOGY. The Parties each represent
and warrant that, to their knowledge, there is [
]
9.4 DEFAULT. Each Party represents and warrants that it is not in
default of any material obligation under the Collaboration Agreement and that
all material representations, warrants and covenants of such Party set forth in
the Collaboration Agreement are true and correct on the Effective Date.
9.5 AUTHORIZATION. Each Party represents that it is duly authorized
to execute and deliver this Agreement and to perform its obligations hereunder,
that this Agreement is a legal and valid obligations binding on such Party, and
that this Agreement does not conflict with any other agreement to which it is a
party or by which it may be bound.
10. CONFIDENTIALITY.
10.1 CONFIDENTIALITY. Except to the extent expressly authorized by
this Agreement or otherwise agreed in writing by the Parties, the Parties agree
that, for five (5) years from the Effective Date, the receiving Party shall keep
confidential and shall not publish or otherwise disclose and shall not use for
any purpose other than as provided for in this Agreement any Confidential
Information furnished to it by the other Party pursuant to this Agreement,
except to the extent that it can be established by the receiving Party by
competent proof that such Confidential Information:
(a) was already known to the receiving Party, other than under an
obligation of confidentiality, at the time of disclosure by the other
Party;
(b) was generally available to the public or otherwise part of
the public domain at the time of its disclosure to the receiving
Party;
(c) became generally available to the public or otherwise part
of the public domain after its disclosure and other than through any
act or omission of the receiving Party in breach of this Agreement;
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
7.
<PAGE>
(d) was disclosed to the receiving Party, other than under an
obligation of confidentiality to a third party, by a third party who
had no obligation to the disclosing Party not to disclose such
information to others; or
(e) was independently discovered or developed by the receiving
Party without the use of Confidential Information belonging to the
disclosing Party.
10.2 THIS AGREEMENT. The Parties agree that the material terms of
this Agreement shall be considered Confidential Information of both Parties. The
Parties will consult with one another and agree on the provisions of this
Agreement to be redacted in any filings made by the Parties with the Securities
and Exchange Commission or as otherwise required by law.
11. DEFAULT.
11.1 DEFAULT BY AMGEN. Upon the Default by AMGEN, SUGEN shall, in its
sole discretion and without prejudice to any other remedies available at law or
in equity, have the right to (i) terminate the provisions of paragraphs 4, 5 and
6 or (ii) reduce the amounts payable by SUGEN to AMGEN pursuant to paragraph 5
by [ ]
11.2 DEFAULT BY SUGEN. Upon the Default by SUGEN, AMGEN shall have
the right, it its sole discretion and without prejudice to any other remedies
available at law or in equity, have the right to (i) terminate the provisions of
paragraphs 4, 5 and 6 or (ii) increase the amounts payable by SUGEN to AMGEN
pursuant to paragraph 5 by [ ] Notwithstanding the foregoing,
in the event the Default by SUGEN shall be a Default by SUGEN under paragraph
9.3(b)(i) hereof, AMGEN's sole remedy with respect to such Default shall be to
exercise any and all rights it may have pursuant to the Collaboration Agreement
with respect to the SUGEN Collaboration Technology (as defined in the
Collaboration Agreement) giving rise to the Default.
12. MISCELLANEOUS PROVISIONS.
12.1 FURTHER ACTIONS. Each Party agrees to execute, acknowledge and
deliver such further instruments, and to do all such other acts, as may be
necessary or appropriate in order to carry out the purposes and intent of the
Agreement.
12.2 PUBLIC ANNOUNCEMENTS. The Parties agree that they will make a
joint public announcement concerning the execution of this Agreement in the form
attached hereto as Exhibit D. Neither Party will depart materially from this
mutually agreed public disclosure in public written or oral statements.
12.3 NOTICES. All notices and other communications hereunder shall be
in writing and shall be deemed given if delivered personally or by facsimile
transmission (receipt
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
8.
<PAGE>
verified), mailed by registered or certified mail (return receipt requested),
postage prepaid, or sent by express courier service, to the parties at the
following address (or at such address for a Party as shall be specified by like
notice; provided, that notices of a change of address shall be effective only
upon receipt thereof):
If to AMGEN, addressed to: Amgen Inc.
Amgen Center
1840 DeHavilland Drive
Thousand Oaks, CA 91320
Attn: General Counsel and Secretary
If to SUGEN, addressed to: Sugen, Inc.
515 Galveston Drive
Redwood City, CA 94063
Attn: President
12.4 AMENDMENT. No amendment modification or supplement of any
provision of this Agreement shall be valid or effective unless made in wiring
and signed by a duly authorized officer of each Party.
12.5 WAIVER. No provision of this Agreement shall be waived by any
act, omission or knowledge of any Party or its agents or employees except by an
instrument in writing expressly waiving such provision and signed by a duly
authorized officer of the waiving.
12.6 COUNTERPARTS. The Agreement may be executed simultaneously in
any number of counterparts, each of which need not contain the signature of more
than one Party but all such counterparts taken together shall constitute one and
the same agreement.
12.7 DESCRIPTIVE HEADINGS. The descriptive heading of this Agreement
are for convenience only, and shall be of no force or effect in construing or
interpreting any of the provisions of this Agreement.
12.8 GOVERNING LAW. This Agreement shall be governed by and
interpreted in accordance with the substantive laws of the State of California
and the Parties hereby consent to the jurisdiction of the California Courts,
both state and federal.
12.9 SEVERABILITY. Whenever possible, each provision of this
Agreement will be interpreted in such manner as to be effective and valid under
applicable law, but if any provision of this Agreement is held to be prohibited
by or invalid under applicable law, such provision will be ineffective only to
the extent of such prohibition or invalidity, without invalidating the remainder
of this Agreement.
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
9.
<PAGE>
12.10 ENTIRE AGREEMENT OF THE PARTIES. This Agreement will
constitute and contain the complete, final and exclusive understanding and
agreement of the Parties and cancels and supersedes any and all other prior
negotiations, correspondence, understandings and agreements whether oral or
written, between the Parties respecting the subject matter hereof.
IN WITNESS WHEREOF, the Parties hereto have executed this Agreement as of
the date first above written.
AMGEN INC.
By: \S\ George A. Vandeman
------------------------
Title: Sr. VP, General Counsel and Secretary
---------------------------------------
SUGEN, INC.
By: \S\ Stephen Evans-Freke
-------------------------
Title: Chairman and CEO
------------------
JOSEPH SCHLESSINGER
\S\ Joseph Schlessenger
-------------------------
AXEL ULLRICH
\S\ Axel Ullrich
-----------------------
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
10.
<PAGE>
EXHIBIT A -- Collaboration Molecules
EXHIBIT B -- Patent Rights
EXHIBIT C -- Warrant
EXHIBIT D -- Press Release
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
11.
<PAGE>
EXHIBIT A
COLLABORATION MOLECULES
[
]
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
EXHIBIT B
U.S. PATENT APPLICATIONS
SERIAL
TITLE NUMBER
- - --------------------------------------------------------------------------------
[
]
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
EXHIBIT C
WARRANT
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
THE SECURITIES REPRESENTED HEREBY HAVE NOT BEEN REGISTERED UNDER THE SECURITIES
ACT OF 1933, AS AMENDED (THE "ACT"), OR UNDER THE SECURITIES LAWS OF ANY STATE.
THESE SECURITIES ARE SUBJECT TO RESTRICTIONS ON TRANSFERABILITY AND RESALE AND
MAY NOT BE TRANSFERRED OR RESOLD EXCEPT AS PERMITTED UNDER THE ACT AND THE
APPLICABLE STATE SECURITIES LAWS, PURSUANT TO REGISTRATION OR EXEMPTION
THEREFROM. THE ISSUER OF THESE SECURITIES MAY REQUIRE AN OPINION OF COUNSEL IN
FORM AND SUBSTANCE REASONABLY SATISFACTORY TO THE ISSUER TO THE EFFECT THAT ANY
PROPOSED TRANSFER OR RESALE IS IN COMPLIANCE WITH THE ACT AND ANY APPLICABLE
STATE SECURITIES LAWS.
SUGEN, INC.
WARRANT FOR THE PURCHASE OF SHARES OF COMMON STOCK
January 19, 1996 200,000 Shares
For Value Received, SUGEN, Inc. a Delaware corporation (the "Company"),
with its principal office at 515 Galveston Drive, Redwood City, California
94063, hereby certifies that Amgen Inc., a Delaware corporation ("Holder"),
with its principal office at 1840 DeHavilland Drive, Thousand Oaks, California
91320, or its assigns (each of whom shall also be considered a "Holder") for
good and valuable consideration, receipt of which is hereby acknowledged, is
entitled, subject to the provisions of this Warrant, to purchase from the
Company, the number of fully paid and nonassessable shares of Common Stock of
the Company set forth above, subject to adjustment as hereinafter provided.
Subject to Section 1(b), this Warrant shall be exercisable, in whole or in
part, at any time before 5:00 p.m. (Pacific Standard Time), January 19, 2003,
and shall be void thereafter.
Holder may purchase such number of shares of Common Stock at a purchase
price per share (as appropriately adjusted pursuant to Section 6 hereof) of
$15.50 (the "Exercise Price"). The term "Common Stock" shall mean the
aforementioned Common Stock of the Company, together with any other equity
securities that may be issued by the Company in addition thereto or in
substitution therefor as provided herein.
The number of shares of Common Stock to be received upon the exercise of
this Warrant and the price to be paid for a share of Common Stock are subject to
adjustment from time to time as hereinafter set forth. The shares of Common
Stock deliverable upon such exercise, as adjusted from time to time, are
hereinafter sometimes referred to as "Warrant Shares."
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
15.
<PAGE>
SECTION I. EXERCISE OF WARRANT.
A. VOLUNTARY EXERCISE. This Warrant may be exercised in whole or in part
(but for not less than 66,666 Warrant Shares in any one exercise unless the
exercise is for the balance of the Warrant Shares purchasable hereunder) on any
business day by presentation and surrender hereof to the Company at its
principal office at the address set forth in the initial paragraph hereof (or at
such other address as the Company may hereafter notify Holder in writing) with
the Purchase Form annexed hereto duly executed and accompanied by proper payment
of the Exercise Price in lawful money of the United States of America in the
form of a check, subject to collection, for the number of Warrant Shares
specified in the Purchase Form. If this Warrant should be exercised in part
only, the Company shall, upon surrender of this Warrant, execute and deliver a
new Warrant evidencing the rights of Holder thereof to purchase the balance of
the Warrant Shares purchasable hereunder. Upon receipt by the Company of this
Warrant and such Purchase Form, together with proper payment of the Exercise
Price, at such office, Holder shall be deemed to be the holder of record of the
Warrant Shares, notwithstanding that the stock transfer books of the Company
shall then be closed or that certificates representing such Warrant Shares shall
not then be actually delivered to Holder. The Company shall pay any and all
documentary stamp or similar issue or transfer taxes payable in respect of the
issue or delivery of the Warrant Shares.
B. MANDATORY EXERCISE. In the event that, at any time after [
], the average of the closing prices of the Company's Common Stock
on the Nasdaq National Market (or the primary national securities exchange on
which the Common Stock is then quoted; provided, however, that if the Common
Stock is neither traded on the Nasdaq National Market nor on a national
securities exchange, the price referred to above shall be the price reflected in
the over-the-counter market as reported by the National Quotation Bureau, Inc.
or any organization performing a similar function) for twenty (20) consecutive
trading days, as reported in THE WALL STREET JOURNAL, equals or exceeds [ ]
of the Exercise Price, the Company, not later than thirty (30) days thereafter,
may give notice to Holder to exercise the Warrant (a "Notice of Mandatory
Exercise"). In the event that Holder does not exercise the Warrant in
compliance with the procedures set forth in Section 1(a) within twenty (20)
days from the date of the Notice of Mandatory Exercise, the Warrant shall be
void thereafter.
SECTION II. RESERVATION OF SHARES. The Company hereby agrees that at all
times there shall be reserved and available for issuance and delivery upon
exercise of this Warrant all shares of its Common Stock or other shares of
capital stock of the Company from time to time issuable upon exercise of this
Warrant. All such shares shall be duly authorized and, when issued upon such
exercise in accordance with the terms of this Warrant, shall be validly issued,
fully paid and nonassessable, free and clear of all liens, security interests,
charges and other encumbrances or restrictions on sale (other than any
restrictions on sale set forth herein or pursuant to applicable federal and
state securities laws) and free and clear of all preemptive rights.
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
SECTION III. FRACTIONAL INTEREST. The Company will not issue a fractional
share of Common Stock upon exercise of a Warrant. Instead, the Company will
deliver its check for the current market value of the fractional share. The
current market value of a fraction of a share is determined as follows: multiply
the current market price of a full share by the fraction of a share and round
the result to the nearest cent.
The current market price of a share of Common Stock for purposes of this
Section is the last reported sales price of the Common Stock on the last trading
day prior to the exercise date, as reported in THE WALL STREET JOURNAL on the
Nasdaq National Market, or the primary national securities exchange on which the
Common Stock is then quoted; provided, however, that if the Common Stock is
neither traded on the Nasdaq National Market nor on a national securities
exchange, the price referred to above shall be the price reflected in the over-
the-counter market as reported by the National Quotation Bureau, Inc. or any
organization performing a similar function.
SECTION IV. ASSIGNMENT OR LOSS OF WARRANT.
A. ASSIGNMENT. Holder may assign its interest in this Warrant in whole
or in part to any person or persons. Subject to the provisions of Section 9,
upon surrender of this Warrant to the Company or at the office of its stock
transfer agent or warrant agent, with the Assignment Form annexed hereto duly
executed the Company shall, without charge, execute and deliver a new Warrant or
Warrants in the name of the assignee or assignees named in such instrument of
assignment (any such assignee will then be a "Holder" for purposes of this
Warrant) and, if Holder's entire interest is not being assigned, in the name of
Holder, and this Warrant shall promptly be canceled.
B. LOSS OF WARRANT. Upon receipt of evidence satisfactory to the Company
of the loss, theft, destruction or mutilation of this Warrant, and (in the case
of loss, theft or destruction) of indemnification satisfactory to the Company,
and upon surrender and cancellation of this Warrant, if mutilated, the Company
shall execute and deliver a new Warrant of like tenor and date.
SECTION V. RIGHTS OF HOLDER. Holder shall not, by virtue hereof, be
entitled to any rights of a stockholder in the Company, either at law or equity,
and the rights of Holder are limited to those expressed in this Warrant. Nothing
contained in this Warrant shall be construed as conferring upon Holder hereof
the right to vote or to consent or to receive notice as a stockholder of the
Company on any matters or with respect to any rights whatsoever as a stockholder
of the Company. No dividends or interest shall be payable or accrued in respect
of this Warrant or the interest represented hereby or the Warrant Shares
purchasable hereunder until, and only to the extent that, this Warrant shall
have been exercised in accordance with its terms.
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
17.
<PAGE>
SECTION VI. ADJUSTMENT OF EXERCISE PRICE AND NUMBER OF SHARES. The number
and kind of securities purchasable upon the exercise of this Warrant and the
Exercise Price shall be subject to adjustment from time to time upon the
beginning of certain events, as follows:
A. ADJUSTMENT FOR CHANGE IN CAPITAL STOCK. If at any time after the date
hereof:
1. the Company pays a dividend in Common Stock or makes a
distribution on its Common Stock in shares of its Common Stock;
2. the Company subdivides its outstanding shares of Common Stock
into a greater number of shares;
3. the Company combines its outstanding shares of Common Stock into
a smaller number of shares;
4. the Company makes a distribution on its Common Stock in shares of
its capital stock other than Common Stock;
5. the Company issues by reclassification of its Common Stock any
shares of its capital stock; or
6. the rights (the "Rights") distributed pursuant to the Rights
Agreement (the "Rights Agreement") between the Company and The
First National Bank of Boston, as Rights Agent, dated as of
August 1, 1995, become exercisable;
then the Exercise Price in effect immediately prior to such action shall be
adjusted so that Holder may receive upon exercise of this Warrant and payment of
the same aggregate consideration the number and kind of shares of capital stock
of the Company which Holder would have owned immediately following such action
if Holder had exercised this Warrant immediately prior to such action.
The adjustment shall become effective immediately after the record date in
the case of a dividend or distribution, immediately after the effective date in
the case of a subdivision, combination or reclassification, and on the
Distribution Date (as defined in the Rights Agreement) in the case of the
exercisability of the Rights. In the case of an adjustment for the
exercisability of the Rights, there shall be another adjustment effective as of
the Expiration Date (as defined in the Rights Agreement).
B. MINIMUM ADJUSTMENT. No adjustment in the Exercise Price of this
Section 6 shall be required unless such adjustment would require an increase or
decrease of at least twenty-five cents ($.25) in such Exercise Price; PROVIDED,
HOWEVER, that any adjustments which by reason of this subsection are not
required to be made, shall be carried forward and taken into account
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
in any subsequent adjustment. All calculations under this Section 6 shall be
made to the nearest cent or to the nearest share, as the case may be.
C. DEFERRAL OF ISSUANCE OR PAYMENT. In any case in which an event
covered by this Section 6 shall require that an adjustment in the Exercise Price
be made effective as of a record date, the Company may elect to defer until the
occurrence of such event (A) issuing to Holder, if this Warrant is exercised
after such record date, the shares of Common Stock and other capital stock of
the Company, if any, issuable upon such exercise over and above the shares of
Common Stock or other capital stock of the Company, if any, issuable upon such
exercise on the basis of the Exercise Price in effect prior to such adjustment,
and (B) paying to Holder by check any amount in lieu of the issuance of
fractional shares pursuant to Section 3.
D. WHEN NO ADJUSTMENT REQUIRED. No adjustment need be made for a change
in the par value or no par value of the Common Stock. To the extent this
Warrant becomes exercisable into cash, no adjustment need be made thereafter as
to the cash, and interest will not accrue on the cash.
E. NOTICE OF CERTAIN ACTIONS. In the event that:
1. the Company shall authorize the issuance to all holders of its
Common Stock of rights, warrants, options or convertible securities to subscribe
for or purchase shares of its Common Stock or of any other subscription rights,
warrants, options or convertible securities; or
2. the Company shall authorize the distribution to all holders of
its Common Stock of evidences of its indebtedness or assets (other than
dividends paid in or distributions of the Company's capital stock for which the
Exercise Price shall have been adjusted pursuant to subsection (a) of this
Section 6 or cash dividends or cash distributions payable out of consolidated
current or retained earnings as shown on the books of the Company and paid in
the ordinary course of business); or
3. the Company shall authorize any capital reorganization or
reclassification of the Common Stock (other than a subdivision or combination of
the outstanding Common Stock and other than a change in par value of the Common
Stock) or of any consolidation or merger to which the Company is a party and for
which approval of any stockholders of the Company is required (other than a
consolidation or merger in which the Company is the continuing corporation and
that does not result in any reclassification or change of the Common Stock
outstanding), or of the conveyance or transfer of the properties and assets of
the Company as an entirety or substantially as an entirety, or a tender offer or
exchange offer for shares of Common Stock; or
4. the Company is the subject of a voluntary or involuntary
dissolution, liquidation or winding-up procedure; or
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
5. the Company proposes to take any action that would require an
adjustment of the Exercise Price pursuant to this Section 6;
then the Company shall cause to be duly given to Holder, at least twenty (20)
days prior to the applicable record or effective date hereinafter specified for
actions of the character described in this subsection (e) (or as soon as
practicable for actions of the character described in subsection (a) of this
Section 6), a notice stating (w) the date as of which the holders of Common
Stock of record to be entitled to receive any such rights, warrants or
distributions are to be determined, (x) the expiration date established for any
tender offer or exchange offer for shares of Common Stock, (y) the date on which
any such consolidation, merger, conveyance, transfer, dissolution, liquidation
or winding-up is expected to become effective, and the date as of which it is
expected that holders of Common Stock of record shall be entitled to exchange
their shares of Common Stock for securities or other property, if any,
deliverable upon such reorganization, reclassification, consolidation, merger,
conveyance, transfer, dissolution, liquidation or winding-up, or (z) the record
date or effective date of any other action.
F. NO ADJUSTMENT AFTER EXERCISE OF WARRANT. No adjustments shall be made
under any Section herein in connection with the issuance of Warrant Shares after
exercise of this Warrant.
SECTION VII. OFFICERS' CERTIFICATE. Whenever the Exercise Price shall be
adjusted as required by the provisions of Section 6, the Company shall forthwith
file in the custody of its Secretary or an Assistant Secretary at its principal
office an officers' certificate showing the adjusted Exercise Price determined
as herein provided, setting forth in reasonable detail the facts requiring such
adjustment and the manner of computing such adjustment. Each such officers'
certificate shall be signed by the chairperson, president or chief financial
officer of the Company and by the secretary or any assistant secretary of the
Company. Each such officers' certificate shall be made available at all
reasonable times for inspection by Holder.
SECTION VIII. RECLASSIFICATION, REORGANIZATION, CONSOLIDATION OR MERGER.
In the event of any reclassification, capital reorganization or other change of
outstanding shares of Common Stock of the Company (other than a subdivision or
combination of the outstanding Common Stock and other than a change in the par
value of the Common Stock) or in the event of any consolidation or merger of the
Company with or into another corporation (other than a merger in which the
Company is the continuing corporation and that does not result in any
reclassification, capital reorganization or other change of outstanding shares
of Common Stock of the class issuable upon exercise of this Warrant) or in the
event of any sale, lease, transfer or conveyance to another corporation of the
property and assets of the Company as an entirety or substantially as an
entirety, the Company shall, as a condition precedent to such transaction, cause
effective provisions to be made so that Holder shall have the right thereafter,
by exercising this Warrant, to purchase the kind and amount of shares of stock
and other securities and property (including cash) receivable upon such
reclassification, capital reorganization and other change, consolidation,
merger, sale or conveyance by a holder of the number of shares of
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
Common Stock that might have been received upon exercise of this Warrant
immediately prior to such reclassification, capital reorganization, change,
consolidation, merger, sale or conveyance. Any such provision shall include
provisions for adjustments in respect of such shares of stock and other
securities and property that shall be as nearly equivalent as may be practicable
to the adjustments provided for in this Warrant. The foregoing provisions of
this Section 8 shall similarly apply to successive reclassifications, capital
reorganizations and changes of shares of Common Stock and to successive
consolidations, mergers, sales or conveyances. In the event that in connection
with any such capital reorganization, or reclassification, consolidation,
merger, sale or conveyance, additional shares of Common Stock shall be issued in
exchange, conversion, substitution or payment, in whole or in part, for, or of,
a security of the Company other than Common Stock, any such issue shall be
treated as an issue of Common Stock covered by the provisions of subsection (a)
of Section 6.
SECTION IX. TRANSFER TO COMPLY WITH THE SECURITIES ACT OF 1933. This
Warrant may not be exercised and neither this Warrant nor any of the Warrant
Shares, nor any interest in either, may be offered, sold, assigned, pledged,
hypothecated, encumbered or in any other manner transferred or disposed of, in
whole or in part, except in compliance with applicable United States federal and
state securities or Blue Sky laws and the terms and conditions hereof. Each
Warrant shall bear a legend in substantially the same form as the legend set
forth on the first page of this Warrant. Each certificate for Warrant Shares
issued upon exercise of this Warrant, unless at the time of exercise such
Warrant Shares are acquired pursuant to a registration statement that has been
declared effective under the Securities Act of 1933, as amended (the "Securities
Act"), and applicable blue sky laws, shall bear a legend substantially in the
following form:
THE SECURITIES REPRESENTED HEREBY HAVE NOT BEEN REGISTERED UNDER THE
SECURITIES ACT OF 1933, AS AMENDED (THE "ACT"), OR UNDER THE
SECURITIES LAWS OF ANY STATE. THESE SECURITIES ARE SUBJECT TO
RESTRICTIONS ON TRANSFERABILITY AND RESALE AND MAY NOT BE TRANSFERRED
OR RESOLD EXCEPT AS PERMITTED UNDER THE ACT AND THE APPLICABLE STATE
SECURITIES LAWS, PURSUANT TO REGISTRATION OR EXEMPTION THEREFROM. THE
ISSUER OF THESE SECURITIES MAY REQUIRE AN OPINION OF COUNSEL IN FORM
AND SUBSTANCE REASONABLY SATISFACTORY TO THE ISSUER TO THE EFFECT THAT
ANY PROPOSED TRANSFER OR RESALE IS IN COMPLIANCE WITH THE ACT AND ANY
APPLICABLE STATE SECURITIES LAWS.
Any certificate for any Warrant Shares issued at any time in exchange or
substitution for any certificate for any Warrant Shares bearing such legend
(except a new certificate for any Warrant Shares issued after the acquisition of
such Warrant Shares pursuant to a registration statement that has been declared
effective under the Securities Act) shall also bear such legend unless, in the
opinion of counsel for the Company, the Warrant Shares represented thereby need
no longer
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
be subject to the restriction contained herein. The provisions of this
Section 9 shall be binding upon all subsequent holders of certificates for
Warrant Shares bearing the above legend and all subsequent holders of this
Warrant, if any.
SECTION 10. REGISTRATION RIGHTS.
(a) DEMAND REGISTRATION.
(i) If the Company shall receive a written request from Holder that
the Company file a registration statement under the Securities Act covering the
registration of at least 100,000 Warrant Shares (a "Demand Registration"), the
Company shall, subject to the limitations set forth below, as soon as
practicable, use its reasonable efforts to effect such Demand Registration of
the Warrant Shares requested to be registered; PROVIDED, that the Company shall
not be required to effect more than one Demand Registration hereunder. A
registration will not count as a Demand Registration until it has become
effective.
(ii) If Holder intends to sell its Warrant Shares by means of an
underwriting (whether on a "best efforts" or a "firm commitment" basis), it
shall so advise the Company as part of its request, and the Company's Board of
Directors shall select the managing underwriter for such offering; provided,
that such managing underwriter shall be reasonably satisfactory to Holder.
Without the consent of Holder, the Company shall not permit any securities,
other than those requested by Holder and those requested by other holders of the
Company's securities having registration rights as of the date of this Warrant,
to be included in the underwritten offering.
(iii) In addition, the Company shall not be obligated to effect, or to
take any action to effect, any registration:
(A) Within 90 days after the effective date of any registration
statement effected by the Company, whether for its own account or for the
account of others; or
(B) If the Company shall furnish to Holder a certificate signed
by the Company's Chairman, Chief Executive Officer or President stating that in
good faith judgment of the Company it would be seriously detrimental or
otherwise disadvantageous to the Company or its shareholders for such a
registration statement to be filed as expeditiously as possible, the Company
shall have a period of not more than 120 days within which to file such
registration statement measured from the date of the Company's receipt of such
Holder's request for registration in accordance with subsection (a) of
Section 10 hereof; PROVIDED, HOWEVER, that the Company may not utilize this
right more than once.
(iv) Whenever Holder requests that any Warrant Shares be registered:
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
(A) The Company will use reasonable efforts to prepare and file
with the Securities and Exchange Commission (the "Commission") as expeditiously
as possible a registration statement on Form S-3, if available, or on any form
for which the Company then qualifies and which counsel for the Company shall
deem appropriate and available for the sale of the Warrant Shares to be
registered thereunder in accordance with the intended method of distribution
thereof, and use its reasonable efforts to cause such filed registration
statement to become and remain continuously effective for a period of not less
than three months (extended, if necessary by the number of days the
effectiveness of the registration statement is suspended during such three-month
period) or such shorter period in which the disposition of all securities in
accordance with the intended methods of disposition set forth in such
registration statement shall be completed, and to comply with the provisions of
the Securities Act (to the extent applicable to the Company) with respect to
such dispositions.
(B) The Company will furnish to Holder and each managing
underwriter, if any, such number of copies of such registration statement, or
any amendment or supplement thereto (in each case including all exhibits
thereto) and the prospectus included in such registration statement (including
each preliminary prospectus), in each case in conformity with the requirements
of the Securities Act, as Holder or underwriter may reasonably request in order
to facilitate the sale of the Warrant Shares.
(C) The Company will use reasonable efforts to qualify the
Warrant Shares covered by such registration statement under such other
securities or Blue Sky laws of such jurisdictions in the United States as shall
be reasonably requested by Holder; PROVIDED that the Company shall not be
required in connection therewith or as a condition thereto to qualify to do
business or to file a general consent to services of process in any such states
or jurisdictions, unless the Company is already subject to service in such
jurisdiction and except as may be required by the Securities Act.
(D) The Company shall cause all such Warrant Shares registered
pursuant to or covered by such registration to be listed on each U.S. securities
exchange or quotation system on which similar securities issued by the Company
are then listed.
(E) The Company will as promptly as is practicable notify
Holder, at any time when a prospectus relating to the sale of the Warrant Shares
is required by law to be delivered in connection with sales by an underwriter or
dealer, of the occurrence of any event requiring the preparation of a supplement
or amendment to such prospectus so that, as thereafter delivered to the
purchasers of such Warrant Shares, such prospectus will not contain an untrue
statement of a material fact or omit to state any material fact required to be
stated therein or necessary to make the statements therein, in the light of the
circumstances under which they were made, not misleading and promptly make
available to Holder and to the underwriters any such supplement or amendment.
Holder agrees that, upon receipt of any notice from the Company of the
occurrence of any event of the kind described in the preceding sentence, Holder
will forthwith discontinue the offer and sale of Warrant Shares pursuant to the
registration
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
statement covering such Warrant Shares until receipt by Holder and the
underwriters of the copies of such supplemented or amended prospectus and, if so
directed by the Company, Holder will deliver to the Company all copies, other
than permanent file copies then in Holder's possession, of the most recent
prospectus covering such Warrant Shares at the time of receipt of such notice.
(F) The Company will enter into customary agreements (including
an underwriting agreement in customary form) and take such other actions as are
reasonably required in order to expedite or facilitate the sale of such Warrant
Shares.
(G) The Company will use its reasonable efforts to obtain a cold
comfort letter from the Company's independent public accountants, in customary
form and covering such matters of the type customarily covered by cold comfort
letters in such transactions.
(H) The Company will make available for inspection by Holder,
any underwriter participating in any disposition pursuant to such registration
statement, and any attorney, accountant or other agent retained by Holder or
underwriter, all financial and other records, pertinent corporate documents and
properties of the Company, and cause the Company's officers, directors and
employees to supply all information reasonably requested by Holder, underwriter,
attorney, accountant or agent in connection with such registration statement.
(v) Expenses incurred in connection with the Company's performance of
or compliance with this subsection 10(a), with respect to: (A) all registration
and filing fees (including for filings with the Commission or the National
Association of Securities Dealers, Inc.), (B) fees and expenses of compliance
with securities or blue sky laws (including reasonable fees and disbursements of
counsel in connection with blue sky qualifications of the Warrant Shares), (C)
printing expenses, (D) fees and expenses incurred in connection with the listing
of the Warrant Shares and (E) fees and expenses of counsel for the Holder (all
such expenses being herein called "Demand Registration Expenses"), shall be paid
by the Holder regardless of whether a registration statement becomes effective;
provided, however, that all such Demand Registration Expenses, except filing and
qualification expenses and fees and disbursements of counsel for Holder, shall
be borne by the Company in the event that the registration is effected on Form
S-3 (or any comparable or successor of such form) or would have been effected on
Form S-3 (or any comparable or successor of such form) except for the failure of
the Company to comply with the rules and regulations necessary to be eligible to
use such form. In any event, Holder shall pay underwriting fees, discounts or
commissions attributable to the sale of Warrant Shares and any out-of-pocket
expenses it incurs.
(b) PIGGYBACK REGISTRATION.
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
(i) If at any time the Company proposes to file a registration
statement under the Securities Act with respect to any offering of any of its
equity securities (other than a registration statement (i) on Form S-8 or any
successor form to such Form or (ii) filed in connection with an exchange offer
or an offering of its Common Stock or of securities convertible or exchangeable
into its Common Stock), whether or not for its own account, then the Company
shall give written notice of such proposed filing to Holder by personal
delivery, facsimile transmission (receipt verified) or express courier service,
as soon as practicable but not less than 10 days before the anticipated filing
date. Such notice shall offer Holders the opportunity to register such amount
of Warrant Shares as Holders may request (a "Piggyback Registration"). Subject
to the provisions of subsection (ii) below, the Company shall include in each
such Piggyback Registration all Warrant Shares with respect to which the Holder
has duly given Company written notice by personal delivery, facsimile
transmission (receipt verified) or express courier service for inclusion therein
within 5 business days after notice has been duly given to the Holder. Holders
shall be permitted to withdraw all or any part of the Warrant Shares from a
Piggyback Registration at any time prior to the effective date of such Piggyback
Registration.
(ii) If the registration of which the Company gives notice is for a
registered public offering involving an underwriting, the Company shall cause
the managing underwriter or underwriters of a proposed underwritten offering to
permit Holders of Warrant Shares requested to be included in the Registration
for such offering to include all such Warrant Shares in such offering on the
same terms and conditions as any similar securities, if any, of the Company
included therein. Notwithstanding the foregoing, if the managing underwriter or
underwriters of such offering deliver(s) a written opinion to the Holders of
Warrant Shares that the total amount of securities which such Holders, the
Company, and any other persons or entities having registration rights intend to
include in such offering is such as to materially and adversely affect the
success of such offering, then the amount of securities to be offered (i) for
the account of Holders of Warrant Shares on the one hand (allocated PRO RATA
among such Holders on the basis of the number of shares of Warrant Shares to be
included therein by each such Holder), and (ii) for the account of all other
such persons and entities (other than the Company) on the other hand (allocated
PRO RATA among such holders on the basis of the number of shares of securities
to be included therein by each person or entity), shall be reduced or limited
PRO RATA in proportion to their respective number of shares of securities to be
registered to the extent necessary to reduce the total amount of securities to
be included in such offering to the amount recommended by such managing
underwriter or underwriters.
(iii) Whenever Warrant Shares are included in a Piggyback Registration,
the Company and Holder will comply with the procedures set forth in paragraphs
(B) through (H) of subsection (a)(iv) of this Section 10.
(iv) Expenses incurred by the Company in connection with the Company's
performance of or compliance with this subsection 10(b), with respect to:
(A) all registration and filing fees (including for filings with the Commission
or the National Association of Securities
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
Dealers, Inc.), (B) fees and expenses of compliance with securities or blue sky
laws (including reasonable fees and disbursements of counsel in connection with
blue sky qualifications of the Warrant Shares), (C) printing expenses, (D) fees
and expenses incurred in connection with the listing of the Warrant Shares, and
(E) fees and expenses of counsel and independent certified public accountants
for the Company shall be paid by the Company regardless of whether a
registration statement becomes effective. Holder shall pay any other expenses,
including but not limited to, underwriting fees, discounts or commissions
attributable to the sale of Warrant Shares and any out-of-pocket expenses it
incurs.
(c) The Company hereby agrees to indemnify and hold harmless, to the
extent permitted by law, Holder, directors and employees, if any, and each
person, if any, who controls Holder within the meaning of the Securities Act,
against all losses, claims, damages, liabilities and expenses (under the
Securities Act, applicable state securities laws, common law or otherwise)
caused by any untrue statement or alleged untrue statement of a material fact
contained in any registration statement or prospectus (and as amended or
supplemented if the Company has furnished any amendments or supplements thereto)
or any preliminary prospectus, which registration statement, prospectus or
preliminary prospectus shall be prepared in connection with a Demand
Registration or a Piggyback Registration, or caused by any omission or alleged
omission to state therein a material fact required to be stated therein or
necessary to make the statements therein not misleading, except insofar as such
losses, claims, damages, liabilities or expenses are caused by any untrue
statement or alleged untrue statement contained in or by any omission or alleged
omission from information furnished in writing to the Company by Holder in
connection with a Demand Registration or a Piggyback Registration, provided the
Company will not be liable pursuant to this subsection (c) of Section 10 if such
losses, claims, damages, liabilities or expenses have been caused by
(A) Holder's failure to deliver a copy of the registration statement or
prospectus, or any amendments or supplements thereto, after the Company has
furnished Holder with a sufficient amount of copies of the same or (B) any
untrue statement or omission based upon information furnished to the Company by
Holder for use in connection with the offering of securities.
(d) In connection with any registration statement in which Holder is
participating, Holder shall furnish to the Company in writing such information
as is reasonably requested by the Company for use in any such registration
statement or prospectus and shall indemnify, to the extent permitted by law, the
Company, its directors and officers and each person, if any, who controls the
Company within the meaning of the Securities Act, against any losses, claims,
damages, liabilities and expenses resulting from any untrue statement or alleged
untrue statement of a material fact or any omission or alleged omission of a
material fact required to be stated in the registration statement or prospectus
or any amendment thereof or supplement thereto or necessary to make the
statements therein not misleading, but only to the extent such losses, claims,
damages, liabilities or expenses are caused by an untrue statement or alleged
untrue statement contained in or by an omission or alleged omission from
information so furnished in writing by Holder in connection with the Demand
Registration or a Piggyback Registration; provided that Holder shall not be
liable under this subsection (d) of Section 10 for any amounts
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
exceeding the product of (x) the offering price per share of Warrant Shares
pursuant to the registration statement in which Holder is participating,
multiplied by (y) the number of Warrant Shares being sold by Holder pursuant to
such registration statement. If the offering pursuant to any such registration
is made through underwriters, Holder agrees to enter into an underwriting
agreement in customary form with such underwriters and to indemnify such
underwriters, their officers and directors, if any, and each person who controls
such underwriters within the meaning of the Securities Act to the same extent as
hereinabove provided with respect to indemnification by Holder of the Company.
(e) Promptly after receipt by an indemnified party under subsections (c)
or (d) of Section 10 of notice of the commencement of any action or proceeding,
such indemnified party will, if a claim in respect thereof is made against the
indemnifying party under such Section, notify the indemnifying party in writing
of the commencement thereof; but the omission so to notify the indemnifying
party will not relieve it from any liability which it may have to any
indemnified party otherwise than under such Section. In case any such action or
proceeding is brought against any indemnified party, and it notifies the
indemnifying party of the commencement thereof, the indemnifying party will be
entitled to participate therein, and, to the extent that it wishes, jointly with
any other indemnifying party similarly notified, to assume the defense thereof,
with counsel reasonably satisfactory to such indemnified party, and after notice
from the indemnifying party to such indemnified party of its election so to
assume the defense thereof, the indemnifying party will not be liable to such
indemnified party under such Section for any legal or any other expenses
subsequently incurred by such indemnified party in connection with the defense
thereof (other than reasonable costs of investigation) unless incurred at the
written request of the indemnifying party. Notwithstanding the above, the
indemnified party will have the right to employ counsel of its own choice in any
such action or proceeding if the indemnified party has reasonably concluded that
there may be defenses available to it which are different from or additional to
those of the indemnifying party, or counsel to the indemnified party is of the
opinion that it would not be desirable for the same counsel to represent both
the indemnifying party and the indemnified party because such representation
might result in a conflict of interest (in either of which cases the
indemnifying party will not have the right to assume the defense of any such
action or proceeding on behalf of the indemnified party or parties and such
legal and other expenses will be borne by the indemnifying party). An
indemnifying party will not be liable to any indemnified party for any
settlement of any such action or proceeding effected without the consent of such
indemnifying party.
(f) If the indemnification provided for in subsections (c) or (d) of
Section 10 is unavailable under applicable law to an indemnified party in
respect of any losses, claims, damages or liabilities referred to therein, then
each applicable indemnifying party, in lieu of indemnifying such indemnified
party, shall contribute to the amount paid or payable by such indemnified party
as a result of such losses, claims, damages or liabilities in such proportion as
is appropriate to reflect the relative fault.
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
(g) The Company may require, as a condition precedent to its registration
obligations under this Section 10, that Holder promptly furnish in writing to
the Company such information regarding Holder, the plan of distribution of the
Warrant Shares and other information as the Company may from time to time
reasonably request or as may be legally required in connection with such
registration.
(h) The Company covenants that it will file the reports required to be
filed by it under the Securities Act and the Exchange Act and the rules and
regulations adopted by the Commission thereunder and it will take such further
action as Holder may reasonably request, all to the extent required from time to
time to enable Holder to sell Warrant Shares without registration under the
Securities Act within the limitation of the exemptions provided by (a) Rule 144
under the Securities Act, as such Rule may be amended from time to time, or
(b) any similar rule or regulation hereafter adopted by the Commission. Upon
the request of Holder, the Company will deliver to Holder a written statement as
to whether it has complied with such information and requirements.
SECTION 11. "MARKET STAND-OFF" COVENANT. Holder hereby agrees that,
during the period of duration specified by the Company and the managing
underwriter of Common Stock in an underwritten offering following the effective
date of any registration statement of the Company filed under the Securities Act
(not exceeding 180 days or such longer period as may be required by law or
regulation), it shall not, to the extent requested by the Company and such
underwriter, directly or indirectly sell, offer to sell, contract to sell
(including, without limitation, any short sale or grant any option to purchase
or otherwise transfer or dispose of) (other than to donees who agree to be
similarly bound) any Warrant Shares at any time during such period except
Warrant Shares which may be included in such registration; PROVIDED, HOWEVER,
that:
(a) such agreement shall be applicable only to any such registration
statement of the Company which covers Common Stock to be sold on its behalf to
the public in an underwritten offering;
(b) all executive officers and directors of the Company will enter into
similar agreements; and
(c) such agreement shall expire five years after the date hereof.
SECTION 12. MODIFICATION AND WAIVER. Neither this Warrant nor any term
hereof may be changed, waived, discharged or terminated other than by an
instrument in writing signed by the Company and by Holder.
SECTION 13. NOTICES. Except as otherwise provided herein, any notice,
request or other document required or permitted to be given or delivered to
Holder or the Company shall be given in writing and shall be deemed effectively
given if delivered personally or by facsimile
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
transmission (receipt verified), mailed by registered or certified mail (return
receipt requested), postage prepaid, or sent by express courier service, at its
address as shown on the books of the Company or to the Company at the address
indicated therefor in the first paragraph of this Warrant.
SECTION 14. DESCRIPTIVE HEADINGS AND GOVERNING LAW. The descriptive
headings of the several sections and paragraphs of this Warrant are inserted for
convenience only and do not constitute a part of this Warrant. This Warrant
shall be construed and enforced in accordance with, and the rights of the
parties shall be governed by, the laws of the State of California, without
regard to its conflicts of laws principles.
SECTION 15. NO INCONSISTENT AGREEMENTS. The Company will not on or after
the date of this Warrant enter into any agreement with respect to its securities
which is inconsistent with the rights granted to the Holder in this Warrant or
otherwise conflicts with the provisions hereof. The rights granted to the
Holder hereunder do not in any way conflict with and are not inconsistent with
the rights granted to any holders of the Company's securities under any prior
agreement.
SECTION 16. ATTORNEYS' FEES. In any action or proceeding brought to
enforce any provision of this Warrant, the successful party shall be entitled to
recover reasonable attorneys' fees in addition to its costs and expenses and any
other available remedy.
IN WITNESS WHEREOF, the Company has duly caused this Warrant to be signed
by its duly authorized officer and to be dated as of January 19, 1996.
SUGEN, INC.
By:
------------------------------------------
Its:
-----------------------------------------
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
PURCHASE FORM
Dated ,
---------------------- ----
The undersigned hereby irrevocably elects to exercise the within Warrant to
purchase ________ shares of Common Stock and hereby makes payment of
$______________ in payment of the exercise price thereof.
AMGEN INC.
By:
---------------------------------------
Print Name:
-------------------------------
Title:
------------------------------------
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
ASSIGNMENT FORM
Dated ,
---------------------- --------
FOR VALUE RECEIVED, Amgen Inc. hereby sells, assigns and transfers unto
__________________________________________________________ (the "Assignee"),
(please type or print in block letters)
________________________________________________________________________________
(insert address)
its right to purchase up to ________ shares of Common Stock represented by this
Warrant and does hereby irrevocably constitute and appoint _____________________
attorney, to transfer the same on the books of the Company, with full power of
substitution in the premises.
AMGEN INC.
By:
---------------------------------------
Print Name:
-------------------------------
Title:
------------------------------------
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
EXHIBIT D
PRESS RELEASE
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
EXHIBIT 10.49 CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES
EXCHANGE ACT OF 1934, AS AMENDED
THE SECURITIES REPRESENTED HEREBY HAVE NOT BEEN REGISTERED UNDER THE SECURITIES
ACT OF 1933, AS AMENDED (THE "ACT"), OR UNDER THE SECURITIES LAWS OF ANY STATE.
THESE SECURITIES ARE SUBJECT TO RESTRICTIONS ON TRANSFERABILITY AND RESALE AND
MAY NOT BE TRANSFERRED OR RESOLD EXCEPT AS PERMITTED UNDER THE ACT AND THE
APPLICABLE STATE SECURITIES LAWS, PURSUANT TO REGISTRATION OR EXEMPTION
THEREFROM. THE ISSUER OF THESE SECURITIES MAY REQUIRE AN OPINION OF COUNSEL IN
FORM AND SUBSTANCE REASONABLY SATISFACTORY TO THE ISSUER TO THE EFFECT THAT ANY
PROPOSED TRANSFER OR RESALE IS IN COMPLIANCE WITH THE ACT AND ANY APPLICABLE
STATE SECURITIES LAWS.
SUGEN, INC.
WARRANT FOR THE PURCHASE OF SHARES OF COMMON STOCK
January 19, 1996 200,000 Shares
For Value Received, SUGEN, Inc. a Delaware corporation (the "Company"),
with its principal office at 515 Galveston Drive, Redwood City, California
94063, hereby certifies that Amgen Inc., a Delaware corporation ("Holder"),
with its principal office at 1840 DeHavilland Drive, Thousand Oaks, California
91320, or its assigns (each of whom shall also be considered a "Holder") for
good and valuable consideration, receipt of which is hereby acknowledged, is
entitled, subject to the provisions of this Warrant, to purchase from the
Company, the number of fully paid and nonassessable shares of Common Stock of
the Company set forth above, subject to adjustment as hereinafter provided.
Subject to Section 1(b), this Warrant shall be exercisable, in whole or in
part, at any time before 5:00 p.m. (Pacific Standard Time), January 19, 2003,
and shall be void thereafter.
Holder may purchase such number of shares of Common Stock at a purchase
price per share (as appropriately adjusted pursuant to Section 6 hereof) of
$15.50 (the "Exercise Price"). The term "Common Stock" shall mean the
aforementioned Common Stock of the Company, together with any other equity
securities that may be issued by the Company in addition thereto or in
substitution therefor as provided herein.
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
1.
<PAGE>
The number of shares of Common Stock to be received upon the exercise of
this Warrant and the price to be paid for a share of Common Stock are subject to
adjustment from time to time as hereinafter set forth. The shares of Common
Stock deliverable upon such exercise, as adjusted from time to time, are
hereinafter sometimes referred to as "Warrant Shares."
SECTION 1. EXERCISE OF WARRANT.
a. VOLUNTARY EXERCISE. This Warrant may be exercised in whole or in part
(but for not less than 66,666 Warrant Shares in any one exercise unless the
exercise is for the balance of the Warrant Shares purchasable hereunder) on any
business day by presentation and surrender hereof to the Company at its
principal office at the address set forth in the initial paragraph hereof (or at
such other address as the Company may hereafter notify Holder in writing) with
the Purchase Form annexed hereto duly executed and accompanied by proper payment
of the Exercise Price in lawful money of the United States of America in the
form of a check, subject to collection, for the number of Warrant Shares
specified in the Purchase Form. If this Warrant should be exercised in part
only, the Company shall, upon surrender of this Warrant, execute and deliver a
new Warrant evidencing the rights of Holder thereof to purchase the balance of
the Warrant Shares purchasable hereunder. Upon receipt by the Company of this
Warrant and such Purchase Form, together with proper payment of the Exercise
Price, at such office, Holder shall be deemed to be the holder of record of the
Warrant Shares, notwithstanding that the stock transfer books of the Company
shall then be closed or that certificates representing such Warrant Shares shall
not then be actually delivered to Holder. The Company shall pay any and all
documentary stamp or similar issue or transfer taxes payable in respect of the
issue or delivery of the Warrant Shares.
b. MANDATORY EXERCISE. In the event that, at any time after [
], the average of the closing prices of the Company's Common Stock
on the Nasdaq National Market (or the primary national securities exchange on
which the Common Stock is then quoted; provided, however, that if the Common
Stock is neither traded on the Nasdaq National Market nor on a national
securities exchange, the price referred to above shall be the price reflected in
the over-the-counter market as reported by the National Quotation Bureau, Inc.
or any organization performing a similar function) for twenty (20) consecutive
trading days, as reported in THE WALL STREET JOURNAL, equals or exceeds [ ]
of the Exercise Price, the Company, not later than thirty (30) days thereafter,
may give notice to Holder to exercise the Warrant (a "Notice of Mandatory
Exercise"). In the event that Holder does not exercise the Warrant in
compliance with the procedures set forth in Section 1(a) within twenty (20)
days from the date of the Notice of Mandatory Exercise, the Warrant shall be
void thereafter.
SECTION 2. RESERVATION OF SHARES. The Company hereby agrees that at all
times there shall be reserved and available for issuance and delivery upon
exercise of this Warrant all shares of its Common Stock or other shares of
capital stock of the Company from time to time issuable upon exercise of this
Warrant. All such shares shall be duly authorized and, when issued upon such
exercise in accordance with the terms of this Warrant, shall be validly issued,
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
2.
<PAGE>
fully paid and nonassessable, free and clear of all liens, security interests,
charges and other encumbrances or restrictions on sale (other than any
restrictions on sale set forth herein or pursuant to applicable federal and
state securities laws) and free and clear of all preemptive rights.
SECTION 3. FRACTIONAL INTEREST. The Company will not issue a fractional
share of Common Stock upon exercise of a Warrant. Instead, the Company will
deliver its check for the current market value of the fractional share. The
current market value of a fraction of a share is determined as follows: multiply
the current market price of a full share by the fraction of a share and round
the result to the nearest cent.
The current market price of a share of Common Stock for purposes of this
Section is the last reported sales price of the Common Stock on the last trading
day prior to the exercise date, as reported in THE WALL STREET JOURNAL on the
Nasdaq National Market, or the primary national securities exchange on which the
Common Stock is then quoted; provided, however, that if the Common Stock is
neither traded on the Nasdaq National Market nor on a national securities
exchange, the price referred to above shall be the price reflected in the over-
the-counter market as reported by the National Quotation Bureau, Inc. or any
organization performing a similar function.
SECTION 4. ASSIGNMENT OR LOSS OF WARRANT.
a. ASSIGNMENT. Holder may assign its interest in this Warrant in whole
or in part to any person or persons. Subject to the provisions of Section 9,
upon surrender of this Warrant to the Company or at the office of its stock
transfer agent or warrant agent, with the Assignment Form annexed hereto duly
executed the Company shall, without charge, execute and deliver a new Warrant or
Warrants in the name of the assignee or assignees named in such instrument of
assignment (any such assignee will then be a "Holder" for purposes of this
Warrant) and, if Holder's entire interest is not being assigned, in the name of
Holder, and this Warrant shall promptly be canceled.
b. LOSS OF WARRANT. Upon receipt of evidence satisfactory to the Company
of the loss, theft, destruction or mutilation of this Warrant, and (in the case
of loss, theft or destruction) of indemnification satisfactory to the Company,
and upon surrender and cancellation of this Warrant, if mutilated, the Company
shall execute and deliver a new Warrant of like tenor and date.
SECTION 5. RIGHTS OF HOLDER. Holder shall not, by virtue hereof, be
entitled to any rights of a stockholder in the Company, either at law or equity,
and the rights of Holder are limited to those expressed in this Warrant. Nothing
contained in this Warrant shall be construed as conferring upon Holder hereof
the right to vote or to consent or to receive notice as a stockholder of the
Company on any matters or with respect to any rights whatsoever as a stockholder
of the Company. No dividends or interest shall be payable or accrued in respect
of
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
this Warrant or the interest represented hereby or the Warrant Shares
purchasable hereunder until, and only to the extent that, this Warrant shall
have been exercised in accordance with its terms.
SECTION 6. ADJUSTMENT OF EXERCISE PRICE AND NUMBER OF SHARES. The number
and kind of securities purchasable upon the exercise of this Warrant and the
Exercise Price shall be subject to adjustment from time to time upon the
beginning of certain events, as follows:
a. ADJUSTMENT FOR CHANGE IN CAPITAL STOCK. If at any time after the date
hereof:
i. the Company pays a dividend in Common Stock or makes a
distribution on its Common Stock in shares of its Common Stock;
ii. the Company subdivides its outstanding shares of Common Stock
into a greater number of shares;
iii. the Company combines its outstanding shares of Common Stock into
a smaller number of shares;
iv. the Company makes a distribution on its Common Stock in shares of
its capital stock other than Common Stock;
v. the Company issues by reclassification of its Common Stock any
shares of its capital stock; or
vi. the rights (the "Rights") distributed pursuant to the Rights
Agreement (the "Rights Agreement") between the Company and The
First National Bank of Boston, as Rights Agent, dated as of
August 1, 1995, become exercisable;
then the Exercise Price in effect immediately prior to such action shall be
adjusted so that Holder may receive upon exercise of this Warrant and payment of
the same aggregate consideration the number and kind of shares of capital stock
of the Company which Holder would have owned immediately following such action
if Holder had exercised this Warrant immediately prior to such action.
The adjustment shall become effective immediately after the record date in
the case of a dividend or distribution, immediately after the effective date in
the case of a subdivision, combination or reclassification, and on the
Distribution Date (as defined in the Rights Agreement) in the case of the
exercisability of the Rights. In the case of an adjustment for the
exercisability of the Rights, there shall be another adjustment effective as of
the Expiration Date (as defined in the Rights Agreement).
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
b. MINIMUM ADJUSTMENT. No adjustment in the Exercise Price of this
Section 6 shall be required unless such adjustment would require an increase or
decrease of at least twenty-five cents ($.25) in such Exercise Price; PROVIDED,
HOWEVER, that any adjustments which by reason of this subsection are not
required to be made, shall be carried forward and taken into account in any
subsequent adjustment. All calculations under this Section 6 shall be made to
the nearest cent or to the nearest share, as the case may be.
c. DEFERRAL OF ISSUANCE OR PAYMENT. In any case in which an event
covered by this Section 6 shall require that an adjustment in the Exercise Price
be made effective as of a record date, the Company may elect to defer until the
occurrence of such event (A) issuing to Holder, if this Warrant is exercised
after such record date, the shares of Common Stock and other capital stock of
the Company, if any, issuable upon such exercise over and above the shares of
Common Stock or other capital stock of the Company, if any, issuable upon such
exercise on the basis of the Exercise Price in effect prior to such adjustment,
and (B) paying to Holder by check any amount in lieu of the issuance of
fractional shares pursuant to Section 3.
d. WHEN NO ADJUSTMENT REQUIRED. No adjustment need be made for a change
in the par value or no par value of the Common Stock. To the extent this
Warrant becomes exercisable into cash, no adjustment need be made thereafter as
to the cash, and interest will not accrue on the cash.
e. NOTICE OF CERTAIN ACTIONS. In the event that:
i. the Company shall authorize the issuance to all holders of its
Common Stock of rights, warrants, options or convertible securities to subscribe
for or purchase shares of its Common Stock or of any other subscription rights,
warrants, options or convertible securities; or
ii. the Company shall authorize the distribution to all holders of
its Common Stock of evidences of its indebtedness or assets (other than
dividends paid in or distributions of the Company's capital stock for which the
Exercise Price shall have been adjusted pursuant to subsection (a) of this
Section 6 or cash dividends or cash distributions payable out of consolidated
current or retained earnings as shown on the books of the Company and paid in
the ordinary course of business); or
iii. the Company shall authorize any capital reorganization or
reclassification of the Common Stock (other than a subdivision or combination of
the outstanding Common Stock and other than a change in par value of the Common
Stock) or of any consolidation or merger to which the Company is a party and for
which approval of any stockholders of the Company is required (other than a
consolidation or merger in which the Company is the continuing corporation and
that does not result in any reclassification or change of the Common Stock
outstanding), or of the conveyance or transfer of the properties and assets of
the Company
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
as an entirety or substantially as an entirety, or a tender offer or exchange
offer for shares of Common Stock; or
iv. the Company is the subject of a voluntary or involuntary
dissolution, liquidation or winding-up procedure; or
v. the Company proposes to take any action that would require an
adjustment of the Exercise Price pursuant to this Section 6;
then the Company shall cause to be duly given to Holder, at least twenty (20)
days prior to the applicable record or effective date hereinafter specified for
actions of the character described in this subsection (e) (or as soon as
practicable for actions of the character described in subsection (a) of this
Section 6), a notice stating (w) the date as of which the holders of Common
Stock of record to be entitled to receive any such rights, warrants or
distributions are to be determined, (x) the expiration date established for any
tender offer or exchange offer for shares of Common Stock, (y) the date on which
any such consolidation, merger, conveyance, transfer, dissolution, liquidation
or winding-up is expected to become effective, and the date as of which it is
expected that holders of Common Stock of record shall be entitled to exchange
their shares of Common Stock for securities or other property, if any,
deliverable upon such reorganization, reclassification, consolidation, merger,
conveyance, transfer, dissolution, liquidation or winding-up, or (z) the record
date or effective date of any other action.
f. NO ADJUSTMENT AFTER EXERCISE OF WARRANT. No adjustments shall be made
under any Section herein in connection with the issuance of Warrant Shares after
exercise of this Warrant.
SECTION 7. OFFICERS' CERTIFICATE. Whenever the Exercise Price shall be
adjusted as required by the provisions of Section 6, the Company shall forthwith
file in the custody of its Secretary or an Assistant Secretary at its principal
office an officers' certificate showing the adjusted Exercise Price determined
as herein provided, setting forth in reasonable detail the facts requiring such
adjustment and the manner of computing such adjustment. Each such officers'
certificate shall be signed by the chairperson, president or chief financial
officer of the Company and by the secretary or any assistant secretary of the
Company. Each such officers' certificate shall be made available at all
reasonable times for inspection by Holder.
SECTION 8. RECLASSIFICATION, REORGANIZATION, CONSOLIDATION OR MERGER. In
the event of any reclassification, capital reorganization or other change of
outstanding shares of Common Stock of the Company (other than a subdivision or
combination of the outstanding Common Stock and other than a change in the par
value of the Common Stock) or in the event of any consolidation or merger of the
Company with or into another corporation (other than a merger in which the
Company is the continuing corporation and that does not result in any
reclassification, capital reorganization or other change of outstanding shares
of Common Stock of the class issuable upon exercise of this Warrant) or in the
event of any sale, lease, transfer
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
or conveyance to another corporation of the property and assets of the Company
as an entirety or substantially as an entirety, the Company shall, as a
condition precedent to such transaction, cause effective provisions to be made
so that Holder shall have the right thereafter, by exercising this Warrant, to
purchase the kind and amount of shares of stock and other securities and
property (including cash) receivable upon such reclassification, capital
reorganization and other change, consolidation, merger, sale or conveyance by a
holder of the number of shares of Common Stock that might have been received
upon exercise of this Warrant immediately prior to such reclassification,
capital reorganization, change, consolidation, merger, sale or conveyance. Any
such provision shall include provisions for adjustments in respect of such
shares of stock and other securities and property that shall be as nearly
equivalent as may be practicable to the adjustments provided for in this
Warrant. The foregoing provisions of this Section 8 shall similarly apply to
successive reclassifications, capital reorganizations and changes of shares of
Common Stock and to successive consolidations, mergers, sales or conveyances. In
the event that in connection with any such capital reorganization, or
reclassification, consolidation, merger, sale or conveyance, additional shares
of Common Stock shall be issued in exchange, conversion, substitution or
payment, in whole or in part, for, or of, a security of the Company other than
Common Stock, any such issue shall be treated as an issue of Common Stock
covered by the provisions of subsection (a) of Section 6.
SECTION 9. TRANSFER TO COMPLY WITH THE SECURITIES ACT OF 1933. This
Warrant may not be exercised and neither this Warrant nor any of the Warrant
Shares, nor any interest in either, may be offered, sold, assigned, pledged,
hypothecated, encumbered or in any other manner transferred or disposed of, in
whole or in part, except in compliance with applicable United States federal and
state securities or Blue Sky laws and the terms and conditions hereof. Each
Warrant shall bear a legend in substantially the same form as the legend set
forth on the first page of this Warrant. Each certificate for Warrant Shares
issued upon exercise of this Warrant, unless at the time of exercise such
Warrant Shares are acquired pursuant to a registration statement that has been
declared effective under the Securities Act of 1933, as amended (the "Securities
Act"), and applicable blue sky laws, shall bear a legend substantially in the
following form:
THE SECURITIES REPRESENTED HEREBY HAVE NOT BEEN REGISTERED UNDER THE
SECURITIES ACT OF 1933, AS AMENDED (THE "ACT"), OR UNDER THE
SECURITIES LAWS OF ANY STATE. THESE SECURITIES ARE SUBJECT TO
RESTRICTIONS ON TRANSFERABILITY AND RESALE AND MAY NOT BE TRANSFERRED
OR RESOLD EXCEPT AS PERMITTED UNDER THE ACT AND THE APPLICABLE STATE
SECURITIES LAWS, PURSUANT TO REGISTRATION OR EXEMPTION THEREFROM. THE
ISSUER OF THESE SECURITIES MAY REQUIRE AN OPINION OF COUNSEL IN FORM
AND SUBSTANCE REASONABLY SATISFACTORY TO THE ISSUER TO THE EFFECT THAT
ANY PROPOSED TRANSFER OR RESALE IS IN COMPLIANCE WITH THE ACT AND ANY
APPLICABLE STATE SECURITIES LAWS.
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
Any certificate for any Warrant Shares issued at any time in exchange or
substitution for any certificate for any Warrant Shares bearing such legend
(except a new certificate for any Warrant Shares issued after the acquisition of
such Warrant Shares pursuant to a registration statement that has been declared
effective under the Securities Act) shall also bear such legend unless, in the
opinion of counsel for the Company, the Warrant Shares represented thereby need
no longer be subject to the restriction contained herein. The provisions of
this Section 9 shall be binding upon all subsequent holders of certificates for
Warrant Shares bearing the above legend and all subsequent holders of this
Warrant, if any.
SECTION 10. REGISTRATION RIGHTS.
(a) DEMAND REGISTRATION.
(i) If the Company shall receive a written request from Holder that
the Company file a registration statement under the Securities Act covering the
registration of at least 100,000 Warrant Shares (a "Demand Registration"), the
Company shall, subject to the limitations set forth below, as soon as
practicable, use its reasonable efforts to effect such Demand Registration of
the Warrant Shares requested to be registered; PROVIDED, that the Company shall
not be required to effect more than one Demand Registration hereunder. A
registration will not count as a Demand Registration until it has become
effective.
(ii) If Holder intends to sell its Warrant Shares by means of an
underwriting (whether on a "best efforts" or a "firm commitment" basis), it
shall so advise the Company as part of its request, and the Company's Board of
Directors shall select the managing underwriter for such offering; provided,
that such managing underwriter shall be reasonably satisfactory to Holder.
Without the consent of Holder, the Company shall not permit any securities,
other than those requested by Holder and those requested by other holders of the
Company's securities having registration rights as of the date of this Warrant,
to be included in the underwritten offering.
(iii) In addition, the Company shall not be obligated to effect, or to
take any action to effect, any registration:
(A) Within 90 days after the effective date of any registration
statement effected by the Company, whether for its own account or for the
account of others; or
(B) If the Company shall furnish to Holder a certificate signed
by the Company's Chairman, Chief Executive Officer or President stating that in
good faith judgment of the Company it would be seriously detrimental or
otherwise disadvantageous to the Company or its shareholders for such a
registration statement to be filed as expeditiously as possible, the Company
shall have a period of not more than 120 days within which to file such
registration statement measured from the date of the Company's receipt of such
Holder's request for
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
registration in accordance with subsection (a) of Section 10 hereof; PROVIDED,
HOWEVER, that the Company may not utilize this right more than once.
(iv) Whenever Holder requests that any Warrant Shares be registered:
(A) The Company will use reasonable efforts to prepare and file
with the Securities and Exchange Commission (the "Commission") as expeditiously
as possible a registration statement on Form S-3, if available, or on any form
for which the Company then qualifies and which counsel for the Company shall
deem appropriate and available for the sale of the Warrant Shares to be
registered thereunder in accordance with the intended method of distribution
thereof, and use its reasonable efforts to cause such filed registration
statement to become and remain continuously effective for a period of not less
than three months (extended, if necessary by the number of days the
effectiveness of the registration statement is suspended during such three-month
period) or such shorter period in which the disposition of all securities in
accordance with the intended methods of disposition set forth in such
registration statement shall be completed, and to comply with the provisions of
the Securities Act (to the extent applicable to the Company) with respect to
such dispositions.
(B) The Company will furnish to Holder and each managing
underwriter, if any, such number of copies of such registration statement, or
any amendment or supplement thereto (in each case including all exhibits
thereto) and the prospectus included in such registration statement (including
each preliminary prospectus), in each case in conformity with the requirements
of the Securities Act, as Holder or underwriter may reasonably request in order
to facilitate the sale of the Warrant Shares.
(C) The Company will use reasonable efforts to qualify the
Warrant Shares covered by such registration statement under such other
securities or Blue Sky laws of such jurisdictions in the United States as shall
be reasonably requested by Holder; PROVIDED that the Company shall not be
required in connection therewith or as a condition thereto to qualify to do
business or to file a general consent to services of process in any such states
or jurisdictions, unless the Company is already subject to service in such
jurisdiction and except as may be required by the Securities Act.
(D) The Company shall cause all such Warrant Shares registered
pursuant to or covered by such registration to be listed on each U.S. securities
exchange or quotation system on which similar securities issued by the Company
are then listed.
(E) The Company will as promptly as is practicable notify
Holder, at any time when a prospectus relating to the sale of the Warrant Shares
is required by law to be delivered in connection with sales by an underwriter or
dealer, of the occurrence of any event requiring the preparation of a supplement
or amendment to such prospectus so that, as thereafter delivered to the
purchasers of such Warrant Shares, such prospectus will not contain an untrue
statement of a material fact or omit to state any material fact required to be
stated therein or
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
necessary to make the statements therein, in the light of the circumstances
under which they were made, not misleading and promptly make available to Holder
and to the underwriters any such supplement or amendment. Holder agrees that,
upon receipt of any notice from the Company of the occurrence of any event of
the kind described in the preceding sentence, Holder will forthwith discontinue
the offer and sale of Warrant Shares pursuant to the registration statement
covering such Warrant Shares until receipt by Holder and the underwriters of the
copies of such supplemented or amended prospectus and, if so directed by the
Company, Holder will deliver to the Company all copies, other than permanent
file copies then in Holder's possession, of the most recent prospectus covering
such Warrant Shares at the time of receipt of such notice.
(F) The Company will enter into customary agreements (including
an underwriting agreement in customary form) and take such other actions as are
reasonably required in order to expedite or facilitate the sale of such Warrant
Shares.
(G) The Company will use its reasonable efforts to obtain a cold
comfort letter from the Company's independent public accountants, in customary
form and covering such matters of the type customarily covered by cold comfort
letters in such transactions.
(H) The Company will make available for inspection by Holder,
any underwriter participating in any disposition pursuant to such registration
statement, and any attorney, accountant or other agent retained by Holder or
underwriter, all financial and other records, pertinent corporate documents and
properties of the Company, and cause the Company's officers, directors and
employees to supply all information reasonably requested by Holder, underwriter,
attorney, accountant or agent in connection with such registration statement.
(v) Expenses incurred in connection with the Company's performance of
or compliance with this subsection 10(a), with respect to: (A) all registration
and filing fees (including for filings with the Commission or the National
Association of Securities Dealers, Inc.), (B) fees and expenses of compliance
with securities or blue sky laws (including reasonable fees and disbursements of
counsel in connection with blue sky qualifications of the Warrant Shares), (C)
printing expenses, (D) fees and expenses incurred in connection with the listing
of the Warrant Shares and (E) fees and expenses of counsel for the Holder (all
such expenses being herein called "Demand Registration Expenses"), shall be paid
by the Holder regardless of whether a registration statement becomes effective;
provided, however, that all such Demand Registration Expenses, except filing and
qualification expenses and fees and disbursements of counsel for Holder, shall
be borne by the Company in the event that the registration is effected on Form
S-3 (or any comparable or successor of such form) or would have been effected on
Form S-3 (or any comparable or successor of such form) except for the failure of
the Company to comply with the rules and regulations necessary to be eligible to
use such form. In any event,
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
Holder shall pay underwriting fees, discounts or commissions attributable to the
sale of Warrant Shares and any out-of-pocket expenses it incurs.
(b) PIGGYBACK REGISTRATION.
(i) If at any time the Company proposes to file a registration
statement under the Securities Act with respect to any offering of any of its
equity securities (other than a registration statement (i) on Form S-8 or any
successor form to such Form or (ii) filed in connection with an exchange offer
or an offering of its Common Stock or of securities convertible or exchangeable
into its Common Stock), whether or not for its own account, then the Company
shall give written notice of such proposed filing to Holder by personal
delivery, facsimile transmission (receipt verified) or express courier service,
as soon as practicable but not less than 10 days before the anticipated filing
date. Such notice shall offer Holders the opportunity to register such amount
of Warrant Shares as Holders may request (a "Piggyback Registration"). Subject
to the provisions of subsection (ii) below, the Company shall include in each
such Piggyback Registration all Warrant Shares with respect to which the Holder
has duly given Company written notice by personal delivery, facsimile
transmission (receipt verified) or express courier service for inclusion therein
within 5 business days after notice has been duly given to the Holder. Holders
shall be permitted to withdraw all or any part of the Warrant Shares from a
Piggyback Registration at any time prior to the effective date of such Piggyback
Registration.
(ii) If the registration of which the Company gives notice is for a
registered public offering involving an underwriting, the Company shall cause
the managing underwriter or underwriters of a proposed underwritten offering to
permit Holders of Warrant Shares requested to be included in the Registration
for such offering to include all such Warrant Shares in such offering on the
same terms and conditions as any similar securities, if any, of the Company
included therein. Notwithstanding the foregoing, if the managing underwriter or
underwriters of such offering deliver(s) a written opinion to the Holders of
Warrant Shares that the total amount of securities which such Holders, the
Company, and any other persons or entities having registration rights intend to
include in such offering is such as to materially and adversely affect the
success of such offering, then the amount of securities to be offered (i) for
the account of Holders of Warrant Shares on the one hand (allocated PRO RATA
among such Holders on the basis of the number of shares of Warrant Shares to be
included therein by each such Holder), and (ii) for the account of all other
such persons and entities (other than the Company) on the other hand (allocated
PRO RATA among such holders on the basis of the number of shares of securities
to be included therein by each person or entity), shall be reduced or limited
PRO RATA in proportion to their respective number of shares of securities to be
registered to the extent necessary to reduce the total amount of securities to
be included in such offering to the amount recommended by such managing
underwriter or underwriters.
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
(iii) Whenever Warrant Shares are included in a Piggyback Registration,
the Company and Holder will comply with the procedures set forth in paragraphs
(B) through (H) of subsection (a)(iv) of this Section 10.
(iv) Expenses incurred by the Company in connection with the Company's
performance of or compliance with this subsection 10(b), with respect to:
(A) all registration and filing fees (including for filings with the Commission
or the National Association of Securities Dealers, Inc.), (B) fees and expenses
of compliance with securities or blue sky laws (including reasonable fees and
disbursements of counsel in connection with blue sky qualifications of the
Warrant Shares), (C) printing expenses, (D) fees and expenses incurred in
connection with the listing of the Warrant Shares, and (E) fees and expenses of
counsel and independent certified public accountants for the Company shall be
paid by the Company regardless of whether a registration statement becomes
effective. Holder shall pay any other expenses, including but not limited to,
underwriting fees, discounts or commissions attributable to the sale of Warrant
Shares and any out-of-pocket expenses it incurs.
(c) The Company hereby agrees to indemnify and hold harmless, to the
extent permitted by law, Holder, directors and employees, if any, and each
person, if any, who controls Holder within the meaning of the Securities Act,
against all losses, claims, damages, liabilities and expenses (under the
Securities Act, applicable state securities laws, common law or otherwise)
caused by any untrue statement or alleged untrue statement of a material fact
contained in any registration statement or prospectus (and as amended or
supplemented if the Company has furnished any amendments or supplements thereto)
or any preliminary prospectus, which registration statement, prospectus or
preliminary prospectus shall be prepared in connection with a Demand
Registration or a Piggyback Registration, or caused by any omission or alleged
omission to state therein a material fact required to be stated therein or
necessary to make the statements therein not misleading, except insofar as such
losses, claims, damages, liabilities or expenses are caused by any untrue
statement or alleged untrue statement contained in or by any omission or alleged
omission from information furnished in writing to the Company by Holder in
connection with a Demand Registration or a Piggyback Registration, provided the
Company will not be liable pursuant to this subsection (c) of Section 10 if such
losses, claims, damages, liabilities or expenses have been caused by
(A) Holder's failure to deliver a copy of the registration statement or
prospectus, or any amendments or supplements thereto, after the Company has
furnished Holder with a sufficient amount of copies of the same or (B) any
untrue statement or omission based upon information furnished to the Company by
Holder for use in connection with the offering of securities.
(d) In connection with any registration statement in which Holder is
participating, Holder shall furnish to the Company in writing such information
as is reasonably requested by the Company for use in any such registration
statement or prospectus and shall indemnify, to the extent permitted by law, the
Company, its directors and officers and each person, if any, who controls the
Company within the meaning of the Securities Act, against any losses, claims,
damages, liabilities and expenses resulting from any untrue statement or alleged
untrue statement
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
of a material fact or any omission or alleged omission of a material fact
required to be stated in the registration statement or prospectus or any
amendment thereof or supplement thereto or necessary to make the statements
therein not misleading, but only to the extent such losses, claims, damages,
liabilities or expenses are caused by an untrue statement or alleged untrue
statement contained in or by an omission or alleged omission from information so
furnished in writing by Holder in connection with the Demand Registration or a
Piggyback Registration; provided that Holder shall not be liable under this
subsection (d) of Section 10 for any amounts exceeding the product of (x) the
offering price per share of Warrant Shares pursuant to the registration
statement in which Holder is participating, multiplied by (y) the number of
Warrant Shares being sold by Holder pursuant to such registration statement. If
the offering pursuant to any such registration is made through underwriters,
Holder agrees to enter into an underwriting agreement in customary form with
such underwriters and to indemnify such underwriters, their officers and
directors, if any, and each person who controls such underwriters within the
meaning of the Securities Act to the same extent as hereinabove provided with
respect to indemnification by Holder of the Company.
(e) Promptly after receipt by an indemnified party under subsections (c)
or (d) of Section 10 of notice of the commencement of any action or proceeding,
such indemnified party will, if a claim in respect thereof is made against the
indemnifying party under such Section, notify the indemnifying party in writing
of the commencement thereof; but the omission so to notify the indemnifying
party will not relieve it from any liability which it may have to any
indemnified party otherwise than under such Section. In case any such action or
proceeding is brought against any indemnified party, and it notifies the
indemnifying party of the commencement thereof, the indemnifying party will be
entitled to participate therein, and, to the extent that it wishes, jointly with
any other indemnifying party similarly notified, to assume the defense thereof,
with counsel reasonably satisfactory to such indemnified party, and after notice
from the indemnifying party to such indemnified party of its election so to
assume the defense thereof, the indemnifying party will not be liable to such
indemnified party under such Section for any legal or any other expenses
subsequently incurred by such indemnified party in connection with the defense
thereof (other than reasonable costs of investigation) unless incurred at the
written request of the indemnifying party. Notwithstanding the above, the
indemnified party will have the right to employ counsel of its own choice in any
such action or proceeding if the indemnified party has reasonably concluded that
there may be defenses available to it which are different from or additional to
those of the indemnifying party, or counsel to the indemnified party is of the
opinion that it would not be desirable for the same counsel to represent both
the indemnifying party and the indemnified party because such representation
might result in a conflict of interest (in either of which cases the
indemnifying party will not have the right to assume the defense of any such
action or proceeding on behalf of the indemnified party or parties and such
legal and other expenses will be borne by the indemnifying party). An
indemnifying party will not be liable to any indemnified party for any
settlement of any such action or proceeding effected without the consent of such
indemnifying party.
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
(f) If the indemnification provided for in subsections (c) or (d) of
Section 10 is unavailable under applicable law to an indemnified party in
respect of any losses, claims, damages or liabilities referred to therein, then
each applicable indemnifying party, in lieu of indemnifying such indemnified
party, shall contribute to the amount paid or payable by such indemnified party
as a result of such losses, claims, damages or liabilities in such proportion as
is appropriate to reflect the relative fault.
(g) The Company may require, as a condition precedent to its registration
obligations under this Section 10, that Holder promptly furnish in writing to
the Company such information regarding Holder, the plan of distribution of the
Warrant Shares and other information as the Company may from time to time
reasonably request or as may be legally required in connection with such
registration.
(h) The Company covenants that it will file the reports required to be
filed by it under the Securities Act and the Exchange Act and the rules and
regulations adopted by the Commission thereunder and it will take such further
action as Holder may reasonably request, all to the extent required from time to
time to enable Holder to sell Warrant Shares without registration under the
Securities Act within the limitation of the exemptions provided by (a) Rule 144
under the Securities Act, as such Rule may be amended from time to time, or
(b) any similar rule or regulation hereafter adopted by the Commission. Upon
the request of Holder, the Company will deliver to Holder a written statement as
to whether it has complied with such information and requirements.
SECTION 11. "MARKET STAND-OFF" COVENANT. Holder hereby agrees that,
during the period of duration specified by the Company and the managing
underwriter of Common Stock in an underwritten offering following the effective
date of any registration statement of the Company filed under the Securities Act
(not exceeding 180 days or such longer period as may be required by law or
regulation), it shall not, to the extent requested by the Company and such
underwriter, directly or indirectly sell, offer to sell, contract to sell
(including, without limitation, any short sale or grant any option to purchase
or otherwise transfer or dispose of) (other than to donees who agree to be
similarly bound) any Warrant Shares at any time during such period except
Warrant Shares which may be included in such registration; PROVIDED, HOWEVER,
that:
(a) such agreement shall be applicable only to any such registration
statement of the Company which covers Common Stock to be sold on its behalf to
the public in an underwritten offering;
(b) all executive officers and directors of the Company will enter into
similar agreements; and
(c) such agreement shall expire five years after the date hereof.
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
SECTION 12. MODIFICATION AND WAIVER. Neither this Warrant nor any term
hereof may be changed, waived, discharged or terminated other than by an
instrument in writing signed by the Company and by Holder.
SECTION 13. NOTICES. Except as otherwise provided herein, any notice,
request or other document required or permitted to be given or delivered to
Holder or the Company shall be given in writing and shall be deemed effectively
given if delivered personally or by facsimile transmission (receipt verified),
mailed by registered or certified mail (return receipt requested), postage
prepaid, or sent by express courier service, at its address as shown on the
books of the Company or to the Company at the address indicated therefor in the
first paragraph of this Warrant.
SECTION 14. DESCRIPTIVE HEADINGS AND GOVERNING LAW. The descriptive
headings of the several sections and paragraphs of this Warrant are inserted for
convenience only and do not constitute a part of this Warrant. This Warrant
shall be construed and enforced in accordance with, and the rights of the
parties shall be governed by, the laws of the State of California, without
regard to its conflicts of laws principles.
SECTION 15. NO INCONSISTENT AGREEMENTS. The Company will not on or after
the date of this Warrant enter into any agreement with respect to its securities
which is inconsistent with the rights granted to the Holder in this Warrant or
otherwise conflicts with the provisions hereof. The rights granted to the
Holder hereunder do not in any way conflict with and are not inconsistent with
the rights granted to any holders of the Company's securities under any prior
agreement.
SECTION 16. ATTORNEYS' FEES. In any action or proceeding brought to
enforce any provision of this Warrant, the successful party shall be entitled to
recover reasonable attorneys' fees in addition to its costs and expenses and any
other available remedy.
IN WITNESS WHEREOF, the Company has duly caused this Warrant to be signed
by its duly authorized officer and to be dated as of January 19, 1996.
SUGEN, INC.
By: /S/ James L. Tyree
-------------------------------------------
Its: President
------------------------------------------
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
PURCHASE FORM
Dated ,
---------------------- ----
The undersigned hereby irrevocably elects to exercise the within Warrant to
purchase ________ shares of Common Stock and hereby makes payment of $__________
in payment of the exercise price thereof.
AMGEN INC.
By:
----------------------------------------
Print Name:
--------------------------------
Title:
-------------------------------------
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
ASSIGNMENT FORM
Dated ,
---------------------- --------
FOR VALUE RECEIVED, Amgen Inc. hereby sells, assigns and transfers unto
__________________________________________________________ (the "Assignee"),
(please type or print in block letters)
________________________________________________________________________________
(insert address)
its right to purchase up to ________ shares of Common Stock represented by this
Warrant and does hereby irrevocably constitute and appoint _____________________
attorney, to transfer the same on the books of the Company, with full power of
substitution in the premises.
AMGEN INC.
By:
----------------------------------------
Print Name:
--------------------------------
Title:
-------------------------------------
[ ] = CONFIDENTIAL TREATMENT
REQUESTED
<PAGE>
EXHIBIT 10.50 CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES
EXCHANGE ACT OF 1934, AS AMENDED
LICENSE AGREEMENT
THIS AGREEMENT is entered into as of the 19th day of January, 1996 by and
between SUGEN, INC., a Delaware corporation ("SUGEN"), and ZENECA LIMITED, an
English corporation ("ZENECA"), with its registered office at 15 Stanhope Gate,
London, W1Y 6LN.
RECITALS
WHEREAS, ZENECA and SUGEN have entered into a Collaboration Agreement dated
as of March 22, 1995 (the "Collaboration Agreement"); and
WHEREAS, SUGEN has notified ZENECA of its interest in the Licensed Compound
(as hereinafter defined; and
WHEREAS, pursuant to that notice, ZENECA and SUGEN have agreed upon the
terms of the License for the Licensed Compound and these are set out in this
Agreement.
NOW THEREFORE, in consideration of the foregoing and the covenants and
promises contained herein, the parties agree as follows:
ARTICLE 1. DEFINITIONS.
As used herein, the following terms shall have the following meanings:
"AFFILIATE" shall mean any company or entity controlled by, controlling, or
under common control with a party hereto and shall include without limitation
any company more than fifty percent (50%) of whose voting stock or participating
profit interest is owned or controlled, directly or indirectly, by a party, and
any company which owns or controls, directly or indirectly, more than fifty
percent (50%) of the voting stock of a party.
"COLLABORATION AGREEMENT" shall have the meaning assigned in the first
recital above.
"COMBINATION PRODUCT" shall mean any pharmaceutical formulation which
contains (i) at least one Licensed Product and (ii) at least one other
ingredient which is Therapeutically Active. For purposes of this definition,
"Therapeutically Active" shall mean that the ingredient is biologically active
but shall not include diluents, vehicles, or specific adjuvants or any other
ingredient (other than a Licensed Product) which does not have any, or which has
only incidental, therapeutic properties when present alone.
1.
<PAGE>
"CONFIDENTIAL INFORMATION" shall mean each party's confidential
information, inventions, know-how or data disclosed pursuant to this Agreement
and shall include, without limitation, manufacturing, marketing, financial,
personnel and other business information and plans, whether in oral, written,
graphic or electronic form.
"EFFECTIVE DATE" shall mean the date first written above.
"FIELD" shall mean all topical dermatological applications.
"LICENSED COMPOUND" shall mean the compound listed in Schedule A hereto.
"LICENSED PATENTS" shall mean all ZENECA patents and any patents issuing
from any ZENECA patent applications set out in Schedule B hereto, together with
any divisions, continuations, continuations in part, extensions, reissues,
renewals, registrations, supplementary protection certificates, and provisional
applications arising from or based upon such patents.
"LICENSED PRODUCT" shall mean a product that contains a Licensed Compound
as an active ingredient, including all formulations, line extensions and modes
of administration thereof, for use within the Field, wherein the manufacture,
use, sale, offer for sale or import of such product would, but for the license
granted to SUGEN under this Agreement, infringe a Valid Claim of an issued
patent included in the Licensed Patents in countries in which such manufacture,
use, sale, offer for sale or import occurs.
"MAJOR COUNTRY" shall mean any one of [
]
"NET SALES" shall mean all revenues from the sale of Licensed Products
received by SUGEN, its Affiliates or sublicensees on all sales to third parties
recognized in accordance with generally accepted accounting principles from the
sale of Licensed Products, less transportation charges, commissions, discounts,
credits allowed for defective or returned goods and other allowances (actually
paid or allowed, including but not limited to, prompt payment and volume
discounts, charge backs from wholesalers and other allowances granted to the end
commercial customer of the Licensed Product, whether in cash or trade),
insurance and sales and other taxes based on sales prices when included in gross
sales, but not including taxes assessed on income derived from such sales. In
determining Net Sales of Combination Products, Net Sales shall first be
calculated in accordance with the foregoing definition of Net Sales, and then
multiplied by [
] If there are no sales of such
Licensed Products, Net Sales of Combination Products shall first be determined
in accordance with the foregoing definition of Net Sales, and then multiplied by
[
]
[]=CONFIDENTIAL TREATMENT REQUESTED
2.
<PAGE>
The cost in each case shall be determined in accordance with generally accepted
accounting principles.
"REGULATORY APPROVAL" shall mean any approval, licenses, registrations, or
authorizations, other than pricing approvals, of any federal, state or local
regulatory agency, department, bureau or other government entity, in a Major
Country, necessary for the manufacture, use, storage, import, transport or sale
of Licensed Product in that country.
"RESPONSIBLE EXECUTIVE" shall mean the Chief Executive Officer or duly
appointed representative thereof.
"VALID CLAIM" shall mean a claim of an issued patent, which claim has not
lapsed, been cancelled, become abandoned, declared invalid by an unreversable
and unappealable decision or judgment of a court of competent jurisdiction, and
which claim has not been admitted to be invalid or unenforceable through reissue
or disclaimer.
ARTICLE 2. LICENSE GRANT; DEVELOPMENT AND COMMERCIALIZATION.
2.1 GRANT BY ZENECA TO SUGEN. Subject to the terms of this Agreement,
ZENECA hereby grants to SUGEN an exclusive, world-wide license within the Field
to make, have made, use, sell, offer to sell and import Licensed Products under
the Licensed Patents; PROVIDED, HOWEVER, that ZENECA shall retain the right to
use the Licensed Compound contained in such Licensed Products solely for
internal research purposes.
2.2 SUBLICENSING. SUGEN shall have the right to grant sublicenses of the
License rights provided in Section 2.1 to its Affiliates, and also to third
parties that are approved by ZENECA, such approval not to be unreasonably
withheld. The fact that a proposed sublicensee is a competitor of ZENECA shall
not alone constitute a reasonable basis for withholding approval under this
Section 2.2. Each such sublicense shall be consistent with the terms hereof and
shall be terminable at ZENECA's option upon the termination of this Agreement.
SUGEN shall furnish ZENECA with a copy of each sublicense with a third party.
2.3 CLINICAL DEVELOPMENT OF LICENSED PRODUCT. SUGEN shall have overall
control and responsibility for the clinical development, at its expense, of
Licensed Products. Such responsibility shall include, without limitation,
responsibility for preclinical and clinical development (including GLP TOX),
regulatory strategy, process development and manufacturing. All costs and
expenses of the development of Licensed Products shall be borne by SUGEN.
2.4 DILIGENCE. SUGEN or its sublicensee shall use all commercially
reasonable efforts to diligently develop, manufacture, market and sell any
Licensed Product. For example, a product shall be deemed abandoned if SUGEN or
any SUGEN sublicensee has not filed an [ ] or equivalent in a Major Country on
such product within [ ] after the Effective Date.
Thereafter, a product shall be deemed abandoned if clinical activity supporting
[]=CONFIDENTIAL TREATMENT REQUESTED
3.
<PAGE>
regulatory approval of such product in the country in which such [ ] or
equivalent was filed has ceased for a period of more than [ ] In the
event that development of a Licensed Product is abandoned, SUGEN shall
relinquish all rights granted to it under this License Agreement which pertain
solely to such abandoned Licensed Product.
2.5 OBLIGATION TO INFORM. SUGEN agrees to keep ZENECA fully informed on a
reasonable basis of the development and commercialization of all Licensed
Products, including but not limited to providing to ZENECA periodic written
updates on the progress of each filing with the FDA or its equivalent in each
Major Country.
ARTICLE 3. COMMERCIAL TERMS.
3.1 MILESTONE PAYMENTS. In consideration for the grant of the license to
SUGEN in Section 2.1, SUGEN shall pay ZENECA non-refundable payments in the
amounts set forth below within thirty (30) days of the occurrence in the first
Major Country of the events described as follows:
EVENTS AMOUNTS
First IND filing or equivalent [ ]
for a Licensed Product
First NDA filing or equivalent [ ]
for a Licensed Product
First marketing approval [ ]*
of a Licensed Product
*[
[]=CONFIDENTIAL TREATMENT REQUESTED
4.
<PAGE>
]
3.2 ROYALTIES. In further consideration for the grant of license to SUGEN
in Section 2.1, SUGEN shall pay to ZENECA within sixty (60) days after the end
of each calendar quarter royalties on Net Sales of Licensed Products by SUGEN or
its Affiliates at a rate equal to (i) [ ] on annual world-wide
Net Sales up to [ ] in the aggregate for all Licensed Products
and (ii) [ ] on marginal annual world-wide Net Sales in excess
of [ ] in the aggregate for all Licensed Products.
Additionally, SUGEN shall pay to ZENECA [ ] of all royalty
payments SUGEN receives from sublicensees other than SUGEN Affiliates for sales
of Licensed Products, provided that the amount paid to ZENECA shall not be less
than [ ] or greater than [
] of Net Sales by sublicensees.
Furthermore, SUGEN shall pay to ZENECA [ ] of (i) [
] and (ii) [
] Such [ ] shall be
determined to be equal to the [
] A portion of the payments made under Section 3.1
(the "Creditable Amount") shall be credited against royalties payable for
Licensed Products beginning with the [ ] calendar quarter after
each Licensed Product's launch; PROVIDED, HOWEVER, that the amount so credited
in any calendar quarter shall not exceed [ ] of the
royalties otherwise payable across all Licensed Products for such quarter. The
Creditable Amount shall be equal to either (i) [ ] if [
] or (ii) [
] if [
]
ARTICLE 4. PAYMENTS, RECORDS, AUDIT.
4.1 PAYMENTS; REPORTS. All amounts payable to ZENECA under this Agreement
shall be paid in U.S. dollars. Where Zeneca does not receive payment of any sum
due to it on the due date, simple interest shall thereafter accrue on the sum
due to Zeneca until the date of payment at the per annum rate of [
] over the then current prime rate of Citibank in New York City, which rate
shall vary concurrently with any change in the prime rate. Each payment of
royalties shall be accompanied by a statement of the amount of Net Sales during
such period, and all other information necessary to determine the appropriate
amount of such payments.
[]=CONFIDENTIAL TREATMENT REQUESTED
5.
<PAGE>
4.2 EXCHANGE RATE; MANNER AND PLACE OF PAYMENT. The rate of exchange to
be used in computing the amount of currency equivalent in United States dollars
due ZENECA shall be made at the period-end rate of exchange quoted on the last
business day of the royalty period by Citibank in New York City. Whenever laws
or regulations require withholding of income tax and sales related taxes imposed
upon royalties accruing under this Agreement, such taxes shall be deducted from
the payment due and shall be paid to the proper taxing authority by SUGEN.
Official receipts evidencing payment shall be secured and sent to ZENECA. If in
the opinion of either party the provisions of this Section become extremely
burdensome, the parties agree to meet and discuss such other options as may be
available to them.
4.3 RECORDS AND AUDIT. During the term of this Agreement and for a period
of three (3) years thereafter, SUGEN shall keep complete and accurate records
pertaining to the sale or other disposition of the Licensed Products
commercialized by it, in sufficient detail to permit ZENECA to confirm the
accuracy of all payments due hereunder and compliance with the covenant set
forth in Section 2.4. ZENECA shall have the right to cause an independent,
certified public accountant to audit such records to confirm SUGEN's Net Sales
and royalty payments; PROVIDED, HOWEVER, that such auditor shall not disclose
SUGEN's confidential information to ZENECA, except to the extent such disclosure
is necessary to verify the portion of the amount of royalties due under this
Agreement. Such audits may be exercised once a year, within three (3) years
after the royalty period to which such records relate, upon notice to SUGEN and
during normal business hours. ZENECA shall bear the full cost of such audit
unless such audit discloses a variance of more than five percent (5%) from the
amount of royalties previously paid for such year. In such case, SUGEN shall
bear the full cost of such audit. The terms of this Section shall survive any
termination or expiration of this Agreement for a period of three (3) years.
4.4 WITHHOLDING OF TAXES. Any withholding of taxes levied by tax
authorities on the payments hereunder shall be borne by ZENECA and deducted by
SUGEN from the sums otherwise payable by it hereunder for payment to the proper
tax authorities on behalf of ZENECA. SUGEN agrees to cooperate with ZENECA in
the event ZENECA claims exemption from such withholding or seeks deductions
under any double taxation or other similar treaty or agreement from time to time
in force, such cooperation to consist of providing receipts of payment of such
withheld tax or other documents reasonably available to ZENECA.
4.5 BLOCKED CURRENCY. In each country where the local currency is blocked
and cannot be removed from the country, at the election of SUGEN, royalties
accrued in that country may be paid to ZENECA in the country in local currency
by deposit in a local bank designated by ZENECA.
4.6 NON-MONETARY CONSIDERATION. In the event SUGEN receives any non-
monetary consideration in connection with the sale of Licensed Products.
SUGEN's royalty shall be based on the monetary value of such other
consideration. In such case, SUGEN shall disclose the terms of such arrangement
to ZENECA and the parties shall endeavor in good faith to agree on such monetary
value.
[]=CONFIDENTIAL TREATMENT REQUESTED
6.
<PAGE>
ARTICLE 5. OWNERSHIP; PATENTS.
5.1 OWNERSHIP. SUGEN acknowledges and agrees that ZENECA is and shall
remain the sole owner of the Licensed Patents and that SUGEN has no rights
therein other than the license rights specifically granted herein.
5.2 INFRINGEMENT OF LICENSED PATENTS BY THIRD PARTIES.
(a) NOTICE. Each party shall promptly notify the other in writing of
any alleged or threatened infringement of the Licensed Patents which may
adversely impact the rights of the parties hereunder, of which it becomes aware.
(b) ENFORCEMENT ACTION. In the event that the parties become aware
of any alleged or threatened infringement of the Licensed Patents, [ ]
shall have the right, but not the obligation, to take appropriate action against
any person or entity directly or contributorily infringing such Licensed
Patents. In the event [ ] fails to institute an infringement suit or take
other reasonable action in response to the infringement within [ ]
days, [ ] shall have the right, upon [ ] days' notice to [ ]
to institute such suit or take other appropriate action in its own name.
Regardless of which party brings the action, the other party hereby agrees to
cooperate reasonably in any such effort, including if required to bring a legal
action, the furnishing of a power of attorney and shall have the right to
participate in such action at its own expense with its own counsel and any
recovery obtained by settlement otherwise shall be disbursed as follows: Each
party shall first recover any reasonable expenses incurred in such action
(including counsel fees), and thereafter, the parties shall share any remaining
recovery such that SUGEN receives [ ] and ZENECA
receives [ ] of such remaining amounts.
(c) ROYALTY REDUCTION. If, due to the unenforceability or invalidity
of a Licensed Patents in a country, sales by a third party (not licensed by
SUGEN or its sublicensees) of a product directly competing with a Licensed
Product exceed [ ] of Net Sales of such Licensed Product in such
country for any calendar year (determined by reference to IMS data or its
equivalent), then the royalty rate specified in Section 3.2 shall be reduced
with respect to Net Sales of such Licensed Product in such country for such
calendar year by the same percentage as the percentage achieved for such sales
of such directly competing product.
5.3 INFRINGEMENT OF THIRD PARTY PATENT RIGHTS.
(a) JOINT STRATEGY. In the event that the use or sale of the
Licensed Product becomes the subject of a claim of infringement of a patent or
other proprietary right anywhere in the world, and without regard to which party
is charged with said infringement, and the venue of such claim, the parties
shall promptly confer to discuss the claim.
(b) DEFENSE. Unless the parties otherwise agree, SUGEN shall assume
the primary responsibility for the conduct of the defense of any such claim. In
any event, ZENECA
[]=CONFIDENTIAL TREATMENT REQUESTED
7.
<PAGE>
shall have the right, but not the obligation, to participate in any such suit
at its sole option and at its own expense. Each party shall reasonably
cooperate with the party conducting the defense of the claim including, if
required to conduct such defense, furnishing a power of attorney. Neither
party shall enter into any settlement that affects the other party's rights
or interests without such other party's written consent, which consent shall
not be unreasonably withheld. If SUGEN makes payment to a third party (the
"Third Party Payment") pursuant to an agreement between SUGEN and ZENECA that
payment must be made to the third party for the sale or use of a Licensed
Product in a country to avoid infringement of such third Party's patent, then
a portion of the Third Party Payment (the "Credit Amount") may be applied to
offset up to [ ] of the royalty otherwise payable by SUGEN
to ZENECA for the sale of such Licensed Product in such country for the
calendar year in which the Third Party Payment is made and each calendar
thereafter until [ ]
5.4 PATENT MARKING. SUGEN shall mark, if necessary, all products
manufactured, used or sold under the terms of this Agreement, or their
containers, in accordance with the applicable patent marking laws, as required.
ARTICLE 6. CONFIDENTIALITY.
6.1 CONFIDENTIALITY. Except to the extent expressly authorized by this
Agreement or otherwise agreed in writing by the parties, each party agrees that,
for the term of this Agreement and for five (5) years thereafter, it shall keep
confidential and shall not publish or otherwise disclose and shall not use for
any purpose other than as provided for in this Agreement any Confidential
Information furnished to it by the other party pursuant to this Agreement unless
the receiving party can demonstrate by competent proof that such Confidential
Information:
(a) was already known to the receiving party, other than under an
obligation of confidentiality, at the time of disclosure by the other party;
(b) was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the receiving party;
(c) became generally available to the public or otherwise part of the
public domain after it disclosure and other than through any act or omission of
the receiving party in breach of such Agreements;
(d) was disclosed to the receiving party, other than under an
obligation of confidentiality to a third party, by a third party who had no
obligation to the disclosing party not to disclose such information to others;
or
(e) was independently discovered or developed by the receiving party
without the use of Confidential Information belonging to the disclosing party.
[]=CONFIDENTIAL TREATMENT REQUESTED
8.
<PAGE>
6.2 AUTHORIZED DISCLOSURE. Each party may disclose Confidential
Information belonging to the other party to the extent such disclosure is
reasonably necessary in the following:
(a) filing or prosecuting patents relating to Licensed Products;
(b) regulatory filings;
(c) prosecuting or defending litigation;
(d) complying with applicable governmental regulations;
(e) conducting pre-clinical or clinical trials of Licensed Products;
and
(f) disclosure to Affiliates who agree to be bound by similar terms
of confidentiality.
Notwithstanding the foregoing, in the event a party is required to make a
disclosure of the other party's Confidential Information pursuant to this
Section 6.2 it will, except where impracticable, give reasonable advance notice
to the other party of such disclosure and use best efforts to secure
confidential treatment of such information. In any event, the parties agree to
take all reasonable action to avoid disclosure of confidential information
hereunder.
6.3 EMPLOYEES; AGENTS. SUGEN and ZENECA shall ensure that each employee,
consultant or other agent of SUGEN or ZENECA or any of its Affiliates and
sublicensees who has access to Confidential Information is bound to obligations
of confidentiality and non-use at least equivalent in scope to those set forth
in Sections 6.1 and 6.2.
6.4 TERMS OF THIS AGREEMENT. The parties agree that the material terms of
this Agreement shall be considered Confidential Information. The parties will
consult with one another and agree on the provisions of this Agreement to be
redacted in any filings made by the parties with the Securities and Exchange
Commission or as otherwise required by law.
ARTICLE 7. REPRESENTATIONS AND WARRANTIES.
7.1 REPRESENTATIONS AND WARRANTIES OF SUGEN.
(a) CORPORATE POWER. SUGEN is duly organized and validly existing
under the laws of Delaware and has full corporate power and authority to enter
into this Agreement and to carry out the provisions hereof.
(b) DUE AUTHORIZATION. SUGEN is duly authorized to execute and
deliver this Agreement and to perform its obligations hereunder. The person
executing this Agreement on SUGEN's behalf has been duly authorized to do so by
all requisite corporate action.
[]=CONFIDENTIAL TREATMENT REQUESTED
9.
<PAGE>
(c) BINDING AGREEMENT. This Agreement is a legal and valid
obligation binding upon SUGEN and enforceable in accordance with its terms. The
execution, delivery and performance of this Agreement by SUGEN does not conflict
with any agreement, instrument or understanding, oral or written, to which it is
a party or by which it may be bound, nor violate any material law or regulation
of any court, governmental body or administrative or other agency having
jurisdiction over it.
(d) GRANT OF RIGHTS. SUGEN has not, and will not during the term of
this Agreement, grant any right to any third party which would conflict with the
rights granted to ZENECA hereunder.
(e) VALIDITY. SUGEN is aware of no action, suit or inquiry or
investigation instituted by any governmental agency which questions or threatens
the validity of this Agreement.
7.2 REPRESENTATIONS AND WARRANTIES OF ZENECA.
(a) CORPORATE POWER. ZENECA is duly organized and validly existing
under the laws of England and has full corporate power and authority to enter
into this Agreement and to carry out the provisions hereof.
(b) DUE AUTHORIZATION. ZENECA is duly authorized to execute and
deliver this Agreement and to perform its obligations hereunder. The person
executing this Agreement on ZENECA's behalf has been duly authorized to do so by
all requisite corporate action.
(c) BINDING AGREEMENT. This Agreement is a legal and valid
obligation binding upon ZENECA and enforceable in accordance with its terms.
The execution, delivery and performance of this Agreement by ZENECA does not
conflict with any agreement, instrument or understanding, oral or written, to
which it is a party or by which it may be bound, nor violate any material law or
regulation of any court, governmental body or administrative or other agency
having jurisdiction over it.
(d) GRANT OF RIGHTS. ZENECA has not, and will not during the term of
this Agreement, grant any right to any third party which would conflict with the
rights granted to SUGEN hereunder.
(e) VALIDITY. ZENECA is aware of no action, suit or inquiry or
investigation instituted by any governmental agency which questions or threatens
the validity of this Agreement.
7.3 ZENECA DISCLAIMER. THE LICENSED PATENTS ARE PROVIDED "AS IS" AND
ZENECA EXPRESSLY DISCLAIMS ANY AND ALL WARRANTIES OF ANY KIND, EXPRESS OR
IMPLIED. Without limiting the generality of the foregoing, ZENECA expressly
does not warrant the success of any study or test commenced by SUGEN under this
Agreement.
[]=CONFIDENTIAL TREATMENT REQUESTED
10.
<PAGE>
ARTICLE 8. INDEMNIFICATION.
8.1 INDEMNIFICATION. Each party hereby agrees to save, defend and hold
the other party and its agents and employees harmless from and against any and
all suits, claims, actions, demands, liabilities, expenses and/or loss,
including reasonable legal expense and attorneys' fees, other than claims for
infringement as provided in Section 5.3 (collectively, "Claims"), resulting
directly or indirectly from actions by the indemnifying party, its Affiliates,
agents or sublicensees in connection with the manufacture, use or sale of
Licensed Products, but only to the extent such Claims result from the negligence
of the indemnifying party or its employees and agents and do not result from the
negligence of the party seeking indemnification.
8.2 CONTROL OF DEFENSE. Any entity entitled to indemnification under this
Article shall give written notice to the indemnifying party of any Claims that
may be subject to indemnification, promptly after learning of such Claim, and
the indemnifying party shall assume the defense of such Claims with counsel
reasonably satisfactory to the indemnified party. If such defense is assumed by
the indemnifying party with counsel so selected, the indemnifying party will not
be subject to any liability for any settlement of such Claims made by the
indemnified party without its consent (but such consent will not be unreasonably
withheld or delayed), and will not be obligated to pay the fees and expenses of
any separate counsel retained by the indemnified party with respect to such
Claims.
ARTICLE 9. TERM; TERMINATION.
9.1 TERM. Except as provided under Section 9.2 below, the term of this
Agreement shall commence upon the Effective Date and shall expire on the
expiration date of the last to expire royalty obligation.
9.2 TERMINATION FOR MATERIAL BREACH. Each party shall have the right to
terminate this Agreement after appropriate written notice to the other that the
other is in material breach of this Agreement, unless the other party cures the
breach before the expiration of ninety (90) days from the date of notice.
9.3 ACCRUED RIGHTS; SURVIVING OBLIGATIONS. Termination of this Agreement
shall not affect any accrued rights of either party. The terms of Articles 6
and 8 of this Agreement shall survive termination of this Agreement.
ARTICLE 10. GOVERNING LAW; DISPUTE RESOLUTION.
10.1 GOVERNING LAW. This Agreement shall be governed by Delaware law,
excluding its choice of law rules.
10.2 LEGAL COMPLIANCE. The parties shall review in good faith and
cooperate in taking such actions to ensure compliance of this Agreement with all
applicable laws, including without limitation, EC Competition Law.
[]=CONFIDENTIAL TREATMENT REQUESTED
11.
<PAGE>
10.3 DISPUTE RESOLUTION. In the event of any dispute, the parties shall
refer such dispute to their respective Responsible Executive for attempted
resolution by good faith negotiations within thirty (30) days after such
referral is made. In the event such officers are unable to resolve such dispute
within such thirty (30) day period, either party may invoke the provisions of
Section 10.4 below.
10.4 JURISDICTION AND VENUE. Except as provided in Section 10.3 above, any
claim or controversy arising out of or related to this Agreement or any breach
hereof shall be submitted to a state or federal court of general jurisdiction in
the State of Delaware, and the parties hereby consent to the jurisdiction and
venue of such court.
ARTICLE 11. GENERAL PROVISIONS.
11.1 NOTICES. All notices required or permitted to be given under this
Agreement shall be in writing and shall be mailed by registered or certified
mailed addressed to the signatory to whom such notice is required or permitted
to be given and transmitted by facsimile to the number indicated below. All
notices shall be deemed to have been given when mailed as evidenced by the
postmark at the point of mailing or faxed.
All notices to ZENECA shall be addressed as follows:
ZENECA LIMITED
15 Stanhope Gate
London, W1Y 6LN
United Kingdom
Attention: Company Secretary
Fax: 0171 304 5196
with a copy to:
ZENECA PHARMACEUTICALS
Alderley House, Alderley Park
Macclesfield, Cheshire SK10 4TF
United Kingdom
Attention: The Secretary
Fax: 01625 585618
All notices to SUGEN shall be addressed as follows:
[]=CONFIDENTIAL TREATMENT REQUESTED
12.
<PAGE>
SUGEN, INC.
515 Galveston Drive
Redwood City, CA 94063-4720
Attn: President
Fax: (415) 369-0741
with a copy to:
Cooley Godward Castro Huddleson & Tatum
Five Palo Alto Square
4th Floor
Palo Alto, California 94306
Attn: Brian C. Cunningham, Esq.
Fax: (415) 857-0663
Any party may, by written notice to the other, designate a new address or fax
number to which notices to the party giving the notice shall thereafter be
mailed or faxed.
11.2 FORCE MAJEURE. No party shall be liable for any delay or failure of
performance to the extent such delay or failure is caused by circumstances
beyond its reasonable control and that by the exercise of due diligence it is
unable to prevent, provided that the party claiming excuse uses its best efforts
to overcome the same.
11.3 ENTIRETY OF AGREEMENT. This Agreement sets forth the entire agreement
and understanding of the parties relating to the subject matter contained herein
and merges all prior discussions and agreements between them, and no party shall
be bound by any representation other than as expressly stated in this Agreement,
or by a written amendment to this Agreement signed by authorized representatives
of each of the parties.
11.4 NON-WAIVER. The failure of a party in any one or more instances to
insist upon strict performance of any of the terms and conditions of this
Agreement shall not be construed as a waiver or relinquishment, to any extent,
of the right to assert or rely upon any such terms or conditions on any future
occasion.
11.5 DISCLAIMER OF AGENCY. This Agreement shall not constitute any party
the legal representative of agent of another, nor shall any party have the right
or authority to assume, create, or incur any third party liability or obligation
of any kind, express or implied, against or in the name of or on behalf of
another except as expressly set forth in this Agreement.
11.6 SEVERANCE. If any Article or part thereof of this Agreement is
declared invalid by any court of competent jurisdiction, or any government or
other agency having jurisdiction over either SUGEN or ZENECA deems any Article
or part thereof to be contrary to any anti-trust or competition laws, then such
declaration shall not affect the remainder of the Article or
[]=CONFIDENTIAL TREATMENT REQUESTED
13.
<PAGE>
other Articles. To the extent possible the parties shall revise such
invalidated Article or part thereof in a manner that will render such
provision valid without impairing the parties' original interest.
11.7 AFFILIATES, ASSIGNMENT. A party may discharge any obligations and
exercise any right hereunder through an Affiliate of that party. References to
a party shall include any Affiliate of that party to whom such an assignment or
delegation has been made or ratified. Except as provided in this Section,
neither party shall delegate duties of performance or assign, in whole or in
part, rights or obligations under this Agreement without the prior written
consent of the other party, and any attempted delegation or assignment without
such written consent shall be of no force or effect. Subject to the
restrictions contained in the preceding sentence, this Agreement shall be
binding upon the successors and assigns of the parties.
11.8 HEADINGS. The headings contained in this Agreement have been added
for convenience only and shall not be construed as limiting.
11.9 LIMITATION OF LIABILITY. No party shall be liable to another for
indirect, incidental, consequential or special damages, including but not
limited to lost profits, arising from or relating to any breach of this
Agreement, regardless of any notice of the possibility of such damages. Nothing
in this Section is intended to limit or restrict the indemnification rights or
obligations of any party.
11.10 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be an original and all of which shall
constitute together the same document.
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement.
SUGEN, INC. ZENECA LIMITED
/s/ James L. Tyree /s/ L. Biggins
- - ---------------------------- --------------------------------
By: James L. Tyree By: L. Biggins
Title: President Title: Assistant Secretary
ZENECA Pharmaceuticals
[]=CONFIDENTIAL TREATMENT REQUESTED
14.
<PAGE>
SCHEDULE A
LICENSED COMPOUND
[ ]
[]=CONFIDENTIAL TREATMENT REQUESTED
<PAGE>
SCHEDULE B
LICENSED PATENTS
COUNTRY PATENT APPLN. NO. PATENT NO. EXPIRY DATE
- - -------------------------------------------------------------------------------
[
]
[]=CONFIDENTIAL TREATMENT REQUESTED
<TABLE> <S> <C>
<PAGE>
<ARTICLE> 5
<LEGEND>
THIS SCHEDULE CONTAINS SUMMARY FINANCIAL INFORMATION EXTRACTED FROM THE
COMPANY'S FORM 10-Q FOR THE THREE MONTHS ENDED MARCH 31, 1996 AND IS
QUALIFIED IN ITS ENTIRETY BY REFERENCE TO SUCH FINANCIAL STATEMENTS.
</LEGEND>
<MULTIPLIER> 1,000
<S> <C>
<PERIOD-TYPE> 3-MOS
<FISCAL-YEAR-END> DEC-31-1995
<PERIOD-START> JAN-01-1996
<PERIOD-END> MAR-31-1996
<CASH> 6,193
<SECURITIES> 40,411
<RECEIVABLES> 0
<ALLOWANCES> 0
<INVENTORY> 0
<CURRENT-ASSETS> 47,787
<PP&E> 7,154
<DEPRECIATION> 2,665
<TOTAL-ASSETS> 52,922
<CURRENT-LIABILITIES> 12,335
<BONDS> 3,585
0
0
<COMMON> 79,382
<OTHER-SE> (42,380)
<TOTAL-LIABILITY-AND-EQUITY> 52,922
<SALES> 0
<TOTAL-REVENUES> 3,479
<CGS> 0
<TOTAL-COSTS> 0
<OTHER-EXPENSES> 7,995
<LOSS-PROVISION> 0
<INTEREST-EXPENSE> 180
<INCOME-PRETAX> (4,006)
<INCOME-TAX> 0
<INCOME-CONTINUING> (4,006)
<DISCONTINUED> 0
<EXTRAORDINARY> 0
<CHANGES> 0
<NET-INCOME> (4,006)
<EPS-PRIMARY> (0.38)
<EPS-DILUTED> (0.38)
</TABLE>
