EXHIBIT 10.39
TECHNOLOGY & INVESTMENT AGREEMENT
This Technology & Investment Agreement (the "Agreement") is entered into
as of December 31, 2001 (the "Effective Date"), by and among Genecraft, Inc., a
Washington corporation ("Genecraft"), Xxxxxxx X. Xxxxxxxxx, Xxxxxx X. Xxxxxxxxx
(collectively, Xxxxxxx X. Xxxxxxxxx and Xxxxxx X. Xxxxxxxxx may be referred to
herein as the "Ledbetters"), and the Pacific Northwest Research Institute
("PNRI").
RECITALS
A. Xxxxxxx X. Xxxxxxxxx has been employed and continues to be employed by
PNRI as a Principal Scientist since September 1999. Xxxxxx X. Xxxxxxxxx has been
employed and continues to be employed by PNRI as a Staff Scientist since
February 2000. In connection with such employment, each has entered into an
Agreement Relating to Intellectual Property assigning certain "inventions" and
other rights to PNRI (each, an "Invention Assignment Agreement").
B. Xxxxxxx X. Xxxxxxxxx and Xxxxxx X. Xxxxxxxxx are each founders of and
have a financial interest in Genecraft, a recently-created biotechnology
company.
C. PNRI now wishes to assign or reassign to the Ledbetters and waive its
rights with respect to certain Technology (as defined in Section 2), whether
under the Invention Assignment Agreements or otherwise, in exchange for the
issuance of certain shares of stock and the granting of certain other rights,
and the Ledbetters wish to accept such assignment and waiver, and Genecraft
wishes to issue such stock and grant such other rights, all upon the terms and
conditions set forth herein.
NOW, THEREFORE, in consideration of the foregoing, and of the mutual
agreements contained herein, the parties agree as follows:
AGREEMENT
1. ISSUANCE OF SHARES. Genecraft agrees to issue to PNRI, and PNRI agrees
to acquire from Genecraft, two hundred fifty thousand (250,000) shares of
Genecraft's common stock (the "Initial Shares"). The issuance shall occur at the
offices of Genecraft as of the Effective Date.
2. THE TECHNOLOGY.
a. WAIVER AND ASSIGNMENT. PNRI hereby waives, releases, assigns and
conveys, whether under the Invention Assignment Agreements or otherwise, to
Xxxxxxx X. Xxxxxxxxx and Xxxxxx X. Xxxxxxxxx all of its right, title, claims and
interest in and to the proprietary inventions, improvements, discoveries,
processes, designs, developments, formulae, methods, techniques, compositions of
matter, know-how, works of authorship, technology and other intellectual
property relating to antigen targeting, single chain antibody derivatives and
therapeutic molecules described in Attachment A hereto, and all modifications,
continuations, continuations-in-part, additions, extensions, upgrades and
improvements thereto (the "Technology").
b. PATENT PROSECUTION; INTELLECTUAL PROPERTY FILINGS. As among the
parties, Genecraft and the Ledbetters shall have sole authority regarding and
shall be responsible, at Genecraft's sole expense, for filing, prosecuting,
defending and enforcing any and all patent applications (and all divisions,
continuations, continuations-in-part, reissues and re-examinations thereof, and
all patents resulting therefrom) with respect to the Technology in all countries
and jurisdictions that Genecraft deems necessary or desirable. To the extent
that US government grants are involved in funding aspects of the Technology,
such governmental contributions will be appropriately included in applicable
patent filings. PNRI agrees, at Genecraft's expense, to assist the Ledbetters
and Genecraft or their designee in every proper way to secure their rights in
the Technology and any copyrights, patents, mask work rights or other
intellectual property rights relating thereto in any and all countries,
including the execution of all applications, specifications, oaths, assignments
and all other instruments which the Ledbetters and/or Genecraft shall reasonably
deem necessary or appropriate in order to apply for and obtain such rights and
in order to assign and convey to the Ledbetters and their successors, assigns
and nominees the sole and exclusive rights, title and interest in and to such
Technology, and any copyrights, patents, mask work rights or other intellectual
property rights relating thereto. If the Ledbetters or Genecraft are unable for
any reason to secure PNRI's signature, within 30 days of submitting a written
request for same, to apply for or to pursue any application for any United
States or foreign patents or copyright registrations covering the Technology,
then PNRI hereby irrevocably designates and appoints Genecraft and its duly
authorized officers and agents as PNRI's agent and attorney in fact, to act for
and in PNRI's behalf and stead to execute and file any such applications and to
do all other lawfully permitted acts to further the prosecution and issuance of
letters patent or copyright registrations thereon with the same legal force and
effect as if executed by PNRI.
3. OPTION AND PREEMPTIVE RIGHT. Genecraft hereby grants to PNRI an option
and preemptive right to purchase one hundred thousand (100,000) shares of the
equity securities ("New Securities") that Genecraft issues in its first venture
capital, institutional or other equity security financing (the "Financing") in
which the aggregate gross cash proceeds received by Genecraft equal or exceed
one million five hundred thousand dollars ($1,500,000). PNRI's per share
purchase price for such New Securities shall be equal to the per share price
paid for such New Securities by the other investors in the Financing. PNRI shall
be entitled to exercise this option and preemptive right at any time during the
period commencing on the closing date of the Financing and ending on the date
one (1) year after such closing, by providing Genecraft written notice of its
intent to exercise such option and preemptive right, together with proper
payment therefor. Collectively, the Initial Shares and any New Securities
purchased by PNRI hereunder may be referred to herein as the "Genecraft Stock."
4. FUTURE INVENTIONS. In consideration of the option and preemptive right
described in Section 3, PNRI hereby waives, releases, assigns and conveys,
whether under the Invention Assignment Agreements or otherwise, to Xxxxxxx X.
Xxxxxxxxx and Xxxxxx X. Xxxxxxxxx all of its right, title, claims and interest
in and to any inventions, improvements, discoveries, processes, designs,
developments, formulae, methods, techniques, compositions of matter, know-how,
works of authorship, technology, and other intellectual property that may be
conceived, discovered, created, developed or reduced to practice solely by the
Ledbetters from the Effective Date until the one (1) year anniversary thereof,
whether together or as individuals, within the fields of antigen targeting
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technology involving the fusion of antigens with binding domains specific for
cell surface receptor on antigen presenting cells, or single chain Fv molecules
attached to human Ig constant domains (examples of which are in Attachment A)
and within the scope of their employment with PNRI.
5. REPRESENTATIONS AND WARRANTIES.
a. GENECRAFT REPRESENTATIONS AND WARRANTIES. Genecraft hereby
represents and warrants to PNRI:
(i) This Agreement constitutes a valid and binding agreement of
Genecraft enforceable in accordance with its terms.
(ii) Genecraft has the absolute and unrestricted right, power, and
authority to enter into and to perform its obligations under this Agreement, and
has taken all corporate actions (including shareholder approval, if necessary)
necessary for such authority.
(iii) The execution, delivery and performance by Genecraft of this
Agreement have been duly authorized by all necessary actions on the part of
Genecraft, its board of directors, and shareholders, and, assuming proper
execution and delivery by PNRI, constitute the legal, valid and binding
obligations of Genecraft, enforceable against Genecraft in accordance with its
terms, subject as to enforcement: (a) to bankruptcy, insolvency, reorganization,
arrangement, moratorium and other laws of general applicability relating to or
affecting creditors' rights; and (b) to general principles of equity, whether
such enforcement is considered in a proceeding in equity or at law.
(iv) Neither the execution and delivery of this Agreement nor the
consummation by Genecraft of the transactions contemplated hereby, nor
compliance by Genecraft with any of the provisions hereof will (i) constitute a
violation of or default under, any contract, instrument, commitment, agreement,
understanding, arrangement or restriction of any kind to which Genecraft is a
party, or by which Genecraft may be bound; or (ii) to Genecraft's knowledge,
violate any rule, regulation, law, statute, ordinance, judgment, order, writ,
injunction or decree of any court, administrative agency or governmental body
applicable to Genecraft.
b. PNRI REPRESENTATIONS. PNRI hereby represents and warrants to
Genecraft as follows:
(i) This Agreement constitutes a valid and binding agreement of PNRI
enforceable in accordance with its terms.
(ii) PNRI has the absolute and unrestricted right, power, and
authority to enter into and to perform its obligations under this Agreement, and
has taken all corporate actions (including shareholder approval, if necessary)
necessary for such authority.
(iii) The execution, delivery and performance by PNRI of this
Agreement have been duly authorized by all necessary actions on the part of
PNRI, its board of directors, and shareholders, and, assuming proper execution
and delivery by Genecraft, constitute the legal, valid
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and binding obligations of PNRI, enforceable against PNRI in accordance with its
terms, subject as to enforcement: (a) to bankruptcy, insolvency, reorganization,
arrangement, moratorium and other laws of general applicability relating to or
affecting creditors' rights; and (b) to general principles of equity, whether
such enforcement is considered in a proceeding in equity or at law.
(iv) Neither the execution and delivery of this Agreement nor the
consummation by PNRI of the transactions contemplated hereby, nor compliance by
PNRI with any of the provisions hereof will (i) constitute a violation of or
default under, any contract, instrument, commitment, agreement, understanding,
arrangement or restriction of any kind to which PNRI is a party, or by which
PNRI may be bound; or (ii) to PNRI's knowledge, violate any rule, regulation,
law, statute, ordinance, judgment, order, writ, injunction or decree of any
court, administrative agency or governmental body applicable to PNRI.
(v) PNRI is acquiring and will hold the Genecraft Stock for
investment for its account only and not with a view to, or for resale in
connection with, any resale, transfer or other "distribution" thereof within the
meaning of the Securities Act of 1933 (the "Securities Act").
(vi) PNRI understands that the Genecraft Stock has not been
registered under the Securities Act by reason of a specific exemption therefrom
and that it must be held indefinitely, unless they are subsequently registered
under the Securities Act or PNRI obtains an opinion of counsel, in form and
substance satisfactory to Genecraft and its counsel, that such registration is
not required. PNRI further acknowledges and understands that Genecraft is under
no obligation to register the Genecraft Stock. PNRI will not sell, transfer or
otherwise dispose of the Genecraft Stock in violation of the Securities Act, the
Securities Exchange Act of 1934, or the rules promulgated thereunder. PNRI will
not dispose of the Genecraft Stock unless and until it has complied with all
requirements of this Agreement applicable to the disposition of Genecraft Stock
and it has provided Genecraft with written assurances, in substance and form
satisfactory to Genecraft, that the proposed disposition does not require
registration of the Genecraft Stock under the Securities Act or all appropriate
action necessary for compliance with the registration requirements of the
Securities Act or with any exemption from registration available under the
Securities Act has been taken.
(vii) PNRI has been furnished with, and has had access to, such
information as it considers necessary or appropriate for deciding whether to
invest in the Genecraft Stock, and PNRI has had an opportunity to ask questions
and receive answers from Genecraft regarding the terms and conditions of the
issuance of the Genecraft Stock.
(viii) PNRI is aware that its investment in Genecraft is a
speculative investment that has limited liquidity and is subject to the risk of
complete loss. PNRI is able, without impairing its financial condition, to hold
the Genecraft Stock for an indefinite period and to suffer a complete loss of
its investment in the Genecraft Stock.
6. ADDITIONAL RESTRICTIONS.
a. SECURITIES LAW RESTRICTIONS. Genecraft at its discretion may impose
restrictions upon the sale, pledge or other transfer of the Genecraft Stock
(including the placement of
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appropriate legends on stock certificates or the imposition of stop-transfer
instructions) if, in the judgment of Genecraft, such restrictions are necessary
or desirable in order to achieve compliance with the Securities Act, the
securities laws of any state or any other law.
b. MARKET STAND-OFF. In connection with any private financing
transaction public offering by Genecraft of its equity, including Genecraft's
initial public offering, PNRI shall not directly or indirectly sell, make any
short sale of, loan, hypothecate, pledge, offer, grant or sell any option or
other contract for the purchase of, purchase any option or other contract for
the sale of, or otherwise dispose of or transfer, or agree to engage in any of
the foregoing transactions with respect to, any Genecraft Stock without the
prior written consent of Genecraft or its underwriters. Such restriction (the
"Market Stand-Off') shall be in effect for such period of time commencing
immediately prior to the closing of any financing transaction or, as applicable,
immediately following the date of the final prospectus for the offering as may
be requested by Genecraft or such underwriters. In no event, however, shall such
period exceed 180 days.
c. LEGENDS. All certificates evidencing Genecraft Stock shall bear the
following legends:
THE SHARES REPRESENTED HEREBY MAY NOT BE SOLD, ASSIGNED, TRANSFERRED,
ENCUMBERED OR IN ANY MANNER DISPOSED OF, EXCEPT IN COMPLIANCE WITH THE
TERMS OF A WRITTEN AGREEMENT BETWEEN GENECRAFT AND THE HOLDER OF THE
SHARES. GENECRAFT WILL UPON WRITTEN REQUEST FURNISH A COPY OF SUCH
AGREEMENT TO THE HOLDER HEREOF WITHOUT CHARGE.
THE SHARES REPRESENTED HEREBY HAVE NOT BEEN REGISTERED UNDER THE
SECURITIES ACT OF 1933, AS AMENDED, OR ANY STATE COUNTERPART THERETO, AND
MAY NOT BE SOLD, PLEDGED, OR OTHERWISE TRANSFERRED WITHOUT AN EFFECTIVE
REGISTRATION THEREOF UNDER SUCH ACT AND ALL APPLICABLE STATE COUNTERPARTS
TO SUCH ACT, OR AN OPINION OF COUNSEL, SATISFACTORY TO GENECRAFT AND ITS
COUNSEL, THAT SUCH REGISTRATION IS NOT REQUIRED.
7. MISCELLANEOUS.
a. ENTIRE AGREEMENT; AMENDMENTS. This Agreement, including all
attachments hereto, contains the entire understanding among the parties with
respect to the subject matter hereof, and completely revokes, replaces and
supersedes all prior and contemporaneous agreements, express or implied, oral or
written, except as herein contained. This Agreement may be amended or modified
only in writing, signed by each party.
b. NONWAIVER. The failure of any party to enforce any provision of this
Agreement or to exercise any right, remedy or provision of this Agreement shall
not be considered to be a waiver of any such right, remedy or provision or of
any subsequent breach of this Agreement. No provisions of this Agreement may be
waived except by written agreement of each party.
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c. SEVERABILITY. If any term, covenant, condition or provision of this
Agreement or the application thereof to any person, entity or circumstance shall
at any time or to any extent be determined to be invalid or unenforceable under
any provision of applicable law, to the full extent the provision of such
applicable law may be waived, it is hereby waived. To the extent such law cannot
be waived, the invalid or unenforceable provision shall be replaced by a valid
provision which comes closest to the intentions of the parties to this
Agreement. The invalidity or unenforceability of any provision hereof shall not
affect the validity or enforceability of any other provision hereof.
d. BINDING EFFECT; SUCCESSORS AND ASSIGNS; ASSIGNMENT. This Agreement
shall be binding on and for the benefit of all parties and their respective
employees, assigns, representatives and successors in interest; but no party
hereto shall assign this Agreement without prior written consent of the other
parties. Notwithstanding the above, Genecraft may assign its rights and
obligations hereunder to (1) any corporation or other entity resulting from any
merger or other reorganization to which it is a party, (2) any corporation,
partnership, limited liability company, association, or other person or entity
to which it may transfer all or substantially all of its assets or business
existing at such time, or (3) any entity which controls, is controlled by, or
under common control with it.
e. NO JOINT VENTURE AGENCY. Nothing herein shall be construed or deemed
to create any taxable entity or relationship of joint venture, partnership,
franchise, employment, or master-servant or principal-agent among the parties
hereto. The rights, duties, obligations and liabilities of each party are
separate and not joint or collective, It being understood that the parties are
independent contractors vis-a-vis one another. No party shall have any authority
to commit or bind any other party with respect to any third party without me
other party's express written consent
f. NOTICES. All notices, requests, demands and other communications
hereunder shall be in writing and may be personally delivered, sent by facsimile
transmission or mailed by certified or registered United States mail, return
receipt requested, postage prepaid and sent or delivered to each party at the
address or facsimile number as set forth under its name on the signature page
hereof. All notices, requests, demands and other communications hereunder shall
be deemed to be effective upon receipt.
g. JURISDICTION; ATTORNEYS' FEES. In the event that the parties are
unable to resolve any dispute among them, they agree that any action or
proceeding brought to enforce or otherwise arising out of or relating to this
Agreement shall be commenced and maintained exclusively in any state or federal
court located within King County, Washington, having subject matter jurisdiction
with respect to the dispute. The parties hereby irrevocably submit to the
jurisdiction of such courts in connection with such litigation, and irrevocably
waive to me fullest extent permitted by law any objection to venue in such
courts and any claim that such forum is an inconvenient forum. The parties agree
that a final judgment in any such action or proceeding shall be conclusive and
may be enforced in other jurisdictions by suit on the judgment or in any other
manner provided by law. In any such action or proceeding, the prevailing party
shall be entitled to reasonable attorneys' fees and costs.
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h. CONSTRUCTION. The headings used herein are for reference and
convenience only, and shall not enter into the interpretation hereof. The
attachments hereto are incorporated herein to the same extent as if set forth in
full herein. The parties agree that the provisions of this Agreement shall not
be construed against a party or parties on the grounds that the party or parties
drafted or was more responsible for drafting the provisions.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the Effective Date.
PACIFIC NORTHWEST RESEARCH INSTITUTE ADDRESS:
000 Xxxxxxxx
Xxxxxxx, XX 00000
By: /s/ R. Xxxx Xxxxxxxxx Fax: (000) 000-0000
----------------------------
Name: R. Xxxx Xxxxxxxxx, MD
Title: CEO/Scientific Director
GENECRAFT, INC. ADDRESS:
00000 Xxxxxxxxxx Xxxx
Xxxxxxxxx, Xxxxxxxxxx 00000
By: /s/ Xxxxxxx X. Xxxxxxxxx Fax: (000) 000-0000
----------------------------
Name: Xxxxxxx X. Xxxxxxxxx, Ph.D.
Title: CEO
XXXXXXX X. XXXXXXXXX ADDRESS:
00000 Xxxxxxxxxx Xxxx
/s/ Xxxxxxx X. Xxxxxxxxx Xxxxxxxxx, Xxxxxxxxxx 00000
------------------------ Fax:
XXXXXX X. XXXXXXXXX ADDRESS:
00000 Xxxxxxxxxx Xxxx
/s/ Xxxxxx X. Xxxxxxxxx Xxxxxxxxx, Xxxxxxxxxx 00000
----------------------- Fax:
ATTACHMENT A
TECHNOLOGY
A. ANTIGEN TARGETING TECHNOLOGY:
The antigen targeting technology includes fusion proteins of antigen with
a domain that binds to the CD40 receptor on antigen presenting cells. The gp120
gene of HIV-1 was fused with the extracellular domain of CD154 (CD40L). The
protein was expressed in COS cells, and shown to be active in binding to CD40,
and to carry the gp120 glycoprotein to the cell surface. This work was supported
by an NIH R29 grant which funds continuation of this work through studies of DNA
vaccines in non-human primates. The contributions of the US government to the
work will be included in all patent filings that incorporate work supported by
this grant. Antigen fusion of antigens with binding domains specific for cell
surface receptor on APCs.
Genecraft filed a provisional patent application on antigen targeting in
October of 1999, prior to receiving funding from the NH. This was converted
without changes to a nonprovisional patent application in October of 2000. This
patent application is attached as Appendix A.
B. SINGLE CHAIN ANTIBODY DERIVATIVES:
* * *
DESCRIPTION OF THE INVENTION
MOLECULES FOR THERAPY OF B CELL DISEASES (CONTINUATION IN PART)
This invention relates to genes and recombinant molecules for therapy of
human B cell diseases. The genes encode single chain Fv (scFv) binding domains
linked to CH2 and CH3 domains of human IgGl through alternative linkers that
allow high level expression of monomeric molecules or a mixture of monomeric and
dimeric molecules. * * *
B cell diseases include malignancies of B cell origin, such as B cell
lymphoma and chronic lymphocytic leukemia (CLL). B cell diseases are also
defined as autoimmune diseases where the B cell lineage produces antibodies that
are involved in the disease process. In these diseases, depletion of normal B
cells producing pathogenic autoantibodies has therapeutic benefit. Depeltion of
normal B cells may also be effective in other clinical settings where antibodies
or immune complexes are involved in the disease progression by suppression or
modification of tumor immunity.
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