Exhibit 10.15
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS EXHIBIT. THE
CONFIDENTIAL PORTIONS HAVE BEEN REDACTED AND ARE DENOTED BY [***]. THE
CONFIDENTIAL PORTIONS HAVE BEEN SEPARATELY FILED WITH THE SECURITIES AND
EXCHANGE COMMISSION.
ASSIGNMENT AGREEMENT
Effective March 15, 0000, Xxxxxx Xxxxxx, xx Xxxxxxxxx,
Xxxxxxxxxxxxx, and Xxxxx Xxxxx, of Culver City, California (the "Assignors"),
and ScripTech Pharmaceuticals, Inc., a Delaware corporation ("ScripTech"),
hereby act and agree as follows:
1. Definitions.
"Affiliate" means any individual, partnership, corporation or other
legal entity that directly, or indirectly through one of more intermediaries,
controls, is controlled by, or is under common control with, the party of which
it is stated to be an Affiliate.
"Control" means possession, direct or indirect, of the power to
direct or cause the direction of the management and policies of another entity
or person, whether through the beneficial or record ownership of securities, by
contract or otherwise.
"First Commercial Sale" shall mean in each country, the first
manufacture, use or sale of any Screened Product by ScripTech, its Affiliates or
licensees, following approval of its marketing by the appropriate governmental
agency for the country in which the sale is to be made and when governmental
approval is not required, the first manufacture, use or sale in that country.
"Improvement" shall mean any invention which constitutes an
improvement of a Screening Procedure which is not Publicly Available.
"Know How" means all information, knowledge and data of the
Assignors which is necessary to practice any invention claimed by the Screening
Patent Rights or for the use of any Screening Procedure, including, but not
limited to, materials, formulations, processes, drawings, designs, test data and
results, concepts and ideas.
"Net Sales" means invoiced price less trade, quantity, cash and
prompt payment discounts; allowances; returns; Medicaid rebates or rebates to
governmental agencies; transportation costs; insurance charges; and duties
and sales taxes separately itemized on the appropriate invoice or invoices.
Sales by a person to an Affiliate of such person or by an Affiliate of such
person to such person shall be excluded from Net Sales provided that such
person or such Affiliate is purchasing for resale and any such resales, when
made, are included in determining Net Sales. Net Sales shall include the fair
market value of any other consideration received for any sales.
"Publicly Available" as to one or more Screening Procedures shall
mean that the Screening Procedure (i) has been disclosed fully and adequately
for practice thereof in a publicly
available document or (ii) has been described to third parties fully and
adequately for practice thereof without being covered by an obligation of
confidentiality and, as a result of such disclosure, is in use by other(s) in
competition with ScripTech and/or its Affiliates and/or their licensees.
"Screened Product" means any product which was identified by the use
of a Screening Procedure or which is an analog or derivative of a product which
was identified by the use of a screening Procedure.
"Screening Patent Rights" means the patent applications set forth on
Exhibit A attached hereto, the inventions claimed thereby, any patents issuing
from any such patent applications, all applications for patents filed under the
laws of countries other than the United States and all patents issuing thereon
which applications and patents cover and/or claim any invention corresponding to
any invention claimed by any patent application set forth on Exhibit A attached
hereto, any continuations, continuations-in-part, divisions, reissues,
extensions and renewals of any of the foregoing, and any Improvements.
"Screening Procedure" means any screening procedure(s) described on
Exhibit B attached hereto.
"Valid Claim" shall mean a claim of an issued and unexpired patent
or a pending patent application owned by or licensed to ScripTech or any of its
Affiliates which has not been held permanently revoked, unenforceable or invalid
by a decision of a court or other governmental agency of competent jurisdiction,
unappealable or unappealed within the time allowed for appeal, or which has not
been admitted to be invalid or unenforceable through reissue or disclaimer or
otherwise.
2. Conveyance.
2.1 Assignors hereby sell, assign, convey and transfer to ScripTech,
and ScripTech hereby acquires from Assignors, all of Assignors' right, title and
interest in and to the Screening Patent Rights and Know How and the Screening
Procedure. In consideration therefor, ScripTech shall [***]
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2.2 Upon request, Assignors will sign all applications, assignments,
instruments and papers and perform all acts reasonably requested by ScripTech to
assign all the Screening Patent Rights, Know How and Screening Procedure fully
and completely to ScripTech and to enable ScripTech, its successors, assigns and
nominees, to secure and enjoy the full and exclusive benefits and advantages
thereof. In the event ScripTech is unable to secure, after reasonable efforts,
an Assignor's signature on any letters patent, copyrights or other analogous
protection relating to a Screening Patent Right, Know How or Screening Procedure
for any reason whatsoever, each Assignor hereby irrevocably designates and
appoints ScripTech and its duly authorized officers and agents as the Assignor's
agent and attorney-in-fact, to act for and in behalf and stead of the Assignor
to execute and file any such application or applications and to do all other
lawfully permitted acts to further the prosecution and issuance of letters
patent, copyright or other analogous protection thereon with the same legal
force and effect as if executed by the Assignor.
3. Representations and Warranties.
Assignors represent and warrant that they are the lawful owner
of all of the Screening Patent Rights, Know How and Screening Procedure; that
they have good and undivided title to the same and the absolute right to sell,
transfer and assign the same to ScripTech pursuant to this Agreement, free and
clear of all license, encumbrances, restrictions, rights, title or interest in
others, whether written or oral or express or implied and whether or not
relating in any way to credit or the borrowing of money (but subject to
applicable laws requiring the payment of fees in connection with the issuance or
maintenance of patents); that they are not a party to or bound by any agreement,
instrument, arrangement, contract, obligation, commitment or understanding of
any character, whether written or oral, express or implied, other than this
Agreement, relating to the Screening Patent Rights, Know How or Screening
Procedure; and that they do not have any knowledge of any material
misrepresentation in connection with the procurement of the Screening Patent
Rights.
4. Royalties.
4.1 ScripTech shall pay to Assignors a royalty of (a) [***] of
Net Sales of any Screened Product sold by ScripTech and its Affiliates (i)
the making, use or sale of which by an unlicensed third party would
constitute an infringement of a Valid Claim pertaining to the Screened
Product in the country where the Screened Product was made, used or sold and
(ii) which has been identified through a Screening Procedure (A) not Publicly
Available as of the date of the identification thereof or (B) covered by a
Valid Claim of an issued and unexpired patent or pending patent application
in the country of sale included in
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the Screening Patent Rights; (b) [***] of Net Sales of any Screened Product
sold by ScripTech and its Affiliates (i) the making, use or sale of which by
an unlicensed third party would not constitute an infringement of a Valid
Claim pertaining to the Screened Product in the country where the Screened
Product was made, used or sold and (ii) which has been identified through a
Screening Procedure (A) not Publicly Available as of the date of the
identification thereof or (B) covered by a Valid Claim of an issued and
unexpired patent or pending patent application in the country of sale
included in the Screening Patent Rights; and (c) [***] of Net Sales of any
Screened Product sold by ScripTech and its Affiliates (i) the making, use or
sale of which by an unlicensed third party would constitute an infringement
of a Valid Claim pertaining to the Screened Product in the country where the
Screened Product was made, used or sold and (ii) which has been identified
through a Screening Procedure (A) Publicly Available as of the date of the
identification thereof and (B) not covered by a Valid Claim of an issued and
unexpired patent or pending patent application in the country of sale
included in the Screening Patent Rights.
4.2 In the event ScripTech or its Affiliate licenses and/or
sublicenses to a third party the right to make, use or sell a Screened
Product, ScripTech shall pay to the Assignors the greater of (a) [***] of all
royalties received by ScripTech from the licensee and/or sublicensee pursuant
to such license or sublicense and (b) the amount Assignors would have been
entitled to receive pursuant to Section 4.1 if the Screened Product had been
sold by ScripTech and/or its Affiliates; provided, however, that for the
purposes of (a) above, royalties paid to ScripTech by one of its Affiliates
in respect of a Screened Product shall not be counted if such Affiliate is
receiving royalties from a sublicensee in respect of the same Screened
Product.
4.3 In the event ScripTech or its Affiliate licenses, and/or
sublicenses to a third party the right to use the Screening Procedure,
ScripTech shall pay to Assignors the greater of (a) [***] of all royalties
received by ScripTech or its Affiliate from the licensee and/or sublicensee
pursuant to such license or sublicense and (b) the amount Assignors would
have been entitled to receive pursuant to Section 4.1 if a Screened Product
identified by the licensed Screening Procedure had been sold by ScripTech
and/or its Affiliates; provided, however, that for the purposes of (a) above,
royalties paid to ScripTech by one of its Affiliates in respect of a
Screening Procedure shall not be counted if such Affiliate is receiving
royalties from a sublicensee in respect of the same Screeninq Procedure.
4.4 All payments by ScripTech hereunder shall be paid [***] to
Xxxxxx Xxxxxx and [***] to
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Xxxxx Xxxxx. There shall be but a single royalty obligation under this Agreement
for each unit of product sold, and in no event shall ScripTech be obligated to
make payments under this Agreement aggregating in excess of [***]
4.5 (a) All payments provided for in this Section 4 shall be paid in
United States dollars by ScripTech within [***] following the
termination of each calendar quarter (the first such quarter to be that in which
payments first accrue pursuant to this Section 4) in an amount equal to the
payment accruing during that calendar quarter measured in currency of the
country in which sales shall have been made and converted into United States
dollars at the noon buying rate in New York City for cable transfers in such
foreign currency as announced by the Federal Reserve Bank of New York for
customs purposes on the last day of such calendar quarter.
(b) The payments shall be accompanied by reports which shall
indicate the sales by party for the previous calendar quarter and shall show the
amounts due with sufficient information to enable confirmation by Assignors of
the following:
(i) Quantity of Screened Product subject to royalty sold (by country) by
ScripTech and its Affiliates and licensees;
(ii) Total receipts for each Screened Product subject to royalty payments
hereulder (by country) and a breakdown as to whether such royalty is
payable pursuant to Section 4.1(a), 4.1(b) or 4.1(c)
hereunder;
(iii) Total royalties payable to Assignors;
(iv) Royalties received from licensees and sublicensees and data
equivalent to (i) and (ii) above as to licensee activity;
(v) All other revenue realized by ScripTech, its Affiliates and their
licensees from commercial exploitation of Screening Procedures,
Screened Products and/or Screening Patent Rights; and
(vi) Calculation of the basis of any foreign currency conversion required
hereunder in connection with each calendar quarterly payment.
ScripTech shall maintain, and shall cause its Affiliates and their licensees to
maintain, accurate books of account containing such information as may be
necessary to allow Assignors to confirm the calculations of royalties payable
hereunder. Such
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books of account shall be kept at the respective principal places of business
of ScripTech, its Affiliates and their licensees and shall be available for
audit (solely for the purpose of confirming the accuracy of payments
hereunder), not more often than once in any period of eleven consecutive
months, by a firm of certified public accountants designated by Assignors at
reasonable times for three years following the end of the calendar year
during which the royalties in respect of the sales recorded in such books of
account are paid hereunder. Such audits shall be at the sole expense of
Assignors, provided that if any audit shows under-reporting of any calendar
quarter payment by more than [***] ScripTech shall reimburse Assignors for
the full cost of such audit. If Assignors do not elect within [***] of the
close of any calendar year to have the records of ScripTech and its
Affiliates audited, Assignors shall be deemed to have agreed that such
payments made by ScripTech for the preceding calendar year were complete and
accurate in all respects. Assignors agree that all information obtained
pursuant to this Section 4 shall be kept confidential.
4. 6 If by law, regulation, or fiscal policy of a particular
country, conversion or transfer into United States Dollars is restricted or
forbidden, notice thereof in writing shall be given by ScripTech to Assignors
and the payments in question shall be made through such lawful means or
methods as ScripTech may determine. If ScripTech shall fail to designate a
lawful means or method of payment within [***] after such notice is given to
ScripTech, the payment by ScripTech shall be made by the deposit thereof in
local currency to the credit of Assignors in a recognized local banking
institution designated by ScripTech. When, in any country, the laws or
regulations prohibit both the transmittal and deposit of royalties on sales
in such country, payments shall be suspended for as long as such prohibition
is in effect and, as soon as such prohibition ceases to be in effect, all
royalties that ScripTech would have been required to transmit or deposit, but
for the prohibition, shall forthwith be transmitted or deposited promptly to
the extent allowable as the case may be. An accounting of royalties due on
sales in any country where royalty payments are suspended as aforesaid shall
be provided by ScripTech to Assignors upon request, but not more frequently
than quarterly.
4.7 All turnover and other taxes levied on account of royalty
payments under this Agreement shall be borne and paid by Assignors for their own
account, including taxes levied thereon as income to Assignors and for which
provision is made in law or by regulation for withholding, in which event such
taxes shall be deducted from such payments, paid by ScripTech to the proper
taxing authority, and a receipt of payment of the tax obtained and sent to
Assignors.
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4.8 Notwithstanding the provisions of this Section 4, Assignors
agree to reconsider and to renegotiate in good faith the provisions hereof from
time to time at the request of ScripTech if ScripTech can demonstrate that
despite its commercially reasonable efforts the then current royalty rates
effectively and materially diminish the capability of ScripTech and its
Affiliates and licensees to exploit any product for which a payment may be due
and owing hereunder or to respond to competitive conditions in the market(s) for
any such product. Nothing contained in this Section 4.8, however, shall obligate
the Assignors to agree to any reduction in the current royalty rates hereunder.
5. ScripTech's Efforts.
ScripTech will use reasonable commercial efforts, consistent with
its financial resources and corporate objectives as conclusively determined by
its Board of Directors, to develop, sell and market Screened Products, but no
assurances can be given that ScripTech will be successful in this regard.
6. Payment Term.
The obligation of ScripTech to make payments pursuant to Section
4 shall terminate on a country-by-country basis on the earlier of (a) such
time as there no longer exists any Valid Claim pertaining to the Screened
Product in such country or (b) [***] from the date of the First Commercial
Sale of a Screened Product in such country.
7. Arbitration; Governing Law.
7.1 Failing settlement, all disputes arising in connection with this
Agreement may only be resolved by arbitration in Boston, Massachusetts, under
the Commercial Arbitration Rules of the American Arbitration Association before
three arbitrators appointed in accordance with said Rules. The decision of the
arbitrators shall be final, binding and conclusive upon the parties and they
shall comply with such decision in good faith, provided that the arbitrators
shall have set forth in writing to the parties the reasons for their findings
and shall award the prevailing party, in addition to any other damages awarded,
the costs and expenses of the prevailing party in the arbitration, including
counsel fees. Each party hereby submits itself to the jurisdiction of the
federal district courts of the place where the arbitration is held for the entry
of judgment with respect to any arbitration hereunder. Notwithstanding the
foregoing, judgment upon the award may be entered in any court having
jurisdiction over the parties.
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7.2 This Agreement shall be construed and enforced in accordance
with the laws of the Commonwealth of Massachusetts without regard to
conflicts-of-law principles.
8. Force Majeure.
Except for the obligations relating to the payment of money, neither
party shall be liable for any loss, damage or penalty resulting from delays or
failures in performance resulting from acts of God or other causes beyond its or
his control. Each party agrees to notify the other party of any circumstance
delaying its or his performance and to resume performance as soon thereafter as
is reasonably practicable.
9. Joint and Several.
The representations, warranties, agreements and obligations of the
Assignors under this Agreement shall be joint and several.
10. Waiver.
No waiver, alteration or modification of any of the provisions
hereof shall be binding unless made in writing and executed by all of the
parties hereto. No waiver of any one or more defaults in the performance of any
provision of this Agreement shall operated as a waiver of any future default
whether of a like character or not.
11. No Present intention
ScripTech represents and warrants to Assignors that it has no
present intentention to cause the Screening Procedures to become Publicly
Available.
12. Notices.
All notices, requests, demands and other communications which are
required or may be given pursuant to the terms of this Agreement shall be in
writing and shall be deemed duly given when delivered by hand or mailed by
certified or registered mail, postage prepaid and return receipt requested, as
follows:
If to ScripTech, to: Xxx Xxxxxx Xxxxx
Xxxxxx, XX 00000
Attn: President
If to Xxxxxx Xxxxxx, to: 00 Xxxxxxxx Xxxx
Xxxxxxxxx, XX 00000
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If to Xxxxx Xxxxx, to 0000 Xx Xxxxxxx Xxxxxx
Xxxxxx Xxxx, Xxxxxxxxxx 00000
13. Entire Agreement
This Agreement embodies the entire agreement and understanding
between the parties hereto with respect to the subject matter hereof and
supersedes all prior agreements and understandings relating to such subject
matter.
14. Successors and Assigns
This Agreement shall be binding upon and shall inure to the benefit
of the parties hereto and their respective personal. representatives, successors
and assigns.
IN WITNESS WHEREOF, each of the parties has caused this Agreement,
to be executed and duly sealed by its duly authorized representative as of the
date hereof.
SCRIPTECH PHARMACEUTICALS, INC.
By /s/ Xxxxxx X. Xxxxxxx
----------------------
Its President & CEO
/s/ Xxxxxx Xxxxxx
----------------------
Xxxxxx Xxxxxx
/s/ Xxxxx Xxxxx
----------------------
Xxxxx Xxxxx
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19108
EXHIBIT A
UNITED STATES PATENT APPLICATION
Filing Date Serial No. Title
----------- ---------- -----
6/21/93 08/080,829 "A SCREENING METHOD FOR IDENTIFYING
LIGANDS FOR TARGET PROTEINS"
19108/99
Exhibit B
Screening Procedure:
The screening procedures known collectively as ATLAS are based upon the
principle that [***] The Procedure involves the following steps:
[***]
AMENDMENT AGREEMENT
Reference is made to that Assignment Agreement effective March 15, 1994 by
and among Xxxxxx Xxxxxx, Xxxxx Xxxxx and ScripTech Pharmaceuticals, Inc. (the
"Agreement").
1. Section 4.2 of the Agreement is hereby deleted in its entirety and
the following is substituted therefor:
"4.2 In the event ScripTech or its Affiliate licenses and/or
sublicenses to a third party the right to make, use or sell a Screened
Product, ScripTech shall pay to the Assignors [***] of all royalties
received by ScripTech or its Affiliate from the licensee and/or
sublicensee pursuant to such license and/or sublicense."
2. Section 4.3 of the Agreement is hereby deleted in its entirety and
the following is substituted therefor:
"4.3 In the event ScripTech or its Affiliate licenses and/or
sublicenses to a third party the right to use the Screening Procedure,
ScripTech shall pay to Assignors [***] of all royalties received by
ScripTech or its Affiliate from the licensee and/or sublicensee pursuant
to such license and/or sublicense."
3. Except as hereby amended, the Agreement shall continue in full force
and effect.
WITNESS the execution hereof as an instrument under seal as of this 10th
day of June, 1994.
/s/ Xxxxxx Xxxxxx
----------------------
Xxxxxx Xxxxxx
----------------------
Xxxxx Xxxxx
SCRIPTECH PHARMACEUTICALS, INC.
By /s/ Xxxxxx X. Xxxxxxx
----------------------
Its President & CEO
44221
AMENDMENT AGREEMENT
Reference is made to that Assignment Agreement effective March 15, 1994 by
and among Xxxxxx Xxxxxx, Xxxxx Xxxxx and ScripTech Pharmaceuticals, Inc. (the
"Agreement").
1. Section 4.2 of the Agreement is hereby deleted in its entirety and
the following is substituted therefor:
"4.2 In the event ScripTech or its Affiliate licenses and/or
sublicenses to a third party the right to make, use or sell a Screened
Product, ScripTech shall pay to the Assignors [***] of all royalties
received by ScripTech or its Affiliate from the licensee and/or
sublicensee pursuant to such license and/or sublicense."
2. Section 4.3 of the Agreement is hereby deleted in its entirety and
the following is substituted therefor:
"4.3 In the event ScripTech or its Affiliate licenses and/or
sublicenses to a third party the right to use the Screening Procedure,
ScripTech shall pay to Assignors [***] of all royalties received by
ScripTech or its Affiliate from the licensee and/or sublicensee pursuant
to such license and/or sublicense."
5. Except as hereby amended, the Agreement shall continue in full force
and effect.
WITNESS the execution hereof as in instrument under seal as of this 10th
day of June, 1994.
---------------------------
Xxxxxx Xxxxxx
/s/ Xxxxx Xxxxx
---------------------------
Xxxxx Xxxxx
SCRIPTECH PHARMACEUTICALS, INC.
/s/ Xxxxxx X. Xxxxxxx
---------------------------
Its President & CEO
