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EXHIBIT 10.8
OPTION AGREEMENT
THIS OPTION AGREEMENT (this "Agreement") is entered into as of this
27th day of January, 1999 (the "Effective Date") between Vaxcel, Inc., a
Delaware corporation having its offices at 000 Xxxxxxxxxx Xxxxxxx, Xxxxxxx,
Xxxxxxx 00000 ("Vaxcel"), and Innovax Corporation, a Delaware corporation having
its offices at 00000 X. Xxxxxxx Xxxxx, Xxxxx X, Xxxx Xxxxxx, Xxxxxxxx 00000
("Innovax").
BACKGROUND
Vaxcel has an exclusive worldwide license to oral microsphere
technology owned by Southern Research Institute ("SRI") and the UAB Research
Foundation ("UAB") (such technology, the "Oral Microsphere Technology"), and
under certain patents related to the Oral Microsphere Technology (the "Oral
Microsphere Technology Patents") pursuant to a License Agreement dated as of
August, 1998 between SRI and Vaxcel (the "License Agreement"). Innovax has
received and reviewed a copy of the License Agreement as provided by Vaxcel.
Innovax is a joint venture between Elan Corporation, plc. and Endorex
Corporation. Innovax desires to review certain confidential information relating
to the Oral Microsphere Technology and the Oral Microsphere Technology Patents
for the purpose of evaluating whether to become a sublicensee thereof, or to
take an assignment of the License Agreement pursuant to an option granted by
Vaxcel to Innovax hereunder. This Agreement documents the terms of the
disclosure of such confidential information and the grant of the option.
NOW, THEREFORE, in consideration of the premises and the covenants
contained herein, the parties hereto hereby agree as follows:
1. Vaxcel hereby grants to Innovax the access to, and the right to
review, the Confidential Information (as defined below), the Trade Secrets (as
defined below) and the Vaxcel Know-How (as defined below), all as related to the
Oral Microsphere Technology and the Oral Microsphere Technology Patents, for a
period commencing on the Effective Date and expiring on March 22, 1999 (such
period the "Evaluation Period") to determine whether (a) to become a sublicensee
of the Oral Microsphere Technology and the Oral Microsphere Technology Patents
for oral delivery of antigens to humans and animals or (b) to exercise the
Option (as defined below). Nothing in this Section 1 shall be deemed to
constitute a license to practice the claims of the Oral Microsphere Technology
Patents.
2. Vaxcel hereby grants to Innovax an option and right, but not the
obligation (the "Option") to enter into an Assignment and Assumption Agreement
with Vaxcel in substantially the form as Exhibit A attached hereto (the
"Assignment Agreement"), pursuant to which (a) Vaxcel shall assign to Innovax
all of its rights under the License
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Agreement and (b) Innovax shall assume all of Vaxcel's obligations under the
License Agreement that are not attributable to a breach by Vaxcel of the License
Agreement.
3. On the Effective Date, Innovax shall pay to Vaxcel an option fee of
$200,000 (the "Option Fee") payable (i) via wire transfer of immediately
available funds in accordance with written wiring instructions provided by
Vaxcel or (ii) by check sent via overnight delivery to the address set forth in
Section 24. The Option Fee is non-refundable; provided, however that, (i) if
Innovax exercises the Option, the Option Fee shall be credited against the
Exercise Price (as defined below) of the Option,(ii) if Innovax exercises the
Option but written consent from SRI is not obtained during the Evaluation Period
or any mutually agreed extension thereof for Vaxcel to assign the License
Agreement to Innovax, the Option Fee shall be fully refunded to Innovax and
(iii) if the License Agreement is terminated for any reason during the
Evaluation Period or any Extension thereof prior to the exercise of the Option,
the Option Fee shall be fully refunded to Innovax. If Vaxcel and Innovax are
unable to obtain SRI's written consent, if required, to the assignment of the
License Agreement and Vaxcel refunds the Option Fee, neither party shall be
bound by the provisions of this Agreement, except that Innovax shall continue to
be bound by the terms of Sections 10-15 hereof for the periods specified in such
Sections.
4. The initial term of the Option during which it may be exercised by
Innovax shall be the Evaluation Period. At any time prior to the expiration of
the Evaluation Period or any Extension (as defined below) thereof, Innovax may
extend the term of the Option for a period of five (5) days (each period, an
"Extension") by providing to Vaxcel written notice of its intention to do so and
by paying to Vaxcel an extension fee of $10,000 per Extension (each payment of
$10,000 an "Extension Fee" and collectively, the "Extension Fees") payable (i)
via wire transfer of immediately available funds in accordance with Vaxcel's
written wiring instructions or (ii) by check sent via overnight delivery to the
address set forth in Section 24. The maximum number of Extensions that may be
granted under this Section 4 is three (3), for an aggregate of fifteen (15)
days. The Extension Fees paid by Innovax, if any, are in addition to the
Exercise Price of the Option. The Option shall be of no further force or effect
after the expiration of the later of the Evaluation Period or any Extension
thereof for which Vaxcel has received the applicable Extension Fee.
5. The exercise price of the Option shall be $600,000 (the "Exercise
Price"). Innovax may exercise the Option at anytime during the Evaluation Period
and any Extension thereof by providing written notice of its intention to
exercise the Option and by paying to Vaxcel the Exercise Price (reduced by the
amount of the Option Fee), payable (i) via wire transfer of immediately
available funds in accordance with Vaxcel's written wiring instructions or (ii)
by check sent via overnight delivery to the address set forth in Section 24. In
addition, on the exercise date, Innovax shall execute and deliver to Vaxcel an
original counterpart signature page to the Assignment Agreement.
6. Concurrently with receipt by Vaxcel of the Exercise Price and an
original counterpart signature page to the Assignment Agreement executed by
Innovax, Vaxcel
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shall execute and deliver to Innovax an original counterpart signature page to
the Assignment Agreement.
7. If the Option has not been exercised by Innovax before the
forty-fifth (45th) day of the Evaluation Period, Innovax and Vaxcel shall
promptly meet to discuss: (i) the progress of negotiations between Innovax and
SRI, (ii) the progress of Vaxcel in its commercially reasonable efforts to
obtain consent from SRI to the assignment to Innovax of the License Agreement,
and (iii) the likelihood that Innovax will require and be requesting an
Extension. If this meeting takes place outside an approximate 200 mile radius of
Atlanta, Georgia, Innovax will pay the reasonable travel expenses of Vaxcel.
8. At any time prior to the expiration of the Evaluation Period and any
Extension thereof, Vaxcel agrees to cooperate with Innovax and to use
commercially reasonable efforts to (i) assist Innovax with Innovax's negotiation
with SRI regarding certain terms of the License Agreement, (ii) obtain SRI's
written consent to the assignment to Innovax of the License Agreement and (iii)
assist SRI in obtaining the consent of UAB; provided, however, that the failure
to obtain UAB's consent shall not have any impact on the obligations of the
parties hereto. In addition, Vaxcel shall not discuss, negotiate, contract with
or otherwise enter into an arrangement with SRI that will in any way jeopardize
Innovax's negotiations with SRI regarding the Oral Microsphere Technology and
the Oral Microsphere Technology Patents; provided, however, that nothing in this
Section 8 shall prohibit Vaxcel from obtaining SRI's written consent to any
change of control of Vaxcel to be effected by a merger, consolidation, sale of
equity interests, sale of substantially all of Vaxcel's assets (other than any
of Vaxcel's rights under the License Agreement) or otherwise (collectively, a
"Vaxcel Change of Control").
9. During the Evaluation Period and any Extension thereof, Vaxcel
agrees that it will not sublicense, sell, assign, transfer, or otherwise dispose
of its rights under the License Agreement to any third party other than Innovax.
For purposes of this Agreement, any Vaxcel Change of Control shall not
constitute a sublicense, sale, assignment, transfer or other disposition or
encumbrance of any of Vaxcel's rights under the License Agreement; provided that
the surviving entity (if other than Vaxcel) acknowledges in writing its
obligations under this Agreement.
10. (a) All Trade Secrets, Confidential Information and Vaxcel Know-How
and all physical embodiments thereof received by Innovax from Vaxcel
during the term of this Agreement are confidential to and are (and will
remain) the sole and exclusive property of Vaxcel and/or its licensor,
SRI.
(b) At all times, both during the term of this Agreement and, if
the Option is not exercised by Innovax, after its expiration, Innovax
shall hold all Trade Secrets and Vaxcel Know-How in confidence, and
will not use (except as needed to exercise the rights granted
hereunder), copy or disclose such Trade Secrets or Vaxcel Know-How, or
any physical embodiment thereof.
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(c) At all times during the term of this Agreement and, if the
Option is not exercised by Innovax, for a period of five (5) years
following the expiration of the Evaluation Period and any Extension
thereof, Innovax shall hold the Confidential Information in confidence,
and will not use (except as needed to exercise the rights granted
hereunder), copy or disclose such Confidential Information, or any
physical embodiments thereof.
(d) If Innovax exercises the Option, Innovax hereby agrees
that it shall comply with the confidentiality provisions set forth in
Article IX of the License Agreement, as such License Agreement is
amended or modified by SRI and Innovax.
11. Trade Secrets, Confidential Information and Vaxcel Know-How shall
be maintained under secure conditions by Innovax, using reasonable security
measures and in any event not less than the same security measures used by
Innovax for protection of its own trade secrets, confidential information and
know-how of a similar kind. Innovax shall not remove, obscure, or deface any
proprietary legend relating to Vaxcel's rights on or from any tangible
embodiment of any Trade Secrets, Confidential Information or Vaxcel Know-How
without Vaxcel's prior written consent.
12. If Innovax is ordered by a court, administrative agency, or other
governmental body of competent jurisdiction to disclose Trade Secrets,
Confidential Information or Vaxcel Know-How, or if it is served with or
otherwise becomes aware of a motion or similar request that such an order be
issued, then Innovax will not be liable to Vaxcel for disclosure of Trade
Secrets, Confidential Information or Vaxcel Know-How required by such order if
Innovax complies with the following requirements: (a) if an already-issued order
calls for immediate disclosures, then Innovax shall immediately move for or
otherwise request a stay of such order to permit Vaxcel to respond; (b) Innovax
shall immediately notify Vaxcel of the motion or order by the most expeditious
possible means; and (c) Innovax shall join or agree to (or at a minimum shall
not oppose) a motion or similar request by Vaxcel for an order protecting the
secrecy of the Trade Secrets, Confidential Information and Vaxcel Know-How
including joining or agreeing to (or non-opposition to) a motion for leave to
intervene by Vaxcel.
13. Innovax shall immediately report to Vaxcel any action by any person
of which Innovax has knowledge of which constitutes a breach of Innovax's
obligations under Sections 10-15 hereof.
14. (a) For purposes of this Agreement, "Trade Secrets" means
information related to the Oral Microsphere Technology or the Oral
Microsphere Technology Patents which: (i) derives economic value,
actual or potential, from not being generally known to or readily
ascertainable by other persons who can obtain economic value from its
disclosure or use; and (ii) is the subject of efforts that are
reasonably under the circumstances to maintain its secrecy.
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(b) For purposes of this Agreement, "Vaxcel Know-How" means
any and all know-how of SRI for formulating, preparing, developing and
manufacturing a Vaccine (as defined in the License Agreement), whether
or not patentable, which has been disclosed or made available by SRI to
Vaxcel as "SRI Know-How" (as defined in the License Agreement) and
which Vaxcel has disclosed or made available to Innovax pursuant to
this Agreement or any other agreement. Vaxcel will clearly designate
and identify Vaxcel Know-How at the time of disclosure to Innovax.
(c) For purposes of this Agreement, "Confidential Information"
means information which is (i) confidential to the business of Vaxcel;
(ii) is designated and identified as such by Vaxcel; and (iii) is not a
Trade Secret. Confidential Information, Vaxcel Know-How and Trade
Secrets do not include: (i) any information that is at the time of
receipt by Innovax or thereafter becomes part of the public domain
other than as a result of the unauthorized actions of Innovax (through
publication or otherwise); (ii) any information that was independently
known to Innovax prior to receipt thereof from Vaxcel as evidenced by
written records of Innovax; (iii) any information that was disclosed to
Innovax by a third party having the right to disclose such information;
(iv) information that is subsequently developed independently by
Innovax without knowledge of or access to the Confidential Information,
Vaxcel Know-How or Trade Secrets.
15. During the Evaluation Period and any Extensions thereof, Vaxcel
shall make available to Innovax the Confidential Information, Trade Secrets and
Vaxcel Know-How for the sole purpose of evaluating whether to enter into a
sublicense or to exercise the Option for the Oral Microsphere Technology and the
Oral Microsphere Technology Patents.
16. Vaxcel represents and warrants to Innovax that:
(a) Vaxcel is a corporation duly organized, validly existing and in
good standing under the laws of the State of Delaware;
(b) subject to obtaining SRI's written consent, Vaxcel's rights
under the License Agreement are assignable to Innovax;
(c) the License Agreement is currently in full force and effect and
there has been no breach by Vaxcel (other than the breach by Zynaxis,
Inc. ("Zynaxis") of certain minimum annual payment obligations, which
breach has been cured by Vaxcel to SRI's satisfaction in connection
with the merger of Zynaxis into a subsidiary of Vaxcel) and no breach
is continuing as of the date hereof and no breach by Vaxcel shall exist
and be continuing during the Evaluation Period and any Extension
thereof;
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(d) neither the grant of the Option nor, subject to obtaining
SRI's prior written consent, the assignment of the License Agreement to
Innovax violates (or will violate) or conflicts (or will conflict) with
any term of any agreement between Vaxcel and any third party which
would adversely affect (i) Vaxcel's rights under the License Agreement
or (ii) Vaxcel's ability to assign the License Agreement to Innovax;
(e) Vaxcel has no knowledge of any threatened or pending
litigation, claim, suit or proceeding which would require the
disclosure of any Confidential Information, Vaxcel Know-How or Trade
Secrets.
(f) this Agreement is duly authorized by and is, and the
Assignment Agreement upon execution by Vaxcel will be, a legal and
binding obligation of Vaxcel, except as limited by (i) applicable
bankruptcy, insolvency, reorganization, moratorium and other laws of
general application affecting enforcement of creditors' rights
generally and (ii) laws relating to the availability of specific
performance, injunctive relief and other equitable remedies.
17. Innovax represents and warrants that:
(a) Innovax is a corporation duly organized, validly existing
and in good standing under the laws of the State of Delaware;
(b) this Agreement is duly authorized by and is, and the
Assignment Agreement upon execution by Innovax will be, a legal and
binding obligation of Innovax, except as limited by (i) applicable
bankruptcy, insolvency, reorganization, moratorium and other laws of
general application affecting enforcement of creditors' rights
generally and (ii) laws relating to the availability of specific
performance, injunctive relief and other equitable remedies.
18. EXCEPT AS EXPRESSLY SET FORTH IN SECTION 16 HEREIN, VAXCEL
MAKES NO EXPRESS OR IMPLIED WARRANTY, STATUTORY OR OTHERWISE, CONCERNING THE
ORAL MICROSPHERE TECHNOLOGY, THE ORAL MICROSPHERE TECHNOLOGY PATENTS OR ANY
INFORMATION PROVIDED TO INNOVAX BY VAXCEL OR ITS AGENTS. SPECIFICALLY, BUT
WITHOUT LIMITING THE FOREGOING, VAXCEL MAKES NO EXPRESS OR IMPLIED WARRANTY OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, QUALITY, USEFULNESS,
NONINFRINGEMENT OR TITLE OF OR TO THE ORAL MICROSPHERE TECHNOLOGY AND THE ORAL
MICROSPHERE TECHNOLOGY PATENTS. ALL PHYSICAL EMBODIMENTS OF THE ORAL MICROSPHERE
TECHNOLOGY AND ANY INFORMATION RELATED THERETO PROVIDED BY VAXCEL HEREUNDER ARE
PROVIDED ON AN "AS IS" BASIS. VAXCEL DOES NOT WARRANT THE ACCURACY OF ANY
INFORMATION INCLUDED IN TRADE SECRETS, CONFIDENTIAL INFORMATION OR VAXCEL
KNOW-HOW.
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19. This Agreement may not be assigned by any party hereto without the
prior written consent of the other party, and any attempt to assign this
Agreement shall be void; provided, however, that Vaxcel may assign this
Agreement to CytRx Corporation, a majority stockholder of Vaxcel. In addition, a
Vaxcel Change of Control shall not constitute an assignment and shall not
require the consent of Innovax, subject to the requirements of Section 9.
20. This Agreement may be executed in counterparts, each of which shall
be deemed an original, and all of which together shall be deemed one and the
same agreement.
21. This Agreement represents the complete agreement between the
parties hereto regarding the subject matter herein contained and supersedes any
and all prior and contemporaneous agreements and understandings between the
parties in regards hereto.
22. This Agreement may be amended only by a written instrument executed
by both parties hereto.
23. This Agreement shall be construed in accordance with the laws of
the State of Georgia, without regard to the conflicts of laws principals
thereof.
24. Any notice or communication authorized or required to be provided
hereunder shall be in writing and may be served by hand delivery, by certified
or registered first class mail, postage prepaid (return receipt requested) or by
overnight courier service. All notices sent in accordance with this Section
shall be effective upon delivery to the following address:
If to Vaxcel: Vaxcel, Inc.
000 Xxxxxxxxxx Xxxxxxx
Xxxxxxx, Xxxxxxx 00000
Attention: President
with a copy to: Xxxxxx & Bird LLP
0000 Xxxx Xxxxxxxxx Xxxxxx
Xxxxxxx, Xxxxxxx 00000-0000
Attention: Xxxxxx X. Xxxxxxx, Xx.
If to Innovax: Innovax Corporation
00000 X. Xxxxxxx Xxxxx
Xxxxx X
Xxxx Xxxxxx, Xxxxxxxx 00000
Attention:
---------------------
with a copy to: Elan Pharmaceutical Technologies, a division of Elan
Corporation, plc.
Xxxxxxx Xxxxx
Xxxxxxx Xxxxx
Xxxxxx 0, Xxxxxxx
Attention: Xxxxx Xxxxxxxxx, Vice President & General
Counsel
and Endorex Corporation
00000 X. Xxxxxxx Xxxxx
Xxxxx X
Xxxx Xxxxxx, Xxxxxxxx 00000
Attention: Xxxxxxx X. Xxxxx, President and Chief
Executive Officer
and Xxxxxxx, Xxxxxxx & Xxxxxxxx LLP
0000 Xxxxxxxx, 00xx Xxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxx X. Xxxxxx
[THE REST OF THIS PAGE INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, the undersigned have executed this Agreement as of
the date first written above.
Vaxcel, Inc.
By:
-------------------------
Name:
------------------------
Its:
-------------------------
Innovax Corporation
By:
--------------------------
Name:
-------------------------
Its:
-------------------------
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EXHIBIT A
ASSIGNMENT AND ASSUMPTION AGREEMENT
THIS ASSIGNMENT AND ASSUMPTION AGREEMENT (this "Assignment") is entered
into as of this ____ day of ___________, 1999, by and between Vaxcel, Inc., a
Delaware corporation ("Vaxcel") and Innovax Corporation, a Delaware corporation
("Innovax").
Pursuant to that certain Option Agreement dated January ___, 1999
between Vaxcel and Innovax (the "Agreement"), Vaxcel granted an option (the
"Option") to Innovax pursuant to which Innovax, upon exercise of the Option in
accordance with the terms of the Agreement, shall acquire all of Vaxcel's
rights, and assume all of Vaxcel's obligations, under that certain License
Agreement dated as of August, 1998 (the "License Agreement"), between the
Southern Research Institute ("SRI") and Vaxcel, a copy of which is attached
hereto as Exhibit A. This Assignment documents the terms and conditions of the
assignment by Vaxcel to Innovax of all of Vaxcel's rights under the License
Agreement and the assumption by Innovax of all of Vaxcel's obligations under the
License Agreement that are not attributable to a breach by Vaxcel of the License
Agreement. Capitalized terms used but not otherwise defined in this Assignment
shall have the meaning ascribed to such terms in the Agreement.
In consideration of the mutual covenants set forth herein and in the
Agreement, and other good and valuable consideration, Vaxcel and Innovax hereby
agree as follows:
1. Vaxcel assigns, transfers and sets over unto Innovax, its
successors and assigns, all of Vaxcel' rights under (i) the License Agreement,
to have and to hold unto Innovax, its successors and assigns, from and after the
date hereof, subject to (A) the covenants, conditions, agreements, terms,
obligations, restrictions and other provisions set forth in the License
Agreement, including, without limitation, the confidentiality, proprietary
information and know-how provisions set forth in Sections 4.11 and 9.1 of the
License Agreement, as may be amended or modified by SRI and Innovax and (B) the
sublicense agreements set forth in Schedule 5(c) hereto, and (ii) the sublicense
agreements set forth in Schedule 5(c) hereto.
2. Innovax accepts such assignment and assumes and agrees to
perform, pay discharge and comply with all of the covenants, conditions,
agreements, terms, obligations and restrictions to be performed or complied with
on the part of Vaxcel under the License Agreement and the sublicense agreements
set forth in Schedule 5(c) hereto. In no event, however shall Innovax be deemed
to have assumed any obligation of Vaxcel that is attributable to Vaxcel's breach
of any provision of (i) the License Agreement or (ii) the sublicense agreements
set forth in Schedule 5(c) hereto or any agreements with any third parties
(including, without limitation, Third Parties as defined in the License
Agreement).
3. Vaxcel acknowledges receipt from Innovax of the Exercise
Price.
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4. The representations and warranties made by Vaxcel and Innovax
in the Agreement are incorporated and restated herein by reference.
5. Vaxcel represents and warrants that:
(a) except as set forth on Schedule 5(a), to the best of the
actual knowledge of Vaxcel, there are not any (i) actual claims by SRI or Vaxcel
against any third parties relating to such third party's infringement or
misappropriation of, or (ii) actual interference proceedings or actual
opposition hearings to which SRI or Vaxcel is a party and that relate to, the
Oral Microsphere Technology Patents or the Oral Microsphere Technology;
(b) except as set forth on Schedule 5(b), to the best of the
actual knowledge of Vaxcel, there are no written claims that the Oral
Microsphere Technology Patents or the Oral Microsphere Technology infringes any
patents, trade secrets, copyrights, trademarks or other intellectual property
rights of any third party, or of Vaxcel or its affiliates;
(c) except as set forth on Schedule 5(c), Vaxcel has not
granted any sublicenses under the License Agreement;
(d) neither Vaxcel nor SRI has amended or modified the License
Agreement or waived any material right under the License Agreement;
(e) except as set forth on Schedule 5(e), to the best of the
actual knowledge of Vaxcel, Vaxcel has not conceived, made or reduced to
practice any Improvements (as defined in the License Agreement) to the Oral
Microsphere Technology;
(f) Vaxcel, with Innovax's reasonable cooperation, has
obtained SRI's written consent in accordance with Section 13.8 of the License
Agreement, to the assignment of the License Agreement to Innovax, and a copy of
such consent is attached hereto as Exhibit B; and
(g) Vaxcel has paid all fees and other payments under the
License Agreement that are due and payable prior to the exercise date of the
Option, including, without limitation, (i) any payments or reimbursements due in
respect of patent prosecution or maintenance and (ii) the license payment of
$80,000 due to SRI on or before January 30, 1999, provided that the exercise
date does not occur prior to such date.
6. After delivery of this Assignment, Vaxcel shall, from time to
time, at Innovax's request, execute and deliver to Innovax as appropriate, such
other instruments of transfer and take such other actions as Innovax may
reasonably request to effectively assign to Innovax the License Agreement in
accordance with the Agreement and this Assignment.
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7. Exhibit C attached hereto sets forth a list, as of the date of
this Agreement of the Oral Microsphere Technology Patents, the applicable
filings related thereto, and the filing fees and maintenance fees paid or due
and payable with respect to the Oral Microsphere Technology Patents.
8. Vaxcel represents and warrants that it has provided to Innovax
copies of or access to all written information in Vaxcel's possession as of the
date of this Assignment that has been requested by Innovax which is related to
any side effect, injury, toxicity or sensitivity reaction and the incident or
severity thereof in connection with any tests conducted by Vaxcel or its
sublicensees relating to the Oral Microsphere Technology.
9. After delivery of this Assignment, Vaxcel shall continue to
comply with the confidentiality, proprietary information and know-how provisions
set forth in the License Agreement, including, without limitation, Sections 4.11
and 9.1, for the duration and to the extent that such provisions apply (as of
the date hereof) to Vaxcel (as Receiving Party thereof) by their terms.
10. Schedule 10 sets forth a list of all of the SRI Know-How (as
defined in the License Agreement) that it has received from SRI.
11. Vaxcel shall promptly deliver to SRI (or if SRI consents in
writing, to Innovax) of any and all physical embodiments of any Confidential
Information, SRI Know-How or Trade Secrets that it has received from SRI and
that are in Vaxcel's possession as of the date of this Assignment.
12. This Assignment may not be modified, changed or supplemented
except by written instrument signed by each party hereto.
13. This Assignment shall be binding upon and inure to the benefit
of Innovax, Vaxcel and their respective successors and assigns.
14. This Assignment shall be construed in accordance with the laws
of the State of Georgia, without regard to the conflicts of laws principles
thereof.
15. EXCEPT AS EXPRESSLY SET FORTH IN THIS ASSIGNMENT, VAXCEL MAKES
NO EXPRESS OR IMPLIED WARRANTY, STATUTORY OR OTHERWISE, CONCERNING THE ORAL
MICROSPHERE TECHNOLOGY, THE ORAL MICROSPHERE TECHNOLOGY PATENTS OR ANY
INFORMATION PROVIDED TO INNOVAX BY VAXCEL OR ITS AGENTS. SPECIFICALLY, BUT
WITHOUT LIMITING THE FOREGOING, VAXCEL MAKES NO EXPRESS OR IMPLIED WARRANTY OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, QUALITY, USEFULNESS,
NONINFRINGEMENT (EXCEPT AS EXPRESSLY SET FORTH IN SECTION 5 OF THIS ASSIGNMENT)
OR TITLE OF OR TO THE ORAL MICROSPHERE TECHNOLOGY AND THE ORAL MICROSPHERE
TECHNOLOGY PATENTS.
16. This Assignment may be executed in counterparts, each of which
shall be deemed an original, and all of which together shall be deemed one and
the same agreement.
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IN WITNESS WHEREOF, the undersigned have executed this Assignment as of
the date first written above.
Vaxcel, Inc.
By:
--------------------------
Name:
--------------------------
Its:
--------------------------
Innovax Corporation
By:
--------------------------
Name:
-------------------------
Its:
--------------------------
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EXHIBIT AND SCHEDULE LIST
Exhibit Reference Item
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A License Agreement
B SRI Consent
C Oral Microsphere Technology Patents
Schedule Reference Item
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5(a) Third Party Infringement
5(b) Oral Microsphere Technology Infringement
5(c) Sublicenses
5(e) Improvements
10 SRI Know-How
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