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EXHIBIT 10.7
LICENSE AGREEMENT
This Agreement made effective as of August 7, 1998 by and between NEORX
CORPORATION, a Washington corporation, having a place of business at 000 Xxxx
Xxxxxxxx Xxxxxx, Xxxxxxx, XX 00000 ("NEORX"), and THESEUS, LTD., a Delaware
corporation, having a place of business at Xxx Xxxxxxxxx Xxxxxx, Xxxxxx, XX
00000 ("THESEUS").
WITNESSETH:
WHEREAS, NEORX holds rights to certain technology in the field of
compostions of matter useful for the diagnosis of disease; and
WHEREAS, THESEUS desires to obtain rights to use the technology for the
diagnosis of disease, and NEORX is willing to grant such rights to THESEUS, upon
the terms and conditions set forth herein;
NOW, THEREFORE, the parties hereto agree as follows:
I. DEFINITIONS
1.01 "Affiliate" shall mean any corporation or other business entity
controlled by, controlling or under common control with such party. For purposes
of this definition, "control" shall mean the ownership, directly or indirectly,
of thirty-five percent (35%) or more (or, if less, the maximum permitted by
applicable law) of the voting stock, equity, income or analogous interest in a
corporation or other business entity.
1.02 "Annexin Licensed Patents" shall mean the compositions and methods
described in the patents and patent applications set forth in Schedule B
attached hereto, including any reissue, division, continuation,
continuation-in-part (to the extent the claims of such continuation-in-part are
entitled to the filing date of, and cover or correspond to the Annexin-related
subject matter of, an application in Schedule B) or extension thereof and all
corresponding foreign patents and patent applications thereof, that NEORX
controls. Schedule B may be amended from time to time by mutual written
agreement of the parties in accordance with Section 8.04.
1.03 "Annexin Licensed Product" shall mean any product covered by a claim
of a Annexin Licensed Patent.
1.04 "Disease State" shall mean a recognized class of disease such as
cancer, arthritis, heart disease, etc.
1.05 "Effective Date" shall mean the date set forth in the first line of
this Agreement.
1.06 "Field" shall mean the in vivo diagnosis of human disease, but not
diagnosis related to or using tissue plasminogen activator or any modification
or derivative thereof.
1.07 "Licensed Ligands" shall mean any ligand described by the claims of
any of the Linker Licensed Patents in Schedule A.
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1.08 "Licensed Linkers" shall mean any linker described by the claims of
any of the Linker Licensed Patents in Schedule A.
1.09 "Licensed Product" shall mean any Annexin Licensed Product or Linker
Licensed Product.
1.10 "Licensed Product" shall mean the entire world.
1.11 "Linker Licensed Patents" shall mean the family of patents and patent
applications set forth in Schedule A attached hereto, including any reissue,
division, continuation, continuation-in-part (to the extent the claims of such
continuation-in-part are entitled to the filing date of, and cover or correspond
to the Licensed Ligand or Licensed Linker subject matter of, an application in
Schedule A) or extension thereof and all corresponding foreign patents and
patent applications thereof. Schedule A may be amended from time to time by
mutual written agreement of the parties in accordance with Section 8.04.
1.12 "Linker Licensed Product" shall mean (a) any product identified in
Schedule C attached hereto or (b) any product added as a "Linker Licensed
Product" pursuant to Section 2.02. It is understood and agreed that the products
identified in Schedule C or to be added pursuant to Section 2.02 (I) are for use
only in Field, (ii) utilize a Licensed Ligand or a Licensed Linker with a
THESEUS Vector and (iii) do not include any product acquired or licensed,
directly or indirectly, from Diatide, Inc. or its Related Parties or licensees
or any product incorporating or based on the technology of Diatide, Inc.
1.13 "NEORX Annexin Technology" shall mean NEORX's rights in the Annexin
Licensed Patents and any know-how and information controlled by NEORX that is
unique to the manufacture or use of Annexin and the practice of Annexin Licensed
Patents and that is disclosed by NEORX during the Research Program.
1.14 "NEORX Linker Technology" shall mean NEORX's rights in the Linker
Licensed Patents and any know-how and information controlled by NEORX that is
unique to the manufacture or use of the Licensed Ligands or Licensed Linkers and
the practice of the Linker Licensed Patents and that is disclosed by NEORX
during the Research Program.
1.15 "Net Sales" shall mean, with respect to a Licensed Product, the gross
amount invoiced during the Royalty Term by THESEUS and its Affiliates and
Sublicensees for such Licensed Product (including all related components) or for
services rendered using such Licensed Product, less (a) excise or sale taxes,
duties and other taxes imposed on the invoiced sale (excluding income or other
taxes levied with respect to gross receipts) and separately stated on the
invoice and (b) insurance and transportation costs separately itemized on the
invoice for shipping the Licensed Product to the purchaser. Net Sales shall not
include any transfer between THESEUS and its Affiliates or Sublicensees for
resale, but shall include the resale from THESEUS or its Affiliates or
Sublicensees to third parties. Any Licensed Product (including its related
components) sold or otherwise disposed in other than arm's length transaction or
for other property (e.g., barter) shall be deemed invoiced at its fair market
value in the country of sale or dispossession.
1.16 "Related Party" shall mean any corporation or other business entity
controlled by, controlling or under common control with Diatide, Inc. For
purposes of this definition, "control" shall mean the ownership, directly or
indirectly, of fifty percent (50%) or more (or, if less, the maximum permitted
by applicable law) of the voting stock, equity, income or analogous interest in
a corporation or other business entity.
1.17 "Research Program" shall mean the program described in Article IV.
1.18 "Royalty Term" shall mean for each Licensed Product, on a
country-by-country basis, the later of (a) the date of expiration of the last to
expire of any patents or patent applications included in the Linker Licensed
patents and Annexin Licensed Patents with Valid Claims covering the Licensed
Product in any country in which it is made, used or sold or (b) ten (10) years
after first commercial sale to a third party (not an Affiliated or Sublicensee)
of the Licensed Product in the country after, if required, all regulatory
approvals to a market are received.
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1.19 "Sublicensee" shall mean any third party to which THESEUS sublicenses,
in accordance with this Agreement, the right to make, have made, use or sell
Licensed Products.
1.20 "THESEUS Vector" shall mean any proprietary molecule that targets a
cell receptor or a Disease State that THESEUS (a) owns or has licensed from a
third party (other than Diatide, Inc. or its Related Parties or licensees) or
NEORX hereunder, i.e., Annexin, and (b) has developed.
1.21 "Valid Claim" shall mean a claim of a pending patent application that
has not been abandoned or an issued, unexpired patent that has not been held
invalid or unenforceable by a final decision of a court or government agency of
competent jurisdiction, which decision is unappealable or was not appealed
within the time allowed therefor.
II. LICENSE
2.01 Subject to the terms of this Agreement, NEORX hereby grants THESEUS a
nonexclusive license to the NEORX Xxxxxx Technology to make, use and sell Linker
Licensed Products within the Field In the Licensed Territory. THESEUS shall not
use the NEORX Linker Technology for any other purpose. THESEUS shall not have
the right to sublicense its rights under this Section 2.01, except to a wholly
owned subsidiary so long as it remains a wholly owned subsidiary.
2.02 THESEUS, upon thirty (30) days' prior written notice to NEORX with
supporting information, may elect to expand, on a product-by-product basis, the
license granted in Section 2.01 by adding a product to the definition of "Linker
Licensed Product" that (a) is under development at THESEUS or its Affiliates and
about to enter a pivotal clinical trial, (b) is for use only in the Field, (c)
utilizes a Licensed Ligand or a Licensed Linker with a THESEUS Vector, (d) does
not relate to or incorporate a tissue plasminogen activator or any modification
or derivative thereof and (e) is not a product acquired or licensed, directly or
indirectly, from Diatide, Inc. or its Related Parties or licensees or
incorporating or based on the technology of Diatide, Inc.
2.03 Subject to the terms of this Agreement, NEORX hereby grants THESEUS an
exclusive license to the NEORX Annexin Technology to make, use and sell Annexin
Licensed Products within the Field in the Licensed Territory. THESEUS shall not
use the NEORX Annexin Technology for any other purpose. THESEUS shall have the
right to sublicense its rights under this Section 2.03 with the prior written
consent of NEORX, which consent shall not be unreasonably withheld. It is
recognized and agreed that a portion of the NEORX Annexin Technology may be
licensed from third-party institutions and that it is subject to, and THESEUS
shall comply and perform in accordance with, the terms of the third-party
license agreement.
2.04 THESEUS shall provide NEORX with written notice of the name, address
and scope of rights of each Sublicensee to which it intends to grant a
sublicense in accordance with this Agreement and within ten (10) days after the
completion of the grant or any amendment to the scope of the Sublicensee's
rights.
2.05 During the next twelve (12) months, NEORX shall provide reasonable
assistance to THESEUS, upon THESEUS' request and at THESEUS' expense, in seeking
to acquire other rights to technology owned or controlled by Boehringer
Ingelheim that may be useful in connection with Annexin Licensed Products.
2.06 THESEUS shall use reasonable and diligent efforts to develop and
commercialize Annexin Licensed Products and Linker Licensed Products.
III. PAYMENTS
3.01 In consideration of the licenses granted to THESEUS in Article II,
THESEUS shall pay to NEORX [*] in accordance with the following schedule:
(a) [*] within ten (10) days after execution of this Agreement;
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(b) [*] three (3) months after the Effective Date;
(c) [*] five (5) months after the Effective Date;
(d) [*] three (3) years after the Effective Date; provided, however,
that NEORX may, at its sole discretion, elect to receive common stock of THESEUS
having a then fair market value of [*]; and
(e) Interest at the rate of ten percent (10%) on the unpaid balance
of such [*], with the accrued interest thereon being paid semiannually after the
Effective Date.
3.02 In further consideration of the licenses granted to THESEUS in Article
II:
(a) THESEUS shall issue and deliver to NEORX within ten (10) days of
the Effective Date an amount of common stock of THESEUS that constitutes, after
issuance, [*] of the sum of (i) the outstanding common stock of THESEUS and (ii)
the number of shares of common stock of THESEUS that would be issued upon
exercise of any outstanding options, warrants or other rights to purchase.
THESEUS represents and warrants that, until after issuance and delivery of such
common stock to NEORX, THESEUS has no issued, and has not granted any options,
warrants or other rights to purchase, any preferred stock of THESEUS.
(b) In the event THESEUS issues any common stock or preferred stock
or grants rights, options or warrants to purchase common stock or preferred
stock of THESEUS, THESEUS shall issue and deliver to NEORX an amount of such
common stock or preferred stock, as the case may be, that is, after issuance,
[*] of the common stock or preferred stock (i) issued by THESEUS and (ii)
issuable under such rights, options or warrants; provided, however, that such
obligation to issue stock to NEORX shall not apply to issuances or grants by
THESEUS occurring after THESEUS has issued its common stock or preferred stock
in an offering for which it receives in excess of [*] and the fair market value
paid for such stock (i.e., not including any premium attributable to license or
other rights, etc.) would establish a fair market value for all then outstanding
stock of THESEUS in excess of [*].
(c) With respect to any offering by THESEUS as to which NEORX is not
entitled to receive [*] thereof pursuant to Section 3.02(b) and until (but not
including) the time that THESEUS sells its common stock in a public offering for
an aggregate amount in excess of [*], NEORX shall have the right to purchase at
any offering an amount of shares up to its percentage interest in the then
outstanding shares of THESEUS, upon the same terms and conditions as the
offering.
(d) In the event THESEUS offers, prior to a public offering of stock
described in Section 3.02(c), registration rights to any purchaser of securities
of THESEUS, THESEUS shall offer NEORX the same registration rights for the stock
it holds.
(e) In the event, prior to a public offering of stock described in
Section 3.02(c), THESEUS is acquired (whether by merger, acquisition of its
stock, acquisition of substantially all of its assets or other form or
reorganization), NEORX may elect to receive for its common stock of THESEUS, in
place of what it would otherwise be entitled to receive pursuant to the
acquisition, an immediate cash payment of [*], which THESEUS shall promptly pay
or cause the acquirer to promptly pay to NEORX.
(f) All stock issued by THESEUS to NEORX pursuant to Section 3.02(a)
or (b) shall be fully paid-up and nonassessable when issued.
3.03 In further consideration of the licenses granted to THESEUS in Article
II, THESEUS shall make the following milestone payments to NEORX:
(a) [*] upon submission of the first New Drug Application or Product
License Application in the United States of America for a Licensed Product.
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(b) [*] upon the first approval of a New Drug Application or Product
License Application in the United States of America;
(c) [*] upon submission of the first application for marketing
approval in a European country or Japan for a Licensed Product or, if in any
country where no approval is required, upon the first commercial sale of a
Licensed Product in the country; and
(d) [*] upon the first marketing approval in a European country or
Japan for a Licensed Product or, if in any country where no approval is
required, upon the first commercial sale of a Licensed Product in the country.
Notwithstanding (c) and (d) of this Section 3.03, in no event shall such
milestones (c) and (d) be due later than the first commercial sale of a Licensed
Product outside of the United States of America.
3.04 In further consideration of the licenses granted to THESEUS in Article
II, THESEUS shall pay NEORX on each anniversary of the Effective Date[*].
3.05 In further consideration of the licenses granted to THESEUS in Article
II, THESEUS shall make the following royalty payments to NEORX on the Net Sales
of THESEUS, its Affiliates and its Sublicensees;
(a) With respect to all Annexin Licensed Products (including products
that are both Annexin Licensed Products and Linker Licensed Products):
(i) [*] of aggregate annual Net Sales of all such Annexin
Licensed Products up to and including [*] and
(ii) [*] of aggregate annual Net Sales of all such Annexin
Licensed Products over [*]; provided, however, that THESEUS may elect to reduce
such [*] royalty rate to [*] as to all such Annexin Licensed Products by paying
NEORX [*] in addition to all other amounts due under this Agreement) no later
than one (1) year after the first approval of a New Drug Application or Product
License Application in the United States of America for such an Annexin Licensed
Product, if THESEUS is not then in breach of any other provision of this
Agreement; and
provided, however, that the royalty rates provided in (i) and (ii) of this
Section 3.05(a) shall be reduced by [*] for the Net Sales of an Annexin Licensed
Product in a country (but not to an amount less than [*] of the amount that
NEORX would owe any third party with respect to the Net Sales in the country) if
(A) the Royalty Term described in Section 1.18(a) for the Annexin Licensed
Product has expired (but the Royalty Term described in Section 1.18(b) has not)
and (B) the Annexin Licensed Product is experiencing material competition from
another product containing Annexin that was not manufactured or sold by THESEUS
and its Affiliates and Sublicensees, such material competition being deemed to
exist only if the gross sales of such competing product constitutes [*] of the
gross sales occurring in the country of the Annexin Licensed Product and other
Annexin products that are competitive (as reported by International Marketing
Statistics or, if not available, a comparable source); and provided further,
that in the vent the aggregate annual Net Sales of all such Annexin Licensed
Products exceed [*] (the "Break Point") and its is necessary to treat Net Sales
for certain Annexin Licensed Products and/or countries differently (i.e., the
foregoing [*] royalty reduction), then the amount of such Net Sales that are
deemed to be above the Break Point (i.e., to which a higher royalty rate is
applied under this Agreement) shall be equal to the worldwide aggregate annual
Net Sales in excess of the Break Point multiplied by the ratio of the Net Sales
for such Annexin Licensed Product and/or country to the worldwide aggregate
annual net Sales for all Annexin Licensed Products; the balance of such Net
Sales being deemed to be below the Break Point (i.e., to which a lower royalty
rate is applied); and
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(b) With respect to all Linker Licensed Products that are not also
Annexin Licensed Products:
(i) [*] of aggregate annual Net Sales of all such Linker
Licensed Products up to an including [*] and
(ii) [*] of aggregate annual Net Sales of all such Linker
Licensed Products over[*].
3.06 In further consideration of the licenses granted to THESEUS in Article
II, THESEUS shall pay NEORX (a) minimum annual royalties of [*] within thirty
(30) days after each anniversary of the first sale of an Annexin Licensed
product and after each anniversary of the first sale of a Linker Licensed
Product, which minimum annual royalties shall be reduced by, and have credited
against them, the royalties paid to NEORX by THESEUS with respect to all Annexin
Licensed Products or all Linker Licensed Products pursuant to Section 3.05(a) or
3.05(b), as the case may be, for the four (4) calendar quarter immediately
preceding the anniversary to which the minimum annual royalty payment applies
(e.g., royalties paid on all Annexin Licensed Products for such four (4)
quarters are creditable against the [*] annual minimum royalty payment due on
the anniversary of the first sale of an Annexin Licensed Product), and (b) [*]
of the consideration received by THESEUS from sublicensing any portion of the
NEORX Annexin Technology other than royalties (e.g., up-front and milestone
payments), such [*] to be paid within twenty (20) days after receipt of the
consideration and, in the event the consideration is other than cash, to be paid
in cash based on the fair market value of the consideration.
3.07 THESEUS shall be responsible to NEORX for the accounting and
payment of all royalties, milestones and minimums as a result of milestones
or Net Sales by Affiliates and Sublicensees, THESEUS shall make royalty
payments due under Section 3.05) with respect to Net Sales in each calendar
quarter within thirty (30) days after the close of business for each calendar
quarter. At the time each royalty payment is due, THESEUS shall provide to
NEORX a written report setting forth for the calendar quarter the Net Sales
(in local currency and U.S. dollars, with applicable exchange rates pursuant
to Section 3.08 noted), the quantity of Licensed Product sold and the royalty
due and payable thereon, on a product-byproduct and country-by country basis
(including all deductions taken from the gross invoiced amount in determining
Net Sales).
3.08 All Net Sales and royalties to NEORX under Section 3.05 shall be
calculated and paid in U.S. dollars at the rate of exchange set forth in THE
WALL STREET JOURNAL (WESTERN EDITION) for the last business day of the quarterly
period in which the Net Sales occurred.
3.09 THESEUS shall keep, and shall cause its Affiliates and Sublicensees to
keep, complete and accurate records and books of account containing all
information required for the computation and verification of amounts to be paid
under this Agreement. At the request of NEORX not more frequently than once per
calendar year, such records and books of account may be inspected during
business hours by a certified public accountant appointed by NEORX and to whom
THESEUS has no reasonable objection to the extent necessary to verify the
accuracy of statements and shall be preserved for at least five (5) years from
the date of the statement to which they pertain. If, as a result of such
inspection, it is determined that royalties have been underpaid by more than [*]
for the period under inspection, THESEUS shall promptly reimburse NEORX for the
cost of such inspection.
3.10 THESEUS acknowledges that NEORX's know-how, information and
consulting/research that it may receive pursuant to Article IV may be of
substantial value and may constitute valuable and substantial trade secrets of
NEORX. The parties acknowledge and agree that, for their mutual convenience and
after considering other alternatives, including larger or other forms of
payments, the payments to NEORX set forth in this Agreement, including the
structure and term of royalty payments, are an appropriate and mutually
convenient way of compensating NEORX.
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IV. RESEARCH SUPPORT
4.01 Xx. Xxxx Xxxxxxxxx and Dr. Xxxxx Xxxxx shall promptly define a two (2)
year Research program under which NEORX will assist THESEUS in labeling THESEUS
Vectors with Licensed Ligands or Licensed Linkers, such assistance not to
require more than one-half of full-time equivalent (FTE) from NEORX personnel.
NEORX may terminate the Research Program in the vent Xx. Xxxx Xxxxxxxxx or Xx.
Xxxxxxxx Kasina are no longer employed by NEORX.
4.02 Within ten (10) days after execution of this Agreement, THESEUS shall
pay [*], and thereafter on or before the first day of each succeeding calendar
quarter [*] until an aggregate [*] has been paid to NEORX under this Section
4.02, to support NEORX's efforts under the Research Program. Such payments of
[*] per quarter cannot be reduced or terminated early by THESEUS, regardless of
whether THESEUS seeks or requests NEORX's assistance, unless the Research
Program is terminated by NEORX. In addition, THESEUS shall pay for any travel
expenses or other extraordinary costs or expenses associated with the Research
Program that are beyond normal laboratory supplies (e.g. capital equipment). All
travel by NEORX personnel shall be mutually agreed upon in advance.
4.03 With respect to any patentable inventions (sole or joint) occurring in
the course of the Research Program being performed by THESEUS and NEORX:
(a) THESEUS shall have the nonexclusive right to use any inventions
in the Field with Linker Licensed Products and the exclusive right to use any
inventions in the Field with Annexin Licensed Products, and
(b) NEORX shall have the exclusive right to use any inventions
outside the Field and the nonexclusive right (with right to sublicense) to use
any inventions inside the Field with Linker Licensed Products.
4.04 NEORX and THESEUS shall have the right to publish or present
information related to the results of the Research Program; provided, however,
that the proposed publication or presentation is disclosed to the other party at
least one (1) month prior to submission, but not less than two (2) months prior
to, the proposed publication or presentation, the parties give due consideration
to filing any desired patent applications and consideration is given to the
authorship of the publications including representatives from both parties, if
appropriate.
V. TERM AND TERMINATION
5.01 The term of this Agreement shall commence on the Effective Date and
continue, unless terminated earlier, until the last to expire of any Royalty
Term. Upon expiration of the Royalty Term as to any Licensed Product, the
license for such Licensed Product shall become fully paid-up and nonexclusive.
5.02 Each party shall have the right to terminate this Agreement in case of
default by the other party with respect to any payment obligation or material
obligation hereunder and which default continues for fifteen (15) days, in the
case of a default in payment, or ninety (90) days, in the case of any other
default, after receipt of written notice of such default. Termination of this
Agreement shall be in addition to any other remedies available for default under
this Agreement, which remedies shall survive termination of this Agreement.
5.03 NEORX may terminate this Agreement upon thirty (30) days' notice in
the event THESEUS, within twelve (12) months after the Effective Date (a) does
not have at least three senior level employees actively working on product
development, research and development, or clinical trials on a full-time basis
for an Annexin Licensed Product and a Linker Licensed Product or (b) has not
initiated a phase II clinical trial for an Annexin Licensed Product.
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5.04 Termination or expiration of this Agreement shall not terminate any
accrued obligations, including THESEUS' obligation to pay in full the amount due
under Section 3.01, and the rights and obligations under Sections 3.02, 3.09,
8.02, 8.05, 8.06, 8.07 and 8.09, all of which shall survive termination or
expiration of this Agreement. Section 4.03 shall survive expiration (but not
termination) of this Agreement.
VI. WARRANTY
6.01 Each party represents to the other party that is has the authority to
enter into this Agreement.
6.02 NEORX MAKES NO REPRESENTATION OR WARRANTY WITH RESPECT TO THE LINKER
LICENSED PATENTS, ANNEXIN LICENSED PATENTS, OTHER NEORX LINKER TECHNOLOGY AND
NEORX ANNEXIN TECHNOLOGY, LINKER LICENSED PRODUCTS AND ANNEXIN LICENSED
PRODUCTS, EXPRESS OR IMPLIED, INCLUDING WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, PATENT ABILITY, ENFORCEABILITY, NONINFRINGEMENT OR THE
RIGHTS OF OTHERS, OR THE EXCLUSIVITY OF NEORX'S RIGHTS. IT IS RECOGNIZED AND
AGREED BY THESEUS THAT CERTAIN PATENTS ARE OWNED BY STANFORD UNIVERSITY, WHICH
WILL BE ACQUIRED DIRECTLY BY THESEUS, AND NOT THROUGH ANY RIGHTS HEREUNDER, THAT
NEORX'S INTEREST IN THE ANNEXIN LICENSED PATENTS MAY BE JOINTLY HELD WITH, OR
SUBJECT TO THE RIGHTS OF, OTHER PARTIES, INCLUDING THE UNIVERSITY OF WASHINGTON
AND THAT THE LICENSING OF ANY THIRD PARTY'S INTERESTS IN THE ANNEXIN LICENSED
PATENTS SHALL BE THE RESPONSIBILITY AND EXPENSE OF THESEUS AND SUBJECT TO THE
APPROVAL OF NEORX IF NEORX HAS AN OPTION FROM SUCH THIRD PARTY.
VII. PATENT MAINTENANCE AND INFRINGEMENT
7.01 NEORX shall, at its discretion, be responsible for all activities and
expenses with respect to maintaining and/or prosecuting the Linker Licensed
Patents throughout the world, including, but not limited to, USPTO
interferences, patent reexaminations, reissues, abandonment and any other patent
actions.
7.02 Subject to the rights of any NEORX licensor, NEORX shall, at its
discretion, be responsible for all activities with respect to maintaining and/or
prosecuting the Annexin Licensed Patents throughout the world; provided,
however, that NEORX shall keep THESEUS informed of such activities, conferring
with THESEUS upon request, and THESEUS shall promptly reimburse NEORX for all
expenses with respect to maintaining and/or prosecuting the Annexin Licensed
Patents.
7.03 Each party shall promptly notify the other party if it becomes aware
of any infringement of a Linker Licensed Patent or Annexin Licensed Patent by a
third party making, using or selling a product in the Field in the Licensed
Territory that is competitive with a Licensed Product of THESEUS then in
clinical trials or being sold and shall provide the other party with available
evidence of such infringement. In the event of such infringement and subject to
the rights of another NEORX licensee or licensor, THESEUS and, in the case of
the Linker Licensed Patents, NEORX's other licensees shall have the right, but
not the obligation, to bring any appropriate suit or action against the
infringer based on any claim of a patent licensed hereunder that specifically
covers the Licensed Product. The costs of any such action brought by THESEUS
shall be borne entirely by THESEUS and NEORX's other licensees, as they may
agree. If they are successful in abating the infringement, the parties bringing
the action shall retain any amount recovered from the infringer, whether by
judgment, award, decree or settlement. If they do not bring a suit or action
within ninety (90) days of written notice of such infringement, NEORX shall have
the right, but not the obligation, to bring any action, at its expense, against
the alleged infringer and retain any amount recovered from the infringer,
whether by judgment, award, decree or settlement.
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VIII. MISCELLANEOUS
8.01 THESEUS may not assign or otherwise transfer this Agreement without
the written consent of NEORX, except that THESEUS shall be the right to
sublicense in accordance with Article II and to assign this Agreement in its
entirety to the surviving entity or acquirer in the case of a merger or
acquisition of THESEUS if the surviving entity or acquirer agrees in writing to
be bound by the terms of this Agreement. And any attempted assignment or
transfer not in accordance with this Section 8.01 shall be null and void.
8.02 All information provided under this Agreement shall be subject to the
existing two-way Confidentiality Agreement dated October 15, 1997 between the
parties except that the obligations thereunder shall extend for five (5) years
past the expiration or termination of this Agreement and the parties shall not
be obligated to return Proprietary Information (as defined therein).
8.03 Any notice or other written statement required or permitted to be
given by the terms of this Agreement shall be deemed to have been duly make or
given upon mailing thereof from the United States by prepaid registered or
certified mail addressed to the other party at its address set forth below or
such other address as may be designated in writing by such other party.
TO: NEORX CORPORATION
000 Xxxx Xxxxxxxx Xxxxxx
Xxxxxxx, XX 00000
Attention: President
TO: THESEUS, LTD.
Xxx Xxxxxxxxx Xxxxxx
Xxxxxx, XX 00000
Attention: Xxxxx X. Xxxxx
8.04 This Agreement represents the entire understanding between the parties
and any amendments or modifications thereof shall be effective only if expressed
in a writing executed by both parties. This Agreement has been submitted to the
scrutiny of both parties and their counsel and shall be given a fair and
reasonable interpretation in accordance with the words hereof, without
consideration or weight being given to its being drafted, in whole or in part,
by or for one of the parties.
8.05 This Agreement is made on the basis of mutual confidence, and it is
understood that the differences, if any, during the life of this Agreement
should be freely discussed between the parties and solved in an amicable way.
Disputes regarding interpretation, understanding or performance of this
Agreement that cannot be solved by discussions between the parties, shall be
settled in the Courts of the State of Washington (as to which each party hereby
consents to jurisdiction and venue), with each party paying its own expenses.
8.06 THESEUS shall indemnify, defend and hold harmless NEORX from and
against all third party costs, claims, suits, expenses (including reasonable
attorneys' fees) and damages arising out of or resulting from any act or
omission by THESEUS relating to exercise of its rights and licenses under this
Agreement, including the making, using or selling of Licensed Products, provided
that NEORX gives reasonable notice to THESEUS of any such claims or action,
tenders the defense of such claim or action to THESEUS and assists THESEUS at
THESEUS' expense in defending such claim or action and does not compromise or
settle such claim or action without THESEUS' prior written consent. If, based on
a written opinion of legal counsel provided to NEORX and THESEUS, NEORX
determines that THESEUS is not providing an adequate defense of any matter with
respect to which THESEUS is obligated to defend and indemnify NEORX hereunder or
if representation of both NEORX and THESEUS by the same counsel presents an
actual or potential conflict of interest for the counsel, NEORX shall have the
right to engage counsel of its choice to defend such action, and THESEUS shall
reimburse NEORX for the costs and expenses (including reasonable attorneys'
fees) of such defense.
-9-
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
8.07 All payments hereunder shall be in U.S. dollars and paid to NEORX at
its principal place of business from a location in the United States, without
any deduction or withholding for or on account of any tax. All payments
hereunder are not creditable against any other payments due hereunder (e.g., not
creditable against royalties) unless expressly stated. Any past due payments
under this Agreement, except as provided in Section 3.01(e), shall accrue
interest at the "prime rate" of interest as quoted by THE WALL STREET JOURNAL
(WESTERN EDITION) (or if not published, another appropriate publication) for the
first business day of each month, plus four percent (4%) or the maximum rate
permitted by applicable law, whichever is less.
8.08 The parties hereunder are independent contractors and their
relationship shall not constitute a partnership, joint venture or agency.
Neither THESEUS nor NEORX shall have authority to make any statements,
representations or commitments of any kind, or to take any action, that shall be
binding on the other part, without the prior written consent of the party to be
bound.
8.09 THESEUS shall not export from the United States or reexport from any
country, or permit a third party to export or reexport, a technology or
technical information received under this Agreement to a country where such
export or reexpeort would be in violation of the U.S. Export Administration
Regulations.
8.10 This Agreement may be executed in two or more counterparts, each of
which shall be deemed an original, but all of which together shall constitute
one and the same instrument.
8.11 This Agreement shall be governed by and construed in accordance with
the laws of the State of Washington.
8.12 THESEUS shall keep the terms of this Agreement confidential. In the
event legal counsel to THESEUS reasonably concludes that a copy of this
Agreement needs to be filed with the Securities and Exchange Commission, THESEUS
shall confer with NEORX and request confidential treatment of such portions of
this Agreement as NEORX may reasonably request.
8.13 Unless otherwise agreed in writing by the parties, neither party
shall, without the prior written consent of the other part (which consent shall
not be unreasonably withheld or delayed), originate any publicity, news release
or public announcement, written or oral, whether to the public or the press,
relating to this Agreement or any amendment hereto, except only such
announcement as is required by law in the opinion of counsel for the party
intending to make such announcement. Any announcement shall be factual and shall
be provided in writing to the other party at least five (5) business days in
advance, where possible, so that the other party may have an opportunity to
comment on the announcement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed in duplicate by their authorized representative.
NEORX CORPORATION THESEUS, LTD.
By: /s/Xxxxxxx X. Xxxxxxxx By: /s/Xxxxxx Xxxxxx
----------------------------------- ----------------------
Xxxxxxx X. Xxxxxxxx X. Xxxxxx
Vice President & CFO Vice President and Director
-10-
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 1
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00001 CCP 065,011 1987/06/19 1990/01/30 4,897,225
WRX 00001 DCP 065,017 1987/06/19 1992/12/29 5,175,343
WRX 00000 XXX 423,180 1989/10/18 1991/08/06 5,037,630
WRX 00000 XXX 576,343 1990/08/31 1993/09/07 5,242,679
WRX 00000 XXX 650,834 1991/02/04 1992/04/09 5,120,526
WRX 00001 JCP 090,609 1993/07/12 1996/09/17 5,556,982
WRX 00001 KPC PCI/US94/0 1994/07/12
7732
WRX 00001 LCO 679,072 1996/07/12 1998/05/26 5,756,685
WRX 00001 HCO 083,902 1998/05/22
WRX 00001 CA1 499,428 1986/01/13 1995/06/27 1,336,076
WRX 00001 CA2 2,165,537 1994/07/12
PCT
WRX 00001 EP1 86100360.6 1986/01/13 1991/08/21 0 168 256 81
WRX 00001 EP2 94923409.0 1994/07/12
PCT
WRX 00001 JP1 61-6155 1986/01/14 1995/07/10 1,947,602
WRX 00001 JP2 4-290223 1992/10/28 1996/09/18 2092986
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00001 CCP METAL RADIONUCLIDE LABELED PROTEINS FOR DIAGNOSIS AND THERAPY ISSUED
WRX 00001 DCP METAL RADIONUCLIDE LABELED PROTEINS FOR DIAGNOSIS AND THERAPY ISSUED
WRX 00001 GDV METAL RADIONUCLIDE LABELED PROTEINS FOR DIAGNOSIS AND THERAPY ISSUED
WRX 00001 HDV METAL RADIONUCLIDE LABELED PROTEINS FOR DIAGNOSIS AND THERAPY ISSUED
WRX 00001 JDV METHOD OF PRODUCING METAL RADIONUCLIDE LABELED PROTEINS FOR ISSUED
DIAGNOSIS AND THERAPY
WRX 00001 JCP METAL RADIONUCLIDE LABELED PROTEINS FOR DIAGNOSIS AND THERAPY ISSUED
WRX 00001 KPC METAL RADIONUCLIDE LABELED PROTEINS FOR DIAGNOSIS AND THERAPY NATIONAL
PHASE
WRX 00001 LCO METAL RADIONUCLIDE LABELED PROTEINS, LIGANDS AND ANTI-LIGANDS ISSUED
FOR DIAGNOSIS AND THERAPY
WRX 00001 HCO METAL RADIONUCLIDE LABELED PROTEINS, LIGANDS AND ANTI-LIGANDS PENDING
FOR DIAGNOSIS AND THERAPY
WRX 00001 CA1 METAL RADIONUCLIDE LABELED PROTEINS FOR DIAGNOSIS AND THERAPY ISSUED
WRX 00001 CA2 METAL RADIONUCLIDE LABELED PROTEINS FOR DIAGNOSIS AND THERAPY PENDING
WRX 00001 EP1 METAL RADIONUCLIDE LABELED PROTEINS FOR DIAGNOSIS AND THERAPY ISSUED AT BE FR SE
HO CH L LI LO
DE IF GI
WRX 00001 EP2 METAL RADIONUCLIDE LABELED PROTEINS FOR DIAGNOSIS AND THERAPY PENDING
WRX 00001 JP1 METAL RADIONUCLIDE LABELED PROTEINS FOR DIAGNOSIS AND THERAPY ISSUED
WRX 00001 JP2 METAL RADIONUCLIDE LABELED PROTEINS FOR DIAGNOSIS AND THERAPY ISSUED
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 2
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00002 OCD 137,952 1987/12/23 1991/09/03 5,045,303
WRX 00002 ECO 338,497 1989/04/13 1989/12/05 4,885,153
WRX 00002 GCO 627,806 1990/12/12 1993/05/25 5,213,787
WRX 00002 MCO 764,001 1991/09/23 1997/03/11 5,609,848
WRX 00002 EP 1 86303757.8 1986/05/16 1993/03/24 EP 0 203 764
WRX 00002 JP 1 1986- 1986/06/13
136,324
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00002 OCD RADIOHOLOGENATED SMALL MOLCULES FOR PROTEIN LABELING ISSUED
WRX 00002 ECO RADIOHOLOGENATED PROTEIN ISSUED
WRX 00002 GCO RADIOHOLOGENATED SMALL MOLCULES FOR PROTEIN LABELING ISSUED
WRX 00002 MCO RADIOHOLOGENATED SMALL MOLCULES FOR PROTEIN LABELING ISSUED
WRX 00002 EP 1 RADIOHOLOGENATED SMALL MOLCULES FOR PROTEIN LABELING ISSUED
WRX 00002 JP 1 RADIOHOLOGENATED SMALL MOLCULES FOR PROTEIN LABELING PENDING
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 7
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00007 APA 838,992 1986/03/12 1989/10/31 4,877,868
WRX 00007-CA 1 530,263-3 1987/02/20 1991/02/19 1,280,365
WRX 00007-EP 1 87300426-1 1987/01/19 1996/09/04 0237150
WRX 00007-JP 1 62-54296 1987/03/11 1996/03/19 2,030732
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00007 APA RADIONUCLIDE ANITBODY COUPLING ISSUED
WRX 00007-CA 1 IMPROVED RADIONUCLIDE ANTIBODY COUPLING ISSUED
WRX 00007-EP 1 IMPROVED RADIONUCLIDE ANTIBODY COUPLING ISSUED FR DE IT GB
WRX 00007-JP 1 IMPROVED RADIONUCLIDE ANTIBODY COUPLING ISSUED
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 12
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 80012 BDP 172,804 1988/03/23 1990/10/23 4,965,392
WRX 80012 DBV 494,191 1990/03/15 1992/02/25 5,091,514
WRX 80012 FCO 075,305 1993/06/11 1997/10/28 5,681,927
WRX 80012 HCO 434,961 1995/05/08 1997/04/01 5,616,692
WRX 80012 AU1 13751/88 1988/03/25 1988/03/25 617938
WRX 80012 CA1 562,452 1988/03/25 1994/03/29 1,328,147
WRX 80012 EP1 88104755.9 1988/03/24 1994/05/08 0 284 071 81
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 80012 BDP CHELATING COMPOUNDS FOR METAL-RADIONUCLIDE LABELED PROTEINS ISSUED
WRX 80012 DBV METAL-RADIONUCLIDE-LABELED PROTEINS AND GLYCOPROTIENS FOR ISSUED
DIAGNOSIS AND THERAPY
WRX 80012 FCO METAL-RADIONUCLIDE-LABELED PROTEINS AND GLYCOPROTIENS FOR ISSUED
DIAGNOSIS AND THERAPY
WRX 80012 HCO METAL-RADIONUCLIDE-LABELED PROTEINS AND GLYCOPROTIENS FOR ISSUED
DIAGNOSIS AND THERAPY
WRX 80012 AU1 METAL-RADIONUCLIDE-LABELED PROTEINS AND GLYCOPROTIENS FOR ISSUED
DIAGNOSIS AND THERAPY
WRX 80012 CA1 METAL-RADIONUCLIDE-LABELED PROTEINS AND GLYCOPROTIENS FOR ISSUED
DIAGNOSIS AND THERAPY
WRX 80012 EP1 METAL-RADIONUCLIDE-LABELED PROTEINS AND GLYCOPROTIENS FOR ISSUED
DIAGNOSIS AND THERAPY
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 14
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00012 BCP 172,004 1988/03/23 1990/10/23 4,965,392
WRX 00000 XXX 494,191 1990/03/13 1992/02/25 5,091,514
WRX 00012 FOO 075,305 1993/06/11 1997/10/28 5,681,927
WRX 00012 HCO 436,961 1995/05/06 1997/04/01 5,616,692
WRX 00012-AU1 13751/88 1988/03/25 1988/03/25 619738
WRX 00012-CA1 562,452 1988/03/25 1994/03/29 1,328,147
WRX 00012-EP1 88104755.9 1988/03/24 1994/06/08 0 284 071 81
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00012 BCP CHELATING COMPOUNDS FOR METAL-RADIONUCLIDE LABELED PROTEINS ISSUED
WRX 00000 XXX METAL-RADIONUCLIDE-LABELED PROTEINS AND GLYCOPROTEINS FOR ISSUED
DIAGNOSIS AND THERAPY
WRX 00012 FOO METAL-RADIONUCLIDE-LABELED PROTEINS AND GLYCOPROTEINS FOR ISSUED
DIAGNOSIS AND THERAPY
WRX 00012 HCO METAL-RADIONUCLIDE-LABELED PROTEINS AND GLYCOPROTEINS FOR ISSUED
DIAGNOSIS AND THERAPY
WRX 00012-AU1 METAL-RADIONUCLIDE-LABELED PROTEINS AND GLYCOPROTEINS FOR ISSUED
DIAGNOSIS AND THERAPY
WRX 00000-XX0 XXXXX-XXXXXXXXXXXX-XXXXXXX PROTEINS AND GLYCOPROTEINS FOR ISSUED AT BE FR DE
DIAGNOSIS AND THERAPY NE IT LU SE
CH GB
WRX 00012-EP1 METAL-RADIONUCLIDE-LABELED PROTEINS AND GLYCOPROTEINS FOR ISSUED FR DE IT GB
DIAGNOSIS AND THERAPY
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 20
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00020 APA 157,284 1988/02/17 1993/04/13 5,202,451
WRX 00020 OCO 532,041 1995/09/21 1997/02/25 5,608,028
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00020 APA ARCHIMERIC RADIOMETAL CHELATING COMPOUNDS ISSUED
WRX 00020 OCO ARCHIMERIC RADIOMETAL CHELATING COMPOUNDS ISSUED
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 26
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00026 APA 178,418 1988/04/06 1991/10/15 5,057,301
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00026 APA MODIFIED CELLULAR SUBSTRATES USED AS LINKERS FOR INCREASED ISSUED
DELL RETENTION OF DIAGNOSTIC AND THERAPEUTIC AGENTS
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 28
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00028 APA 187,714 1988/04/29 1991/10/22 5,059,541
WRX 00028-EP1 89107823 0 1989/04/28 1996/01/03 339 684 81
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00028 APA MINIMAL DERIVATIZATION OF PROTEINS ISSUED
WRX 00028-EP1 MINIMAL DERIVATIZATION OF PROTEINS ISSUED FR DE IT GB
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 29
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00029 APA 201,134 1988/05/31 1991/01/29 4,988,496
WRX 00000 XXX 589,469 1990/09/27 1991/12/24 5,075,099
WRX 00029 CDV 404,121 1991/12/06 1995/07/25 5,436,352
WRX 00000 XXX 459,414 1995/06/02 1997/04/29 5,625,075
WRX 00029-EP1 89109756.0 1989/05/30 1993/08/11 0 344 724 81
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00029 APA METAL REDIONUCLIDE CHELATING COMPOUNDS FOR ISSUED
IMPROVED CHELATION KINETICS
WRX 00029 BDV METAL REDIONUCLIDE CHELATING COMPOUNDS FOR ISSUED
IMPROVED CHELATION KINETICS
WRX 00029 CDV METAL REDIONUCLIDE CHELATING COMPOUNDS FOR ISSUED
IMPROVED CHELATION KINETICS
WRX 00000 XXX METAL REDIONUCLIDE CHELATING COMPOUNDS FOR ISSUED
IMPROVED CHELATION KINETICS
WRX 00029-EP1 METAL REDIONUCLIDE CHELATING COMPOUNDS FOR ISSUED FR DE IT GB
IMPROVED CHELATION KINETICS
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 32
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00032 APA 232,337 1988/08/15 1992/08/04 5,135,736
WRX 00032 DCP 390,241 1989/08/07 1992/12/08 5,169,933
WRX 00032-CA1 608,198 1989/08/11 1995/02/21 1,334,513
WRX 00032-EP1 89250014.1 1989/08/14 1992/12/13 E 0 359 347
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00032 APA COVALENTLY-LINKED COMPLEXES AND METHOD FOR ENHANCED ISSUED
CYTOTOXICITY AND IMAGING
WRX 00032 DCP COVALENTLY-LINKED COMPLEXES AND METHOD FOR ENHANCED ISSUED
CYTOTOXICITY AND IMAGING
WRX 00032-CA1 COVALENTLY-LINKED COMPLEXES AND METHOD FOR ENHANCED ISSUED
CYTOTOXICITY AND IMAGING
WRX 00032-EP1 COVALENTLY-LINKED COMPLEXES AND METHOD FOR ENHANCED ISSUED FR DE IT GB
CYTOTOXICITY AND IMAGING
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 35
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00035 BPC PCT/US89/04 1989/09/29
266
WRX 00035 CCD 830,973 1992/02/10 1992/12/15 5,171,563
WRX 00035-EP1 89912052.1 1989/09/29 1994/11/09 EP 0 436 664
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00035 BPC CLEAVABLE LINKERS FOR THE REDUCTION OF NON-TARGET ORGAN NATIONAL
RETENTION OF IMMUNOCONJUGATES PHASE
WRX 00035 CCD CLEAVABLE LINKERS FOR THE REDUCTION OF NON-TARGET ORGAN ISSUED
RETENTION OF IMMUNOCONJUGATES
WRX 00035-EP1 CLEAVABLE LINKERS FOR THE REDUCTION OF NON-TARGET ORGAN ISSUED FR DE GB
RETENTION OF IMMUNOCONJUGATES
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 37
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00037 BCP 415,154 1989/09/29 1991/11/19 5,066,789
WRX 00037 OPC PCT/US89/04267 1989/09/29
WRX 00037 HCO 332,045 1994/11/01 1997/05/27 5,633,351
WRX 00037 ICO 342,789 1994/11/21 1996/05/28 5,521,290
WRX 00000 XXX 648,833 1996/05/16
WRX 00037-EP1 89911718.8 1989/09/29 1995/11/08 0 434 765
WRX 00037-JP1 510891/89 1989/09/29
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00037 BCP TARGETING PROTEIN-DIAGNOSTIC/THERAPEUTIC AGENT CONJUGATES ISSUED
HAVING SCHIFF BASE LINKAGES
WRX 00037 OPC TARGETING PROTEIN-DIAGNOSTIC/THERAPEUTIC AGENT CONJUGATES NATIONAL PHASE
HAVING SCHIFF BASE LINKAGES
WRX 00037 HCO TARGETING PROTEIN-DIAGNOSTIC/THERAPEUTIC AGENT CONJUGATES ISSUED
HAVING SCHIFF BASE LINKAGES
WRX 00037 ICO TARGETING PROTEIN-DIAGNOSTIC/THERAPEUTIC AGENT CONJUGATES ISSUED
HAVING SCHIFF BASE LINKAGES
WRX 00037 JDV TARGETING PROTEIN-DIAGNOSTIC/THERAPEUTIC AGENT CONJUGATES ALLOWED
HAVING SCHIFF BASE LINKAGES
WRX 00037-EP1 TARGETING PROTEIN-DIAGNOSTIC/THERAPEUTIC AGENT CONJUGATES ISSUED FR DE GB
HAVING SCHIFF BASE LINKAGES
WRX 00037-JP1 TARGETING PROTEIN-DIAGNOSTIC/THERAPEUTIC AGENT CONJUGATES PUBLISHED
HAVING SCHIFF BASE LINKAGES
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL HAS
BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 44
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00044 CCD 018,482 1993/02/16 1995/02/21 5,391,723
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00044 CCD OLIGONUCLEOTIDE CONJUGATES ISSUED
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 45
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00045 OCP 454,295 1989/12/19 1991/05/21 5,017,693
WRX 00000 XXX 678,535 1991/03/29 1992/08/25 5,141,648
WRX 00045 FCO 242,702 1994/05/13 1996/10/08 5,563,250
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00045 OCP CLEAVABLE CONJUGATES FOR THE DELIVERY AND RELEASE OF AGENTS ISSUED
IN NATIVE FORM
WRX 00000 XXX METHODS FOR ISOLATING COMPOUNDS USING CLEAVABLE LINKER BOUND ISSUED
MATRICES
WRX 00045 FCO CLEAVABLE CONJUGATES FOR THE DELIVERY AND RELEASE OF AGENTS ISSUED
IN NATIVE FORM
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 47
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00047 BPC PCT/US90/03 1990/06/15
425
WRX 00047 CCP 577,959 1990/09/05 1992/11/17 5,164,176
WRX 00000 XXX 973,048 1992/11/06 1993/10/05 5,250,666
WRX 00047 FPC PCT/US94/07 1994/07/12
733
WRX 00047 XXX 591,560 1994/07/12
PCT
WRX 00047-AU1 59567/90 1990/06/15 1994/07/13 AU 645258
WRX 00047-CA1 2,031,528 1990/06/15 1997/03/18 2,031,528
(PCT
FILING DT)
WRX 00047-CA2 2,165,052 1994/07/12
PCI
WRX 00047-EP1 90911153.6 1990/06/15 1995/11/15 0 431 146 81
WRX 00047-EP2 94924458.6 1994/07/12
PCT
WRX 00047-JP1 2-510108 1990/06/15
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00047 BPC RADIONUCLIDE METAL CHELATES FOR THE RADIOLABELING OF NATIONAL PHASE
PROTEINS
WRX 00047 CCP RADIONUCLIDE METAL CHELATES FOR THE RADIOLABELING OF ISSUED
PROTEINS
WRX 00000 XXX RADIONUCLIDE METAL CHELATES FOR THE RADIOLABELING OF ISSUED
PROTEINS
WRX 00047 FPC RADIONUCLIDE METAL CHELATES FOR THE RADIOLABELING OF NATIONAL PHASE
LIGANDS, ANTI-LIGANDS OR OTHER PROTEINS
WRX 00047 XXX RADIONUCLIDE METAL CHELATES FOR THE RADIOLABELING OF ALLOWED
LIGANDS, ANTI-LIGANDS OR OTHER PROTEINS
WRX 00047-AU1 RADIONUCLIDE METAL CHELATES FOR THE RADIOLABELING OF ISSUED
PROTEINS
WRX 00047-CA1 RADIONUCLIDE METAL CHELATES FOR THE RADIOLABELING OF ISSUED
PROTEINS
WRX 00047-CA2 RADIONUCLIDE METAL CHELATES FOR THE RADIOLABELING OF PENDING
LIGANDS, ANTI-LIGANDS OR OTHER PROTEINS
WRX 00047-EP1 RADIONUCLIDE METAL CHELATES FOR THE RADIOLABELING OF ISSUED FR DE IT GB
PROTEINS
WRX 00047-EP2 RADIONUCLIDE METAL CHELATES FOR THE RADIOLABELING OF PENDING
LIGANDS, ANTI-LIGANDS OR OTHER PROTEINS
WRX 00047-JP1 RADIONUCLIDE METAL CHELATES FOR THE RADIOLABELING OF PUBLISHED
PROTEINS
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 48
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00048 APA 373,426 1992/06/30 1992/03/10 5,094,848
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00048 APA CLEAVABLE DIPHOSPHATE AND AMIDATED DIPHOSPHATE LINKERS ISSUED
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 55
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00055 APA 457,480 1989/12/29 1992/05/12 5,112,953
WRX 00055 BPC PCT/US90/07 1990/12/27
595
WRX 00055 CDP 641,158 1991/01/14 1992/12/29 5,175,257
WRX 00055-CA1 2,048,654 1990/12/27
WRX 00055-JP1 3-502908 1990/12/27
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00055 APA RADIOLABELED PROTEINS FOR DIAGNOSTIC AND ISSUED
THERAPEUTIC USE
WRX 00055 BPC RADIOLABELED PROTEINS FOR DIAGNOSTIC AND NATIONAL PHASE
THERAPEUTIC USE
WRX 00055 CDP RADIOLABELED PROTEINS FOR DIAGNOSTIC AND ISSUED
THERAPEUTIC USE
WRX 00055-CA1 RADIOLABELED PROTEINS FOR DIAGNOSTIC AND PENDING
THERAPEUTIC USE
WRX 00055-JP1 RADIOLABELED PROTEINS FOR DIAGNOSTIC AND PUBLISHED
THERAPEUTIC USE
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 60
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00060 APA 591,104 1990/09/28 1993/10/12 5,252,721
WRX 00060 CPC PCT/US94/09 1994/08/17
292
WRX 00060 DDO 393,882 1995/02/22 1997/11/04 5,684,137
WRX 00060-CA1 2,165,538 1994/08/17
PCT
WRX 00060-EP1 94925919.6 1994/08/17
PCT
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00060 APA S3W CHELATING COMPOUNDS ISSUED
WRX 00060 CPC S3W CHELATING COMPOUNDS FOR THE RADIOLABELING OF LIGANDS, NATIONAL
ANTI-LIGANDS OR OTHER PROTEINS PHASE
WRX 00060 DDO S3W CHELATING COMPOUNDS FOR THE RADIOLABELING OF LIGANDS, ISSUED
ANTI-LIGANDS OR OTHER PROTEINS
WRX 00060-CA1 S3W CHELATING COMPOUNDS FOR THE RADIOLABELING OF LIGANDS, PENDING
ANTI-LIGANDS OR OTHER PROTEINS
WRX 00060-EP1 S3W CHELATING COMPOUNDS FOR THE RADIOLABELING OF LIGANDS, PENDING PENDING
ANTI-LIGANDS OR OTHER PROTEINS
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 63
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00063 APA 590,180 1990/09/28 1992/12/29 5,175,256
WRX 00000 XXX 994,939 1992/12/22 1995/03/21 5,399,710
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00063 APA PROTEIN LABELING REAGENTS ISSUED
WRX 00063 BDV PROTEIN LABELING REAGENTS ISSUED
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 64
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00064 CPC PCI/US91/071 1991/09/27
43
WRX 00064 DCO 071,357 1993/06/03 1996/08/27 5,549,683
WRX 00064-CA1 2,077,309 1992/09/01
WRX 00064-EP1 91918218.8 1991/09/27 1997/05/14 0510132
WRX 00064-JP1 324565/1992 1991/09/27
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00064 CPC CHEMICALLY DEFINED POLYMERIC CARRIERS FOR RELEASE OF NATIONAL
COVALENTLY LINKED AGENTS PHASE
WRX 00064 DCO CHEMICALLY DEFINED POLYMERIC CARRIERS FOR RELEASE OF ISSUED
COVALENTLY LINKED AGENTS
WRX 00064-CA1 POLYMERIC CARRIERS FOR RELEASE OF COVALENTLY LINKED AGENTS PENDING
WRX 00064-EP1 CHEMICALLY DEFINED POLYMERIC CARRIERS FOR RELEASE OF ISSUED FR DE GB
COVALENTLY LINKED AGENTS
WRX 00064-JP1 CHEMICALLY DEFINED POLYMERIC CARRIERS FOR RELEASE OF PENDING
COVALENTLY LINKED AGENTS
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 74
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00074 BPC PCT/US95/06 1995/05/18
522
WRX 00074 CCP 463,232 1995/06/05
WRX 00074-CA1 2,190,727 1995/05/18
WRX 00074-EP1 95922105.0 1995/05/18
WRX 00074-JP1 7-530508 1995/05/18
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00074 BPC AROMATIC AMINE SUBSTITUTED BRIDGED NITROGEN NATIONAL
AND SULFUR DONOR ATOM LIGANDS FOR IMAGING PHASE
WRX 00074 CCP AROMATIC AMINE SUBSTITUTED BRIDGED NITROGEN PENDING
AND SULFUR DONOR ATOM LIGANDS FOR IMAGING
WRX 00074-CA1 AROMATIC AMINE SUBSTITUTED BRIDGED NITROGEN PENDING
AND SULFUR DONOR ATOM LIGANDS FOR IMAGING
WRX 00074-EP1 AROMATIC AMINE SUBSTITUTED BRIDGED NITROGEN PENDING
AND SULFUR DONORATOM LIGANDS FOR IMAGING
WRX 00074-JP1 AROMATIC AMINE SUBSTITUTED BRIDGED NITROGEN PENDING
AND SULFUR DONOR ATOM LIGANDS FOR IMAGING
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 73
WRX REF # SERIAL # FILING DATE ISSUE DATE PATENT #
--------- -------- ----------- ---------- --------
WRX 00073 DPC PCT/US95/00 1995/01/23
953
WRX 00073 EPC PCT/US95/07 1995/06/13
599
WRX 00073 FPC PCT/US95/15 1995/12/06
651
WRX 00073 HCP 690,184 1996/07/26
WRX 00073 JCP PCT/US97/12 1997/07/24
977
WRX 00073-CA1 2,180,555 1995/01/23
(PCT)
WRX 00073-CA2 2,185,349 1995/01/23
(PCT)
WRX 00073-CA3 2,206,274 1995/12/06
WRX 00073-EP1 95913955.1 1995/01/23
(PCT)
WRX 00073-EP2 95923885.8 1995/06/13
WRX 00073-EP3 95942562.0 1995/12/06
WRX 00073-JP1 519,734/95 1995/01/23
(PCT)
WRX 00073-JP2 8-502468 1995/06/13
(PCT)
WRX 00073-JP3 8-517741 1995/12/06
WRX REF # TITLE STATUS EP ENTRY
--------- ----- ------ --------
WRX 00073 DPC RADIOLABELED ANNEXINS NATIONAL PHASE
WRX 00073 EPC RADIOLABELED ANNEXIN-GALACTOSE CONJUGATES NATIONAL PHASE
WRX 00073 FPC RADIOLABELED ANNEXIN-GALACTOSE CLUSTER CONJUGATES NATIONAL PHASE
WRX 00073 HCP RADIOLABELED ANNEXINS PENDING
WRX 00073 JCP RADIOLABELED ANNEXINS PENDING
WRX 00073-CA1 RADIOLABELED ANNEXINS PENDING
WRX 00073-CA2 RADIOLABELED ANNEXIN-GALACTOSE CONJUGATES PENDING
WRX 00073-CA3 RADIOLABELED ANNEXIN-GALACTOSE CLUSTER CONJUGATES PENDING
WRX 00073-EP1 RADIOLABELED ANNEXINS PENDING
WRX 00073-EP2 RADIOLABELED ANNEXIN-GALACTOSE CONJUGATES PENDING
WRX 00073-EP3 RADIOLABELED ANNEXIN-GALACTOSE CLUSTER CONJUGATES PENDING
WRX 00073-JP1 RADIOLABELED ANNEXINS PUBLISHED
WRX 00073-JP2 RADIOLABELED ANNEXIN-GALACTOSE CONJUGATES PENDING
WRX 00073-JP3 RADIOLABELED ANNEXIN-GALACTOSE CLUSTER CONJUGATES PENDING
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
SCHEDULE A - THESEUS
LINKER PATENT SCHEDULE - LINEAGE 73
SCHEDULE C
LINKER LICENSED PRODUCTS
None currently.
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
ADDENDUM TO NEORX THESEUS AGREEMENT: COLLABORATIVE RESEARCH ACTIVITIES
1. Provide technical support and assistance for GMP production of a Tc-99m
Annexin V kit and components incorporating lyphilized Annexin V at a 1 mg
nominal fill using curent NeoRx radiotechnetium labeling technology. This will
use Tc-99m Veriuma technology for first generation Annexin V product. Duration 6
months.
2. Attempt to develop techniques for Tc-99m labeling of Annexin V which do not
require final column separation step. Goals should be >85% yield with remainder
of radioactivity excreted by kidneys. Duration 18 months.
3. Attempt to develop techniques for Tc-99m labeling techniques which are
effective with as little as 100 micrograms of Annexin V, providing much
increased specific activity of Tc-99m annexin V for injection. Yield, purity and
in vivo phosphatidyl serine targeting are to be maintained comparable to
readioiodine or Verluma kit standards. Duration 18 months.
5. Provide technical support and advice to Theseus in the development of
Tc-99m Leukomate in the same kit format as Verluma using licensed NeoRx labeling
technology. Duration 3 months.
6. Other research activities as mutually agreed upon that fit within the
quarterly research payment.
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
AMENDMENT ONE TO LICENSE AGREEMENT
WHEREAS, this Amendment One amends that certain License Agreement dated
August 7, 1998, by and between NeoRx Corporation (hereinafter "NeoRx"), a
corporation organized under the laws of the State of Washington, having a place
of business at 000 Xxxx Xxxxxxxx Xxxxxx, Xxxxxxx, Xxxxxxxxxx 00000, and Theseus,
Ltd. (hereinafter "Theseus"), a corporation organized under the laws of the
State of Delaware, having a place of business at Xxx Xxxxxxxxx Xxxxxx, Xxxxxx,
Xxxxxxxxxxxxx 00000, and
WHEREAS, the parties are desirous of amending certain terms as are set out
below, said modifications to be effective August 7, 1999.
NOW, THEREFORE, the August 7, 1998 License Agreement shall be amended as
follows:
Paragraph 2.05 shall be amended to extend the period of time in which NeoRx
provides assistance to Theseus regarding Boehringer Ingeheim technology, and
shall read as follows:
"NeoRx shall provide reasonable assistance to Theseus, upon
Theseus' request and at Theseus' expense, for a period of
time up to and including August 7, 2000, in seeking other
rights to technology owned or controlled by Boehringer
Ingelheim that may be useful in connection with Annexin
Licensed Products."
Paragraph 3.01(d) shall be amended to provide for cash payment only, and shall
read as follows:
"[*] three (3) years after the Effective Date; and"
Paragraph 3.05(a)(i) shall be amended to modify the percentage rate, and shall
read as follows:
"[*] of aggregate annual Net Sales of all such Annexin Licensed Products up
to and including [*] and"
All other terms and conditions of the License Agreement dated August 7,
1998 shall remain in full force and effect, as stated.
Amendment One Effective August 7, 1999.
NeoRx Corporation
By: /s/ Xxxxxxx X. Xxxxxxxx
-------------------------------------------
Xxxxxxx X. Xxxxxxxx
President and Chief Operating Officer
Theseus, Ltd.
By: /s/ Xxxxxx Xxxxxx
-------------------------------------------
Its Vice President
----------------------------------
