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EXHIBIT 10.35
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement") is effective as of August
1st, 1997 (the "EFFECTIVE DATE"), by and between THE XXXXX XXXXXXX UNIVERSITY,
a Maryland corporation having a principal place of business at 0000 X. Xxxxxxxx
Xxxxxx, Xxxxx 0-000, Xxxxxxxxx, XX 00000 (hereinafter "JHU") and GERON
CORPORATION, a Delaware corporation having a principal place of business at 000
Xxxxxxxxxxxx Xxxxx, Xxxxx Xxxx, Xxxxxxxxxx 00000 (hereinafter the "Company").
WITNESSETH
WHEREAS, as a center for research and education, JHU is interested in
licensing PATENT RIGHTS and LICENSED MATERIALS (hereinafter defined) in a
manner that will benefit the public by facilitating the distribution of useful
products and the utilization of new methods but is without capacity to
commercially develop, manufacture, and distribute any such products or methods;
and
WHEREAS, a valuable invention entitled [*] and valuable materials were
developed during the course of research conducted by Drs. Xxxx Xxxxxxxx and
Xxxxxxx Xxxxxxxxx (hereinafter "Inventors"); and
WHEREAS, JHU has acquired through assignment from the Inventors all
rights, title, and interest in said valuable invention; and
WHEREAS, Company desires to develop, manufacture, use, distribute for
commercial sale, and sell such products and processes throughout the world;
NOW, THEREFORE, in consideration of the foregoing premises and the
following mutual covenants, and other good and valuable consideration, the
receipt of which is hereby acknowledged, and intending to be legally bound
hereby, the parties agree as follows:
ARTICLE 1
DEFINITIONS
1.1. "AFFILIATED COMPANY" or "AFFILIATED COMPANIES" shall mean any
corporation, company, partnership, joint venture, or other entity which
controls, is controlled by, or is under common control with the Company. For
purposes of this Paragraph 1.1, "control" shall mean (a) in the case of
corporate entities, the direct or indirect ownership of at least one-half of
the stock or participating shares entitled to vote for the election of
directors or the power to direct the management and policies of such
corporation, and (b) in the case of a partnership, the power to direct the
management and policies of such partnership.
1.2. "COMBINATION PRODUCT ADJUSTMENT" shall mean the following: in
the event a LICENSED PRODUCT(S) or LICENSED SERVICE(S) is sold in the form of a
combination product or combination service utilizing one or more active
components in addition to a LICENSED PRODUCT(S) or LICENSED SERVICE(S), NET
SALES or NET SERVICE REVENUES for such combination product or combination
service will be adjusted by multiplying actual NET SALES or NET SERVICE
REVENUES of such combination product or combination service by the fraction
A/(A + B), where A is the average invoice price of the LICENSED PRODUCT(S) or
LICENSED SERVICE(S), if sold separately, and B is the average invoice price of
any other active component(s) in the combination, if sold separately, in each
case during the applicable reporting period in the country in which the sale of
the combination product was made or the combination service was provided. If,
on a country-by-country basis, the other active component(s) in the combination
are not sold separately in said country, NET SALES or NET SERVICE REVENUES
shall be calculated by multiplying actual NET SALES or NET SERVICE REVENUES of
such combination product or combination service by the fraction A/C, where A is
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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the average invoice price of the LICENSED PRODUCT(S) or LICENSED SERVICE(S), if
sold separately, and C is the average invoice price of the combination product
or combination service in each case during the applicable reporting period in
the country in which the sale of the combination product was made. If, on a
country-by-country basis, neither (i) the LICENSED PRODUCT(S) or the LICENSED
SERVICE(S), nor (ii) the other active component(s) of the combination product
or the combination service is sold separately in said country, NET SALES or NET
SERVICE REVENUES for such combination product or combination service shall be
determined by the parties in good faith based on the relative fair market
values of the active components as determined by mutual agreement of the
parties.
1.3. "EMBRYONIC GERM CELL" or "EG CELL" shall mean a human cell
isolated from the gonadal ridge of the embryo or in the process of migrating to
colonize the gonadal ridge which (i) possesses a normal karyotype, (ii) has
replicative immortality as demonstrated by stable telomeres over multiple
passages and expresses telomerase activity, (iii) has the capacity to
differentiate into endoderm, mesoderm, and ectoderm-derived tissues as
demonstrated by histological analysis of teratomas, and (iv) has appropriate
histochemical and molecular markers (including, but not limited to, alkaline
phosphatase and appropriate SSEA and/or TRA antigens).
1.4. "EMBRYONIC STEM CELL" or "ES CELL" shall mean a human cell
isolated from the inner cell mass of the blastocyst which (i) possesses a
normal karyotype, (ii) has replicative immortality as demonstrated by stable
telomeres over multiple passages and expresses telomerase activity, (iii) has
the capacity to differentiate into endoderm, mesoderm, and ectoderm-derived
tissues as demonstrated by histological analysis of teratomas, and (iv) has
appropriate histochemical and molecular markers (including, but not limited to,
alkaline phosphatase and appropriate SSEA and TRA antigens).
1.5. "EXCLUSIVE LICENSE" shall mean a grant by JHU to Company of
its entire right and interest in the PATENT RIGHTS, the LICENSED MATERIALS, and
the RETAINED MATERIALS, subject to (i) the retained right of JHU to make, have
made, provide, and use for its and The Xxxxx Xxxxxxx Health Systems' own
non-commercial educational and research purposes LICENSED PRODUCT(S) and
LICENSED SERVICES, and (ii) the right of JHU to distribute RETAINED MATERIALS
to other academic researchers for the sole purpose of non-commercial research.
JHU shall not distribute the RETAINED MATERIALS to other academic researchers
as permitted under the preceding sentence unless and until each such academic
researcher and the institution with which such researcher is affiliated has
agreed to grant Company: (i) at Company's sole option and discretion, either a
royalty-bearing exclusive license, such royalty not to exceed [*] percent
of sales under such license, or a royalty-free, non-exclusive license to make,
have made, use, sell, have sold, or import products and services under any
intellectual property or tangible materials arising from such academic research
utilizing the RETAINED MATERIALS; and (ii) the same rights with respect to any
publications of such academic researcher which describe the results of his or
her research using the RETAINED MATERIALS as Company has concerning the
publications of JHU and the Inventors under Paragraph 10.10. JHU shall be
deemed to have complied with this Paragraph 1.5 if JHU distributes the RETAINED
MATERIALS to other academic researchers under a materials transfer agreement in
substantially the form attached hereto as Exhibit 1.5 or as otherwise agreed in
writing by Company and JHU. JHU retains the right to use the RETAINED MATERIALS
to isolate genetic material solely for non-commercial educational and research
purposes. All academic researchers shall use the RETAINED MATERIALS or derived
cell lines in accord with the guidelines promulgated by the Ethics Advisory
Board established pursuant to Article 9.
1.6. "FDA" shall mean the United States Food and Drug
Administration.
1.7. "FD&C ACT" shall mean the United States Federal Food, Drug and
Cosmetic Act, as amended.
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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1.8. "IND" shall mean an Investigational New Drug application, as
defined in the FD&C Act and FDA regulations, as amended from time to time.
1.9. "INTERESTED THIRD PARTY" shall have the meaning set forth in
Paragraph 4.10.
1.10. "LICENSED MATERIALS" shall mean (i) the human cell lines and
other biological materials developed by the Inventors and provided to the
Company under Article 6, and (ii) any materials or cell lines derived therefrom
by the Company or its AFFILIATED COMPANIES, assignee(s), or sublicensee(s). Any
RETAINED MATERIALS (i) actually transferred to Company, or (ii) used by a
PERMITTED ACADEMIC RECIPIENT to make an invention that is licensed by Company
pursuant to a materials transfer agreement in substantially the form attached
hereto as Exhibit 1.5, shall be deemed to be LICENSED MATERIALS.
1.11. "LICENSED PRODUCT(S)" shall mean any research, diagnostic, or
therapeutic product (i) covered by the PATENT RIGHTS or (ii) manufactured using
materials or methods claimed in the PATENT RIGHTS or derived from LICENSED
MATERIALS. For the purpose of illustration, a cell line used for a therapeutic
purpose that was in any way derived from an EG CELL or ES CELL that is a
LICENSED MATERIAL or is covered by a claim in the PATENT RIGHTS will be a
LICENSED PRODUCT.
1.12. "LICENSED SERVICE(S)" shall mean any research, diagnostic, or
therapeutic service or method (i) covered by the PATENT RIGHTS or (ii) uses
materials or methods claimed in the PATENT RIGHTS or derived from LICENSED
MATERIALS.
1.13. "NDA" shall mean a New Drug Application, as defined in the
FD&C Act and FDA regulations, as amended from time to time.
1.14. "NET SALES" shall mean gross amounts invoiced by Company,
AFFILIATED COMPANY, SPIN-OUT, assignee, sublicensee other than a distributor in
the ordinary course of business, and any Interested Third Party (each, a
"Seller") from the sale of LICENSED PRODUCT(S) to non- Seller third parties,
less (i) trade, cash, and quantity discounts or rebates actually given, (ii)
credits or allowances given or made for rejection or return of, and for
uncollectible amounts on, previously sold products or for retroactive price
reductions (including rebates for Medicaid and Medicare in the United States
and comparable foreign programs), (iii) taxes, duties, or other governmental
charges levied on or measured by the billing amount, as adjusted for rebates
and refunds, (iv) charges for freight and insurance directly related to the
distribution of LICENSED PRODUCT(S) (to the extent not paid by the third party
customer), and (v) credits or allowances given or made for wastage replacement
and indigent patient and similar programs. In the event that a Seller sells a
LICENSED PRODUCT(S) in combination with other ingredients or substances or as
part of a kit, the NET SALES for purposes of royalty payments shall be adjusted
by the COMBINATION PRODUCT ADJUSTMENT.
1.15. "NET SERVICE REVENUES" shall mean gross amounts invoiced by a
Seller from the sale of LICENSED SERVICE(S) to non-Seller third parties, less
(i) trade, cash, and quantity discounts or rebates actually given, (ii) credits
or allowances given or made for uncollectible amounts on previously sold
services or for retroactive price reductions (including rebates for Medicaid
and Medicare in the United States and comparable foreign programs), (iii)
taxes, duties, or other governmental charges levied on or measured by the
billing amount, as adjusted for rebates and refunds, and (iv) credits or
allowances given or made for indigent patient and similar programs, all as
adjusted by the COMBINATION PRODUCT ADJUSTMENT, if applicable.
1.16. "PATENT RIGHTS" shall mean [*] (ii) any United States patent
applications filed on inventions, new discoveries, or improvements made by Dr.
John
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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Xxxxxxxx and others in his laboratory pursuant to an agreement (the "Research
Agreement") more fully described in Article 5; (iii) any continuation,
divisional, or continuation-in-part applications associated with the United
States patent applications in (i) and (ii) above; (iv) any United States
patents, extensions, or reissues issuing from an application set forth in (i),
(ii), or (iii) above; and (v) all foreign patent applications and any foreign
patents corresponding to (i), (ii), (iii), or (iv) above.
1.17. "PERMITTED ACADEMIC RECIPIENT" shall mean any academic
researcher who is permitted to receive the Retained Materials pursuant to
Paragraph 1.5.
1.18. "RETAINED MATERIALS" shall mean:
(i) any cell lines and other biological materials that are
retained by JHU or provided by JHU to a PERMITTED ACADEMIC RECIPIENT and (a)
from which the LICENSED MATERIALS were derived, or (b) which are of the same
construction or type as the LICENSED MATERIALS; and
(ii) any cell lines derived from the materials described in clause
(i) by JHU or a PERMITTED ACADEMIC RECIPIENT.
1.19. "SPIN-OUT" shall mean any entity to which the Company has
transferred all of its rights and obligations with respect to the LICENSED
PRODUCT and the LICENSED SERVICE(S), as well as all of the Company's other
assets related to EG CELLS and ES CELLS.
ARTICLE 2
GRANTS
2.1. Subject to the terms and conditions of this Agreement, JHU
hereby grants to the Company, under the PATENT RIGHTS, the LICENSED MATERIALS,
and the RETAINED MATERIALS, a worldwide EXCLUSIVE LICENSE to make, have made,
use, import, sell, have sold, and offer for sale the LICENSED PRODUCT(S) and
the LICENSED SERVICE(S).
2.2. Company may sublicense to others the rights granted by JHU
under this Agreement and shall provide a redacted copy of each such sublicense
agreement to JHU promptly after it is executed. JHU shall treat the existence
and terms of such sublicense as Company's Confidential Information, and such
information shall therefore be subject to Article 7. Each sublicense shall be
consistent with the terms of this Agreement.
2.3. Company may extend this Agreement to its AFFILIATED COMPANIES
that agree in writing to comply with the terms of this Agreement.
ARTICLE 3
PATENT INFRINGEMENT
3.1. Each party will notify the other promptly in writing when any
infringement of the PATENT RIGHTS by another is uncovered or suspected.
3.2. Company shall have the first right to enforce any patent or
patent application within the PATENT RIGHTS against any infringement or alleged
infringement thereof and shall at all times keep JHU informed as to the status
thereof. Company may, in its sole judgment and at its own expense, institute
suit against any such infringer or alleged infringer and control, settle, and
defend such suit in a manner consistent with the terms and provisions hereof
and recover, for its account, any damages, awards, or settlements resulting
therefrom, subject to Paragraph 3.4. This right to xxx for infringement shall
not be used in an arbitrary or capricious manner. JHU shall reasonably
cooperate in any such litigation, including, without limitation, being named as
a party in any such litigation, and Company shall reimburse JHU for its
out-of-pocket expenses incurred as a result of such cooperation.
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3.3. If Company elects not to enforce any patent or patent
application within the PATENT RIGHTS, then it shall so notify JHU in writing
within six (6) months of receiving notice that an infringement exists, and JHU
may, in its sole judgment and at its own expense, take steps to enforce any
patent and control, settle, and defend such suit in a manner consistent with
the terms and provisions hereof, and recover, for its own account, any damages,
awards or settlements resulting therefrom. This right to xxx for infringement
shall not be used in an arbitrary or capricious manner.
3.4. Any recovery by Company under Paragraph 3.2 or by JHU under
Paragraph 3.3 shall be deemed, unless specifically designated otherwise by the
court, to reflect loss of commercial sales. To the extent the recovery exceeds
all reasonable costs and expenses of the party bringing the suit, for the
recovery shall first be applied to such costs and expenses, the recovering party
shall pay to the other from such excess the amount that would have been due that
party hereunder had such sales been made by Company. If the costs and expenses
of a suit or obtaining a settlement under Paragraph 3.2 exceed the recovery,
then [*] of the excess shall be credited against royalties payable by Company to
JHU hereunder in connection with sales or services in the country of such legal
proceedings, provided, however, that any such credit under this Paragraph 3.4
shall not exceed [*] of the royalties otherwise payable to JHU with regard to
sales in the country of such action in any one calendar year, with any excess
credit being carried forward to future calendar years.
ARTICLE 4
PAYMENTS, ROYALTIES, AND EQUITY
4.1. As further provided in Paragraph 7.1, Company will reimburse
JHU for the reasonable costs of preparing, filing, maintaining, and prosecuting
PATENT RIGHTS. Company shall reimburse JHU within thirty (30) days of receipt
of invoice from JHU.
4.2. A. The Company shall pay to JHU within thirty (30) days
of the EFFECTIVE DATE of this Agreement, the nonrefundable processing fee of [*]
and the nonrefundable initial licensing fee of [*]. These payments are
nonrefundable and shall not be credited against royalties or other fees.
B. The Company shall also issue to JHU within thirty
(30) days of the EFFECTIVE DATE the following:
(a) [*] shares of the Company's publicly traded common stock,
pursuant to a written agreement (the "Stock Purchase Agreement"),attached
hereto as Exhibit 4.2(A), and
(b) a warrant for [*] shares of the Company's publicly traded
common stock at an exercise price equal to the closing price of the common stock
on the day prior to issuance of the warrant, with immediate vesting and with a
[*] year exercise date for JHU, pursuant to a warrant agreement (the "Warrant
Agreement") attached hereto as Exhibit 4.2(B).
The stock and warrant will be issued in the name of The Xxxxx Xxxxxxx
University. JHU agrees not to sell or transfer the stock for a period of [*]
years from the date of issue.
4.3. The Company shall pay to JHU a [*] annual maintenance fee
due within thirty (30) days of each anniversary of the EFFECTIVE DATE of this
Agreement. Such fees are nonrefundable and shall not be credited against
royalties or other fees.
4.4. The Company shall pay to JHU, for each LICENSED PRODUCT sold
and for each LICENSED SERVICE provided by the Company, its AFFILIATED
COMPANY(IES), assignees, and sublicensees, and any SPIN-OUT, a running royalty
negotiated by the parties that
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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falls within the ranges specified in the table below. The royalty rates shall
apply to the NET SALES and NET SERVICE REVENUES of the LICENSED PRODUCT or
LICENSED SERVICE respectively for the term of this Agreement. Such payments
shall be made quarterly as provided in Paragraph 4.9. For purposes of this
Paragraph 4.4, a Therapeutic Type product or service refers only to those
products or services provided to patients to treat human disease or medical
conditions in a manner requiring FDA approval; a Diagnostic product or service
refers only to those products or services that are sold or provided to assist
physicians in formulating diagnostic opinions and therapeutic stratagems in the
course of providing medical care to their patients in a manner requiring FDA
approval; and any other product or service shall be deemed to be a Research
Type of product or service.
PRODUCT OR SERVICE TYPE ROYALTY
RANGE
Research [*]
Diagnostic [*]
Therapeutic [*]
Starting the earlier of a written request by Company or the date a particular
LICENSED PRODUCT or LICENSED SERVICE is first offered for commercial sale or
use, the Company and JHU shall enter into good faith negotiations for the
royalty rate to be applied to each LICENSED PRODUCT or LICENSED SERVICE within
the applicable range. The factors to be considered by the parties in setting
the applicable royalty rate shall include: the patent position of the LICENSED
PRODUCT or LICENSED SERVICE, the existence of competitive products or services,
the size of the market for the applicable product or service, and the amounts
spent by the Company in developing the product or service for market. If the
parties are unable to reach agreement within sixty (60) days of commencing such
negotiations, then the issue shall be brought to binding arbitration before
three arbitrators in accordance with the Rules of the American Arbitration
Association, with the arbitration occurring in Chicago, Illinois.
4.5. A. To the extent the Company, or its assignee,
AFFILIATED COMPANY, SPIN-OUT, or sublicensee is obligated to pay a royalty to a
third party to make, use, import, sell, have sold, or offer for sale a LICENSED
PRODUCT or LICENSED SERVICE, and if such obligation cannot be avoided by a
reasonable redesign of the LICENSED PRODUCT or LICENSED SERVICE, then the
Company may subtract [*] of such third party royalty from the royalty otherwise
owed to JHU under Paragraph 4.4 for such particular LICENSED PRODUCT or LICENSED
SERVICE, but in no event shall such reduction cause JHU to be paid less than [*]
of the royalty specified in Paragraph 4.4 for such LICENSED PRODUCT or LICENSED
SERVICE.
B. To the extent the Company, or its assignee,
AFFILIATED COMPANY, SPIN-OUT, or sublicensee uses LICENSED MATERIALS to
generate differentiated cells that are then incorporated into products or
services, such products or services will be LICENSED PRODUCTS and/or LICENSED
SERVICES.
C. Notwithstanding Paragraph 4.4, if the Company uses
the LICENSED MATERIALS or cell lines covered by PATENT RIGHTS in a research
collaboration, sublicense, or joint venture with a third party for the purpose
of gene discovery, JHU will be paid [*] of any consideration received by the
Company from such third party in connection with such gene discovery
undertaking, net of any Excludable Amounts. "Excludable Amounts" shall mean that
portion of amounts received by the Company in exchange for (i) research,
development, and manufacture services that have been or will be performed by or
on behalf of the Company (e.g., payments to fund Company research in connection
with the LICENSED
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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MATERIALS or PATENT RIGHTS) and milestone payments, (ii) things of value other
than rights in LICENSED MATERIALS or PATENT RIGHTS (e.g., equity excluding any
premium purchased by a corporate collaborator), or (iii) amounts loaned to the
Company or an AFFILIATED COMPANY. Where amounts (e.g., license fees) relate to
a LICENSED MATERIAL or PATENT RIGHT together with other biological materials or
patent rights, the amounts shall be allocated on a reasonable basis. In the
event that amounts are due under this Paragraph 4.5(C) with respect to sales of
a LICENSED PRODUCT or a LICENSED SERVICE, no amounts shall be due under
Paragraph 4.4 for the sale of such LICENSED PRODUCT or LICENSED SERVICE.
4.6. MILESTONE PAYMENTS. The following milestone payments (cash,
stock, and stock warrants) shall be paid as outlined below within thirty (30)
days from the occurrence of the events indicated below. Except as otherwise
specified in this Paragraph 4.6, these payments are not creditable against
running royalties or other payments specified in this Article. The stock and
stock warrants granted on the occurrence of each milestone shall be granted
pursuant to Stock Purchase Agreements and Warrant Agreements in substantially
the form attached hereto as Exhibits 4.6(A) and 4.6(B), respectively. The
exercise price for warrants granted in connection with the first three (3)
milestone events set forth in this Paragraph 4.6 shall be equal to the average
closing price of the common stock during the [*] business days immediately
preceding the EFFECTIVE DATE. The exercise price for warrants granted in
connection with milestone event four (4) and milestone event five (5) set forth
in this Paragraph 4.6 shall be equal to the average closing price of the common
stock during the [*] business days immediately preceding the date upon which the
milestone event in question occurred; the warrants for these milestones (4 and
5) shall be issued upon milestone achievement. The warrants shall vest
immediately and shall have, in each case, a [*] year exercise period in which
JHU may exercise the warrant.
MILESTONE EVENT CASH($) EQUITY WARRANTS
(SHARES) (SHARES)
1 Successfully transfer to Company EG CELLS isolated [*] [*] [*]
by JHU*
2 Successfully transfer to Company ES CELLS isolated [*] [*] [*]
by JHU*
0 Xxxxxxxx xx xxxxx Xxxxxx Xxxxxx patent in PATENT
RIGHTS which prevents others from making, using, or [*] [*] [*]
selling the EG CELLS or ES CELLS
4 IND Filing for the first LICENSED PRODUCT or
comparable regulatory filing for first LICENSED [*] [*] [*]
PRODUCT or LICENSED SERVICE
5 NDA Approval for the first LICENSED PRODUCT or
comparable regulatory approval for first LICENSED [*] [*] [*]
PRODUCT or LICENSED SERVICE
*To meet milestone one (1) or two (2) above, an ES CELL or an EG CELL,
respectively, must (i) be successfully isolated and transferred to the Company
by JHU before any third party has successfully transferred a similar human cell
(i.e., EG or ES) to the Company; and (ii) have been obtained with patient
consent and in compliance with U.S. law covering fetal tissue and FDA
regulations for human somatic therapy. In the event Company has awarded the
cash, stock, and stock warrants required above upon the achievement of
milestones one (1) and two (2) above, and it is established within two (2)
years of the transfer of the cells from JHU to Company that a third party
successfully isolated a similar human cell prior to the date JHU transferred
the ES or EG cells to Company, then JHU and the Company shall agree on adequate
recompense to Company in the
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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form of going-forward royalty reductions, royalty credits, and/or subsequent
milestone reductions. Such recompense shall not exceed the value of the
milestones awarded (including cash, equity, and warrants) and will be
determined by negotiation or binding arbitration, in either event taking into
account the benefit to Company from having the ES or EG cells transferred and
the impact on Company's ability to market LICENSED PRODUCTS or LICENSED
SERVICES and profit therefrom as a result of the third party's prior isolation
of the cells. In addition, should the failure to meet any one or all of
milestones one (1), two (2), or three (3) materially adversely impact Company's
ability to market LICENSED PRODUCTS or LICENSED SERVICES or to profit
therefrom, JHU agrees to negotiate in good faith or seek binding arbitration a
royalty reduction to ameliorate in part such adverse impact; such royalty
reduction shall not cause the royalty rate to go below the range specified in
Paragraph 4.4 unless JHU agrees that the adverse impact justifies the
reduction.
4.7. ISSUANCE OF ASSIGNEE SHARES. In the event the Company assigns
this Agreement to a permitted assignee under Paragraph 10.3, the parties will
discuss in good faith amending this Agreement to provide for such assignee to
issue its equity and warrants to JHU upon the achievement of the foregoing
milestones, in lieu of Company issuing its equity and warrants upon achievement
of the foregoing milestones. The value of the equity and warrants to be issued
by such assignee shall approximate, as closely as possible, the value of the
equity and warrants which would have been issued by Company in the absence of
the preceding sentence, with both such values measured at the time of the
assignment, based on the fair market value of each type of equity and warrants.
4.8. Within sixty (60) days of the end of each March, June,
September, and December after the first commercial sale of a LICENSED PRODUCT
or a LICENSED SERVICE, the Company shall provide a written report to JHU of the
amount of LICENSED PRODUCTS sold, the amount of LICENSED SERVICES sold, the
total NET SALES and NET SERVICE REVENUES of such LICENSED PRODUCTS and LICENSED
SERVICES, and the running royalties due to JHU as a result of NET SALES and NET
SERVICE REVENUES by Company, AFFILIATED COMPANIES, and sublicensees thereof.
Payment of any such royalties due shall accompany such report. Until the first
commercial sale of a LICENSED PRODUCT or a LICENSED SERVICE, the Company shall
submit a report at the end of every December after the achievement of milestone
one (1) or two (2) of Paragraph 4.6 of this Agreement that describes the
Company's and any AFFILIATED COMPANY's or sublicensee's technical efforts
towards meeting the milestones in Article 8.
4.9. The Company shall compile and retain, for a period of three
(3) years following the period of each report required by Paragraph 4.8, true
and accurate records, files, and books of account containing all the data
reasonably required for the full computation and verification of sales and
other information required in Paragraph 4.8. Such books and records shall be in
accordance with generally accepted accounting principles consistently applied.
The Company shall permit the inspection and copying of such records, files, and
books of account by JHU or its certified public accountant during regular
business hours upon ten (10) business days' prior written notice to the
Company, and all such records, files, and books of account shall be deemed to
be the Company's Confidential Information, subject to the protections afforded
therefor by Article 7. Such inspection shall not be made more than once each
calendar year. All costs of such inspection and copying shall be paid by JHU,
provided that if any such inspection shall reveal that an underpayment error
has been made in the amount equal to [*] or more of such payment,
such costs shall be borne by the Company. The Company shall include in any
agreement with its AFFILIATED COMPANIES or its sublicensees which permits such
party to make, use, or sell the LICENSED PRODUCT(S) or provide LICENSED
SERVICES, a provision requiring such party to retain records of sales of
LICENSED PRODUCT(S) and records of LICENSED SERVICES and other information as
required in Paragraph 4.8 and permit JHU to inspect such records as required by
this Paragraph 4.9.
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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4.10. To ensure JHU the full royalty payments contemplated
hereunder, the Company agrees that, in the event (i) any LICENSED PRODUCT shall
be sold to an AFFILIATED COMPANY or sublicensee or to a corporation, firm, or
association with which Company shall have any agreement, understanding, or
arrangement with respect to Other Consideration (each, an "Interested Third
Party"), and (ii) such Interested Third Party does not resell such LICENSED
PRODUCT or use the same to manufacture a LICENSED PRODUCT that is sold to an
uninterested third party so that such sale is included as part of NET SALES, the
royalties to be paid hereunder for such LICENSED PRODUCTS shall be based upon
(x) units of LICENSED PRODUCT sold to such Interested Third Party multiplied by
(y) the average NET SALES per unit per year of LICENSED PRODUCT received by the
Company and its AFFILIATED COMPANIES, sublicensees, and Interested Third Parties
in arm-length transactions with uninterested third parties. For purposes of this
Paragraph, "Other Consideration" shall mean consideration for things other than
for LICENSED PRODUCT, such as, among other things, (a) an option to purchase
stock or actual stock ownership that would result in such third party owning at
least [*] of the outstanding stock of the Company or the Company owning at least
[*] of the outstanding stock of such third party, (b) an arrangement involving
division of profits between such third party and the Company, or (c) special
rebates or allowances not available to others.
4.11. All payments under this Agreement shall be made in U.S.
Dollars.
ARTICLE 5
RESEARCH SUPPORT
The Company is sponsoring research in the laboratory of Dr. Xxxx
Xxxxxxxx for a period of [*] years at JHU pursuant to a Research Agreement
between the Company and JHU, executed contemporaneously herewith. All patent
applications filed on inventions, new discoveries, or improvements made by Dr.
Xxxx Xxxxxxxx and others in his JHU laboratory pursuant to the Research
Agreement and any patents issuing thereon shall be included as part of the
PATENT RIGHTS.
ARTICLE 6
BIOLOGICAL MATERIAL TRANSFER
6.1. JHU, acting through Dr. Xxxx Xxxxxxxx, will, within thirty
(30) days of isolating cells which are ES CELLS or EG CELLS, provide the
Company with human ES CELLS and EG CELLS and related biological materials
developed in Xx. Xxxxxxxx'x laboratory after October 1, 1996. In addition, JHU,
acting through Dr. Xxxx Xxxxxxxx, will provide the Company with ES CELLS and EG
CELLS and related biological materials subsequently developed in Xx. Xxxxxxxx'x
laboratory through the term of the Research Agreement, within thirty (30) days
of the date upon which such cells and other biological materials are isolated.
Such cells and other biological materials delivered pursuant to this Paragraph
6.1 shall be considered to be LICENSED MATERIALS as defined by Paragraph 1.10.
6.2. The Company shall use the LICENSED MATERIALS or derived cell
lines in accord with the guidelines and policies established by the Ethics
Advisory Board established pursuant to Article 9. Access by PERMITTED ACADEMIC
RECIPIENTS and JHU to EG CELLS and ES CELLS and derivative or related cell
lines developed under the sponsored support specified in Article 5 shall be
controlled with material transfer agreements that prohibit further transfer of
the materials and derived materials and restrict the area of research to areas
approved by the Ethics Advisory Board and restricts the use of such materials
to uses in accord with the guidelines promulgated by the Ethics Advisory Board.
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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6.3. Except as permitted under clause (ii) of Paragraph 1.5, in no
event shall JHU provide RETAINED MATERIALS, or any materials derived from
RETAINED MATERIALS, to any third party.
ARTICLE 7
PATENT RIGHTS AND CONFIDENTIAL INFORMATION
7.1. A. JHU shall have the first right to file, prosecute,
and maintain all patents and patent applications specified under PATENT RIGHTS.
Title to all such patents and patent applications shall reside in JHU. Subject
to Paragraph 7.1(B) and Article 3, JHU shall have full and complete control
over all patent matters in connection therewith under the PATENT RIGHTS. In the
event the Company provides prior authorization for such filing, prosecution, or
maintenance, the Company shall pay all reasonable out-of-pocket expenses
incurred by JHU in taking such action. JHU shall provide the Company with
notice of a filing, prosecution, or maintenance deadline with respect to any
patent application or patent specified under the PATENT RIGHTS at least ninety
(90) days prior to such deadline. The Company shall, within thirty (30) days of
receipt of such notice, indicate to JHU in writing whether it wishes to
authorize such filing, prosecution, or maintenance. In the event the Company
has not responded to JHU within such thirty (30) day period, the Company shall
be deemed to have authorized such action. In any country where the Company
provides written notice that it elects not to authorize such action, JHU may
file, prosecute, and/or maintain a patent application or patent at its own
expense and for its own exclusive benefit, and the Company thereafter shall not
be licensed under such patent or patent application.
B. In the event JHU elects not to file, prosecute or
maintain a patent or patent application specified under PATENT RIGHTS, it shall
notify the Company at least ninety (90) days in advance of the applicable
deadline for any action required to file, prosecute, or maintain such patent or
patent application; thereafter, the Company shall be free to file, prosecute,
or maintain such patent or patent application, at its own expense and in the
name of JHU, and the Company thereafter shall have full and complete control
over all patent matters in connection therewith. JHU shall provide reasonable
cooperation to the Company in connection with such filing, prosecution, and
maintenance.
7.2. Company agrees that all packaging containing individual
LICENSED PRODUCT(S) sold by Company, AFFILIATED COMPANIES, and sublicensees of
Company will be marked with the number of the applicable patent(s) licensed
hereunder in accordance with each country's patent laws.
7.3. Except as set forth below, all information disclosed by one
party to the other party shall be deemed to be the disclosing party's
"Confidential Information". The recipient of such information agrees to employ
all reasonable efforts to maintain the Confidential Information secret and
confidential and not to use such Confidential Information for any purpose other
than as permitted under this Agreement, such efforts to be no less than the
degree of care employed by the recipient to preserve and safeguard its own
confidential information and the confidential information of third parties
being held by the recipient. The Confidential Information shall not be
disclosed or revealed to anyone except employees, consultants, AFFILIATED
COMPANIES, or sublicensees of the recipient who have a need to know the
information and who have entered into a secrecy agreement with the recipient
under which such employees, consultants, AFFILIATED COMPANIES, and sublicensees
are required to maintain confidential the proprietary information of the
recipient, and such employees, consultants, AFFILIATED COMPANIES, and
sublicensees shall be advised by the recipient of the confidential nature of
the Confidential Information and that the Confidential Information shall be
treated accordingly, including the non-disclosure and non-use obligations set
forth above. The recipient's obligations under this Paragraph 7.3 shall not
extend to any part of the Confidential Information that:
(a) can be demonstrated to have been in the public domain or
publicly known and
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readily available to the trade or the public prior to the date of the
disclosure; or
(b) can be demonstrated, from written records to have been in the
recipient's possession or readily available to the recipient from another
source not under obligation of secrecy to the disclosing party prior to the
disclosure; or
(c) becomes part of the public domain or publicly known by
publication or otherwise, not due to any unauthorized act by the recipient; or
(d) was lawfully disclosed to the recipient, other than under an
obligation of confidentiality, by a third party who had no obligation not to
disclose such information to others; or
(e) is demonstrated from written records to have been developed
by or for the receiving party without reference to confidential information
disclosed by the disclosing party.
The obligations of this Paragraph 7.3 shall also apply to consultants,
AFFILIATED COMPANIES, and/or sublicensees provided such information by Company.
JHU's, the Company's, AFFILIATED COMPANIES, and sublicensees' obligations under
this Paragraph 7.3 shall extend until five (5) years after the termination of
this Agreement.
ARTICLE 8
TERM, MILESTONES, AND TERMINATION
8.1. This Agreement shall expire, on a country-by-country basis, on
the date of expiration of the last to expire patent included within PATENT
RIGHTS in that country or, if no patents issue in such country, [*] years from
the EFFECTIVE DATE. Termination by Company at will for any reason other than
material breach by JHU of the Research Agreement shall automatically terminate
this Agreement.
8.2. Company shall exercise commercially reasonable efforts to
develop, obtain regulatory approval for, and commercialize the LICENSED
PRODUCT(S) and LICENSED SERVICE(S) using good scientific and commercial
judgment. Company shall also exercise commercially reasonable efforts to
develop LICENSED PRODUCTS suitable for different indications, so that the
PATENT RIGHTS and LICENSED MATERIALS can be commercialized as broadly and as
speedily as good scientific and business judgment would deem possible.
8.3. After an NDA or equivalent has been approved by the FDA for a
given LICENSED PRODUCT, Company shall exercise commercially reasonable efforts
to market such LICENSED PRODUCTS in the U.S. and worldwide to the extent
consistent with good business judgment, conditioned upon obtaining regulatory
approval in each particular foreign nation or region.
8.4. JHU may, at any time, notify the Company in writing of
clinical or other evidence developed or made available to JHU that demonstrates
the scientific and commercial practicality of a particular therapeutic
opportunity which is covered by the PATENT RIGHTS but which is not currently
being developed or commercialized by Company (the "Suggested Opportunity").
Company shall consider such evidence in good faith and, if Company concurs that
such evidence demonstrates the scientific and commercial practicality of the
Suggested Opportunity, Company shall either (i) provide JHU with a reasonable
development plan for the Suggested Opportunity and thereafter start development
of such Suggested Opportunity, or (ii) attempt to sublicense the relevant
technology to a third party, on commercially reasonable terms, for purposes of
developing and commercializing the Suggested Opportunity. If Company concurs
that such evidence demonstrates the scientific and commercial practicality of
the Suggested Opportunity and (i) within six (6) months of such notification by
JHU, Company has not initiated such development efforts, or (ii) within six (6)
months of such notification by JHU, Company has not commenced negotiations with
a potential sublicensee for developing and commercializing the Suggested
Opportunity and within eighteen (18) months of such notification by JHU,
Company has not entered into an agreement with such sublicensee for developing
and commercializing the Suggested Opportunity, JHU may terminate the license
contained in Article 2 for the Suggested Opportunity only. This Paragraph 8.4
shall not be applicable if Company reasonably demonstrates to JHU that
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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(i) developing and commercializing such Suggested Opportunity or granting such
a sublicense would have a potentially adverse commercial effect upon marketing
or sales of the LICENSED PRODUCTS or LICENSED SERVICE(S) developed and/or being
sold by Company, any AFFILIATED COMPANY, or any sublicensee of Company, or (ii)
that the evidence presented by JHU under the first sentence of this Paragraph
does not convincingly demonstrate the scientific and commercial practicality of
the Suggested Opportunity.
8.5. Upon material breach of any of the terms and conditions of
this Agreement, the breaching party shall be given a period of the earlier of
sixty (60) days after (i) becoming aware of such breach, or (ii) receiving
written notice of the same to correct the material breach. If the material
breach is not corrected within said sixty (60) day period, the party not in
breach shall have the right to terminate this Agreement upon written notice to
the breaching party. In the event of a material, uncured breach by JHU, Company
shall have the right either to terminate this Agreement or to elect to take
recompense for the breach and maintain its exclusive license, such recompense
to be determined by agreement between JHU and the Company or by binding
arbitration and to be in the form of royalty reductions, royalty credits,
and/or subsequent milestone reductions, taking into account the harm to Company
suffered as a result of such breach, including the impact on Company's ability
to market LICENSED PRODUCTS or LICENSED SERVICES and profit therefrom.
8.6. Company may terminate this Agreement and the license granted
herein, for any reason, upon giving JHU [*] days written notice.
8.7. A. Termination for Company's breach under Paragraph 8.5
or under 8.6 shall not affect JHU's right to recover unpaid royalties or fees
or stock or stock warrants or reimbursement for patent expenses incurred or due
prior to termination.
B. Upon termination of this Agreement under Paragraph
8.5 for Company's breach or 8.6, (i) all rights in and to the PATENT RIGHTS,
the LICENSED MATERIALS, and the RETAINED MATERIALS shall revert to JHU at no
cost to JHU, (ii) all LICENSED MATERIALS delivered to the Company pursuant to
Paragraph 6.1 shall immediately be returned to JHU, and (iii) any cell lines
made or derived by the Company or its AFFILIATES, assignee(s), or
sublicensee(s) using LICENSED MATERIALS or using other cell lines covered by
PATENT RIGHTS shall remain subject to a continuing royalty payment as provided
in Paragraph 4.4 even after termination of this Agreement. Upon termination by
Company of this Agreement under Paragraph 8.5 for JHU's material and uncured
breach, Company's obligation of indemnification under Paragraph 10.8.B shall
terminate, but if Company elects to take recompense for a material, uncured
breach by JHU and continue its exclusive license, then Company's obligation of
indemnification under Paragraph 10.8.B shall continue.
ARTICLE 9
ETHICS BOARD
The parties agree that the research in the area of human EG and ES
cells and derivative and related cells, and the development and provision of
any LICENSED PRODUCT(S) or LICENSED SERVICE(S) related thereto, shall be
conducted with the highest ethical considerations. The Company will appoint an
Ethics Advisory Board comprising five (5) independent members (i.e., not having
an equity interest in the Company) and selected from national experts in
medical ethics. The Ethics Advisory Board shall be responsible for promulgating
ethical guidelines concerning the research conducted by the Company and its
assignee(s), AFFILIATE(S), SPIN-OUT, and sublicensee(s), and by JHU and any
person receiving ES CELLS and/or EG CELLS from JHU and development activities
relating to the use of LICENSED MATERIALS, cell lines covered by PATENT RIGHTS
and cell lines derived therefrom, which shall in any event comply with all
applicable state and federal laws and regulations. The Ethics Advisory Board
shall review the areas of research to be conducted and products to be developed
by the Company or any third party using
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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the LICENSED MATERIALS or cell lines covered by PATENT RIGHTS. The Company, to
the extent consistent to its fiduciary duties to its shareholders, and such
third parties shall also follow the ethical guidelines and policies established
by the Ethics Advisory Board and in any event shall comply with all Federal and
State laws and regulations. Failure to adhere to this Article 9 shall be deemed
to be a material breach of this Agreement. A list of all board members and
minutes of the meetings of the Ethics Board will be provided to JHU in writing.
Such list and minutes will be deemed to be the Company's Confidential
Information; however, the Ethics Advisory Board shall be encouraged to publish
its guidelines, provided such guidelines do not reveal Confidential Information
of either party.
ARTICLE 10
MISCELLANEOUS
10.1. All notices pertaining to this Agreement shall be in writing
and sent certified mail, return receipt requested, to the parties at the
following addresses or such other address as such party shall have furnished in
writing to the other party in accordance with this Paragraph 10.1:
FOR JHU: Xx. Xxxxxx X. Xxxxxxxx, Esq.
Assistant Xxxx for Technology Licensing
The Xxxxx Xxxxxxx University
School of Medicine
0000 X. Xxxxxxxx Xx., Xxxxx. 0-000
Xxxxxxxxx, XX 00000
FOR Company: Xx. Xxxxxx X. Xxxxxxx
President and CEO
Geron Corporation
000 Xxxxxxxxxxxx Xxxxx
Xxxxx Xxxx, XX 00000
10.2. All written progress reports, royalty and other payments, and
any other related correspondence shall be in writing and sent to:
FOR JHU: Xx. Xxxxxx X. Xxxxxxxx, Esq.
Assistant Xxxx and Director for Technology Licensing
The Xxxxx Xxxxxxx University
School of Medicine
0000 X. Xxxxxxxx Xx., Xxxxx. 0-000
Xxxxxxxxx, XX 00000
or such other addressee that JHU may designate in writing from time to time.
Checks are to be made payable to "The Xxxxx Xxxxxxx University".
10.3. This Agreement is binding upon and shall inure to the benefit
of JHU, its successors, and permitted assignees. This Agreement shall not be
assignable by JHU to another party without the written consent of the Company,
which consent shall not be unreasonably withheld. This Agreement is binding
upon and shall inure to the benefit of Company, its successors and permitted
assignees. This Agreement shall not be assignable by the Company to another
party without the written consent of JHU, which consent shall not be
unreasonably withheld, except that the Company shall have the right to assign
this Agreement without the consent of JHU to (i) an AFFILIATED COMPANY, (ii) a
SPIN-OUT, or (iii) a third party in the case of the sale or transfer, whether
by merger or otherwise, by the Company of all, or substantially all, of its
assets relating to the LICENSED PRODUCT or LICENSED SERVICE, to such third
party.
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10.4. In the event that any one or more of the provisions of this
Agreement should for any reason be held by any court or authority having
jurisdiction over this Agreement, or over any of the parties hereto to be
invalid, illegal, or unenforceable, such provision or provisions shall be
reformed to approximate as nearly as possible the intent of the parties, and if
unreformable, shall be divisible and deleted in such jurisdictions; elsewhere,
this Agreement shall not be affected.
10.5. The construction, performance, and execution of this Agreement
shall be governed by the laws of the State of Delaware, without regard to the
conflict of laws provisions thereof.
10.6. Except as required by law, the Company shall not use the name
of THE XXXXX XXXXXXX UNIVERSITY or THE XXXXX XXXXXXX HEALTH SYSTEM or any of
its constituent parts, such as the Xxxxx Xxxxxxx Hospital or any contraction
thereof or the name of Inventors of PATENT RIGHTS in any advertising,
promotional, sales literature, fundraising documents, or other such
publications without prior written consent from an officer of JHU. In the case
of disclosure required by law, Company shall give JHU the opportunity to review
and comment on such disclosure. Company shall allow at least seven (7)
business days notice of any proposed public disclosure for JHU's review and
comment or to provide written consent. Notwithstanding the foregoing, the
Company shall have the right to state "Geron is sponsoring research relating to
primordial germ cell lines and primordial stem cell lines in the laboratory of
Dr. Xxxx Xxxxxxxx at The Xxxxx Xxxxxxx University."
10.7. JHU warrants that it is the sole owner and has sole right,
title, and interest in the inventions claimed under PATENT RIGHTS and in the
LICENSED MATERIALS and the RETAINED MATERIALS. JHU does not warrant the
validity of any patents or that practice under such patents shall be free of
infringement. EXCEPT AS EXPRESSLY SET FORTH IN THIS PARAGRAPH 10.7, COMPANY
AGREES THAT THE PATENT RIGHTS ARE PROVIDED "AS IS", AND THAT JHU MAKES NO
REPRESENTATION OR WARRANTY WITH RESPECT TO THE PERFORMANCE OF LICENSED
PRODUCT(S) AND LICENSED SERVICES INCLUDING THEIR SAFETY, EFFECTIVENESS, OR
COMMERCIAL VIABILITY. JHU DISCLAIMS ALL WARRANTIES WITH REGARD TO PRODUCT(S)
AND SERVICES LICENSED UNDER THIS AGREEMENT, INCLUDING, BUT NOT LIMITED TO, ALL
WARRANTIES, EXPRESS OR IMPLIED, OF MERCHANTABILITY AND FITNESS FOR ANY
PARTICULAR PURPOSE. . EXCEPT AS EXPRESSLY SET FORTH IN THIS PARAGRAPH 10.7,
JHU ADDITIONALLY DISCLAIMS ALL OBLIGATIONS AND LIABILITIES ON THE PART OF JHU
AND INVENTORS, FOR DAMAGES, INCLUDING, BUT NOT LIMITED TO, DIRECT, INDIRECT,
SPECIAL, AND CONSEQUENTIAL DAMAGES, ATTORNEYS' AND EXPERTS' FEES, AND COURT
COSTS (EVEN IF JHU HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, FEES,
OR COSTS), ARISING OUT OF OR IN CONNECTION WITH THE MANUFACTURE, USE, OR SALE
OF THE PRODUCT(S) AND SERVICES LICENSED UNDER THIS AGREEMENT. COMPANY,
AFFILIATED COMPANIES, AND SUBLICENSEES ASSUME ALL RESPONSIBILITY AND LIABILITY
FOR LOSS OR DAMAGE CAUSED BY A PRODUCT AND SERVICE MANUFACTURED, USED, OR SOLD
BY COMPANY, ITS SUBLICENSEES, AND AFFILIATED COMPANIES THAT IS A LICENSED
PRODUCT OR LICENSED SERVICE AS DEFINED IN THIS AGREEMENT.
10.8. A. JHU and the Inventors will not, under the provisions
of this Agreement or otherwise, have control over the manner in which Company,
its AFFILIATED COMPANIES, its sublicensees, those operating for its account, or
third parties who purchase LICENSED PRODUCT(S) or LICENSED SERVICES from any of
the foregoing entities (collectively, the "Users"), practice the inventions
claimed under the PATENT RIGHTS or derived from the LICENSED MATERIALS (the
"Inventions"). The Company shall defend and hold JHU, The Xxxxx Xxxxxxx Health
Systems, their present and former regents, trustees, officers, inventors of
PATENT RIGHTS, agents, faculty, employees, and students harmless as against any
judgments, fees, expenses, or other costs arising from or incidental to any
product liability or other lawsuit,
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claim, demand or other action brought as a consequence of the practice of said
Inventions by any of the Users, whether or not JHU or said Inventors, either
jointly or severally, is named as a party defendant in any such lawsuit.
Practice of the Inventions by any of the Users shall be considered the
Company's practice of said inventions for purposes of this Paragraph 10.8(A).
The obligation of the Company to defend and indemnify as set out in this
Paragraph 10.8(A) shall survive the termination of this Agreement.
B. In addition, the Company agrees to defend, indemnify,
and hold harmless JHU and JHU's officers, agents, servants, and employees,
including but not limited to Dr. Xxxx Xxxxxxxx, for any and all claims or
lawsuits which are made or filed by a Potential Claimant and arise directly or
indirectly out of JHU's and Xx. Xxxxxxxx'x research and work on ES CELLS and EG
CELLS prior to the EFFECTIVE DATE (the "Xxxxxxxx Research"), to the extent such
claims or lawsuits arise out of:
(1) any discussions and negotiations that (i) occurred prior to the
EFFECTIVE DATE between (a) JHU and Xx. Xxxxxxxx, on the one hand, and
(b) [*] and its representatives, on the other hand, regarding the
Xxxxxxxx Research, and (ii) are described in the Written Documentation
(as such term is defined below) and;
(2) any alleged agreements that (i) were entered into prior to the
EFFECTIVE DATE between (a) JHU and/or Xx. Xxxxxxxx, on the one hand,
and (b) [*], on the other hand, regarding the Xxxxxxxx Research, and
(ii) are described, or implied from the course of conduct described,
in the Written Documentation;
(3) JHU's and/or Xx. Xxxxxxxx'x agreements with the Company regarding
the results of the Xxxxxxxx Research; and
(4) any alleged infringements or other violation of the United States
patent laws with respect to U.S. Patent No. 5,453,357 or any related
patents prior to the EFFECTIVE DATE by JHU and/or Xx. Xxxxxxxx in
performing the Xxxxxxxx Research.
"Potential Claimant" shall mean [*] or any person acting directly or indirectly
on their behalf, or any assignee of their interest, or any successor in
interest. The Company agrees to provide, at its cost, legal counsel to JHU in
the event of a lawsuit covered by this indemnity. The Company may select
counsel, and JHU will cooperate with the Company and its counsel in the defense
of any and all claims regarding the Xxxxxxxx Research. JHU agrees to provide the
Company adequate notice of any and all such claims and hereby grants the Company
the right to control any and all such litigation of such claims and any
settlement thereof. The Company agrees to pay the costs of any judgment entered
against JHU, JHU agents, servants, and employees on behalf of the Potential
Claimants, and any settlement of any claims with the Potential Claimants,
provided, however, that the Company has received adequate notice and the right
to control such litigation and/or settlement. JHU and Xx. Xxxxxxxx hereby
represent that, as of the EFFECTIVE DATE, they have provided to the Company
written documentation describing in detail the substance and date of all
communications and agreements, oral or written, between (i) JHU and/or JHU's
officers, agents, servants, and employees, including, but not limited to, Dr.
Xxxx Xxxxxxxx, and (ii) all Potential Claimants (the "Written Documentation").
In the event of a material breach of the foregoing representation, neither the
Company nor its permitted assignees shall have any obligations under this
Paragraph 10.8(B). In the event the Company assigns this Agreement to a
SPIN-OUT, as permitted by Paragraph 10.3, Company will continue to defend,
indemnify, and hold harmless JHU and JHU's officers, agents, servants, and
employees, including, but not limited to, Dr. Xxxx Xxxxxxxx, from the claims and
lawsuits covered by this Paragraph 10.8(B).
10.9. Prior to initial human testing or first commercial sale of any
LICENSED PRODUCT or LICENSED SERVICE, as the case may be, in any particular
country, the
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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Company, an AFFILIATED COMPANY, or any sublicensee shall establish and
maintain, in each country in which Company, an AFFILIATED COMPANY, or
sublicensee shall test or sell LICENSED PRODUCT(S) and LICENSED SERVICES,
commercially reasonable product liability or other appropriate insurance
coverage appropriate to the risks involved in testing or selling LICENSED
PRODUCT(S) and LICENSED SERVICES and will annually present evidence to JHU that
such coverage is being maintained. Upon JHU's request, the Company will furnish
JHU with a Certificate of Insurance of each product liability insurance policy
obtained. JHU shall be listed as an additional insured in Company's said
insurance policies.
10.10. JHU may publish manuscripts, abstracts, or the like describing
the PATENT RIGHTS and inventions contained therein provided Confidential
Information of Company (as defined in Paragraph 7.3) is not included in such
publication in accordance with this Paragraph, or, if JHU wishes to publish
Confidential Information of Company, JHU has obtained the prior written consent
of Company to do so. Otherwise, JHU and the Inventors shall be free to publish
manuscripts, abstracts, or the like directed to the work done at JHU related to
the PATENT RIGHTS and inventions contained therein without prior approval of
Company, provided that (i) no later than thirty (30) days prior to submission
of such manuscript, abstract, or the like, JHU provides a copy of such proposed
submission to Company, (ii) if Company believes that the proposed submission
contains subject matter for which a patent should be sought, then prior to the
expiration of the thirty (30) day period, the Company shall so notify JHU, and
(iii) JHU shall then delay submission for publication for an additional period
of up to ninety (90) days to permit the preparing and filing of a patent
application on the subject matter to be disclosed.
10.11. This Agreement and that certain Research Agreement entered
into by the parties contemporaneously herewith constitutes the entire
understanding between the parties with respect to the obligations of the
parties with respect to the subject matter hereof and supersedes and replaces
all prior agreements, understandings, writings, and discussions between the
parties relating to said subject matter.
10.12. This Agreement may be amended and any of its terms or
conditions may be waived only by a written instrument executed by the
authorized officials of the parties or, in the case of a waiver, by the party
waiving compliance. The failure of either party at any time or times to require
performance of any provision hereof shall in no manner affect its right at a
later time to enforce the same. No waiver by either party of any condition or
term in any one or more instances shall be construed as a further or continuing
waiver of such condition or term or of any other condition or term.
10.13. Except as explicitly provided otherwise herein, upon
termination of this Agreement for any reason, Article 1 and Paragraphs 4.9,
7.3, 8.7, 10.5, 10.6, 10.7, and 10.8 shall survive termination of this
Agreement.
SIGNATURE PAGE FOLLOWS
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IN WITNESS WHEREOF the respective parties hereto have executed this
Agreement by their duly authorized officers on the date appearing below their
signatures.
THE XXXXX XXXXXXX UNIVERSITY GERON CORPORATION
/s/ N. XXXXXXXX XXXXXXXX, XX. /s/ XXXXXX X. XXXXXXX
------------------------------- --------------------------------------
N. Xxxxxxxx Xxxxxxxx, Xx., M.D. Xxxxxx X. Xxxxxxx
Interim Vice Xxxx for Research President and CEO
Dated: August 20, 1997 Dated: August 11, 1997
-------------------------- --------------------------------
I have read and agree to abide by the terms of this Agreement:
/s/ XXXX XXXXXXXX /s/ XXXXXXX XXXXXXXXX
------------------------------- --------------------------------------
Dr. Xxxx Xxxxxxxx : Xx. Xxxxxxx Xxxxxxxxx
Dated: Dated August 17, 1997 Dated: August 8, 1997
-------------------------- --------------------------------
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18
EXHIBIT 1.5
FORM OF JHU MATERIALS TRANSFER AGREEMENT
Dear __________:
Xxxxx Xxxxxxx University (JHU) agrees to provide you the material(s) indicated
below, which you requested from __________ for your nonclinical research
studies. In order to protect JHU's proprietary rights in the material(s) or its
(their) progeny, portions, and derivatives thereof (hereinafter "Materials"), we
request that you and an authorized official of your institution sign, date, and
return this letter agreement to us.
Material(s) identification: ______________________________________
Acceptance of the Material(s) by your institution confirms your agreement to the
following conditions:
1. This agreement and the resulting transfer of the Materials(s)
constitute a nonexclusive license to use the Material(s) for nonprofit,
nonclinical research purposes only. The Material(s) will not be used in humans
and will be stored, used, and disposed of in accordance with applicable law and
regulations. The Material(s) will not be used for any commercial purpose. This
agreement is not assignable and the Material(s) may not be transferred to
another party.
2. You recognize that your work with these Material(s) shall not
diverge from the workplan attached hereto as Exhibit A without advance written
approval by JHU; any such approval shall not be unreasonably withheld but shall
be contingent upon a determination that the proposed work is consistent with the
guidelines and policies of an Ethics Advisory Board that has been established in
agreement with JHU relating to the Material(s).
3. You are free to publish your work involving this Material(s). You
agree to provide JHU with a manuscript describing the work you intend to publish
thirty (30) days in advance of submitting your work for publication or
presenting your work in public, so that JHU may determine that the work
described is consistent with the workplan attached hereto as Exhibit A and the
guidelines and policies of an Ethics Advisory Board. You further agree to
provide JHU with a copy of the material actually presented or published. In the
event JHU determines at any time that your work is inconsistent with the
workplan attached hereto as Exhibit A or the guidelines and policies of an
Ethics Advisory Board, then JHU shall have the right to terminate this Agreement
and the nonexclusive license granted hereby, and you shall, upon such
termination, cease all work with the Material(s) and return to JHU or destroy,
at JHU's option and request, all such Material(s) and any material derived
therefrom.
4. You agree that any patent application filed by you or the
institution at which you work that discloses or claims experiments conducted or
results generated using the Material(s) or that requires the use of the
Materials in performing an invention claimed therein and any patent issuing
thereon ("Derivative Patent") shall be subject to JHU's commercial licensee's
right:
(a) to review the application prior to filing under appropriate
obligation of confidentiality; and
(b) to take, at the Commercial licensee's sole option and
discretion, either:
Page 1 of 2
19
EXHIBIT 1.5
FORM OF JHU MATERIALS TRANSFER AGREEMENT
(i) an exclusive, royalty-bearing license to make, have
made, use, sell, have sold, and import any product or service using any
invention disclosed or claimed in the Derivative Patent, such royalty not to
exceed [*] of net sales or revenues regarding such product or service, such
license to include no other payment terms but otherwise to include commercially
reasonable terms established by good faith negotiation for a period of no more
than [*] months or by binding arbitration thereafter; or
(ii) a royalty-free, non-exclusive license to make, have
made, use, sell, have sold, and import any product or service using any
invention disclosed or claimed in the Derivative Patent, such license to include
no payment terms but otherwise to include commercially reasonable terms
established by good faith negotiation for a period of no more than [*]
months or by binding arbitration thereafter.
5. JHU makes no representations whatsoever as to the Material(s).
The Material(s) are experimental in nature and are provided WITHOUT WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY,
EXPRESS OR IMPLIED. JHU MAKES NO REPRESENTATION OR WARRANTY THAT THE USE OF THE
MATERIAL(S) WILL NOT INFRINGE ANY PATENT OR OTHER PROPRIETARY RIGHT.
6. Except where precluded by Federal law and to the extent allowed
by applicable state law, you and your institution agree to defend, indemnify,
and hold harmless JHU, its trustees, officers, employees, and agents from any
loss, claim, damage, or liability, of any kind whatsoever, which may arise from
you or your institution's use, storage, or disposal of the Material(s) or any
other material that could not have been made but for the Material(s), except to
the extent such arise due to the gross negligence of JHU.
7. You shall not use the name of THE XXXXX XXXXXXX UNIVERSITY or THE
XXXXX XXXXXXX HEALTH SYSTEM or any of its constituent parts, such as the Xxxxx
Xxxxxxx Hospital or any contraction thereof or the name of its employees in any
advertising, promotional, sales literature, or fundraising documents without
prior written consent from an officer of JHU.
To indicate your and your institution's agreement to the conditions, you and an
authorized official should sign and date this letter in the spaces indicated
below and return it to me. If you have any questions concerning this agreement,
you may call me at 000-000-0000.
Sincerely,
Xxxxxx X. Xxxxxxxx, Esq.
Assistant Xxxx and Director
Office of Technology Licensing
AN AUTHORIZED SIGNATURE IS THAT OF AN INSTITUTIONAL OFFICIAL OR COMPANY OFFICER
SPECIFICALLY AUTHORIZED TO EXECUTE DOCUMENTS OF THIS TYPE ON BEHALF OF THE
INSTITUTION.
------------------------------ ------------------------------
Authorized Signature Recipient Investigator
Name: Name:
------------------------- -------------------------
Title: Title:
------------------------ ------------------------
Date: Date:
------------------------- ------------------------
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
Page 2 of 2
20
EXHIBIT 4.2(A)
COMMON STOCK PURCHASE AGREEMENT
This Common Stock Purchase Agreement (the "Agreement") is made as of
August 1, 1997, by and between Geron Corporation, a Delaware corporation ("the
Company"), and The Xxxxx Xxxxxxx University, a Maryland corporation ("JHU").
WHEREAS, JHU and the Company have entered into a License Agreement
(the "License Agreement") having an effective date of August 1, 1997.
WHEREAS, pursuant to Article 4, Paragraph 4.2B of the License
Agreement, the Company has agreed to issue to JHU [*] shares of the Company's
Common Stock (the "Shares") in consideration of the execution of License
Agreement and the rights granted to the Company thereunder.
NOW, THEREFORE, for good and valuable consideration, the receipt and
adequacy of which is hereby acknowledged, the Company and JHU hereby agree as
follows:
1. The Company agrees to issue to JHU the Shares. The issuance of
the Shares shall take place at such time and place upon which the Company and
JHU mutually agree, either orally or in writing, but, in no event later than
thirty (30) days after the Effective Date of the License Agreement (the
"Closing"). At the Closing, or within ten (10) business days thereafter, the
Company will deliver to JHU a certificate representing the Shares.
2. In connection with the issuance of the Shares, JHU represents to
the Company the following:
(a) JHU is aware of the Company's business affairs and financial
condition and has acquired sufficient information about the Company to reach an
informed and knowledgeable decision to acquire the Shares. JHU is acquiring the
Shares for investment for its own account only and not with a view to, or for
resale in connection with, any "distribution" thereof within the meaning of the
Securities Act of 1933, as amended (the "Securities Act").
(b) JHU understands that the Shares have not been registered
under the Securities Act by reason of a specific exemption therefrom, which
exemption depends upon, among other things, the bona fide nature of JHU's
investment intent as expressed herein.
(c) JHU understands that the Shares are characterized as
"restricted securities" under the federal securities laws inasmuch as they are
being acquired from the Company in a transaction not involving a public offering
and that under such laws and applicable regulations such securities may be
resold without registration under the Securities Act only in certain limited
circumstances. In this connection, JHU represents that it is generally familiar
with SEC Rule 144, as presently in effect ("Rule 144"), and that JHU understands
the resale limitations imposed thereby and by the Act.
(d) JHU represents that JHU has consulted any tax consultants
JHU deems advisable in connection the acquisition or disposition of the Shares
and that JHU is not relying on the Company for any tax advice.
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
Page 1 of 2
21
EXHIBIT 4.2(A)
COMMON STOCK PURCHASE AGREEMENT
(e) It is understood that the Common Stock, and any securities
issued in respect thereof or exchange therefor, will bear the following legend,
and may be resold only as set forth in the following legend:
THE SECURITIES HAVE NOT BEEN REGISTERED UNDER THE SECURITIES ACT OF
1933, AS AMENDED, AND MAY NOT BE SOLD, TRANSFERRED, ASSIGNED OR
HYPOTHECATED UNLESS THERE IS AN EFFECTIVE REGISTRATION STATEMENT
UNDER SUCH ACT COVERING SUCH SECURITIES, THE SALE IS MADE IN
ACCORDANCE WITH RULE 144 UNDER THE ACT, OR THE COMPANY RECEIVES AN
OPINION OF COUNSEL IN A FORM SATISFACTORY TO THE COMPANY, STATING
THAT SUCH SALE, TRANSFER, ASSIGNMENT OR HYPOTHECATION IS EXEMPT FROM
THE REGISTRATION AND PROSPECTUS DELIVERY REQUIREMENTS OF SUCH ACT.
(f) JHU is an "accredited investor" as defined in Rule 501
promulgated under the Securities Act.
3. Without in any way limiting the representations set forth in
Paragraph 2 above, JHU agrees not to make any disposition of all or any portion
of the Shares unless and until the transferee has agreed in writing for the
benefit of the Company to be bound by the terms and conditions of this
Agreement, and
(a) there is then in effect a registration statement under the
Securities Act covering such proposed disposition and such disposition is made
in accordance with such registration statement and any applicable state
securities laws; or
(b) (i) JHU shall have notified the Company of the proposed
disposition and shall have furnished the Company with a detailed statement of
the circumstances surrounding the proposed disposition, and (ii) if requested by
the Company, JHU shall have furnished the Company with an opinion of counsel,
reasonably satisfactory to the Company, that such disposition will not require
registration of such Shares under the Securities Act or any applicable state
securities laws. It is agreed that the Company will not require opinions of
counsel for transactions made pursuant to Rule 144, except in unusual
circumstances.
4. This Agreement may be executed in one or more counterparts each
of which shall be deemed an original, but all of which together shall constitute
one and the same.
5. JHU acknowledges and agrees that these Shares issued pursuant to
Paragraph 4.2B of the License Agreement shall be subject to a [*] restriction
on transfer as set forth in that License Agreement.
IN WITNESS WHEREOF, the undersigned, by each of their respective
duly authorized officers and representatives, have set forth their hands hereto
to be effective as of the date first set forth above.
GERON CORPORATION THE XXXXX XXXXXXX UNIVERSITY
/S/ Xxxxxx X. Xxxxxxx /S/ Xxxxxx X. Xxxxxxx
------------------------------- -------------------------------
Xxxxxx X. Xxxxxxx Authorized Signature
President and Name:
Chief Executive Officer --------------------------
Title:
-------------------------
Dated: 8/11/97 Dated: August 20, 97
------------------------- -------------------------
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
Page 2 of 2
22
EXHIBIT 4.2(B)
WARRANT AGREEMENT
THIS WARRANT HAS NOT BEEN REGISTERED UNDER THE SECURITIES ACT OF 1933, AS
AMENDED (THE "SECURITIES ACT"), OR ANY STATE SECURITIES LAWS, AND HAS BEEN
ACQUIRED FOR INVESTMENT AND NOT WITH A VIEW TO, OR IN CONNECTION WITH, THE SALE
OR DISTRIBUTION THEREOF. NO SUCH SALE OR DISPOSITION MAY BE EFFECTED WITHOUT AN
EFFECTIVE REGISTRATION STATEMENT RELATED THERETO OR AN OPINION OF COUNSEL,
REASONABLY SATISFACTORY TO THE COMPANY, THAT SUCH REGISTRATION IS NOT REQUIRED
UNDER THE SECURITIES ACT.
Warrant No. JHU-1 Number of Shares: [*]
Date of Issuance: August 1, 1997 (subject to adjustment)
GERON CORPORATION
COMMON STOCK WARRANT AGREEMENT
Geron Corporation (the "Company"), for value received, hereby
certifies that The Xxxxx Xxxxxxx University ("JHU"), or its registered assigns
(in accordance with Section 3 below) (the "Registered Holder"), is entitled,
subject to the terms set forth below, to purchase from the Company, at any time
after the date hereof and on or before the Expiration Date (as defined in
Section 6 below), up to [*] shares of Common Stock of the Company (as adjusted
from time to time pursuant to the terms of this Warrant) at a purchase price of
[*] per share. The shares purchasable upon exercise of this Warrant are
hereinafter referred to as the "Warrant Stock." The exercise price per share of
Warrant Stock is hereinafter referred to as the "Purchase Price."
1. EXERCISE.
(a) MANNER OF EXERCISE. This Warrant may be exercised by the
Registered Holder, in whole and not in part, by surrendering this Warrant, with
the purchase form appended hereto as Exhibit A duly executed by such Registered
Holder or by such Registered Holder's duly authorized attorney-in-fact, at the
principal office of the Company, or at such other office or agency as the
Company may designate, accompanied by payment in full by cash, check or wire
transfer of the Purchase Price payable in respect of the number of shares of
Warrant Stock purchased upon such exercise.
(b) EFFECTIVE TIME OF EXERCISE. The exercise of this Warrant
shall be deemed to have been effected immediately prior to the close of business
on the day on which this Warrant shall have been surrendered to the Company,
with payment of the applicable Purchase Price, as provided in Section 1(a)
above. At such time, the person or persons in whose name or names any
certificates for Warrant Stock shall be issuable upon such exercise as provided
in Section 1(c) below shall be deemed to have become the holder or holders of
record of the Warrant Stock represented by such certificates.
(c) DELIVERY TO REGISTERED HOLDER. As soon as practicable after
the exercise of this Warrant, and in any event within ten (10) days thereafter,
the Company at its expense will cause to be issued in the name of, and delivered
to, the Registered Holder, or as such Registered Holder (upon payment by such
Registered Holder of any applicable transfer taxes) may direct, a certificate or
certificates for the number of shares of Warrant Stock to which such Registered
Holder shall be entitled.
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
Page 1 of 6
23
EXHIBIT 4.2(B)
WARRANT AGREEMENT
2. CERTAIN ADJUSTMENTS.
(a) MERGERS OR CONSOLIDATIONS. If at any time there shall be a
capital reorganization (other than a combination or subdivision of Warrant Stock
otherwise provided for herein), or a merger or consolidation of the Company with
another corporation, then, as a part of such reorganization, merger or
consolidation, lawful provision shall be made so that the Registered Holder
shall thereafter be entitled to receive upon exercise of this Warrant, during
the period specified in this Warrant and upon payment of the Purchase Price, the
number of shares of stock or other securities or property of the Company or the
successor corporation resulting from such reorganization, merger or
consolidation, to which a holder of the Common Stock deliverable upon exercise
of this Warrant would have been entitled under the provisions of the agreement
in such reorganization, merger or consolidation if this Warrant had been
exercised immediately before that reorganization, merger or consolidation. In
any such case, appropriate adjustment (as determined in good faith by the
Company's Board of Directors) shall be made in the application of the provisions
of this Warrant with respect to the rights and interests of the Registered
Holder after the reorganization, merger or consolidation to the end that the
provisions of this Warrant (including adjustment of the Purchase Price then in
effect and the number of shares of Warrant Stock) shall be applicable after that
event, as near as reasonably may be, in relation to any shares or other property
deliverable after that event upon exercise of this Warrant.
(b) SPLITS AND SUBDIVISIONS; DIVIDENDS. In the event the Company
should at any time or from time to time fix a record date for the effectuation
of a split or subdivision of the outstanding shares of Common Stock or the
determination of the holders of Common Stock entitled to receive a dividend or
other distribution payable in additional shares of Common Stock or other
securities or rights convertible into, or entitling the holder thereof to
receive directly or indirectly, additional shares of Common Stock (hereinafter
referred to as the "Common Stock Equivalents") without payment of any
consideration by such holder for the additional shares of Common Stock or Common
Stock Equivalents (including the additional shares of Common Stock issuable upon
conversion or exercise thereof), then, as of such record date (or the date of
such distribution, split or subdivision if no record date is fixed), the per
share Purchase Price shall be appropriately decreased and the number of shares
of Warrant Stock shall be appropriately increased in proportion to such increase
(or potential increase) of outstanding shares.
(c) COMBINATION OF SHARES. If the number of shares of Common
Stock outstanding at any time after the date hereof is decreased by a
combination of the outstanding shares of Common Stock, the per share purchase
price shall be appropriately increased and the number of shares of Warrant Stock
shall be appropriately decreased in proportion to such decrease in outstanding
shares.
(d) ADJUSTMENT CERTIFICATE. When any adjustment is required to
be made in the securities issuable upon exercise of this Warrant, the Company
shall mail to the Registered Holder a certificate setting forth a statement of
the facts requiring such adjustment. Such certificate shall also set forth the
kind and amount of stock or other securities or property into which this Warrant
shall be exercisable following the occurrence of any of the events specified in
this Section 2.
3. TRANSFER RESTRICTIONS; REPRESENTATIONS.
(a) The Registered Holder of this Warrant acknowledges that this
Warrant and the Warrant Stock have not been registered under the Securities Act,
and agrees not to sell, pledge, distribute, offer for sale, transfer or
otherwise dispose of this Warrant or any Warrant Stock issued upon its exercise
in the absence of (i) an effective registration statement under the Securities
Act as to this Warrant or such
Page 2 of 6
24
EXHIBIT 4.2(B)
WARRANT AGREEMENT
Warrant Stock and registration or qualification of this Warrant or such Warrant
Stock or (ii) an opinion of counsel, reasonably satisfactory to the Company,
that such registration and qualification are not required. This Warrant is not
transferable without the prior written consent of the Company. It is understood
and agreed that the preceding sentence does not apply to, or limit the sale,
pledge, distribution, offers for sale, transfer or other disposition of, Warrant
Stock.
(b) The Registered Holder hereby further represents and warrants
to the Company with respect to the issuance of the Warrant and the purchase of
the Warrant Stock as follows:
(i) PURCHASE ENTIRELY FOR OWN ACCOUNT. This Warrant is
issued to the Registered Holder in reliance upon such Registered Holder's
representation to the Company, which by such Registered Holder's execution of
this Warrant such Registered Holder hereby confirms, that the Warrant and the
Warrant Stock will be acquired for investment for such Registered Holder's own
account, not as a nominee or agent, and not with a view to the resale or
distribution of any part thereof, and that such Registered Holder has no present
intention of selling, granting any participation in, or otherwise distributing
the same.
(ii) KNOWLEDGE AND EXPERIENCE; ABILITY TO BEAR ECONOMIC
RISKS. The Registered Holder has such knowledge and experience in financial and
business matters that it is capable of evaluating the merits and risks of the
investment contemplated by this Warrant and such party is able to bear the
economic risk of its investment in the Company (including a complete loss of its
investment).
(iii) RESALE. The Registered Holder understands that the
Warrant being issued hereunder and the Warrant Stock to be purchased hereunder
are characterized as "restricted securities" under the federal securities laws
inasmuch as they are being acquired from the Company in a transaction not
involving a public offering and that under such laws and applicable regulations,
such securities may be resold without registration under the Securities Act of
1933, as amended (the "Securities Act") only in certain circumstances. In this
regard, the Registered Holder represents that it is familiar with SEC Rule 144,
as presently in effect, and understands the resale limitations imposed thereby
and by the Securities Act.
(iv) LEGENDS. The Registered Holder acknowledges that all
stock certificates representing shares of stock issued to the Registered Holder
upon exercise of this Warrant may, if such Warrant Stock is not registered under
the Securities Act, have affixed thereto a legend substantially in the following
form:
(x) "THESE SECURITIES HAVE NOT BEEN REGISTERED UNDER
THE SECURITIES ACT OF 1933, AS AMENDED (THE "SECURITIES ACT"), OR ANY STATE
SECURITIES LAWS. THEY MAY NOT BE SOLD, OFFERED FOR SALE, PLEDGED, HYPOTHECATED
OR OTHERWISE TRANSFERRED IN THE ABSENCE OF A REGISTRATION STATEMENT IN EFFECT
WITH RESPECT TO THE SECURITIES UNDER SUCH SECURITIES ACT OR AN OPINION OF
COUNSEL SATISFACTORY TO THE COMPANY THAT SUCH REGISTRATION IS NOT REQUIRED OR
UNLESS SOLD PURSUANT TO AN EXEMPTION TO SUCH SECURITIES ACT."
(y) Any legend required by the laws of any state in
which the securities will be issued.
(c) Subject to the provisions of Section 3(a) hereof, this
Warrant and all rights hereunder are transferable in whole but not in part upon
surrender of the Warrant with a properly executed assignment (in the form of
Exhibit B hereto) at the principal office of the Company.
Page 3 of 6
25
EXHIBIT 4.2(B)
WARRANT AGREEMENT
(d) The Company may treat the Registered Holder of this Warrant
as the absolute owner hereof for all purposes; provided, however, that if and
when this Warrant is properly assigned in blank, the Company may (but shall not
be required to) treat the bearer hereof as the absolute owner hereof for all
purposes, notwithstanding any notice to the contrary.
(e) The Company will maintain a register containing the names
and addresses of the Registered Holders of this Warrant. Any Registered Holder
may change such Registered Holder's address as shown on the warrant register by
written notice to the Company requesting such change.
(f) The Company hereby represents and warrants to the Registered
Holder as follows:
(i) The Company is a corporation validly existing and in
good standing under the laws of the State of Delaware.
(ii) The Company has full corporate right, power and
authority (including the due authorization by all necessary corporate action) to
enter into this Warrant and to perform its obligations hereunder without the
need for the consent of any other person; and this Warrant has been duly
authorized, executed and delivered and constitutes legal, valid and binding
obligations of the Company enforceable against it in accordance with the terms
hereof and thereof. The execution, delivery and performance of this Warrant by
the Company does not contravene or violate any laws, rules or regulations
applicable to it.
(iii) The Company has taken such corporate action as is
necessary or appropriate to enable it to perform its obligations hereunder,
including, but not limited to, the issuance, sale and delivery of the Warrant.
(iv) The Warrant Stock, when issued and paid for in
compliance with the provisions of this Warrant, will be validly issued, fully
paid and non-assessable.
(v) JHU acknowledges and agrees that the warrant stock
shall be subject to a [*] restriction on transfer as set forth in the
License Agreement between JHU and the Company having an effective date of August
1, 1997.
4. NO IMPAIRMENT. The Company will not, by amendment of its charter
or through reorganization, consolidation, merger, dissolution, sale of assets or
any other voluntary action, avoid or seek to avoid the observance or performance
of any of the terms of this Warrant, but will at all times in good faith assist
in the carrying out of all such terms and in the taking of all such action as
may be necessary or appropriate in order to protect the rights of the holder of
this Warrant against impairment.
5. TERMINATION. This Warrant (and the right to purchase securities
upon exercise hereof) shall terminate upon the tenth anniversary of the Date of
Issuance (the "Expiration Date").
6. NOTICES OF CERTAIN TRANSACTIONS. In case:
(a) the Company shall take a record of the holders of its
Common Stock (or other stock or securities at the time deliverable upon the
exercise of this Warrant) for the purpose of entitling or enabling them to
receive any dividend or other distribution, or any right to subscribe for,
purchase or otherwise acquire any shares of stock of any class or any other
securities or property, or to receive any other right; or
* Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
Page 4 of 6
26
EXHIBIT 4.2(B)
WARRANT AGREEMENT
(b) of any capital reorganization of the Company, any
reclassification of the capital stock of the Company, any consolidation or
merger of the Company, any consolidation or merger of the Company with or into
another corporation (other than a consolidation or merger in which the Company
is the surviving entity), or any transfer of all or substantially all of the
assets of the Company, or
(c) of the voluntary or involuntary dissolution, liquidation or
winding-up of the Company, then, and in each such case, the Company will mail or
cause to be mailed to the Registered Holder of this Warrant a notice specifying,
as the case may be, (i) the date on which a record is to be taken for the
purpose of such dividend, distribution or right, and stating the amount and
character of such dividend, distribution or right, and (ii) the effective date
on which such reorganization, reclassification, consolidation, merger, transfer,
dissolution, liquidation or winding-up is expected to take place, and the record
date for determining shareholders entitled to vote thereon. Such notice shall be
mailed at least ten (10) calendar days prior to the record date or effective
date for the event specified in such notice.
7. RESERVATION OF STOCK. The Company will at all times reserve and
keep available, solely for the issuance and delivery upon the exercise of this
Warrant, such shares of Warrant Stock or other stock or securities, as from time
to time shall be issuable upon the exercise of this Warrant.
8. EXCHANGE OF WARRANTS. Upon the surrender by the Registered Holder
of any Warrant, properly endorsed, to the Company at the principal office of the
Company, the Company will, subject to the provisions of Section 3(a) hereof,
issue and deliver to or upon the order of such Registered Holder, at the
Company's expense, a new Warrant of like tenor, in the name of such Registered
Holder or as such Registered Holder (upon payment by such Registered Holder of
any applicable transfer taxes) may direct, calling in the aggregate on the face
or faces thereof for the number of shares of Common Stock called for on the face
or faces of the Warrant so surrendered.
9. REPLACEMENT OF WARRANTS. Upon receipt of evidence reasonably
satisfactory to the Company of the loss, theft, destruction or mutilation of
this Warrant and (in the case of loss, theft or destruction) upon delivery of an
indemnity agreement (with surety if reasonably required) in an amount reasonably
satisfactory to the Company, or (in the case of mutilation) upon surrender and
cancellation of this Warrant, the Company will issue, in lieu thereof, a new
Warrant of like tenor.
10. MAILING OF NOTICES. Any notice required or permitted by this
Warrant shall be in writing and shall be deemed sufficient upon receipt, when
delivered personally or by a nationally-recognized delivery service (such as
Federal Express or UPS) or confirmed facsimile, or forty-eight (48) hours after
being deposited in the U.S. mail as certified or registered mail with postage
prepaid, if such notice is addressed to the party to be notified at such party's
address or facsimile number as set forth below or as subsequently modified by
written notice.
11. NO RIGHTS AS STOCKHOLDER. Until the exercise of this Warrant,
the Registered Holder of this Warrant shall not have or exercise any rights by
virtue hereof as a stockholder of the Company (including without limitation the
right to notification of stockholder meetings or the right to receive any notice
or other communication concerning the business or affairs of the Company).
12. NO FRACTIONAL SHARES. No fractional shares of Common Stock will
be issued in connection with any exercise hereunder. In lieu of any fractional
shares which would otherwise be issuable, the Company shall pay cash equal to
the product of such fraction multiplied by the fair
Page 5 of 6
27
EXHIBIT 4.2(B)
WARRANT AGREEMENT
market value of one share of Common Stock on the date of exercise, as determined
in good faith by the Company's Board of Directors.
13. AMENDMENT OR WAIVER. Any term of this Warrant may be amended or
waived only by an instrument in writing signed by the party against which
enforcement of the amendment or waiver is sought.
14. HEADINGS. The headings in this Warrant are for purposes of
reference only and shall not limit or otherwise affect the meaning of any
provision of this Warrant.
15. SUCCESSORS AND ASSIGNS. The terms and provisions of this Warrant
shall inure to the benefit of, and be binding upon, the Company and the
Registered Holder and their respective permitted successors and assigns (in the
case of the Registered Holder, in accordance with Section 3).
16. GOVERNING LAW. This Warrant shall be governed, construed and
interpreted in accordance with the laws of the State of California, without
giving effect to principles of conflicts of law.
GERON CORPORATION THE XXXXX XXXXXXX UNIVERSITY
[SIG] [SIG]
----------------------------- -----------------------------------
Signature Signature
Name: Xxxxxx X. Xxxxxxx Name: Xxxx X. Xxxxx, M.D.
------------------------ ------------------------------
Title: President and CEO Title: Vice Xxxx for Research and
----------------------- Technology
-----------------------------
Address: 230 Constitution Dr. Address:
--------------------- ---------------------------
Xxxxx Xxxx, XX 00000
--------------------- ---------------------------
Facsimile: 650-473-7701 Facsimile:
--------------------- --------------------------
Dated: 8/11/97 Dated: August 20, 1997
--------------------- ----------------------------
Page 6 of 6
28
EXHIBIT A
PURCHASE FORM
To: GERON CORPORATION Date:
The undersigned, pursuant to the provisions set forth in the
attached Warrant, hereby irrevocably elects to purchase ___________ shares of
the Common Stock covered by such Warrant and herewith makes payment of
$___________, representing the full purchase price for such shares at the price
per share provided for in such Warrant.
The undersigned hereby confirms and acknowledges the investment
representations and warranties made in Section 4 of the Warrant and accepts such
shares subject to the restrictions of the Warrant, copies of which are available
from the Secretary of the Company.
---------------------------------
Signature
Name:
----------------------------
Title:
---------------------------
Address:
-------------------------
-------------------------
29
EXHIBIT B
ASSIGNMENT FORM
FOR VALUE RECEIVED, _________________________________________ hereby sells,
assigns and transfers all of the rights of the undersigned under the attached
Warrant with respect to the number of shares of Common Stock covered thereby set
forth below, unto:
NAME OF ASSIGNEE ADDRESS NO. OF SHARES
------------------------- -------------------------
Signature Dated:
Witness:
-----------------
-----------------
30
EXHIBIT 4.6(A)
FORM OF COMMON STOCK PURCHASE AGREEMENT
This Common Stock Purchase Agreement (the "Agreement") is made as of
__________, 1997, by and between Geron Corporation, a Delaware corporation ("the
Company"), and The Xxxxx Xxxxxxx University, a Maryland corporation ("JHU").
WHEREAS, JHU and the Company have entered into a License Agreement
(the "License Agreement") having an effective date of August 1st, 1997.
WHEREAS, pursuant to Article 4, Paragraph 4.6 of the License
Agreement, the Company has agreed to issue to JHU __________ (__________) shares
of the Company's Common Stock (the "Shares") in consideration of the achievement
of certain milestones set forth in the License Agreement.
NOW, THEREFORE, for good and valuable consideration, the receipt and
adequacy of which is hereby acknowledged, the Company and JHU hereby agree as
follows:
1. The Company agrees to issue to JHU the Shares. The issuance of
the Shares shall take place at such time and place upon which the Company and
JHU mutually agree, either orally or in writing, but, in no event later than
thirty (30) days after the achievement of the applicable milestone set forth in
Section 4.6 of the License Agreement (the "Closing"). At the Closing, or within
ten (10) business days thereafter, the Company will deliver to JHU a certificate
representing the Shares.
2. In connection with the issuance of the Shares, JHU represents to
the Company the following:
(a) JHU is aware of the Company's business affairs and financial
condition and has acquired sufficient information about the Company to reach an
informed and knowledgeable decision to acquire the Shares. JHU is acquiring the
Shares for investment for its own account only and not with a view to, or for
resale in connection with, any "distribution" thereof within the meaning of the
Securities Act of 1933, as amended (the "Securities Act").
(b) JHU understands that the Shares have not been registered
under the Securities Act by reason of a specific exemption therefrom, which
exemption depends upon, among other things, the bona fide nature of JHU's
investment intent as expressed herein.
(c) JHU understands that the Shares are characterized as
"restricted securities" under the federal securities laws inasmuch as they are
being acquired from the Company in a transaction not involving a public offering
and that under such laws and applicable regulations such securities may be
resold without registration under the Securities Act only in certain limited
circumstances. In this connection, JHU represents that it is generally familiar
with SEC Rule 144, as presently in effect ("Rule 144"), and that JHU understands
the resale limitations imposed thereby and by the Act.
(d) JHU represents that JHU has consulted any tax consultants
JHU deems advisable in connection the acquisition or disposition of the Shares
and that JHU is not relying on the Company for any tax advice.
(e) It is understood that the Common Stock, and any securities
issued in respect thereof or exchange therefor, will bear the following legend,
and may be resold only as set forth in the following legend:
Page 1 of 2
31
EXHIBIT 4.6(A)
FORM OF COMMON STOCK PURCHASE AGREEMENT
THE SECURITIES HAVE NOT BEEN REGISTERED UNDER THE SECURITIES ACT OF
1933, AS AMENDED, AND MAY NOT BE SOLD, TRANSFERRED, ASSIGNED OR
HYPOTHECATED UNLESS THERE IS AN EFFECTIVE REGISTRATION STATEMENT
UNDER SUCH ACT COVERING SUCH SECURITIES, THE SALE IS MADE IN
ACCORDANCE WITH RULE 144 UNDER THE ACT, OR THE COMPANY RECEIVES AN
OPINION OF COUNSEL IN A FORM SATISFACTORY TO THE COMPANY, STATING
THAT SUCH SALE, TRANSFER, ASSIGNMENT OR HYPOTHECATION IS EXEMPT FROM
THE REGISTRATION AND PROSPECTUS DELIVERY REQUIREMENTS OF SUCH ACT.
(f) JHU is an "accredited investor" as defined in Rule 501
promulgated under the Securities Act.
3. Without in anyway limiting the representations set forth in
Paragraph 2 above, JHU agrees not to make any disposition of all or any portion
of the Shares unless and until the transferee has agreed in writing for the
benefit of the Company to be bound by the terms and conditions of this
Agreement, and
(a) There is then in effect a registration statement under the
Securities Act covering such proposed disposition and such disposition is made
in accordance with such registration statement and any applicable state
securities laws; or
(b) (i) JHU shall have notified the Company of the proposed
disposition and shall have furnished the Company with a detailed statement of
the circumstances surrounding the proposed disposition, and (ii) if requested by
the Company, JHU shall have furnished the Company with an opinion of counsel,
reasonably satisfactory to the Company, that such disposition will not require
registration of such Shares under the Securities Act or any applicable state
securities laws. It is agreed that the Company will not require opinions of
counsel for transactions made pursuant to Rule 144, except in unusual
circumstances.
4. This Agreement may be executed in one or more counterparts each
of which shall be deemed an original, but all of which together shall constitute
one and the same.
IN WITNESS WHEREOF, the undersigned, by each of their respective
duly authorized officers and representatives, have set forth their hands hereto
to be effective as of the date first set forth above.
GERON CORPORATION THE XXXXX XXXXXXX UNIVERSITY
------------------------- -------------------------
Xxxxxx X. Xxxxxxx Authorized Signature
President and Name:
Chief Executive Officer --------------------
Title:
-------------------
Dated: Dated:
------------------- -------------------
Page 2 of 2
32
EXHIBIT 4.6(B)
FORM OF WARRANT
THIS WARRANT HAS NOT BEEN REGISTERED UNDER THE SECURITIES ACT OF 1933, AS
AMENDED (THE "SECURITIES ACT"), OR ANY STATE SECURITIES LAWS, AND HAS BEEN
ACQUIRED FOR INVESTMENT AND NOT WITH A VIEW TO, OR IN CONNECTION WITH, THE SALE
OR DISTRIBUTION THEREOF. NO SUCH SALE OR DISPOSITION MAY BE EFFECTED WITHOUT AN
EFFECTIVE REGISTRATION STATEMENT RELATED THERETO OR AN OPINION OF COUNSEL,
REASONABLY SATISFACTORY TO THE COMPANY, THAT SUCH REGISTRATION IS NOT REQUIRED
UNDER THE SECURITIES ACT.
Warrant No. JHU-______________ Number of Shares: _________
Date of Issuance: ___________ (subject to adjustment)
GERON CORPORATION
COMMON STOCK WARRANT AGREEMENT
Geron Corporation (the "Company"), for value received, hereby
certifies that The Xxxxx Xxxxxxx University ("JHU"), or its registered assigns
(in accordance with Section 3 below) (the "Registered Holder"), is entitled,
subject to the terms set forth below, to purchase from the Company, at any time
after the date hereof and on or before the Expiration Date (as defined in
Section 6 below), up to ________ shares of Common Stock of the Company (as
adjusted from time to time pursuant to the terms of this Warrant) at a purchase
price of $_______ per share. The shares purchasable upon exercise of this
Warrant are hereinafter referred to as the "Warrant Stock." The exercise price
per share of Warrant Stock is hereinafter referred to as the "Purchase Price."
1. EXERCISE.
(a) MANNER OF EXERCISE. This Warrant may be exercised by the
Registered Holder, in whole and not in part, by surrendering this Warrant, with
the purchase form appended hereto as Exhibit A duly executed by such Registered
Holder or by such Registered Holder's duly authorized attorney-in-fact, at the
principal office of the Company, or at such other office or agency as the
Company may designate, accompanied by payment in full by cash, check or wire
transfer of the Purchase Price payable in respect of the number of shares of
Warrant Stock purchased upon such exercise.
(b) EFFECTIVE TIME OF EXERCISE. The exercise of this Warrant
shall be deemed to have been effected immediately prior to the close of business
on the day on which this Warrant shall have been surrendered to the Company,
with payment of the applicable Purchase Price, as provided in Section 1(a)
above. At such time, the person or persons in whose name or names any
certificates for Warrant Stock shall be issuable upon such exercise as provided
in Section 1(c) below shall be deemed to have become the holder or holders of
record of the Warrant Stock represented by such certificates.
(c) DELIVERY TO REGISTERED HOLDER. As soon as practicable after
the exercise of this Warrant, and in any event within ten (10) days thereafter,
the Company at its expense will cause to be issued in the name of, and delivered
to, the Registered Holder, or as such Registered Holder (upon payment by such
Registered Holder of any applicable transfer taxes) may direct, a certificate or
certificates for the number of shares of Warrant Stock to which such Registered
Holder shall be entitled.
Page 1 of 6
33
EXHIBIT 4.6(B)
FORM OF WARRANT
2. CERTAIN ADJUSTMENTS.
(a) MERGERS OR CONSOLIDATIONS. If at any time there shall be a
capital reorganization (other than a combination or subdivision of Warrant Stock
otherwise provided for herein), or a merger or consolidation of the Company with
another corporation, then, as a part of such reorganization, merger or
consolidation, lawful provision shall be made so that the Registered Holder
shall thereafter be entitled to receive upon exercise of this Warrant, during
the period specified in this Warrant and upon payment of the Purchase Price, the
number of shares of stock or other securities or property of the Company or the
successor corporation resulting from such reorganization, merger or
consolidation, to which a holder of the Common Stock deliverable upon exercise
of this Warrant would have been entitled under the provisions of the agreement
in such reorganization, merger or consolidation if this Warrant had been
exercised immediately before that reorganization, merger or consolidation. In
any such case, appropriate adjustment (as determined in good faith by the
Company's Board of Directors) shall be made in the application of the provisions
of this Warrant with respect to the rights and interests of the Registered
Holder after the reorganization, merger or consolidation to the end that the
provisions of this Warrant (including adjustment of the Purchase Price then in
effect and the number of shares of Warrant Stock) shall be applicable after that
event, as near as reasonably may be, in relation to any shares or other property
deliverable after that event upon exercise of this Warrant.
(b) SPLITS AND SUBDIVISIONS; DIVIDENDS. In the event the Company
should at any time or from time to time fix a record date for the effectuation
of a split or subdivision of the outstanding shares of Common Stock or the
determination of the holders of Common Stock entitled to receive a dividend or
other distribution payable in additional shares of Common Stock or other
securities or rights convertible into, or entitling the holder thereof to
receive directly or indirectly, additional shares of Common Stock (hereinafter
referred to as the "Common Stock Equivalents") without payment of any
consideration by such holder for the additional shares of Common Stock or Common
Stock Equivalents (including the additional shares of Common Stock issuable upon
conversion or exercise thereof), then, as of such record date (or the date of
such distribution, split or subdivision if no record date is fixed), the per
share Purchase Price shall be appropriately decreased and the number of shares
of Warrant Stock shall be appropriately increased in proportion to such increase
(or potential increase) of outstanding shares.
(c) COMBINATION OF SHARES. If the number of shares of Common
Stock outstanding at any time after the date hereof is decreased by a
combination of the outstanding shares of Common Stock, the per share purchase
price shall be appropriately increased and the number of shares of Warrant Stock
shall be appropriately decreased in proportion to such decrease in outstanding
shares.
(d) ADJUSTMENT CERTIFICATE. When any adjustment is required to be
made in the securities issuable upon exercise of this Warrant, the Company shall
mail to the Registered Holder a certificate setting forth a statement of the
facts requiring such adjustment. Such certificate shall also set forth the kind
and amount of stock or other securities or property into which this Warrant
shall be exercisable following the occurrence of any of the events specified in
this Section 2.
3. TRANSFER RESTRICTIONS; REPRESENTATIONS.
(a) The Registered Holder of this Warrant acknowledges that this
Warrant and the Warrant Stock have not been registered under the Securities Act,
and agrees not to sell, pledge, distribute, offer for sale, transfer or
otherwise dispose of this Warrant or any Warrant Stock issued upon its exercise
in the absence of (i) an effective registration statement under the Securities
Act as to this Warrant or such
Page 2 of 6
34
EXHIBIT 4.6(B)
FORM OF WARRANT
Warrant Stock and registration or qualification of this Warrant or such Warrant
Stock or (ii) an opinion of counsel, reasonably satisfactory to the Company,
that such registration and qualification are not required. This Warrant is not
transferable without the prior written consent of the Company. It is understood
and agreed that the preceding sentence does not apply to, or limit the sale,
pledge, distribution, offers for sale, transfer or other disposition of, Warrant
Stock.
(b) The Registered Holder hereby further represents and warrants
to the Company with respect to the issuance of the Warrant and the purchase of
the Warrant Stock as follows:
(i) PURCHASE ENTIRELY FOR OWN ACCOUNT. This Warrant is
issued to the Registered Holder in reliance upon such Registered Holder's
representation to the Company, which by such Registered Holder's execution of
this Warrant such Registered Holder hereby confirms, that the Warrant and the
Warrant Stock will be acquired for investment for such Registered Holder's own
account, not as a nominee or agent, and not with a view to the resale or
distribution of any part thereof, and that such Registered Holder has no present
intention of selling, granting any participation in, or otherwise distributing
the same.
(ii) KNOWLEDGE AND EXPERIENCE; ABILITY TO BEAR ECONOMIC
RISKS. The Registered Holder has such knowledge and experience in financial and
business matters that it is capable of evaluating the merits and risks of the
investment contemplated by this Warrant and such party is able to bear the
economic risk of its investment in the Company (including a complete loss of its
investment).
(iii) RESALE. The Registered Holder understands that the
Warrant being issued hereunder and the Warrant Stock to be purchased hereunder
are characterized as "restricted securities" under the federal securities laws
inasmuch as they are being acquired from the Company in a transaction not
involving a public offering and that under such laws and applicable regulations,
such securities may be resold without registration under the Securities Act of
1933, as amended (the "Securities Act") only in certain circumstances. In this
regard, the Registered Holder represents that it is familiar with SEC Rule 144,
as presently in effect, and understands the resale limitations imposed thereby
and by the Securities Act.
(iv) LEGENDS. The Registered Holder acknowledges that all
stock certificates representing shares of stock issued to the Registered Holder
upon exercise of this Warrant may, if such Warrant Stock is not registered under
the Securities Act, have affixed thereto a legend substantially in the following
form:
(x) "THESE SECURITIES HAVE NOT BEEN REGISTERED UNDER
THE SECURITIES ACT OF 1933, AS AMENDED (THE "SECURITIES ACT"), OR ANY STATE
SECURITIES LAWS. THEY MAY NOT BE SOLD, OFFERED FOR SALE, PLEDGED, HYPOTHECATED
OR OTHERWISE TRANSFERRED IN THE ABSENCE OF A REGISTRATION STATEMENT IN EFFECT
WITH RESPECT TO THE SECURITIES UNDER SUCH SECURITIES ACT OR AN OPINION OF
COUNSEL SATISFACTORY TO THE COMPANY THAT SUCH REGISTRATION IS NOT REQUIRED OR
UNLESS SOLD PURSUANT TO AN EXEMPTION TO SUCH SECURITIES ACT."
(y) Any legend required by the laws of any state in
which the securities will be issued.
(c) Subject to the provisions of Section 3(a) hereof, this
Warrant and all rights hereunder are transferable in whole but not in part upon
surrender of the Warrant with a properly executed assignment (in the form of
Exhibit B hereto) at the principal office of the Company.
Page 3 of 6
35
EXHIBIT 4.6(B)
FORM OF WARRANT
(d) The Company may treat the Registered Holder of this Warrant
as the absolute owner hereof for all purposes; provided, however, that if and
when this Warrant is properly assigned in blank, the Company may (but shall not
be required to) treat the bearer hereof as the absolute owner hereof for all
purposes, notwithstanding any notice to the contrary.
(e) The Company will maintain a register containing the names
and addresses of the Registered Holders of this Warrant. Any Registered Holder
may change such Registered Holder's address as shown on the warrant register by
written notice to the Company requesting such change.
(f) The Company hereby represents and warrants to the Registered
Holder as follows:
(i) The Company is a corporation validly existing and in
good standing under the laws of the State of Delaware.
(ii) The Company has full corporate right, power and
authority (including the due authorization by all necessary corporate action) to
enter into this Warrant and to perform its obligations hereunder without the
need for the consent of any other person; and this Warrant has been duly
authorized, executed and delivered and constitutes legal, valid and binding
obligations of the Company enforceable against it in accordance with the terms
hereof and thereof. The execution, delivery and performance of this Warrant by
the Company does not contravene or violate any laws, rules or regulations
applicable to it.
(iii) The Company has taken such corporate action as is
necessary or appropriate to enable it to perform its obligations hereunder,
including, but not limited to, the issuance, sale and delivery of the Warrant.
(iv) The Warrant Stock, when issued and paid for in
compliance with the provisions of this Warrant, will be validly issued, fully
paid and non-assessable.
4. NO IMPAIRMENT. The Company will not, by amendment of its charter
or through reorganization, consolidation, merger, dissolution, sale of assets or
any other voluntary action, avoid or seek to avoid the observance or performance
of any of the terms of this Warrant, but will at all times in good faith assist
in the carrying out of all such terms and in the taking of all such action as
may be necessary or appropriate in order to protect the rights of the holder of
this Warrant against impairment.
5. TERMINATION. This Warrant (and the right to purchase securities
upon exercise hereof) shall terminate upon the tenth anniversary of the Date of
Issuance (the "Expiration Date").
6. NOTICES OF CERTAIN TRANSACTIONS. In case:
(a) the Company shall take a record of the holders of its Common
Stock (or other stock or securities at the time deliverable upon the exercise of
this Warrant) for the purpose of entitling or enabling them to receive any
dividend or other distribution, or any right to subscribe for, purchase or
otherwise acquire any shares of stock of any class or any other securities or
property, or to receive any other right; or
(b) of any capital reorganization of the Company, any
reclassification of the capital stock of the Company, any consolidation or
merger of the Company, any consolidation or merger of the Company with or into
another corporation (other than a consolidation or merger in which the Company
is the surviving entity), or any transfer of all or substantially all of the
assets of the Company, or
Page 4 of 6
36
EXHIBIT 4.6(B)
FORM OF WARRANT
(c) of the voluntary or involuntary dissolution, liquidation or
winding-up of the Company, then, and in each such case, the Company will mail or
cause to be mailed to the Registered Holder of this Warrant a notice specifying,
as the case may be, (i) the date on which a record is to be taken for the
purpose of such dividend, distribution or right, and stating the amount and
character of such dividend, distribution or right, and (ii) the effective date
on which such reorganization, reclassification, consolidation, merger, transfer,
dissolution, liquidation or winding-up is expected to take place, and the record
date for determining shareholders entitled to vote thereon. Such notice shall be
mailed at least ten (10) calendar days prior to the record date or effective
date for the event specified in such notice.
7. RESERVATION OF STOCK. The Company will at all times reserve and
keep available, solely for the issuance and delivery upon the exercise of this
Warrant, such shares of Warrant Stock or other stock or securities, as from time
to time shall be issuable upon the exercise of this Warrant.
8. EXCHANGE OF WARRANTS. Upon the surrender by the Registered Holder
of any Warrant, properly endorsed, to the Company at the principal office of the
Company, the Company will, subject to the provisions of Section 3(a) hereof,
issue and deliver to or upon the order of such Registered Holder, at the
Company's expense, a new Warrant of like tenor, in the name of such Registered
Holder or as such Registered Holder (upon payment by such Registered Holder of
any applicable transfer taxes) may direct, calling in the aggregate on the face
or faces thereof for the number of shares of Common Stock called for on the face
or faces of the Warrant so surrendered.
9. REPLACEMENT OF WARRANTS. Upon receipt of evidence reasonably
satisfactory to the Company of the loss, theft, destruction or mutilation of
this Warrant and (in the case of loss, theft or destruction) upon delivery of an
indemnity agreement (with surety if reasonably required) in an amount reasonably
satisfactory to the Company, or (in the case of mutilation) upon surrender and
cancellation of this Warrant, the Company will issue, in lieu thereof, a new
Warrant of like tenor.
10. MAILING OF NOTICES. Any notice required or permitted by this
Warrant shall be in writing and shall be deemed sufficient upon receipt, when
delivered personally or by a nationally-recognized delivery service (such as
Federal Express or UPS) or confirmed facsimile, or forty-eight (48) hours after
being deposited in the U.S. mail as certified or registered mail with postage
prepaid, if such notice is addressed to the party to be notified at such party's
address or facsimile number as set forth below or as subsequently modified by
written notice.
11. NO RIGHTS AS STOCKHOLDER. Until the exercise of this Warrant,
the Registered Holder of this Warrant shall not have or exercise any rights by
virtue hereof as a stockholder of the Company (including without limitation the
right to notification of stockholder meetings or the right to receive any notice
or other communication concerning the business or affairs of the Company).
12. NO FRACTIONAL SHARES. No fractional shares of Common Stock will
be issued in connection with any exercise hereunder. In lieu of any fractional
shares which would otherwise be issuable, the Company shall pay cash equal to
the product of such fraction multiplied by the fair market value of one share of
Common Stock on the date of exercise, as determined in good faith by the
Company's Board of Directors.
13. AMENDMENT OR WAIVER. Any term of this Warrant may be amended or
waived only by an instrument in writing signed by the party against which
enforcement of the amendment or waiver is sought.
Page 5 of 6
37
EXHIBIT 4.6(B)
FORM OF WARRANT
14. HEADINGS. The headings in this Warrant are for purposes of
reference only and shall not limit or otherwise affect the meaning of any
provision of this Warrant.
15. SUCCESSORS AND ASSIGNS. The terms and provisions of this Warrant
shall inure to the benefit of, and be binding upon, the Company and the
Registered Holder and their respective permitted successors and assigns (in the
case of the Registered Holder, in accordance with Section 3).
16. GOVERNING LAW. This Warrant shall be governed, construed and
interpreted in accordance with the laws of the State of California, without
giving effect to principles of conflicts of law.
GERON CORPORATION REGISTERED HOLDER
-------------------------- --------------------------
Signature Signature
Name: Name:
--------------------- ---------------------
Title: Title:
-------------------- --------------------
Address: Address:
------------------ -------------------
Facsimile: Facsimile:
---------------- -----------------
Dated: Dated:
-------------------- --------------------
Page 6 of 6
38
EXHIBIT A
PURCHASE FORM
To: GERON CORPORATION Dated:__________________
The undersigned, pursuant to the provisions set forth in the
attached Warrant, hereby irrevocably elects to purchase ___________ shares of
the Common Stock covered by such Warrant and herewith makes payment of
$___________, representing the full purchase price for such shares at the price
per share provided for in such Warrant.
The undersigned hereby confirms and acknowledges the investment
representations and warranties made in Section 4 of the Warrant and accepts such
shares subject to the restrictions of the Warrant, copies of which are available
from the Secretary of the Company.
-------------------------------
Signature
Name:
--------------------------
Title:
-------------------------
Address:
-----------------------
-----------------------
39
EXHIBIT B
ASSIGNMENT FORM
FOR VALUE RECEIVED, _________________________________________ hereby sells,
assigns and transfers all of the rights of the undersigned under the attached
Warrant with respect to the number of shares of Common Stock covered thereby set
forth below, unto:
NAME OF ASSIGNEE ADDRESS NO. OF SHARES
------------------------------- -----------------------
Signature Dated:
Witness:
-----------------------
-----------------------
