SUBLICENSE AGREEMENT
UNDER
RESEARCH & DEVELOPMENT INSTITUTE, INC. LICENSE AGREEMENT
THIS AGREEMENT, is made and entered into as of the 27th of May, 1998
("AGREEMENT DATE"), by and between CYTOCLONAL PHARMACEUTICS INC.
(hereinafter called "CPI"), a Delaware corporation having an operating
office in Dallas, Texas, and XXXXXXX-XXXXX SQUIBB COMPANY (hereinafter called
"BMS"), a Delaware corporation having a principal place of business in
Princeton, New Jersey.
W I T N E S S E T H:
WHEREAS, CPI and Research & Development Institute, Inc. (hereinafter
called "RDI") entered into a License Agreement dated as of June 10, 1993,
which License Agreement is proposed by CPI and BMS to be amended and restated
in its entirety pursuant to a certain form of amendment and restatement
agreed by the parties (as so amended and restated, hereinafter called the
"RDI/CPI LICENSE AGREEMENT");
WHEREAS, Under the RDI/CPI License Agreement CPI licensed from RDI
patent and other intellectual property rights relating to a "Taxol Producing
Organism System";
WHEREAS, RDI and CPI also entered into a related Research and
Development Agreement (such agreement, as may be amended, supplemented and
extended from time to time, (the "CPI/RDI RESEARCH AGREEMENT"), which would
give rise to patent and other intellectual property rights to be licensed to
CPI under the RDI/CPI License Agreement;
WHEREAS, BMS wishes to obtain from CPI an exclusive sublicense to all
patent and other intellectual property rights licensed by CPI from RDI under
the RDI/CPI License Agreement; and
WHEREAS, CPI is willing to sublicense exclusively such patent and other
intellectual property rights to BMS subject to the conditions as set forth
herein;
NOW, THEREFORE, for and in consideration of the premises and other good
and valuable considerations, the receipt and sufficiency of which are hereby
acknowledged, CPI and BMS hereby agree as follows:
I. DEFINITIONS
A. The term "MICROBIAL DRUG SUBSTANCE PRODUCING SYSTEM" shall mean a
system developed by Xx. Xxxx X. Xxxxxxx, Xx. Xxxxxx Xxxxxxx and Xx.
Xxxxxx Xxxxxxx of Montana State University and Montana College of
Mineral Science and
Technology and/or which otherwise emanates from any of their
laboratories comprising:
(1) Isolation methods for and use of TAXOMYCES ANDREANAE, other
fungi and other microorganisms that produce paclitaxel, other
taxanes and other chemical compounds which are useful in
treating one or more diseases (diseases, as used in this
Clause A, include all human diseases and disorders);
(2) Components derived from the Pacific Yew tree or other sources
that produce or effect the production of paclitaxel, other
taxanes and other chemical compounds useful for the treatment
of one or more diseases; and
(3) Any and all written material developed by Xx. Xxxx X. Xxxxxxx,
Xx. Xxxxxx Xxxxxxx and Xx. Xxxxxx Xxxxxxx disclosing the
isolation, characterization and determination of the role of
T. BREVIFOLIA leaves and other components useful for the
treatment of one or more diseases.
B. The term "INTELLECTUAL PROPERTY RIGHTS" shall mean all U.S. and
Foreign patents or applications for patents owned by RDI, insofar as
the claims of such patents or applications cover in whole or in part
the Microbial Drug Substance Producing system, including any
reissues, renewals, extensions, continuations or
continuations-in-part; know-how relating to the Microbial Drug
Substance Producing System; and any other intellectual property,
including copyrighted works and any trademarks relating to the
development and use of the Microbial Drug Substance Producing
System, in each case as was licensed by RDI to CPI under the
RDI/CPI License Agreement, which include all
paclitaxel/taxane-related technology, including, without limitation,
all organisms, recombinants, constructs, derivatives and components
thereof which produce or affect the production of paclitaxel and
other taxanes or any chemical or factor which affects the production
level or activity of paclitaxel and other taxanes and any chemical
modification and/or production of paclitaxel or other taxanes in
treating cancer or any other disease or other commercial uses
emanating from the laboratories of Xx. Xxxx Xxxxxxx, Xx. Xxxxxx
Xxxxxxx and/or Xx. Xxxxxx Xxxxxxx, and/or produced or developed by,
or under the direction/sponsorship of CPI from materials supplied to
CPI pursuant to the RDI/CPI License Agreement or the CPI/RDI
Research Agreement. The patent applications and patents includable
in the Intellectual Property Rights as of date hereof are set forth
in Attachment A.
C. "LICENSED PRODUCTS", as used herein, means any product, apparatus,
kit or component part thereof, or any subject matter whose
manufacture, sale or use as covered by any Intellectual Property
Rights, and any improvements, modifications, or applications thereof
as may exist at the execution of the
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RDI/CPI License Agreement whether or not described in issued
patents, and additionally any Novel Taxane from Fermentation, Novel
BMS Compound from Fermentation and any compound made using either
of them as starting material.
D. "LICENSED METHOD", as used herein, means any method, procedure,
process or any other subject matter whose manufacture, use or sale
is covered by any Intellectual Property Rights.
E. "NET SALES", as used herein, means the gross revenues received by
BMS or its sublicensees either for (a) Licensed Products sold or (b)
services performed using Licensed Products or Licensed Method less
the sum of the following deductions, where applicable: sales, use,
tariff, import/export duties or other excise taxes imposed on
particular sales; allowances, credits, chargebacks and refunds to
non-affiliated third parties because of rejections, returns or price
reduction of product; freight costs and insurance charges on
shipments to customers included in invoiced amounts; and rebates and
price reductions/adjustments required by law, regulations or
contract. In the case of rebates and price reductions/adjustments
required by contract as referred to in the preceding sentence, the
same shall not be deductible to the extent that the contract in
question is between affiliates or related companies or the price
concessions in question are given in connection with the
marketing/sales of other product or products such as in the case of
"bundling" of products.
F. "INVENTIONS", as used herein, shall mean the Licensed Products and
the Licensed Method as described above, or any part thereof.
G. "APPLICABLE ROYALTY RATE", as used herein, shall mean the percentage
rate or rates at which BMS shall pay royalties to CPI hereunder,
determined on a calendar year-by-calendar year basis, as follows:
(1) With respect to using the Intellectual Property Rights
licensed hereunder to produce (a) paclitaxel to be
commercialized as TAXOL-Registered Trademark- or another
compound (which is neither a Novel Taxane from Fermentation
nor a Novel-BMS Compound from Fermentation) to be used by BMS
in commercialization as such without further chemical
transformation into another compound, or (b) baccatin III or a
miscellaneous taxane mixture as a starting material for
paclitaxel or any other compound (which is neither a Novel
Taxane from Fermentation nor a Novel BMS Compound from
Fermentation):
3
PORTION OF ANNUAL NET SALES "PAC/DIRECT" "BAC" OR "TT"
--------------------------- ------------ -------------
[ ] [ ] [ ]
[ ] [ ] [ ]
[ ] [ ] [ ]
[ ] [ ] [ ]
As used in the foregoing table, the italicized, lower rates in parentheses
shall apply with respect to a Licensed Product if (and only if) BMS in
respect of the same product is paying a royalty to CPI pursuant to the
Sublicense Agreement dated as of May 19, 1998 (the "WSURF-SUBLICENSE
AGREEMENT") between CPI and BMS under The Washington State University
Research Foundation License Agreement; and the terms "PAC/DIRECT", "BAC" and
"TT" are as defined in Clause A(3) in Article III below.
(2) With respect to (a) using the Intellectual Property Rights
licensed hereunder to produce any compound that is a Novel
Taxane from Fermentation or a Novel BMS Compound from
Fermentation or is produced using a Novel Taxane from
Fermentation or a Novel BMS Compound from Fermentation as a
starting material or (b) any Licensed Product that is a Novel
Taxane from Fermentation or a Novel BMS Compound from
Fermentation or, as commercialized by BMS or its sublicensees,
is produced using a Novel Taxane from Fermentation or a Novel
BMS Compound from Fermentation as a starting material but in
either case is produced otherwise than using the Intellectual
Property Rights:
PORTION OF ANNUAL NET SALES "DIRECT" "INDIRECT"
--------------------------- -------- ----------
[ ] [ ] [ ]
[ ] [ ] [ ]
[ ] [ ] [ ]
[ ] [ ] [ ]
4
As used in the foregoing table:
The italicized, lower rates in parentheses shall apply with respect
to a Licensed Product if (and only if) BMS in respect of the same
product is paying a royalty to CPI pursuant to the WSURF-Sublicense
Agreement.
"DIRECT" refers to where the Intellectual Property Rights are used
to produce the Novel Taxane from Fermentation or Novel BMS Compound
from Fermentation in question which is used by BMS in
commercialization as such without further chemical transformation
into a different compound.
"INDIRECT" refers to where (a) the Intellectual Property Rights are
used to produce (1) the Novel Taxane from Fermentation or Novel BMS
Compound from Fermentation in question which is subsequently
chemically transformed into the product commercialized by BMS or (2)
a compound which is subsequently chemically transformed into the
product (being the Novel Taxane from Fermentation or Novel BMS
Compound from Fermentation in question) commercialized by BMS or (b)
the Licensed Product in question is a Novel Taxane from Fermentation
or Novel BMS Compound from Fermentation or, as commercialized by
BMS, is produced using a Novel Taxane from Fermentation or Novel BMS
Compound from Fermentation as a starting material and in either case
is produced otherwise than using the Intellectual Property Rights.
"INDIRECT" also refers to where the Licensed Product in question is
a Novel Taxane from Fermentation or a Novel BMS Compound from
Fermentation or, as commercialized by BMS or its sublicensees, is
produced using a Novel Taxane from Fermentation or a Novel BMS
Compound from Fermentation as a starting material but in either case
is produced otherwise than using the Intellectual Property Rights.
For the avoidance of doubt, there shall be no stacking of royalties
that would otherwise result from Clauses (1) and (2) above both
applying to the same product (in any such case, Clause (2) shall
control and supersede Clause (1)); and, in each of the two tables
above, the amounts under the heading "PORTION OF ANNUAL NET SALES"
refer to only the amounts of Net Sales of the particular product in
question (for example, only Net Sales of TAXOL-Registered Trademark-
containing paclitaxel made by BMS using the Intellectual Property
Rights (as a direct fermentation product) are used to determine the
Applicable Royalty Rate under the heading "BAC/DIRECT" in Clause (1)
above).
H. "NOVEL TAXANE FROM FERMENTATION", as used herein, shall mean a
theretofore unknown taxane discovered by CPI or BMS as a natural
product produced by a microorganism in the course of the use of the
Intellectual Property Rights.
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I. "NOVEL BMS COMPOUND FROM FERMENTATION", as used herein, shall mean a
theretofore unknown non-taxane compound discovered by BMS as a
natural product produced by a microorganism in the course of the use
of the Intellectual Property Rights.
II. LICENSE TERMS
A. Subject to Clause C below, CPI hereby grants to BMS an exclusive
(exclusive even as to CPI) sublicense, under the RDI/CPI License
Agreement, to practice the Intellectual Property Rights, including
the right to make, have made, sell and use the Inventions throughout
the world, including reissues.
B. CPI also grants to BMS the right further to sublicense to third
parties to practice the Intellectual Property Rights so licensed by
CPI from RDI, including the right to make, have made, sell and use
the Inventions.
C. CPI may continue to pursue research and development, either on its
own or in collaboration with BMS, MSU and/or WSU, but not with any
other third party, in the field of microbial fermentation production
of paclitaxel and other taxanes. More specifically, CPI shall retain
the right to use the Intellectual Property Rights to make paclitaxel
and other taxanes solely in pursuit of further research and
development with respect to the Intellectual Property Rights and
otherwise for non-commercial internal research and development
purposes. CPI shall not be entitled to, and shall not, assign or
sublicense such right to any third party. For the avoidance of
doubt, CPI shall not be entitled to, and shall not, transfer or
license and cell line covered by the Intellectual Property Rights to
any third party, or otherwise to use the Intellectual Property
Rights for the benefit of any third party.
III. PAYMENT
A. BMS shall pay CPI:
(1) [ ] within ten (10) business days following the date
hereof;
(2) [ ] upon BMS's attainment, using a fungal strain furnished
by CPI, of production level of not less than [ ]of
paclitaxel;
(3) the following amount or amounts, as applicable, depending on
the attainable productivity and the actual primary products
being pursued by BMS:
6
PRODUCTIVITY IN MG/1
--------------------------------------------------
MILESTONE PAYMENT "PAC/DIRECT" "BAC" "TT"
----------------- ------------ ------- -------
[ ] [ ] [ ] [ ]
[ ] [ ] [ ] [ ]
As used in the foregoing table:
"PRODUCTIVITY" refers to commercially feasible production, using the
Intellectual Property Rights licensed hereunder, of the product or
products in question, with fermentation time per production cycle of
not more than [ ].
"PAC/DIRECT" refers to where the primary fermentation product is
paclitaxel or another product which is used by BMS in
commercialization as such without further chemical transformation
into a different compound.
"BAC" refers to where the primary fermentation product is baccatin
III used by BMS as a starting material for the final commercial
product.
"TT" refers to where the primary fermentation product from using the
Intellectual Property Rights is the mixture of miscellaneous taxanes
used by BMS as starting materials for the final commercial product.
For the avoidance of doubt: (1) it shall not be implied that
BMS is required, or otherwise intends, to pursue more than one
of the "PAC/DIRECT", "SAC" and "TT" alternatives; however, the
milestone payments in respect of the two different levels of
productivity, if attained, are cumulative); (2) each milestone
payment shall be payable only once regardless of the number of
times the same development milestone has been achieved using
different cell lines; and (3) should BMS in fact be pursuing
different primary products using a single cell line, the
different milestone payments pertaining to such different
primary products shall become applicable of productivity, if
attained, are cumulative.
(4) [ ] upon the U.S. FDA's approval of a Supplemental New
Drug Application (hereinafter called "SNDA") for using, or in
the case of a product other than TAXOL-Registered Trademark-
(which product is not a Novel Taxane from Fermentation or a
Novel BMS Compound from Fermentation) a New Drug Application
(including an Abbreviated New Drug Application, hereinafter
called "NDA") that embodies the use of, the Intellectual
7
Property Rights for the commercial production of paclitaxel as
the active ingredient in BMS's product TAXOL-Registered
Trademark- or such other product;
(5) [ ] upon the U.S. FDA's approval of an SNDA for using, or
in the case of a product other than TAXOL-Registered
Trademark- (which product is not a Novel Taxane from
Fermentation or a Novel BMS Compound from Fermentation) an NDA
that embodies the use of, the Intellectual Property Rights for
commercial production of baccatin III to serve as a starting
material for TAXOL-Registered Trademark- or such other
product, as the case may be;
Clause (4) above and this Clause (5), together, shall
not imply that BMS is required, or otherwise intends, to
pursue both alternatives.
(6) [ ] upon filing with the U.S. FDA of an Investigational
New Drug Application covering a Novel Taxane from Fermentation
or a Novel BMS Compound from Fermentation; and
(7) [ ] upon the U.S. FDA's approval of a NDA covering a Novel
Taxane from Fermentation or Novel BMS Compound from
Fermentation.
B. From and after BMS attains a commercially feasible production
level of at least [ ]of paclitaxel using the Intellectual Property
Rights, BMS shall pay CPI a minimum royalty of [ ] per each consecutive
12-month period, which shall be payable within 30 days of the initial
attainment of such production level and subsequently within 30 days of each
anniversary of such attainment. The minimum royalties paid under this Clause
B shall not be refundable, but shall be fully creditable towards current and
future earned royalties under Clause C below.
C. BMS shall pay to CPI earned royalties on Net Sales of Licensed
Products at the Applicable Royalty Rate.
D. BMS shall pay to CPI royalties at the same Applicable Royalty Rate
as provided in Clause B above on Net sales with respect to
manufacture, use, or sale of the Inventions by sublicensees.
IV. DUE DILIGENCE
A. As a condition of this sublicense, BMS agrees that it shall use
commercially reasonable efforts and diligent endeavor to fully
develop and commercially exploit the Intellectual Property Rights
licensed hereunder.
8
B. BMS agrees, upon reasonable request by CPI, to apprise CPI and RDI
of the current status of the development and regulatory approval of
the Intellectual Property Rights for commercial use.
V. BOOKS AND RECORDS
A. BMS shall keep books and records accurately, showing all Licensed
Products manufactured, used or sold under the terms of this
Agreement. Such books and records shall be open to inspection by a
certified public accounting firm appointed by CPI, and reasonably
acceptable to BMS, at reasonable times and after reasonable advanced
notice for the purpose of verifying the accuracy of the quarterly
reports and the royalties due or paid.
B. The fees and expenses of the accounting firm performing such an
examination shall be borne by CPI, unless it is determined that
royalties or other payments due CPI were underpaid by Five Percent
(5%) or more.
VI. TERM; TERMINATION BY PARTIES
A. This Agreement shall take effect as of the date hereof and shall by
its term expire as of the later to occur of (1) the tenth (10th)
anniversary of the first commercial sale of a Licensed Product or
(2) such time as neither the making, use nor sale at the time by BMS
of any and all Licensed Products, without giving effect to the
sublicense hereunder, would infringe any patent included in the
Intellectual Property Right. Following such expiration, BMS shall
retain a paid-up, nonexclusive license to the Intellectual Property
Rights as otherwise provided in Article II above.
B. Either party has the right to terminate this Agreement in whole in
the event of a material breach of this. Agreement by the other
party, by giving notice in writing to such other party setting forth
the purported breach and the relief sought. Such termination shall
be effective ninety (90) days from such notice if such other party
does not cure the default specified. PROVIDED, HOWEVER, BMS shall
have thirty (30) days to cure a default in its obligations to make
any payment due CPI hereunder.
C. In addition to the right of termination under Clause B above, BMS
shall be entitled at any time, other than during the first six
months following the date hereof, to terminate this Agreement in
whole by giving notice in writing to CPI. Such termination shall be
effective ninety (90) days from the date of such notice.
D. This Agreement will not terminate automatically if either party
shall become bankrupt or insolvent and/or if the business of
Licensee shall be placed in the
9
hands of a receiver, assignee, or trustee, whether by voluntary act
or otherwise; PROVIDED, HOWEVER, this Agreement is and shall remain,
throughout the term hereof, an executory contract which requires
full and timely performance of all its terms by BMS in order to
prevent it from terminating, bankruptcy or insolvency
notwithstanding.
VII. BANKRUPTCY
A. All rights and licenses granted under or pursuant to this Agreement
by CPI and BMS are, and shall otherwise be deemed to be, for
purposes of Section 365(n) of the U.S. Bankruptcy Code (the
"BANKRUPTCY CODE"), an executory contract. The parties hereto agree
that BMS, as licensee of such rights under this Agreement, shall
retain and may fully exercise all of its rights and elections under
the Bankruptcy Code. The parties hereto further agree that, in the
event that any proceeding shall be instituted by or against CPI as
licensor seeking to adjudicate it a bankrupt or insolvent, or
seeking liquidation, winding up, reorganization, arrangement,
adjustment, protection, relief or composition of it or its debts
under any law relating to bankruptcy, insolvency or reorganization
relief or debtors, or seeking an entry of an order for relief or the
appointment of a receiver, trustee or other similar official for it
or any substantial part of its property or it shall take any action
to authorize any of the foregoing actions, BMS as licensee shall
have the right to retain and enforce its exclusive rights and
licenses under this Agreement, including, without limitation, the
exclusive right to continue to make, use, manufacture and distribute
the Microbial Drug Substance Producing System.
VIII. PROCUREMENT PROGRAM
A. CPI shall, at its sole cost, diligently prosecute and maintain the
United States and foreign patents and patent applications or any
necessary intellectual property protection using counsel of its
choice and after due consultation with BMS. CPI shall provide BMS
with copies of all relevant documentation so that BMS may be
informed and apprised of the continuing prosecution and BMS agrees
to keep this documentation confidential.
B. BMS shall pay and or reimburse CPI for all out-of-pocket expenses
incurred after the execution of this Agreement in filing,
prosecuting and maintaining the Intellectual Property Rights
licensed hereunder.
C. Subject to the rights, if any, of the Government of the United
States, as set forth hereinbelow, CPI warrants that it has the
lawful right to grant the sublicense under this Agreement.
10
IX. INFRINGEMENT
A. BMS acknowledges that under the RDI/CPI License Agreement:
"A. In the event that CPI shall learn of the infringement of any
patent licensed under [the RDI/CPI License) Agreement, CPI
shall call RDI's attention thereto in writing, and shall
provide RDI with reasonable evidence of such infringement. RDI
and CPI shall jointly use their reasonable efforts to
terminate such infringement."
"B. CPI and RDI shall jointly enforce any patent exclusively
licensed [under the RDI License Agreement] against
infringement by third parties and shall be entitled to first
recover their respective costs thereof; and, thereafter, shall
share on a negotiated basis the balance of any recovery from
such enforcement."
B. Accordingly, CPI and BMS agree that:
(1) As between BMS and CPI, BMS shall control CPI's dealings with
respect to its joint efforts with RDI to end any infringement
of any patent licensed under this Agreement.
(2) As between BMS and CPI, BMS shall control any action taken
jointly by CPI and RDI to enforce any patent to BMS hereunder
against infringement by third parties and the ensuing
negotiation of sharing of any recovery. CPI shall pay over to
BMS Seventy-Five Percent (75%) of CPI's share of such
recovery.
X. WAIVER
A. It is agreed that no waiver by either party hereto of any breach or
default of any of the covenants or agreements herein set forth shall
be deemed a waiver as to any subsequent breach or default.
XI. ASSIGNABILITY
A. This Agreement is binding upon and shall inure to the benefit of
each party, its successors and assigns; and may not be assigned by
either party without the express written consent of the other party,
which consent shall not be unreasonably withheld. Any successor or
assignee shall be bound by all of the duties and obligations set
forth in this Agreement.
11
XII. CONFIDENTIAL INFORMATION
A. BMS and CPI hereby undertake to maintain as secret and confidential
all information communicated to one another regarding the Inventions
and the Intellectual Property Rights made the subject of this
Agreement, with the exception of information:
(i) Previously known to the recipient;
(ii) In the public domain; or
(iii) Which may enter the public domain without the fault or
negligence of either party;
provided that BMS can communicate the information on a confidential
basis to its sublicensees.
B. BMS and CPI agree to take all reasonable measures to prevent their
employees or agents, including employees or agents of their
respective licensees or related companies, as well as distributors,
sub-distributors, dealers, or official installers, from divulging
any secret and confidential information in a manner that may be
contrary to the interests of either party. This covenant will extend
beyond the term of this Agreement.
XIII. INDEMNIFICATION
A. Any decision regarding the use and/or safety of the Intellectual
Property Rights shall be the sole responsibility of BMS; and as
further consideration for the license granted hereunder, BMS shall
indemnify and hold. CPI harmless for and against all claims for
damages, whether personal or property, resulting from BMS's use of
the Intellectual Property Rights and/or other exercise of any rights
granted under this Agreement.
XIV. MISCELLANEOUS
A. In the event that any patent or claim thereof included within the
Intellectual Property Rights shall be held invalid in a decision by
a Court of competent jurisdiction and no appeal of such decision can
or has been taken, all obligation to pay royalties based on such a
patent or claim shall cease as of the date of such decisions.
12
B. No amendment or modification hereof shall be valid or binding upon
the parties unless made in writing and signed as aforesaid.
C. This Agreement embodies the entire understanding of the parties and
shall supersede all previous communications, representations or
understandings, either oral or written between the parties relating
to the subject matter hereof.
D. In case any one or more provisions contained in this Agreement shall
for any reason be held to be invalid, illegal or unenforceable in
any respect, such invalidity, illegality or unenforceability shall
not affect any other provision hereof, but this Agreement shall be
construed as if such invalid or illegal or unenforceable provisions
had never been contained herein.
XV. NOTICES
A. Any payment, notice, or other communication required or permitted to
be given to either party hereto shall be deemed to have been
properly given and shall be effective on the date of delivery in
person on the fourth day after mailing if mailed by first class
mail, postage paid, to the respective address given below, or to
such other address as it shall designate by written notice given to
the other party as follows:
In the case of CPI:
Xxxxxx X. Xxxxxx, Ph.D.
Cytoclonal Pharmaceutics Inc.
0000 Xxxxx Xxxxx Xxxx., Xxxxx 000
Xxxxxx, Xxxxx 00000
In the case of BMS:
Xxxxxxx-Xxxxx Squibb Company
Xxxxx 000 & Xxxxxxxx Xxxx Xxxx
Xxxxxxxxx, Xxx Xxxxxx 00000
Attention: President, Technical Operations
IN WITNESS WHEREOF, parties hereto have caused their duly authorized
representatives to execute this Agreement.
CYTOCLONAL PHARMACEUTICS INC. Dated: May 28, 1998
-------------------
13
By /s/ XXXXXX X. XXXXXX
-----------------------------------
Xxxxxx X. Xxxxxx, Ph.D.
President and CEO
XXXXXXX-XXXXX SQUIBB COMPANY
By: /s/ K. XXXXX XXXXX Dated: May 27, 1998
----------------------------------- -------------------
Name: K. Xxxxx Xxxxx
Title: Vice President, Licensing
14
ATTACHMENT A
SUBLICENSE AGREEMENT - CPI AND BMS
U.S. Patent Application, Ser. No. 07/971,508
Patent No. 5,322,779, issued June 21, 1994
"TAXOL PRODUCTION BY TAXOMYCES ANDREANAE (Amended)"
Xxxx X. Xxxxxxx, Xxxxxx Xxxxxxx, Xxxxxx Xxxxxxx
filed November 4, 1992
Australian Patent Application, Ser. No. 41020/93
Patent No. 675,428 issued May 26, 1997
"TAXOL PRODUCTION BY A MICROBE"
Xxxx X. Xxxxxxx et al filed April 13, 1993
Canadian Patent Application, Ser. No. 2140935
"TAXOL PRODUCTION BY A MICROBE"
Xxxx X. Xxxxxxx et al filed April 13, 1993
European Patent Application, Ser. No. 93910583.9
"TAXOL PRODUCTION BY A MICROBE"
Xxxx X. Xxxxxxx et al filed April 13, 1993
Japanese Patent Application, Ser. No. 5-518531
"TAXOL PRODUCTION BY A MICROBE"
Xxxx X. Xxxxxxx et al Filed April 13, 1993
South Korean Patent Application, Ser. No. 94-703681
"TAXOL PRODUCTION BY A MICROBE"
Xxxx X. Xxxxxxx et al filed April 13, 1993
PCT Patent Application, Ser. No. PCT/US93/03416
"TAXOL PRODUCTION BY A MICROBE"
Xxxx X. Xxxxxxx et al filed April 13, 1993
[ ]
[ ]
[ ]
[ ]
15
[ ]
[ ]
[ ]
United States Patent, No. 5,445,809
"Production of Taxol from the Yew Tree"
United States Patent, No. 5,451,392
"Production of Taxol"
16
