EXHIBIT 2.2
ASSIGNMENT AND ASSUMPTION AGREEMENT
THIS ASSIGNMENT AND ASSUMPTION AGREEMENT (this "Assignment") is entered
into as of this 1st day of April, 1999, by and between Vaxcel, Inc., a Delaware
corporation ("Vaxcel") and Innovax Corporation, a Delaware corporation
("Innovax").
Pursuant to that certain Option Agreement dated January 27, 1999 between
Vaxcel and Innovax (the "Agreement"), Vaxcel granted an option (the "Option") to
Innovax pursuant to which Innovax, upon exercise of the Option in accordance
with the terms of the Agreement, shall acquire all of Vaxcel's rights, and
assume all of Vaxcel's obligations, under that certain License Agreement dated
as of August, 1998 (the "License Agreement"), between the Southern Research
Institute ("SRI") and Vaxcel, a copy of which is attached hereto as Exhibit A.
This Assignment documents the terms and conditions of the assignment by Vaxcel
to Innovax of all of Vaxcel's rights under the License Agreement and the
assumption by Innovax of all of Vaxcel's obligations under the License Agreement
that are not attributable to a breach by Vaxcel of the License Agreement.
Capitalized terms used but not otherwise defined in this Assignment shall have
the meaning ascribed to such terms in the Agreement.
In consideration of the mutual covenants set forth herein and in the
Agreement, and other good and valuable consideration, Vaxcel and Innovax hereby
agree as follows:
1. Vaxcel assigns, transfers and sets over unto Innovax, its successors
and assigns, all of Vaxcel' rights under (i) the License Agreement, to have and
to hold unto Innovax, its successors and assigns, from and after the date
hereof, subject to (A) the covenants, conditions, agreements, terms,
obligations, restrictions and other provisions set forth in the License
Agreement, including, without limitation, the confidentiality, proprietary
information and know-how provisions set forth in Sections 4.11 and 9.1 of the
License Agreement, as may be amended or modified by SRI and Innovax and (B) the
sublicense agreements set forth in Schedule 5(c) hereto, and (ii) the sublicense
agreements set forth in Schedule 5(c) hereto.
2. Innovax accepts such assignment and assumes and agrees to perform, pay
discharge and comply with all of the covenants, conditions, agreements, terms,
obligations and restrictions to be performed or complied with on the part of
Vaxcel under the License Agreement and the sublicense agreements set forth in
Schedule 5(c) hereto. In no event, however shall Innovax be deemed to have
assumed any obligation of Vaxcel that is attributable to Vaxcel's breach of any
provision of (i) the License Agreement or (ii) the sublicense agreements set
forth in Schedule 5(c) hereto or any agreements with any third parties
(including, without limitation, Third Parties as defined in the License
Agreement).
3. Vaxcel acknowledges receipt from Innovax of the Exercise Price.
4. The representations and warranties made by Vaxcel and Innovax in the
Agreement are incorporated and restated herein by reference.
5. Vaxcel represents and warrants that:
(a) except as set forth on Schedule 5(a), to the best of the actual
knowledge of Vaxcel, there are not any (i) actual claims by SRI or Vaxcel
against any third parties relating to such third party's infringement or
misappropriation of, or (ii) actual interference proceedings or actual
opposition hearings to which SRI or Vaxcel is a party and that relate to, the
Oral Microsphere Technology Patents or the Oral Microsphere Technology;
(b) except as set forth on Schedule 5(b), to the best of the actual
knowledge of Vaxcel, there are no written claims that the Oral Microsphere
Technology Patents or the Oral Microsphere Technology infringes any patents,
trade secrets, copyrights, trademarks or other intellectual property rights of
any third party, or of Vaxcel or its affiliates;
(c) except as set forth on Schedule 5(c), Vaxcel has not granted any
sublicenses under the License Agreement;
(d) neither Vaxcel nor SRI has amended or modified the License
Agreement or waived any material right under the License Agreement;
(e) except as set forth on Schedule 5(e), to the best of the actual
knowledge of Vaxcel, Vaxcel has not conceived, made or reduced to practice any
Improvements (as defined in the License Agreement) to the Oral Microsphere
Technology;
(f) Vaxcel, with Innovax's reasonable cooperation, has obtained SRI's
written consent in accordance with Section 13.8 of the License Agreement, to the
assignment of the License Agreement to Innovax, and a copy of such consent is
attached hereto as Exhibit B; and
(g) Vaxcel has paid all fees and other payments under the License
Agreement that are due and payable prior to the exercise date of the Option,
including, without limitation, (i) any payments or reimbursements due in respect
of patent prosecution or maintenance and (ii) the license payment of $80,000 due
to SRI on or before January 30, 1999, provided that the exercise date does not
occur prior to such date.
6. After delivery of this Assignment, Vaxcel shall, from time to time, at
Innovax's request, execute and deliver to Innovax as appropriate, such other
instruments of transfer and take such other actions as Innovax may reasonably
request to effectively
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assign to Innovax the License Agreement in accordance with the Agreement and
this Assignment.
7. Exhibit C attached hereto sets forth a list, as of the date of this
Agreement of the Oral Microsphere Technology Patents, the applicable filings
related thereto, and the filing fees and maintenance fees paid or due and
payable with respect to the Oral Microsphere Technology Patents.
8. Vaxcel represents and warrants that it has provided to Innovax copies
of or access to all written information in Vaxcel's possession as of the date of
this Assignment that has been requested by Innovax which is related to any side
effect, injury, toxicity or sensitivity reaction and the incident or severity
thereof in connection with any tests conducted by Vaxcel or its sublicensees
relating to the Oral Microsphere Technology.
9. After delivery of this Assignment, Vaxcel shall continue to comply
with the confidentiality, proprietary information and know-how provisions set
forth in the License Agreement, including, without limitation, Sections 4.11 and
9.1, for the duration and to the extent that such provisions apply (as of the
date hereof) to Vaxcel (as Receiving Party thereof) by their terms.
10. Schedule 10 sets forth a list of all of the SRI Know-How (as defined
in the License Agreement) that it has received from SRI.
11. Vaxcel shall promptly deliver to SRI (or if SRI consents in writing,
to Innovax) of any and all physical embodiments of any Confidential Information,
SRI Know-How or Trade Secrets that it has received from SRI and that are in
Vaxcel's possession as of the date of this Assignment.
12. This Assignment may not be modified, changed or supplemented except by
written instrument signed by each party hereto.
13. This Assignment shall be binding upon and inure to the benefit of
Innovax, Vaxcel and their respective successors and assigns.
14. This Assignment shall be construed in accordance with the laws of the
State of Georgia, without regard to the conflicts of laws principles thereof.
15. EXCEPT AS EXPRESSLY SET FORTH IN THIS ASSIGNMENT, VAXCEL MAKES NO
EXPRESS OR IMPLIED WARRANTY, STATUTORY OR OTHERWISE, CONCERNING THE ORAL
MICROSPHERE TECHNOLOGY, THE ORAL MICROSPHERE TECHNOLOGY PATENTS OR ANY
INFORMATION PROVIDED TO INNOVAX BY VAXCEL OR ITS AGENTS. SPECIFICALLY, BUT
WITHOUT LIMITING THE FOREGOING, VAXCEL MAKES NO EXPRESS OR IMPLIED WARRANTY OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR
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PURPOSE, QUALITY, USEFULNESS, NONINFRINGEMENT (EXCEPT AS EXPRESSLY SET FORTH IN
SECTION 5 OF THIS ASSIGNMENT) OR TITLE OF OR TO THE ORAL MICROSPHERE TECHNOLOGY
AND THE ORAL MICROSPHERE TECHNOLOGY PATENTS.
16. This Assignment may be executed in counterparts, each of which shall
be deemed an original, and all of which together shall be deemed one and the
same agreement.
IN WITNESS WHEREOF, the undersigned have executed this Assignment as of the
date first written above.
Vaxcel, Inc.
By: /s/ Xxxx X. Xxxxxx
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Name: Xxxx X. Xxxxxx
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Its: President and CEO
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Innovax Corporation
By: /s/ Xxxxxxx X. Xxxxx
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Name: Xxxxxxx X. Xxxxx
---------------------
Its: Chairman
---------------------
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EXHIBIT AND SCHEDULE LIST
Exhibit Reference Item
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A License Agreement
B SRI Consent
C Oral Microsphere Technology Patents
Schedule Reference Item
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5(a) Third Party Infringement
5(b) Oral Microsphere Technology Infringement
5(c) Sublicenses
5(e) Improvements
10 SRI Know-How
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