TECHNOLOGY TRANSFER AGREEMENT
This Technology Transfer Agreement, dated February 9, 1992 (this
"Agreement"), is by and between ANTI-GENE DEVELOPMENT GROUP, an Oregon limited
partnership ("Seller"), and ANTIVIRALS Inc., an Oregon corporation ("Buyer").
RECITALS
A. Seller is the owner of certain patents, patent applications, and other
intellectual property rights, all of which are more fully described in this
Agreement (collectively, the "Intellectual Property").
B. Buyer intends to offer to issue 3,300 shares of Buyer's common stock
in exchange for each limited partnership interest in Seller (the "Exchange
Offer").
C. Following completion of the Exchange Offer, Seller wishes to transfer,
and Buyer wishes to obtain, the right, title, and interest of Seller in and to
the Intellectual Property.
D. Following the transfer, Buyer wishes to grant certain rights to Seller
with respect to the Intellectual Property.
AGREEMENT
In consideration of the above and of the promises and covenants
contained herein, the parties agree as follows:
SECTION 1
DEFINITIONS
As used in this Agreement, the following terms shall have the
following meanings:
1.1 "Buyer Affiliate" shall mean Buyer's Licensees, other than
Seller, and any entity other than Seller that controls, is controlled by, or is
under common control with Buyer or Buyer's Licensees.
1.2 "Closing" and "Closing Date" shall have the meanings set
forth in Section 2.1.
1.3 "Copyrights" shall mean all of Seller's rights under United
States or foreign copyright laws with respect to any work of authorship used by
Seller in connection with Seller's research and development and other business
operations prior to the Closing Date.
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1.4 "Exchange Offer" shall mean the offer by Buyer to exchange
3,300 shares of Buyer's common stock for each limited partnership interest in
Seller.
1.5 "Intellectual Property" shall mean all Patents, Patent
Applications, Trademarks, Trademark Applications, Copyrights, and all other
Technology owned or controlled by Seller as of the date of this Agreement.
1.6 "Interests" shall mean the limited partnership interests in
Seller.
1.7 "Licensee" shall mean any person, corporation, or other
entity other than Buyer or Seller that obtains a License.
1.8 "License" shall mean a right granted by Buyer or a Buyer
Affiliate to an entity to: (a) make a Product; (b) make a Product and use that
Product; (c) make a Product and sell that Product; (d) have a Product made on
behalf of said entity and use that Product; (e) have a Product made on behalf of
said entity and sell that Product; or (f) use a method claimed in a Patent.
1.9 "Partners" shall mean the partners in Seller as of the
effective date of the Exchange Offer.
1.10 "Patent Applications" shall mean the applications described
in Schedule 1.10 attached.
1.11 "Patents" shall mean the patents listed on Schedule 1.11
attached, and any patents issuing from any Patent Applications and Planned
Applications. "Patents" shall also include all continuations,
continuations-in-part, divisions, reissues, patents of addition, renewals, any
foreign counterparts of any such Patents, Patent Applications, and Planned
Applications.
1.12 "Planned Applications" shall mean the planned patent
applications covering the conceptions and inventions partially or fully reduced
to practice owned by Seller and listed in Schedule 1.12.
1.13 "Product" shall mean any product the sale of which would
infringe one or more valid claims of any Patent in the absence of this
Agreement.
1.14 "Purchase Price" shall have the meaning set forth in
Section 4.
1.15 "Sales" shall mean the total worldwide sales of Products by
Buyer and Buyer Affiliates to Unaffiliated Entities at the Gross Invoice Amount
minus returns, where returns comprise compensation to the purchaser of the
Product for Products returned to Buyer or the Buyer Affiliate. "Gross Invoice
Amount" shall mean all money and other valuable consideration paid to Buyer and
Buyer Affiliates in exchange for Products. Transfers between Buyer and Buyer
Affiliates or between Buyer Affiliates shall not be deemed Sales. In the event
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Buyer or a Buyer Affiliate makes or has made a Product for the Buyer's or Buyer
Affiliate's own use, each manufacture shall be considered a Sale and the amount
of the Sale shall be based upon the average price at which such Product or the
most nearly equivalent Product was sold by Buyer or Buyer Affiliates during the
six months preceding the date of manufacture.
1.16 "Technology" shall mean conceptions, inventions,
discoveries, improvements, trade secrets, formulas, techniques, processes, and
know how, whether or not patented and whether or not reduced to practice, and
any copies of documents, or other materials describing or relating to the
foregoing, conceived, created, used, or developed by or on behalf of Seller
prior to the Closing Date which relate to nucleic acid binding polymers,
subunits useful for assembly of said polymers, methods of preparation,
purification, and characterization of said subunits and polymers, modifications
and adducts to said subunits and polymers, and uses and applications of said
subunits and polymers.
1.17 "Trademark Applications" shall mean the Trademark
Applications identified on Schedule 1.17 attached.
1.18 "Trademarks" shall means the trademarks and trademark
registrations identified on Schedule 1.18 attached and the goodwill associated
therewith.
1.19 "Unaffiliated Entity" shall mean any entity other than Buyer
and Buyer Affiliates.
SECTION 2
TRANSFER OF INTELLECTUAL PROPERTY
2.1 CLOSING. The closing of the transactions contemplated by
this Agreement (the "Closing") shall take place at 10 a.m. on the date that is
ten business days after the date that all conditions to Closing are satisfied
(other than those conditions that by their terms are to occur at the Closing),
unless another date and time are agreed to in writing by the parties. The
Closing shall take place at the offices of Stoel Xxxxx Xxxxx Xxxxx & Grey, 000
XX Xxxxx Xxxxxx, Xxxxxxxx, Xxxxxx, or such other reasonable location as shall be
specified by Buyer. The date of the Closing is hereafter referred to as the
Closing Date.
2.2 LIQUIDATION OF INTERESTS. Subject to all of the terms and
conditions of this Agreement, on the Closing Date, Buyer shall tender to Seller
Buyer's Interests for liquidation and Seller shall distribute to Buyer in
liquidation of Buyer's Interests an undivided interest in the Intellectual
Property. The ratio of the undivided interest conveyed to the whole of the
Intellectual Property shall be the same as the ratio of the liquidated Interests
to the number of Interests outstanding on the Closing Date before liquidation of
Buyer's Interests.
2.3 SALE OF REMAINDER. Subject to all of the terms and
conditions of this Agreement, on the Closing Date, contemporaneously with the
distribution described in Section 2.2, Seller shall sell, convey, assign,
transfer and deliver to Buyer, and Buyer shall
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purchase and accept from Seller, all right, title and interest of Seller in
and to the undivided interest in the Intellectual Property retained by Seller
after the liquidating distribution described in Section 2.2.
SECTION 3
LIMITED ASSUMPTION OF LIABILITIES
Buyer shall assume all ongoing expenses associated with Patent
Applications, Planned Applications, Trademark Applications, Patents and
Trademarks including expenses associated with the filing of applications,
continuations, continuations-in-part, responses to offices actions, payment of
issue and maintenance fees, and prosecution of such infringement claims as Buyer
elects to pursue. Other than the foregoing, Buyer will not assume and will not
be liable for any liabilities of Seller, known or unknown, contingent or
absolute, accrued or otherwise, and the Intellectual Property shall be
transferred to Buyer free of all liabilities, obligations, security interests,
mortgages, pledges, conditional sales agreements or other liens and
encumbrances.
SECTION 4
CONSIDERATION
4.1 REDEMPTION OF INTERESTS. The consideration for distribution
of an undivided interest in the Intellectual Property pursuant to Section 2.2
shall be Buyer's Interests liquidated by Seller pursuant to that section.
4.2 SALE OF REMAINDER. As consideration for the transfer of the
remainder of the Intellectual Property pursuant to Section 2.3, Buyer shall pay
the purchase price ("Purchase Price") set forth in this Section 4.2 pursuant to
the terms set forth in this Section 4.
(a) If no Interests of Buyer are liquidated pursuant to
Section 2.2, the Purchase Price shall be as follows: Subject to Sections 4.6
and 4.7, Buyer shall pay Seller eight (8) percent of the amount of the total
Sales of each Product Buyer and any Buyer Affiliates sell to any Unaffiliated
Entity after the Closing Date. For purposes of this Section 4, transfers from
Buyer to a Buyer Affiliate or vice versa and transfers between Buyer Affiliates
shall not be deemed Sales.
(b) If Seller does distribute an undivided interest in the
Intellectual Property to Buyer in liquidation of its Interests pursuant to
Section 2.2, the Purchase Price set forth in Section 4.2(a) shall be reduced pro
rata to reflect Seller's reduced ownership interest in the Intellectual Property
resulting from the liquidating distribution. By way of example, if Buyer
tenders for liquidation fifty (50.0000) percent of the Interests outstanding as
of the Closing, Seller shall distribute in liquidation of Buyer's Interests an
undivided one-half ownership interest in the Intellectual Property and Seller
will retain an undivided one-half ownership interest. The Purchase Price shall
be reduced by half so that Buyer will pay four (4.00000) percent of the total
Sales of Products under Section 4.2(a).
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4.3 REPORTS. Within thirty (30) days after the end of each
calendar quarter, for so long as Products are covered by unexpired Patents,
Buyer shall provide Seller with a written report setting forth the total amount
of each Product sold by Buyer and Buyer Affiliates during the quarter, to whom
the Products were sold, the gross invoice amount for each Sale, and the amount
of any returns. At the time the report is made, Buyer shall pay Seller any
amounts payable pursuant to this Section 4.
4.4 RECORDS. Buyer shall maintain records concerning Sales of
Products sufficient to enable Seller to verify the amounts payable under this
Agreement. Seller shall have the right, through an independent auditor, to
examine such records that concern Sales of Products up to four times in any
given year. Seller shall bear all expenses associated with such audits.
4.5 LATE PAYMENTS. If Buyer fails to make any Purchase Price
payment owing to Seller when due, Buyer shall pay Seller interest on the amount
past due at a rate equal to the "Prime Rate" in effect at the time when payment
is due, plus 7.5 percent per annum The "Prime Rate" shall be the announced
"prime rate" at First Interstate Bank of Oregon or its successors.
4.6 COMMENCEMENT OF PAYMENT OBLIGATIONS. Notwithstanding
anything in this Agreement to the contrary, the first two hundred million
dollars ($200,000,000) in total cumulative worldwide Sales by Buyer and Buyer
Affiliates collectively are exempt from Purchase Price Payments Buyer shall be
obligated under this Section 4 to make Purchase Price payments only on those
Sales subsequent to the initial cumulative two hundred million dollars in exempt
Sales by Buyer and Buyer Affiliates.
4.7 TERMINATION OF PAYMENT OBLIGATIONS. Buyer's obligation to
make Purchase Price payments for any given Product shall end upon the expiration
of all Patents containing claims that cover that Product. Buyer's obligation to
make Purchase Price Payments shall terminate completely upon expiration of the
last Patent to expire.
4.8 PAYMENT DISPUTES.
(a) Any dispute between the parties concerning payment of
Purchase Price payments shall be settled by binding arbitration in accordance
with the rules of the American Arbitration Association. The arbitration shall
be held in Portland, Oregon before three (3) arbitrators who are knowledgeable
about the industry and markets for the Products Judgment upon the arbitrators'
award may be entered in any court having jurisdiction. This agreement to
arbitrate shall apply only to disputes concerning Purchase Price payments, and
shall not prevent either party from seeking judicial relief in connection with
other matters relating to this Agreement. The prevailing party in any such
arbitration proceeding shall be entitled to recover reasonable costs and
attorneys fees at the arbitration and in connection with any judicial proceeding
to enforce the arbitration award.
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(b) If Seller believes Buyer has refused to make Purchase
Price payments in bad faith, Seller may request that the arbitrators make a
finding of Buyer's bad faith refusal to pay. The parties agree that such a
finding of bad faith shall not be made unless there is clear and convincing
evidence that Seller knew the payment was owing and refused to make the payment.
Seller may appeal any finding of bad faith to any court having jurisdiction and
the court shall review any finding of bad faith de novo.
(c) If the arbitrators make a finding of bad faith under
Section 4.8(b) in two (2) separate proceedings relating to two (2) separate
payment disputes involving the same Product, and neither finding is reversed on
appeal, Seller shall have the right, upon notice to Buyer, to require Buyer to
convey back to Seller at no cost to Seller any Patent covering the Product.
Upon receipt of such notice, Buyer shall execute such documents as Seller may
reasonably request to convey Buyer's rights in the Patent to Seller.
SECTION 5
REPRESENTATIONS AND WARRANTIES OF BUYER
Buyer represents and warrants to Seller as follows:
5.1 ORGANIZATION AND STANDING. Buyer is a corporation duly
organized and validly existing under the laws of the State of Oregon.
5.2 AUTHORIZATION AND BINDING OBLIGATION. Buyer has full
corporate power and authority to enter into and perform this Agreement and the
transactions contemplated hereby. The execution, delivery and performance of
this Agreement by Buyer have been duly and validly authorized by all necessary
corporate action on the part of Buyer. This Agreement has been duly executed
and delivered by Buyer and constitutes the valid, binding and enforceable
obligation of Buyer except as the provisions of this Agreement may be rendered
unenforceable by applicable bankruptcy, insolvency, reorganization, moratorium
or other similar laws affecting creditor's rights generally or the application
of general principles of equity (regardless of whether enforcement is considered
in a proceeding in equity or at law).
5.3 ABSENCE OF CONFLICTING AGREEMENTS OR REQUIRED CONSENTS. The
execution, delivery and performance of this Agreement by Buyer (i) do not
require the consent, approval, authorization, order or other action of, nor any
filing with, any third party, including, without limitation, (A) any party to
any contract, loan or credit agreement, instrument, commitment, understanding or
other agreement to which Buyer is a party or (B) any court, administrative
agency or other governmental authority; (ii) will not violate any provisions of
the Articles of Incorporation or Bylaws of Buyer; (iii) will not violate any
law, judgment, order, injunction, decree, rule, regulation or ruling of any
governmental authority applicable to Buyer; and (iv) will not, either alone or
with the giving of notice or the passage of time or both, conflict with,
constitute grounds for termination of, result in breach of the terms, conditions
or provisions of, or constitute a default under, any agreement, instrument,
license or permit that
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is individually or in the aggregate material to the transactions contemplated
hereby and to which Buyer is now subject.
5.4 NO BROKERS. Neither Buyer, any officer or director of
Buyer, nor any employee or shareholder of Buyer has employed any broker, finder
or investment banker or incurred any liability for any commission, brokerage or
investment banking fee or finder's fee in connection with the transactions
contemplated by this Agreement.
SECTION 6
REPRESENTATIONS AND WARRANTIES OF SELLER
Seller represents and warrants to Buyer as follows:
6.1 ORGANIZATION AND STANDING. Seller is a limited partnership
duly organized and validly existing under the laws of the State of Oregon.
6.2 AUTHORIZATION AND BINDING OBLIGATION. Seller has full power
and authority to enter into and perform this Agreement and the transactions
contemplated hereby. The execution, delivery and performance of this Agreement
by Seller have been duly and validly authorized by all necessary action on the
part of Seller. This Agreement has been duly executed and delivered by Seller
and constitutes the valid, binding and enforceable obligation of Seller except
as the provisions of this Agreement may be rendered unenforceable by applicable
bankruptcy, insolvency, reorganization, moratorium or other similar laws
affecting creditor's rights generally or the application of general principles
of equity (regardless of whether enforcement is considered in a proceeding in
equity or at law).
6.3 ABSENCE OF CONFLICTING AGREEMENTS OR REQUIRED CONSENTS.
The execution, delivery and performance of this Agreement by Seller (i) do not
require the consent, approval, authorization, order or other action of, nor any
filing with, any third party, including, without limitation, (A) any party to
any contract, loan or credit agreement, instrument, commitment, understanding or
other agreement to which Seller is a party or (B) any court, administrative
agency or other governmental authority; (ii) will not violate any provisions of
the partnership agreement of Seller; (iii) will not violate any law, judgment,
order, injunction, decree, rule, regulation or ruling of any governmental
authority applicable to Seller; (iv) will not, either alone or with the giving
of notice or the passage of time or both, conflict with, constitute grounds for
termination of, result in a breach of the terms, conditions or provisions of, or
constitute a default under, any agreement, instrument, license or permit that is
individually or in the aggregate material to the transactions contemplated
hereby and to which Seller is now subject; and (v) will not result in the
creation of any lien, charge or encumbrance on any of the Intellectual Property.
6.4 OWNERSHIP OF INTELLECTUAL PROPERTY. Except as set forth in
Schedule 6.4 to this Agreement, Seller owns valid, unrestricted, enforceable and
exclusive rights for the use of the Intellectual Property. Seller has delivered
to Buyer copies of all documents establishing
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the rights of Seller to the Intellectual Property. Schedules 1.10, 1.11,
1.12, 1.17 and 1.18 respectively list all patent applications, patents,
planned patent applications, trademark applications, and trademarks owned by
Seller.
6.5 ABSENCE OF INFRINGEMENT. Except as set forth in Schedule
6.5 to this Agreement, to the best of Seller's knowledge, the use by Seller of
the Intellectual Property has not created any conflict with or infringement upon
any intellectual property rights of third parties, and Seller has not been
notified of any such conflicts or infringement claims.
6.6 ABSENCE OF ENCUMBRANCES. Except as set forth in Schedule 6.6
to this Agreement, none of the Intellectual Property is subject to any security
interest, mortgage, pledge, conditional sales agreement~ or other lien or
encumbrance.
6.7 NUMBER OF PARTNERSHIP INTERESTS. On the Closing Date, the
number of partnership interests outstanding will be the number reflected in
Seller's books and records as of that date.
6.8 LITIGATION AND ADMINISTRATIVE PROCEEDINGS. Except as set
forth in Schedule 6.8 to this Agreement, there is no litigation, proceeding or
investigation pending or, to the best of Seller's knowledge threatened, against
Seller in any federal, state or local court or before any administrative agency
individually or in the aggregate material to the transactions contemplated
hereby, including, without limitation, any proceeding that seeks to enjoin or
prohibit or otherwise questions the validity of any action taken or to be taken
pursuant to or in connection with this Agreement.
6.9 NO BROKERS. Neither Seller, any officer or director of
Seller, nor any employee or partner of Seller has employed any broker, finder or
investment banker or incurred any liability for any commission, brokerage or
investment banking fee or finder's fee in connection with the transactions
contemplated by this Agreement.
6.10 DISCLOSURE. No representation or warranty made by Seller
herein, or in any schedule referred to herein, or in any certificate delivered
or to be delivered in connection with the transactions contemplated by this
Agreement, contains or will contain any untrue statement of a material fact or
omits or will omit to state any material fact necessary to make the statement
not misleading.
SECTION 7
COVENANTS OF SELLER
7.1 PRE-CLOSING COVENANTS. Seller covenants and agrees that,
between the date hereof and the Closing Date, except as contemplated by this
Agreement or with the prior written consent of Buyer, Seller will conduct its
business and operations in accordance with the following:
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(a) Seller will not enter into any contract or commitment
relating to the Intellectual Property or incur any obligations (including
obligations relating to the borrowing of money of guaranteeing of indebtedness)
with respect to the Intellectual Property.
(b) Seller will not create, assume or permit to exist any
mortgage, pledge, lien or any charge or encumbrance or rights affecting any of
the Intellectual Property.
(c) Seller will not sell, assign, license or otherwise
transfer or dispose of any of the Intellectual Property.
(d) Seller will use its best efforts not to cause or
permit, by any act or failure to act, any action which would impair or lessen
the value of the Intellectual Property.
(e) Seller will not create or issue any Interests prior to
Closing beyond those outstanding as of the date of this Agreement.
(f) From the date of this Agreement to the Closing Date,
Seller will give to Buyer and its counsel, accountants, and other authorized
representatives reasonable access during normal business hours to the books and
records of Seller relating to the Intellectual Property and will furnish to
Buyer and its authorized representatives all information relating to the
Intellectual Property as they may reasonably request.
(g) Seller will notify Buyer of any material litigation or
administrative proceeding pending or, to its knowledge, threatened against it or
involving the Intellectual Property.
7.2 CLOSING COVENANT. On the Closing Date, Seller shall redeem
the Interests and shall transfer, convey, assign and deliver to Buyer the
Intellectual Property as provided in Section 2 of this Agreement.
7.3 POST-CLOSING COVENANTS. After the Closing, Seller agrees
that it will take such actions and execute and deliver to Buyer such further
instruments of assignment, conveyance and transfer as, in the reasonable opinion
of counsel for Buyer, may be necessary to ensure complete and evidence the full
and effective transfer of the Intellectual Property to Buyer pursuant to this
Agreement.
7.4 CONFIDENTIALITY. Both prior to and after the Closing,
Seller will maintain the confidentiality of all Technology that is not in the
public domain; provided that Seller's obligations under this Section 7.4 shall
not apply to Technology to which Seller obtains ownership pursuant to
Section 4.8 or pursuant to the License and Option Agreement described in
Section 9.1; and provided further that Seller may not disclose Technology which
is not in the public domain unless: (a) the disclosed has entered into a written
agreement acceptable to Buyer under which the disclosed agrees to restrictions
on disclosure, use, and transfer of the Technology; and (b) Buyer has consented
in writing to the disclosure, which consent shall not
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be unreasonably withheld The parties agree that Buyer may withhold consent if
the proposed disclosed is an actual or potential competitor of Buyer and that
such refusal to consent shall be reasonable
SECTION 8
COVENANTS OF BUYER
8.1 FILING, PROSECUTION, MAINTENANCE AND DEFENSE OF PATENTS.
Buyer shall use its best efforts to file and prosecute the Planned Applications
and the Patent Applications, to maintain the Planned Applications, the Patent
Applications, and the Patents, and to bear the full cost of said maintenance.
Buyer shall use its best efforts to prosecute the infringement of Patents and
shall bear the cost associated with such prosecution, provided that Buyer shall
have sole discretion with respect to what action it elects to take with respect
to such prosecution. In the event Buyer is unable to or elects not to continue
the prosecution or maintenance of a Patent Application, Planned Application, or
Patent, or if Buyer otherwise acts or fails to act in such a manner as to result
in de facto abandonment of a Patent Application, Planned Application, or Patent,
Buyer shall notify Seller of this fact in a timely manner. To the extent
Buyer's decision not to prosecute or maintain an Application or a Patent is
based upon a decision by Buyer to abandon the Application or Patent, or
otherwise results in de facto abandonment of the Application or Patent, Buyer
agrees to convey all right, title, and interest in such Application or Patent to
Seller at no cost to Seller. Buyer further agrees to provide Seller with copies
of all office actions by the United States and any foreign patent offices
concerning Planned Applications and Patent Applications within two weeks of
receipt by Buyer of such office action and to provide in a timely manner a copy
of Buyer's response to each such office action.
8.2 NOTICES. Buyer and Buyer Affiliates shall include on all
Products sold labels containing appropriate trademark and patent notifications.
8.3 CONFIDENTIALITY. Both prior to and after the Closing, Buyer
will maintain the confidentiality of all Technology that is not in the public
domain; provided that Buyer's obligations under this Section 8.3 shall not apply
to disclosures made pursuant to an appropriate confidentiality agreement to the
extent Buyer, in its sole discretion, determines such disclosures to be
appropriate to exploitation of the Technology.
SECTION 9
JOINT COVENANTS
9.1 LICENSE AND OPTION AGREEMENT. On the Closing Date, Buyer
and Seller shall execute a License and Option Agreement in substantially the
form shown in Schedule 9.1.
9.2 NO INCONSISTENT ACTION. Seller and Buyer will not take any
action inconsistent with their obligations under this Agreement or which could
hinder or delay the consummation of the transactions contemplated by this
Agreement.
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9.3 PROVISION OF INFORMATION AND FILING OF PLANNED APPLICATIONS.
Seller shall provide Buyer with copies of appropriate documents and other
materials necessary to complete preparation of the Planned Applications listed
in Schedule 1.12, and Buyer will use reasonable efforts to file such
applications in a timely manner and carry out such other steps as are necessary
in order to obtain patents on the basis of such applications. Both parties
shall execute such documents and take such actions as the other party may
reasonably request to facilitate the prosecution of the Planned Applications.
9.4 PROSECUTION OF INFRINGEMENT. Both parties shall cooperate
in the prosecution of any infringement of any Patents; provided, however, that
Buyer shall have the sole right to control the prosecution and settlement of any
claim of infringement and shall have sole discretion with respect to such
prosecution for so long as Buyer remains the owner of the Patent in question In
the event that Seller elects to assist in the prosecution of any infringement,
Seller shall have the right to share in any resulting recovery or settlement pro
rata based upon the percentage established under Section 4 for the Purchase
Price payments and shall have the right to share in any award of legal expenses
and fees pro rata based upon Seller's share of such expenses and fees incurred.
9.5 CANCELLATION OF PRIOR AGREEMENTS. Effective as of the
Closing, the License Agreements between the parties dated November 1, 1991 and
November 4, 1991 are cancelled and superseded by this Agreement.
SECTION 10
CONDITIONS TO OBLIGATIONS OF BUYER
The obligations of Buyer hereunder are, at its option, subject to
satisfaction, at or prior to the Closing Date, of each of the following
conditions:
10.1 REPRESENTATIONS, WARRANTIES, COVENANTS.
(a) All representations and warranties of Seller made in
this Agreement, or in any schedule or certificate delivered pursuant hereto,
shall be true and complete on and as of the Closing Date with the same force and
effect as if made on and as of that date.
(b) All of the terms, covenants and conditions to be
complied with and performed by Seller on or prior to the Closing Date shall have
been complied with or performed by Seller.
(c) Buyer shall have received a certificate of Seller
executed by the General Partner of Seller and dated as of the Closing Date, to
the effect that the representations and warranties of Seller contained in this
Agreement, are true and complete on and as of the Closing Date as though made on
and as of the Closing Date, and that Seller has complied with or performed all
terms, covenants and conditions to be complied with or performed by Seller on or
prior to the Closing Date.
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10.2 THIRD PARTY CONSENTS. Seller shall have obtained such third
party consents and made such filings or registrations with or notifications to,
or received such consents, approvals or authorizations of, all federal, state
and local and foreign authorities, required for consummation of the transactions
contemplated by this Agreement, in each case on terms and conditions that are
satisfactory to Buyer in its sole discretion.
10.3 ADVERSE PROCEEDINGS. No suit, action, claim or proceeding
shall have been instituted or threatened against, and no order, decree or
judgment of any court, agency or other governmental authority shall have been
rendered against, Buyer or Seller to restrain or prohibit, or obtain damages in
respect of, this Agreement or the transactions contemplated by this Agreement.
10.4 NO MATERIAL ADVERSE CHANGE. There shall not have been any
material adverse change in the Intellectual Property.
10.5 COMPLETION OF EXCHANGE OFFER. The Exchange Offer shall have
been completed pursuant to its terms.
10.6 REDEMPTION OF INTERESTS. Seller shall have redeemed the
Interests Tendered by Buyer pursuant to Section 2.2.
10.7 INSTRUMENTS OF CONVEYANCE AND TRANSFER. Seller shall have
sold, conveyed, assigned, transferred and delivered to Buyer all right, title
and interest of Seller in and to the Intellectual Property by the execution and
delivery to Buyer of assignment documents prepared by Buyer and satisfactory in
form and substance to Seller and shall have otherwise done all things necessary
or desirable in the reasonable judgment of Buyer to place Buyer in ownership and
control of the Intellectual Property, free and clear of any security interest,
mortgage, pledge, conditional sales agreement, or other lien or encumbrance
other than any security interest, mortgage, pledge, conditional sales agreement
or other lien or encumbrance imposed on the Intellectual Property by or through
Buyer.
10.8 OPINION OF COUNSEL. Counsel to Seller shall have delivered
an opinion dated as of the Closing Date substantially in the form of Schedule
10.8.
10.9 SATISFACTION OF COUNSEL. All actions and proceedings
required to be carried out by this Agreement, or incidental hereto, all
documents and instruments to be delivered hereunder, or incidental hereto and
all other relevant legal matters shall be reasonably satisfactory in all
respects to counsel for Buyer.
SECTION 11
CONDITIONS TO OBLIGATIONS OF SELLER
The obligations of Seller hereunder are, at its option, subject to
satisfaction, at or prior to the Closing Date, of each of the following
conditions:
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11.1 REPRESENTATIONS, WARRANTIES AND COVENANTS.
(a) All representations and warranties of Buyer made in
this Agreement, or in any certificate delivered pursuant hereto, shall be true
and complete on and as of the Closing Date with the same force and effect as if
made on and as of that date.
(b) All of the terms, covenants and conditions to be
complied with and performed by Buyer on or prior to the Closing Date shall have
been complied with or performed by Buyer.
(c) Seller shall have received a certificate of Buyer,
dated as of the Closing Date, executed by the President or other authorized
officer of Buyer, to the effect that the representations and warranties of Buyer
contained in this Agreement are true and complete on and as of the Closing Date
as though made on and as of the Closing Date and that Buyer has complied with or
performed all terms, covenants and conditions to be complied with or performed
by Buyer on or prior to the Closing Date.
11.2 COMPLETION OF EXCHANGE OFFER. The Exchange Offer shall have
been completed pursuant to its terms.
SECTION 12
TERMINATION
12.1 TERMINATION BY BUYER. This Agreement may be terminated by
Buyer upon notice to Seller if:
(a) The Closing shall not have occurred on or before
July 1, 1993;
(b) Any representation of warranty of Seller shall prove
false in any material respect;
(c) Seller shall (i) apply for or consent to the
appointment of, or the taking of possession by, a receiver, custodian, trustee
or liquidator of itself or of all of its property, (ii) make a general
assignment for the benefit of its creditors, (iii) commence a voluntary case
under the Federal Bankruptcy Code (as now or hereafter in effect), (iv) be
adjudicated a bankrupt or insolvent, (v) file a petition seeking to take
advantage of any other law relating to bankruptcy, insolvency, reorganization,
winding-up or composition or adjustment of debts, (vi) fail to controvert in a
timely and appropriate manner, or acquiesce in writing to, any petition filed
against it in an involuntary case under such Bankruptcy Code, or (vii) take any
action for the purpose of effecting any of the foregoing;
(d) A proceeding or case shall be commenced, without the
application or consent of Seller, in any court of competent jurisdiction seeking
(i) the liquidation, reorganization, dissolution or winding-up or the
composition or readjustment of debts, of Seller,
13
(ii) the appointment of a trustee, receiver, custodian, liquidator or the
like of Seller, or of all of any substantial part of its assets or (iii) similar
relief in respect of Seller under any law relating to bankruptcy, insolvency,
reorganization, winding-up or composition or adjustment of debts; or
(e) On the Closing Date any condition precedent to the
obligations of Buyer set forth in this Agreement shall not have been satisfied
and Buyer shall not have previously waived such condition.
12.2 TERMINATION BY SELLER. This agreement may be terminated by
Seller, if not then in default, upon notice to Buyer if:
(a) The Closing shall not have occurred on or before
July 1, 1993;
(b) Any representation or warranty of Buyer shall prove
false in any material respect; or
(c) Buyer shall (i) apply for or consent to the appointment
of, or the taking of possession by, a receiver, custodian, trustee or liquidator
of itself or all of its property, (ii) make a general assignment for the benefit
of creditors, (iii) commence a voluntary case under the federal Bankruptcy Code
(as now or hereafter in effect), (iv) be adjudicated a bankrupt or insolvent,
(v) file a petition seeking to take advantage of any other law relating to
bankruptcy, insolvency, reorganization, winding-up or composition or adjustment
of debts, (vi) fail to controvert in a timely and appropriate manner, or
acquiesce in writing to, any petition filed against it in an involuntary case
under such Bankruptcy Code, or (vii) take any action for the purpose of
effecting any of the foregoing;
(d) A proceeding or case shall be commenced, without the
application or consent of Buyer in any court of competent jurisdiction seeking
(i) the liquidation, reorganization, dissolution or winding-up or the
composition or readjustment of debts, of Buyer, (ii) the appointment of a
trustee, receiver, custodian, liquidator or the like of Buyer, or of all or any
substantial part of its assets or (iii) similar relief in respect of Buyer under
any law relating to bankruptcy, insolvency, reorganization, winding-up or
composition or adjustment of debts; or
(e) On the Closing Date any condition precedent to the
obligations of Buyer set forth in this Agreement shall not have been satisfied
and Seller shall not have previously waived such condition.
12.3 EFFECT OF CLOSING. The termination provisions of this
Section 12 shall cease upon the Closing.
14
SECTION 13
DISCLAIMER OF WARRANTY
Seller makes no warranty whatsoever with respect to the safety,
efficacy, or utility of the Intellectual Property, the Patents, or the Products
or as to the validity or utility of any claims in any Planned Applications,
Patent Applications, or Patents. Buyer acknowledges that it has made its own
assessment of and is satisfied with the value of the Intellectual Property.
SECTION 14
OTHER PROVISIONS
14.1 SURVIVAL. The conditions to closing contained in
Sections 10 and 11 and the termination provisions of Section 12 shall be
extinguished in the Closing. All other provisions of this Agreement, including,
without limitation, the representations and warranties of the parties, shall
survive the Closing and continue in full force and effect.
14.2 CHOICE OF LAW. The construction and performance of this
Agreement will be governed by the laws of the state of Oregon (except for choice
of law provisions thereof).
14.3 EXPENSES. Each party to this Agreement shall pay its own
expenses incident to the negotiation, execution, delivery and performance of
this Agreement
14.4 NOTICES. Any notice or other communication required or
permitted under this Agreement shall be in writing (which may take the form of a
telecopy communication) and shall be sent by certified mail, return receipt
requested, or by confirmed telecopier or hand delivery:
If to Buyer, to the following address:
ANTIVIRALS Inc.
Xxx Xxxxxxxxx Xxxxxxxx, Xxxxx 0000
Xxxxxxxx, Xxxxxx 00000
Telecopy: (503) 227-0,51
Attention: President
With a copy to:
Stoel Xxxxx Xxxxx Xxxxx & Grey
000 XX Xxxxx Xxxxxx, Xxxxx 0000
Xxxxxxxx, Xxxxxx 00000
Telecopy: (000) 000-0000
Attention: E. Xxxxxx Xxx Xxxxxxxxxx
15
If to Seller, to the following address:
ANTI-GENE DEVELOPMENT GROUP
X.X. Xxx 0000
Xxxxxxxxx, Xxxxxx 00000
Telecopy: (000) 000-0000
Attention: Xxxxx X. Xxxxxxxxx, Ph.D
With a copy to:
Xxxxx X. Xxxxxxxxx
ANTI-GENE DEVELOPMENT GROUP
0000 X.X. Xxxxx
Xxxxxxxxx, XX 00000
Unless otherwise provided in this Agreement, all notices and communications
shall be deemed to have been duly given or made (i) when delivered by hand,
(ii) five business days after being deposited in the mail, postage prepaid,
as.registered or certified mail, return receipt requested, or (iii) when
telecopied, receipt acknowledged. The address or telecopy numbers to which
notices or other communications shall be directed may be changed from time to
time by any party by giving written notice to the other parties of the
substitute address or telecopy number.
14.5 ATTORNEY FEES. If a suit or action is filed by either party
to enforce the provisions of this Agreement, or otherwise with respect to the
subject matter of this Agreement, the prevailing party shall be entitled to
recover reasonable attorneys' fees and expenses (including, but not limited to
those fees and expenses permitted or defined by statute) as fixed by the trial
court, and if any appeal is taken from the decision of the trial court, as
affixed by the appellate court. For purposes of this Agreement, the term
"prevailing party" shall be deemed to include a party that successfully opposes
a petition for review filed by an appellate court.
14.6 SUCCESSORS AND ASSIGNS. This Agreement will be binding upon
and inure to the benefit of each of the parties and its successors and assigns;
provided that no party may assign its rights under this Agreement without the
consent of the other party, which consent shall not unreasonably be withheld.
14.7 AMENDMENT. No supplement, modification or amendment of, or
waiver with respect to, this Agreement shall be binding unless executed in
writing. This Agreement may be modified, amended or terminated upon the written
agreement of both parties.
14.8 CONSENTS. Any consent required by this Agreement shall be
effective only if given in a writing executed by the party giving the consent.
16
14.9 HEADINGS. The headings in this Agreement are solely for
convenience of reference and shall not limit or otherwise affect the meaning of
this Agreement.
14.10 SEVERABILITY. If any part of this Agreement is found
invalid or unenforceable, it shall be enforced to the maximum extent permitted
by law, and other parts of this Agreement will remain in force.
14.11 ENTIRE AGREEMENT. This Agreement, including the
License and Option Agreement comprising Schedule 9.1, constitutes the entire
agreement pertaining to the subject matter hereof and supersedes all prior
agreements and understandings of the parties in connection herewith. No
covenant, representation or condition not expressed in this Agreement will
affect or be effective to interpret, change or restrict, the express provisions
of this Agreement.
14.12 COUNTERPARTS. This Agreement may be executed in
counterparts, each of which will be considered an original, but all of which
together will constitute the Same instrument
IN WITNESS WHEREOF, the parties hereto have executed this Technology
Transfer Agreement the day and year first above written.
ANTIVIRALS Inc.
By:
-------------------------------------
Xxxxx Xxxxxx, Ph.D, President
ANTI-GENE DEVELOPMENT GROUP
By:
-------------------------------------
Xxxxx X. Xxxxxxxxx, Ph.D,
General Partner
17
Schedule 1.10
UNITED STATES PATENT APPLICATIONS
Application No. 944,707 for "Polynucleotide Assay Reagent and Method" (Filed
December 18, 1986).
Application No. 454,056 for "Alpha-Morpholino Ribonucleoside Derivatives and
Polymers Thereof" (Filed December 20, 1989).
Application No. 799,681 for "Uncharged Morpholino Based Polymers Having
Phosphorous Linked Chiral Intersubunit Linkages" (Filed November 21, 1991).
Application No. 880,883 for "Uncharged Polynucleotide-Binding Polymers n (Filed
May 8, 1992).
Application No. 979,158 for "Sequence Specific Binding Polymers for Duplex
Nucleic Acids" (Filed November 23, 1992).
Application No. 988,451 for "Uncharged Morpholino-Based Polymers Having
Phosphorous Containing Chiral Intersubunit Linkages" (Filed December 10, 1992).
FOREIGN PATENT APPLICATIONS
Application No. 869025957 (Europe) for "Polynucleotide Assay Reagent and Method"
(Filed March 14, 1986).
Application No. 869021899 (Europe) for "Stereoregular Polynucleotide-Binding
Polymers" (Filed March 14, 1986).
Application No. 61-502179 (Japan) for "Polynucleotide Assay Reagent and Method"
(Filed March 14, 1986).
Application No. 61-501967 (Japan) for "Stereoregular Polynucleotide-Binding
Polymer" (Filed March 14, 1986).
Application No. 92/05208 (PCT) for "Sequence Specific Binding Polymers for
Duplex Nucleic Acids" (Filed June 18, 1992).
Application No. 81109326 (Taiwan) for "Sequence Specific Binding Polymers for
Duplex Nucleic Acids" (Filed November 21, 1992).
1
Application No. 20698691 (Canada) for "Uncharged Morpholino-Based Polymers
Having Phosphorous-Containing Chiral Intersubunit Linkages" (Filed December 20,
1990).
Application No. 0000000 (Japan) for "Uncharged Morpholino-Based Polymers Having
Phosphorous Containing Chiral Intersubunit Linkages" (Filed December 20, 1990).
Application No. 71642/91 (Australia) for "Uncharged Morpholino-Based Polymers
Having Phosphorous-Containing Chiral Intersubunit Linkages" (Filed December 20,
1990).
Application No. 919020859 (EPO) for "Uncharged Morpholino-Based Polymers Having
Phosphorous-Containing Chiral Intersubunit Linkages" (Filed December 20, 1990).
Application Xx. 00000000 (Xxxxx) for "Uncharged Morpholino-Based Polymers Having
Phosphorous-Containing Chiral Intersubunit Linkages" (Filed December 20, 1990).
Application No. 20699060 (Canada) for "Uncharged Morpholino-Based Polymers
Having Achiral Intersubunit Linkagesll (Filed December 20, 1990).
Application No. 0000000 (Japan) for "Uncharged Morpholino-Based Polymers Having
Achiral Intersubunit Linkages" (Filed December 20, 1990).
Application No. 71587/91 (Australia) for "Uncharged Morpholino-Based Polymers
Having Achiral Intersubunit Linkages" (Filed December 20, 1990).
Application No. 919024018 (EPO) for "Uncharged Morpholino-Based Polymers Having
Achiral Intersubunit Linkages" (Filed December 20, 1990).
Application Xx. 00000000 (Xxxxx) for "Uncharged Morpholino-Based Polymers Having
Achiral Intersubunit Linkages" (Filed December 20, 1990).
2
Schedule 1.11
UNITED STATES PATENTS
U.S. Patent No. 5,142,047 for "Uncharged Polynucleotide-Binding Polymers"
(August 25, 1992).
U.S. Patent No. 5,034,506 for "Uncharged Morpholino-Based Polymers having
Achiral Intersubunit Linkages" (July 23, 1991).
U.S. Patent No. 5,166,315 for "Sequence-Specific Binding Polymers for Duplex
Nucleic Acids" (November 24, 1992).
FOREIGN PATENTS
Canadian Patent No. 1,268,404 for "Polynucleotide Assay Reagent and Method."
Schedule 1.12
PLANNED APPLICATIONS
Nonionic nucleic acid-binding polymers specific for single stranded DNA.
Single-probe diagnostic system utilizing nonionic reporter probe.
Novel adducts for improving entry of nucleic acids-binding polymers into cells.
Binding polymers having reduced sequence-specificity effective for binding
RNA:RNA duplexes.
Subunits and nucleic acids-binding polymers containing novel 6-membered
non-morpholino backbone moieties.
Continuous flow method for assembling sequence-specific nucleic acids-binding
polymers.
Purification/concentration component for use with a probe diagnostic system
which utilizes a nonionic capture probe.
Method for conversion of biologically-synthesized DNA to a nonionic form, and
products of said conversion.
Schedule 1.17
TRADEMARK APPLICATIONS
U.S. Application No. 74-269,484 for GOOD-SENSE (Filed April 27, 1992).
U.S. Application No. 74-269,483 for ANTI-GENE (Filed April 27, 1992).
U.S. Application No. 74-269,482 for NEU-GENE (Filed April 27, 1992).
Schedule 1.18
TRADEMARKS
GOOD-SENSE
ANTI-XXXX
XXX-XXXX
Schedule 6.4
EXCEPTIONS TO INTELLECTUAL PROPERTY OWNERSHIP
None.
Schedule 6.6
LIENS AND ENCUMBRANCES
None.
Schedule 6.9
LITIGATION AND ADMINISTRATIVE PROCEEDINGS
None.
Schedule 9.1
LICENSE AND OPTION AGREEMENT
This License and Option Agreement is by and between ANTI-GENE
DEVELOPMENT GROUP, an Oregon limited partnership ("AGD") and ANTIVIRALS Inc., an
Oregon corporation ("AVI").
RECITALS
A. AGD and AVI are parties to a Technology Transfer Agreement (the
"Transfer Agreement") under which AGD has conveyed to AVI certain Technology, as
more fully described in the Transfer Agreement.
B. Each party wishes to grant to the other certain rights with respect to
the Technology and Improvements thereto.
AGREEMENT
In consideration of the above and of the promises and covenants
contained herein, the parties agree as follows:
1. DEFINITIONS.
1.1 Unless otherwise set forth in this Agreement, the terms used
in this Agreement shall have the meanings given to them in the Transfer
Agreement.
1.2 "AGD Affiliate" shall mean AGD Licensees, other than AVI,
and any entity other than AVI that controls, is controlled by or is under common
control with AGD.
1.3 "AGD Improvements n shall mean Improvements developed by AGD
after the effective date of this Agreement but before January 1, 2000, and which
AGD has the right to sublicense to AVI.
1.4 "AGD Licensee" shall mean any person, corporation or other
entity, other than AVI, that obtains a right granted by AGD or an AGD Affiliate
to: (a) make a Proposed Product or Related Product; (b) make a Proposed Product
or Related Product and use that Proposed Product or Related Product; (c) make a
Proposed Product or Related Product and sell that Proposed Product or Related
Product; (d) have a Proposed Product or Related Product made on behalf of said
entity and use that Proposed Product or Related Product; (e) have a Proposed
Product or Related Product made on behalf of said entity and sell that Proposed
Product or Related Product; or, (f) use a method claimed in a patent covering an
AVI Improvement.
1
1.5 "AVI Affiliate" shall have the meaning given to Buyer
Affiliate" in the Transfer Agreement.
1.6 "AVI Improvements" shall mean Improvements developed by AVI
after the effective date of this Agreement but before January 1, 2000, and which
AVI has the right to license to AGD.
1.7 "Improvements" shall mean documented improvements to the
Technology comprising inventions, discoveries, trade secrets, formulas,
techniques, processes, and know-how, whether or not patented and whether or not
reduced to practice, which are derived from, incorporate, or are based upon, are
adducts to, or which relate to making or using the Technology.
1.8 "Licensed Product" shall mean any product with respect to
which AVI obtains a license under Section 5 of this Agreement.
1.9 "Polymer" shall mean a single molecular specie of nucleic
acid binding polymer incorporating one or more aspects of the Technology and/or
Improvements.
1.10 "Proposed Product" shall have the meaning set forth in
Section 3.1.
1.11 "Related Product" shall mean, with respect to any Proposed
Product, all related products which have the same or similar structural type and
adducts which achieve substantially the same biological effect and which are
targeted against the same pathogen specie or cellular gene as the Proposed
Product.
2. RESEARCH AND DEVELOPMENT LICENSE TO AGDG.
2.1 Subject to the terms of this Agreement, AVI hereby grants to
AGD a nonexclusive, royalty free license, with the right to sublicense: (a) to
use the Technology and AVI Improvements and to make, have made, and use any
Products incorporating the Technology and AVI Improvements internally for
research and development; and (b) to make, have made, use and sell Polymers in
an amount of no more than ten (10) grams per month of each single Polymer; and
(c) to make, have made, and use subunits and adducts in amounts not to exceed
that required for assembly of said Polymers.
2.2 AGD may not disclose the Technology or any AVI Improvements
that are not in the public domain unless: (a) the disclosed or transferee has
entered into a written agreement acceptable to AVI under which the disclosed or
transferee agrees to restrictions on disclosure, use, and transfer of the
Technology or AVI Improvements, and (b) AVI has consented in writing to the
disclosure, use and transfer, which consent shall not be unreasonably withheld;
provided that AGD's obligation under this Section 2.2 shall not apply to
Technology or Improvements to which AGD obtains a license pursuant to Section 3
or Section 6 or to which AGD obtains ownership pursuant to section 4.8 of the
Transfer Agreement.
2
2.3 AVI shall not enter into any agreement restricting its right
to license AVI Improvements solely for the purpose of denying a license to such
AVI Improvements to AGD.
3. OPTION.
3.1 If AGD develops or obtains-a specific prototype product
which AVI has the right to make, use and sell and which incorporates one or
more aspects of the Technology or Improvements and demonstrates at the
biophysical level that said prototype product affords binding properties for
its selected genetic target, AGD shall provide written notice (the "Notice")
to AVI describing the product (the "Proposed Product") and shall provide AVI
with such existing information and materials as AVI may reasonably request to
enable AVI to evaluate the Proposed Product.
3.2 Within thirty (30) days after the date of the Notice
required under Section 3.1, AVI shall notify AGD: (a) that AVI intends to begin
optimization and commercialization of the Proposed Product; or (b) that AVI
elects not to commercialize the Proposed Product. If AVI elects not to
commercialize the Proposed Product, AVI shall grant AGD an exclusive, perpetual
license, with the right to sublicense, to make, have made, use, sell, and
otherwise distribute the Proposed Product and any Related Products and to make,
have made, and use subunits and adducts in amounts not to exceed that required
for assembly of the Proposed Product and any Related Products.
3.3 If AVI elects to begin optimization and commercialization of
the Proposed Product, AVI shall take such steps as AVI, in its sole discretion,
considers appropriate with respect to the Proposed Product: provided, however
that AGD shall have the right, upon written notice to AVI, to obtain the license
described in Section 3.2 if neither AVI nor any AVI Affiliate achieves the
milestones set forth below by the dates indicated:
(a) Commencement of cell culture studies on the Proposed
Product: Nine (9) months from the date of AGD's Notice under Section 3.1.
(b) Commencement of pharmacokinetics and toxicology studies
of the Proposed Product: Twenty-four (24) months from the date of AGD is Notice
under Section 3.1.
(c) Commencement of clinical trials of the Proposed Product
or an optimized version thereof: thirty-six (36) months from the date of AGD's
Notice under Section 3.1.
3.4 For purposes of Section 3.3, a milestone shall be met for a
Proposed Product if the milestone occurs with respect to an optimized version of
the Proposed Product which has the same or similar structural type and adducts
which achieve substantially the same biological effect and which is targeted
against the same pathogen specie or cellular gene.
3
3.5 Notwithstanding anything in this Section 3 to the contrary,
AGD shall not have any rights under this Section 3 with respect to any Proposed
Product as to which AVI or any AVI Affiliate has commenced large scale
production prior to the date of AGD's Notice for so long as such large scale
production continues. For purposes of this Section 3.5, Proposed Product
includes Related Products and "large scale production" shall mean production of
more than ten (10) grams each month.
4. ROYALTIES.
4.1 For any license granted by AVI to AGD pursuant to Section 3
of this Agreement which covers a Proposed Product or Related Product that does
not incorporate a patented AVI Improvement, the license shall be royalty free.
4.2 For any license granted by AVI to AGD pursuant to Section 3
of this Agreement which covers a Proposed Product or Related Product that
incorporates a patented AVI Improvement, AGD shall pay AVI as a royalty a
percentage of the total Sales of each Proposed Product by AGD and any AGD
Affiliate, which percentages shall be equal to the applicable percentages AVI is
required to pay AGD as Purchase Price payments pursuant to the Transfer
Agreement; provided, however, that AGD's obligation to pay royalties under this
section shall be limited to Proposed Products and Related Products, the sale of
which would infringe a patent owned by AVI in the absence of this Agreement.
For purposes of this section 4 2, "Sales" shall mean the total worldwide sales
of Proposed Products and Related Products by AGD and AGD Affiliates, subject to
the terms applicable to Sales by AVI under the Transfer Agreement.
4.3 AGD's obligation to pay royalties pursuant to this Section 4
shall be subject to all of the terms applicable to AVI's obligation to make
Purchase Price payments set forth in Sections 4.3, 4.4, 4.5, 4.6, and 4.8 of the
Transfer Agreement.
5. LICENSE TO AVI OF AGD IMPROVEMENTS.
5.1 Subject to the terms of this Agreement, AGD hereby grants to
AVI a non-exclusive license, with the right to sublicense, to make, have made,
use, and sell products incorporating AGD Improvements (a "Licensed Product").
5.2 AVI shall pay AGD as a royalty a percentage of the total
Sales of each Licensed Product AVI or any AVI Affiliate sells, which percentages
shall be equal to the applicable percentages AVI is required to pay AGD as
Purchase Price payments pursuant to the Transfer Agreement; provided, however,
that AVI's obligation to pay royalties under this section shall be limited to
Licensed Products the sale of which would infringe a patent owned by AGD in the
absence of this Agreement; and provided further that AVI shall have no
obligation under this Section 5.2 with respect to Licensed Products covered by
one or more
4
unexpired Patents owned by AVI. AVI's obligation with respect to Licensed
Products covered by one or more unexpired Patents owned by AVI shall be
limited to AVI's obligation to make Purchase Price payments pursuant to the
Transfer Agreement.
5.3 AVI's obligation to pay royalties pursuant to this Section 5
shall be subject to all of the terms of AVI's obligation to make Purchase Price
payments set forth in Sections 4.3, 4.4, 4.5, 4.6 and 4.8 of the Transfer
Agreement; provided that the parties intend the exemption granted under
Section 4.6 for the first two hundred million dollars ($200,000,000) in AVI and
AVI Affiliate Sales to apply only once, so that Sales of Licensed Products under
this Section 5 shall no longer be exempt once AVI and AVI Affiliates achieve the
first two hundred million dollars in worldwide Sales of Products and Licensed
Products.
5.4 AVI will maintain the confidentiality of all information
about AGD Improvements that is not in the public domain unless: (a) the
disclosed has entered into a written agreement acceptable to AGD under which the
disclosed agrees to restrictions on disclosure, use, and transfer of the AGD
Improvements, and (b) AGD has consented in writing to the disclosure or
transfer, which consent shall not unreasonably be withheld.
6. OBLIGATION TO EXPLOIT.
If after January 1, 1994, AVI and AVI Affiliates together effectively
cease development of Products based on the Technology, as evidenced by AVI, AVI
Affiliates, and/or their successors and assigns in the aggregate having for a
period of more than 180 consecutive days less than the equivalent of ten (10)
full time employees devoted to development, testing, commercialization,
production and/or sales of one or more products based on the Technology, then,
upon request by AGD, AVI will grant to AGD an exclusive royalty-free license,
with right to sublicense, to make, have made, use, sell, or otherwise distribute
the Products, to practice the Technology, and to use the Trademarks.
7. DISCLAIMER OF WARRANTY.
Neither party makes any warranty whatsoever with respect to
Technology;and Improvements licensed pursuant to this Agreement or any Products,
Licensed Products, Proposed Products or Related Products. Each party's rights
under this Agreement are limited to whatever rights that party has in the
Technology and Improvements transferred.
8. FURTHER ASSISTANCE.
Each party shall take such actions and execute and deliver such other
documents as, in the reasonable opinion of counsel for the other party, may be
necessary to evidence the rights and interests of the requesting party
hereunder.
9. OTHER PROVISIONS.
5
The provisions set forth in Section 14 of the Transfer Agreement are
applicable to this Agreement and are incorporated herein by reference.
IN WITNESS WHEREOF, the Parties hereto have executed this Agreement
effective as of __________________, 1993.
ANTIVIRALS INC.
By:
-------------------------------------
Xxxxx Xxxxxx, Ph.D, President
ANTI-GENE DEVELOPMENT GROUP
By:
-------------------------------------
Xxxxx X. Xxxxxxxxx, Ph.D,
General Partner
6
Schedule 10.8
OPINION OF COUNSEL FOR SELLER
[Closing Date]
Antivirals Inc.
Xxx Xxxxxxxxx Xxxxxxxx, Xxxxx 0000
Xxxxxxxx, Xxxxxx 00000
We have acted as counsel to Anti-Gene Development Group, an Oregon
limited partnership ("Seller") in connection with the transactions contemplated
by the Technology Transfer Agreement (the Transfer Agreement") dated as of
February 9, 1993, between Seller and Antivirals Inc.
We have examined originals or copies, certified or otherwise
identified to our satisfaction, of such documents, corporate records,
certificates of public officials and other instruments and have conducted such
other investigations of fact and law as we have deemed necessary.or advisable
for purposes of this opinion.
Upon the basis of the foregoing and subject to the qualifications
below, we are of the opinion that:
1. Seller is a limited partnership duly organized and validly
existing under the laws of the state of Oregon.
2. Seller has full power and authority to enter into and perform the
Transfer Agreement and the transactions contemplated thereby. The execution,
delivery and performance of the Transfer Agreement by Seller have been duly and
validly authorized by all necessary action on the part of Seller. The Transfer
Agreement has been duly executed and delivered by Seller and constitutes the
valid, binding and enforceable obligation of Seller except as the provisions of
the Transfer Agreement may be rendered unenforceable by applicable bankruptcy,
insolvency, reorganization, moratorium, or other similar laws affecting
creditor's rights generally or the application of general principles of equity
(regardless of whether enforcement is considered in a proceeding in equity or at
law).
3. The execution, delivery and performance of the Transfer Agreement
by Seller (i) do not require the consent, approval, authorization, order or
other action of, nor any filing with, any third party, including without
limitation (A) any party to any contract, loan or credit agreement, instrument,
commitment, understanding or other agreement to which Seller is a party or
(B) any court, administrative agency or other governmental authority; (ii) will
not violate any provisions of the partnership agreement of Seller; (iii) will
not violate any law, judgment, order,
1
injunction, decree, rule, regulation or ruling of any governmental authority
applicable to Seller; (iv) will not, either alone or with the giving of
notice or the passage of time or both, conflict with, constitute grounds for
termination of, result in a breach of the terms, conditions or provisions of,
or constitute a default under, any agreement, instrument, license or permit
that is individually or in the aggregate material to the transactions
contemplated by the Transfer Agreement and to which Seller is now subject;
and (v) will not result in the creation of any lien, charge or encumbrance on
any of the Intellectual Property!
4. To the best of our knowledge, except as set forth in Schedule 6.4
to the Transfer Agreement, Seller owns valid, unrestricted, enforceable and
exclusive rights for the use of the Intellectual Property, Seller has delivered
to Buyer copies of all documents establishing the rights of Seller to the
Intellectual Property, and all patent applications, patents, planned patent
applications, trademark applications, and trademarks owned by Seller are
respectively listed on Schedules 1.10, x.xx, 1.12, 1.17 and 1.18 to the Transfer
Agreement.
5. To the best of our knowledge, the use by Seller of the
Intellectual Property has not created any conflict with or infringement upon any
intellectual property rights of third parties, and Seller has not been notified
of any such conflicts or infringement claims.
6. To the best of our knowledge, none of the Intellectual Property
is subject to any security interest, mortgage, pledge, conditional sales
agreement, or other lien or encumbrance.
7. To the best of our knowledge, there is no litigation, proceeding
or investigation pending or threatened against Seller in any federal, state or
local court or before any administrative agency individually or in the aggregate
material to the transactions contemplated by the Transfer Agreement, including,
without limitation, any proceeding that seeks to enjoin or prohibit or otherwise
questions the validity of any action taken or to be taken pursuant to or in
connection with the Transfer Agreement.
This opinion is given solely to the addressee named above and may not
be relied upon by any other person nor may it be used, circulated, quoted or
otherwise referred to other than in connection with the transactions
contemplated by the Transfer Agreement.
Very truly yours,
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