2000 AMENDMENT TO TECHNOLOGY TRANSFER AGREEMENT BETWEEN ANTI-GENE DEVELOPMENT
GROUP AND AVI BIOPHARMA, INC. (FORMERLY ANTIVIRALS INC.)
This Amendment to the Technology Transfer Agreement dated February 9, 1992
but executed on February 9, 1993 (the TT Agreement or the 1993 TT Agreement)
and the Amendment to that Agreement dated January 20, 1997 (the 1997
Amendment) between ANTI-GENE DEVELOPMENT GROUP and AVI BioPharma, Inc. (2000
Amendment) is by and between ANTI-GENE DEVELOPMENT GROUP (AGD), an Oregon
limited partnership, and AVI BioPharma, Inc. (AVI), an Oregon corporation.
RECITALS
A. As per the terms of the 0000 XX Agreement and the 1997 Amendment thereto,
hereby incorporated by reference herein, AGD (Seller) is due Purchase Price
payments from AVI (Buyer) in the amount of 4.051 percent of Sales of
Therapeutic Products after the first two hundred million dollars in total
cumulative worldwide Sales by Buyer and Buyer Affiliates collectively and in
the amount of 2.0 percent of Sales of Diagnostic Products, with no sales of
Diagnostic Products being exempt from royalties.
B. AVI wishes to have Purchase Price payments reduced on Sales of
Therapeutic Products.
C. AGD wishes to convert its non-exclusive license for Diagnostic Products
from AVI to a royalty-free exclusive license.
D. AGD wishes to convert its royalty-bearing license for small-scale
products to a royalty-free license.
AGREEMENT TO AMEND
In consideration of the above and as provided in Section 14.7 of the TT
Agreement, AGD and AVI agree to amend the TT Agreement and the 1997 Amendment
thereto as set forth below.
1. TT AGREEMENT TERMS. All capitalized terms not defined in this 2000
Amendment shall have the meanings assigned to such terms in the TT Agreement
or its Exhibits and in the 1997 Amendment thereto.
2. TT AGREEMENT DEFINITIONS.
2.1 BUYER AFFILIATE. Section 1.1 of the TT Agreement is hereby amended
to read in entirety as follows:
"Buyer Affiliate" shall mean Buyer's Licensees and any other entity
that controls, is controlled by, or is under common control with Buyer
or Buyer's Licensees, except that Seller and any direct licensee of
Seller shall not be deemed to be a Buyer Affiliate.
2.2 NEW DEFINITIONS. Section 1 of the TT Agreement is hereby amended to
include the following definitions:
1.20 "Therapeutic Product" shall mean a Products, as defined in the TT
Agreement, which is approved for use in, or is used in a human or
other animal or in blood or blood derived products to achieve a
therapeutic or prophylactic effect.
"Therapeutic Product" shall also mean a Product, as defined in
the TT Agreement, added to or contained in a culture medium which is
directly inoculated with a biological specimen immediately extracted
from a patient (human or animal) by a health care worker, where the
Product is used solely to determine if said Product affects the growth
or viability of one or more microorganisms or cells which may be
present in said biological specimen.
"Therapeutic Product" shall also mean a Product, as defined in
the TT Agreement, which is injected into a patient (human or other
animal) and then extracted from said patient and the
extract analyzed to determine if, and the extent to which, said
Product is bound to a complementary genetic sequence originating
within said patient.
1.21 "Diagnostic Product" shall mean a Product, as defined in the TT
Agreement, which is approved for, or is used for detecting and/or
quantitating in a biological specimen outside any human or other
animal body one or more selected nucleic acid sequences.
"Diagnostic Product" shall also mean any product which would
infringe one or more valid claims of any patent issuing from U.S.
Patent Application number 08/969,813 titled: "Reagent and Method for
Isolation and Detection of Selected Nucleic Acid", as well as all
continuations, continuations-in-part, divisions, reissues, patents of
addition, renewals, and any foreign counterparts of said 08/969,813
patent application.
1.22 "Research Product" shall mean a Product, as defined in the TT
Agreement, which is not classed as a Therapeutic Product or Diagnostic
Product.
1.23 "Small-Scale Product" shall mean a Product and AVI Improvements
relating thereto --including adducts for enhancing delivery and cell
entry, as defined in the TT Agreement, which meets all of the
following requirements: (i) is produced in a lot size of less than 1
gram; (ii) is sold by any entity for research purposes only.
1.24 The terms "Seller's Affiliate" and "AGD Affiliate" are
synonymous, and are understood and intended to mean, any entity that
controls, is controlled by, or is under common control with AGD.
3. TT AGREEMENT PURCHASE PRICE. Section 4.2(b) of the TT Agreement is hereby
amended to read in its entirety as follows:
(b) The purchase Price set forth in Section 4.2(a) shall be with
respect to Therapeutic Products a flat 3.00 percent.
4. RIGHTS OF FIRST REFUSAL. Section 4.9 of the 1997 Amendment is amended to
read in its entirety as follows:
4.9 RIGHT OF FIRST REFUSAL. Buyer shall have the right of first
refusal to purchase a controlling interest or any interest in any AGD
Affiliate upon any change or proposed change in ownership in such
entity that would result in Xxxxx X. Xxxxxxxxx losing control over
such entity ("Triggering Event"). Transfers of interests by Xxxxx X.
Xxxxxxxxx to Summerton's children, Xxxxx X., Xxxx and/or Xxxxxx
Xxxxxxxxx, shall not be considered a Triggering Event, and shall not
give rise to Buyer's right of first refusal hereunder, but transfers
by such children transferees to parties other than Xxxxx X. Xxxxxxxxx
would constitute a triggering Event. Such rights of first refusal
shall be exercised as follows: Xxxxx X. Xxxxxxxxx or his children
transferees (here after "Summerton") shall give written notice (the
"Notice") of Summerton's desire to sell interests prior to sale, and
the parties shall seek to determine the interest price as quickly as
reasonably possible after such Notice. The price of the interests
shall be (i) the price offered by a prospective third party buyer in
good faith and at arm's length; or (ii) if there is no prospective
third party buyer or no terms have been offered by a third party
buyer, the price as determined by a neutral third party appraiser
acceptable to both the AGD Affiliate and Buyer; or (iii) if a price
has not been determined pursuant to the preceding subsections (i) or
(ii), or the parties otherwise agree, a price mutually agreeable to
both Buyer and the AGD Affiliate. If Buyer elects not to acquire the
interests specified in the Notice, Summerton may sell such interests
within the 90 day period following the parties' determination of the
interest price, provided the sale of such interests shall only occur
at no less than the interest price as determined according to this
paragraph. Once an AGD affiliate has obtained the SS license and/or
the DPI license from AGD, Summerton's loss of control of AGD or AGD
affiliate will not terminate this license.
5. REPORTS. Section 4.3 of the TT Agreement is hereby amended to read in its
entirety as follows:
Within sixty (60) days after the end of each calendar quarter,
for so long as Products are covered by unexpired Patents, Buyer shalt
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 3.
6. RECORDS. Section 4.4 of the TT Agreement is hereby amended to read in its
entirety as follows:
Buyer shall maintain records concerning Sales and 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 once
in any given year. Seller shall bear all expenses associated with such
audits.
7. COMMENCEMENT OF PAYMENT OBLIGATIONS. Section 4.6 of the TT Agreement is
hereby amended to read in its entirety as follows:
The first two hundred million dollars ($200,000,000) in total
cumulative worldwide Sales of Therapeutic Products by Buyer and Buyer
Affiliates, collectively, are exempt from Purchase Price payments.
8. NEW SCHEDULES. Section 9.1 of the TT Agreement is hereby amended to read
in its entirety as follows:
Buyer and Seller shall execute an amended License and Option
Agreement shown in Schedule 9.1. In addition, the parties hereby enter
into an amended License for Small-Scale Products, attached hereto as
schedule 9.1.1 and an amended License for Diagnostic Products and
Improvements, attached hereto as Schedule 9.1.2.
9. SCHEDULE 9.1 DEFINITIONS. Schedule 9.1, Section 1.3 of the TT Agreement
is hereby amended to read in its entirety as follows:
"AGD Improvements" shall mean improvements developed by AGD after
the effective date of this Agreement but before January 1, 1998, and
which AGD has the right to sublicense to AVI.
10. SCHEDULE 9.1 AVI IMPROVEMENTS. Schedule 9.1, section 1.6 of the TT
Agreement is hereby amended to read in its entirety as follows:
"AVI Improvements" shall mean Improvements developed by AVI after
the effective date of this Agreement but before January 1, 1998, and
which AVI has the right to sublicense to AGD.
11. SCHEDULE 9.1 AGD IMPROVEMENTS. Schedule 9.1 of the original TT Agreement is
hereby amended to include a new Section 2.4 which reads in its entirety as
follows:
Improvements to the Technology made by AGD and its licensees
under the Research and Development License to AGD will be defined as
"AGD Improvements" which are to be made available to AVI under the
terms of Section 5 of this Schedule 9.1 of the TT Agreement.
12. SCHEDULE 9.1 CROSS LICENSES. Section 5 of Schedule 9.1 of the original TT
Agreement is amended as follows:
12.1 CHANGE IN TITLE. The title of Section 5 of Schedule 9.1 is hereby
amended to read in its entirety as follows:
5. LICENSE TO AVI AND CROSS LICENSES OF IMPROVEMENTS.
12.2 CHANGE IN NUMBERING OF SECTION 5.4. Section 5.4 of Schedule 9.1,
relating to the confidentiality of AGD improvements, is hereby renumbered 5.5
and is otherwise left intact.
12.3 NEW SECTION 5.4. A new Section 5.4 is hereby added to Schedule 9.1,
which reads in its entirety as follows:
5.4 The parties grant each other the following cross-licenses. AGD
agrees to grant AVI a royalty-free non-exclusive license to make, use,
sell, and sublicense any improvements made by AGD before January 1,
2000 relating to preparation of Morpholino subunits and/or assembly of
said subunits into Morpholino polymers. AVI agrees to grant to AGD a
royalty-free non-exclusive license to make, use, sell, and sublicense
any improvements made by AVI before January 1, 2000 relating to
preparation of Morpholino subunits and/or assembly of said subunits
into Morpholino polymers.
IN WITNESS WHEREOF, the parties hereby execute this 2000 Amendment to the
Technology Transfer Agreement and the 1997 Amendment thereto; effective as of
the later of the dates of signature by the representatives of AVI and AGD
below.
AVI BioPharma, Inc.
By: /s/ Xxxx X. Xxxxxxx
---------------------------------
Xxxx X. Xxxxxxx
Chief Operating Officer
Chief Financial Officer
Date:
ANTI-GENE DEVELOPMENT GROUP
By: /s/ Xxxxx X. Xxxxxxxxx
---------------------------------
Xxxxx X. Xxxxxxxxx, Ph.D.
Sole General Partner
Date: 9 March 2000
SCHEDULE 9.1.1
2000 AMENDMENT TO LICENSE FOR SMALL-SCALE PRODUCTS
1. SMALL-SCALE PRODUCTS LICENSE TO AGD
AVI hereby grants to AGD a license to Small-Scale Products (SS Products),
with the right to sublicense, to make, have made, use, and sell SS Products,
and to make, have made, and use subunits and other components in amounts not
to exceed that required for assembly and use of SS Products. This license
(the "SS Product license") is to be exclusive with respect to, and only with
respect to selling SS Products. AGD and AGD Affiliates agree to label all SS
Products with the phrase "Not for use in humans."
2. ROYALTY
This SS Products License shall be royalty free subsequent to December 31,
1999.
3. INFORMATION FOR MAKING AND USING SS PRODUCTS
Unless requested earlier by AGD, in December of 1997 AVI will convey to
AGD written "Information for Making and Using SS Products." This Information
for making and Using SS Products shall comprise the best ways known to AVI to
make and use SS Products as of the date of conveyance of said Information for
Making and Using SS Products. No other rights to transfer information
concerning any other AVI Improvements are implied or granted by this SS
Products License. If AGD shares information on AVI Improvements other than
"Information for Making SS Products," with a sublicensee for SS Products,
except where expressly allowed by a separate AVI license to AGD, that
sublicensee shall also be considered to be a Research and Development
licensee and any and all Improvements to the Technology made by that
sublicensee will be defined as AGD Improvements which are to be made
available to AVI under the terms of Section 5 of Schedule 9.1 of the TT
Agreement.
4. CONFIDENTIALITY OF INFORMATION
AGD may not disclose the Technology or any AVI Improvements described in
the Information for Making and Using SS Products that are not in the public
domain unless: (a) the recipient has entered into a written agreement
acceptable to AVI under which the recipient agrees to restrictions on
disclosure, use and transfer of the Technology and AVI Improvements, and (b)
AVI has consented in writing to the disclosure, use, and transfer, which
consent shall not be unreasonably withheld.
5. EXEMPTION
AVI's provision of Small-Scale Products to a for-profit entity as part of
a contract which includes testing and assessment of Products by said
for-profit entity, where said contract is for an amount not less than
$100,000, shall not be construed as infringing the "exclusive with respect to
selling SS Products" clause of this SS Products license to AGD. It is
understood that AVI is free to provide SS Products to any of its
collaborators at no charge (including, without limitation, arrangements such
as the 1995 option arrangements with Xxxxxx Laboratories). Further, it is
understood that AVI may sell SS Products to a given collaborator if those
sales are part of a contract with a value of not less than $100,000 for the
purchase of SS Products.
6. EFFECTIVE DATE
The effective date of this SS Products License shall be when both AVI and
AGD have signed the Amendment to which this is Schedule 9.1.1, except that
the exclusivity of the SS Product License granted to AGD under Section 1
above will only become effective at the time AGD or an AGD Affiliate
demonstrates a capability to prepare at least 10 different 20-mer Morpholino
polymers in a 2 week period and two such representative Morpholino polymers
exhibit on a per mass basis in a cell-free translation system at least 60% of
the efficacies of corresponding highly-purified Morpholino polymers prepared
by AVI.
7. TERMINATION OF PAYMENT OBLIGATIONS
AGD's obligation to make royalty payments to AVI for any given SS Product
shall end effective December 31, 1999.
8. TERMINATION OF SS PRODUCT LICENSE
Either party may terminate this SS Products License for any material
breach by the other party that remains uncured 90 days after that party
receives notice of the breach from the non-breaching party.
9. OBLIGATION TO EXPLOIT
This section 9, "Obligation to Exploit", is deleted.
10. DISCLAIMER OF WARRANTY
AVI makes no warranty whatsoever, express or implied, including without
limitation a warranty of merchantability of fitness, with respect to
Technology, AVI Improvements, or SS Products licensed to AGD pursuant to this
Amendment, which SS Products AGD takes "as is".
11. CHOICE OF LAW
The construction and performance of this SS Products License will be
governed by the laws of the state of Oregon (except for conflicts of law
provisions thereof).
12. EXPENSES
Each party to this SS Products License shall pay its own expenses
incident to the negotiation, execution, delivery and performance of this SS
Products License.
13. NOTICES
Any notice or other communication required or permitted under this
Agreement shall be in writing and shall be sent by certified mail, return
receipt requested, or by hand delivery:
If to AVI, to the following address:
AVI BioPharma, Inc.
Xxx XX Xxxxxxxx, Xxxxx 0000
Xxxxxxxx, Xxxxxx 00000
Attention: Xxxxx Xxxxxx
With a copy to:
AVI BioPharma, Inc.
Xxx XX Xxxxxxxx, Xxxxx 0000
Xxxxxxxx, Xxxxxx 00000
Attention: Xxxx X. Xxxxxxx
If to AGD, to the following address:
ANTI-GENE DEVELOPMENT GROUP
X.X. Xxx 0000
Xxxxxxxxx, Xxxxxx 00000
Attention: Xxxxx X. Xxxxxxxxx
With a copy to:
Xxxxx X. Xxxxxxxxx
General Partner of AGDG
0000 XX Xxxxxxx Xxxxx
Xxxxxxxxx, Xxxxxx 00000
Unless otherwise provided in this SS Products License, 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 U.S.
mail, postage prepaid, as registered or certified mail, return receipt
requested. The address 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 substituted address.
14. ATTORNEY FEES
If a suit or action is filed by either party to enforce the provisions of
this SS Products License, or otherwise with respect to the subject matter of
this SS Products License, 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 appellate
court, and if any appeal is taken from the decision of the trial court, as
affixed by the appellate court.
15. SUCCESSORS AND ASSIGNS
This SS Products License 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 SS Products License agreement without the
consent of the other party, which consent shall not unreasonably be withheld.
16. AMENDMENT
No supplement, modification or amendment of, or waiver with respect to,
this SS Products License shall be binding unless executed in writing. This SS
Products License agreement may be modified, amended, or terminated upon the
written agreement of both parties.
17. CONSENTS
Any consent required by this SS Products License shall be effective only
if given in a writing executed by the party giving the consent.
18. HEADINGS
The headings in this SS Products License are solely for convenience of
reference and shall not limit or otherwise affect the meaning of this SS
Products License.
19. SEVERABILITY
If any part of this SS Products License is found invalid or
unenforceable, it shall be enforced to the maximum extent by law, and other
parts of this SS Products License will remain in force.
20. ENTIRE LICENSE
This Amended SS Products License, whose terms comprise Schedule 9.1.1 of
the 2000 Amendment to the 0000 XX Agreement and 1997 Amendment thereto
between AGD and AVI, constitutes the entire license pertaining to SS Products
and supercedes all prior agreements and understandings of the parties in
connection therewith. No covenant, representation or condition not expressed
in this Amended SS Products License will affect or be effective to interpret,
change or restrict, the express provisions of this Amended SS Products
License.
SCHEDULE 9.1.2
2000 AMENDMENT TO LICENSE FOR DIAGNOSTIC PRODUCTS AND IMPROVEMENTS
1. AVI GRANT OF DIAGNOSTIC PRODUCTS AND IMPROVEMENTS LICENSE TO AGD
AVI grant to AGD a license (the "DPI license"), with right to sublicense
to the Diagnostic Products and AVI Improvements relating thereto, as defined
in the 0000 XX Agreement and the 1997 Amendment and the 2000 Amendment
thereto. The DPI license is to make, have made, use, and sell Diagnostic
Products and AVI Improvements relating thereto (DPI) including particularly
U.S. Patent Application 08/969,813, and to make, have made, and use subunits
and other components of DPI in amounts not to exceed that required for
assembly and use of DPI. AVI also grants to AGD the right to develop and
patent "undeveloped AVI ideas relating to diagnostics" (Undeveloped Ideas),
where Undeveloped Ideas are defined as AVI ideas relating to diagnostics
which have not been reduced to practice as of the effective date of this DPI
license. This DPI license is to be exclusive with respect to, and only with
respect to selling DPI Products.
2. LICENSE FEE
AGD or its affiliate shall pay AVI a one-time license fee in the amount
of $1,000,000 by or before March 31, 2000. There shall be no additional fees
or royalties.
3. INFORMATION FOR MAKING AND USING DIAGNOSTIC PRODUCTS AND AVI IMPROVEMENTS
RELATING THERETO (DPI INFORMATION)
Upon request by AGD, but not later than December 1997, AVI will convey to
AGD written DPI Information. This DPI Information shall comprise only the
specific information described in Exhibit A. No other rights to transfer
information concerning any other AVI Improvements are implied or granted by
this DPI license. If AGD shares information on AVI Improvements other than
"DPI Information," with a sublicensee for DPI, except where expressly allowed
by a separate AVI license to AGD, that sublicensee shall also be considered
to be a Research and Development licensee and any and all Improvements to the
Technology made by that sublicensee will be defined as AGD Improvements which
have to be made available to AVI under the terms of Section 5 of Schedule 9.1
of the TT Agreement.
4. EXEMPTION
AVI may make and use, but not sell DPI Products. AVI's provision of DPI
Products to another organization will not constitute a sale when said DPI
Product is used solely in conjunction with and support of preclinical testing
and clinical trials of AVI's Therapeutic Products, as defined in the TT
Agreement and the 1997 Amendment and 2000 Amendment thereto.
5. CONFIDENTIALITY OF DPI INFORMATION
AGD may not disclose the Technology or any AVI Improvements described in
the DPI Information that are not in the public domain except where expressly
allowed by a separate AVI license to AGD unless: (a) the recipient has
entered into a written agreement acceptable to AVI under which the recipient
agrees to restrictions on disclosure, use and transfer to the Technology and
AVI Improvements, and (b) AVI has consented in writing to the disclosure,
use, and transfer, which consent shall not be unreasonably withheld.
6. EFFECTIVE DATE
The effective date of this DPI license shall be the later of: the date
when both AVI and AGD have signed the 2000 Amendment to which this is
Schedule 9.1.2, or the date on which AGD or its affiliate pays the license
fee set forth in Section 2 of Schedule 9.1.2.
7. TERMINATION OF PAYMENT OBLIGATIONS
AGD's obligation to make royalty payments to AVI for any given DPI shall
end upon payment of the license fee set forth in Section 2 of the Schedule
9.1.2.
8. TERMINATION OF DPI LICENSE
Either party may terminate this DPI License for any material breach by
the other that remains uncured 90 days after that party receives notice of
the breach from the non-breaching party.
9. DISCLAIMER OF WARRANTY
AVI makes no warranty whatsoever, express or implied, including without
limitation a warranty of merchantability or fitness, with respect to
Technology, AVI Improvements, or DPI licensed to AGD pursuant to this
Amendment, which AVI Improvements or DPI AGD takes "as is".
10. CHOICE OF LAW
The construction and performance of this DPI license will be governed by
the laws of the state of Oregon (except for conflicts of law provisions
thereof).
11. EXPENSES
Each party to this DPI license shall pay its own expenses incident to the
negotiation, execution, delivery and performance of this DPI license.
12. NOTICES
Any notice or other communication required or permitted under this
Agreement shall be in writing and shalt be sent by certified mail, return
receipt requested, or by hand delivery:
If to AVI, to the following address:
AVI BioPharma, Inc.
Xxx XX Xxxxxxxx, Xxxxx 0000
Xxxxxxxx, Xxxxxx 00000
Attention: Xxxxx Xxxxxx
With a copy to:
AVI BioPharma, Inc.
Xxx XX Xxxxxxxx, Xxxxx 0000
Xxxxxxxx, Xxxxxx 00000
Attention: Xxxx X. Xxxxxxx
If to AGD, to the following address:
ANTI-GENE DEVELOPMENT GROUP
X.X. Xxx 0000
Xxxxxxxxx, Xxxxxx 00000
Attention: Xxxxx X. Xxxxxxxxx
With a copy to:
Xxxxx X. Xxxxxxxxx
General Partner of AGDG
0000 XX Xxxxxxx Xxxxx
Xxxxxxxxx, Xxxxxx 00000
Unless otherwise provided in this DPI license, 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 U.S.
mail,
postage prepaid, as registered or certified mail, return receipt requested.
The address 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 substituted address.
13. ATTORNEY FEES
If a suit or action is filed by either party to enforce the provisions of
this DPI license, or otherwise with respect to the subject matter of this DPI
license, 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.
14. SUCCESSORS & ASSIGNS
This DPI license 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 license agreement without the consent of the other
party, which consent shall not unreasonably be withheld.
15. AMENDMENT
No supplement, modification or amendment of, or waiver with respect to,
this DPI license shall be binding unless executed in writing. This DPI
license may be modified, amended, or terminated upon the written agreement of
both parties.
16. CONSENTS
Any consent required by this DPI license shall be effective only if given
in a writing executed by the party giving the consent.
17. HEADINGS
The headings in this DPI license are solely for convenience of reference
and shall not limit or otherwise affect the meaning of this DPI license.
18. SEVERABILITY
If any part of this DPI license if found invalid or unenforceable, it
shall be enforced to the maximum extent permitted by law, and other parts of
this DPI license will remain in force.
19. ENTIRE LICENSE
This amended DPI license, whose terms comprise Schedule 9.1.2 of the 2000
Amendment to the 1997 Amendment and the 0000 XX Agreement between AGD and
AVI, constitutes the entire license pertaining to DPI and supercedes all
prior agreements and understandings of the parties in connection therewith.
No covenant, representation or condition not expressed in this amended DPI
license will affect or be effective to interpret, change or restrict, the
express provisions of this amended DPI license.
EXHIBIT A
DPI Information
Below is a listing of specific notebooks which comprise the agreed upon DPI
Information. This notebook information constitutes the entire DPI Information.
Notebook Designation Notebook Title Dates of Entries
-------------------- -------------- ----------------
X. Xxxxxxxxx Notebook Diagnostics 1 Jan. 20, 1993 - May 1, 1993
X. Xxxxxxxxx Notebook Diagnostics 2 May 1, 1983 - July 16, 1994
AVI 9 Diagnostics 3 July 17, 1994 - Dec. 23, 1994
AVI 10 Diagnostics 4 Dec. 24, 1994 - Jan. 27, 1995
AVI 29 Diagnostics 5 Jan. 30, 1985 - Mar. 4, 1995
AVI 32 Diagnostics 6 Mar. 4, 1995 - Apr. 4, 1995
AVI 33 Diagnostics 7 Apr. 4, 1995 - Apr. 26, 1995
AVI 38 Diagnostics 8 Apr. 26, 1995 - Oct. 31, 1995
AVI 57 Diagnostics 9 Oct. 31, 1995 - Dec. 24, 1995
AVI BioPharma, Inc. (AVI) hereby provides its consent to ANTI-GENE
DEVELOPMENT GROUP (AGD) to allow transfer to and use by sublicensees of the
AGD of "DPI Information", where "DPI Information" is defined in the 2000
Amendment to the 1997 Amendment and the 1993 Technology Transfer Agreement
between AGD and AVI. In return for this AVI consent to allow transfer to and
use of said information by a sublicensee of AGD, said sublicensee agrees not
to disclose to any other entity any of said information, excepting that which
is already in the public domain, and to abide by all terms necessary for its
licensor, AGD, to fulfill AGD's license obligations to AVI under the terms in
Schedules 9.1.1 and 9.1.2 of the 2000 Amendment and the 1997 Amendment to the
1993 Technology Transfer Agreement between AGD and AVI.
By: /s/ Xxxx X. Xxxxxxx
----------------------------------------
Xxxx X. Xxxxxxx
Chief Operating Officer
Chief Financial Officer
Date:
By: /s/ Xxxxx Xxxxxxxxx
----------------------------------------
Xxxxx X. Xxxxxxxxx, Ph.D.
Sole General Partner
ANTI-GENE DEVELOPMENT GROUP
Date: 9 March 2000
