EX-2.1 2 d528948dex21.htm EX-2.1 DISTRIBUTION AGREEMENT FOR EMRICASAN ASSETS by and between CONATUS PHARMACEUTICALS INC. and IDUN PHARMACEUTICALS, INC. January 10, 2013 DISTRIBUTION AGREEMENT
Exhibit 2.1
FOR EMRICASAN ASSETS
by and between
CONATUS PHARMACEUTICALS INC.
and
IDUN PHARMACEUTICALS, INC.
January 10, 2013
This Distribution Agreement (“Agreement”), dated as of January 10, 2013 (“Effective Date”), is by and between Conatus Pharmaceuticals Inc., a Delaware corporation (“Conatus”), and Idun Pharmaceuticals, Inc., a Delaware corporation (“Idun”).
WHEREAS, Idun owns certain assets related to the conduct of the Business (as defined below); and
ARTICLE I.
“Books and Records” shall mean all books and records of Idun relating primarily to the Business, including all non-clinical and clinical data of the Business.
“Business” shall mean the business of researching, developing, conducting clinical studies, seeking regulatory approval for and commercializing Emricasan.
“Claim” shall mean any charge, allegation, notice, civil, criminal or administrative claim, demand, complaint, cause of action, suit, Proceeding, arbitration, hearing or investigation.
“Code” shall mean the Internal Revenue Code of 1986, as amended, and the rules and regulations thereunder.
“Contracts” shall mean all agreements, contracts, leases, licenses, instruments, obligations and commitments to which Idun is a party or is bound relating primarily to the operation of the Business, including, but not limited to, those listed on Schedule 1.1 hereto.
“Distributed Assets” shall mean all of the assets, tangible and intangible, of Idun, wherever located, that are primarily used or primarily held for use by Idun in the conduct of the Business as of the Effective Date, including without limitation the following assets, which are listed on Schedule 1.1 hereto:
(a) all Contracts;
(b) all Equipment;
(c) all Inventory;
(d) all Books and Records;
(e) all Intellectual Property;
(f) all Goodwill; and
(g) all claims of Idun against third parties relating to the Distributed Assets, whether xxxxxx or inchoate, known or unknown, contingent or noncontingent;
provided, that in no event shall the Distributed Assets include the Excluded Assets.
“Downstream License Agreements” shall mean the following licenses granted by Idun to the named company: (a) Xxxxxx Laboratories, dated December 23, 1998, as amended; (b) Biogen-IDEC (formerly Biogen, Inc.), dated August 1, 2003; and (c) Becton, Xxxxxxxxx and Company, dated January 31, 2001, as amended.
“Equipment” shall mean all machinery, spare parts, and manufacturing and test equipment of Idun that are primarily used or primarily held for use in connection with the operation of the Business.
“Emricasan” shall mean the caspase inhibitor IDN-6556 (PF3491390) which is currently being developed under the name emricasan and all of its analogs, metabolites, prodrugs, salts, hydrates, solvates, optical isomers, polymorphs and formulations thereof.
“Excluded Assets” shall mean all assets of Idun of whatsoever nature not listed on Schedule 1.1 hereto and not to be acquired by Conatus hereunder, including without limitation:
(a) all cash (including xxxxx cash), cash equivalents, bank accounts, deposits and similar accounts (whether maintained at a bank, savings and loan or other financial institution), marketable securities or any other cash deposits or marketable securities relating to the Business;
(b) all claims for refunds of taxes and other governmental charges or assessments paid by Idun and arising from or pertaining to periods, activities, operations or events relating to the Business occurring prior to the Effective Date;
(c) all of the Upstream License Agreements; and
(d) all of the Downstream License Agreements.
“Excluded Liabilities” shall mean all Liabilities of Idun other than the Assumed Liabilities, including without limitation, any and all Liabilities under the Upstream License Agreements and the Downstream License Agreements and any and all Liabilities of Idun for taxes other than those taxes that are reported on a consolidated or combined basis with Conatus.
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“Goodwill” shall mean the goodwill of the Business, including, without limitation, the exclusive right of Conatus to (i) represent itself as carrying on the Business in continuation of and in succession to Idun, and (ii) use any words indicating that the Business is so carried on, including, without limitation, all of Idun’s right, title and interest in and to the name “Emricasan” or any variation of it.
“Intellectual Property” shall mean any Intellectual Property Rights owned by Idun prior to the Effective Date that are primarily used or primarily held for use in connection with the conduct of the Business, including, but not limited to, those listed on Schedule 1.1 hereto.
“Intellectual Property Rights” shall mean any or all of the following and all rights in, arising out of, or associated with: (a) all United States and foreign patents and utility models and applications therefor, including provisional applications and all reissues, divisions, re-examinations, renewals, extensions, continuations and continuations-in-part thereof; (b) all rights in inventions (whether patentable or not), invention disclosures, improvements, trade secrets, proprietary information, know-how, technology, non-clinical, clinical and technical data; (c) all copyrightable material, copyright registrations and applications therefor and all other rights corresponding thereto throughout the world including moral rights; (d) all trademarks, service marks, trade dress, logos, trade names, and corporate names, together with all translations, adaptations, derivations, and combinations thereof and including all Goodwill associated therewith, and all applications, registrations, and renewals in connection therewith and all other rights corresponding thereto throughout the world including common law rights; and (e) all websites and domain names.
“Inventory” shall mean all inventory, raw materials, work in process, semi-finished goods and finished goods of Idun that are primarily used or primarily held for use in connection with the operation of the Business.
“Liabilities” shall mean any direct or indirect liability, indebtedness, obligation, commitment, expense, claim, guaranty or endorsement of or by any person of any type, whether accrued, absolute, contingent, matured, unmatured or other.
“Proceeding” shall mean any action, arbitration, audit, hearing, investigation, litigation or suit (whether civil, criminal, administrative, investigative or informal) commenced, brought, conducted or heard by or before, or otherwise involving any governmental entity or arbitrator.
“Representative” shall mean any officer, director, partner, manager, member, principal, attorney, agent, employee or other representative.
“Third Party” shall mean any person or entity other than (a) Conatus or Idun or (b) an Affiliate or Representative of Conatus or Idun.
“Upstream License Agreements” shall mean the following license agreements granted by the named institution to Idun: (a) Wistar Institute, dated July 5, 1994, as amended;
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(b) Arch Development corporation/The Regents of the University of Michigan dated March 28, 1994, as amended; (c) Xxxxxx Xxxxxxxxx University, dated July 25, 1995, as amended; (d) Xxxxxx Xxxxxxxxx University, dated November 13, 1997, as amended; (e) Dartmouth University, dated April 21, 1994, as amended; (f) Emory University, dated June 15th, 1998; (g) Washington University, dated February 21, 1994; (h) Washington University, dated February 21, 1994; and (i) Xxxxxxx Institute (formerly La Jolla Cancer Research Foundation), dated June 15, 1994, as amended.
Term | Section | |
Assumed Liabilities | 2.2 | |
Assumption of Liabilities | 3.2(a) | |
Conatus Indemnitee | 5.1(a) | |
Idun Indemnitee | 5.1(b) | |
Indemnitee | 5.1(c) | |
Indemnifying Party | 5.1(c) | |
IP Assignment Agreement | 3.1(a) | |
Litigation Costs | 5.1(a) | |
Losses | 5.1(a) | |
Transition Services Agreement | 3.1(b) |
ARTICLE II.
DISTRIBUTION OF ASSETS; ASSUMPTION OF LIABILITIES
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ARTICLE III.
(a) an IP Assignment Agreement in the form of Exhibit A attached hereto, conveying all of Idun’s Intellectual Property included in the Distributed Assets (“IP Assignment Agreement”); and
(b) a transition services agreement in the form of Exhibit C attached hereto for Conatus’ provision of managerial, administrative and other specified services to Idun (“Transition Services Agreement”).
(a) an assumption of liabilities in the form of Exhibit B attached hereto, evidencing Conatus’ assumption of the Assumed Liabilities (the “Assumption of Liabilities”); and
(b) the Transition Services Agreement.
ARTICLE IV.
REPRESENTATIONS AND WARRANTIES
(a) Idun is a corporation duly incorporated, validly existing and in good standing under the laws of the State of Delaware; and
(b) Idun has the power and authority to enter into this Agreement and each agreement, document and instrument to be executed and delivered by Idun pursuant to this Agreement and to carry out the transactions contemplated hereby or thereby. The execution, delivery and performance by Idun of this Agreement and each such other agreement, document and instrument to which Idun is a party have been duly authorized by all necessary action of Idun, and no other action on the part of Idun is required in connection therewith. This Agreement and each agreement, document and instrument executed and delivered by Idun pursuant to this Agreement constitute, or when executed and delivered will constitute, valid and binding obligations of Idun enforceable against Idun in accordance with their terms.
(a) Conatus is a corporation duly incorporated, validly existing and in good standing under the laws of the State of Delaware; and
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(b) Conatus has the power and authority to enter into this Agreement and each agreement, document and instrument to be executed and delivered by Conatus pursuant to this Agreement and to carry out the transactions contemplated hereby or thereby. The execution, delivery and performance by Conatus of this Agreement and each such other agreement, document and instrument to which Conatus is a party have been duly authorized by all necessary action of Conatus, and no other action on the part of Conatus is required in connection therewith. This Agreement and each agreement, document and instrument executed and delivered by Conatus pursuant to this Agreement constitute, or when executed and delivered will constitute, valid and binding obligations of Conatus enforceable against Conatus in accordance with their terms.
ARTICLE V.
INDEMNIFICATION; LIMITATION OF LIABILITY
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Indemnitee by or on behalf of such Third Party, and (ii) subject to Section 5.1(c), any Litigation Costs incurred by an Idun Indemnitee while investigating or conducting the defense of such Third Party Claim, in any such case (i) and (ii), solely to the extent such Claim is directly based on or directly arises out of (a) the material breach by Conatus of any representation, warranty or covenant contained in this Agreement; or (b) the Assumed Liabilities; provided, that such indemnification right shall not apply to any Losses or Litigation Costs for which Idun is obligated to indemnify Conatus under Section 5.1(a).
ARTICLE VI.
RIGHTS AND OBLIGATIONS SUBSEQUENT TO THE EFFECTIVE DATE
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instruments or conveyances of any kind that may be reasonably necessary or advisable to carry out any of the transactions contemplated hereunder, and (c) cooperate with each other in connection with the foregoing.
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ending on or before the Effective Date and shall not destroy or otherwise dispose of any such records without first providing the other party with a reasonable opportunity to review and copy the same. Notwithstanding anything to the contrary herein, Conatus shall be responsible for any documentary and transfer taxes and any sales, use or other taxes imposed by reason of the transfer of the Distributed Assets provided hereunder and any deficiency, interest or penalty asserted with respect thereto, shall file in a timely manner all tax returns relating to such taxes and shall hold Idun harmless from same.
ARTICLE VII.
7.1 Governing Law. This Agreement (including any claim or controversy arising out of or relating to this Agreement) shall be governed by the law of the State of California without regard to conflict of law principles that would result in the application of any law other than the law of the State of California.
To Idun:
Idun Pharmaceuticals, Inc.
0000 Xxxxxxxxx Xxxxx, Xxxxx 000
Xxx Xxxxx, XX 00000
To Conatus:
Conatus Pharmaceuticals Inc.
0000 Xxxxxxxxx Xxxxx, Xxxxx 000
Xxx Xxxxx, XX 00000
Any notice given hereunder may be given on behalf of any party by its counsel or other authorized Representatives.
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***Signature Page Follows***
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CONATUS PHARMACEUTICALS INC. | IDUN PHARMACEUTICALS, INC. | |||||||
By: | /s/ Xxxxxx X. Xxxxx, Ph.D. | By: | /s/ Xxxxxx X. Xxxxx, Ph.D. | |||||
Name: | Xxxxxx X. Xxxxx, Ph.D. | Name: | Xxxxxx X. Xxxxx, Ph.D. | |||||
Title: | Chief Executive Officer | Title: | Chief Executive Officer |
TABLE OF CONTENTS
Page | ||||||
ARTICLE I. DEFINITIONS | 1 | |||||
1.1 | Defined Terms | 1 | ||||
1.2 | Other Defined Terms | 4 | ||||
ARTICLE II. DISTRIBUTION OF ASSETS; ASSUMPTION OF LIABILITIES | 4 | |||||
2.1 | Distribution of Assets | 4 | ||||
2.2 | Assumption of Liabilities | 4 | ||||
ARTICLE III. DELIVERABLES | 5 | |||||
3.1 | Idun Deliverables | 5 | ||||
3.2 | Conatus Deliverables | 5 | ||||
3.3 | Form of Instruments | 5 | ||||
ARTICLE IV. REPRESENTATIONS AND WARRANTIES | 5 | |||||
4.1 | Idun Representations and Warranties | 5 | ||||
4.2 | Conatus Representations and Warranties | 5 | ||||
4.3 | No Implied Warranties | 6 | ||||
6 | ||||||
5.1 | Indemnity | 6 | ||||
5.2 | Limitation of Liability | 7 | ||||
ARTICLE VI. RIGHTS AND OBLIGATIONS SUBSEQUENT TO THE EFFECTIVE DATE | 7 | |||||
6.1 | Further Assurances | 7 | ||||
6.2 | Consents to Assignment | 8 | ||||
6.3 | Sublicense under Xxxxxx Xxxxxxxxx Agreement | 8 | ||||
6.4 | Books and Records | 8 | ||||
6.5 | Tax Matters | 8 | ||||
ARTICLE VII. MISCELLANEOUS | 9 | |||||
7.1 | Governing Law | 9 | ||||
7.2 | Notices | 9 | ||||
7.3 | No Third-Party Beneficiaries | 9 | ||||
7.4 | Construction | 9 | ||||
7.5 | Severability | 10 | ||||
7.6 | Assignment | 10 | ||||
7.7 | Amendments | 10 | ||||
7.8 | Entire Agreement | 10 | ||||
7.9 | Execution in Counterparts | 10 |
SCHEDULE LIST | ||
Schedule 1.1: | Distributed Assets | |
EXHIBIT LIST | ||
Exhibit A: | Form of IP Assignment Agreement | |
Exhibit B: | Form of Assumption of Liabilities | |
Exhibit C: | Form of Transition Services Agreement |
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Schedule 1.1
Distributed Assets
1. | Patents. |
Country name | Type name | Patent / Design number | Current renewal date | Proprietor | Client’s reference | Description | Expiry date | |||||||
Mexico | Patent | 286788 | 3-Dec-16 | Idun Pharmaceuticals, Inc | 33272 | IDN6556 polymorphic forms | 3-Dec-27 | |||||||
Singapore | Granted New Law Patent | 200903593.2 | 3-Dec-13 | Idun Pharmaceuticals, Inc | 33272 | IDN6556 polymorphic forms | 3-Dec-27 | |||||||
U.S.A. | Small Entity Extended Patent | 7692038 | 6-Oct-13 | Idun Pharmaceuticals, Inc | 33272 | IDN6556 polymorphic forms | 10-Jul-28 | |||||||
Australia | Patent | 2007330478 | 3-Dec-13 | Idun Pharmaceuticals, Inc. | 33272 | IDN6556 polymorphic forms | 3-Dec-27 | |||||||
Canada | Small Entity Granted Patent | 2669849 | 3-Dec-13 | Idun Pharmaceuticals, Inc. | 33272 | IDN6556 polymorphic forms | 3-Dec-27 | |||||||
South Africa | Patent | 2009/04693 | 3-Dec-13 | Idun Pharmaceuticals, Inc. | 33272 | IDN6556 polymorphic forms | 0-Xxx-00 | |||||||
Xxxxx Xxxxx | New Law Patent | 1125932 | 5-Mar-15 | Idun Pharmaceuticals, Inc. | 33272 | IDN6556 polymorphic forms | 3-Dec-27 | |||||||
Canada | Large Entity Granted Patent | 2265853 | 12-Sep-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 00-Xxx-00 | |||||||
Xxxxxxx | European Patent | 69734718.4 | 12-Sep-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
Europe | Patent Application | 97943323.2 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 00-Xxx-00 | ||||||||
Xxxxx | European Patent | 97943323.2 | 12-Sep-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 00-Xxx-00 | |||||||
Xxxxxx | European Patent | 929311 | 12-Sep-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
Great Britain | European Patent | 929311 | 12-Sep-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
Ireland | European Patent | 929311 | 12-Sep-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 00-Xxx-00 | |||||||
Xxxxx | European Patent | 929311 | 12-Sep-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 00-Xxx-00 | |||||||
Xxxxx | Granted New Law Patent | 3830976 | 21-Jul-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 |
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Country name | Type name | Patent / Design number | Current renewal date | Proprietor | Client’s reference | Description | Expiry date | |||||||
Japan | Patent-exam.req.on/after01Apr2004 | 4166252 | 8-Aug-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
U.S.A. | Small Entity Patent | 6200969 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | ||||||||
U.S.A. | Small Entity Patent | 6528506 | 4-Sep-14 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
U.S.A. | Small Entity Patent | 6531467 | 11-Sep-14 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
U.S.A. | Small Entity Patent | 6610683 | 26-Feb-15 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
U.S.A. | Small Entity Patent | 6693096 | 17-Aug-15 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
U.S.A. | Small Entity Patent | 5939460 | Idun Pharmaceuticals, Inc | 426 | NADPH (composition) | 8-Jul-16 | ||||||||
U.S.A. | Small Entity Patent | 5990137 | Idun Pharmaceuticals, Inc | 426 | NADPH (method) | 8-Jul-16 | ||||||||
Europe | Patent Application | 97942441.3 | Idun Pharmaceuticals, Inc | 427 | Indole dipeptide csp Inhbitors | 12-Sep-17 | ||||||||
U.S.A. | Small Entity Patent | 5869519 | Idun Pharmaceuticals, Inc | 427 | Indole dipeptide csp Inhbitors | 16-Dec-16 | ||||||||
U.S.A. | Small Entity Patent | 5877197 | Idun Pharmaceuticals, Inc | 427 | Indole dipeptide csp Inhbitors | 16-Dec-16 | ||||||||
U.S.A. | Small Entity Patent | 6489353 | 3-Jun-14 | Idun Pharmaceuticals, Inc | 427 | Indole dipeptide csp Inhbitors | 16-Dec-16 | |||||||
Australia | Patent | 724639 | 18-Sep-13 | Idun Pharmaceuticals, Inc | 428 | BAD polypeptide | 18-Sep-17 | |||||||
Canada | Large Entity Granted Patent | 2265912 | 18-Sep-13 | Idun Pharmaceuticals, Inc | 000 | XXX xxxxxxxxxxx | 00-Xxx-00 | |||||||
X.X.X. | Small Entity Patent | 5965703 | Idun Pharmaceuticals, Inc | 000 | XXX xxxxxxxxxxx | 00-Xxx-00 | ||||||||
X.X.X. | Small Entity Patent | 6504022 | 7-Jul-14 | Idun Pharmaceuticals, Inc | 000 | XXX xxxxxxxxxxx | 00-Xxx-00 | |||||||
X.X.X. | Small Entity Patent | 6824991 | 30-May-16 | Idun Pharmaceuticals, Inc | 428 | BAD polypeptide | 20-Sep-16 | |||||||
Australia | Patent | 738381 | 5-Jun-13 | Idun Pharmaceuticals, Inc | 430 | Microplate screen | 5-Jun-18 | |||||||
U.S.A. | Small Entity Patent | 6270980 | 7-Feb-13 | Idun Pharmaceuticals, Inc | 430 | Microplate screen | 5-Jun-17 | |||||||
U.S.A. | Small Entity Patent | 6518032 | 11-Aug-14 | Idun Pharmaceuticals, Inc | 430 | Microplate screen | 5-Jun-17 | |||||||
Austria | European Patent - New Law | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Belgium | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Canada | Large Entity Granted Patent | 2336474 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 |
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Country name | Type name | Patent / Design number | Current renewal date | Proprietor | Client’s reference | Description | Expiry date | |||||||
Switzerland | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 0-Xxx-00 | |||||||
Xxxxx | Granted Patent | 99810019.6 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Germany | European Patent | 69934405 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Germany | European Patent | 69941440.7 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Denmark | European Patent | 1754475 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Europe | Patent Application | 6125650.9 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | ||||||||
Europe | Patent Application | 99932211.8 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | ||||||||
Spain | European Patent | 6125650.9 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Spain | European Patent | 99932211.8 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Finland | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Finland | European Patent | 1754475 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 0-Xxx-00 | |||||||
Xxxxxx | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 0-Xxx-00 | |||||||
Xxxxxx | European Patent | 1754475 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Great Britain | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Great Britain | European Patent | 1754475 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Greece | European Patent | 3060632 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Hong Kong | Granted New Law Patent | 1036616 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Ireland | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Ireland | European Patent | 1754475 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 |
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Country name | Type name | Patent / Design number | Current renewal date | Proprietor | Client’s reference | Description | Expiry date | |||||||
Israel | Patent | 140554 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Italy | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Italy | European Patent | 1754475 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 0-Xxx-00 | |||||||
Xxxxx | Patent | 251878 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Japan | Patent-exam.req.on/after01Apr2004 | 3815968 | 16-Jun-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 0-Xxx-00 | |||||||
Xxxxx Xxxxx | New Law Patent | 804432 | 12-Feb-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 0-Xxx-00 | |||||||
Xxxxxxxxxx | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 0-Xxx-00 | |||||||
Xxxxxx | Patent | 254407 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Netherlands | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Netherlands | European Patent | 1754475 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Portugal | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Sweden | European Patent | 6125650.9 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Singapore | Granted New Law Patent | 200007544 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
U.S.A. | Small Entity Patent | 6197750 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 22-Oct-18 | ||||||||
U.S.A. | Small Entity Patent | 6544951 | 8-Oct-14 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 22-Oct-18 | |||||||
U.S.A. | Small Entity Patent | 7053056 | 30-Nov-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 22-Oct-18 | |||||||
U.S.A. | Small Entity Patent | 7183260 | 27-Aug-14 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 22-Oct-18 | |||||||
South Africa | PCT Patent | 2001/00023 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Australia | Patent | 752339 | 1-Jul-13 | Idun Pharmaceuticals, Inc. | 442 | IDN6556 and related compounds composition | 1-Jul-19 |
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Country name | Type name | Patent / Design number | Current renewal date | Proprietor | Client’s reference | Description | Expiry date | |||||||
Denmark | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc. | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Sweden | European Patent | 99932211.8 | 1-Jul-13 | Idun Pharmaceuticals, Inc. | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
U.S.A. | Small Entity Patent | 6391575 | 21-Nov-13 | Idun Pharmaceuticals, Inc | 443 | method of id casp inhib | 5-Mar-19 | |||||||
USA | Large Entity Patent | 6790989 | 14-Sep-15 | Idun Pharmaceuticals, Inc | 457 | IDN6556 sulfonamide composition | Feb-21 (ADD to CPA) | |||||||
U.S.A. | Small Entity Patent | 6762045 | 13-Jan-16 | Idun Pharmaceuticals, Inc | 468 | membrane csp activity | 20-Nov-20 |
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2. | Trademarks. |
Emricasan
3. | Copyrights. |
None.
(b) Contracts.
None.
(c) Equipment.
None.
None.
(f) Claims Related to the Distributed Assets. All claims of Idun against third parties relating to the Distributed Assets, whether xxxxxx or inchoate, known or unknown, contingent or noncontingent.
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EXHIBIT A
IP ASSIGNMENT AGREEMENT
This IP Assignment Agreement (the “Assignment”), dated as of January 10, 2013, is by and between Idun Pharmaceuticals, Inc., a Delaware corporation (“Idun”), and Conatus Pharmaceuticals Inc., a Delaware corporation (“Conatus”).
WHEREAS, Idun and Conatus have entered into that certain Distribution Agreement, dated as of January 10, 2013 (the “Agreement”); and
This Assignment is subject in all respects to the terms and conditions of the Agreement and is intended only to document the assignment of the Intellectual Property, including the intellectual property rights set forth on Schedule A and the Goodwill related thereto. Nothing contained in this Assignment shall be deemed to supersede any of the obligations, agreements, representations, covenants or warranties of Idun and Conatus contained in the Agreement.
This Assignment shall be construed and interpreted according to the laws of the State of California, applicable to contracts to be wholly performed within the State of California.
This Assignment may be executed in one or more counterparts, and by the different parties hereto in separate counterparts, each of which when executed shall be deemed to be an original, but all of which taken together shall constitute one and the same agreement. Delivery of an executed counterpart of a signature page to this Assignment by facsimile or e-mail shall be effective as delivery of a manually executed counterpart of this Assignment.
i
CONATUS PHARMACEUTICALS INC. | IDUN PHARMACEUTICALS, INC. | |||||||
By: |
| By: |
| |||||
Name: | Xxxxxx X. Xxxxx, Ph.D. | Name: | Xxxxxx X. Xxxxx, Ph.D. | |||||
Title: | Chief Executive Officer | Title: | Chief Executive Officer |
ii
SCHEDULE A
TO IP ASSIGNMENT AGREEMENT
1. | Patents. |
Country name | Type name | Patent / Design number | Current renewal date | Proprietor | Client’s reference | Description | Expiry date | |||||||
Mexico | Patent | 286788 | 3-Dec-16 | Idun Pharmaceuticals, Inc | 33272 | IDN6556 polymorphic forms | 3-Dec-27 | |||||||
Singapore | Granted New Law Patent | 200903593.2 | 3-Dec-13 | Idun Pharmaceuticals, Inc | 33272 | IDN6556 polymorphic forms | 3-Dec-27 | |||||||
10U.S.A. | Small Entity Extended Patent | 7692038 | 6-Oct-13 | Idun Pharmaceuticals, Inc | 33272 | IDN6556 polymorphic forms | 10-Jul-28 | |||||||
Australia | Patent | 2007330478 | 3-Dec-13 | Idun Pharmaceuticals, Inc. | 33272 | IDN6556 polymorphic forms | 3-Dec-27 | |||||||
Canada | Small Entity Granted Patent | 2669849 | 3-Dec-13 | Idun Pharmaceuticals, Inc. | 33272 | IDN6556 polymorphic forms | 3-Dec-27 | |||||||
South Africa | Patent | 2009/04693 | 3-Dec-13 | Idun Pharmaceuticals, Inc. | 33272 | IDN6556 polymorphic forms | 0-Xxx-00 | |||||||
Xxxxx Xxxxx | New Law Patent | 1125932 | 5-Mar-15 | Idun Pharmaceuticals, Inc. | 33272 | IDN6556 polymorphic forms | 3-Dec-27 | |||||||
Canada | Large Entity Granted Patent | 2265853 | 12-Sep-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 00-Xxx-00 | |||||||
Xxxxxxx | European Patent | 69734718.4 | 12-Sep-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
Europe | Patent Application | 97943323.2 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 00-Xxx-00 | ||||||||
Xxxxx | European Patent | 97943323.2 | 12-Sep-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 00-Xxx-00 | |||||||
Xxxxxx | European Patent | 929311 | 12-Sep-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
Great Britain | European Patent | 929311 | 12-Sep-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
Ireland | European Patent | 929311 | 12-Sep-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 00-Xxx-00 | |||||||
Xxxxx | European Patent | 929311 | 12-Sep-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 00-Xxx-00 | |||||||
Xxxxx | Granted New Law Patent | 3830976 | 21-Jul-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 00-Xxx-00 | |||||||
Xxxxx | Patent-exam.req.on/after01Apr2004 | 4166252 | 8-Aug-13 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
U.S.A. | Small Entity Patent | 6200969 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 |
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Country name | Type name | Patent / Design number | Current renewal date | Proprietor | Client’s reference | Description | Expiry date | |||||||
U.S.A. | Small Entity Patent | 6528506 | 4-Sep-14 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
U.S.A. | Small Entity Patent | 6531467 | 11-Sep-14 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
U.S.A. | Small Entity Patent | 6610683 | 26-Feb-15 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
U.S.A. | Small Entity Patent | 6693096 | 17-Aug-15 | Idun Pharmaceuticals, Inc | 425 | Methods of treating inflammation, cell survival, infection | 12-Sep-17 | |||||||
U.S.A. | Small Entity Patent | 5939460 | Idun Pharmaceuticals, Inc | 426 | NADPH (composition) | 8-Jul-16 | ||||||||
U.S.A. | Small Entity Patent | 5990137 | Idun Pharmaceuticals, Inc | 426 | NADPH (method) | 8-Jul-16 | ||||||||
Europe | Patent Application | 97942441.3 | Idun Pharmaceuticals, Inc | 427 | Indole dipeptide csp Inhbitors | 12-Sep-17 | ||||||||
U.S.A. | Small Entity Patent | 5869519 | Idun Pharmaceuticals, Inc | 427 | Indole dipeptide csp Inhbitors | 16-Dec-16 | ||||||||
U.S.A. | Small Entity Patent | 5877197 | Idun Pharmaceuticals, Inc | 427 | Indole dipeptide csp Inhbitors | 16-Dec-16 | ||||||||
U.S.A. | Small Entity Patent | 6489353 | 3-Jun-14 | Idun Pharmaceuticals, Inc | 427 | Indole dipeptide csp Inhbitors | 16-Dec-16 | |||||||
Australia | Patent | 724639 | 18-Sep-13 | Idun Pharmaceuticals, Inc | 428 | BAD polypeptide | 18-Sep-17 | |||||||
Canada | Large Entity Granted Patent | 2265912 | 18-Sep-13 | Idun Pharmaceuticals, Inc | 000 | XXX xxxxxxxxxxx | 00-Xxx-00 | |||||||
X.X.X. | Small Entity Patent | 5965703 | Idun Pharmaceuticals, Inc | 000 | XXX xxxxxxxxxxx | 00-Xxx-00 | ||||||||
X.X.X. | Small Entity Patent | 6504022 | 7-Jul-14 | Idun Pharmaceuticals, Inc | 000 | XXX xxxxxxxxxxx | 00-Xxx-00 | |||||||
X.X.X. | Small Entity Patent | 6824991 | 30-May-16 | Idun Pharmaceuticals, Inc | 428 | BAD polypeptide | 20-Sep-16 | |||||||
Australia | Patent | 738381 | 5-Jun-13 | Idun Pharmaceuticals, Inc | 430 | Microplate screen | 5-Jun-18 | |||||||
U.S.A. | Small Entity Patent | 6270980 | 7-Feb-13 | Idun Pharmaceuticals, Inc | 430 | Microplate screen | 5-Jun-17 | |||||||
U.S.A. | Small Entity Patent | 6518032 | 11-Aug-14 | Idun Pharmaceuticals, Inc | 430 | Microplate screen | 5-Jun-17 | |||||||
Austria | European Patent — New Law | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Belgium | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Canada | Large Entity Granted Patent | 2336474 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Switzerland | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 0-Xxx-00 | |||||||
Xxxxx | Granted Patent | 99810019.6 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 |
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Country name | Type name | Patent / Design number | Current renewal date | Proprietor | Client’s reference | Description | Expiry date | |||||||
Germany | European Patent | 69934405 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Germany | European Patent | 69941440.7 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Denmark | European Patent | 1754475 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Europe | Patent Application | 6125650.9 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | ||||||||
Europe | Patent Application | 99932211.8 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | ||||||||
Spain | European Patent | 6125650.9 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Spain | European Patent | 99932211.8 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Finland | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Finland | European Patent | 1754475 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 0-Xxx-00 | |||||||
Xxxxxx | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 0-Xxx-00 | |||||||
Xxxxxx | European Patent | 1754475 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Great Britain | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Great Britain | European Patent | 1754475 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Greece | European Patent | 3060632 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Hong Kong | Granted New Law Patent | 1036616 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Ireland | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Ireland | European Patent | 1754475 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 0-Xxx-00 | |||||||
Xxxxxx | Patent | 140554 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Italy | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Italy | European Patent | 1754475 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 |
iii
Country name | Type name | Patent / Design number | Current renewal date | Proprietor | Client’s reference | Description | Expiry date | |||||||
India | Patent | 251878 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Japan | Patent-exam.req.on/after01Apr2004 | 3815968 | 16-Jun-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 0-Xxx-00 | |||||||
Xxxxx Xxxxx | New Law Patent | 804432 | 12-Feb-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 0-Xxx-00 | |||||||
Xxxxxxxxxx | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 0-Xxx-00 | |||||||
Xxxxxx | Patent | 254407 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Netherlands | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Netherlands | European Patent | 1754475 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Portugal | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Sweden | European Patent | 6125650.9 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Singapore | Granted New Law Patent | 200007544 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
U.S.A. | Small Entity Patent | 6197750 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 22-Oct-18 | ||||||||
U.S.A. | Small Entity Patent | 6544951 | 8-Oct-14 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 22-Oct-18 | |||||||
U.S.A. | Small Entity Patent | 7053056 | 30-Nov-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 22-Oct-18 | |||||||
U.S.A. | Small Entity Patent | 7183260 | 27-Aug-14 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 22-Oct-18 | |||||||
South Africa | PCT Patent | 2001/00023 | 1-Jul-13 | Idun Pharmaceuticals, Inc | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Australia | Patent | 752339 | 1-Jul-13 | Idun Pharmaceuticals, Inc. | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Denmark | European Patent | 1091930 | 1-Jul-13 | Idun Pharmaceuticals, Inc. | 442 | IDN6556 and related compounds composition | 1-Jul-19 | |||||||
Sweden | European Patent | 99932211.8 | 1-Jul-13 | Idun Pharmaceuticals, Inc. | 442 | IDN6556 and related compounds composition | 1-Jul-19 |
iv
Country name | Type name | Patent / Design number | Current renewal date | Proprietor | Client’s reference | Description | Expiry date | |||||||
U.S.A. | Small Entity Patent | 6391575 | 21-Nov-13 | Idun Pharmaceuticals, Inc | 443 | method of id casp inhib | 5-Mar-19 | |||||||
USA | Large Entity Patent | 6790989 | 14-Sep-15 | Idun Pharmaceuticals, Inc | 457 | IDN6556 sulfonamide composition | Feb-21 (ADD to CPA) | |||||||
U.S.A. | Small Entity Patent | 6762045 | 13-Jan-16 | Idun Pharmaceuticals, Inc | 468 | membrane csp activity | 20-Nov-20 |
v
2. | Trademarks. |
Emricasan
vi
3. | Copyrights. |
None.
vii
EXHIBIT B
ASSUMPTION OF LIABILITIES
For good and valuable consideration, the receipt and adequacy of which are hereby acknowledged, Conatus Pharmaceuticals Inc., a Delaware corporation (“Conatus”), does hereby assume and become fully responsible for the Assumed Liabilities as such term is defined in that certain Distribution Agreement, dated as of January 10, 2013, by and between Conatus and Idun Pharmaceuticals, Inc., a Delaware corporation (“Idun”). Conatus hereby covenants and agrees that, at any time and from time to time forthwith upon the written request of Idun, Conatus will do, execute, acknowledge and deliver or cause to be done, executed, acknowledged and delivered, each and all of such further acts, deeds, assignments, transfers, conveyances and assurances as may reasonably be required by Idun in order to transfer, assign, convey and deliver unto and vest in Conatus all liabilities, obligations, responsibilities and commitments comprising the Assumed Liabilities, and to release Idun therefrom in full.
CONATUS PHARMACEUTICALS INC. | ||
By: | /s/ Xxxxxx X. Xxxxx, Ph.D. | |
Name: | Xxxxxx X. Xxxxx, Ph.D. | |
Title: | Chief Executive Officer |
EXHIBIT C
TRANSITION SERVICES AGREEMENT
This Transition Services Agreement (“TSA”), dated as of January 10, 2013 (“Effective Date”), is by and between Idun Pharmaceuticals, Inc., a Delaware corporation (“Idun”), and Conatus Pharmaceuticals Inc., a Delaware corporation (“Conatus”).
WHEREAS, Idun and Conatus have simultaneously herewith entered into that certain Distribution Agreement (the “Agreement”); and
NOW, THEREFORE, the parties hereto agree as follows:
ARTICLE 1
SERVICES
Section 1.01. Services.
(a) Conatus hereby agrees to provide to Idun the services set forth on Schedule A-1 (the “Services”) unless Idun advises Conatus reasonably in advance of the date that the performance of any of the Services is not needed by Idun.
(b) Conatus shall provide the Services in a workmanlike manner and in accordance with industry practice. Conatus shall have the sole authority to hire and terminate the services of all employees and consultants, as it deems necessary or advisable to perform its obligations under this TSA. Conatus shall have the obligation to pay all salaries and employee benefit expenses to the employees and consultants it engages in connection with this TSA.
Section 1.02. Expenses. Conatus shall be entitled to all reasonable, allocable, and allowable costs, including direct costs, overhead and general and administrative expenses (but without profit or fee) in accordance with its disclosed practice (collectively, the “Service Costs”). As necessary, Conatus shall invoice Idun for the Services at such rates as are agreed upon in advance by the parties from time to time. Properly documented invoices are due and payable within forty-five (45) calendar days of the invoice date. Payment shall be made in immediately available U.S. Dollars via wire transfer or check. A late fee for late payment of an invoice for Service Costs shall be assessed at the amount of one percent (1%) per month or the maximum amount permitted by law, whichever is less. Idun shall have the right to audit the books and records of Conatus related to services provided under this TSA, such audit to be limited to verification of invoiced amounts and any necessary adjustments thereto, and performed by Conatus’ independent accounting firm at Idun expense, during normal business hours and upon reasonable prior notice (but no more frequently than annually).
1
Section 1.03. Work Products and Related Expenses. Any data, research, analysis, discoveries, ideas, concepts, designs, devices, drawings, materials, developments, processes, procedures, trade secrets, Proprietary Information, know-how, improvements and work or intellectual property rights (altogether, “Work Product”) that is discovered or made or acquired by or on behalf of Conatus (including its employees and consultants) in connection with the provision of Services shall be the sole property of Idun. Conatus hereby assigns all right, title and interest to any such Work Products (including all rights to xxx for infringement, including past infringement) to Idun. Conatus hereby agrees to sign all necessary papers and do all lawful acts reasonably requisite in connection with the prosecution and assignment of each and every patent application related to any such Work Products, without further compensation, but at the expense of Idun or its successors and assigns.
ARTICLE 2
CONFIDENTIALITY
Section 2.01. Nondisclosure. Except as otherwise provided in this TSA, each party (the “Receiving Party”) shall hold in confidence using at least the same degree of care that it uses to protect its own confidential information of like importance, but not less than reasonable care, shall not use except for the purposes expressly permitted under this TSA, and shall not disclose to any third party (except as expressly permitted by this TSA) any nonpublic business or technical information that is disclosed to it by the other party (the “Disclosing Party”) orally or in a tangible form and is marked “Confidential,” orally designated as confidential, or due to the circumstances surrounding the disclosure would reasonably be construed as confidential (“Proprietary Information”). All Work Product shall be deemed to be the Proprietary Information of Idun. Proprietary Information of a party shall not include:
(a) Information which at the time of disclosure under this TSA is published or otherwise generally known or available to the public;
(b) Information which, after disclosure by the Disclosing Party under this TSA, is published or becomes generally known or available to the public through no fault of the Receiving Party;
(c) Information which the Receiving Party can document by contemporaneous written records was in its possession at the time of disclosure and was not acquired directly or indirectly from the Disclosing Party;
(d) Information which was independently developed by the Receiving Party outside of the scope of this TSA and without any use of the Disclosing Party’s Proprietary Information; or
(e) Information which becomes known to the Receiving Party, without restriction, from a source (other than the Disclosing Party) rightfully in possession of the information and under no confidentiality or fiduciary obligation not to make the disclosure.
2
Section 2.02. Exceptions. If the Receiving Party becomes compelled by a court of competent jurisdiction to disclose any Proprietary Information, the Receiving Party will provide the Disclosing Party with prompt written notice so that the Disclosing Party may seek a protective order or other appropriate remedy. If such a protective order or other remedy is not obtained or if compliance with the provisions hereof is waived by the Disclosing Party, the Receiving Party will furnish only that portion of the Proprietary Information that is legally required and will exercise all reasonable business efforts to secure confidential treatment of such Proprietary Information.
ARTICLE 3
TERM AND TERMINATION
Section 3.01. Term. The initial term of this TSA shall commence as of the Effective Date and unless terminated earlier pursuant to this Article 3, shall continue in full force and effect until December 31, 2013. This TSA shall automatically renew for successive periods of one (1) year unless terminated (i) by either party with ninety (90) days prior written notice to the other party, or (ii) earlier pursuant to this Article 3. Upon any termination of this TSA, Idun shall promptly pay any Service Costs then owed to Conatus.
Section 3.02. Termination By Either Party.
(a) For Cause.
(i) Breach. In the event of a material breach of this TSA, the non-breaching party shall be entitled to terminate this TSA by written notice to the breaching party, if such breach is not cured within thirty (30) days after written notice is given to the breaching party, specifying the breach.
(ii) Cessation of Business; Insolvency; If either party (i) terminates or suspends its business activities; (ii) admits in writing its inability to pay its debts as they mature; or (iii) becomes insolvent, is dissolved or liquidated, makes an assignment for the benefit of creditors, files or has filed against it a petition in bankruptcy, reorganization, dissolution or liquidation or similar action filed by or against it, is adjudicated as bankrupt, or has a receiver appointed for its business, then the affected party shall promptly notify the unaffected party in writing that such event has occurred. If any event as specified in the previous sentence is not cured, or an acceptable plan for such cure is not proposed, within sixty (60) days after written notice from the unaffected party specifying the nature of the event, the unaffected party shall have the right to terminate this TSA, unless prevented to do so by law, by giving written notice of termination to the affected party.
(b) For Convenience. Idun may terminate this TSA, without cause, upon providing Conatus at least three (3) months prior written notice of its intent to do so.
Section 3.03. Survival.
(a) Termination of this TSA for any reason shall not release either party hereto from any liability which at the time of such termination has already accrued to the other party. In addition, any and all Service Costs accrued hereunder shall immediately become due and payable.
(b) Section 1.03 and Articles 2, 3 and 4 shall survive any expiration or termination of this TSA.
3
ARTICLE 4
MISCELLANEOUS
Section 4.01 Governing Law. This TSA (including any claim or controversy arising out of or relating to this TSA) shall be governed by the law of the State of California without regard to conflict of law principles that would result in the application of any law other than the law of the State of California.
Section 4.02 Notices. Any notice, request, demand or other communication required or permitted hereunder shall be in writing and shall be deemed to have been given (a) if delivered or sent by facsimile transmission, upon receipt, (b) if sent by reputable courier service guaranteeing overnight delivery, on the next business day, or (c) if sent by registered or certified mail, upon the sooner of the date on which receipt is acknowledged or the expiration of three (3) business days after deposit in United States post office facilities properly addressed with postage prepaid. All notices to a party will be sent to the addresses set forth below or to such other address or person as such party may designate by notice to each other party hereunder:
To Idun:
Idun Pharmaceuticals, Inc.
0000 Xxxxxxxxx Xxxxx, Xxxxx 000
Xxx Xxxxx, XX 00000
To Conatus:
Conatus Pharmaceuticals Inc.
0000 Xxxxxxxxx Xxxxx, Xxxxx 000
Xxx Xxxxx, XX 00000
Any notice given hereunder may be given on behalf of any party by its counsel or other authorized Representatives.
Section 4.03 No Third-Party Beneficiaries. This TSA shall not confer any rights or remedies upon any person other than the parties and their respective successors and permitted assigns.
Section 4.04 Construction. Conatus and Idun have participated jointly in the negotiation and drafting of this TSA. In the event an ambiguity or question of intent or interpretation arises, this TSA shall be construed as if drafted jointly by the parties and no presumption or burden of proof shall arise favoring or disfavoring any party by virtue of the authorship of any of the provisions of this TSA.
4
Section 4.05 Severability. If any provision of this Agreement is declared invalid by a court of last resort or by any court or other governmental body from the decision of which an appeal is not taken within the time provided by law, then and in such event, this Agreement will be deemed to have been terminated only as to the portion thereof that relates to the provision invalidated by that decision and only in the relevant jurisdiction, but this Agreement, in all other respects and all other jurisdictions, will remain in force; provided, that if the provision so invalidated is essential to the Agreement as a whole, then the parties will negotiate in good faith to amend the terms hereof as nearly as practical to carry out the original intent of the parties.
Section 4.06 Assignment. Neither this TSA nor any of the rights or obligations hereunder may be assigned by any party without the prior written consent of the other party other than in connection with the sale or transfer by a party of all or substantially all of the assets to which this TSA relates. Subject to the foregoing, this TSA shall be binding upon and inure to the benefit of the parties hereto and their respective successors and permitted assigns.
Section 4.07 Amendments. This TSA may not be amended or modified, nor may compliance with any condition or covenant set forth herein be waived, except by a writing duly and validly executed by each party hereto, or in the case of a waiver, the party waiving compliance.
Section 4.08 Injunctive Relief. It is understood and agreed that, notwithstanding any other provision of this TSA, either party’s breach of confidentiality obligations or provisions relating to intellectual property rights will cause irreparable damage for which recovery of money damages would be inadequate, and that the other party will therefore be entitled to seek timely injunctive relief to protect such party’s rights under this TSA, in addition to any and all remedies available at law.
Section 4.09 Independent Contractors. The relationship of the parties hereto is that of independent contractors. Neither party hereto is an agent, partner or joint venturer of the other for any purpose and neither shall have the right to create, assume or incur any expense, liability or obligation on behalf of the other.
Section 4.10 Compliance with Laws. This TSA and the performance allowed hereunder shall be carried out in strict compliance with all applicable foreign, federal, state and local laws, regulations, rules and orders
Section 4.11 Entire Agreement. This TSA and the Agreement, including the exhibits and schedules hereto and thereto, reflects the entire agreement of the parties with respect to the subject matter hereof and supersedes all previous written or oral negotiations, commitments and writings.
Section 4.12 Execution in Counterparts. For the convenience of the parties and to facilitate execution, this TSA may be executed in two or more counterparts, each of which shall be deemed an original, but all of which shall constitute one and the same document.
5
Conatus Pharmaceuticals Inc. | ||
By: | /s/ Xxxxxx X. Xxxxx, Ph.D. | |
Name: | Xxxxxx X. Xxxxx, Ph.D. | |
Title: | Chief Executive Officer | |
Idun Pharmaceuticals, Inc. | ||
By: | /s/ Xxxxxx X. Xxxxx, Ph.D. | |
Name: | Xxxxxx X. Xxxxx, Ph.D. | |
Title: | Chief Executive Officer |
SCHEDULE A-1
TO TRANSITION SERVICES AGREEMENT
SERVICES
Accounting
Technology license administration
Intellectual property maintenance
Any other services requested by Idun and agreed to by Conatus from time to time.