OPTION TO LICENSE AND RESEARCH SUPPORT AGREEMENT
BETWEEN
THE SALK INSTITUTE FOR BIOLOGICAL STUDIES
AND
EPITOPE, INC.
DATED FEBRUARY 25, 1997
OPTION TO LICENSE AND RESEARCH SUPPORT AGREEMENT
BETWEEN
THE SALK INSTITUTE FOR BIOLOGICAL STUDIES
AND
EPITOPE, INC.
1. DEFINITIONS 1
2. GRANT OF OPTION RIGHTS LICENSE 2
3. PAYMENTS 3
4. EXERCISE OF THE OPTION 3
5. TERMS OF PROPOSED LICENSE 4
6. OWNERSHIP OF INTELLECTUAL PROPERTY 5
7. DISCLAIMERS 5
8. INDEMNIFICATION 6
9. PROSECUTION AND MAINTENANCE OF PATENT RIGHTS 6
10. TERM AND TERMINATION 8
11. CONFIDENTIAL INFORMATION 9
12. CHOICE OF LAW; DISPUTE RESOLUTION 9
13. DUE DILIGENCE 10
14. NOTICES 10
15. RESEARCH AND SHARING OF INFORMATION 10
16. MISCELLANEOUS 11
OPTION TO LICENSE AND RESEARCH SUPPORT AGREEMENT
This Option to License and Research Support Agreement (the
"Agreement") is made and entered into as of Feb. 25, 1997, by and between The
Salk Institute for Biological Studies, a nonprofit public benefit corporation
organized under the laws of the State of California ("Salk"), and EPITOPE, INC.,
a corporation organized under the laws of the State of Oregon ("Epitope").
BACKGROUND
Salk is the owner or co-owner of certain Patent Rights
(defined below) and of the Technical Information (defined below) relating to the
Patent Rights. The development of certain inventions included within the Patent
Rights was sponsored in part by agencies of the Federal Government and, as a
consequence, this Agreement is subject to overriding obligations to the Federal
Government as set forth in 35 U.S.C. Section 200 et seq. Salk desires that the
Patent Rights be developed and utilized to the fullest extent possible so that
products resulting from them may be available for public use and benefit. Salk
has determined that the best method for disseminating the Patent Rights is
through the grant of licenses to entities willing to evaluate and develop
products and services covered by the Patent Rights. Epitope has, or has access
to, the scientific talent, know-how and facilities to further evaluate, develop
and potentially market products which may result from the use of the Patent
Rights. Epitope wishes to obtain and Salk is willing to grant to Epitope an
option to license the Technical Information so that Epitope can further evaluate
and develop the technology for commercial application in plants.
NOW, THEREFORE, IN CONSIDERATION OF THE ABOVE PREMISES, AND
THE MUTUAL COVENANTS CONTAINED HEREIN, THE PARTIES HEREBY AGREE AS FOLLOWS:
TERMS AND CONDITIONS
1. DEFINITIONS.
1.1 The term "AFFILIATE" shall mean any entity which controls,
is controlled by or is under common control with Epitope, where "control" means
beneficial ownership of more than fifty percent (50%) of the outstanding shares
or securities or the ability otherwise to elect a majority of the board of
directors or other managing authority.
1.2 The term "PLANT BIOLOGY LABORATORY" shall mean
collectively the research laboratories at Salk devoted to plant biology
research, including, but not limited to, those under the direction of Xx.
Xxxxxxxxxxx Xxxx, Dr. Xxxxxx Xxxxx, and Dr. Xxxxxx Xxxxxx.
1.3 The term "FIELD OF USE" shall mean certain fruit and
vegetable crops and certain horticultural plants, as spelled out in Schedule A,
attached hereto and incorporated by reference herein, but in no event shall
include, without limitation, corn, canola, sunflower, safflower, soybeans,
cotton, cereals, sorghum, forestry trees, all fruitwood or hardwood species
grown primarily for wood or as ornamental trees, plants of any species grown as
ornamentals, and other plants not specifically listed in Schedule A.
1.4 The term "LICENSED TECHNOLOGY" shall mean collectively the
Patent Rights and the Technical Information (defined below).
1.5 The term "PATENT RIGHTS" shall mean all information,
inventions or discoveries covered by the patent applications listed on Schedule
A, attached hereto and
1
incorporated by reference herein, which Schedule may be modified from time to
time by the parties as specified herein, and any and all patents issuing
thereon, owned by or licensed to Salk with the right to sublicense. The term
"patents" as used in this Agreement shall include, without limitation, all
provisional and utility applications, substitutions, continuations,
continuations-in-part, divisions, reissues, extensions and foreign counterparts
of the aforementioned.
1.6 The term "TECHNICAL INFORMATION" shall mean all know-how,
trade secrets, data, processes, procedures, methods, formulas, protocols and
information which are not covered by the Patent Rights or any other patent
rights of Salk, but which are necessary or useful for the commercial
exploitation of the Patent Rights, and which are known or become known during
the Term (as hereinafter defined) in the Plant Biology Laboratory and which Salk
has the lawful right to license and disclose without accounting to any third
party.
1.7 The term "TERM" shall be as defined in Section 10.1.
1.8 The term "TERRITORY" shall mean the territory listed with
respect to each entry in Schedule A.
2. GRANT OF OPTION RIGHTS LICENSE.
2.1 PATENT RIGHTS AND TECHNICAL INFORMATION. Subject to the
limitations set forth in this Agreement, Salk hereby grants to Epitope and its
Affiliates an option (the "Option") (exclusive or nonexclusive as stipulated on
the attached Schedule A), for the Term to acquire (1) an exclusive with the
right to sublicense, or nonexclusive without the right to sublicense, worldwide
commercial license under the Patent Rights in the Field of Use and in the
Territory as stipulated for each entry in the attached Schedule A; and (2) a
non-exclusive commercial license in and to the Technical Information in the
Field of Use and in the Territory as stipulated for each entry in the attached
Schedule A, with the right to grant sublicenses to such Technical Information in
conjunction with sublicenses of Patent Rights pursuant to an exclusive license
under this Section 2.1; which licenses under (1) and (2) are to make, have made,
use and sell in the Field of Use and in the Territory products which are
composed of or incorporate the Licensed Technology or the production, use or
sale of which products is within the scope of any claim in a pending patent
application or an issued patent included in the Patent Rights.
For the duration of the Term of this Agreement, Salk grants to
Epitope a non-exclusive license under the Licensed Technology, to use the
Licensed Technology for research and evaluation purposes in each specified Field
of Use to determine Epitope's interest in exercising the Option; provided
further that Epitope may also be granted the right to contract with third party
independent contractors to use the Licensed Technology for research and
evaluation purposes in one or more of the respective Fields of Use upon
notification in writing to Salk so long as necessary to help Epitope determine
its interest in exercising the option and so long as such contracts are made
under conditions at least as protective to Salk as those under this Agreement.
2.2 GOVERNMENT RIGHTS. Epitope acknowledges that certain of
the Licensed Technology was developed in part with funds furnished by the
Government of the United States of America and that the Government has certain
rights relative thereto. This Agreement is explicitly made subject to the
Government's rights under any applicable law or regulation. To the extent that
there is a conflict between any such applicable law or regulation and this
Agreement, the terms of such applicable law or regulation shall prevail.
2.3 SUBLICENSES. Epitope shall have the right to grant
sublicenses to third party independent contractors contracted with under Section
2.1 above, which sublicenses shall be limited in duration to the Term and shall
include, without limitation, a provision binding
2
sublicensees to all terms hereof intended for the protection of Salk and other
indemnified parties against liability or loss. Epitope further agrees to deliver
to Salk for informational purposes (and under an obligation of confidentiality)
a true and correct copy of each sublicense under the Option granted by Epitope,
and any modification or termination thereof, within thirty (30) days after
execution, modification, or termination.
2.4 RIGHT OF FIRST NEGOTIATION FOR NEW TECHNOLOGY. For the
term of this Agreement, prior to granting any rights to third parties in any of
the Fields of Use and any of the Territories as stipulated in the attached
Schedule A (collectively referred to as the "Area of Rights") with respect to
any new technology not within the definition of Licensed Technology developed in
the Plant Biology Laboratory with the access fees paid by Epitope under this
Agreement (the "New Technology"), Salk shall first offer rights in such New
Technology in the Area of Rights to Epitope. Any such offer shall include an
identification of the New Technology and initial data regarding such technology
for review by Epitope. Epitope shall have [ ]* days from the date it
receives such offer to determine whether or not it wishes to purchase an option
to such New Technology at that time and to so notify Salk. Salk shall not
negotiate with any third parties regarding such New Technology in the Area of
Rights within such [ ]* day period or until Epitope has notified Salk that
it does not wish to obtain rights in such New Technology, whichever occurs
first. If Epitope desires to obtain rights in such New Technology, such rights
may be added to this Agreement or become subject to a new agreement as desired
by the parties. If Epitope decides not to obtain rights to such New Technology
at that time or if Salk and Epitope cannot negotiate an agreement within [
]* months following the [ ]* day period after such offer, then Salk may
offer the New Technology to one or more third parties in the Area of Rights (as
well as continuing to offer the New Technology to third parties outside the Area
of Rights).
3. PAYMENTS.
3.1 ACCESS FEE. As consideration for the rights granted to
Epitope under this Agreement, Epitope agrees to pay to Salk the Access Fees each
year specified in the attached Schedule A for each Technology referred to there.
Such fees will be due and payable in four equal installments on the first day of
each quarter, i.e., January 1, April 1, July 1 and October 1 for the term of the
Agreement except as limited in Section 4. [ ]*
Epitope represents that the execution and delivery of this Agreement and the
payment of the Access Fees have been duly and validly authorized by all
necessary corporate action by Epitope.
3.2 OTHER PAYMENTS. Epitope shall pay Salk amounts received by
Epitope in consideration of any sublicense to this Agreement and under this
Agreement with any third party (other than an Affiliate of Epitope) in an amount
equal to [ ]* of the actual amount received by Epitope under such sublicense;
with the understanding that this Section 3.2 applies to sublicenses under the
option provided herein.
4. EXERCISE OF THE OPTION.
If Epitope elects to exercise its option rights to enter into
a license agreement, Epitope shall notify Salk in writing pursuant to Section 14
(Notices) prior to the expiration of this Agreement.
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
3
When Epitope exercises its option hereunder with respect to a
given Schedule A entry in the particular Field of Use and Territory specified in
said Schedule A, and the parties shall accordingly diligently work to execute a
license agreement within the guidelines provided herein. Once such license
agreement has been executed by the parties, the terms therein shall replace and
supersede the terms of this Agreement as to the Schedule A entry covered by the
license agreement and Epitope shall not be liable to Salk for any additional
Access Fees in regard thereto under this Agreement.
Epitope may notify Salk in writing during the Term of this
Agreement, that it no longer has any interest in pursuing commercial development
of a particular Schedule A entry (the "Rejected Technology"). In such event, the
option for a license of such Rejected Technology shall be terminated as to that
technology, such technology shall be deemed to be removed from this Agreement
and Epitope shall not be obligated for any future Patent Costs related to such
Rejected Technology. [ ]*
5. TERMS OF PROPOSED LICENSE.
If and when Epitope exercises its Option under this Agreement
for any of the Schedule A entries, then Epitope and Salk shall thereupon
negotiate in good faith to arrive at mutually agreeable, reasonable terms and
conditions for the license agreement. The terms of the license agreement shall
include, but not be limited to, the following provisions:
(A) a right to sublicense the rights being licensed
if the license is exclusive.
(B) a license issue fee equivalent to [ ]*
for the Schedule A entry being licensed.
(C) a royalty rate to be based on the added value of
the technology to the product, taking into consideration
additional third party technology licenses needed to market
the products covered, but in any event not to exceed [ ]*
from the sale of products incorporating the Licensed
Technology, with the royalty rates being determined with
regard to each Schedule A entry such that if more than one
Schedule A entry is incorporated into the products, the
royalty rates will be additive [ ]*
(D) fees paid to Salk on sublicenses at a rate of [
]* of amounts actually received by Epitope from
sublicensees.
(E) diligence terms requiring Epitope to use
reasonable efforts based on reasonably prudent business
judgment in evaluating the Licensed Technology and producing
products for sale that incorporate the Schedule A entry to be
licensed.
(F) disclaimer and indemnification terms similar to
those set out in Sections 7 and 8.
(G) patent cost obligations similar to those in
Section 9.
(H) termination provisions similar to those in
Section 10.
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
4
5.2 The license agreement contemplated in Section 5.1 shall be
subject to all the applicable provisions pertaining to the rights of the
Government of the United States as specified in Section 2.2.
6. OWNERSHIP OF INTELLECTUAL PROPERTY.
6.1 Epitope (for itself, its Affiliates and sublicensees)
acknowledges and agrees that Salk is and shall remain (as to Epitope) the sole
owner of the Patent Rights, subject to the rights of the Federal Government as
set forth in 35 U.S.C. Section 200 et seq., and that Epitope (including its
Affiliates and sublicensees) has no rights in or to the Patent Rights other than
the rights specifically granted herein.
6.2 Salk warrants to Epitope that it has the lawful right to
enter into this Agreement and grant the option contained herein. Epitope is
aware that certain technology listed in Schedule A is owned in part by The
Xxxxxx Xxxxxxx Xxxxx Foundation.
7. DISCLAIMERS.
7.1 WARRANTY DISCLAIMER. Nothing in this Agreement is or shall
be construed as:
(A) a warranty or representation by Salk as to the
validity or scope of any Patent Rights;
(B) a warranty or representation that anything made,
used, sold or otherwise disposed of under any license granted
pursuant to this Agreement is or will be free from
infringement of patents, copyrights and other rights of third
parties;
(C) an obligation to bring or prosecute actions or
suits against third parties for infringement, except to the
extent and in the circumstances described in Section 9.3; or
(D) a grant by implication, estoppel, or otherwise of
any licenses under patent applications or patents of Salk or
other persons other than as provided in Section 2 hereof.
7.2 NO WARRANTY. Except as expressly set forth in this
agreement, Salk makes no representation and extends no warranty of any kind,
either express or implied, including, without limitation, the condition,
originality or accuracy of the research or any invention or product, whether
tangible or intangible, conceived, discovered or developed under this Agreement;
or the merchantability or fitness for a particular purpose of the research or
any such invention or product. Salk shall not be liable for any direct,
consequential, or other damages suffered by Epitope, any licensee, or any other
resulting from the use of the research or any such invention or product.
5
8. INDEMNIFICATION.
8.1 INDEMNIFICATION BY EPITOPE. Except to the extent of the
limited waiver and indemnity by Salk set forth in Section 8.2, Epitope hereby
waives any claims it may have, and agrees to indemnify, defend and hold harmless
Salk and its present and former officers, trustees, employees, agents and
co-owners of technology from any claim, loss, cost, expense, or liability of any
kind including reasonable attorneys' fees and expenses arising out of or related
to (a) use by Epitope, its Affiliates or its sublicensees of the Licensed
Technology or the results of any work performed pursuant to this Agreement or
(b) any manufacture, use, sale or other disposition by Epitope, its Affiliates
or its licensees of products made by use of such Licensed Technology or the
results of any work performed pursuant to this Agreement. Salk shall promptly
notify Epitope of any such claim and shall cooperate with Epitope and its
insurance carrier in defense of the claim at Epitope's expense.
8.2 INDEMNIFICATION BY SALK. Salk hereby waives any claims it
may have, and agrees to indemnify, defend and hold harmless Epitope and its
present and former officers, directors, employees and agents from any claims,
loss, cost, expense, or liability of any kind including reasonable attorneys'
fees and expenses resulting from the injury or death of an employee or agent of
Salk engaged in conducting the research contemplated by or performed under this
Agreement, working in the facility in which such research is conducted, or
damage to or loss of the property of Salk, caused by the negligence or willful
misconduct of Salk in conducting such research.
9. PROSECUTION AND MAINTENANCE OF PATENT RIGHTS.
9.1 PROSECUTION AND MAINTENANCE. As between Salk and Epitope,
Salk shall have full control over prosecution and maintenance of the patent
applications and patents contained in the Patent Rights. Salk shall diligently
prosecute and maintain or use its best efforts to cause a co-owner to prosecute
and maintain the United States and foreign patent applications and patents in
the Patent Rights. Salk will keep Epitope advised of the status of such
prosecution and maintenance by providing Epitope in confidence with prompt and
complete copies of all official communications with respect to the patent
applications and patents contained in the Patent Rights. Salk agrees to consider
carefully adding claims reasonably requested by Epitope to any patent
application in the Patent Rights which Epitope believes are necessary to protect
products contemplated to be sold under a potential License Agreement.
9.2 PATENT COSTS.
(A) Upon execution of this Agreement, Epitope shall
pay to Salk [ ]*
as reimbursement for the percentages of Patent Costs incurred
through 1996 specified in Schedule A. Epitope shall reimburse
Salk for said percentages of Patent Costs thereafter incurred
during the term of this Agreement with respect to the Patent
Rights; provided that each percentage of Patent Costs to be
borne by Epitope is to be based on and shared with other
licensees and options under the Patent Rights on a pro rata
basis, with the number of licensees. If Epitope exercises its
option rights under this Agreement, Epitope's pro rata share
of the Patent Costs shall be determined based upon the number
of licenses then existing and the extent of the Field of Use
and Territory on a Schedule A entry by entry basis. If Salk
subsequently obtains additional licensees, then Epitope's pro
rata share of the Patent Costs shall be reduced by Salk
accordingly. Conversely, if one or more licensees terminate
their interest then Epitope's share of the Patent Costs shall
increase. "Patent Costs" as used in this Agreement shall mean
only out-of-pocket
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
6
expenses incurred in connection with the preparation, filing,
prosecution up to and through appeal from a final rejection by
an Examiner of the United States Patent Office and maintenance
of United States patent applications and patents, including
the fees and expenses of attorneys and patent agents, filing
fees and maintenance fees, and the filing of an application
under the Patent Cooperation Treaty, but excluding costs
associated with any patent infringement actions. Salk will
provide an invoice to Epitope for Epitope's pro rata share of
any such Patent Costs on a semiannual basis, and Epitope shall
reimburse Salk for its share of Patent Costs within thirty
(30) days after delivery of any such invoice. Notwithstanding
anything above to the contrary:
(i) Epitope will not pay Patent Costs
associated with [ ]*
without Epitope's agreement in advance [ ]*
(ii) Epitope will not pay extension fees and
will not pay more than [ ]*
of Patent Costs associated with an application,
including continuations from an initial parent
application without Epitope's agreement in advance
that such expenses are desirable and reasonably
necessary business expenses; and
(iii) Epitope will not pay for fees in
connection with an interference in the United States
Patent Office or in a court of law, without Epitope's
agreement in advance that such expenses are desirable
and reasonably necessary business expenses.
(B) Except with regard to any patent rights that
result from applications for which Epitope did not pay fees
and costs in accordance with Section 9.2(a) (ii) and (iii)
above, in the event Epitope elects to discontinue payment for
the filing, prosecution and/or maintenance of any patent
application and/or patent contained in the Patent Rights, any
such patent application or patent shall be excluded from the
definition of the Patent Rights and from the scope of the
license granted under this Agreement, and all rights relating
thereto shall revert to Salk and may be freely licensed by
Salk.
(C) Salk shall provide notice to Epitope at least 4
months before the deadline for any patent application of the
Patent Rights to be filed in a country other than the United
States and Epitope shall, using reasonable business judgment
and with consultation with Salk, determine and notify Salk
before one month from the foreign filing deadline which
countries Epitope elects to pay for the filing, prosecution
and maintenance of such patents. If Epitope elects not to
support in a given country a patent application or patent
included in the Patent Rights and Salk, acting in reliance
thereon, ceases to prosecute such patent application or
maintain such patent, Epitope warrants that it will not sell a
product covered by the claims of any such patent as issued or,
in the case of an application, covered in the claims as
written at the time Epitope notified Salk of its decision not
to support the application, unless Epitope is obligated to pay
royalties and/or other payments under this Agreement on sales
in said country because such product is covered by another
patent or patent application licensed hereunder. If Epitope
elects not to support in a given country a patent application
or patent included in the Patent Rights and subsequently Salk
or another licensee of Salk elects to support such a patent
application or patent, then Salk shall so inform Epitope and
Epitope shall be entitled to another opportunity to elect to
share in the costs of such support on a pro
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
7
rata basis with Salk and/or such licensee and shall have
rights according to this Agreement under such patent or patent
application. All costs relating to patent applications or
patents Epitope elects to support shall be deemed to be
included in the definition of Patent Costs and Epitope shall
be responsible for its pro rata share as set out in Section
9.2(a).
9.3 DEFENSE AGAINST INFRINGEMENT. In the event Epitope or Salk
becomes aware of any actual or threatened infringement of any Patent Rights,
that party shall promptly notify the other and the parties shall discuss the
most appropriate action to take. Both parties shall use their best efforts in
cooperating with each other to terminate such infringement without litigation.
If, within one hundred twenty (120) days after the date of notification of
infringement, attempts to xxxxx such infringement are unsuccessful, then Epitope
and other optionees and/or licensees similarly situated may bring such action at
their own expense, in which event Salk shall cooperate with Epitope as
reasonably requested, at Epitope's expense. Salk may, on its own initiative,
join in such suit. All recoveries, damages and awards in such suit, after
reimbursement of any litigation expenses of Salk not previously reimbursed,
shall belong to Epitope and any other optionees and/or licensees, but to the
extent in excess of the litigation expenses of Epitope and any other such
optionees and/or licensees shall be considered income subject to royalty payable
to Salk hereunder. In the event that Epitope elects not to institute or
prosecute any suit to enjoin or recover damages from any infringer, then Salk
alone may, in its sole discretion and at its expense, initiate and conduct an
infringement action and keep any settlement or award which may be obtained.
Epitope and Salk agree that neither will settle any action commenced by it in a
manner that is prejudicial to any Patent Rights without the other party's prior
written approval.
10. TERM AND TERMINATION.
10.1 TERM. This Agreement shall become effective as of the
date of this Agreement set forth above and continue for a period of three years,
unless earlier terminated as permitted herein. The Term may be renewed upon
written agreement by both parties.
10.2 TERMINATION BY EITHER PARTY. This Agreement may be
terminated by either party, if the other party substantially fails to perform or
otherwise materially breaches any of the material terms, covenants or provisions
of this Agreement, such termination to be effected by giving written notice of
intent to terminate to the breaching party stating the grounds therefor. The
party receiving the notice shall have thirty (30) days thereafter to correct
such breach. If such breach is not corrected within said thirty (30) days after
notice as aforesaid, then this Agreement shall automatically terminate.
10.3 TERMINATION BASED ON THIRD PARTY CONFLICTS. Epitope may
terminate this Agreement as to any Patent Rights effective upon notice to Salk,
at its sole discretion if a patent or patent application of the Patent Rights is
subjected to an interference in the United States Patent Office or in a court of
law or if Salk or Epitope is sued or threatened with suit by a third party for
infringement or other exercise of the Patent Rights and the technologies
associated with them.
10.4 TERMINATION BASED ON EMPLOYMENT OF KEY INDIVIDUALS. The
parties recognize that Xx. Xxxxxxxxxxx Xxxx'x management of and involvement in
the research at Salk contemplated under this Agreement is crucial to the success
of that research, and therefore agree that, in the event Salk's employment of
Xx. Xxxx is terminated for any reason during the Term of this Agreement, Salk
will so notify Epitope within fifteen (15) days of such termination and Epitope
may then terminate this Agreement by written notice to Salk, which termination
shall be effective sixty (60) days after the date of termination of Xx. Xxxx'x
employment.
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
8
10.5 CONSEQUENCES OF TERMINATION. In the event of expiration
of this Agreement or termination of the Agreement for any reason whatsoever:
(A) Epitope shall not thereby be discharged from any
liability or obligation to Salk which became due or payable
prior to the effective date of such expiration or termination;
and
(B) The rights and obligations of the parties under
Sections 7, 8, 10.5 and 11 shall survive any termination of
this Agreement.
11. CONFIDENTIAL INFORMATION.
All confidential scientific and technical information
communicated by one party hereunder (the "Provider") to the other party, its
affiliates or sublicensees (the "Recipient"), including, without limitation,
information contained in patent applications, shall be received in strict
confidence by the Recipient, used only for the purposes of this Agreement and
not disclosed by the Recipient or their respective agents or employees without
the prior written consent of the Provider, unless such information (i) was in
the public domain at the time of disclosure, (ii) later became part of the
public domain through no act or omission of the recipient party, its employees,
agents, successors, or assigns, (iii) was lawfully disclosed to the recipient by
a third party having the right to disclose it, (iv) was already known by the
recipient at the time of disclosure and recipient can so demonstrate by
competent written proof or (v) is required to be disclosed to a governmental
agency pursuant to such agency's rule and regulations in order to secure
regulatory approval, provided that Recipient shall first give notice to Provider
of such disclosure and shall have made a reasonable effort to maintain the
confidentiality of such information. Nothing contained herein shall prevent
Epitope or its Affiliates from disclosing information to sublicensees or Salk
disclosing information to its other optionees and/or licensees so long as such
sublicensees, licensees and optionees agree to be bound by these confidentiality
provisions. Notwithstanding the above, there shall be no restrictions on the
right of Salk and or Epitope to publish the results of the work hereunder.
12. CHOICE OF LAW; DISPUTE RESOLUTION.
12.1 GOVERNING LAW. This Agreement is made in accordance with
and shall be governed and construed in accordance with the laws of the State of
California, as applied to contracts executed and performed entirely within the
State of California, without regard to conflicts of laws rules.
12.2 ARBITRATION. If a dispute arises between the parties
relating to the interpretation or performance of this Agreement or the grounds
for the termination thereof, the parties agree to hold a meeting, attended by
individuals with decision-making authority regarding the dispute, to attempt in
good faith to negotiate a resolution of the dispute prior to pursuing other
available remedies. If, within thirty (30) days after such meeting, the parties
have not succeeded in negotiating a resolution of the dispute, such dispute
shall be submitted to final and binding arbitration under the then current
Licensing Agreement Arbitration Rules of the American Arbitration Association
("AAA"), with a panel of three (3) arbitrators in Oregon if the arbitration is
called for by Salk and in San Diego, California if the arbitration is called for
by Epitope. Such arbitrators shall be selected by the mutual agreement of the
parties or, failing such agreement, shall be selected according to the aforesaid
AAA rules. The parties shall bear the costs of arbitration equally unless the
arbitrators, pursuant to their right, but not their obligation, require the
non-prevailing party to bear all or any unequal portion of the prevailing
party's costs. The decision of the arbitrator shall be final and may be sued on
or enforced by the party in whose favor it runs in
9
any court of competent jurisdiction at the option of the successful party. The
arbitrators will be instructed to prepare and deliver a written, reasoned
opinion conferring their decision. The rights and obligations of the parties to
arbitrate any dispute relating to the interpretation or performance of this
Agreement or the grounds for the termination thereof shall survive the
expiration or termination of this Agreement for any reason.
13. DUE DILIGENCE.
Epitope shall diligently undertake the requisite research and
testing of the Licensed Technology necessary to evaluate its interest in
exercising the option. Epitope shall be entitled to exercise prudent and
reasonable business judgment in meeting its due diligence obligations hereunder.
14. NOTICES.
The payments to be made hereunder to Salk shall be made by
wiring the required amount to Salk's bank in accordance with Salk's instructions
or by mailing or sending by commercial courier checks for the required amount to
Salk's address. Notices provided for herein shall effectively be given by
mailing the same by certified or registered mail or by delivery by commercial
courier, in each case properly addressed with charges prepaid. For the purposes
of making payments and giving notices, the addresses of the parties hereto are
as follows:
The Salk Institute for Biological Studies
00000 Xxxxx Xxxxxx Xxxxx Xxxx
Xx Xxxxx, XX 00000
Attn: Director, Legal Services & Technology Transfer
Epitope, Inc.
0000 X.X. Xxxxxxxxx Xxxxx
Xxxxxxxxx, Xxxxxx 00000-0000
Attn: President
or to such subsequent addresses as either party may furnish the other by giving
notice thereof as provided in this Section 14.
15. RESEARCH AND SHARING OF INFORMATION.
15.1 It is expected that the two parties will work together to
further develop the technologies set out on Schedule A. The role each party will
play will depend upon how advanced the underlying technology of interest is,
with Salk providing primarily the necessary basic research and Epitope
evaluating the technology for commercial utility and expansion to numerous plant
products. Each party will report to each other at least quarterly at a mutually
convenient time the findings of their respective research and will share ideas
regarding future projects. Epitope would expect to continue research with the
relevant technology, gene etc. in multiple plant varieties or crops.
15.2 DISCLOSURE OF INFORMATION. Salk agrees to provide Epitope
with research data or other information which bears upon the practice and use of
the Licensed Technology so that Epitope can be apprised as timely as possible
regarding both positive and negative features of the technology which may assist
Epitope in evaluating the commercial application of the technologies covered
under this Agreement. Salk agrees to promptly provide
10
written correspondence which henceforth is addressed to or otherwise received by
the Technology Transfer Department of Salk from sources other than patent
offices (see Section 9.1) which is known by Salk to be materially relevant to
the patentability of any of the Patent Rights, including such correspondence
about potential interferences. There will be frequent communications, written
oral or both, between scientists from both parties, at least once quarterly at
the mutual convenience of the parties. Salk agrees to send to Epitope at least
once quarterly a written report drafted under the direction of Xx. Xxxx that
specifies which research projects are funded hereunder by title, the amounts
from Epitope allocated to each project, the names of the personnel involved in
the project and a brief description of the research status for each of the
projects funded by the fees provided to Salk under this Agreement. Salk will
promptly provide Epitope copies of all publications and manuscripts of Salk
emanating from the Plant Biology Laboratory accepted for publication which
relate to the Licensed Technology. Salk further agrees to provide Epitope
promptly with copies of all United States and, upon request and to the extent
not duplicative, foreign patent applications which Salk files and patents which
may issue thereon, in each case which are included in the Patent Rights.
15.3 EPITOPE TECHNOLOGY. Rights to inventions, improvements
and/or discoveries, whether patentable or not, relating to the work out of this
Agreement conceived or made solely by employees of Epitope or its agents shall
belong to Epitope. Such inventions, improvements, and/or discoveries shall not
be subject to the terms and conditions of this Agreement.
15.4 COLLABORATION. It is understood that the Salk
investigators shall be free to discuss the research with other investigators and
to collaborate with them. Notwithstanding Salk's commitments under this
Agreement, in the event any inventions, discoveries, biological material, or
software result from such collaboration, Salk shall grant to Epitope the rights
outlined in this Agreement to the extent these are not in conflict with
obligations to another party as a result of the involvement of the other
investigator(s). In this latter case, Salk shall exert its good faith efforts to
enable Epitope to obtain rights.
16. MISCELLANEOUS.
16.1 ASSIGNMENT. Neither this Agreement nor any of the rights
or obligations hereunder may be assigned by either party without the prior
written consent of the other party (such consent not to be unreasonably withheld
with respect to an assignment in the event of a sale of all or substantially all
of a party's assets). This Agreement shall be binding upon and inure to the
benefit of Salk, Epitope and their respective assigns and successors in
interest.
16.2 HEADINGS. The headings used in this Agreement are for
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this Agreement.
16.3 AMENDMENT. No amendment or modification hereof shall be
valid or binding upon the parties unless made in writing and signed by both
parties.
16.4 FORCE MAJEURE. Any delays in performance by any party
under this Agreement (other than the payment of monies due) shall not be
considered a breach of this Agreement if and to the extent caused by occurrences
beyond the reasonable control of the party affected, including but not limited
to, acts of God, embargoes, governmental restrictions, strikes or other
concerted acts of workers, fire, flood, explosion, riots, wars, civil disorder,
rebellion or sabotage. The party suffering such occurrence shall immediately
notify the other party and any time for performance hereunder shall be extended
by the actual time of delay caused by the occurrence.
11
16.5 INDEPENDENT CONTRACTORS. In making and performing this
Agreement, Salk and Epitope act and shall act at all times as independent
contractors and nothing contained in this Agreement shall be construed or
implied to create an agency, partnership or employer and employee relationship
between Salk and Epitope. At no time shall one party make commitments or incur
any charges or expenses for or in the name of the other party except as
specifically provided herein.
16.6 SEVERABILITY. If any term, condition or provision of this
Agreement is held to be unenforceable for any reason, it shall, if possible, be
interpreted rather than voided, in order to achieve the intent of the parties to
this Agreement to the extent possible. In any event, all other terms, conditions
and provisions of this Agreement shall be deemed valid and enforceable to the
full extent.
16.7 WAIVER. None of the terms, covenants, and conditions of
this Agreement can be waived except by the written consent of the party waiving
compliance.
16.8 ENTIRE AGREEMENT. This Agreement contains the entire
agreement and understanding between the parties with respect to the subject
matter hereof, and merges all prior discussions, representations and
negotiations with respect to the subject matter of this Agreement.
16.9 USE OF SALK'S NAME. Epitope shall have no right to
publicize this Agreement or its relationship with Salk without Salk's prior
written approval, except as provided in this Section 16.9 and as may be required
to obtain sublicensees and to comply with federal or state laws and regulations.
Salk agrees that Epitope may make known in promotional and technical literature
that the Licensed Technology was developed by scientists at Salk and that
products are offered under license from Salk; provided, however, that such use
shall not state or imply that Salk has any relationship with Epitope other than
as licensor.
IN WITNESS WHEREOF, the parties hereto have executed this
Agreement by their duly authorized officers or representatives.
ATTEST: THE SALK INSTITUTE
FOR BIOLOGICAL STUDIES
By: /s/ X. X. Xxxxx By: /s/ Xxxxxx X. Xxxxxxx
Title: Assistant Secretary Title: President
ATTEST: EPITOPE, INC.
By: /s/ Xxxxxxx X. Xxxxxxxx By: /s/ Xxxxxx X. Xxxxx
Xxxxxxx X. Xxxxxxxx, Ph.D. Xxxxx X. Xxxxx, Ph.D.
Title: Sr. Vice President, COO Title: President, CEO
12
SCHEDULE A
OPTION TO LICENSE AND RESEARCH SUPPORT AGREEMENT
BETWEEN
THE SALK INSTITUTE FOR BIOLOGICAL STUDIES
AND
EPITOPE, INC.
Technology: The gene SAR-1 or DIR-1, including any modified or
mutant forms and related research developed jointly
in Xx. Xxxxxxxxxxx Xxxx'x laboratory and at the
Ardmore Laboratories of The Xxxxxx Xxxxxxx Noble
Foundation which confers constitutive Systemic
Acquired Resistance (SAR) in transgenic plants and
any technology developed through studies of SAR-1
relating thereto that results in or enables or
improves the function of Systemic Acquired
Resistance.
Patent Rights: U.S. Serial No., [ ]* by
the Xxxxxx Xxxxxxx Xxxxx Foundation, entitled [ ]*
Access Fee: [ ]* per year; provided that such fees shall
increase to [ ]* if Salk obtains ownership rights
in the technology held by The Xxxxxx Xxxxxxx Xxxxx
Foundation before July 1, 1997. The first two
quarterly payments shall be [ ]*.
Field of Use: Fruit, vegetable and horticultural crops as defined
by the following list of plant genera and species. In
those cases where the genus name is followed by
"sp.", all species of that genus are included.
[ ]*
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
13
[ ]*
Territory: Worldwide
Exclusivity in the field of use and in the territory of option and license:
Exclusive except for [ ]*
which shall be non-exclusive; and [ ]*
which shall be exclusive for all [ ]* varieties, and
non-exclusive for all [ ]* varieties.
Initial Share of Patent Costs: [ ]*
INITIALED:
Epitope, Inc.
2/25/97 Date /s/ RKB
Salk Institute
2/27/97 Date /s/ DDB
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
14
SCHEDULE A
OPTION TO LICENSE AND RESEARCH SUPPORT AGREEMENT
BETWEEN
THE SALK INSTITUTE FOR BIOLOGICAL STUDIES
AND
EPITOPE, INC.
Technology: LEAFY gene (Dr. Xxxxxx Xxxxxx, lead researcher)
Patent Rights: LEAFY Salk File Nos. S94047 & S95098
U.S. Serial No. [ ]*
entitled [ ]*
U.S. Serial No. [ ]*
entitled [ ]*
Foreign: PCT Appln. [ ]*
designating [ ]*
Access Fee: [ ]* per year
Field of Use: Fruit, vegetable and horticultural crops as defined
by the following list of plant genera and species. In
those cases where the genus name is followed by
"sp.", all species of that genus are included.
[ ]*
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
15
[ ]*
Territory: Worldwide
Exclusivity in the field of use and in the territory of option and license:
Exclusive, except for [ ]*, which shall be exclusive for all
[ ]* varieties, and non-exclusive for all [ ]* varieties.
Initial Share of Patent Costs: [ ]*
INITIALED:
Epitope, Inc.
2/25/97 Date /s/ RKB
Salk Institute
2/27/97 Date /s/ DDB
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
16
SCHEDULE A
OPTION TO LICENSE AND RESEARCH SUPPORT AGREEMENT
BETWEEN
THE SALK INSTITUTE FOR BIOLOGICAL STUDIES
AND
EPITOPE, INC.
Technology: DET2 gene (Dr. Xxxxxx Xxxxx, lead researcher). DET2
encodes a steroid 5a hydroxylase and is a key enzyme
in the synthesis of brassinosteroid hormones in
plants. Ectopic expression of DET2 in transgenic
Arabidopsis leads to enhanced growth.
Patent Rights: det2 Salk File No. S96011
U.S. Serial No. [ ]*
entitled [ ]*
Access Fee: [ ]* per year
Field of Use: Fruit, vegetable, and horticultural crops
as defined by the following list of plant genera and
species. In those cases where the genus name is
followed by "sp.", all species of that genus are
included.
[ ]*
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
17
[ ]*
Territory: Worldwide
Exclusivity in the field of use and in the territory of option and license:
Exclusive except for [
]*, which shall be non-exclusive; and [ ]*
which shall be exclusive for all [ ]* varieties, and non-exclusive
for all [ ]* varieties.
Initial Share of Patent Costs: [ ]*
INITIALED:
Epitope, Inc.
2/25/97 Date /s/ RKB
Salk Institute
2/27/97 Date /s/ DDB
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
18
SCHEDULE A
OPTION TO LICENSE AND RESEARCH SUPPORT AGREEMENT
BETWEEN
THE SALK INSTITUTE FOR BIOLOGICAL STUDIES
AND
EPITOPE, INC.
Technology: Booster Element (BE) (Xx. Xxxxxxxxxxx Xxxx, lead
researcher). A booster element, comprising
essentially [ ]* when placed in the TATA proximal
region of various plant promoters, markedly
stimulates transcription without altering the
promoter's intrinsic pattern of expression
specificity. The booster cis element interacts with a
novel trans factor comprising domains related to
histone H1 and the high mobility group protein I/Y
respectively, between which is a glutamine-rich
domain.
Patent Rights: Booster Element Salk File No. S96005
U.S. Serial No. [ ]*
entitled [ ]*
Access Fee: [ ]* per year
Field of Use: The Field of Use includes all plant species for this
Technology.
Territory: Worldwide
Exclusivity of License: Non-exclusive
Initial Share of Patent Costs: [ ]*
INITIALED:
Epitope, Inc.
2/25/97 Date /s/ RKB
Salk Institute
2/27/97 Date /s/ DDB
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
19
SCHEDULE A
OPTION TO LICENSE AND RESEARCH SUPPORT AGREEMENT
BETWEEN
THE SALK INSTITUTE FOR BIOLOGICAL STUDIES
AND
EPITOPE, INC.
Technology: Cyclin gene (Xx. Xxxxx Xxxxxxx, lead researcher).
Ectopic expression of a cdc2::cyc1 transgene enhances
plant growth without altering morphogenesis or
causing neoplasms, leading to accelerated vegetative
development and more rapid generation of biomass.
Patent Rights: Cyclin Salk File No. S96006
U.S. Serial No. [ ]*
entitled. [ ]*
Access Fee: [ ]* per annum
Field of Use: Fruit, vegetable and horticultural crops as defined
by the following list of plant genera and species. In
those cases where the genus name is followed by
"sp.", all species of that genus are included.
[ ]*
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
20
[ ]*
Territory: Worldwide
Exclusivity in the field of use and in the territory of option and license:
Exclusive except for [
]*, which shall be non-exclusive; and
[ ]*, which shall be exclusive for all [ ]*
varieties, and non-exclusive for all [ ]* varieties.
Initial Share of Patent Costs: [ ]*
INITIALED:
Epitope, Inc.
2/25/97 Date /s/ RKB
Salk Institute
2/27/97 Date /s/ DDB
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
21
AMENDMENT
TO
OPTION TO LICENSE AND RESEARCH SUPPORT AGREEMENT
BETWEEN
THE SALK INSTITUTE FOR BIOLOGICAL STUDIES
AND
EPITOPE, INC.
This Amendment to the Option To License And Research Support Agreement
("Agreement") is made and entered into this 25th day of July, 1997 (the
"Effective Date"), by and between The Salk Institute for Biological Studies, a
nonprofit public benefit corporation organized under the laws of the State of
California ("Salk"), and Epitope, Inc., a corporation organized under the laws
of the State of Oregon ("Epitope").
WHEREAS, Dr. Xxxxxx Xxxxx has been identified as a candidate for a
position as an associate investigator of the Xxxxxx Xxxxxx Medical Institute
("HHMI");
WHEREAS, HHMI policy does not allow HHMI investigators to be subject to
an option of the type granted under the Agreement, nor to receive research funds
from commercial companies;
WHEREAS, the appointment of Dr. Xxxxxx Xxxxx as an HHMI investigator is
being delayed pending resolution of this matter;
WHEREAS, Epitope has agreed to modify the Agreement to remove reference
to the research of Dr. Xxxxxx Xxxxx past the Effective Date;
WHEREAS, Epitope will have had the benefit of this research prior to
the Effective Date in accordance with the terms of the Agreement;
WHEREAS, The total amount of access fees paid to Salk by Epitope will
remain unchanged and Salk will allocate the fees to other research;
WHEREAS, Certain technology developed prior to the Effective Date by
Xx. Xxxxx outside of the Agreement will now be included by Salk within the
Agreement to the benefit of Epitope; and
WHEREAS, Salk has agreed to include Epitope among those notified of any
licensable inventions arising in the future from the work of Xx. Xxxxx as an
HHMI Investigator.
THEREFORE, in consideration of the mutual covenants contained herein,
the Agreement between Salk and Epitope is hereby amended as follows:
I. Section 1.2 is hereby revised to read in its entirety as
follows:
1.2 The term "PLANT BIOLOGY LABORATORY" shall mean
collectively the research laboratories at Salk devoted to
plant biology research, including, but not limited to, those
under the
direction of Xx. Xxxxxxxxxxx Xxxx and Dr. Xxxxxx Xxxxxx.
Notwithstanding the foregoing, after the Effective Date, the
term Plant Biology Laboratory shall not include the laboratory
under the direction of Dr. Xxxxxx Xxxxx.
II. Schedule A, pages 17 and 18, referring to the research of Dr.
Xxxxxx Xxxxx concerning the DET2 gene, is hereby modified as attached hereto.
Such research shall cease being
subject to this Agreement as of the Effective Date. Such research prior to the
Effective Date shall remain subject to the Agreement.
III. Schedule A, pages 22 and 23 is hereby added to and made part of
the Agreement effective as of February 25, 1997 and ending as of the Effective
Date. The research described therein conducted prior to the Effective Date shall
remain subject to the Agreement.
IV. The access fee of [ ]* per year called for in the original
Schedule A, pages 17 and 18 shall be prorated for the first year (five months of
twelve) so that the access fee obligation of Epitope under the Agreement with
regard to that research of Dr. Xxxxxx Xxxxx shall be [ ]*. The remaining
[ ]* for the first year and [ ]* per year thereafter shall be
allocated to other research within the Plant Biology Laboratory of Salk as
further delineated in Schedule A, pages 24 and 25, possibly including, but not
limited to, research already listed in Schedule A.
V. Notwithstanding anything to the contrary in the Agreement or herein,
the parties agree that Epitope shall not have a right of first negotiation with
respect to technology developed after the Effective Date in the laboratory under
the direction of Dr. Xxxxxx Xxxxx.
Except as expressly amended above, the Agreement remains in full force
and effect.
IN WITNESS WHEREOF, the parties have executed this Amendment on the
date and year first written above.
ATTEST: THE SALK INSTITUTE
FOR BIOLOGICAL STUDIES
By: /s/ X. X. Xxxxx By: /s/ Xxxxxxx X. Xxxxx
Title: Assistant Secretary Title: Executive Vice President
ATTEST: EPITOPE, INC.
By: /s/ Xxxxxxx X. Xxxxxxxx, Ph.D. By: /s/ Xxxxxx X. Xxxxx, Ph.D
Title: Sr. Vice President, R&D Title: President, CEO
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
SCHEDULE A
OPTION TO LICENSE AND RESEARCH SUPPORT AGREEMENT
BETWEEN
THE SALK INSTITUTE FOR BIOLOGICAL STUDIES
AND
EPITOPE, INC.
Technology: DET2 gene (Dr. Xxxxxx Xxxxx, lead researcher) up to July 25,
1997. DET2 encodes a steroid 5a hydroxylase and is a key
enzyme in the synthesis of brassinosteriod hormones in
plants. Ectopic expression of DET2 in transgenic Arabidopsis
leads to enhanced growth.
Patent Rights: det2 Salk File No. S96011
U.S. Serial No. [ ]*, entitled
[ ]*
Access Fee: [ ]*
Field of Use: Fruit, vegetable, and horticultural crops as defined by the
following list of plant genera and species. In those cases
where the genus name is followed by "sp.", all species of
that genus are included.
[ ]*
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
- 17 -
[ ]*
Territory: Worldwide
Exclusivity in the field of use and in the territory of option and license:
Exclusive except for [
]*, which shall be non-exclusive; and [ ]*, which shall
be exclusive for all [ ]* varieties, and non-exclusive for all [ ]*
varieties.
Initial Share of Patent Costs: [ ]
Initialed:
Epitope, Inc.
/s/ RKB Date 7/24/97
Salk Institute
/s/ DEG Date 7/24/97
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
- 18 -
SCHEDULE A
OPTION TO LICENSE AND RESEARCH SUPPORT AGREEMENT
BETWEEN
THE SALK INSTITUTE FOR BIOLOGICAL STUDIES
AND
EPITOPE, INC.
Technology: BIN1 receptor (Dr. Xxxxxx Xxxxx, lead researcher) up to July
25, 1997. BIN1 encodes a putative leucine-rich-repeat
receptor kinase that acts in brassinosteroid signal
transduction. Ectopic expression of BIN1 or activated
derivatives of BIN1 is expected to enhance growth and yield
and cause an increased resistance to disease.
Patent Rights: BIN1, Salk File No. S97020
U.S. Serial No. ------------ filed June 24, 1997, entitled
[ ]*
Access Fee: As consideration for this technology, an access fee for this
(retroactively) or other research as allocated from time to
time by Dr. Xxxxx Xxxx shall be provided by Epitope as
provided in Schedule A, pages 24 and 25.
Field of Use: Fruit, vegetable, and horticultural crops as defined by the
following list of plant genera and species. In those cases
where the genus name is followed by "sp.", all species of
that genus are included.
[ ]*
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
- 22 -
[ ]*
Territory: Worldwide
Exclusivity in the field of use and in the territory of option and license:
Exclusive except for [
]*, which shall be non-exclusive; and [ ]*, which shall
be exclusive for all [ ]* varieties, and non-exclusive for all [ ]*
varieties.
Initial Share of Patent Costs: [ ]*
Initialed:
Epitope, Inc.
/s/ RKB Date 7/24/97
Salk Institute
/s/ DEG Date 7/24/97
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
- 23 -
SCHEDULE A
OPTION TO LICENSE AND RESEARCH SUPPORT AGREEMENT
BETWEEN
THE SALK INSTITUTE FOR BIOLOGICAL STUDIES
AND
EPITOPE, INC.
Technology: That developed from research projects, in the Plant Biology
Laboratory, to which funds are specifically allocated from
time to time by Dr. Xxxxx Xxxx.
Patent Rights: None at present, except to the extent funds are used to
support research described elsewhere in this Schedule A.
Access Fee: [ ]* for the first year, [ ]*/year thereafter.
Field of Use: As specified in the appropriate Schedule A; provided,
however, that licensed technology resulting from new work
not currently listed in Schedule A shall be subject to the
following Field of Use: Fruit, vegetable, and horticultural
crops as defined by the following list of plant genera and
species. In those cases where the genus name is followed by
"sp.", all species of that genus are included.
[ ]*
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
- 24 -
[ ]*
Territory: Worldwide
Exclusivity in the field of use and in the territory of option and license:
Exclusive except for [
]*, which shall be non-exclusive; and [ ]*, which shall
be exclusive for all [ ]* varieties, and non-exclusive for all [ ]*
varieties.
Initial Share of Patent Costs: [ ]*
Initialed:
Epitope, Inc.
/s/ RKB Date 7/24/97
Salk Institute
/s/ DEG Date 7/24/97
* Bracketed material has been omitted and filed separately with the Commission
pursuant to a request for confidential treatment.
- 25 -
ASSIGNMENT OF AGREEMENT
This Assignment relates to a certain OPTION TO LICENSE AND RESEARCH SUPPORT
AGREEMENT between The Salk Institute for Biological Studies and Epitope, Inc.,
effective February 25, 1997, as amended to date, including the amendment dated
July 25, 1997 ("Agreement"). Agritope, Inc., an Oregon corporation has rights
under the Agreement as an affiliate of Epitope, Inc. As of Sept. 23, 1997,
Agritope, Inc. will no longer be an affiliate of Epitope, Inc. and, accordingly,
the parties wish to allocate the rights under the Agreement by this Assignment.
Accordingly, based on the background provided above, Epitope, Inc., and
Agritope, Inc. agree as follows:
Epitope, Inc. hereby assigns all of its rights and obligations under the
Agreement to Agritope, Inc.
IN WITNESS WHEREOF, the parties have executed this Assignment on the date and
year first written above.
ATTEST: EPITOPE, INC.
By: /s/ Xxxxx Xxxxxx By: /s/ X. Xxxxxxxx
Title: Executive Assistant Title: VP Operations
ASSIGNMENT ACCEPTED BY
ATTEST: AGRITOPE, INC.
By: /s/ Xxxxx Xxxxxx By: /s/ Xxxxxx X. Xxxxx
Title: Executive Assistant Title: President/CEO
THE ABOVE ASSIGNMENT IS SPECIFICALLY AGREED TO BY THE SALK INSTITUTE OF
BIOLOGICAL STUDIES
ATTEST: THE SALK INSTITUTE
FOR BIOLOGICAL STUDIES
By: /s/ X. X. Xxxxx By: Xxxxxxx X. Xxxxx
Title: Assistant Secretary Title: Exec. Vice President
