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EXHIBIT 10.40
THE CONFIDENTIAL PORTION OF THIS CONTRACT HAS BEEN OMITTED PURSUANT TO
REGULATION 240.25B-2(B) OF THE SECURITIES EXCHANGE ACT OF 1934, AND HAS BEEN
FILED SEPARATELY WITH THE COMMISSION.
AMENDED AND RESTATED LICENSE AGREEMENT
This Amended and Restated License Agreement ("Agreement") is effective
this 23 day of September, 1996, between University Research Corporation, a
Colorado corporation and wholly owned subsidiary of The University of Colorado
Foundation (the "Foundation") having its principal office at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("URC"), the Regents of the University of
Colorado, a body corporate, for and on behalf of the University of Colorado
having its principal office at ▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("CU"),
and United States Biochemical Corporation, an Ohio corporation having its
principal office in Cleveland, Ohio. ("USB").
WHEREAS, URC has granted to USB the exclusive rights to commercialize
certain Licensed Patents (as more fully identified herein) under that certain
License Agreement between USB, URC and the Regents of the University of
Colorado ("CU") dated September 1, 1993 (the "Prior License Agreement"); and
WHEREAS, USB's rights to commercialize such Licensed Patents were
subsequently licensed by USB to Ribozyme Pharmaceuticals, Inc., a Colorado
corporation (" RPI") pursuant to that certain Sublicense Agreement dated
September 1, 1993, between USB and RPI (the "Prior Sublicense Agreement"); and
WHEREAS, contemporaneously herewith, USB and RPI have entered into an
Amended and Restated Sublicense Agreement (the "Sublicense Agreement") granting
RPI the exclusive rights to commercialize the Licensed Patents in exchange for
the issuance of a certain number of
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Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
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shares of the Common Stock, $.01 par value, of RPI ("Common Stock") to USB, as
set forth therein; and
WHEREAS, pursuant to the Prior License Agreement, USB was obligated to
pay a royalty to URC of [ ] of Licensed Products and Licensed Services (as
those terms are defined therein) generated by sublicensees of USB, which
royalty was payable to USB by RPI under the Prior Sublicense Agreement; and
WHEREAS, in exchange for 22,500 shares of the Common Stock of RPI, URC
has agreed to amend the Prior License Agreement and to amend that certain
License Agreement between URC and RPI dated September 1, 1993 (the "RPI License
Agreement") by entering into an Amended and Restated License Agreement with RPI
of even date herewith; and
WHEREAS, contemporaneously herewith, RPI and URC have entered into a
Stock Subscription Agreement regarding URC's acquisition of Common Stock, which
agreement is part of the consideration to URC hereunder and under the Amended
and Restated License Agreement with RPI; and
WHEREAS, pursuant to Section 12.2 thereof, URC, CU and USB desire to
and do hereby amend the Prior License Agreement effective concurrently
herewith.
NOW, THEREFORE, in consideration of the foregoing and the mutual
agreements set forth herein, the parties agree as follows:
1. Definitions: In addition to the terms defined above, for purposes of
this Agreement, the following capitalized terms shall have the meanings
ascribed to them:
1.1 "Improvement" shall mean any invention the practice of which
would infringe the claims of any Licensed Patent, which invention is made by
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Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
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Herschlag and/or persons acting under the direction and control of CU prior to
the date of this Agreement.
1.2 "Improvement Patents" shall mean any patent application and
any patents issuing thereon throughout the world including any extensions,
renewals, continuations, continuations-in-part, divisions, patents of addition
and/or reissues thereof filed upon an Improvement, and to which the Foundation
or URC had the right to grant licenses during the term of the Prior License
Agreement.
1.3 "Licensed Method" shall mean any method, process, or procedure
which would infringe any valid claim in a Licensed Patent but for the existence
of this License and which involves the manufacture, use or sale of a Licensed
Product.
1.4 "Licensed Patents" shall mean U.S. Patent Application Serial
No. 427,707, filed on October 26, 1989, entitled "Ribozyme Inhibitors" and U.S.
Patent Application Serial No. 496,852, filed on November 21, 1990, entitled
"Site Specific Cleavage of Single-Stranded DNA" and any patents issuing
therefrom (including, without limitation, U.S. Patent No. 5,180,818), and any
corresponding foreign patent applications and patents that may issue thereon
throughout the world, and all extensions, renewals, divisions, continuations,
continuations-in-part, patents of addition, and/or reissues thereof and all
Improvement Patents.
1.5 "Licensed Product" shall mean any product covered by a valid
claim in a Licensed Patent, sold by or for USB for use as (by way of
illustration and not of limitation) research reagents, diagnostic products,
pharmaceutical products, agricultural products, veterinary products, cell
culture and/or fermentation products, or otherwise.
1.6 "Licensed Service" shall mean any service which is performed
for remuneration by USB or a sublicensee for a third party which would infringe
any valid claim of a Licensed Patent but for the existence of this Agreement
and which does not involve the manufacture, use or sale of a Licensed Product.
2. License:
2.1 Grant: URC and CU hereby grant to USB an exclusive,
world-wide fully paid license under the Licensed Patents including, without
limitation, the right to manufacture, use
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Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
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and sell the subject matter described and claimed therein. The license
includes the right to grant sublicenses to third parties on terms and
conditions deemed reasonable in USB's sole discretion subject to the provisions
of this Agreement. URC acknowledges that USB has entered into the Sublicense
Agreement with RPI granting to RPI an exclusive license to commercialize the
Licensed Patents in all fields. The license granted under this Agreement shall
be irrevocable.
2.2 Transfer of Biological Materials: Subject to any pre-existing
restrictions imposed on it, CU shall promptly provide to USB any and all
biological materials in its possession necessary to utilize the Licensed
Patents and shall permit USB and its sublicensee RPI to use those materials in
further research, development and commercialization of that technology and the
exercise of its rights under this Agreement.
2.3 Exclusivity: During the term of the License Agreement URC and
CU shall not retain or grant to any third party any rights inconsistent with
the exclusive license to USB, except to the extent that: (1) CU may utilize
the subject matter of the Licensed Patents only for academic, non-commercial
research conducted at CU, and (2) third parties may utilize the subject matter
of the Licensed Patents for academic, non-commercial research to the extent
permitted by 35 U.S.C. Section 200 et seq. and 37 CFR Section 401 and required
by prior agreement(s) for funding from the National Institutes of Health to CU
and University Technology Corporation through the ▇▇▇▇▇▇ ▇▇▇▇▇▇ Medical
Institute.
3. Payments: As consideration in full for the license granted by URC to
USB hereunder, and the benefit to RPI of same, RPI has issued to URC a total
of 68,688 shares of its Common Stock. With the execution hereof, such Common
Stock shall be fully-paid, non-assessable and validly issued to URC.
Contemporaneously herewith, URC has executed a Subscription Agreement for
22,500 such shares of Common Stock containing such representations, warranties
and covenants as RPI has deemed necessary for compliance with applicable
federal and state securities laws. The parties acknowledge that the issuance
of such Common Stock to URC by RPI is also in consideration for that certain
Amended and Restated License Agreement between URC and RPI of even date
herewith.
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Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
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4. Patents: USB, either directly or through its sublicensee RPI, shall
be responsible for the acquisition and maintenance of Licensed Patents subject
to the following:
4.1 Filing and Maintenance: USB shall apply for, prosecute and
maintain Licensed Patents as it deems appropriate in its sole discretion using
counsel of its own choice, provided that USB shall be reasonably diligent in
the prosecution of such patent applications. USB shall provide to URC copies
of each application and all Patent Office actions and responses. All patents
obtained by USB shall be issued in the name of URC as the assignee and owner.
USB shall advise URC of its intention to abandon any such patent application or
patent thirty (30) days prior to taking such action. Thereafter, all rights in
the application or patent shall automatically revert to URC.
4.2 Expenses: USB shall bear the expenses associated with the
filing, prosecution and maintenance of Licensed Patents including, without
limitation, filing, maintenance, and attorneys' fees.
5. Patent Enforcement:
5.1 Enforcement Actions: CU and URC shall promptly notify USB of
any facts which come to their attention indicating that a third party is
violating any of the Licensed Patents. USB (or its sublicensee RPI) shall take
whatever action it deems appropriate to enforce the Licensed Patents in its
sole discretion and at its expense. At the request of USB, CU and URC shall
join in as parties to any enforcement action at USB's expense, provided that
any expenses incurred by CU and URC in connection therewith are approved in
advance by USB and are reasonable in amount. If USB (or its sublicensee RPI)
does not enforce the Licensed Patents against a particular infringer, then USB
shall give notice to CU and URC, and CU and URC may take action to enforce the
Licensed Patents against that infringer in their own names and at their own
expense after giving reasonable prior written notice to USB. CU and URC shall
be entitled to retain the proceeds of any enforcement action initiated and
maintained by either or both of them pursuant to the preceding sentence.
5.2 Expenses of Enforcement: USB shall bear all expenses, e.g.,
costs, attorneys' fees and expert witness fees, incurred by it in connection
with the enforcement of any Licensed Patent.
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Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
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6. Defense of Patent Rights:
6.1 Declaratory Judgment Actions: In the event a third party
brings an action to obtain a declaration of patent invalidity of a Licensed
Patent (a "DJ Action") against CU, URC or USB (or its sublicensee RPI), the
named defendant(s) shall have the first right to defend said action at its own
cost and expense and to control ensuing litigation. If the named defendant
elects not to defend the DJ Action, the other parties may elect to defend that
action at its own cost and expense and to control the ensuing litigation. In
the event that USB (or its sublicensee RPI) and either or both of CU and/or URC
are named as parties to the DJ Action and either CU and/or URC elect to defend
the action, RPI shall be responsible for the expenses incurred by CU and URC in
connection therewith, provided that such expenses are approved in advance by
RPI and are reasonable in amount. If CU, URC and or USB (or its sublicensee
RPI) finally loses the DJ Action and one or more claims in a Licensed Patent
are held to be invalid, this Agreement and the license granted to USB hereunder
shall continue to the extent that the manufacture, use or sale of Licensed
Products or Licensed Services are covered by any remaining valid claim(s) in
any other Licensed Patent.
6.2 Third Party Patents:
6.2.1 Defense: A party shall notify the others in the
event that it learns that a third party alleges, asserts or otherwise
claims, formally or informally, or brings an action alleging, or in
the event USB (or its sublicensee RPI) forms a good faith belief, that
use of all or any portion of the rights granted to USB may violate any
patent or other intellectual property right of a third party. CU and
URC shall assist USB in the evaluation and defense thereof to the
extent reasonably requested by USB and at USB's expense provided that
any expenses incurred by CU and URC in connection therewith are
approved in advance by RPI and are reasonable in amount. CU and URC
shall not have an obligation to defend USB. USB (or its sublicensee
RPI) shall have the right to defend the allegation at its own cost and
expense and to control any ensuing legal action.
6.2.2 Resolution: In an effort to avoid the expenses of
defending against a patent infringement action and to permit USB to
continue to use the rights granted
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Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
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hereunder, USB (after consulting with URC) shall be entitled to settle
or compromise the infringement allegation as it deems appropriate
including, without limitation, entry into a cross-license, including
the sublicensing of rights granted under this Agreement, with the
third party on terms (including the amount of the royalty rate, if
any) which USB (and its sublicensee RPI) deems to be reasonable in its
discretion and, which at the time of the settlement or compromise,
provide comparable mutual benefits to the licensed parties. Provided
that the rights received by USB under such cross-license are necessary
to practice all or part of the rights granted under this Agreement, as
determined by USB after conferring with CU and URC, then the
reciprocal rights granted by USB to the third party under the
cross-license shall be free of any royalty to URC.
7. Term and Termination:
7.1 Term: This Agreement shall remain in effect until the last of
the Licensed Patents has expired.
7.2 Effect of Termination: Unless otherwise agreed by the parties
in writing, the termination of this Agreement for any reason shall not affect
the rights or obligations of either party arising prior thereto (including,
without limitation, the obligation of USB under paragraph 11.6 to indemnify CU
and URC for acts occurring prior to the termination) and shall not terminate or
otherwise adversely affect any sublicenses granted by USB under this Agreement,
including, without limitation, the sublicense granted to RPI, which sublicenses
shall be assigned to CU and URC.
8. Warranties and Representations:
8.1 USB: USB represents and warrants that it has taken all action
necessary to enter into this Agreement, that it has all rights and authority
necessary to enter into this Agreement and to perform its obligations
hereunder, and that the execution of this Agreement by USB and the performance
of its obligations hereunder will not violate any contractual obligation to any
third party or any obligation imposed on USB as a matter of law.
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Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
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8.2 CU and URC: CU and URC represent and warrant that they have
taken all action necessary to enter into this Agreement, that they have all
rights, title and authority necessary to enter into this Agreement, to convey
the rights granted hereunder and to perform their obligations hereunder, and
that the execution of this Agreement by CU and URC and the performance of their
obligations hereunder will not violate any contractual obligation to any third
party or any obligation imposed on CU or URC as a matter of law. Further, CU
and URC represent and warrant that they have not previously entered into any
agreement which conveys any rights in Licensed Patents to any third party and
that no third party may validly object to CU and URC's entry into this
Agreement with USB. CU AND URC EXPRESSLY DISCLAIM ANY REPRESENTATION OR
WARRANTY THAT THE LICENSED PATENTS ARE VALID PATENTS OR THAT THEY WILL SURVIVE
LITIGATION, THAT THE USE OR PRACTICE OF THE LICENSED PATENTS WILL NOT INFRINGE
THE RIGHTS OF ANY THIRD PARTY, THAT ANY LICENSED PATENTS CAN BE EMPLOYED IN
CLINICAL APPLICATIONS OR THAT THE LICENSED PRODUCTS, LICENSED SERVICES AND
LICENSED METHODS WILL BE OF ANY COMMERCIAL VALUE TO RPI WHATSOEVER, AND NO SUCH
REPRESENTATIONS OR WARRANTIES SHOULD BE IMPLIED. USB AGREES THAT IT IS
OBTAINING THE LICENSES HEREIN GRANTED WITHOUT ANY REPRESENTATION OF VALUE,
MERCHANTABILITY OR FITNESS FOR USE.
9. Preference for U.S. Industry:
In view of Public Law 96-517, Public Law 98-620 and regulations
thereunder, USB agrees that any Licensed Product covered by Licensed Patents or
produced through the use of a Licensed Method for sale in the United States of
America will be manufactured substantially in the United States of America,
unless a waiver of such obligation is obtained from the Federal Agency which
supported in whole or in part said invention. USB shall include the foregoing
provision in any sublicense(s) it grants hereunder.
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Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
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10. Dispute Resolution:
10.1 Submission to Presidents: In the event of any dispute
regarding the interpretation or enforcement of this Agreement, any party hereto
may have the dispute referred to the Presidents of the respective parties (the
"Presidents") for good-faith resolution. The resolution by the Presidents
shall be final and binding on the parties.
10.2 Arbitration: Any controversy concerning the interpretation
or enforcement of this Agreement shall be settled by final and binding
arbitration in accordance with the then existing rules of the American
Arbitration Association, and judgment upon the award rendered by the
arbitrators may be entered in any court having jurisdiction over the party
against whom the award is entered. Arbitration of disputes referred to the
Presidents may not be initiated unless the Presidents cannot agree to a
resolution within thirty (30) days after submission to them. The arbitration
shall be conducted in Boulder, Colorado. Any such arbitration proceeding shall
be heard before a panel of three arbitrators, one to be designated by USB,
another to be designated by CU and URC, and a third to be agreed upon by the
other two arbitrators; provided, however, that if the two party-appointed
arbitrators are unable to agree on a third arbitrator within thirty (30) days
after the second arbitrator is appointed, the third arbitrator shall be
selected by the American Arbitration Association. The arbitrators may award
any remedy provided under this Agreement or otherwise available in law or in
equity and shall award to the prevailing party and assess against the others
the costs, arbitration fees (including the fees of the American Arbitration
Association and the arbitrators) and reasonable attorneys' fees incurred by the
prevailing party in connection with the dispute.
10.3 Exclusive Procedures: The dispute resolution procedures
specified in this paragraph 10 are the exclusive procedures for dispute
resolution regarding the interpretation and enforcement of this Agreement.
11. General Provisions:
11.1 Notices: Any payment or notice to be made hereunder shall be
sufficiently made or given, effective on the day of receipt, by: (a) personal
delivery; (b) United States mail, duly certified or registered; or (c) by
delivery by a recognized national courier service, with postage or fee prepaid
and addressed as follows:
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Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
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To URC: University Research Corporation
Foundation Center
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Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, President
With a copy to:
Boulder Ventures
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▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇ ▇▇▇▇▇▇▇
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Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
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To CU: University Technology Corporation
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▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇ ▇▇▇▇▇▇▇▇, Assistant Vice President
To USB: United States Biochemical
Corporation ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ Attention:
▇▇▇ ▇▇▇▇, President
Any party may, from time-to-time, by written notice to the others in
the manner specified, designate a different address or representative to
receive notice.
11.2 Amendment: This Agreement may not be altered, amended or
modified, except in a writing executed by CU, URC and USB.
11.3 Non-Waiver: Failure by a party to enforce any provision of
this Agreement or to assert a claim because of a breach hereof shall not be
deemed a waiver of the right to enforce the same or any other provision of this
Agreement for a subsequent breach.
11.4 Construction: This Agreement shall be interpreted and
construed under the substantive laws of the State of Colorado.
11.5 Assignability: Neither this Agreement nor the rights and
obligations hereunder may be assigned or transferred by CU or URC without the
express prior written permission of USB, except that CU and URC may assign
their rights or obligations hereunder to a related entity owned or controlled
by either or both of them. This Agreement shall inure to the benefit of and
shall be binding upon USB and its successors and assigns.
11.6 Indemnification: USB agrees to indemnify and hold harmless
URC, CU and the inventors of the Licensed Patents from any and all claims,
damages and liabilities asserted by third parties arising from USB's sale of
Licensed Products and/or the purchaser's use thereof. CU and URC shall
promptly notify USB of any such claim or action, shall permit USB to direct the
defense thereof and shall not settle any such claim or action without the prior
written consent of USB.
11.7 Force Majeure: No party shall be liable in damages or have
the right to terminate this Agreement for any delay or default in performing
hereunder if such delay or default is
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Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
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caused by conditions beyond its control including, without limitation, acts of
God, government restrictions, wars or insurrections.
11.8 Further Assistance: CU and URC shall execute such further
documents and take such further action as may be requested by USB to effect
their obligations under this Agreement. USB shall execute such further
documents and take such further action as may be requested by CU and/or URC to
effect its obligations hereunder.
11.9 Non-use of Names: Nothing contained herein shall authorize
USB or its sublicensees to use the names of CU, URC or the Foundation in
advertising or promotional materials for any product sold to the public or
shall authorize CU or URC to use the name of USB or RPI in any print or
electronic media disseminated to the public, without the express prior written
authorization of the entity whose name is to be used. Subject to the
foregoing, the parties may advise others of the existence and nature of this
Agreement. The parties shall agree to the content of a joint announcement
regarding the execution of this Agreement.
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Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.
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11.10 Independent Contractors: The parties acknowledge that each of
them is acting as an independent contractor in the exercise of its rights and
the performance of its obligations under this Agreement. Nothing contained
herein shall be construed as making USB the agent of CU or URC, as making CU or
URC the agent or USB or as creating a partnership or joint venture between any
of the parties.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be duly executed as of the date first above written.
UNIVERSITY RESEARCH UNITED STATES BIOCHEMICAL CORPORATION
CORPORATION
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ By: /s/ ▇▇▇ ▇▇▇▇
Title: President Title: President
Date: September 23, 1996 Date: September 23, 1996
UNIVERSITY TECHNOLOGY CORPORATION
ON BEHALF OF
THE UNIVERSITY OF COLORADO
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Title: President
Date: September 26, 1996
ACKNOWLEDGED AND AGREED TO:
THE UNIVERSITY OF COLORADO
FOUNDATION
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Title: President
Date: September 23, 1996
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Confidential portions ( [ ] ) have been omitted pursuant to regulation
240.25b-2(b) of the Securities Exchange Act of 1934, and have been filed
separately with the Commission.