TECHNOLOGY TRANSFER AND LICENSE AGREEMENT
Between
CASE WESTERN RESERVE UNIVERSITY
and
OSIRIS THERAPEUTICS, INC.
This agreement effective as of the 1st day of January, 1993 ("Effective
Date"), is between OSIRIS THERAPEUTICS, Inc., corporation domiciled in the
State of Ohio having an address at ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇
("OSIRIS"), and Case Western Reserve University, an Ohio non-profit
corporation having Its principal office at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇,
▇▇▇▇ ("CWRU").
BACKGROUND
CWRU, with principal activities in teaching and scholarship, makes its
capabilities available to commercial entities for research to the extent that
it complements and does not conflict with CWRU's principal activities. In this
spirit, CWRU is prepared to continue Its development relationship with OSIRIS
(a company created to commercialize the mesenchymal stem cell technology) and
to license the Technology, as that Item is defined in Article X below,
including that established by ▇▇. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ while working as a full-
time professor at CWRU. This license transfers the state-of-the-art of the
mesenchymal stem cell technology to OSIRIS, according to the terms and
conditions set forth below. This state-of-the-art includes patents and know-
how. Future. patents based on
this know-how will be made in the name of CWRU and will be covered by the
royalty agreement stated herein If substantially invented at CWRU in the
future.
AGREEMENT
ARTICLE I: LICENSE
1.1 Grant and Subject Matter. CWRU grants OSIRIS a sole and exclusive
worldwide License, under Technology, Existing Patent Rights (to the extent not
owned by OSIRIS) and Developed Patent Rights ("License") to make, have made,
use and sell Product and Process (terms defined in Section 10), including the
right to grant sublicenses.
1.2 Term of Agreement. This Agreement shall be in full force and effect
from the date first set forth above and shall remain in effect for twenty-five
(25) years or until all patents Issued in all countries in accordance with this
License hereunder have expired or until otherwise terminated by operation of
law, whichever is last to occur, or by the acts of the parties in accordance
with the terms of this Agreement.
1.3 Retained Rights. CWRU will retain a royalty-free right to use the
Technology and patent rights of the License for any nonclinical research,
testing or educational purpose of CWRU. In no event shall CWRU have any right
to use the Technology or the patent rights of the License for any commercial
purpose whatsoever. In addition, the License will be subject to such rights as
are required to be accorded to any governmental agency as a consequence of
prior or contemporaneous funding for research or development of the subject
matter of the License.
1.4 Sublicenses. OSIRIS agrees to forward to CWRU a copy of any and all
fully executed sublicense agreements, and further agrees
to forward annually a copy of such reports received by OSIRIS from Its
sublicensees during the preceding twelve (12) month period under the
sublicenses as shall be pertinent to a royalty accounting to CWRU under said
sublicense agreement.
1.5 The license granted under Existing Patent Rights is royalty-free.
1.6 The license granted under Developed Patent Rights is royalty-
bearing as provided in Paragraph 6.2.
ARTICLE II: TITLE
Except as provided in Section 3.1, CWRU shall retain title to the
subject matter of the License.
ARTICLE III: PATENTS
3.1 To the extent permitted by existing obligations, CWRU hereby
assigns all right, title and interest in and to Existing Patent Rights to
OSIRIS. OSIRIS shall bear all responsibility for, and shall take all actions
in connection with, the prosecution of the Existing Patent Rights. CWRU shall
cooperate with OSIRIS with respect to such prosecutions.
3.2 New Applications. CWRU shall own all Developed Patent Rights. In
the event either party hereto believes a patent application should be filed
with respect to the Technology, such party shall notify the other party hereto.
If OSIRIS fails to file such application within sixty (60) days after the date
of such notice, CWRU shall have the right to file the application in its own
name, at its own expense; provided, however, that CWRU's application must be
filed within six (6) months after the expiration of OSIRIS' sixty (60) day
filing period.
If CWRU does not file within such six-month period, CWRU must give a new
notice to OSIRIS, and the process described above must be repeated in its
entirety, before CWRU shall have the right to file such application.
3.3 OSIRIS shall own any patent application which is directed to an
invention made by an employee of OSIRIS or by an Investigator when the
Investigator is working on the premises of OSIRIS.
3.4 Cost. OSIRIS will pay the cost of all patent applications filed by
it pursuant to Section 3.2.
3.5 Reports. The party filing the patent application pursuant to
Section 3.2 above shall keep the other informed in a timely manner of the
status of the application.
3.6 Infringement. Each party shall promptly notify the other party if
it becomes aware of any infringement of any patents licensed as part of this
Agreement. Neither OSIRIS nor CWRU shall have any obligation to Initiate
litigation to protect any patent or proprietary right granted under this
Agreement. However, each party will have the unqualified right to Initiate
legal action, or to fully participate in any legal action Initiated by the
other party, to protect its interests. In any litigation, each party and
their respective attorneys will cooperate with the other party. If OSIRIS
elects to institute suit against any third party to protect any patent or
proprietary rights granted under this Agreement, fifty percent (50%) of
associated costs (including reasonable attorneys' fees) which have been paid
by OSIRIS may be offset against royalties owed to CWRU pursuant to Article
VI, but such offsetting shall not exceed fifty percent (50%) of the total
royalties owed to CWRU. All damages awarded in any suit will belong
exclusively to the party Initiating the suit, except that
the amounts offset pursuant to this Section 3.6 will be reimbursed to CWRU
from damages awarded to OSIRIS after OSIRIS's own legal costs have been
reimbursed.
3.7 In the event that litigation against OSIRIS is Initiated by a third-
party charging OSIRIS with Infringement of a patent of the third party as a
result of the manufacture, use or sale by OSIRIS of Product or Process for
which royalties are due to CWRU hereunder, OSIRIS shall promptly notify CWRU
in writing thereof. OSIRIS's costs as to any such defense shall be creditable
against any and all payments due and payable to CWRU under Article VI of this
Agreement but no royalty payment after taking into consideration any such
credit shall be reduced by more than 50%.
ARTICLE IV: CONFIDENTIALITY
4.1 Confidentiality. CWRU and OSIRIS agree to advise their respective
employees that it is necessary to hold in confidence all information received
from the other party in connection with the License ("Information") for a
period of two years following disclosure. The receiving party will use
reasonable efforts to prevent disclosure of such Information during such
period. This Section 4.1 shall not apply, however, to Information which:
(i) is now in or shall enter the public domain as the result of
its disclosure in a publication, the issuance of a patent or otherwise
without the legal fault of the receiving party;
(ii) the receiving party can prove was in Its possession in
written form at the time of disclosure by the other party; or
(iii) comes into the hands of the receiving party by means of a
third party who is entitled to make such disclosure and who has no
obligation of confidentiality toward the disclosing party.
(iv) where disclosure is required under any applicable ruling,
regulation or law, including but not limited to regulatory filings.
(v) where disclosure is made through the filing of a patent
application.
Notwithstanding the foregoing, OSIRIS can disclose information to a
third party under an obligation of confidentiality similar to the obligation of
confidentiality under this agreement.
4.2 Remedies. Each party shall be entitled to injunctive relief if
there is a threat that Information that is the subject matter of the License
will be disclosed by the other party contrary to the terms of this agreement.
Each party shall notify the other party in writing of any proposed release of
Information thirty (30) days prior to release of such Information. The party
receiving such notice will have thirty (30) days to review the materials and
shall not unreasonably withhold permission for the Information to be released.
4.3 (a) During the period in which OSIRIS holds a license, CWRU and
Investigators (as defined in Paragraph 10.9) shall not, without OSIRIS' prior
written approval, distribute or allow Material (as defined in Paragraph 10.8)
to be distributed to for-profit entities or persons known to be employed
thereby or consulting or performing research therefor.
(b) CWRU and Principal Investigator (as defined in Paragraph 10.7)
shall have the right to transfer Material to not-for-profit entities or persons
known to be affiliated therewith provided that such entities
or persons sign a material transfer agreement mutually agreed to by the
parties to this Agreement.
(c) Prior to any such distribution of any such Material, CWRU and
OSIRIS shall use best efforts to consider the patentability of such Material
and cooperate to file, where appropriate, a patent application for such
Material prior to Its distribution, in accordance with Article III of this
Agreement.
ARTICLE V: PUBLICATION
CWRU will provide OSIRIS with a copy of any proposed publication
relating to the Technology thirty (30) days prior to their submission for
publication. OSIRIS will have thirty (30) days from the date of receipt of
each such proposed publication to review the materials. Upon receipt within the
thirty-day (30) period of a written notice from OSIRIS identifying those
portions of the proposed publication for which it wishes publication delayed,
CWRU will use its best efforts either to cause the materials identified to be
deleted or to cause publication to be delayed for ninety (90) days
ARTICLE VI: ROYALTIES, CONSIDERATION AND PAYMENTS
6.1 Payment. OSIRIS agrees to pay to CWRU an amount equal to $83,061
for the licenses and rights granted under this Agreement and for the filing and
prosecution of Existing Patent Rights. Such amount shall be paid within
thirty (30) days of the initial financing of OSIRIS, which financing shall be
in an amount of at least $2,000,000, ("Initial Capitalization").
6.2 Royalties. As consideration for the License, OSIRIS will pay CWRU
a royalty on all Product or Process providing that such Product or Process
where sold is covered by a claim of a granted patent which is a Developed
Patent Right licensed under this Agreement ("Royalty Bearing Product") as
follows.
(i) [*CONFIDENTIALITY REQUESTED*] of the Net Sales of Royalty Bearing
Products sold by OSIRIS; and
(ii) [*CONFIDENTIALITY REQUESTED*] of the royalties received by OSIRIS
from Its SUBLICENSEES' sales of a Royalty Bearing Product.
Provided, however, that with respect to each Royalty Bearing -Product
covered under either (I) or (II) above, no royalty shall be payable for the
first three years in which such Royalty Bearing Product is sold. Net Sales
shall be defined as the amount received from sales of all Royalty Bearing
Products less discounts, returns, transportation costs, insurance costs and
taxes of any kind whatsoever.
6.3 Royalty Payments. (a) Royalties due will be paid to CWRU every
year for the term of this Agreement on the 31st of March, and shall be
calculated according to the Net Sales of all Royalty Bearing Products during
the calendar year immediately preceding the year in which such royalty payments
are due. Each royalty payment shall be accompanied by an accounting showing
the calculation of net sales for the calendar year in question.
6.4 In the event that royalties are to be paid by OSIRIS to a party who
is not an Affiliate of OSIRIS for Royalty Bearing Product ("Other Royalties"),
for which royalties are also due to CWRU pursuant to Paragraph 6.2 then the
royalties to be paid to CWRU by OSIRIS pursuant to Paragraph 6.2 shall be
reduced by 50% of the amount of such Other
Royalties, but in no event shall any royalties under Paragraph 6.2 be reduced
by more than fifty percent (50%).
6.5 Equity Interest to CWRU. CWRU will be sold 1,200 shares of
OSIRIS' Common Stock based on the Founders' capitalization in Appendix A.
The Initial Capitalization shall mean the first capitalization of the company
in which the total capital contribution is at least two million dollars. The
selling price shall be $0.10 per share. The shares will be sold in accordance
with a Restricted Stock Purchase Agreement which contains terms among others
that prior to an initial public offering OSIRIS or its designee will have a
right of first refusal with respect to a any transfer of the shares; and that
the shares will be subject to underwriter "lock-up" restrictions in any
underwritten offering.
6.6 Foreign currency conversions. When royalties accrue for currencies
other than United States dollars, payment to CWRU shall be in United States
dollars converted from that foreign currency at the average of the rates
established by BankAmerica for that foreign currency on the last business day
of each month of the calendar year which ended immediately preceding the day on
which OSIRIS pays such royalties to CWRU.
6.7 Audit Rights. CWRU has the right to inspect any books or records
of OSIRIS containing information which may be reasonably necessary for the
purpose of verifying the royalties payable to CWRU. This inspection is to be
made by an independent certified public accountant of CWRU's choice to whom
OSIRIS has no reasonable objection. The inspection is to be done at the
expense of CWRU, upon reasonable notice, during normal business hours and no
more than once per year.
6.8 Initial Capitalization. If, by December 31, 1993, OSIRIS has not
received funding of at least $2 million ($2,000,000), this Agreement shall
terminate, unless extended by mutual agreement and OSIRIS shall, at its sole
expense, transfer to CWRU all right, title and interest in the Existing Patent
Rights.
6.9 Minimum Performance. if, after the sixth anniversary of the
Initial capitalization of OSIRIS, payments due to CWRU under Article VI fall
below fifty thousand dollars ($50,000) per year, the License granted by this
Agreement shall be terminated unless OSIRIS pays CWRU the difference between
the amount due and fifty thousand dollars ($50,000), unless extended by mutual
agreement.
ARTICLE VII: BREACH AND TERMINATION
7.1 Breach. If either party at any time commits any material breach of
the Agreement and fails to remedy It within thirty (30) days after receiving
written notice of the breach or such additional time as may be reasonably
required to effect the cure so long as the curing party Is continuing to
diligently pursue its efforts to cure, the aggrieved party may, at its option,
cancel this Agreement by notifying the other in writing. This remedy is in
addition to any other remedies to which it may be entitled. Any failure
to cancel this Agreement for any breach will not constitute a waiver by the
aggrieved party of its right to cancel this Agreement for any other breach
whether similar or dissimilar in nature.
7.2 Bankruptcy. CWRU may terminate this Agreement if OSIRIS files or
has filed against it a petition in bankruptcy which is not dismissed within
thirty (30) days, or files an assignment for benefit of creditors, or if a
receiver is appointed for all or part of its assets, or if it petitions for or
consents to any relief under any applicable insolvency,
moratorium or similar statute. All rights and licenses granted to OSIRIS under
or pursuant to this Agreement are, and shall otherwise be deemed to be, for
purposes of Section 365(n) of the U.S. Bankruptcy Code, licenses of rights
to "intellectual property" as defined under Section 101(60) of the Bankruptcy
Code. The parties hereto agree that so long as OSIRIS, as a licensee of
such rights under this Agreement, shall continue to perform all obligations
under this Agreement, including but not limited to the making of timely
royalty payments, OSIRIS shall retain and may fully exercise all of its rights
and elections under the Bankruptcy Code, and pursuant to Section 365(n),
OSIRIS shall have the right to receive all current embodiments of the licensed
intellectual property. The parties hereto further agree that, in the event
that CWRU files or has filed against it a petition in bankruptcy which Is not
dismissed within thirty (30) days, or files an assignment for benefit of
creditors, or if a receiver Is appointed for all or part of its assets, or if
it petitions for or consents to any relief under any applicable insolvency,
moratorium or similar statue, OSIRIS shall have the right to retain and
enforce Its rights under this Agreement with respect to the Technology,
Existing Patent Rights and Developed Patent Rights.
7.3 Force Majeure. Each of the parties will be excused from
performance of this Agreement only to the extent that performance Is prevented
by conditions beyond the reasonable control of the party affected. The parties
will, however, use their best efforts to avoid or cure such conditions. The
party claiming such conditions as an excuse for delaying performance will give
prompt written notice of the conditions, and its intent to delay performance,
to the other party and will resume its performance as soon as performance Is
possible.
7.4 Effect of Termination. OSIRIS' License shall terminate
simultaneously with any termination of this Agreement. Except as provided in
Section 6.8 above, expiration, cancellation or termination of this Agreement
will not affect any previously vested or accrued rights of either party under
this Agreement. Upon termination of this Agreement by either party, in whole
or as to any specified patent or any claim of such patent, OSIRIS shall provide
CWRU with a written inventory of all products affected by such termination in
process of manufacture, in use or in stock and shall request each sublicensee
to provide such written inventory. OSIRIS and Its sublicensees shall have the
right to sell off such inventory unless OSIRIS is the subject of a pending or
threatened product liability claim.
7.5 Effect of termination of this Agreement on sublicenses. Any
sublicense granted by OSIRIS under this Agreement shall provide for automatic
assignment to CWRU of OSIRIS interest therein upon termination of this
Agreement. CWRU agrees to accept such assignment and the sublicense shall
remain in full force and effect as a direct license from CWRU in accordance
with the terms and conditions thereof. CWRU agrees to confirm in writing Its
obligations under this Paragraph to a sublicensee at the request of OSIRIS.
7.6 Termination. OSIRIS shall have the right to terminate this
Agreement or any of the licenses granted hereunder in any country upon
providing CWRU with sixty (60) days prior written notice.
ARTICLE VIII: REPRESENTATIONS AND WARRANTIES
8.1 Agreements. Each party represents that, to the best of its
knowledge, this Agreement does not violate any of its prior commitments or
agreements.
8.2 Claims. Each party represents that, to the best of Its knowledge,
there are no legal actions, pending or threatened, which would question this
Agreement or the right of either party to perform its obligations under
this Agreement.
8.3 Authorization by CWRU. CWRU warrants that execution and
performance of this Agreement have been duly authorized by all necessary
corporate actions.
8.4 Authorization by OSIRIS. OSIRIS warrants that execution and
performance of this Agreement have been duly authorized by all necessary
corporate actions.
8.5 Patentability, Infringement. CWRU makes no representation or
warranties of any kind other than those of this Article VIII including but not
limited to warranties of patentability, merchantability or fitness for a
particular purpose.
8.6 CWRU represents that to the best of its knowledge, CWRU owns all
right, title and interest in and to Existing Patent Rights and that all
Investigators will be obligated to assign all right, title and interest in and
to Technology and Developed Patent Rights to CWRU.
ARTICLE IX: MISCELLANEOUS
9.1 Indemnification.
(a) OSIRIS will defend, indemnify and hold CWRU harmless from any loss,
cost, damage, liability or expense imposed, on CWRU as a
result of any third party claim arising from OSIRIS' use, application or
marketing of any Product or Process arising from this Agreement.
(b) CWRU will defend, indemnify and hold OSIRIS harmless from any loss,
cost, damage, liability or expense imposed on OSIRIS as a result of any claim
arising from CWRU's breach of any term or provision of this Agreement.
(c) The party to be indemnified shall promptly notify the indemnifying
party of any claim to be indemnified. The indemnifying party shall have the
right to control the defense, settlement or compromise of any claim.
9.2 Insurance. OSIRIS shall not commence selling on a commercial basis
of any Products in connection with this License until it has obtained for
itself or for CWRU at Its own cost or special arrangements and expense,
comprehensive general liability and products liability insurance with limits of
at least [*CONFIDENTIALITY REQUESTED*] per occurrence/[*CONFIDENTIALITY
REQUESTED*] aggregate, and naming CWRU as additional insured. Upon the start of
human clinical trials of any Product OSIRIS shall obtain comprehensive general
liability insurance in accordance with the foregoing. Such insurance shall be
provided by insurers of recognized responsibility and well-rated by national
organizations, and each policy shall state that the insurer will not terminate
it or significantly reduce coverage without giving CWRU at least forty-five
(45) days prior written notice. The product liability insurance shall provide
worldwide coverage and shall be on an "occurrence" basis. If such insurance
is not available when OSIRIS is ready to commence human clinical trials or
selling Products, CWRU agrees to waive the insurance requirement until such
insurance becomes available if and only if OSIRIS has and maintains a net
worth of at least [*CONFIDENTIALITY REQUESTED*]
as determined by a review of OSIRIS' books conducted at OSIRIS' expense by an
independent firm of certified public accountants mutually satisfactory to CWRU
and OSIRIS. After the Initial review, CWRU may have further reviews conducted
from time to time, but not more than once each year.
9.3 Sublicense. OSIRIS shall require all of Its sublicensees hereunder
to indemnify and hold harmless CWRU under the same terms as stated in Section
9.1(a) and to carry comprehensive general liability insurance and product
liability insurance with limits of at least [*CONFIDENTIALITY REQUESTED*] per
occurrence/[*CONFIDENTIALITY REQUESTED*] aggregate naming CWRU as an
additional insured under the same terms as Section 9.2.
9.4 Independent Contractors. OSIRIS and CWRU are independent
contractors, and neither shall have any responsibility for the work performed
by or on behalf of the other except to the extent expressly set forth in this
Agreement.
9.5 Use of Name. OSIRIS will not use the name of CWRU, related schools
or departments in any publication or marketing materials without the written
consent of CWRU. CWRU will not use the name of OSIRIS in any publication or
marketing materials without the written consent of OSIRIS.
9.6 Assignment. This Agreement Is not assignable or transferable
except with the written consent of both parties; consent will not be withheld
unreasonably, except that OSIRIS without the consent of CWRU may assign this
Agreement to an Affiliate or to a transferee of all or substantially all of
the portion of the business to which this Agreement relates. Any such
assignee or transferee of OSIRIS' interest shall expressly assume in writing
the performance of all of the terms and
conditions of this Agreement to be performed by OSIRIS and such assignment
shall not relieve OSIRIS of any of its obligations under this Agreement. Any
assignment or transfer without such consent or covered by such exception
shall be void.
9.7 Registration. OSIRIS agrees to register this Agreement when
required by local or federal law and to pay all costs and legal fees connected
with such registration.
9.8 Successors and Assigns. The terms and provisions of this Agreement
shall inure to the benefit of and be binding upon the respective successors,
permitted assigns and legal representatives of the parties hereto.
9.9 Choice of Law. This Agreement shall be governed by and construed
in accordance with the laws of the State of Ohio, excluding that body of law
applicable to choice of law.
9.10 Headings. The headings and captions used in this Agreement do not
form part of this Agreement, but are included solely for convenience.
9.11 Notices. All notices required or permitted under this Agreement
shall be given in writing and shall be deemed effectively given upon personal
delivery to the party to be notified or five (5) days after deposit with the
United States Postal Service, by registered or certified mail, postage prepaid
and addressed to the party to be notified at the address indicated for such
party below, or at such other address as such party may designate by ten (10)
days prior notice to the other party hereto:
If to OSIRIS: Copy to:
OSIRIS Therapeutics, Inc. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Esq.
Carella, Byrne, Bain, Gilfilian,
▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ & ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇ ▇ ▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇,
▇▇▇▇: President New Jersey 07068
If to CWRU:
▇▇▇▇ of Graduate Studies and Research
Case Western Reserve University
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇
9.12 Amendments and Waivers. No modification of this Agreement will
be signed by both parties.
9.13 Illegality. If any term or condition of this Agreement is
contrary to applicable law, that term or condition will not apply and will not
invalidate any other part of this Agreement. However, if Its deletion
materially and adversely changes the position of either of the parties, the
affected party may terminate the Agreement by giving thirty (30) days written
notice.
9.14 Entire Agreement. This Agreement constitutes the entire
understanding and agreement of the parties hereto with respect to the subject
matter hereof and supersedes all prior discussions, understandings and
agreements with respect thereto.
ARTICLE X: DEFINITIONS
10.1 Technology. The term "Technology" shall mean any and all existing
or future information, technical data, inventions, discoveries or know-how, and
materials whether or not patented or patentable, related to or useful for the
identification, Isolation, purification, propagation or use of mesenchymal
stem cells and/or cells or products derived from or produced by mesenchymal
stem cells, which are conceived, developed or reduced to practice by an
Investigator during the term of this Agreement while performing research at
CWRU.
10.2 Product(s). The term "Product(s)" shall mean any article,
composition, apparatus, substance, chemical, material, method or service which
is, incorporates or utilizes Technology or the use, manufacture, import or sale
of which is covered by a claim of any patent licensed hereunder.
10.3 Process(es). The term "Process(es)" shall mean any process or
method for the production, manufacture or use of any Product or which is
covered by any patent licensed hereunder.
10.4 The term "Affiliate" as applied to OSIRIS shall mean any company
or other legal entity other than OSIRIS in whatever country organized,
controlling, or controlled by or under common control with OSIRIS. The term
"control" means possession, direct or indirect, of the powers to direct or
cause the direction of the management and policies whether through the
ownership of voting securities, by contract or otherwise.
10.5 Principal Investigator. The term "Principal Investigator" shall
mean either or both of Drs. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ and ▇▇▇▇▇▇▇ ▇ ▇▇▇▇▇▇▇▇▇▇▇
10.6 Material. The term "Material(s)" shall mean any material,
biologic, or substance, which is Technology, including but not limited to,
cells, cell lines, vectors, antibodies, DNA (RNA) sequences, libraries,
plasmids, cytokines, peptides, and proteins, which is discovered, produced or
derived by an Investigator during the term of this Agreement.
10.7 Investigator. The term "Investigator" shall mean Principal
Investigators, any other member of CWRU staff, graduate student, undergraduate
student or employee of CWRU who works with or under the direction of a
Principal Investigator.
10.8 "Existing Patent Rights" shall mean (I) A Method for Isolating,
Purifying and Culturally Expanding Marrow-Derived Mesenchymal Cells (U.S.
Patent Application No. 615,430) ; (II) Monoclonal Antibodies Specific for
Marrow-Derived Mesenchymal Cells (U.S. Patent Application No. 718,917); (III)
A Method and Device for Enhancing the Implantation and Differentiation of
Marrow-Derived Mesenchymal Cells (U.S. Patent Application No. 614,915); and
(IV) A Method and Device for Treating Connective Tissue Disorders (U.S. Patent
Application No. 614,912); any division, continuation, or continuation-in-part
thereof and any foreign patent application or equivalent corresponding thereto
and any Letters Patent or the equivalent thereof in any country of the world
issuing thereon or reissue or reexamination or extension thereof.
10.9 "Developed Patent Rights" shall mean any and all patents and
patent applications anywhere in the world which contains one or more claims
directed to Technology, which is not an Existing Patent Right.
IN WITNESS WHEREOF, the undersigned parties have executed this Agreement
on the dates indicated below:
CWRU: OSIRIS:
FOR CASE WESTERN RESERVE FOR OSIRIS THERAPEUTICS, INC.
UNIVERSITY:
_/s/ ▇. ▇▇▇▇▇ Hendersen__________ _/s/ ▇▇▇▇▇ ▇. Burns________________
Name: ▇. ▇▇▇▇▇ Hedersen Name: ▇▇▇▇▇ ▇. ▇▇▇▇▇
Title: VP Finance & Administration Title: President
Date: March 25, 1993 Date: March 30, 1993
Appendix A
OSIRIS THERAPEUTICS, INC.
Founders & Case Western Reserve University Capitalization
FOUNDING SCIENTISTS* FOUNDERS
Shareholder Shares % Shareholder Shares %
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ 15,600 65.0 ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ 15,600 55.7
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ 6,720 28.0 ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ 6,720 24.0
▇. ▇. ▇▇▇▇▇▇▇▇▇▇▇ 1,660 7.0 ▇. ▇. ▇▇▇▇▇▇▇▇▇▇▇ 1,680 6.0
Case Western R. U. 1,200 4.3
▇▇▇▇▇ ▇. ▇▇▇▇▇ ** 2,800 10.0
________ _____ ______ _____
TOTAL 24,000 100.0 28,000 100.0
* Case Western Reserve University ("CWRU") purchases 1,200 shares of
Osiris Therapeutics, Inc. Common Stock at a price of $0.10 per share,
equivalent to 5.0% of the Common Stock issued to the Company's three
founding scientists (the "Founding Scientists"). Upon issuance of shares
of Osiris Common Stock to Case Western Reserve University, the
Founding Scientists and CWRU will together constitute the Company's
founders (collectively, the "Founders")
** ▇▇▇▇▇ ▇. ▇▇▇▇▇, the Company's Chairman, President & Chief Executive
Officer has purchased 2,800 shares of Osiris Common Stock on the same
basis as the Founders in exchange for funding the Company's initial
working capital requirements. The CEO's and Founders' Common Stock
will together constitute the Company's founding shareholders prior to the
sale of additional shares to key employees, adivsors, or investors in the
Company's Initial Capitalization.