Exhibit 10.52
OPTION AGREEMENT
Between
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
and
COLLATERAL THERAPEUTICS, INC.
for
hCdc5 REGULATION OF G2 PROGRESSION AND MITOTIC ENTRY
UC Case No. SF98-008
TABLE OF CONTENTS
BACKGROUND.........................................................................................1
1. DEFINITIONS.....................................................................................2
2. GRANT...........................................................................................3
3. OPTION FEE AND TERM.............................................................................4
4. EXERCISE OF THE OPTION..........................................................................4
5. TERMS OF THE PROPOSED LICENSE AGREEMENT.........................................................4
6. DUE DILIGENCE...................................................................................6
7. PATENT PROSECUTION AND MAINTENANCE..............................................................6
8. LIFE OF THE AGREEMENT...........................................................................8
9. USE OF NAMES AND TRADEMARKS.....................................................................8
10. CONFIDENTIALITY................................................................................9
11. LIMITED WARRANTY...............................................................................9
12. INDEMNIFICATION & INSURANCE...................................................................10
13. NOTICES.......................................................................................11
14. ASSIGNABILITY.................................................................................11
15. LATE PAYMENTS.................................................................................12
16. NO WAIVER.....................................................................................12
17. FAILURE TO PERFORM............................................................................12
18. GOVERNING LAWS................................................................................12
19. MISCELLANEOUS.................................................................................12
APPENDIX A........................................................................................14
OPTION AGREEMENT FOR
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This option agreement ("Agreement") is effective this 10th day of January,
2001 ("Effective Date") between The Regents of the University of California, a
California corporation, having its statewide administrative offices at ▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇, ("The Regents") and acting
through its Office of Technology Management, University of California San
Francisco, ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ - ▇▇▇▇▇ ▇, ▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
("UCSF"), and Collateral Therapeutics, Inc., a Delaware corporation having a
principal place of business at ▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇ ▇▇▇▇▇, ▇▇
9212 1 -2048 ("Optionee").
BACKGROUND
Certain inventions, generally characterized as hCdc5 Regulation of G2
Progression and Mitotic Entry and disclosed in ▇▇ ▇▇▇▇ ▇▇. ▇▇▇▇-▇▇▇ (the
"Invention"), are covered by Regents' Patent Rights and were made in the course
of research at the University of California San Francisco by ▇▇. ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇ and ▇▇. ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ who have assigned all of their right, title,
and interest in the invention to The Regents.
Development of the Invention was sponsored in part by The National
Institutes of Health and as a consequence this Agreement, any License Agreement,
and the Invention are subject to overriding obligations to the Federal
Government (Including a non-exclusive, irrevocable license to use the Invention
by or on behalf of the Government throughout the world), under 35 U.S.C. 200-212
and applicable regulations.
Optionee is a "small business firm" as defined in Section 2 of Public Law
85-536 (15 U.S.C. 632).
Optionee and The Regents entered into a Confidential Disclosure Agreement
on May 7, 1999, a Letter of Intent on May 21, 1999, a Letter of Intent Extension
on July 7, 1999, and a previous Option Agreement on February 17, 2000.
Optionee wishes to evaluate the Licensed Products under an option agreement
to determine its interest in taking a license under Regents' Patent Rights.
The Regents wishes to grant the option so that the Invention may be
developed to the fullest
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extent and the benefits therefrom enjoyed by the general public. The parties
agree as follows:
1. DEFINITIONS
1.1 "Regents' Patent Rights" means any subject matter claimed in or covered
by any of the following and based on UC Case No. SF98-008: Provisional U.S.
Patent Application Serial No.60/060,688 entitled Methods and Compositions for
Regulating Cell Cycle Progression filed September 22, 1997, and assigned to The
Regents, Pending U.S. Patent Application Serial No. 09/156,316 converted
therefrom entitled Methods and Compositions for Regulating Cell Cycle
Progression filed September 18, 1998, and assigned to The Regents, U.S. Patent
Application in preparation covering the subject matter of a manuscript entitled
Human Cdc5, a Regulator of Mitotic Entry, Can Act as a Site-Specific DNA Binding
Protein, and continuing applications thereof, including divisions and
continuation-in-part applications (only to the extent, however, that claims of
such continuation-in-part applications are entitled to the priority date of the
parent application) including divisions and substitutions, and any patents or
reissues issuing on these applications, and any corresponding foreign
applications or patents.
1.2 "Licensed Product" means any material either that is covered by
Regents' Patent Rights, that is produced by the Licensed Method, or that the use
of which would constitute, but for the license granted to the Licensee pursuant
to this Agreement, an infringement of any pending or issued claim within
Regents' Patent Rights.
1.3 "Licensed Method" means any method that is covered by Regents' Patent
Rights, or the use of which would constitute, but for the license granted to the
Licensee pursuant to this Agreement, an infringement of any claim within
Regents' Patent Rights.
1.4 "Derived Product" means any material that is discovered, identified, or
confirmed through the use of a Licensed Product or Licensed Method and not at
the time of sale claimed in a patent or application of Regents' Patent Rights in
the country of manufacture or sale.
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1.5 "License Agreement" means the exclusive license agreement between the
parties that may result if Optionee exercises its option under this Agreement.
1.6 "Business Plan" means a reasonably detailed plan of development and
commercialization for Licensed Products and Derived Products. The Business Plan
must include, but is not limited to, an up-to-date research report identifying:
proposed Licensed Products, projected market sizes, sales, costs, profits, and
anticipated market introduction dates for the Licensed Products.
2. GRANT
2.1 The Regents grants to the Optionee the right to make and use Licensed
Products and to practice the Licensed Method for the sole purpose of evaluating
Optionee's interest in exercising its option to an exclusive license under
Regents' Patent Rights.
2.2 The Regents grants to Optionee an option to negotiate, in good faith,
the terms of the License Agreement if Optionee exercises its option under
Article 4 (EXERCISE OF THE OPTION).
2.3 This Agreement constitutes Optionee's entire interest under Regents'
Patent Rights and does not constitute a license to sell Licensed Products.
2.4 Optionee is prohibited from filing, without The Regents' written
consent, a patent application covering the Licensed Products, or Licensed
Method, their use, or their production for a period commensurate with the
confidentiality provisions of Article 10 (CONFIDENTIALITY), or until all patents
in Regents' Patent Rights issue, whichever is earliest.
2.5 The licenses granted in this Agreement are subject to the overriding
obligations to the U.S. Government including those in 35 U.S.C. 200-212 and
applicable governmental implementing regulations.
2.6 The Regents expressly reserves the night to publish any and all
technical data resulting from any research performed by The Regents relating to
the Invention and to make and use the Invention, Licensed Products, Licensed
Method, and associated technology and to allow others to
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make and use the Invention, Licensed Products, Licensed Method, and associated
technology for non-commercial educational and research purposes.
3. OPTION FEE AND TERM
3.1 As partial consideration for this Agreement, Optionee shall pay to The
Regents an option fee of fifteen thousand dollars ($15,000). The option fee is
due to The Regents within 30 days of the Effective Date.
3.2 This option is for one (1) year; it begins on the Effective Date and
expires on the first anniversary of that date. Optionee may request an extension
of this Agreement for one (1) additional year by so notifying The Regents in
writing at least 60 days before the expiration of this Agreement. The Regent's
will consider Optionee's request for this extension and will not unreasonably
deny that request. If this Agreement is extended, Optionee shall pay an
extension fee of twenty thousand dollars ($20,000), which is due within 30 days
following the extension.
3.3 The option fee and extension fee are non-refundable, non-creditable,
and not an advance against royalties.
4. EXERCISE OF THE OPTION
4.1 If Optionee elects to exercise its option to negotiate the terms of the
License Agreement, it shall do so by sending The Regents a written notification,
proposed license terms and the Business Plan, before this Agreement expires.
Failure of Optionee to properly notify The Regents will be deemed by The Regents
as an election by Optionee not to secure a license and the Regents will then be
free to market and license Regents' Patent Rights to others without further
obligation to Optionee.
4.2 Upon notification by Optionee to The Regents under Paragraph 4. 1,
Optionee shall specify in writing those particular patent applications to which
its wishes a license and those in specific which it has no interest.
5. TERMS OF THE PROPOSED LICENSE AGREEMENT
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5.1 If Optionee exercises its option in accordance with Article 4 (EXERCISE
OF THE OPTION), then The Regents and Optionee shall negotiate in good faith to
arrive at mutually agreeable terms and conditions for the License Agreement,
incorporating those terms agreed upon by the parties on December 7, 2000, and
included in this Agreement as Appendix A. The License Agreement will include,
but is not limited to, the following, provisions:
5.1.1 an exclusive license, with the right to sublicense, to make,
have made, use, and sell Licensed Products and to practice the Licensed Method
under Regents' Patent Rights,
5.1.2 a license-issue fee due upon signing;
5.1.3 an earned-royalty rate based on net sales of Licensed Products
and Derived Products;
5.1.4 minimum annual royalties that begin in the year of anticipated
first commercial sale of a Licensed Product and continue for the life of
Regents' Patent Rights;
5.1.5 annual license-maintenance fees commensurate with the value of
the licensed technology at the time of licensure;
5.1.6 mutually agreed upon milestone payments to be paid upon
achievement of specified objectives;
5.1.7 mutually agreed upon diligence terms based on
objective-performance standards and designed to achieve commercialization of the
Licensed Products;
5. 1.8 confidentiality terms;
5.1.9 indemnification of The Regents by Optionee;
5.1.10 a warranty that is limited to The Regents' right to grant an
exclusive license under Regents' Patent Rights as set forth in Article II
(LIMITED WARRANTY):
5.1.11 Preference for U.S. industry; and
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5.1.12 Continuing reimbursement by the Optionee of patent costs.
5.2 The license issue and maintenance fees referred to above are
non-creditable, nonrefundable, and not an advance against royalties.
5.3 The License Agreement will be subject to the overriding obligations to
the U.S. Government including those in 35 U.S.C. 200-212 and applicable
governmental implementing regulations.
6. DUE DILIGENCE
6.1 Optionee shall undertake the requisite research to develop and evaluate
Licensed Products and determine its interest in exercising the option.
6.2 Optionee shall provide to The Regents semi-annual progress reports
covering the development and testing of Licensed Products. The progress reports
are due semi-annually, on June 30 and December 30 of each year and for the life
of this Agreement.
6.3 The progress reports will include, but are not limited to, the
following topics so that The Regents may determine the progress of the
development and testing of Licensed Products:
- summary of work completed;
- key scientific discoveries;
- summary of work in progress;
- current schedule of anticipated events or milestones:
7. PATENT PROSECUTION AND MAINTENANCE
7.1 Subject to Paragraph 7.4, The Regents shall diligently prosecute and
maintain the United States and foreign patents comprising Regents' Patent Rights
using counsel of its choice. The Regents shall promptly provide Optionee with
copies of all relevant documentation so that Optionee may be apprised of the
continuing prosecution. Optionee shall keep this documentation in confidence in
accordance with the provisions of Article 10 (CONFIDENTIALITY).
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7.2 The Regents will hold title to all patents and patent applications
subject to this Agreement and The Regents' counsel will take instructions only
from The Regents but The Regents shall use reasonable efforts to amend any
patent application to include claims requested by the Optionee and required to
protect the Licensed Products or Licensed Method.
7.3 The Regents shall, at the request of Optionee, file, prosecute, and
maintain patent applications and patents covered by Regents' Patent Rights in
foreign countries if available. The Optionee shall notify The Regents within
seven (7) months of the filing of the corresponding United States application of
its decision to request The Regents to file foreign counterpart patent
applications. This notice concerning, foreign filing, must be in writing and
must identify the countries desired. Failure by Optionee to so notify The
Regents within the seven (7) month period is an election by Optionee not to
request The Regents to secure foreign patent rights on behalf of the Optionee.
The Regents has the right to file patent applications at its own expense in any
country Optionee has not included in its list of desired countries, and those
applications and resulting patents, if any, are not included in the licenses
granted under this Agreement.
7.4 Optionee shall pay all past, present, and future costs incurred by The
Regents in preparing, filing, prosecuting and maintaining all United States and
foreign patents and patent applications covered by Regents' Patent Rights. The
costs of interferences and oppositions are prosecution expenses and will be paid
by the Optionee, but The Regents shall decide in its sole discretion, whether or
not to enter any interference proceedings or opposition. Optionee shall
reimburse The Regents for all costs and charges within 30 days following receipt
of a proper itemized invoice from The Regents for same. If this Agreement is
still in effect 2 months before the due date of PCT filings, or 4 months before
the due date of National Phase filings, then Optionee shall support the relevant
PCT Chapter I, PCT Chapter II, or National Phase filings in at least EPO,
Canada, Australia, and Japan, notwithstanding the provisions of Paragraph 7.5.
7.5 Optionee may terminate its obligations with respect to any patent
application or patent in any or all designated countries upon 3 months written
notice to The Regents. The Regents will use its best efforts to curtail the
associated patent costs after notice is received from the Optionee. The Regents
may continue prosecution and/or maintenance of those applications or patents at
its
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sole discretion and expense and Optionee will have no further right or licenses
thereunder.
7.6 Optionee has a continuing responsibility to keep The Regents informed
of its large/small business entity status (as defined by the United States
Patent and Trademark Office).
8. LIFE OF THE AGREEMENT
8.1 Unless otherwise terminated by operation of law or by acts of the
parties in under the terms of this Agreement, this Agreement is in effect
from the Effective Date and remains in effect for the period specified in
Article 3 (OPTION FEE AND TERM). Upon proper exercise of the option as
provided in Paragraph 4. 1, Optionee may have an extension of up to 3
additional months to conclude a final written license agreement, after which
time The Regents shall have no obligation to Optionee whatsoever.
8.2 Any termination of this Agreement will not affect the rights and
obligations set forth in the following Paragraph and Articles:
Paragraph 2.4 Prohibition against filing patent applications
Article 9 USE OF NAMES AND TRADEMARKS
Article 10 CONFIDENTIALITY
Article 12 INDEMNIFICATION AND INSURANCE
Article 15 LATE PAYMENTS
8.3 Termination will not relieve Optionee of any obligation or liability
accrued prior to it rescind anything done by Optionee or any payments made to
The Regents termination nor will prior to the time termination becomes
effective.
9. USE OF NAMES AND TRADEMARKS
9.1 Nothing in this Agreement confers to either party, the right to use any
name, trade name, trademark, or other designation (including contraction,
abbreviation or simulation of any name, trade name, trademark or other
designation) of the other party in advertising, publicity, or other promotional
activities. Unless expressly required by law, the use by Optionee of the name,
"The
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Regents of the University of California" or the use by Optionee of the name of
"The University of California" or any campus of the University of California is
prohibited.
9.2 If a third party inquires whether a license to Regents' Patent Rights
is available, The Regents may disclose the existence of this Agreement and the
extent of the grant in Article 2 (GRANT), but may not disclose the name of
Optionee, except where The Regents is required to release that information under
the California Public Records Act or other applicable law.
10. CONFIDENTIALITY
10.1 The Optionee shall safe guard confidential data supplied by The
Regents and relating to Regents' Patent Rights against disclosure to others
with the same degree of care as it exercises with its own data of a similar
nature. Optionee shall not use such data except to perform its obligations
under this Option and shall not disclose such data to others (except to its
employees, agents or consultants who are bound to Optionee by a like
obligation of confidentiality) without the express written permission of The
Regents, except that the Optionee is not prevented from using or disclosing
any of the data that: (a) Optionee can demonstrate by written records was
previously known to it; (b) is now or becomes in the future public knowledge
other than through acts or omissions of the Optionee; or (c) is lawfully
obtained by the Optionee from sources independent of The Regents. The secrecy
obligations of the Optionee under these terms will remain in effect for 5
years from the termination date of this Agreement.
10.2 The obligations of confidentiality and limited use hereunder apply to
any confidential information of The Regents relating to the subject matter of
this Agreement whether supplied under this Option or previously.
11. LIMITED WARRANTY
11.1 The Regents warrants to Optionee that it has the lawful right to grant
this option.
11.2 This Agreement and the associated Invention are provided WITHOUT
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER
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WARRANTY, EXPRESS OR IMPLIED. THE REGENTS MAKES NO REPRESENTATION OR WARRANTY
THAT THE LICENSED PRODUCTS OR LICENSED METHODS PROVIDED HEREUNDER WILL NOT
INFRINGE ANY PATENT OR OTHER PROPRIETARY RIGHT.
11.3 IN NO EVENT WILL THE REGENTS BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS AGREEMENT OR THE
MANUFACTURE, OR USE OF THE INVENTION, LICENSED PRODUCTS, OR LICENSED METHODS.
11.4 Nothing in this Agreement:
11.4.1 is a warranty or representation by The Regents as to the
validity, enforceability, or scope of any Regents' Patent Rights;
11.4.2 is a warranty or representation that anything made, used, or
otherwise disposed of under any license from The Regents is or will be free from
infringement of patents of third parties;
11.4.3 is an obligation to bring or prosecute actions or suit against
third parties for patent infringement;
11.4.4 is an obligation to furnish any information or know-how not
provided in Regents' Patent Rights; or
11.4.5 confers by implication, estoppel or otherwise any license or
rights under any patents of The Regents other than Regents' Patent Rights.
12. INDEMNIFICATION
12.1 Optionee shall indemnify, hold harmless and defend The Regents, its
officers, employees, and agents, the sponsors of the research that led to the
Invention and the inventors and their employers, against any and all claims,
suits, losses, liabilities, damages, costs, fees, and
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expenses resulting from or arising out of this Agreement. This indemnification
includes, but is not limited to product liability.
12.2 Optionee shall obtain and maintain an insurance policy supporting its
obligations under Paragraph 12.1. This insurance policy will name The Regents as
an additional insured and provide for notice to The Regents before cancellation.
12.3 The Regents shall promptly notify Optionee in writing of any claim or
suit brought against The Regents in respect of which The Regents intend to
invoke the provisions of this Article. Optionee will keep The Regents informed
on a current basis of its defense of any claims pursuant to this Article.
13. NOTICES
Notices or payments are properly given and effective on the date of
delivery if delivered in person, on the date of delivery by Federal Express or
other overnight courier, or 5 days after mailing if mailed by first-class,
certified mail, postage paid, to the respective addresses given below or to such
other address as are designated by written notice.
To Optionee: Collateral Therapeutics
▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: General Counsel
To The Regents: University of California San Francisco
Office of Technology Management
Box 1209
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Attention: Director
UC Case No. SF98-008
14. ASSIGNABILITY
This Agreement inures to the benefit of and binds The Regents, its successors
and assigns, but it is personal to Optionee and assignable by Optionee only with
the written consent of The Regents.
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15. LATE PAYMENTS
If fees or patent cost reimbursements are not received by The Regents when
due, Optionee shall pay to The Regents interest charges at a rate of 10% simple
interest per annum. Interest is calculated from the date payment was due until
actually received by The Regents. Acceptance by The Regents of any late payment
of fees, patent costs, or interest from Optionee under this Paragraph in no way
affects the provisions of Article 16 (NO WAIVER).
16. NO WAIVER
No waiver by either party hereto of any breach or default of any of the
covenants or agreements herein set forth is a waiver as to any subsequent and/or
similar breach or default.
17. FAILURE TO PERFORM
In the event of a failure of performance due under the terms of this
Agreement and if it becomes necessary for either party to undertake legal action
against the other on account thereof, then the prevailing party will be entitled
to reasonable attorney's fees in addition to costs and necessary disbursements.
18. GOVERNING LAWS
This Agreement WILL BE INTERPRETED AND CONSTRUED IN ACCORDANCE WITH THE
LAWS OF THE STATE OF CALIFORNIA
19. MISCELLANEOUS
19.1 This Agreement is not binding upon the parties until it has been
signed below by each party; it then becomes effective as of the Effective Date.
19.2 No amendment or modification hereof is valid or binding upon the
parties unless made in writing and signed on behalf of each party.
19.3 This Agreement embodies the entire understanding of the parties and
supersedes all previous communications, representations and understandings,
either oral or written, between the
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parties relating to the subject matter hereof including the Confidential
Disclosure Agreement of May 7, 1999, the Letter of Intent of May 21, 1999, the
Letter of Intent Extension of July 7, 1999, and the Option Agreement of February
17, 2000.
19.4 If any of the provisions contained in this Agreement is held to be
invalid, ILLEGAL or unenforceable in any respect, that invalidity, illegality or
unenforceability will not affect any other provisions hereof, but this Agreement
will be construed as if that invalid, illegal, or unenforceable provision had
never been contained in it.
The Regents and Optionee have executed this Agreement, in duplicate
originals, by their duly authorized representatives, on the day and year
hereinafter written.
THE REGENTS OF THE
COLLATERAL THERAPEUTICS, INC.: UNIVERSITY OF CALIFORNIA:
By: /s/ ▇▇▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
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(Signature) (Signature)
Name: ▇▇▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
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(Please Print) (Please Print)
Title: President Title: Director-OTM
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Date: January 5, 2001 Date: January 11, 2001
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