Exhibit 10.16
** CERTAIN CONFIDENTIAL MATERIAL CONTAINED IN THIS DOCUMENT HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO 17
C.F.R. SUBSECTION 200.80(B)(4) 200.83 AND 230.406 **
TRANSFER AGREEMENT
This Transfer Agreement is made as of June 29, 2001 and is a legally binding
agreement pursuant to which HLR hereby transfers and sells to ICN the protein
compound, Interleukin (IL-12), on the same basic terms and conditions as set
forth in Appendix I hereto.
For all other terms the parties agree to adopt the terms of Exhibit A except
that Licensor in Exhibit A is treated as Licensee herein and Licensee in Exhibit
A to the Exchange Agreement of even date herewith is treated as Licensor herein.
For clarification, definitive documentation between the parties will be
finalized as soon as possible.
HLR:
▇. ▇▇▇▇▇▇▇▇-▇▇ ▇▇▇▇▇ LTD.
/s/ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
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▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Vice Director
/s/ Urs Jaisli
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Urs Jaisli
Vice Director - Corporate Law
▇▇▇▇▇▇▇▇-▇▇ ▇▇▇▇▇, INC.
/s/ ▇▇▇▇▇ ▇'▇▇▇▇▇▇
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▇▇▇▇▇ ▇'▇▇▇▇▇▇
Vice President
ICN:
ICN PUERTO RICO
/s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
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▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
President
APPENDIX I
TERM SHEET ON IL 12 (RO 24-7472)
1. License grant to ICN
Exclusive worldwide license in the Field under Roche patents and
know-how, with no right to sublicense except as set forth below.
"Field" is IL-12 protein for all indications.
2. Roche option and right of first refusal; ICN right to sublicense
Roche has an exclusive option to obtain exclusive worldwide rights to
the product, including to practice improvements to the product
developed by ICN. Roche's option commences upon notice from ICN that
it has completed [REDACTED] and shall end [REDACTED] days thereafter.
If Roche exercises its option, the parties shall enter into an
exclusive worldwide license agreement which includes the following
terms:
Roche reimburses ICN for [REDACTED].
Roche pays milestones on [REDACTED].
Roche pays ICN royalties.
The specific terms shall be negotiated in good faith and shall be
reasonable and customary for similar products at a similar stage of
development.
Prior to commencement of Roche's option and during the pendency of
Roche's option, ICN may not sublicense product rights. If Roche waives
its option or Roche's option expires, ICN may sublicense product
rights at its discretion, subject to the event that if ICN does not
have a commercial partner at the end of [REDACTED] for any given
country, in such country Roche shall have a right of first refusal to
become ICN's commercial partner.
3. Consideration
3.1 Upfront Payment--USD [REDACTED] million.
3.2 Milestone payments
- USD [REDACTED] upon [REDACTED]
- USD [REDACTED] upon [REDACTED]
- USD [REDACTED] upon [REDACTED]
- USD [REDACTED] upon [REDACTED]
3.3 Royalty Payments--ICN shall pay royalties equal to [REDACTED] of Net
Sales. Royalties shall be paid quarterly and--on a country by country
basis--for the longer of (1) 10 years after the first sale or (2)
patent expiration.
Except with respect to Genetics Institute ("GI") ICN may deduct
[REDACTED] of royalties to third parties. With respect to GI
ICN shall be responsible for the first [REDACTED], but may deduct
[REDACTED] of any royalties to GI beyond the first [REDACTED].
4. Development
- ICN to bear all development costs
- Steering committee to oversee development; decisions on a consensus
basis, in case of dissent, escalation to high level management, if
no resolution, final decision by ICN;
5. Manufacturing
ICN has the right to manufacture for clinical and commercial supplies
at its cost.
6. Termination
ICN has the right to terminate the Agreement at any time without cause
with six months prior notice.
7. Press Releases
Unless required by law, neither party shall issue any press release or
any other public disclosures related to this Term Sheet without the
prior written consent of the other party.