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EXHIBIT 10.13
LICENSE AGREEMENT
OPTIVAX(R) COPOLYMER ADJUVANT
VAXCEL, INC. CORIXA CORPORATION
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▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Ph: 770-453-0195 Ph: ▇▇▇-▇▇▇-▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇ Fax: ▇▇▇-▇▇▇-▇▇▇▇
Contact: ▇▇▇▇ ▇▇▇▇▇▇ Contact: ▇▇▇▇ ▇▇▇▇▇▇
APRIL, 1996
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LICENSE AGREEMENT
(Optivax(R) Copolymer Adjuvant)
THIS OPTIVAX LICENSE AGREEMENT (the "Agreement") is made and executed
on 9 April 1996 ("Effective Date") by and between VAXCEL, INC., a Delaware
corporation, having a principal place of business at ▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇/▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Vaxcel") and CORIXA
CORPORATION, a Delaware corporation, having a principal place of business at
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Corixa").
RECITALS
WHEREAS, Vaxcel has obtained from CytRx Corporation ("CytRx") an
exclusive, worldwide right and license under the Copolymer Patents to use, and
to sublicense others the right to use, the Copolymer as a Human Vaccine
Adjuvant.
WHEREAS, Vaxcel has provided Corixa with a letter from CytRx in
connection with the execution of the Agreement, attached hereto as Exhibit I.
WHEREAS, Corixa owns or controls certain vaccine and adjuvant
technology useful in the fields of cancer and infectious diseases.
WHEREAS, Corixa wishes to obtain a license to use the Technology in
the Field in order to develop the Product(s) to a certain stage and then
license the Product(s) in order that the Sublicensee(s) can further develop,
gain regulatory approval, market, manufacture, distribute, use and sell the
Product(s) in the Territory and Vaxcel is willing to provide such license to
Corixa, subject to the terms and conditions set forth herein.
WHEREAS, to induce Vaxcel to grant Corixa a license to the Technology,
Corixa will issue to Vaxcel concurrently with the execution of this Agreement
warrants to purchase up to 500,000 shares of Corixa Series A Preferred Stock in
accordance with that certain Warrant Agreement (the "Warrant") dated as of the
Effective Date in the form attached hereto as Exhibit II.
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NOW, THEREFORE, in consideration of the foregoing premises and the
mutual covenants and agreements hereinafter set forth, the parties hereto,
intending to be legally bound hereby, agree as follows:
ARTICLE I
DEFINITIONS
For the purposes of this Agreement, the following terms shall have the
corresponding meaning set forth below:
1.1 "Affiliate" shall mean, when used with reference to any Person, any
other Person controlling, controlled by, or under common control with
such Person. For purposes of the above definition, the term "control"
(including with correlative meaning, the terms "controlling",
"controlled by", and "under common control with") as used with respect
to any Person, shall mean the possession, directly or indirectly, of
the power to direct or cause the direction of the management and
policies of such Person, whether through ownership of voting
securities, by contract, or otherwise.
1.2 "Copolymer" shall mean all technology covered by the Copolymer Patents
that is related to the polyoxyethylene/polyoxypropylene copolymer
designated by Vaxcel as CRL-1005, as more specifically described in
Exhibit III hereto.
1.3 "Copolymer Patents" shall mean the patents and patent applications on
the Copolymer set forth in Exhibit IV hereto, and all patents issuing
upon such applications, and all continuations, continuations-in-part,
additions, divisions, renewals, extensions, reexaminations and
reissues of any of the foregoing and all foreign counterparts of any
of the foregoing.
1.4 "Corixa Material" shall mean (a) any and all antigens owned or
controlled by Corixa on the Effective Date and/or during the term of
the Agreement in the disease areas in the Field; (b) LeIF Adjuvant;
(c) Microspheres; and (d) Non-Corixa Human Vaccine Adjuvants.
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1.5 "Corixa Material Information" shall mean any and all technical data,
scientific data and information relating to the Corixa Material in the
Field which is under the control of Corixa at any time during the term
of this Agreement, and which is necessary to the Development Program
for the Product(s).
1.6 "Corixa Material Patents" shall mean the patents and patent
applications on the Corixa Material set forth on Exhibit V hereto, and
all patents issuing upon such applications, and all continuations,
continuations-in-part, additions, divisions, renewals, extensions,
reexaminations and reissues of any of the foregoing and all foreign
counterparts of any of the foregoing.
1.7 "Development Program" shall mean any and all efforts and activities
necessary to commercialize the Product(s), including, but not limited
to, preclinical studies, formulations work, human clinical testing,
laboratory studies, regulatory activities, Product manufacturing, etc.
1.8 "Effective Date" shall mean the date specified in the introduction to
the Agreement.
1.9 "FDA" shall mean the United States Food and Drug Administration or any
successor agency thereto.
1.10 (i) "Field A" shall mean use of the Technology with the Corixa
Material in a human injectable and/or intranasally-delivered vaccine
for the following disease areas:
(a) Tuberculosis
(b) Leishmaniasis
(c) ▇▇▇▇▇▇▇
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(▇▇) "▇▇▇▇▇ ▇" shall mean use of the Technology in the cancer field
with the following Corixa Material in a human injectable and/or
intranasally-delivered vaccine:
(a) Corixa Material covered by any claim of any of the
University of Washington Patents related to HER2/neu set forth
on Exhibit V, and analogs and homologs thereof;
(b) Corixa Material that is full or partial segments of ras
and are covered by any claim of any of the WRF Patents related
to ras set forth on Exhibit V, and analogs and homologs
thereof;
(c) Corixa Material that is full or partial segments of
bcr-abl or P53 and are covered by any claim of any of the WRF
Patents related to bcr-abl or P53 set forth on Exhibit V, and
analogs and homologs thereof;
(d) Corixa Material that is full or partial segments and are
covered by any claim of any of the WRF Patents, except as
related to ras, P53 or bcr-abl, set forth on Exhibit V and
analogs and homologs thereof;
(e) Corixa Material covered by any claim of any of the
University of Pittsburgh Patents related to Muc-1 set forth on
Exhibit V, and analogs and homologs thereof;
(f) Corixa Material related to breast cancer and covered by
any claim of any of the Corixa Patents set forth on Exhibit V,
and analogs and homologs thereof; and
(g) Corixa Material related to prostate cancer and covered by
any claim of any of the Corixa Patents set forth on Exhibit V,
and analogs and homologs thereof.
For purposes of this Agreement, each of the above tumor associated or
tumor specific antigens shall individually be a separate disease area.
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(iii) "Field C" shall mean use of the Technology in human injectable
and/or intranasally-delivered vaccines with additional antigens useful
in the cancer field discovered or in-licensed by Corixa during the
term of this Agreement, provided such cancer antigens are wholly-owned
or licensed exclusively to Corixa.
For purposes of this Agreement, each additional tumor associated or
tumor specific antigen discovered or in-licensed by Corixa, if any,
shall individually be a separate disease area.
(iv) "Field" shall mean Field A, Field B, and Field C. Field shall
exclude any other uses of the Technology, and specifically shall
exclude: (a) use for injectable or intranasal delivery of antigens or
disease areas other than those described in the Field, and (b) use for
oral or other non-injectable / non-nasal routes of delivery of any
antigens or disease areas, including those described in the Field.
1.11 "Human Vaccine Adjuvant" shall mean a compound(s) that augments or
modulates an immune response when administered in conjunction with the
Corixa Material in a vaccine formulated for use in humans.
1.12 "Improvements" shall mean any and all new or useful processes,
formulations, manufacturing methods, compositions of matter or methods
of use which are first conceived, reduced to practice or developed
during the term of this Agreement.
1.13 "LeIF Adjuvant" shall mean the technology covered by the patents and
patent applications set forth on Exhibit V hereto as the Corixa LeIF
Adjuvant Patents, and all patents issuing upon such applications, and
all continuations, continuations-in- part, additions, divisions,
renewals, extensions, reexaminations and reissues of any of the
foregoing and all foreign counterparts of any of the foregoing.
1.14 "Microspheres" shall mean the technology covered by the patents and
patent applications set forth on Exhibit V hereto as the Corixa
Microspheres Patents, and all patents issuing upon such applications,
and all continuations, continuations-in- part, additions, divisions,
renewals, extensions, reexaminations and reissues of any of the
foregoing and all foreign counterparts of any of the foregoing.
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1.15 "Net Sales" shall mean the gross amount recognized by Sublicensees and
its Affiliates for the sale or other disposition of the Product(s) to
an unaffiliated third party (as determined by generally accepted
accounting principles), less the following deductions for amounts
actually incurred related to the sale or other disposition:
(i) normal, customary trade discounts (including volume
discounts), credits and rebates and allowances and adjustments
for rejections, recalls, or returns;
(ii) reasonable freight and insurance costs and any sales,
use, excise, value-added, and similar taxes and duties imposed
on the sale of the Product(s) and included in the gross amount
charged and government-mandated vaccine insurance premiums;
(iii) amounts, at standard cost, for devices sold in
combination with the Product(s), and not billed separately
therefor, including, but not limited to, prefilled syringes
and ex vivo cell separation and selection devices.
1.16 "Non-Corixa Human Vaccine Adjuvant" shall mean a proprietary Human
Vaccine Adjuvant which Corixa licenses from a third party to further
augment or modulate the immune response of the Product(s). Non-Corixa
Human Vaccine Adjuvant specifically excludes LeIF Adjuvant,
Microspheres, and non-proprietary adjuvants such as salts of aluminum
(i.e., alum).
1.17 "Optivax" means any technology or know-how which utilizes, is based on
or arises out of use of the Copolymer. Optivax shall include any of
the foregoing technology or know-how that is incorporated in or used
in conjunction with the Product(s), other than the Corixa Material,
which affects or may affect the stability, pharmacokinetics,
pharmacodynamics, efficacy, potency, safety, absorption or other
activities of the Corixa Material.
1.18 "Optivax Information" shall mean any and all technical data,
scientific data and information relating to the Copolymer and Optivax
in the Field which is under the control of Vaxcel at any time during
the term of this Agreement, and which is necessary to the Development
Program for the Product(s).
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1.19 "Optivax Supply Agreement" shall mean a Supply Agreement between
Vaxcel and a Sublicensee for the manufacture and supply of the
Copolymer, a draft copy of which is attached hereto as Exhibit VI.
1.20 "Person" shall mean an individual, a partnership, a corporation, a
trust, a joint venture, an unincorporated organization, or a
government or any department or agency thereof.
1.21 "Product(s)" shall mean the human vaccine(s) in which the Corixa
Material is incorporated, combined with, or otherwise uses the
Technology in the Field.
1.22 "PLA" shall mean a vaccine Product License Application filed with the
FDA or other international regulatory agencies.
1.23 "Product Information" shall mean any information developed by either
party on the Product(s) during the term of this Agreement. By way of
illustration, but not limitation, Product Information may include
patents, patent applications, formulations, preclinical data, clinical
data, laboratory data, manufacturing processes, processes, methods,
techniques, formulas, compositions, projects, plans, marketing data,
sales data and forecasts, development plans, customers, suppliers,
etc.
1.24 "Revenue" shall mean any combination of prepaid royalties,
profit-sharing or revenue-sharing income, license fees, and milestone
fees, in the form of cash or other cash equivalent consideration, such
as publicly traded securities or other highly liquid assets.
1.25 "Sublicensee" shall mean any Person(s) to which Corixa licenses the
Product(s).
1.26 "Technology" shall mean the Copolymer, Optivax, and the Optivax
Information.
1.27 "Territory" shall mean the world.
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1.28 "Valid Copolymer Patent Claim" shall mean a claim included in the
Copolymer Patents that has not expired or been held invalid or
unenforceable by a court of competent jurisdiction in a final and
nonappealable or non-appealed judgment or a claim in an application
included in the Copolymer Patents that has been on file for less than
seven (7) years.
ARTICLE II
GRANT OF LICENSE
2.1 License Grant
Subject to all of the terms and conditions of this Agreement, Vaxcel
hereby grants to Corixa a license under Vaxcel's intellectual property
rights to:
(i) use the Technology in the Field for the purpose of
evaluating the Product(s) in preclinical animal studies and
Phase I human trials, and
(ii) sublicense the Technology only as part of a Product(s) to
Persons other than Affiliates in order that the Sublicensee(s)
can further develop, gain regulatory approval, market,
manufacture, distribute, sell, and use the Product(s) in the
Territory.
2.2 License Scope
Corixa's license shall be exclusive in the Field.
2.3 First Right to Negotiate for Certain Additional Disease Areas
(i) For twelve (12) months from the Effective Date, Vaxcel shall grant
Corixa a first right to negotiate an exclusive license agreement for
the Technology for use in combination with an antigen in the disease
areas of human Cytomegalovirus (CMV), ▇▇▇▇▇▇▇-▇▇▇▇ Virus (EBV),
Chlamydia trachomatis, and Streptococcus A Bacteria (Group A Strep).
Corixa agrees to disclose to Vaxcel an intent not to
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license for each of the above disease areas within thirty (30) days of
such an internal decision by Corixa, notwithstanding the twelve (12)
month duration of this option.
(ii) During the twelve (12) month period described in Section 2.3(i)
above, Vaxcel is free to perform preclinical evaluations with third
parties other than Corixa regarding use of the Technology in
combination with an antigen in the disease areas of human CMV, EBV,
Chlamydia trachomatis, and Group A Strep.
(iii) If during the twelve (12) month period described in Section
2.3(i) above a third party other than Corixa expresses a desire to
negotiate an option or license agreement for the Technology for use in
the disease areas of human CMV, EBV, Chlamydia trachomatis, or Group A
Strep, Vaxcel will notify Corixa and provide Corixa with the identity
of such disease area before entering into an agreement with such third
party. Corixa will then have thirty (30) days from such notification
to inform Vaxcel whether Corixa wishes to license the Technology for
such disease area. Depending upon Corixa's decision, the parties will
proceed as follows:
(a) If Corixa informs Vaxcel that it wishes to license the
Technology in such disease area, the parties will enter into
good faith negotiations and Corixa will then have sixty (60)
days from such notification to negotiate and execute a license
agreement with Vaxcel for such disease area. If the parties
for any reason do not or cannot successfully negotiate such a
license agreement for such disease area within the sixty (60)
day time period, Vaxcel is free to license the Technology for
such disease area to third parties without limitation.
(b) If Corixa discloses to Vaxcel an intent not to license the
Technology in such disease area, Vaxcel is free to license the
Technology for such disease area to third parties without
limitation.
Failure of the parties to successfully negotiate a license agreement
per (a) above or a Corixa decision not to license per (b) above will
not affect Corixa's first right to negotiate an exclusive license
agreement for the Technology in the remaining disease areas as set
forth in Section 2.3(i).
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2.4 No Other Rights
(i) Nothing in this Agreement shall be construed to constitute a grant
to Corixa or the Sublicensees of any rights other than those expressly
granted herein. Specifically, Corixa and the Sublicensees shall not
have the right to use the Technology:
(a) with any antigens, materials, or substances other than the
Corixa Material; or
(b) to immunize animals or humans for the purpose of producing
antibodies which will subsequently be purified and
concentrated to make a high titer, antisera, human immune
globulin or monoclonal antibodies for commercial sale; or
(c) outside the Field or Territory.
(ii) Nothing in this Agreement shall be construed to grant Corixa
itself the right to use the Technology to develop the Product(s)
beyond Phase I human clinical testing, as this right for further
development of the Product(s) is granted to the Sublicensees only.
Corixa shall not use the Technology to develop the Product(s) beyond
Phase I human clinical trials without the prior written consent of
Vaxcel. Vaxcel agrees not to unreasonably withhold such approval, but
additional financial compensation to Vaxcel, consistent with the terms
of this Agreement, will be negotiated by the parties for this right.
(iii) Except under the limited circumstances provided in Section
5.7(ii) hereof and the Optivax Supply Agreement, nothing in this
Agreement shall be construed to constitute a grant to Corixa or the
Sublicensees the right to manufacture the Copolymer either directly or
through a third party.
(iv) Nothing in this Agreement shall be construed to constitute a
grant to Corixa or the Sublicensees the right to sublicense the
Technology alone (i.e., not part of the Product) to Persons other than
Affiliates.
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(v) Nothing in this Agreement shall be construed to constitute a grant
to Vaxcel of any rights other than those expressly granted herein.
Specifically, Vaxcel shall not have any rights over or in respect of
or connected to the Corixa Material.
(vi) Nothing in this Agreement shall be construed to limit or restrict
Vaxcel's right to license the Technology to other third parties
outside the Field.
2.5 Sublicense Agreements
(i) The Technology shall be sublicensed by Corixa only pursuant to
license agreements (or option agreements as set forth in this Section
2.5) for the Product(s) in the name of Corixa, which are as protective
of Vaxcel and the Technology as such agreements are of Corixa and its
technology, and that, at a minimum, contain provisions protective of
intellectual property rights and disclaiming warranties and liability
(which disclaimers shall benefit Vaxcel) reasonably consistent with
those set forth in this Agreement.
(ii) Corixa agrees not to execute any license agreement for the
Product(s) with a Sublicensee(s) unless such Sublicensee(s) executes
an Optivax Supply Agreement with Vaxcel either prior to or
contemporaneously with the execution of such license agreement.
(iii) The Territory granted by Corixa to Sublicensees for the
Technology under any license agreements will not be greater than the
Territory granted by Corixa to the same Sublicensees for the Corixa
Material or the Product.
(iv) In the event a potential Sublicensee executes an option agreement
for the Product rather than a license agreement, such option agreement
between Corixa and the Sublicensee shall contain provisions protective
of intellectual property rights, disclaiming warranties and liability
(which disclaimers shall benefit Vaxcel), and precluding unauthorized
use of the Technology that are reasonably consistent with those set
forth in this Agreement. In the event any potential Sublicensee under
an option agreement: (a) distributes the Product(s) outside the
Territory; (b) uses the Technology outside the Field; (c) manufactures
or attempts to manufacture the Copolymer; (d) incorporates the
Technology in products that are not Products hereunder; or (e) fails
to comply with such potential Sublicensee's
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diligence obligations for the development and evaluation of the
Product, Corixa agrees to notify Vaxcel of such nonconforming activity
and, at the request of Vaxcel, immediately send a written notice to
such potential Sublicensee and terminate such option agreement
effective thirty (30) days following the receipt of such written
notice by the potential Sublicensee unless such potential Sublicensee
has cured such nonconforming activity within such thirty (30) day
period. In the event a potential Sublicensee breaches its option
agreement as described in any of (a)-(e) hereof three (3) times during
the term of the option agreement, Corixa shall, following the
foregoing notice to and subsequent request by Vaxcel, terminate such
option agreement immediately without any right of cure.
(v) Corixa shall use commercially reasonable efforts to cause all
consideration payable by Sublicensees to Corixa under a license or
option agreement hereunder to consist of Revenue. In the event Corixa
receives any consideration that is not Revenue from a Sublicensee
under an option or license agreement hereunder, Corixa shall
reasonably compensate Vaxcel as shall be mutually agreed by the
parties, consistent with the financial terms of this Agreement.
(vi) Corixa will be responsible for negotiating license and option
agreements with third parties regarding the Product(s) according to
the following guidelines:
(a) Corixa will advise Vaxcel of target Sublicensees in
advance of any negotiations;
(b) Corixa will keep Vaxcel routinely updated on progress of
discussions and negotiations with target Sublicensees;
(c) If reasonably requested by Corixa, Vaxcel's
representative(s) will attend, at Vaxcel's expense, meetings
with target Sublicensees;
(d) Corixa will send final executable copies of license and
option agreements for the Product(s) to Vaxcel for review and
comment prior to execution. Corixa will give reasonable
consideration to Vaxcel's comments, although if license
agreements comply with 2.5(i), (ii), (iii), and (v) and option
agreements comply with 2.5(iv) and (v) above, all final
decisions will be the sole responsibility of Corixa; and
(e) Corixa will send Vaxcel a copy of all final executed
license and option agreements for the Product(s) with
Sublicensees.
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(vii) If after four (4) years following the Effective Date, the
sublicenses granted by Corixa hereunder for a disease area do not
cover all countries in the Territory (the "Unlicensed Countries") and
Corixa determines in its sole discretion that the grant of sublicenses
for such disease area in the Unlicensed Countries would be
commercially reasonable, Corixa and Vaxcel shall, upon Vaxcel's
written request, negotiate in good faith the transfer from Corixa to
Vaxcel of the rights hereunder for such disease area in the then
Unlicensed Countries. If Vaxcel and Corixa cannot mutually agree on
the terms of such transfer within six (6) months, then Corixa shall
have an additional six (6) month period [total of five (5) years from
the Effective Date] to sublicense for such disease area in such
Unlicensed Countries. If such a sublicense does not exist at the end
of such period in all Unlicensed Countries, the rights hereunder for
such disease area shall, upon Vaxcel's written request, revert to
Vaxcel in the then Unlicensed Countries.
If at any time following the Effective Date, Corixa: (a) in its sole
discretion determines that the granting of sublicenses for a disease
area in an Unlicensed Country is not commercially reasonable; or (b)
in its sole discretion or by clear and convincing evidence, is, and
will continue to be until at least four (4) years following the
Effective Date, prohibited by law, regulation, contract, or otherwise
from granting any sublicense for a disease area in an Unlicensed
Country, then the rights granted hereunder for such disease area
shall, upon Vaxcel's written request, revert back to Vaxcel in such
Unlicensed Countries.
(viii) In the event a Sublicensee's Optivax Supply Agreement is
terminated in accordance with the terms therein, Corixa shall, at the
request of Vaxcel, terminate the rights to the Technology granted to
such Sublicensee under its license agreement.
ARTICLE III
INITIAL LICENSE FEE AND PREFERRED STOCK WARRANT
(i) In consideration of this grant of license to Corixa hereunder,
Corixa shall pay Vaxcel an upfront, non-refundable, non- creditable
license fee of fifty thousand United States dollars ($50,000), which
will accompany a duly executed copy of this Agreement.
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(ii) In addition, Corixa shall issue to Vaxcel, concurrently with the
execution of the Agreement, the Warrant to purchase up to 450,000
shares of Corixa Series A Preferred Stock, exercisable in accordance
with the following milestone schedule:
# Shares % Total Description of Milestone
-------- ------- ------------------------
100,000 20% Execution of this Agreement
50,000 10% Successful completion by Vaxcel of a
Phase I trial demonstrating the safety
and adjuvant activity of the
Technology with any antigen
("Milestone #1").
100,000 20% Execution of the first agreement with
a Sublicensee for the Product
("Milestone #2").
75,000 15% Execution of the second agreement
with a Sublicensee for the Product
("Milestone #3").
50,000 10% Execution of the third agreement
with a Sublicensee for the Product
("Milestone #4").
40,000 8% Successful completion of 1st Phase II
trial of the Product by a Sublicensee
("Milestone #5").
25,000 5% Regulatory submission for approval
of the 1st Product by a Sublicensee
("Milestone #6").
30,000 6% FDA approval for commercialization
of the 1st Product by a Sublicensee
("Milestone #7").
20,000 4% FDA approval for commercialization
of the 2nd Product by a Sublicensee
("Milestone #8").
10,000 2% FDA approval for commercialization
------ -----
of the 3rd Product by a Sublicensee
("Milestone #9").
500,000 100% TOTAL
For purposes of this Section 3(ii), "completion of a Phase I trial by
Vaxcel" will be defined as the date that Vaxcel delivers a final Phase
I report to Corixa.
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For purposes of this Section 3(ii), "completion of the first Phase II
of the Product by a Sublicensee" will be defined as the earlier of:
(i) the date the Sublicensee delivers a final Phase II report to
Corixa or (ii) twenty-four (24) months after the start of the Phase II
trial.
ARTICLE IV
REVENUE SHARING
4.1 Revenue Sharing Prior to Commercialization
Prior to commercialization of each Product, Corixa will share Revenue
with Vaxcel as follows:
(i) In the event a Sublicensee executes a definitive license
agreement for the Product(s), Vaxcel shall receive twenty
percent (20%) of Revenue paid to Corixa if Optivax is the sole
Non-Corixa Human Vaccine Adjuvant included in the Product(s).
(ii) In the event a Sublicensee executes a definitive license
agreement for the Product(s) where the Product(s) includes at
least one (1) Non-Corixa Human Vaccine Adjuvant in addition to
Optivax, Vaxcel shall receive twelve and one-half percent
(12.5%) of Revenue paid to Corixa.
(iii) In the event a potential Sublicensee executes an option
agreement for the use of Optivax with the Corixa Material in a
Product(s), Vaxcel shall receive twenty percent (20%) of
Revenue paid to Corixa during the term of such option
agreement if Optivax is the sole Non-Corixa Human Vaccine
Adjuvant available under such option agreement and twelve and
one-half percent (12.5%) of Revenue paid to Corixa during the
term of such option agreement if at least one (1) Non-Corixa
Human Vaccine Adjuvant in addition to Optivax is available
under such option agreement.
(iv) A Sublicensee may exercise an option for the Technology
only by executing a license agreement as set forth in Section
2.5. Upon the exercise of any such option agreement which
includes the use of Optivax with the Corixa Material in a
Product, the sharing of Revenue shall be determined pursuant
to Section 4.1(i) or 4.1(ii) hereof.
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(v) Upon termination of an option agreement, Corixa shall have
no further obligation to share Revenue with Vaxcel under this
Section 4.1 in connection with any Sublicensee or potential
Sublicensee, as applicable, as of such Sublicensee's, or
potential Sublicensee's, determination not to exercise its
rights or option to the Technology under such option
agreement, except for those Revenue sharing obligations based
on Revenue recognized by Corixa prior to such determination.
(vi) The inclusion of LeIF Adjuvant and/or Microspheres in the
Product(s) shall not affect Vaxcel's share of Revenue
hereunder.
4.2 Equity Funding, Government Grants, and R&D Funding
(i) Government grants to Corixa are specifically excluded from the
Revenue calculations for the purposes of calculating the Vaxcel
payment under Section 4.1.
(ii) The purchase of Corixa capital stock by Persons that are not
target Sublicensees are specifically excluded from the Revenue
calculations for the purposes of calculating the Vaxcel payment under
Section 4.1.
(iii) Any purchase of Corixa capital stock by a target or actual
Sublicensee which provides funding to Corixa in lieu of any other
Revenue will be considered "upside funding" and such upside funding
will be considered Revenue for the purposes of calculating the Vaxcel
payment under Section 4.1.
(iv) Research and development funding received by Corixa for the
Product(s) from non-government sources will be handled as follows:
(a) Both Corixa and Vaxcel will jointly define required R&D
support and funding required by each party pertaining to a
specific Product(s) and such costs will be directly reflected
in any R&D funding negotiated by Corixa and subsequently
earned and will not be considered Revenue for the purposes of
calculating the Vaxcel payment under Section 4.1.
(b) Any R&D funding which provides additional unspecified
funding above Vaxcel's and Corixa's costs for a specific
Product(s) as a result of accounting accommodations for the
third party will be considered "upside funding" and such
upside funding will be considered Revenue for the purposes of
calculating the Vaxcel payment under Section 4.1.
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4.3 Revenue Sharing After Commercialization
(i) Under all license agreements negotiated and executed by Corixa for
the Product(s), the minimum royalty rate on Net Sales of the
Product(s) that will be sought from each Sublicensee by Corixa for the
Product(s) will be 14.5% and the minimum royalty rate on Net Sales of
the Product(s) by a Sublicensee that will be paid by Corixa to Vaxcel
will be 2.5%.
(ii) Corixa and Vaxcel will split Revenue recognized at rates above
the 14.5% minimum rate noted above as follows:
(a) Vaxcel will receive 20% of all additional Revenue if
Optivax is the sole Non-Corixa Human Vaccine Adjuvant included
in the Product(s).
(b) Vaxcel will receive 12.5% of all additional Revenue if at
least one (1) Non-Corixa Human Vaccine Adjuvant in addition to
Optivax is included in the Product(s).
(iii) The inclusion of LeIF Adjuvant and/or Microspheres in the
Product(s) shall not affect Vaxcel's share of Revenue hereunder.
(iv) If Corixa executes a license agreement that contains a royalty
rate less than the 14.5% noted above, then the Vaxcel minimum royalty
rate of 2.5% of Net Sales of the Product(s) will not be reduced.
(v) The payments to Vaxcel under this Section 4.3 for each license
agreement for the Product(s) shall continue only for so long as the
sale of the Product(s) is subject to a Valid Copolymer Patent Claim.
4.4 Payment of Revenue and Royalties
(i) Payments owed to Vaxcel by Corixa under Sections 4.1 and 4.2 shall
be payable to Vaxcel within twenty (20) days after the date on which
such Revenue is received by Corixa.
(ii) Royalties payable to Vaxcel by Corixa under Section 4.3 shall be
due for each calendar quarter beginning with the first calendar
quarter in which Net Sales of the Product(s) occur and shall be
payable to Vaxcel within forty-five (45) days following the last day
of the applicable calendar quarter.
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4.5 Reports
(i) Corixa shall deliver to Vaxcel within forty-five (45) days after
the end of each calendar quarter a report, certified by the chief
financial officer (or equivalent) of Corixa, setting forth in
reasonable detail the calculation of the royalties payable to Vaxcel
for such calendar quarter, including the Net Sales of the Product(s)
on a country-by-country basis.
(ii) For the purposes of this Section 4.5, the Corixa report to Vaxcel
should be supported by and based upon a similar financial report from
each Sublicensee. Corixa will copy Vaxcel on such financial report(s)
from a Sublicensee(s), said copy to accompany the financial report
from Corixa to Vaxcel.
4.6 Currency and Place of Payment
(i) Corixa shall be responsible for all payments [excluding payments
from the Sublicensee(s) under the Optivax Supply Agreement] due to
Vaxcel as a result of this Agreement.
(ii) All payments from Corixa to Vaxcel under this Agreement shall be
made in immediately available funds in the legal currency of the
United States of America by corporate check to Vaxcel at the address
specified in Section 13.7 or an address designated in writing by
Vaxcel from time to time.
(iii) With respect to sales of the Product(s) made in a currency other
than United States dollars, royalties shall be computed based upon the
same conversion rate of the currencies of sales into United States
dollars as is published in The Wall Street Journal (Eastern Edition)
as of the last business day of the calendar quarter included in the
report.
(iv) In the event that Corixa is prevented from making any royalty
payment to Vaxcel under this Agreement by virtue of restrictions on
currency conversion or repatriation under the statutes, laws, codes or
governmental regulations of the country from which the payment is to
be made, then such royalty payments may be paid by depositing them in
the currency in which accrued to Vaxcel's account in
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a bank acceptable to Vaxcel in the country whose currency is involved.
If the local currency can not be converted or remitted to Vaxcel
within twelve (12) months from the initial deposit, Corixa shall pay
Vaxcel the equivalent of such amount (including any interest earnings)
in United States dollars, and the local currency shall be transferred
to an account in a bank acceptable to Corixa in that country.
4.7 Late Payment
Payments to Vaxcel hereunder shall be deemed paid as of the day on
which they are received at the account designated pursuant to Section
4.6(ii). Any part of a payment or royalty which is not paid on or
before the date when due shall accrue interest thereon from such date
until the date of its payment in full at three (3) percentage points
over the per annum interest rate published as the "Prime Rate" in The
Wall Street Journal (Eastern Edition), but in no event shall such rate
exceed the maximum rate permitted by applicable law.
4.8 Records
Corixa agrees to maintain for three (3) years after the submission of
each report under Section 4.5 hereof full and accurate books and
records in sufficient detail to enable the royalties payable hereunder
to be verified.
4.9 Audit Rights
Vaxcel shall have the right for three (3) years after the submission
of each report under Section 4.5 hereof to appoint an independent
auditor to have access to the books and records of Corixa to conduct a
review or audit thereof for the purpose of verifying the payments due
to Vaxcel under this Agreement. Such review or audit shall be:
(i) conducted by an auditor from a "Big 6" accounting firm
which is nominated by Vaxcel and acceptable to Corixa, such
acceptance not to be unreasonably withheld;
(ii) upon reasonable prior notice to Corixa;
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(iii) available not more than once each calendar year (during
normal business hours);
(iv) at Vaxcel's expense, except that Corixa shall bear any
such expense if the review or audit shows an underpayment to
Vaxcel of more than five percent (5%) for any calendar
quarter.
4.10 No Set-Offs or Counterclaims
Under no circumstances shall any amount payable to Vaxcel under this
Agreement be reduced or otherwise adjusted by virtue of any claim
against Corixa asserted or alleged by any of its Affiliates, any
assignees, Sublicensees, or any other third party.
ARTICLE V
RESPONSIBILITIES OF THE PARTIES
5.1 Transfer of Information
(i) Promptly following the Effective Date, Vaxcel shall use all
reasonable efforts to make available to Corixa a copy of Optivax
Information and will provide Corixa with additional Optivax
Information from time to time during the Agreement.
(ii) Promptly following the Effective Date, Corixa shall use all
reasonable efforts to make available to Vaxcel a copy of Corixa
Material Information and will provide Vaxcel with additional Corixa
Material Information from time to time during the Agreement.
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5.2 Development Program Responsibility
(i) The Development Program shall be designed, directed, and monitored
by a committee composed of one (1) representative appointed by each
party (the "Research and Development Committee"). Initially, such
appointees shall be Drs. ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ from Corixa and ▇▇▇▇
▇▇▇▇▇▇ from Vaxcel. The members of the Research and Development
Committee shall be the primary contacts between the parties with
respect to the Development Program, including all transmission of
documents, information, and materials thereto. Each party may replace
its appointee at any time after conferring with the other party, but
shall not do so without good reason if the other party objects. During
the Development Program, the Research and Development Committee shall
meet at least quarterly, at such times and locations as determined by
the Research and Development Committee. Either party may ask that
unresolved disagreements among members of the Research and Development
Committee be resolved by the respective chief executive officers of
Vaxcel and Corixa. If the chief executive officers do not resolve the
disagreement, either party may seek resolution in accordance with
Section 13.11.
At meetings of the Research and Development Committee, the parties
will share all Product Information generated under the Development
Program.
(ii) Except as otherwise set forth in this Article V, Corixa and the
Sublicensees shall be responsible at their cost and expense for any
and all activities relating to the Development Program for the
Product(s). Corixa and the Sublicensees shall proceed with all aspects
of the Development Program for the Product(s) as promptly as
practicable, consistent with reasonably accepted scientific practices.
(iii) The decision to include one or more Non-Corixa Human Vaccine
Adjuvant(s) in a Product(s) shall be made by the Research and
Development Committee based on the results of the Development Program.
5.3 Assistance by Vaxcel
(i) During the term of this Agreement, Vaxcel will formulate in a
manner determined by the Research and Development Committee up to
forty-five (45) reagents comprised of Optivax and Corixa Material at
no cost to Corixa.
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(ii) If requested by the Research and Development Committee, Vaxcel
shall assist in the Development Program for the Product(s) by
providing reasonable support to Corixa for immunization of laboratory
animals. Vaxcel will be reimbursed by Corixa for this Development
Program support as follows:
Element of Expense Cost to Corixa
------------------ --------------
Purchase of Mice Direct cost
Feed, bed, & housing $0.15 per mouse per day in 1996
at Vaxcel vivarium dollars (this cost will be revised
annually on January 1 based on the
U.S. Producer Price Index)
Immunizations, bleeds, etc. No charge
(iii) Notwithstanding the above, Corixa or the Research and
Development Committee may request the additional assistance of Vaxcel
in the Development Program related to the Product(s). Vaxcel agrees to
provide reasonable technical support to Corixa during the Development
Program for the Product(s) as requested by Corixa or the Research and
Development Committee. For any such work performed by Vaxcel, Corixa
will pay Vaxcel for any and all reasonable and agreed to expenses
associated with this effort.
(iv) During the Agreement, Vaxcel retains the right to preclinically
test the Product(s) in laboratory animals. If such testing is not
requested by Corixa or the Research and Development Committee, these
preclinical studies will be performed at Vaxcel's cost and expense.
Vaxcel agrees that the results of such testing will be used for
internal purposes only.
5.4 Commercialization of the Product
Corixa shall use commercially reasonable efforts to develop the
Product(s) and to identify and execute license agreements with
Sublicensees, which license agreements obligate the Sublicensees to:
(i) develop and launch the Product(s) as promptly as practicable,
consistent with commercially reasonable practice, and (ii) use
commercially reasonable efforts to maximize sales of the Product(s) in
the Territory.
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5.5 Government Approvals for the Product
Except as provided in the Optivax Supply Agreement, Corixa and/or the
Sublicensees shall be responsible, at their cost and expense, for
obtaining and maintaining all approvals, licenses, permits,
registrations or authorizations, including pricing and reimbursement
approvals, of any U.S. or non-U.S. national, state or local regulatory
agency, department, bureau or other government entity, including the
FDA, necessary for the manufacture, use, storage, transport or sale of
the Product(s) sold by or on behalf of the Sublicensees or their
Affiliates. All such approvals, registrations and authorizations shall
be in the name of either Corixa or the Sublicensees.
5.6 Drug Master File on the Copolymer
(i) CytRx submitted a Drug Master File (the "DMF") on the Copolymer to
the FDA in August 1995. CytRx, at its cost and expense, shall be
responsible for maintaining the DMF on the Copolymer at FDA. CytRx
shall maintain ownership of this DMF at FDA.
(ii) Vaxcel shall cause CytRx to submit a DMF (or comparable document)
on the Copolymer to non-U.S. regulatory agencies where Corixa or the
Sublicensees intend to submit for human clinical testing or regulatory
approval for commercialization of the Product(s). Where permitted by
local regulatory law, CytRx shall maintain ownership of any DMFs at
non-U.S. regulatory agencies.
(iii) Corixa or the Sublicensees, as authorized sublicensees of
Vaxcel, may reference CytRx's DMFs on the Copolymer at FDA and
non-U.S. regulatory agencies for confidential regulatory purposes.
5.7 Manufacture and Supply of the Copolymer
(i) Vaxcel will cause the manufacture and supply of the Copolymer to
meet the Sublicensees' requirements in accordance with the terms and
conditions of the Optivax Supply Agreement, a draft copy of which is
attached as Exhibit VI to this Agreement.
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(ii) In accordance with the terms of the Optivax Supply Agreement, if
Vaxcel and its licensed third party manufacturer are unwilling or
unable to supply the Copolymer for an unreasonable amount of time,
then the Sublicensee shall have the right to make or have made the
Copolymer. In such instance, Vaxcel agrees to make all necessary
Copolymer manufacturing know how available to the Sublicensee or its
designee.
(iii) All Optivax Supply Agreements will be negotiated and executed
directly between Vaxcel and the Sublicensees. Payments due to Vaxcel
under all Optivax Supply Agreements will be paid directly by the
Sublicensees to Vaxcel.
5.8 Manufacture and Supply of the Corixa Material and the Product
(i) Corixa does not plan to manufacture the Corixa Material or the
final Product. Corixa's strategy is to allow the Sublicensees to
manufacture or have manufactured the Corixa Material, any other
components of the final Product other than the Copolymer (if any), and
the final Product.
(ii) Any and all start-up or other costs related to the manufacture
and supply of the Corixa Material and the Product (other than the
Technology), whether borne by Corixa or the Sublicensees, shall not
effect Vaxcel's Revenue and/or royalty rates as described in Sections
4.1, 4.2 and 4.3.
5.9 Routine Updating by Parties after Commercialization of Product
After commercialization of the Product(s), Corixa shall provide Vaxcel
with semi-annual updates (which may be oral, unless Vaxcel requires a
written update), in reasonable detail, describing the Sublicensees'
commercial plans and activities for the Product(s).
5.10 Notification
Each party shall notify the other party of any adverse or unexpected
results, or any potential government action relevant to the Copolymer,
Optivax, the Corixa Material, or the Product of which such party is
aware, either directly or as a result of notice from a Sublicensee or
otherwise.
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ARTICLE VI
OWNERSHIP OF TECHNOLOGY, CORIXA MATERIAL
AND IMPROVEMENTS
6.1 Ownership of Technology and Corixa Material
(i) The Technology and all Improvements thereon created by Vaxcel
shall at all times be the sole and exclusive property of Vaxcel; it
being understood that such rights of ownership shall not impair the
ability of Corixa to have access to the Technology and all
Improvements created by Vaxcel in accordance with the terms of this
Agreement.
(ii) The Corixa Material and all Improvements thereon created by
Corixa shall at all times be the sole and exclusive property of
Corixa; it being understood that such rights of ownership shall not
impair the ability of Vaxcel to have access to the Corixa Material and
all Improvements created by Corixa in accordance with the terms of
this Agreement.
6.2 Ownership of Improvements; Joint Improvements; Joint New Inventions
(i) All Improvements to the Technology created, acquired, or developed
solely by Corixa during the term of the Agreement (collectively,
"Corixa Sole Improvements") shall be the sole and exclusive property
of Corixa. All Improvements to the Corixa Material created, acquired,
or developed solely by Vaxcel during the term of the Agreement
(collectively, "Vaxcel Sole Improvements") shall be the sole and
exclusive property of Vaxcel.
(ii) All Improvements to the Technology or the Corixa Material
created, acquired, or developed jointly by Corixa and Vaxcel shall be
jointly owned by Corixa and Vaxcel and treated as joint inventions
under the U.S. laws applicable to joint inventions (collectively,
"Joint Improvements"). All inventions not related to either the
Technology or the Corixa Material created, acquired, or developed
jointly by Corixa and Vaxcel shall be jointly owned by Corixa and
Vaxcel and
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treated as joint inventions under the U.S. laws applicable to joint
inventions (collectively, "Joint New Inventions").
(iii) Subject to Section 6.2(iv), Corixa or its Affiliates hereby
grants to Vaxcel a perpetual, irrevocable, transferable, exclusive
(even as to Corixa), worldwide, royalty-free, sublicenseable license
to the extent not otherwise owned by Vaxcel pursuant to the terms
hereof to develop, make, have made, use, market, sell and have sold
Corixa Sole Improvements and Joint Improvements (related to the
Technology) both in the Field and outside the Field.
(iv) Vaxcel agrees that the rights granted by Corixa under Section
6.2(iii) shall not impair the ability of Corixa to (a) have exclusive
rights to the Technology in accordance with the terms of the
Agreement, and (b) have exclusive rights to, and Vaxcel hereby grants
to Corixa exclusive rights to (identical with those rights granted
Corixa for the Technology), Corixa Sole Improvements, Joint
Improvements (related to the Technology) and all Improvements related
to the Technology created by Vaxcel in the Field subject to the terms
and conditions of the Agreement.
(v) Subject to Section 6.2(vi), Vaxcel or its Affiliates hereby grants
to Corixa a perpetual, irrevocable, transferable, exclusive (even as
to Vaxcel), worldwide, royalty-free, sublicenseable license to the
extent not otherwise owned by Corixa pursuant to the terms hereof to
develop, make, have made, use, market, sell and have sold Vaxcel Sole
Improvements and Joint Improvements (related to the Corixa Material)
both in the Field and outside the Field.
(vi) Corixa agrees that the rights granted by Vaxcel under Section
6.2(v) shall not impair the ability of Vaxcel to (a) have access to
the Corixa Material in accordance with the terms of the Agreement, and
(b) have access to, and Corixa hereby grants to Vaxcel rights to
(identical with those rights granted Vaxcel for the Corixa Material),
Vaxcel Sole Improvements, Joint Improvements (related to the Corixa
Material) and all Improvements related to the Corixa Material created
by Corixa in the Field subject to the terms and conditions of the
Agreement.
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6.3 The parties will enter into good faith negotiations to determine an
appropriate course of action for all Joint New Inventions. Failing
agreement over such course of action, neither party shall be entitled
to make, use, sell or authorize others to make, use, or sell such
Joint New Inventions.
6.4 Each party shall promptly notify the other in writing of all
Improvements, Joint Improvements and Joint New Inventions.
6.5 Nothing in this Article VI shall be construed to constitute a grant
(or an obligation to grant) by Corixa of any rights related to the
Corixa Material, nor a grant (or an obligation to grant) by Vaxcel of
any of its rights related to the Technology, other than as set forth
in this Agreement.
6.6 In accordance with Section 5.2, Corixa may evaluate and/or develop a
Product(s) consisting of the Corixa Material, Optivax, and a
Non-Corixa Human Vaccine Adjuvant. If Corixa combines the Copolymer or
Optivax with a Non-Corixa Human Vaccine Adjuvant(s) and decides to
submit and pursue a patent on such combination, Corixa will restrict
such patents and patent applications to the disease areas in the
Field, unless otherwise agreed to by the parties.
ARTICLE VII
ENFORCEMENT, DEFENSE, AND PROSECUTION OF PATENTS
7.1 Infringement of Copolymer Patents
(i) In the event either party becomes aware of a suspected
infringement of any Copolymer Patent or the institution by a third
party of any proceedings for the revocation of any such patent in any
country, such party shall promptly notify the other party, and
following such notification, the parties shall confer. For suspected
infringement claims, Vaxcel shall have the right, but not the
obligation, to: (a) prosecute such suspected infringement by bringing
an infringement claim in a court of competent jurisdiction; or (b) in
its sole good faith discretion, settle such infringement dispute with
such third party outside of court. For revocation
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proceedings, Vaxcel shall have the right, but not the obligation, to:
(a) defend such revocation proceeding; or (b) in its sole good faith
discretion, settle such revocation proceeding with such third party.
All such actions prosecuted, settled, or defended pursuant to this
Section 7.1(i) shall be in Vaxcel's own name and entirely under its
own direction and control. In such event, Vaxcel shall be entitled to
all recoveries (if any) resulting from any such proceeding, action, or
settlement. At Vaxcel's expense, Corixa will reasonably assist Vaxcel
in such actions, settlements or proceedings if so requested by Vaxcel,
and will lend its name to such actions, settlements, or proceedings if
requested by Vaxcel or required by law. Notwithstanding the foregoing,
Corixa shall have the right to participate and be represented in any
such action or proceeding by its own counsel at its own expense.
(ii) If Vaxcel elects not to prosecute or settle any infringement
dispute or to defend or settle any proceeding for revocation described
in this Section 7.1(i) which involves rights to which Corixa is an
exclusive licensee, then Corixa may bring such action or defend such
proceeding at its own expense and entirely under its own direction and
control [subject to the limitations set forth in the last two
sentences of this Section 7.1(ii)]. In such event, Corixa shall share
all recoveries (if any, and only to the extent applicable to each
party's rights under this Agreement, each party recognizing that other
licensees may have an interest in such recoveries) in any such
proceeding or action with Vaxcel; with Corixa receiving 50% and Vaxcel
50% after all expenses have been deducted. At Corixa's own expense
(but subject to the foregoing deduction), Vaxcel will reasonably
assist Corixa in such actions or proceedings if requested by Corixa or
required by law. Notwithstanding the foregoing, Vaxcel shall have the
right to participate or be represented in any such action or
proceeding by its own counsel at its own expense. No settlement of any
action or defense that (a) restricts the scope or affects the
enforceability of any Copolymer Patent, (b) imposes any liability on
Vaxcel, or (c) does not provide Vaxcel with a full release from all
claims and liability may be entered into under this Section 7.1(ii) by
Corixa without Vaxcel's prior written consent. In addition, Vaxcel
reserves the right to assume control of the litigation at any time if
allowed by applicable law and Vaxcel determines in its sole discretion
that such control is necessary to protect its interests in the
Copolymer Patents, but the recovery sharing set forth above in Section
7.1(ii) shall not change.
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7.2 Infringement of Corixa Material Patents
In the event either party becomes aware of a suspected infringement of
any Corixa Material Patent or the institution by a third party of any
proceedings for the revocation of any such patent in any country, such
party shall promptly notify the other party, and following such
notification, the parties shall confer. For suspected infringement
claims, Corixa shall have the right, but not the obligation, to: (a)
prosecute such suspected infringement by bringing an infringement
claim in a court of competent jurisdiction; or (b) in its sole good
faith discretion, settle such infringement dispute with such third
party outside of court. For revocation proceedings, Corixa shall have
the right, but not the obligation, to: (a) defend such revocation
proceeding; or (b) in its sole good faith discretion, settle such
revocation proceeding with such third party. All such actions
prosecuted, settled, or defended pursuant to this Section 7.2 shall be
in Corixa's own name and entirely under its own direction and control.
In such event, Corixa shall be entitled to all recoveries (if any)
resulting from any such proceeding, action, or settlement. At Corixa's
expense, Vaxcel will reasonably assist Corixa in such actions,
settlements or proceedings if so requested by Corixa, and will lend
its name to such actions, settlements, or proceedings if requested by
Corixa or required by law. Notwithstanding the foregoing, Vaxcel shall
have the right to participate and be represented in any such action or
proceeding by its own counsel at its own expense.
7.3 Responsibility for Defense
(i) In the event that a third party at any time threatens or brings
suit against either party, its Affiliates, or the Sublicensee(s)
alleging infringement of any third party patent on account of the
development, manufacture, marketing, use, or sale of any Product (each
a "Third Party Claim"), the party receiving notification of the Third
Party Claim shall promptly notify the other party, enclosing a copy of
all pleadings served, if any. Following such notification, the parties
shall confer to determine whether either or both parties shall control
the defense of the Third Party Claim. If both parties have been named
in the Third Party Claim, then, unless otherwise agreed between them,
each party shall have the right, but not obligation, to defend such
Third Party Claim in its own name and under its own direction and
control. If only one party has been named or if the parties agree that
only one party shall defend such Third Party Claim, then that party
shall have the right, but not obligation, to defend such Third Party
Claim in its own name and under its own
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direction and control. The other party will reasonably assist the
party defending such Third Party Claim if so requested. In addition,
the other party shall have the right to participate and be represented
in any such Third Party Claim by its own counsel. No settlement of any
Third Party Claim that (a) restricts the scope or affects the
enforceability of any Copolymer Patent, (b) imposes any liability on
Vaxcel, or (c) does not provide Vaxcel with a full release from all
claims and liability may be entered into under this Section 7.3
without Vaxcel's prior written consent. No settlement of any Third
Party Claim that (a) restricts the scope or affects the enforceability
of any Corixa Material Patent, (b) imposes any liability on Corixa, or
(c) does not provide Corixa with a full release from all claims and
liability may be entered into under this Section 7.3 without Corixa's
prior written consent.
(ii) In the event that Vaxcel or Corixa, as the case may be, incurs
any costs or expenses in connection with the defense of any Third
Party Claim, such costs or expenses shall be borne by the party that
incurs them.
(iii) In the event, by way of counterclaim or otherwise, either party
or both parties recovers any damages or other sums in any action,
suit, or proceeding involving a Third Party Claim, or in settlement
thereof, such recovery shall be applied and shared as mutually agreed.
7.4 Prosecution of Patents
(i) Each party shall diligently file, prosecute and maintain all
patent rights relating to its respective Sole Inventions, and Corixa
shall diligently file, prosecute and maintain all patent rights
relating to the Joint Inventions, to effectively cover such inventions
throughout the Territory (collectively, the "Invention Patents" and
each party so filing, prosecuting and maintaining, a "Filing Party").
The Filing Party shall use reasonable commercial efforts to ensure
that the claims are filed and are issued on such Filing Party's
Invention Patents and that all such Filing Party's Invention Patents
are filed before any public disclosure (or other statutory law) to
ensure the validity of such Filing Party's Invention Patents. The
Filing
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Party shall give the other party immediate notice of its decision to
prepare or file any Invention Patent. The Filing Party shall provide
the other party with draft copies of all such Filing Party's Invention
Patents and related prosecution documents, and the other party shall
have, to the extent reasonably possible, thirty (30) days from receipt
of such drafts, to provide comments to the Filing Party. The Filing
Party shall confer with the other party, and make reasonable efforts
to adopt the other party's suggestions regarding prosecution of any of
such Filing Party's Invention Patents. Notwithstanding the foregoing,
the Filing Party shall have the right to take such actions as are
reasonably necessary, in its good faith judgment, to preserve all
rights under such Filing Party's Invention Patents throughout the
Territory. As soon as practical subsequent to the filing of any Filing
Party's Invention Patent prosecution document, the Filing Party shall
provide the other party a copy of such document. In addition, the
Filing Party shall copy the other party with any official office
action and Filing Party submissions with respect to such Filing
Party's Invention Patents.
(ii) Should the party designated as the Filing Party in Section 7.4(i)
be unable or determine not to file, prosecute, maintain, or issue any
of such Filing Party's designated Invention Patents, or any related
applications, in any particular country or jurisdiction, the
designated Filing Party shall grant any and all authority necessary to
allow the other party to timely file, prosecute, and maintain such an
Invention Patent, all at the expense of the designated Filing Party.
ARTICLE VIII
TERM & TERMINATION
8.1 Term of the Agreement
This Agreement shall begin on the Effective Date and, unless sooner
terminated under this Article VIII, shall expire upon the expiration
of the last to expire Copolymer Patent.
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8.2 Termination of Corixa's Rights in Certain Disease Areas
Corixa rights in a disease area will be terminated and revert back to
Vaxcel based on:
(i) Written notification by Corixa.
(ii) Corixa or a Sublicensee are not proceeding diligently in
accordance with Sections 5.2 and 5.4 with the Development
Program in a disease area, for any reason, including an
unfavorable preclinical or clinical result that prevents
further development, and such lack of development effort
continues for six (6) months.
(iii) If Corixa has not executed a license agreement for a
Product in a disease area within four (4) years of the
Effective Date of this Agreement.
(iv) If the Research and Development Committee reasonably
believes the inclusion of a Non-Corixa Human Vaccine
Adjuvant(s) in a Product(s) for a specific disease area could
cause regulatory problems for Vaxcel, Vaxcel will have the
option to terminate Corixa's rights to such disease area
without penalty. If members of the Research and Development
Committee disagree on this matter, either party may request
that this disagreement be resolved by the respective chief
executive officers of Vaxcel and Corixa. If the chief
executive officers do not resolve the disagreement, Vaxcel
will have the option to terminate Corixa's rights to such
disease area without penalty.
8.3 Termination of the Entire Agreement by Vaxcel or Corixa
(i) Upon the occurrence of any of the events of breach by Corixa set
forth below, Vaxcel shall have the right to terminate this Agreement
before expiration of its stated term:
(a) nonpayment of any amount payable to Vaxcel, effective ten
(10) days following written notice unless Corixa has cured
such breach during such ten (10) day period; or
(b) Corixa uses the Technology outside the Field, effective
thirty (30) days following written notice unless Corixa has
cured such breach during such thirty (30) day period; or
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(c) Corixa manufactures or attempts to manufacture the
Copolymer either directly or through a third party, effective
thirty (30) days following written notice unless Corixa has
cured such breach during such thirty (30) day period.
(ii) Corixa shall have the right to terminate this Agreement in the
event Vaxcel breaches its obligation to cause Copolymer to be
manufactured and supplied in accordance with Section 5.7 hereof and
the terms of the Optivax Supply Agreement, effective thirty (30) days
following written notice unless Vaxcel has cured such breach during
such thirty (30) day period.
8.4 Termination of the Entire Agreement by Either Party
This Agreement may be terminated by either party before expiration of
its stated term, by giving written notice of termination, such
termination effective upon the giving of such notice, as follows:
(i) if at any time during this Agreement, the Copolymer or
Optivax is proven to be unapprovable by FDA and similar
non-U.S. regulatory agencies for safety or other reasons; or
(ii) if Corixa's rights in all disease areas have been
terminated; or
(iii) if Corixa has not executed a license agreement for any
Product in the Field within four (4) years of the Effective
date; or
(iv) breach by the other party of any covenant [other than a
payment covenant covered by Section 8.3(i)] or of any
representation or warranty contained in this Agreement that is
continuing thirty (30) calendar days after the non- breaching
party gives the breaching party written notice of such breach;
or
(v) the non-terminating party becomes insolvent, or voluntary
or involuntary proceedings by or against the non- terminating
party are instituted in bankruptcy or under any insolvency
law, or a receiver or
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custodian is appointed for the non-terminating party, or
proceedings are instituted by or against the non- terminating
party for corporate reorganization or the dissolution of the
non-terminating party, which proceedings, if involuntary,
shall not have been dismissed within sixty (60) days after the
date of filing, or the non- terminating party makes an
assignment for the benefit of creditors; or
(vi) The cessation of operations by the non-terminating party
(other than pursuant to a merger, reorganization or
consolidation in which the non-terminating party is not the
surviving corporation or a sale by the non-terminating party
of all or substantially all of its assets); or
(vii) the seizure or attachment of all or substantially all of
the assets of the non-terminating party, in conjunction with
any action against it by any third party, which seizure or
attachment is not released within forty-five (45) days after
such seizure or attachment and which is contested in good
faith by the non-terminating party.
8.5 No Other Events of Termination
This Agreement shall terminate or otherwise be deemed to end if and
only if the expiration or termination is effected pursuant to Sections
8.3 and 8.4 hereof.
8.6 Rights and Duties Upon Termination
(i) Termination of Corixa's rights in a disease area under Section 8.2
will not terminate the entire agreement between Corixa and Vaxcel.
(ii) If Corixa's rights in a disease area are terminated and revert
back to Vaxcel in accordance with Section 8.2, Vaxcel is free to
license the rights to such disease area to another third party without
limitation.
(iii) No exercise by either party of any right of termination will
constitute a waiver of any right of either party for recovery of any
moneys then due to it hereunder or any other right or remedy either
party may have by law or by this Agreement.
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(iv) Within thirty (30) days after termination of this Agreement under
Sections 8.3 and 8.4:
(a) Each party shall return to the other party all materials
of the other party received pursuant to this Agreement or
otherwise; and
(b) All unused Corixa Material, Copolymer and Optivax System
shall be returned to their rightful owner or destroyed, at the
sole option of the rightful owner. In addition, any
noncommercial inventories of Product(s), including clinical
supplies, shall be destroyed. All disposals of materials shall
be performed in compliance with applicable law.
(v) If the entire Agreement is terminated for any reason, Vaxcel is
free to license the Copolymer and Optivax in the Field to any third
party, without limitation.
(vi) If Vaxcel breaches any of the covenants and representations under
this Agreement and this Agreement is then terminated, all rights to
the point of termination shall remain with Corixa, including access to
CytRx's DMFs.
(vii) In the case of termination of this Agreement due to the
insolvency of Vaxcel, this Agreement may be transferable to CytRx upon
prior written approval of both Corixa and CytRx.
(viii) In the case of termination of this Agreement due to the
insolvency of Corixa, Vaxcel will honor all license agreements for the
Product(s) that were executed by Corixa prior to the point of
termination on mutually agreed, revised financial terms that are
negotiated between Vaxcel and Sublicensees.
(ix) In the event this Agreement is terminated pursuant to Sections
8.3(ii) or 8.4(iv) thereof on account of breach of the Agreement by
Vaxcel, Vaxcel shall be entitled to exercise the Warrant for the
number of shares of Series A Preferred Stock for which the Warrant is
exercisable in accordance with Article III based on the milestones
completed prior to such termination; provided, however, that in the
event of any such termination, Corixa shall have the right (the
"Repurchase Right"), at Corixa's sole discretion, to repurchase all or
any portion of the shares of Series A Preferred Stock purchased by
Vaxcel upon any exercise of the Warrant at a price per share equal to
the Warrant Price (as defined in the Warrant); provided further,
however, Corixa's Repurchase Right shall terminate when Vaxcel no
longer holds any shares of Series A Preferred Stock.
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(x) In the event this Agreement is terminated pursuant to Sections
8.3(i) or 8.4(iv) thereof on account of a breach of the Agreement by
Corixa, then upon such termination, Vaxcel shall be entitled to
exercise the Warrant immediately, in whole or in part in accordance
with the number of shares set forth in Article III for up to the full
500,000 shares of Series A Preferred Stock for which the Warrant is
exercisable, subject to adjustment pursuant to Section 2 of the
Warrant and subject to the limits set forth in Section 1.1 of the
Warrant.
(xi) In the event this Agreement is terminated for any reason other
than set forth in Sections 8.6(ix) and 8.6(x) above, Vaxcel shall be
entitled to exercise the Warrant for the number of shares of Series A
Preferred Stock for which the Warrant is exercisable in accordance
with Article III based on the milestones completed prior to such
termination; provided, however, that in the event of any such
termination, Corixa shall not have the Repurchase Right set forth in
Section 8.6(ix) hereof.
8.7 Survival of Contents
Notwithstanding anything else in this Agreement to the contrary, the
parties agree that Corixa's obligation to pay Vaxcel any Revenues or
royalties accrued but unpaid prior to such termination shall survive
the termination of this Agreement. In addition, Sections 4.8, 4.9,
6.1, 6.2, 6.3, 6.4, 7.1 through 7.3 (only to the extent such claim or
action arose prior to termination or expiration of this Agreement),
7.4, 9.1(i) through (iii), 9.1(v) and (vi), 9.5, 9.6, and 13.1 through
13.11 and this Section 8.7 and Articles III (only to the extent
necessary to Vaxcel's rights under the Warrant), X, XI, and XII shall
survive the termination of this Agreement, together with any other
provisions to the extent required for the full observation and
performance of the surviving terms by any or all of the parties
hereto.
ARTICLE IX
CERTAIN COVENANTS
9.1 Proprietary Information
(i) Non-Disclosure Covenant
Trade Secrets and Confidential Information and all physical
embodiments thereof received by one party (the "Receiving Party") from
the other (the "Disclosing
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Party") during the term of this Agreement are confidential to and are
and will remain the sole and exclusive property of the Disclosing
Party. At all times, both during the term of this Agreement and after
its termination, a Receiving Party shall hold all Trade Secrets of a
Disclosing Party in confidence, and will not use (except as needed to
exercise the rights granted hereunder), copy or disclose such Trade
Secrets, or any physical embodiment thereof, or cause any of such
Trade Secrets to lose their character as Trade Secrets. At all times
during the term of this Agreement and for a period of five (5) years
following its termination, a Receiving Party shall hold the
Confidential Information of a Disclosing Party in confidence, and will
not use (except as needed to exercise the rights granted hereunder),
copy or disclose such Confidential Information, or any physical
embodiments thereof, or cause any of such Confidential Information to
lose its character or cease to qualify as Confidential Information.
(ii) Security Measures
Trade Secrets and Confidential Information shall be maintained under
secure conditions by a Receiving Party, using reasonable security
measures and in any event not less than the same security measures
used by a Receiving Party for the protection of its own trade secrets
and confidential information of a similar kind. A Receiving Party
shall not remove, obscure, or deface any proprietary legend relating
to a Disclosing Party's rights, on or from any tangible embodiment of
any Trade Secrets or Confidential Information without the Disclosing
Party's prior written consent.
(iii) Disclosure Ordered by Government Bodies
If a Receiving Party is ordered by a court, administrative agency, or
other governmental body of competent jurisdiction to disclose Trade
Secrets or Confidential Information, or if it is served with or
otherwise becomes aware of a motion or similar request that such an
order be issued, then a Receiving Party will not be liable to a
Disclosing Party for disclosure of Trade Secrets or Confidential
Information required by such order if a Receiving Party complies with
the following requirements: (a) if an already-issued order calls for
immediate disclosure, then the Receiving Party shall immediately move
for or otherwise request a stay of such order to permit the Disclosing
Party to respond as set forth in this Section 9.1(iii); (b) the
Receiving Party shall immediately notify the
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Disclosing Party of the motion or order by the most expeditious
possible means; and (c) the Receiving Party shall join or agree to (or
at a minimum shall not oppose) a motion or similar request by the
Disclosing Party for an order protecting the secrecy of the Trade
Secrets and Confidential Information including joining or agreeing to
(or non-opposition to) a motion for leave to intervene by the
Disclosing Party.
(iv) Reports of Misappropriation by Others
The Receiving Party shall immediately report to the Disclosing Party
any action by any person of which the Receiving Party has knowledge:
(a) to use or disclose any portion of the Trade Secrets or
Confidential Information without authorization from the Disclosing
Party; or (b) to copy, reverse assemble, reverse compile or otherwise
reverse engineer any part of such materials (except as permitted
herein).
(v) Trade Secrets Defined
"Trade Secrets" means information related to the Disclosing Party
which: (a) derives economic value, actual or potential, from not being
generally known to or readily ascertainable by other persons who can
obtain economic value from its disclosure or use; and (b) is the
subject of efforts that are reasonable under the circumstances to
maintain its secrecy.
(vi) Confidential Information Defined
"Confidential Information" means information that is: (a) confidential
to the business of the Disclosing Party; (b) is designated and
identified as such by the Disclosing Party; and (c) is not a Trade
Secret. Confidential Information does not include:
(i) any information that is at the time of receipt by the
Receiving Party or thereafter becomes part of the public
domain other than as a result of the unauthorized actions of
the Receiving Party (through publication or otherwise); or
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(ii) any information that was independently known to the
Receiving Party prior to receipt thereof from the Disclosing
Party, as evidenced by written records of the Receiving Party;
or
(iii) any information that was disclosed to the Receiving
Party by a third party having the right to disclose such
information; or
(iv) information that is required to be disclosed by the
Receiving Party by proper order of a court or administrative
body, but prior to such disclosure, the Receiving Party must
notify the Disclosing Party of its reasonable belief that
disclosure is required and provide the Disclosing Party
reasonable opportunity to contest such disclosure.
Notwithstanding the foregoing, it is understood that a Receiving Party
may disclose Trade Secrets and Confidential Information to its
consultants, outside contractors, clinical investigators,
Sublicensees, potential Sublicensees (including, but not limited to
optionees hereunder), and agents if such persons agree to keep such
information secret to the same extent the Receiving Party is so
obligated hereunder, and agree to use such information only for such
purposes as the Receiving Party is authorized to use such information
under this Agreement.
9.2 Certain Trademark Matters
(i) Vaxcel received official notice from the U.S. Patent and Trademark
Office in August 1995 that the Statement of Use for the Optivax
trademark has been accepted and that the Trademark Office will
register this ▇▇▇▇ in due course.
At its own cost and expense, Vaxcel will seek, register, maintain, and
defend such registration of the Optivax trademark.
(ii) Corixa and the Sublicensees shall be entitled to use and refer to
Vaxcel's trademarks in their reports to stockholders, registration
statements, private placement memoranda and similar corporate
documents and records, with Vaxcel's prior written approval of such
use and without obligation to Vaxcel.
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(iii) Vaxcel shall be entitled to use and refer to Corixa's and the
Sublicensees' trademarks in their reports to stockholders,
registration statements, private placement memoranda and similar
corporate documents and records, with Corixa's prior written approval
of such use and without obligation to Corixa or the Sublicensees.
(iv) At their own expense and cost, Corixa and the Sublicensees shall
own, shall have the sole right to use, and shall be responsible for
the selection, registration, prosecution, defense, and maintenance of
all trademarks [other than the Optivax ▇▇▇▇ described under Section
9.2(i) herein] which they employ in connection with the Corixa
Material and the Product(s). Corixa and the Sublicensees shall not use
any trademarks for the Corixa Material or the Product(s) which are
confusingly similar to the Optivax trademark.
9.3 Compliance with Laws
Corixa and the Sublicensees shall comply with all applicable laws,
rules and regulations pertaining to the use of the Technology and the
development, clinical testing, manufacturing, marketing, advertising,
sale, use and distribution of the Product(s).
9.4 Taxes
All taxes, assessments and fees of any nature levied or incurred on
account of any payments accruing under this Agreement, by national,
state or local governments, will be assumed and paid by Corixa or the
Sublicensees, except taxes levied thereon as income to Vaxcel, and if
such taxes are required to be withheld by Corixa or its sublicensees,
they will be deducted from such payments due to Vaxcel and will be
paid by Corixa or the Sublicensees for the account of Vaxcel, a
receipt thereof secured, if available and sent to Vaxcel. If for any
reason Vaxcel cannot credit such withholding tax in a particular
country against the Federal income taxes paid by Vaxcel, Corixa or the
Sublicensees shall increase the royalty in such country to provide
Vaxcel with a net amount equal to the royalty that would have been
paid absent such withholding tax.
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9.5 Press Releases
Each party shall provide the other party with the prior opportunity to
review and approve any press releases or similar public announcements
concerning this Agreement or the Product(s) as soon as practicable,
but in no event later than 24 hours before an announcement is made.
Both parties acknowledge that its opportunity to review and approve
press announcements is subject to and may be limited by any securities
laws to which the parties may be subject that require immediate
disclosure.
Both parties agree not to disclose the terms of this Agreement,
including any exhibits or attachments hereto, without the prior
written consent of the other party.
9.6 Publication and Presentation
(i) If either party desires to publish or present the results of the
Development Program, the publishing / presenting party shall provide
the non-publishing / non-presenting party a copy of the manuscript of
any proposed publication or presentation. The non-publishing /
non-presenting party shall then have thirty (30) days to review and
comment on the manuscript or presentation, and the publishing /
presenting party agrees to delete any information identified by the
non-publishing / non-presenting party as its Trade Secrets or
Confidential Information.
(ii) In the event the non-publishing / non-presenting party determines
that a patent application covering information contained in the
proposed publication or presentation should be filed, the party
proposing the publication or presentation shall delay such publication
or presentation to allow a reasonable amount of time for such filing
to be made.
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ARTICLE X
DISCLAIMER
EXCEPT AS EXPRESSLY SET FORTH IN ARTICLE XII HEREINAFTER, NEITHER
CORIXA NOR VAXCEL MAKE ANY EXPRESS OR IMPLIED WARRANTIES, STATUTORY OR
OTHERWISE, CONCERNING THE TECHNOLOGY, THE CORIXA MATERIAL, THE PRODUCT
OR ANY OTHER INFORMATION COMMUNICATED TO CORIXA BY VAXCEL OR TO VAXCEL
BY CORIXA. SPECIFICALLY, BUT WITHOUT LIMITING THE FOREGOING, VAXCEL
MAKES NO EXPRESS OR IMPLIED WARRANTY OF MERCHANTABILITY, FITNESS (FOR
A PARTICULAR PURPOSE OR OTHERWISE), QUALITY OR USEFULNESS OF THE
TECHNOLOGY AND CORIXA MAKES NO EXPRESS OR IMPLIED WARRANTY OF
MERCHANTABILITY, FITNESS (FOR A PARTICULAR PURPOSE OR OTHERWISE),
QUALITY OR USEFULNESS OF THE CORIXA MATERIAL OR THE PRODUCT. ALL
PHYSICAL EMBODIMENTS OF THE TECHNOLOGY PROVIDED BY VAXCEL HEREUNDER
AND ALL CORIXA MATERIALS PROVIDED BY CORIXA HEREUNDER ARE PROVIDED ON
AN "AS IS" BASIS. VAXCEL DOES NOT WARRANT THE ACCURACY OF ANY
INFORMATION INCLUDED WITHIN THE OPTIVAX INFORMATION NOR DOES VAXCEL
WARRANT THAT ANY SUCH INFORMATION CONSTITUTES TRADE SECRETS OR
CONFIDENTIAL INFORMATION OR THAT THE COPOLYMER PATENTS WILL BE FREE
FROM CLAIMS OF INFRINGEMENT BY THIRD PARTIES OR ANY OTHER RIGHTS OF
THIRD PARTIES. SIMILARLY, CORIXA DOES NOT WARRANT THE ACCURACY OF ANY
INFORMATION INCLUDED WITHIN THE CORIXA MATERIAL INFORMATION NOR DOES
CORIXA WARRANT THAT ANY SUCH INFORMATION CONSTITUTES TRADE SECRETS OR
CONFIDENTIAL INFORMATION OR THAT THE CORIXA MATERIAL PATENTS WILL BE
FREE FROM CLAIMS OF INFRINGEMENT BY THIRD PARTIES OR ANY OTHER RIGHTS
OF THIRD PARTIES.
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UNDER NO CIRCUMSTANCES SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY
OR ANY THIRD PARTY FOR ANY INCIDENTAL OR CONSEQUENTIAL DAMAGES IN
TORT, CONTRACT, STRICT LIABILITY OR OTHERWISE INCURRED BY OTHER PARTY
OR ANY THIRD PARTY EXCEPT FOR BREACH OF SECTION IX BASED ON GROSS
NEGLIGENCE OR WILLFUL MISCONDUCT AND SOLELY IN CONNECTION WITH CORIXA
MATERIALS OWNED BY CORIXA, EXCEPT FOR BREACH OF SECTION 12.2(IV).
ARTICLE XI
INDEMNITY
11.1 Indemnification by Corixa and Sublicensees
Corixa and the Sublicensees will indemnify and hold harmless CytRx,
Vaxcel, and their Affiliates, employees, officers, directors,
stockholders and agents (a "CytRx / Vaxcel Indemnified Party") from
and against any and all liability, loss, damages, costs, or expenses
(including reasonable attorneys' fees) which the CytRx / Vaxcel
Indemnified Party may incur, suffer or be required to pay resulting
from or arising in connection with: (i) the breach by Corixa of any
covenant, representation or warranty contained in this Agreement; (ii)
the development, clinical testing, manufacturing, marketing, sale or
distribution of the Product(s) by Corixa or the Sublicensees or any
person on behalf of Corixa or the Sublicensees; (iii) the use by any
person of the Product(s) that was manufactured, marketed, sold or
distributed by Corixa, the Sublicensees, or any of their Affiliates;
(iv) the use by Corixa, the Sublicensees, or any of their Affiliates
of the Copolymer or Optivax; (v) the successful enforcement by a CytRx
/ Vaxcel Indemnified Party of any of the foregoing, except that
neither Corixa nor any of the Sublicensees shall have any obligation
to so indemnify or hold harmless for any such liability, loss damages,
cost or expense (including reasonable attorney's fees) resulting from
or arising in connection with the gross negligence or willful
misconduct of a CytRx / Vaxcel Indemnified Party.
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11.2 Indemnification by Vaxcel
Vaxcel shall indemnify and hold harmless Corixa, the Sublicensees and
their Affiliates, employees, officers, directors, stockholders and
agents (a "Corixa Indemnified Party") from and against any and all
liability, loss, damages, costs, or expenses (including reasonable
attorneys' fees) which the Corixa Indemnified Party may incur, suffer
or be required to pay resulting from or arising in connection with:
(i) the breach by Vaxcel of any covenant, representation or warranty
contained in this Agreement, or (ii) the successful enforcement by a
Corixa Indemnified Party of any of the foregoing, except that Vaxcel
shall have no obligation to so indemnify or hold harmless for any such
liability, loss damages, cost or expense (including reasonable
attorney's fees) resulting from or arising in connection with the
gross negligence or willful misconduct of a Corixa Indemnified Party.
11.3 Conditions to Indemnification
The obligations of the indemnifying party under Sections 11.1 and 11.2
are conditioned upon the prompt notification to the indemnifying party
of any of the aforementioned suits or claims in writing within fifteen
(15) days after receipt of notice by the indemnified party of such
suit or claim. The indemnifying party shall have the right to assume
the defense of any such suit or claim unless, in the reasonable
judgment of the indemnified party, such suit or claim involves an
issue or matter which could have a materially adverse effect on the
business, operations or assets of the indemnified party, in which
event the indemnified party may control the defense or settlement
thereof. If the indemnifying party defends the claim, the indemnified
party may participate in the defense of such suit or claim at its sole
cost and expense. This provision for indemnification shall be void
and there shall be no liability against a party as to any suit or
claim for which settlement or compromise or an offer of settlement or
compromise is made without the prior consent of the indemnifying
party.
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ARTICLE XII
REPRESENTATIONS AND WARRANTIES
12.1 Representations and Warranties of Vaxcel
Vaxcel represents and warrants to Corixa as follows:
(i) It is a corporation duly organized, validly existing and
in good standing under the laws of the State of Delaware.
(ii) The execution and delivery of this Agreement have been
duly and validly authorized, and all necessary action has been
taken to make this Agreement a legal, valid and binding
obligation of Vaxcel enforceable in accordance with its terms.
(iii) The execution and delivery of this Agreement and the
performance by Vaxcel of its obligations hereunder will not
contravene or result in any breach of the Certificate of
Incorporation or Bylaws of Vaxcel or result in any material
breach or violation of or material default under any material
agreement, indenture, license, instrument or understanding or,
to the best of its knowledge, result in any violation of any
law, rule, regulation, statute, order or decree to which
Vaxcel is a party or by which any of them or any of their
property is subject.
(iv) As of the Effective Date, Vaxcel has not received any
notice of any claim that the Copolymer or the Copolymer
Patents infringe upon any third party's know-how, patent or
other intellectual property rights.
(v) Vaxcel possesses all right, title, and interest in and to
the Technology necessary to grant the licenses granted to
Corixa hereunder.
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(vi) Vaxcel has received from CytRx an exclusive, worldwide
right and license, including the right to sublicense on the
terms of the Agreement, to the Copolymer for use as a Human
Vaccine Adjuvant and Vaxcel has full right to practice under
the Copolymer Patents.
(vii) As of the Effective Date, the License Agreement, as
amended and restated on August 10, 1995, between CytRx and
Vaxcel is in full force and effect and grants to Vaxcel all
rights necessary to Corixa's exercise in full of the rights
granted by Vaxcel to Corixa hereunder.
(viii) Vaxcel has no contractual obligations to any third
party that preclude, conflict with or in any way encumber
Vaxcel's right to grant to Corixa the rights and licenses
granted under the Agreement. Vaxcel shall not enter into any
agreement either written or oral that conflicts with the
rights and/or licenses granted to Corixa under the Agreement.
12.2 Representations and Warranties of Corixa
Corixa represents and warrants to Vaxcel as follows:
(i) Corixa is a corporation duly incorporated, validly
existing and in good standing under the laws of the State of
Delaware.
(ii) The execution and delivery of this Agreement have been
duly and validly authorized, and all necessary action has been
taken to make this Agreement a legal, valid and binding
obligation of Corixa enforceable in accordance with its terms.
(iii) The execution and delivery of this Agreement and the
performance by Corixa of its obligations hereunder will not
contravene, or result in any breach of, the Certificate of
Incorporation or Bylaws of Corixa, or result in any material
breach or violation of or material default under any material
agreement, indenture, license, instrument or understanding or,
to the best of its knowledge, result in any violation of any
law, rule, regulation, statute, order or decree to which
Corixa or any of its Affiliates is a party or by which any of
them or any of their property is subject.
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(iv) Corixa is the owner of record of, and owns all right,
title, and interest in and to, or is the exclusive licensee of
all rights in the Field of, the Corixa Material and the Corixa
Material Patents, and possesses all rights necessary to grant
Vaxcel the rights granted pursuant to this Agreement.
(v) As of the Effective Date, Corixa has not received any
notice of any claim that the Corixa Material or the Corixa
Material Patents infringe upon any third party's know-how,
patent or other intellectual property rights.
(vi) The copies of the Amended and Restated Certificate of
Incorporation and bylaws of Corixa that Corixa has provided to
Vaxcel are true and complete copies of such documents.
(vii) Except as set forth on Exhibit VII hereto, Corixa has no
outstanding Common Stock, Preferred Stock, warrants, options,
or rights for the purchase or acquisition of any Corixa
securities (including conversion or preemptive rights and
rights of first refusal). Except as provided in the Investors'
Rights Agreement attached as Exhibit VIII hereto, Corixa is
presently not under any obligation and has not granted any
rights to register under the Securities Act of 1933, as
amended, any of its presently outstanding securities or any of
its securities that may subsequently be issued.
(viii) Vaxcel has been provided with copies of: (x) an audited
balance sheet of Corixa as of December 31, 1994 and, for the
fiscal year ending on such date, an audited income statement,
together with the notes thereto and reports thereon of
Corixa's independent certified public accountants (the
"Audited Financial Statements"); and (y) the March 21, 1996
drafts of an unaudited balance sheet of Corixa as of December
31, 1995 and, for the fiscal year ending on such date, an
unaudited statement of cash flows and an unaudited statement
of operations. The Audited Financial Statements: (a) are in
accordance with the books and records of Corixa, which have
been properly maintained and are complete and correct in all
material respects; (b) present fairly the financial condition,
assets, and liabilities and results of operations of Corixa as
of the respective dates indicated and
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for the periods indicated; (c) have been prepared in
accordance with generally accepted accounting principles
consistently applied throughout the periods involved; and (iv)
reflect adequate reserves for all known liabilities and
reasonably anticipated losses.
(ix) To Corixa's knowledge, since December 31, 1995, there has
not been any event or condition of any type that has
materially and adversely affected the business, properties,
prospects, assets, liabilities, financial condition or
operating results of Corixa from that reflected on the draft
financial statements referenced in Section 12.2(viii)(y)
hereof.
ARTICLE XIII
MISCELLANEOUS
13.1 Entire Agreement: Amendment
This Agreement, together with the Exhibits annexed hereto sets forth
and constitutes the entire agreement between the parties hereto with
respect to the subject matter hereof, and supersedes any and all prior
agreements, understandings, promises, and representations made by
either party to the other concerning the subject matter hereof and the
terms applicable hereto. This Agreement may not be released,
discharged, amended or modified in any manner except by an instrument
in writing signed by duly authorized representatives of Vaxcel and
Corixa.
13.2 Parties Independent
In making and performing this Agreement, the parties act and shall act
at all times as independent entities and nothing contained in this
Agreement shall be construed or implied to create an agency,
partnership or employer and employee relationship between Vaxcel and
Corixa. Except as specifically provided herein, at no time shall
either party make commitments or incur any charges or expenses for or
in the name of the other party.
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13.3 Effect of Invalidity of Certain Provisions
Any term or provision of this Agreement which is invalid or
unenforceable in any jurisdiction shall, as to such jurisdiction, be
ineffective to the extent of such invalidity or unenforceability
without rendering invalid or unenforceable the remaining terms and
provisions of this Agreement.
13.4 Governing Law
This Agreement shall be deemed to have been entered into and shall be
construed and enforced in accordance with the laws of the State of
Georgia, without reference to conflict of law principles.
13.5 Waivers
The failure of either party to insist, in any one or more instances,
upon the performance of any of the terms, covenants or conditions of
this Agreement and to exercise any right hereunder, shall not be
construed as a waiver or relinquishment of the future performance of
any such term, covenant or condition or the future exercise of such
right, but the obligations of the other party with respect to such
future performance shall continue in full force and effect.
13.6 Headings
The headings of the articles, sections and paragraphs used in this
Agreement are included for convenience only and are not to be used in
construing or interpreting this Agreement.
13.7 Notice
Any notice or other communication required or permitted to be made or
given to either party hereto pursuant to this Agreement shall be
sufficiently made or given if sent to such party by either telecopy
transmission or certified or registered first class mail, postage
prepaid, return receipt requested addressed to it as follows:
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If to Vaxcel:
Vaxcel, Inc.
▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
Technology Park / ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Telephone No. (▇▇▇) ▇▇▇-▇▇▇▇
Fax No. (▇▇▇) ▇▇▇-▇▇▇▇
Attention: President
If to Corixa:
Corixa Corporation
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Telephone No. (▇▇▇) ▇▇▇-▇▇▇▇
Fax No. (▇▇▇) ▇▇▇-▇▇▇▇
Attention: Chief Operating Officer
or to such other address as either party shall designate by written
notice, similarly given, to the other party. Any notice if given or
made by certified or registered first class mail letter, return
receipt requested, shall be deemed to have been received on the
earlier of the date actually received and the date three (3) days
after the same was posted (and in proving such it shall be sufficient
to prove that the envelope containing the same was properly addressed
and posted as aforesaid) and if given or made by telecopy transmission
shall be deemed to have been received at the time of dispatch, unless
such date of deemed receipt is not a business day, in which case the
date of deemed receipt shall be the next succeeding business day.
13.8 Successors and Assigns
This Agreement shall not be assignable by either party without the
prior written consent of the other party, except that such consent is
not required in connection with the assignment of either party's
rights or obligations hereunder to an Affiliate thereof or to any
successor to substantially all of this Agreement whether as a result
of merger, consolidation or the sale of all or substantially all of
the assets of
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the assigning party. Subject to the foregoing, this Agreement, and
each and every provision hereof, shall be binding upon and shall inure
to the benefit of the parties, their respective successors,
successors-in-title, heirs and assigns, and each and every
successor-in-interest to any party, whether such successor acquires
such interest by way of gift, purchase, foreclosure, or by any other
method, shall hold such interest subject to all the terms and
provisions of this Agreement.
13.9 Counterparts
This Agreement shall become binding when any one or more counterparts
hereof, individually or taken together, shall bear the signatures of
each of the parties hereto. This Agreement may be executed in any
number of counterparts, each of which shall be an original as against
either party whose signature appears thereon, but all of which
together shall constitute but one and the same instrument.
13.10 Force Majeure
The parties shall not be responsible for failure to perform any of the
obligations imposed by this Agreement (except an obligation to pay
money), provided such failure is caused by fire, storms, floods,
strikes, lockouts, accidents, war, riots or civil commotions,
inability to obtain railroad cars or raw materials, embargoes, any
State or Federal regulation, law, or restriction, seizure or
acquisition of the Copolymer, Optivax, the Corixa Material or the
Product(s) by the Government of the United States or of any state, or
of any agency thereof or by reason of any compliance with a demand or
request for such product for any purpose for national defense, or any
other cause or contingency beyond the reasonable control of said party
(whether or not of the same kind or nature as the causes or
contingencies above enumerated) shall not subject the party so failing
to any liability to the other.
13.11 Dispute Resolution
(i) Good Faith Discussions
The parties will attempt to resolve through good faith discussions any
dispute which arises under this Agreement. Any dispute may, at the
election of either
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party, be referred to the chief executive officers of each party. If
they are unable to resolve the dispute within thirty (30) days of
delivery of written notice of the dispute from one party to the other,
either party may seek to resolve it by initiating an Alternative
Dispute Resolution ("ADR") in which the Judicial Arbitration and
Mediation Services ("JAMS"), through a panel of three (3) arbitrators
(the "Arbitrators"), shall control the proceedings as provided herein.
If JAMS is not in existence at the time of such dispute, the American
Arbitration Association shall be substituted. The location of the ADR
shall be Seattle, Washington if the arbitration is initiated (as set
forth below) by Vaxcel, and Atlanta, Georgia if initiated by Corixa.
(ii) Selection of Arbitrators
An ADR shall be initiated by a party by sending written notice thereof
to the other party and JAMS, which shall state the issue(s) to be
resolved. Within ten (10) business days after receipt of such notice,
the other party may, by sending written notice to the initiating party
and JAMS, add issues to be resolved. Within twenty (20) business days
after the date of the original ADR notice, JAMS shall nominate to the
parties at least ten (10) qualified nominees [as set forth in Section
13.11(iii)] from JAMS panel. Each party shall have five (5) business
days after the receipt of such nominations to select one Arbitrator.
The two Arbitrators will then mutually agree on a third Arbitrator to
complete the panel.
(iii) Arbitrators with Special Expertise
Each Arbitrator shall have experience in the Field and with
intellectual property law matters. In the event of a dispute between
the parties relating to the calculation of any royalties or the amount
of other consideration payable under this Agreement (including,
without limitation, the results of any audit conducted on behalf of a
party pursuant to Section 4.9), then, in addition to the
qualifications set forth above and the procedure set forth in Section
13.11(ii), the Arbitrators shall be partners or full members of
internationally recognized certified public accounting firms which are
not auditing firms for either party and have not provided material
services to either party during the last two (2) year period prior to
the date of ADR initiation.
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(iv) ADR Hearing
Except as otherwise provided in this Section 13.11, such hearing shall
be conducted pursuant to the JAMS Rules or the Commercial Arbitration
Rules of the American Arbitration Association (AAA), as applicable.
(v) ADR Ruling; Fees and Expenses
The Arbitrators shall render a disposition of the dispute (including
an award of monetary damages, if applicable) as expeditiously as
possible after the hearing, but not later than fifteen (15) business
days after the conclusion of the hearing. The Arbitrators' disposition
shall be final and not appealable, except that either party shall have
the right to appeal such disposition on the basis it was affected by
fraud or bad faith in connection with the ADR proceeding. A judgment
on the Arbitrators' disposition may be entered in any court having
jurisdiction over the parties. The reasonable fees and expenses of the
Arbitrators, as well as the standard charges of JAMS for its
assistance, shall be borne equally by the parties or as they may
otherwise agree.
(vi) Waiver
A party shall not be prohibited from bringing a claim for resolution
under this Section 13.11 on the ground that the claim could have been
brought during an earlier proceeding under this Section 13.11.
(vii) No Dispute Resolution
The following disputes causes of action or claims shall not be subject
to the dispute resolution process set forth in this Section 13.11:
(i) a claim arising from a suit, action, or proceeding brought
by a third party or Sublicensee not subject to ADR;
(ii) A claim relating to undisputed amounts owed by either
party to the other under this Agreement;
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(iii) a suit, action, or proceeding to compel either party to
comply with the dispute resolution procedures set forth in
this Section 13.11;
(iv) a dispute, controversy, or claim relating to the scope,
enforceability, infringement or validity of a patent or
trademark of either party; and
(v) a cause of action seeking temporary or preliminary
injunction relief.
13.12 Other Copolymers
(i) Notwithstanding that the Copolymer referred to in Section 1.2 is
considered by the parties to be the most appropriate for use in the
Development Program, if Vaxcel acquires or holds rights in any other
copolymer which, in the Research and Development Committee's judgment,
may be useful to the Development Program and the parties wish to
evaluate such copolymer, then Vaxcel shall make such copolymer
available to Corixa for the purposes of this Agreement and such
copolymer shall be deemed to be included within the definition of
Copolymer in Section 1.2 herein.
(ii) In the event a copolymer other than the Copolymer is manufactured
and supplied under this Agreement and the Optivax Supply Agreement,
the parties will meet and negotiate revised prices for such copolymer
under the Optivax Supply Agreement to reflect any changes in the cost
of manufacturing. All other terms of this Agreement and the Optivax
Supply Agreement will remain unchanged.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be executed as of
the date first above written.
VAXCEL, INC.
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇
------------------------------------------
Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇
Title: President and Chief
Executive Officer
CORIXA CORPORATION
By: /s/ ▇▇▇▇ ▇▇▇▇▇▇
------------------------------------------
Name: ▇▇▇▇ ▇▇▇▇▇▇
Title: Chief Operating Officer
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THIS WARRANT AND THE SECURITIES ISSUABLE UPON THE EXERCISE HEREOF HAVE NOT BEEN
REGISTERED UNDER THE SECURITIES ACT OF 1933, AS AMENDED (THE "ACT"), OR ANY
STATE SECURITIES LAWS. THEY MAY NOT BE SOLD, OFFERED FOR SALE, PLEDGED,
HYPOTHECATED OR OTHERWISE TRANSFERRED IN THE ABSENCE OF A REGISTRATION STATEMENT
IN EFFECT WITH RESPECT TO THE SECURITIES UNDER SUCH ACT OR AN OPINION OF COUNSEL
SATISFACTORY TO THE COMPANY THAT SUCH REGISTRATION IS NOT REQUIRED OR UNLESS
SOLD PURSUANT TO AN EXEMPTION TO SUCH ACT.
THESE SECURITIES HAVE BEEN ISSUED OR SOLD IN RELIANCE ON PARAGRAPH (13) OF CODE
SECTION 10-5-9 OF THE "GEORGIA SECURITIES ACT OF 1973," AND MAY NOT BE SOLD OR
TRANSFERRED EXCEPT IN A TRANSACTION WHICH IS EXEMPT UNDER SUCH ACT OR PURSUANT
TO AN EFFECTIVE REGISTRATION UNDER SUCH ACT.
Void after
April 8, 2006
WARRANT TO PURCHASE UP TO 500,000
SHARES OF SERIES A PREFERRED STOCK
of
CORIXA CORPORATION
INCORPORATED UNDER THE LAWS OF THE STATE OF DELAWARE
THIS CERTIFIES THAT, for value received, Vaxcel, Inc., a Delaware
corporation (the "Investor") is entitled to subscribe for and purchase, on the
terms hereof, up to Five Hundred Thousand (500,000) shares of Series A Preferred
Stock of Corixa Corporation, a Delaware corporation (the "Company"), with the
designations, powers, preferences, rights, qualifications, limitations and
restrictions set forth in the Company's Amended and Restated Certificate of
Incorporation (the "Restated Certificate") dated December 2, 1994, at the per
share purchase price described in Section 1.4 below, subject to adjustment as
provided herein.
This Warrant is issued pursuant to the provisions of that certain
License Agreement between the Investor and the Company dated April 9, 1996 (the
"License Agreement"), and all terms not otherwise defined herein shall have the
meaning ascribed to such terms in the License Agreement.
In addition, this Warrant is subject to the following terms and
conditions:
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1. Exercise of Warrant.
The terms and conditions upon which this Warrant may be exercised, and
the Series A Preferred Stock covered hereby (the "Warrant Stock") may be
purchased, are as follows:
1.1. Term. Subject to the terms hereof, this Warrant may be exercised
in whole or in part in accordance with each of subsections 1.2 (a) - (j) below,
at any time following the occurrence of the event set forth in each respective
subsection (and all other subsections where a previous Milestone has been
completed, but only to the extent that this Warrant has not been exercised
previously), for up to the number of shares of Warrant Stock set forth in such
subsection; provided, however, that the minimum number of shares of Warrant
Stock for which this Warrant may be exercised at any one time is 25,000 shares;
provided further, however, that in no event may this Warrant be exercised later
than 5:00 p.m. (Pacific Standard Time) on April __, 2006.
1.2. Number of Shares. Subject to Sections 1.1 and 1.3 hereof, this
Warrant is exercisable as follows:
(a) For up to 100, 000 shares of the Company's Series A
Preferred Stock at any time following the execution of the License Agreement;
(b) For up to 50,000 shares of the Company's Series A
Preferred Stock at any time following the completion of Milestone #1 in
accordance with the terms of the License Agreement;
(c) For up to 100,000 shares of the Company's Series A
Preferred Stock at any time following the completion of Milestone #2 in
accordance with the terms of the License Agreement;
(d) For up to 75,000 shares of the Company's Series A
Preferred Stock at any time following the completion of Milestone #3 in
accordance with the terms of the License Agreement;
(e) For up to 50,000 shares of the Company's Series A
Preferred Stock at any time following the completion of Milestone #4 in
accordance with the terms of the License Agreement,
(f) For up to 40,000 shares of the Company's Series A
Preferred Stock at any time following the completion of Milestone #5 in
accordance with the terms of the License Agreement;
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(g) For up to 25,000 shares of the Company's Series A
Preferred Stock at any time following the completion of Milestone #6 in
accordance with the terms of the License Agreement;
(h) For up to 30,000 shares of the Company's Series A
Preferred Stock at any time following the completion of Milestone #7 in
accordance with the terms of the License Agreement;
(i) For up to 20,000 shares of the Company's Series A
Preferred Stock at any time following the completion of Milestone #8 in
accordance with the terms of the License Agreement;
(j) For up to 10,000 shares of the Company's Series A
Preferred Stock at any time following the completion of Milestone #9 in
accordance with the terms of the License Agreement; and
provided, however that the above share numbers are also subject to adjustment
pursuant to Section 2 hereof.
1.3. Termination of Entire License Agreement. Upon termination of the
License Agreement, this Warrant is subject to the following additional terms and
conditions:
(a) In the event the License Agreement is terminated pursuant
to subsections 8.3(ii) or 8.4(iv) thereof on account of a breach of the License
Agreement by the Investor, the Investor shall be entitled to exercise this
Warrant for the number of shares of Series A Preferred Stock for which this
Warrant is then exercisable in accordance with Section 1.2 above based on the
Milestones completed prior to such termination; provided, however, that in the
event of any such termination, the Company shall have the right (the "Repurchase
Right"), at the Company's sole discretion, to repurchase all or any portion of
the shares of Series A Preferred Stock purchased by the Investor upon any
exercise of this Warrant at a price per share equal to the Warrant Price (as
defined in Section 1.4 below); provided further, however the Company's
Repurchase Right shall terminate when the Investor no longer holds any shares of
Series A Preferred Stock;
(b) In the event the License Agreement is terminated pursuant
to subsections 8.3(i) or 8.4(iv) thereof on account of a breach of the License
Agreement by the Company, then upon such termination, the Investor shall be
entitled to exercise this Warrant immediately, in whole or in part in accordance
with the number of shares set forth in each of subsections 1.2(a) - (j), for up
to the full 500,000 shares of Series A Preferred Stock for which this Warrant is
exercisable, subject to adjustment pursuant to Section 2 hereof and subject to
the limits set forth in Section 1.1; and
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(c) In the event the License Agreement is terminated for any
reason other than as set forth in subsections 1.3(a) or (b) above, the Investor
shall be entitled to exercise this Warrant for the number of shares of Series A
Preferred Stock for which this Warrant is then exercisable in accordance with
Section 1.2 above based on the Milestones completed prior to such termination;
provided, however, that in the event of any such termination, the Company shall
not have the Repurchase Right set forth in subsection 1.3 (a) hereof.
1.4. Purchase Price. The per share purchase price for the shares of
Series A Preferred Stock to be issued upon exercise of this Warrant (the
"Warrant Price") shall be equal to the lesser of (i) $2.00 or (ii) the per share
price of the equity securities to be issued and sold to investors in the
Company's next equity financing with aggregate proceeds to the Company of at
least $5,000,000 (the "Next Equity Financing"); provided, however, if the
closing of the Next Equity Financing is not consummated on or before June 30,
1996, the Warrant Price shall be $2.00; provided further, however, that the
Warrant Price is subject to further adjustment as provided herein. The Company
hereby agrees that prior to July 1, 1996, the Company will not issue and/or sell
any equity securities of the Company which are convertible into shares of the
Company's Common Stock at a conversion ratio other than one-share-for-one-share.
1.5. Method of Exercise. The exercise of the purchase rights evidenced
by this Warrant shall be effected by (a) the surrender of the Warrant, together
with a duly executed copy of the form of subscription attached hereto
("Subscription Notice"), to the Company at its principal offices and (b) the
delivery of the purchase price by check or bank draft payable to the Company's
order or by wire transfer to the Company's account for the number of shares for
which the purchase rights hereunder are being exercised, or any other form of
consideration approved by the Company's Board of Directors. Each exercise of
this Warrant shall be deemed to have been effected immediately prior to the
close of business on the day on which this Warrant shall have been surrendered
to the Company as provided herein or at such latter date as may be specified in
the executed form of subscription, and at such time the person or persons in
whose name or names any certificate or certificates for shares of Series A
Preferred Stock shall be issuable upon such exercise as provided herein shall be
deemed to have become the holder or holders of record thereof.
1.6. Exercise by Exchange. In addition to and without limiting the
rights of the holder hereof under the terms hereof, if the fair market value of
one share of Series A Preferred Stock is greater than the Warrant Price (at the
date of calculation as set forth below), in lieu of exercising this Warrant for
cash, the holder may elect to receive shares equal to the value (as determined
below) of this Warrant (or the portion of this Warrant being canceled) by
surrender of this Warrant at the principal office of the Company together with
the properly endorsed Subscription Notice and notice of such election in which
event the Company shall issue to the holder the number of shares of Series A
Preferred Stock computed using the following formula:
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X=Y(A-B)
------
A
Where: X = The number of shares of Series A Preferred Stock
(or any shares of stock or other securities at the
time issuable upon exercise of this Warrant) to be
issued to the holder upon such exercise.
Y = The number of shares of Series A Preferred Stock
(or any shares of stock or other securities at the
time issuable upon exercise of this Warrant)
purchasable under the portion of this Warrant being
canceled under this Section 1.6.
A = The fair market value of one share of the Company's
Series A Preferred Stock (or any shares of stock or
other securities at the time issuable upon exercise
of this Warrant).
B = The Warrant Price, as adjusted to the date of such
notice of election.
For purposes of the above calculation, fair market value of one share of Series
A Preferred Stock shall be determined by the Company's Board of Directors in
good faith; provided, however, that in the event the Warrant is exercised in
connection with the Company's Initial Public Offering, the fair market value per
share shall be the product of (i) the per share offering price to the public of
the Initial Public Offering, and (ii) the number of shares of Common Stock into
which each share of Series A Preferred Stock is convertible at the time of such
exercise.
1.7. Issuance of Shares. As soon as reasonably practicable after each
exercise of this Warrant in accordance with Section 1.2 hereof, and in any event
within ten (10) days of the Company's receipt of a duly executed Subscription
Notice, the Company at its expense (including the payment by it of any
applicable issue and documentary stamp taxes) will cause to be issued in the
name of and delivered to the holder hereof, or as such holder (upon payment by
such holder of any applicable transfer taxes) may direct,
(a) a certificate or certificates for the number of duly
authorized, validly issued, fully paid and nonassessable shares of Series A
Preferred Stock to which such holder shall be entitled upon such exercise, and
(b) in case such exercise is in part in accordance with
Section 1.2 only, a new warrant or warrants with terms consistent with the terms
hereof, representing the portion of Warrant Stock with respect to which this
Warrant shall not then have been exercised.
2. Certain Adjustments.
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2.1. Conversion of Series A Preferred Stock. Should all of the
Company's Series A Preferred Stock be, or if outstanding would be, at any time
prior to the expiration of this Warrant, converted into shares of the Company's
Common Stock in accordance with the Company's Restated Certificate, as amended
and/or restated and effective immediately prior to such conversion of all of the
Company's Series A Preferred Stock (the "Series A Conversion"), then this
Warrant shall immediately become exercisable for that number of shares of the
Company's Common Stock equal to the number of shares of Common Stock which would
have been received if this Warrant had been exercised immediately prior to the
Series A Conversion for that number of shares of Series A Preferred Stock for
which this Warrant is exercisable immediately prior to the Series A Conversion
in accordance with Section 1.2 above based on the Milestones completed
immediately prior to the Series A Conversion, and the Warrant Stock received
thereupon had been simultaneously converted into Common Stock. After the Series
A Conversion, this Warrant shall continue to be exercisable in accordance with
Sections 1.1 and 1.2 above; provided, however, that upon any exercise of this
Warrant after the Series A Conversion, the holder hereof, in lieu of receiving
shares of Series A Preferred Stock, shall receive that number of shares of
Common Stock equal to the number of shares of Common Stock which would have been
received if this Warrant had been exercised for shares of Series A Preferred
Stock in accordance with Section 1.2 above based on the Milestones completed at
the time of exercise and the Warrant Stock received thereupon had been
simultaneously converted into Common Stock. The purchase price per share of
Common Stock shall be immediately adjusted to equal the quotient obtained by
dividing (x) the aggregate purchase price of the number of shares of Series A
Preferred Stock for which this Warrant was exercisable immediately prior to the
Series A Conversion by (y) the number of shares of Common Stock for which this
Warrant is exercisable immediately after the Series A Conversion; provided,
however, that the aggregate purchase price shall not be adjusted.
2.2. Common Stock Dividends. If the Company at any time following the
conversion of all the Series A Preferred Stock and prior to the expiration of
this Warrant shall pay a dividend with respect to Common Stock payable in shares
of Common Stock, then the purchase price per share hereof shall be adjusted,
from and after the date of determination of the stockholders entitled to receive
such dividend, to that price determined by multiplying the per share purchase
price in effect by a fraction (i) the numerator of which shall be the total
number of shares of Common Stock outstanding immediately prior to such dividend,
and (ii) the denominator of which shall be the total number of shares of the
Common Stock outstanding immediately after such dividend; provided, however,
that the aggregate purchase price shall not be adjusted.
2.3. Mergers, Consolidations or Sale of Assets. If at any time after
the date hereof there shall be a capital reorganization (other than a
combination or subdivision of Warrant Stock otherwise provided for herein), or a
merger or consolidation of the Company with or into another corporation, or the
sale of the Company's properties and assets as, or substantially as, an entirety
to any other person, then, as a part of such reorganization, merger,
consolidation or sale, lawful provision shall be made so that the
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holder of this Warrant shall thereafter be entitled to receive upon exercise of
this Warrant, during the period specified in this Warrant and upon payment of
the purchase price, the number of shares of stock or other securities or
property of the Company or the successor corporation resulting from such
reorganization, merger, consolidation or sale, to which a holder of the Series A
Preferred Stock (or Common Stock issuable upon conversion thereof) deliverable
upon exercise of this Warrant would have been entitled under the provisions of
the agreement in such reorganization, merger, consolidation or sale if this
Warrant had been exercised immediately before that reorganization, merger,
consolidation or sale for that number of shares of Series A Preferred Stock for
which this Warrant is exercisable at the time of such exercise in accordance
with Section 1.2 above based on the Milestones completed at the time of such
exercise, all subject to further adjustment as provided in this Section 2. The
foregoing provisions of this Section 2.3 shall similarly apply to successive
reorganizations, consolidations, mergers and sales and to the stock or
securities of any other corporation that are at the time receivable upon
exercise of this Warrant. In any such case, appropriate adjustment (as
determined in good faith by the Company's Board of Directors) shall be made in
the application of the provisions of this Warrant with respect to the rights and
interests of the Investor after the reorganization, merger, consolidation or
sale to the end that the provisions of this Warrant (including adjustment of the
purchase price then in effect and the number of shares of Warrant Stock) shall
be applicable after that event, as near as reasonably may be, in relation to any
shares or other property deliverable after that event upon exercise of this
Warrant; provided, however that the aggregate purchase price shall not be
adjusted.
2.4. Reclassification, etc. If at any time after the date hereof the
Company, by reclassification of securities or otherwise, shall change any of the
securities as to which purchase rights under this Warrant exist into the same or
a different number of securities of any other class or classes, this Warrant
shall thereafter represent the right to acquire such number and kind of
securities as would have been issuable as the result of such change with respect
to the securities that were subject to the purchase rights under this Warrant
immediately prior to such reclassification or other change and the Warrant Price
shall be appropriately adjusted, all subject to further adjustment as provided
in this Section 2; provided, however that no such adjustment shall be made
pursuant to this Section 2.4 in connection with any Series A Conversion that is
the subject of Section 2.1 above.
2.5. Splits and Subdivisions. In the event the Company should at any
time or from time to time fix a record date for the effectuation of a split or
subdivision of the outstanding shares of Series A Preferred Stock or the
determination of the holders of Series A Preferred Stock entitled to receive a
dividend or other distribution payable in additional shares of Series A
Preferred Stock or other securities or rights convertible into, or entitling the
holder thereof to receive directly or indirectly, additional shares of Series A
Preferred Stock (hereinafter referred to as the "Series A Equivalents") without
payment of any consideration by such holder for the additional shares of Series
A Preferred Stock or Series A Equivalents (including the additional shares of
Series A Preferred Stock issuable upon conversion or exercise thereof), then, as
of such record date (or the date of such distribution, split or subdivision if
no record date is fixed), the purchase price per share
- 7 -
64
shall be appropriately decreased and the. number of shares of Warrant Stock
shall be appropriately increased in proportion to such increase of outstanding
shares; provided, however that the aggregate purchase price shall not be
adjusted.
2.6. Combination of Shares. If the number of shares of Series A
Preferred Stock outstanding at any time after the date hereof is decreased by a
combination of the outstanding shares of Series A Preferred Stock, the purchase
price per share shall be appropriately increased and the number of shares of
Warrant Stock shall be appropriately decreased in proportion to such decrease in
outstanding shares; provided, however that the aggregate purchase price shall
not be adjusted.
2.7. Adjustments for Other Distributions. In the event the Company
shall declare a distribution payable in securities of other persons, evidences
of indebtedness issued by the Company or other persons, assets (excluding cash
dividends) or options or rights not referred to in Sections 2.2, 2.4 or 2.5,
then, in each such case for the purpose of this Section 2.7, upon exercise of
this Warrant, the holder hereof shall be entitled to a proportionate share of
any such distribution as though such holder was the holder of the number of
shares of Series A Preferred Stock of the Company into which this Warrant may be
exercised as of the record date fixed for the determination of the holders of
Series A Preferred Stock of the Company entitled to receive such distribution;
provided, however that the aggregate purchase price shall not be adjusted.
2.8. Certificate as to Adjustments. In the case of each adjustment or
readjustment of the purchase price pursuant to this Section 2, the Company will
promptly compute such adjustment or readjustment in accordance with the terms
hereof and cause a certificate setting forth such adjustment or readjustment and
showing in detail the facts upon which such adjustment or readjustment is based
to be delivered to the holder of this Warrant. The Company will, upon the
written request at any time of the holder of this Warrant, furnish or cause to
be furnished to such holder a certificate setting forth:
(a) Such adjustments and readjustments;
(b) The purchase price at the time in effect; and
(c) The number of shares of Warrant Stock and the amount, if
any, of other property at the time receivable upon the exercise of the Warrant.
2.9. No Dilution or Impairment. The Company will not, by amendment of
its Restated Certificate or through any consolidation, merger, reorganization,
transfer of assets, dissolution, issue or sale of securities or any other
voluntary action, avoid or seek to avoid the observance or performance of any of
the terms of this Warrant, but will at all times in good faith assist in the
carrying out of all such terms and in the taking of all such action as may be
necessary or appropriate in order to protect the rights of the holder of this
Warrant against dilution or other impairment.
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65
2.10. Notices of Record Date, etc. In the event of:
(a) Any taking by the Company of a record of the holders of
any class of securities of the Company for the purpose of determining the
holders thereof who are entitled to receive any dividend (other than a cash
dividend payable out of earned surplus at the same rate as that of the last such
cash dividend theretofore paid) or other distribution, or any fight to subscribe
for, purchase or otherwise acquire any shares of stock of any class or any other
securities or property, or to receive any other fight; or
(b) Any capital reorganization of the Company, any
reclassification or recapitalization of the capital stock of the Company or any
transfer of all or substantially all of the assets of the Company to any other
person or any consolidation or merger involving the Company; or
(c) Any voluntary or involuntary dissolution, liquidation or
winding-up of the Company,
The Company will mail to the holder of this Warrant at least
twenty (20) days prior to the earliest date specified therein, a notice
specifying:
(i) The date on which any such record is to be taken
for the purpose of such dividend, distribution or right, and the amount and
character of such dividend, distribution or right; and
(ii) The date on which any such reorganization,
reclassification, transfer, consolidation, merger, dissolution, liquidation or
winding-up is expected to become effective and the record date for determining
stockholders entitled to vote thereon.
3. Fractional Shares. No fractional shares shall be issued in
connection with any exercise of this Warrant. In lieu of the issuance of such
fractional share, the Company shall make a cash payment equal to the then fair
market value of such fractional share as determined in good faith by the
Company's Board of Directors.
4. Privilege of Stock Ownership. Except as otherwise provided hereby
and prior to the exercise of this Warrant, the Investor shall not be entitled,
by virtue of holding this Warrant, to any rights of a stockholder of the
Company, including (without limitation) the right to vote, receive dividends or
other distributions, exercise preemptive rights or be notified of stockholder
meetings, and such holder shall not be entitled to any notice or other
communication concerning the business or affairs of the Company. Nothing in this
Section 4, however, shall limit the right of the Investor to participate in
distributions to the extent set forth in Section 2 hereof if the Investor
ultimately exercises this Warrant, or be provided the notices described in
Section 2 hereof.
- 9 -
66
5. Limitation of Liability. Except as otherwise provided herein, in the
absence of affirmative action by the holder hereof to purchase the Warrant
Stock, no mere enumeration herein of the rights or privileges of the holder
hereof shall give rise to any liability of such holder for the purchase price or
as a stockholder of the Company, whether such liability is asserted by the
Company or by creditors of the Company.
6. Representations and Warranties of the Company.
6.1. Authorization. The Company has full power and authority to enter
into this Warrant. This Warrant has been duly authorized, executed and delivered
by the Company and constitutes its valid and legally binding obligation,
enforceable in accordance with its terms.
6.2. Reservation of Series A Preferred Stock and Common Stock. The
Company shall at all times reserve and keep available out of its authorized but
unissued shares of Series A Preferred Stock and Common Stock, solely for the
purpose of effecting the exercise of this Warrant, such number of its shares of
Series A Preferred Stock (and Common Stock issuable upon conversion of the
Series A Preferred Stock), as shall from time to time be sufficient to effect
the exercise of this Warrant, and if at any time the number of authorized but
unissued shares of Series A Preferred Stock or Common Stock shall not be
sufficient to effect the exercise of the entire Warrant and the conversion of
the Series A Preferred Stock thereafter, in addition to such other remedies as
shall be available to the holder of this Warrant, the Company will use its best
efforts to take all corporate action as may be necessary to increase its
authorized but unissued shares of Series A Preferred Stock and/or Common Stock,
as applicable, to such number of shares as shall be sufficient for such
purposes.
6.3. Valid Issuance. This Warrant, when issued and delivered in
accordance with the terms hereof, and the Warrant Stock, when issued pursuant to
the terms hereof and upon payment of the exercise price, shall, upon such
issuance, be duly authorized, validly issued, fully paid and nonassessable and
free from all liens.
7. Representations and Warranties of the Investor. The Investor hereby
represents and warrants to the Company with respect to the issuance of the
Warrant and the purchase of the Warrant Stock as follows:
7.1. Authorization. The Investor has full power and authority to enter
into this Warrant. This Warrant has been duly authorized, executed and delivered
by such Investor and constitutes its valid and legally binding obligation,
enforceable in accordance with its terms.
7.2. Purchase Entirely for Own Account. This Warrant is made with the
Investor in reliance upon such Investor's representation to the Company, which
by such Investor's execution of this Warrant such Investor hereby confirms, that
the Warrant and the Warrant Stock will be acquired for investment for such
Investor's own account, not as
- 10 -
67
a nominee or agent, and not with a view to the resale or distribution of any
part thereof, and that such Investor has no present intention of selling,
granting any participation in, or otherwise distributing the same in violation
of the federal or state securities laws. The Investor further represents that
such Investor does not have any contract, undertaking, agreement or arrangement
with any person to sell, transfer or grant participations to such person or to
any third person with respect to the Warrant or the Warrant Stock.
7.3. Investment Experience. The Investor acknowledges that it is able
to fend for itself, can bear the economic risk of its investment and has such
knowledge and experience in financial or business matters that it is capable of
evaluating the merits and risks of the investment in the Warrant and the Warrant
Stock. The Investor also represents it has not been organized solely for the
purpose of acquiring the Warrant or the Warrant Stock.
7.4. Accredited Investor. The Investor is an accredited investor as
defined in Rule 501 (a) of Regulation D, as amended, promulgated under the Act,
and agrees not to sell, hypothecate, pledge or otherwise dispose of any interest
in the Warrant and the Warrant Stock in the United States, its territories,
possessions or any area subject to its jurisdiction, or to any person who is a
national thereof or resident therein (including any estate of such person), or
any corporation, partnership or other entity created or organized therein,
unless such securities have been either registered under the Act, or are exempt
from the registration requirements of the Act, in an opinion of counsel
reasonably satisfactory to the Company, and the Investor has complied with any
restrictions on transfer contained in this Warrant.
7.5. Restricted Securities. The Investor understands that the Warrant
being issued hereunder and the Warrant Stock to be purchased hereunder are
characterized as "restricted securities" under the federal securities laws
inasmuch as they are being acquired from the Company in a transaction not
involving a public offering, and that under such laws and applicable regulations
such securities may be resold without registration under the Act only in certain
limited circumstances. In this connection, the Investor represents that it is
familiar with SEC Rule 144, as presently in effect, and understands the resale
limitations imposed thereby and by the Act.
7.6. Legends. It is understood that the certificates evidencing the
Warrant Stock may bear one or all of the following legends:
1. "THESE SECURITIES HAVE NOT BEEN REGISTERED UNDER THE
SECURITIES ACT OF 1933, AS AMENDED, OR ANY STATE SECURITIES LAWS. THEY MAY NOT
BE SOLD, OFFERED FOR SALE, PLEDGED, HYPOTHECATED OR OTHERWISE TRANSFERRED IN THE
ABSENCE OF A REGISTRATION STATEMENT IN EFFECT WITH RESPECT TO THE SECURITIES
UNDER SUCH ACT OR AN OPINION OF COUNSEL SATISFACTORY TO THE COMPANY THAT SUCH
REGISTRATION IS NOT REQUIRED OR UNLESS SOLD PURSUANT TO AN EXEMPTION TO SUCH
ACT."
- 11 -
68
2. "THESE SECURITIES HAVE BEEN ISSUED OR SOLD IN RELIANCE ON
PARAGRAPH (13) OF CODE SECTION 10-5-9 OF THE "GEORGIA SECURITIES ACT OF 1973,"
AND MAY NOT BE SOLD OR TRANSFERRED EXCEPT IN A TRANSACTION WHICH IS EXEMPT UNDER
SUCH ACT OR PURSUANT TO AN EFFECTIVE REGISTRATION UNDER SUCH ACT."
3. Any other legend required by the laws of any state in which
the securities will be issued.
7.7. Consents. No consent, approval or authorization of or designation,
declaration or filing with any state, federal or foreign governmental authority
on the part of the Investor is required in connection with the valid execution
and delivery of this Warrant and the consummation of the transactions
contemplated hereby.
8. Market Stand-Off Agreement. The Investor hereby agrees that, during
the period of duration specified by the Company or an underwriter of capital
stock or other securities of the Company, following the effective date of a
registration statement of the Company filed under the Act, it shall not, to the
extent requested by the Company and such underwriter, directly or indirectly
sell, offer to sell, contract to sell (including, without limitation, any short
sale), grant any option to purchase or otherwise transfer or dispose of (other
than to donees who agree to be similarly bound) any securities of the Company
held by it at any time during such period except capital stock included in such
registration; provided, however, that:
(a) all executive officers and directors of the Company and
all other persons with registration rights enter into similar agreements; and
(b) such period shall not exceed one hundred eighty (180) days
beginning the day after the effective date of such registration statement.
In order to enforce the foregoing covenant, the Company may
impose stop-transfer instructions with respect to the Warrant Stock of the
Investor until the end of such period.
9. Transfers and Exchanges.
9.1. This Warrant shall not be transferable without the prior written
consent of the Company, which consent will not be unreasonably withheld.
9.2. All new warrants issued in connection with transfers or exchanges
shall be identical in form and provision to this Warrant except as to the number
of shares of Warrant Stock.
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69
9.3. It shall be a condition to any transfer or exercise of this
Warrant that the Company shall have received, at the time of such transfer or
exercise, a statement in writing of the pertinent facts covering any proposed
distribution thereof. It shall be a further condition to any transfer of this
Warrant or of any or all of the shares of Series A Preferred Stock issued upon
exercise of this Warrant (or Common Stock issuable upon conversion of the Series
A Preferred Stock), other than a transfer registered under the Act, that the
Company shall have received (i) a legal opinion, in form and reasonably
substance satisfactory to the Company and its counsel, reciting the pertinent
circumstances surrounding the proposed transfer and stating that such transfer
is exempt from the prospectus and the registration requirements of the Act and
(ii) a statement in writing from, and signed by, any proposed transferees
containing the same representations and warranties as set forth in Section 7
hereof. The requirement of a legal opinion shall not apply to the transfer of
this Warrant or any part thereof to a partnership of which the Investor is a
partner or to the beneficial owners or affiliates of such partnership without
further consideration, so long as such transfer is in compliance with applicable
securities laws. Each certificate evidencing the shares of Series A Preferred
Stock issued upon exercise of this Warrant (or Common Stock issuable upon
conversion of the Series A Preferred Stock), or upon any transfer of such shares
(other than a transfer registered under the Act or any subsequent transfer of
shares so registered) shall, at the option of the Company, contain a legend, in
form and substance satisfactory to the Company and its counsel, restricting the
transfer of such shares to sales or other dispositions exempt from the
requirements of the Act.
It shall be a further condition to each such transfer that the
transferee shall receive and accept a Warrant, of like tenor and date, executed
by the Company.
10. Successors and Assigns. The terms and provisions of this Warrant
shall be binding upon the Company and the Investor and their respective
successors and assigns, subject at all times to the restrictions set forth
herein and in the License Agreement.
11. Loss, Theft, Destruction or Mutilation of Warrant. Upon receipt by
the Company of evidence reasonably satisfactory to it of the loss, theft,
destruction or mutilation of this Warrant, and in case of loss, theft or
destruction, of indemnity or security reasonably satisfactory to the Company,
and upon reimbursement to the Company of all reasonable expenses incidental
thereto, and upon surrender and cancellation of this Warrant, if mutilated, the
Company will make and deliver a new warrant of like tenor and dated as of such
cancellation, in lieu of this Warrant.
12. Saturday, Sunday, Holidays, etc. If the last or appointed day for
the taking of any action or the expiration of any right required or granted
herein shall be Saturday or Sunday or shall be a legal holiday, then such action
may be taken or such right may be exercised on the next succeeding business day
not a legal holiday.
13. Amendments and Waivers. Any term of this Warrant may be amended and
the observance of any term of this Warrant may be waived (either generally or in
a
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70
particular instance and either retroactively or prospectively), only with the
written consent of the Company and the Investor. Any such amendment or waiver
shall be binding on the parties.
14. Notices. Except as otherwise set forth herein, all notices and
other communications under this Warrant shall be in writing and shall be mailed
by registered or certified mail, return receipt requested, addressed (a) if to
any holder of any Warrant, at the registered address of such holder as set forth
in the register kept at the principal office of the Company, or (b) if to the
Company, to the attention of its President at its principal office; provided,
however, that the exercise of any Warrant shall be effective in the manner
provided in Section 1 hereof
15. Registration Rights. The Company hereby agrees to do and take all
actions necessary to amend the Company's Amended and Restated Investors' Rights
Agreement dated December 2, 1994 (the "Rights Agreement") to include the Warrant
Stock to be issued upon exercise of this Warrant in the definition of
Registrable Securities (the "Amendment") by no later than May 31, 1996. The
Amendment shall include a provision stating that in the event this Warrant is
transferred to a third party in whole but not in part before any exercise
hereof, then the rights granted to the Warrant Stock pursuant to the Rights
Agreement shall also be transferred to such third party.
16. Governing Law. The terms and conditions of this Warrant shall be
governed by and construed in accordance with Delaware law as such laws are
applied to agreements which are entered into solely between Delaware residents
and are to be performed entirely within the state.
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71
Dated: April 9, 1996 CORIXA CORPORATION
By:
-----------------------------
Name:
---------------------------
Title:
---------------------------
Address: ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
ACKNOWLEDGED AND AGREED
VAXCEL, INC.
By:
-----------------------------
Name.
-----------------------------
Title:
-----------------------------
Address: ▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇/▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
SIGNATURE PAGE TO WARRANT TO PURCHASE UP TO
500,000 SHARES OF SERIES A PREFERRED STOCK
OF CORIXA CORPORATION
- 15 -
72
SUBSCRIPTION
Corixa Corporation
-------------------
-------------------
-------------------
Ladies and Gentlemen:
The undersigned, _______________, hereby elects to purchase, pursuant
to the provisions of the Warrant dated April __,1996 held by the undersigned,
__________ shares of the Series A Preferred Stock of Corixa Corporation, a
Delaware corporation, and tenders herewith payment of the purchase price of such
shares in full.
The undersigned hereby confirms and acknowledges the investment
representations and warranties made in Section 7 of the Warrant and accepts such
shares subject to the restrictions of the Warrant, copies of which are available
from the Secretary of the Company.
---------------------
Dated: By:
------------------,----- --------------
Name:
--------------
Title:
--------------
Address:
--------------
--------------
--------------
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73
EXHIBIT III
DESCRIPTION OF THE COPOLYMER
CRL-1005 is a synthetic, linear, nonionic, triblock copolymer consisting of
polyoxypropylene (POP) and polyoxyethylene (▇▇▇). The material is synthesized
so that one central hydrophobic block of POP is positioned between two smaller
hydrophilic blocks of ▇▇▇ within each molecule. Thus, each molecule has an
amphipathic structure. CRL-1005 has an average molecular weight of
approximately 12,000 daltons. The POP block comprises about 95% of each
molecule of CRL-1005 and the two ▇▇▇ blocks represent about 5%.
III-1
74
EXHIBIT IV
SUMMARY OF THE COPOLYMER PATENTS
-------------------------------------------------------------------------------------------------
U.S. FILING U.S. SERIAL CURRENT
TITLE DATE NUMBER STATUS
----- ---- ------ ------
Polyoxypropylene/Polyoxyethylene
Block Copolymers 8/94 08/292,814 Pending
Nonionic Block Copolymers 8/94 08/472,511 Pending
Novel Vaccine Adjuvant and Vaccine 8/95 08/513,162 Pending
-------------------------------------------------------------------------------------------------
The three U.S. Patent Applications noted above were filed on high molecular
weight copolymers, including the Copolymer as defined in Section 1.2 of the
Agreement and as more specifically described in Exhibit III. These three
applications for high molecular weight copolymers contain claims for: (i)
composition of matter; (ii) a method of manufacturing; and (iii) use as
adjuvants / delivery systems with a wide variety of antigens. When combined
with an antigen, the high molecular copolymers can either be formulated alone
in an aqueous solution or combined with other ingredients (e.g., emulsions) in
a final vaccine product.
These patent applications were also filed under the Patent Cooperation Treaty
(PCT) in August 1995. All countries were designated.
IV-1
75
EXHIBIT V
CORIXA CANCER ANTIGEN PATENTS
----------------------------------------------------------------------------------------------------
PATENT NO. / APP. NO. COUNTRY FILING / ISSUE DATE
----------------------------------------------------------------------------------------------------
THE UNIVERSITY OF
WASHINGTON PATENTS
----------------------------------------------------------------------------------------------------
Ser. No. 08/414,417 United States Filed 3/31/95
----------------------------------------------------------------------------------------------------
▇▇▇. ▇▇. ▇▇/▇▇▇,▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ Filed 6/6/95
----------------------------------------------------------------------------------------------------
Ser. No. 08/466,680 United States Filed 6/6/95
----------------------------------------------------------------------------------------------------
Ser. No. 08/468,545 United States Filed 6/6/95
----------------------------------------------------------------------------------------------------
Ser. No. 08/486,348 United States Filed 6/7/95
----------------------------------------------------------------------------------------------------
THE WRF PATENTS
----------------------------------------------------------------------------------------------------
▇▇▇. No. 5,320,947 United States Issued 6/14/95
----------------------------------------------------------------------------------------------------
▇▇▇. ▇▇. ▇▇/▇▇▇,▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ Filed 5/31/94
----------------------------------------------------------------------------------------------------
▇▇▇. ▇▇. ▇▇/▇▇▇,▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ Filed 6/5/95
----------------------------------------------------------------------------------------------------
Ser. No. 08/466,224 United States Filed 6/5/95
----------------------------------------------------------------------------------------------------
Ser. No. 08/473,762 United States Filed 6/7/95
----------------------------------------------------------------------------------------------------
▇▇▇. No. 639311 Australia Issued 11/12/93
----------------------------------------------------------------------------------------------------
Ser. No. 2,074,720-0 Canada Filed 1/24/91
----------------------------------------------------------------------------------------------------
Ser. No. 3-504130 Japan Filed 1/24/91
----------------------------------------------------------------------------------------------------
Ser. No. 91903946.1 EPO Filed 1/24/91
----------------------------------------------------------------------------------------------------
Ser. No. 94109426.01 EPO Filed 1/24/91
----------------------------------------------------------------------------------------------------
THE UNIVERSITY OF
PITTSBURGH PATENTS
----------------------------------------------------------------------------------------------------
Ser. No. 08/099,354 United States Filed 7/30/93
----------------------------------------------------------------------------------------------------
Ser. No. 08/288,059 United States Filed 8/10/94
----------------------------------------------------------------------------------------------------
PCT/US94/08477 PCT Filed 7/29/94
----------------------------------------------------------------------------------------------------
V-1
76
EXHIBIT V (CON'T)
CORIXA CANCER ANTIGEN PATENTS
----------------------------------------------------------------------------------------------------
PATENT NO. / APP. NO. COUNTRY FILING / ISSUE DATE
----------------------------------------------------------------------------------------------------
THE CORIXA PATENTS
----------------------------------------------------------------------------------------------------
Ser. No. 08/282,845 United States Filed 7/28/94
----------------------------------------------------------------------------------------------------
Ser. No. 08/523,436 United States Filed 9/22/95
----------------------------------------------------------------------------------------------------
Ser. No. 08/533,669 United States Filed 9/22/95
----------------------------------------------------------------------------------------------------
Ser. No. _______(1) United States Invention disclosure complete;
patent application to be filed
----------------------------------------------------------------------------------------------------
Ser. No. 08/519,196 United States Filed 8/24/95
----------------------------------------------------------------------------------------------------
Ser. No. _______(2) United States Filed 1/10/96
----------------------------------------------------------------------------------------------------
Ser. No. _______(3) United States Filed 1/10/96
----------------------------------------------------------------------------------------------------
Ser. No. _______(4) United States Invention disclosure complete;
patent application to be filed
----------------------------------------------------------------------------------------------------
Ser. No. _______(5) United States Invention disclosure complete;
patent application to be filed
----------------------------------------------------------------------------------------------------
(1) Compounds and Methods for Immunotherapy and Diagnosis of Tuberculosis
(2) Compositions and Methods for the Treatment and Diagnosis of Cancer
(3) Compositions and Methods for the Treatment and Diagnosis of Breast Cancer
(4) Human Prostatic Adenocarcinoma Antigen Immunologically Related to Rat
Prostate Steroid Binding Protein
(5) Expression Cloning of LNCAP cDNA Library with Human Prostatitis Sera
CORIXA LEIF ADJUVANT PATENTS
U.S. Patent App. Ser. No. 08/232,534, A Leishmania Antigen Homologous to eIF4A
U.S. Patent App. Ser. No. 08/454,036, Compounds and Methods for the Stimulation
and Enhancement of Protective Immune Responses and IL-12 Production
U.S. Patent App. Ser. No. 08/488,386, Methods for Enhancement of Protective
Immune Responses
V-2
77
EXHIBIT V (CON'T)
CORIXA MICROSPHERES PATENTS
----------------------------------------------------------------------------------------------------
SOUTHERN RESEARCH INSTITUTE
----------------------------------------------------------------------------------------------------
PATENT NO. / APP. NO. COUNTRY FILING / ISSUE DATE
----------------------------------------------------------------------------------------------------
▇▇▇. NO. 4,897,268 UNITED STATES ISSUED 1/30/90
----------------------------------------------------------------------------------------------------
▇▇▇. No. 302,582 B EPO Issued 7/27/94
----------------------------------------------------------------------------------------------------
▇▇▇. No. 1302260 Canada Issued 6/2/92
----------------------------------------------------------------------------------------------------
▇▇▇. No. 611662 Australia Issued 10/14/91
----------------------------------------------------------------------------------------------------
▇▇▇. No. ▇▇▇▇▇ ▇▇▇▇▇▇ Issued 4/28/88
----------------------------------------------------------------------------------------------------
▇▇▇. No. 238,727 Argentina Issued 4/28/89
----------------------------------------------------------------------------------------------------
Ser. No. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ Filed 8/88
----------------------------------------------------------------------------------------------------
Ser. No. ▇▇▇▇▇▇ ▇▇▇▇▇ Filed 8/88
----------------------------------------------------------------------------------------------------
▇▇▇. No. ▇▇▇▇▇▇ ▇▇▇▇▇▇ Issued 7/8/91
----------------------------------------------------------------------------------------------------
▇▇▇. No. ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ Issued 10/30/90
----------------------------------------------------------------------------------------------------
----------------------------------------------------------------------------------------------------
▇▇▇. ▇▇. ▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇ Issued 5/9/91
----------------------------------------------------------------------------------------------------
Ser. No. 594,142 Canada Filed 3/15/89
----------------------------------------------------------------------------------------------------
Ser. No. 826/89 Ireland Filed 3/15/89
----------------------------------------------------------------------------------------------------
▇▇▇. No. ▇▇▇▇▇ ▇▇▇▇▇▇ Issued 10/10/93
----------------------------------------------------------------------------------------------------
Ser. No. 89103098.0 China Filed 3/18/89
----------------------------------------------------------------------------------------------------
▇▇▇. ▇▇. ▇▇▇▇▇ ▇▇▇▇▇▇ Issued 6/1/91
----------------------------------------------------------------------------------------------------
▇▇▇. ▇▇. ▇▇▇▇▇▇ ▇▇▇▇▇ Issued 3/16/91
----------------------------------------------------------------------------------------------------
▇▇▇. ▇▇. ▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇ Issued 4/92
----------------------------------------------------------------------------------------------------
Ser. No. 241319 New Zealand Filed 1/16/92
----------------------------------------------------------------------------------------------------
▇▇▇. ▇▇. ▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇ Issued 3/27/89
----------------------------------------------------------------------------------------------------
▇▇▇. ▇▇. ▇▇/▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ Issued 3/19/90
----------------------------------------------------------------------------------------------------
Ser. No. PCT/US89/01083 PCT Filed 3/16/89
----------------------------------------------------------------------------------------------------
Ser. No. 8902746.6 EPO Filed 3/20/89
----------------------------------------------------------------------------------------------------
▇▇▇. No. 633483 Australia Issued 3/18/88
----------------------------------------------------------------------------------------------------
Ser. ▇▇. ▇▇▇▇/▇▇ ▇▇▇▇▇▇▇ Filed 9/17/90
----------------------------------------------------------------------------------------------------
V-3
78
EXHIBIT V (CON'T)
CORIXA MICROSPHERES PATENTS
----------------------------------------------------------------------------------------------------
PATENT NO. / APP. NO. COUNTRY FILING / ISSUE DATE
----------------------------------------------------------------------------------------------------
Ser. ▇▇. ▇▇▇▇▇/▇▇ ▇▇▇▇▇ Filed 9/18/90
----------------------------------------------------------------------------------------------------
Ser. No. 89-702165 Korea Filed 11/18/89
----------------------------------------------------------------------------------------------------
Ser. No. 4831769.15 Russian Federation Filed 9/17/90
----------------------------------------------------------------------------------------------------
----------------------------------------------------------------------------------------------------
▇▇▇. NO. 5,075,109 UNITED STATES ISSUED 12/21/91
----------------------------------------------------------------------------------------------------
▇▇▇. ▇▇. ▇▇/▇▇▇,▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ Filed 9/4/93
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Ser. No. 08/116,802 United States Filed 9/4/93
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Ser. No. 08/468,064 United States Filed 6/6/95
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Ser. No. 08/467,314 United States Filed 6/6/95
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Ser. No. 08/469,218 United States Filed 6/6/95
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Ser. No. 08/469,463 United States Filed 6/6/95
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Ser. No. 87309286.0 EPO Filed 10/21/87
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▇▇▇. No. 1,331,738 Canada Issued 8/30/94
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Ser. No. 79929/87 Australia Filed 10/19/87
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Ser. No. 88102219.5 China Filed 4/9/88
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Ser. ▇▇. ▇▇▇▇/▇▇ ▇▇▇▇▇▇▇ Filed 10/23/87
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▇▇▇. ▇▇. ▇▇▇▇▇▇▇ ▇▇▇▇▇ Issued 7/92
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Ser. No. 2851/87 Ireland Filed 10/23/87
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▇▇▇. No. 923,159 Israel Issued 6/11/91
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Ser. No. ▇▇▇▇▇▇▇/▇▇ ▇▇▇▇▇ Filed 10/23/87
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▇▇▇. ▇▇. ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ Issued 5/21/90
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▇▇▇. No. 222,278 New Zealand Issued 10/22/87
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▇▇▇. ▇▇. ▇▇/▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ Issued 6/29/88
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▇▇▇. No. ▇▇▇▇▇ ▇▇▇▇▇▇ Issued 4/21/91
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V-4
79
EXHIBIT V (CON'T)
CORIXA MICROSPHERES PATENTS
----------------------------------------------------------------------------------------------------
PATENT NO. / APP. NO. COUNTRY FILING / ISSUE DATE
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▇▇▇. NO. 5,407,609 UNITED STATES ISSUED 4/18/95
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Ser. No. PCT/US90/02439 PCT Filed 5/2/90
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Ser. No. 90908830.4 EPO Filed 9/25/91
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Ser. No. 2,050,911 Canada Filed 9/30/91
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Ser. No. 915129 Finland Filed 10/30/91
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Ser. ▇▇. ▇▇-▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ Filed 10/31/91
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Ser. No. ▇▇▇▇▇▇/▇▇ ▇▇▇▇▇ Filed 11/5/91
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Ser. No. 91.4292 Norway Filed 11/1/91
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▇▇▇. No. 1000614 Greece Issued 5/3/90
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Ser. No. 1616/90 Ireland Filed 5/3/90
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Ser. No. ▇▇▇▇▇ ▇▇▇▇▇▇ Filed 5/4/90
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Ser. No. ▇▇▇▇▇ ▇▇▇▇▇▇ Filed 5/4/90
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▇▇▇. ▇▇. ▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇ Issued 5/4/90
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▇▇▇. ▇▇. ▇▇/▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ Issued 2/27/91
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Ser. No. 341/MAS/90 India Filed 5/4/90
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▇▇▇. No. ▇▇▇▇▇ ▇▇▇▇▇▇ Issued 7/11/91
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▇▇▇▇ ▇▇▇▇▇▇ CANCER RESEARCH
INSTITUTE
----------------------------------------------------------------------------------------------------
Ser. No. 08/425,679 United States Filed 4/18/95
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Ser. No. 08/481,327 United States Filed 9/15/95
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Ser. No. 9460865 Australia Filed 8/15/94
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Ser. No. 9407191 EPO Filed 10/25/95
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V-5
80
EXHIBIT VII
CORIXA CORPORATION
CAPITALIZATION SUMMARY
SUMMARIZED BY INVESTOR-TYPE
-----------------------------------------------------------------------
Venture Capital 21,052,289 74.15%
-----------------------------------------------------------------------
Founders/Options 5,691,711 20.05%
-----------------------------------------------------------------------
* Other Investors 1,646,737 5.80%
-----------------------------------------------------------------------
28,390,737 100.00%
=====================================
SUMMARIZED BY SECURITIES-TYPE
-----------------------------------------------------------------------
Preferred Stock 15,332,279 54.00%
-----------------------------------------------------------------------
* Common Stock 8,376,311 29.50%
-----------------------------------------------------------------------
* Warrants 2,355,907 8.30%
-----------------------------------------------------------------------
Options 2,326,240 8.19%
-----------------------------------------------------------------------
28,390,737 100.00%
=====================================
* Note: includes contingent warrants of up to 887,362 (incl. Vaxcel @ 500,000)
and contingent common shares of up to 150,000 shares.
VII-1