License Agreement - Stanford University and Rigel Pharmaceuticals Inc.
AGREEMENT
Effective as of October 7, 1996 ("Effective Date"), THE BOARD OF TRUSTEES OF
THE LELAND STANFORD JUNIOR UNIVERSITY, a body having corporate powers under the
laws of the State of California ("STANFORD") and RIGEL PHARMACEUTICALS, INC., a
Delaware corporation having a principle place of business at 24 Windsor Drive,
Hillsborough, CA 94010 ("RIGEL"), agree as follows:
1. BACKGROUND.
1.1 STANFORD has an assignment of U.S. Patent Application No.
08/589,109, entitled "Methods for Screening for Transdominant Effector Peptides
and RNA Molecules" (the "NOLAN/ROTHENBERG PATENT APPLICATION") claiming an
invention developed in the laboratory of Dr. Garry Nolan (the "Invention"), and
any Licensed Patent(s), as hereinafter defined, which may claim such Invention.
1.2 STANFORD has certain biological materials and other know-how
("Know-How"), as herein defined, pertaining to the Invention.
1.3 STANFORD desires to have the Know-How and Invention perfected and
marketed at the earliest possible time in order that products resulting
therefrom may be available for public use and benefit.
1.4 RIGEL desires a license under said Know-How, Invention, and
Licensed Patent(s) in the field of use of gene transfer technologies, including
retrovirally mediated nucleic acid libraries, for drug development, drug
delivery, drug screening, and target analysis and discovery associated with the
development, manufacture, use and sale of Licensed product(s), as defined below.
1.5 RIGEL acknowledges that certain of the Cell Lines (as defined
below) were made in the course of research supported by Progenesys.
1.6 The patent application entitled "Methods for Screening for
Transdominant Intracellular Effector Peptides and RNA Molecules," which claims
technology useful in the field and which was developed in the laboratory of Dr.
Garry Nolan (the "Nolan Patent Application"), has previously been assigned to
RIGEL.
2. DEFINITIONS.
2.1 "LICENSED BIOLOGICAL MATERIALS" means the materials listed on
Exhibit A, including certain vector libraries ("Vector Libraries") and cell
lines ("Cell Lines") set forth therein, as amended from time to time upon the
parties' mutual written consent.
2.2 "LICENSED KNOW-HOW" means all know-how necessary or useful for the
commercial exploitation of the Licensed Patents in the Licensed Field of Use,
including without limitation all know-how, trade secrets, protocols,
information, processes or other subject matter
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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which is either disclosed in the Nolan/Rothenberg Patent Application, or
necessary or useful to practice the licenses granted to RIGEL in this
Agreement with respect to the Invention. Licensed Know-How excludes the
Licensed Patents and includes the Licensed Biological Materials.
2.3 "LICENSED PATENT(S)" means any Letters Patent, both foreign
(subject to Section 7) and domestic, issued upon (i) the Nolan/Rothenberg
Patent Application (STANFORD's U.S. Patent Application, Serial Number
08/589,109 filed January 23, 1996), (ii) any substitutions, divisionals,
continuations, and continuations-in-part (to the extent such
continuations-in-part claim subject matter disclosed or claimed in the
Nolan/Rothenberg Patent Application as filed on January 23, 1996 and to the
extent that the practice of an invention claimed in a Licensed Patent issuing
from a patent application other than such continuation-in-part would infringe
a claim of Licensed Patent issuing from such continuation-in-part), and (iii)
any foreign counterparts of (i) or (ii).
2.4 "LICENSED TECHNOLOGY" means the Licensed Patent(s) and the
Licensed Know-How.
2.5 "LICENSED PRODUCT(S)" means:
(a) any product, the manufacture, use, sale, offer for sale or
import of which:
(1) is covered by a valid claim of an issued,
unexpired Licensed Patent(s) directed to the Invention (claim of an issued,
unexpired Licensed Patent(s) shall be presumed to be valid unless and until it
has been held to be invalid by a final judgment of a court of competent
jurisdiction from which no appeal can be or is taken), or
(2) is covered by any claim being prosecuted in a
pending application directed to the Invention, which claim has not been pending
for more than three (3) years from first filing of such claim;
(b) any product which directly incorporates any of the Licensed
Biological Materials; or
(c) any product which would not, but for the use of the
Licensed Biological Materials, have been identified, discovered, or developed.
2.6 "NET SALES" means the gross revenue derived by RIGEL and/or
RIGEL's sublicensee(s) from the sales of Licensed Product(s), less the following
items but only insofar as they actually pertain to the disposition of such
Licensed Product(s) by RIGEL or RIGEL's sublicensee(s), are included in such
gross revenue, and are separately billed:
(a) Import, export, excise and sales taxes, and custom duties;
(b) Credit for returns, allowances, trades, or retroactive
price adjustments;
(c) Transportation charges, issuances and allowances;
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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(d) Discounts actually allowed; or
(E) Royalties payable to third parties on the manufacture, use,
sale, offer for sale or import of Licensed Products.
2.7 "LICENSED FIELD OF USE" means the use of gene transfer
technologies, including retrovirally mediated nucleic acid libraries, for drug
development, drug delivery, and target analysis and discovery. Solely with
respect to the [ * ] Cell Lines set forth on Exhibit A, the Licensed Field of
Use excludes the use of such Cell Lines, derivatives or vectors thereof or other
tangible products that are a direct lineal descendent from such Cell Lines
(although obtained in any manner therefrom), wherein cells treated with any one
or more of the aforementioned materials are contained within a human subject or
are subsequently transplanted into a human subject.
2.8 "EXCLUSIVE" means that, subject to Article 4, STANFORD shall not
grant further licenses in the Licensed Field of Use.
3. GRANT.
3.1 STANFORD hereby grants and RIGEL hereby accepts a worldwide
license in the Licensed Field of Use under STANFORD's right, title and interest
in the Licensed Patents and the Vector Libraries to make, use, sell, offer for
sale and import Licensed Product(s).
3.2 The license granted in Section 3.1 is Exclusive, including the
right to sublicense pursuant to Article 13, in the Licensed Field of Use for a
term (the "Exclusivity Term") commencing as of the Effective Date and ending on
the first to occur of the following:
(a) twenty (20) years from the Effective Date; or
(b) ten (10) years from the date of first commercial sale of a
Licensed Product(s) by RIGEL or RIGEL's sublicensee(s). RIGEL agrees to
promptly inform STANFORD in writing of the date of first commercial sale of
Licensed Products. After expiration of the Exclusivity Term, said license shall
become nonexclusive and continue indefinitely.
3.3 STANFORD additionally grants, and RIGEL hereby accepts, a
worldwide, nonexclusive license in the Licensed Field of Use under STANFORD's
right, title and interest in the Licensed Know-How other than the Vector
Libraries to make, use, sell, offer for sale and import Licensed Product(s).
The term of such nonexclusive license shall commence upon the Effective Date
and, continiue indefinitely.
3.4 Notwithstanding the Exclusive license granted to RIGEL, pursuant
to Sections 3.1 and 3.2, STANFORD shall have the right to practice the Licensed
Patents and to use the Vector Libraries for non-commercial, academic research
purposes.
4. GOVERNMENT RIGHTS.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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This Agreement is subject to all of the terms and conditions of Title 35
United States Code Sections 200 through 204, including an obligation that
Licensed Product(s) sold or produced in the United States be "manufactured
substantially in the United States," and RIGEL agrees to take all reasonable
action necessary on its part as licensee to enable STANFORD to satisfy its
obligation thereunder, relating to the Invention. STANFORD agrees to provide
reasonable assistance to RIGEL in the event RIGEL decides to seek a waiver under
such domestic manufacture equipment.
5. DILIGENCE.
5.1 As an inducement to STANFORD to enter into this Agreement, RIGEL
agrees to use all reasonable efforts and diligence to proceed with the
development, manufacture, and sale of Licensed Product(s) and to diligently
develop markets for the Licensed Product(s). RIGEL shall demonstrate such
diligence to STANFORD by achieving proof of principle through written
documentation of the following within eighteen (18) months after the Effective
Date:
(a) Construction of a retroviral vector library;
(b) Infection of cells with such vector library;
(c) Detection of a physiological response to such infection in
an infected cell; and
(d) Isolation and analysis of the peptide eliciting such
physiological response from the cell.
5.2 If RIGEL is unable to demonstrate the foregoing proof of principle
within eighteen (18) months after the Effective Date, STANFORD may elect to
narrow the definition of the Licensed Field of Use to include only the use of
retrovirally mediated nucleic acid libraries for drug development, drug
delivery, drug screening, and target analysis and discovery, by providing
written notice to RIGEL thereof. Additionally, RIGEL shall provide to
STANFORD within eighteen (18) months after the Effective Date a plan for the
development and commercialization of Licensed Products (a "Development
Plan"). STANFORD shall comment upon and approve such plan, which approval
shall not be unreasonably withheld. After the Development Plan is approved
by STANFORD, RIGEL shall use reasonable efforts to diligently perform its
obligations under such Development Plan. If Stanford reasonably believes
that RIGEL is not using reasonable efforts to perform the Development Plan,
STANFORD may so notify RIGEL. The parties shall promptly thereafter meet to
discuss RIGEL's progress under the Development Plan, and shall develop a
mutually agreeable plan for remedying any such lack of diligence ( the
"Proposed Remedy"). If RIGEL fails to perform the Proposed Remedy within one
hundred and eighty (180) days after the Proposed Remedy is agreed upon,
STANFORD may elect to narrow the definition of the Licensed Field of Use to
include only the use of retrovirally mediated nucleic acid libraries for drug
development, drug delivery, and target analysis and discovery by providing
written notice to RIGEL. If RIGEL then fails to perform the Proposed Remedy
within ninety (90) days after receiving STANFORD's notice that it has elected
to so narrow the
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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Licensed Field of Use definition, then STANFORD may elect to convert the
Exclusive License granted to RIGEL pursuant to Sections 3.1 and 3.2 to a
nonexclusive license for the remaining term of this Agreement.
5.3 PROGRESS REPORT. On or before each anniversary of the Effective
Date until RIGEL markets a Licensed Product(s), RIGEL shall make a written
annual report to STANFORD covering RIGEL's progress during the preceding year
toward commercial use of Licensed Product(s). Such report shall include, as
a minimum, information sufficient to enable STANFORD to satisfy relevant
reporting requirements of the U.S. Government and to ascertain RIGEL's
progress toward meeting the diligence requirements of this Article 5.
6. ROYALTIES.
6.1 RIGEL agrees to pay to STANFORD a noncreditable, nonrefundable
license issue royalty of ________________ half of which shall be paid within
forty-five (45) days after the Effective Date and the balance of which shall be
on the first anniversary of the Effective Date.
6.2 Upon each anniversary of the Effective Date, RIGEL shall also pay
to STANFORD a Minimum Annual Royalty as follows:
Anniversary of Effective Date Minimum Annual Royalty Due
First and Second ____________
Third through Seventh ____________
Eighth and Thereafter ____________
Said Minimum Annual Royalty payments are nonrefundable but they are creditable
against earned royalties to the extent provided in Paragraph 6.5. The foregoing
Minimum Annual Royalty payment shall be decreased by [ * ] if either:
(i) Stanford abandons all patent applications from which
Licensed Patent(s) could issue prior to the time that any Licensed Patent(s)
issue; or
(ii) Stanford elects to narrow the definition of the Licensed
Field of Use pursuant to Section 5.2.
6.3 If Rigel grants to a third party a sublicense under the Licensed
Technology solely for research, and not commercialization purposes (a "Research
Sublicense"), Rigel shall also pay to STANFORD a milestone payment equal to
__________ of any research milestone payment that RIGEL receives as
consideration for the grant of such Research Sublicense. RIGEL shall pay such
amount to STANFORD within sixty (60) days after RIGEL receives such research
milestone payment.
If RIGEL grants to a third party a sublicense under the Licensed
Technology which includes the right to sell and offer for sale Licensed Products
(a "Commercialization Sublicense"), RIGEL shall pay to STANFORD a sublicense fee
as follows:
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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First Sublicense Granted ______________
Second Sublicensed Granted ______________
Each Additional Sublicense Granted ______________
RIGEL shall pay such sublicense fees to STANFORD within sixty (60) days after
the effective date of each Commercialization Sublicense.
6.4 In addition, RIGEL shall pay STANFORD earned royalties equal to
___________ of Net Sales of Licensed Products set forth in Sections 2.5(a) and
2.5(b), or ________of Net Sales of Licensed Products which can only be
categorized under Section 2.5(c). If a Licensed product can be included in more
than one of Sections 2.5(a), 2.5(b) or 2.5(c), the royalty rate due to STANFORD
on Net Sales of such Licensed Product shall be _______.
6.5 As further consideration for the license granted to RIGEL under
this Agreement, RIGEL shall issue to STANFORD ______________shares of Preferred
Stock of RIGEL, pursuant to a Stock Purchase Agreement. If such number of
shares shall equal less than ______________of the total outstanding shares of
RIGEL's stock at any time during the period from the date of issuance of such
stock until one (1) year thereafter, STANFORD and RIGEL shall discuss whether
RIGEL shall adjust the number of shares issued to Stanford under this Section
6.5.
6.6 Creditable payments under this Agreement shall be an offset to
RIGEL against up to fifty percent (50%) of each earned royalty payment which
RIGEL would be required to pay pursuant to Paragraph 6.4 until the entire credit
is exhausted.
6.7 If this Agreement is not terminated in accordance with other
provisions hereof, RIGEL's obligation to pay royalties hereunder shall continue
until ten (10) years after first commercial sale of Licensed Products.
6.8 The royalty on sales in currencies other than U.S. Dollars shall
be calculated using the appropriate foreign exchange rate for such currency
quoted by the Bank of America (San Francisco) foreign exchange desk, on the
close of business on the last banking day of each calendar quarter. Royalty
payments to STANFORD shall be in U.S. Dollars. All non-U.S. taxes related to
royalty payments shall be paid by RIGEL and are not deductible from the payments
due STANFORD.
6.9 Within thirty (30) days after receipt of a statement from
STANFORD, RIGEL shall reimburse STANFORD for all costs incurred by STANFORD,
including those costs incurred prior to the Effective Date, in connection with
the preparation, filing and prosecution of all patent applications and
maintenance of patents claiming the Invention.
7. PATENT RIGHTS.
STANFORD shall have the obligation to file, prosecute and maintain all
patent applications and patents included in the Licensed Patents. STANFORD will
provide RIGEL
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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with an opportunity to review and comment upon the prosecution strategy and
to consult with STANFORD on the content of patent filings, and will provide
copies of any correspondence relating to patent applications and patents
included in the Licensed Patents to RIGEL or a designee of RIGEL. RIGEL
shall have the right to designate, in its sole discretion, those foreign
countries in which STANFORD will file, prosecute and maintain patents and
patent applications included in the Licensed Patents. STANFORD may propose
to file, prosecute and maintain a Licensed Patent in a country which RIGEL
has not designated pursuant to this Section 7. If RIGEL agrees to such
designation, it shall reimburse STANFORD costs of such filing, prosecution of
maintenance of such patent or patent applications pursuant to Section 6.9 and
such patent or patent applications shall be included in the Licensed Patents.
If RIGEL does not agree to such proposal, STANFORD may elect to proceed
with such filing, prosecution or maintenance at its own expense, and such
patent or patent application shall not be included in the Licensed Patents.
8. ROYALTY REPORTS, PAYMENTS, AND ACCOUNTING.
8.1 QUARTERLY EARNED ROYALTY PAYMENT AND REPORT. Beginning with the
first sale of a Licensed Product, RIGEL shall make written reports (even if
there are no sales) and earned royalty payments to STANFORD within thirty
(30) days after the end of each calendar quarter. This report shall be in the
form of the report of Exhibit B and shall state the number, description, and
aggregate Net Sales of Licensed Product(s) during such completed calendar
quarter, and resulting calculation pursuant to Paragraph 6.4 of earned
royalty payment due STANFORD for such completed calendar quarter. Concurrent
with the making of each such report, RIGEL shall include payment due STANFORD
of royalties for the calendar quarter covered by such report.
8.2 ACCOUNTING. RIGEL agrees to keep and maintain records for a
period of three (3) years showing the manufacture, sale, use, and other
disposition of products sold or otherwise disposed of under the license herein
granted. Such records will include general ledger records showing cash receipts
and expenses, and records which include production records, customers serial
numbers and related information in sufficient detail to enable the royalties
payable hereunder by RIGEL to be determined. RIGEL further agrees to permit its
books and records to be examined by STANFORD from time to time to the extent
necessary to verify reports provided for in Paragraph 8.1. Such examination is
to be made by STANFORD or its designee, at the expense of STANFORD, except in
the event that the results of the audit reveal an underreporting of royalties
due STANFORD of five percent (5%) or more, then the audit costs shall be paid by
RIGEL.
9. NEGATION OF WARRANTIES.
9.1 Nothing in this Agreement is or shall be construed as:
(a) A warranty or representation by STANFORD as to the validity
or scope of any Licensed Patent(s);
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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(b) A warranty or representation that anything made, used,
sold, or otherwise disposed of under any license granted in this Agreement is or
will be free from infringement of patents, copyrights, and other rights of third
parties;
(c) An obligation to bring or prosecute actions or suits
against third parties for infringement, except to the extent and in the
circumstances described in Article 13;
(d) Granting by implication, estoppel, or otherwise any
licenses or rights under patents or other rights of STANFORD or other persons
other than Licensed Patent(s), regardless of whether such patents or other
rights are dominant or subordinate to any Licensed Patent(s); or
(e) An obligation to furnish any technology or technological
information other than the Licensed Technology.
9.2 Except as expressly set forth in the Agreement STANFORD MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED, THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF THE LICENSED PRODUCT(S)
WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER RIGHTS, OR ANY
OTHER EXPRESS OR IMPLIED WARRANTIES.
9.3 RIGEL agrees that nothing in this Agreement grants RIGEL any
express or implied license or right under or to:
(a) U.S. Patent No. 4,237,224, "Process for Producing
Biologically Functional Molecular Chimeras"; U.S. Patent No. 4,468,464 and U.S.
Patent No. 4,740470, both entitled, "Biologically Functional Molecular Chimeras"
(collectively known as the Cohen/Boyer patents), or reissues thereof; or
(b) U.S. Patent 4,656,134 "Amplification of Eucaryotic Genes"
or any patent application corresponding thereto.
9.4 STANFORD represents and warrants that it has all right, power and
authority necessary to grant the licenses set forth in Article 3 to RIGEL,
and that it has not, and will not during the term of this Agreement, grant
any right to any third party which would conflict with the rights granted to
RIGEL hereunder.
10. INDEMNITY.
10.1 RIGEL agrees to indemnify, hold harmless, and defend STANFORD and
Stanford Health Services and their respective trustees, officers, employees,
students, and agents against any and all claims by third parties for death,
illness, personal injury, property damage, and improper business practices
arising out of the manufacture, use, sale, or other disposition of
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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the Invention, Licensed Technology, or Licensed Product(s) by RIGEL or
RIGEL's sublicensee(s) or customers.
10.2 STANFORD shall not be liable for any indirect, special,
consequential or other damages whatsoever, whether grounded in tort (including
negligence), strict liability, contract or otherwise. STANFORD shall not have
any responsibilities or liabilities whosoever with respect to Licensed
Product(s).
10.3 RIGEL shall at all times comply, through insurance or
self-insurance, with all statutory workers' compensation and employers'
liability requirements covering any and all employees with respect to
activities performed under this Agreement.
10.4 In addition to the foregoing, RIGEL shall maintain Comprehensive
General Liability Insurance including Products Liability Insurance, with
reputable and financially secure insurance carrier(s) to cover the activities
of RIGEL and its sublicensee(s) in the amounts and during the periods
specified herein. Such insurance shall provide minimum limits of liability of
One Million Dollars ($1,000,000) as of the first anniversary of the date upon
which RIGEL first leases a facility in which it will conduct research and
development activities, and of Five Million Dollars ($5,000,000) as of the
commencement of human clinical trials of Licensed Products. Such insurance
shall include STANFORD, Stanford Health Services, their trustees, directors,
officers, employees, students, and agents as additional insureds. Such
insurance shall be written to cover claims incurred, discovered, manifested,
or made during or after the expiration of this Agreement. At STANFORD's
request, RIGEL shall furnish a Certificate of Insurance evidencing primary
coverage and requiring thirty (30) days prior written notice of cancellation
or material change to STANFORD. RIGEL shall advise STANFORD, in writing, that
it maintains excess liability coverage (following form) over primary
insurance for at least the minimum limits set forth above. All such insurance
of RIGEL shall be primary coverage; insurance of STANFORD or Stanford Health
Services shall be excess and noncontributory.
11. MARKING.
Prior to the issuance of patents on the Invention, RIGEL agrees to mark
Licensed Product(s) (or their containers or labels) made, sold, or otherwise
disposed of by it under the licenses granted in this Agreement with the words
"Patent Pending," and following the issuance of one or more patents, with the
numbers of the Licensed Patent(s).
12. STANFORD NAMES AND MARKS.
RIGEL agrees not to identify STANFORD in any promotional advertising or
other promotional materials to be disseminated to the pubic or any portion
thereof or to use the name of any STANFORD faculty member, employee, or student
or any trademark, service mark, trade name, or symbol of STANFORD or the
Stanford University Hospital, or that is associated with either of them, without
STANFORD's prior written consent, except as required by law. STANFORD shall not
unreasonably hold consent under this Section 12.
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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13. INFRINGEMENT BY OTHERS: PROTECTION OF PATENTS.
13.1 RIGEL shall promptly inform STANFORD of any suspected infringement
of any Licensed Patent(s) by a third party. During the Exclusive period of this
Agreement, STANFORD and RIGEL each shall have the right to institute an action
for infringement of the Licensed Patent(s) against such third party in
accordance with the following:
(a) If STANFORD and RIGEL agree to institute suit jointly, the
suit shall be brought in both their names, the out-of-pocket costs thereof shall
be borne equally, and any recovery or settlement shall be shared equally. RIGEL
and STANFORD shall agree to the manner in which they shall exercise control over
such action. STANFORD may, if it so desires, also be represented by separate
counsel of its own selection, the fees for which counsel shall be paid by
STANFORD;
(b) In the absence of agreement to institute a suit jointly,
STANFORD may institute suit, and, at its option, join RIGEL as a plaintiff. If
STANFORD decides to institute suit, then it shall notify RIGEL in writing.
STANFORD shall bear the entire cost of such litigation and shall be entitled to
retain the entire amount of any recovery or settlement; and
(c) In the absence of agreement to institute a suit jointly and
if STANFORD notifies RIGEL that it has decided not to join in or institute a
suit, as provided in (a) or (b) above, RIGEL may institute suit and, at its
option, join STANFORD as a plaintiff. RIGEL shall bear the entire cost of such
litigation and shall be entitled to retain the entire amount of any recovery or
settlement, provided, however, that any recovery in excess of litigation costs
shall be deemed to be Net Sales, and RIGEL shall pay STANFORD royalties thereon
at the rates specified herein.
13.2 Should either STANFORD or RIGEL commence a suit under the
provisions of Paragraph 13.1 and thereafter elect to abandon the same, it shall
give timely notice to the other party who may, if it so desires, continue
prosecution of such suit, provided, however, that the sharing of expenses and
any recovery in such suit shall be as agreed upon between STANFORD and RIGEL.
14. SUBLICENSE(S).
14.1 RIGEL may grant sublicense(s) under its Exclusive license rights
during the Exclusivity Term. RIGEL may grant sublicense(s) under nonexclusive
license rights, if such sublicense is in conjunction with a sublicense of other
RIGEL proprietary technology.
14.2 If RIGEL is unable or unwilling to serve or develop a potential
market or market territory for which there is a willing sublicense(s), RIGEL
will, at STANFORD's request negotiate in good faith a sublicense(s) hereunder on
commercially reasonable terms.
14.3 Any sublicense(s) granted by RIGEL under this Agreement shall be
subject and subordinate to terms and conditions of this Agreement, except:
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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(a) Sublicense terms and conditions shall reflect that any
sublicensee(s) shall not grant a sublicense to a third party; and
(b) The earned royalty rate specified in the sublicense(s) may
be at higher rates than the rates in this Agreement.
Any such sublicense(s) also shall expressly include the provisions of
Articles 8, 9, and 10 for the benefit of STANFORD and provide for the transfer
of all obligations including the payment of royalties specified in such
sublicense(s), to STANFORD or its designee, in the event that this Agreement is
terminated.
14.4 RIGEL agrees to provide STANFORD a copy of any sublicense(s)
granted pursuant to this Article 14.
15. TERMINATION.
15.1 RIGEL may terminate this Agreement by giving STANFORD notice in
writing at least thirty (30) days in advance of the Effective Date of
termination selected by RIGEL.
15.2 STANFORD may terminate this Agreement if RIGEL:
(a) Is in default in payment of royalty or providing of
reports;
(b) Is in material breach of any provision hereof; or
(c) Intentionally provides any false report;
and RIGEL fails to remedy any such default, breach, or false report within
thirty (30) days after written notice thereof by STANFORD.
15.3 SURVIVING ANY TERMINATION ARE:
(a) RIGEL's obligation to pay royalties accrued or accruable;
(b) Any cause of action or claim of RIGEL or STANFORD, accrued
or to accrue, because of any breach or default by the other party; and
(c) The provisions of Articles 8, 9, and 10.
16. ASSIGNMENT.
This Agreement may not be assigned by either party without the express
written consent of the other party, except that RIGEL may assign the Agreement
in connection with a merger, consolidation or sale of all or substantially all
of RIGEL's assets.
17. DOUBLE PATENTING CONTINGENCY.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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If the PTO rejects either the Nolan/Rothenberg Patent Application for
double patenting in view of the claims of the Nolan Patent Application, or the
claims of the Nolan Patent Application for double patenting in view of the
claims of the Nolan/Rothenberg Patent Application, then RIGEL may elect to
assign its right, title and interest in the Nolan Patent Application to
STANFORD, in which case STANFORD shall grant to RIGEL an irrevocable, exclusive,
worldwide, royalty-free license under STANFORD's right, title and interest in
the Nolan Patent Application for all purposes.
18. ARBITRATION.
18.1 Any controversy arising under or related to this Agreement, and
any disputed claim by either party against the other under this Agreement
excluding any dispute relating to patent validity or infringement arising under
this Agreement, shall be settled by arbitration in accordance with the Licensing
Agreement Arbitration Rules of the American Arbitration Association.
18.2 Upon request by either party, arbitration will be by a third party
arbitrator mutually agreed upon in writing by RIGEL and STANFORD within thirty
(30) days of such arbitration request. Judgement upon the award rendered by the
arbitrator shall be final and nonappealable and may be entered in any court
having jurisdiction thereof.
18.3 The parties shall be entitled to discovery in like manner as if
the arbitration were a civil suit in the California Superior Court.
18.4 Any arbitration shall be held at Stanford, California, unless the
parties hereto mutually agree in writing to another place.
19. NOTICES.
All notices under this Agreement shall be deemed to have been fully given
when done in writing and deposited in the United States mail registered or
certified, and addressed as follows:
To STANFORD: Office of Technology Licensing
Stanford University
900 Welch Road, Suite 350
Palo Alto, CA 94304-1850
Attention: Director
To RIGEL: 24 Windsor Drive
Hillsborough, CA 94010
Attention: Dr. Donald G. Payan
Either party may change its address upon written notice to the other party.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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20. WAIVER
None of the terms of this Agreement can be waived except by the written
consent of the party waiving compliance.
21. APPLICABLE LAW.
This Agreement shall be governed by the laws of the State of California
applicable to agreements negotiated, executed and performed wholly within
California.
22. SEVERABILITY.
If any provision or provisions of this Agreement shall be held to be
invalid, illegal or unenforceable, the validity, legality and enforceability of
the remaining provisions shall not be in any way affected or impaired thereby.
23. ENTIRE AGREEMENT.
This Agreement, together with the Exhibits attached hereto, embodies the
entire understanding of the parties and shall supercede all previous
communications, representations or understandings, either oral or written,
between the parties relating to the subject matter hereof. No amendment or
modification hereof shall be valid or binding upon the parties unless made in
writing and signed by duly authorized representatives of both parties.
24. COUNTERPARTS.
This Agreement may be executed in counterparts, with the same force and
effect as if the parties had executed the same instrument.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in
duplicate originals by their duly authorized officers or representatives.
THE BOARD OF TRUSTEES OF THE LELAND
STANFORD JUNIOR UNIVERSITY
Signature /s/ Katherine Ku
-----------------------------
Name Katherine Ku
----------------------------------
Title Director, Technology Licensing
---------------------------------
Date October 7, 1996
----------------------------------
RIGEL
Signature /s/ Donald G. Payan
-----------------------------
Name Donald G. Payan
----------------------------------
Title President & CEO
---------------------------------
Date 10/9/96
----------------------------------
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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EXHIBIT A
MATERIALS FROM NOLAN LAB TO BE
LICENSED TO RIGEL
[ * ]
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
<PAGE>
EXHIBIT B
SAMPLE REPORTING FORM
Stanford Docket No. S______-________
This report is provided pursuant to the license agreement between Stanford
University and ______________________________________________________.
License Agreement Effective Date: __________________________
Report Covering Period _________
Fixed Fees (Annual Minimum Payment) $_________
Number of Sublicense Executed _________
Net Sales $_________
Royalty Calculation _________
Royalty Subtotal $_________
Credit $_________
Royalty Due $_________
Comments:
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
<PAGE>
AMENDMENT
The Board of Trustees of the Leland Stanford Junior University ("Stanford") and
Rigel Pharmaceuticals, Inc. ("Rigel") agree to extend the time period within
which Rigel must pay the license issue royalty due to Stanford pursuant to the
License Agreement between Stanford and Rigel dated October 7, 1996 (the
"Agreement"). Section 6.1 of the Agreement is hereby amended to provide that
Rigel will pay the license issue royalty to Stanford within ninety (90) days
after the Effective Date of the Agreement.
Accepted and agreed by:
/s/ Katherine Ku /s/ Donald G. Payan
---------------------------------- ---------------------------
Ms. Katherine Ku; Director, Technology Licensing Dr. Donald G. Payan
Stanford University Rigel Pharmaceuticals, Inc.
December 6, 1996 November 25, 1996
----------------------- ----------------------
Date Date
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED
BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.