License Agreement - Stanford University and Rigel Pharmaceuticals Inc.
LICENSE AGREEMENT
Effective as of August 18, 1997 (the "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 772 Lucerne Drive, Sunnyvale, CA 94086 ("RIGEL"), agree as follows:
1. BACKGROUND.
1.1 STANFORD owns certain [ * ] and [ * ] cell lines and derivatives
thereof developed in the laboratories of Dr. Garry Nolan and Dr. Michele Calos
at STANFORD.
1.2 STANFORD has previously granted to RIGEL a nonexclusive license to
such materials pursuant to the License Agreement between RIGEL and STANFORD
dated October 7, 1996 (the "1996 License Agreement").
1.3 RIGEL now desires to obtain an exclusive worldwide license to such
materials for all uses in the RIGEL Field (as defined below), which exclusive
license shall be in addition to the nonexclusive license provided in the 1996
License Agreement.
2. DEFINITIONS.
2.1 "EXCLUSIVE" means that, subject to Article 3, STANFORD shall not
grant further licenses in the RIGEL Field.
2.2 "GENE THERAPY" means the treatment of cells which are contained
within a human subject or which are subsequently transplanted into a human
subject with the Materials.
2.3 "LICENSED PRODUCT(S)" means any product in the RIGEL Field which:
(i) directly incorporates any of the Materials; or (ii) would not, but for the
use of the Materials, have been identified, discovered or developed. Licensed
Products shall include without limitation both diagnostic and therapeutic
pharmaceutical products.
2.4 "MATERIALS" means the [ * ] helper-free retrovirus producer lines,
[ * ] (collectively, the "[ * ] cell lines") and the [ * ] cell lines developed
in the laboratories of Dr. Garry Nolan and Dr. Michele Calos at STANFORD.
2.5 "RIGEL FIELD" means the creation and use of retrovirally produced
peptide and protein libraries of random sequence for the screening of
transdominant effector peptides and RNA molecules as claimed in U.S. Patent
Application Serial No. 589911/PCT No. 9701019 (entitled "Methods for Screening
for Transdominant Intracellular Effector Peptides and RNA Molecules") as such
claims were filed on January 23, 1997, and U.S. Patent Application Serial No.
589109/PCT No. 9701048 (entitled "Methods for Screening for Transdominant
Effector Peptides and RNA Molecules"), as such claims were filed on January 23,
1997, as well as any
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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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processes, techniques and applications disclosed in the foregoing patent
applications, for drug discovery and therapeutic target identification.
2.6 "NET SALES" means the gross revenue derived by RIGEL and/or
RIGEL's sublicensees from the sales of Licensed Product(s), less the following
items insofar as they actually pertain to the disposition of such Licensed
Product(s) by RIGEL or RIGEL's sublicensees, 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, issuance and allowances;
(d) Discounts actually allowed; or
(e) Royalties payable to third parties on the manufacture, use,
sale offer for sale or import of Licensed Products.
3. GRANT; TRANSFER OF MATERIALS.
3.1 STANFORD hereby grants, and RIGEL hereby accepts, a worldwide,
royalty-bearing, sublicensable license in the RIGEL Field under STANFORD's
right, title and interest in the Materials to make, use, sell, offer for sale
and import Licensed Products.
3.2 The license granted in Section 3.1 is Exclusive, including the
right to sublicense pursuant to Article 12, in the RIGEL Field for a term (the
"Exclusivity Term") commencing as of the Effective Date and ending three (3)
years thereafter with respect to both the [ * ]and [ * ] cell lines; provided,
however, that RIGEL may extend such Exclusivity Term with respect to either or
both of such cell lines as follows: If RIGEL elects to extend the Exclusivity
Term with respect to the [ * ] cell line for an additional year, RIGEL shall pay
to STANFORD an exclusivity extension fee of ________ (the "[ * ] Exclusivity
Extension Fee"). If RIGEL elects to extend the Exclusivity Term with respect to
the [ * ] cell line for an additional year, RIGEL shall pay to STANFORD an
exclusivity extension fee of _________ (the "[ * ] Exclusivity Extension Fee").
Such exclusivity extension fees shall be due any time prior to the third
anniversary of the Effective Date, and shall operate to extend the Exclusivity
Term until the fourth anniversary of the Effective Date with respect to the [ *
] cell line, if RIGEL pays the [ * ] Exclusivity Extension Fee, and/or the [ * ]
cell line, if RIGEL pays the [ * ] Exclusivity Extension Fee. RIGEL may elect
to extend the Exclusivity Term for additional one year periods of time with
respect to the [ * ] cell line and/or the [ * ] cell line, as applicable, by so
notifying STANFORD of its intent to extend the Exclusivity Term with respect to
the [ * ] cell line and/or the [ * ] cell line at least thirty (30) days prior
to the following anniversary of the Effective Date and paying to STANFORD either
or both of the [ * ] Exclusivity Extension Fee and the [ * ] Extension Fee, as
applicable, prior to the following anniversary of the Effective Date. Any
exclusivity extension fees paid by RIGEL pursuant to this Section 3.2 shall be
nonrefundable but creditable against
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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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earned royalties as provided in Section 6.4. If RIGEL extends the
Exclusivity Term, RIGEL and STANFORD shall discuss in good faith additional
appropriate diligence milestones.
3.3 After expiration of the Exclusivity Term with respect to the [ * ]
cell line and/or the [ * ] cell line, the license granted to RIGEL pursuant to
Section 3.1 with respect to such cell line(s), shall terminate. Such
termination shall not affect the term of the nonexclusive license granted to
RIGEL under the 1996 License Agreement.
3.4 Notwithstanding the Exclusive license granted to RIGEL pursuant to
Section 3.1, STANFORD shall have the right to use and to distribute the
Materials to other nonprofit and academic institutions for non-commercial,
academic research purposes in the RIGEL Field. Any transfer of the Materials by
STANFORD pursuant to this Section 3.4 shall be governed by a material transfer
agreement which (i) restricts the recipient's use of the Materials to the
performance of specified academic research projects, (ii) does not allow the
recipient to transfer the Materials to any other entity, and (iii) contains
other terms and conditions typically included in agreements governing the
transfer and use of biological materials for noncommercial academic research
purposes.
3.5 Promptly after the Effective Date, STANFORD shall transfer to
RIGEL such quantities of the Materials as RIGEL shall reasonably request.
Thereafter, STANFORD shall transfer to RIGEL such additional quantities of
Materials as RIGEL shall reasonably request in the event that RIGEL's stock of
the Materials is destroyed or contaminated.
4. GOVERNMENT RIGHTS.
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. STANFORD agrees to provide reasonable assistance to
RIGEL in the event RIGEL decides to seek a waiver under such domestic
manufacture requirement.
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 develop
diligently markets for the Licensed Product(s). RIGEL shall demonstrate such
diligence to STANFORD by achieving proof of principle though written
documentation of the following achievements:
(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;
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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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(d) Isolation and analysis of the peptide eliciting such
physiological response from the cell; and
(e) Identification of two novel targets for drug design, or
demonstration that two previously known targets have a novel activity suitable
for drug design.
5.2 If RIGEL is unable to demonstrate items 5.1(a) through (d) within
eighteen (18) months after the Effective Date, and item 5.1(e) within thirty six
(36) months after the Effective Date, STANFORD may request that RIGEL meet with
STANFORD to discuss RIGEL's lack of diligence. The parties shall meet within
thirty (30) days after RIGEL receives any such notice to 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 eighty (180)
days after the Proposed Remedy is agreed upon, STANFORD may elect to terminate
this Agreement, which termination shall not have any effect upon the rights
granted to RIGEL pursuant to the 1996 License Agreement.
5.3 On or before each anniversary of the Effective Date during the
Exclusivity Term, RIGEL shall make a written annual report to STANFORD covering
RIGEL's progress during the preceding year toward commercial use of the 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. LICENSE FEE AND ROYALTIES.
6.1 In partial consideration for the Exclusive License granted by
STANFORD to RIGEL with respect to the [ * ] cell lines included in the
Materials, RIGEL agrees to pay to STANFORD the following:
(a) A noncreditable, nonrefundable license issue royalty of
______________________, which amount shall be paid within thirty (30) days after
the Effective Date.
(b) An exclusivity fee equal to _______________________ for
each of the three (3) years following the first anniversary of the Effective
Date, which amounts shall be paid to STANFORD within thirty (30) days after each
of the first, second and third anniversaries of the Effective Date. Such
payments shall be nonrefundable but creditable against earned royalties to the
extent provided in Section 6.4.
(c) RIGEL shall issue to STANFORD _____________________ Stock
of RIGEL, pursuant to a stock purchase agreement to be entered into between
RIGEL and STANFORD within ninety (90) days after the Effective Date.
(d) If RIGEL grants to a third party a sublicense to the
Materials solely for research, and not commercialization purposes (a "Research
Sublicense"), RIGEL shall also pay to STANFORD a milestone payment equal to
__________________________ payment that
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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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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 Materials 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:
First Commercialization Sublicense Granted __________
Second Commercialization Sublicense Granted ____________
Each Additional Commercialization Sublicense __________
Granted
If RIGEL owes amounts to STANFORD pursuant to this Section 6.1(d) and also
pursuant to Section 6.3 of the 1996 License Agreement with respect to a
particular Research Sublicense or Commercialization Sublicense, the amounts due
to STANFORD pursuant to this Section 6.1(d) shall be reduced by any amounts due
to STANFORD pursuant to Section 6.3 of the 1996 License Agreement with respect
to such Research Sublicense or Commercialization Sublicense. RIGEL shall pay
such sublicense fees to STANFORD within sixty (60) days after the effective date
of each Commercialization Sublicense.
6.2 In partial consideration for the Exclusive License granted by
STANFORD to RIGEL for the [ * ] cell lines included in the Materials, RIGEL
agrees to pay to STANFORD an exclusivity fee equal to __________________ for
each of the three (3) years following the first anniversary of the Effective
Date, which amounts shall be paid to STANFORD within thirty (30) days after each
of the first, second and third anniversaries of the Effective Date. Such
payments shall be nonrefundable but creditable against earned royalties to the
extent provided in Section 6.4.
6.3 As further consideration for the license granted to RIGEL pursuant
to Section 3.1, RIGEL shall pay to STANFORD earned royalties equal to _______ of
Net Sales of Licensed Products by RIGEL and its sublicensees; provided, however,
that if royalties on Net Sales of a particular Licensed Product by RIGEL and its
sublicensees would be due to STANFORD pursuant to both this Section 6.3 and
Section 6.4 of the 1996 License Agreement, RIGEL shall be obligated to pay only
the royalties due to STANFORD pursuant to Section 6.4 of the 1996 License
Agreement on Net Sales of such Licensed Products.
6.4 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 Section 6.4 until the entire
creditable amount is exhausted.
6.5 If this Agreement is not terminated in accordance with other
provisions hereof, RIGEL's obligation to pay royalties pursuant to Section 6.3
shall continue until ten (10) years after first commercial sale of Licensed
Products.
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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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6.6 The royalties 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.
7. Royalty Reports, Payments, and Accounting.
7.1 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 in a particular quarter) 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 A and shall state the
number, description, and aggregate Net Sales of Licensed Product(s) during such
completed calendar quarter, and resulting calculation pursuant to Section 6.3 of
earned royalty payments due STANFORD for such completed calendar quarter.
Concurrent with the making of each such report, RIGEL shall include payment due
STANFORD of earned royalties for the calendar quarter covered by such report.
7.2 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 Section 7.1. 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.
8. PATENTS; NEW INVENTIONS.
8.1 STANFORD's Office of Technology Licensing represents and warrants
that to the best of its knowledge as of the Effective Date, STANFORD has not
sought or obtained patent protection of the Materials or any use thereof in the
Rigel Field. STANFORD agrees that future inventions and discoveries using or
relating to the Materials may be useful to RIGEL in the development and/or
commercialization of Licensed Products. Subject to STANFORD's obligations with
respect to sponsored research, STANFORD will, as soon as practicable, bring any
such new invention or discovery to RIGEL's attention and provide RIGEL a
reasonable opportunity to negotiate a license therefor.
9. WARRANTIES.
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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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9.1 STANFORD's Office of Technology Licensing represents and warrants
that as of the Effective Date, it has received no claims by third parties that
the use of the Materials infringes any patents, copyrights, and other rights of
third parties.
9.2 STANFORD represents and warrants that it has all right, power and
authority necessary to grant the License set forth in Article 3 to RIGEL, and
that it has not, and will not during the term of this Agreement, grant any right
or interest in the Materials to any third party which would conflict with the
rights granted to RIGEL hereunder.
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. 4,740,470, both entitled, "Biologically Functional Molecular
Chimeras" (collectively known as the Cohen/Boyer patents), or reissues thereof;
or
(b) U.S. Patent 4,656,134, entitled "Amplification of
Eucaryotic Genes" or any patent application corresponding thereto.
9.4 Except as provided in Section 9.1 and as otherwise expressly set
forth in this Agreement, nothing in this Agreement will be construed as 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 trademarks of third parties; conferring
rights to use in advertising, publicity, or otherwise any trademark or the name
of "STANFORD"; or granting by implication, estoppel, or otherwise any licenses
or rights under patents of STANFORD.
9.5 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.
10. INDEMNITY.
10.1 RIGEL agrees to indemnify, hold harmless, and defend STANFORD and
STANFORD Health Services (or any successor thereto) 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 the Materials or Licensed Product(s) by RIGEL or RIGEL's
sublicensee(s) or customers.
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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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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 whatsoever 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 (or any successor thereto), 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 (or any successor thereto) shall be excess and noncontributory.
11. STANFORD NAMES AND MARKS
11.1 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 Health Services (or any successor thereto), 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 11.
12. SUBLICENSE(S).
12.1 RIGEL may, solely in conjunction with a sublicense under the
rights licensed to RIGEL pursuant to Section 3.1 of the 1996 License Agreement,
grant sublicense(s) under its Exclusive license rights during the Exclusivity
Term.
12.2 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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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 7, 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, if such sublicenses remain in effect after termination of this
Agreement.
12.3 RIGEL agrees to provide STANFORD a copy of any sublicense(s)
granted pursuant to this Article 12.
13. TERM AND TERMINATION.
13.1 The term of this Agreement shall commence upon the Effective Date
and shall continue until expiration of both the [ * ] cell Exclusivity Term and
the [ * ] cell line Exclusivity Term. Additionally, RIGEL may terminate this
Agreement prior to such expiration date by giving STANFORD notice in writing at
least thirty (30) days in advance of the effective date of termination selected
by RIGEL. If RIGEL terminates this Agreement prior to the third anniversary of
the Effective Date, RIGEL's obligations to make the payments due to STANFORD
pursuant to Sections 6.1(b), and 6.2 and shall survive such termination until
expiration of RIGEL's obligations thereunder. Any termination or expiration of
this Agreement shall have no effect upon the Rights granted to RIGEL pursuant to
the 1996 License Agreement.
13.2 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 to RIGEL by STANFORD.
13.3 SURVIVING ANY TERMINATION ARE:
(a) RIGEL's obligation to pay exclusivity fees pursuant to
Sections 6.1(b) and 6.2, royalties accrued or accruable pursuant to Section 6.3,
and Sections 6.4, 6.5 and 6.6;
(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 7, 9 and 10.
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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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14. 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.
15. ARBITRATION.
15.1 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.
15.2 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. Judgment upon the award rendered by the
arbitrator shall be final and nonappealable and may be entered in any court
having jurisdiction thereof.
15.3 The parties shall be entitled to discovery in like manner as if
the arbitration were a civil suit in the California Superior Court.
15.4 Any arbitration shall be held at Stanford, California, unless the
parties hereto mutually agree in writing to another place.
16. 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: 772 Lucerne Drive
Sunnyvale, CA 94086
Attention: Dr. Donald G. Payan
Either party may change its address upon written notice to the other party.
17. WAIVER.
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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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None of the terms of this Agreement can be waived except by the written
consent of the party waiving compliance.
18. 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. Any claim or controversy arising out of or related to this
Agreement or any breach hereof shall be submitted to a court of applicable
jurisdiction in the State of California, and each party hereby consents to the
jurisdiction and venue of such court.
19. 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.
20. ENTIRE AGREEMENT.
This Agreement, together with the Exhibit attached hereto, embodies the
entire understanding of the parties and shall supersede 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.
21. COUNTERPARTS.
This Agreement may be executed in counterparts, with the same force and
effect as if the parties had executed the same instrument.
[ * ] = 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.
11
<PAGE>
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/ Jon Sandelin
---------------------------
Name Jon Sandelin
--------------------------------
Title Acting Director
-------------------------------
Date August 18, 1997
--------------------------------
RIGEL PHARMACEUTICALS , INC.
Signature /s/ Donald G. Payan
---------------------------
Name Donald G. Payan
--------------------------------
Title VP R&D and COO
-------------------------------
Date 8/18/97
--------------------------------
[ * ] = 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.
12
<PAGE>
EXHIBIT A
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 Sublicenses Executed
---------------------------------------------------------------------------------
Net Sales $
---------------------------------------------------------------------------------
Royalty Calculation
---------------------------------------------------------------------------------
Royalty Subtotal $
---------------------------------------------------------------------------------
Credit $
---------------------------------------------------------------------------------
Royalty Due $
---------------------------------------------------------------------------------
[ * ] = 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.