1
CONFIDENTIAL TREATMENT REQUESTED UNDER 17 C.F.R. SECTIONS 200.8
(b), 200.83 AND 230.406 * INDICATES OMITTED MATERIAL THAT IS THE
SUBJECT OF A CONFIDENTIAL TREATMENT REQUEST THAT IS FILED
SEPARATELY WITH THE COMMISSION
EXHIBIT 10.28
PATENT AND TECHNOLOGY LICENSE AGREEMENT
THIS AGREEMENT is made by and between DR. JOHN ENG ("LICENSOR"), whose
address is 0000 Xxxxxxxxx Xxxxxx, Xxxxx, Xxx Xxxx 00000, and AMYLIN
PHARMACEUTICALS, INC., ("LICENSEE"), a Delaware corporation having a principal
place of business located at 0000 Xxxxx Xxxxxx Xxxxx, Xxx Xxxxx, Xxxxxxxxxx
00000.
BACKGROUND
WHEREAS, LICENSOR is the sole and exclusive owner of certain
inventions included within PATENT RIGHTS and TECHNOLOGY RIGHTS, which
were made at the VA Medical Center, Bronx, New York, a component
institution of the U.S. Department of Veterans Affairs;
WHEREAS, LICENSOR desires to have such inventions, and such other
inventions as may be included within PATENT RIGHTS and TECHNOLOGY RIGHTS,
developed and used for the benefit of LICENSEE; and
WHEREAS, LICENSEE wishes to obtain from LICENSOR exclusive, perpetual
rights to all of the PATENT RIGHTS and TECHNOLOGY RIGHTS, and LICENSOR has the
power and authority to make such a grant to LICENSEE.
NOW, THEREFORE, in consideration of the mutual covenants and premises
herein contained, the parties hereto agree as follows:
I.
EFFECTIVE DATE
1.1 This Agreement shall be effective as of October 1, 1996.
2
II.
DEFINITIONS
As used in this Agreement, the following terms shall have the meanings
indicated:
2.1 PATENT RIGHTS means U.S. Patent No. 5,424,286, and all related
applications or patents, including but not limited to all reissues,
reexaminations, and all foreign counterparts of any of the foregoing, as well as
all patents issued or issuing on patent applications filed for subject matter
included within TECHNOLOGY RIGHTS. A list of patent applications and patents
other than U.S. Patent No. 5,424,286 that are included within PATENT RIGHTS
shall be appended to this Agreement by amendment thereto upon the filing or
issuance, respectively, of any such applications or patents. Thereafter, such
list will be modified from time to time during the term of this Agreement to
reflect any further additions to PATENT RIGHTS. Failure to so append or modify
such list shall not affect any of LICENSEE'S rights under this Agreement.
2.2 TECHNOLOGY RIGHTS means (a) LICENSOR'S rights in all information or
discoveries useful in the development, manufacture, use or sale of any of the
subject matter included within PATENT RIGHTS, (b) LICENSOR'S rights in
inventions not within PATENT RIGHTS that have been conceived or actually or
constructively reduced to practice that relate to exendins or exendin analogs or
agonists or their development, manufacture, use or sale, and (c) LICENSOR'S
rights in inventions that are hereafter conceived or actually or constructively
reduced to practice at any time during the term of this Agreement and for a
period of one year thereafter, whether conceived or reduced to practice in
connection with the CONSULTING ARRANGEMENT, whether domestic or foreign, that
relate to exendins or exendin analogs or agonists or their development,
manufacture, use or sale. As used herein, "exendins or exendin analogs or
agonists" is meant to be defined broadly, and includes but is not limited to all
improvements of any of the subject matter included within PATENT RIGHTS, new or
different species of exendin, exendins altered by truncation, elongation,
deletion, chimerization with other molecules or portions thereof, or
substitution of one or more amino acids, and small molecule exendin agonists.
TECHNOLOGY RIGHTS do not include any subject matter that has been or is
discovered or invented by LICENSEE.
3
2.3 LICENSED TERRITORY means the world.
2.4 LICENSED PRODUCT shall mean any product or products SOLD by
LICENSEE, any product or products used in or the product portion of services
rendered by LICENSEE, or process licensed by LICENSEE, that is covered by one or
more subsisting and unexpired claims of a patent included within PATENT RIGHTS.
2.5 SALE or SOLD shall mean the transfer or disposition of a LICENSED
PRODUCT for value to a party other than LICENSEE or an AFFILIATE, or LICENSOR.
2.6 AFFILIATE shall mean any business entity more than 50% owned by
LICENSEE, any business entity which owns more than 50% of LICENSEE, or any
business entity that is more than 50% owned by a business entity that owns more
than 50% of LICENSEE.
2.7 NET SALES shall mean the gross revenues received by LICENSEE from
the SALE of LICENSED PRODUCTS less sales and/or use taxes actually paid, import
and/or export duties actually paid, outbound transportation prepaid or allowed,
insurance, agents' commissions, and amounts allowed or credited due to returns,
rebates, discounts and the like (not to exceed the original billing or invoice
amount).
2.8 CONSULTING ARRANGEMENT shall mean the consulting relationship
between LICENSOR and LICENSEE established pursuant to that certain Consulting
Agreement between the parties of even date herewith, and which is attached
hereto as Exhibit A.
III.
LICENSOR'S OBLIGATION TO DISCLOSE INFORMATION, DISCOVERIES AND INVENTIONS
WITHIN TECHNOLOGY RIGHTS
3.1 LICENSOR shall within thirty (30) days of the effective date of
this Agreement fully disclose and make available to LICENSEE all TECHNOLOGY
RIGHTS and all other information and discoveries useful in the development,
manufacture, use or sale of any of the subject matter included within PATENT
RIGHTS, and all inventions not within PATENT RIGHTS that have been conceived or
actually or constructively reduced to practice that relate to exendins or
exendin analogs or agonists or their development, manufacture, use or sale, as
set forth in Section 2.2. Thereafter, throughout the term of this Agreement and
for a period of one year thereafter, LICENSOR shall promptly and fully
4
disclose and make available to AMYLIN all TECHNOLOGY RIGHTS and all other such
information and discoveries, and all other such inventions that are conceived or
reduced to practice. As a part of such disclosures to be made by LICENSOR to
LICENSEE within thirty days of the effective date, and from time to time
thereafter as provided herein, LICENSOR shall transfer to LICENSEE copies of all
documents which describe or relate to subject matter required to be disclosed
hereunder, including but not limited to experimental data, experimental
procedures, journal entries, laboratory notebook pages, research reports, plans,
drawings, designs, specifications, formulae, draft manuscripts, and invention
disclosures.
IV.
WARRANTY; SUPERIOR RIGHTS
4.1 Except for the rights of the Government of the United States of
America as set forth hereinbelow in Section 4.2, LICENSOR represents and
warrants that he is the sole and exclusive owner of the entire right, title, and
interest in and to U.S. Patent No. 5,424,286, and that he has the sole right to
grant licenses thereunder, and that he has not granted, and will not grant,
licenses thereunder to any other entity that would restrict rights granted to
LICENSEE except as stated herein. LICENSOR represents and warrants that he will
use his best efforts to obtain sole and exclusive ownership of all other
inventions included within PATENT RIGHTS and TECHNOLOGY RIGHTS, and that he has
not granted, and will not grant, licenses thereunder to any other entity that
would restrict rights granted to LICENSEE except as required by the Government
of the United States of America.
4.2 LICENSEE understands that the subject matter described and claimed
in U.S. Patent No. 5,424,286 was developed under an employment and funding
agreement with the VA Medical Center, Bronx, New York, and that the Government
of the United States of America has retained a nonexclusive, irrevocable,
royalty-free license with power to grant licenses for all governmental purposes
and certain other rights relative thereto. This Agreement is explicitly made
subject to the Government's rights under such agreement and any applicable law
or regulation. To the extent that there is a conflict between any such
agreement, applicable law or regulation and this Agreement, the terms of
5
such Government agreement, applicable law or regulation shall prevail.
V.
LICENSE
5.1 LICENSOR hereby grants to LICENSEE an exclusive license under
PATENT RIGHTS and TECHNOLOGY RIGHTS to manufacture, have manufactured, import,
use, sell and offer to sell LICENSED PRODUCTS within LICENSED TERRITORY for any
and all uses in any and all fields.
5.2 LICENSEE shall have the exclusive right to grant sublicenses
consistent with this Agreement. Upon termination of this Agreement, no existing
sublicenses granted by LICENSEE shall be affected by such termination, and shall
remain in effect according to their terms.
5.3 All inventions related to the subject matter of this Agreement that
are made solely by employees or agents (other than LICENSOR) of LICENSEE shall
be the sole and exclusive property of LICENSEE.
VI.
PAYMENTS AND REPORTS
6.1 In consideration of rights granted by LICENSOR to LICENSEE under
this Agreement, LICENSEE agrees to pay LICENSOR the following:
(a) A nonrefundable fee of (*) upon execution of this Agreement;
(b) Milestone payments as follows:
(i) (*) upon the one-year anniversary of the effective date of
this Agreement, provided that this Agreement has not been terminated pursuant to
Section 6.2 hereof;
(ii) (*) upon the filing of an IND for a LICENSED PRODUCT with
the U.S. Food and Drug Administration; and
* Confidential Treatment Requested
6
(iii)(*) upon initiation of Phase III clinical trials of a
LICENSED PRODUCT in the United States;
(c) A running royalty of (*********) of NET SALES for LICENSED
PRODUCTS; provided, however, that (*************) in lieu of any obligation,
express or implied, to develop and commercialize any LICENSED PRODUCT within the
scope of this Agreement, in the event that LICENSEE in its sole discretion
determines to market one or more exendin or exendin analog products that do not
fall within the scope of one or more subsisting and unexpired claims of any
patent included within PATENT RIGHTS (an "ALTERNATIVE EXENDIN PRODUCT") instead
of a LICENSED PRODUCT, LICENSOR (***********************************************
********************************************************************************
********************************************************************************
********************************************************************************
********************************************************************************
**************************). LICENSEE will be responsible to
LICENSOR for the payment of any running royalty (*******************************
************) with respect to sales made by a sublicensee of said LICENSED
PRODUCT or said first ALTERNATIVE EXENDIN PRODUCT as though they were made by
LICENSEE. Only a single royalty shall be paid with respect to any LICENSED
PRODUCT regardless of the number of claims or the number of patents within
Patent Rights that may cover said LICENSED PRODUCT. No payments will be owed by
LICENSEE to LICENSOR by reason of the marketing of any ALTERNATIVE EXENDIN
PRODUCT other than the above-referenced first-marketed ALTERNATIVE EXENDIN
PRODUCT.
6.2 Concurrently herewith, and in further view of the lack of any
obligation of LICENSEE to develop and commercialize any LICENSED PRODUCT within
the scope of this Agreement, (*************
********************************************************************************
********************************************************************************
********************************************************************************
********************************************************************************
********************************************************************************
********************************************************************************
**.)
* Confidential Treatment Requested
7
6.3 During the Term of this Agreement and for one (1) year thereafter,
LICENSEE shall keep complete and accurate records of its and its sublicensees'
SALES and NET SALES of LICENSED PRODUCTS to enable the royalties payable
hereunder to be determined. Upon reasonable notice from LICENSOR and subject to
LICENSEE'S ordinary nondisclosure agreement, LICENSEE shall permit LICENSOR or
its representatives, at LICENSOR'S expense, to periodically (but not more than
once per every 12 months) examine its books, ledgers, and records during regular
business hours for the purpose of and to the extent necessary to verify any
report required under this Agreement. In the event that the amounts due to
LICENSOR are determined to have been underpaid by more than 10%, LICENSEE shall
pay the cost of such examination, and accrued interest calculated at 12% per
annum.
6.4 Commencing with the first commercial launch of any LICENSED
PRODUCT, within forty-five (45) days after March 31, June 30, September 30, and
December 31, LICENSEE shall deliver to LICENSOR a true and accurate report,
giving such particulars of the business conducted by LICENSEE and its
sublicensee, if any exist, during the preceding three (3) calendar months under
this Agreement as are pertinent to an account for payments hereunder. Such
report shall include at least (a) the quantities of LICENSED PRODUCT that it has
produced; (b) the total SALES, (c) the calculation of royalties thereon; and (d)
the total royalties so computed and due LICENSOR. Simultaneously with the
delivery of each such report, LICENSEE shall pay to LICENSOR the amount, if any,
due for the period of such report. If no payments are due, it shall be so
reported. It is understood and agreed that any milestone payment made to
LICENSOR hereunder will not in any manner be applied against or used to offset
any royalties or any per year payments due.
6.5 The parties understand and expressly agree that LICENSOR shall have
no obligation under this Agreement, express or implied, to undertake to develop
or, if developed, to commercialize any LICENSED PRODUCT or any ALTERNATIVE
EXENDIN PRODUCT. Nevertheless, upon the request of LICENSOR but not more often
than once per calendar year, LICENSEE shall deliver to LICENSOR a brief summary
report (subject to confidentiality) as to LICENSEE'S efforts and accomplishments
during the preceding year in developing or commercializing any LICENSED PRODUCT
or ALTERNATIVE EXENDIN PRODUCT.
8
6.6 LICENSEE shall reimburse LICENSOR (*) for all his out-of- pocket
expenses thus far incurred in filing, prosecuting, enforcing and maintaining
U.S. Patent No. 5,424,286 exclusively licensed hereunder, and shall pay all such
future expenses so long as and in such countries as its license remains
exclusive.
6.7 All amounts payable hereunder by LICENSEE shall be payable in
United States funds. Checks shall be made payable to Dr. John Eng.
VII.
TERM AND TERMINATION
7.1 The term of this Agreement shall be perpetual from the Effective
Date set forth hereinabove unless terminated pursuant to Section 7.2 below.
7.2 This Agreement will terminate:
(a) automatically if LICENSEE shall become bankrupt or insolvent
and/or if the business of LICENSEE shall be placed in hand of a receiver,
assignee, or trustee, whether by voluntary act of LICENSEE or otherwise;
(b) upon one hundred twenty (120) days written notice if any party
shall breach or default on any obligation under this Agreement; provided,
however, such party may avoid such termination if before the end of such period
such party notifies the other parties that such breach has been cured and states
the manner of such cure; or,
(c) upon one hundred twenty (120) days written notice by LICENSEE
to LICENSOR.
7.3 Upon termination of this Agreement for any cause, nothing herein
shall be construed to release either party of any obligation matured prior to
the effective date of such termination. LICENSEE may, after the effective date
of such termination, sell all LICENSED PRODUCTS that it may have on hand at the
date of termination, provided that it pays any earned royalty thereon that may
be due as provided in this Agreement.
* Confidential Treatment Requested
9
7.4 In the event that, by the filing of an action against LICENSOR or
otherwise, LICENSEE challenges the scope or validity of a patent or claim of a
patent within the PATENT RIGHTS, or challenges whether a product is a LICENSED
PRODUCT, such challenge shall not constitute cause for termination within the
meaning of Section 7.3 hereof, and LICENSOR shall not have the right to
terminate this Agreement as a result of any such challenge. It is understood and
agreed that this Agreement shall remain in full force and effect during and
throughout any such challenge, and shall remain in full force and effect whether
or not LICENSEE withholds from LICENSOR any payments or royalties that LICENSOR
believes may be owed.
VIII.
INFRINGEMENT BY THIRD PARTIES
8.1 LICENSEE shall have the exclusive right, but not the obligation, at
its sole expense, to initiate, prosecute, and control any action or suit, or
otherwise proceed, against others who in its judgment have committed or are
committing acts of infringement of any patent licensed hereunder. In the event
of the initiation by LICENSEE of any such action, suit, or proceeding for
infringement, which shall be within the sole discretion of LICENSEE, LICENSEE
shall be entitled to retain any recovery obtained as a result thereof. At
LICENSEE'S reasonable cost and expense, LICENSOR shall agree to be joined by as
a party with LICENSEE in any such action, suit, or other proceeding, and shall
give all reasonable assistance and authority to LICENSEE to control, file and
prosecute any such action, suit, or other proceeding as necessary.
8.2 In any such action, suit or other proceeding, LICENSOR shall
cooperate fully, and upon the request of LICENSEE, LICENSOR shall make available
to LICENSEE at reasonable times and under appropriate conditions all relevant
information, including records, papers, samples, specimens, and the like which
are in his possession or control.
IX.
ASSIGNMENT
9.1 Except in connection with the sale of LICENSEE'S business (by sale
of assets, sale of stock, merger, or otherwise)
10
this Agreement may not be assigned by LICENSEE without the prior written consent
of LICENSOR, which consent shall not be unreasonably withheld or delayed. This
Agreement may not be assigned by LICENSOR.
X.
PATENT MARKING
10.1 LICENSEE agrees to xxxx permanently and legibly all products and
documentation manufactured or sold by it under this Agreement with such patent
notice as may be permitted or required under Xxxxx 00, Xxxxxx Xxxxxx Code.
XI.
INDEMNIFICATION
11.1 LICENSEE shall hold harmless and indemnify LICENSOR from and
against those damages finally awarded a third party in respect of any claims,
demand, or causes of action whatsoever, including without limitation those
arising on account of any injury or death of persons or damage to property
caused by, or arising out of, or resulting from, the exercise or practice of the
license granted hereunder by LICENSEE or its directors, officers, employees,
agents or representatives, except to the extent caused by the technology or
intellectual property as licensed to LICENSEE under this Agreement, or by the
negligence, recklessness or willful misconduct of LICENSOR for which LICENSOR,
to the extent authorized under the constitution and laws of the State of
California, shall similarly hold harmless and indemnify LICENSEE, its directors,
officers, employees, agents or representatives.
11.2 In the event of any infringement or asserted infringement by
LICENSEE of any third party's intellectual property (collectively, "Alleged
Third Party Rights") by reason of the manufacture, import, use, sale or offer
for sale of any LICENSED PRODUCT, LICENSOR shall cooperate in good faith with
LICENSEE and on a mutual and reasonable basis:
(a) To negotiate and settle any dispute with any such third party
concerning the Alleged Third Party Rights, and otherwise resolve any such
infringement or alleged infringement and secure LICENSEE'S continued rights to
the Alleged Third Party Rights, if necessary or desirable; and
11
(b) To make a reasonable and equitable adjustment, if any, to the
royalties paid or otherwise due under this Agreement in respect of licenses or
other rights obtained by LICENSEE from third parties under such Alleged Third
Party Rights in order for LICENSEE to continue to exercise rights granted under
this Agreement.
11.3 In no event shall any party to this Agreement be liable for
indirect, consequential or similar damages, even if advised of the possibility
of such liability.
XII.
CONFIDENTIAL INFORMATION
12.1 LICENSOR and LICENSEE each agree that all information disclosed to
one by the other in connection with this Agreement shall be received in strict
confidence, used only for the purposes of this Agreement, and not disclosed by
the recipient party (except as required by law or court order), its agents or
employees without the prior written consent of the other party, unless such
information (a) was in the public domain at the time of disclosure, (b) later
became part of the public domain through no act or omission of the recipient
party, its employees, agents, successors or assigns, (c) was lawfully disclosed
to the recipient party by a third party having the right to disclose it, (d) was
already known by the recipient party at the time of disclosure, (e) was
independently developed or (f) is required to be submitted to a government
agency pursuant to any preexisting obligation.
12.2 Each party's obligation of confidence hereunder shall be fulfilled
by using at least the same degree of care with the other party's confidential
information as it uses to protect its own confidential information. This
obligation shall exist while this Agreement is in force and for a period of
three (3) years thereafter.
XIII.
PATENTS AND INVENTIONS; SECRECY; PUBLICATIONS
13.1 Expenses thus far incurred relating to U.S. Patent No. 5,424,286,
shall be reimbursed only in accordance with Section 6.6 above.
12
13.2 As provided by Section 3.1, LICENSOR will within thirty days of
the effective date, and promptly from time to time thereafter, fully disclose
and make available to LICENSEE information and discoveries and inventions
falling within TECHNOLOGY RIGHTS. If after consultation between LICENSEE and
LICENSOR, LICENSEE determines that a patent application should be filed,
LICENSEE will prepare and file an appropriate patent application or
applications, and LICENSEE will pay all costs of searching, preparing, filing,
prosecuting and maintaining same. LICENSEE shall provide LICENSOR with a copy of
such applications as well as copies of any documents received or filed during
prosecu tion thereof.
13.3 LICENSOR agrees to cooperate with LICENSEE to whatever extent is
necessary to procure, exploit, and enforce patent or other protection of any
rights to information and discoveries and inventions falling within TECHNOLOGY
RIGHTS, including the preparation and filing of patent applications as set forth
hereinabove in Section 13.2, which cooperation shall include but not be limited
to communicating to LICENSEE any facts known to LICENSOR concerning such
information and discoveries and inventions or testifying in any legal
proceedings, signing all documents for applications for patents, including all
divisional, continuation and continuation-in-part, reissue, and reexamination
applications, and counterpart foreign applications, making all rightful oaths,
and all other acts required to assist Licensor in obtaining, maintaining and
enforcing proper patent or other protection for such rights in all countries.
13.4 If LICENSEE notifies LICENSOR that it does not intend to pay the
costs of an application in accordance with Section 13.2 above, then LICENSOR may
file such application at its own expense and LICENSEE shall have no rights to
such invention.
13.5 LICENSOR agrees to maintain TECHNOLOGY RIGHTS in confidence and,
subject to Section 13.4 hereinabove and any obligations that he may have as a
result of his employment at the VA Medical Center, to use the same only pursuant
to and in the furtherance of this Agreement. While it is understood by the
parties that information gained and discoveries and inventions made by LICENSOR
that fall within TECHNOLOGY RIGHTS eventually may be disseminated to the
scientific community, LICENSOR agrees that he shall not disseminate such
information or discoveries or inventions if such dissemination would adversely
affect LICENSEE'S opportunities to obtain patent protection for any TECHNOLOGY
RIGHTS
13
in the United States or in any foreign countries, or to maintain any TECHNOLOGY
RIGHTS as trade secrets. Accordingly, LICENSOR further agrees that he shall not
submit information or discoveries or inventions within TECHNOLOGY RIGHTS for
publication or publish or present such information or discoveries or inventions
unless and until LICENSEE has received a copy of the proposed publication or
presentation, and has consented in writing to such publication or presentation.
XIV.
GENERAL
14.1 This Agreement and the Consulting Agreement of even date herewith
constitute the entire and only Agreements between the parties for PATENT RIGHTS
and TECHNOLOGY RIGHTS and all other prior negotiations, representations,
agreements and understandings are superseded hereby. No agreements altering or
supplementing the terms hereof may be made except by means of a written document
signed by the duly authorized representatives of the parties.
14.2 Any notice required by this Agreement shall be in writing and
shall be given by prepaid, first class, certified mail, return receipt
requested, addressed in the case of LICENSOR to:
Dr. John Eng
0000 Xxxxxxxxx Xxxxxx
Xxxxx, Xxx Xxxx 00000
or in the case of LICENSEE to:
Amylin Pharmaceuticals, Inc.
0000 Xxxxx Xxxxxx Xxxxx
Xxx Xxxxx, Xxxxxxxxxx 00000
ATTENTION: Xxxxxxxx X. Xxxx, Esq.
or such other address as may be given from time to time under the terms of this
notice provision.
14.3 LICENSEE shall comply with all applicable federal, state and local
laws and regulations in connection with its activities pursuant to this
Agreement.
14
14.4 This Agreement shall be construed and enforced in accordance with
the laws of the United States of America and of the State of California, except
its choice of law provisions.
14.5 Failure of a party to enforce a right under this Agreement shall
not act as a waiver of that right or the ability to later assert that right
relative to the particular situation involved.
14.6 Headings included herein are for convenience only and shall not be
used to construe this Agreement.
14.7 If any provision of this Agreement shall be found by a court to be
void, invalid or unenforceable, the same shall be reformed to comply with
applicable law or stricken if not so conformable, so as not to affect the
validity or enforceability of this Agreement.
14.8 This Agreement may be executed in any number of counterparts, each
of which shall be an original, but all of which together shall constitute one
instrument.
IN WITNESS WHEREOF, parties hereto have caused their duly authorized
representatives to execute this AGREEMENT.
DR. JOHN ENG AMYLIN PHARMACEUTICALS, INC.
/s/Xxxx Eng By:/s/Xxxxxxxx X. Xxxx
----------------------------------- -------------------------------
Xxxxxxxx X. Xxxx, Esq.
Vice President and General
Counsel
15
EXHIBIT A TO PATENT AND TECHNOLOGY AGREEMENT BETWEEN DR. JOHN ENG
AND AMYLIN PHARMACEUTICALS, INC.
C O N F I D E N T I A L
CONSULTING AGREEMENT
The following contains all the items of an at-will
consulting agreement between AMYLIN PHARMACEUTICALS, INC., a
Delaware corporation (the "Company") and Dr. John Eng
("Consultant").
The nature of the services Consultant will provide as a consultant to
the Company, the amount of time committed and Consultant's compensation are set
forth in Addendum 1 hereto. In rendering such services to the Company,
Consultant shall act as an independent contractor and not as an employee of the
Company and shall be free to dispose of such portion of Consultant's entire
time, energy and skill as Consultant has not agreed to devote to the Company;
provided, that Consultant will not during the term hereof provide to any person
or entity any services related to the subject matter or nature of the services
to be provided hereunder without the prior express written consent of the
Company. The Company or Consultant may terminate this Agreement at any time,
with or without cause.
Consultant understands that as part of the consideration for its
retention as a consultant by the Company, it has not brought and will not bring
with it to the Company or use in the performance of its responsibilities at the
Company any equipment, supplies, facility, or trade secret information of any
current or former employer which are not generally available to the public,
unless Consultant has obtained written authorization for their possession and
use. Consultant also understands that, in its retention as a consultant with the
Company, Consultant is not to breach any obligation of confidentiality that it
has to any third party, and Consultant agrees that it shall fulfill all such
obligations during its retention as consultant with the Company.
Consultant understand that the Company possesses and will continue to
possess information that has been created, discovered or developed by the
Company (or that has otherwise become known
16
to the Company) which has commercial value to the Company. This information
includes, but is not limited to, (a) information created, discovered, developed,
or made known by Consultant or to Consultant arising out of or in connection
with its retention as a consultant by the Company, and (b) information in which
property rights have been assigned or otherwise conveyed to the Company. All of
the aforementioned information is hereinafter called "Proprietary Information."
By way of illustration, but not limitation, Proprietary Information includes
trade secrets, processes, formulae, data and know-how, improvements, inventions,
techniques, marketing plans, strategies, forecasts and customer lists.
In consideration of its retention as a consultant to the Company, and
the compensation received by it from the Company from time to time, Consultant
hereby agrees as follows:
1. All Proprietary Information shall be the sole property of the
Company and its assigns, and the Company and its assigns shall be the sole owner
of all patents and other rights in connection therewith. Consultant hereby
assigns to the Company any rights it may have or acquire in all Proprietary
Information. At all times during its retention as a consultant by the Company
and at all times after termination of such retention as a consultant, Consultant
will keep in confidence and trust all Proprietary Information, and will not use
or disclose any Proprietary Information or anything relating to it without the
express written consent of the Company, except as may be necessary in the
ordinary course of performing its duties as a consultant of the Company.
2. Consultant agrees that during the period that it is retained as a
consultant to the Company, it will not, without the Company's express written
consent, engage in any employment or activity (whether as a consultant, advisor
or otherwise) in any business competitive with the Company.
3. All documents, data, records, apparatuses, equipment and other
physical property, whether or not pertaining to Proprietary Information,
furnished to Consultant by the Company or produced by Consultant or others in
connection with its retention as a consultant shall be and remain the sole
property of the Company and shall be returned promptly to the Company as and
when requested by the Company. Should the Company not so request, Consultant
shall return and deliver all such property
17
upon termination of its retention as a consultant by itself or by the Company
for any reason, and Consultant will not take with it any such property or any
reproduction of such property upon such termination.
4. Consultant agrees that for a period of one year following
termination of its retention as a consultant with the Company, it will not
solicit or in any manner encourage employees of the Company to leave its employ.
5. Consultant will promptly disclose to the Company, or any persons
designated by it, all improvements, inventions, discoveries, ideas, formulae,
processes, techniques, know-how and data, whether or not patentable, made or
conceived or reduced to practice or learned by Consultant, either alone or
jointly with others, during the period of its retention as a consultant which
(a) are within the scope of the consulting services to be provided by Consultant
under this Agreement and are related to or useful in the business of the
Company, or (b) result from tasks assigned Consultant by the Company, or (c) are
funded by the Company, or (d) result from use of premises owned, leased or
contracted for by the Company (all said improvements, inventions, discoveries,
ideas, formulae, processes, techniques, know-how and data shall be collectively
hereinafter called "Inventions"). Such disclosure shall continue for one year
after termination of this Agreement with respect to anything that would be an
Invention if made, conceived, reduced to practice or learned during the term
hereof.
6. Consultant agrees that all Inventions shall be the sole property of
the Company and its assigns, and the Company and its assigns shall be the sole
owner of all patents and other rights in connection therewith. Consultant hereby
assigns to the Company any rights it may have or acquire in all Inventions.
Consultant further agrees as to all Inventions to assist the Company in every
proper way (but at the Company's expense) to obtain and from time to time
enforce patents on the Inventions in any and all countries, and to that end
Consultant will execute all documents for use in applying for and obtaining such
patents thereon and enforcing same, as the Company may desire, together with any
assignments thereof to the Company or persons designated by it. Consultant's
obligation to assist the Company in obtaining and enforcing patents for the
Inventions in any and all countries shall continue beyond the termination of its
retention as a consultant, but the Company shall compensate Consultant at a
18
reasonable rate commensurate with rates paid by others for comparable services
after such termination for time actually spent by Consultant at the Company's
request on such assistance. In the event that the Company is unable for any
reason whatsoever to secure Consultant's signature to any lawful and necessary
document required to apply for or execute any patent application with respect to
an Invention(s) (including renewals, extensions, continuations, divisionals or
continuations in part thereof), Consultant hereby irrevocably designates and
appoints the Company and its duly authorized officers and agents as Consultant's
agents and attorneys-in-fact to act for and in Consultant's behalf and instead
of Consultant, to execute and file any such application and to do all other
lawfully permitted acts to further the prosecution and issuance of patents
thereon with the same legal force and effect as if executed by Consultant.
7. As a matter of record Consultant has attached hereto as Addendum 2 a
complete list of inventions or improvements relevant to the subject matter of
Consultant's retention as a consultant by the Company which have been made or
conceived or first reduced to practice by Consultant alone or jointly with
others prior to its engagement by the Company which Consultant desires to remove
from the operation of this Agreement; and Consultant covenants that such list is
complete.
8. Consultant represents that its performance of all the terms of this
Agreement and that its retention as a consultant by the Company does not and
will not breach any agreement to keep in confidence proprietary information
acquired by Consultant in confidence or in trust prior to its retention as a
consultant by the Company. Consultant has not entered into, and Consultant
agrees it will not enter into, any agreement either written or oral in conflict
herewith.
9. Consultant agrees that in addition to any other rights and remedies
available to the Company for any breach by Consultant of its obligations
hereunder, the Company shall be entitled to enforcement of Consultant's
obligations hereunder by court injunction.
10. If any provision of this Agreement shall be declared invalid,
illegal or unenforceable, such provision shall be severed and all remaining
provisions shall continue in full force and effect.
19
11. This Agreement shall be effective as of the first day of
Consultant's retention as a consultant by the Company.
12. The term Company, as used herein, shall include any subsidiary or
affiliate of AMYLIN PHARMACEUTICALS, INC.
13. This Agreement shall be binding upon Consultant, its heirs,
executors, assigns and administrators and shall inure to the benefit of the
Company, its successors and assigns.
14. This Agreement shall be governed by and construed in accordance
with the laws of the State of California (except its choice of law rules), and
the parties to this Agreement hereby submit to the jurisdiction and venue of the
California courts, both state and federal.
Dated: October 1, 1996
AGREED AND ACCEPTED: AGREED AND ACCEPTED:
DR. JOHN ENG AMYLIN PHARMACEUTICALS, INC.
/s/Xxxx Eng /s/Xxxxxxxx X. Xxxx
--------------------------- ------------------------------
Xxxxxxxx X. Xxxx, Esq.
Vice President and General
Counsel
20
ADDENDUM 1
Nature of Consulting: Consultant shall consult with and
provide services to the Company in
the following subject matter: the
chemical, biological, and
physiological characteristics of
exendins, exendin analogs and
agonists, and their use for the
treatment of diabetes. Any
activity of Consultant with respect
to such subject matter shall be
deemed to be in connection with its
consulting.
Amount: Consultant shall render such
services at such times and places
as the Company may reasonably
request.
Compensation: In consideration of the maintenance
by Consultant of the terms and
conditions of this Agreement,
including consultation with and
provision of services to the
Company in the aforementioned
subject matter, Consultant shall be
compensated by payment of (*) per
diem. In addition, Consultant
shall be reimbursed for reasonable
travel expenses incurred in
performance of his consulting
obligations, provided expenses
shall be documented by receipts.
* Confidential Treatment Requested
21
ADDENDUM 2
Amylin Pharmaceuticals, Inc.
0000 Xxxxx Xxxxxx Xxxxx
Xxxxx 000
Xxx Xxxxx, Xxxxxxxxxx 00000
Ladies and Gentlemen:
The following is a complete list of all inventions or improvements or
works of authorship relevant to the subject matter of consulting for AMYLIN
PHARMACEUTICALS, INC. (the "Company") that have been made or conceived or first
reduced to practice by me alone or jointly with others prior to consulting for
the Company, and which I desire to remove from the operation of the Consulting
Agreement between the Company and myself:
X No inventions or improvements. /s/ X.X. 10/2/96
-------- --------------------------
Initial and Date
See below.
-------- ------------------------
Initial and Date
Additional sheets attached.
-------- ------------------------
Initial and Date
22
EXHIBIT B TO PATENT AND TECHNOLOGY AGREEMENT BETWEEN DR. JOHN ENG AND AMYLIN
PHARMACEUTICALS, INC.
C O N F I D E N T I A L
NONSTATUTORY STOCK OPTION
Xxxx Eng, Optionee:
Amylin Pharmaceuticals, Inc. (the "Company"), pursuant to its 1991 Stock
Option Plan (the "Plan") has this day granted to you, the optionee named above,
an option to purchase shares of the common stock of the Company ("Common
Stock"). This option is not intended to qualify as an "incentive stock option"
within the meaning of Section 422 of the Internal Revenue Code of 1986, as
amended (the "Code").
The details of your option are as follows:
1. The total number of shares of Common Stock subject to this option is
(*). This option shall become exercisable("vest") as follows: (*) shares subject
to this option shall vest as of the date hereof, and an additional (*) shares
shall vest on each anniversary of the effective date of the date hereof for the
next four (4) years, so long as that certain Patent and Technology License
Agreement of even date herewith between the Company and Optionee (the "License
Agreement") has not been terminated pursuant to its terms. In the event of any
such termination, all further vesting under this option shall cease. In no event
shall this option be exercisable with respect to any shares that have not vested
pursuant to the terms of this option.
Notwithstanding the foregoing paragraphs, in the event of the
occurrence of a "Change in Control" (defined below) of the Company, then
immediately prior to the effective date of such Change in Control, the foregoing
vesting schedule shall be accelerated and this option shall become fully vested.
For purposes of the preceding paragraph, "Change in Control" is
* Confidential Treatment Requested
23
defined as any of the following: (i) any merger, acquisition, consolidation,
reorganization or other similar transaction pursuant to which the shareholders
of the Company immediately prior to such merger, consolidation, reorganization
or other similar transaction do not, immediately thereafter, own more than 50%
of the outstanding voting securities of the resulting entity or (ii) any
liquidation or dissolution of the Company or any sale of all or substantially
all of the assets of the Company.
2. (a) The exercise price of this option is $11.50 per share, being not
less than the fair market value of the Common Stock on the date of grant of this
option.
(b) Payment of the exercise price per share is due in full upon
exercise of all or any part of each installment which has accrued to you. You
may elect, to the extent permitted by applicable statutes and regulations, to
make payment of the exercise price under one of the following alternatives:
i. Payment of the exercise price per share in cash (including
check) at the time of exercise;
ii. Payment pursuant to a program developed under Regulation T
as promulgated by the Federal Reserve Board which results in the receipt of cash
(or check) by the Company prior to the issuance of Common Stock;
iii. Provided that at the time of exercise the Company's Common
Stock is publicly traded and quoted regularly in the Wall Street Journal,
payment by delivery of already-owned shares of Common Stock of the Company, held
for the period required to avoid a charge to the Company's reported earnings,
and owned free and clear of any liens, claims, encumbrances or security
interests, which Common Stock of the Company shall be valued at its fair market
value (determined in accordance with the Plan) on the date of exercise;
iv. Payment by a combination of the methods of payment
permitted by subparagraph 2(b)(i) through 2(b)(iii) above.
3. The minimum number of shares with respect to which this option may
be exercised at any one time is one hundred (100), except that this minimum
shall not apply with respect to the final exercise of this option. In no event
may this option be
24
exercised for any number of shares which would require the issuance of anything
other than whole shares.
4. Notwithstanding anything to the contrary contained herein, this
option may not be exercised unless the shares issuable upon exercise of this
option are then registered under the Act or , if such shares are not then so
registered, the Company has determined that such exercise and issuance would be
exempt from the registration requirements of the Act.
5. The term of this option commences on the date hereof and, unless
sooner terminated as set forth below or in the Plan, terminates on October 1,
2006 (which date shall be no more than ten (10) years from the date this option
is granted). In no event may this option be exercised on or after the date on
which it terminates. Notwithstanding the foregoing, this option shall terminate
prior to the expiration of its term as follows: three (3) months after the
effective date of termination of the License Agreement pursuant to its terms.
However, this option may be exercised following the effective date
of such a termination of the License Agreement only as to that number of shares
as to which it was exercisable on the effective date of such termination of the
License Agreement under the provisions of paragraph 1 of this option.
6. (a) This option may be exercised, to the extent specified above,
by delivering a notice of exercise (in a form designated by the Company)
together with the exercise price to the Secretary of the Company, or to such
other person as the Company may designate, during regular business hours,
together with such additional documents as the Company may then require pursuant
to subparagraph 6(f) of the plan.
(b) By exercising this option you agree that the Company may
require you to enter an arrangement providing for the payment by you to the
Company of any tax withholding obligation of the Company arising by reason of
the exercise of this option; the lapse of any substantial risk of forfeiture to
which the shares are subject at the time of exercise; or the disposition of
shares acquired upon such exercise.
7. This option is not transferable, except by will or by the laws of
descent and distribution, and is exercisable during your life only by you.
25
8. This option is not an employment contract and nothing in this
option shall be deemed to create in any way whatsoever any obligation on your
part to continue your services for the Company, or of the Company to continue to
retain your services for the Company.
9. This Stock Option has been granted to you in accordance with the
License Agreement of even date herewith, and for which this award of Stock
Options constitutes partial payment.
10. Any notices provided for in this option or the Plan shall be given
in writing and shall be deemed effectively given upon receipt or, in the case of
notices delivered by the Company to you, five (5) days after deposit in the
United States mail, postage prepaid, addressed to you at the address specified
below or at such other address as you hereafter designate by written notice to
the Company.
11. This option is subject to all the provisions of the Plan, a copy of
which is attached hereto and its provisions are hereby made a part of this
option, including without limitation the provisions of paragraph 5 of the Plan
relating to option provisions, and is further subject to all interpretations,
amendments, rules and regulations which may from time to time be promulgated and
adopted pursuant to the Plan. In the event of any conflict between the
provisions of this option and those of the Plan, the provisions of the Plan
shall control.
Dated the October 1, 1996
Very Truly Yours,
AMYLIN PHARMACEUTICALS, INC.
By /s/Xxxxxxxx X. Xxxx
----------------------------------
Duly authorized on behalf of
the Board of Directors
26
The undersigned:
Acknowledges receipt of the foregoing option and the attachments
referenced therein and understands that all rights and liabilities with respect
to this option are set forth in the option and the Plan; and
Acknowledges that the undersigned must execute the Agreement and return
it to the Vice President and General Counsel of the Company within fifteen (15)
days of the date the Agreement is received or else the grant of Stock Options
set forth in the Agreement shall become null and void; and
Acknowledges that as of the date of grant of this option, it sets forth
the entire understanding between the undersigned optionee and the Company and
its affiliates regarding the acquisition of stock in the Company and supersedes
all prior oral and written agreements on that subject with the exception of the
following agreements only:
NONE/s/X.X.
---------
(Initial)
/s/ Xxxx Eng
---------------------------
Optionee
Address: 0000 Xxxxxxxxx Xxx.
Xxxxx, Xxx Xxxx
00000