Exhibit 10.36
TERMINATION AGREEMENT
TERMINATION AGREEMENT (this "Agreement"), dated November 11, 1998
among THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF NEW YORK, a New York
corporation ("Columbia" or "Columbia Innovation Enterprise"), VIMRX
PHARMACEUTICALS INC., a Delaware corporation (the "Company"), and VIMRX
GENOMICS, INC., a Delaware corporation d/b/a Ventiv BioGroup, Inc. ("VGI").
W I T N E S S E T H :
WHEREAS, Columbia and the Company entered into a Research Agreement,
dated March 7, 1997 and several other agreements related thereto; and
WHEREAS, the parties desire to terminate all such agreements and to
resolve all disputes between them.
NOW, THEREFORE, in consideration of the premises and the mutual covenants
herein contained, the parties hereby agree as follows:
1. Termination of Agreements. The following agreements and licenses, to
-------------------------
which Columbia and the Company, and/or VGI are parties, are hereby terminated
and of no further force or effect:
(a) Research Agreement dated March 7, 1997 ("Research Agreement") by
and between The Trustees of Columbia University in the City of New
York ("Columbia") and VGI;
(b) Subscription and Shareholders Agreement dated March 7, 1997 by and
among VIMRX, Columbia and VGI;
(c) Royalty Agreement (BCL-6) ("BCL-6 Royalty Agreement") dated October
31, 1997 by and between Columbia and VGI;
(d) Exclusive License Agreement (MUM-1) dated July 31, 1997 ("MUM-1
License") by and between Columbia and VGI;
(e) Blood Factor IXai Research Agreement dated March 28, 1997 ("Factor
IX Agreement") by and between Columbia and VIMRX;
(f) Exclusive License Agreement (Blood Factor IXai) dated March 28,
1997 ("Factor IX License") by and between Columbia and VIMRX; and
(g) License Agreement dated May 15, 1997 by and between Columbia and
VGI (with respect to office space).
The Company and VGI acknowledge and agree that, effective upon such
termination, neither of them has or will have any rights (i) to any of the
intellectual property licensed from
Columbia under any of the foregoing agreements, including, without limitation,
to any Patents, Information Research Information, Research Project Information,
Products or Materials as defined in the MUM-1 License, the Factor IX License and
the Research Agreement, or any improvements, modifications, and developments,
whether patentable or not, based on, related to, or derived from any of the
foregoing (collectively, the "Technology"). The Company and VGI have destroyed
or returned to Columbia any and all documents and materials containing,
embodying, or consisting of any Technology.
2. Sublicenses. The Company and VGI further represent that neither of
-----------
them has granted any sublicenses or other rights to any third party under any of
the agreements or licenses listed in Paragraph 1.
3. Factor IX and RAGE. The Company will deliver to Columbia its
------------------
analysis of Columbia's intellectual property holdings and strategies for both
Factor IX and RAGE (Receptor for Advanced Glycation End Products), together with
its recommendations for strengthening the patent portfolios for the Factor IX
and RAGE technologies. No representation or warranty is made as to the accuracy,
adequacy or completeness of any analysis or recommendations delivered pursuant
to this Agreement.
4. Releases.
---------
(a) Columbia Release of VIMRX and VGI. Columbia hereby releases and
discharges VIMRX, VGI, and their respective agents, employees, officers,
directors and shareholders and their respective heirs, executors,
administrators, successors and assigns (the "VIMRX Parties") from all actions,
causes of action, suits, debts, dues, sums of money, accounts, reckonings,
bonds, bills, specialties, covenants, contracts, controversies, agreements,
promises, variances, trespasses, damages, judgments, extents, executions, claims
and demands whatsoever, in law, admiralty or equity, which against the VIMRX
Parties, Columbia, its agents, employees, faculty, officers and trustees and
their respective heirs, executors, administrators, successors and assigns (the
"Columbia Parties") ever had, now or hereafter can, shall or may have for, upon,
or by reason of any matter, cause or thing whatsoever arising out of or related
to the agreements listed in paragraph 1 of this Agreement, other than the
obligations of the VIMRX Parties arising out of this Agreement.
(b) VIMRX and VGI Release of Columbia. VIMRX and VGI, jointly and
severally, hereby release and discharge the Columbia Parties from all actions,
causes of action, suits, debts, dues, sums of money, accounts, reckonings,
bonds, bills, specialties, covenants, contracts, controversies, agreements,
promises, variances, trespasses, damages, judgments, extents, executions, claims
and demands whatsoever, in law, admiralty or equity, which against the Columbia
Parties, the VIMRX Parties ever had, now or hereafter can, shall or may have
for, upon, or by reason of any matter, cause or thing whatsoever arising out of
or related to the agreements listed in paragraph 1 of this Agreement, other than
the obligations of the Columbia Parties arising out of this Agreement.
(c) BCL-6 Termination. Simultaneously with the execution and delivery of
this Agreement, the parties hereto and Xxxxx-Xxxxxxxxx Institute for Cancer
Research are entering into a Termination Agreement (BCL-6) pursuant to which the
parties are exchanging releases and
2
terminating their respective obligations under that certain Exclusive License
Agreement (BCL-6) dated October 31, 1997 ("BCL-6 License") by and among,
Columbia, Xxxxx-Xxxxxxxxx Institute for Cancer Research and VGI.
(d) VM301 Agreement. It is understood and agreed that the Clinical
Trial Agreement (VM301 Ointment) dated as of December __, 1997 (the "VM 301
Agreement") does not arise out of or relate to any of the agreements listed in
Paragraph 1 of this Agreement, and therefore the obligations of the parties
hereto under the VM 301 Agreement are not affected by the releases set forth in
Subparagraphs 4(a) or 4(b).
5. Return of VGI Shares. Simultaneously with the execution and delivery
--------------------
of this Agreement, Columbia shall transfer to VGI its one hundred shares of
common stock of VGI, represented by Certificate Number 3, together with a stock
power executed in blank as to such shares.
6. Payment. In consideration of the termination of the obligations of
-------
VGI and VIMRX under the agreements described in subparagraphs 1(a) and 1(e)
above, the Company shall pay Columbia $900,000 by check delivered simultaneously
with the execution and delivery of this Agreement. In addition, Columbia may
retain the 200,000 shares of VIMRX common stock delivered to Columbia pursuant
to the Research Agreement. The Company acknowledges that such shares are
eligible for sale under Rule 144 under the Securities Act of 1933, as amended
(the "Act"), and agrees to cooperate with Columbia, in order to permit the
transfer of such shares upon receipt by the Company of an opinion of counsel
with respect to the exemption of such transfer from registration under the Act
in form and substance reasonably satisfactory to the Company.
7. Notices. Any notice required or permitted to be given under this
-------
Agreement shall be in writing and shall be either personally delivered
(including by recognized overnight delivery services such as FedEx) or sent by
certified mail (return receipt requested), postage or other charges prepaid,
if to Columbia, to: Executive Director
Columbia Innovation Enterprise
Columbia University
000 Xxxx 000xx Xx., Mail Code 2206
000 Xxxxxxxxxxx Xxxxxxx
Xxx Xxxx, Xxx Xxxx 00000
copy to: General Counsel
Columbia University
000 Xxxx 000xx Xx., Mail Code 4308
000 Xxx Xxxxxxxx Xxxxxxx
Xxx Xxxx, Xxx Xxxx 00000
if to the Company, to: VIMRX Pharmaceuticals Inc.
0000 Xxxxxxxxxxx Xxxx
Xxxxxxxxxx, Xxxxxxxx 00000
Attn: Xxxxxxx X. Xxxxxxx, President
3
copy to: Xxxxxxx Xxxxxx & Green, P.C.
000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attn: Xxxxxx X. Xxxxxxxxxx, Esq.
or to such other address as a party may specify by notice given in accordance
with the terms hereof. All notices shall be deemed given upon receipt. is
provision.
8. Entire Agreement; Amendment. This Agreement sets forth the entire
---------------------------
agreement between the parties relating to the subject matter hereof and
supersedes all previous agreements, written or oral. This Agreement may be
amended only by an instrument in writing duly executed on behalf of the parties.
9. Governing Law. This Agreement shall be governed by New York law
-------------
applicable to agreements made and to be performed in New York. Each party hereby
submits to the jurisdiction of the state and federal courts sitting in the
County of New York, and agrees that service of process may be effected by
written notice given in accordance with the terms hereof.
10. Waiver of Breach. The waiver by a party of a breach or violation by
----------------
the other party of any provision of this Agreement shall not operate or be
construed as a waiver of any subsequent breach or violation by any party of the
same or any other provision of this Agreement. No such waiver shall be effective
unless in writing signed by the party claimed to have made the waiver.
11. Headings. The headings of the sections and paragraphs of this
--------
Agreement are inserted for convenience of reference only and shall not
constitute a part hereof.
12. Multiple Counterparts. This Agreement may be signed in any number
---------------------
of counterparts which taken together shall constitute one and the same
instrument.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be executed by their respective duly authorized representatives as of the day
and year first written above.
THE TRUSTEES OF COLUMBIA UNIVERSITY
IN THE CITY OF NEW YORK
By: /s/ Xxxx X. Xxxxxxxxx
-------------------------
Xxxx X. Xxxxxxxxx,
Executive Director, Columbia
Innovation Enterprise
4
VIMRX PHARMACEUTICALS INC.
By: Xxxxxxx X. Xxxxxxx
------------------------------
Xxxxxxx X. Xxxxxxx
President
VIMRX GENOMICS, INC.
By: /s/ Xxxxxxx X. Xxxxxxx
------------------------------
Xxxxxxx X. Xxxxxxx
President
5
