EX-10.47
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v52057a5exv10w47.htm
EX-10.47
Exhibit 10.47
PATENT ASSIGNMENT AGREEMENT
This agreement (the “Agreement”) is made effective the 23rd day of February 2009
(the “Effective Date”) between Omeros Corporation, a
Washington corporation having a principal
place of business at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇ ▇▇▇ (“Omeros”) and ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇, Ph.D., having a residence at ▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇. ▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇ (“▇▇.
▇▇▇▇▇▇▇▇▇▇▇”).
WHEREAS ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ owns all rights to certain technology invented by
▇▇. ▇▇▇▇▇▇▇▇▇▇▇ related to new uses of peroxisome proliferator-activated receptor gamma
(“PPARg”) agonists; and
WHEREAS Omeros has provided services for and funded the expenses of filing patent applications
for ▇▇. ▇▇▇▇▇▇▇▇▇▇▇’ PPARg technology; and
WHEREAS Omeros wishes to acquire all rights to ▇▇. ▇▇▇▇▇▇▇▇▇▇▇’ PPARg technology and
related patent applications and patents; and
WHEREAS ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ wishes to sell all rights to his PPARg technology to Omeros in
consideration for Omeros undertaking certain future milestone and royalty obligations;
NOW THEREFORE, in consideration for the mutual covenants and obligations set forth herein as
well as other good and valuable consideration, the parties hereby agree as follows:
| 1 | | Definitions |
| |
| 1.1 | | “Intellectual Property Rights” shall mean all inventions, ideas, discoveries, issued,
reissued or reexamined patents, pending and future patent applications, continuation,
continuation-in-part and divisional patent applications, utility models, inventor’s
certificates, trade secrets, know-how, copyrights and trademarks. |
| |
| 1.2 | | “Assigned Patents” shall mean US Provisional Patent Application No. 60/911,201 filed April
11, 2007, US Patent Application No. 12/101,943 filed April 11, 2008, International Patent
Application PCT/US08/60146 filed April 11, 2008, all national and regional counterparts of
such International Patent Application, all patent applications claiming priority from the
foregoing patent applications, a provisional US Patent Application to be filed based on a
disclosure provided to Omeros on November 11, 2008 by ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ entitled “Pioglitazone
and Opiates” and corresponding US Utility, International PCT and national phase applications
claiming priority therefrom, all other patent applications and patents included as of the
Effective Date or during the term of this Agreement in the Assigned IP, all future patents,
utility models and inventor’s certificates issuing from all of the above patent applications,
and all divisionals, continuations, continuation-in-parts, reissues and reexaminations of all
such patent applications and patents. |
| |
| 1.3 | | “Assigned IP” shall mean ▇▇. ▇▇▇▇▇▇▇▇▇▇▇’▇ entire right and title to and interest in all
Intellectual Property Rights owned or held by ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ related to PPARg
agonists,
compositions containing PPARg agonist(s) alone or in combination with other |
| | |
| † | | DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION |
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| | | therapeutic agents, and therapeutic methods and uses for PPARg agonists and
compositions containing PPARg agonist(s) alone or in combination with other
therapeutic agents, whether such compositions are administered alone or in conjunction with
other therapeutic agents or modalities, as of the Effective Date or invented, developed,
advanced or improved by ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ during the term of this Agreement, including,
without limitation, methods and compositions for the use of PPARg agonists,
singly or in combination and/or in conjunction with other therapeutic agents, for prevention
and treatment related to alcoholism and addictive disorders (e.g., addictions to alcohol,
nicotine, marijuana, opioid agonists, benzodiazepine, barbiturates, psychostimulants and
addictive or compulsive behaviors), and the use of PPARg agonists in
combination and/or in conjunction with the administration of narcotic analgesics (e.g., to
delay or prevent the development of tolerance and/or addiction to opioid agonists) or for
the treatment of other central nervous system conditions, diseases and disorders, and all
improvements or inventions related to the foregoing examples, the Assigned Patents and all
inventions disclosed and/or claimed in the Assigned Patents, and the future right to file
US, ex-US and international patent applications for any other inventions that are included
in the Assigned IP or that become included in the Assigned IP during the term of this
Agreement, in ▇▇. ▇▇▇▇▇▇▇▇▇▇▇’▇ name or in the name of Omeros, as well as all patents
issuing from such patent applications. |
| |
| 1.4 | | “Subject Products” shall mean all therapeutic compositions including one or more
PPARg agonists, alone or in combination with other therapeutic agents, that, if
offered for sale, sold, manufactured or used by a third party without license from Omeros
would infringe any valid, subsisting and enforceable claim(s) of any issued patent or any
patentable claim(s) of any pending patent application included within the Assigned Patents in
the country or countries in which such compositions are offered for sale, sold, manufactured
or used. |
| |
| 1.5 | | “Net Sales” shall refer, with respect to Subject Products, to (a) the gross total of the
monetary compensation invoiced and collected by Omeros for the initial sale or distribution of
the Subject Products, but excluding any amounts invoiced or collected by parties other than
Omeros for subsequent sales or distribution provided no part of such amounts invoiced or
collected by such parties is directly or indirectly paid to Omeros, less (b) the sum of the
following actual and customary deductions where applicable: cash, trade, or quantity
discounts; sales, use, tariff, import/export duties or other excise taxes, and any other
governmental taxes imposed on particular sales; transportation charges and allowances; sales
commissions to third parties (but excluding sales commissions to Omeros’ employees); wholesale
charge backs; distributor fees; Medicare/Medicaid rebates; customer rebates; refunds for
recalls; and allowances or credits to customers because of rejections or returns, provided
such deductions are documented. For purposes of this paragraph, the acquisition of Subject
Products from Omeros as part of an acquisition or other transfer or conveyance of all or a
part of the assets of Omeros’ business to which this Agreement pertains, or as part of a
merger, acquisition, reorganization or other change of control of Omeros, shall not be
considered a sale or
distribution of Omeros Therapeutics. |
| | |
| † | | DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION |
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| | | If a Subject Product is sold in combination with one or more additional therapeutic agents
as a “Combination Product”, Net Sales shall be the product obtained by multiplying Net Sales
of the Combination Product by the fraction A/(A+B) where A is the sales price of such
Subject Product when sold separately as a composition in which the Subject Product is the
only therapeutic agent and B is the total sales price of all additional therapeutic agents
in the Combination Product when sold separately in a pharmaceutical therapeutic product
including such additional therapeutic agents as the only therapeutic agents. If such
Subject Product and the other therapeutic agents are not sold in separate pharmaceutical
therapeutic products, the portion of the total cost of the Combination Product attributed to
such Subject Product shall be a fraction, the numerator of which shall be the cost of the
Subject Product and the denominator of which shall be the total cost of the Combination
Product, and the fraction shall be multiplied by the sales price of the Combination Product
to arrive at Net Sales. |
| |
| 1.6 | | “Transfer Fees” shall mean any monetary compensation received by Omeros in connection with
the licensing, assignment or other conveyance of rights in the Assigned IP to third parties
for the manufacture, sale or distribution of Subject Products; provided, however, that the
Transfer Fees shall not include Net Sales or any compensation from such third parties to
Omeros to support Omeros’ research and development efforts, to resolve patent infringement
disputes concerning the Assigned IP or other Intellectual Property Rights, to purchase equity
in Omeros, for licensing under any other Intellectual Property Rights not included in Assigned
IP, or for any other purpose other than as direct compensation for the rights conveyed to such
third parties in the Assigned IP. |
| |
| 2 | | Assignment of Rights |
| |
| 2.1 | | In consideration of the obligations undertaken by Omeros in this Agreement,
▇▇. ▇▇▇▇▇▇▇▇▇▇▇ hereby sells, assigns and transfers to Omeros
▇▇. ▇▇▇▇▇▇▇▇▇▇▇’▇ entire right and title to and interest in the
Assigned IP, including, without limitation, the Assigned Patents
and all other inventions, patent applications, patents and other
Intellectual Property Rights included therein, to be held and
enjoyed by Omeros entirely as the same would have been held and
enjoyed by ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ had this sale, assignment and
transfer not been made. ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ further agrees to
execute any memorandum of assignment or other assignment
documents as may be necessary or requested by Omeros to document
and perfect Omeros’ title in the Assigned IP including, without
limitation, the Assigned Patents and all other inventions,
patent applications, patents and other Intellectual Property
Rights included therein. |
| |
| 3 | | Royalty and Transfer Fee Share Payments |
| |
| 3.1 | | During the term of this Agreement Omeros shall pay ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ on a [†] basis a
royalty of [†] of the Net Sales of Subject Products collected by Omeros during each
respective [†] (the “Royalty”); provided, however, that all Royalty payments owed by
Omeros to ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ under this Section 3.1 shall be shared between and payable to
▇▇. ▇▇▇▇▇▇▇▇▇▇▇ and Università ▇▇ ▇▇▇▇▇▇▇▇ in accordance with Section 5 below, without
increase to the total Royalty owed by Omeros. |
| | |
| † | | DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION |
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| 3.2 | | During the term of this Agreement Omeros shall pay ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ on a [†] basis a
share (the “Transfer Fee Share”) of any Transfer Fees collected by Omeros during each
respective quarter; provided, however, that all Transfer Fee Share payments owed by Omeros to
▇▇. ▇▇▇▇▇▇▇▇▇▇▇ under this Section 3.2 shall be shared between and payable to ▇▇. ▇▇▇▇▇▇▇▇▇▇▇
and Università ▇▇ ▇▇▇▇▇▇▇▇ in accordance with Section 5 below, without increase to the total
Transfer Fee Share owed by Omeros. The Transfer Fee Share shall be (a) [†] of any
Transfer Fees collected by Omeros pursuant to an agreement between Omeros and a third party
that is executed prior to [†] for a Subject Product or (b) [†] of any
Transfer Fees collected by Omeros pursuant to an agreement between Omeros and a third party
that is executed on or after [†] for a Subject Product. |
| |
| 3.3 | | [†] Royalty and Transfer Fee Share payments shall be made in US Dollars by Omeros to
▇▇. ▇▇▇▇▇▇▇▇▇▇▇ within [†] following the end of each [†] for Net Sales
realized during such [†]. Payments shall be computed based on a conversion from any
other denomination to US Dollars for any amounts collected by Omeros during the relevant
[†] using the prevailing exchange rate in effect at the date and time that funds are
transferred from Omeros’ account to ▇▇. ▇▇▇▇▇▇▇▇▇▇▇’▇ account (in the case of payment by wire
transfer) or at the date and time of issuance of a check by Omeros (in the case of payment by
check). Each [†] payment shall be accompanied by a report specifying the source of
the Royalty payments and/or the Transfer Fee Share payments. |
| |
| 3.4 | | ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ shall have the right to employ a certified public accountant to review and
reconcile the directly relevant accounting records and procedures of Omeros as they relate to
the determination of Royalty and/or Transfer Fee Share payments, during reasonable business
hours and no more than [†] a year, and Omeros agrees to make available at Omeros’
place of business all such directly relevant accounting records for that purpose within
[†] of written request by ▇▇. ▇▇▇▇▇▇▇▇▇▇▇. The cost of such review shall be borne by
▇▇. ▇▇▇▇▇▇▇▇▇▇▇, unless it is found that Omeros under-paid a [†] Royalty or Transfer
Fee Share for any [†] by an amount of [†] or greater, in which case the cost
of such review shall be borne by Omeros. |
| |
| 3.5 | | Payments under this Agreement shall be made in full in the agreed amounts less any tax
withholdings that Omeros is required by law to withhold; provided that any other taxes that
may be due and payable as a result of Omeros’ payments to ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ under this Agreement
are solely ▇▇. ▇▇▇▇▇▇▇▇▇▇▇’▇ responsibility. |
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| 4 | | Milestone Payments |
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| 4.1 | | Omeros shall pay ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ the following one-time development milestone payments (each
a “Milestone Payment”) upon completion by Omeros of the associated development activity (each
a “Development Milestone”); provided, however, that all Milestone Payments owed by Omeros to
▇▇. ▇▇▇▇▇▇▇▇▇▇▇ under this Section 4.1 shall be shared between and payable to ▇▇. ▇▇▇▇▇▇▇▇▇▇▇
and Università ▇▇ ▇▇▇▇▇▇▇▇ in
accordance with Section 5 below, without increase to the total Milestone Payment owed by
Omeros. Omeros shall provide ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ written notice of the completion of each
Development Milestone by Omeros within [†] of completion of such Development |
| | |
| † | | DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION |
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| | | Milestone and shall pay to ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ the associated Milestone Payment within
[†] of completion of such Development Milestone. For purposes of clarity, upon
payment of a Milestone Payment in connection with the completion of the associated
Development Milestone for the development of a first Subject Product, no further Milestone
Payments for completion of the same associated Development Milestone for subsequent Subject
Products shall be payable. |
| | | |
| Development Milestone | | Milestone Payment |
| [†]
| | [†] |
| [†]
| | [†] |
| [†]
| | [†] |
| [†]
| | [†] |
| [†]
| | [†] |
| 5 | | University Payment Share |
| |
| 5.1 | | Omeros and ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ acknowledge that ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ invented certain of the
inventions included in the Assigned IP during the term of his employment with, and using the
facilities of, Università ▇▇ ▇▇▇▇▇▇▇▇. In accordance with an arrangement between ▇▇.
▇▇▇▇▇▇▇▇▇▇▇ and Università ▇▇ ▇▇▇▇▇▇▇▇, [†] of each Royalty payment, Transfer Fee
payment and Milestone Payment payable in accordance with Sections 3 and 4 of this Agreement
shall be paid to Università ▇▇ ▇▇▇▇▇▇▇▇ and the remaining [†] of each Royalty
payment, Transfer Fee payment and Milestone Payment payable in accordance with Sections 3and 4
of this Agreement shall be paid to ▇▇. ▇▇▇▇▇▇▇▇▇▇▇. |
| |
| 5.2 | | Payments to be made to the Università ▇▇ ▇▇▇▇▇▇▇▇ shall be provided to [†] by wire
transfer in accordance with the following instructions:
[†] ( ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ shall provide Omeros prompt written notice of any changes to
the foregoing payment instructions during the term of this Agreement. |
| |
| 5.3 | | Payments to be made to ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ shall be remitted by a wire transfer in accordance
with the following instructions: |
| |
| | | [†]. ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ shall provide
Omeros prompt written notice of any changes
to the foregoing payment instructions during
the term of this Agreement. |
| |
| 6 | | Right of Repurchase |
| |
| 6.1 | | If, at any point in time during the term of this Agreement in which Omeros retains ownership
of the Assigned IP or any part of the Assigned IP (the “Retained Assigned IP”), Omeros’
affirmatively determines, at Omeros’ sole discretion and as documented in
a written resolution by Omeros’ board of directors, to abandon all present and future
activities related to the Assigned IP and associated PPARg agonist programs,
including, without limitation, all patent, research, development, clinical studies,
partnering, licensing, transfer, regulatory, manufacturing, distribution and marketing
activities, |
| | |
| † | | DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION |
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| | | Omeros will promptly after the adoption of such resolution provide ▇▇.
▇▇▇▇▇▇▇▇▇▇▇ a written notice of such determination (the “Notice of Abandonment”) including a
description of the Retained Assigned IP and the US dollar amount that equates to
[†] of the sum of all of Omeros’ financial investment in the Assigned IP and
Omeros’ related PPARg agonist research and/or development program(s) (the “Repurchase
Price”). For purposes of clarity, the Repurchase Price shall include [†] of all of
Omeros’ reasonably documented direct and indirect financial investments and expenditures,
including both out-of-pocket costs and the monetized costs of internal resource utilization.
▇▇. ▇▇▇▇▇▇▇▇▇▇▇ shall have the first right to repurchase the Retained Assigned IP,
exercisable by (a) providing Omeros written notice of ▇▇. ▇▇▇▇▇▇▇▇▇▇▇’▇ intention to
repurchase the Retained Assigned IP within [†] of ▇▇. ▇▇▇▇▇▇▇▇▇▇▇’▇ receipt of the
Notice of Abandonment and (b) making payment in full to Omeros of the Repurchase Price
within [†] of ▇▇. ▇▇▇▇▇▇▇▇▇▇▇’▇ receipt of the Notice of Abandonment. |
| |
| 6.2 | | Upon timely receipt of a notice of intention from ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ and timely payment in full
of the Repurchase Price by ▇▇. ▇▇▇▇▇▇▇▇▇▇▇, Omeros shall sell, transfer and convey to ▇▇.
▇▇▇▇▇▇▇▇▇▇▇ all of Omeros’ rights and title to and interest in the Retained Assigned IP, and
thereafter Omeros shall be entitled to the receipt of, and ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ shall be obligated
to pay Royalty payments, Transfer Fee Share payments and Milestone Payments from ▇▇.
▇▇▇▇▇▇▇▇▇▇▇, on the same terms as provided for ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ in Sections 3.1, 3.2 and 4.1
above, in connection with Subject Products within the scope of the Retained Assigned IP. |
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| 6.3 | | If ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ does not timely provide either a notice of intention to repurchase and/or
timely payment in full of the Repurchase Price, Omeros shall be free to sell, transfer, assign
or otherwise dispose of the Retained Assigned IP and the provisions of Sections 6.1 and 6.2
shall be of no further force or effect. |
| |
| 7 | | Patent Prosecution, Maintenance and Enforcement |
| |
| 7.1 | | Omeros as sole owner of the Assigned IP shall have the sole right, at its sole discretion and
expense, to file, prosecute, maintain and enforce the patents and patent applications within
the Assigned IP. Any litigation or other enforcement action undertaken by Omeros to enforce
the Assigned IP against infringing third parties shall be undertaken at Omeros’ sole
discretion and risk, and any resulting award, judgment, settlement or damages collected shall
belong solely to Omeros without duty to account to or share with ▇▇. ▇▇▇▇▇▇▇▇▇▇▇.
▇▇.
▇▇▇▇▇▇▇▇▇▇▇ shall reasonably assist Omeros in the filing, prosecution, maintenance and
enforcement of patents and patent applications within the Assigned IP for no additional
compensation but at no cost to ▇▇. ▇▇▇▇▇▇▇▇▇▇▇.
▇▇. ▇▇▇▇▇▇▇▇▇▇▇ shall execute all instruments and render all such assistance as Omeros may
reasonably request in order for Omeros to file, prosecute, maintain and enforce any and all
applications and patents within the Assigned IP, in the name of Omeros or in the
name of ▇▇. ▇▇▇▇▇▇▇▇▇▇▇, all without charge to Omeros but at no expense to ▇▇. ▇▇▇▇▇▇▇▇▇▇▇. |
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| 7.2 | | ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ shall promptly provide written disclosure to Omeros of any inventions, |
| | |
| † | | DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION |
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| | | improvements, or applications included within the Assigned IP, made or arising before or
during the term of this Agreement. ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ shall promptly provide written disclosure
to Omeros of any and all potentially material prior art known to
▇▇. ▇▇▇▇▇▇▇▇▇▇▇ prior to the
Effective Date of this Agreement or
that becomes known to ▇▇.
▇▇▇▇▇▇▇▇▇▇▇ during the term of this
Agreement. |
| |
| 8 | | Publication |
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| 8.1 | | Omeros and ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ shall collaborate on any proposed scientific publications related
to the subject matter of the Assigned IP, including a discussion of scientifically appropriate
authorship and contents; provided, however, that Omeros acknowledges that only ▇▇. ▇▇▇▇▇▇▇▇▇▇▇
and his collaborators shall be entitled to be named as authors in connection with the
publication of the results of research studies completed prior to the Effective Date of this
Agreement. ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ shall furnish Omeros with advance copies of any publication or
written or oral public disclosure of the results of any research studies related to the
Assigned IP that is proposed by ▇▇. ▇▇▇▇▇▇▇▇▇▇▇, including, without limitation, disclosures in
papers or abstracts or at research seminars, lectures, professional meetings, or poster
sessions, at least [†] prior to the proposed date for submission for publication or
disclosure. During such [†], Omeros shall have the right to review and comment on
such publication for accuracy and protection of Omeros’ Confidential Information.
Additionally, if Omeros so requests in writing during the foregoing [†], the proposed
submission for publication or disclosure shall be delayed beyond the proposed date for
publication or disclosure (the “Delay Period”) until Omeros has completed the filing of any
patent applications directed to information contained in such proposed publication or
disclosure or based on Omeros’ reasonable determination that publication should be delayed due
to other business considerations; provided, however, that the Delay Period shall not exceed
[†] without ▇▇. ▇▇▇▇▇▇▇▇▇▇▇’▇ consent and that Omeros acknowledges that in any event
▇▇. ▇▇▇▇▇▇▇▇▇▇▇ shall not be prohibited beyond [†] from submitting for publication
the results of research studies of the effect of PPAR-g agonists on alcoholism completed prior
to the Effective Date of this Agreement. ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ agrees to consider in good faith any
delays longer that the Delay Period that may be reasonably requested by Omeros. Omeros shall
have the right, in its sole discretion, to use and disclose all data and results related to
the subject matter of the Assigned IP in connection with Omeros’ research, development,
commercialization and business activities, including, without limitation, in and for
submissions to any regulatory agencies and as may be required by law or regulation, and to
publish such data and results if ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ does not wish to publish such data and
results. |
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| 9 | | Representations, Warranties and Other Obligations of Omeros |
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| 9.1 | | Omeros represents and warrants that it has the requisite corporate power and authority and
the legal right to enter into this Agreement and to perform its obligations hereunder. |
| |
| 9.2 | | Prior to Omeros’ marketing of any Subject Product, or making any Subject Product available
for use in any human patients, Omeros will obtain and maintain reasonably adequate product
liability insurance. |
| | |
| † | | DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION |
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| 10 | | Representations, Warranties and Other Obligations of ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ |
| |
| 10.1 | | ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ represents and warrants that he is the sole owner of, and has the lawful and
unrestricted right to assign, all right and title to and interest in the Assigned Patents and
to the Assigned IP, including, without limitation, all inventions and patent applications
included in the Assigned IP as of the Effective Date, and that except for payments owed to
Università ▇▇ ▇▇▇▇▇▇▇▇ in accordance with Section 5 herein, the Assigned IP is not subject to
any encumbrances, liens, obligations, restrictions or licenses to third parties. |
| |
| 10.2 | | Except for any third party patents specific to PPARg compounds and compositions,
▇▇. ▇▇▇▇▇▇▇▇▇▇▇ represents and warrants that he is not aware of any third party rights that
would be infringed as a result of Omeros’ development and commercialization of Subject
Products. |
| |
| 10.3 | | ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ represents and warrants that he has provided to Omeros all material and
relevant data and results, in complete and accurate form including any contradictory data and
results, obtained from studies PPARg agonists conducted by ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ and his
collaborators prior to the Effective Date of this Agreement. |
| |
| 10.4 | | ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ covenants and agrees that, during the term of this Agreement, he shall not
undertake any obligations with third parties that would be inconsistent in any way with ▇▇.
▇▇▇▇▇▇▇▇▇▇▇’▇ transfer of the Assigned IP to Omeros or ▇▇. ▇▇▇▇▇▇▇▇▇▇▇’▇ obligations under
this Agreement. |
| |
| 10.5 | | THE WARRANTIES SET FORTH EXPRESSLY IN THIS AGREEMENT ARE THE SOLE
WARRANTIES MADE BY EITHER PARTY TO THE OTHER AND THERE ARE NO OTHER WARRANTIES,
REPRESENTATIONS OR GUARANTEES OF ANY KIND WHATSOEVER, EITHER EXPRESS OR IMPLIED, REGARDING THE
SUBJECT PRODUCTS OR OTHER PRODUCTS, INCLUDING WITHOUT LIMITATION ANY EXPRESS OR IMPLIED
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. |
| |
| 11 | | Confidentiality |
| |
| 11.1 | | ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ and Omeros hereby affirm and incorporate by reference the terms of the Mutual
Nondisclosure Agreement between the parties dated March 5, 2008 concerning the subject matter
of this Agreement, except that all Confidential Information (as that term is defined in the
Mutual Nondisclosure Agreement) disclosed by ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ related to the rights assigned to
Omeros under this Agreement shall be treated as Omeros’ Confidential Information under the
Mutual Nondisclosure Agreement, and Omeros shall be free to disclose and use such Confidential
Information, and to the extent that the terms
of the Mutual Nondisclosure Agreement may conflict with the terms of this Agreement, the terms of
this Agreement shall prevail. The parties further agree that the obligations of nondisclosure and
non-use set forth in such Mutual Nondisclosure Agreement shall subsist for a period of [†]
after the termination of this Agreement. |
| | |
| † | | DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION |
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| 11.2 | | The terms of this Agreement shall be maintained in strict confidence by both
▇▇. ▇▇▇▇▇▇▇▇▇▇▇ and Omeros, and may not be
disclosed by either party without the consent of
the other party, except Omeros may disclose the
terms of this Agreement to Omeros’ current and
potential employees, officers, directors,
consultants, shareholders, investors and
corporate partners and either party may disclose
the terms of this Agreement as may be required
under a court order or decree or as required to
comply with any governmental law, rule or
regulation. |
| |
| 12 | | Limitation of Liability |
| |
| 12.1 | | Neither party shall be liable to the other party for any incidental, indirect, consequential
or special damages arising under this Agreement, under any theory including torts, even if
such damages may have been foreseeable. |
| |
| 13 | | Term and Termination |
| |
| 13.1 | | Unless terminated earlier as set forth in Section 13.2 below, this Agreement shall subsist so
long as there is any valid, subsisting and enforceable claim of any issued patent included
within the Assigned IP or any patentable claim in any pending patent application included
within the Assigned IP. |
| |
| 13.2 | | Either party may terminate this Agreement at any time in the event that the other party
breaches any material obligation of this Agreement after the party seeking to terminate this Agreement first submits a written
notice of breach to the breaching party, which breach is not
substantially cured within ninety (90) days of the receipt of such notice,
followed by written notice of termination then being sent to the breaching party. |
| |
| 13.3 | | Termination of this Agreement shall not act to nullify or affect ▇▇. ▇▇▇▇▇▇▇▇▇▇▇’▇ assignment
of the Assigned IP to Omeros or the obligation of Omeros to pay to ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ any Royalty
payments, Transfer Fee Share payments and Milestone Payments that have accrued prior to the
time of termination. |
| |
| 13.4 | | The provisions of Sections 1 (Definitions) 2 (Assignment of Rights), 7 (Patent Prosecution,
Maintenance and Enforcement), 8 (Publication), 9 (Representations, Warranties and Other
Obligations of Omeros), 10 (Representations, Warranties and Other Obligations of ▇▇.
▇▇▇▇▇▇▇▇▇▇▇), 11 (Confidentiality), 12 (Limitation of Liability), 14 (Use of Names) and 15
(Miscellaneous) of this Agreement shall survive expiration or termination of this Agreement
for the period set forth therein or, if no period is set forth therein, then indefinitely.
Any payment obligations that accrued prior to the date of termination under Sections 3
(Royalty and Transfer Fee Share Payments), 4 (Milestone Payments) and 5 (University Payment
Share), but not any payment obligations that would
otherwise accrue after the date of termination, shall remain payable upon termination. |
| |
| 14 | | Use of Names |
| |
| 14.1 | | Nothing contained in this Agreement confers any right to either party to use in advertising,
publicity, or other promotional activities any name, trade name, trademark, |
| | |
| † | | DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION |
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| | | or other designation of the other party hereto, and neither party shall make such use without the prior
written consent of the other party; provided however Omeros may through written, oral or
electronic communication disclose the existence of this Agreement and the name of ▇▇.
▇▇▇▇▇▇▇▇▇▇▇ to Omeros’ current and potential employees, directors, consultants, shareholders,
investors and corporate partners, and as required to comply with any governmental law, rule or
regulation. |
| |
| 15 | | Miscellaneous |
| |
| 15.1 | | This Agreement including all appendices and exhibits attached hereto or incorporated by
reference herein constitutes the entire understanding of the parties hereto regarding the
subject matter of this Agreement, and no other representation, agreement, promise or
undertaking altering, modifying, taking from or adding to the terms of this Agreement shall
have any effect unless the same is reduced to writing and duly executed by the parties hereto.
In the event of any conflict between the main body of this Agreement and any attachments
thereto or documents incorporated by reference therein, the provisions of the main body of
this Agreement shall control. |
| |
| 15.2 | | Either party’s failure to enforce any provision of this Agreement will not be considered a
waiver of future enforcement of that or any other provision. |
| |
| 15.3 | | The laws of the state of Washington, United States, without regard to its conflict-of-laws
provisions, shall govern this Agreement, its interpretation and its enforcement, and any
disputes arising out of or related to this Agreement. |
| |
| 15.4 | | Any civil action prosecuted or instituted by either party as permitted herein above with
respect to any matters arising out of or related to this Agreement shall be brought in the
United States District Court located in Western District of Washington, United States (if
federal subject matter jurisdiction therein lies) or the King ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇ (if there is no subject matter jurisdiction in federal court), and
each party hereby consents to the exclusive jurisdiction and venue of such courts for such
purposes. |
| |
| 15.5 | | In the event that it is necessary for either party of this Agreement to take legal action to
enforce any of the terms, conditions or rights contained herein, or to defend any such action,
then the prevailing party in such action shall be entitled to recover from the other party all
reasonable attorneys fees, costs and expenses related to such legal action. |
| |
| 15.6 | | In the event that any portion of this Agreement is held invalid or unenforceable by a court
of law, that provision will be construed and reformed to permit enforcement of the provision
to the maximum extent permissible consistent with the parties’ original intent,
and if such construction is not possible, such provision shall be struck from this
Agreement, and the remainder of the Agreement shall remain in full force and effect as if
such provision had never been part of this Agreement. |
| |
| 15.7 | | For the purposes of this Agreement, the parties hereto are independent contractors, and
nothing in this Agreement shall be construed to place them in the relationship of partners, |
| | |
| † | | DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION |
-10-
| | | principal and agent, employer/employee or joint venturers. Except as provided expressly
herein, each party agrees that it shall have no authority to bind or obligate the other party,
nor shall any party hold itself out as having such authority. |
| |
| 15.8 | | Neither party will be liable for failure or delay in performing any obligation under this
Agreement, or will be considered in breach of this Agreement, if such failure or delay is due
to a natural disaster or any cause reasonably beyond such party’s control, provided that such
party resumes performance as soon as possible following the end of the event that caused such
delay or failure of performance. |
| |
| 15.9 | | ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ may not assign this Agreement or any obligation or right under this
Agreement, in whole or in part, without Omeros’ prior written consent, which consent will not
be unreasonably withheld. ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ consents to Omeros’ assignment of this Agreement in
whole or in part in connection with the merger, consolidation or transfer of all or
substantially all of that portion of Omeros’ assets to which this Agreement relates. Subject
to these restrictions, this Agreement will be binding upon and will inure to the benefit of
the parties’ permitted successors and assignees. |
| |
| 15.10 | | Any notice required or permitted to be given hereunder by either party shall be in writing
and shall be (a) delivered personally, (b) sent by registered mail, return receipt requested,
postage prepaid, (c) sent by an internationally recognized courier service guaranteeing
next-day delivery, charges prepaid, or (d) delivered by facsimile (with the original promptly
sent by any of the foregoing manners) to the addresses or facsimile numbers of the other party
set forth below, or at such other addresses as may from time to time be furnished by similar
notice by either party. The effective date of any notice hereunder shall be the date of
receipt by the receiving party. |
| | | | |
| | If to Omeros:
| | If to ▇▇. ▇▇▇▇▇▇▇▇▇▇▇: |
| |
| | |
| | Attn: Chief Executive Officer
| | ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇, Ph.D. |
| | Omeros Corporation
| | Vicolo San ▇▇▇▇▇▇▇▇▇ ▇. 25 |
| | 1420 Fifth Avenue, Suite 2600
| | Camerino, 62032 |
| | ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
| | Italy |
| | U.S.A.
| | |
| |
| | |
| | And a copy to: General Counsel
| | |
| | at the same address as above
| | |
| |
| | |
| | Fax: (▇▇▇) ▇▇▇.▇▇▇▇
| | E-mail: [†] |
| | Phone: (▇▇▇) ▇▇▇.▇▇▇▇
| | |
| 15.11 | | This Agreement may be executed in one or more counterparts, each of which will be considered
an original, and all of which will constitute the same instrument. |
| | |
| † | | DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION |
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IN WITNESS WHEREOF, Omeros and ▇▇. ▇▇▇▇▇▇▇▇▇▇▇ have each acknowledged and accepted this
Agreement by signing or causing it to have been signed by a duly authorized official.
| | | | | | | | | |
| OMEROS CORPORATION | | ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇, PH.D. | | |
|
| | | | | | | | |
| By:
| | /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
| | Signed:
| | /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇
| | |
|
| | | | | | | | |
| Name:
| | ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇, M.D.
| | Date:
| | February 24, 2009 | | |
|
| | | | | | | | |
| Title:
| | Chairman & CEO
| | Fax:
| | ▇▇▇▇ ▇▇▇▇▇▇ | | |
|
| | | | | | | | |
| Date:
| | February 20, 2009 | | | | | | |
|
| | | | | | | | |
| Fax:
| | ▇▇▇.▇▇▇.▇▇▇▇ | | | | | | |
The Università ▇▇ ▇▇▇▇▇▇▇▇, employer of ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇, through the undersigned official
thereof, confirms the accuracy of the representations in Section 10 above in as much as such
representations concern Università ▇▇ ▇▇▇▇▇▇▇▇, and hereby consents to all of the transactions
provided for in the above Agreement.
| | | | | |
| UNIVERSITà ▇▇ ▇▇▇▇▇▇▇▇ | | |
|
| | | | |
| By:
| | /s/ Mario Cocchioni
| | |
|
| | | | |
| Name:
| | Prof. Mario Cocchioni | | |
|
| | | | |
| Title:
| | Head of Department Medicina | | |
| Sperimentale e Sanità Pubblica | | |
|
| | | | |
| Date:
| | February 25, 2009 | | |
|
| | | | |
| Fax:
| | ▇▇▇▇ ▇▇▇▇▇▇ | | |
| | |
| † | | DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION |
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