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[CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTIONS OF THIS DOCUMENT
HAVE BEEN REDACTED AND HAVE BEEN SEPARATELY FILED WITH THE COMMISSION]
EXHIBIT 10.1
EISAI/PARAVAX
COLLABORATIVE
AGREEMENT
JANUARY 1993
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AGREEMENT
This Agreement is made and entered into on this 25 day of January 1993 by and
between Paravax, Inc., a corporation duly organized and existing under the laws
of the Sate of California, U.S.A., having its principal place of business at
0000 Xxxxxxxx Xxxx. Xxxxx 000, Xxxx Xxxxxxx, Xxxxxxxx 00000, U.S.A ("Paravax")
and Eisai Co., Ltd., a corporation duly organized and existing under the laws
of Japan, having its principal place of business at 0-0-00, Xxxxxxxxxx, Xxxxxx-
xx, Xxxxx, 000-00 Xxxxx ("Eisai").
WITNESSETH:
WHEREAS, Paravax is in the business of the research and development of
certain potential vaccines for animal use and has the full right to develop,
manufacture, use and sell the potential vaccines described in Exhibits A and C
attached hereto (the "Products");
WHEREAS, Eisai is willing to provide certain funding to assist Paravax
in the research and development of the Products; and;
WHEREAS, in exchange for Eisai's provision of funding, Paravax is
willing to grant to Eisai the exclusive right to distribute, sell and market
the Products in Japan and Southeast Asia including the People's Republic of
China which are more fully described in Exhibit B attached hereto (the
"Territory").
NOW, THEREFORE, in consideration of the mutual covenants and agreements
contained herein, Paravax and Eisai hereby agree as follows:
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ARTICLE 1. GRANT OF RIGHTS
Paravax hereby grants to Eisai the exclusive rights to distribute, sell
and market the Products in the Territory during the term of this Agreement.
Eisai shall have the right to distribute, sell and market the Products through
its subsidiary corporations or through corporations over which it has common
control with another corporation. Eisai shall also have the right to appoint a
third party as a distributor in connection with the distribution, sale and
marketing of the Products in the Territory.
ARTICLE 2. CONSIDERATION
As consideration for the rights granted by Paravax to Eisai hereunder,
Eisai shall pay a license fee of [
] to Paravax within 30 days from the date of execution of this
Agreement.
ARTICLE 3. RESEARCH SUPPORT PAYMENT
Eisai shall provide annual funds to support research and development to
Paravax in two equal payments per year (the "Research Support Payments") for
each of the Products. The first of the Research Support Payments for each of
the Products shall be equal to one-half (1/2) of the annual amount indicated in
Exhibit D attached hereto and shall be made within thirty (30) days from the
date of this Agreement. The second of the Research Support Payments for each
of the Products shall also be equal to one-half (1/2) of the annual amount
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indicated in Exhibit D attached hereto and shall be paid when the milestones,
as set forth on Exhibit E attached hereto, have been met with respect to that
specific Product.
The first of the Research Support Payments for each of the Products to
be made in the second and third years of this Agreement shall be equal to one-
half (1/2) of the annual amount indicated in Exhibit D attached hereto and
shall be paid within thirty (30) days from the first day of such year. The
second of the Research Support Payments for each of the Products to be made in
the second and third years of this Agreement shall also be equal to one-half
(1/2) of the annual amount indicated in Exhibit D attached hereto and shall be
paid when the respective milestone for such payment, as set forth on Exhibit E
attached hereto, has been met with respect to that specific Product.
ARTICLE 4. TERMINATION OF RESEARCH SUPPORT PAYMENTS
Eisai shall have the option to discontinue the Research Support Payments
for any and/or all the Product(s) by giving ninety (90) days prior written
notice to Paravax. In the event that Eisai decides to discontinue Research
Support Payments for such Product(s), Eisai shall lose all rights granted by
Paravax to Eisai hereunder with respect to the distribution, sale and marketing
of such product(s) in the Territory.
ARTICLE 5. RESEARCH AND DEVELOPMENT
In the event that Paravax decides to discontinue research and
development with respect to any Product as to which Eisai is willing to
continue Research Support Payments or has paid Research Support Payments:
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i) Eisai shall have the right to discontinue Research Support Payments
immediately;
ii) Paravax shall provide Eisai with all data, reports, materials and
any other technical information that are in the possession of Paravax at the
time of such discontinuation;
iii) Eisai shall have the right to use all data, reports, materials and
any other technical information provided by Paravax hereunder in order to
continue research and development of such Product on its own and shall also
have the exclusive rights (with the right to sublicense) to manufacture,
distribute, sell and market any resulting Product in the Territory, provided,
however, that Eisai shall pay a reasonable royalty to Paravax with respect to
its sales of such resulting Product in the Territory, the amount of which
royalty shall take into consideration the value of the technical information
and materials provided by Paravax and whether any patents owned by Paravax are
used in the manufacture, distribution, sale or marketing of the Product;
iv) Eisai shall give Paravax the right of first refusal to obtain an
exclusive right to distribute, sell and market such resulting Product anywhere
outside of the Territory, except for European countries where Paravax shall be
granted the non-exclusive right to distribute, sell and market such resulting
Product. The terms of such exclusive right and non-exclusive right shall take
into consideration the value of the technical information and materials
provided by Paravax and whether any patents owned by Paravax are used in the
manufacture, distribution, sale of marketing of the Product:
v) When Paravax is interested in obtaining the exclusive right and/or
the non-exclusive right set forth in the preceding paragraph, Paravax and Eisai
shall in good faith discuss and determine the terms and conditions of a
distribution agreement to be executed by the parties hereto, separately from
this
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Agreement. Paravax shall pay a reasonable purchase price to Eisai with respect
to Paravax's purchase of such resulting Product from Eisai, in accordance with
the provisions of the distribution agreement. In the event that it is not
commercially feasible for Paravax to distribute, sell and market any Products
outside the Territory at the price charged to Paravax by Eisai for such
Products, or that Eisai materially breaches its obligation pursuant to the
terms and conditions of the distribution agreement to supply Paravax's
requirements for Products for distribution and sale outside the Territory,
Eisai shall grant to Paravax the rights (with the rights to sublicense) to
manufacture, distribute, sell and market such Products outside the Territory,
provided, however, that Paravax shall pay a reasonable royalty to Eisai with
respect to Paravax's sale of such Products outside the Territory.
ARTICLE 6. SUPPLY OF PRODUCTS
Paravax shall manufacture and provide Eisai with all Products to be sold
by Eisai pursuant to this Agreement, other than those developed by Eisai
pursuant to Article 5 hereof. The price charged to Eisai by Paravax for such
Products shall be reasonably agreed to by Paravax and Eisai and shall provide
for a reasonable profit to Paravax as part of such price. A Supply Agreement
for Products will be made and executed by the parties hereto, separately from
this Agreement. The Supply Agreement will provide for reasonable forecasts,
lead times and minimum order quantities and will require Paravax to use its
best efforts to fill all such orders by Eisai, but will allow for reasonable
and understandable delays.
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ARTICLE 7. GRANT OF MANUFACTURING RIGHTS
Notwithstanding the provisions of Article 6 above, in the event that it
is not commercially feasible for Eisai to distribute, sell and market any
Product in the Territory at the price charged to Eisai by Paravax for such
Product, or that Paravax materially breaches its obligations pursuant to terms
of the Supply Agreement to supply Eisai's requirements for Products for
distribution and sale in the Territory, Paravax shall grant to Eisai the
exclusive rights (with the right to sublicense) to manufacture the Product for
distribution, sale and marketing in the Territory to the extent permitted by
Article 1 of this Agreement.
ARTICLE 8. DEVELOPMENT PLAN
Paravax shall, as a condition precedent hereto, prior to execution of
this Agreement, deliver a development plan for the Products to Eisai. This
development plan shall set forth Paravax's anticipated development program for
each of the Products, together with significant anticipated milestones and
corresponding projection dates for the completion of such milestones.
ARTICLE 9. PATENT AND REPORTS, ETC.
9.1 Paravax shall represent and warrant to Eisai that Paravax has full right
and authority to fulfill its obligations pursuant to this Agreement, and
Paravax shall immediately disclose to Eisai any pending patent applications and
registered patents for the Products in the Territory and shall cooperate with
Eisai with respect to the filing of additional patent applications for the
Products in the Territory.
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9.2 Promptly after registration and issuance of the patents for the Products
in the Territory, Paravax and Eisai, shall register, at Eisai's sole
discretion, any and all exclusive licenses for the patent (in Japan, such
exclusive license for the patent shall be registered as "senyo-jisshi-xxx" as
provided for in Articles 77 and 98 of the Japanese Patent Law and corresponding
provisions in other countries and jurisdictions in the Territory) granted to
Eisai hereunder under the patent law in the Territory. Upon Eisai's request,
Paravax shall provide Eisai with necessary documents and/or information in
cooperation with the registration of such exclusive license for the patent.
9.3 In the event that additional patents are filed as a result of scientific
collaboration between Paravax and Eisai, such patents shall be jointly owned
by both Paravax and Eisai and all necessary filings shall be made to reflect
such joint ownership with the applicable patent authorities. Paravax and Eisai
shall enter into a separate written agreement reflecting the nature and scope
of any such scientific collaboration prior to its commencements. Any and all
expenses necessary for obtaining and maintaining such patents jointly owned by
both Paravax and Eisai shall be equally borne by Paravax and Eisai anywhere.
9.4 Paravax shall cooperate with Eisai to allow Eisai to conduct reasonable
testing of the antigen materials to be used for the Products.
9.5 Paravax shall provide quarterly written reports to Eisai on its research
efforts with respect to the Products during the time that Eisai is providing
Research Support Payments with respect to such Products. Paravax shall also
provide written reports to Eisai on its research efforts with respect to the
Products during the term of this Agreement at any time upon written request
from Eisai.
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9.6 Eisai's scientific personnel shall be freely allowed to visit Paravax's
facilities in order to evaluate the research efforts by Paravax pursuant to
this Agreement.
ARTICLE 10. TRADEMARK
Eisai shall distribute, sell and market the Products in the Territory
using its own trademarks and trade names. Eisai shall be responsible for
obtaining and maintaining all regulatory approval necessary for the lawful
distribution, sale and marketing of the Products in the Territory.
ARTICLE 11. TERM
The term of this Agreement shall be fifteen (15) years from the date of
execution of this Agreement, unless this Agreement is terminated sooner in
accordance with the provisions set forth herein, provided, however, that this
period may be extended by mutual agreement between both parties.
ARTICLE 12. TERMINATION
12.1 If this Agreement has not otherwise been extended or terminated, not
later than twelve months prior to end of the fifteen (15) year term provided
for in Article 11 hereof, Eisai and Paravax shall meet and attempt in good
faith to negotiate an extension of this Agreement upon terms which are
commercially reasonable as of such date.
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12.2 Either party may terminate this Agreement upon written notice to the
other party if the other party has materially failed to perform or comply with
any of its material obligations set forth herein and if such failure has
continued for more than sixty (60) days after the receipt of written notice
requesting performance of compliance thereof. Although either party may
terminate this Agreement in the event that the other party fails to perform or
comply with any of its obligations set forth herein, neither party shall be
responsible to the other party for any lost profits, replacement costs or
similar damages as a result of such failure to perform or comply with any of
its obligations set forth herein, provided, however, that in the event that the
other party has materially failed to perform or comply with any of its material
obligations set forth herein, the other party in default shall be responsible
to the non-defaulting party for any expenses, costs, lost profits, replacement
costs and damages (including reasonable attorney's fees) incurred by the non-
defaulting party as a result of such failure.
12.3 Eisai may terminate this Agreement upon written notice to Paravax (i) if
Xx. Xxxxxx X. Xxxxxx has retired or resigned from Paravax or has stopped his
involvement in the research and development of the Products, such that, in
Eisai's judgment, it will be difficult to continue the research and development
of the Products, or (ii) if a key researcher has retired or resigned from
Paravax or has stopped his/her involvement in the research and development of
the Products, such that, in Eisai's judgment, it will be difficult to continue
the research and development of the Products.
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12.4 Either party may terminate this Agreement upon sending a written notice
to the other party when (i) the other party has transferred its business or
material assets to a third party, (ii) the rights and obligations under this
Agreement, in whole or in part, have been assigned by the other party to any
third party without the prior written consent of the party or (iii) the other
party is deemed to have financial difficulties which would necessitate, among
others, the appointment of a receiver, the postponement of loan payments,
application for bankruptcy, insolvency or similar proceedings.
12.5 In the event that either party is acquired by a third party, including
but not limited to, by merger, consolidation, sale of assets, or by such
issuance or transfer of a sufficient number of shares of its capital stock that
the shareholders of such party immediately prior to the transaction hold less
than fifty percent (50%) of the number of share outstanding immediately after
such transaction, the other party may, at its sole option, either (i) terminate
this Agreement upon thirty (30) days written notice to such party, or (ii)
continue the performance of this Agreement thereafter, provided that the
acquiring party assign all rights and obligations of this Agreement to the
acquiring party and the terms and conditions thereof shall be reviewed by the
other party to determine if they would be acceptable to the other party.
12.6 In the event that this Agreement is terminated by Eisai pursuant to
Section 12.2, 12.3(i), and 12.4 hereof as a result of a breach of this
Agreement by Paravax, Paravax shall immediately provide Eisai with all data,
reports, materials and any other technical information that are in the
possession of Paravax at the time of the termination of this Agreement with
respect to the
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manufacture of the Products, and without paying any compensation to Paravax,
Eisai shall have the right to use all such data, reports, materials, patents
(if any) and any other technical information provided by Paravax hereunder in
order to continue research and development of the Products on its own and shall
have the perpetual rights (with the rights to sublicense) to manufacture such
Products for distribution, sale and marketing in the Territory to the extent
permitted by Article I of its Agreement, provided, however, that, in case of
termination of this Agreement by Eisai pursuant to Section 12.3(i), Paravax
also has a right to use the data, reports, materials, patents (if any) and any
other technical information provided by Paravax to Eisai hereunder. It is
expressly agreed that a termination of this Agreement pursuant to the
provisions of Sections 12.3, 12.4 (excluding Sections 12.4 (ii) and (iii)) or
12.5 hereof shall not be deemed to be a termination as a result of a material
breach of this Agreement.
ARTICLE 13. INTELLECTUAL PROPERTY
13.1 Paravax will defend, at its own expense, any claim, suit or proceeding
brought against Eisai to the extent it is based upon a claim that any Product
sold to Eisai pursuant to this Agreement infringes upon any patent, copyright
or trade secret of any third party in the Territory. Eisai agrees that it
shall promptly notify Paravax in writing of any such claim or action and give
Paravax full information and assistance in connection therewith. Paravax shall
have the right to control the defense of any such claim or action and the right
to settle or compromise any such claim or action, provided, however, that
Paravax shall not make any settlement or compromise which would prevent Eisai
from manufacturing, distributing, selling, and marketing the Product(s) under
this Agreement. If Eisai complies with the provisions hereof, Paravax will pay
all damages, costs and expenses finally awarded to third parties against Eisai
in such action. If such Product does infringe, or in Paravax's opinion
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might be held to infringe, as set forth above, Paravax may, at its option,
replace or modify such Product so as to avoid infringement, or procure the
right for Eisai to continue the distribution, sale and marketing of such
Product in the Territory. If neither of such alternatives is commercially
reasonable, Eisai may terminate this Agreement upon written notice to Paravax.
13.2 Paravax will have no liability for any claim of infringement arising as
a result of Eisai's use of the products in combination with any items not
supplied by Paravax, or any modification of the products by Eisai or third
parties.
13.3 The foregoing states the entire liability of Paravax to Eisai or any
purchaser of Products concerning infringement of intellectual property rights,
including but not limited to, patent, copyright and trade secret rights.
ARTICLE 14. CONFIDENTIALITY
During the term of this Agreement and for a period of two (2) years
after the expiration of the term of this Agreement or for a period of five (5)
years after early termination of this Agreement for any cause whatsoever,
neither party shall disclose any information acquired during the performance of
this Agreement related to plans, drawings, specifications, business goals,
customers, personnel, products, manufacturing processes, work procedures or
servicing to any third party.
The confidentiality provision set forth above shall not be applicable in
the following circumstances:
a. when the information concerned becomes public knowledge or
publicly available without infringing the terms of this
Agreement;
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b. when the party which received the information concerned had
already been, in possession of such information without any
obligation to keep it confidential, on the date of such receipt;
c. when either party received the information concerned from a third
party or developed such information independent from the
information received from the other party;
d. when the other party has given its consent in writing for the
information concerned to be revealed;
e. when it is inevitable for the information concerned to be
revealed through distribution of the Products or through
documents related to the Products;
f. when the information concerned is revealed in accordance with a
legal order from government authorities;
In this case, however, the party receiving the information shall
in good faith use the information or documents received only for
the objectives of the order concerned; or
g. when the information concerned is required by law or when it is
required in connection with government investigations, procedures
or regulations.
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ARTICLE 15. LIABILITY
15.1 Paravax agrees to indemnify Eisai against any damages awarded to any
third party against Eisai and/or its distributor for any effect of defective
Product or any adverse side effects resulting to such third party as a result
of the use of the Products in the manner specified by Paravax or for any
failure of warning to the extent that the warnings specified by Paravax have
been provided.
15.2 Eisai agrees to indemnify Paravax against any damages awarded to any
third party against Paravax arising out of any fault or misconduct of Eisai or
its distribution of the products, including any failure to provide the warnings
specified by Paravax.
ARTICLE 16. WITHHOLDING TAX
Any tax required to be withheld by the Japanese government or other
authorities on the amounts payable by Eisai to Paravax under this Agreement
shall be deductible from the payment due to Paravax, provided that Eisai shall
furnish Paravax with a copy of the official tax receipt for such withholding
tax.
ARTICLE 17. ARBITRATION
All disputes, controversies, or differences which may arise between the
parties, out of or in relation to or in connection with this Agreement or a
breach thereof, unless amicably resolved by mutual agreement, shall be finally
settled by arbitration pursuant to the Japan-American Trade Arbitration
Agreement of September 16, 1952, by which each party hereto is bound. If the
arbitration is demanded by Paravax, it shall be held in Tokyo, Japan, and if
the arbitration is demanded by Eisai, it shall be held in Denver, Colorado,
U.S.A.
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ARTICLE 18. NOTICES
All notices, consents, approvals, and other communications hereunder
shall be in writing and shall be deemed to have been given when received if
delivered by hand, international courier service, certified or registered air
mail, postage prepaid, return receipt requested, telex, of telecopy.
ARTICLE 19. MISCELLANEOUS PROVISIONS
19.1 This Agreement cancels and replaces all prior oral or written agreements
pertaining to the subject matter of this Agreement between Paravax and Eisai.
19.2 Either party shall not, without the prior written consent of the other
party (such consent shall not be withheld unreasonably), transfer this
Agreement in whole or in part to a third party or subsidiary, affiliated
company, parent company or to any other related company.
19.3 This Agreement shall not be altered or modified unless documents
specifying the alteration or modification are signed by both parties, and it
shall be binding and valid for any person succeeding to or taking over from
either party.
19.4 Nothing herein shall create any association, partnership, joint venture,
or the relation of principal and agent between the parties hereto. They are,
with respect to each other, independent contractors. Neither party shall have
any authority to bind the other or the other's representatives in any way.
Neither party shall hold itself out contrary to the terms of this paragraph nor
become liable by any contrary act or omission of the other party. This
Agreement is not for the benefit of any third party.
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19.5 A waiver by either party of any term or condition of this Agreement in
any instance shall not be deemed or construed as a waiver of such term or
condition for the future, or of any subsequent breach thereof. All remedies,
rights, undertakings, obligations and agreements contained in this Agreement
shall be cumulative and none of them shall be in limitation of any other
remedy, right, undertaking, obligation or agreement of either party.
IN WITNESS WHEREOF, this Agreement is executed in two (2) originals by
the duly authorized representatives of the parties hereto, each original being
legally binding when signatures have been affixed thereto, as of the date first
written above.
Paravax, Inc. a Eisai Co., Ltd., a
California corporation Japanese corporation
by /s/ XXXXXX X. XXXX by /s/ XXXXXX XXXXXX
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EXHIBIT A
SCOPE OF THE PRODUCTS
1. Canine Heartworm Vaccine
2. Feline Heartworm Vaccine
3. Feline Flea Vaccine
4. Canine Flea Vaccine
5. Feline Toxoplasmosis Vaccine
6. Swine/Ovine Toxoplasmosis Vaccine
7. Canine Tick Vaccine
8. Canine Borreliosis (Lyme) Vaccine
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EXHIBIT B
LIST OF THE TERRITORY
1. Japan
2. People's Republic of China including Hong Kong
3. Taiwan
4. Thailand
5. Singapore
6. Malaysia
7. Philippines
8. Indonesia
9. Korea
10. Other countries to be agreed by both parties
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EISAI/PARAVAX
COLLABORATIVE
AGREEMENT
EXHIBIT C
JANUARY 1993
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Exhibit C
TABLE OF CONTENTS
CANINE HEARTWORM 1 - 5
FELINE HEARTWORM 6 - 10
CANINE FLEA 11 - 15
FELINE FLEA VACCINE 16 - 19
FELINE TOXOPLASMOSIS 20 - 24
SWINE/OVINE TOXOPLASMOSIS 25 - 30
CANINE TICK 31 - 34
CANINE BORRELIOSIS (LYME) 35 - 38
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Exhibit C
CANINE HEARTWORM VACCINE PROJECT
INTRODUCTION
Dirofilaria immitis, a filarial nematode, is a significant pathogen of
dogs and cats. There is little evidence for naturally occurring protective
immunity in any filarial infection arising from a natural host-parasite
relationship. However, we have created a highly significant immune response in
dogs which received chemically abbreviated Dirofilaria immitis larval
infections. We also used sera from the immune animals to demonstrate that
antibody was effective in passively transferring larval killing and stunting.
Therefore, those same sera were used to selectively identify native larval
antigens not detected by sera from nonimmune, infected cohorts. Antigens that
are detected only by immune dog sera have been characterized by Western blot
analysis of larval extracts and excretory-secretory products, and
immunoprecipitation of metabolically labeled proteins and larval surface
antigens.
CURRENT STATUS
To molecularly clone the genes encoding protective antigens, four cDNA
expression libraries have been prepared in a lambda bacteriophage vector using
Poly A selected RNA from adult male or female worms, 48 hour third stage (L3)
larvae and 6 day fourth stage (L4) larvae. Screening of the D.immitis 48 hour
L3 cDNA library has resulted in identification of two clones (p39 and p17.5)
which have been targeted as potential vaccine candidates. We have shown that
these clones encode larval specific proteins of 39 kD and 17.5 kD, respectively,
that are only recognized by immune dog sera. The p39 beta-galactosidase fusion
peptide has been expressed in E. coil and shown to react specifically with
immune dog sera by Western blot analysis. Both genes are being subcloned into
bacterial plasmid vectors designed for large scale production of affinty
purified recombinant protein for use in immunization trials. These genes are
also being subcloned into species-specific viral constructs for use as live,
attenuated viral vaccines in dogs.
RESEARCH PLAN
1. Isolating recombinant clones.
The library screening strategy is designed to detect genes encoding
protective antigens. Therefore, larval-specific proteins selectively identified
by immune dog sera on Western blots are being targeted for molecular cloning by
immunoscreening the larval libraries with the immune dog sera. Initially, four
of these putative immunogens will be cloned, expressed and tested for efficacy.
Following isolation and purification of a positive clone, the D. immitis
recombinant phage will be converted to plasmid clones by in vivo excision in
the presence of helper phage. The resulting pBluescript clones will be
transformed into an appropriate E. coil host for generation of recombinant
plasmid DNA.
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Exhibit C
To verify that the recombinant clones encode the protein of interest,
fusion protein expressed by the purified recombinant phage will be bound to a
nitrocellulose filter and used to affinity-purify clone-specific antibodies
from the original immune dog sera. The monospecific antibodies will then be
eluted and used in Western blot analysis to identify the molecular weight of
the native D. immitis larval antigen encoded by the recombinant.
COMPLETION CRITERIA: Isolation and purification of four independent
recombinant clones encoding larval specific antigens recognized by immune sera.
Completion of the western blot analyses to determine the molecular weight of
the native D. immitis antigen encoded by each clone.
[
]
3. Identification of protective recombinant antigens in a mouse
model.
Protective immunity to the larval stages of D. immitis will be
demonstrated by active and passive immunization of mice.
A. Active immunization of mice.
Mice will be immunized with affinity purified recombinant fusion
protein and challenged by implantation of diffusion xxxxxxxx containing
infective larvae. The parameters for protection will include larval
survival and larval length compared to nonimmune controls.
B. Passive immunization of mice.
Mice will receive sera from dogs immunized with the affinity
purified
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Exhibit C
recombinant fusion proteins or sera from dogs vaccinated with recombinant
virus. Challenge and evaluation for protection will be as described above.
COMPLETION CRITERIA: Demonstration of significant stunting of larvae or
reduction in larval survival.
4. Identification of protective recombinant antigens in dogs.
A. Immunization with D. immitis recombinant fusion protein expressed in E.
coil:
Dogs will be immunized with affinity-purified recombinant protein in
adjuvant. Antibody titers will be monitored by enzyme linked immunosorbent
assay (ELISA) and specificity of the response will be verified by Western blot
analysis. Following verification of an antibody response to the fusion
protein, dogs will be challenged with infective third stage larvae. Protection
will be assessed by the enumeration of adult worms at necropsy, 7 months after
challenge.
B. Live, attenuated viral vaccine.
D. immitis viral constructs will be administered subcutaneously.
Antibody titers will be monitored as described above. Following verification
of an antibody response to the recombinant protein, dogs will be challenged and
protection evaluated as previously described.
COMPLETION CRITERIA: 70% protection in immunized dogs.
5. Maximize protective immunity.
The immunization regime and antigen(s) stimulating the highest level of
protection will be used for optimization of the vaccination protocol. These
studies may include administration of a pool of antigens, dose titrations of
inoculum and alternate formulations in adjuvant(s).
COMPLETION CRITERIA: A minimum of 95% efficacy.
6. Large-scale production of immunogens.
Depending on the most successful immunization regime, vaccine production
will involve either large scale production of recombinant fusion protein in E.
coil or species-specific recombinant viral constructs produced in tissue
culture.
COMPLETION CRITERIA: Production of product in a USDA licensed facility for
USDA pre-licensing serials.
7. Submission to USDA.
Submission of application for United States veterinary biological
product license.
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Exhibit C
PATENTS AND PATENT SUBMISSIONS OF RELEVANCE TO
LICENSING IN JAPAN AND SOUTHEAST ASIA
[
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[
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[
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Per agreement with Colorado State University Research Foundation, Paravax has
acquired exclusive worldwide rights to technology arising out of a Research
Agreement dated June 1, 1988, relating to heartworm vaccine, for a period of 15
years or expiration of the patent.
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Exhibit C
FELINE HEARTWORM VACCINE PROJECT
INTRODUCTION
Feline heartworm infections are an increasingly recognized problem. The
clinical signs and pathology induced in cats by heartworm infection are
generally thought to be more severe than in dogs, death sometimes occurring
with as few as one or two worms. There is currently no approved chemo- or
immuno-prophylactic for cats, so the introduction of any preventative product,
even if less than 100% effective, would be widely accepted.
The purpose is to develop a vaccine to prevent mature heartworm
infections in cats. Since cats are poorly adapted hosts for Dirofilaria
immitis, development of an efficacious vaccine would be more readily achieved
than that for the canine host. It is also believed that antigens not
necessarily effective in the dog would be effective as vaccines in the cat.
Proof of concept has been shown by Paravax, Inc. Two studies using
homogenized fourth stage larvae with adjuvant given by intramuscular injection
resulted in complete protection levels as high as 100% when compared to
controls. In one experiment a decrease in worm numbers in immunized cats that
were not completely protected was also observed. By contrast, the use of
killed homogenized parasites has no protective effect in the definitive canine
host.
CURRENT STATUS
Further evaluation of the relative ease of protecting cats with
homogenized native antigen pools is underway. A 48 cat study using whole adult
male worm homogenate with or without adjuvant is in progress. This is an
antigen preparation shown to have no effect in protecting dogs from heartworm
infections. Preliminary results are expected in the first quarter of 1993 and
the final results in the second quarter of 1993.
Paravax, Inc. has one of the best facilities and supply of reagents for
the study of D. immitis in the world. [
] Dogs
with patent infections are maintained for continuous larval production.
Treatment and challenge studies are routinely performed on dogs and cats, and
in a mouse model system. A variety of larval specific monoclonal antibodies,
infected dog sera, occult infected dog sera, sera from dogs immune to infection
with heartworm and sera from a variety of cat heartworm studies are available.
Four cDNA expression libraries have been prepared using Poly A selected RNA
from 48 hour third stage larvae, 6 day fourth stage larvae, adult male worms
and adult female worms.
6
27
Exhibit C
Two molecules (p39 and p17.5) have been cloned from the 48 hour third
stage larval cDNA library. These molecules are uniquely recognized by sera
derived from dogs immune to infection with heartworm, but not sera from
infected non-immune dogs. These molecules are currently being subcloned for
expression for the purpose of immunizing cats. Both will also be used in a
live feline-specific virus vector system in cats.
RESEARCH PLAN
1. Evaluation of adult worm homogenate.
This study is to further validate that cats can be protected against
heartworm infection by means unsuccessful in dogs. Cats have been immunized
twice with adult male worm homogenate and challenged with forty infective stage
larvae either 3 months or 6 months post second immunization. The studies will
be terminated 170 days post challenge.
COMPLETION CRITERIA: Termination of the study and evaluation of the protective
effect, if any, of adult male worm antigen.
2. Expression of recombinant proteins.
Two potentially protective proteins (p39 and p17.5) have been cloned
from the 48 hour third stage larval cDNA library. These will be subcloned into
a vector system designed for large scale production of protein that can be
purified.
COMPLETION CRITERIA: Purification of the recombinant protein for initial
immunization trials.
[
]
4. Evaluation of efficacy of recombinant protein immunogens.
Cats will be immunized twice with purified recombinant protein suspended
in adjuvant, and sero-conversion verified by enzyme linked immunosorbent assay
(ELISA). Following verification of sero-conversion, standard challenge and
evaluation of protection will be performed.
COMPLETION CRITERIA: Termination of the study and evaluation of the protective
effect.
7
28
Exhibit C
[
]
6. Maximization of protective immunity.
The immunization regime and antigen(s) stimulating the highest level of
protection will be used for optimization of the vaccination protocol. These
studies may include administration of a pool of antigens, dose titrations,
alternate route of inoculation and utilization of alternate adjuvants. At this
stage, other cloned D. immitis proteins identified in the canine heartworm
vaccine project may also be evaluated to augment immunity.
COMPLETION CRITERIA: Achievement of complete protection in at least 80% of
immunized cats.
[
]
8. Submission to USDA.
Submission of application for United States veterinary biological
product license.
8
29
Exhibit C
PATENTS AND PATENT SUBMISSIONS OF RELEVANCE TO
LICENSING IN JAPAN AND SOUTHEAST ASIA
Colorado State University and Paravax, Inc.
Attorney: Xxxx Xxxxxxxxx
Xxxxxxxx and Forester, Palo Alto, CA
[
]
Per agreement with Colorado State University Research Foundation, Paravax has
acquired exclusive worldwide rights to technology arising out of a Research
Agreement dated June 1, 1988, relating to heartworm vaccine technology, for a
period of 15 years or expiration of the patent. Please note that the
preceding patent application which is specific to the feline heartworm vaccine
is in addition to the two patents listed previously for the canine heartworm
vaccine technology. Those patents will also apply to the feline heartworm
vaccine technology.
9
30
Exhibit C
CANINE FLEA VACCINE PROJECT
INTRODUCTION
Fleas are a leading health problem in companion animals worldwide. Flea
allergy dermatitis is the most common skin disorder of dogs and cats. Flea
problems comprise as much as 80% of all visits to veterinarians during summer
months in the United States; flea problems of similar magnitude exist
throughout the world.
There are chemical compounds on the market for dogs that, when ingested,
will absorb into the bloodstream and kill fleas that are feeding on the dog.
However, these products have toxic side effects and veterinarians prefer not to
prescribe them. A safe vaccine against fleas would be welcomed by
veterinarians, and would replace existing systemic products.
The purpose of the flea vaccine project is to develop a vaccine product
that elicits antibodies that will kill fleas when they feed on dogs or cats.
In addition to killing fleas, the vaccine will also reduce the number of eggs
infesting the environment.
The rationale for the flea vaccine is that cattle can be protected from
tick infestation when vaccinated with "hidden antigens" derived from the gut of
the tick. The flea, like the tick, is a blood feeding arthropod. Fleas
feeding on vaccinated animals will take up antibodies to the hidden antigens.
The function of the antigen will be disrupted, leading to death of the flea.
Paravax has demonstrated proof of concept for this vaccine. Trials with
a prototype vaccine have demonstrated a significant flea killing ability when
administered to dogs. In addition, female fleas that initially survived had a
significantly reduced capacity to produce eggs.
CURRENT STATUS
Paravax has established a flea colony utilizing a novel artificial
feeding system. This system has a production capacity of 60,000 fleas per
week. Vaccine preparations are made from the fleas produced in this system. A
flea bioassay has also been developed utilizing the artificial feeding system.
The bioassay can be used to evaluate the potency of antiserum generated in
animals and then artificially fed to fleas.
Paravax scientists have demonstrated that antigens derived from the gut of fed
fleas induce greater immunity to fleas than those derived from unfed fleas.
Antiserum to both fed and unfed flea gut antigens has been generated in dogs
and rabbits, and is available for a subtractive approach to antigen discovery.
11
31
Exhibit C
RESEARCH PLAN
1. Identification of relevant native antigens.
Antigens that are specifically recognized by antibodies from protected
dogs will be identified by Western blotting and radioimmunoprecipitation. Of
these antigens, those that are exclusive to the fed gut will be targeted for
gene cloning.
COMPLETION CRITERIA: Identification of up to four native antigens that are
exclusively recognized by antibodies from protected animals.
2. Generation of a flea gut cDNA library.
A cDNA expression library will be generated using poly A selected RNA
derived from the gut of blood fed fleas. A cDNA library will also be generated
from mRNA isolated from the gut of unfed fleas to facilitate a subtractive
approach to the identification of relevant antigens exclusive to the fed gut.
COMPLETION CRITERIA: Production of a representative fed flea gut and unfed
flea gut cDNA library.
3. Clone genes of relevant antigens.
Immunization studies have indicated a protective effect in animals
inoculated with fed flea gut supernatants, therefore to target protective
antigens, the fed gut library will be differentially screened with antisera
from immune animals. Positive clones will subsequently be screened with non
immune sera to eliminate nonrelevant clones. This same differential approach
can be implemented by hybridization analysis of the fed flea gut library with
cDNA probes prepared from fed and unfed flea gut mRNA. This would identify
clones not detected by immunoscreening due to incorrect reading frames. To
further enrich for fed flea gut specific genes, a third subtracted cDNA library
will be constructed from the original cDNA libraries by standard protocols and
then immunoscreened as described. This library will contain cDNA clones
corresponding to mRNAs present in fed flea gut and not present in unfed flea
gut.
COMPLETION CRITERIA: Identification of up to four antigens that are
exclusively recognized by antibodies from protected animals.
4. Gene expression.
Clones isolated from the fed flea gut cDNA expression library will be
expressed in E. coil and the resulting fusion proteins characterized by Western
blot analysis with immune sera. To verify that the recombinant clones encode
the protein of interest, fusion protein expressed by the purified recombinant
phage is bound to a nitrocellulose filter and used to affinity-purify clone-
specific Antibodies from the
12
32
Exhibit C
original immune sera. The monospecific antibodies are then eluted and used in
Western blot analysis to identify the molecular weight of the native flea gut
antigen encoded by the recombinant. The clones will be subcloned into a vector
system optimized for large scale production of fusion protein that can be
purified by affinity chromotography.
COMPLETION CRITERIA: Identification of the molecular weight of up to four
relevant flea gut native antigens encoded by the recombinant clone. Affinity
purification of the recombinant fusion peptides for initial immunization
trials.
5. Identification of protective recombinant antigens.
Recombinant proteins will be produced in flask cultures of E. coil. The
proteins will be purified from culture supernatants by affinity chromatography.
Dogs will be vaccinated and challenged using a standard protocol. Briefly,
animals will be vaccinated with antigen plus adjuvant in 2 doses, 2 weeks
apart. Two weeks after the second vaccine dose, each animal will be challenged
with 50 fleas contained in a flea cage. The number of viable and dead fleas,
plus the number of eggs produced will be counted 7 days later. Animals
receiving adjuvant alone will be used as controls. The antigen that stimulates
the highest level of protective immunity will be selected for final
optimization.
COMPLETION CRITERIA: Identification of one antigen that elicits a
statistically significant level of immunity in dogs.
6. Maximization of protective immunity.
The vaccine will be optimized for the highest level of efficacy. Paravax
has access to a panel of adjuvants and immunopotentators with potential for use
in companion animals. These will be screened in combination with the selected
antigen for maximum efficacy in vaccination experiments as described above.
Vaccine dose and regimen of administration will also be optimized for maximum
efficacy.
COMPLETION CRITERIA: Achievement of 65% protection or greater following
vaccination of dogs with recombinant antigen.
7. Production scale-up.
Production scale-up and optimization will be performed in fermenters
using standard procedures.
COMPLETION CRITERIA: Production of product in a USDA licensed facility for
USDA pre-licensing serials.
8. Submission to USDA.
Submission of application for United States veterinary biological
product license.
13
33
Exhibit C
PATENTS AND PATENT SUBMISSIONS OF RELEVANCE TO
LICENSING IN JAPAN AND SOUTHEAST ASIA
[
]
14
34
Exhibit C
FELINE FLEA VACCINE PROJECT
INTRODUCTION
Please see introductory section for canine flea vaccine. It should be
noted that cats cannot tolerate the systemic products that are marketed for
flea control on dogs. A vaccine against fleas on cats would therefore be the
first systemic product to control fleas on cats.
Paravax has demonstrated proof of concept for this vaccine. Trials with
a prototype vaccine have demonstrated a significant flea killing ability when
administered to cats. In addition, female fleas that initially survived the
vaccine effect had a significantly reduced capacity to lay eggs.
CURRENT STATUS
Paravax has established a flea colony utilizing a novel artificial
feeding system. This system has a production capacity of 60,000 fleas per
week. Vaccine preparations are made from the fleas produced in this system. A
flea bioassay has also been developed utilizing the artificial feeding system.
The bioassay can be used to evaluate the potency of antibody to flea antigens.
Flea vaccine trials in cats are performed using a caged flea challenge
system developed at Paravax. Cages containing fleas are attached to the cats
in such a way that the fleas can readily feed. This system is superior to the
standard free roaming flea challenge in that all fleas can be accounted for.
Also, all eggs produced can be collected and accurately counted. We are
currently adapting this system for use on dogs.
Antibody to fed flea gut antigens has been generated in cats and rabbits, and
the antigen discovery part of this project is now underway.
RESEARCH PLAN
It should be noted that considerable methodological similarity exists
between this project and the canine flea vaccine project. However, it is
anticipated that each host species may recognize unique molecules and that
vaccine delivery will be necessarily unique to each host species.
1. Identification of relevant native antigens.
Antigens that are specifically recognized by antibodies from protected
animals will be identified by Western blotting and immunoprecipitation. Of
these antigens, those that are exclusive to the fed gut will be targeted for
gene cloning.
16
35
Exhibit C
COMPLETION CRITERIA: Identification of up to four antigens that are
exclusively recognized by antibodies from protected animals.
2. Generation of a flea gut cDNA library.
A cDNA expression library will be generated using poly A selected RNA
derived from the gut of blood fed fleas. A cDNA library will also be generated
from mRNA isolated from the gut of unfed fleas to facilitate a subtractive
approach to the identification of relevant antigens exclusive to the fed gut.
COMPLETION CRITERIA: Production of a representative fed flea gut and unfed
flea gut cDNA library.
3. Clone genes of relevant antigens.
Immunization studies have indicated a protective effect in animals
inoculated with fed flea gut supernatants, therefore to target protective
antigens, the fed gut library will be differentially screened with antisera
from immune animals. Positive clones will subsequently be screened with non
immune sera to eliminate nonrelevant clones. This same differential approach
can be implemented by hybridization analysis of the fed flea gut library with
cDNA probes prepared from fed and unfed flea gut mRNA. This would identify
clones not detected by immunoscreening due to incorrect reading frames. To
further enrich for fed flea gut specific genes, a third subtracted cDNA library
will be constructed from the original cDNA libraries by standard protocols and
then immunoscreened as described. This library will contain cDNA clones
corresponding to mRNAs present in fed flea gut and not present in unfed flea
gut.
COMPLETION CRITERIA: Identification of up to four antigens that are
exclusively recognized by antibodies from protected animals.
4. Gene expression.
Clones isolated from the fed flea gut cDNA expression library will be
expressed in E. coli and the resulting fusion proteins characterized by Western
blot analysis with immune sera. To verify that the recombinant clones encode
the protein of interest, fusion protein expressed by the purified recombinant
phage is bound to a nitrocellulose filter and used to affinity-purify clone-
specific antibodies from the original immune sera. The monospecific antibodies
are then eluted and used in Western blot analysis to identify the molecular
weight of the native flea gut antigen encoded by the recombinant. The clones
will be subcloned into a vector system optimized for large scale production of
fusion protein that can be purified by affinity chromotography.
17
36
Exhibit C
COMPLETION CRITERIA: Identification of the molecular weight of up to four
relevant flea gut native antigens encoded by the recombinant clone. Affinity
purification of the recombinant fusion peptides for initial immunization
trials.
5. Identification of protective recombinant antigens.
Recombinant proteins will be produced in flask cultures of E. coli. The
proteins will be purified from culture supernatants by affinity chromatography.
Cats will be vaccinated and challenged using a standard protocol. Briefly,
animals will be vaccinated with antigen plus adjuvant in 2 doses, 2 weeks
apart. Two weeks after the second vaccine dose, each animal will be challenged
with 50 fleas contained in a flea cage. The number of viable and dead fleas,
plus the number of eggs produced will be counted 7 days later. Animals
receiving adjuvant alone will be used as controls. The antigen that stimulates
the highest level of protective immunity will be selected for final
optimization.
COMPLETION CRITERIA: Identification of one antigen that elicits a
statistically significant level of immunity in cats.
6. Maximization of protective immunity.
The vaccine will be optimized for the highest level of efficacy.
Paravax has access to a panel of adjuvants and immunopotentators with potential
for use in companion animals. These, in addition to conventional adjuvants,
will be screened in combination with the selected antigen for maximum efficacy
in vaccination experiments as described above. Vaccine dose and regimen of
administration will also be optimized for maximum efficacy.
COMPLETION CRITERIA: Achievement of 65% protection or greater following
vaccination of cats with recombinant antigen.
7. Production scale-up.
Production scale-up and optimization will be performed in
fermenters using standard procedures.
COMPLETION CRITERIA: Production of product in a USDA licensed facility for
USDA pre-licensing serials.
8. Submission to USDA.
Submission of application for United States veterinary biological
product license.
18
37
Exhibit C
FELINE TOXOPLASMOSIS VACCINE PROJECT-1
INTRODUCTION
Toxoplasmosis is a zoonotic infection with severe consequences,
especially in fetal infections and immuno-compromised individuals. The two
sources of human infection are the ingestion of undercooked infected meat and
oocysts shed after the primary infection of cats. The elimination of oocyst
production by house cats and cats frequently found on farms would eliminate a
major source of human infection.
[
]
20
38
Exhibit C
RESEARCH PLAN
[
]
21
39
Exhibit C
[
]
22
40
Exhibit C
7. Production scale-up.
Optimization of large scale production of recombinant proteins will be
done by standard procedures using commercial fermentation and preparative
purification equipment. Purified proteins will be formulated with the chosen
adjuvant by a procedure appropriate for the chosen protein/adjuvant
combination.
COMPLETION CRITERIA: Production of product in a USDA licensed facility for
USDA pre-licensing serials.
8. Submission to USDA.
Submission of application for United States veterinary biological
product license.
PATENTS AND PATENT SUBMISSIONS OF RELEVANCE TO
LICENSING IN JAPAN AND SOUTHEAST ASIA
[
]
23
41
SWINE/OVINE TOXOPLASMOSIS VACCINE PROJECT
Pages 25-30 intentionally omitted. Project described is no longer being
pursued.
42
CANINE TICK VACCINE PROJECT
Pages 31-34 intentionally omitted. Project described is no longer being
pursued.
43
CANINE BORRELIOSIS (LYME) VACCINE PROJECT
Pages 35-38 intentionally omitted. Project described is no longer being
pursued.
44
EISAI/PARAVAX
COLLABORATIVE
AGREEMENT
EXHIBIT D
JANUARY 1993
45
EXHIBIT D
PARAVAX, INC.
PROPOSED EISAI
FINANCIAL ARRANGEMENT
(US DOLLARS)
===========================================================================================
LICENSE
FEE
PROJECT UPFRONT RESEARCH SUPPORT
-------------------------------------------------------------------------------------------
Total Total
Year 1 Year 2 Year 3 Research All
-------------------------[
Canine Heartworm
-------------------------
Feline Heartworm
-------------------------
TOTAL HEARTWORM
-------------------------
Feline Flea Vaccine
-------------------------
Canine Flea Vaccine
-------------------------
TOTAL FLEA
-------------------------
Feline Toxoplasma
-------------------------
Swine/Ovine Toxoplasma
-------------------------
TOTAL TOXOPLASMA
-------------------------
Canine Tick
-------------------------
Canine Lyme
-------------------------
TOTAL TICK/LYME
-------------------------
Total
========================= ]
46
EISAI/PARAVAX
COLLABORATIVE
AGREEMENT
EXHIBIT E
JANUARY 1993
47
EXHIBIT E
EISAI/PARAVAX
MILESTONE AND PAYMENT SCHEDULE
CANINE HEARTWORM
====================================================================================================================================
MILESTONE DATE PAYMENT
------------------------------------------------------------------------------------------------------------------------------------
[
]
------------------------------------------------------------------------------------------------------------------------------------
48
Canine Heartworm EXHIBIT E
Milestone and Payment Schedule
Page 2
====================================================================================================================================
MILESTONE DATE PAYMENT
------------------------------------------------------------------------------------------------------------------------------------
[
]
------------------------------------------------------------------------------------------------------------------------------------
49
EISAI/PARAVAX
MILESTONE AND PAYMENT SCHEDULE EXHIBIT E
CANINE FLEA VACCINE
====================================================================================================================================
MILESTONE DATE PAYMENT
------------------------------------------------------------------------------------------------------------------------------------
]
------------------------------------------------------------------------------------------------------------------------------------
50
EISAI/PARAVAX
MILESTONE AND PAYMENT SCHEDULE EXHIBIT E
FELINE HEARTWORM VACCINE
====================================================================================================================================
MILESTONE DATE PAYMENT
------------------------------------------------------------------------------------------------------------------------------------
]
------------------------------------------------------------------------------------------------------------------------------------
51
EISAI/PARAVAX
MILESTONE AND PAYMENT SCHEDULE EXHIBIT E
FELINE FLEA VACCINE
====================================================================================================================================
MILESTONE DATE PAYMENT
------------------------------------------------------------------------------------------------------------------------------------
[
]
------------------------------------------------------------------------------------------------------------------------------------
52
EISAI/PARAVAX
MILESTONE AND PAYMENT SCHEDULE EXHIBIT E
FELINE TOXOPLASMOSIS VACCINE
====================================================================================================================================
MILESTONE DATE PAYMENT
------------------------------------------------------------------------------------------------------------------------------------
[
]
------------------------------------------------------------------------------------------------------------------------------------
53
EISAI/PARAVAX
MILESTONE AND PAYMENT SCHEDULE EXHIBIT E
SWINE/OVINE TOXOPLASMOSIS VACCINE
====================================================================================================================================
MILESTONE DATE PAYMENT
------------------------------------------------------------------------------------------------------------------------------------
[
]
------------------------------------------------------------------------------------------------------------------------------------
54
Swine/Ovine Toxoplasmosis Vaccine
Milestone and Payment Schedule EXHIBIT E
Page 2
====================================================================================================================================
MILESTONE DATE PAYMENT
------------------------------------------------------------------------------------------------------------------------------------
[
]
------------------------------------------------------------------------------------------------------------------------------------
55
EISAI/PARAVAX
MILESTONE AND PAYMENT SCHEDULE EXHIBIT E
CANINE TICK VACCINE
====================================================================================================================================
MILESTONE DATE PAYMENT
------------------------------------------------------------------------------------------------------------------------------------
[
]
------------------------------------------------------------------------------------------------------------------------------------
56
EISAI/PARAVAX EXHIBIT E
MILESTONE AND PAYMENT SCHEDULE
CANINE BORRELIOSIS (LYME) VACCINE
====================================================================================================================================
MILESTONE DATE PAYMENT
------------------------------------------------------------------------------------------------------------------------------------
[
]
------------------------------------------------------------------------------------------------------------------------------------
