Unassociated Document


    Exhibit
      10.6

     

    CONFIDENTIAL
      TREATMENT REQUESTED

    Information
      marked by [***] has been omitted pursuant to a request for


    confidential
      treatment. The omitted portion has been separately filed with


    the
      Securities and Exchange Commission.

    


    LICENSE
      AGREEMENT

    


    This
      Agreement is entered into on January 3, 2008, between THE OHIO STATE UNIVERSITY
      RESEARCH FOUNDATION, located at 1960 Kenny Road, Columbus, Ohio and ARNO
      THERAPEUTICS, INC., a Delaware corporation located at 30 Two Bridges Rd., Suite
      270, Fairfield, NJ 07004.

    


    BACKGROUND

    


    LICENSOR
      owns certain PATENT RIGHTS (as defined in Section 1.19) relating to LICENSOR
      Case No. 04021, "A Novel Class of PDK-1/Akt Signaling Inhibitors", and has
      the
      right to grant licenses under PATENT RIGHTS, (subject to only to a royalty-free
      nonexclusive license previously granted to the United States Government) (the
      “INVENTION”), which was invented at LICENSOR by Dr. Ching-Shih Chen
      et.al.;

    


    LICENSOR
      desires to have the PATENT RIGHTS developed and commercialized to benefit the
      public and is willing to grant a license for this purpose;

    


    LICENSEE
      has represented to LICENSOR, to induce LICENSOR to enter into this Agreement,
      that LICENSEE is experienced in developing, producing, manufacturing, marketing,
      and selling products similar to the LICENSED PRODUCT(s) (as later defined)
      and/or using the LICENSED PROCESS(es) (as later defined) and that it shall
      commit itself to a thorough, vigorous, and diligent program of exploiting the
      PATENT RIGHTS so that the public shall benefit; and

    


    LICENSEE
      desires to obtain a license under the PATENT RIGHTS upon the terms and
      conditions set forth below.

    


    The
      parties therefore agree as follows:

    


    ARTICLE
      1 - DEFINITIONS

    


    For
      purposes of this Agreement, the following words and phrases have the following
      meanings:

    


    1.1 “AFFILIATE”
      shall mean any entity or person that directly or indirectly controls, is
      controlled by or is under common control with LICENSEE or a SUBLICENSEE as
      applicable. For purposes of this definition, “control” means possession of the
      power to direct the management of such entity or person, whether through
      ownership of more than fifty percent (50%) of voting securities, by contract
      or
      otherwise. 

     

    1.2 “CHANGE
      OF CONTROL” shall mean a merger, consolidation, acquisition or the transfer of
      all, or substantially all, of the business interests of LICENSEE to which this
      Agreement relates to which LICENSEE is a party where the shareholders of
      LICENSEE immediately prior to effective date of such transaction beneficially
      own, immediately following the effective date of such transaction, securities
      representing less than fifty percent (50%) of the combined voting power of
      the
      surviving corporation’s then outstanding voting securities. 

     

    
      
        
        

      

      
        
        

        
          

        

      

      
        
        

      

    

     

    1.3 “COMMERCIALLY
      REASONABLE EFFORTS” shall mean documented efforts that are consistent with those
      utilized by companies of similar size and type that are developing products
      and
      services similar to LICENSED PRODUCTS. 

     

    1.4 “CONFIDENTIAL
      INFORMATION” means confidential or proprietary information relating to the
      PATENT RIGHTS, LICENSED PRODUCTS or LICENSED PROCESSES. CONFIDENTIAL INFORMATION
      may be in written, graphic, oral or physical form and may include scientific
      knowledge, know-how, processes, inventions, techniques, formulae, products,
      business operations, customer requirements, designs, sketches, photographs,
      drawings, specifications, reports, studies, findings, data, plans or other
      records, biological materials, and/or software. CONFIDENTIAL INFORMATION shall
      not include:

     

    
      	 	
              (a)

            	
              information
                that is, or later becomes, generally available to the public through
                no
                fault of the recipient;

            


    

     

    
      	 	
              (b)

            	
              information
                that is provided to the recipient by an independent third party having
                no
                obligation to keep the information
                secret;

            


    

     

    
      	 	
              (c)

            	
              information
                that the recipient can establish was previously known to it or was
                independently developed by it without reference to the CONFIDENTIAL
                INFORMATION; 

            


    

     

    
      	 	
              (d)

            	
              information
                that is required to be disclosed to comply with applicable law or
                court
                order, including Ohio Revised Code Section 149.43, provided that
                the
                recipient gives prior written notice of the required disclosure to
                the
                discloser.

            


    

     

    1.5 “EFFECTIVE
      DATE” shall mean the date on which this Agreement is fully executed by both
      parties.

     

    1.6 “FDA”
      shall mean the United States Food and Drug Administration or successor
      entity.

     

    1.7 "FIELD
      OF
      USE" means all therapeutic uses in humans and animals, including (a) use as
      a
      cancer therapeutic (“First Field”) and (b) use as an anti-infective agent
      (“Second Field”).

     

    1.8 “FIRST
      SALE” shall mean the first commercial sale to a third party of any LICENSED
      PRODUCT in the LICENSED TERRITORY (as defined below). 

     

    1.9  “IMPROVEMENTS”
      shall mean any and all intellectual property relating to a LICENSED PRODUCT
      or
      PATENT RIGHTS made by the INVENTOR, including, without limitation improved
      methods of manufacture and production techniques, new or additional analogs,
      to
      the extent that such analogs are a part of the same class of compounds contained
      within PATENT RIGHTS, therapeutic indications and developments intended to
      enhance the safety and efficacy of the LICENSED PRODUCTS. 

     

    1.10 “IND”
      shall mean an investigational new drug application filed with the FDA prior
      to
      the commencement of human clinical trials in the United States pursuant to
      21
      C.F.R. §312(a). 

     

    1.11 “INVENTORS”
      shall mean Dr. Ching-Shih Chen and such other inventors as are listed as such
      on
      any patent application or patent contained within PATENT RIGHTS.

     

    
      
        
        

      

      
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    1.12 “LICENSED
      INFORMATION” shall mean all technical information and data, whether or not
      patented invented or developed by LICENSOR, to the extent that (a) such
      technical information and data are useful for the use or practice of the
PATENTS
      RIGHTS
      or
LICENSED
      TECHNOLOGY
      as
      permitted herein; and (b) LICENSOR possesses the right to license the use of
      such information to LICENSEE
      for
      commercial purposes.

     

    1.13 “LICENSED
      PROCESS” means any process that is covered in whole or in part by (a) a
VALID
      CLAIM (as defined in Section 1.26
      below)
contained
      in the PATENT RIGHTS in the country in which such LICENSED PROCESS is used
      or
      (b) a VALID CLAIM contained in the PATENT RIGHTS in the country to which a
      product is imported where the LICENSED PROCESS is used to make the
      product.

     

    1.14 “LICENSED
      PRODUCT” means any product or product part which (a) is covered in whole or in
      part by a VALID
      CLAIM contained
      in the PATENT RIGHTS in the country in which any such product or product part
      is
      made, used or sold; or (b) is manufactured by using a LICENSED PROCESS in the
      country in which any LICENSED PROCESS is used or in which such product or
      product part is used or sold.

     

    1.15 "LICENSEE"
      means ARNO
      THERAPEUTICS, INC.
      and any
      AFFILIATE of ARNO
      THERAPEUTICS, INC.

     

    1.16 “LICENSOR”
      shall mean THE OHIO STATE UNIVERSITY RESEARCH FOUNDATION.

     

    1.17 “NDA”
      shall mean an application for FDA approval to market a new drug filed with
      the
      FDA pursuant to 21 C.F.R. §314. 

     

    1.18 “NET
      SALES” shall mean the total gross amounts invoiced for sales of a LICENSED
      PRODUCT by
      or on
      behalf of LICENSEE, its AFFILIATES and SUBLICENSEES
      and from
      leasing, renting, or otherwise making a LICENSED
      PRODUCT or
      LICENSED PROCESS available to others for profit without sale or other
      dispositions, whether invoiced or not, less the following deductions, provided
      they actually pertain to the disposition of LICENSED
      PRODUCTS or
      LICENSED PROCESSES and
      are
      separately invoiced: 

     

    
      	
            	(a)	
              discounts,
                returns and allowances actually granted to
                customers;

            


    

     

    
      	 	
              (b)

            	
              commissions
                actually paid to third-party distributors and other third-party sales
                agencies;

            


    

     

    
      	 	
              (c)

            	
              sales,
                tariff duties and/or use taxes directly imposed and with reference
                to
                particular sales; 

            


    

     

    
      	
            	(d)	
              outbound
                transportation prepaid or allowed and transportation insurance;
                

            


    

     

    
      	
            	(e)	
              amounts
                allowed or credited on returns; 

            


    

     

    
      	 	
              (f)

            	
              bad
                debt deductions actually written off during the accounting period;
                and
                

            


    

     

    
      	
            	(g)	
              packaging
                and freight charges.

            


    

     

    No
      deductions shall be made for cost of collections or for commissions paid to
      independent sales agencies or to individuals regularly employed by LICENSEE
      and
      on its payroll. LICENSED PRODUCTS are "sold" when billed out or
      invoiced.

    


    1.19 "PATENT
      RIGHTS" means all U.S. and foreign patents and patent applications owned or
      controlled by LICENSOR which relate to the composition of matter, method of
      use,
      manufacture, dosing, or administration of the INVENTION or any IMPROVEMENTS,
      which shall include the following LICENSOR intellectual property:

     

    
      
        
        

      

      
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              (a)

            	
              the
                United States and foreign patents and/or patent applications listed
                in
                Appendix A;

            


    

     

    
      	 	
              (b)

            	
              United
                States and foreign patents issued from the applications listed in
                Appendix
                A and from divisionals, and continuations of these
                applications;

            


    

     

    
      	 	
              (c)

            	
              claims
                of U.S. and foreign continuation-in-part applications, and of the
                resulting patents, which are directed to subject matter specifically
                described in the U.S. and foreign applications listed in Appendix
                A;

            


    

     

    
      	 	
              (d)

            	
              claims
                of all foreign patent applications, and of the resulting patents,
                which
                are directed to subject matter specifically described in the United
                States
                patents and/or patent applications described in (a), (b) or (c) above;
                and

            


    

     

    
      	 	
              (e)

            	
              any
                reissues or reexaminations of United States patents described in
                (a), (b)
                or (c) above.

            


    

     

    1.20 “PHASE
      I
      CLINICAL TRIAL” shall mean the initial introduction of an investigational new
      drug into humans, the principal purpose of which is to determine the metabolism
      and pharmacologic actions of the drug in humans, the side effects associated
      with increasing doses, and, if possible, to gain early evidence on
      effectiveness, in compliance with 21 C.F.R. §312(a).

     

    1.21 “PHASE
      II
      CLINICAL TRIAL” shall mean controlled human clinical studies conducted to
      evaluate the effectiveness of a drug for a particular indication or indications
      in patients with the disease or condition under study and to determine the
      common short-term side effects and risks associated with the drug in compliance
      with 21 C.F.R. §312(b). 

     

    1.22 “PHASE
      III CLINICAL TRIAL” shall mean expanded controlled and uncontrolled human
      clinical trials pursuant to a randomized study with endpoints agreed upon by
      regulatory bodies for regulatory approval performed after PHASE II CLINICAL
      TRIALS evidence suggesting effectiveness of a drug has been obtained, and is
      intended to gather the additional information about effectiveness and safety
      that is needed to evaluate the overall benefit-risk relationship of a drug
      and
      to provide an adequate basis for physician labeling, as in compliance with
      21
      C.F.R. §312.

     

    1.23 “SUBLICENSEE”
      shall mean any third party sublicensed by LICENSEE to make, have made, use,
      sell, have sold, import or export any LICENSED PRODUCT.

     

    1.24 “SUBLICENSE
      FEES” shall include:

     

    
      	 	
              (a)

            	
              all
                consideration, in whatever form, received from a SUBLICENSEE in connection
                with a sublicense of the PATENT RIGHTS and LICENSED INFORMATION,
                including, but not be limited to:

            


    

     

    
      	 	
              (i)

            	
              up
                front fees received by LICENSEE for the granting of a sublicense
                to a
                SUBLICENSEE;

            


    

     

    
      	 	
              (ii)

            	
              MILESTONE
                PAYMENTS
                (as defined in Section 3.2 below) received by the LICENSEE from a
                SUBLICENSEE; provided, however, that the LICENSOR shall not be entitled
                to
                any MILESTONE PAYMENTS made to the LICENSEE to the extent that the
                LICENSOR would be otherwise entitled to a MILESTONE
                PAYMENT
                as
                set forth in Section 3.2; and 

            


    

     

    
      
        
        

      

      
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              (iii)

            	
              Sublicense
                maintenance fees.

            


    

     

    (b) SUBLICENSE
      FEES shall not include the following:

     

    
      	 	
              (i)

            	
              payments
                received by LICENSEE from a SUBLICENSEE solely for a bona fide research
                and development program which will be particularized in such SUBLICENSE
                AGREEMENT with reasonable detail;
                and

            


    

     

    
      	 	
              (ii)

            	
              the
                purchase by a SUBLICENSEE of debt or equity securities of the
                LICENSEE.

            


    

     

    1.25 “TERRITORY”
      means worldwide.

     

    1.26 “VALID
      CLAIM” shall
      mean (a) an issued claim of any unexpired patent included among the PATENT
      RIGHTS, which has not been held unenforceable, unpatentable or invalid by a
      decision of a court or governmental body of competent jurisdiction, unappealable
      or unappealed within the time allowed for appeal, which has not been rendered
      unenforceable through disclaimer or otherwise, and which has not been lost
      through an interference proceeding or abandoned or (b) a claim of a pending
      patent application included within the PATENT RIGHTS, which claim was filed
      in
      good faith and has not been abandoned or finally disallowed without the
      possibility of appeal or re-filing of such application.

    


    ARTICLE
      2 - GRANT

    


    2.1 Subject
      to all the terms and conditions of this Agreement, LICENSOR hereby grants to
      LICENSEE and LICENSEE accepts, subject to the terms and conditions of this
      Agreement, an exclusive, worldwide license, together with the right to grant
      sublicenses, to practice under the PATENT RIGHTS and IMPROVEMENTS and to use
      the
      LICENSED INFORMATION, to make, have made, use, sell, have sold, offer to sell,
      import or export LICENSED PRODUCTS and to practice LICENSED
      PROCESSES.

    


    2.2 Unless
      terminated earlier as provided in Article 13, the term of the LICENSE (the
      “TERM”) shall commence on the EFFECTIVE DATE and shall automatically expire on
      the later of: 

    (a) the
      date
      on which the last VALID CLAIM described in the PATENT RIGHTS expires, lapses
      or
      is declared to be invalid by a non-appealable decision of a court of competent
      jurisdiction; and 

    


    (b) twenty
      (20) years after the EFFECTIVE DATE. 

    


    2.3 LICENSEE
      agrees that LICENSED PRODUCTS leased or sold in the United States shall be
      manufactured substantially in the United States.

    


    2.4 LICENSOR
      reserves the right to practice under the PATENT RIGHTS solely for non-commercial
      research and educational purposes.

     

    
      
        
        

      

      
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    2.5 To
      the
      extent that any invention included within the PATENT RIGHTS has been funded
      in
      whole or in part by the United States government, the United States government
      retains certain rights in such invention including but not limited to the rights
      set forth in 35 U.S.C. §200-212 and all regulations promulgated thereunder, as
      amended, and any successor statutes and regulations (collectively the “Federal
      Patent Policy”), notwithstanding anything in this Agreement to the contrary. As
      a condition of the LICENSE granted hereby, LICENSEE acknowledges and shall
      comply with all aspects of the Federal Patent Policy applicable to the PATENT
      RIGHTS, including the obligation that LICENSED PRODUCTS used or sold in the
      United States be manufactured substantially in the United States.

     

    2.6 The
      LICENSE granted in Article 2 shall automatically convert to a paid-up,
      non-exclusive license, on a country-by-country basis, upon the expiration of
      the
      TERM.

    


    ARTICLE
      3 – LICENSE FEES MILESTONE PAYMENTS and ROYALTIES

    


    3.1 LICENSEE
      shall pay LICENSOR a one-time license issue fee of two hundred fifty
      thousand dollars ($250,000). Subject only to a material, noncurable breach
      of the representations and warranties of the LICEONSOR contained in Section
      15.2, such license issue fee shall be nonrefundable and deemed earned and due
      immediately upon the EFFECTIVE DATE. 

    


    3.2 LICENSEE
      shall make the following one-time payments (the “MILESTONE PAYMENTS”) to
      LICENSOR upon the successful accomplishment of the milestones described
      below:

    


    (a)
      [***]
      dollars ($[***]) upon the dosing of the first subject in the first PHASE I
      CLINICAL TRIAL of a LICENSED PRODUCT in the United States conducted by the
      LICENSEE pursuant to a corporate sponsored IND;

    


    (b)
      [***]
      dollars ($[***]) upon the dosing of the first patient in the first PHASE II
      CLINICAL TRIAL of a LICENSED PRODUCT conducted by the LICENSEE in the United
      States;

    


    (c)
      [***]
      dollars ($[***]) upon the dosing of the first patient in the first PHASE III
      CLINICAL TRIAL of a LICENSED PRODUCT conducted by the LICENSEE in the United
      States;

    


    (d)
      [***]
      dollars ($[***]) upon the FIRST SALE of a LICENSED
      PRODUCT
      by the
      LICENSEE, its AFFILIATES or SUBLICENSEE in the United States;

    


    (e)
      [***]
      dollars ($[***]) upon FIRST SALE of a LICENSED
      PRODUCT
      by the
      LICENSEE, its AFFILIATES or SUBLICENSEE in the first country in the European
      Union;

    


    (f)
      [***]
      dollars ($[***]) upon the FIRST SALE of a LICENSED
      PRODUCT
      by the
      LICENSEE, its AFFILIATES or SUBLICENSEE in Japan; and

    


    (g) One
      million dollars ($1,000,000) upon the FIRST SALE of a LICENSED
      PRODUCT
      for the
      Second Field by the LICENSEE, its AFFILIATES or SUBLICENSEE.

    


    3.3 Except
      for MILESTONE PAYMENTS described in Section 3.2(d)-(g), MILESTONE PAYMENTS
      shall
      be non-refundable and non-creditable against EARNED ROYALTIES (as defined in
      Section 3.4 below). Notwithstanding the foregoing, MILESTONE PAYMENTS described
      in Section 3.2(d)-(f) shall be fully creditable against EARNED
      ROYALTIES.

     

    
      
        
        

      

      
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    3.4 Subject
      to the terms of this Section 3, during the TERM of this Agreement, as partial
      consideration for the LICENSE, LICENSEE shall pay to LICENSOR an earned royalty
      on worldwide cumulative NET SALES of LICENSED PRODUCTS and LICENSED PROCESSES
      by
      LICENSEE, its AFFILIATES or SUBLICENSEES (“EARNED ROYALTIES”) equal to [***]
      percent ([***]%) of NET SALES by LICENSEE its AFFILIATES or SUBLICENSEES until
      the term of the PATENT RIGHTS expires or until this Agreement is
      terminated.

    


    3.5 Following
      the FIRST SALE, LICENSEE shall pay LICENSOR the following minimum annual
      royalties:

    


    (a) [***]
      dollars ($[***]) per year until the third anniversary of the FIRST SALE of
      a
LICENSED
      PRODUCT;
      and
      thereafter

    


    (b)
       [***]
      dollars ($[***]) per year.

     

    Such
      minimum annual royalty shall be deemed earned and accrued as of January 1 of
      each calendar year after the effective date of this Agreement and shall be
      due
      no later than January 31 of each year. The minimum annual royalty payment shall
      be credited against running royalties for the corresponding calendar year,
      and
      the quarterly reports under Section 6.3 shall reflect such credit. The minimum
      annual royalty payments shall not be creditable against milestone payments
      (if
      any) or against royalty payments due for any other calendar year. 

    


    3.6 LICENSOR
      shall be responsible for the payment of all taxes, duties, levies, and other
      charges, including, but not limited to, sales, use, gross receipts, excise,
      VAT,
      and any other taxes, any withholdings or deductions, import and custom taxes,
      any duties, or any other charges imposed by any taxing authority with respect
      to
      the royalties payable to LICENSOR under this agreement. Should LICENSEE be
      required under any law or regulation of any government entity or authority,
      domestic or foreign, to withhold or deduct any portion of the payments on
      royalties due to LICENSOR, then the sum payable to LICENSOR shall be increased
      by the amount necessary to yield to LICENSOR an amount equal to the sum it
      would
      have received had no withholdings or deductions been made. LICENSOR shall
      cooperate with LICENSEE in the event LICENSEE elects to assert, at its own
      expense, LICENSOR’s exemption from any such tax or deduction.

    


    3.7 In
      the
      event that LICENSEE’S outside patent counsel together with LICENSOR’S patent
      counsel agree (which discussion and agreement shall be in good faith) that
      patent licenses from third parties are reasonably required by LICENSEE, its
      AFFILIATES or its SUBLICENSEE to make, use, offer for sale, sell or import
      any
      LICENSED PRODUCT in any given country, LICENSOR and LICENSEE shall negotiate
      in
      good faith with the intention of reaching a fair and equitable formula on how
      any amount paid by LICENSEE to such third parties shall impact the royalties
      due
      hereunder.

    


    3.8 No
      multiple royalties shall be payable because the use, lease or sale of any
      LICENSED PRODUCT is, or shall be, covered by more than one VALID CLAIM contained
      in the PATENT RIGHTS.

     

    
      
        
        

      

      
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    3.9 In
      the
      event that a LICENSED PRODUCT is sold in the form of a combination package
      together with companion products that are not themselves a LICESED PRODUCT,
      the
      NET SALES for such combination package upon which the sales royalties due to
      LICENSOR is based shall be calculated by multiplying the total sales price
      of
      such combination package by the fraction A/(A+B), where A is the invoice price
      of the LICENSED PRODUCT if sold separately, and B is the total invoice price
      of
      each of the other companion products included in the combination package if
      sold
      separately. In no event shall such deduction in the overall sales royalty rate
      due to LICENSOR be reduced by more than [***] percent ([***]%).

    


    3.10 Royalty
      payments shall be paid in United States dollars in Columbus, Ohio, or at such
      other place as LICENSOR may reasonably designate consistent with the laws and
      regulations controlling in any foreign country. If any currency conversion
      is
      required in connection with the payment of royalties, such conversion shall
      be
      made by using the exchange rate as published as of the last business day of
      the
      applicable calendar quarter in the eastern edition of The Wall Street
      Journal.

    


    3.11 Royalty
      payments shall be made on a quarterly basis with submission of the reports
      required by Article 6, except any minimum annual royalty payment, which shall
      be
      due as provided in Section 3.5. Such payments and reports shall be due within
      thirty (30) days of March 31, June 30, September 30, and December 31 of each
      calendar year. Late payments, including payments due for patent cost
      reimbursement, shall be subject to a charge of one and [***] percent ([***]%)
      per month or $[***], whichever is greater. The payment of such late charge
      shall
      not foreclose LICENSOR from exercising any other rights it may have resulting
      from any late payment.


    


    ARTICLE
      4 –
      SUBLICENSES

    


    4.1 LICENSEE
      has the right to enter into sublicensing agreements with third-parties. LICENSEE
      agrees that any sublicense granted by it shall provide that the obligations
      to
      LICENSOR of Articles 2, 6, 8, 9, 10, 13 and 16 of this Agreement shall be
      binding upon the SUBLICENSEE as if it were a party to this Agreement. LICENSEE
      further agrees to attach copies of these Articles to sublicense
      agreements.

    


    4.2 LICENSEE
      shall forward to LICENSOR copies of all sublicense agreements promptly upon
      execution by the parties.

    


    4.3 In
      addition to royalties provided under Section 3.3, for any sublicenses granted
      by
      LICENSEE hereunder, LICENSEE will pay to LICENSOR a percentage of any SUBLICENSE
      FEES as follows:

    

      
        	
                YEARS FROM EFFECTIVE DATE

              	 	
                PERCENT OF SUBLICENSE FEES

              
	 	 	 
	
                Less
                  than [***]

              	 	
                [***]%

              
	 	 	 
	
                Year
                  [***] to Year [***]

              	 	
                [***]%

              
	 	 	 
	
                Thereafter

              	 	
                [***]%

              


      

    

     

    
      
        
        

      

      
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    4.4 If
      and to
      the extent LICENSEE enters into a sublicense agreement that could result in
      the
      payment of a SUBLICENSEE FEE other than cash, LICENSEE shall notify LICENSOR
      of
      any such provision in the sublicense agreement at the time of its delivery
      under
      Section 4.2 above, and with respect thereto, if LICENSOR is prohibited by
      applicable law from accepting the form of consideration LICENSEE has agreed
      to
      accept under such sublicense agreement, then LICENSEE shall be obligated to
      satisfy its obligation to LICENSOR under Section 4.3 in such form of
      consideration as LICENSOR is permitted by applicable law to accept, provided
      however that in any such event the fair market value of any such substituted
      consideration shall be at least equal to the fair market value of the form
      of
      consideration LICENSOR is unable to accept.

    


    4.5 Provided
      that a SUBLICENSEE agrees to assume all of the obligations of the LICENSEE
      under
      this Agreement, such SUBLICENSE shall survive the termination of this Agreement
      in accordance with Section 13.

    


    ARTICLE
      5 - DUE DILIGENCE

    


    5.1 LICENSEE
      shall use COMMERCIALLY REASONABLE EFFORTS to bring one or more LICENSED PRODUCTS
      or LICENSED PROCESSES to market through a thorough, vigorous and diligent
      program for exploiting the PATENT RIGHTS and following FIRST SALE of a LICENSED
      PRODUCT, to continue active, diligent marketing efforts for one or more LICENSED
      PRODUCTS or LICENSED PROCESSES throughout the life of this
      Agreement.

    


    5.2 As
      part
      of these efforts, LICENSEE agrees on its own behalf and on behalf of its
      AFFILIATES and SUBLICENSEES to achieve the following commercialization and
      research and development milestones for the LICENSED PRODUCTS and LICENSED
      PROCESSES:

    


    (a) File
      an
      IND following completion of necessary non-clinical studies (i.e., acute and
      chronic toxicity, etc.);

    


    (b) Upon
      IND
      filing, LICENSEE,
      its’
SUBLICENSEES, or their AFFILIATES,
      shall
      demonstrate ongoing engagement of clinical development for LICENSED
      PRODUCTS,
      which
      shall be evidenced by conducting at least one of the following activities in
      any
      given year starting from the date of IND filing:

    


    (i) having
      expended at least [***] dollars ($[***]) for development of LICENSED
      PRODUCTS;

    


    (ii) having
      manufactured LICENSED
      PRODUCTS
      suitable
      for clinical trials under an approved IND;

    


    (iii) having
      actively engaged in study preparation, implementation, or reporting of a
PHASE
      I,
      II, OR III CLINICAL TRIAL
      with
      respect to a LICENSED
      PRODUCT
      or the
      construction of regulatory documents for filing; 

    


    (iv) having
      responded to regulatory requests/issues relating to a PHASE
      I,
      II, OR III CLINICAL TRIAL
      of a
LICENSED
      PRODUCT;

    


    (v) having
      prepared documents for NDA filing with respect to a LICENSED
      PRODUCTS;

     

    
      
        
        

      

      
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    (vi) having
      filed an NDA for a LICENSED
      PRODUCT;

    


    (vii) following
      NDA filing, having actively pursued NDA approval for a LICENSED
      PRODUCT;
      or

    


    (viii) following
      NDA approval of a LICENSED
      PRODUCT,
      having
      launched or sold a LICENSED
      PRODUCT
      in the
      United States or another major market country.

    


    5.3 Failure
      to perform the development activities described in Section 5.2 above shall
      be
      considered a breach of the LICENSE
      unless
      such failure is through no fault of the LICENSEE,
      including without limitation, a change in regulatory guidelines, opinions or
      standards; the introduction of a new standard of care during the development
      of
LICENSED
      PRODUCTS
      which
      affects the development strategy for LICENSED
      PRODUCTS;
      or
      unexpected findings (safety or efficacy) in clinical studies, that delays
      clinical development. In such an instance, the parties shall amend the timelines
      accordingly. The LICENSOR shall provide LICENSEE with written notice of any
      alleged breach of the LICENSE pursuant to this Article 5.3 in accordance with
      Article 13.2.

    


    5.4 LICENSEE
      will
      initially devote its efforts to the clinical development of LICENSED
      PRODUCTS
      in the
      treatment of cancer, but shall agree to conduct a research and development
      program relating to the use of LICENSED
      PRODUCTS
      in the
      Second Field as soon as commercially practicable and shall thereafter continue
      to diligently pursue research, development and commercialization in this
      additional indication until FIRST SALE is achieved. 

    


    ARTICLE
      6 - REPORTS AND RECORDS

    


    6.1 LICENSEE
      shall keep full, true and accurate books of account containing all particulars
      necessary to show the amounts payable to LICENSOR. The books of account shall
      be
      kept at LICENSEE's principal place of business or the principal place of
      business of the appropriate division of LICENSEE to which this Agreement
      relates. The books and supporting data shall be open at all reasonable times
      for
      five (5) years following the end of the calendar year to which they pertain,
      for
      inspection by LICENSOR or its agents to verify LICENSEE's royalty statement
      or
      compliance in other respects with this Agreement. Should such inspection lead
      to
      the discovery of discrepancy in reporting which is greater than [***] percent
      ([***]%) to LICENSOR's detriment, LICENSEE agrees to pay the full cost of such
      inspection.

    


    6.2 LICENSEE
      shall provide to LICENSOR a written annual report on or before September
      1st
      of each
      calendar year. The annual report shall include: reports of progress on research
      and development, regulatory approvals, manufacturing, sublicensing, marketing
      and sales during the preceding twelve (12) months, and plans for the coming
      year.

    


    6.3 After
      the
      FIRST SALE of a LICENSED PRODUCT or LICENSED PROCESS, LICENSEE shall provide
      quarterly reports to LICENSOR. The quarterly reports shall be delivered within
      thirty (30) days after March 31, June 30, September 30, and December 31 of
      each
      year. The quarterly reports shall give particulars of the business conducted
      by
      LICENSEE and its SUBLICENSEES during the preceding quarter that are pertinent
      to
      a royalty accounting, including:

     

    
      	 	
              (a)

            	
              number
                of LICENSED PRODUCTS manufactured and sold by LICENSEE and all
                SUBLICENSEES and AFFILIATES;

            


    

     

    
      
        
        

      

      
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              (b)

            	
              total
                billings for LICENSED PRODUCTS sold by LICENSEE and all SUBLICENSEES
                and
                AFFILIATES;

            


    

     

    
      	 	
              (c)

            	
              accounting
                for all LICENSED PROCESSES used or sold by LICENSEE and all SUBLICENSEES
                and AFFILIATES:

            


    

     

    
      	 	
              (d)

            	
              deductions
                applicable as provided in Paragraph
                1.18;

            


    

     

    
      	 	
              (e)

            	
              royalties
                due on additional payments from SUBLICENSEES under Paragraph
                3.1.d;

            


    

     

    
      	 	
              (f)

            	
              any
                minimum annual royalty payment credits applicable against running
                royalties;

            


    

     

    
      	 	
              (g)

            	
              total
                royalties due; and

            


    

     

    
      	 	
              (h)

            	
              names
                and addresses of all SUBLICENSEES.

            


    

    


    6.4 On
      or
      before 90 days following the close of LICENSEE's fiscal year, LICENSEE shall
      provide LICENSOR with LICENSEE's certified financial statements for the
      preceding fiscal year including, at a minimum, a Balance Sheet and an Operating
      Statement. 


    


    ARTICLE
      7 - PATENT PROSECUTION

    


    7.1 LICENSEE
      shall be responsible for all past, present and future costs of filing,
      prosecution and maintenance of any and all United States and foreign patent
      applications and patents contained in the PATENT RIGHTS. All undisputed expenses
      relating to such patent prosecution shall be due and payable within thirty
      (30)
      days of receipt of invoice from LICENSOR for such expenses. Any and all such
      United States and foreign patent applications, and resulting issued patents,
      shall remain the property of the LICENSOR unless LICENSEE has an ownership
      interest or acquires an ownership interest in such applications and
      patents. 

    


    7.2 The
      costs
      described in Article 7.1 shall include, but are not limited to, any past,
      present and future taxes, government fees, patent attorney fees, annuities,
      working fees, maintenance fees, renewal and extension charges. Payment of such
      costs shall be made by reimbursement to the LICENSOR.

    


    7.3 All
      new
      and existing patent applications under the LICENSED PATENTS shall be prepared,
      prosecuted, filed and maintained by patent counsel selected by LICENSEE and
      which is reasonably acceptable to the LICENSOR. LICENSEE shall be responsible
      for directing prosecution. With respect to any LICENSED PATENTS, LICENSEE and
      patent counsel shall:

    


    (a) consult
      with the LICENSOR and keep the LICENSOR fully informed of the progress of all
      patent applications and patents, including all issues relating to the
      preparation, filing, prosecution and maintenance of PATENTRIGHTS;

    


    (b) consult
      with the LICENSOR and keep the LICENSOR fully informed about LICENSEE’s patent
      strategy with respect to the PATENT RIGHTS;

     

    
      
        
        

      

      
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    (c) provide
      to the LICENSOR advance copies of documents relevant to preparation, filing,
      prosecution and maintenance of the PATENT RIGHTS sufficiently in advance of
      filing to allow the LICENSOR a reasonable opportunity to review and comment
      on
      such documents; and 

    


    (d) provide
      the LICENSOR with final copies of such documents. LICENSEE agrees to use
      COMMERCIALLY REASONABLE EFFORTS to obtain broad and strong patent protection
      in
      the best interest of the LICENSOR and LICENSEE. LICENSEE will not finally
      abandon any patent application, or make decisions that would have a material
      impact on the nature or scope of any claims without the LICENSOR’ consent.


    


    7.4 LICENSEE
      shall apply, and shall require SUBLICENSEES to apply, the patent marking notices
      required by the law of any country where such LICENSED PRODUCTS are made, sold,
      used or shipped, including, but not limited to, the applicable patent laws
      of
      that country.

    


    ARTICLE
      8 - INFRINGEMENT

    


    8.1 LICENSEE
      or its SUBLICENSEE(s) has the right to prosecute in their own name and at their
      own expense any infringement of the PATENT RIGHTS, so long as the license is
      exclusive when the legal action is commenced. LICENSOR agrees to notify LICENSEE
      promptly of each infringement of the PATENT RIGHTS of which LICENSOR becomes
      aware. Before LICENSEE or its SUBLICENSEES commences an action for infringement,
      LICENSEE or SUBLICENSEE shall notify LICENSOR and carefully consider the views
      of LICENSOR and the public interest.

    


    8.2 LICENSOR
      agrees to join, subject to the approval of the Ohio Attorney General, as a
      party
      plaintiff in any lawsuit initiated by LICENSEE, if requested by LICENSEE, with
      all costs, attorney fees and expenses to be paid by LICENSEE. 

    


    8.3 If
      LICENSEE undertakes to enforce and/or defend the PATENT RIGHTS by litigation,
      LICENSEE may withhold up to [***] percent ([***]%) of the payments otherwise
      thereafter due during the course of such litigation to LICENSOR under Article
      3.
      LICENSEE may apply the amounts withheld to reimburse up to half of LICENSEE's
      litigation expenses, including reasonable attorneys’ fees. If LICENSEE recovers
      damages in the patent litigation, the award shall be applied first to satisfy
      LICENSOR’s and LICENSEE’S unreimbursed expenses and legal fees for the
      litigation, and next to reimburse LICENSOR for any payments under Article 3
      which are past due or were withheld pursuant to this Article 8. The remaining
      balance shall be shared in accordance with the percentages described in Section
      4.3, except for such amounts attributable for lost sales which amounts shall
      be
      paid in accordance with earned royalties described in Section 3.3. 

    


    8.4 No
      settlement, consent judgment or other voluntary final disposition of the suit
      may be entered into without LICENSOR’s consent, which shall not be unreasonably
      withheld.

    


    8.5 If
      LICENSEE and its SUBLICENSEE(s) elect not to exercise their right to prosecute
      or defend an infringement of the PATENT RIGHTS, LICENSOR may do so at its own
      expense, controlling such action and retaining all recoveries.

    


    8.6 If
      a
      declaratory judgment action alleging invalidity of any of the PATENT RIGHTS
      is
      brought against LICENSEE or LICENSOR, then LICENSOR, at its sole option, has
      the
      right to intervene and take over the defense of the action at its own
      expense.

     

    
      
        
        

      

      
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    ARTICLE
      9 - PRODUCT LIABILITY

    


    9.1 LICENSEE
      shall at all times during the term of this Agreement and thereafter, indemnify,
      defend and hold LICENSOR, its trustees, directors, officers, employees and
      affiliates, (collectively, the “Indemnitees”) harmless against all claims,
      proceedings, demands and liabilities of any kind whatsoever, including legal
      expenses and reasonable attorneys' fees, arising out of the death of or injury
      to any person or persons or out of any damage to property, or resulting from
      the
      production, manufacture, sale, use, lease, consumption or advertisement of
      the
      LICENSED PRODUCT(s) and/or LICENSED PROCESS(es) or arising from any obligation
      of LICENSEE under this Agreement, except claims that the PATENT RIGHTS infringe
      third party intellectual property and those arising out of the gross negligence
      or willful misconduct of LICENSOR, breach of warranty by LICENSOR, or breach
      of
      Article 10 by LICENSOR.

    


    9.2 LICENSEE
      shall purchase and maintain in effect and shall require its SUBLICENSEES to
      purchase and maintain in effect a policy of commercial, general liability
      insurance to protect the LICENSOR with respect to events described in Section
      9.1. Such insurance shall:

    


    (a) list
      LICENSOR as an additional insured under the policy;

    


    (b) provide
      that such policy is primary and not excess or contributory with regard to other
      insurance the LICENSOR may have;

     

    (c) be
      endorsed to include product liability coverage in amounts no less than [***]
      dollars ($[***]) per incident and [***] dollars ($[***]) annual aggregate;
      and

    


    (d) be
      endorsed to include contractual liability coverage for LICENSEE’S
      indemnification under Section 9.1;

    


    (e) by
      virtue
      of the minimum amount of insurance coverage required under Section 9.2(c),
      not
      be construed to create a limit of LICENSEE’S liability with respect to its
      indemnification under Section 9.1.

    


    (f) maintain
      such commercial general liability insurance beyond the expiration or termination
      of this Agreement during (i) the period that any product, process, or service
      relating to, or developed pursuant to, this Agreement is being commercially
      distributed or sold by LICENSEE or a SUBLICENSEE or agent of LICENSEE and (ii)
      a
      reasonable period thereafter the period referred to Paragraph 9.2.d.i above
      which in no event shall be less than ten (10) years

    


    9.3 By
      signing this Agreement, LICENSEE certifies that the requirements of Section
      9.2
      will be met on or before the earlier of (a) the date of FIRST SALE of any
      LICENSED PRODUCT or (b) the date any LICENSED PRODUCT is tested or used on
      humans, and will continue to be met thereafter. Upon LICENSOR’s request,
      LICENSEE shall furnish a Certificate of Insurance and a copy of the current
      Insurance Policy to the LICENSOR. LICENSEE shall give thirty (30) days’ written
      notice to LICENSOR prior to any cancellation of or material change to the
      policy.

     

    
      
        
        

      

      
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    9.4 EXCEPT
      AS
      OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, LICENSOR, ITS TRUSTEES,
      DIRECTORS, OFFICERS, EMPLOYEES, AND AFFILIATES MAKE NO REPRESENTATIONS AND
      EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT
      NOT
      LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
      VALIDITY OF PATENT RIGHTS CLAIMS ISSUED OR PENDING, AND THE ABSENCE OF LATENT
      OR
      OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE. NOTHING IN THIS AGREEMENT SHALL
      BE
      CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY LICENSOR THAT THE
      PRACTICE BY LICENSEE OF THE LICENSE GRANTED SHALL NOT INFRINGE THE PATENT RIGHTS
      OF ANY THIRD PARTY. LICENSOR, ITS TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES
      AND
      AFFILIATES SHALL NOT BE LIABLE FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY
      KIND, INCLUDING ECONOMIC DAMAGE OR INJURY TO PROPERTY AND LOST PROFITS,
      REGARDLESS OF WHETHER LICENSOR IS ADVISED, HAS OTHER REASON TO KNOW, OR IN
      FACT
      DOES KNOW OF THE POSSIBILITY.

    


    ARTICLE
      10 –
      CONFIDENTIALITY

    


    10.1 During
      the course of this Agreement, LICENSOR and LICENSEE may provide each other
      with
      CONFIDENTIAL INFORMATION. All CONFIDENTIAL INFORMATION shall be designated
      in
      writing as such by the discloser. LICENSOR and LICENSEE each intend to maintain
      the confidential status of their CONFIDENTIAL INFORMATION. Each shall exercise
      reasonable care to protect the CONFIDENTIAL INFORMATION from disclosure to
      third
      parties; no such disclosure shall be made without the other’s written
      permission. Upon termination or expiration of this Agreement, LICENSOR and/or
      LICENSEE shall comply with the other’s written request to discontinue using
      and/or return all CONFIDENTIAL INFORMATION. This Article 10 shall continue
      for a
      period of five (5) years following the termination or expiration of this
      Agreement.

    


    ARTICLE
      11 – PUBLICATION 

     

    11.1 In
      the
      event that LICENSOR or the INVENTORS desires to publish or disclose, by written,
      oral or other presentation, any material information related to the INVENTION,
      the PATENT RIGHTS, or any LICENSED PRODUCT or LICENSED PROCESS, or results
      relating to the clinical or non-clinical testing of any of the foregoing,
      LICENSOR shall notify LICENSEE in writing of their intention no less
      than
      60 days
      prior to any speech, lecture or other oral presentation,
      or any
      written or other publication or disclosure and cooperate fully with LICENSEE
      to
      file any patent applications related to subject matter of the disclosure prior
      to the disclosure. 

    


    11.2 LICENSOR
      shall include with any such notice pursuant to Section 11.1 a description of
      any
      proposed oral presentation or, in any proposed written or other disclosure,
      a
      current draft of such proposed disclosure or abstract. 

    


    11.3 LICENSEE
      may request that LICENSOR, no later than 30 days following the receipt of such
      notice, delay such publication or disclosure in order to enable LICENSEE to
      file, or have filed on its behalf, a patent application, copyright or other
      appropriate form of intellectual property protection related to the information
      to be disclosed. Upon receipt of such notice, LICENSOR shall arrange for a
      delay
      in publication or disclosure until such time as LICENSEE has filed on LICENSOR’s
      name and behalf such patent application, copyright or other appropriate form
      of
      intellectual property protection that LICENSEE agrees to file as soon as is
      reasonably practicable provided, however that said deferral shall not exceed
      60
      days from the receipt of such notice. 

     

    11.4 If
      LICENSOR does not receive any request to delay publication or disclosure
      pursuant to Section 11.3, LICENSOR may submit such material for publication
      or
      presentation or make such other publication or disclosure.

     

    
      
        
        

      

      
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    ARICLE
      12 – USE OF NAME

    


    Each
      party shall obtain the prior written approval of the other prior to making
      use
      of the name of the other party nor any variation or adaptation thereof for
      any
      commercial purpose, except as required to comply with law, regulation or court
      order.

    


    ARICLE
      13 - TERMINATION

    


    13.1 LICENSOR
      shall have the right to terminate this Agreement pursuant to the provisions
      below, provided that LICENSOR has given LICENSEE the notice required in
      accordance with Section 13.2 and LICENSEE has failed to cure the breach
      described in such notice: 

     

    (a) breach
      by
      LICENSEE of a material term of the Agreement;

     

    (b) the
      institution of any proceeding by LICENSEE under any bankruptcy, insolvency,
      or
      moratorium law; 

     

    (c) any
      assignment by LICENSEE of substantially all of its assets for the benefit of
      creditors; 

     

    (d) placement
      of LICENSEE’s assets in the hands of a trustee or a receiver unless the
      receivership or trust is dissolved within 30 days thereafter and provided that
      in the case of an involuntary bankruptcy proceeding, which is contested by
      LICENSEE, such termination shall not become effective until the bankruptcy
      court
      of jurisdiction has entered an order upholding the petition; or

     

    (f)
      a
      decision by LICENSEE or LICENSEE’s licensee or assignee of rights under this
      Agreement to quit the business of developing or selling LICENSED PRODUCTS.
      

     

    13.2 LICENSOR
      may exercise its rights pursuant to Section 13.1 above by giving LICENSEE ninety
      (90) days' prior written notice (the “Written Notice”) of LICENSOR's intention
      to terminate. Such notice shall include the basis for such termination. Upon
      the
      expiration of such period, LICENSOR shall provide written notice of termination
      to LICENSEE (the “Termination Notice”), effective upon receipt, unless LICENSEE
      has cured the material breach or the other basis for such proposed termination
      during such ninety (90) day period. Such notice and termination shall not
      prejudice LICENSOR's right to receive Earned Royalties accrued prior to
      termination, or other sums due hereunder and shall not prejudice any cause
      of
      action or claim of LICENSOR accrued or to accrue on account of any breach or
      default by LICENSEE. 

    


    13.3 LICENSEE
      shall have the right to terminate this Agreement pursuant to the provisions
      below, provided that LICENSEE has given LICENSOR the notice required in
      accordance with Section 13.4:

    


    (a) LICENSEE
      may terminate this Agreement upon breach by LICENSOR of a material term of
      the
      Agreement; or

     

    
      
        
        

      

      
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    (b) LICENSEE
      may terminate this Agreement at any time upon written notice of termination
      given to LICENSOR at least ninety (90) days prior to the date of such
      termination and upon:

     

    
      	 	
              (i)

            	
              the
                payment of all amounts due LICENSOR through the effective date of
                the
                termination;

            


    

     

    
      	 	
              (ii)

            	
              submission
                of a final report of the type described in Paragraph
                6.3;

            


    

     

    
      	 	
              (iii)

            	
              suspension
                of LICENSEE’s use of the LICENSED PROCESS(ES) and LICENSED PRODUCT(S)
                (subject to Paragraph 13.5 below);

            


    

     

    13.4 LICENSEE
      may exercise its right of termination pursuant to Section 13.3(a), by giving
      LICENSOR 90 days prior written notice of LICENSEE’s intent to terminate setting
      forth the basis of such termination. Upon the expiration of the 90 day period,
      LICENSEE shall provide written notice of termination to LICENSOR, effective
      upon
      receipt, unless LICENSOR has cured the breach or the other basis for such
      proposed termination during such 90 day period. Such notice of termination
      shall
      not prejudice any cause of action or claim of LICENSEE accrued or to accrue
      on
      account of any breach or default by LICENSOR.

    


    13.5 If
      LICENSEE has filed patent applications or obtained patents to any modification
      or improvement to LICENSED PRODUCTS or PROCESSES within the scope of the PATENT
      RIGHTS, LICENSEE agrees upon request to enter into good faith negotiations
      with
      LICENSOR or its future licensee(s) for the purpose of granting licensing rights
      to said modifications or improvements in timely fashion and under commercially
      reasonable terms.

     

    13.6 Termination
      of this Agreement shall not release LICENSOR and LICENSEE from any obligation
      that matured prior to the effective date of such termination. Articles 1, 9,
      10,
      13 and 16 shall survive termination. LICENSEE and any SUBLICENSEE may, however,
      after the effective date of such termination, complete and sell LICENSED
      PRODUCTS in the process of manufacture and sell all LICENSED PRODUCTS already
      in
      existence at the time of termination, if LICENSEE pays LICENSOR as required
      by
      Article 3 and submits the reports required by Article 6 of this
      Agreement.

    


    13.7 The
      failure of either Party, at any time, or for any period of time, to enforce
      any
      of the provisions of this Agreement, shall not be construed as a waiver of
      such
      provisions or as a waiver of the right of either Party’s thereafter to enforce
      each and every such provision of this Agreement.

     

    ARTICLE
      14 - PAYMENTS, NOTICES, AND OTHER COMMUNICATIONS

    


    14.1 Any
      payment, notice or other communication required by this Agreement shall be
      sufficiently made or given on the date of mailing if sent by recognized express
      carrier or certified first class mail, postage prepaid, addressed to LICENSOR
      or
      LICENSEE at its address below or as it designates by written notice to the
      other.

    
       

      
        
          	
                  For
                    LICENSOR:

                	
                  Technology
                    Licensing & Commercialization

                
	 	
                  The
                    Ohio State University

                
	 	
                  1960
                    Kenny Road

                
	 	
                  Columbus,
                    OH 43210-1063

                
	 	
                  (614)
                    292-1315; FAX (614) 292-8907

                
	 	 


        

         

      

    

    
      
        
        

      

      
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                For
                  LICENSEE:

              	
                Arno
                  Therapeutics, Inc.

              
	 	
                President

              
	 	
                30
                  Two Bridges Rd., Suite 270

              
	 	
                Fairfield,
                  NJ 07004

              
	 	
                Tel:
                  (862) 703-7170

              
	 	
                Fax:
                  (973) 227-5759

              


      

    

    


    ARTICLE
      15 - REPRESENTATIONS AND WARRANTIES

    


    15.1 LICENSEE
      represents and warrants to LICENSOR that:

    


    (a) LICENSEE
      is a duly organized and validly existing corporation under the laws of the
      State
      of Delaware with adequate power and authority to conduct the business in which
      it is now engaged or currently proposed to be engaged, and LICENSEE is duly
      qualified to do business as a foreign corporation and is in good standing in
      such other states or jurisdictions as is necessary to enable it to carry on
      its
      business or own its properties.

    


    (b) To
      the
      best of LICENSEE’s knowledge, there are no actions, suits, or proceedings
      pending or threatened against or affecting LICENSEE, its officers or directors
      in their capacity as such, its properties, or its patents in any court or before
      any governmental or administrative agency, which can have any material adverse
      effect on the business as now conducted or as currently proposed to be
      conducted, on the properties, the financial condition, or income of LICENSEE,
      or
      the transactions contemplated by this Agreement and LICENSEE is not in default
      under any order or judgment of any court or governmental or administrative
      agency.

    


    (c) Consummation
      of the transactions contemplated by this Agreement in compliance with provisions
      of this Agreement will not result in any breach of any of the terms, conditions,
      or provisions of, or constitute a default under, or result in the creation
      of
      any lien, charge, or encumbrance on, any property or assets of LICENSEE pursuant
      to any indenture, mortgage, deed of trust, agreement, corporate charter, bylaws,
      contract, or other instrument to which LICENSEE is a party or by which Licensee
      may be bound or any law, rule, regulation, qualification, license, order or
      judgment applicable to Licensee or any of its property. 

    


    15.2 LICENSOR
      represents and warrants to LICENSEE that as of the EFFECTIVE DATE:

    


    (a) LICENSOR
      has the full right and power to perform the obligations and grant the LICENSE
      set forth in this Agreement;

    


    (b) there
      are
      no outstanding agreements, assignments or encumbrances in existence inconsistent
      with the provisions of this Agreement;

    


    (c) except
      as
      listed in Schedule 15.2(c), LICENSOR has not authorized in any manner any Third
      Party to practice the PATENT RIGHTS;

    


    (d) except
      as
      required pursuant to Section 2.5, LICENSOR owns or possesses all right, title,
      and interest in and to the PATENT RIGHTS, including exclusive, irrevocable
      right, title and interest thereto, free and clear of all liens, charges,
      encumbrances or other restrictions or limitations of any kind whatsoever;


     

    
      
        
        

      

      
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    (e) there
      are
      no licenses, options, restrictions, liens, rights of third parties, disputes,
      proceedings or claims relating to, affecting, or limiting its rights or the
      rights of LICENSEE under this Agreement with respect to, or which (i) may lead
      to a claim of infringement or invalidity regarding, any part or all of the
      PATENT RIGHTS and their use as contemplated in the underlying patent
      applications as presently drafted or (ii) imposes obligations upon LICENSOR
      or
      gives any rights to LICENSOR which, in either case, would adversely affect
      the
      rights of LICENSEE or the obligations of LICENSOR under this Agreement;


    


    (f) except
      as
      listed in Schedule 15.2(f) and to the best of LICENSOR’s knowledge and belief
      there is no claim, pending or threatened, of infringement, interference or
      invalidity regarding, any part or all of the PATENT RIGHTS and their use as
      contemplated in the underlying patent applications as presently drafted or
      as
      contemplated under this Agreement; 

    


    (g) except
      as
      listed in Schedule 15.2(g), Appendix
      A
      lists
      all patents issued and patent applications filed on or before the Effective
      Date
      of this Agreement within the scope of the PATENT RIGHTS and therefore subject
      to
      this Agreement and all of the inventors named in the patents and patent
      applications listed in Appendix
      A
      have
      assigned, or are under an obligation to assign, to LICENSOR all of their right,
      title an interest in the inventions claimed.

    


    ARTICLE
      16 -
      MISCELLANEOUS PROVISIONS

    


    16.1 This
      Agreement shall be construed, governed, interpreted and applied according to
      Ohio law, except that questions affecting the construction and effect of any
      patent shall be determined by the law of the country in which the patent was
      granted. LICENSOR and LICENSEE shall initially attempt in good faith to resolve
      any significant controversy, claim, or dispute arising out of or relating to
      this Agreement or significant breach thereof (hereinafter referred to as a
      “Dispute”) through at least one face-to-face negotiations between the Parties at
      a mutually convenient place. If the Dispute is not resolved within thirty (30)
      business days (or such other period of time mutually agreed upon by the parties)
      of commencing such face-to-face negotiations, or if no such face-to-face meeting
      occurs within thirty (30) business days from the date of notice of a Dispute,
      then the Parties agree that the Dispute shall be submitted to a binding
      arbitration in accordance with the rules of the American Arbitration
      Association. Venue of arbitration shall be in Columbus, Ohio.

     

    16.2 LICENSOR
      and LICENSEE acknowledge that this Agreement sets forth their entire
      understanding concerning the subject matter of this Agreement, and no
      modification of the Agreement will be effective unless both LICENSOR and
      LICENSEE agree to it in writing.

    


    16.3 The
      provisions of this Agreement are severable. If any provisions of this Agreement
      are determined invalid or unenforceable under any controlling body of law,
      such
      invalidity or unenforceability shall not affect the validity or enforceability
      of the remaining provisions.

    


    16.4 LICENSEE
      agrees to mark the LICENSED PRODUCTS sold in the United States with all
      applicable United States patent numbers. All LICENSED PRODUCTS shipped to or
      sold in other countries shall be marked to comply with the patent laws and
      practice of the country of manufacture or sale.

     

    
      
        
        

      

      
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    16.5 The
      failure of either LICENSOR or LICENSEE to assert a right or insist upon
      compliance with any term or condition of this Agreement shall not constitute
      a
      waiver of that right or excuse a similar subsequent failure to perform any
      such
      term or condition by the other.

    


    16.6 LICENSEE
      agrees to comply with all applicable laws and regulations. In particular,
      LICENSEE understands and acknowledges that the transfer of certain commodities
      and technical data is subject to United States laws and regulations controlling
      the export of such commodities and technical data, including all Export
      Administration Regulations of the United States Department of Commerce. These
      laws and regulations prohibit or require a license for the export of certain
      types of technical data to certain specified countries. LICENSEE agrees to
      comply with all United States laws and regulations controlling the export of
      commodities and technical data, to be solely responsible for any violation
      of
      such laws and regulations by LICENSEE or its SUBLICENSEES, and to defend and
      hold LICENSOR harmless if any legal action of any nature results from the
      violation.

    


    16.8 This
      Agreement may not be amended or modified except by written agreement executed
      by
      each of the parties. Other than in the event of a CHANGE OF CONTROL (as defined
      herein) LICENSOR'S prior written consent, which shall not be unreasonably
      withheld, shall be required prior to any other assignment of LICENSEE’S rights
      or obligations under this Agreement. Following any such assignment or CHANGE
      OF
      CONTROL, the surviving corporation shall assume all of the rights and
      obligations included in this Agreement. Any attempted assignment in
      contravention of this Article 16.8 shall be null and void and shall constitute
      a
      material breach of this Agreement. LICENSOR'S prior written consent, which
      shall
      not be unreasonably withheld, shall be required prior to any other assignment
      of
      LICENSEE’S rights or obligations under this Agreement. 

    


    16.9 In
      the
      event any Party hereto is prevented from or delayed in the performance of any
      of
      its obligations hereunder (other than the payment of monies due and owing)
      by
      reason of acts of God, war, terrorism, strikes, riots, storms, fires, electrical
      or telecommunications outages or any other cause whatsoever beyond the
      reasonable control of the Party, the Party so prevented or delayed shall be
      excused from the performance of any such obligation to the extent and during
      the
      period of such prevention or delay, provided that such Party takes all
      reasonable steps to overcome such cause(es) as soon as is reasonably
      possible.

    


    16.10
      Nothing contained in this Agreement will be deemed to place the parties in
      a
      partnership, joint venture or agency relationship and neither party will have
      the right or authority to obligate or bind the other party in any
      manner.

    


    16.11
      This Agreement may be executed in two or more counterparts, each of which will
      be deemed an original, but all of which taken together will constitute one
      and
      the same instrument.

     

    
      
        
        

      

      
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    The
      authorized signatures of LICENSOR and LICENSEE below signify their acceptance
      of
      the terms of this Agreement.

    

      
        	
                THE
                  OHIO STATE UNIVERSITY

              	 	 
	
                RESEARCH
                  FOUNDATION

              	 	
                ARNO
                  THERAPEUTICS, INC.

              
	 
                	 
                	 
                	 
                	 
                
	
                By:
                  

              	 	 	
                By:
                  

              	 
	 	 	 	 	 
	
                Name: 

              	 
                	 
                	
                Name: 

              	 
                
	 	 	 	 	 
	
                Title:
                  

              	 	 	
                Title:
                  

              	 
	 	 	 	 	 
	
                Date:
                  

              	 	 	 	 


      

    

     

    
      
        
        

      

      
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