exv10w32



 




[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




Exhibit 10.32




License Agreement




COLEY PHARMACEUTICAL GROUP, INC.




And




DYNAVAX TECHNOLOGIES CORPORATION




LICENSE AGREEMENT




 






Dated June 26, 2007




 









 






License Agreement



LICENSE AGREEMENT



This LICENSE AGREEMENT (this “Agreement”), effective as of June 26, 2007 (the
“Effective Date”), is between Coley Pharmaceutical Group, Inc., a Delaware corporation
located at 93 Worcester Street, Suite 101, Wellesley, Massachusetts 02481 USA, and its Affiliates
(collectively, “Coley”), and Dynavax Technologies Corporation, a Delaware corporation
having a principal place of business at 2929 Seventh Street, Suite 100, Berkeley, California 94710
USA and its Affiliates (“Licensee”) (each, a “Party” and collectively, the
“Parties”).




RECITALS



WHEREAS, Coley is the owner or licensee of certain rights, title, and interests in proprietary
technologies involving immunomodulatory oligonucleotides; and



WHEREAS, Licensee has developed and/or is developing or evaluating a vaccine containing an HBsAg
Antigen (as hereinafter defined) for the prevention of infection by Hepatitis B Virus in humans;
and



WHEREAS, Licensee desires to obtain a license under the Patents (as hereinafter defined) in the
Field (as hereinafter defined) and in the Territory (as hereinafter defined), and Coley desires to
grant Licensee such rights and license; and



NOW, THEREFORE, in consideration of the premises and covenants contained herein and other good and
valuable consideration, the adequacy of which is hereby acknowledged, and intending to be legally
bound, the Parties hereby agree as follows:




     1. DEFINITIONS.



1.1 General.



Unless otherwise specified, references in this Agreement to any section are references to such
section of this Agreement and, unless otherwise specified, references in any section or definition
to any clause are references to such clause of such section or definition. Terms which are defined
in this Agreement shall apply equally to the singular and plural forms of the terms defined.
Whenever the context may permit or require, any pronoun shall include the corresponding masculine,
feminine and neuter forms. The term “including” means including, without limiting the generality
of any description proceeding such term. Each reference herein to any Person shall include a
reference to such Person’s permitted successors and assigns. Unless otherwise specified,
references to any agreement, instrument or other document in this Agreement refer to such
agreement, instrument or other document as originally executed or, if subsequently varied, replaced
or supplemented from time to time, as so varied, replaced or supplemented and in effect at the
relevant time of reference thereto. References to “dollars” or “$” are to United States dollars.






 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





1









 






License Agreement






1.2 Defined Terms.



As used in this Agreement, the following terms shall have the following respective meanings:





               (a) “Affiliate” shall mean any individual or entity directly or
indirectly controlling, controlled by or under common control with a Party to this
Agreement. For purposes of this definition, the term “control” means (i) direct or
indirect ownership of more than fifty percent (50%) of the voting interest in the
entity in question, or more than fifty percent (50%) interest in the income of the
entity in question; provided, however, that if local law requires a
minimum percentage of local ownership, in addition to the foregoing clause, control
will also be established by direct or indirect beneficial ownership of one hundred
percent (100%) of the maximum ownership percentage that may, under such local law, be
owned by foreign interests; or (ii) possession, directly or indirectly, of the power
to direct or cause the direction of management or policies of the entity in question
(whether through ownership of securities or other ownership interests, by contract or
otherwise).




               (b) “Agreement” shall have the meaning set forth in the first paragraph
of this Agreement.




               (c) “Antigen” shall mean the [ * ] antigen.




               (d) “Business Day” shall mean a day other than a Saturday or Sunday on
which banking institutions in New York, New York are open for business.




               (e) “Claim” shall mean any claim, demand, action or other proceedings
(including for personal injury, death or disability) by a Third Party.




               (f) “Coley” shall have the meaning set forth in the first paragraph of
this Agreement.




               (g) “Coley Indemnified Party” shall have the meaning set forth in Section
10.1.




               (h) “Commercially Reasonable Efforts” shall have the meaning set forth in
Section 4.1.




               (i) “Compound” shall mean an immunomodulatory oligonucleotide identified
by Licensee as [ * ], having a [ * ] and the nucleotide base sequence [ * ].




 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





2









 






License Agreement





               (j) “Confidential Information” shall mean any confidential and
proprietary scientific, technical, commercial, marketing or other business information
or Data furnished, directly or indirectly (including in connection with meetings with
Regulatory Authorities or Third Parties), and whether in writing, orally or otherwise,
by one Party or one of its Affiliates (the “Disclosing Party”) to the other
Party or one of its Affiliates (the “Receiving Party”) pursuant to or in
connection with this Agreement (including the negotiation of this Agreement) or the
activities or transactions contemplated hereby or thereby.




               (k) “Data” shall mean all data and other information included or
referenced in a Submission.




               (l) “Delivery Method” for the Licensed Product shall mean [ * ]
delivery.




               (m) “Develop” shall mean to engage in Development.




               (n) “Development” shall mean all activities related to research,
preclinical and other non-clinical testing, test method development, process
development, Manufacturing scale-up, qualification and validation, quality
assurance/quality control and clinical trials, including Manufacturing in support
thereof, statistical analysis and report writing, the preparation and submission of
any application for Regulatory Approval, regulatory affairs with respect to the
foregoing and all other activities necessary or reasonably useful or otherwise
requested or required by a Regulatory Authority as a condition or in support of
obtaining or maintaining a Regulatory Approval.




               (o) “Disclosing Party” shall have the meaning set forth in Section
1.2(j).




               (p) “Effective Date” shall have the meaning set forth in the first
paragraph of this Agreement.




               (q) “EU Major Market Country” shall mean [ * ].




               (r) “Exploit” and cognates thereof shall mean to make, have made, import,
use, sell, or offer for sale, including to Develop, register, modify, enhance,
improve, Manufacture, have Manufactured, store, formulate, export, transport,
distribute, promote, market, or otherwise dispose of.




               (s) “FDA” shall mean the United States Food and Drug Administration or
any successor entity.




               (t) “Field” shall mean the use of the Licensed Product for the prevention
of infection by Hepatitis B Virus in humans. The Field specifically excludes any
product for the prevention of disease, indications or disorders other


 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





3









 






License Agreement





than Hepatitis B Virus in humans and any product for the treatment of any
disease, indications or disorders.




               (u) “First Commercial Sale” shall mean, with respect to the Licensed
Product and a particular country in the Territory, the first transaction by Licensee
or a Sublicensee that transfers to an arm’s-length Third Party purchaser, for value,
title and right of physical possession of the Licensed Product for use in the Field in
the country (other than named patient sales). Notwithstanding the provisions of the
preceding sentence, transfer of possession and title to an Affiliate shall not
constitute a First Commercial Sale unless the Affiliate is an end user of the Licensed
Product.




               (v) “Indemnitee” shall have the meaning set forth in Section 10.3.




               (w) “Indemnitor” shall have the meaning set forth in Section 10.3.




               (x) “Iowa Agreement” shall mean that certain License Agreement by and
between CpG ImmunoPharmaceuticals, Inc. (the predecessor corporation to Coley) and
UIRF, dated March 31, 1997, as amended March 7, 2001, as it exists on the Effective
Date. A redacted copy of the Iowa Agreement is attached hereto as Exhibit B.




               (y) “Large Pharmaceutical Company” shall mean any pharmaceutical or biotechnology
company that has at least [ * ] in aggregate annual pharmaceutical net sales for its
most recently-completed fiscal year (consisting of 12 consecutive months) based on
data provided by IMS International, or if such data is not available, such other
reliable data as determined by Licensee and agreed to in writing by Coley, such
agreement not to be unreasonably withheld.




               (z) “Liability” shall have the meaning set forth in Section 10.1.




               (aa) “Licensed Product” shall mean a prophylactic vaccine containing the
Compound co-formulated with the Antigen for delivery by the Delivery Method. No
Licensed Product(s) may be developed for the prevention, treatment or control of any
cancer nor may any clinical trial be conducted with clinical endpoints of prevention,
treatment or control of any cancer.




               (bb) “Licensee” shall have the meaning set forth in the first paragraph
of this Agreement.




               (cc) “Licensee Indemnified Party” shall have the meaning set forth in
Section 10.2.



 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





4









 






License Agreement





               (dd) “Manufacture” and “Manufacturing” shall mean, with respect
to a product or compound, the manufacturing, processing, formulating, packaging,
labeling, holding and quality control testing of such product or compound.




               (ee) “Net Sales” shall mean the gross amount invoiced by Licensee and its
Affiliates and its Sublicensees for sales of the Licensed Product for end use or
consumption to Third Parties that are not Affiliates or Sublicensees of the selling
party (unless such purchasing Affiliate or Sublicensee is the end user of the Licensed
Product, in which case the amount billed therefore shall be deemed to be the same
amount that would be billed to a Third Party end user in an arms-length transaction)
in the Territory, less the total of the following deductions to the extent they are
included in the gross invoiced sale price of the Licensed Product or otherwise
directly paid or incurred by Licensee or its Affiliates or its Sublicensees with
respect to the sale of the Licensed Product:




               (i) trade, cash, and/or quantity discounts not already reflected in the amount
invoiced;




               (ii) excise, sales and other consumption taxes and customs duties to the extent
included in the invoice price;




               (iii) freight, insurance and other transportation charges to the extent included in the
invoice price;




               (iv) amounts repaid or credited by reason of rejections and defects;




               (v) returns or retroactive price reductions;




               (vi) payments and rebates directly related to the sale of the Licensed Product, and




any other specifically identifiable amounts included in gross amounts invoiced for the
Licensed Product[ * ]. Any such exclusions shall be negotiated in good faith between the
Parties and, if they are unable to agree, resolved in accordance with the dispute resolution
mechanism in Section 11.3, as determined in accordance with Licensee’s accounting methods
(which are in accordance with its or its Sublicensee’s accounting standards as generally and
consistently applied).




In the case of any sale or other disposal for value, such as barter or counter-trade, of the
Licensed Product or part thereof, other than in an arm’s length transaction exclusively for
money, Net Sales shall be calculated as above on the fair market value of the consideration
received by Licensee or its Affiliates or Sublicensees.




               (ff) “OHRI Agreement” shall mean the License Agreement, effective as of
September 1, 1998 between The Ottawa Health Research Institute at


 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





5









 






License Agreement





the Ottawa Hospital (successor in interest to The Loeb Health Research Institute
at Ottawa Hospital) (“OHRI”) and Coley Pharmaceutical Group, Inc. (formerly
known as CpG ImmunoPharmaceuticals, Inc.), as amended on September 25, 2001. A
redacted copy of the OHRI Agreement is attached hereto as Exhibit C.




               (gg) “Party” and “Parties” shall have the meaning set forth in
the first paragraph of this Agreement.




               (hh) “Patents” shall mean the patents and patent applications listed on
Exhibit A including (a) utility models, petty patents, design patents and certificates
of invention, (b) any substitutions, divisions, continuations, continuations-in-part,
reissues, renewals, registrations, confirmations, re-examinations, extensions,
supplementary protection certificates and the like, and any provisional applications,
of any such patent or patent application, and (c) any unissued or ungranted foreign or
international equivalent of any of the foregoing.




               (ii) “Permitted Assignment” shall have the meaning set forth in Section
11.1;




               (jj) “Person” shall mean an individual, sole proprietorship, partnership,
limited partnership, limited liability partnership, corporation, limited liability
company, business trust, joint stock company, trust, unincorporated association, joint
venture, or similar entity or organization, including a government or political
subdivision, department or agency of a government, or an academic or research
institution.




               (kk) “Receiving Party” shall have the meaning set
forth in Section 1.2(j).




               (ll) “Regulatory Approval” shall mean the marketing authorization
(including pricing approval or reimbursement approval, if applicable to the sale) of
the Licensed Product in a country in the Territory, in each case by the appropriate
Regulatory Authority.




               (mm) “Regulatory Authority” shall mean, with respect to each country in
the Territory, the government agency or health authority that regulates and is
responsible for granting approvals for the Manufacture, marketing and/or sale of
pharmaceutical products in such country.




               (nn) “Regulatory Milestone” shall have the meaning set forth in Section
3.2.




               (oo) “Regulatory Milestone Payment” shall have the meaning set forth in
Section 3.2.


 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.



6











 






License Agreement





               (pp) “Royalty Payments” has the meaning set forth in Section 3.3(a).




               (qq) “Royalty Period” shall mean the initial partial Royalty Quarter
commencing on the date of the First Commercial Sale in any country in the Territory
and every complete or partial Royalty Quarter thereafter with respect to which
Licensee has the obligation to make Royalty Payments under Section 3.




               (rr) “Royalty Report” shall have the meaning set forth in Section 3.3(b).




               (ss) “Royalty Quarter” shall mean the respective periods of three (3)
consecutive calendar months ending on March 31, June 30, September 30 and December 31.




               (tt) “Royalty Year” shall mean each successive period of twelve (12)
months commencing on January 1 and ending on December 31.




               (uu)  ”Submission” shall mean an application to obtain Regulatory
Approval by a Regulatory Authority.




               (vv) “Sublicensee” shall mean a Third Party who has been granted the
right by Licensee strictly for the purpose of commercializing the Licensed Product.




               (ww) “Term” shall have the meaning set forth in Section 6.1.




               (xx) “Territory” shall mean all the countries of the world.




               (yy) “Third Party” shall mean any Person other than Coley or Licensee.




               (zz) “Third Party Claim” shall mean all claims of any Third Party that
are subject to indemnification as provided for in Sections 10.1 or 10.2.




               (aaa) “UIRF” shall mean the University of Iowa Research Foundation.




               (bbb) “Valid Claim” shall mean any claim from an issued and unexpired
Patent that (a) has not been revoked or held unenforceable or invalid by a decision of
a court or other governmental agency of competent jurisdiction from which no appeal
can be taken or has been taken within the time allowed for appeal, (b) has not been
abandoned, disclaimed, denied or admitted to be invalid or unenforceable through
reissue or disclaimer or otherwise, and (c) provides exclusionary and enforceable
rights with respect to the claimed subject matter.


 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.



7











 






License Agreement





               (ccc) “Withholding Taxes” shall have the meaning set forth in Section
3.1(a).



     2. LICENSE GRANT.



2.1 Non-Exclusive License Grant to Licensee.



Subject to the terms of this Agreement, Coley shall grant, and hereby grants, to Licensee and
Licensee hereby accepts, a non-exclusive, royalty-bearing license, with the right to grant
sublicenses as defined in Section 2.2, below, under the Patents, including the patents listed in
Exhibit A which are subject to the terms of the OHRI Agreement and the UIRF Agreement (i) to
Exploit the Licensed Product in the Field in the Territory and (ii) to Manufacture or have
Manufactured the Compound in connection with such Exploitation of the Licensed Product.




2.2 Right to Grant Sublicenses.




          (a) Sublicensees.



Licensee shall have the right to grant sublicenses to Sublicensees solely to Exploit the Licensed
Product on behalf of Licensee provided that: (i) it shall be a condition of any such sublicense
that the Sublicensee agrees to be bound by all of the applicable obligations set forth in this
Agreement; (ii) if Licensee grants such sublicense, Licensee shall be deemed to have guaranteed
that such Sublicensee shall fulfill all of Licensee’s obligations under this Agreement applicable
to the subject matter of such sublicense; and (iii) such sublicense shall not reduce or delay
payments otherwise due and owing to Coley by Licensee under this Agreement




          (b) Large Pharmaceutical Company.



Licensee shall have the right to grant [ * ] of all of the provisions of this Agreement to a Large
Pharmaceutical Company provided that: (i) it shall be a condition of the sublicense that the Large
Pharmaceutical Company agrees to be bound by all of the applicable obligations set forth in this
Agreement; (ii) if Licensee grants such sublicense, Licensee shall be deemed to have guaranteed
that such Large Pharmaceutical Company shall fulfill all of Licensee’s obligations under this
Agreement applicable to the subject matter of such sublicense; and (iii) the sublicense shall not
reduce or delay payments otherwise due and owing to Coley by Licensee under this Agreement.



Any sublicense agreement with a Large Pharmaceutical Company shall provide in the event of an early
termination of this Agreement (other than a termination for convenience by Licensee pursuant to
Section 6.2 (a) or by Coley pursuant to Section 6.2 (b) (ii)) for the termination of the sublicense
and the conversion of the sublicense to a license directly between Coley and the Large
Pharmaceutical Company on substantially the same terms as this Agreement. Further, if Licensee
has agreed to grant a sublicense to a Large Pharmaceutical Company and [ * ] For the avoidance of
doubt, [ * ]




          2.3 Limitations.



 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.


8











 






License Agreement





Except as specifically provided in Section 2.1 (including the right to grant sublicenses pursuant
to Section 2.2), Licensee shall have no rights to use the Patents for any other purpose. Licensee
acknowledges and agrees that Coley’s right to terminate the Agreement in the event that Licensee
takes any of the actions described in Section 6.2 (c) was expressly bargained for and agreed to by
the parties and is a necessary condition for obtaining and maintaining the licenses provided in
this Section 2. No other rights, express or implied, are granted to Licensee pursuant to this
Agreement except as expressly granted herein.




          2.4 Option.



Effective upon written notice to Coley, Licensee may [ * ]




     3. PAYMENTS AND ROYALTIES.



3.1 Up-Front Payment.



In partial consideration of (i) Coley’s investment in the Patents and (ii) the license granted to
Licensee pursuant to Section 2.1, Licensee shall make a non-refundable, non-creditable up-front
license fee payment of Five Million Dollars ($5,000,000.00). Such up-front license fee shall be
payable by Licensee within two business days of the execution of this Agreement by both Parties.




3.2 Regulatory Milestone Payments.



At any point in time when a Regulatory Milestone (as defined below) is achieved for the Licensed
Product by either Licensee, its Affiliates or Sublicensees, Licensee shall promptly notify Coley of
the achievement of said Regulatory Milestone and shall pay Coley the amount corresponding to the
Regulatory Milestone achieved hereunder (the “Regulatory Milestones”) set forth below
(each, a “Regulatory Milestone Payment”). Each Regulatory Milestone Payment shall be
immediately due and payable by Licensee. Each Regulatory Milestone Payment shall be payable only
once.




	 	 	 
	Regulatory Milestone Payments	 	Regulatory Milestone Payment
	 
	 	 
	[ * ]

	 	[ * ]






3.3 Royalty Payments.





               (a) Royalty Payments Due. Licensee and its Sublicensees shall pay to
Coley royalty payments on the Net Sales of the Licensed Product in the amounts set
forth below (“Royalty Payments”):


 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.



9










 






License Agreement




                    (i) With respect to Net Sales of the Licensed Product during the
period in which the Licensed Product is covered by a Valid Claim, Licensee shall pay Coley a
royalty of [ * ] percent ([ * ]%) of such Net Sales.


Royalty Payments shall be due for sale of the Licensed Product under this Section 3.3(a) if there
is a Valid Claim in either the country in which the Licensed Product is sold or in the country in
which the Licensed Product is Manufactured. In any event, only one (1) Royalty Payment shall be
due under this Section 3.3(a) for the Licensed Product sold even if more than one Valid Claim
covers the Licensed Product. Royalty Payments shall [ * ] for royalties or payments made to Third
Parties by Licensee for Third Parties’ technologies which are utilized or incorporated into or
otherwise required to be paid regarding the Licensed Product. Coley shall be solely responsible for
any payments owed to UIRF and OHRI due to the rights granted to Licensee pursuant to Section 2.1.





               (b) Tender of Royalty Payments and Royalty Reports. Within [ * ] after
the conclusion of each Royalty Quarter, Licensee shall tender payment of any Royalty
Payments due under this Agreement and shall concurrently deliver to Coley a report on
the Net Sales activity of Licensee during such Royalty Quarter (the “Royalty
Report”). If no Royalty Payment is due, the Royalty Report shall so state. All
such Royalty Reports shall be considered Confidential Information of Licensee under
this Agreement. Royalty Reports shall contain at least the following information:



                    (i) Net Sales of the Licensed Product sold by Licensee and Sublicensee(s) on a
country-by-country basis (including number of units sold during the applicable Royalty Quarter);
and



                    (ii) total Royalty Payments due with respect to Net Sales of the Licensed Product sold by
Licensee and Sublicensee(s) in each country.




               (c) Period During Which Royalties Are Payable. Royalty Payment
obligations under this Section 3.3 shall become effective on a country-by-country
basis upon the First Commercial Sale of the Licensed Product and continue thereafter
until there are no Valid Claims covering the Licensed Product in such country. Upon
expiration of the period during which Licensee or Sublicensee is obligated to make
Royalty Payments with respect to the Licensed Product, on a country-by-country basis,
the rights granted to Licensee pursuant to Section 2.1 with respect to the Licensed
Product shall become perpetual, irrevocable, fully paid-up and royalty-free.



3.4 Withholding; Payments.





               (a) Any payments made by Licensee or Sublicensee to Coley under this Agreement
shall be reduced by the amount that Licensee or Sublicensee is required to withhold
pursuant to any applicable tax law (“Withholding Taxes”).


 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





10









 






License Agreement





Licensee shall
submit reasonable proof of payment of the Withholding Taxes to
Coley within a reasonable period of time after such Withholding Taxes are
remitted to the proper taxing authority.




               (b) Any payments due under this Section 3 shall be made in dollars, using a
mutually acceptable method of payment. With respect to sales of the Licensed Product
invoiced in a currency other than dollars, the Net Sales and amounts due to Coley
hereunder shall be expressed in the domestic currency of the Person making the sale,
together with the dollar equivalent of the amount payable to Coley For each Royalty
Quarter and each currency, such dollar equivalent shall be calculated using an
exchange rate equal to [ * ], or, if not so available, as otherwise agreed by the
Parties.




               (c) Payments shall be made via wire transfer to:




                     [ * ]



3.5 Late Payments.



Any payments due under this Section 3 that are not made on or before the date specified under the
terms of this Agreement shall bear interest, to the extent permitted by law, at a rate equal at all
times to the prime rate of interest announced publicly from time to time by Citibank, N.A., plus [
* ] percent ([ * ]%), but in no case higher than the maximum rate permitted by applicable law, for
the number of days delinquent.




3.6 Audit of Records.





               (a) Records. Licensee and Sublicensees shall keep and maintain records
of sales, importations, and other dispositions of the Licensed Product. The records
required by this Section 3.6 shall be maintained and available for inspection for a
period of [ * ] following the Royalty Year to which they pertain.




               (b) Audit. Coley shall have the right, at Coley’s expense, to examine,
through an independent certified public accounting firm reasonably acceptable to
Licensee, those records of Licensee and Sublicensee as may be reasonably necessary to
confirm the accuracy of the Royalty Reports. Any such examination shall be made only
upon not less than [ * ] prior written notice to Licensee or Sublicensee, as the case
may be, during regular business hours, and within [ * ] after the end of Royalty
Period; provided, however, that such examination shall not take place more often than
[ * ] per Royalty Year and shall not cover such records for more than the preceding [
* ] Royalty Years. Such accounting firm shall disclose to Coley only the final
audited Royalty Payment amounts to be paid by Licensee or Sublicensee. Upon the
completion of an audit hereunder for any Royalty Year, the calculation of amounts
payable with respect to




 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.



11











 






License Agreement





such year shall be binding and conclusive upon Coley, and
Licensee and its
Sublicensees shall be released from any liability or accountability with respect
to amounts payable for such year.




               (c) Audit Costs. In the event that any such inspection shows an
underreporting or an underpayment in excess of [ * ] percent ([ * ]%) for any Royalty
Year, then (i) Licensee or Sublicensee, as the case may be, shall pay the reasonable
costs of such examination charged by such accounting firm and in any event shall pay
any additional sum, including interest charges as provided in Section 3.5 on any such
additional sum shown to be due to Coley and (ii) such audit will not count against the
[ * ] per Calendar Year limit set forth in Section 3.6 (b) above.



     4. DEVELOPMENT; DILIGENCE OBLIGATIONS.


4.1 Diligence Generally. Licensee shall use commercially reasonable efforts consistent with the
efforts and resources normally used for a product of its own discovery of similar market potential
at a similar stage in its product life, taking into account the competitiveness of the market
place, the proprietary position of the product, the regulatory structure involved, the
profitability of the applicable products and other relevant factors (“Commercially Reasonable
Efforts”), (a) to pursue the Exploitation of the Licensed Product in the U.S. and in one or more EU
Major Market Countries and (b) to undertake investigations and actions required to obtain
appropriate Regulatory Approval therefor. The Parties agree that the diligence obligations set
forth in this Section 4.1 shall [ * ] and the Parties further agree that [ * ].




     5. SUPPLY OF MATERIALS; MARKING.


5.1 Manufacture of Compound and Manufacturing Information.





          (a) Supply of Compound. Coley shall not be obligated to supply any
quantities of the Compound to Licensee or Sublicensee(s).




               (b) Licensee agrees that, to the extent required by the Iowa Agreement and applicable
law, the Licensed Product produced for sale in the United States and embraced by a Valid
Claim under a Patent Right listed on Exhibit A with UIRF identified as an Assignee
will be Manufactured substantially in the United States, unless any waiver of such
requirement is obtained.




               (c) Manufacturing Information. In the event that Licensee or Sublicensee(s)
Manufacture(s) or has a Third Party Manufacture Compound and uses information and/or
intellectual property rights which result in a Regulatory Authority mandating changes to
specifications for any immunomodulatory oligonucleotide and, as a result, Coley is unable to
obtain or Manufacture reasonable quantities of other immunomodulatory oligonucleotides
and/or other immunomodulatory oligonucleotides in


 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





12









 






License Agreement





compliance with the mandate by such
Regulatory Authority with respect to such
materials, Licensee or Sublicensee(s), as the case may be, shall use commercially
reasonable efforts to provide Coley and its licensees with a license on commercially
reasonable terms to the necessary information and/or intellectual property rights to
Manufacture the Compound and/or other immunomodulatory oligonucleotides in compliance with
such specifications for any immunomodulatory oligonucleotide or the applicable mandate. In
the event that Coley or Sublicensee(s) Manufacture(s) or has a Third Party Manufacture
Compound and uses information and/or intellectual property rights which result in a
Regulatory Authority mandating changes to specifications for the Compound and, as a result,
Licensee or its Sublicensee(s) is unable to obtain or Manufacture reasonable quantities of
the Compound in compliance with the mandate by such Regulatory Authority with respect to
such materials, Coley shall use commercially reasonable efforts to provide Licensees and its
sublicensees with a license on commercially reasonable terms to the necessary information
and/or intellectual property rights to Manufacture the Compound in compliance with such
specifications for the Compound or the applicable mandate.



5.2 Marking.



Licensee shall comply with the requirements as to the marking of the Licensed Product set forth in
Article 7 of the Iowa Agreement.




     6. TERM AND TERMINATION.



6.1 Term.



The term of this Agreement shall begin on the Effective Date and, unless earlier terminated
pursuant to this Section 6, continue on a country-by country basis until the expiration or
termination of the last Valid Claim with respect to such country (the “Term”).




6.2 Termination.




          (a) Termination by Either Party; Termination by Licensee. Upon a material breach of
this Agreement by either Party, the non-breaching Party may provide written notice to the breaching
Party specifying the material breach. If the breaching Party fails to cure the material breach
during a [ * ] period (or in the case of a material breach of Section 4.1, a [ * ] period)
following the date on which the notice of breach is provided then the non-breaching Party shall
have the right to terminate this Agreement. If such breach is not reasonably cured within such [ *
] but (1) the breaching Party is making a bona fide effort to cure any such breach, such
termination shall be delayed in order to permit the breaching Party a reasonable period of time to
remedy the breach, or (2) if the breaching Party initiates a dispute resolution proceeding pursuant
to Section 11.3 with respect to such breach prior to the expiration of such [ * ] period, then such
termination shall not become effective until [ * ] following the final conclusion of the
 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.


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dispute resolution proceeding if termination is permitted by such resolution. Licensee shall
have the right to terminate this Agreement for convenience upon [ * ] prior written notice to
Coley.




          (b) Termination by Coley.




               (i) Coley shall have the right upon written notice to Licensee to terminate this Agreement for
non-payment of any amount due hereunder from Licensee to Coley if such non-payment shall continue
uncured for a period ending (1) [ * ] following notice of such non-payment given by Coley to
Licensee or, (2) if Licensee initiates a dispute resolution proceeding pursuant to Section 11.3
with respect to such payment prior to the expiration of such [ * ] period, then [ * ] following the
final conclusion of the dispute resolution proceeding if termination is permitted by such
resolution.



               (ii) Coley may terminate this Agreement in the event that Licensee or its Affiliates take any
action, direct or indirect: (a) to challenge the validity, scope, or enforceability of the Patents
licensed to Licensee hereunder; or (b) to oppose, object to, provoke an interference toward or
initiate or support any re-examination proceedings challenging the Patents; provided that it shall
not be grounds for terminating this Agreement if Licensee challenges the validity, scope, or
enforceability of the Patents licensed to Licensee hereunder in defense of an action for
infringement of the Patents brought by Coley arising from Licensee’s activities outside of the
scope of this Agreement.




               (c) Termination for Insolvency.



               (i) To the extent permitted by law, upon the filing or institution of bankruptcy,
reorganization, liquidation or receivership proceedings, or upon an assignment of a substantial
portion of the assets for the benefit of creditors (a “Bankruptcy Event”) by either Party,
Coley, in the case of a Bankruptcy Event by Licensee, or Licensee, in the case of a Bankruptcy
Event by Coley, may terminate this Agreement; provided, however, that, in the case of any
involuntary bankruptcy proceeding, such right to terminate shall only become effective if the
subject Party consents to the involuntary bankruptcy or such proceeding is not dismissed within
ninety (90) days after the filing thereof.



               (ii) This Section 6.2(c) is without prejudice to any rights the non-Affected Party may have
arising under any bankruptcy, reorganization, insolvency or similar laws, and Licensee expressly
reserves the right to maintain its license in effect pursuant to Section 11.17 with respect to a
Bankruptcy Event involving Coley.



               (d) No Limitation on Other Rights. Nothing in this Agreement shall be construed to
limit the rights of Licensee, upon a material breach by Coley, to maintain its license in full
force and effect and pursue any remedies otherwise available at law or equity.



6.3 Effects of Expiration or Termination.





               (a) Surviving Provisions. The provisions of Sections 3 (with respect to
payment obligations accruing prior to the date of expiration or


 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





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License Agreement





termination), 6, 7, 8, 9, 10, and 11 shall survive expiration or termination of
this Agreement for any reason.




               (b) Licensee Rights. Subject to the provisions of Section 6.3(a), (i)
upon expiration of the Term, the rights granted to Licensee pursuant to Section 2.1
shall become perpetual, irrevocable, fully paid-up and royalty-free, and (ii) subject
to the following sentence, upon termination of this Agreement by Coley pursuant to
Section 6.2(a), 6.2(b) or 6.2(c) , the rights granted to Licensee pursuant to Section
2.1 shall terminate. Upon termination of this Agreement by Coley pursuant to Section
6.2(a), 6.2(b) or 6.2(c), (i) Licensee shall [ * ] and (ii) Licensee shall with
respect to any sales of the Licensed Product made prior to the termination of this
Agreement [ * ], continue to provide Royalty Reports and to pay royalties on all Net
Sales of the Licensed Product as required hereunder.




               (c) Obligations Survive. Any termination of this Agreement shall be
without prejudice to the rights of either Party against the other accrued or accruing
under this Agreement prior to termination.



     7. CONFIDENTIALITY.



7.1 Nondisclosure Obligation.



Each Party shall use the Confidential Information of the other Party only in accordance with the
activities contemplated by this Agreement and shall not disclose to any Third Party any
Confidential Information of the other Party, without the prior written consent of the other party
or as expressly provided below. This obligation shall not apply to Confidential Information that:





               (a) is known by the Receiving Party at the time of its receipt, and not through a
prior disclosure by the Disclosing Party to the Receiving Party, as documented by
business records;




               (b) at the time of disclosure or thereafter becomes published or otherwise part
of the public domain without breach of this Agreement by the Receiving Party;




               (c) is subsequently disclosed to the Receiving Party by a Third Party who has the
right to make such disclosure; or




               (d) is developed by the Receiving Party independently of Confidential Information
received from the Disclosing Party and such independent development can be properly
demonstrated by the Receiving Party.



7.2 Permitted Disclosures.



 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





15









 






License Agreement





Notwithstanding the provisions of Section 7.1, a Receiving Party may make the following disclosures
of Confidential Information received from the Disclosing Party:





               (a) disclosures to governmental or other regulatory agencies in order to gain
approval to conduct Licensed Product trials or to market the Licensed Product, but
such disclosure may be only to the extent reasonably necessary to obtain such
authorizations upon consultation with the other Party;




               (b) disclosures to agents, consultants, Affiliates and/or other Third Parties as
necessary for the research and development, Manufacturing and/or marketing of the
Licensed Product, or to complete a Permitted Assignment (as defined in Section 11.1),
(or for such Persons to determine their interest in performing such activities or such
Permitted Assignment), in accordance with this Agreement on the condition that such
Third Parties are or agree to be bound by confidentiality obligations substantially as
restrictive and long as those contained in this Agreement; or




               (c) disclosures required by law or court order, provided that notice is promptly
delivered to the Disclosing Party in order to provide it with an opportunity to seek a
protective order or other similar order with respect to such Confidential Information
and the Receiving Party thereafter discloses only the minimum information reasonably
required to be disclosed in order to comply with the request, whether or not a
protective order or other similar order is obtained by the Disclosing Party.



7.3 Partial Disclosures.



Specific aspects or details of Confidential Information shall not be deemed to be within the public
domain or in the possession of a Party merely because the Confidential Information is embraced by
more general information in the public domain or in the possession of such Party. Further, any
combination of Confidential Information shall not be considered in the public domain or in the
possession of a Party merely because one or more individual elements of such Confidential
Information are in the public domain or in the possession of such Party unless every feature of the
Confidential Information has been disclosed in accordance with the provisions herein.




7.4 Publicity.



Neither Coley nor Licensee shall issue any press release or other public disclosure relating to
this Agreement except as mutually agreed. The joint press release announcing the execution of this
Agreement shall be substantially in the form as Exhibit D attached. Notwithstanding any other
provision contained in this Section 7.4, either Party may make such public disclosure relating to
this Agreement as may be required by applicable law. Prior to any public disclosure relating to
this Agreement pursuant to the preceding sentence, the Party proposing to make such disclosure
shall provide reasonable notice thereof and the proposed contents of such disclosure to the other



 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





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License Agreement




Party and shall consult in good faith with the other Party regarding the timing and contents of any
such disclosure.




     8. MAINTENANCE AND ENFORCEMENT OF PATENTS.



8.1 Responsibility for Patents.



Coley, by counsel it selects, shall have the sole right, but not the obligation, to prepare, file,
prosecute and maintain all Patents in Coley’s name and in countries designated by Coley at the sole
discretion of Coley.




8.2 Infringement by Third Parties.



The Parties agree to provide each other written notice promptly after becoming aware of any
infringement of the Patents in the Field (irrespective of the delivery method used for the
vaccine). Coley shall have the right, but not the obligation, under its own control and at its own
expense, to prosecute any Third Party infringement of the Patents and/or to defend the Patents in
any declaratory judgment action brought by a Third Party which alleges invalidity,
unenforceability, or non-infringement of the Patents. Subject to Section 8.4 below, Coley may
enter into any settlement, consent judgment, or other voluntary final disposition of any
infringement or declaratory judgment action hereunder without the prior written consent of
Licensee.




8.3 Infringement Claims.



If the Manufacture, sale or use of the Compound as used in the Licensed Product in the Field
results in any claim, suit or proceeding filed by a Third Party alleging patent infringement by
Coley or Licensee or Sublicensee, such Party shall promptly notify the other Party in writing. In
the event that one Party is sued subject to Section 8.4, the Party subject to such claim shall have
the exclusive right to defend and control the defense of any such claim, suit or proceeding, at its
own expense, using counsel of its own choice; provided, however, that if Coley or Licensee and
Coley together are sued with respect to the Licensed Product sold by Licensee or Sublicensee, Coley
shall have the exclusive right to take control of such defense. Licensee shall have the right to
retain its own counsel at its sole cost and expense, and shall have the right to consult with Coley
in any proceeding under this Section 8.3. The Party subject to the claim shall keep the other
Party hereto reasonably informed of all material developments in connection with any such claim,
suit or proceeding. The Party not subject to the claim shall cooperate in all reasonable respects
with the Party subject to the claim in the defense of the claim.




8.4 Settlements.



No settlements, consent judgments, or other voluntary final dispositions of a dispute adversely
affecting the rights or obligations of a Party or Sublicensee, including the rights or obligations
of the Party under this Agreement, shall be entered into in connection with any dispute, claim or



 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.




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License Agreement




proceeding described in Section 8.2 or 0 without the prior written consent of the adversely
affected Party or Sublicensee, such consent not to be unreasonably withheld or delayed. Without
limiting the foregoing, no settlements, consent judgments, or other voluntary final dispositions of
any dispute, claim or proceeding described in Section 8.2 or 0 adversely affecting the rights or
obligations of Coley under the Patents shall be entered into without the prior written consent of
Coley, such consent not to be unreasonably withheld or delayed. The Parties shall comply with the
provisions of Section 8.4 of the Iowa Agreement with respect to any settlement, consent judgment,
or other voluntary final disposition of any suit relating to the subject matter of this Agreement.




8.5 Recoveries and Damages.



Any recoveries and damages received as a result of a dispute, claim or proceeding described in
Section 8.2 or 8.3 or any settlement, consent judgment, or other voluntary final disposition
thereof shall first go toward reimbursing the Parties or Sublicensee for their respective costs and
expenses of such suit. Thereafter, any remainder shall be [ * ].




8.6 Subject to Iowa Agreement.



To the extent related to Patents under the Iowa agreement, the provisions of this Section 8 are
subject to in all respects the provisions of the Iowa Agreement, including Article 8 thereof.




     9. REPRESENTATIONS, WARRANTIES AND COVENANTS OF THE PARTIES.



9.1 Representations and Warranties of Each Party to the Other.



Each Party hereby represents and warrants to the other Party hereto, effective as of the Effective
Date, that:





               (a) Such Party is a corporation duly organized and validly existing under the
laws of the state or other jurisdiction of its incorporation or formation;




               (b) The execution and performance of this Agreement by such Party has been duly
authorized by all requisite corporate action;




               (c) Such Party has the power and authority to execute and deliver this Agreement
and to perform its obligations hereunder, including the right, power and authority to
grant the licenses granted herein;




               (d) The execution and performance by such Party of this Agreement and its
compliance with the terms and provisions hereof does not and will not conflict with or
result in a breach of any of the terms and provisions of or constitute a default under
(i) any loan agreement, guaranty, financing agreement,


 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





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License Agreement





agreement affecting the Licensed Product or the Compound, or other agreement or
instrument binding or affecting it or its property; (ii) the provisions of its charter
documents or bylaws; or (iii) any order, writ, injunction or decree of any court or
governmental authority entered against it or by which it or any of its property is
bound;




               (e) The execution and performance by such Party of this Agreement and its
compliance with the terms and provisions hereof do not and will not violate any law or
regulation applicable to it; and




               (f) This Agreement has been duly authorized by all necessary corporate action on
the part of such Party, has been executed and delivered by such Party and constitutes
such Party’s legal, valid and binding obligation, enforceable against such Party in
accordance with its terms subject, as to enforcement, to bankruptcy, insolvency,
reorganization and other laws of general applicability relating to or affecting
creditors’ rights and to the availability of particular remedies under general equity
principles.



9.2 Covenants of Licensee.



Licensee hereby covenants with Coley that:





               (a) It will comply with all of the obligations applicable to sublicensees of
Coley under the Iowa Agreement and OHRI Agreement;




               (b) Licensee will not market or actively promote the Licensed Product for
off-label use outside the Field; and




               (c) Licensee agrees not to take any further action, direct or indirect, in
connection with current patent opposition proceedings in Europe for the Patents, shall
withdraw its participation in such proceedings, and shall not initiate any additional
opposition proceedings for the Patents currently in opposition proceedings by the
European Patent Office. Licensee agrees to take any actions reasonably requested by
Coley in connection with its withdrawal from opposition proceedings, shall not
directly or indirectly oppose, object to, provoke an interference toward or initiate
or support any re-examination proceedings challenging the Patents and agrees to
withdraw any challenge to the Patents, other than in defense of an action for
infringement of the Patents.



9.3 Representations, Warranties and Covenants of Coley.


Coley hereby represents, warrants and covenants to Licensee, effective as of the Effective Date,
that:





               (a) Coley owns or possesses adequate licenses or other rights to use the Patents
in the Field and to grant the rights and licenses herein; and


 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





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License Agreement





               (b) (i) The Patents existing as of the Effective Date are subsisting and have
not been held by a court of competent jurisdiction to be invalid or unenforceable, in
whole or in part; (ii) there are no claims, judgments or settlements against or
amounts with respect thereto owed by Coley or any of its Affiliates relating to the
Patents, (iii) except as listed in Exhibit E, no claim or litigation has been brought
or threatened by any Person alleging (A) that any Patent is invalid or unenforceable
or (B) the Patents or the disclosing, copying, making, assigning, licensing or
Exploitation of the Patents or products embodying the Patents, including the
Exploitation of the Licensed Product, violates, infringes or otherwise conflicts with
any intellectual property or proprietary right of any Third Party; (iv) the
conception, development and reduction to practice of the Patents existing as of the
Effective Date have not constituted or involved the misappropriation of trade secrets
or other rights or property of any Person; and (v) it has not received notice of any
claim or litigation asserted or commenced against it that would have an adverse effect
on the rights granted to Licensee under this Agreement.




               (c) (i) The OHRI Agreement and Iowa Agreement are in full force and effect, Coley
has the right to grant any and all sublicenses granted under this Agreement under each
of the OHRI Agreement and Iowa Agreement and (ii) Coley has not received notice of
termination and is not aware of any facts or information that would, with the passage
of time result in the termination of the OHRI Agreement or Iowa Agreement,
respectively.




               (d) Except as may be listed on Exhibit A , to the best of Coley’s knowledge,
there are no patents or patent applications owned or controlled by Coley as of the
effective date of this Agreement that, but for the licenses granted in this Agreement,
would be infringed by the Exploitation of the Licensed Product by the Licensee or its
Sublicensees. If any such patent or patent application is identified during the Term,
at Licensees option it shall be included in the Patents licensed under this Agreement,
without the payment of additional consideration by Licensee to Coley.



9.4 Bayh-Dole.



Both Parties acknowledge that the U.S. Public Health Service may have certain rights, as provided
in Bayh-Dole (Public Law 96-517 of 1980), to the Patents.




     10. INDEMNIFICATION AND LIMITATION OF LIABILITY.



10.1 Indemnification by Licensee.



 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





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License Agreement





Licensee shall indemnify, defend and hold harmless Coley, and each of its employees, officers,
directors and agents (each, a “Coley Indemnified Party”), from and against any and all
liability, loss, damage, cost, and expense, including reasonable attorneys’ fees and reasonable
expenses of litigation (collectively, a “Liability”), arising out of any Third Party Claim
which the Coley Indemnified Party may incur, suffer or be required to pay to the extent resulting
from or arising in connection with (i) the breach by Licensee of any covenant, representation or
warranty contained in this Agreement; (ii) any negligent or wrongful act or omission of Licensee
(its directors, officers, or agents, or distributors thereof) which is the proximate cause of
injury, death or property damage to a Third Party; (iii) actual or asserted violations of any
applicable law or regulation (other than patent or other intellectual property law or regulation)
by Licensee, Sublicensees or distributors by virtue of which the Licensed Product in the Field
Manufactured, distributed or sold by Licensee, Sublicensees or distributors shall be alleged or
determined to be adulterated, misbranded, mislabeled or otherwise not in compliance with any such
applicable law or regulation; (iv) claims for bodily injury, death, product liability, warranty of
fitness or merchantability, or property damage attributable to the development, Manufacture,
distribution, sale or use of the Licensed Product in the Field by Licensee, Sublicensees or
distributors; or (v) a recall of the Licensed Product in the Field Manufactured, distributed or
sold by Licensee, Sublicensees or distributors ordered by a governmental agency or required by a
confirmed product failure as reasonably determined by Licensee, Sublicensees or distributors;
except to the extent that such Liability arises in connection with or is otherwise attributable to
(A) a breach by Coley of this Agreement or (B) any manufacturing agreement into which Coley may
enter pursuant to Section 5.1 or (C), in the case of clauses (ii) through (v), any negligent act or
omission or intentional misconduct on the part of Coley or any Liability for which Coley is
required to provide indemnification under Section 10.2.




10.2 Indemnification by Coley.



Coley shall indemnify, defend and hold harmless Licensee and its employees, officers, directors and
agents and its Sublicensees (each, a “Licensee Indemnified Party”) from and against any
Liability arising out of any Third Party Claim, which Licensee Indemnified Party may incur, suffer
or be required to pay to the extent resulting from or arising in connection with (i) the breach by
Coley of any covenant, representation or warranty contained in this Agreement; (ii) any negligent
or wrongful act or omission by Coley (or any of its licensees, licensors or their respective
directors, officers, or agents, or distributors thereof) which is the proximate cause of injury,
death or property damage to a Third Party; (iii) any Third Party Claim that the granting of the
rights and licenses herein by Coley violates any rights of any Third Party, or (iv) claims for
bodily injury, death, product liability, warranty of fitness or merchantability, or property damage
attributable to the development, Manufacture, distribution, sale or use of the Compound or
pharmaceutical products incorporating the Compound by Coley, any of its licensees other than
Licensee or their respective agents or distributors; except to the extent that such Liability
arises in connection with or is otherwise attributable to (A) a breach by Licensee of this
Agreement or (B), in the case of clauses (ii) through (v), any negligent act or omission or
intentional misconduct on the part of Licensee or any Liability for which Licensee is required to
provide indemnification under Section 10.1.



 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





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10.3 Indemnification Procedure.



Any Person seeking indemnification under this Section 10 (the “Indemnitee”) shall promptly
notify the Party from whom indemnification is sought (the “Indemnitor”) in writing of any
Claim, and, subject to Section 8.3, the Indemnitor shall have the right to participate in, and, to
the extent the Indemnitor so desires, to assume the defense thereof with counsel mutually
satisfactory (consent not to be unreasonably withheld or delayed) to the other Party by giving
written notice to the Indemnitee and the other Party within thirty (30) days after receipt of
written notice of such Claim from the Indemnitee; provided, however, that an Indemnitee shall have
the right to retain its own counsel, with the fees and expenses to be paid (a) by the Indemnitor,
if representation of such Indemnitee by the counsel retained by the Indemnitor would be
inappropriate due to actual or potential differing interests between the Indemnitee and any other
party represented by such counsel in such proceeding; or (b) by Indemnitee in all other cases. In
no event shall the Indemnitor be liable for any Liabilities that result from any unreasonable delay
by the Indemnitee in providing the written notice pursuant to the first sentence of this Section
10.3. In the event that it is ultimately determined that the Indemnitor is not obligated to
indemnify, defend or hold harmless an Indemnitee from and against such Claim, the Indemnitee shall
reimburse the Indemnitor for any and all costs and expenses (including attorneys’ fees and costs of
suit) and any Liabilities incurred by the Indemnitor in its defense of such Claim with respect to
the Indemnitee. The Indemnitee and its employees and agents shall reasonably cooperate with, and
at the expense of, the Indemnitor and its legal representatives in the investigation of any Claim
covered by this Section 10.




10.4 Settlements.



Neither Party may settle a Claim without the consent of the other Party if such settlement would
(a) impose any monetary obligation on the other Party, (b) require the other Party to submit to an
injunction, or (c) otherwise limit the other Party’s rights under this Agreement, such consent not
to be unreasonably withheld or delayed in the case of clauses (b) and (c). Any payment made by a
Party to settle a Claim shall be, unless otherwise provided in Section 10.1 or 10.2, as the case
may be, at its own cost and expense.




10.5 Limitation of Liability.



With respect to any claim by one Party against the other Party arising out of the performance or
failure of performance of the other Party under this Agreement, the Parties expressly agree that,
except for a Party’s indemnification obligations pursuant to Section 10.1 or 10.2 with respect to
Third Party claims, the liability of such Party to the other Party for such breach shall be limited
under this Agreement or otherwise at law or equity to direct damages only and in no event shall a
Party be liable for punitive, special, incidental, multiple, exemplary or consequential damages.




10.6 Insurance.





               (a) Licensee. Prior to or immediately upon the first administration of the Licensed
Product in the Field to a human in accordance with this Agreement, and for a period of


 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





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License Agreement



[ * ] after the last sale of the Licensed Product in the Field hereunder, Licensee shall
obtain and/or maintain, at its expense, product liability insurance in amounts which are reasonable
and customary in the industry for companies of comparable size and activities. Such product
liability insurance shall insure against liability for personal injury, physical injury, and
property damage. Licensee shall provide proof of insurance to Coley upon request. Licensee may
satisfy this requirement by a representation that it is self-insured and/or maintains Third Party
liability insurance in amounts sufficient to meet the foregoing requirement.





               (b) Coley. Prior to or immediately upon the first administration of the Licensed
Product in the Field to a human in accordance with this Agreement, as notified by Licensee to
Coley, and for a period of [ * ] after the last sale of the Licensed Product in the Field
hereunder, as notified by Licensee to Coley, Coley shall obtain and/or maintain, at its expense,
product liability insurance in amounts which are reasonable and customary in the industry for
companies of comparable size and activities. Such product liability insurance shall insure against
liability for personal injury, physical injury, and property damage. Coley shall provide proof of
insurance to Licensee upon request. Coley may satisfy this requirement by a representation that it
is self-insured and/or maintains Third Party liability insurance in amounts sufficient to meet the
foregoing requirement.



10.7 Warranty Disclaimer.



EXCEPT AS EXPRESSLY MADE UNDER THIS AGREEMENT, NEITHER PARTY MAKES ANY REPRESENTATIONS, NOR EXTENDS
ANY WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING ANY IMPLIED WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR NON-INFRINGEMENT, WITH RESPECT, IN THE CASE OF
COLEY, TO THE PATENTS OR, IN THE CASE OF LICENSEE, TO THE LICENSED PRODUCT OR THE COMPOUND USED
THEREIN.




10.8 Performance by Subcontractors.



The Parties recognize that the Licensee may perform some or all of its obligations under this
Agreement through Third Party subcontractors, provided, however, that the Licensee shall remain
responsible and liable for the performance by its Third Party subcontractors and shall cause its
Third Party subcontractors to comply with the provisions of this Agreement in connection therewith.




     11. MISCELLANEOUS.



11.1 Assignment.



Neither this Agreement nor any or all of the rights and obligations of a Party shall be assigned,
delegated, sold, transferred, sublicensed (except as otherwise provided herein) or otherwise
disposed of, by operation of law or otherwise, to any Third Party without the prior written



 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





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License Agreement




consent of the other Party, which shall not be unreasonably withheld, and any attempted assignment,
delegation, sale, transfer, sublicense or other disposition, by operation of law or otherwise, of
this Agreement or of any rights or obligations hereunder contrary to this Agreement shall be a
material breach of this Agreement by the attempting Party and shall be void and without force or
effect; provided, however, that either Party may, without such consent, assign this
Agreement and its rights and obligations hereunder in connection with the transfer or sale of all
or substantially all of its assets or stock, in the event of its merger or consolidation or change
in control or similar transaction, or, in the case of Licensee, in the event of a sale or transfer
by Licensee of all or substantially all of its vaccine business related to the Licensed Product in
connection with the transfer or sale of all or substantially all of its business related to a
Licensed Product (any such transaction described in this proviso, a “Permitted
Assignment”). In the event of a Permitted Assignment by Licensee, [ * ]. In addition, either
Party may, without such consent, assign this Agreement and delegate its rights and obligations
hereunder, in whole or in part, to an Affiliate; provided, however, that the Party
making any such assignment or delegations shall, notwithstanding such assignment or delegation,
remain responsible for the full, complete and faithful performance of its obligations hereunder.
This Agreement shall be binding upon, and inure to the benefit of, each Party, and its permitted
successors and assigns.




11.2 Governing Law.



This Agreement shall be governed by and construed in accordance with the laws of the state of New
York, U.S.A. without regard to its conflict of law rules.




11.3 Dispute Resolution.



In the event of any dispute, controversy or claim arising out of, relating to or in connection with
any provision of this Agreement, the Parties shall try to settle their differences amicably and in
good faith between themselves first, by referring the disputed matter to the respective Chief
Executive Officers of each Party, or any direct report designated by such Chief Executive Officer.
In the event such executives are unable to resolve such dispute within a thirty (30) day period,
either Party may invoke the provisions of this Section 11.3. Except as provided in Section 11.4,
any dispute, controversy or claim arising out of or relating to this Agreement, or the breach
thereof, including any question regarding this Agreement’s existence, termination or validity,
shall be referred to and finally settled by binding arbitration, in accordance with the rules of
the American Arbitration Association in force on the date the demand for arbitration is filed. The
demand for arbitration may be filed by either Party within a reasonable time after the controversy
or claim has arisen, but no later than after the date upon which institution of legal proceedings
shall be barred by the applicable statute of limitations. There shall be three (3) arbitrators,
each Party to designate one arbitrator and the two Party-designated arbitrators to select the third
arbitrator. The Party initiating recourse to arbitration shall include in its notice of
arbitration its appointment of an arbitrator. The place of arbitration shall be New York, New
York. The language to be used in the arbitral proceedings shall be English. Any determination by
such arbitration shall be final and conclusively binding, and shall not include any damages
expressly prohibited by Section 10.5. Judgment on the arbitral award may be entered in any



 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





24









 






License Agreement




court having jurisdiction thereof. All costs incurred in connection with such arbitration,
including reasonable attorneys’ fees, shall be borne by the Party which incurs the costs.




11.4 No Arbitration of Patent Disputes.



Unless otherwise agreed by the Parties, disputes relating to the scope, validity, enforceability or
infringement of Patents shall not be subject to arbitration, and shall be submitted to a court or
patent office of competent jurisdiction.




11.5 Injunctive Relief and Jurisdiction.



Nothing in this Agreement shall be construed to limit or preclude a Party from bringing any action
in any court of competent jurisdiction for injunctive or other provisional relief to compel the
other Party to comply with its obligations hereunder, whether before or during the pendancy of
arbitration proceedings. The Parties agree that all such suits may, at the option of either Party,
be initiated and maintained before the United States District Court for the Southern or Eastern
District of New York U.S.A. and both Parties submit to personal jurisdiction and to the service of
process, pleadings and notices in connection with any and all actions seeking such injunctive or
provisional relief to the court referred to above. Notwithstanding the foregoing, any dispute
regarding the validity, scope or enforceability of patents, trademarks or other intellectual
property that is or can be the subject of registration with a governmental entity shall be
submitted to a court of competent jurisdiction in the territory in which such rights apply.




11.6 Waiver.



Any delay or failure in enforcing a Party’s rights under this Agreement or any waiver as to a
particular default or other matter shall not constitute a waiver of such Party’s rights to the
future enforcement of its rights under this Agreement, nor operate to bar the exercise or
enforcement thereof at any time or times thereafter, excepting only as to an express written and
signed waiver as to a particular matter for a particular period of time. No waiver of a breach
shall be deemed to be a waiver of a different or subsequent breach.




11.7 Independent Relationship.



Nothing herein contained shall be deemed to create an employment, agency, joint venture or
partnership relationship between the Parties hereto or any of their agents or employees, or any
other legal arrangement that would impose liability upon one Party for the act or failure to act of
the other Party. Neither Party shall have any power to enter into any contracts or commitments or
to incur any liabilities in the name of, or on behalf of, the other Party, or to bind the other
Party in any respect whatsoever.




11.8 Export Control.



This Agreement is made subject to any restrictions concerning the export of the Licensed Product or
technical information from the United States of America which may be imposed upon or related to the
Parties from time to time by the government of the United States of America.



 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





25









 






License Agreement





Licensee agrees that it will not export, directly or indirectly, any technical information acquired
from Coley under this Agreement, and Licensee agrees that it will not export, directly or
indirectly, the Licensed Product using such technical information, to any country for which the
United States government or any agency thereof at the time of export requires an export license or
other governmental approval, without first obtaining any consent that may be required by applicable
law or regulation.




11.9 Entire Agreement; Amendment.



This Agreement (along with the Exhibits attached hereto) sets forth the complete, final and entire
agreement of the Parties relating to the subject matter hereof and all the covenants, promises,
agreements, warranties, representations, conditions and understandings between the Parties with
respect thereto and supersedes and terminates all prior agreements, writings and understandings
between the Parties to the extent they relate to the subject matter hereof, including the term
sheet agreed to by the Parties. There are no covenants, promises, agreements, warranties,
representations, conditions or understandings, either oral or written, between the Parties relating
to the subject matter hereof other than as are set forth herein or otherwise contemplated by this
Section 11.9. No terms or provisions of this Agreement shall be varied or modified and no
subsequent alteration, amendment, change or addition to this Agreement shall be binding upon the
Parties unless reduced to writing and signed by an authorized officer of each Party.




11.10 Notices.



Each notice required or permitted to be given or sent under this Agreement shall be in writing and
delivered personally or given by facsimile transmission (with confirmation copy by registered
first-class mail) or by registered or certified mail (return receipt requested) or
internationally-recognized overnight courier, to the Parties at the addresses and facsimile numbers
indicated below.




	 	 	 
	If to Coley, to:

	 	Coley Pharmaceutical Group, Inc.
	 

	 	Wellesley Gateway
	 

	 	93 Worcester Street, Suite 101
	 

	 	Wellesley, MA 02481, U.S.A.
	 

	 	Attention: President and CEO
	 

	 	Facsimile: 1-781-431-6403
	 
	 	 
	with a copy to:

	 	Coley Pharmaceutical Group, Inc.
	 

	 	Wellesley Gateway
	 

	 	93 Worcester Street, Suite 101
	 

	 	Wellesley, MA 02481, U.S.A.
	 

	 	Attention: Senior Vice President and General Counsel
	 

	 	Facsimile: 1-781-431-6403
	 
	 	 
	If to Licensee, to:

	 	Dynavax Technologies Corporation
	 

	 	2929 Seventh Street, Suite 100





 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.






26









 






License Agreement




	 	 	 
	 

	 	Berkeley, California 94710
	 

	 	Attn: Chief Executive Officer
	 
	 	 
	with a copy to:

	 	Dynavax Technologies Corporation
	 

	 	2929 Seventh Street, Suite 100
	 

	 	Berkeley, California 94710
	 

	 	Attn: General Counsel





All notices, requests, reports, approvals or other communications required or permitted under this
Agreement shall be in writing (except in the case of verbal communications and teleconferences
updating either Party as to the status of work hereunder), and shall be deemed given (a) when
delivered personally; (b) five (5) days after having been sent by registered or certified mail,
return receipt requested, postage prepaid; or (c) one (1) day after deposited with a commercial
express courier specifying next day delivery, with written verification of receipt. No notice of
default or termination shall be deemed effective unless delivered by two (2) of the aforementioned
delivery routes. Either Party may change its address or its facsimile number by giving the other
Party written notice, delivered in accordance with this Section 11.10.




11.11 Force Majeure.



Failure of any Party to perform its obligations under this Agreement (except the obligation to make
payments when properly due) shall not subject such Party to any liability or place them in breach
of any term or condition of this Agreement to the other Party if such failure is caused by any
cause beyond the reasonable control of such non-performing Party, including acts of God, fire,
explosion, flood, drought, war (whether or not declared), terrorism, riot, sabotage, embargo,
strikes or other labor trouble, failure in whole or in part of suppliers to deliver on schedule
materials, equipment or machinery, interruption of or delay in transportation, a national health
emergency or compliance with any order or regulation of any government entity acting with color of
right unless such governmental order or regulation was the direct result of a Party’s failure to
comply with applicable law; provided, however, that the Party affected shall promptly notify the
other Party of the condition constituting force majeure as defined herein and shall exert
reasonable efforts to eliminate, cure and overcome any such causes and to resume performance of its
obligations with all possible speed. If a condition constituting force majeure as defined herein
exists for more than ninety (90) consecutive days, the Parties shall meet to negotiate a mutually
satisfactory solution to the problem, if practicable.




11.12 Severability.



If any provision of this Agreement is declared invalid or unenforceable by a court having competent
jurisdiction, it is mutually agreed that, except to the extent that either Party would be adversely
affected thereby, this Agreement shall endure except for the part declared invalid or unenforceable
by order of such court; provided, however, that in the event that the terms and conditions of this
Agreement are materially altered, the Parties will, in good faith, renegotiate the terms and
conditions of this Agreement to reasonably substitute a valid and enforceable



 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





27









 






License Agreement




provision consistent with the intent of this Agreement for such invalid or unenforceable provision.




11.13 Further Actions.



Each Party agrees to execute, acknowledge and deliver such further instruments, and to do all such
other acts, as may be necessary or appropriate in order to carry out the purposes and intent of
this Agreement.




11.14 Headings.



The captions to the several Sections hereof are not a part of this Agreement, but are merely guides
or labels to assist in locating and reading the several Sections hereof.




11.15 Waiver of Rule of Construction.



Each Party has had the opportunity to consult with counsel in connection with the review, drafting
and negotiation of this Agreement. Accordingly, the rule of construction that any ambiguity in
this Agreement shall be construed against the drafting party shall not apply.




11.16 Counterparts.



This Agreement may be executed in any number of counterparts, each of which shall be an original as
against either Party whose signature appears thereon, but all of which taken together shall
constitute but one and the same instrument. Copies of executed counterparts of this Agreement
transmitted by facsimile shall be considered original executed counterparts provided receipt of
such facsimile is confirmed.




11.17 Bankruptcy.



All rights and licenses granted under this Agreement are, and shall otherwise be deemed to be, for
purposes of Section 365(n) of Title 11, U.S. Code (the “Bankruptcy Code”), licenses of rights to
“intellectual property” as defined under Section 101 of the Bankruptcy Code. Licensee, as a holder
of such rights under this Agreement, shall retain and may fully exercise any or all of its rights
and elections under the Bankruptcy Code. In the event of commencement of a bankruptcy proceeding
by or against Coley under the Bankruptcy Code, Licensee shall be entitled to a complete duplicate
of (or complete access to, as appropriate) any intellectual property licensed by Licensee
hereunder, and all embodiments of such intellectual property, if not already in its possession,
shall be promptly delivered to Licensee.




BALANCE OF PAGE INTENTIONALLY LEFT BLANK



 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.






28









 






License Agreement





IN WITNESS WHEREOF, the Parties have executed this Agreement as of the date first set forth above.




	 	 	 	 	 	 	 	 	 	 	 
	Coley Pharmaceutical Group, Inc.	 	 	 	Dynavax Technologies Corporation	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	By: 

Title:

	 	/s/ Robert L. Bratzler
 

President & CEO
	 	 	 	By:

Title:
	 	/s/ Dino Dina
 

President & CEO
	 	 







 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





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License Agreement




EXHIBIT A




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	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.






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	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





31









 






License Agreement




EXHIBIT B




Iowa Agreement



 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





32









 






License Agreement



Exhibit 10.16 to Coley Pharmaceutical Group, Inc. Form S-1 filed April 20, 2005




LICENSE AGREEMENT




     This Agreement is made and entered into as of March 31, 1997 (the “Effective Date”) by and
between the University of Iowa Research Foundation (hereinafter “UIRF”) having offices at 214
Technology Innovation Center, Iowa City, Iowa 52242-5000 and CpG ImmunoPharmaceuticals, Inc.
(hereinafter “Licensee”), a Delaware corporation.



     WHEREAS, under the patent policy of The University of Iowa (“UI”), all inventions and
technology arising during the normal course of research and teaching at the UI are assigned and
entrusted to the UIRF to obtain patent or other appropriate intellectual property protection and
license said technology;



     WHEREAS, UIRF is, therefore, owner by assignment from Arthur M. Krieg (inventor/s) of his
entire right, title and interest in United States Patent Application Serial No. [**********] filed
[*************] titled “[*****************************],” (UIRF #[*****] and in the foreign patent
applications corresponding thereto, and in the inventions described and claimed herein;



     WHEREAS, Licensee wishes to obtain an exclusive world-wide license in order to practice
the above-referenced invention covered by patent rights in the United States and in certain foreign
countries, and to manufacture, use and sell in the commercial market the products made in
accordance therewith; and



     WHEREAS, UIRF wishes to grant such a license to Licensee in accordance with the terms of
this Agreement.



     NOW, THEREFORE, in consideration of the foregoing premises, the parties agree as follows:



ARTICLE 1.




DEFINITIONS




     1.1 PARENT RIGHTS shall mean U.S. patent application Serial No. [**********] filed
[************], the inventions described and claimed therein, and any divisions, continuations,
continuations-in-part to the extent the claims are directed to subject matter specifically
described in USSN [**********], patents issuing thereon or reissues thereof; and any and all
foreign patents and patent applications corresponding thereto; which will be automatically
incorporated in and added to this Agreement and shall periodically be added to Appendix A attached
to this Agreement and made part thereof.



     1.2 LICENSED PRODUCTS shall mean any product the sale, use or manufacture of which would
infringe a pending or issued claim of the PATENT RIGHTS but for the license granted hereunder.


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





33









 






License Agreement






     1.3 LICENSED PROCESSES shall mean the processes claimed in PATENT RIGHTS or some portion
thereof.



     1.4 NET SALES shall mean the amount billed or invoiced on sales of LICENSED PRODUCTS less:
(a) Customary trade, quantity or cash discounts and non-affiliated brokers’ or agents’ commissions
actually allowed and taken; (b) Amounts repaid or credited by reason of rejection or return; (c) To
the extent separately stated on purchase orders, invoices or other documents of sale, taxes levied
on and/or other governmental charges made as to production, sale, transportation, delivery or use
and paid by or on behalf of Licensee; and/or (d) Shipping and insurance charges.



     In the event that a LICENSED PRODUCT under this Agreement is sold in combination with
another active ingredient or component having independent therapeutic effect or diagnostic
utility  ,  then “NET SALES,” for purposes of determining royalty payments on
the combination, shall be calculated using one of the following methods:




	 	(e)	 	By multiplying the NET SALES of the combination by the fraction
A/A+B, where A is the gross selling price, during the royalty
paying period in question, of the LICENSED PRODUCT sold
separately, and B is the gross selling price, during the royalty
period in question, of the other active ingredients or components
sold separately; or
	 
	 	(f)	 	In the event that no such separate sales are made of the LICENSED
PRODUCT or any of the active ingredients or components in such
combination package during the royalty paying period in question,
NET SALES, for the purposes of determining royalty payments, shall
be calculated using the above formula where A is the reasonably
estimated commercial value of the LICENSED PRODUCT sold separately
and B is the reasonably estimated commercial value of the other
active ingredients or components sold separately. Any such
estimates shall be determined using criteria to be mutually agreed
upon by the parties. Such estimates shall be reported to UIRF with
the reports to be provided to UIRF pursuant to Section 4.3 hereof.





     1.5 AFFILIATE shall mean any company, corporation, or business in which the entity in
question owns or controls at-least fifty percent (50%) of the voting stock.



     1.6 AGREEMENT YEAR shall mean the annual period commencing upon an anniversary of the
Effective Date.



     1.7 QIAGEN shall mean QIAGEN GmbH, a German corporation, having its principal address at
Max-Volmer-Str. 4, 40724 Hilden, Germany.


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





34









 






License Agreement







ARTICLE 2.




GRANT




     2.1 UIRF hereby grants to Licensee and Licensee hereby accepts, subject to the terms and
conditions hereof a worldwide exclusive license under the PATENT RIGHTS to make and have made, to
use and have used, to import and have imported, to offer for sale and have offered for sale, and to
sell and have sold the LICENSED PRODUCTS, and to practice the LICENSED PROCESSES. Such license
shall include the right to grant sublicenses, provided, however, that Licensee shall provide UIRF
with a copy of any sublicense agreement promptly upon its execution and that such sublicense
agreement must contain terms that do not diminish any of the legal or financial rights of UIRF
hereunder, including but not limited to the indemnification and insurance provided under this
Agreement. In recognition of the exclusive nature of this license, UIRF agrees that it will not
grant licenses under PATENT RIGHTS to others except as required by UIRF’s obligations in Paragraph
2.3(a) and that it will not provide any proprietary materials relating to the PATENT RIGHTS to any
commercial entity for any purpose or to entities other than commercial entities for any commercial
purpose unless otherwise approved by Licensee.



     2.2 The term of this Agreement and the exclusive license set forth in Paragraph 2.1 shall
be from the Effective Date of this Agreement until the expiration of the last to expire of the
PATENT RIGHTS or for a period of fifteen years, whichever is longer.



     2.3 The granting and acceptance of this license is subject to the following conditions:




	 	(a)	 	The UI Patent Policy approved in 1983, Public Law 96-517 and
Public Law 98-620. Any right granted in this Agreement greater
than that permitted under Public Law 96-517 or Public Law 98-620
shall be subject to modification as may be required to conform to
the provision of that statute.
	 
	 	(b)	 	UIRF shall have the right to make and to use for research purposes
only and not for any commercial purpose unless otherwise approved
by Licensee, the subject matter described and claimed in PATENT
RIGHTS. UIRF shall not disclose any confidential information or
proprietary materials relating to the PATENT RIGHTS to any other
party without prior written consent of Licensee and without use of
a confidentiality agreement in the form of Appendix B or a
material transfer agreement in the form of Appendix C, an executed
copy of which shall be provided to Licensee.
	 
	 	(c)	 	Licensee shall pay all future costs connected with the commercial
development of the LICENSED PRODUCTS, including but not limited to
the costs of complying with applicable government testing,
approvals and regulations.
	 
	 	(d)	 	Licensee shall use reasonable efforts to effect introduction of the LICENSED PRODUCTS into the commercial market as soon as practicable,




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





35









 






License Agreement







consistent with sound and reasonable business practices and judgement; thereafter, until the
expiration of this Agreement, Licensee shall endeavor to keep LICENSED PRODUCTS reasonably
available to the public.




	 	(e)	 	UIRF shall have the right to terminate or render this license
non-exclusive if Licensee shall not be capitalized with an
aggregate investment of at least [***** ******] U.S. dollars (US
$[*********]) prior to the first anniversary of the Effective
Date.
	 
	 	(f)	 	UIRF shall have the right to terminate or render this license
non-exclusive at any time after three (3) years from the Effective
Date if, in UIRF’s reasonable judgment, Licensee:






	 	(i)	 	has not put the licensed subject matter into commercial use in the
country or countries where licensed, directly or through a
sublicense, and is not keeping the licensed subject matter
reasonably available to the public, or
	 
	 	(ii)	 	is not demonstrably engaged in a research, development,
manufacturing, marketing, or licensing program, as appropriate,
directed toward this end.






	 	 	In making this determination, UIRF shall take into account the normal course of such
programs conducted with sound and reasonable business practice and judgment and shall take into
account the reports provided hereunder by Licensee.






	 	(g)	 	All sublicenses granted by Licensee hereunder shall include a
requirement that the sublicensee use reasonable efforts to effect
introduction of the LICENSED PRODUCTS into the commercial market
as soon as practicable, consistent with sound and reasonable
business practices and judgement and shall bind the sublicensee to
meet Licensee’s obligations to UIRF under this Agreement and a
copy of this Agreement shall be attached to such sublicense
agreements. Copies of all sublicense agreements shall be provided
to UIRF.





     2.4 Upon expiration of the period of exclusivity of this license, Licensee shall receive a
fully paid up perpetual license to make and have made, to use and have used, to import and have
imported, to offer for sale and have offered for sale, and to sell and have sold the LICENSED
PRODUCTS, and to practice the LICENSED PROCESSES.



     2.5 Licensee agrees during the exclusive period of this license in the United States that
any LICENSED PRODUCT produced for sale in the United States will be manufactured substantially in
the United States unless any waiver of such requirement is obtained. UIRF shall, at Licensee’s
request and expense, assist Licensee in attempting to obtain such a waiver, should Licensee
determine to do so.


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.






36









 






License Agreement







     2.6 UIRF hereby grants to Licensee the right to extend the licenses granted in Paragraph 2.1
to an AFFILIATE subject to the terms and conditions hereof.



     2.7 All rights reserved to the United States Government and others under Public Law 96-517
and 98-620 shall remain and shall in no way be affected by this Agreement.



ARTICLE 3.




ROYALTIES, PAYMNTS




     3.1 Licensee shall pay to UIRF a non-refundable license fee in the sum of $[*******] as
follows:


$[******] payable within thirty days of the Effective Date

$[******] payable six months after the Effective Date

$[******] payable twelve months after the Effective Date

$[******] payable eighteen months after the Effective Date

$[******] payable twenty-four months after the Effective Date





	 	3.2	 	(a) Licensee shall pay UIRF within forty-five (45) days after the
end of each calendar quarter, during the term of the license of
Paragraph 2.1, royalties on NET SALES of all LICENSED PRODUCTS
sold by Licensee and its AFFILIATES or sublicensees as follows:





     In the human field:


[*]%, if total royalty being paid on the LICENSED PRODUCT to all parties, other than by
Licensee to [******] and its AFFILIATES for anything other than licenses under issued patents, is
less than [*]%



[****]%, if total royalty being paid on the LICENSED PRODUCT to all parties, other than by
Licensee to [******] and its AFFILIATES for anything other than licenses under issued patents, is
greater than or equal to [*]%, but less than [*]%



[*]%, if total royalty being paid on the LICENSED PRODUCT to all parties, other than by
Licensee to [******] and its AFFILIATES for anything other than licenses under issued patents, is
greater than or equal to [*]%




     In the animal field:



     [***]% on NET SALES of LICENSED PRODUCTS



     (b) On sales between Licensee and its AFFILATES or sublicensees for resale, the royalty
shall be paid on the resale.




	 	3.3	 	Commencing in the fifth AGREEMENT YEAR, an annual license maintenance fee




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




                           
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.






37









 






License Agreement





payment of $[*******] shall be payable to the UIRF, payable within forty-five (45) days of the end
of each AGREEMENT YEAR. This payment shall be reduced by the amount of any milestones, royalties or
non-royalty sub-license income accrued to the UIRF solely during that AGREEMENT YEAR but shall not
be reduced by (a) any royalties accruing in any other AGREEMENT YEAR or (b) contract research
funding payable to the University of Iowa pursuant to the terms of any Sponsored Research
Agreement.




     3.4 Licensee shall pay to UIRF the following sums within thirty (30) days of the
achievement of the indicated milestones;




$[******] payable upon the
[******************************************************************] LICENSED PRODUCTS in the
animal field in the United States




$[******] payable upon
[****************************************************************************] LICENSED PRODUCTS
in the human field




$[******] payable upon [*****************************************************************]
LICENSED PRODUCTS in the human field in [**********************************]



     3.5 In the case of sublicenses, Licensee shall also pay to UIRF [***********] percent
[**]% of all license issue fees and license maintenance fees, excluding equity investments in
Licensee and any funds received by Licensee for the conduct of research.



ARTICLE 4.




REPORTING, CONFIDENTIALITY




     4.1 Prior to signing this Agreement, Licensee has provided to UIRF a written business plan
pertaining to the subject matter of the licenses granted hereunder. UIRF hereby acknowledges
receipt of such business plan.



     4.2 Licensee shall provide brief written annual reports within sixty (60) days after each
anniversary of the Effective Date which shall include but not be limited to: summaries of progress
on research and development, regulatory approvals, manufacturing, sublicensing, marketing and sales
during the preceding twelve (12) months as well as plans for the coming year. If progress differs
from that anticipated in the plan provided under 4.1, or in the previous annual report, Licensee
shall explain the reasons for the differences and propose a modified plan for UIRF’s review and
approval. Licensee shall also provide any reasonable additional data UIRF requires to evaluate
Licensee’s performance.




	 	4.3	 	(a) Commencing upon the first sale of LICENSED PRODUCTS, Licensee
agrees to submit to UIRF within forty-five (45) days after the
calendar quarters ending




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





38









 






License Agreement








March 31, June 30, September 30, and December 31, reports setting forth for the preceding three
(3) month period at least the following information:




	 	i)	 	the number of LICENSED PRODUCTS sold by Licensee, its AFFILIATES and sublicensees;
	 
	 	ii)	 	total billings for each LICENSED PRODUCT;
	 
	 	iii)	 	an accounting for all LICENSED PROCESSES used or sold;
	 
	 	iv)	 	deductions applicable to determine the NET SALES thereof
	 
	 	v)	 	the amount of royalty due thereon;






and with each such royalty report to pay the amount of royalty due. Such report shall be
certified as correct by an officer of Licensee and shall include a detailed listing of all
deductions from royalties as specified herein. If no royalties are due to UIRF for any reporting
period, the written report shall so state.




     b) All payments due hereunder shall be payable in United States dollars.
Conversion of foreign currency to US, dollars shall be made at the conversion rate existing in
the United States (as reported in the Wall Street Journal) on the last working day of each
royalty period. Such payments shall be without deduction of exchange, collection or other
charges.




     (c) All such reports shall be maintained in confidence by UIRF, except as required by law, including Public Law 96-517 and 98-620.




     (d) Late payments shall be subject to an interest charge of [****************] percent ([*****]%) per month.



     4.4 UIRF shall not disclose the contents of the business plan or any report provided by
Licensee hereunder to any third party without the prior written consent of Licensee, which consent
shall not be unreasonably withheld, except to the extent that disclosure of any such information
shall be required by government agencies.



ARTICLE 5.




RECORD KEEPING




     Licensee shall keep, and shall require its AFFILIATES and sublicensees to keep, accurate
and correct records of LICENSED PRODUCTS made, used, imported or sold under this Agreement,
appropriate to determine the amount of royalties due hereunder to UIRF. Such records shall be
retained for at least three (3) years following a given reporting period. They shall be available
during normal business hours for inspection at the expense of UIRF by UIRF’s


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





39









 






License Agreement






Internal Audit Department or by a Certified Public Accountant selected by UIRF and approved by
Licensee for the sole purpose of verifying reports and payments hereunder. Such accountant shall
not disclose to UIRF any information other than information relating to accuracy of reports and
payments made under this Agreement. In the event that any such inspection shows an underreporting
and underpayment in excess of [****] percent ([*]%) for any twelve (12) month period, then Licensee
shall pay the cost of such examination as well as any additional sum that would have been payable
to UIRF had the Licensee reported correctly, plus interest.




ARTICLE 6.




FILING, PROSECUTION AND MAINTENANCE OF PATENTS




     6.1 Licensee shall reimburse UIRF for all reasonable expenses heretobefore incurred by
UIRF for the preparation, filing, prosecution and maintenance of PATENT RIGHTS and not previously
reimbursed by or on behalf of Licensee promptly upon execution of this Agreement and shall
reimburse UIRF for all such ongoing expenses within thirty (30) days of receipt of invoices from
UIRF. Late payment of these invoices shall be subject to interest charges of [*****************]
percent ([***]%) per month. UIRF shall take responsibility for the preparation, filing, prosecution
and maintenance of any and all patent applications and patents included in PATENT RIGHTS using
patent counsel approved by Licensee, such approval to not be unreasonably withheld. UIRF shall
promptly inform Licensee regarding all matters directly pertaining to prosecution of LICENSED
PATENTS, and shall seek Licensee’s counsel concerning all proposed courses of action affecting the
LICENSED PATENTS, including but not limited to in which countries patent prosecution should be
obtained and all proposed courses of action in any interference proceedings. UIRF shall cause its
patent counsel to provide Licensee with copies of all correspondence regarding PATENT RIGHTS and
UIRF shall provide Licensee sufficient opportunity to comment on any document that UIRF intends to
file or to cause to be filed with the relevant intellectual property or patent office.



     6.2 UIRF and Licensee shall cooperate fully in the preparation, filing, prosecution and
maintenance of PATENT RIGHTS and of all patents and patent applications licensed to Licensee
hereunder, executing all papers and instruments or requiring members of UIRF to execute such papers
and instruments as to enable UIRF to apply for, to prosecute and to maintain patent applications
and patents in UIRF’s name in any country. Each party shall provide to the other prompt notice as
to all matters which come to its attention and which may affect the preparation, filing,
prosecution or maintenance of any such patent applications or patents.



     6.3 If Licensee elects to no longer pay the expenses of prosecution or maintenance of a
patent application or patent included with PATENT RIGHTS, Licensee shall notify UIRF not less than
sixty (60) days prior to such action and shall thereby surrender its rights hereunder to such
patent or patent application.



ARTICLE 7.




MARKING



Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





40









 






License Agreement







     7.1 If a PATENT RIGHT has been or is subsequently issued to UIRF covering any feature or
features of the LICENSED PRODUCTS, Licensee agrees to mark each and every package or container in
which the LICENSED PRODUCTS are used or sold by or for Licensee with marking complying with the
provisions of Title 35, U.S. Code, Section 287, if required, or any future equivalent provisions of
the United States relating to the marking of patented devices, or with marking complying with the
law of the country where the LICENSED PRODUCTS are shipped, used or sold.



ARTICLE 8.




INFRINGEMENT




     8.1 With respect to any PATENT RIGHTS under which Licensee is exclusively licensed
pursuant to this Agreement, Licensee or its sublicensee shall have the right to prosecute in its
own name and at its own expense any infringement of such patent, so long as such license is
exclusive at the time of the commencement of such action. UIRF agrees to notify Licensee promptly
of each infringement of such patents of which UIRF is or becomes aware, Before Licensee or its
sublicensees commences an action with respect to any infringement of such patents, Licensee shall
give careful consideration to the views of UIRF and to potential effects on the public interest in
making its decision whether or not to sue and in the case of a Licensee sublicense, shall report
such views to the sublicensee.



     8.2 If Licensee elects to sue for patent infringement, UIRF agrees to be named as nominal
third party plaintiff if necessary to the commencement of any such action, and further agrees to
provide any information available to UIRF and needed by Licensee in prosecuting such action.
Licensee shall reimburse UIRF for any costs it incurs as part of an action brought by Licensee or
its sublicensee, irrespective of whether UIRF shall become a co-plaintiff.



     8.3 If Licensee or its sublicensee elects to commence an action as described above,
Licensee may reduce, by up to [*****] percent ([**]%), the royalty due to UIRF earned under the
patent subject to suit by [*****] percent ([**]%) of the amount of the expenses and costs of such
action, including attorney fees. In the event that such [*****] percent ([**]%) of such expenses
and costs exceed the amount of royalties withheld by Licensee for any calendar year, Licensee may
to that extent reduce the royalties due to UIRF from Licensee in succeeding calendar years, but
never by more than [*****] percent ([**]%) of the royalty otherwise due in any one year.



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



     8.5 Recoveries or reimbursements from such action shall first be applied to reimburse
Licensee and UIRF for litigation costs not paid from royalties and then to reimburse UIRF for
royalties withheld. Any remaining recoveries or reimbursements shall be divided [**]% to Licensee
and [**]% to UIRF.



     8.6 In the event that Licensee and its sublicensee, if any, elect not to exercise their
right


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.






41









 






License Agreement






to prosecute an infringement of the PATENT RIGHTS pursuant to the above paragraphs, UIRF may do so
at its own expense, controlling such action and retaining all recoveries therefrom.




     8.7 If a declaratory judgment action alleging invalidity of any of the PATENT RIGHTS shall
be brought against Licensee or UIRF, then UIRF, at its sole option, shall have the right to
intervene and take over the sole defense of the action at its own expense.



     8.8 UIRF shall have no obligation to defend any action for infringement brought against
Licensee by a third party. In the event Licensee is sued by a third party, and as a result of the
settlement of such suit is required to pay a royalty to a third party on a LICENSED PRODUCT, the
amount of royalty paid will be deducted from the royalty payment due to the UIRF for that LICENSED
PRODUCT. In the event the settlement prevents the Licensee from continuing sales of a LICENSED
PRODUCT, no additional royalties and/or minimum royalties will apply for that LICENSED PRODUCT.



ARTICLE 9.




TERMINATION OF AGREEMENT




     9.1 Upon any termination of this Agreement, and except as provided herein to the contrary,
all rights and obligations of the Parties hereunder shall cease, except as follows:



     (a) UIRF’s right to receive or recover and Licensee’s obligation to pay royalties accrued or accruable for payment at the time of any termination;



     (b) Licensee’s obligation to maintain records and UIRF’s right to conduct a final audit as provided in Article 5 of this Agreement; and



     (c) Any cause of action or claim of either party, accrued or to accrued because of any breach or default by the other party.



     9.2 In the event Licensee fails to make payments due hereunder, UIRF shall have the right
to terminate this Agreement upon forty-five (45) days’ written notice, unless Licensee makes such
payments plus interest within the forty-five (45) day notice period or unless any such payment is
contested in good faith, in which event UIRF shall not have the right to terminate this Agreement
until the matter is resolved and Licensee still fails to make any such payment. If payments are not
so made, UIRF may immediately terminate this Agreement.



     9.3 In the event that Licensee shall be in default in the performance of any obligations
under this Agreement (other than as provided in 9.2 above which shall take precedence over any
other default), and if the default has not been remedied within ninety (90) days after the date of
notice in writing of such default, UIRF may terminate this Agreement immediately by written notice,
unless any such obligation is contested in good faith, in which event UIRF shall not have the right
to terminate this Agreement until the matter is resolved and Licensee still fails to perform any
such obligation.


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





42









 






License Agreement






     9.4 In the event that Licensee shall become insolvent, shall make an assignment for the
benefit of creditors, or shall have a petition in bankruptcy filed for or against it, which
petition shall remain unstayed for a period of ninety (90) days, UIRF shall have the right to
terminate this entire Agreement immediately upon giving Licensee written notice of such
termination.



     9.5 In the event the license granted to Licensee hereunder terminates for any reason, any
sublicenses granted by Licensee under this Agreement shall continue; provided that, such
sublicensee agrees in writing that UIRF is entitled to enforce such agreements directly against
such sublicensee.



     9.6 Licensee shall have the tight to terminate this Agreement by giving ninety (90) days
advance written notice to UIRF to that effect and paying a termination fee of $[******]. Upon
termination, a final report shall be submitted and any royalty payments and unreimbursed patent
expenses due to UIRF shall become immediately payable.



     9.7 Licensee shall have the right during a period of six (6) months following the
effective date of any termination to sell or otherwise dispose of the LICENSED PRODUCT existing at
the time of such termination, and shall make a final report and payment of all royalties related
thereto within sixty (60) days following the end of such period or the date of the final
disposition of such inventory, whichever first occurs.



     9.8 Termination of this agreement with respect to a particular LICENSED PRODUCT shall not
alter the rights and obligations of the parties with respect to the remaining LICENSED PRODUCTS.



ARTICLE 10




ASSIGNMENT




     10.1 The rights and licenses granted by UIRF in this agreement are specific and may not be
assigned or otherwise transferred to any party other than to an AFFILIATE of Licensee without the
prior written approval of UIRF, which approval shall not be unreasonably withheld; provided,
however, that Licensee, without such approval, may assign subject to Public Law 96- 517 and Public
Law 98-620, all of its rights hereunder to the acquiring party in connection with the transfer of
all or substantially all of its business and assets to an acquiring party or in the event of its
merger or consolidation with that acquiring party, if and only if the assignee shall assume all
obligations of Licensee under this Agreement. Any attempted assignment or transfer without any such
approval, if required, shall be void and shall automatically terminate all rights of Licensee under
this Agreement.



ARTICLE 11.




REPRESENTATIONS AND WARRANTIES: LIMITATIONS




     11.1 Nothing in this agreement shall be construed as:


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





43









 






License Agreement







	 	(a)	 	A warranty or representation by UIRF as to the validity or scope of any PATENT RIGHT; or
	 
	 	(b)	 	A warranty or representation that anything made, used or sold
under the license granted in this agreement is or will be free
from infringement of patents owned by third parties, or
	 
	 	(c)	 	Conferring a right to use in advertising, publicity or otherwise
the name of the UI or UIRF, or the inventors, unless UIRF has
specifically approved the same in writing.





     11.2 UIRF represents that, to the best of its knowledge, any patents issued in respect of
the PATENT RIGHTS will, when issued, be free of any restrictions except for any non-exclusive
rights held by the U.S. Government under the Federal Patent Policy as a result of previous or
present sponsorship.



     11.3 UIRF EXPRESSLY DISCLAIMS ANY AND ALL IMPLIED OR EXPRESS WARRANTIES AND MAKES NO
EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR PURPOSE OF THE
PATENT RIGHTS, BIOLOGICAL MATERIAL, INFORMATION SUPPLIED BY UIRF, LICENSED PROCESSES OR LICENSED
PRODUCTS CONTEMPLATED BY THIS AGREEMENT. UIRF assumes no responsibilities whatever with respect to
design, development, manufacture, use, sale or other disposition by Licensee or AFFILIATES of
LICENSED PRODUCTS or LICENSED PROCESSES. The entire risk as to the design, development,
manufacture, offering for sale, sale, or other disposition and performance of LICENSED PRODUCTS and
LICENSED PROCESSES is assumed by Licensee and AFFILIATES.



ARTICLE 12.




GENERAL





	 	12.1	 	(a) Licensee, its AFFILIATES and sublicensees, shall indemnify,
defend and hold harmless UIRF and the University of Iowa and
their current or former directors, governing board members,
trustees, officers, faculty, medical and professional staff,
employees, students, and agents and their respective successors,
heirs and assigns (the “Indemnities”), against any liability,
damage, loss or expenses (including reasonable attorneys’ fees
and expenses of litigation) incurred by or imposed upon the
Indemnities or any one of them in connection with any claims,
suits, actions, demands or judgments arising out any theory of
product liability (including, but not limited to, actions in the
fours of tort, warranty, or strict liability) concerning any
product, process or service made, used or sold by Licensee, or
its AFFILIATES or sublicensees pursuant to any right or license
granted under this Agreement.






(b) Licensee agrees, at its own expense, to provide attorneys reasonably acceptable to UIRF to
defend against any actions brought or filed against any party indemnified hereunder with respect
to the subject of indemnity contained herein,


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.






44









 






License Agreement








whether or not such actions are rightfully brought.




(c) Beginning at the time as any such product, process or service is being commercially
distributed or sold (other than for the purpose of obtaining regulatory approvals) by Licensee or
by a sublicensee, AFFILIATE or agent of Licensee, Licensee shall, at its sole cost and expense
procure and maintain comprehensive general liability insurance in amounts not less than
$[*********] per incident and $[*********] annual aggregate and naming the Indemnities as
additional insureds. During clinical trials of any such product, process or service Licensee
shall, at its sole cost and expense, procure and maintain comprehensive general liability
insurance in such equal or lesser amounts as UIRF shall require, naming the Indemnities as
additional insureds. Such comprehensive general liability insurance shall provide (i) product
liability coverage and (ii) broad form contractual liability coverage for Licensee’s
indemnification under this Agreement. If Licensee elects to self-insure all or part of the limits
described above (including deductibles or retentions which are in excess of $[*******] annual
aggregate) such self-insurance program must be acceptable to UIRF. The minimum amounts of
insurance coverage required shall not be construed to create a limit of Licensee’s liability with
respect to its indemnification under this Agreement.




(d) Licensee shall provide UIRF with written evidence of such insurance upon request of UIRF.
Licensee shall provide UIRF with written notice at least fifteen (15) days prior to the
cancellation, non-renewal or material change in such insurance; if Licensee does not obtain
replacement insurance providing comparable coverage within such fifteen (15) day period, UIRF
shall have the right to terminate this Agreement effective at the end of such fifteen (15) day
period without notice or any additional waiting periods.




(e) Licensee shall maintain such comprehensive 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 by a sublicensee, AFFILIATE or agent of Licensee and (ii) a reasonable
period after the period referred to in (e)(i) above which in no event shall be less than fifteen
(15) years.



     12.2 In the event of any controversy or claim arising out of or relating to any provision
of this Agreement or the breach thereof, the parties shall try to settle such conflicts amicably
between themselves. Subject to the limitation stated in the final sentence of this section, any
such conflict which the parties are unable to resolve shall be settled through arbitration
conducted in accordance with the rules of the American Arbitration Association. The demand for
arbitration shall be filed within a reasonable time after the controversy or claim has arisen, and
in no event after the date upon which institution of legal proceedings based on such controversy or
claim would be barred by the applicable statutes of limitation. Such arbitration shall be held in
Chicago,


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.






45









 






License Agreement






Illinois. The award through arbitration shall be final and binding. Either party may enter any such
award in a court having jurisdiction or may make application to such court for judicial acceptance
of the award and an order of enforcement, as the case may be. Notwithstanding the foregoing, either
party may, without recourse to arbitration, assert against the other party a third-party claim or
cross-claim in any action brought by a third party, to which the subject matter of this Agreement
may be relevant.




     12.3 Should a court of competent jurisdiction later consider any provision of this
Agreement to be invalid, illegal, or unenforceable, it shall be considered severed from this
Agreement. All other provisions, rights and obligations shall continue without regard to the
severed provision, provided that the remaining provisions of this Agreement are in accordance with
the intention of the parties.



     12.4 No waiver by a Party of any breach of this Agreement, no matter how long continuing
or how often repeated, shall be deemed a waiver of any subsequent breach thereof, nor shall any
delay or omission on the part of a Party to exercise any right, power or privilege hereunder be
deemed a waiver of such right, power or privilege.



     12.5 The relationship between the Parties is that of independent contractor and
contractee. Licensee shall not be deemed to be an agent of UIRF in connection with the exercise of
any rights hereunder, and shall not have any right or authority to assume or create any obligation
or responsibility on behalf of UIRF.



     12.6 No party hereto shall be deemed to be in default of any provision of this Agreement,
or for any failure in performance, resulting from acts or events beyond the reasonable control of
such Party, such acts of God, acts of civil or military authority, civil disturbance, war, strives,
fires, power failures, natural catastrophes or other “force majeure” events.



ARTICLE 13.




NOTICES; APPLICABLY LAW




     13.1 Any notice, report or payment provided for in this Agreement shall be deemed
sufficiently given if in writing and when sent by express courier, certified or registered mail
addressed to the party for whom intended at the address set forth below, or to such address as
either party may hereafter designate in writing to the other:



	 	 	 	 	 
	 

	 	(a) For the UIRF:
	 	University of Iowa Research Foundation

Attn: Executive Director

100 Oakdale Campus

214 Technology Innovation Center

Iowa City, Iowa 52242-5000
	 
	 	 	 	 
	 

	 	(b) For the Licensee:
	 	CpG ImmunoPharmaceuticals, Inc.

c/o QIAGEN GmbH

Max-Volmer Strasse 4





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





46









 






License Agreement






40724 Hilden

GERMANY

Attn: Joachim Schorr

     Business Development Manager




     13.2 This Agreement shall be construed, interpreted and applied in accordance with the
laws of the State of Iowa.



     13.3 Licensee agrees to comply with all laws and regulations applicable to the subject
matter of this Agreement. In particular, it is understood and acknowledged 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 among other things,
prohibit or require a license for the export of certain types of technical data to certain
specified countries. Licensee hereby agrees and gives written assurance that it will comply with
all United States laws and regulations controlling the export of commodities and technical data,
that it will be solely responsible for any violation of such by Licensee or its AFFILIATES or
sublicensees, and that it will defend and hold UIRF harmless in the event of any legal action of
any nature occasioned by such violation.



ARTICLE 14.




INTEGRATION




     14.1 This Agreement constitutes the final and entire agreement between the parties, and
supersedes all prior written agreement with respect to the subject matter hereof, including without
limitation the Option Agreement between QIAGEN and UIRF dated August 22, 1995, as extended on March
18, 1996, and the Option Agreement between UIRF and QIAGEN dated May 28, 1996, as extended on
September 18, 1996 and January 28, 1997, and any prior or contemporaneous oral understanding
regarding the subject matter hereof. Any representation, promise or condition in connection with
such subject matter which is not incorporated in this agreement shall not be binding on either
party. No modification, renewal, extension or termination of this agreement or any of its
provisions shall be binding upon the party against whom enforcement of such modification, renewal,
extension or termination is sought, unless made in writing and signed an behalf of such party by a
duly authored officer.


IN WITNESS WHEREOF, each of the parties have caused this agreement to be executed by its duly
authorized representative.




	 	 	 	 	 	 	 	 	 	 	 
	Signed this 26 day of March, 1997	 	 	 	Signed this 3 day of April,1997	 	 
	LICENSOR	 	 	 	LICENSEE	 	 
	The University of Iowa Research Foundation	 	 	 	CpG ImmunoPharmaceuticals, Inc.	 	 
	By: 

Name:

	 	/s/ W. Bruce Wheaton
 

W. Bruce Wheaton
	 	 	 	By:

Name:
	 	/s/ Metin Colpan
 

	 	 
	Title:

	 	Executive Director
	 	 	 	Title:	 	 	 	 





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





47









 






License Agreement







Appendix A




Patent Rights are indicated on the following page.



Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 
 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.





48









 






License Agreement






	 	 	 	 	 	 	 	 	 
	L&C	 	Serial No./	 	 	 	 	 	 
	Docket No.	 	Patent No.	 	Title and Inventors	 	Filing Date	 	Status
	[***********]

	 	[*************

*************]
	 	[************************ 

**************************]
	 	[********]
	 	[******************** 

**************************

****************]
	[***********]

	 	[*************

*************]
	 	[************************ 

**************************]
	 	[********]
	 	[******************** 

**************************

****************]
	[***********]

	 	[*************]
	 	[************************ 

**************************]
	 	[********]
	 	[******************** 

**************************

****************]
	[***********]

	 	[************* 

*************]
	 	[************************ 

**************************]
	 	[********]
	 	[******************** 

**************************

****************]
	[***********]

	 	[*************

*************]
	 	[************************ 

**************************]
	 	[********]
	 	[********************

**************************

****************]
	[***********]

	 	[*********]
	 	[************************ 

**************************]
	 	[********]
	 	[********************

**************************

****************]
	[***********]

	 	[*********]
	 	[************************ 

**************************]
	 	[********]
	 	[********************

**************************

****************]
	[*****]

	 	[*********]
	 	[************************

**************************]
	 	[*************]
	 	[******************** 

**************************

****************]
	[*********]

	 	[*********]
	 	[************************ 

**************************]
	 	[********]
	 	[******************** 

**************************

****************]
	[*********]

	 	[*********]
	 	[************************

**************************]
	 	[********]
	 	[******************** 

**************************

****************]





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 




			
	[* ] = Certain confidential information contained in this document, marked by brackets, has been omitted
and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.






49









 





License Agreement




Appendix B




Form of Confidentiality Agreement




[T3/647063.1]



Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




50









 






License Agreement




CONFIDENTIALITY AGREEMENT




     This Agreement is made as of                     , 1997, by and among the
University of Iowa with its principal place of business at                    
(the “Institution”), and                     , having an office at                     (the “Recipient”).


1. Background. The Recipient is interested in receiving certain Proprietary Information
(as defined below) from the Institution for the purpose of establishing and/or maintaining a
business and/or research relationship between the Institution and the Recipient. The Proprietary
Information shall relate to the following subjects:                     .



2. Proprietary Information. As used in this Agreement, the term “Proprietary
Information” shall mean all confidential or proprietary information or materials of the
Institution, whether disclosed in writing, orally, or visually, and which is identified by the
Institution as confidential, including, without limitation, compounds, business plans, financial
statements or technical information.



3. Disclosure of Proprietary Information. The Recipient shall hold in confidence, and
shall not disclose to any person other than its employees, agents and consultants, any Proprietary
Information. The Recipient shall use such Proprietary Information only for the purpose for which it
was disclosed and shall not use or exploit such Proprietary Information for its own benefit or the
benefit of another without the prior written consent of the Institution. The Recipient shall
disclose Proprietary Information received by it under this Agreement only to those of its
employees, agents and consultants who have a need to know such Proprietary Information in the
course of the performance of their duties and who are bound by written agreement to protect the
confidentiality of such Proprietary Information.



4. Limitation on Obligations. The obligations of the Recipient specified in Section 3
above shall not apply, and the Recipient shall have no further obligations hereunder, with respect
to any Proprietary Information to the extent that such Proprietary Information;





	 	(a)	 	is generally known to the public at the time of disclosure or becomes generally known through no wrongful act on the part of the Recipient;
	 
	 	(b)	 	is in the Recipient’s possession at the time of disclosure other
than as a result of prior disclosure by the Institution or a
breach of any legal obligation by Recipient or third party;
	 
	 	(c)	 	becomes known to the Recipient through disclosure by sources other
than the Institution having no duty of confidentiality to the
Institution, whether direct or indirect, with respect to such
Proprietary Information and having the legal right to disclose
such Proprietary Information;
	 
	 	(d)	 	is independently developed by the Recipient without reference to
or reliance upon the Proprietary Information as can be documented
by written records; or
	 
	 	(e)	 	is required to be disclosed by the Recipient to comply with applicable laws or




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




51









 






License Agreement



governmental regulations, provided that the Recipient provides prior written notice of such
disclosure to the Institution and takes reasonable and lawful actions to avoid and/or minimize the
extent of such disclosure.



5. Ownership of Proprietary Information. The Recipient agrees that the Institution is
and shall remain the exclusive owner of the Proprietary Information and all patent, copyright,
trade secret, trademark and other intellectual property rights therein. No license or conveyance of
any such rights to the Recipient is granted or implied under this Agreement.



6. Return of Documents. The Recipient shall, upon the request of the Institution,
return to the Institution all drawings, documents, materials and other tangible manifestations of
the Proprietary Information received by the Recipient pursuant to this Agreement (and all copies
and reproductions thereof) except that one copy of each may be retained by the Recipient’s legal
department for archival purposes only.



7. Term. The Recipient’s obligations under Paragraphs 3 and 4 with respect to each item
of Proprietary Information shall extend for a period of five (5) years from the date of initial
disclosure to Recipient of such item of Proprietary Information.



8. Miscellaneous.





	 	(a)	 	This Agreement supersedes all prior agreements, written or oral,
between the Institution and the Recipient relating to the subject
matter of this Agreement. This Agreement may not be modified,
changed or discharged, in whole or in part, except by an agreement
in writing signed by the Institution and the Recipient.
	 
	 	(b)	 	This Agreement will be binding upon and inure to the benefit of the parties hereto and their respective heirs, successors an assigns.
	 
	 	(c)	 	This Agreement shall be construed and interpreted in accordance
with the laws of the State of Iowa, without giving effect to the
conflict of laws provisions thereof.
	 
	 	(d)	 	The provisions of this Agreement are necessary for the protection
of the business and goodwill of the parties and are considered by
the parties to be reasonable for such purpose. The Recipient
agrees that any breach of this Agreement will cause the
Institution substantial and irreparable harm and, therefore, in
the event of any such breach, in addition to other remedies which
may be available, the Institution shall have the right to seek
specific performance and other injunctive and equitable relief.




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




52









 






License Agreement




     IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed by their duly
authorized representatives as of the date first above written.



	 	 	 	 	 
	The University of Iowa	 	 
	 
	 	 	 	 
	By:
	 	 	 	 
	 

	 	 

	 	 
	Title:
	 	 	 	 
	 

	 	 

	 	 
	 
	 	 	 	 
	RECIPIENT	 	 
	 
	 	 	 	 
	By:
	 	 	 	 
	 

	 	 

	 	 
	Title:
	 	 	 	 
	 

	 	 

	 	 





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




53









 






License Agreement




Appendix C




Form of Material Transfer Agreement




[T3/648340.8]



Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




54









 






License Agreement




PROPRIETARY REAGENT TRANSFER AGREEMENT FOR

REAGENTS SUPPLIED FOR RESEARCH USE ONLY




     This Agreement is made as of                     , 1997 by and among
INSTITUTION, having its principal offices at                      (the
“Institution”), RECIPIENT having an address of                      (the
“Recipient”), and INVESTIGATOR having an address of                      (the
“Investigator”).



     WITNESSETH:



     WHEREAS, Institution possesses certain reagents in the form of                     
[describe]                      and which are further described in U.S.
Patent Application No.                     (all such biological materials including all
Derivatives thereof are hereinafter referred to as “Reagent”). “Derivatives” as used herein shall
mean any material derived from Reagent, or any material resulting from the physical, chemical, or
biological manipulation of Reagent; and



     WHEREAS, Investigator and Recipient are interested in receiving access to limited
quantities of Reagent for the sole purpose of conducting non-commercial research; and



     WHEREAS, Institution is willing to make such Reagent available to Investigator on the
terms and conditions set forth herein.



     NOW THEREFORE, intending to be legally bound, the parties hereto mutually agree as
follows:



     The Reagent is owned by Institution and will continue to be owned by Institution even
after it has been transmitted to Investigator and Recipient;



     Investigator and Recipient shall not use the Reagent in any commercial use or for any
purpose except for research to be conducted by Investigator at the premises of Recipient.



     The Reagent shall be used only in the form provided to you. You shall not [delete or alter
or in any way modify any of the DNA sequences in the vectors supplied to you, modify the vectors
supplied to you for the expression of other DNA sequences, or remove any DNA sequences from the
vectors for use as DNA probes or for expression in other systems whether prokaryotic or eukaryotic
without the prior written consent of Institution;—modify as appropriate.]



     The Reagent shall not be distributed to any third party, except as provided in Paragraph 5
below, and all rights and interests in such Reagent shall vest and reside in Institution;



     Investigator shall keep strict possession of the Reagent and shall only allow access to
the Reagent by people who: (1) are doing research at Investigator’s direction; and (2) have
previously accepted the terms of this Agreement by signing a copy of this Agreement;



     Investigator and Recipient agree not to publish or make public disclosures or file patent
applications on data, products or improvements derived from or including the Reagent furnished


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




55









 






License Agreement



herein, except with Institution’s prior written approval. Institution will use its best efforts to
expeditiously allow Investigator to publish research results in peer review journals.



No license to the Reagent, or any uses therefore other than for the stated research purposes as
described and limited herein are granted by this Agreement;



Investigator and Recipient agree not to grant any rights in or to any research conducted
utilizing Reagent to any commercial institution without prior written consent of Institution.
Institution shall have sole right of first refusal to exclusively license any inventions made in
the course of research conducted utilizing Reagent.



Institution disclaims any liability for damages arising from any use, storage, handling or
disposal by Investigator or Recipient of the Reagent and Recipient agrees to indemnify and hold
Institution harmless against any and all such liability. THE REAGENT IS PROVIDED WITHOUT WARRANTY
OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR USE OR ANY OTHER WARRANTY, EXPRESS OR
IMPLIED.



This Agreement does not create an agency relationship between Recipient or Investigator and
Institution;



Investigator agrees to update Institution on the results of research with this Reagent on a
semi-annual basis and to provide yearly research summaries to Institution;



This Agreement is the sole agreement between the parties in respect to the Reagent. This
Agreement is personal and non-assignable and terminable at will by Institution upon 10 days notice,
at which time all remaining quantities of Reagent shall be delivered to Institution;



Reagent is a valuable proprietary asset of Institution and premature release or disclosure
concerning this Reagent could severely injure Institution. Furthermore, damages are not an adequate
remedy for breach of this Agreement; rather an injunctive remedy may also be required to preserve
Institution’s rights;



This Agreement shall be governed and interpreted in accordance with the laws of the State of
Iowa and the United States of America.



Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




56









 






License Agreement




     IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed by their duly
authorized representatives as of the date first written above.



	 	 	 	 	 	 	 
	 	 	INSTITUTION	 	 
	 
	 	 	 	 	 	 
	 

	 	By:	 	 	 	 
	 

	 	 	 	 

	 	 
	 

	 	Name:	 	 	 	 
	 

	 	 	 	 

	 	 
	 

	 	Title:	 	 	 	 
	 

	 	 	 	 

	 	 
	 

	 	Date:	 	 	 	 
	 

	 	 	 	 

	 	 






	 	 	 	 	 	 	 	 	 	 	 
	AGREED TO AND ACCEPTED:	 	 	 	 	 	 	 	 
	INVESTIGATOR	 	 	 	RECIPIENT	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	By:

	 	 	 	 	 	By:	 	 	 	 
	Name:

	 	 

	 	 	 	Name:
	 	 

	 	 
	Title:

	 	 

	 	 	 	Title:
	 	 

	 	 
	Date:

	 	 

	 	 	 	Date:
	 	 

	 	 
	 

	 	 

	 	 	 	 	 	 

	 	 





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




57









 






License Agreement




APPENDIX D




PROPRIETARY REAGENT TRANSFER AGREEMENT FOR

REAGENTS SUPPLIED FOR RESEARCH USE ONLY




     This Agreement is made as of                     , 1996 by and among
INSTITUTION, having its principal offices at                      (the
“Institution”), RECIPIENT having an address of                      (the
“Recipient”), and INVESTIGATOR having an address of                      (the
“Investigator”).



     WITNESSETH:



     WHEREAS, Institution possesses certain reagents in the form of                    
[describe]                     and which are further described in U.S.
Patent Application No.                     (all such biological materials including all
Derivatives thereof are hereinafter referred to as “Reagent”). “Derivatives” as used herein shall
mean any material derived from Reagent, or any material resulting from the physical, chemical, or
biological manipulation of Reagent; and



     WHEREAS, Investigator and Recipient are interested in receiving access to limited
quantities of Reagent for the sole purpose of conducting non-commercial research; and



     WHEREAS, Institution is willing to make such Reagent available to Investigator on the
terms and conditions set forth herein.



     NOW THEREFORE, intending to be legally bound, the parties hereto mutually agree as
follows:



     (1) The Reagent is owned by Institution and will continue to be owned by Institution even after it has been transmitted to Investigator and Recipient;


Investigator and Recipient shall not use the Reagent in any commercial use or for any purpose
except for research to be conducted by Investigator at the premises of Recipient.



The Reagent shall be used only in the form provided to you. You shall not [delete or alter or
in any way modify any of the DNA sequences in the vectors supplied to you, modify the vectors
supplied to you for the expression of other DNA sequences, or remove any DNA sequences from the
vectors for use as DNA probes or for expression in other systems whether prokaryotic or eukaryotic
without the prior written consent of Institution;—modify as appropriate.]



The Reagent shall not be distributed to any third party, except as provided in Paragraph 5
below, and all rights and interests in such Reagent shall vest and reside in Institution;



Investigator shall keep strict possession of the Reagent and shall only allow access to the
Reagent by people who: (1) are doing research at Investigator’s direction; and (2) have previously
accepted the terms of this Agreement by signing a copy of this Agreement;



Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




58









 






License Agreement



Investigator and Recipient agree not to publish or make public disclosures or file patent
applications on data, products or improvements derived from or including the Reagent furnished
herein, except with Institution’s prior written approval. Institution will use its best efforts to
expeditiously allow Investigator to publish research results in peer review journals.



No license to the Reagent, or any uses therefore other than for the stated research purposes as
described and limited herein are granted by this Agreement;



Investigator and Recipient agree not to grant any rights in or to any research conducted
utilizing Reagent to any commercial institution without prior written consent of Institution.
Institution shall have sole right of first refusal to exclusively license any inventions made in
the course of research conducted utilizing Reagent.



Institution disclaims any liability for damages arising from any use, storage, handling or
disposal by Investigator or Recipient of the Reagent and Recipient agrees to indemnify and hold
Institution harmless against any and all such liability. THE REAGENT IS PROVIDED WITHOUT WARRANTY
OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR USE OR ANY OTHER WARRANTY, EXPRESS OR
IMPLIED.



This Agreement does not create an agency relationship between Recipient or Investigator and
Institution;



Investigator agrees to update Institution on the results of research with this Reagent on a
semi-annual basis and to provide yearly research summaries to Institution;



This Agreement is the sole agreement between the parties in respect to the Reagent. This
Agreement is personal and non-assignable and terminable at will by Institution upon 10 days notice,
at which time all remaining quantities of Reagent shall be delivered to Institution;



Reagent is a valuable proprietary asset of Institution and premature release or disclosure
concerning this Reagent could severely injure Institution. Furthermore, damages are not an adequate
remedy for breach of this Agreement; rather an injunctive remedy may also be required to preserve
Institution’s rights;



This Agreement shall be governed and interpreted in accordance with the laws of the State of
Iowa and the United States of America.



Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




59









 






License Agreement




     IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed by their duly
authorized representatives as of the date first written above.



	 	 	 	 	 	 	 
	 	 	INSTITUTION	 	 
	 
	 	 	 	 	 	 
	 

	 	By:	 	 	 	 
	 

	 	 	 	 

	 	 
	 

	 	Name:	 	 	 	 
	 

	 	 	 	 

	 	 
	 

	 	Title:	 	 	 	 
	 

	 	 	 	 

	 	 
	 

	 	Date:	 	 	 	 
	 

	 	 	 	 

	 	 






	 	 	 	 	 	 	 	 	 	 	 
	AGREED TO AND ACCEPTED:	 	 	 	 	 	 	 	 
	INVESTIGATOR	 	 	 	RECIPIENT	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	By:

	 	 	 	 	 	By:	 	 	 	 
	Name:

	 	 

	 	 	 	Name:
	 	 

	 	 
	Title:

	 	 

	 	 	 	Title:
	 	 

	 	 
	Date:

	 	 

	 	 	 	Date:
	 	 

	 	 
	 

	 	 

	 	 	 	 	 	 

	 	 





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




60









 






License Agreement




Appendix A




PATENT RIGHTS




	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	 	 	FILING	 	 	 	 	 	 
	WG&S ID	 	UIRF ID	 	SN	 	DATE	 	INVENTORS	 	TITLE	 	STATUS
	[**********]

	 	[***********]
	 	[*************]
	 	[********]
	 	[*****]

[*******]

[**********]
	 	[**********

**********]
	 	[**********

**********]
	 

	 	 	 	 	 	 	 	[************]	 	 	 	 
	[**********]

	 	[*****]
	 	[*************]
	 	[********]
	 	[*******]

[**********]
	 	[**********

**********]
	 	[**********

**********]
	[**********]

	 	[***********]
	 	[*************]
	 	[********]
	 	[*****]

[*******]

[**********]
	 	[**********

**********]
	 	[**********

**********]
	[**********]

	 	[*****]
	 	[**********]
	 	[********]
	 	[*************

********]
	 	[**********

**********

**********]
	 	[*******]
	[**********]

	 	[*****]
	 	[*************]
	 	[********]
	 	[******]

[********]
	 	[*************

**************

*************

*************

*************

******** *****

*************

****]
	 	[************

**********]
	[**********]

	 	[***********]
	 	[**********

***]
	 	[******

**]
	 	[******]

[********]
	 	[**************

**************

***************

***************

*******]
	 	[*******]
	[**********]

	 	[*****]

[********]
	 	[**********]
	 	[********]
	 	[***********]
	 	[***************

*****************

**************

****************

****************

*******]
	 	[*******]
	[**********]

	 	[*****]

[********]
	 	[**********]
	 	[********]
	 	[*****]

[********]
	 	[***************

************

****************

***************]
	 	[*******]
	[**********]

	 	[*****]

[********]
	 	[**********]
	 	[********]
	 	[*****]
	 	[****************

***************

***************

**************

**************]
	 	[*******]
	[**********]

	 	[*****]

[********]
	 	[**********]
	 	[********]
	 	[*****]
	 	[***********

*************

************]
	 	[*******]





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




61









 






License Agreement




	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	 	 	FILING	 	 	 	 	 	 
	WG&S ID	 	UIRF ID	 	SN	 	DATE	 	INVENTORS	 	TITLE	 	STATUS
	[**********]

	 	[***********]
	 	[*************]
	 	[********]
	 	[*****]

[*******]

[**********]
	 	[**********

**********]
	 	[**********

**********]
	[**********]

	 	[*****]
	 	[*************]
	 	[********]
	 	[************]

[*******]

[**********]
	 	[**********

**********]
	 	[**********

**********]
	[**********]

	 	[***********]
	 	[*************]
	 	[********]
	 	[*****]

[*******]

[**********]
	 	[**********

**********]
	 	[**********

**********]
	[**********]

	 	[*****]
	 	[**********]
	 	[********]
	 	[*************

********]
	 	[**********

**********

**********]
	 	[*******]
	[**********]

	 	[*****]
	 	[*************]
	 	[********]
	 	[******]

[********]
	 	[*************

**************

*************

*************

*************

******** *****

*************

****]
	 	[************

**********]
	[**********]

	 	[***********]
	 	[**********

***]
	 	[******

**]
	 	[******]

[********]
	 	[**************

**************

***************

***************

*******]
	 	[*******]
	[**********]

	 	[*****]

[********]
	 	[**********]
	 	[********]
	 	[***********]
	 	[***************

*****************

**************

****************

****************

*******]
	 	[*******]
	[**********]

	 	[*****]

[********]
	 	[**********]
	 	[********]
	 	[*****]

[********]
	 	[***************

************

****************

***************]
	 	[*******]
	[**********]

	 	[*****]

[********]
	 	[**********]
	 	[********]
	 	[*****]
	 	[****************

***************

***************

**************

**************]
	 	[*******]
	[**********]

	 	[*****]

[********]
	 	[**********]
	 	[********]
	 	[*****]
	 	[***********

*************

************]
	 	[*******]





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




62









 






License Agreement




	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	 	 	FILING	 	 	 	 	 	 
	WG&S ID	 	UIRF ID	 	SN	 	DATE	 	INVENTORS	 	TITLE	 	STATUS
	[**********]

	 	[**********]

[****]
	 	[**********]
	 	[********]
	 	[*****]

[*******]

[********]
	 	[*********************

**********************

***********]
	 	[*******]

[****************

*****]
	[**********]

	 	[********]

[****]
	 	[**********]
	 	[********]
	 	[*****]

[*******]

[********]
	 	[*********************

**********************

******]
	 	[*******]

[****************

*****]
	[**********]

	 	[****]
	 	[**********]
	 	[********]
	 	[*******]

[********]

[*****]
	 	[*********************

**********************

**************]
	 	[*******]
	[**********]

	 	[*******]
	 	[**********]
	 	[********]
	 	[*******]

[********]

[*****]
	 	[*********************

**********************

***************]
	 	[*******]
	[**********]

	 	[*****]
	 	 	 	 	 	[*****]

[********]

[********]
	 	[********]
	 	[***********]
	[**********]

	 	 	 	 	 	 	 	[*****]

[*********]

[*******]
	 	[*********************

****************]
	 	[***********]
	[**********]

	 	[*****]
	 	 	 	 	 	[*****]
	 	[*********************

********************** **]
	 	[***********]
	[**********]

	 	[*****]
	 	 	 	 	 	[*****]
	 	[*********************

**********************

*********]
	 	[***********]






[**************************************************************************************]



Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




63









 






License Agreement




 Exhibit 10.17 to Coley Pharmaceutical Group, Inc. Form S-1 filed April 20, 2005




CONFIDENTIAL




and




Confidential Treatment Requested under: 5 U.S.C. §552(b)(4)




Coley Pharmaceutical Group, Inc.

20 William Street, Suite 115

Wellesley, Massachusetts 02481

March 7th, 2001




University of Iowa Research Foundation

100 Oakdale Campus

214 Technology Innovation Center

Iowa City, Iowa 52242-5000

Attn: Executive Director




Re: Amendment to License Agreement




Ladies and Gentlemen:



This letter will serve as an amendment (the “Amendment”) to the License Agreement
(the “Agreement”) dated as of March 31, 1997 between Coley Pharmaceutical Group, Inc.,
formerly known as CpG ImmunoPharmaceuticals, Inc. (“ Coley “), and the University of Iowa
Research Foundation (“ UIRF “). All capitalized terms that are used in this letter and not
defined herein shall have the meanings ascribed to them in the Agreement. Except as specifically
modified by this Amendment, the parties hereto agree that all of the terms and conditions set forth
in the Agreement remain in full force and effect.




1. Amendment to the Definition of PATENT RIGHTS and Update to Appendix A.




     The Parties hereby agree that Section 1.1 of the Agreement shall hereby be amended and
restated in its entirety to read as follows:



     “1.1 PATENT RIGHTS shall mean


(a) each of the patents and patent applications listed on Appendix A attached to this
Agreement, as amended, and



(b) each patent and patent application of UIRF that relates to immune modulation in which
Arthur M. Krieg (“Dr. Krieg”) is a named inventor, and



(c) Intellectual property of the University of Iowa or UIRF arising under any University of
Iowa research agreement sponsored by Coley, unless Coley elects not to exercise its option to such
intellectual property,



Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




64









 






License Agreement



(d) together with (i) the inventions described and claimed therein, and any divisions,
continuations, continuations-in-part to the extent the claims are directed to the subject matter
specifically described in the foregoing patents and patent applications, (ii) any and all patents
issuing thereon or reissues thereof, and (iii) any and all foreign patents and patent applications
corresponding thereto.



All of the foregoing patents and patent applications will be automatically incorporated in and
added to this Agreement and shall periodically be added to Appendix A and made a part
thereof.”




     The Parties also hereby agree that Appendix A to the Agreement shall be updated as
of the date hereof to the form of Appendix A attached to this Amendment.



     Subject to the following sentence, the Parties further agree that ownership of all rights
in and to any inventions, discoveries, information or materials which are discovered, invented,
made, conceived, or first reduced to practice by Dr. Krieg while on a leave of absence from The
University of Iowa (the “ Leave of Absence Inventions “) shall be governed by separate
written agreements by and between Coley and Dr. Krieg, and by and among UIRF, the University of
Iowa and Dr, Krieg, and not by the Agreement, as amended hereby. If, however, UIRF or the
University of Iowa are determined to be an owner of any such Leave of Absence Inventions, then the
Parties agree that the University of Iowa’s or UIRF’s interest in such Leave of Absence Inventions
shall be subject to the terms of the Agreement, as amended hereby.



2. Addition of Definitions “Sublicensee” and “Sublicense Revenues.”




     The Parties hereby agree that ARTICLE 1 of the Agreement shall hereby be amended by
inserting the following two additional definitions:



     “1.8 SUBLICENSEE shall mean any third party that is not an AFFILIATE of LICENSEE to whom
LICENSEE, or an AFFILIATE of LICENSEE, grants a sublicense or an option to sublicense under the
PATENT RIGHTS pursuant to Section 2.1 hereof to make and have made, to use and haveused, to import
and have imported, to offer for sale and have offered for sale, and/or to sell and have sold the
LICENSED PRODUCTS, and/or to practice the LICENSED PROCESSES.



     1.9 SUBLICENSE REVENUES shall mean all revenues received by LICENSEE or an AFFILIATE from
a SUBLICENSEE pursuant to a sublicense under the PATENT RIGHTS, an option for a sublicense under
the PATENT RIGHTS, or a similar agreement providing for the exploitation of the PATENT RIGHTS, in
each case granted pursuant to Section 2.1 hereof, including license issue fees, license maintenance
fees, milestone fees and royalties, but excluding equity investments in LICENSEE, any funds
received by LICENSEE for the conduct of research and development, payments received for
manufacturing, and the reimbursement of costs and expenses.”


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




65









 






License Agreement




3. Amendment to Clarify that Term of Agreement is on a Country-by Country Basis.




          The Parties hereby agree that Sections 2.2 and 2.4 of the Agreement shall hereby be
amended and restated in their entirety to read as follows:




          “2.2 The term of this Agreement and the exclusive license set forth in Paragraph 2.1 shall
be from the Effective date of this Agreement until the expiration of the last to expire of the
PATENT RIGHTS, on a country-by country basis, or for a period of fifteen years, whichever is
longer.




          2.4 Upon expiration of the period of exclusivity of this license in a particular country
under the terms of 2.2 above, LICENSEE shall receive in such country a fully paid up perpetual
license to make and have made, to use and have used, to import and have imported, to offer for sale
and have offered for sale, and to sell and have sold the LICENSED PRODUCTS, and to practice the
LICENSED PROCESSES.”




4. Amendment to Royalty Payment Obligations of Coley.




          The Parties hereby agree that Section 3.2 of the Agreement shall hereby be amended and
restated in its entirety to read as follows:





	 	“3.2	 	(a) Licensee shall pay UIRF within forty-five (45) days after the
end of each calendar quarter, during the team of the license of
Paragraph 2.1, royalties on NET SALES of all LICENSED PRODUCTS
sold by Licensee and its AFFILIATES (but not by its sublicensees)
as follows:





          In the human field:





[***]%, if total royalties being paid on the LICENSED PRODUCT to all parties, other than by
LICENSEE to [******] and its AFFILIATES for anything other than licenses under issued patents, is
less than or equal to [***]%.




[****]%, if total royalties being paid on the LICENSED PRODUCT to all parties, other than by
LICENSEE to [******] and its AFFILIATES for anything other than licenses under issued patents, is
greater than [***]%, but less than equal to [***]%.




[***]%, if total royalties being paid on the LICENSED PRODUCT to all parties, other than by
LICENSEE to [******] and its AFFILIATES for anything other than licenses under issued patents, is
greater than [***]% but less than or equal to [****]%.




[*]%, if total royalties being paid on the LICENSED PRODUCT to all parties, other than by
LICENSEE to [******] and its Affiliates for anything other than licenses under issued patents, is
greater than [****]%.



          In the animal field:




          [***]% of LICENSED PRODUCTS.





(b) Royalties shall not apply to sales among LICENSEE, its AFFILIATES and their respective
SUBLICENSEES for resale. On sales between LICENSEE and its AFFILIATES for resale, the royalty
shall be paid only on the resale.”


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




66









 






License Agreement




5. Amendment to Annual License Maintenance Fee Obligations of Coley.




               The Parties hereby agree that Section 3.3 of the Agreement shall hereby be amended and
restated in its entirety to read as follows:



               “3.3 Commencing in the fifth AGREEMENT YEAR, an annual license maintenance fee payment of
$[*******] shall be payable to the UIRF within forty-five (45) days of the end of each AGREEMENT
YEAR. This payment shall be reduced by the amount of any milestones, royalties, and SUBLICENSE
REVENUES accrued to the UIRF solely during that AGREEMENT YEAR but shall not be reduced by (a) any
royalties accruing in any other AGREEMENT YEAR or (b) contract research funding payable to the
University of Iowa pursuant to the terms of any Sponsored Research Agreement.”



6. Amendment to Milestone Payment Obligations of Coley.




               The Parties hereby agree that Section 3.4 of the Agreement shall hereby be amended and
restated in its entirety to read as follows:



               “3.4 Licensee shall pay to UIRF the following sums within thirty (30) days of the
achievement of the indicated milestones:




$[******] payable upon the [*****************************************************************]
LICENSED PRODUCTS in the animal field in the [*************]; and




$[*******] payable upon [********************************************************************]
LICENSED PRODUCTS in the human field in [***********************************]



               UIRF acknowledges that the milestone payment obligations set forth under Section 3.4 of
the Agreement, as amended hereby, will be credited against the amount of any Sublicense Revenues
due to UIRF under Section 3.5 of the Agreement, as amended hereby, to the extent such Sublicense
Revenues are attributable to milestone payments from a Sublicensee to Coley. For purpose of
clarification, the parties specifically agree that in the event Coley receives payment from a
Sublicensee for achievement of these milestones in an amount which would require a payment to UIRF
under Section 3.5, as amended below, greater than set forth in Section 3.4, Coley shall pay UIRF
only the amount due under Section 3.5.



7. Amendment to Sublicense Payment Obligations of Coley.




               The Parties hereby agree that Section 3.5 of the Agreement shall hereby be amended and
restated in its entirety to read as follows:




	 	“3.5	 	In the case of sublicenses, options to sublicense, and similar
agreements to exploit the PATENT RIGHTS, LICENSEE shall also pay
to UIRF the following





     Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.


 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




67









 






License Agreement




               percentages of SUBLICENSE REVENUES received in the manner set forth below:




(i) [**************] ([**]%) of SUBLICENSE REVENUES (the “Interim Payments”) received
by LICENSEE during the first twelve (12) month period immediately following the execution of this
Amendment (the “ Interim Period “), [********] ([***]) of which shall be paid in a
deferred manner in accordance with Paragraph 11 of the Amendment (the “ Deferred Interim
Payments “); and




(ii) [********] percent ([**]%) of SUBLICENSE REVENUES received by LICENSEE thereafter.”



8. Amendment to Clarify Survival of Confidentiality Obligations upon Termination.




          The Parties hereby agree that Section 9.1 of the Agreement shall hereby be amended by
inserting a new paragraph (d) as follows:



          “(d) UIRF’s obligations of confidentiality under Section 4.4 hereof.”



9. SmithKline Beecham PLC and Qiagen GmbH




          Coley hereby agrees to pay UIRF $[*******] in a deferred manner in accordance with
Paragraph 11 of this Amendment (the “Deferred SB/Qiagen Payment “).



          As consideration for Coley’s obligation to pay UIRF the Deferred SB/Qiagen Payment, UIRF
hereby irrevocably waives any claim that it might otherwise have for a percentage of the payments
received by Coley on or before February 1, 2001 under:




          (i) Sections 3.04, 4, 8.01a, 8.01b, and 8.03.1 of the Strategic Alliance Agreement
Infectious Diseases dated as of December 18, 1998 between Coley and SmithKline Beecham PLC (“SB”),
and Sections 3.1, 3.2 and 4.2 of Amendment No. 1 thereto dated as of December 18, 1999
(collectively, the “ SB Amendment “),




          (ii) Sections 3.1 and 3.2(a) of the Strategic Alliance Option Agreement Cancer dated as of
December 8, 1998, as amended, between Coley and SB (the “ SB Option “) and




          (iii) Sections 3.1 and 3.5 of the Sublicense Agreement dated as of January 5, 1998, as
amended, between Coley and Qiagen GmbH (the “Qiagen Agreement”).



          The SB Agreement, SB Option and the Qiagen Agreement are referred to collectively as the
“SB/Qiagen Agreements.” Any Sublicense Revenues that have accrued or may accrue under the
entire SB/Qiagen Agreements after February 1, 2001 shall be subject to Section 3.5 of the Agreement
as amended hereby.



10. Amendment Payments




          As consideration for the execution of this Amendment, Coley hereby agrees to pay to UIRF
$[*******] in cash immediately upon the execution of this Amendment. UIRF



Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




68









 






License Agreement



acknowledges that such $[*******] payment will be credited against the amount of any Sublicense
Revenues due to UIRF under Section 3.5 of the Agreement, as amended hereby, to the extent such
Sublicense Revenues are attributable to the successful completion of Phase I clinical trials for
the first three independent LICENSED PRODUCTS in the human field.




          As further consideration for the execution of this Amendment, Coley hereby agrees to pay
UIRF $[*******] in a deferred manner in accordance with Paragraph 11 of this Amendment (the “
Deferred Amendment Payment ,” and together with the Deferred Interim Payments and the Deferred
SB/Qiagen Payment, the “ Deferred Payments “).




11. Deferred Payments; UIRF’s Option to Convert into Common Stock




          11.1 Payment Terms. Coley shall pay to UIRF the Deferred Payments, together with
interest at the rate of [****] percent ([*]%) per year, compounded annually on the aggregate
outstanding principal amounts of such Deferred Payments plus interest previously accrued on such
Deferred Payments from the date such Deferred Payments are incurred, within thirty (30) days after
receipt by Coley of a written request for payment from UIRF, in such amounts as UIRF may specify
from time to time; provided, however, that, subject to Paragraph 11.2 of this Amendment, Coley
shall have no obligation to make any payments to UIRF on a Deferred Payment prior to the second
anniversary of the date that such Deferred Payment is incurred. Theparties agree that for purposes
of this Paragraph 11 of the Amendment, the Deferred SB/Qiagen Payment and the Deferred Amendment
Payment shall be incurred by Coley on the date of this Amendment and the Deferred Interim Payments,
if any, shall be incurred by Coley on the date Coley makes the relevant cash Interim Payment to
UIRF. On or after the fifth anniversary of the date of this Amendment, Coley shall have the right,
at any time following ten business days advance written notice to UIRF, to prepay (i.e. prior to
receipt of a written request by UIRF) all or any part of the outstanding principal amount of the
Deferred Payments, plus accrued but unpaid interest thereon, provided that Coley shall
concurrently pay a premium equal to [****] percent ([*]%) of the amount that is so prepaid, and
provided further that UIRF may, before the expiration of such ten business day notice period,
exercise its conversion rights in accordance with Paragraph 11.2.1, or Paragraph 11.2.2, as
applicable.




          11.2 Option to Convert.





          11.2.1 Following an Initial Public Offering. Coley shall promptly inform UIRF of
the consummation of an initial public offering of the Common Stock of Coley pursuant to a
registration statement filed with the Securities and Exchange Commission under the Securities Act
of 1933, as amended (an “ IPO “). At any time after the consummation of an IPO (the
“Option Trigger Date “), UIRF may, during the Conversion Period as defined below, elect to
convert all or part of each outstanding Deferred Payment (including interest thereon) into shares
of the Common Stock of Coley by executing and delivering to Coley the form of subscription
agreement (the “Subscription Agreement” ) attached to this Amendment as Exhibit A, specifying therein the Deferred Payment(s), and the aggregate amount(s) thereof, to be converted.
For purposes of this Paragraph 11.1.2, the Conversion Period shall commence on the Option Trigger
Date and terminate on the later of (i) six months following such Option Trigger Date or (ii) six
months following the expiration of any applicable Lock-Up to which UIRF may be bound pursuant to
Section 2(f) of the Subscription Agreement.


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




69









 






License Agreement





          11.2.2 Upon a Sale Transaction. Coley shall promptly inform UIRF if Coley enters into
a binding written commitment to consummate a Sale Transaction (as defined below), provided that
UIRF shall maintain such information as confidential pursuant to Section 4.4 of the Agreement. Upon
receipt of such notice, UIRF may, at any time prior to the consummation of the Sales Transaction,
elect to convert all or part of each outstanding Deferred Payment (including interest thereon) into
shares of the Common Stock of Coley by executing and delivering to Coley a Subscription Agreement,
specifying therein the Deferred Payment(s), and the aggregate amount(s) thereof, to be converted.
As used herein, the term “ Sale Transaction “ shall mean any consolidation or merger of
Coley into or with any other entity or entities which results in the exchange of outstanding shares
of capital stock of Coley for securities or other consideration issued or paid or caused to be
issued or paid by any such entity or affiliate thereof (other than a merger to reincorporate Coley
in a different jurisdiction or a merger or consolidation in which the holders of outstanding shares
of the capital stock of Coley become, solely by means of such merger or consolidation, the holders
of a majority of the voting securities of such other entity), and any sale, lease, abandonment,
transfer or other disposition by Coley of all or substantially all its assets.


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




70









 






License Agreement




          11.2.3 Calculation of Number of Conversion Shares. The number of shares to be issued upon a
conversion pursuant to Paragraphs 11.2.1 or 11.2.2 of this Amendment shall be equal to the cash
amount of the Deferred Payment(s) (including interest) to be so converted (as specified by UIRF in
the Subscription Agreement) divided by the Conversion Price. The “ Conversion Price “ shall
initially be $[*****] (which is equal to the per share price of the Series E Preferred Stock issued
by Coley in its most recent private financing prior to the date hereof), subject to adjustment as
follows:





               (i) If Coley shall at any time or from time to time after the date of this Amendment
effect a subdivision of the outstanding Common Stock, the Conversion Price then in effect
immediately before that subdivision shall be proportionately decreased. If Coley shall at any time
or from time to time after the date of this Amendment combine the outstanding shares of Common
Stock into a smaller number, the Conversion Price then in effect immediately before the
combination shall be proportionately increased. Any adjustment under this paragraph (i) shall
become effective at the close of business on the date the subdivision or combination becomes
effective; and




               (ii) If Coley shall at any time or from time to time after the date of this amendment
make or issue, or fix a record date for the determination of holders of Common Stock entitled to
receive, a dividend or other distribution payable in additional shares of Common Stock, then and
in each such event the Conversion Price then in effect shall be decreased as of the time of such
issuance or, in the event such a record date shall have been fixed, as of the close of business on
such record date, by multiplying the Conversion Price then in effect by a fraction:




               (1) the numerator of which shall be the total number of shares of Common Stock issued
and outstanding immediately prior to the time of such issuance or the close of business on such
record date, and




               (2) the denominator of which shall be the total number of shares of Common Stock issued
and outstanding immediately prior to the time of such issuance or the close of business on such
record date plus the number of shares of Common Stock issuable in payment of such dividend or
distribution;




provided, however, if such record date shall have been fixed and such dividend is not fully
paid or if such distribution is not fully made on the date fixed therefor, the Conversion Price
shall be recomputed accordingly as of the close of business on such record date and thereafter
the Conversion Price shall be adjusted pursuant to this paragraph as of the time of actual
payment of such dividends or distributions.




          11.2.4 Option Non-Transferable; Compliance with Securities Act. UIRF acknowledges
and agrees that the option provided for in this Section 11 (the “ Option “) may not be
sold, assigned, transferred or conveyed to any third party whatsoever, without the prior written
consent of Coley in Coley’s sole discretion, other than to the National Institutes of Health (the
“NIH”) pursuant to the terms of the Inter-Institutional Agreement (the “NIH Agreement”)
dated as of November 24, 1999 between UIRF and the NIH (provided that the NIH agrees in


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




71









 






License Agreement





writing not to further assign the Option without the prior written consent of Coley in Coley’s sole
discretion). UIRF agrees that the Option, and, if exercised, the shares of Common Stock to be
issued upon conversion thereof, are being acquired for investment for UIRF’s own account and not
with a view toward distribution thereof, and that it will not offer, sell or otherwise dispose of
any shares of Common Stock to be issued upon conversion of the Option other than pursuant to the
terms and conditions of the Subscription Agreement.



12. No Admission of Liability.




          This Amendment has been entered into solely to revise certain terms set forth in the
Agreement, and in certain cases to amicably resolve certain disagreements over the interpretation
of such terms, and it shall not constitute an admission of liability by either party as to any
claim, defense or allegation of the other party.




13. Survival, Acknowledgement and Release.




          Each of the parties hereto acknowledges that the Agreement remains in full force and
effect in accordance with its terms, as amended hereby, and that the other party hereto is not in
breach of any of the terms and conditions of the Agreement, as amended hereby, as of the date of
this Amendment. Each of the parties to this Amendment hereby releases and forever discharges the
other party, each parent, subsidiary and affiliate of the other party, and their respective
representatives, agents, shareholders, officers, directors, employees, successors, and assigns from
any and all claims, demands, actions causes of action, debts, dues, liabilities, and controversies
of every kind and nature, whether presently known or unknown, vested or contingent, arising or
accruing at any time on or before the date hereof, which relate to or arise out of the Agreement or
the subject matter thereof.




14. Entire Agreement.




          The Agreement and this Amendment and the attachments hereto and thereto constitute the
entire agreement and understanding between Coley and UIRF relating to the subject thereof and
hereof. No verbal agreement, conversation or representation between any officers, agents, or
employees of the parties hereto either before or after the execution of the Agreement or this
Amendment shall affect or modify any of the terms or obligations therein or herein contained. Any
further amendment to the terms of the Agreement or this Amendment shall be made in writing and
signed on behalf of each party by a duly authorized officer.




15. Terms Confidential.




          Each party hereby acknowledges and agrees that it will not disclose the terms of the
Agreement or this Amendment or any other information relating to the subject matter hereof or
thereof to any third party without the express written consent of the other party, except that (i)
either party may use the text of a written statement approved



Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




72









 






License Agreement



in advance by both parties without further approval, (ii) Coley may disclose the terms of the
Agreement and this Agreement to a Sublicensee, and (iii) either party shall have the right to
identify the other party and to disclose the terms of this Agreement as required by applicable
securities laws or other applicable laws or regulations. Without limiting the generality of the
foregoing, either party may disclose the Agreement and this Amendment to the NIH pursuant to a
request that the terms thereof be withheld from public disclosure pursuant to Exemption 4 of the
Freedom of Information Act, 5 U. S.C. § 552(b)(4).




          Please sign below where indicated to acknowledge your agreement to the foregoing
Amendment.




	 	 	 	 	 	 	 
	 	 	Sincerely,	 	 
	 	 	COLEY PHARMACEUTICAL GROUP, INC.	 	 
	 
	 	 	 	 	 	 
	 

	 	By:

Name:
	 	/s/ Robert Bratzler
 

Bratzler
	 	 
	 

	 	Title:
	 	President & CEO	 	 






	 	 	 	 	 
	ACKNOWLEDGED AND AGREED TO	 	 
	This 7th day of March, 2001	 	 
	THE UNIVERSITY OF IOWA RESEARCH FOUNDATION	 	 
	 
	 	 	 	 
	By: 

Name:

	 	/s/ W. Bruce Wheaton
 

W. Bruce Wheaton
	 	 
	Title:

	 	Executive Director and Secretary	 	 





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




73









 






License Agreement




Exhibit A




FORM OF SUBSCRIPTION AGREEMENT




     Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.


 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




74









 






License Agreement




EXHIBIT C




OHRI Agreement



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




1









 






License Agreement




Exhibit 10.18 to Coley Pharmaceutical Group, Inc. Form S-1 filed April 20, 2005




LICENSE AGREEMENT



THIS AGREEMENT comes into force as of the first day of September, 1998, (“Effective Date”), by
and between The Loeb Health Research Institute at the Ottawa Hospital (hereinafter referred to as
“LOEB”) located at 725 Parkdale Avenue, Ottawa, Ontario K1 Y 4E9, CANADA and CpG
ImmunoPharmaceuticals, Inc. having an address of 55 William Street, Suite 120, Wellesley, MA 02481,
USA (hereinafter referred to as “CpG”).



WITNESSETH:



WHEREAS QIAGEN GmbH and LOEB have entered into a Research Agreement effective as of September
1, 1996 (the “Research Agreement”) pursuant to which QIAGEN has sponsored a research and
development program (the “R&D Program”) at LOEB under the direction of Dr. Heather L. Davis (the
“Investigator”);



WHEREAS, pursuant to Section 6.01 of the Research Agreement, QIAGEN has assigned all of its
rights, obligations, terms and conditions under the Research Agreement to CpG;



WHEREAS, LOEB has acquired valuable rights to Inventions derived from the R&D Program and has
filed the patent applications listed on Exhibit A attached hereto with respect to such
Inventions; and



WHEREAS, pursuant to Section 4.02 of the Research Agreement, LOEB has agreed to promptly notify
CpG of any Inventions derived from the R&D Program;



WHEREAS pursuant to Section 4.03 of the Research Agreement, CpG has elected to exercise its
option to acquire an exclusive license in the Field to Inventions developed under the Research
Agreement for which the patent applications listed on Exhibit A attached hereto have been
filed;



NOW, THEREFORE, in consideration of the sum of ten dollars (US$10.00), the mutual covenants
herein contained, and other good and valuable consideration, the receipt and sufficiency of which
is hereby acknowledged by the parties, and intending to be legally bound, LOEB and CpG agree as
follows:




ARTICLE 1




DEFINITIONS



As used herein, capitalized terms shall have the following meanings:





	1.1	 	Affiliate shall mean a corporate or other entity which directly or
indirectly controls, is controlled by, or is under common control
with a Party, and “control” shall mean the ownership of not less
than 50% of the voting shares of a corporation, or decision-making




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




2









 






License Agreement





	 	 	authority as to any unincorporated entity. With respect to CpG, Affiliate shall also include any partnership of which CpG is the general partner.
	 
	1.2	 	Commercial Sale shall mean any transaction between CpG, or an
Affiliate of CpG, and a third party which transfers physical
possession and title to any Licensed Product to a third party.
	 
	1.3	 	Field shall mean applications of CpG immunomodulatory nucleic acid
sequences for human and veterinary prophylactic and therapeutic
purposes independently or in combination with protein(s), other
adjuvants, other immunostimulatory agents and/or other nucleic
acid sequences.
	 
	1.4	 	Institute Personnel means any person working at the LOEB,
including but not limited to any Investigator, professor,
technician, associate, medical professional, or student (including
a pre- or post-doctoral student), any independent contractor
(including any consultant under an obligation of confidentiality),
or any research collaborator, student or consultant who
participates in the R&D Program in any manner or who acquires
knowledge of any test data, clinical information or any other
information resulting from any R&D Program which is deemed a trade
secret or confidential or proprietary to CpG or LOEB.
	 
	1.5	 	Invention shall mean any discovery, new or useful process, method,
manufacture, compound, biological material, composition of matter,
or software, or any improvement thereof, with application in the
Field, whether patentable or unpatentable, which is developed,
conceived or first reduced to practice, or demonstrated to have
utility during the term of the R&D Program and covered by the
Patent Rights. Notwithstanding the foregoing, if any such
Invention is not reduced to practice within twelve months
following the expiration or termination of the R&D Program, it
shall not be deemed an Invention hereunder.
	 
	1.6	 	Investigator(s) shall mean initially Dr. Heather L. Davis, so long
as she is associated with LOEB, and any other Institute Personnel
who became or becomes involved in the R&D Program, as agreed by
CpG pursuant to Section 2.01 of the Research Agreement between the
Parties hereto.
	 
	1.7	 	Joint Invention shall mean any Invention for which it is
determined, in accordance with U.S. patent law, that both: (i)
employees, consultants or agents of CpG or any other persons
obligated to assign or exclusively license such Invention to CpG
or to an institution other than CpG or LOEB for use in the Field,
and (ii) employees or agents of LOEB or any other persons obliged
to assign such Invention to LOEB, are joint inventors of such
Invention.
	 
	1.8	 	Licensed Product shall mean any product or process which is
covered by a Pending or issued claim under Patent Rights or, if
not covered by Patent Rights, shall mean any product or process
which, to a material degree as determined by mutual agreement of
the




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




3









 






License Agreement





	 	 	Parties, contains, is based on, or is derived from, identified
through or utilizes any Licensed Technology which is not in the
public domain. Any product or process which is a Licensed Product
at the time of first Commercial Sale shall, for the purposes of
Sec. 4.1, 4.3 and 9.1, be treated as a Licensed Product for at
least 15 years from the date of first Commercial Sale.
	 
	1.9	 	Licensed Technology shall mean any and all information, and all
patentable and non-patentable inventions (including, without
limitation, the Inventions, Joint Inventions and Patent Rights),
improvements, discoveries, claims, formulae, materials, processes,
methods, trade secrets, technologies, data and know-how, whether
existing in the Investigator’s laboratory at LOEB as of the
Effective Date or developed by Investigator(s) in the performance
of the R&D Program, relating to the Field or the development
and/or commercialization of products in the Field, whenever such
inventions, improvements, discoveries, claims, formulae,
materials, processes, methods, trade secrets, technologies, data
and know-how are derived from or directly related to the
Inventions. Notwithstanding the foregoing, the patent application
PCT/FR94/00483, CON of USSN 08/633,821 entitled “Nucleotide Vector
Composition Containing Such Vector and Vaccine for Immunization
Against Hepatitis” assigned to the Pasteur Institute INSERM and
the University of Ottawa shall not be included in Licensed
Technology.
	 
	1.10	 	Net Sales shall mean the gross invoice price of Licensed Products
sold by CpG and/or its Affiliates in arm’s length sales to third
parties, less the sum of the following deductions where
applicable:






	 	(a)	 	cash, trade and quantity discounts;
	 
	 	(b)	 	sales, use, tariff, import/export duties or other excise taxes imposed upon particular sales;
	 
	 	(c)	 	transportation charges;
	 
	 	(d)	 	allowances or credits to customers because of rejections or returns; and
	 
	 	(e)	 	commission and other fees paid to non-affiliated brokers or non-affiliated sales agents.




In the event that CpG sells Licensed Products to a non-affiliated third party in an arm’s
length transaction solely for the purpose of having such third party act as a distributor for
Licensed Products, “Net Sales” shall be the amount owed CpG by such distributor less the returns as
defined above.



Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




4









 






License Agreement





In the event that Licensed Products are sold or used in combination with products or processes
having independent therapeutic or prophylactic effect, then Net Sales, for purposes of determining
royalty payments on the combination, shall be calculated using one of the following methods:




(i) By multiplying the Net Sales of the combination product or process by the fraction A/A+B,
where A is the gross selling price, during the royalty period in question, of Licensed Products
when sold separately for the same application, and B is the gross selling price of the other
product for the same application, during the royalty period in question, when sold separately; or




(ii) In the event that no such separate sales are made of such Licensed Product(s) or other
products or processes in such combination during the royalty period in question, Net Sales, for the
purposes of determining royalty payments, shall be calculated using the above formula where A is
the reasonably estimated commercial value of the Licensed Products when sold separately, and B is
the reasonably estimated commercial value of the other product or processes, when sold separately.
Any such estimates shall be mutually agreed upon by the Parties. Such estimates shall be reported
to LOEB with the reports to be provided to LOEB pursuant to Section 5.1 hereof.




	1.11	 	Party shall mean LOEB or CpG and, when used in the plural, shall mean LOEB and CpG.
	 
	1.12	 	Patent Rights shall mean all rights derived from the patent
applications listed on Exhibit A attached hereto (including
without limitation provisional applications and invention
disclosures), and as such Exhibit A may be amended from time to
time by mutual agreement of the Parties, and which are owned or
controlled, in whole or in part, by LOEB by way of transfer of
rights from any Investigator, claiming, describing, embodying or
relating to the Licensed Technology throughout the Territory,
including any substitutions, extensions, renewals, continuations,
continuations-in-part, divisions, patents of addition, and/or
reissues thereof, and any current and future patent or patent
application, or portion thereof, which is a foreign counterpart
in any country in the Territory to any of the foregoing,
including any substitutions, extensions, renewals, continuations,
continuations-in-part, divisions, patents of addition and/or
reissues thereof.
	 
	1.13	 	Pending shall mean a claim in a patent application under Patent Rights that has not been completely and finally rejected.
	 
	1.14	 	Publication means any non-confidential written or oral
publication or disclosure resulting from or involving the
Licensed Technology, and includes but is not limited to a
publication or disclosure in articles, books, journals, theses,
the media, trade publications, scientific meetings, seminars,
poster sessions, and symposia.
	 
	1.15	 	R&D Program shall mean research conducted by LOEB, acting through
the laboratories of any Investigator(s) pursuant to the terms of
the Research Agreement.
	 
	1.16	 	Sublicensee shall mean any third party to whom CpG, or an
Affiliate of CpG, grants a sublicense pursuant to Section 3.2 of
this Agreement to develop, make, have made, use, have used, sell,
offer for sale, have sold, import or have imported Licensed
Products.




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




5









 






License Agreement





	1.17	 	Sublicense Income shall mean all sublicensing fees and revenues
received by CpG or its Affiliates from Sublicensees in consideration
for a sublicense to develop, make, have made, use, have used, sell,
offer for sale or have sold, import and have imported Licensed
Products, including, but not limited to, milestone payments and
license initiation fees. Notwithstanding the foregoing, Sublicense
Income shall not include revenue specifically allocated by CpG to,
and demonstrably used for, research and development of the Licensed
Technology, nor shall it include funds received by CpG for equity
investments in CpG which are not in excess of a [**]% premium of the
then current fair market value of CpG equity (i.e., that portion of
any funds received for equity which is greater than a [**]% premium
shall be deemed Sublicense Income).
	 
	1.18	 	Territory shall mean the entire world.





ARTICLE 2




REPRESENTATIONS AND WARRANTIES





	2.1	 	Representations and Warranties of Both Parties. Each Party
represents and warrants to the other Party that: (i) it is free to
enter into this Agreement; (ii) in so doing, it will not violate
any other agreement to which it is a party; and (iii) it has taken
all corporate action necessary to authorize the execution and
delivery of this Agreement and the performance of its obligations
under this Agreement.
	 
	2.2	 	Representations and Warranties of LOEB. LOEB hereby represents and warrants that:






	 	(a)	 	They are the owners, either solely or,
jointly with others, of the patent applications listed on Exhibit
A, and have the exclusive right to grant licenses in their
interests therein;
	 
	 	(b)	 	They are the owners of, either solely or jointly with others, or
are the licensees of, all of the Licensed Technology in existence
on the date of this Agreement, and have the right to grant
licenses or sublicenses of their interest therein;
	 
	 	(c)	 	They have used their best efforts to inform CpG of and preserve
all patent rights to the Inventions and all patent applications
listed on Exhibit A are in full force and effect to the best of
their knowledge as of the Effective Date of this License
Agreement;
	 
	 	(d)	 	They are not aware of any asserted or unasserted claim or
demand against the patent applications listed on
Exhibit A; and
	 
	 	(e)	 	They have not entered into any agreement with any third party which is in conflict with the rights granted to CpG pursuant to this Agreement.




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




6









 






License Agreement





	2.3	 	Disclaimer of Other Warranties.






	 	(a)	 	EXCEPT AS EXPRESSLY PROVIDED IN SECTION 2.2, NOTHING IN THIS
AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION MADE, OR WARRANTY
GIVEN, BY LOEB THAT ANY PATENT WILL ISSUE BASED UPON ANY PENDING
PATENT APPLICATION, THAT ANY PATENT WHICH ISSUES WILL BE VALID, OR
THAT THE LICENSED TECHNOLOGY OR LICENSED PRODUCTS WILL NOT
INFRINGE THE PATENT OR PROPRIETARY RIGHTS OF ANY THIRD PARTY.
FURTHERMORE, LOEB MAKES NO OTHER REPRESENTATIONS OR WARRANTIES,
EXPRESS OR IMPLIED, WITH RESPECT TO THE LICENSED TECHNOLOGY OR
LICENSED PRODUCTS, INCLUDING, WITHOUT LIMITATION, ANY WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
	 
	 	(b)	 	NEITHER PARTY SHALL BE LIABLE WITH RESPECT TO THE SUBJECT MATTER
OF THIS AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY
OR OTHER LEGAL OR EQUITABLE THEORY FOR (I) ANY INDIRECT,
CONSEQUENTIAL, PUNITIVE OR OTHER DAMAGES OR (II) COST OF
PROCUREMENT OF SUBSTITUTE GOODS, TECHNOLOGY OR SERVICES.





ARTICLE 3




LICENSE GRANT





	3.1	 	Grant of License. LOEB hereby grants to CpG a royalty-bearing
exclusive license in the Field and in the Territory to utilize the
Licensed Technology and to develop, have developed, make, have
made, perform, use, have used, sell, offer for sale, have sold,
import or have imported Licensed Products (the" License" ).
	 
	3.2	 	Right to Sublicense. Such License shall also include the right to
grant sublicenses. CpG shall have the right to screen and select
Sublicensees, and to agree on the terms of any sublicense. LOEB
shall have the right to inspect and comment upon any sublicense
agreement prior to execution of any sublicense agreement. Copies
of all executed sublicense agreements shall be provided to LOEB.
	 
	3.3	 	Reservation of Rights. Notwithstanding any rights granted to CpG
hereunder, the LOEB shall retain the right to use Inventions
solely for research and educational purposes on a non-commercial
basis, subject to confidentiality requirements and LOEB’s
obligations to preserve patent rights as set forth in Article 7
hereof. For purposes hereof, “research and educational purposes”
shall not include the conduct of research sponsored by a
commercial entity or the development of products or processes to
be licensed to a commercial entity during the term of the Research
Agreement or extension thereof other than the work performed under
the R&D Program. During the term of this Agreement,




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




7









 






License Agreement





	 	 	LOEB can suggest how CpG and third party technology could be
used together and may seek CpG’s permission to do so under the
Research Agreement between the Parties hereto, but shall not use
any such third party technology in combination with CpG technology
without the prior written consent of CpG.
	 
	3.4	 	CpG’s Development Efforts. CpG shall use all reasonable efforts to
develop and commercialize Licensed Products. A Development Plan
will be prepared by CpG and submitted to LOEB which shall outline
CpG’s plans to develop the Licensed Technology on or before
December 31, 1999. A written progress report by CpG will be
submitted to the LOEB on or prior to each anniversary of the
Effective Date summarizing the development work on Licensed
Technology for commercial purposes.
	 
	3.5	 	Failure to Use Due Diligence. In the event that CpG shall fail to
use all reasonable efforts to develop and commercialize Licensed
Products, LOEB may, upon written notice to CpG to be given
pursuant to the mechanism set forth in Section 9.2, with the
opportunity to cure or remedy such default as set forth therein
convert CpG’s License for such Licensed Products and Licensed
Technology into a non-exclusive license.
	 
	3.6	 	Notwithstanding any other provision of the Research Agreement or
this Agreement to the contrary, the parties hereby agree that, if
so requested by CpG, the terms for the exclusive license to CpG of
any future Joint Invention which is developed pursuant to the R&D
Program and owned in part by a party other than CpG or LOEB, but
which is not included on Exhibit A as of the Effective Date
hereof, will be governed by an interinstitutional agreement to be
negotiated between LOEB and any third party owner(s) of any such
Joint Invention, provided the third party owner(s) are agreeable
to enter into such negotiations with LOEB.





ARTICLE 4




CONSIDERATION





	4.1	 	Royalties. In consideration of the exclusive licenses and other
rights granted to CpG under this Agreement, CpG agrees to pay to
LOEB a royalty, commencing upon the first Commercial Sale of a
Licensed Product by CpG, its Affiliates or its Sublicensees, as
follows:






	 	(a)	 	For Commercial Sales made by CpG or its Affiliates, CpG shall pay the highest applicable royalty as set forth below:






	 	(i)	 	For sales of Licensed Products covered by issued or Pending Patent
Rights, CpG shall pay to LOEB a royalty equal to [****] percent
([*]%) of Net Sales;




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




8









 






License Agreement





	 	(ii)	 	For sales of Licensed Products not covered by issued
or Pending Patent Rights, CpG shall pay to LOEB a
royalty equal to [*****] percent ([*]%) of Net Sales.






	 	(b)	 	Notwithstanding the foregoing, in the event that the total
royalties due to LOEB and all third parties on a Licensed Product
exceed [**]% of Net Sales prior to any applicable royalty
reduction(s), CpG shall be entitled to a royalty reduction of
[*****] percent ([**]%) of the royalties owed to third parties on
the Licensed Products in excess of [**]%, up to a maximum
reduction of [**]% of the royalties due the LOEB according to
Section 4.1(a) above. For example, if the total royalty due on a
Licensed Product is [**]%, CpG shall pay to LOEB a royalty of
[***]% (i.e., [*]% — [***]%) of Net Sales of the Licensed Product.
	 
	 	(c)	 	In the event that CpG and/or its Affiliates receive Sublicense
Income from any Sublicensee, CpG shall pay to LOEB [***] percent
([**]%) of such Sublicense Income from each such Sublicensee.
	 
	 	(d)	 	In the event that: (i) payments by CpG to LOEB under Section
4.1(c) plus (ii) payments by CpG to one or more third parties of a
percentage of such Sublicense Income exceed [*****] percent
([**]%) of any such Sublicense Income received by CpG, then
payments to LOEB pursuant to Section 4.1(c) will be reduced on a
prorata basis with payments owed to such third parties on such
Sublicense Income so that the total percentage paid out by CpG to
all non-affiliated third parties with respect to Sublicense Income
shall not exceed [******] percent ([**]%) of any such amounts
received by CpG. For example, if CpG receives Sublicense Income
and owes Party X [***] percent ([**]%) thereof and Party Y
[******] percent ([**]%) thereof, bringing the total owed to
[**]%, then LOEB’s share of such Sublicense Income will be reduced
to [****]% (i.e., by [****]%, which is [****]% of the excess of
[****] percent since [**]% is [****]% of [**]%). Notwithstanding
the foregoing, this provision shall only be effective with respect
to payments to third parties which are governed by a similar
provision and shall not be used to reduced the percentage owed to
LOEB pursuant to Sec. 4.1(c) to less than [****] percent ([*]%).
	 
	 	(e)	 	Sublicense Income from all Licensed Products which incorporate CpG
DNA as an adjuvant in antigen- or DNA-based vaccines against
infectious diseases shall be exempted from the conditions for
reductions in payment to the LOEB as stated in Sec. 4.1(d).






	4.2	 	Obligation to Pay Royalties. The obligation to pay royalties to
LOEB under this Article 4 is imposed only once with respect to the
same unit of Licensed Product regardless of the number of Patent
Rights or the amount of Licensed Technology pertaining thereto.
	 
	4.3	 	Duration of Royalties. CpG shall not be obligated to make any
further royalty payments in any country for any Licensed Product
after the end of the period commencing on the date of the first
Commercial Sale of the Licensed Product in that country by CpG,
its




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




9









 






License Agreement





	 	 	Affiliates or Sublicensees and ending either on the date of
expiration of a valid, enforceable claim of a Patent Right covering
the Licensed Product in that country or fifteen (15) years after
the date of the first Commercial Sale, whichever is later.





ARTICLE 5




PAYMENTS AND REPORTS





	5.1	 	Payment. All royalty payments due pursuant to Article 4 shall be
paid quarterly on March 1, June 1, September 1 and December 1 of
each year after the date of first Commercial Sale, for the periods
ending December 31, March 31, June 30 and September 30,
respectively. Each such payment shall be accompanied by a
statement of the amount of Net Sales of Licensed Products sold by
CpG and Sublicense Income received by CpG during the relevant
period, and the amount of royalties due thereon.
	 
	5.2	 	Mode of Payment, Blocked Currency. CpG shall make all payments
required under this Agreement by check in United States Dollars
payable to the Loeb Health Research Institute at the Ottawa
Hospital. All royalty payments in any currency other than United
States Dollars shall be translated quarterly into United States
Dollars at the average of the rates of exchange listed in The Wall
Street Journal at which United States Dollars are exchangeable for
the cur  r  ency of the country in which the
royalty is accrued for the last day of each month of the quarter
in which such sales were made.






If, at any time, a product is sold in a country in which conditions or legal restrictions exist
which prohibit remittance of royalty payments (“Blocked Country”), CpG or its Affiliates shall
accrue the amount of royalties due in such Blocked Country on paper on behalf of the LOEB. For so
long as such restrictions or conditions apply, CpG shall be relieved of any further obligation to
LOEB with respect to such royalties except for the furnishing to LOEB of the statement required by
Section 5.1 and a report on the amount accrued until such times as the legal restrictions is
resolved. CpG shall use its best efforts to pay the LOEB such accrued amounts within thirty days of
such resolution in the Blocked Country.




	5.3	 	Records Retention. CpG and its Affiliates shall keep complete and
accurate records pertaining to the sale of Licensed Products in
the Territory and covering all transactions from which Net Sales
and Sublicense Income are derived for a period of five (5)
calendar years after the year in which such Net Sales and
Sublicense Income occurred, and in sufficient detail to permit
LOEB to confirm the accuracy of royalty calculations hereunder.
	 
	5.4	 	Audit Request. At LOEB’s request, CpG and its Affiliates shall pen
lit an independent, certified public accountant, appointed by LOEB
and acceptable to CpG or its Affiliates, at reasonable times and
upon reasonable notice, to examine those records and all other
material documents relating to or relevant to the calculation of
amounts due to LOEB pursuant to Article 4 in the possession or
control of CpG or its Affiliates for a period of




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




10









 






License Agreement





	 	 	five (5) years after such royalties have accrued, as may be
necessary to (i) determine the correctness of any report or payment
made under this Agreement or (ii) obtain information as to the
royalties payable for any semi-annual payment period in the case of
CpG’s or its Affiliate’s failure to report or pay pursuant to this
Agreement. Said accountant shall treat all such information as
confidential information of CpG and shall not disclose to LOEB any
information other than information relating to said reports,
royalties, and payments. Results of any such examination shall be
made available to both Parties. LOEB shall bear the full cost of
the performance of any such audit, unless such audit demonstrates
underpayment of royalties by CpG of more than [***] percent ([**]%)
from the amount of the original royalty payment made by CpG. In
such event, CpG shall bear the full cost of the performance of such
audit.
	 
	5.5	 	Taxes. In the event that CpG or its Affiliates are required to
withhold any tax to the revenue authorities in any country in the
Territory regarding any payment to LOEB due to the laws of such
country, LOEB’s pro rata portion of such amount shall be deducted
by CpG or its Affiliates, and it shall notify LOEB and promptly
furnish LOEB with copies of any tax certificate or other
documentation evidencing such withholding. Such taxes deducted
from payments to the LOEB shall exclude those taxes included under
Net Sales under Sec. 1.10. In addition, CpG shall use its best
efforts to obtain relief in such tax payments in such countries on
behalf of LOEB.





ARTICLE 6




PATENT PROSECUTION; ENFORCEMENT; INFRINGEMENT





	6.1	 	Patent Prosecution and Maintenance.






	 	(a)	 	CpG shall diligently prepare, file and prosecute all patent
applications under Patent Rights in the name of the LOEB using
patent counsel engaged by LOEB as set forth below. LOEB shall
cooperate in the preparation, filing and prosecution of all Patent
Rights licensed hereunder to the extent requested by CpG. Patent
Rights shall be filed, prosecuted and maintained in countries
specified by CpG, as agreed to by LOEB. LOEB shall retain a patent
law film selected and agreed upon jointly by LOEB and CpG, and
shall pay all invoices received from such patent law firm in a
timely manner. CpG shall have full rights of consultation with
LOEB’s patent counsel with respect to the Patent Rights to which
CpG has exclusive rights hereunder and shall have the right to
control the filing, prosecution and maintenance of Patent Rights
and shall keep LOEB informed and advised and seek input from LOEB
except as otherwise provided herein. Each Party shall provide to
the other Party copies of all such applications, official actions,
amendments and all papers filed or received relating to the Patent
Rights. Notwithstanding the foregoing, CpG shall have the right
and obligation, alone or in conjunction with other owners of such
rights, to diligently prepare, file and prosecute all Patent
Rights which are Joint Inventions and shall keep LOEB




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




11









 






License Agreement







	 	 	 	informed and advised and seek input from LOEB with respect thereto to the same extent set forth above.
	 
	 	(b)	 	Both Parties agree to cooperate with the other Party to execute
all lawful papers and instruments, to make all rightful oaths and
declarations and to provide consultation and assistance as may be
necessary in the preparation, prosecution, maintenance, and
reinforcement of all such patent applications and patents.






	6.2	 	Patent Cost Reimbursement. For Patent Rights licensed hereunder,
CpG shall reimburse LOEB for all reasonable and customary costs
and expenses of filing, prosecuting and maintaining such Patent
Rights, including legal expenses of the patent counsel, within
thirty (30) days after CpG receives an itemized invoice from LOEB
for such costs and expenses. CpG may elect to cease paying for
further patent expenses on a country-by-country basis for any
particular patent or patent application licensed hereunder upon
giving sixty (60) days prior written notice to LOEB, whereupon
CpG’s rights under such patent or patent application in such
country pursuant to this Agreement shall terminate. LOEB may
thereafter elect to dispose of any such terminated rights at its
sole discretion without any further obligations to CpG hereunder.
	 
	6.3	 	Notification of Infringement. If either Party learns of an
infringement or threatened infringement by a third party of any
Patent Right licensed hereunder within the Territory, such Party
shall promptly notify the other Party and shall provide such other
Party with available evidence of such infringement. Section 6.4
shall then be applicable.
	 
	6.4	 	Patent Enforcement.






	 	(a)	 	CpG and/or Sublicensee(s) shall have the first right, but not the
obligation, to institute patent infringement actions against third
parties based on any Patent Right licensed under this Agreement.
If CpG and/or any Sublicensee does not institute an infringement
proceeding against an offending third party, or enter into good
faith negotiations regarding a sublicense under such Patent Right
with such third party, within one hundred eighty (180) days after
receipt of notice from LOEB, (i) with respect to inventions owned
solely by LOEB, LOEB shall have the right, but not the obligation,
to institute an infringement proceeding, and (ii) with respect to
Joint Invention, shall have such rights as are mutually agreed by
the other owners of such Joint Invention as appropriate. The costs
and expenses of any such action (including fees of attorneys and
other professionals) shall be borne by the Party and/or parties
instituting the action. Each Party shall execute all necessary and
proper documents and take such actions as shall be appropriate to
allow the other Party (or, for certain Joint Inventions, other
co-owners) to institute and prosecute such infringement actions
and such expenses will be borne by the instituting party. Any
award paid by third parties as a result of such an infringement
action (whether by way of settlement or otherwise) shall be first
applied to reimburse the costs and expenses (including attorney’s
fees) of the Party bringing suit, or to reimburse the costs and
expenses (including attorney’s




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




12









 






License Agreement





	 	 	 	fees) incurred by the Parties if the suit is brought jointly
and to reimburse any additional costs and expenses including
attorney’s fees incurred by LOEB in cooperating with CpG in such
suits. Any remaining amount of the award shall be regarded as
Sublicense Income and an amount shall be paid to the LOEB pursuant
to Section 4.1(c). Notwithstanding the foregoing, for suits
involving Joint Inventions with co-owners who are not Parties,
awards shall be shared as mutually agreed, provided that CpG’s
share of any such recovery shall be treated as set forth above.
	 
	 	(b)	 	Notwithstanding the foregoing, neither Party shall be entitled to
settle or otherwise dispose of any suit brought pursuant to
provisions of Section 6.4(a) without the approval of the other
Party, which approval shall not be unreasonably withheld.






	6.5	 	Infringement Action by Third Parties. In the event of the
institution of any claim or suit by a third party against CpG for
patent infringement arising from the development, manufacture, use
or sale of any Licensed Product in the Territory, CpG shall notify
LOEB in writing of such suit within ten (10) business days of
receiving notice of such suit. CpG shall have the right to defend
such claim or suit at its own expense, and LOEB hereby agrees to
assist and cooperate with CpG, at CpG’s expense, to the extent
necessary in the defense of such suit. During the pendency of such
claim or action, CpG shall continue to make payments due under
this Agreement, but shall be entitled to claim a credit against
royalties otherwise payable hereunder of an amount equal to the
out-of-pocket unreimbursed costs and expenses incurred by CpG in
defending against such claim or suit, provided that such credit
shall be no greater than fifty percent (50%) of the amount of such
royalties otherwise payable hereunder.





ARTICLE 7




PUBLICATION; CONFIDENTIALITY





	7.1	 	Notification. The Parties recognize that it is part of LOEB’s
function to disseminate knowledge and information and to make it
available for the purpose of scholarship. The Parties further
recognize that the publication of certain technical information
may destroy its commercial value and patentability. Consequently,
any proposed Publication by Institute Personnel shall comply with
this Article 7. Investigator and LOEB shall furnish a copy to CpG
of any proposed Publication or disclosure of data related to the
Licensed Technology at least ninety (90) days in advance of
presentation or submission for Publication. If CpG does not object
in writing to such disclosure within thirty (30) days of receipt,
LOEB shall he free to proceed with such disclosure. In the event
written objection is made, the Parties shall negotiate in good
faith an acceptable version of the proposed Publication, including
the release date, within the original ninety (90) day notice
period or shall agree to withhold Publication until a mutually
agreeable time, all as further described in Section 7.2.




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




13









 






License Agreement







	7.2	 	Review of Proposed Publications. CpG will review the proposed
Publication, manuscript, abstract, text or any other material provided
under Section 7.1 to determine if patentable subject matter which has
not been adequately protected by the Patent Rights or Confidential
Information of CpG as defined in Sec. 7.4 is disclosed. CpG will
notify Institute Personnel within the period prescribed in Section 7.1
if CpG, in its sole discretion, determines that patentable subject
matter is or may be disclosed, or if CpG, in its sole discretion,
believes confidential or proprietary information of CpG is or may be
disclosed. If it is determined by CpG that additional patent
applications should be filed, and in the event that the delay needed
to complete the filing of any necessary patent application will exceed
the period specified in Section 7.1, LOEB and Institute Personnel
shall agree to any reasonable extension of the Publication delay. The
Publication delay shall not continue beyond thirty (30) days past the
date that the proposed Publication or other material was to be
presented, submitted or otherwise disclosed. If it is determined by
CpG and LOEB that confidential or proprietary information of CpG is
being disclosed, CpG, LOEB and Institute Personnel will consult among
themselves in good faith to arrive at an agreement on mutually
acceptable modifications to the proposed Publication to avoid such
disclosure within the time period set forth in Section 7.1.
	 
	7.3	 	Use of Name. Neither Party will use the name of the other in any
advertising or other form of publicity without the prior written
permission of the other. Notwithstanding the foregoing, either
Party may include an accurate description of the terms of this
Agreement to the extent required by the laws of any government or
other disclosure laws and in internal communications.
	 
	7.4	 	Confidentiality; Exceptions. Confidential Information shall mean
all Patent Rights patent applications, research proposals and
results, business plans, development reports. Except to the extent
expressly authorized by this Agreement or otherwise agreed in
writing, the Parties agree that, for the term of this Agreement
and for five (5) years thereafter, the receiving Party of
Confidential Information shall keep completely confidential and
shall not publish or otherwise disclose and shall not use for any
purpose other than proper performance hereunder any information
furnished to it by the other Party pursuant to this Agreement,
except to the extent that it can be established by the receiving
Party by reasonable proof that such information:






	 	(a)	 	was already known to the receiving party at the time of disclosure as can be reasonably proved by such party;
	 
	 	(b)	 	became part of the public domain without breach of this Agreement; or
	 
	 	(c)	 	was obtained from third parties with the lawful right to disclose such information.






Each party may disclose the other’s Confidential Information to the extent such disclosure is
reasonably necessary in filing or prosecuting patent applications, prosecuting or


Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.




14









 






License Agreement





defending litigation, complying with applicable governmental regulations, undertaking basic
research with outside collaborators, or conducting preclinical or clinical trials provided that if
a Party makes any such disclosure of the other Party’s secret or confidential information it will,
except where impracticable for necessary disclosures, for example to physicians conducting studies
or to health authorities, give reasonable advance notice to the other Party of such disclosure
requirement and, except to the extent inappropriate in the case of patent applications, will use
its best efforts to secure confidential treatment of such information required to he disclosed.
LOEB may publish results of the work performed under the Research Agreement upon approval by CpG
pursuant to Article 7 of this Agreement.



ARTICLE 8




INDEMNIFICATION AND INSURANCE





	8.1	 	Indemnification. CpG shall indemnify, defend and hold harmless the
LOEB, its officers, directors, employees, agents and students from
any claims, loss, expense, costs, suits, including attorney’s fees
and expenses arising out of or connected with any activities of
CpG and their Affiliates, licensees or Sublicensees under this
Agreement, including without limitation, product liability claims
relating to products based on the Licensed Technology or Licensed
Products, except to the extent that such claim is due to the gross
negligence of the LOEB. The LOEB shall promptly notify CpG of any
such claim(s), shall permit CpG to defend such claim(s) and shall
cooperate with CpG and its insurance carrier in the defense of the
claim(s) at CpG’s expense.
	 
	8.2	 	Insurance. In connection with human clinical trials and/or
commercial sales of a Licensed Product, CpG, at its sole cost and
expense, shall insure its activities, obtain, keep in force and
maintain comprehensive or commercial form of general liability
insurance. Such insurance shall name LOEB as an additional insured
and shall provide at least US$[*********] per incident and
adequate annual aggregate in amounts as required by the various
hospitals and clinics for such human clinical trials of Licensed
Products. Upon commercial sales of Licensed Products, CpG and/or
its Sublicensees shall obtain, keep in force and maintain
comprehensive general product liability insurance of at least
US$[*********] per incident and adequate annual aggregate amounts
and shall name LOEB as an additional insured.





ARTICLE 9




TERM; TERMINATION





	9.1	 	Term. This Agreement shall commence as of the Effective Date and,
unless sooner terminated as provided in Sec. 9.3 hereunder, shall
terminate as to the Licensed Technology and as to each country in
the Territory, upon the expiration of the last to




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.



 


			
	[ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the
Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.





15









 




License Agreement





	 	 	expire of the Patent Rights covering the manufacture, use or
sale of such Licensed Technology and/or the manufacture, use or
sale of such Licensed Product in such country or a minimum of
fifteen (15) years from the date of first Commercial Sale,
whichever is later. Upon any such expiration of Patent Rights or
end of such fifteen year period in such country whichever is later,
CpG shall have a fully paid-up license of perpetual duration in
such country, subject to the survival provisions in Section 9.7,
including the right of CpG, its Affiliates and/or its Sublicensees
to continue developing, making, using or selling such Licensed
Technology and Licensed Products without any further obligation to
LOEB hereunder.
	 
	9.2	 	Breach. Failure by either Party to comply with any of the material
obligations contained in this Agreement shall entitle the other
Party to give to the Party in default notice specifying the nature
of the default and requiring it to cure such default. If such
default is not cured within sixty (60) days after the receipt of
such notice (or, if such default cannot be cured or remedied
within such sixty (60) day period, the Party in default does not
commence and diligently continue actions to cure or remedy such
default), the notifying Party shall be entitled, without prejudice
to any of its other rights conferred on it by this Agreement, and
in addition to any other remedies available to it by law or in
equity, to terminate this Agreement by giving written notice to
take effect within sixty (60) days after such notice unless the
defaulting Party shall cure such default within said sixty (60)
days. The right of either Party to terminate this Agreement, as
hereinafter provided, shall not be affected in any way by its
waiver or failure to take action with respect to any previous
default.
	 
	9.3	 	Termination by CpG. CpG shall have the right to terminate the
licenses to Licensed Technology granted hereunder, in whole or as
to any Patent Right in any country in the Territory, at any time,
and from time to time, by giving notice in writing to LOEB. Such
termination shall be effective thirty (30) days from the date such
notice is given, and all CpG’s rights associated therewith shall
cease as of that date, subject to Section 9.4.
	 
	9.4	 	Rights to Sell Stock on Hand. Upon the termination of any license
to Licensed Technology granted herein, other than under Section
9.1, in part or in whole or as to any Patent Right and
corresponding Licensed Technology, CpG shall have the right for
one (1) year or such longer period as the Parties may reasonably
agree to dispose of all Licensed Product or substantially
completed Licensed Product then on hand to which such termination
applies, and royalties shall be paid to LOEB with respect to such
Licensed Products as though this Agreement had not terminated.
	 
	9.5	 	Termination of Sublicenses. Upon any termination of this
Agreement, except under Section 9.1, all sublicenses granted by
CpG under this Agreement shall terminate, subject, nevertheless,
to Section 9.4, unless any Sublicensee shall agree in writing
prior to any such termination to be bound directly to LOEB by the
provisions of the relevant sublicense agreement.
	 
	9.6	 	Effect of Termination. Upon the termination of any license granted
hereunder as to any Patent Right and corresponding Licensed
Technology in any country in the Territory other





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




16









 







License Agreement







	 	 	than pursuant to Section 9.1, CpG and its Affiliates and
Sublicensees shall promptly return to LOEB all relevant records,
materials and Confidential Information of LOEB concerning such
Patent Rights and corresponding Licensed Technology in such country
in the possession or control of CpG or any of its Affiliates or
Sublicensees.
	 
	9.7	 	Surviving Rights. Termination of this Agreement shall not
terminate CpG’s obligation to pay all royalties which shall have
accrued hereunder prior to such termination. The Parties’
obligations under ARTICLES 7 and 8 and Sections 6.1(b), 10.1, 10.8
and 10.12 shall survive termination or expiration of this
Agreement in addition to those articles surviving by matter of
law.
	 
	9.8	 	Accrued Rights, Surviving Obligations. Termination, relinquishment
or expiration of this Agreement for any reason shall be without
prejudice to any rights which shall have accrued to the benefit of
either Party under this Agreement prior to such termination,
relinquishment or expiration. Such termination, relinquishment or
expiration shall not relieve either Party from obligations which
are expressly indicated to survive termination or expiration of
this Agreement.





ARTICLE 10




MISCELLANEOUS PROVISIONS





	10.1	 	Dispute Resolution.






	 	(a)	 	Except for the right of either Party to apply to a court of
competent jurisdiction for a temporary restraining order, a
preliminary injunction, or other equitable relief to preserve the
status quo or prevent irreparable harm, any and all claims,
disputes or controversies arising under, out of, or in connection
with this Agreement, including any dispute relating to patent
validity or infringement, or to the reasonableness of CpG’s
commercialization efforts, which the Parties shall be unable to
resolve within sixty (60) days shall be mediated in good faith.
The Party raising such dispute shall promptly advise the other
party of such claim, dispute or controversy in a writing which
describes in reasonable detail the nature of such dispute. By not
later than five (5) business days after the recipient has received
such notice of dispute, each Party shall have selected for itself
a representative who shall have the authority to bind such Party,
and shall additionally have advised the other Party in writing of
the name and title of such representative.
	 
	 	(b)	 	By not later than ten (10) business days after the date of such
notice of dispute, the Party against whom the dispute shall be
raised shall select a mediation firm reasonably acceptable to both
Parties and such representatives shall schedule a date with such
firm for a mediation hearing in the Ottawa area. The Parties shall
enter into good faith mediation and shall share the costs equally.
If the representatives of the Parties have not been able to
resolve the dispute within





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.









 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




17









 







License Agreement










	 	 	 	fifteen (15) business days after such mediation hearing, the
Parties shall have the right to pursue any other remedies legally
available to resolve such dispute.






	10.2	 	Relationship of Parties. Nothing in this Agreement is or shall be
deemed to constitute a partnership, agency, employee, franchise
or joint venture relationship between the Parties. No Party shall
incur any debts or make any commitments for the other, except to
the extent, if at all, specifically provided herein.
	 
	10.3	 	Assignment. Except as otherwise provided herein, neither this
Agreement nor any interest hereunder shall be assignable by any
Party without the prior written consent of the other; provided,
however, that either Party may assign this Agreement to any
wholly-owned subsidiary or to any successor by merger or sale of
substantially all of its assets to which this Agreement relates
in a manner such that the assignee shall remain liable and
responsible for the performance and observance of all of the
assigning Party’s duties and obligations hereunder. This
Agreement shall be binding upon the successors and permitted
assigns of the parties and the name of a Party appearing herein
shall be deemed to include the names of such Party’s successors
and permitted assigns to the extent necessary to carry out the
intent of this Agreement. Any assignment not in accordance with
this Section 10.3 shall be void.
	 
	10.4	 	Further Actions. Each Party agrees to execute, acknowledge and
deliver such further instructions, and to do all such other acts,
as may be necessary or appropriate in order to carry out the
purposes and intent of this Agreement.
	 
	10.5	 	Force Majeure. Neither Party shall be liable to the other for
loss or damages nor shall have any right to terminate this
Agreement for any default or delay attributable to any act of
God, flood, fire, explosion, lightning, windstorm, earthquake,
failure of supply of materials or failure or destruction of
machinery or equipment, strike, labor difficulties or
governmental action, lockout, casualty, accident, war,
revolution, civil commotion, act of public enemies, blockage or
embargo, injunction, law, order, proclamation, regulation,
ordinance, demand or requirement of any government or
subdivision, authority or representative of any such government,
or any other cause beyond the reasonable control of such Party,
if the Party affected shall give prompt notice of any such cause
to the other Party. The Party giving such notice shall thereupon
be excused from such of its obligations hereunder as it is
thereby disabled from performing for so long as it is so disabled
and for thirty (30) days thereafter. Notwithstanding the
foregoing, nothing in this Section 10.5 shall excuse or suspend
the obligation to make any payment due hereunder in the manner
and at the time provided.
	 
	10.6	 	No Trademark Rights. Except as otherwise provided herein, no
right, express or implied, is granted by this Agreement to use in
any manner the name “CpG” or “LOEB” or any other trade name or
trademark of the other Party in connection with the performance
of this Agreement.





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 




	
	[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




18









 







License Agreement








	10.7	 	Headings. Section and subsection headings are inserted for convenience of reference only and do not form a part of this Agreement.
	 
	10.8	 	No Third Parties Benefited. Except as set forth in Article 8
hereof, no third party, including any employee of any party to
this Agreement, shall have or acquire any rights by reason of
this Agreement.
	 
	10.9	 	Public Announcements. Except as required by law, neither Party
shall make any public announcement concerning this Agreement or
the subject matter hereof without the prior consent of the other.
In the event of a required public announcement, the Party making
such announcement shall provide the other with a copy of the
proposed text prior to such announcement. Once any written
statement is approved for disclosure by both Parties, either
Party may make subsequent public disclosures limited to all or a
portion of the specific contents of such prior statement without
the further approval of the other Party.
	 
	10.10	 	Notices. All notices and other communications hereunder shall be
in writing and shall be deemed given if sent by registered mail,
return receipt requested or delivered by hand or commercial
express courier to the following address of either Party unless
changed by written notice (provided that notice of a change of
address shall be effective only upon receipt thereof:






	 	(a)	 	If to CpG, addressed to:





CpG ImmunoPharmaceuticals, Inc.

55 William Street, Suite 120

Wellesley, MA 02481

USA

Attn: President




With a copy to:




Mintz, Levin, Cohn, Ferris,

Glovsky and Popeo, P.C.

One Financial Center

Boston, MA 02111

Attn: Jeffrey M. Wiesen, Esq.





	 	(b)	 	If to LOEB, addressed to:





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




19









 







License Agreement







The Loeb Health Research Institute at the Ottawa Hospital

725 Parkdale Avenue

Ottawa, Ontario

Canada. K1Y 4E9

           Attn: Robert Hanlon, M.H.A.; C.H.E.

      Chief Administrative Officer





	10.11	 	Amendment. No amendment, modification or supplement of any
provision of this Agreement shall be valid or effective unless
made in writing and signed by a duly authorized officer of each
Party. This Agreement may be executed in a series of
counterparts, all of which, when taken together, shall
constitute one and the same instrument.
	 
	10.11	 	Waiver. Subject to applicable statutes of limitation, no
provision of this Agreement shall be waived by any act, omission
or knowledge of a Party or its agents or employees, except by an
instrument in writing expressly waiving such provision and
signed by the waiving Party.
	 
	10.12	 	Governing Law. This Agreement shall be construed, governed,
interpreted and applied in accordance with the laws of the
province of Ontario, Canada without application of principles of
conflict of 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.
	 
	10.13	 	Severability. Whenever possible, each provision of this
Agreement will be interpreted in such manner as to be effective
and valid under applicable law, but if any provision of this
Agreement is held to be prohibited by or invalid under
applicable law, such provision will be ineffective only to the
extent of such prohibition or invalidity, without invalidating
the remainder of this Agreement and the Parties shall promptly
negotiate in good faith a replacement provision to carry out the
intention of the invalid, illegal or unenforceable provision to
the fullest extent permitted by law.
	 
	10.14	 	Entire Agreement of the Parties. This Agreement constitutes and
contains the entire understanding and agreement of the Parties
and cancels and supersedes any and all prior negotiations,
correspondence, understandings and agreements, whether oral or
written, between the Parties respecting the subject matter
hereof. In the event of any conflict between the terms of the
Research Agreement and this Agreement, the terms of this
Agreement shall govern.





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




20









 







License Agreement







     IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be executed by its duly
authorized officer as of the day and year first above written:



	 	 	 	 	 	 	 
	For LOEB:	 	 	 	 
	By:

	 	/s/ Robert Hanlon
	 	By:
	 	/s/ Michel Chretian, M.D.
	 

	 	 
	 	 	 	 
	Name:

	 	Robert Hanlon, M.H.A.; C.H.E.
	 	Name:
	 	Michel Christian, M.D.
	Title:

	 	Chief Administrative Officer	 	Title:	 	Chief Executive Officer and Scientific Director
	 

	 	The Loeb Health Research Institute
	 	 	 	The Loeb Health Research Institute
	

	 	at the Ottawa Hospital
	 	 
	 	at the Ottawa Hospital
	 
	 	 	 	 	 	 
	Date:

	 	January 6, 1999
	 	Date:
	 	January 7, 1999
	 
	 	 	 	 	 	 
	For CpG:	 	 	 	 
	By:

	 	/s/ Robert L. Bratzler, Ph.D.	 	 	 	 
	 

	 	 	 	 	 	 
	Name:

	 	Robert L. Bratzler, Ph.D.	 	 	 	 
	Title:

	 	President, CpG ImmunoPharmaceuticals, Inc.	 	 	 	 
	Date:

	 	Dec. 23, 1998	 	 	 	 






Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




21









 







License Agreement







EXHIBIT A




LICENSED PATENTS




(As of May 31, 1998)




	 	 	 	 	 
	Patents	 	Status	 
	1. [****************************************************]
	 	 	 	 
	a) US Provisional #[**********] filed [*******]
	 	 	[*******]	 
	2. [*****************************************************]
	 	 	 	 
	a) US Provisional # [*********] filed [*******] and [********] filed [*******]
	 	 	[*******]	 
	3. [*****************************************************
	 	 	 	 
	*******************************************************************]
a) US Provisional [*********] filed [*******]
	 	 	[*******]	 
	4. [**********************************************************************************************
	 	 	 	 
	****************************]
	 	 	 	 
	a) US Provisional [**********] filed [*******]
	 	 	[*******]	 






Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.







 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




22









 







License Agreement






Exhibit 10.19 to Coley Pharmaceutical Group, Inc. Form S-1 filed April 20, 2005




CONFIDENTIAL




Coley Pharmaceutical Group, Inc.

Wellesley Gateway

93 Worcester Street, Suite 101

Wellesley, Massachusetts 02481




September 25, 2001




Ottawa Health Research Institute

725 Parkdale Avenue

Ottawa, Ontario KIY 4E9

CANADA

Attn: Robert Hanlon, M.H.A., C.H.E.

                     Chief Administrative Officer




          Re:
Amendment to License Agreement




Ladies and Gentlemen:



          This letter will serve as an amendment (the “Amendment”) to the License Agreement
(the “Agreement”) dated as of September 1, 1998 between Coley Pharmaceutical Group, Inc.,
formerly known as CpG ImmunoPharmaceuticals, Inc. (“Coley”), and the Loeb Health Research Institute
at the Ottawa Hospital (the “LOEB”). The Ottawa Health Research Institute (the “OHRI”) is
the successor in interest to, and assignee of, all the rights and obligations of the LOEB under the
Agreement. All capitalized terms that are used in this letter and not defined herein shall have the
meanings ascribed to them in the Agreement. Except as specifically modified by this Amendment, the
parties hereto agree that all of the terms and conditions set forth in the Agreement remain in full
force and effect.




1. OHRI as a Party 




          The OHRI, as the assignee of all of the assets and liabilities of the LOEB, has replaced
the LOEB as a Party to the Agreement. Consequently, all references in the Agreement to the LOEB are
hereby replaced with references to the OHRI.




2. Amendment to the Definition of Commercial Sale. 




          The Parties hereby agree that Section 1.2 of the Agreement shall hereby be amended and
restated in its entirety to read as follows:





	 	“1.3 	 	Commercial Sale shall mean any transaction for value between
Coley, an affiliate of Coley, or a Sublicensee of Coley, as
applicable, and a third party, which transaction involves the
transfer or other disposition of a Licensed Product to such third
party.”





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




23









 







License Agreement







3. Amendment to the Definition of Field. 




     The Parties hereby agree that Section 1.3 of the Agreement shall hereby be amended and
restated in its entirety to read as follows:




	 	“1.3	 	 Field shall mean any and all uses of CpG, T- rich or G- rich
molecules and any derivatives, modifications, improvements,
fragments, analogs, or homologs thereof and any other materials
which could not have been discovered or made but for the use of
the above described molecules or Coley’s confidential information
(that is not in the public domain), whether used alone or in
combination with other agents, including but not limited to,
formulations or delivery systems.”





4. Amendment to the Definition of Licensed Product. 




     The Parties hereby agree that Section 1.8 of the Agreement shall hereby be amended and
restated in its entirety to read as follows:




	 	“1.8	 	 Licensed Product shall mean any product or process which is
covered, on a country-by-country and product-by-product basis, by
a Pending or issued claim under Patent Rights in such country. In
addition, Licensed Product shall also mean, on a
product-by-product basis, any product or process not covered by
Patent Rights which to a material degree, as determined by mutual
agreement of the Parties, contains, is based on, or is derived
from, identified through or utilizes any Licensed Technology
which is not in the public domain. Any product or process which
is a Licensed Product at the time of first Commercial Sale shall,
for the purposes of Sections 4.1, 4.3 and 9.1, be treated as a
Licensed Product for at least 10 years from the date of first
Commercial Sale,”





5. Amendment to the Definition of Patent Rights and Update to Exhibit A. 



      The Parties hereby agree that Section 1.12 of the Agreement shall hereby be amended and
restated in its entirety to read as follows:




	 	“1.12	 	 Patent Rights shall mean all rights derived from any and all
patents and patent applications (including without limitation
provisional applications and invention disclosures) that






     (a) are listed on Exhibit A attached hereto; or




     (b) are owned or controlled, in whole or in part (with the ability to grant licenses or
sublicenses), by the OHRI by way of transfer of rights from any Investigator, and that claim,
describe, embody or relate to the Licensed Technology throughout the Territory; or



Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




24









 







License Agreement








(c) result from or arise under any OHRI research agreement that is sponsored solely by Coley; or




(d) fall within the Field, name [******************] as an inventor, and are owned or
controlled, in whole or in part (with the ability to grant licenses or sublicenses), by the OHRI
(any patent rights outside of the Field in which is [******************] is an inventor will be
subject to prevailing OHRI policy governing intellectual property rights of its students);




together with any substitutions, extensions, renewals, continuations, continuations-in-part,
divisions, patents of addition, and/or reissues thereof, and any current and future patent or
patent application, or portion thereof, which is a foreign counterpart in any country in the
Territory to any of the foregoing, including any substitutions, extensions, renewals,
continuations, continuations-in-part, divisions, patents of addition and/or reissues thereof.




All of the foregoing patents and patent applications will be automatically incorporated in and
added to this Agreement and shall periodically be added to Exhibit A and made a part
thereof.”



      The Parties also hereby agree that Exhibit A to the Agreement shall be updated as
of the date hereof to the form of Exhibit A attached to this Amendment.



6. Amendment to Royalty Payment Obligations of Coley.




      The Parties hereby agree that Section 4.1 of the Agreement shall hereby be amended and
restated in its entirety to read as follows:




	 	“4.1 	 	Royalties. In consideration of the exclusive licenses and other
rights granted to Coley under this Agreement, Coley agrees to pay
to the OHRI a royalty, commencing upon the first Commercial Sale
of a Licensed Product by Coley, its Affiliates or its
Sublicensees, as follows:






	 	(a)	 	For Commercial Sales made by Coley or its Affiliates (but not its
Sublicensees) of all Licensed Products covered by issued or
Pending Patent Rights in a particular country, Coley shall pay the
following royalty rates on Net Sales in such country:






	 	(i)	 	[****]%, if the aggregate royalty rate being paid by Coley or its
Affiliates on the Licensed Product to all Licensed Product
Licensors is less than or equal to [****]%. For purposes of this
Section 4.1(a), the term Licensed Product Licensors shall mean, as
to a particular Licensed Product, all third parties (excluding
OHRI) to whom Coley or its Affiliates owe(s) a royalty on
Commercial Sales of such Licensed Product.





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




25









 







License Agreement








	 	(ii)	 	[****]%, if the aggregate royalty rate being paid by
Coley or its Affiliates on the Licensed Product to
all Licensed Product Licensors is greater than
[****]% but less than or equal to [****]%.
	 
	 	(iii)	 	[****]%, if the aggregate royalty rate being paid by Coley or
its Affiliates on the Licensed Product to all Licensed Product
Licensors is greater than [****]% but less than or equal to
[****]%.
	 
	 	(iv)	 	[****]%, if the aggregate royalty rate being paid by Coley or its
Affiliates on the Licensed Product to all Licensed Product
Licensors is greater than [****]%.
	 
	 	(v)	 	[****]% if the Licensed Product is sold for the treatment or prophylaxis treatment of veterinary diseases.






	 	(b)	 	For Commercial Sales made by Coley or its Affiliates (but not its
Sublicensees) of all Licensed Products that are not covered by
issued or Pending Patent Rights in a particular country, Coley
shall pay [*****] ([*]%) of the foregoing royalty rates, as
applicable, on Net Sales in such country.
	 
	 	(c)	 	In the event that Coley and/or its Affiliates receive Sublicense
Income from any Sublicensee, Coley shall pay to the OHRI [*****]
([*]%) of such Sublicense Income from each such Sublicensee.”





7. Amendment to Duration of Royalty Payment Obligations of Coley. 




     The Parties hereby agree that Section 4.3 of the Agreement shall hereby be amended and
restated in its entirety to read as follows:




	 	“4.3	 	 Duration of Royalties. Coley shall not be obligated to make any
further royalty payments in any country for any Licensed Product
after the end of the period commencing on the date of the first
Commercial Sale of the Licensed Product in that country by Coley,
its Affiliates or Sublicensees and ending either on the
expiration of a valid, enforceable claim of a Patent Right
covering the Licensed Product in that country or ten (10) years
after the date of the first Commercial Sale, whichever is later.”





8.  Amendment to Term of Agreement. 




     The Parties hereby agree that Section 9.1 of the Agreement shall hereby be amended and
restated in its entirety to read as follows:




	 	“9.1	 	 Term. This Agreement shall commence as of the Effective Date and,
unless sooner terminated as provided in Section 9.3 hereunder,
shall terminate as to each country in the Territory, upon the
expiration of the last to expire valid, enforceable claim of a
Patent Right covering such Licensed Product in such country or a
minimum of ten (10) years from the date of the first Commercial
Sale, whichever is later. Upon any such expiration of Patent
Rights or end of such ten year period in such country whichever
is later, Coley shall have a fully paid-up license of





Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




26









 







License Agreement








	 	 	 	perpetual duration in such country, subject to the survival
provisions in Section 9.7, including the right of Coley, its
Affiliates and/or its Sublicensees to continue using the Licensed
Technology and to develop, have developed, make, have made,
perform, use, have used, sell, offer for sale, have sold, import or
have imported Licensed Products without any further obligation to
the OHRI hereunder.”





9. Amendment to Restriction on Assignment of Agreement. 




      The Parties hereby agree that the first sentence of Section 10.3 of the Agreement shall
hereby be amended and restated in its entirety to read as follows:




	 	“10.3	 	Assignment. Except as otherwise provided
herein, neither this Agreement nor any interest
hereunder shall be assignable by any Party
without the prior written consent of the other,
whose consent shall not be unreasonably denied;
provided, however, that either Party may assign
this Agreement to any wholly-owned subsidiary,
affiliate or to any successor by merger or sale
of substantially all of its assets to which
this Agreement relates in a manner such that
the assignee shall remain liable and
responsible for the performance and observance
of all of the assigning Party’s duties and
obligations hereunder.”





10. Issuance of Common Stock to OHRI and Co-Inventors. 




     OHRI hereby requests of Coley, as consideration for the execution of this Amendment by
ORHI, and Coley hereby agrees, subject to the terms and conditions set forth below, to issue Forty
Thousand (40,000) shares of its Common Stock (the “Amendment Shares”) as follows: (1)
20,000 shares to OHRI, (2) 14,000 shares to Heather Davis, (3) 4,000 shares to Michael McCluskie,
and (4) 2,000 shares to Tong Wu . The issuance of Amendment Shares to OHRI shall be made pursuant
to, and subject to the terms and conditions of, the Subscription Agreement attached hereto as
Exhibit B, and the issuance of Amendment Shares to the Co-Inventors (as defined below) shall
be made pursuant to, and subject to the terms and conditions of, separate written agreements
mutually acceptable to Coley and each of the Co-Inventors.



      OHRI hereby represents and warrants to Coley that (1) Heather Davis, Michael McCluskie and
Tong Wu (collectively, the “Co-Inventors”) are inventors of the Patent Rights, and the
only LOEB or OHRI inventors named therein, (2) the allocation of the Amendment Shares as set forth
in the preceding paragraph is pursuant to and in compliance with any and all policies or agreements
to which OHRI is a party or otherwise bound that relate to the sharing of revenues among inventors
of intellectual property rights of OHRI constituting the Patent Rights, and (3) no person has any
claim to any portion of the Amendment Shares except as set forth in the preceding paragraph. OHRI
hereby agrees to indemnify and hold harmless Coley, its successors and assigns, and their
respective officers, directors, employees and agents (collectively, the “Obligees”), from
and against any and all losses, damages, costs, expenses and liabilities (including reasonable
attorneys’ fees) that the Obligees may incur by reason of (1) a breach of OHRI’s representations
and warranties in the preceding sentence or (2) any obligation with respect to the payment or
withholding of taxes that may arise as a result of the issuance of the Amendment Shares to the
Co-Inventors.



11. Survival. 




      Each of the Parties hereto acknowledges that the Agreement remains in full force and
effect in accordance with its terms, as amended hereby.



Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




27









 







License Agreement







12. Entire Agreement. 




     The Agreement and this Amendment and the attachments hereto and thereto constitute the
entire agreement and understanding between Coley and the OHRI relating to the subject thereof and
hereof. No verbal agreement, conversation or representation between any officers, agents, or
employees of the parties hereto either before or after the execution of the Agreement or this
Amendment shall affect or modify any of the terms or obligations therein or herein contained. Any
further amendment to the terms of the Agreement or this Amendment shall be made in writing and
signed on behalf of each Party by a duly authorized officer.



13. Terms Confidential. 




      Each Party hereby acknowledges and agrees that it will not disclose the terms of the
Agreement or this Amendment or any other information relating to the subject matter hereof or
thereof to any third party without the express written consent of the other Party, except that (i)
either Party may use the text of a written statement approved in advance by both Parties without
further approval, (ii) Coley may disclose the terms of the Agreement and this Agreement to a
potential or current Sublicensee, and (iii) either Party shall have the right, following written
notice to the other Party, to identify the other Party and to disclose the terms of this Agreement
as required by applicable securities laws or other applicable laws or regulations.



      Please sign below where indicated to acknowledge your agreement to the foregoing
Amendment.



	 	 	 	 	 
	 	 	Sincerely,

COLEY PHARMACEUTICAL GROUP, INC.
	 

	 	By:
	 	/s/ Robert L. Bratzler
	 

	 	 	 	 
	 

	 	Name:
	 	Robert L. Bratzler, Ph.D.
	 

	 	Title:
	 	CEO and President






	 	 	 	 	 
	ACKNOWLEDGED AND AGREED TO
This 25 day of September, 2001


THE OTTAWA HEALTH RESEARCH INSTITUTE	 	 
	By:

	 	/s/ Robert Hanlon	 	 
	 

	 	 	 	 
	Name:

	 	Robert Hanlon	 	 
	Title:

	 	Chief Operating Officer	 	 






Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




28









 







License Agreement






Exhibit A




PATENT RIGHTS




	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	FILING	 	 	 	 	 	 
	WG&S ID	 	SN	 	DATE	 	INVENTORS	 	TITLE	 	STATUS
	[*************]

	 	[*************]
	 	[********]
	 	[*********]
	 	[**********************	 	[*******]
		 		 		 	[*****]
	 	********************]
	 	
	[*************]

	 	[*******]
	 	[********]
	 	 	 	 	 	[*******]
	[*************]

	 	[***********]
	 	[********]
	 	 	 	 	 	[*******]
	[*************]

	 	[******]
	 	[********]
	 	 	 	 	 	[*******]
	[*************]

	 	[*********]
	 	[********]
	 	 	 	 	 	[*******]
	[*************]

	 	[******]
	 	[********]
	 	 	 	 	 	[*******]
	[*************]

	 	[************]
	 	[********]
	 	 	 	 	 	[*******]
	[*************]

	 	[******]
	 	[********]
	 	 	 	 	 	[*******]
	[*************]

	 	[********]
	 	[********]
	 	 	 	 	 	[*******]
	[*************]

	 	[************]
	 	[********]
	 	[*****]
	 	[**********************	 	[*******]
	 

	 	 	 	 	 	[*********]
	 	**********************	 	
	 

	 	 	 	 	 		 	************]
	 	 
	[*************]

	 	[*************]
	 	[********]
	 		 		 	
	[*************]

	 	 	 	 	 	[*********]
	 	[***********************
	 	[*****************
		 	 	 	 	 	[*****]
	 	***********************	 	*****************]
	 

	 	 	 	 	 	 	 	**********************]	 	 
	[**************]

	 	 	 	 	 	[*********]
	 	[***********************
	 	[*****************
		 	 	 	 	 	[*****]
	 	************************	 	*****************]
									************************		
									********]		






Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




29









 







License Agreement







	 	 	 	 	 	 	 	 	 	 	 
	 

	 	 	 	 	 	[*****]	 	 	 	 
	[************]

	 	[********]
	 	[********]
	 	[******]
	 	[********************
	 	[*******]
	[************]

	 	[********]
	 	[********]
	 	[*****]
	 	********************
	 	[*******]
	[************]

	 	[********]
	 	[********]
	 	[********]
	 	********************
	 	[*******]
	[************]

	 	[********]
	 	[********]
	 	[*********]
	 	***********]
	 	[*******]
	 

	 	 	 	 	 	 	 	[********************	 	 
	[************]

	 	[*************]
	 	[********]
	 	[*****]
	 	********************
	 	[*******]
	 

	 	 	 	 	 	[*****]
	 	****************]	 	 
	[************]

	 	[********]
	 	[********]
	 	[******]
	 	 	 	[*******]
	[************]

	 	[**********]
	 	[********]
	 	[**]
	 	 	 	[*******]
	[************]

	 	[**********]
	 	[********]
	 	 	 	 	 	[*******]
	[************]

	 	[**********]
	 	[********]
	 	 	 	[********************	 	[*******]
	[************]

	 	[**********]
	 	[********]
	 	[******]
	 	********************	 	[*******]
	 

	 	 	 	 	 	[******]
	 	********************	 	 
		 		 		 	[*****]
	 	*********]
	 	
		 		 		 	[**********]
	 	[********************
	 	
	 

	 	 	 	 	 	[*****]
	 	********************	 	 
	 

	 	 	 	 	 	[*****]
	 	********************	 	 
	 

	 	 	 	 	 		 	********************	 	 
	[************]

	 	[********]
	 	[********]
	 		 	****************]
	 	[*******]
	[************]

	 	[********]
	 	[********]
	 	 	 	 	 	[*******]
	[************]

	 	[**********]
	 	[********]
	 	[*******]
	 	 	 	[*******]
	[************]

	 	[***********]
	 	[********]
	 	 	 	 	 	[*******]






[*****************************************************************************************]




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




30









 







License Agreement







SUBSCRIPTION AGREEMENT




          This Agreement is made as of the 25 day of September 2001, by and between Coley
Pharmaceutical Group, Inc., a Delaware corporation (the “ Company ”), and the Ottawa Health
Research Institute (“Purchaser”).




          WHEREAS, the Company has requested. and the Purchaser has agreed, to amend certain terms
and conditions of the License Agreement dated as of September l, 1998 between the Company and
Purchaser (the “Agreement”) pursuant to an Amendment dated as of the date hereof (the
“Amendment”); and




          WHEREAS, as partial consideration for the Purchaser’s agreement to enter into the
Amendment, the Company has agreed to issue to the Purchaser shares of the Company’s Common Stock on
the terms and conditions set forth below;




          NOW THEREFORE, the parties hereto, for good and valuable consideration, the sufficiency of
which is hereby acknowledged, agrees as follows:




          I. Purchase and Sale. Purchaser hereby purchases from the Company, and the Company
agrees to sell to Purchaser, Twenty Thousand (20,000) shares of the Company’s Common Stock (the
“Shares”) as consideration for the Purchaser’s agreement to enter into the Amendment, and for
no additional consideration. The closing hereunder shall occur at the offices of the Company on the
date hereof, or at such other time and place as the parties may mutually agree.




          2. Purchaser Representations. Purchaser acknowledges that the Shares to be issued
pursuant to this Agreement have not been registered under the Securities Act of 1933, as amended
(the “ Securities Act”), and Purchaser warrants and represents to the Company as follows:




          (a) Enforceability. This Agreement has been duly executed and delivered by
Purchaser and constitutes a legal, valid and binding obligation of Purchaser, enforceable against
Purchaser in accordance with its terms, subject to laws of general application relating to
bankruptcy, insolvency and the relief of debtors and rules of law governing specific performance,
injunctive relief or other equitable remedies, and to limitations of public policy.




          (b) Purchase for Own Account. Purchaser is purchasing the Shares solely for
Purchaser’s own account for investment and not with a view to or for sale or distribution of the
Shares or any portion thereof and not with any present intention of selling, offering to sell or
otherwise disposing of or distributing the Shares or any portion thereto. Purchaser also represents
that the entire legal and beneficial interest of the Shares that Purchaser is purchasing is being
purchased for, and will be held for the account of, Purchaser only and neither in whole nor in part
for any other person.




          (c) Availability of Information. Purchaser has heretofore discussed the Company
and its plans, operations and financial condition with Company’s officers and Purchaser has
heretofore received all such information as Purchaser deems necessary and appropriate to enable
Purchaser to evaluate the financial risk inherent in making an investment in the Shares and




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




31









 







License Agreement







Purchaser further represents and warrants that Purchaser has received satisfactory and complete
information concerning the business and financial condition of the Company in response to all
inquiries in respect thereof.



          (d) Rule 144. Purchaser understands that the Shares are restricted securities
within the meaning of Rule 144 promulgated under the Securities Act, and that any sale of the
Shares may be made by Purchaser only in accordance with the terms and conditions of Rule 144 (of
which it is familiar), as amended from time to time.




          (e) Accredited Investor. The Purchaser represents that he, she or it is an
“accredited investor” as such term is defined in Rule 501 of Regulation D promulgated under the
Securities Act.




          (f) Lock-Up. If requested by the Company and the managing underwriter of an
offering by the Company of Common Stock or other securities of the Company pursuant to a
registration statement under the Securities Act, the Purchaser shall agree not to sell publicly or
otherwise transfer or dispose of the Shares for a specified period of time (not to exceed 180 days)
following the effective date of such registration statement (the “Lock-up”), provided that:




          (i) all holders of more than two percent (2%) of the Common Stock then outstanding
(including holders of securities convertible into or exchangeable or exercisable for shares of
Common Stock) and all officers and directors of the Company enter into similar agreements; and




          (ii) in the event of any discretionary waiver or termination of the Lock-up by the
Company or representatives of the underwriter, the Company shall use its best efforts to obtain
the waiver or termination of the Lock-up with respect to all persons subject to such Lock- up on a
pro-rata basis.




          The Company may impose stop-transfer instructions with respect to the Shares or such other
securities subject to the Lock-up until the end of such 180-day period.




          (g) Legend. Each certificate representing the Shares shall bear a legend
substantially in the following form:




“The shares represented by this certificate have not been registered under the Securities Act
of 1933, as amended, and may not be offered, sold or otherwise transferred, pledged or
hypothecated unless and until such shares are registered under such Act or an opinion of counsel
satisfactory to the Company is obtained to the effect that such registration is not required.”



          (h) Dispositions. Without in any way limiting the representations set forth above,
Purchaser further agrees that Purchaser shall in no event make any disposition of all or any
portion of the Shares unless and until:




          (i) There is then in effect a registration statement under the Securities Act covering
such proposed disposition and such disposition is made in accordance with said registration
statement; or




Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.





 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




32









 







License Agreement







          (ii) (A) Purchaser shall have notified the Company of the proposed disposition and shall have
furnished the Company with a detailed statement of circumstances surrounding the proposed
disposition, (B) Purchaser shall have furnished the Company with an opinion of Purchaser’s counsel
(or, at Purchaser’s expense, an opinion of the Company’s counsel) to the effect that such
disposition will not require registration of such Shares under the Act, and (C) any opinion of
counsel to Purchaser shall have been concurred in by counsel for the. Company and the Company
shall have advised Purchaser of such concurrence.




          3. Miscellaneous.




          (a) Successors and Assigns. This Agreement shall inure to the benefit of the
successors and assigns of the Company and be binding upon Purchaser and Purchaser’s successors and
assigns.




          (b) Governing Law. This Agreement shall be governed by and interpreted under the
laws of the Commonwealth of Massachusetts.




          (c) Headings. Headings are for convenience only and are not deemed to be part of
this Agreement.




          (d) Counterparts. This Agreement may be executed simultaneously in any number of
counterparts, each of which shall be deemed to be an original, but all of which together shall
constitute one and the same instrument.




          IN WITNESS WHEREOF, the parties hereto have executed this Agreement under seal as of the
day and year first above written.




	 	 	 	 	 
	 	 	COLEY PHARMACEUTICAL GROUP, INC.
	 
	 	 	 	 
	 

	 	By:
	 	/s/ Robert L. Bratzler
	 

	 	 	 	 
	 

	 	Name:
	 	Robert L. Bratzler, Ph.D.
	 

	 	Title:
	 	CEO and President
	 
	 	 	 	 
	 	 	THE OTTAWA HEALTH RESEARCH INSTITUTE
	 

	 	By:
	 	/s/ Robert Hanlon
	 

	 	 	 	 
	 

	 	Name:
	 	Robert Hanlon
	 

	 	Title:
	 	Chief Operating Officer






Portions of this Exhibit were omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting confidential treatment under Rule 406
of the Securities Act.




 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




33









 







License Agreement






EXHIBIT D




 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




34









 







License Agreement




	 	 	 
	

	 	






News Release




	 	 	 
	Coley Contact: 

	 	 Dynavax Contact:
	Susan Hager

	 	Shari Annes
	Senior Director, Investor Relations and

	 	Investor Relations
	Corporate Communications

	 	Public Relations
	+1.781.431.9079

	 	+1-650-888-0902
	shager@coleypharma.com 

	 	sannes@dynavax.com






Media Contact: 

Karen L. Bergman or

Michelle Corral

BCC Partners

+1.650.575.1509 or +1.415.794.8662

kbergman@bccpartners.com

mcorral@bccpartners.com




For Immediate Release




Coley Pharmaceutical Group Grants Dynavax

License for Commercialization of HEPLISAVTM




Wellesley, MA and Berkeley, CA, June 28, 2007 – Coley Pharmaceutical Group, Inc. (Nasdaq:
COLY) and Dynavax Technologies Corporation (Nasdaq: DVAX) today announced they have entered into a
license agreement relating to certain TLR TherapeuticsTM patents from Coley.



Under the terms of the agreement, Dynavax receives a non-exclusive license under Coley’s
immunostimulatory oligonucleotide patent estate for the commercialization of HEPLISAVTM, a hepatitis
B prophylactic vaccine, currently in Phase 3 clinical trials. Coley will receive a $5 million
up-front payment. Coley is also eligible to receive up to an additional $5.0 million upon
regulatory approvals of HEPLISAV, as well as royalty payments for any future sales of HEPLISAV.



—more—




 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




35









 







License Agreement




About HEPLISAV and Hepatitis B




HEPLISAV is currently being evaluated in a Phase 3 clinical trial in Canada and in Europe. The
multi-center trial, known as PHAST (Phase 3 HeplisAv Short-regimen
Trial), is comparing a two-dose regimen of HEPLISAV administered at 0 and 1 month to the
conventional three-dose regimen of Engerix-B®. The enrollment target of the study is approximately
2,000 subjects, ages 11 to 55 years. Dynavax expects to submit a BLA in 2008 for approval of the
product with a database of approximately 4,000 patients



In several previous clinical studies, HEPLISAV has been shown to provide seroprotection against
hepatitis B faster and with fewer doses than conventional hepatitis B vaccines. Additionally,
HEPLISAV has provided 100% seroprotection in all subjects who have received the full regimen,
including those who are difficult-to-immunize.



About Coley’s TLR TherapeuticsTM




Coley’s TLR Therapeutics are a new class of investigational drug candidates that target certain
immune cells through Toll-like receptors. The patents licensed today to Dynavax relate to Coley’s
Toll-like receptor 9 (TLR9) agonist technology that induce enhanced antigen-specific antibody and
T-cell immune responses when used in combination with vaccines. Coley’s TLR9 agonist drug
candidate has been included in approximately 35 clinical trials of vaccines in development for use
in various cancer indications, infectious diseases and biowarfare defense. The most advanced
clinical program with Coley’s TLR9 agonist vaccine adjuvant candidate is a forthcoming Phase III
clinical trial under the direction of GlaxoSmithKline (GSK) as part of a treatment for resectable,
early stage lung cancer.



About Coley Pharmaceutical Group




Coley Pharmaceutical Group, Inc. is an international biopharmaceutical company, headquartered in
Wellesley, Massachusetts, USA, that discovers and develops TLR TherapeuticsTM, a new class of
investigational drug candidates that direct the human immune system to fight cancers, asthma and
allergic diseases and to enhance the effectiveness of vaccines. Coley has established a pipeline
of TLR Therapeutic product candidates currently advancing through clinical development with
partners and has additional product candidates in preclinical development. Coley has product
development, research and license agreements with Pfizer, sanofi-aventis, GSK, Novartis
Vaccines, Merck and the United States government. For further information on Coley
Pharmaceutical Group please visit www.coleypharma.com.



About Dynavax




Dynavax Technologies Corporation discovers, develops, and intends to commercialize innovative TLR9
agonist-based products to treat and prevent infectious diseases, allergies, cancer, and chronic
inflammatory diseases using versatile, proprietary approaches that alter immune system responses in
highly specific ways. The company’s TLR9 agonists are based on immunostimulatory sequences, or
ISS, which are short DNA sequences that enhance the ability of the immune system to fight disease
and control chronic inflammation. Dynavax’s pipeline includes: HEPLISAV, a hepatitis B vaccine in
Phase 3; TOLAMBATM, a ragweed allergy immunotherapeutic; a therapy for non-Hodgkin’s lymphoma
(NHL) in Phase 2 and for metastatic colorectal cancer in Phase 1; and a therapy for hepatitis B
also in Phase 1. A preclinical asthma and COPD program is partnered with AstraZeneca. The National
Institutes of Health (NIH) partially funds preclinical work on a vaccine for influenza; Symphony
Dynamo, Inc., funds the company’s colorectal cancer trials and a preclinical hepatitis C
therapeutic program. While the




 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.




iii









 







License Agreement





NIH and Symphony provide program support, Dynavax has retained rights to seek strategic partners
for future development and commercialization. For more information, please visit
http://www.dynavax.com.



—more—




Safe Harbor Statements




Certain statements in this news release concerning Coley’s business are considered “forward-looking
statements” within the meaning of the Private Securities Litigation Reform Act of 1995. These
statements include, but are not limited to, those relating to royalty payments for any future
product sales involving HEPLISAV. Any or all of the forward-looking statements in this press
release may turn out to be wrong. They can be affected by inaccurate assumptions Coley might make
or by known or unknown risks and uncertainties, including, but not limited to: the early stage of
product development; uncertainties as to the future success of ongoing and planned clinical trials;
the risk that results from early stage clinical trials may not be indicative of results in later
stage trials; the unproven safety and efficacy of products under development; intellectual property
rights and litigation; competitive products; and other risks identified in Coley’s filings with the
Securities and Exchange Commission including, but not limited to, Coley’s Annual Report on Form
10-K for the fiscal year ended December 31, 2006. Consequently, no forward-looking statement can
be guaranteed, and actual results may vary materially. Coley undertakes no obligation to publicly
update forward-looking statements, whether because of new information, future events or otherwise,
except as required by applicable law.



This press release contains forward-looking statements concerning Dynavax that are subject to a
number of risks and uncertainties, including statements about Dynavax’s HEPLISAV hepatitis B
vaccine and financial terms of its agreement with Coley. Actual results may differ materially from
those set forth in this press release due to the risks and uncertainties inherent in Dynavax’s
business, including difficulties or delays in development; achieving the objectives of
collaborative and licensing efforts; and obtaining regulatory approval for HEPLISAV; the scope and
validity of patent protection; possible claims based on the patent rights of others; the ability to
obtain additional financing to support operations; and other risks detailed in the “Risk Factors”
section of Dynavax’s Quarterly Report on Form 10-Q. Dynavax undertakes no obligation to revise or
update information herein to reflect events or circumstances in the future, even if new information
becomes available.



TLR Therapeutics is a trademark of Coley Pharmaceutical Group. HEPLISAV is a trademark of Dynavax
Technologies Corporation. All other trademarks are the property of their respective holders.



# # #





 




	
	
[ * ] = Certain confidential information contained in this document, marked by brackets,
has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule
24b-2 of the Securities Exchange Act of 1934, as amended.





iv