Exhibit 10.2


 


***Text
Omitted and Filed Separately


with the
Securities and Exchange Commission.


Confidential
Treatment Requested


Under 17
C.F.R. Sections 200.80(b)(4)


and
240.24b-2.


 


INTELLECTUAL
PROPERTY ASSIGNMENT AND 


LICENSE
AGREEMENT


 


THIS INTELLECTUAL PROPERTY
ASSIGNMENT AND LICENSE AGREEMENT (the “Agreement”)
is made and entered into effective as of October 30, 2009 (the “Effective Date”) by and between OPTIMER PHARMACEUTICALS, INC., a Delaware corporation (“Optimer”), and OPTIMER BIOTECHNOLOGY,
INC., a Taiwan corporation (“OBI”).


 


RECITALS


 


WHEREAS, Optimer and
OBI are parties to a License
Agreement, dated December 8, 2003, as amended on September 30, 2006
(the “Prior License Agreement”) whereby
Optimer licensed certain patents and know-how to OBI;


 


WHEREAS, Optimer has assigned, and OBI has assumed, Optimer’s
rights and obligations under certain license agreements related to the
development programs known as OPT-88 and OPT-822/821;


 


WHEREAS, Optimer has certain other rights related to OPT-88
and OPT-822/821, which OBI now desires to acquire from Optimer;


 


WHEREAS, Optimer previously made certain intercompany loans to
OBI, of which, a total of $3,335,056.01 is currently outstanding; and


 


WHEREAS, in connection
with the sale of OBI stock by Optimer pursuant to
that certain Stock Purchase Agreement between Optimer and the purchasers listed
on Schedule A thereto (the “Purchasers”)
of even date herewith and commitments by Optimer and the Purchasers to
purchase an aggregate of 66,000,000 new shares of OBI’s common stock pursuant
to that certain Financing Agreement between Optimer, the Purchasers and OBI of
even date herewith (the “Financing Agreement”),
(i) Optimer is willing to assign to OBI all its right, title and interest
in and to certain patent rights and know-how related to its OPT-88 and
OPT-822/821 programs  and forgive OBI’s
outstanding intercompany indebtedness to Optimer, and (ii) OBI is willing
to terminate the Prior License Agreement and OBI’s license rights thereunder,
all subject to the terms and conditions set forth below.


 


AGREEMENT


 


NOW, THEREFORE, in
consideration of the foregoing and the mutual covenants and conditions set
forth below, and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties hereby agree as
follows:


 


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1.                                      DEFINITIONS


 


1.1                               “Affiliate”
shall mean any company or entity
controlled by, controlling, or under common control with a party hereto.  For the purposes of this definition, the term
“control” (including, with correlative meanings, the terms “controlled by” and “under
common control with”) as used with respect to a party means (a) in the
case of a corporate entity, direct or indirect ownership of voting securities representing
more than 50% of the votes in any election of directors or (b) in the case
of a non-corporate entity, direct or indirect ownership of more than 50% of the
voting securities with the power to direct the management and policies of such
entity.  Notwithstanding the
foregoing, for purposes of this Agreement, neither party shall be considered an
Affiliate of the other.


 


1.2                               “Assigned
Patents” shall mean the OPT-88 Patents and the OPT-822/821
Patents.


 


1.3                               “Control”  or  “Controlled”
shall mean, with respect to any Information, Patents or other intellectual
property rights, possession by an entity of the ability (whether by ownership,
license or otherwise) to grant access to, to grant use of, or to grant a
license or a sublicense of or under such Information, Patents or other
intellectual property rights without violating the terms of any agreement or
other arrangement with any third party.


 


1.4                               “First
Commercial Sale” shall mean, with respect to any Product, the first
sale by or on behalf of OBI or any of its Affiliates to a Third Party for end
use or consumption of such Product in a country after the governing health
regulatory authority of such country has granted Regulatory Approval for such
Product.  A sale to an Affiliate shall
not constitute a First Commercial Sale.


 


1.5                               “Information” shall mean all
tangible and intangible (a) techniques, technology, practices, trade
secrets, inventions (whether patentable or not), methods, knowledge, know-how,
skill, experience, test data and results (including pharmacological,
toxicological and clinical test data and results), analytical and quality
control data, results or descriptions, software and algorithms and (b) compositions
of matter, cells, cell lines, assays, animal models and physical, biological or
chemical material.


 


1.6                               “License
Agreements” shall mean the Scripps Agreement and the MSKCC
Agreement.


 


1.7                               “Licensed
Patents” shall mean the Patents licensed to Optimer (or OBI,
as applicable) under the License Agreements.


 


1.8                               “MSKCC
Agreement” means that certain License Agreement, effective as
of July 31, 2002, as amended, between Optimer and the Memorial
Sloan-Kettering Cancer Center.


 


1.9                               “Net
Sales” shall mean the dollar amount determined by deducting from the gross
invoiced price billed for Products sold by or on behalf of OBI or its
Affiliates (or a licensee, sublicensee, assignee, or successor of any of them),
as the case may be, to Third Parties in arm’s length transactions, the
following amounts, as allocable to Products: (i) all applicable, actually
allowed sales credits accrued in accordance with accounting principals
generally accepted in the


 


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United States, (ii) payments
or rebates actually incurred with respect to Products pursuant to federal, state
and local government assistance programs, whether in existence now or enacted
at any time hereafter, (iii) costs for transit insurance, freight,
handling or other transportation as billed to customers (to the extent included
in the amount invoiced for Products), (iv) sales, use or excise taxes to
the extent not reimbursed and (v) any actually allowed write-offs or
credits for inventory or batches unsold by purchasers of the Product. Sales
credits accrued in accordance with accounting principles generally accepted in
the United States may include credits or discounts related to the following: (i) customer
returns, returned goods allowances, rejected goods and damaged goods not
covered by insurance, (ii) cash or terms discounts, (iii) customer
rebate programs,  (iv) chargebacks
and administration fees or similar credits or payments granted to customers
pursuant to contract or other purchases, (v) sales promotions, trade show
discounts and stocking allowances, (vi) price adjustments, including those
on customer inventories following price changes and (vii) product recalls.
Net Sales shall also include the fair market value of all non-cash
consideration received by OBI or its Affiliates (or a licensee, sublicensee,
assignee, or successor of any of them) for sale of Products, including payment
in kind, exchange or another form.


 


1.10                        “OBI
OPT-88 Technology” shall mean to the extent useful for purposes of
developing OPT-88 Products or necessary for the manufacture, use or sale of
OPT-88 Products, (a) Information that OBI or any of its Affiliates
Controls during the term of this Agreement and (b) all Patents that OBI or
any of its Affiliates Controls during the term of this Agreement (excluding the
Assigned Patents and the Licensed Patents).


 


1.11                        “OBI
OPT-822/821 Technology” shall mean to the extent useful for purposes
of developing OPT-822/821 Products or necessary for the manufacture, use or
sale of OPT-822/821 Products, (a) Information that OBI or any of its
Affiliates Controls during the term of this Agreement and (b) all Patents
that OBI or any of its Affiliates Controls during the term of this Agreement
(excluding the Assigned Patents and the Licensed Patents).


 


1.12                        “OPT-88” shall mean the
compound(s) known as OPT-88, as more fully described in Schedule 1 hereto.


 


1.13                        “OPT-88
Patents” shall mean (a) the patents and patent
applications identified in Exhibit A
hereto; (b) all reissues, reexamination, renewals, extensions,
non-provisionals, divisionals, continuations, and continuations-in-part of the
foregoing patents and patent applications; (c) any foreign counterparts of
any of the foregoing; and (d) any patents which issue on the patent
applications described in subsections (a)-(c) or claim priority to the
patent applications described in subsections (a)-(c).


 


1.14                        “OPT-88
Product” shall mean any product containing or comprising any
formulation of OPT-88 or any analog or derivative of OPT-88.


 


1.15                        “OPT-822/821” shall mean the
compound(s) known as OPT-822/821, as more fully described in Schedule 2 hereto.


 


1.16                        “OPT-822/821
Patents” shall mean (a) the patents and patent
applications identified in Exhibit B
hereto; (b) all reissues, reexamination, renewals, extensions, non-


 


3

















 


provisionals, divisionals,
continuations, and continuations-in-part of the foregoing patents and patent
applications; (c) any foreign counterparts of any of the foregoing; and (d) any
patents which issue on the patent applications described in subsections (a)-(c) or
claim priority to the patent applications described in subsections (a)-(c).


 


1.17                        “OPT-822/821
Product” shall mean any product containing or comprising any
formulation of OPT-822/821 or any analog or derivative of OPT-822/821.


 


1.18                        “Patents” shall mean (a) patents
and patent applications, (b) all reissues, reexamination, renewals,
extensions, non-provisionals, divisionals, continuations, and
continuations-in-part of such patents and patent applications, (c) any
foreign counterparts of any of the foregoing and (d) any patents which issue
on such patent applications described in clauses (a)-(c) or claim priority
to the patent applications described in clauses (a)-(c).


 


1.19                        “Phase
2 Clinical Trial” shall mean a human clinical trial that satisfies the
requirements for a Phase 2 study as defined in 21 C.F.R. 312.21(b) (or
its successor regulation).


 


1.20                        “Phase
3 Clinical Trials” shall mean a human clinical trial that satisfies
the requirements for a Phase 3 study as defined in 21 C.F.R. 312.21(c) (or
its successor regulation).


 


1.21                        “Product” shall mean any
OPT-88 Product or OPT-822/821 Product.


 


1.22                        “Regulatory
Approval” shall mean any and all approvals (including price
and reimbursement approvals, if required), licenses, registrations, or
authorizations of any country, federal, supranational, state or local
regulatory agency, department, bureau or other government entity that are
necessary for the manufacture, use, storage, import, transport and/or sale of a
Product in such jurisdiction.


 


1.23                        “Royalty
Term” shall mean, in the case of any Product, in any country, the period of
time commencing on the First Commercial Sale of such Product in such country
and ending upon the later of either (a) 10 years after the date of First
Commercial Sale of such Product in such country and (b) the expiration of
the last to expire of any (i) OPT-88 Patents or Patents licensed to OBI
under the Scripps Agreement (with respect to OPT-88 Products) or (ii) OPT-822/821
Patents or Patents licensed to OBI under the MSKCC Agreement (with respect to
OPT-822/821 Products).


 


1.24                        “Scripps
Agreement” means that certain License Agreement, effective as
of May 30, 2001, between Optimer and The Scripps Research Institute.


 


1.25                        “Third Party” shall mean any person or entity other than the
parties or their respective Affiliates.


 


2.                                      ASSIGNMENT


 


2.1                               Assignment to OBI.


 


(a)                                  Subject to the
terms and conditions of this Agreement, Optimer hereby assigns to OBI all of
Optimer’s right, title, and interest in and to the Assigned Patents.  Such


 


4

















 


assignment of the Assigned
Patents shall be evidenced by an executed Assignment of Patents and Patent
Applications, which shall be prepared by OBI at its sole expense, and filed by
OBI at its sole expense, with the U.S. Patent and Trademark Office and its
foreign counterparts as soon as reasonably practicable after the Effective
Date.  Optimer agrees to undertake any
actions and execute and deliver any documents and instruments that are
reasonably necessary to perfect OBI’s title in and to the Assigned Patents in a
timely manner, if so requested by OBI at OBI’s sole expense.


 


(b)                                  Subject to the
terms and conditions of this Agreement, the parties acknowledge that Optimer
has assigned to OBI, and OBI has assumed, all of Optimer’s rights and obligations
under (i) the Scripps Agreement pursuant to an Assignment and Assumption
Agreement between Optimer, OBI and The Scripps Research Institute (the “Scripps Assignment”) and (ii) the
MSKCC Agreement pursuant to an Assignment and Assumption Agreement between
Optimer, OBI and Memorial Sloan-Kettering Cancer Center (the “MSKCC Assignment” and together with
the Scripps Assignment, the “Assignments”).


 


2.2                               Optimer
Information.  Promptly
after the Effective Date, Optimer shall disclose to OBI such Information in
Optimer’s Control and in written, electronic or tangible form that relates
directly and specifically to the Assigned Patents or the Licensed Patents.


 


2.3                               Rights in Bankruptcy.  The parties agree that in the event OBI becomes a debtor under Title 11
of the U.S. Code (“Title 11”), this Agreement
shall be deemed to be, for purposes of Section 365(n) of Title 11, a
license to rights to “intellectual property” as defined therein, and Optimer,
as a licensee hereunder, shall have the rights and elections as specified in
Title 11.  Any agreements
supplemental hereto shall be deemed to be “agreements supplementary to” this
Agreement for purposes of Section 365(n) of Title 11.


 


2.4                               No Other Rights. 
Neither party grants to the other party any rights or licenses in or to
any intellectual property, whether by implication, estoppel, or otherwise,
other than the rights or licenses that are expressly granted under this
Agreement.


 


3.                                      CONSIDERATION


 


3.1                               Milestone
Payments.


 


(a)                                  Proof of Principle Trial.  OBI shall pay to Optimer a milestone payment
in the amount of $[***] (a “Proof of Principle Trial
Milestone Payment”) upon OBI’s or its Affiliates’ (or a
licensee, sublicensee, assignee, or successor of any of them) completion of the
first Phase 2 Clinical Trial of each Product resulting in data which OBI’s
Board of Directors determines in its good faith judgment to be reasonably
sufficient to support the conduct of a Phase 3 Clinical Trial with respect to
such Product in either the United States or the European Union (a “Proof of Principle Trial Milestone”).  OBI shall notify Optimer promptly of its
determination that a Proof of Principle Trial Milestone has occurred and OBI
shall pay the associated Proof of Principle Trial Milestone Payment no later
than thirty (30) days following the achievement of such Proof of Principle
Trial Milestone.  Notwithstanding
anything to the contrary, if OBI or its Affiliates (or a licensee, sublicensee,
assignee, or successor of any of them) initiates a Phase 3 Clinical Study with
respect to a Product, OBI’s Board of Directors shall


 






***
Confidential Treatment Requested


 


5

















 


be deemed to have determined that a Proof of Principle Trial Milestone
was met with respect to such Product.


 


(b)                                  Regulatory
Approval.  OBI shall pay to Optimer a milestone payment
in the amount of $[***] (a “Regulatory Approval Milestone Payment”) upon OBI’s or
its Affiliates’ (or a licensee, sublicensee, assignee, or successor of any of
them) receipt of Regulatory Approval for each Product in the United States or
the European Union (a “Regulatory Approval Milestone”).  OBI shall notify Optimer promptly of its
determination that a Regulatory
Approval Milestone has occurred and OBI shall pay the associated Regulatory
Approval Milestone Payment no later than thirty (30) days following the
achievement of such Regulatory Approval Milestone.


 


(c)                                  Milestone
Payment Terms.  A Proof of Principle Trial Milestone Payment and
Regulatory Approval Milestone Payment shall be
payable one time for each Product when the Proof
of Principle Trial Milestone and Regulatory Approval
Milestone is achieved for such Product, as applicable, regardless of
the number of indications for which such Product is developed or
commercialized.  All payments made to
Optimer pursuant to this Section 3.1 are non-refundable and may not be
credited against any other payments payable by OBI to Optimer under this
Agreement.


 


3.2                               Royalties.


 


(a)                                  Royalty
Payments.  OBI shall
pay to Optimer [***] percent ([***]%) of the aggregate worldwide Net Sales of
each Product during the applicable Royalty Term (collectively, “Royalty Payments”).


 


(b)                                  Payment;
Reports.  Royalty
Payments shall be calculated and reported for each calendar
quarter.  All Royalty Payments shall be
paid within forty-five (45) calendar days of the end of each calendar
quarter, unless otherwise specifically provided herein.  Each payment shall be accompanied by a report
of Net Sales of Products by or on behalf of OBI and its Affiliates in
sufficient detail to permit confirmation of the accuracy of the Royalty Payment
made, including, without limitation and on a country-by-country basis, the
gross sales and Net Sales of each Product, the Royalty Payments payable, the
method used to calculate the Royalty Payments, and the exchange rates used, if
applicable.  OBI shall keep, and shall
cause its Affiliates to keep, complete and accurate records pertaining to the
sale or other disposition of Products in sufficient detail to permit Optimer to
confirm the accuracy of all Royalty Payments.


 


(c)                                  Exchange
Rate.  When conversion of payments
from any foreign currency is required, such conversion shall be at an exchange
rate equal to the weighted average of the rates of exchange for the currency of
the country from which the Royalty Payments are payable as published by The Wall Street Journal, Eastern U.S.
Edition, during the calendar quarter for which a payment is due.


 


(d)                                  Audits.  Upon thirty
(30) days prior written notice from Optimer, OBI shall permit an independent,
certified public accounting firm of nationally recognized standing to have
access during normal business hours to examine pertinent books and records of
OBI or its Affiliates, as appropriate, as may be reasonably necessary to verify
the accuracy of royalty


 






*** Confidential Treatment Requested


 


6

















 


reports provided pursuant to
Section 3.2(b).  An examination
under this Section 3.2(d) shall not occur more than twice in any
calendar year.  The accounting firm shall
disclose to Optimer only whether the royalty reports are correct or incorrect
and the specific details concerning any discrepancies.  No other information shall be provided to
Optimer.  The accounting firm shall
provide OBI with a copy of any reports or conclusions made to Optimer.  Any and all such accounting firms shall sign
a confidentiality agreement (in a form and substance reasonably acceptable to
OBI) as to any of OBI’s or its Affiliate’s confidential information that they
are provided, or to which they have access, while conducting any audit
hereunder.


 


(e)                                  Adjustments.  Prompt
adjustments shall be made by OBI to compensate or adjust for any confirmed
errors or omissions disclosed by and audit conducted pursuant to Section 3.2(d).  Optimer shall bear the full cost of such
audit unless such audit discloses an underpayment by OBI of more than five
percent (5%) of the amount of Royalty Payments or other payments due under this
Agreement, in which case, OBI shall bear the full cost of such audit and shall
promptly remit to Optimer the amount of any underpayment.


 


4.                                      INTELLECTUAL
PROPERTY MATTERS


 


4.1                               Patent
Prosecution.  OBI shall have
the sole responsibility for the preparation, filing, prosecution and
maintenance of, and conducting or defending any interferences or similar
proceedings and obtaining and maintaining any patent extensions, supplementary
protection certificates and the like with respect to, the Assigned
Patents.  As between the parties, OBI
shall bear all costs associated with any such activities undertaken by OBI.


 


4.2                               Patent
Enforcement.  OBI shall
have the sole and exclusive right to bring and control any action or proceeding
with respect to infringement of any patents owned by OBI, including without
limitation the Assigned Patents, by counsel of its own choice.  As between the parties, OBI shall bear all
costs, and be entitled to all recoveries, associated with any such activities
undertaken by OBI.


 


4.3                               Allegation
of Infringement by Third Parties.  Subject to Article 7 hereof, each party shall be solely
responsible, at its sole cost, for responding to any claim or allegation of
infringement made by a third party against such party based on such party’s
actions or activities.


 


4.4                               Termination
of Prior License Agreement; Forgiveness of Loans.  As of the Effective Date, Optimer and OBI
hereby agree that the Prior License Agreement be, and it hereby is, terminated
in all respects and of no further force or effect, other than Articles VIII and
X of the Prior License Agreement which shall survive in accordance with Section 12.11
thereof.  OBI hereby represents and
warrants to Optimer that no sublicenses have been granted under the Prior
License Agreement and that any such sublicenses, to the extent existing as of
the Effective Date, are hereby terminated in their entirety.  For purposes of clarification, OBI shall not
retain any rights to OPT-80/Fidaxomicin under the Prior License Agreement or
otherwise.  Those certain intercompany
loan obligations of OBI in the aggregate amount of $3,335,056.01, including OBI’s
obligations to repay a portion of such intercompany loan obligations in two
equal installments on October 1, 2009 and October 1, 2010, as
described in the Prior License Agreement, be, and they hereby are, forgiven in
their entirety.


 


7

















 


5.                                      DILIGENCE
OBLIGATIONS.


 


5.1                               Product
Development.  OBI shall
use commercially reasonable and diligent efforts to pursue the development and
commercialization of OPT-88 Products and OPT-822/821 Products, and to maximize
sales of such Products.  As used herein, “commercially
reasonable and diligent efforts” shall mean those efforts, consistent with the
exercise of prudent scientific and business judgment, as applied in the
pharmaceutical industry to development and commercialization activities
conducted with respect to other products of similar potential and market size.


 


5.2                               License
Agreement Obligations. 
Pursuant to the Assignments, OBI shall perform all of Optimer’s
obligations under the License Agreements and shall avoid any condition which
would give Scripps or MSKCC the right to terminate the License Agreements or
the licenses granted pursuant thereto.


 


5.3                               Additional
Funding.  For purposes
of Section 5.4, the failure of a Purchaser to fulfill its obligations to
purchase shares of OBI’s common stock pursuant to the Financing Agreement shall
be deemed to be a failure regarding OBI’s obligations with respect to both
OPT-88 Products and OPT-822/821 Products.


 


5.4                               Reversion
of Assignments and License to OBI Technology.  If (a) OBI fails to fulfill any of the
foregoing obligations set forth in this Article 5 and such failure is not
cured within 30 days notice from Optimer, (b) OBI’s board of directors
decides to abandon research and development of OPT-88 Products and/or
OPT-822/821 Products, (c) OBI takes any affirmative action to terminate
either the Scripps Agreement or MSKCC Agreement or (d) Optimer validly
exercises its right to assume all of OBI’s rights and obligations under the
MSKCC Agreement pursuant to the MSKCC Assignment, then


 


(i) OBI shall
immediately assign to Optimer, without further consideration, all of OBI’s
right, title and interest in and to the OPT-88 Patents (if the condition set
forth in clauses (a)-(d) relates to OPT-88 Products or the Scripps Agreement)
and/or the OPT-822/821 Patents (if the condition set forth in clauses (a)-(d) relates
to OPT-822/821 Products or the MSKCC Agreement) and OBI agrees to undertake any
actions and execute and deliver any documents and instruments that are
reasonably necessary to perfect Optimer’s title in and to the OPT-88 Patents
and/or OPT-822/821 Patents, as applicable, in a timely manner, if so requested
by Optimer at Optimer’s sole expense;


 


(ii) OBI thereupon
grants to Optimer an exclusive, royalty-free, fully-paid, worldwide,
irrevocable license, with the right to sublicense through multiple tiers, under
the OBI OPT-88 Technology (if the condition set forth in clauses (a)-(d) relates
to OPT-88 Products or the Scripps Agreement) and/or the OBI OPT-822/821 Technology
(if the condition set forth in clauses (a)-(d) relates to OPT-822/821
Products or the MSKCC Agreement), to develop, make, have made, use, sell, offer
for sale, have sold and import OPT-88 Products or OPT-822/821 Products, as
applicable;


 


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(iii) Optimer’s
obligations under Section 2 related to the OPT-88 Patents and the Scripps
Agreement and/or the OPT-822/821 Patents and the MSKCC Agreement, as
applicable, shall terminate; and


 


(iv) OBI shall promptly
return to Optimer or destroy (at Optimer’s sole option and expense) all of
Optimer’s Confidential Information (as defined below) then in OBI’s Control and
related to OPT-88 Products and/or OPT-822/821 Products, as applicable.


 


6.                                      CONFIDENTIALITY


 


6.1                               Except to the
extent expressly authorized by this Agreement or otherwise agreed in writing by
the parties, the parties agree that the receiving party shall keep confidential
and shall not publish or otherwise disclose any Information furnished to it by
the other party pursuant to this Agreement (collectively, “Confidential
Information”).  Each party
may use the other party’s Confidential Information only to the extent required
to research, develop, market or sell Products. 
Each party will use at least the same standard of care as it uses to
protect its own proprietary or confidential information and ensure that its
employees, agents, consultants and other representatives do not disclose or
make any unauthorized use of the other party’s Confidential Information.  Each party will promptly notify the other
upon discovery of any unauthorized use or disclosure of the other party’s
Confidential Information.


 


6.2                               Exceptions.  Confidential Information
shall not include any information which the receiving party can prove by
competent written evidence: (a) is now, or hereafter becomes, through no
act or failure to act on the part of the receiving party, generally known or
available; (b) is known by the receiving party at the time of receiving
such information, as evidenced by its records; (c) is hereafter furnished
to the receiving party by a third party, as a matter of right and without
restriction on disclosure; (d) is independently discovered or developed by
the receiving party without the use of Confidential Information belonging to
the disclosing party; or (e) is the subject of a written permission to
disclose provided by the disclosing party.


 


6.3                               Authorized
Disclosure.  Each party may
disclose Confidential Information belonging to the other party only as
expressly permitted by this Agreement or if and to the extent such disclosure
is reasonably necessary in the following instances:


 


(a)                                  filing or
prosecuting patents as permitted by this Agreement;


 


(b)                                  regulatory
filings for Products such party has a license or right to develop hereunder;


 


(c)                                  prosecuting or
defending litigation as permitted by this Agreement;


 


(d)                                  complying with
applicable court orders or governmental regulations, including any applicable rules and
regulations of the U.S. Securities and Exchange Commission; or


 


(e)                                  disclosure to
Affiliates, employees, consultants or agents or other third parties in
connection with due diligence or similar investigations by such third parties,
and disclosure to potential third party investors in confidential financing
documents, provided, in


 


9
















 


each case, that any such
Affiliate, employee, consultant, agent or third party agrees to be bound by
terms of confidentiality and non-use at least as restrictive as those set forth
in this Article 6.


 


Notwithstanding the foregoing, in the event a party is
required to make a disclosure of the other party’s Confidential Information
pursuant to Section 6.3(c) or (d), it will give reasonable advance
notice to the other party of such disclosure and use efforts to secure
confidential treatment of such information at least as diligent as such party
would use to protect its own confidential information, but in no event less
than reasonable efforts.  The parties
will consult with each other on the provisions of this Agreement to be redacted
in any filings made by the parties with the U.S. Securities and Exchange
Commission or as otherwise required by law. 
The parties’ obligations pursuant to this Article 6 shall survive
for a period of 7 years following the termination of this Agreement.


 


7.                                      INDEMNIFICATION


 


7.1                               Indemnification by OBI. 
OBI hereby agrees to save, defend and hold
Optimer and its Affiliates and their respective directors, officers, employees
and agents (each, an “Optimer
Indemnitee”) harmless from and against any and all claims,
suits, actions, demands, liabilities, expenses and/or losses, including
reasonable legal expenses and attorneys’ fees (collectively, “Losses”), to which any Optimer
Indemnitee may become subject as a result of any claim, demand, action or other
proceeding by any third party to the extent such Losses arise directly or
indirectly out of (a) the gross negligence or willful misconduct of any
OBI Indemnitee (defined below), (b) the breach by OBI of any warranty,
representation, covenant or agreement made by OBI in this Agreement, or (c) the
development, manufacture, use, handling, storage, sale or other disposition of
OPT-88 or OPT-822/821 or any Product by OBI or any of its Affiliates, licensees
or sublicensees (excluding Optimer); in each case except to the extent such
Losses result from the gross negligence or willful misconduct of any Optimer
Indemnitee or the breach by Optimer of any warranty, representation, covenant
or agreement made by Optimer in this Agreement.


 


7.2                               Indemnification by Optimer.  Optimer
hereby agrees to save, defend and hold OBI and its Affiliates and their
respective directors, officers, employees and agents (each, an “OBI Indemnitee”)
harmless from and against any and all Losses to which any OBI Indemnitee may
become subject as a result of any claim, demand, action or other proceeding by
any third party to the extent such Losses arise directly or indirectly out
of (a) the gross negligence or willful misconduct of any Optimer
Indemnitee (defined below) or (b) the breach by Optimer of any warranty,
representation, covenant or agreement made by Optimer in this Agreement; in
each case except to the extent such Losses result from the gross negligence or
willful misconduct of any OBI Indemnitee or the breach by OBI of any warranty,
representation, covenant or agreement made by OBI in this Agreement.


 


7.3                               Control of Defense.  Any entity entitled to indemnification under
this Article 7 shall give notice to the indemnifying party of any Losses
that may be subject to indemnification, promptly after learning of such Losses,
and the indemnifying party shall assume the defense of such Losses with counsel
reasonably satisfactory to the indemnified party.  If such defense is assumed by the
indemnifying party with counsel so selected, the indemnifying party will not be
subject to any liability for any settlement of such Losses made by the
indemnified party without


 


10

















 


its
consent (but such consent will not be unreasonably withheld or delayed), and
will not be obligated to pay the fees and expenses of any separate counsel
retained by the indemnified party with respect to such Losses.  The indemnified party shall provide the
indemnifying party with all information in its possession and all assistance
reasonably necessary to enable the indemnifying party to carry on the defense
of any such Losses.


 


8.                                      TERM
AND TERMINATION.


 


8.1                               Termination.                         Subject to Section 8.2,
this Agreement shall terminate upon the earlier to occur of (a) the
parties’ agreement in writing to terminate this Agreement and (b) the last
to expire of the Assigned Patents and the Licensed Patents.


 


8.2                               Survival.
 The parties’ obligations under
Sections 2.4, 6, 7, 8, and 9 shall survive any expiration termination of this
Agreement.


 


9.                                      MISCELLANEOUS


 


9.1                               Governing
Law; Venue. This Agreement shall be governed by the laws of the
State of California, without regard to any conflicts of law principles that
would provide for application of the law of a jurisdiction outside
California.  The parties agree that any
action brought by either party under or in relation to this Agreement,
including without limitation to interpret or enforce any provision of this
Agreement, shall be brought in, and each party agrees to and does hereby submit
to the jurisdiction and venue of, any state or federal court located in the
County of San Diego, California, USA.


 


9.2                               Entire
Agreement; Amendment.  This Agreement,
together with the Exhibits hereto and each other agreement entered into by the
parties in connection with this Agreement, constitute the entire, final and
complete agreement and understanding between the parties with respect to the
subject matter hereof and thereof, and replaces and supersedes all prior
discussions and agreements between the parties with respect to such subject
matter, including, without limitation, the Prior License Agreement.  No amendment, modification or waiver of any
terms or conditions hereof shall be effective unless made in writing and signed
by a duly authorized officer of each party.


 


9.3                               Disclaimer.  Except as expressly set forth in this Agreement or any other
agreement entered into by the parties in connection with this Agreement, THE TECHNOLOGY AND INTELLECTUAL PROPERTY RIGHTS
PROVIDED BY EACH PARTY HEREUNDER ARE PROVIDED “AS IS” AND EACH PARTY EXPRESSLY
DISCLAIMS ANY AND ALL WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED, INCLUDING
WITHOUT LIMITATION THE WARRANTIES OF DESIGN, MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, NON-INFRINGEMENT OF THE INTELLECTUAL PROPERTY RIGHTS OF
THIRD PARTIES, OR ARISING FROM A COURSE OF DEALING, USAGE OR TRADE PRACTICES,
IN ALL CASES WITH RESPECT THERETO.


 


9.4                               Limitation of Liability.  EXCEPT FOR LIABILITY FOR BREACH OF ARTICLE 6, NEITHER PARTY SHALL BE
ENTITLED TO RECOVER FROM THE OTHER PARTY ANY SPECIAL, INCIDENTAL, CONSEQUENTIAL
OR PUNITIVE DAMAGES IN CONNECTION WITH THIS AGREEMENT OR ANY ASSIGNMENT MADE OR
LICENSE


 


11

















 


GRANTED
HEREUNDER; provided, however,
that this Section 9.4 shall not be construed to limit either party’s
indemnification obligations under Article 7.


 


9.5                               Non-Waiver.  The failure of a party to
insist upon strict performance of any provision of this Agreement or to
exercise any right arising out of this Agreement shall neither impair that
provision or right nor constitute a waiver of that provision or right, in whole
or in part, in that instance or in any other instance.  Any waiver by a party of a particular
provision or right shall be in writing, shall be as to a particular matter and,
if applicable, for a particular period of time and shall be signed by such
party.


 


9.6                               Successors
and Assigns.  Except as
expressly provided hereunder, neither this Agreement nor any rights or
obligations hereunder may be assigned, sublicensed or otherwise transferred, by
operation of law or otherwise, by either party without the prior written
consent of the other party (which consent shall not be unreasonably
withheld).  The rights and obligations of
the parties under this Agreement shall be binding upon and inure to the benefit
of the successors and permitted assigns of the parties.  Any assignment not in accordance with this
Agreement shall be void.  To the extent
OBI is permitted to and does assign, sublicense or transfer any of its rights
and obligations under this Agreement, OBI shall ensure that the assignee,
sublicensee or transferee expressly assumes all of OBI’s applicable obligations
under this Agreement and OBI shall agree to remain liable for such assignee’s,
sublicensee’s or transferee’s performance of such obligations.


 


9.7                               Headings.  The headings of the several sections are
inserted for convenience of reference only and are not intended to be a part of
or to affect the meaning or interpretation of this Agreement.


 


9.8                               Notice.


 


(a)                                  All notices
required or permitted to be given under this Agreement shall be in writing and
shall be deemed to have been given (a) upon personal delivery to the party
to be notified at the address set forth below, (b) five (5) days
after having been sent by registered or certified mail, return receipt
requested, postage prepaid, to the address set forth below, (c) one (1) day
after deposit with a nationally recognized overnight courier, specifying next
day delivery to the address set forth below, with written verification of
receipt, or (d) upon confirmation of receipt if sent by facsimile to the
number set forth below.


 


To Optimer:


 


Optimer Pharmaceuticals, Inc.


10110 Sorrento Valley Road, Suite C


San
Diego, CA  92121


USA


Attn:  Chief Financial Officer


Fax: (858) 909-0737


 


To OBI:


 


12

















 


Optimer Biotechnology, Inc.


Room W1907, 19F, 3 Yuan
Qu Street


Nankang Software Park,
Taipei 115, Taiwan


Attn:  President & CEO


Fax: 02-2655-8798


 


Any
party may, by written notice to the other, designate a new address or fax
number to which notices to the party giving the notice shall thereafter be
mailed or faxed.


 


(b)                                  During the term
of this Agreement, OBI shall as promptly as possible forward to Optimer any
written correspondence (or a written summary of oral correspondence) between
OBI and either The Scripps Research Institute or the Sloan-Kettering Institute
for Cancer Research which, in either case, relates to the Licensed Patents, an
alleged breach by OBI under the License Agreements or the potential termination
of the License Agreements or the licenses granted thereby.


 


9.9                               Counterparts;
Facsimile.  This Agreement
may be executed in two or more counterparts, each of which shall be an original
and all of which shall constitute together the same document.  Facsimile signatures shall have the same
force and effect as originals.


 


9.10                        Severability.  If a court of competent
jurisdiction declares any provision of this Agreement invalid or unenforceable,
or if any government or other agency having jurisdiction over either OBI or
Optimer deems any provision to be contrary to any laws, then that provision
shall be severed and the remainder of the Agreement shall continue in full
force and effect.  The parties further
agree to discuss in good faith an amendment to replace such void, invalid,
unenforceable, or unlawful provision with a valid and enforceable provision
that will achieve, to the extent possible, the economic, business and other
purposes of such void, invalid, unenforceable or unlawful provision.


 


9.11                        Independent
Contractors.  Each party
shall act solely as an independent contractor, and nothing in this Agreement
shall be construed to give either party the power or authority to act for, bind
or commit the other party in any way. 
Nothing herein shall be construed to create the relationship of
partnership, principal and agent, or joint venture between the parties.


 


9.12                        U.S.
Dollars.  All
references in this Agreement to dollars or $ shall mean United States dollars
unless explicitly stated otherwise.


 


[Signature Page Follows]


 


13

















 


IN
WITNESS WHEREOF, the parties have executed this Intellectual
Property Assignment and License Agreement on the Effective Date.


 


 


	
  OPTIMER
  PHARMACEUTICALS, INC.

  	
   

  	
  OPTIMER
  BIOTECHNOLOGY, INC.

  
	
   

  	
   

  	
   

  
	
  By:

  	
  /s/
  Michael N. Chang

  	
   

  	
  By:

  	
  /s/
  Youe-Kong Shue

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Name:

  	
  Michael
  N. Chang

  	
   

  	
  Name:

  	
   Youe-Kong Shue

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Title:

  	
  CEO

  	
   

  	
  Title:

  	
  President
  and CEO

  



 


[Signature
Page to IP Assignment and License Agreement]


 

















 


SCHEDULE
1


 


OPT-88


 


[***]


 






*** Confidential Treatment Requested


 

















 


SCHEDULE
2


 


OPT-822/821


 


[***]


 






*** Confidential Treatment Requested


 

















 


EXHIBIT A


 


OPT-88
PATENTS


 


[***]


 






*** Confidential Treatment Requested


 

















 


EXHIBIT B


 


OPT-822/821
PATENTS


 


[***]


 






*** Confidential Treatment Requested