**EXHIBIT 10.14**

 

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**LICENSE AND RESEARCH AGREEMENT**

 

(Amended and Restated)

 

**THIS LICENSE AND RESEARCH AGREEMENT**(the “Agreement”) is made and entered into as of September 2, 1999, (the “EffectiveDate”), as amended and restated on March 26, 2001 (the “Restatement Date”),by and between Rigel Pharmaceuticals, Inc., a corporation organized underthe laws of Delaware and having a principal place of business at 240 East GrandAvenue, South San Francisco, CA 94080 (“Rigel”) and Cell Genesys, Inc., acorporation organized under the laws of Delaware and having a principal placeof business at 342 Lakeside Drive, Foster City, CA 94404 (“CG”).  Rigel and CG may be referred to collectivelyas the “Parties,” or individually as a “Party.”

 

**RECITALS**

 

**WHEREAS,** CG controls rights tocertain patents relating to **[ * ]** celllines **[ * ]** and **[ * ]**cell lines (Rockefeller), and related technology;

 

**WHEREAS,**Rigel has a license tothe **[ * ]** cell lines, associated vectorsand vector libraries under intellectual property rights owned by Stanford University;

 

**WHEREAS,**CG and Rigel desire toenter into an agreement granting each other licenses under such patents andother intellectual property rights as provided herein;

 

**WHEREAS,** Rigel is in thebusiness of, among other things, providing services for identifying moleculeswhich bind together in intracellular signaling pathways, and CG desires thatRigel perform such services for CG to identify peptides, proteins and/orGenetic Material (as defined below) that modulate angiogenesis in endothelialtissues;

 

**WHEREAS,** Rigel wishes to performadditional research in the Field of Research (as defined below) for CG andNovartis Pharma AG (“Novartis”) funded by Novartis, as a combined program ofresearch expanding upon the research that Rigel has already as of theRestatement Date conducted, such that Rigel will be able to continue itsresearch effort in the Field of Research and the overall resources that Rigelwill be able to devote to identifying peptides, proteins and/or ScreenedGenetic Material (as defined below) that modulate angiogenesis in endothelialtissues will be increased; and

 

**WHEREAS,** The Parties wish toconfirm CG rights to all Therapeutic Candidates (as defined below) that Rigelidentifies in the combined research program, but Rigel needs, in order to makesuch arrangement acceptable to Novartis, the unambiguous right pursuant to thisAgreement to grant Novartis certain rights with respect to all Targets (asdefined below) for Novartis’s use as targets in Novartis’s drug discoveryefforts, and CG is willing to waive certain of its rights and to amend andrestate this Agreement to assure Rigel such unambiguous right;

 

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**NOW THEREFORE,**in considerationof the foregoing premises and the covenants and promises contained in thisAgreement, the Parties agree as follows:

 

**ARTICLE 1****DEFINITIONS**

 

**1.1****                               “Affiliate”**shall mean, with respect to a Party to this Agreement, any other entity,whether de jure or de facto, which directly or indirectly controls, iscontrolled by, or is under common control with, such Party.  A business entity or Party shall be regardedas in control of another business entity if it owns, or directly or indirectlycontrols, at least fifty percent (50%) (or such lesser percentage which is themaximum allowed to be owned by a foreign entity in a particular jurisdiction)of the voting stock or other ownership interest of the other entity, or if itdirectly or indirectly possesses the power to direct or cause the direction ofthe management and policies of the other entity by any lawful means whatsoever.

 

**1.2****                               “CGCollaboration Partners”** means those third parties which enter into aresearch or development agreement with CG under which CG conducts substantialresearch or development activities in collaboration with such third party andgrants a license to such third party under patents and/or know-how owned orcontrolled by CG in addition to a sublicense under the Rigel BiologicalMaterials or Rigel Know-How, which licenses and sublicense are for the further developmentand commercialization of the results of such collaborative research ordevelopment.

 

**1.3****                               “CG[ * ] Field”** means human Gene Therapy and animal Gene Therapy.

 

**1.4****                               “CGKnow-How”** means all Information Controlled by CG as of the Effective Datethat is necessary or useful for practicing the CG Patents.

 

**1.5****                               “CGLicense”** means the license agreement between CG and Rockefeller Universityas in effect as of the Effective Date and attached hereto as Appendix A.

 

**1.6****                               “CGPatents”** means the Patents and applications listed on Appendix B, to theextent the same are Controlled by CG.

 

**1.7****                               “CGProgram Field”** means the research, development or commercialization ofhuman or animal therapeutic products and services, which products and/orservices are comprised of peptides, proteins or Gene Therapy.

 

**1.8****                               “Control”or “Controlled”** means ownership of, or a license to, a particular item,material or intellectual property right with the ability to grant to the otherParty access to and/or a license or sublicense as provided for herein withoutviolating the terms of any agreement with a Third Party under which such rightswere acquired from such Third Party.

 

**1.9****                               “Fieldof Research”** means identification of peptides, proteins and/or GeneticMaterial that modulate angiogenesis in endothelial tissues.

 

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**1.10****                        “FTE”**means a full-time employee or consultant of Rigel or the equivalent thereof.

 

**1.11****                        “FTE Year”**means the amount of time one FTE would spend working during one (1) calendaryear.

 

**1.12****                        “GeneTherapy”** means a product or service for the treatment or prevention of adisease that utilizes *ex vivo* or *in vivo* delivery (via viral or nonviral gene transfermethods or systems) of Genetic Material, including any cell incorporatingGenetic Material.

 

**1.13****                        “GeneticMaterial”** means a nucleotide sequence, including DNA, RNA and complementaryand reverse complementary nucleotide sequences thereto, whether coding ornoncoding and whether intact or a fragment.

 

**1.14****                        “Information”**means any and all information, including without limitation techniques,inventions, practices, methods, knowledge, know-how, skill, experience, testdata, analytical and quality control data, compositions and assays, and anybusiness, marketing, personnel or financial information or matters.

 

**1.15****                        “NovartisAngiogenesis Collaboration”** means Rigel’s Collaboration Agreement withNovartis dated May 29, 1999, as amended, but solely to the extent coveringa program of research directed to the field of target identification and validationas they relate to the role of endothelial cell differentiation in angiogenesis,together with such research program and results obtained therein, butspecifically excluding Novartis’s research and research results using Targetsidentified by Rigel (or jointly by Rigel and Novartis) pursuant to suchresearch program.

 

**1.16****                        “Patent”**meansan issued, valid, unexpired patent, including any extension, registration,confirmation, reissue, re-examination or renewal thereof, or a pendingapplication for a patent, in any country, region or jurisdiction.

 

**1.17****                        “ProgramKnow-How”** shall mean any Information developed in the Research relating tothe development of Therapeutic Candidates, excluding Information relating toTargets that are not Therapeutic Candidates.

 

**1.18****                        “ProgramPatent”** shall mean a Patent claiming inventions or discoveries in theProgram Know-How.

 

**1.19****                        “ProgramTechnology”** shall mean Program Know-How and Program Patents.

 

**1.20****                        “Research”**shall have the meaning provided in Section 3.1(a).  For purposes of this Agreement, Rigel’sactivities in the Field of Research under the Novartis AngiogenesisCollaboration shall be included within “Research.”

 

**1.21****                        “ResearchPlan”** shall have the meaning provided in Section 3.1(a).

 

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**1.22****                        “RigelBiological Materials”** means the **[ * ]** celllines, associated vectors and vector libraries set forth in Appendix C.

 

**1.23****                        “RigelCollaboration Partners”** means those third parties which enter into aresearch or development agreement with Rigel under which Rigel conductssubstantial research or development activities in collaboration with such thirdparty and grants a license to such third party under patents and/or know-howowned or controlled by Rigel in addition to a sublicense under CG Patentsand/or CG Know-How, which licenses and sublicense are for the furtherdevelopment and commercialization of the results of such collaborative researchor development.

 

**1.24****                        “RigelField”** means the creation and use of virally produced peptide and proteinlibraries for the screening of transdominant effector peptides and RNAmolecules as claimed in the patent applications set forth on Appendix D as wellas any processes, techniques and applications disclosed in the foregoing patentapplications; it is understood that the foregoing technology is to be used for (a) thediscovery, validation and development of targets for human or animaltherapeutics, including without limitation Targets, and (b) the discovery,testing, development and commercialization of therapeutic, diagnostic and drugdelivery products other than Therapeutic Candidates.  For the purposes of this Section 1.23, “disclosedin” shall mean disclosed in the specifications of such patent applications asnecessary to practice the invention claimed and not solely as part of thedescription of the prior art.

 

**1.25****                        “RigelKnow-How”** means all Information Controlled by Rigel as of the EffectiveDate necessary or useful for the use or modification of the Rigel BiologicalMaterials.

 

**1.26****                        “RigelLicense”** means the license agreements between Rigel and Stanford Universityas in effect as of the Effective Date and attached hereto as Appendix E.

 

**1.27****                        “RMC”**shallhave the meaning provided in Section 3.2.

 

**1.28****                        “ScreenedGenetic Material”**shall mean Genetic Material identified via screeningagainst a Target, but which Genetic Material is not a Therapeutic Candidate.

 

**1.29****                        “SuccessCriteria”** shall have the meaning provided in Section 3.1(b).

 

**1.30****                        “Tail EndPeriod”** shall mean the period of six (6) months after the end of theResearch Period, the purpose of which is to permit the RMC to identifyTherapeutic Candidates; provided, however, that if this Agreement is terminatedprior to or during the Tail End Period, the Tail End Period shall be deemed toend upon such termination date.

 

**1.31****                        “Target”**shallmean a molecule occurring naturally in the body that is shown in the Research(whether pursuant to this Agreement or the Novartis AngiogenesisCollaboration), to directly or indirectly cause or impede angiogenesis inendothelial tissue, to the extent such molecule (or its binding to anothermolecule) is agonized or antagonized by a Therapeutic Candidate.  It is understood that a particular protein,peptide or Genetic Material could be both a Therapeutic Candidate and a Target,and in such case such molecule shall be treated as a “Target” hereunder to theextent that such molecule is used as a drug discovery target, and shall

 

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at the same time betreated as a “Therapeutic Candidate” hereunder to the extent such molecule isused as a drug or therapy.  The rights ofthe Parties with respect to Targets that are also Therapeutic Candidates are asset forth in Section 2.4.

 

**1.32****                        “TherapeuticCandidate”** shall mean a peptide, protein or Genetic Material discovered,identified, produced or tested during the Research Period pursuant to theResearch (whether pursuant to this Agreement or pursuant to the NovartisAngiogenesis Collaboration), or identified during the Tail End Period, by  either Party, which meets the SuccessCriteria, and any homologues or derivatives thereof.  For such purposes, it is understood that if aprotein or peptide meets the Success Criteria, Genetic Material that codes forsuch protein or peptide (or homologues or derivatives of such Genetic Material)shall be within the definition of Therapeutic Candidate (and vice-versa). Therights of the Parties with respect to Therapeutic Candidates that are alsoTargets are as set forth in Section 2.4.

 

**1.33****                        “[ * ]Patents”** means the patents listed in Appendix F.

 

**ARTICLE 2****LICENSES**

 

**2.1****                               CGLicense Grants.**

 

**(a)****                                 **Subjectto the terms of the CG License, CG hereby grants to Rigel a royalty-free,non-exclusive, worldwide license, with the right to sublicense to RigelCollaboration Partners, under and to CG’s right, title and interest in the CGPatents and CG Know-How, and under and to CG’s right, title and interest in anyProgram Technology owned solely by CG, all for purposes solely within the RigelField; and hereby waives any claims against Rigel for the practice and use ofthe CG Patents and CG Know-How within the Rigel Field prior to the EffectiveDate.  Any sublicense granted hereunderto Rigel Collaboration Partners shall be limited to the purposes of suchcollaboration (as such purposes are described in Section 1.22 above).

 

**(b)****                                 **Subjectto Section 2.4 below, CG hereby grants to Rigel:

 

**(i)****                                   **aroyalty-free, exclusive, worldwide license, with the right to grant andauthorize sublicenses, under CG’s right, title and interest in the ProgramTechnology that is owned jointly by the Parties under Section 4.1(d) below,and Targets that are similarly owned jointly with Rigel, all to make and usethe Targets for purposes outside the CG Program Field; and

 

**(ii)****                               **aroyalty-free, exclusive, worldwide license, under CG’s right, title andinterest in the Program Technology that is owned jointly by the Parties under Section 4.1(d) below,and Targets that are similarly owned jointly with Rigel, all to make and usethe Targets as targets for the purposes of elucidating protein pathways  and identifying, researching, developingand/or commercializing proteins, peptides, antibodies, Screened GeneticMaterial, other biological agents and synthetic organic molecules that are notthemselves Therapeutic Candidates but that modulate angiogenesis in endothelialtissues solely in connection with the Novartis

 

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AngiogenesisCollaboration.  Such license does notextend to the making or use of Targets for the purposes of development and/orcommercialization of Therapeutic Candidates in the CG Program Field.

 

It is understood andagreed that the licenses granted above in this Section 2.1(b) shallspecifically exclude the right to make or use any Target or Therapeutic Candidateas a therapeutic agent or for purposes relating to delivery of a Target orTherapeutic Candidate via Gene Therapy. The license set forth in Section 2.1(b)(ii) above shallinclude the right to grant a sublicense solely to Novartis under the NovartisAngiogenesis Collaboration and to authorize further sublicenses by Novartissolely in connection with Novartis’s research and development programs; *provided* that any sublicense from Rigel to Novartis underthe rights licensed to Rigel pursuant to Section 2.1(b)(ii) (and anyfurther sublicense by Novartis under such rights) shall not exceed the scope ofthe license granted Rigel pursuant to Section 2.1(b)(ii).  Rigel shall retain the right to grant to CGthe licenses set forth in Section 2.2 of this Agreement.  If Rigel fails to retain such right under theNovartis Angiogenesis Collaboration, the license granted Rigel under Section 2.1(b)(ii) shallterminate.

 

**(c)****                                 **CGhas entered into a license agreement with the **[ * ]**concerning the **[ * ]** Patents which includes theright to sublicense (the “**[ * ]** Agreement”);as of the Effective Date, however, the terms under which CG may grantsublicenses under the **[ * ]** Agreementmake impractical a sublicense to Rigel under the **[ * ]**Patents for purposes of the Rigel Field. In the event that CG successfully renegotiates the terms of the **[ * ]** Agreement such that such sublicense would bepractical, CG agrees to discuss in good faith the grant of a sublicense toRigel under the **[ * ]** Patents.  The Parties understand and agree, however,that CG is not and shall not be obligated to enter into any agreement withRigel concerning the **[ * ]** Patents,that failure to reach such an agreement for any reason shall not be deemed abreach of this Agreement and that this Section 2.1(c) shall not bedeemed to preclude CG from entering into an agreement with a third party of anytype or at any time concerning the **[ * ]** Patents.

 

**2.2****                               RigelLicense Grants.**

 

**(a)****                                 **Subjectto the terms and prior to the termination or expiration of the Rigel License,the Parties agree that Rigel shall grant to CG, at CG’s sole option and upon CG’srequest, a royalty-free, non-exclusive, worldwide license, without the right tosublicense, under Rigel’s right, title and interest in the Rigel Know-How andRigel Biological Materials, to make, have made, use, sell, offer for sale andimport products in the CG **[ * ]**Field.  It is understood that in no eventwill CG have any obligation to obtain such license from Rigel.  Rigel will give CG thirty (30) days priorwritten notice of the termination of the Rigel License by Rigel.

 

**(b)****                                 **Rigelhereby grants to CG:

 

**(i)****                                   **subjectto Section 2.1(b) above, (y) a royalty-free, exclusive, worldwidelicense, with the right to grant and authorize sublicenses, under Rigel’sright, title and interest in the Program Technology (including withoutlimitation the Therapeutic Candidates) owned solely by Rigel or jointly withCG, to make, have made, use, sell, offer for sale and import products, andotherwise exploit the Program Technology, in each case for purposes solelywithin

 

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the CG Program Field, and(z) a royalty-free, exclusive, worldwide license, with the right to grant andauthorize sublicenses, under any Information and intellectual property createdby Rigel (solely or jointly with Novartis) under the Novartis AngiogenesisCollaboration, to make, have made, use, sell, offer for sale and importTherapeutic Candidates within the CG Program Field; and

 

**(ii)****                               **subjectto rights previously granted to third parties, a royalty-free, non-exclusive,worldwide license, with the right to grant sublicenses, under Rigel’s right,title and interest in and to all Patents with priority dates prior to theEffective Date that claim Therapeutic Candidates, or the manufacture or usethereof, to make, have made, use and sell products in Gene Therapyincorporating such Therapeutic Candidates.

 

**(c)****                                 **Inaddition, Rigel hereby grants to CG (i) a royalty-free, non-exclusivelicense, with the right to sublicense to CG Collaboration Partners, under Rigel’sright, title and interest in the Targets to make and use the Targets solely forthe research and development of the Therapeutic Candidates in the Field ofResearch, and (ii) a royalty-free, non-exclusive license, with the rightto sublicense to CG Collaboration Partners, under any Information andintellectual property created by Rigel (solely or jointly with Novartis) underthe Novartis Angiogenesis Collaboration, to make and use the Targets solely forthe research and development of the Therapeutic Candidates in the Field ofResearch.  For clarity, it is understoodand agreed that the licenses granted to CG under this Section 2.2specifically exclude the performance by CG of research on or with a Targetwhich is outside the Field of Research. Any sublicense granted hereunder to CGCollaboration Partners shall be limited to the purposes of such collaboration.

 

**2.3****                               RigelCovenant.**  Rigel hereby covenantsthat neither Rigel nor its Affiliates will make any claims against CG, itspermitted sublicensees, distributors and customers in the chain of title withCG or its permitted sublicensees for Patent infringement as a result ofactivities which are explicitly permitted under the terms of this Agreement,nor shall Rigel or its Affiliates authorize a third party to make such a claim,and Rigel agrees to cooperate with CG in the defense against any such claim bylicensees of Rigel.

 

**2.4****                               MoleculesThat Are Both Targets and Therapeutic Candidates.**  With respect to each particular protein,peptide or Genetic Material that is both a Target and a Therapeutic Candidate(each a “Dual Molecule”), the parties agree that (i):  CG shall have (y) the exclusive right toresearch, develop, make, have made, use, sell, offer for sale and import suchDual Molecule (including homologues and derivatives of such Genetic Material)as a therapeutic agent or such Dual Molecule (including homologues andderivatives of such Genetic Material) for Gene Therapy, and (z) to make and usesuch Dual Molecule in accordance with Sections 2.2(b) and (c); and (ii) Rigelshall have the exclusive right to research, develop, make, have made and usesuch Dual Molecule for the purposes set forth in Section 2.1(b)(i); and (iii) Rigelshall have the exclusive right to research, develop, make, have made and usesuch Dual Molecule for the purposes set forth in Section 2.1(b)(ii).  For the sake of clarity, CG’s exclusiverights as described in this Section 2.4 shall not be construed to excludeRigel or its permitted licensees from making and using such molecule as atarget in research to elucidate protein pathways in which such Dual Molecule isinvolved, or to discover, generate, develop and commercialize proteins,peptides, antibodies, Screened Genetic Material, other biological agents andsynthetic

 

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organic molecules thatmay or may not modulate the activity of such Target or pathways but are notthemselves Therapeutic Candidates.  Allactivities of Rigel with respect to the use of Targets shall remain subject tothe provisions of Section 3.5.

 

**2.5****                               NoOther License.**  No right or licenseis granted by either Party to the other under any other intellectual propertyother than those items expressly included in the licenses granted in this Article 2.Accordingly, no license shall be deemed granted by implication, estoppel orotherwise, if such license is not expressly and specifically granted in this Article 2.

 

**ARTICLE 3****RESEARCH**

 

**3.1****                               Research.**

 

**(a)****                                 **Rigelagrees to (i) use diligent efforts to conduct research within the Field ofResearch (the “Research”), in accordance with the research plan (the “ResearchPlan”) incorporated hereby in, and appended to, this Agreement as Appendix G,as amended from time to time by written agreement of the Parties; and (ii) usediligent efforts to meet the goals of the Research Plan according to thetimetables set forth therein.  Withoutlimiting the foregoing, the Research shall commence on the Effective Date andterminate upon the earlier of three (3) years after the Effective Date orthe termination of the Agreement (the “Research Period”).  Rigel will commit **[ * ]**during each year of the Research Period, or such other allocation as the RMCmay decide, provided that in the event the RMC decides to reallocate FTEsbetween years, Rigel shall have no obligation to commit more than **[ * ]** in total over the entire Research Period.  It is understood and agreed that the scope ofCG’s licenses under Section 2.2 shall not be limited by (x) the number ofFTEs performing the Research, (y) whether such FTEs are performing research inaccordance with the Research Plan or under the Novartis AngiogenesisCollaboration, or (z) whether such FTEs are funded by Rigel, Novartis, or someother entity.  The individual FTEs whowill initially conduct the Research are listed in Appendix H and may bereplaced by Rigel, as reasonably agreed by the Parties, with other FTEs ofcomparable skill and expertise.  Rigelagrees to test against the Success Criteria during the Research Period anyproteins, peptides and Genetic Material produced or evaluated in connectionwith the Research as contemplated in the Research Plan.

 

**(b)****                                 **TheParties shall reasonably establish criteria for determining whether aparticular peptide, protein or Genetic Material modulates angiogenesis inendothelial tissue in assays performed at Rigel, as such criteria arecontemplated in the Research Plan (the “Success Criteria”).

 

**3.2****                               ResearchManagement Committee.**  The Partiesshall form a research management committee (the “RMC”) comprised of four (4) individuals,two (2) being Rigel employees appointed and replaced by Rigel at itsdiscretion, and two (2) being CG employees appointed and replaced by CG atits discretion.  The size and compositionof the RMC may be modified by mutual agreement of the Parties.  The RMC shall evaluate the results of theResearch set forth in the research reports pursuant to Section 3.4(a) toassess whether a peptide,

 

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protein or GeneticMaterial is a Therapeutic Candidate, and perform such other duties asspecifically delegated to the RMC by mutual written agreement of the Parties.

 

**3.3****                               RMCMeetings and Actions.**  RMC meetingsshall take place at such times and places as shall be determined by the RMC inorder for the RMC to fulfill its obligations under Section 3.2.  It is expected that the meetings willalternate between appropriate offices of each Party, or at such otherconvenient locations as agreed.  Ifagreed by its members, the RMC may conduct meetings by telephone or videoconference or other acceptable electronic means, provided that any decisionsmade during such meeting are recorded in writing and confirmed by signature ofat least one (1) of the RMC members from each of the Parties.  All decisions of or actions taken by the RMCshall be by unanimous approval of all the members of the RMC, and voting on anymatters shall be reflected in the minutes of the meeting at which the vote wastaken. If the RMC is unable to reach unanimous decision on any particularmatter or issue, such matter or issue shall be referred to the chief executiveofficer of each Party or their designees for resolution.  It is understood that, for purposes ofdetermining the Parties’ rights and obligations under this Agreement, theauthority of the RMC shall be limited to deciding those specific issuesspecifically delegated to the RMC in other Articles of this Agreement (i.e.,other than the general matters described in this Article 3).

 

**3.4****                               Reports;Disclosure.**

 

**(a)****                                 **Rigelshall keep CG fully informed of the progress and results of the Research(including the discovery of Targets and/or Therapeutic Candidates under theNovartis Angiogenesis Collaboration) and shall provide written reports at orbefore each RMC meeting describing its activities, the level of effort appliedto, and the results of, the Research, specifically including Rigel’sdetermination as to which peptides, proteins or Genetic Material as of the dateof such report meet the Success Criteria. Such RMC reports shall be in such form and contain such detail as theRMC shall determine.  Rigel agrees tofully disclose to CG the Program Technology and the Targets, and to provide CGwith reasonable quantities of Targets and Therapeutic Candidates generated orutilized in connection with the Research.

 

**(b)****                                 **Rigelagrees to maintain records of its activities in performing the Research, ingood scientific manner, and to permit CG to have access to such records uponten (10) days written notice to Rigel and during regular business hours,to the extent reasonably necessary to verify that Rigel has met its obligationsunder this Section 3.4.

 

**3.5****                               Exclusivityof Efforts.**  Except as explicitly setforth in this Section 3.5, Rigel agrees that neither Rigel nor any of itsAffiliates shall directly or indirectly conduct or sponsor any research,develop or otherwise commercialize any products or technologies within theField of Research, other than pursuant to the Research Plan, during theResearch Period and for a period of one (1) year following the ResearchPeriod.  Without limiting the foregoing,Rigel shall not appoint or license any third party to develop, market, sell orotherwise distribute such products until after the expiration of one (1) yearfollowing the Research Period. Notwithstanding the foregoing in this Section 3.5 and subject to****Section 2.1(b),****Rigel shall beentitled to enter into the Novartis Angiogenesis Collaboration.

 

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**ARTICLE 4****INTELLECTUAL PROPERTY MATTERS**

 

**4.1****                               Ownershipand Prosecution.**  Subject to theterms of this Agreement, as between the Parties hereto:

 

**(a)****                                 **Itis understood that CG retains its entire right, title and interest in the CGPatents and CG Know-How, subject only to the rights expressly granted to Rigelhereunder, and shall have the right, but not the obligation, to file, prosecuteand maintain any Patents related thereto at its expense.

 

**(b)****                                 **Itis understood that Rigel retains its entire right, title and interest in theRigel Biological Materials and Rigel Know-How, subject only to the rightsexpressly granted to CG hereunder, and shall have the right, but not theobligation, to file, prosecute and maintain any Patents related thereto at itsexpense.

 

**(c)****                                 **Itis understood that, subject only to the rights expressly granted to the otherParty hereunder, each Party retains its entire right, title and interest in andto any inventions, discoveries, know-how, trade secrets, and other informationmade or developed solely by such Party and/or its consultants in the course ofthe performance of this Agreement (“Sole Inventions”), and, subject to subsection (e) below,shall have the right, but not the obligation, to file, prosecute and maintainany Patents claiming its Sole Inventions (“Sole Patents”) in all countries ofthe world.

 

**(d)****                                 **BothParties shall jointly own any inventions, discoveries, know-how, trade secrets,and other information, that are made jointly by the Parties in the course ofthe performance of this Agreement (“Joint Inventions”).  Subject to subsection (e) below,the RMC shall designate the Party which shall be responsible for filing,prosecuting and maintaining Patents claiming Joint Inventions (“Joint Patents”).  All costs and expenses of filing, prosecutingand maintaining such Joint Patents will be borne equally by the Parties.  The Party designated by the RMC to performpatenting activities shall seek the comments of the other Party and shall keepthe other informed of the progress of such prosecution by providing quarterlystatus reports and copies of all correspondence between their patent counseland the patent offices of the countries where such applications werefiled.  Such other Party shall reasonablyassist the Party designated by the RMC in the prosecution of Joint Patents,including, without limitation, by executing any necessary powers ofattorney.  Subject to the rights andlicenses granted to the other Party in Section 2.1(b) and 2.2(b), itis understood that neither Party shall have any obligation to account to theother, or obtain the consent of the owner, with respect to thecommercialization, licensing or enforcement of any Joint Inventions or JointPatents, and hereby waives any right it may have under the laws of any countryto require such accounting or consent.

 

**(e)****                                 **CGshall have the right but not the obligation (either itself or through itsdesignee) to file, prosecute and maintain Patents claiming TherapeuticCandidates (“Candidate Patents”); provided, however, that for any molecule thatis a Therapeutic Candidate and a Target: (i) CG shall have the right butnot the obligation (either itself or through its designee) to file,

 

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prosecute and maintainPatents claiming uses of such molecule in the CG Program Field and such Patentsalso shall be Candidate Patents; and (ii) Rigel shall have the right, butnot the obligation, to file, prosecute and maintain any Patents claiming thecomposition of matter of such molecule or claiming any use of the moleculeoutside the CG Program Field or in the Rigel Field.  All costs and expenses of filing, prosecutingand maintaining Candidate Patents will be borne by the Party that undertakessuch prosecution.  The Party undertakingsuch prosecution shall seek the comments of the other Party and shall keep theother Party informed of the progress of such prosecution by providing quarterlystatus reports and copies of all correspondence between their patent counseland the patent offices of the countries where such applications werefiled.  Each Party shall reasonablyassist the other Party in the prosecution of Candidate Patents, including,without limitation, by executing any necessary powers of attorney and otherdocuments necessary for such prosecution.

 

**(f)****                                   **EachParty agrees to keep the other Party fully informed as to prosecution andmaintenance (including without limitation any interference, opposition or otherprosecution or other proceedings) with respect to patents claiming anddisclosing subject matter within the Program Technology.  In the event that a Party elects not to prosecuteor maintain any patent rights in a Sole Invention comprising ProgramTechnology, it shall promptly notify the other Party and authorize the otherParty to seek or continue such prosecution and maintenance at such other Party’sexpense.  In such case the owner of suchSole Invention shall cooperate fully with the other Party to facilitate suchprosecution and maintenance.

 

**4.2****                               Infringementand Similar Actions.**  As between theParties hereto:

 

**(a)****                                 **CGshall have the sole and exclusive right, at its expense, to prosecute any andall infringement or wrongful use of the CG Patents and CG Know-How, and(subject to paragraph (c) below) Sole Patents owned by CG and/or to entersettlements, judgments or other arrangements respecting such infringement orwrongful use.  CG may retain all damagesand other amounts recovered as a result of any such action, settlement,judgment or other arrangement.

 

**(b)****                                 **Rigelshall have the sole and exclusive right, at its expense, to prosecute any andall infringement or wrongful use of the Rigel Know-How, the Rigel BiologicalMaterials, and (subject to paragraph (c) below) Sole Patents owned byRigel and/or to enter settlements, judgments or other arrangements respectingsuch infringement or wrongful use.  Rigelmay retain all damages and other amounts recovered as a result of any suchaction, settlement, judgment or other arrangement.

 

**(c)****                                 **Withrespect to infringement of any Program Patents in the CG Program Field, CGshall have the right, but not the obligation, (directly or through designees)to institute, prosecute and control at its own expense and for its own benefit,any action or proceeding with respect to such infringement.  With respect to other infringement of anyProgram Patents (i.e., outside the CG Program Field), Rigel shall have theright, but not the obligation, (directly or through designees) to institute,prosecute and control, at its own expense and for its own benefit, any actionor proceeding with respect to such infringement.  If a Party with the right to do so fails tobring an action or proceeding against a suspected infringer within a reasonableperiod after

 

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receiving a writtenrequest by the other Party to do so, such other Party shall have the right tobring and control an action against such infringer by counsel of its own choiceand retain for its own account any amounts recovered from third parties.  If one Party brings any such action orproceeding, the other Party agrees to be joined as a Party plaintiff if necessaryto prosecute the action and to give the first Party reasonable assistance andauthority to file and prosecute the suit.

 

**(d)****                                 **EachParty shall promptly notify the other in writing of any alleged or threatenedinfringement of Joint Patents of which it becomes aware and which may adverselyimpact the rights of the Parties hereunder. Promptly upon such notification, the Parties shall meet to discuss thestrategy and appropriate steps to be taken to deal with such infringement. Anyrecovery obtained by settlement or otherwise shall be disbursed as follows:first, any reasonable expenses incurred in connection with such action(including counsel fees) by both Parties are reimbursed; thereafter, the netrecovery shall be shared between the Parties according to the ratio of theirrespective contributions to the litigation costs.  This paragraph shall not be deemed to limitthe Parties’ respective rights to enforce Joint Patents, or to limit the rightsgranted under paragraph (c) above.

 

**4.3****                               ThirdParty Claims.**

 

**(a)****                                 **Exceptto the extent expressly warranted in Article 7, and subject to theindemnification obligation in Article 5, CG shall have no liability toRigel with respect to any claim, suit or action alleging that the practice ofthe license rights granted by CG under Section 2.1 infringes anyintellectual property or other right of a third party. Except to the extentexpressly warranted in Article 7, and subject to the indemnificationobligation in Article 5, Rigel shall have no liability to CG or itsAffiliates with respect to any claim, suit or action alleging that the practiceof the license rights granted under Section 2.2 infringes any intellectualproperty or other rights of a third party.

 

**(b)****                                 **Rigelhereby agrees to provide reasonable assistance to CG, at its request, indefending any action or claim initiated by a third party against CG arisingfrom any claim that the use or practice of the Rigel Know-How, Rigel BiologicalMaterials or the Target by CG or its Affiliates infringes that third party’sproprietary rights.  CG hereby agrees toprovide Rigel reasonable assistance, at its request and expense, in defendingany action or claim initiated by a third party against Rigel or its Affiliatesarising from any claim that the use or practice of the CG Patents or CGKnow-How by Rigel or its Affiliates infringes that third party’s proprietaryrights.

 

**(c)****                                 **Ifa third party asserts against CG that a patent, trademark or other intangibleright owned by it is infringed by any product in the CG Program Field derivedor resulting from or incorporating Program Technology, CG will be solelyresponsible for defending against any such assertions at its cost andexpense.  Each Party will give promptwritten notice to the other of any such claim. Rigel will assist in the defense of any such claim as reasonablyrequested by CG, at CG’s expense, and may retain separate counsel at its ownexpense at any time.

 

**(d)****                                 **NeitherParty shall enter into any settlement of any claim which would admit theinvalidity of Patents within the Program Technology without the other Party’sprior written consent, which consent shall not be unreasonably withheld ordelayed.

 

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**4.4****                               Pass-ThroughRoyalties.**  In consideration for thelicenses granted herein:

 

**(a)****                                 **Rigelagrees to pay any amounts which CG is required to pay to Rockefeller Universityunder the CG License as a result of CG’s grant to Rigel of license rights to CGPatents or CG Know-How to Rigel or the exercise of the license rights grantedby CG under the CG License.

 

**(b)****                                 **Rigelagrees to pay CG (i) **[ * ]** for thelicense granted to Rigel hereunder to the CG Patents related to the **[ * ]** cell lines, and (ii) **[ * ]**for each sublicense granted by Rigel under this Agreement.

 

**(c)****                                 **CGagrees that in the event CG exercises its option to obtain a license pursuantto Section 2.2(a) above, CG will pay any amounts which Rigel isrequired to pay to Stanford University under the Rigel License as a result ofRigel’s grant to CG of license rights to Rigel Biological Materials or RigelKnow-How to CG or the exercise of the license rights granted by Rigel under theRigel License.  It is understood thatunless and until CG obtains such license rights from Rigel, CG shall not beobligated to pay to Rigel or to Stanford University any amounts that Rigel isrequired to pay to Stanford University under the Rigel License.

 

**ARTICLE 5****INDEMNIFICATION**

 

**5.1****                               CGIndemnity.**  CG agrees to indemnify,hold harmless and defend Rigel, its Affiliates, agents and employees from andagainst any and all liabilities, losses, damages, costs, fees and expenses,including reasonable legal expenses and attorneys’ fees (collectively, “Losses”)arising out of suits, claims, actions, or demands,  brought or made by a third party (“ThirdParty Claim”) against Rigel, its Affiliates, agents and employees, based on (i) CG’suse and practice of the Rigel Know-How, Rigel Biological Materials, the ProgramTechnology or the Targets, or (ii) breach of CG’s warranties under Article 7below, or (iii) the manufacture, use, handling, storage, sale or otherdisposition of Rigel Biological Materials, Program Technology, the Targets orany products resulting or derived from the Rigel Biological Materials or theProgram Technology by CG, its Affiliates, agents, employees or sublicensees,all except to the extent such Losses or Third Party Claims result from thenegligence or willful misconduct of Rigel or a breach of Rigel’s warrantiesunder Article 7 below.

 

**5.2****                               RigelIndemnity.**  Rigel agrees toindemnify, hold harmless and defend CG, its Affiliates, agents and employeesfrom and against any and all Losses arising out of any Third Party Claimsagainst CG, its Affiliates, agents and employees based on (i) Rigel’s useor practice of the CG Patents the CG Know-How or the Program Technology, (ii) breachof Rigel’s warranties under Article 7 below, or (iii) themanufacture, use, handling, storage, sale or other disposition of ProgramTechnology, the Targets or any products resulting or derived from the ProgramTechnology by Rigel, its Affiliates, agents, employees or sublicensees, allexcept to the extent such Losses or Third Party Claims result from thenegligence or willful misconduct of CG, or a breach of CG’s warranties under Article 7below.

 

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**5.3****                              **Inthe event that a Party is seeking indemnification under this Article 5, itshall inform the other Party of a claim or suit as soon as reasonablypracticable after it receives notice of the claim or suit, shall permit theindemnifying Party to assume direction and control of the defense of the claimor suit (including the right to settle the claim or suit solely for monetaryconsideration), and shall cooperate as reasonably requested (at the expense ofthe indemnifying Party) in the defense of the claim or suit.  Neither Party will enter into any settlementor claim pursuant to this Section 5.3 which is materially adverse to therights of the other Party herein, without the other Party’s prior writtenconsent, which will not be unreasonably withheld or delayed.

 

**ARTICLE 6****CONFIDENTIALITY**

 

**6.1****                               Confidentiality.**  Except to the extent expressly authorized bythis Agreement or otherwise agreed in writing, the Parties agree that, for theterm of this Agreement and for five (5) years thereafter, the Partyreceiving any Information or materials furnished to it by the other Partypursuant to this Agreement (collectively, “Confidential Information”) shallkeep confidential and shall not publish or otherwise disclose or use suchConfidential Information for any purpose other than as provided for in thisAgreement.

 

**6.2****                               Exceptions.**  The obligations in Section 6.1 shall notapply to any Information or materials to the extent that the receiving Partycan establish by competent proof that such Information or materials:

 

**(a)****                                 **wasalready known to the receiving Party, other than under an obligation ofconfidentiality, at the time of disclosure by the other Party;

 

**(b)****                                 **wasgenerally available to the public or otherwise part of the public domain at thetime of its disclosure to the receiving Party;

 

**(c)****                                 **becamegenerally available to the public or otherwise part of the public domain afterits disclosure and other than through any act or omission of the receivingParty in breach of this Agreement; or

 

**(d)****                                 **wasdisclosed to the receiving Party, other than under an obligation ofconfidentiality, by a Third Party who had no obligation to the disclosing Partynot to disclose such information to others.

 

**6.3****                               AuthorizedDisclosure.**  Each Party may disclosethe other’s Confidential Information to the extent such disclosure isreasonably necessary (i) to exercise the rights granted to such Partyhereunder (including the right to grant sublicenses as permitted by thisAgreement provided that prior to any disclosure to a sublicensee, suchsublicensee has executed a confidentiality agreement with terms correspondingto this Article 6); and (ii) to file or prosecute patentapplications, to prosecute or defend litigation, to comply with applicablegovernmental regulations or to conduct preclinical or clinical trials; providedthat if a Party is required by law or regulation to make any such disclosure ofthe other Party’s Confidential Information it will,

 

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except whereimpracticable for necessary disclosures, for example in the event of medicalemergency, give reasonable advance notice to the other Party of such disclosurerequirement and, except to the extent inappropriate in the case of patentapplications, will use its best efforts to secure confidential treatment ofsuch Confidential Information required to be disclosed.

 

**6.4****                               Survival.**  This Article 6 shall survive thetermination or expiration of this Agreement for a period of five (5) years.

 

**ARTICLE 7****WARRANTY MATTERS**

 

**7.1****                               LimitedWarranties.**  CG hereby represents andwarrants to Rigel that CG has the full right and power to grant the licensesgranted to Rigel under Section 2.1(a). Rigel hereby represents and warrants to CG that Rigel has the full rightand power to grant the licenses granted to CG under Section 2.2.

 

**7.2****                               GeneralWarranties.**  Each of the Partieshereby represents and warrants to the other that (i) it is a corporationduly organized and validly existing in good standing under the laws of itsstate of incorporation, (ii) it is duly qualified and authorized to enterinto and perform its obligations under this Agreement, (iii) it has fullpower, authority and legal right to enter into and perform this Agreement, and (iv) theexecution, delivery, and performance of this Agreement has been duly authorizedby all necessary corporate action on the part of each Party and does notcontravene any law binding on it, its Articles of Incorporation or Bylaws, anyindenture, mortgage, contract or other agreement to which it is a Party or by whichit is bound or any laws, governmental rule, regulation or order.

 

**7.3****                               IntellectualProperty Warranties.**

 

**(a)****                                 **Eachof the Parties hereby represents and warrants to the other that (i) itdoes not Control any Patents that would dominate the Patents licensed to theother Party hereunder, (ii) it is not aware of any claims of a third partywhich would call into question the rights of such Party in the licensed subjectmatter or its right to grant the licenses granted to the other Party hereunder,(iii) it has provided the other Party with all information concerningroyalty obligations pertinent to the licenses granted to the other Partyhereunder; and (iv) it will use commercially reasonable efforts to keep inforce any license agreement from which the license or sublicense granted to theother Party under this Agreement is derived to the extent that such licenseagreement does not provide for a survival of any sublicenses granted by suchParty.

 

**(b)****                                 **Rigelfurther warrants to CG that as of the Effective Date (i) to the best ofits knowledge, Rigel’s conduct of the Research, and the manufacture, sale anduse of Therapeutic Candidates will not infringe any third party intellectualproperty rights, and without limiting the foregoing, Rigel warrants that Rigel’sconduct of the Research will not infringe any of the patents listed in AppendixI hereto; (ii) Rigel does not know of any third party other than StanfordUniversity having a claim in the Rigel Biological Materials; and (iii) Rigelhas the right to grant to CG a license under the Rigel Biological Materials andthe Rigel Know-How to make, use and sell products in the CG **[ * ]** Field.

 

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**(c)****                                 **CGfurther warrants to Rigel that CG has the right to grant to Rigel a licenseunder the CG Patents and CG Know-How to make, use and sell products within theRigel Field.

 

**(d)****                                 **Rigelwarrants that it has not as of the Effective Date entered into an agreementwith any third party licensing or granting rights to Rigel technology in theField of Research.

 

**7.4****                               Limitationon Warranties.**  EXCEPT AS PROVIDED INSECTIONS 7.1, 7.2, AND 7.3 ABOVE, NEITHER PARTY MAKES ANY WARRANTIES TO THEOTHER PARTY, WHETHER EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION ANYWARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE AS TO ANYPRODUCT OR PROCESS, OR AS TO THE VALIDITY OR SCOPE OF ANY PATENTS, OR THAT ANYLICENSED BIOLOGICAL MATERIALS, PATENTS OR KNOW-HOW WILL BE FREE FROMINFRINGEMENT OF PATENTS OF ANY THIRD PARTY, OR THAT NO THIRD PARTIES AREINFRINGING SAME.

 

**ARTICLE 8****TERM AND TERMINATION**

 

**8.1****                               Termof Agreement.**  Unless earlierterminated as otherwise provided in this Article 8, this Agreement shallremain in effect until the expiration of the last to expire of the CG Patentsor Program Patents.

 

**8.2****                               Terminationfor Breach.**  A Party may terminatethis Agreement prior to the expiration of the Agreement in the event that theother Party is in breach of or default under a material term of the Agreement,and the breaching Party does not cure such breach or default within thirty (30)days of written notice thereof from the non-breaching Party.  Subject to Section 8.3 below, upon anysuch termination, all the licenses granted by and between the Parties hereinshall terminate; provided that any sublicense granted by a Party hereunder to athird party prior to such termination shall survive such termination, so longas the sublicensee agrees to be bound by the applicable terms of thisAgreement.

 

**8.3****                               Survival.**  Upon expiration or termination of this Agreement,the rights and obligations under Articles 5 and 6 and Sections 7.4, 8.3, 9.2,9.3, 9.7 and 9.10 shall continue.  Inaddition, upon expiration or termination of this Agreement after the end of theResearch Period, the licenses granted under Article 2 above and the rightsand obligations under Article 4 shall survive.  Further, subject to Sections 2.1(b) and2.2(b) if they survive the termination or expiration of this Agreement asprovided above, neither Party shall have any obligation to account to theother, or obtain the consent of the owner, with respect to thecommercialization, licensing or enforcement of any Joint Patents, and herebywaives any right it may have under the laws of any country to require suchaccounting or consent.

 

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**ARTICLE 9****MISCELLANEOUS**

 

**9.1****                               Relationshipof the Parties.** This Agreementcreates only licensor-licensee and sublicensor-sublicensee relationshipsbetween Rigel and CG.  No partnership orother legal relationship is created hereunder. Neither Party is, or will be deemed to be, an agent or legalrepresentative of the other Party for any purpose.  Neither Party will be entitled to enter intoany contracts in the name of or on behalf of the other Party, and neither Partywill be entitled to pledge the credit of the other Party in any way or holditself out as having authority to do so.

 

**9.2****                               Assignment.**  This Agreement may not be assigned by eitherParty without the prior written consent of the other Party, which consent shallnot be unreasonably withheld; provided, however, that a Party may assign thisAgreement without such consent to any Affiliate or to a successor in interestby way of merger, acquisition, sale or transfer of substantially all of itsbusiness or assets pertaining to the subject matter of this Agreement.  The Agreement will be binding upon and inureto the benefit of all permitted successors and assignees of the Partieshereunder, and the name of each Party appearing herein will be deemed toinclude the names of such Party’s successors and assignees.

 

**9.3****                               Useof Names.**  No Party hereto may usethe name of the other Party in public announcements without the prior consentof the other Party as required by law or regulation.

 

**9.4****                               Amendment.**  No amendment, modification or supplement ofany provision of the Agreement will be valid or effective unless made inwriting and signed by a duly authorized officer of each Party.

 

**9.5****                               Waiver.**  No provision of the Agreement will be waivedby any act, omission or knowledge of a Party or its agents or employees exceptby an instrument in writing expressly waiving such provision and signed by aduly authorized officer of the waiving Party.

 

**9.6****                               Headings.**  The headings for each article and section inthis Agreement have been inserted for the convenience of reference only and arenot intended to limit or expand on the meaning of the language contained in theparticular article or section.

 

**9.7****                               Notices.**  Any notice or other communication required orpermitted to be given to either Party hereto shall be in writing unlessotherwise specified and shall be deemed to have been properly given and to beeffective on the date of delivery if delivered in person or by facsimile orthree (3) days after mailing by registered or certified mail, postagepaid, to the other Party at the following address:

 

If to Rigel:                                         Rigel, Inc.

240 East GrantAvenue

South SanFrancisco, CA  94080

Attn:  Secretary

Fax:  650.624.1101

 

Copy to:                                                  CooleyGodward, LLP

Five Palo AltoSquare, 4th Floor

3000 El CaminoReal

Palo Alto, CA  94306

 

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Attn: Robert L.Jones, Esq.

Fax: 650.849.7400

 

If to CG:    Cell Genesys, Inc.

342 Lakeside Drive

Foster City, CA94404

Attn:  Chief Executive Officer

Fax:  650.358.0803

 

**9.8****                               Severability.**  Whenever possible, each provision of theAgreement will be interpreted in such manner as to be effective and valid underapplicable law, but if any provision of the Agreement is held to be prohibitedby or invalid under applicable law, such provision will be ineffective only tothe extent of such prohibition or invalidity, without invalidating theremainder of the Agreement.

 

**9.9****                               EntireAgreement of the Parties.**  TheAgreement will constitute and contain the complete, final and exclusiveunderstanding and agreement of the Parties with respect to the subject matterhereof and cancels and supersedes any and all prior negotiations,correspondence, understandings and agreements, whether oral or written, betweenthe Parties respecting the subject matter. Each Party hereto was represented by counsel in drafting and negotiatingthis Agreement, and all Parties are deemed to have contributed to the draftinghereof.

 

**9.10****                        GoverningLaw.**  This Agreement shall begoverned by and construed in accordance with the laws of the State ofCalifornia excluding only laws and rules relating to “choice of law”.  All Parties to this Agreement hereby consentto the jurisdiction of the courts of the State of California and the FederalDistrict Court for the Northern District of California for resolution of anydisputes that arise hereunder.

 

**9.11****                        Counterparts.**  This Agreement may be executed in any numberof counterparts, each of which shall be an original, but all of which togethershall constitute one instrument.

 

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**IN WITNESS WHEREOF,**the Partieshereto have amended and restated this Agreement as of March 26, 2001.

 
| **CELL GENESYS, INC.** |                                                                        | **RIGEL PHARMACEUTICALS, INC.** |
|------------------------|-----------------------------------------------------------------------------|---------------------------------|
|                   |                                                                        |                            |   |   |
| By:                    |      /s/ Robert Tidwell                            |                            | By: |      /s/ Raul R. Rodriguez |
| Name:                  |           Robert  Tidwell |                            | Name: |           Raul  R. Rodriguez |
| Title:                 |      VP Corporate Dev.                             |                            | Title: |      VP Business Dev. |
|                        |                                                                             |                                 |  |  |  |  |  |  |  |  |  |

 

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**APPENDIX AEXCLUSIVE LICENSE AGREEMENT**

 

**EXCLUSIVE LICENSE AGREEMENT**madeas of January 31, 1996 (the “Effective Date”), by and between Cell Genesys, Inc.(“Company”), a corporation organized and existing under the laws of the Stateof Delaware, having an office at 322 Lakeside Drive, Foster City, California94404, and **THE ROCKEFELLER UNIVERSITY**(“Rockefeller”),a nonprofit education corporation organized and existing under the laws of theState of New York, having an office at 1230 York Avenue, New York, New York10021-6395.

 

**WITNESSETH:**

 

**WHEREAS**, Rockefeller is theowner by assignment from Warren S. Pear, Martin L. Scott, Garry M. Nolan andDavid Baltimore (“Inventors”) of the entire right, title and interest in UnitedStates Patent Application Serial No. 08/023,909, filed February 22,1993, entitled Production of High Titer Helper-Free Retroviruses by TransientTransfection, and in the inventions described and claimed therein (“LicensedPatent Rights”), and in the Biological Materials and related Know-How, asdefined below;

 

**WHEREAS**, Rockefeller and theCompany entered into a license agreement effective as of October 25, 1994(the “Prior Agreement”), pursuant to which Rockefeller granted to the Company anon-exclusive license to use the Licensed Patent Rights, Know-How andBiological Materials for research and commercial purposes;

 

**WHEREAS**, the parties have agreedto expand the scope of the license and rights granted to the Company andtherefore have agreed to terminate the Prior Agreement as of the EffectiveDate, and enter into this Agreement;

 

**WHEREAS**, Rockefeller wishes tooffer and grant the Company an exclusive license with regard to the LicensedPatent Rights, Know-How and the Biological Materials for research andcommercial purposes, and seeks to be compensated for the transfer and use ofsuch rights; and

 

**WHEREAS**, the Company wishes tolicense from Rockefeller the Licensed Patent Rights, Biological Materials andKnow-How for commercial development and application as herein defined.

 

**NOW, THEREFORE**, in considerationof the mutual benefits to be derived hereunder, the parties hereto agrees asfollows:

 

**1.****                                      DEFINITIONS.**

 

The following terms will have the meanings assigned tothem below when used in this Agreement.

 

**1.1****                               *“Affiliate”***shall mean:

 

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**(a)****                                 **anyentity owning or controlling, directly or indirectly, at least forty-nine percent(49%) of the stock normally entitled to vote for election of directors of aparty; or

 

**(b)****                                 **anyentity at least forty-nine percent (49%) of whose stock normally entitled tovote for election of directors is owned or controlled, directly or indirectly,by a party.

 

**1.2****                               *“Biological Materials”***shall mean (i) the ecotropicproducer cell line named **[ * ]** whichproducer cell line was deposited with the American Type Culture Collection asof **[ * ]** and has been assigned Accession No. **[ * ]**, and any viruses produced thereby; (ii) *{Not disclosed by Cell Genesys}* Biological Materials shallalso include any direct progeny, mutant, or derivatives of the **[ * ]***{Not disclosed by CellGenesys}* cell lines and the viruses produced thereby.

 

**1.3****                               *“Improvement Technology”***means all patent and otherintellectual property rights, and materials relating to inventions, discoveriesor improvements to the Licensed Technology licensed to Rockefeller by anyacademic institution, governmental and other not-for-profit entity to whichRockefeller grants a non-exclusive research license with regard to the LicensedTechnology pursuant to Section 6.3 herein.

 

**1.4****                               *“Know-How”***shall mean information and data not generallyknown which are owned and in the possession of or available to Rockefeller andwhich it is free to divulge as of the Effective Date regarding the preparationand use of Biological Materials, and pharmacological, biological and clinicalproperties of Biological Materials. It is understood that Know-How shall notinclude any information or data known by the Company prior to receipt of suchinformation or data from Rockefeller, as shown by reasonable evidence.

 

**1.5****                               *“Licensed Patent Rights”***shall mean:

 

**(a)****                                 **thepatent application(s) concerning the subject matter of this Agreement which arelisted on Exhibit A attached hereto;

 

**(b)****                                 **allpatent applications which are divisions, substitutions, continuations,continuations-in-part, renewals, or additions of the patent applicationsdescribed in (a) hereof,

 

**(c)****                                 **allforeign counterparts of the applications listed in (a) and (b) hereof;and

 

**(d)****                                 **allpatents, including reissues, re-examinations and extensions, which may issue onany of the preceding.

 

**1.6****                               *“Licensed Products”***shall mean any and all products themanufacture, use or sale of which but for the license granted herein wouldinfringe a Valid Claim or are within the scope of a Pending Claim in thecountry in which such products are made or sold.

 

**1.7****                               *“Licensed Technology”***shall mean the Licensed PatentRights, Biological Materials and Know-How.

 

**1.8****                               *“Net Sales”***shall mean **[ * ]**,where **[ * ]** shall mean the amount invoiced bythe Company or its sublicensees to customers for Licensed Products less: (i) alltrade, cash and

 

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quantitycredits, discounts, refunds or government rebates, (ii) amounts forclaims, allowances or credits for returns; retroactive price reductions;chargebacks or the like; (iii) packaging, handling fees and prepaidfreight, sales taxes, duties and other governmental charges (including valueadded tax), but excluding what is commonly known as income taxes; and (iv) provisionsfor uncollectible accounts determined in accordance with reasonable accountingpractices, consistently applied to all products of the selling party. **[ * ]** shall not include sales by the Company to itsAffiliates for resale, provided that if the Company sells a Licensed Product toan Affiliate for resale, **[ * ]** shallinclude the amounts invoiced by such Affiliate to third parties on the resaleof such Licensed Product. Notwithstanding the foregoing.  **[ * ]** shallinclude charges for the separation, transduction and/or expansion of cellscomprising Licensed Products, but notwithstanding any of the foregoing, shallnot include charges for apheresis, reinfusion, surgical procedures, hospitalstays or other charges not directly attributed to the Licensed Product or tothe ex vivo preparation of the Licensed Product.

 

**1.9****                               *“Party”***shall mean the Company or Rockefeller, and “Parties”shall mean both the Company and Rockefeller.

 

**1.10****                        *“Pending Claim”***shall mean a claim of a pending patentapplication within the Licensed Patent Rights.

 

**1.11****                        *“Territory”***shall mean the entire world.

 

**1.12****                        *“Valid Claim”***shall mean a claim of an issued andunexpired patent included within the Licensed Patent Rights, which has not beenheld unenforceable or invalid by a court or other governmental agency ofcompetent jurisdiction, and which has not been admitted to be invalid orunenforceable through reissue, disclaimer or otherwise.

 

**2.****                                      LICENSEDRIGHTS**

 

**2.1****                              **Subjectto Section 2.2 below, Rockefeller grants to the Company and its Affiliatesthe following licenses:

 

**(a)****                                 **anexclusive, worldwide, royalty-bearing license under the Licensed Technology,with the right to grant and authorize sublicenses, to make, have made, import,have imported, use, sell, offer for sale and otherwise exploit the LicensedProducts in any country of the Territory; and

 

**(b)****                                 **anon-exclusive, worldwide, royalty-free, irrevocable license under theImprovement Technology, with the right to grant and authorize sublicenses, tomake, have made, import, have imported, use, sell, offer for sale and otherwisecommercialize products and services in any country of the Territory.

 

**2.2****                              **Thelicenses granted by Rockefeller in Section 2.1 (a) above are subjectto any limitations on Rockefeller’s rights arising under the provisions of thefollowing:

 

**(a)****                                 **35United States, Section 201 et seq., and regulations and rules promulgatedthereunder and any agreements implementing the provisions thereof, or

 

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**(b)****                                 **otherapplicable laws or regulations to which Rockefeller may be subject; or

 

**(c)****                                 **Rockefeller’sInstitutional Patent Agreement with the United States Department of Health andHuman Services, dated June 15, 1973, as amended, which is its formalagreement with the United States Government to implement the cited provisionsof the U.S. Code.

 

**2.3****                              **Rockefellershall promptly notify the Company of any Improvement Technology of which itacquires knowledge and provide the Company all available information relatingthereto.

 

**2.4****                              **Thelicenses herein granted shall continue for the lives of any issued patentshereunder as the same or the effectiveness thereof may be extended by anygovernmental authority, rule or regulation applicable thereto.

 

**3.****                                      TRANSFEROF BIOLOGICAL MATERIALS AND KNOW-HOW**

 

**3.1****                              **Theparties acknowledge that pursuant to the Prior Agreement, Rockefellertransferred to the Company a quantity of Biological Materials and such Know-Howto allow the Company to establish a viable cell culture of said BiologicalMaterials for the Company’s purposes. The Company is permitted to cultivate anduse said Biological Materials, subject to the terms and conditions of thisAgreement. On the Effective Date, Rockefeller shall notify the American TypeCulture Collection (“ATCC”) that the Company is authorized to receive samplesof the Biological Materials deposited with the ATCC and to deliver suchmaterials to the Company at the Company’s request, and that the Company has theright to authorize third parties to receive one or more samples of theBiological Materials, on such terms as the Company may indicate to the ATCC.

 

**3.2****                              **Shouldthe Company exhaust the quantity of Biological Materials within six (6) monthsof the date of execution hereof, so that a viable cell culture of saidBiological Materials no longer exists, Rockefeller shall authorize the ATCC toprovide the Company with a quantity of Biological Materials sufficient toreestablish the Company’s viable colony thereof.

 

**3.3****                              **Withinsixty (60) days of the Effective Date, Rockefeller shall deliver to the Companytangible copies of all existing Know-How which it did not previously provide tothe Company pursuant to the Prior Agreement.

 

**4.****                                      PAYMENTS**

 

**4.1****                              **Inconsideration of the rights and licenses granted hereunder, the Company shallpay or cause to be paid to Rockefeller amounts as follows:

 

**(a)****                                 ***{Not disclosed by Cell Genesys}*

 

**(b)****                                 ***{Not disclosed by Cell Genesys}*

 

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**(c)****                                 ***{Not disclosed by Cell Genesys}*

 

**(d)****                                 **aroyalty of **[ * ]** of Net Sales of LicensedProducts sold by the Company within the scope of a Valid Claim within theLicensed Patent Rights in the country they are made or sold.

 

Notwithstandingthe above, the royalty due Rockefeller on Net Sales of Licensed Products, themanufacture, use or sale of which would not infringe a Valid Claim in thecountry for which they are sold but which are within the scope of a PendingClaim in such country, shall be fifty percent (50%) of the royalty due under Section 4.l(d).

 

**4.2****                              **Inthe event that a Licensed Product is sold in combination as a single productwith another product whose sale and use are not covered by the Licensed PatentRights in the country for which the combination product is sold, Net Sales fromsuch sales, for purposes of calculating the amounts due under Section 4.1above, shall be calculated by multiplying the Net Sales of that combination bythe fraction A/(A + B), where A is the gross selling price of the LicensedProduct, as the case may be, sold separately, and B is the gross selling priceof the other product sold separately. In the event that no such separate salesare made by the Company, Net Sales for royalty determination shall be asreasonably allocated by the Company between such Licensed Product and suchother product, based upon their relative importance and proprietary protection.

 

**4.3****                              **LicensedProducts sold, leased or otherwise distributed by the Company’s sublicenseesshall be considered to be sales, leases or disposals of Licensed Products bythe Company for purposes of royalty payments and reports under this Agreement.The obligation to pay royalties pursuant to this Agreement is imposed only oncewith respect to the sale of a particular Licensed Product regardless of thenumber of claims or patents that cover such Licensed Product. The Company shallhave no obligation to pay royalties on Licensed Products used in research anddevelopment, in clinical trials or other noncommercial purposes, or distributedas samples.

 

**4.4****                              **TheCompany’s obligation to pay royalties hereunder shall continue on acountry-by-country basis until (i) the expiration of the last-to-expireissued patent within the Licensed Patent Rights in such country, or (ii) **[ * ]** following the first commercial sale of a LicensedProduct in a country, if no patent covering such Licensed Product has beenissued in such country. Thereafter, the Company shall have a fully paid uplicense under Licensed Patent Rights, Biological Materials and Know-How to make,have made, use, sell, lease, import, have imported, offer for sale or otherwiseexploit the Licensed Product(s) for any use in that country.

 

**4.5****                              ***{Not disclosed by Cell Genesys}*

 

**4.6****                              ***{Not disclosed by Cell Genesys}*

 

**4.7****                              **Unlessthis Agreement is terminated earlier, within sixty (60) days following thefirst achievement by the Company or a sublicensee of the following milestoneswith respect to the first Licensed Product within the scope of a Valid Claimwithin the Licensed Patent Rights, the Company shall pay to Rockefeller **[ * ]** milestone payments as follows:

 

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| **Event**                                                                                          | ** ** | **Payment** |
|----------------------------------------------------------------------------------------------------|------------|-------------|
| ** **                                                                                         | ** ** | ** **  |
| Enrollment of first  patient in a Company-sponsored**[ * ]** clinical trial of a Licensed  Product |       | $           | **[ * ]** |
|                                                                                               |       |        |
| Enrollment of first  patient in a Company-sponsored**[ * ]** clinical trial of a Licensed  Product |       | $           | **[ * ]** |
|                                                                                               |       |        |
| Approval  of NDA in U.S. of a Licensed Product                                                     |       | $           | **[ * ]** |

 

**4.8****                              **Uponcommencement of commercial sales of any Licensed Products which generate aroyalty to Rockefeller pursuant to this Agreement, the Company shall withinninety (90) days of the close of the fiscal semi-annual period, providesemi-annual reports to Rockefeller showing the total Net Sales of LicensedProducts sold, leased or otherwise disposed of during such period and thecalculation of royalties thereon. Any royalty then due and payable shall beincluded with such report.  All reportsprovided hereunder by the Company shall be the Confidential Information of theCompany, subject to Section 7 herein. The Company’s records shall be opento inspection by an independent certified public accountant designated byRockefeller for three (3) years from the submission of such reports andpayments, subject to execution of a confidentiality agreement reasonablyacceptable to the Company, once per calendar year at reasonable times, atRockefeller’s expense, for the sole purpose of verifying the accuracy of thereports and royalty payments made by the Company. The accountant shall reportto Rockefeller only whether there has been an underpayment and, if so, theamount thereof.

 

**5.****                                      TIMESAND CURRENCIES OF PAYMENT**

 

**5.1****                              **Royaltypayments shall be made in United States dollars or if sales are made in thecurrency of other countries, royalties shall be calculated in the currency ofsuch other country and be converted into United States dollars using theapplicable exchange rate for sale of U.S. dollars listed by the foreignexchange desk of the Bank of America on the last day of the applicablereporting period.

 

**5.2****                              **Ifat any time legal restrictions prevent the prompt remittance of part or allroyalties by the Company with respect to any country where a Licensed Productis sold, the Company shall have the right and option to make such payment bydepositing the amount thereof in local currency to an account in the name ofRockefeller in a bank or other depository in such country.

 

**6.****                                      SUBLICENSEES**

 

**6.1****                              **TheCompany and its Affiliates shall have the right to grant and authorizesublicenses under the Licensed Technology and Improvement Technology to commercialentities for research purposes and for commercial purposes, including withoutlimitation, to make, have made, import, have imported, use, lease, offer forsale and sell Licensed Products in the Territory.

 

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**6.2         **TheCompany shall have the sole discretion to determine the financial and otherterms on which any sublicenses shall be granted under the Licensed Technology,subject to the provisions herein. Any sublicense(s) granted by the Companyunder this Agreement shall be subject and subordinate to the terms andconditions of this Agreement, except the financial terms of the sublicense(s)may require greater payments than the financial terms in this Agreement.

 

**6.3         **NotwithstandingSection 2.1 above, Rockefeller, on behalf of the Company, may continue togrant limited, non-transferable, research sublicenses to academic institutions,governmental and other not-for-profit entities using the form sublicenseagreement attached hereto as Exhibit B. Rockefeller shall not enter intoor agree to enter into any agreement with such an entity which deviates in anyway from the form agreement set forth in Exhibit B, without the priorwritten consent of the Company. Rockefeller shall provide the Company with acopy of each such research license entered by Rockefeller promptly followingthe execution of such agreement.

 

**6.4         **Inthe event of any termination of this Agreement, any sublicenses granted underor this Agreement shall also terminate unless such sublicensees provide Rockefellerwritten notice that they will abide by the applicable terms of this Agreement.

 

**6.5         **Inno event shall a default or breach of a sublicensee of a sublicense granted bythe Company pursuant to this Agreement constitute by a default or breach by theCompany of this Agreement or be deemed a valid basis for the termination ofthis Agreement.

 

**7.****                                      CONFIDENTIALINFORMATION**

 

**7.1         **EachParty and its Affiliates and sublicensees shall treat as confidential allConfidential Information received from the other Party hereto, shall not usesuch Confidential Information except as expressly set forth herein or otherwiseauthorized in writing, shall implement reasonable procedures to prohibit thedisclosure, unauthorized duplication, misuse or removal of such ConfidentialInformation and shall not disclose such Confidential Information to any thirdparty except as may be necessary and required in connection with the rights andobligations of such party under this Agreement, and subject to confidentialityobligations at least as protective as those set forth herein. Without limitingthe foregoing, each of the parties shall use at least the same procedures anddegree of care which it uses to prevent the disclosure of its own confidentialinformation to prevent the disclosure of Confidential Information of the otherParty. As used herein, the term “Confidential Information” shall mean anyinformation expressly designated as Confidential Information in this Agreementand information disclosed by one Party to another pursuant to this Agreementwhich is in written, graphic, machine readable or other tangible form and ismarked “Confidential” to indicate its confidential nature. ConfidentialInformation may also include oral information disclosed by one Party to anotherpursuant to this Agreement, provided that such information is designated asconfidential at the time of disclosure and within thirty (30) days after itsoral disclosure is reduced to a written summary by the disclosing Party, whichsummary is marked in a manner to indicate its confidential nature and deliveredto the receiving Party.

 

**7.2         **Notwithstandingthe above, neither Party has any obligation of confidence under this Agreementwith respect to any information which:

 

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**(i)           **maybe demonstrated to have been known to the receiving Party prior to the time ofdisclosure thereof by the disclosing Party; or

 

**(ii)          **withoutbreach of this Agreement, has been published or is otherwise available to thepublic at any time whether before or after the time of disclosure to suchParty; or

 

**(iii)        **isat any time lawfully received by such Party from a third party who has noobligation of confidence to a Party in respect hereof.

 

**7.3         **EachParty hereto may disclose another’s Confidential Information to the extent suchdisclosure is reasonably necessary in filing or prosecuting patentapplications, prosecuting or defending litigation, complying with applicablegovernmental regulations or otherwise submitting information to tax or othergovernment authorities, making a permitted sublicense or other exercise of itsrights hereunder or conducting clinical trials, provided that if a Party isrequired to make any such disclosure of another Party’s secret or ConfidentialInformation, other than pursuant to a confidentiality agreement, it will givereasonable advance notice to the latter Party of such disclosure requirementand, will use its best efforts to secure confidential treatment of suchinformation prior to its disclosure (whether through protective orders orotherwise).

 

**8.****                                      REPRESENTATIONSAND WARRANTIES**

 

**8.1         **Rockefellerrepresents and warrants that: (i) it is a nonprofit corporation dulyorganized, validly existing and in good standing under the laws of New York; (ii) theexecution, delivery and performance of this Agreement have been duly authorizedby all necessary action on the part of Rockefeller; (iii) it is the soleand exclusive owner of all right, title and interest in the Licensed PatentRights; (iv) the Licensed Patent Rights are free and clear of any lien,security interest or restriction on transfer or license; (v) Rockefellerhas not previously granted, and will not grant during the term of thisAgreement, any right, license or interest in and to the Licensed Patent Rights,Biological Materials and Know-How, or any portion thereof, in conflict with therights, exclusive license and interest granted to the Company herein; (vi) ithas complied fully with all requirements of 35 U.S.C. § 201 et seq. andall implementing regulations with respect to perfecting its interest in theLicensed Patent Rights; (vii) Exhibit A contains a complete andaccurate listing of all Licensed Patent Rights existing as of the EffectiveDate; and (viii) there are no actions, suits, investigations, claims orproceedings pending in any way relating to the Licensed Patent Rights,Biological Materials or Know-How.

 

**8.2         **TheCompany represents and warrants that: (i) it is a corporation dulyorganized, validly existing and in good standing under the laws of the State ofDelaware; and (ii) the execution, delivery and performance of thisAgreement have been duly authorized by all necessary corporate action on thepart of the Company.

 

**8.3         **ROCKEFELLEREXPRESSLY DISCLAIMS ANY AND ALL IMPLIED OR EXPRESS WARRANTIES AND MAKES NO EXPRESSOR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR PURPOSEOF BIOLOGICAL MATERIALS, LICENSED PROCESSES OR LICENSED PRODUCTS CONTEMPLATEDBY THIS AGREEMENT. FURTHER, ROCKFELLER HAS MADE NO FORMAL

 

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INVESTIGATIONAND THEREORE CAN MAKE NO REPRESENTATION THAT BIOLOGICAL MATERIALS SUPPLIED BYIT OR THE METHODS USED IN MAKING OR USING SUCH MATERIALS ARE NOW OR WILL REMAINFREE FROM LIABILITY FOR PATENT INFRINGEMENT.

 

**9.****                                     ***{Not disclosed by Cell Genesys}*

 

**9.1         ***{Not disclosed by Cell Genesys}*

 

**9.2         ***{Not disclosed by Cell Genesys}*

 

**10.****                               PUBLICITY**

 

TheCompany will not use either directly or by implication the name of Rockefeller,or the name of any member of the faculty or staff thereof for any commercial orpromotional purposes without prior notification and written agreement ofRockefeller. Except as expressly provided herein, the Parties agree not todisclose the terms of this Agreement to any third party without the priorwritten consent of the other Party to the fact and form of such disclosure,except as required by securities or other applicable laws, to prospectiveinvestors and to such party’s accountants, attorneys and other professionaladvisors. Notwithstanding the above, the Company may disclose the existence ofthis Agreement and issue a press release, reasonably acceptable to Rockefeller,describing this Agreement and the rights granted the Company by Rockefellerunder this Agreement, and disclose to actual and potential sublicensees therights granted the Company by Rockefeller under this Agreement.

 

**11.****                               PATENTS**

 

**11.1       **Exceptas set forth in Section 11.4, the Company shall have the sole right tocontrol the preparation, filing, prosecution and maintenance of the LicensedPatent Rights, and any interference or opposition proceeding relating thereto,using patent counsel of its choice. The Company shall consult with Rockefellerregarding the prosecution of any such patent applications, by providingRockefeller a reasonable opportunity to review and comment on all proposedsubmissions to any patent office before submittal, and provided further thatthe Company shall keep Rockefeller reasonably informed as to the status of suchpatent applications by promptly providing Rockefeller copies of all communicationsrelating to such patent applications that are received from any patent office.If the Company informs Rockefeller in writing that the Company no longer wishesto conduct such activities with regard to any such patent applications orpatents in any country, then Rockefeller will be free, at its discretion andexpense to either abandon the subject patent applications or to continue suchactivities, and the Company shall have no further rights with respect to theapplicable patent applications or patents in such countries.

 

**11.2       **Duringthe term of the Agreement, the Company shall be responsible for one hundredpercent (100%) of the expenses incurred in connection with the activities setforth in Section 11.1. above. *{Not disclosed by CellGenesys}* With respect to patent-related costs incurred after theEffective Date, the Company shall reimburse Rockefeller within thirty (30) daysfollowing invoice for such costs, in a form reasonably acceptable to theCompany.

 

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**11.3       **Ifeither Party hereto becomes aware that any Licensed Patent Rights are being orhave been infringed by any third party, such Party shall promptly notify theother Party hereto in writing describing the facts relating thereto inreasonable detail. The Company shall have the initial right, but not theobligation, to institute, prosecute and control any action, suit or proceeding(an “Action”) with respect to such infringement, including any declaratoryjudgment action, at its expense, using counsel of its choice; provided,however, during the pendency of any such Action, the Company shall be entitledto place any royalties otherwise due Rockefeller hereunder in a separateaccount controlled by the Company. If the pertinent Licensed Patent Rights arefound invalid or unenforceable in such an Action, or any appeal thereof, theCompany may retain the amounts placed in such account without furtherobligation to Rockefeller with regard thereto. If the Licensed Patent Rightsare not held invalid or unenforceable in such an Action, or any appeal thereof,the Company shall promptly pay the amounts deposited in such account toRockefeller. Any amounts recovered from third parties in any such Action shallbe retained by the Company. In the event the Company fails to initiate ordefend any Action involving the Licensed Patent Rights within one (1) yearof receiving notice of any commercially significant infringement, Rockefellershall have the right, but not the obligation, to initiate and control such anAction, and the Company shall cooperate reasonably with Rockefeller, atRockefeller’s request, in connection with any such Action. Any amountsrecovered in such Action shall be used first to reimburse the Company andRockefeller for the expenses incurred in connection with such Action, and anyremainder retained by Rockefeller.

 

**11.4       **Inthe event the parties believe an interference may be declared or aninterference is declared between any patent application or patent within theLicensed Patent Rights and any patent application or patent owned or controlledby the Company relating to the production of high titer retroviruses, theparties agree to amicably settle any such prospective or actual interference inaccordance with the procedure set forth on Exhibit C. The Company shallhave the exclusive right to initiate such settlement procedure afterconsultation with Rockefeller. In the event of any such prospective or actualinterference and the settlement thereof, each Party shall pay its own costsassociated therewith and the parties shall equally share the costs of anyarbitration, including without limitation, administration and arbitrator fees.It is understood and agreed that in the event an interference is declared,neither Patty shall have an obligation to participate in such a proceeding, buteach hereby acknowledges that it understands that a failure to participate mayresult in an adverse outcome which could have a material adverse impact on suchParty. It is further understood and agreed that any patent applications andpatents within the Licensed Patent Rights which are involved in anyinterference shall remain subject to the license granted the Company herein.

 

**12.****                               LICENSEDPRODUCT LIABILITY**

 

TheCompany agrees to indemnify, defend and hold harmless Rockefeller and itstrustees, officers, agents, faculty, employees, and students (the “Indemnitees”),from any and all liability arising from injury or damage to persons or propertyresulting directly or indirectly from the Company’s acquisition, use,manufacture, sublicense or sale of any Licensed Product covered by LicensedPatent Rights or Know-How licensed hereunder. Notwithstanding the foregoing,the Company expressly retains any and all claims it may have againstIndemnitees arising from Indemnitees’ negligence or willful misconduct. TheCompany’s obligation to indemnify the

 

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Indemniteesunder this Section 11 shall not apply unless the indemnified Partypromptly notifies the Company of any claim or liability subject to this Section 12and cooperates fully with the Company in the defense of any such claim orproceeding.  The Company further agreesto obtain, prior to the first commercial sale of a Licensed Product, andmaintain in force for at least fifteen (15) years following the last sale of aLicensed Product, product liability insurance coverage of at least one million($1,000,000) dollars or a lesser amount as appropriate to the risk asdetermined by reference to reliable standards in the industry, such insuranceto specifically name Rockefeller as an additional insured.

 

**13.****                               NOTICES**

 

Anynotice required to be given pursuant to this Agreement shall be in writing andmay be made by personal delivery or by registered or certified mail, returnreceipt requested, by one Party to the other Party at the addresses notedbelow:

 

In the case of the Company, notice should be sent to:

 

Cell Genesys, Inc.

322 Lakeside Drive

Foster City, California 94404

Attn: Senior Vice President, Corporate Development

 

In the case of Rockefeller, notice should be sent to:

 

The Rockefeller University

1230 York Avenue

New York, New York 10021

Attn: Office of the General Counsel

 

**14.****                               LAWTO GOVERN**

 

ThisAgreement shall be interpreted and governed in accordance with the laws of theState of New York.

 

**15.****                               ASSIGNMENT**

 

ThisAgreement may not be assigned by either Party without the prior written consentof the other; *provided, however*, the Companymay assign this Agreement in connection with the transfer of all orsubstantially all of its business relating to the subject matter of thisAgreement whether by sale, merger, operation of law or otherwise.

 

**16.****                               TERMINATION**

 

**16.1       **TheCompany shall have the right to terminate this Agreement at any time withrespect to any Licensed Patent Right or any country upon ninety (90) days priorwritten notice to Rockefeller. Such termination shall automatically terminatethe license rights provided in Section 2 with respect to such LicensedPatent Rights hereof in such country but shall not relieve the Company of theobligation to pay royalties for any period prior to the effective date oftermination.

 

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**16.2       **EitherParty may terminate this Agreement in the event of a material breach by theother Party which is not cured within a reasonable time, provided only that theoffending Party is given notice of the breach and not less than ninety (90)days in which to cure such breach.

 

**16.3       **Sections2.4, 6.4 and 24.3 and Articles 7, 8, 10, 12, 14, 17 and 25 shall surviveexpiration or termination of this Agreement for any reason.

 

**17.****                               RESOLUTIONOF DISPUTES**

 

TheParties agree that in the event of it dispute between them arising from,concerning, or in any way relating to this Agreement, the Parties shallundertake good faith efforts to resolve the same amicably between themselves.

 

**18.****                               FORCEMAJEURE**

 

TheParties shall not be liable in any manner for failure or delay in fulfillmentof all or part of this Agreement, directly or indirectly caused by acts of God,governmental orders or restrictions, war, war-like conditions, revolution,riot, looting, strike, lockout, fire, earthquake, flood or other similar ordissimilar cause or circumstances beyond the nonperforming Party’s control. Thenonperforming Party shall promptly notify the other Party of the cause orcircumstance and shall recommence its performance of its obligations as soon aspracticable after the cause or circumstance ceases.

 

**19.****                               BINDINGUPON SUCCESSORS AND ASSIGNS**

 

Subjectto the limitations on assignment herein, this Agreement shall be binding uponand inure to the benefit of successors in interest or assigns of Rockefellerand the Company. Any such successor or assignee of a Party’s interest shallexpressly assume in writing the performance of all the terms and conditions ofthis Agreement to be performed by said Party.

 

**20.****                               INDEPENDENTCONTRACTORS**

 

Therelationship between Rockefeller and the Company is that of independentcontractors. Rockefeller and the Company are not joint venturers, partners,principal and agent, master and servant, employer or employee, and have noother relationship other than independent contracting parties. Rockefellershall have no power to bind or obligate the Company in any manner, other thanas is expressly set forth in this Agreement. Likewise, the Company shall haveno power to bind or obligate Rockefeller in any manner, other than as isexpressly set forth in this Agreement.

 

**21.****                               SEVERABILITY**

 

If anyprovision of this Agreement is ultimately held to be invalid, illegal orunenforceable, the validity, legality and enforceability of the remainingprovisions shall not in any way be affected or impaired thereby.

 

**22.****                               NOWAIVER**

 

Anydelay in enforcing a Party’s rights under this Agreement or any waiver as to aparticular default or other matter shall not constitute a waiver of such Party’srights to the future

 

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enforcementof its rights under this Agreement, excepting only as to an express written andsigned waiver as to a particular matter for a particular period of time.

 

**23.****                               NOIMPLIED OBLIGATIONS**

 

It isunderstood and agreed that nothing in this Agreement shall be deemed to preventthe Company from commercializing technology or products similar to orcompetitive with the Licensed Technology or the Licensed Products. Nor shallanything in this Agreement impair the right of the Company to independentlyacquire, license, develop or have others develop for it technology performingsimilar or equivalent functions as the Licensed Technology, or to develop,market or distribute products based on such technology in addition to or inlieu of the Licensed Products.

 

**24.****                               COMPLIANCEWITH LAWS. REGULATIONS AND STANDARDS**

 

**24.1       **TheCompany recognizes that the use of Biological Materials carries with it certainsafety risks to both the environment and the population that are inherent insuch materials, and shall exercise prudent scientific laboratory procedures inthe use of said Biological Materials.

 

**24.2       **Theinventors and Rockefeller recognize and have advised that the Biological Materialsmay be used to create infectious retroviruses with a broad host range, that thesupplied materials may be used to create retroviruses that can infect humancells in both vitro and in vivo, that the Biological Materials and allmaterials derived thereof should be handled and used with all due care inaccordance with generally acceptable scientific guidelines establishingappropriate precautions and approved by the Institutional Biosafety Committeeor similar authority at the Company.

 

**24.3       **TheCompany shall bear all risk to the Company and/or to any others resulting fromuse, directly or indirectly, to which the Company puts the Biological Materialsor any progeny or cells or cell lines derived from it.

 

**25.****                               NOCONSEQUENTIAL DAMAGES**

 

IN NOEVENT SHALL EITHER PARTY BE LIABLE FOR SPECIAL, INCIDENTAL OR CONSEQUENTIALDAMAGES ARISING OUT OF ANY BREACH OF THIS AGREEMENT.

 

**26.****                               ENTIREUNDERSTANDING**

 

ThisAgreement with its Exhibits represents the entire understanding between theParties with respect to the subject matter hereof and supersedes any otheragreement, expressed or implied, by the Parties with respect to the LicensedPatent Rights, Biological Materials, Know-How and Improvement Technology, andsupersedes and merges all prior negotiations, discussions and agreements,including without limitation, the Prior Agreement between the parties. ThisAgreement may not be amended or modified except in a written document signed byauthorized representatives of the Parties.

 

**INWITNESS WHEREOF**, the Parties have caused this Agreement to beduly executed as of the day and year first above written.

 

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|   | **CELL GENESYS, INC.**         |
|--------|--------------------------------|
|   |                           |   |
|   | By:                            |   | /s/ R. Scott Greer |   |
|   |                           |   |
|   | Title:                         | Senior Vice President |
|   |                           | Corporate Development |
|   |                           |   |
|   | Date:                          | February 2, 1996 |
|   |                           |   |
|   | **THE ROCKEFELLER UNIVERSITY** |
|   |                           |   |
|   | By:                            |   | /s/ William H. Griesar |   |
|   |                           |   |
|   | Title:                         | Vice President and General Counsel |
|   |                           |   |
|   |                           |   |
|   | Date:                          | January 31, 1996 |

 

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**EXHIBIT “A”**

 

**LICENSED PATENT RIGHTS**

 

United States Serial No. 08/023,909

 

PCT Application No. PCT/US94/01983

 

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**AMENDMENT TO EXCLUSIVE LICENSE AGREEMENT**

 

ThisAmendment to Exclusive License Agreement (“Amendment”), effective as of November 3,1998, by and between Cell Genesys, Inc.,(“Company”), a corporationorganized and existing under the laws of the State of Delaware, having anoffice at 342 Lakeside Drive, Foster City, California 94404, and TheRockefeller University (“Rockefeller”), a nonprofit education corporation organizedand existing under the laws of the State of New York, having an office at 1230York Avenue, New York, New York 10021-6395 (Company and Rockefellercollectively, the “Parties”).

 

**BACKGROUND**

 

TheParties desire to amend that certain Exclusive License Agreement by and betweenCompany and Rockefeller effective as of January 31, 1996 (the “Agreement”)as set forth herein below.

 

**NOW, THEREFORE**, theParties agree as follows:

 

**1.****                                      AMENDMENT.**This Amendment hereby amends the Agreement to incorporate the terms andconditions set forth in this Amendment. The relationship of the Parties shallcontinue to be governed by the terms and conditions of the Agreement, asamended herein; and in the event that there is any conflict between the termsand conditions of the Agreement and this Amendment, the terms and conditions ofthis Amendment shall control. As used in this Amendment, all capitalized termsshall have the meanings defined for such terms in this Amendment or, if notdefined in the Amendment, the meanings defined in the Agreement.

 

**2.****                                      MODIFICATIONTO THE AGREEMENT**.

 

**2.1         **Section 4.6of the Agreement is hereby amended to read in its entirety as follows:

 

“**4.6        Commercial Sublicenses.** It isunderstood and agreed that Company shall have the right, at its sole discretion,to grant Commercial Sublicenses to third parties *{Notdisclosed by Cell Genesys}*. As used herein, “Commercial Sublicense” shall mean Commercial TargetSublicenses and any other sublicense right granted under the LicensedTechnology; provided, however, Commercial Sublicenses shall exclude rightsgranted by Company to a third party pursuant to an agreement substantially inthe form of Exhibit D to this Agreement (i.e., research sublicenses).”

 

**2.2         **TheAgreement is hereby amended to add the following new Section 4.9:

 

“**4.9        Commercial Target Sublicenses.**Subject to the terms and conditions set forth in this Section 4.9 belowand without limiting the provisions of Section 4.6 above or Article 6below, Company shall have the right to grant and authorize Commercial TargetSublicenses to third parties (each such third party, a “Commercial TargetSublicensee”) on terms and conditions as Company deems appropriate in its solediscretion.

 

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**(a)           Milestone and Maintenance Fees.** Inaddition to amounts payable pursuant to Section 4.3 above and inconsideration of Company’s right to grant and authorize Commercial TargetSublicenses pursuant to this Section 4.9 *{Notdisclosed by Cell Genesys}*. Payments due under this Section 4.9(a) shall be due andpayable within sixty (60) days after the calendar quarter in which theMilestone Fee or Maintenance Fee, as applicable, is received by Company *{Not disclosed by Cell Genesys}*.

 

**(b)           Terms.**For purposes of this Section 4.9 the following capitalized terms shallhave the following meanings. “Commercial Target Sublicense” shall mean asublicense under the Licensed Technology that includes the right to conductTarget Validation using the Licensed Technology.  “Target Validation” shall mean the process bywhich the function of nucleotide sequences are identified, determined and/orconfirmed; and/or the function of nucleotide sequences are identified,determined and/or confirmed as being significant in a disease or otherbiological pathway in which pharmacological or other intervention is sought toaffect the function of that pathway. *{Not disclosed by CellGenesys}*.

 

**(c)           Survival.**  Subject to Section 6.4 below, CommercialSublicenses, including Commercial Target Sublicenses, shall survive thetermination of this Agreement, provided that the Commercial Sublicensee orCommercial Target Sublicensee, as the case may be, agrees to be bound by theapplicable terms and conditions of this Agreement.”

 

**3.****                                      ENTIREAGREEMENT**. Together the Agreement (including the Exhibits thereto) and thisAmendment constitute the entire agreement between the Parties in connectionwith the subject matter thereof and supersede all prior and contemporaneousagreements, understandings, negotiations and discussions, whether oral orwritten, of the Parties.

 

**IN WITNESS WHEREOF**,the Parties have executed this Amendment.

 

 
| **CELL GENESYS, INC.** |                         | **THE ROCKEFELLER UNIVERSITY** |
|------------------------|------------------------------|--------------------------------|
|                   |                         |                           |
| By:                    | /s/ Bruce A. Hironaka        |                           |   | By: | /s/ William A. Griesar |
|                   |                         |                           |   |   |   |
| Title:                 | Vice President, Corp. Devel. |                           |   | Title: | Vice President and General Counsel |
|                   |                         |                           |   |   |   |
| Date:                  | November 16, 1998       |                           |   | Date: | 11/3/98 |
|                        |                              |                                |  |  |  |  |  |

 

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**APPENDIX B**

 

**BOSC 23 CELL LINE**

 
| **CGI Docket  Number**         | ** ** | **Application, Patent Number or   Publication  Number** | ** ** | **Filing Data, Grant date, or   Publication Date** | ** ** | **Title/Inventors**                                                                             |
|--------------------------------|------------|--------------------------------------------------------------|------------|---------------------------------------------------------|------------|-------------------------------------------------------------------------------------------------|
| ** **                     | ** ** | ** **                                                   | ** ** | ** **                                              | ** ** | ** **                                                                                      |
| **The Rockefeller University** | ** ** | **PCTWO94/19478 (US application corresponding  to the PCT)** | ** ** | ** **                                              | ** ** | **Production of High Titer Helper-Free  Retroviruses by Transient Transfection  Pear et al.**   |
| ** **                     | ** ** | ** **                                                   | ** ** | ** **                                              | ** ** | ** **                                                                                      |
| **The Rockefeller University** | ** ** | **US 08/693,160**                                            | ** ** | **6/12/96**                                             | ** ** | **Production of High Titer, Helper-Free  Retroviruses by Transient Transfection  Pear, et al.** |

 

**KAT****Ô**

 
| **CGI Docket  Number** | ** ** | **Application, Patent Number or   Publication Number** | ** ** | **Filing Data, Grant date, or   Publication Date** | ** ** | **Title/Inventors**                                                                                                                            |
|------------------------|------------|-------------------------------------------------------------|------------|---------------------------------------------------------|------------|------------------------------------------------------------------------------------------------------------------------------------------------|
| ** **             | ** ** | ** **                                                  | ** ** | ** **                                              | ** ** | ** **                                                                                                                                     |
| **CELL 13.0**          | ** ** | **US 5,834,256  (Patent)**                                  | ** ** | **November 10, 1998**                              | ** ** | **Method for Production of High Titer Virus & High Efficiency  of Retroviral Mediated Transduction of Mammalian Cells  Finer et al.** |
| ** **             | ** ** | ** **                                                  | ** ** | ** **                                              | ** ** | ** **                                                                                                                                     |
| **CELL 13.1**          | ** ** | **US 5,686,279  (Patent)**                                  | ** ** | **November 11, 1997**                              | ** ** | **Method for Production of High Titer Virus & High Efficiency  of Retroviral Mediated Transduction of Mammalian Cells  Finer et al.** |
| ** **             | ** ** | ** **                                                  | ** ** | ** **                                              | ** ** | ** **                                                                                                                                     |
| **CELL 13.1 PCT**      | ** ** | **WO 94/29438**                                             | ** ** | **December 22, 1994**                              | ** ** | **Method for Production of High Titer Virus & High Efficiency  of Retroviral Mediated Transduction of Mammalian Cells  Finer et al.** |
| ** **             | ** ** | ** **                                                  | ** ** | ** **                                              | ** ** | ** **                                                                                                                                     |
| **CELL 13.2**          | ** ** | **US 5,858,740  (Patent)**                                  | ** ** | **January 12, 1999**                               | ** ** | **Method of Production of High Titer Virus & High Efficiency  of Retroviral Mediated Transduction of Mammalian Cells  Finer et al.**  |
| ** **             | ** ** | ** **                                                  | ** ** | ** **                                              | ** ** | ** **                                                                                                                                     |
| **CELL 13.3**          | ** ** | **US 08/517,488**                                           | ** ** | **August 21, 1995**                                | ** ** | **Method for Production of High Titer Virus & High Efficency  of Retroviral Mediated Transduction of Mammalian Cells  Finer et al.**  |

 

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| **CGI Docket Number**                               | ** ** | **Application, Patent Number or   Publication Number** | ** ** | **Filing Data, Grant date, or   Publication Date** | ** ** | **Title/Inventors**                                                                                                                             |
|-----------------------------------------------------|------------|-------------------------------------------------------------|------------|---------------------------------------------------------|------------|-------------------------------------------------------------------------------------------------------------------------------------------------|
| ** **                                          | ** ** | ** **                                                  | ** ** | ** **                                              | ** ** | ** **                                                                                                                                      |
| **CELL 13.3 PCT**                                   | ** ** | **WO 97/07225**                                             | ** ** | **February 21, 1997**                              | ** ** | **Method for Production of High Titer Virus & High Efficiency  of Retroviral Mediated Transduction of Mammalian Cells  Finer et al.**  |
| ** **                                          | ** ** | ** **                                                  | ** ** | ** **                                              | ** ** | ** **                                                                                                                                      |
| **CELL 13.5  (will be dropped if 13.3 is allowed)** | ** ** | **US 09/266,956**                                           | ** ** | **March 11, 1999**                                 | ** ** | **Method for Production of High  Titer Virus & High Efficiency of Retroviral Mediated Transduction of  Mammalian Cells  Finer et al.** |
| ** **                                          | ** ** | ** **                                                  | ** ** | ** **                                              | ** ** | ** **                                                                                                                                      |
| ** **                                          | ** ** | **US 08/914,893**                                           | ** ** | **8/20/97**                                             | ** ** | **Method of Production of High Titer Virus & High Efficiency  of Retroviral Mediated Transduction of Mammalian Cells.  Finer, et al.** |

 

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**APPENDIX C**

 

**RIGEL BIOLOGICAL MATERIALS**

 

**[ * ]** Vectors:

 

**[ * ]**

 

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**APPENDIX D**

 

**NOLAN AND NOLAN/ROTHENBERG PATENTS**

 

U.S. Patent Application No. 08/589,109, entitled “Methods forScreening for Transdominant Effector Peptides and RNA Molecules”  (the Nolan/Rothenberg Patent Application).

 

U.S. Patent Applications Nos. 08/789,333, 08/589,911 and 08/963,368,entitled, “Methods for Screening for Transdominant Intracellular EffectorPeptides and RNA Molecules”  (the NolanPatent Application).

 

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**APPENDIX E**

 

**LICENSE AGREEMENT**

 

**BY AND BETWEEN**

 

**THE BOARD OF TRUSTEES OF THE LELAND STANFORDJUNIOR UNIVERSITY**

 

**AND**

 

**RIGEL PHARMACEUTICALS, INC.**

 

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**APPENDIX E**

**LICENSE AGREEMENT**

 

Effective as of June 1, 1999 (the “Effective Date”),**THE BOARD OF TRUSTEES OF THE LELAND STANFORD JUNIORUNIVERSITY**, a body having corporate powers under the laws of theState of California (“STANFORD”) and **RIGEL PHARMACEUTICALS, INC**.,a Delaware corporation having a principle place of business at 240 EastGrand Avenue, South San Francisco, CA 94080 (“RIGEL”), agree as follows:

 

**RECITALS**

 

**A.           **STANFORDowns certain **[ * ]** cell lines and derivativesthereof and biological components related thereto.

 

**B.           **RIGELdesires to obtain a non-exclusive license to such materials for use in theField, with the right to grant one non-exclusive sublicense to Cell Genesys, Inc.

 

**1.****                                      DEFINITIONS**.

 

**1.1          “CellGenesys”** means Cell Genesys, Inc., a Delawarecorporation, having a principal place of business at 342 Lakeside Drive, FosterCity, CA 94404.

 

**1.2          “Field”**means any and all fields of use, including, without limitation, any research orcommercial field of use.

 

**1.3          “LicensedBiological Materials”**means the materials listed on Exhibit A.

 

**1.4          “LicensedKnow-How”** means:

 

**(a)          **anyand all tangible or intangible know-how, trade secrets, inventions (whether ornot patentable), processes, data, and other information owned by STANFORD as ofthe Effective Date that are necessary or useful for the use of the LicensedBiological Materials; and

 

**(b)          **anymodifications or progeny of the information and materials in subsection (a) abovethat STANFORD may elect to provide to RIGEL at STANFORD’s sole and exclusivediscretion.

 

**1.5          “Patent”**shall mean all foreign and domestic patents (including, without limitation,extensions, reexaminations, reissues, renewals and inventors certificates) andpatents issuing from patent applications (including substitutions,provisionals, divisionals, continuations and continuations-in-part).

 

**2.****                                      GRANT;TRANSFER OF LICENSED BIOLOGICAL MATERIALS**.

 

**2.1         **STANFORDhereby grants, and RIGEL hereby accepts, a worldwide, non-exclusive license(without the right to sublicense except to Cell Genesys in the field of human 

 

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and/or animal gene therapy as provided in Article 8)under STANFORD’s right, title and interest in the Licensed Biological Materialsto conduct research and development and to use the Licensed BiologicalMaterials to make, have made, use, import, offer for sale and sell products inthe Field.

 

**2.2         **STANFORDhereby grants, and RIGEL hereby accepts, a worldwide, non-exclusive license(without the right to sublicense except to Cell Genesys in the field of humanand/or animal gene therapy as provided in Article 8) under STANFORD’sright, title and interest in the Licensed Know-How to use the Licensed Know-Howin the Field.

 

**2.3         **STANFORDshall have the right to use the Licensed Know-How and the Licensed BiologicalMaterials for its own bona fide research, including sponsored research andcollaborations.  In addition, STANFORDshall have the right to distribute the Licensed Biological Materials.

 

**2.4         **Promptlyafter the Effective Date, STANFORD shall transfer to RIGEL such quantities ofthe Licensed Biological Materials as RIGEL shall reasonably request.  Thereafter, STANFORD shall transfer to RIGELsuch additional quantities of Licensed Biological Materials as RIGEL shallreasonably request in the event that RIGEL’s stock of the Licensed BiologicalMaterials is destroyed or contaminated.

 

**3.****                                      LICENSEROYALTIES.**

 

**3.1         **Inpartial consideration for the license granted by STANFORD to RIGEL under Section 2.1,RIGEL agrees to pay to STANFORD the following:

 

**(a)          **Aninitial, nonrefundable license issue royalty of **[ * ]**,which amount shall be paid within thirty (30) days after the Effective Date.

 

**(b)          **Aroyalty payment equal to **[ * ]** on eachof the first three (3) anniversaries of the Effective Date.

 

After the third (3rd) anniversary of theEffective Date, the sublicense shall be considered perpetual and fully paid-up.

 

**3.2         **IfRIGEL grants to Cell Genesys a sublicense under the Licensed BiologicalMaterials to use and sell products in the field of human and/or animal genetherapy, RIGEL shall pay to STANFORD during the term of such sublicense asublicense fee as follows:

 
| Upon signing of the sublicense                                                              |   | $      | **[ * ]**  |
|---------------------------------------------------------------------------------------------|--------|--------|------------|
|                                                                                        |   |   | ** ** |
| On each of the first three (3) anniversaries of  the effective date of such sublicense |   | $      | **[ * ]**  |
|                                                                                        |   |   | ** ** |
| On the 4th, 5th and 6th  anniversaries of the effective date of such sublicense             |   | $      | **[ * ]**  |

 

Afterthe sixth (6th) anniversary of the effective date of suchsublicense, the sublicense shall be considered perpetual and fully paid-up.

 

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**4.****                                      PATENTS;NEW INVENTIONS.**

 

Subject to the terms and conditions of this Agreement, any patentableinventions or discoveries conceived or reduced to practice by the employees,agents or consultants of one party during the course of the Agreement (“SoleInventions”) shall be the property of such party.  Any patentable inventions or discoveriesconceived or reduced to practice jointly by employees, agents or consultants ofSTANFORD and RIGEL as determined in accordance with United States rules ofinventorship (“Joint Inventions”) during the course of and pursuant to thisAgreement shall be owned jointly by STANFORD and RIGEL, each to own anundivided one-half (1/2) interest in such Joint Invention.  Each party shall cooperate with the other incompleting any patent applications relating to Joint Inventions, and inexecuting and delivering any instrument required to assign, convey or transferto such other party its undivided one-half (1/2) interest.

 

**5.****                                      WARRANTIES.**

 

**5.1         **STANFORD’sOffice of Technology Licensing represents and warrants that to the best of itsknowledge as of the Effective Date, STANFORD has not sought or obtained patentprotection of the Licensed Biological Materials or any use thereof in theField.

 

**5.2         **STANFORD’sOffice of Technology Licensing represents and warrants that as of the EffectiveDate, it has no knowledge of claims by third parties that the use of theLicensed Biological Materials infringes any patents, copyrights or other rightsof third parties.

 

**5.3         **STANFORDrepresents and warrants that it has all right, power and authority necessary togrant the licenses set forth in Article 2 to RIGEL.

 

**5.4         **RIGELagrees that nothing in this Agreement grants RIGEL any express or impliedlicense or right under or to:

 

**(a)          **U.S.Patent 4,656,134, entitled “Amplification of Eucaryotic Genes” or any patentapplication corresponding thereto; or

 

**(b)          **U.S.Patent 5,070,012, entitled “Monitoring of Cells and Trans-ActivatingTranscription Elements” or any patent application corresponding thereto; or

 

**(c)          **U.S.Patent 5,804,387, entitled “FACS-Optimized Mutants of the Green FluorescentProtein (GFP) or any patent application corresponding thereto.

 

**5.5         **STANFORDagrees that nothing in this Agreement grants STANFORD any express or impliedlicense or right under or to U.S. Patent Application Nos. 08/789,333,08/589,911, or 08/963,368, entitled “Method for Screening for TransdominantIntracellular Effector Peptides and RNA Molecules,” or any continuations,divisionals or continuation-in-parts thereof or any patents which may issuetherefrom.

 

**5.6         **Exceptas provided in Sections 5.1, 5.2 and 5.3 and as otherwise expressly set forthin this Agreement, nothing in this Agreement will be construed as a warranty or

 

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representation that anything made, used, sold, orotherwise disposed of under any license granted in this Agreement is or will befree from infringement of patents, copyrights, and trademarks of third parties;conferring rights to use in advertising, publicity, or otherwise any trademarkor the name of “STANFORD”; or granting by implication, estoppel, or otherwiseany licenses or rights under patents of STANFORD.

 

**5.7         **EXCEPTAS EXPRESSLY SET FORTH IN THE AGREEMENT, STANFORD MAKES NO REPRESENTATIONS ANDEXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED.  THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OFMERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF THELICENSED BIOLOGICAL MATERIALS OR LICENSED KNOW-HOW WILL NOT INFRINGE ANYPATENT, COPYRIGHT, TRADEMARK, OR OTHER RIGHTS, OR ANY OTHER EXPRESS OR IMPLIEDWARRANTIES.

 

**6.****                                      INDEMNITY.**

 

**6.1         **RIGELagrees to indemnify, hold harmless, and defend STANFORD, UCSF-Stanford HealthCare and Stanford Health Services and their respective trustees, officers,employees, students, and agents against any and all claims by third parties fordeath, illness, personal injury, property damage, and improper businesspractices arising out of the manufacture, use, sale, or other disposition ofthe Licensed Biological Materials or any products arising or derived fromLicensed Biological Materials, by RIGEL or RIGEL’s sublicensee(s) or customers.

 

**6.2         **STANFORDshall not be liable for any indirect, special, consequential or other damageswhatsoever, whether grounded in tort (including negligence), strict liability,contract or otherwise. STANFORD shall not have any responsibilities orliabilities whatsoever with respect to products arising or derived fromLicensed Biological Materials by RIGEL.

 

**6.3         **RIGELshall at all times comply, through insurance or self-insurance, with allstatutory workers’ compensation and employers’ liability requirements coveringany and all employees with respect to activities performed under thisAgreement.

 

**6.4         **Inaddition to the foregoing, RIGEL shall maintain Comprehensive General LiabilityInsurance, including Products Liability Insurance, with reputable andfinancially secure insurance carrier(s) to cover the activities of RIGEL andits sublicensee(s) in the amounts and during the periods specified herein.  Such insurance shall provide minimum limitsof liability of One Million Dollars ($1,000,000) as of the first anniversary ofthe date upon which RIGEL first leases a facility in which it will conductresearch and development activities, and of Five Million Dollars ($5,000,000)as of the commencement of human clinical trials.  Such insurance shall include STANFORD,UCSF-Stanford Health Care and Stanford Health Services, their trustees,directors, officers, employees, students, and agents as additional insureds.Such insurance shall be written to cover claims incurred, discovered,manifested or made during or after the expiration of this Agreement.  At STANFORD’s request, RIGEL shall furnish aCertificate of Insurance evidencing primary coverage and requiring thirty (30)days prior written notice of cancellation or material change to STANFORD. RIGELshall advise STANFORD, in writing, that it maintains excess liability coverage(following form) over primary insurance for at least the minimum limits 

 

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set forth above. All such insurance of RIGEL shall beprimary coverage; insurance of STANFORD, UCSF-Stanford Health Care or StanfordHealth Services shall be excess and noncontributory.

 

**7.****                                      STANFORDNAMES AND MARKS.**

 

RIGEL agrees notto identify STANFORD in any promotional advertising or other promotionalmaterials to be disseminated to the pubic or any portion thereof or to use thename of any STANFORD faculty member, employee, or student or any trademark,service mark, trade name, or symbol of STANFORD, UCSF-Stanford Health Care orStanford Health Services, or that is associated with any of them, withoutSTANFORD’s prior written consent, except as required by law.  STANFORD shall not unreasonably withholdconsent under this Section 7.

 

**8.****                                      SUBLICENSE(S).**

 

**8.1         **Subjectto the provisions of this Article 8, RIGEL may grant a sublicense to thelicense rights granted to RIGEL by STANFORD in Sections 2.1 and 2.2 to CellGenesys solely in the field of human and/or animal gene therapy.

 

**8.2         **Anysublicense granted by RIGEL to Cell Genesys under this Agreement shall besubject and subordinate to terms and conditions of this Agreement, except:

 

**(a)          **Sublicenseterms and conditions shall reflect that any sublicensee(s) shall not grant asublicense to a third party; and

 

**(b)          **Thefinancial obligations of any sublicensee to RIGEL specified in thesublicense(s) may be different from those obligations set forth in thisAgreement.

 

Any such sublicense(s) also shall expressly includethe provisions of Articles 5 and 6 for the benefit of STANFORD and shallsurvive any termination of this Agreement.

 

**8.3         **RIGELagrees to provide STANFORD with a copy (with financial terms redacted) of anysublicense granted to Cell Genesys pursuant to this Article 8 and writtennotice of the effective date of any termination of such sublicense prior to theexpiration of the Term (as defined in Section 9.1).

 

**9.****                                      TERMAND TERMINATION.**

 

**9.1         **Theterm of this Agreement shall commence upon the Effective Date and shall expireupon the later of: (a) the expiration of the last to expire of any Patentsowned by STANFORD at any time which claim inventions in the Licensed BiologicalMaterials or the Licensed Know-How; or (b) twenty (20) years from theEffective Date (the “Term”).  Inaddition, RIGEL may terminate this Agreement prior to the expiration of theTerm by giving STANFORD notice in writing at least thirty (30) days in advanceof the effective termination date selected by RIGEL.

 

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**9.2         **Eitherparty may terminate this Agreement prior to the expiration of the Term if theother party is in material breach of any provision hereof and fails to remedyany such default or breach within thirty (30) days after written notice thereofto the breaching party.

 

**9.3         **Survivingthe expiration of the Term are:

 

**(a)          **Anycause of action or claim of RIGEL or STANFORD, accrued or to accrue, because ofany breach or default by the other party prior to the expiration of the Term;and

 

**(b)          **Articles4, 5, 6, 7 and 11; and

 

**(c)          **Article 8and Sections 2.1 and 2.2; and the licenses granted thereunder shall be deemedperpetual and fully paid-up.

 

**9.4         **Survivingany termination of this Agreement are:

 

**(a)          **Anycause of action or claim of RIGEL or STANFORD, accrued or to accrue, because ofany breach or default by the other party prior to the termination of thisAgreement; and

 

**(b)          **Articles4, 5, 6, 7, 8 and 11 and Section 3.2; and

 

**(c)          **Sections 2.1and 2.2 if RIGEL has fulfilled all of its payment obligations to STANFORD underSection 3.1 prior to such termination; and the licenses granted thereundershall be deemed perpetual and fully paid-up.

 

**10.****                               ASSIGNMENT.**

 

This Agreement may not be assigned by either partywithout the express written consent of the other party, except that RIGEL mayassign the Agreement in connection with a merger, consolidation or sale of allor substantially all of RIGEL’s assets.

 

**11.****                               ARBITRATION.**

 

**11.1       **Anycontroversy arising under or related to this Agreement, and any disputed claimby either party against the other under this Agreement excluding any disputerelating to patent validity or infringement arising under this Agreement, shallbe settled by arbitration in accordance with the Licensing AgreementArbitration Rules of the American Arbitration Association.

 

**11.2       **Uponrequest by either party, arbitration will be by a third party arbitratormutually agreed upon in writing by RIGEL and STANFORD within thirty (30) daysof such arbitration request.  Judgmentupon the award rendered by the arbitrator shall be final and nonappealable andmay be entered in any court having jurisdiction thereof.

 

**11.3       **Theparties shall be entitled to discovery in like manner as if the arbitrationwere a civil suit in the California Superior Court.

 

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**11.4       **Anyarbitration shall be held at Stanford, California, unless the parties hereto mutuallyagree in writing to another place.

 

**12.****                               NOTICES.**

 

All notices under this Agreement shall be deemed tohave been fully given when done in writing and deposited in the United Statesmail registered or certified, and addressed as follows:

 

To STANFORD:                   Officeof Technology Licensing

Stanford University

900 Welch Road, Suite 350

Palo Alto, CA 94304-1850

Attention: Director

 

To RIGEL:                              RigelPharmaceuticals, Inc.

240 East Grand Ave.

South San Francisco, CA 94080

Attention: President

 

Eitherparty may change its address upon written notice to the other party.

 

**13.****                               WAIVER.**

 

None of the terms of this Agreement can be waivedexcept by the written consent of the party waiving compliance.

 

**14.****                               APPLICABLELAW.**

 

This Agreement shall be governed by the laws of theState of California applicable to agreements negotiated, executed and performedwholly within California.  Any claim orcontroversy arising out of or related to this Agreement or any breach hereofshall be submitted to a court of applicable jurisdiction in the State ofCalifornia, and each party hereby consents to the jurisdiction and venue ofsuch court.

 

**15.****                               DISCLAIMEROF AGENCY**.

 

Neither party is, or will be deemed to be, the legalrepresentative or agent of the other, nor shall either party have the right orauthority to assume, create, or incur any third party liability or obligationof any kind, express or implied, against or in the name of or on behalf ofanother except as expressly set forth in this Agreement.

 

**16.****                               SEVERABILITY.**

 

If any provision or provisions of this Agreement shallbe held to be invalid, illegal or unenforceable, the validity, legality andenforceability of the remaining provisions shall not be in any way affected orimpaired thereby.

 

**17.****                               ENTIREAGREEMENT.**

 

This Agreement,together with the Exhibit attached hereto, embodies the entireunderstanding of the parties and shall supersede all previous communications,representations or 

 

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understandings, either oral or written, between the parties relating tothe subject matter hereof.  No amendmentor modification hereof shall be valid or binding upon the parties unless madein writing and signed by duly authorized representatives of both parties.

 

**18.****                               COUNTERPARTS.**

 

This Agreement maybe executed in counterparts, with the same force and effect as if the partieshad executed the same instrument.

 

**INWITNESS WHEREOF**, the parties hereto have executed thisAgreement in duplicate originals by their duly authorized officers orrepresentatives.

 
| **THE BOARD OF TRUSTEES OF THE   LELAND STANFORD JUNIOR UNIVERSITY** |             | **RIGEL PHARMACEUTICALS, INC.** |
|----------------------------------------------------------------------|------------------|---------------------------------|
|                                                                 |             |                            |
|                                                                 |             |                            |   |   |   |
| By:                                                                  | /s/ Katherine Ku |                            |   | By: | /s/ Donald W. Perryman |
| Name:                                                                |             | Katherine Ku                    |   |   | Name: |   | Donald W. Perryman |
| Title:                                                               |             | Director, Technology  Licensing |   |   | Title: |   | VP, Business  Development |
|                                                                 |             |                            |   |   |   |   | June 9,1999 |
|                                                                      |                  |                                 |  |  |  |  |  |  |  |  |  |  |  |

 

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**EXHIBIT A**

 

LICENSED BIOLOGICAL MATERIALS

 

**[ * ]** Vectors:

**[ * ]**

 

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**APPENDIX F**

** **
| **Application, Patent   Number or   Publication Number** | ** ** | **Filing Date, Grant   Date, or Publication  Date** | ** ** | **Title/Inventors** |
|----------------------------------------------------------|------------|-----------------------------------------------------|------------|---------------------|
| **[ * ]**                                                |       | ** **                                          | **[ * ]**  | ** **          | **[ * ]** |
| **[ * ]**                                                |       | ** **                                          | **[ * ]**  | ** **          | **[ * ]** |
| **[ * ]**                                                |       | ** **                                          | **[ * ]**  | ** **          | **[ * ]** |
| **[ * ]**                                                |       | ** **                                          | **[ * ]**  | ** **          | **[ * ]** |
| **[ * ]**                                                |       | ** **                                          | **[ * ]**  | ** **          | **[ * ]** |
| **[ * ]**                                                |       | ** **                                          | **[ * ]**  | ** **          | **[ * ]** |
| **[ * ]**                                                |       | ** **                                          | **[ * ]**  | ** **          | **[ * ]** |
| **[ * ]**                                                |       | ** **                                          | **[ * ]**  | ** **          | **[ * ]** |

 

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**APPENDIX G**

 

**RESEARCH PLAN**

 

**[ * ]**

 

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**APPENDIX H**

 

**LIST OF FTEs**

 

**[ * ]**

**[ * ]**

**[ * ]**

 

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**APPENDIX I**

 

**THIRD PARTY PATENTS**

 

**[ * ]**

 

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