exv10w17



 






Exhibit 10.17




SECOND TECHNOLOGY TRANSFER AGREEMENT




     This Second Technology Transfer Agreement (this “Agreement”) is entered into as of the date
last executed below, by and between Pamela Pierce Palmer, M.D., Ph.D. (“Palmer”) and Omeros Medical
Systems, Inc., a Washington corporation (“Omeros”).



     Palmer, along with Gregory A. Demopulos, M.D. (“Demopulos”), is the inventor of certain
technology relating to methods, compositions and devices for drug delivery, chondroprotection,
inhibition of tumor cell adhesion and invasion, the treatment of urogenital disorders, peripheral
nervous system pain inhibition and rotational analgesia (as further described below, the
“Technology”). Palmer desires to transfer all his right, title and interest in and to the
Technology to Omeros for further research, development and commercialization, and Omeros desires to
obtain ownership of and other rights in the Technology for such purpose.



     For good and valuable consideration, the receipt and sufficiency of such consideration being
hereby acknowledged, the parties agree:



     1. Definitions. The following definitions apply whenever the specified terms are used
in this Agreement or in any attachments to this Agreement:



          a. “Confidential Information” means confidential information relating to the
Technology, now existing or hereafter arising, including without limitation, research,
developments, inventions, technical data, any type of product development, and any and all other
processes, formulae, marketing plans or proposals, customer lists or other customer information,
financial information, or any observations, data, written material, records or documents.
Confidential Information includes any such information whether or not such information was
developed, devised or otherwise created in whole or in part by the efforts of Palmer or Omeros.
Confidential Information shall not include a matter of public knowledge, unless such matter become
public knowledge as a result of unauthorized disclosure to the general public, or the combination
of such matters would amount to Confidential Information. In any dispute over whether information
is Confidential Information for purposes of enforcement of this Agreement, it shall be the burden
of Palmer to show that such contested information is neither confidential nor a Trade Secret.




          b. “Intellectual Property Rights” mean all intellectual property rights arising under
federal, state or common law and relating to the Technology, including without limitation Patent
Rights and Know-How.




          c. “Know-How” means all information, now existing or hereafter acquired, known to
Palmer and related in any way to the Technology, including without limitation, information directly
or indirectly related to any formula, method, procedure, process, composition of matter, design,
material, or other subject matter that contributes in whole or in part to the present or future
commercial development, exploitation, utilization or understanding of the Technology. Know-How
also includes, without limitation, the following: (a) any Confidential Information; (b) any
information relating in any way to the Technology that may result from further research sponsored
in whole or in part by Omeros; and (c) any information relating to the Technology, whether or not
such




 









 







information was developed, devised or otherwise created in whole or in part by the efforts of
Palmer or Omeros and whether or not it is a matter of public knowledge.




          d. “New Invention” means any invention, discovery, concept, idea, information or
improvement, whether or not patentable, that is (i) made, developed or conceived in whole or in
part while Palmer is an employee, agent, officer, director, or shareholder of Omeros, and (ii) is
derived from the Technology.




          e. “Patent Rights” mean the rights of Palmer to any and all inventions included within
the Technology and any matter claimed in or disclosed by any and all present and future letters
patent, pending applications for patents and other legal rights applied for in the name of, by or
granted to Palmer, alone or with another or others, as inventor or co-inventor in any country with
respect to or in connection with the Technology, and any and all divisions, continuations,
continuations-in-part, reissues, substitutions, re-examinations, extensions and renewals arising
therefrom or issuing thereon. Without limiting the generality of the foregoing, Patent Rights
include without limitation, any and all foreign rights related to, derived from, or claiming
priority from U.S. Patent Rights.




          f. “Technology” means that certain technology developed in whole or in part by Palmer
and related to compositions, methods and devices for: (a) the delivery of pharmaceuticals,
including but not limited to drug delivery agents or compositions that enhance the uptake,
retention or effect of anti-inflammatory, analgesic, chondroprotective, anti-spasm, anti-restenotic
and/or other pharmacological agents; (b) the protection of cartilage, including but not limited to
compositions that are injected, irrigated or otherwise applied to anatomic joints to inhibit
cartilage catabolism, promote cartilage anabolism, inhibit inflammation and/or inhibit pain; (c)
the inhibition of tumor cell adhesion and invasion during surgical procedures; (d) the treatment or
prevention of urogenital disorders including but not limited to agents to inhibit spasm,
inflammation, pain and tumor cell adhesion and invasion; (e) rotational analgesia including but not
limited to rotational intrathecal analgesia methods, compositions and administration devices; or
(f) the inhibition or relief of peripheral nervous system pain. Without limiting the generality of
the foregoing, the Technology shall include, without limitation, all related advances or
improvements, whether or not patentable.




          g. “Trade Secrets” mean any and all Confidential Information within the definition of
that term as set forth in RCW Chapter 19.108.




     2. Transfer of Technology



          a. Present Technology. Palmer hereby irrevocably sells, assigns, conveys and
otherwise transfers to Omeros all right, title and interest in and to the Technology, Know-How,
Patent Rights, and other Intellectual Property Rights, which right, title, and interest he now
possess or may hereafter acquire, and hereby confirms all previous assignments granted to Omeros
related to the Technology, Know-How, Patent Rights, and other Intellectual Property Rights. Such
transfer hereby includes, without limitation, all right, title and interest of Palmer in and to the
Patent Rights, and any and all existing records that contain Know-How. In keeping with these
obligations, Palmer has executed Assignments of Patent Rights as attached hereto as Exhibits A-H.
To the extent not already provided to Omeros, Palmer shall identify for Omeros any and all existing
records that




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contain Know-How. Palmer and Omeros jointly shall determine which of such records shall be
delivered to Omeros as originals or as copies, and such records shall be identified and categorized
in writing no later than thirty (30) days after execution of this Agreement. Palmer shall then
transfer and deliver to Omeros all such records that contain Know-How in a form reasonably
understandable by any physician or scientist generally knowledgeable of relevant methods of surgery
or other treatment. Upon such transfer and delivery, such records shall be the property of Omeros
and shall be under Omeros’ exclusive control. Thereafter, on a timely basis, but not less than
quarterly, Palmer shall develop, produce, deliver to Omeros and maintain permanent records, in
writing or otherwise, that set forth Know-How in a form reasonably understandable by any physician
or scientist generally knowledgeable of relevant surgical methods.




          b. Future Developments. Palmer acknowledges that title to any and all New Inventions
shall immediately vest in Omeros. Immediately upon the development of any New Invention, Palmer
shall disclose such New Invention to Omeros in writing. From time to time, Palmer shall execute
such documents as Omeros may reasonably require to evidence assignment to Omeros of all right,
title, and interest in and to such New Inventions.




     3. Covenant Not to Disclose. For a period of at least ten (10) years, Palmer shall
not at any time, without the express prior written consent of Omeros, disclose or otherwise make
known or available to any person, firm, corporation or other entity, or use for their own account,
any Confidential Information. Both Palmer and Omeros shall utilize reasonable procedures to
safeguard Confidential Information, including releasing Confidential Information to employees of
Omeros only on a “need-to-know” basis.



     4. Consideration. The Grant of Options to purchase shares of stock of Omeros issued
to Palmer on December 11, 2001 shall constitute consideration for the transfer of rights described
in Section 2 above, for Palmer’s covenant not to disclose Confidential Information, and for other
covenants and promises made by Palmer hereunder.



     5. Specific Performance. Palmer and Omeros acknowledge that (a) the covenants set
forth in Sections 2 and 3 are essential elements of the transactions contemplated in this
Agreement, that, but for the agreement of the parties to comply with such covenants, neither Palmer
nor Omeros would have entered into such transactions, and that each party has consulted with
counsel and has been advised in all respects concerning the reasonableness of such covenants as to
scope and limit of time; (b) the nonbreaching party will not have any adequate remedy at law if the
other party violates the terms of Section 2 or 3 or fails to perform any of its other obligations
hereunder; and (c) the nonbreaching party shall have the right, in addition to any other rights it
may have, to obtain in any court of competent jurisdiction temporary, preliminary and permanent
injunctive relief to restrain any breach or threatened breach, or otherwise to specifically
enforce, any of such covenants or any other obligations if the breaching party fails to perform any
of its obligations under this Agreement.



     6. Right to Repurchase Technology. In the event that Omeros either (a) files for
liquidation under Chapter 7 of the United States Bankruptcy Act, or (b) undertakes a voluntary
dissolution, liquidation and termination (except in connection with a merger, reorganization,
consolidation or sale of assets), Palmer shall have the right, along with co-inventor Demopulos, to
repurchase the Technology from Omeros for a price equal to the then-current fair market value of
the Technology.



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If the parties are unable to agree upon the fair market value of the Technology within thirty
(30) days after the filing or undertaking described above, then such value shall be established by
the appraisal of a qualified, mutually acceptable independent appraiser. In the event the parties
are unable to agree upon an appraiser within sixty (60) days after the filing or undertaking
described above, then Demopulos and Omeros each shall select an independent appraiser, and the two
appraisers shall select a third independent appraiser. The three appraisers shall conduct such
appraisal proceeding in accordance with the Commercial Arbitration Rules of the American
Arbitration Association as then in effect, and the decisions of the appraisers shall be delivered
to the parties not later than four months after the commencement of such appraisal proceeding. All
such appraisal proceedings shall take place in Seattle, Washington and all results of such
proceedings shall be binding on Palmer and Omeros. All appraisal expenses shall be paid by Palmer.
Palmer’s rights to repurchase the Technology under this Section 6 are subject to the similar
rights of co-inventor Demopulos, with whom Omeros executed an agreement substantially similar
hereto. In the event that both Palmer and Demopulos desire to exercise their respective rights to
repurchase the Technology, those parties shall be responsible for negotiating between themselves
their individual rights and obligations with regard to such transfer, and Palmer and Demopulos
shall exercise their rights jointly in any transaction involving Omeros.




     7. Severability. The invalidity of all or any part of any section of this Agreement
shall not render invalid the remainder of this Agreement or the remainder of such section. If any
provision of this Agreement is so broad as to be unenforceable, such provision shall be interpreted
to be only so broad as is enforceable. Palmer and Omeros agree and stipulate that the covenants
set forth in Sections 2, 3 and 6 are fair and reasonably necessary for the protection of their
protectable interests. In the event a court of competent jurisdiction should decline to enforce
any provision of Sections 2, 3 or 6, Sections 2, 3 or 6 shall be deemed to be modified to the
minimum extent which the court shall find enforceable.



     8. Miscellaneous.



          a. Headings. The headings of the sections and paragraphs of this Agreement are
inserted for convenience only, and shall not control or affect the meaning or construction of any
provisions hereof.




          b. Waiver of Breach. Neither the waiver of any breach of any provision of this
Agreement, nor failure to enforce any provision hereof, shall operate or be construed as a waiver
of any subsequent breach by either party.




          c. Disputes. In any litigation or dispute arising out of this Agreement, the
substantially prevailing party will be entitled to recover, in addition to other relief granted,
all reasonable costs and attorneys’ fees, including such costs and fees on appeal.




          d. Rights Cumulative. The provisions of this Agreement shall not be construed as
limiting any rights or remedies that either party may otherwise have under applicable law.




          e. Governing Law. The rights and obligations under this Agreement shall in all
respects be governed by the laws of the State of Washington. This Agreement is intended to




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supplement and not to supersede the rights of the parties under the Uniform Trade Secrets Act,
as adopted by the State of Washington.




          f. Integration. This Agreement as herein written constitutes the entire understanding
between the parties pertaining to the subject matter contained in it, and supersedes all prior and
contemporaneous agreements, representations and understandings of the parties. It is expressly
understood and agreed that this Agreement may not be altered, amended, modified or otherwise
changed in any respect whatsoever, except by a writing duly executed by the parties. This
Agreement supplements a previous Technology Transfer Agreement executed by Palmer and Omeros dated
June 16, 1994, and nothing in this Agreement shall be interpreted to contravene such previous
Technology Transfer Agreement.




     Wherefore each party has executed this Agreement on the date set forth below to signify
acceptance of all of the above terms and provisions.



	 	 	 	 	 	 	 	 	 	 	 
	OMEROS MEDICAL SYSTEMS, INC.	 	 	 	PAMELA PIERCE PALMER, M.D., Ph.D.	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	By:

	 	/s/ Gregory A. Demopulos
	 	 	 	By:
	 	/s/ Pamela Pierce Palmer	 	 
	 

	 	 

Gregory A. Demopulos, M.D.
	 	 	 	 	 	 

(Signature)
	 	 
	 

	 	Chairman and Chief Executive
Officer	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	Date:

	 	3/12/02 
	 	 	 	Date:
	 	3/22/02
 
	 	 







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