EX-10.49 LICENSE AGREEMENT



 





Exhibit 10.49




LICENSE AGREEMENT




     This License Agreement (“Agreement”) is dated and effective as of the last signature date
below (“Effective Date”), and is made by and between the UNIVERSITY OF GEORGIA RESEARCH FOUNDATION,
INC., a Georgia non-profit corporation, and INHIBITEX, INC., a Delaware corporation.



     In consideration of the mutual covenants and promises contained in this Agreement and
intending to be legally bound, the Parties agree as follows.



CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY ASTERISKS, HAVE BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION, PURSUANT TO RULE 24B-2 UNDER THE
SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.



ARTICLE 1. DEFINITIONS





	1.1.	 	“Affiliate” means any corporation or non-corporate entity that controls, is controlled by, or
is under common control with a Party to this Agreement. A corporation or non-corporate entity
is to be regarded as in control of a corporation if it owns, or directly or indirectly
controls, at least fifty percent (50%) of the voting stock of the other corporation, or (i) in
the absence of the ownership of at least fifty percent (50%) of the voting stock of a
corporation or (ii) in the case of a non-corporate business entity, or non-profit corporation,
if it possesses, directly or indirectly, the power to direct or cause the direction of the
management and policies of such corporation or non-corporate entity, as applicable. For
purposes of this Agreement, an entity can be either an Affiliate or a Sublicensee, but not
both. If an entity meets the definition of “Affiliate,” it shall be treated herein as an
Affiliate for all purposes, even if it has also entered into a Sublicense.
	 
	1.2.	 	“Development Plan” means Licensee’s technology development plan contained in Appendix A, as
may be amended from time to time during the term of this Agreement. Any prior Development
Plan for any Licensed Product that is no longer being pursued by Licensee shall be deleted
from Appendix A.
	 
	1.3.	 	“Field” means any and all anti-viral uses, including but not limited to prophylaxis,
diagnosis or treatment of a condition, infection or disease associated with a virus, except
the Field specifically excludes any anti-viral use associated with (a) the following
DNA virus families:  poxviridae, polyomaviridae, papillomaviridae, adenoviridae, and
parvoviridae; and (b) all RNA viruses except for the following RNA virus families, which are
specifically included in the Field:  retroviridiae (for example HIV as defined below),
flaviviridae (for example HCV as defined below), orthomyxoviridae, paramyxoviridae, and
coronaviridae. In the event that Licensee terminates the Sponsored Research Agreement
(“SRA”), a copy of which is attached as Appendix J, pursuant to paragraph 16(d) of the SRA,
the Field of this License Agreement shall automatically be amended to exclude HCV.










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	1.4.	 	“Indication” shall mean the prevention, treatment or diagnosis of a condition, infection or
disease caused by or associated with a specific virus in the Field. For example “HIV
Indication” means the prevention, treatment or diagnosis of a condition, infection or disease
caused by or associated with Human Immunodeficiency Virus (“HIV”) and “HCV Indication” means
prevention, treatment or diagnosis of a condition, infection or a disease caused by or
associated with Hepatitis C Virus (“HCV”).
	 
	1.5.	 	“Licensed Patents” means (i) the patent applications listed in Appendix B, (ii) the United
States patents that may issue from the patent applications listed in Appendix B and from
divisionals and continuations and continuations-in-part of such United States patents and
patent applications, (iii) all foreign counterparts of such patent applications, and all
patents that issue thereon anywhere in the world, including reexamined and reissued patents.
Licensed Patents shall also mean any patent application having claims in the Field directed to
an invention made in the laboratory of Dr. Vasu Nair six months or less prior to the Effective
date, and (iv) with respect to the matters described in clauses (i), (ii) and (iii) above, all
provisionals, renewals, re-examinations, patents of addition, supplementary protection
certificates, extensions, restorations of patent terms, letters of patent, registration or
confirmation patents and reissues of such patents or patent applications.
	 
	1.6.	 	“Licensed Product” means any compound, product, service, or process in the Field, the
manufacture, use, or sale of which, but for the license granted herein, would infringe at
least one Valid Claim.
	 
	1.7.	 	“Licensee” means Inhibitex, Inc. and its Affiliates.
	 
	1.8.	 	“Net Sales” means the gross amount paid to and received by Licensee as consideration for the
sale of Licensed Product by Licensee to any third party that is not an Affiliate of Licensee,
less the following deductions:






	 	(a).	 	credits actually given for rejected, defective, recalled, or returned Licensed
Product or because of charge backs, refunds, rebates, or retroactive price reductions;
	 
	 	(b).	 	freight and insurance costs and any other outbound transportation charges, if
separately stated on the invoice or purchase order or other document of sale paid by
the customer; and
	 
	 	(c).	 	excise taxes and customs duties included in the invoiced amount;
	 
	 	(d).	 	other taxes (including but not limited to tariffs, duties, excises, sales,
value added, consumption or other taxes) imposed and paid by Licensee in connection
with the production, sale, use, or delivery of Licensed Products; and
	 
	 	(e).	 	customary cash discounts, rebates or charge backs actually granted, allowed,
taken or incurred in connection with the sale of such Licensed Product, or granted or
given to or imposed by governmental authorities and managed care systems (that is,
systems that integrate the financing and delivery of healthcare services to covered
members, including but not limited to, pharmacy benefit managers (PBMs), prescription
drug plans (PDPs), health maintenance organizations (HMOs), preferred provider
organizations (PPOs), independent practice associations (IPAs) and other similar
healthcare organizations), wholesalers and




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other distributors, buying groups, health care insurance carriers, pharmacy benefit
management companies, health maintenance organizations or other institutions or
health care organizations (including, without limitation, any payments in respect of
sales to any governmental authorities or with respect to any government-subsidized
program or managed care organization and any discounts and rebates for any program
for the benefit of low income, uninsured or other patients who receive the
opportunity to receive Licensed Products at discounted prices).




	1.9.	 	“Parties” means UGARF and Licensee. “Party” means UGARF or Licensee.
	 
	1.10.	 	“Patent Expenses” means the actual and documented out of pocket costs paid to third parties
by UGARF in prosecuting and maintaining the Licensed Patents.
	 
	1.11.	 	“Sublicense” means a grant of all or part of the rights to Licensed Patents that are granted
to Licensee by this Agreement, made by (a) Licensee; (b) a person or entity that has licensed
such rights from Licensee; or (c) a person or entity that has received such rights from a
person or entity that licensed such rights from Licensee.
	 
	1.12.	 	“Sublicensee” means any person or entity entering into a Sublicense.
	 
	1.13.	 	“Territory” means the world.
	 
	1.14.	 	“UGA” means the University of Georgia, a public institution of higher education within the
University System of Georgia.
	 
	1.15.	 	“UGARF” means the University of Georgia Research Foundation, Inc., an independent Georgia
non-profit corporation governed by a board of directors separate from the Board of Regents of
the University System of Georgia. The non-profit mission of UGARF includes supporting
research and educational goals of UGA. UGA is not an Affiliate of UGARF.
	 
	1.16.	 	“Valid Claim” means a claim in an unexpired patent or patent application included in the
Licensed Patents, so long as such claim shall not have been irrevocably abandoned or held
invalid in an unappealed or unappealable decision of a court or other authority of competent
jurisdiction.





ARTICLE 2. GRANT OF LICENSE AND OPTION





	2.1.	 	Grant. Subject to the reservations in this Article and payment obligations in Article 3,
UGARF grants to Licensee the exclusive right and license to make, have made, use, import,
offer for sale, and sell in the Territory, Licensed Products during the term of this Agreement
including Licensee’s right to grant sublicenses pursuant to paragraph 2.3. In no event shall
this grant take effect until Licensee has paid and delivered to UGARF the initial license
payments and certificates of stock described in paragraph 3.1.
	 
	2.2.	 	Reservation of Rights.






	 	(a).	 	The license granted in paragraph 2.1 is subject to a reserved, non-exclusive
license of UGARF, transferable to UGA and its not-for-profit academic collaborators, to
practice the Licensed Patents in the Field, only for the purpose of non-commercial
scientific inquiry, academic research, and education. This





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	 	 	 	reservation does not extend to any research funded by any non-governmental,
non-academic or for profit entity. Any materials sent to UGA, and any materials
sent by UGA to a not-for-profit academic collaborator outside of UGA for use in the
Field will be sent using a material transfer agreement that includes customary
restrictions on use and non-disclosure.
	 
	 	(b).	 	The inventions contained in the Licensed Patents were conceived by employees of
UGA with the use of research funding from the U.S. National Institutes of Health.
Therefore, there is reserved from the rights granted hereunder the rights of the U.S.
government to practice and exercise all rights to the Licensed Patents under 37 C.F.R.
§ 401 et seq. UGARF shall promptly notify Licensee in writing when
UGARF becomes aware of any such practice or exercise, or intent to such practice or
exercise, by the U.S. government.






	2.3.	 	Sublicenses. Licensee may grant sublicenses of any and all rights granted to Licensee
herein, and Licensee may authorize its sublicensees to grant sub-sublicenses. Such
Sublicenses shall not contain terms and conditions that conflict with those included in this
Agreement. Licensee shall provide to UGARF a complete copy of all Sublicenses within thirty
(30) days after execution. UGARF shall treat the existence, terms and conditions of such
Sublicenses as the Confidential Information of Licensee and, if requested, shall sign a
non-disclosure agreement with Sublicensee.






	 	(a).	 	Licensee shall remain fully responsible for the operations of Sublicensees that
are relevant to this Agreement as if such operations were carried out by Licensee.
Licensee is responsible for payments owed to UGARF and triggered by activities of
Sublicensees such as development milestone payments (Appendix F).
	 
	 	(b).	 	No fees are owed directly to UGARF by a Sublicensee as a result of entering
into a Sublicense.
	 
	 	(c).	 	Licensee shall include, or shall cause to be included, in all Sublicenses a
provision requiring the Sublicensee to indemnify UGARF and maintain insurance coverage
to the same extent that Licensee is so required under this Agreement, and a provision
granting UGARF the right to audit Sublicensee to the same extent that UGARF may audit
Licensee hereunder.
	 
	 	(d).	 	Upon termination of this Agreement, and provided that a Sublicensee is in
compliance (or promptly cures any non-compliance) in all material respects with the
terms of its Sublicense on the date of termination, upon request by a Sublicensee,
UGARF shall grant such Sublicensee a license to Licensed Patents having the same
material terms as this Agreement, as may have been amended by the Parties. Except as
set forth in this paragraph 2.3(d), in no event does UGARF have any obligations to a
Sublicensee whatsoever with respect to (i) any past, current, or future obligations
Licensee may have had, or may in the future have pursuant to such Sublicense, and (ii)
any future obligations to Sublicensee beyond those to Licensee in this Agreement.






	2.4.	 	No Other Obligations. Except as expressly stated in this Agreement, none of UGARF, UGA,
their faculty, staff, employees, or students are obligated to report or deliver to Licensee or
its Sublicensees under this Agreement any compounds, derivatives, technical




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	 	 	information, know-how, data, or other tangible materials of any kind related to the Licensed
Patents.
	 
	2.5.	 	No Implied License. The license and rights granted in this Agreement do not confer any
rights upon Licensee as to any patents, technology, or compounds not specifically identified
in this Agreement as part of Licensed Patents.





ARTICLE 3. CONSIDERATION





	3.1.	 	Initial License Payments and Requirements. The grant of rights and license to the Licensed
Patents set out in paragraphs 2.1 and 2.3 shall only become effective after Licensee has met
the following pre-conditions:






	 	(a).	 	Licensee shall, on the Effective Date, pay UGARF a non-refundable, up-front,
one-time licensing fee in the amount of seven hundred fifty thousand dollars
($750,000); and
	 
	 	(b).	 	Licensee shall, within fifteen (15) business days of the Effective Date, issue
and deliver certificate shares of Licensee common stock to UGARF having a total market
value of three hundred thousand dollars ($300,000) as provided for in paragraph 3.2
below; provided, however, that Licensee shall issue a portion of such shares directly
to the inventors named in the Licensed Patents only as UGARF may direct on or before
the Effective Date; and
	 
	 	(c).	 	Licensee shall, on the Effective Date, execute the sponsored research agreement
(“SRA”) with UGARF attached hereto as Appendix J, and pay any amounts that are due on
the Effective Date pursuant to the SRA.






	3.2.	 	Share Value. The number of shares delivered under paragraph 3.1(b) will be determined by
dividing the total market value as provided for in such paragraphs by the average of the
closing price per share of the Licensee’s common stock as reported on NASDAQ for the five (5)
trading days prior to the Effective Date.
	 
	3.3.	 	Royalty for Sales by Licensee. For sales of Licensed Products by Licensee (but not for sales
by a Sublicensee), an Affiliate of Licensee, or an assignee of Licensee’s rights and
obligations under this Agreement, UGARF shall be paid the following royalties:






	 	(a).	 	Royalty. Licensee shall pay UGARF a royalty of [ * * * ] on the total Net
Sales of Licensed Products sold by Licensee, an Affiliate of Licensee, or an assignee
of Licensee’s rights and obligations under this Agreement; provided that if no Valid
Claim in a given country would be infringed by any such sale but for the license
granted herein, then no royalty is owed on any such sales of Licensed Products in such
country. Only one royalty shall be paid to UGARF per Licensed Product regardless of
the number of Licensed Patents that would be infringed by the Licensed Product absent
the license granted herein. Further, only one Net Sale of a given Licensed Product
shall be subject to a royalty payment regardless of how many arms length transactions
may occur between manufacture of the Licensed Product and purchase by the final end
user, in which case the royalty paid to UGARF will be based upon the first arms length
transaction between Licensee and any third party that is not an Affiliate of Licensee.
The royalty owed under





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	 	 	 	this Section 3.3(a) shall be increased from [ * * * ] to[ * * * ] upon any Net Sales
in a given year above total Net Sales for such year of [ * * * ], but in all cases
the royalty rate on the first [ * * * ]of Net Sales in a given year shall be [ * * *
].
	 
	 	(b).	 	Calculation of Royalties. If Licensee’s manufacture, offer for sale or sale of
a Licensed Product would infringe rights of a third party but for a license, then
Licensee may reduce the royalty percentage owed to UGARF on Net Sales of such Licensed
Product under Section 3.3(a) by any reasonable royalty or other amounts actually paid
to such third party by Licensee on such sale of Licensed Product for such license, but
under no circumstances may Licensee reduce such royalty percentage to less than [ * * *
] under paragraph 3.3(a) (no less than [ * * * ] or [ * * * ], as applicable).
	 
	 	(c).	 	Increased Royalty Rate. In the event that Licensee files or otherwise
initiates any proceeding against UGARF in any country (the “Challenge Litigation”) in
which it asserts that any one or more of the Licensed Patents is invalid, then,
effective as of the calendar quarter in which such proceeding is initiated and solely
with respect to Net Sales in such country of Challenge Litigation, (i) the royalty
percentage under paragraph 3.3(a) will [ * * * ] (to [ * * * ] or to [ * * * ], as
applicable); and (ii) the minimum royalty percentage under paragraph 3.3(b) will [ * *
* ] (to [ * * * ] or [ * * * ], as applicable). In the event that the outcome of such
proceeding affirms the validity of the Licensed Patents, whether through order,
judgment, or other determination, then, effective as of the calendar quarter in which
such order, judgment, or other determination is effective and solely with respect to
Net Sales in such country in which such Challenge Litigation is initiated, (i) the
royalty percentage applicable to paragraph 3.4(a) will remain at the [ * * * ] or [ * *
* ], as applicable); and (ii) the minimum royalty percentage applicable to paragraph
3.4(b) will remain at the [ * * * ] or [ * * * ], as applicable).
	 
	 	(d).	 	Combination Product Royalties. A Combination Product means any pharmaceutical
product which consists of both: (i) a Licensed Product; and (ii) one or more active
compounds for use in the Field, which compounds are not Licensed Products. In the
event a Licensed Product is sold as part of a Combination Product in a given country,
the Net Sales from the Combination Product, for the purposes of determining royalty
payments due under paragraph 3.3.(a) in such country, shall be determined by
multiplying the Net Sales of the Combination Product, during the applicable royalty
reporting period, by the fraction, A/(A+B), where A is the average net sales price of
the Licensed Product in the Combination Product when sold separately in finished form
and B is the average net sales price of the other active compounds used in such
Combination Product when sold separately in finished form, in each case during the
applicable royalty reporting period or, if sales of both the Licensed Product in the
Combination Product and any of the other active compound(s) did not each occur
separately in such period, then in the most recent royalty reporting period in which
sales of all or both occurred. In the event of any disagreement as to the
applicability of this Section 3.3(d) to a given Licensed Product or as to the net sales
price in a Combination Product, then these disputes shall be resolved by a










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	 	 	 	three member panel of qualified independent third parties, one chosen by each Party
and the third chosen by the first two panel members. The determination of the panel
shall be made within twenty (20) business days following written submissions by the
Parties and a one day oral hearing. The Parties shall pay their own costs and
expenses, including but not limited to attorney’s fees and expert fees, associated
with the use of the panel, and shall share equally the costs and expenses charged by
the panel members themselves. The determination of the panel shall be final and
binding on the Parties.
	 
	 	(e).	 	Notwithstanding the foregoing, whether through agreement between the Parties or
through decision by the panel, the royalty due to UGARF on sales of Combination
Products shall not be less than [ * * * ] the royalty percentage under paragraph 3.3(a)
[ * * * ] or [ * * * ], as applicable) of Net Sales of the Combination Products as
determined by applying the definition of Net Sales found in paragraph 1.8 to the total
sales price of each Combination Product.






	3.4.	 	Royalty for Sales by Sublicensee. Royalties received by Licensee from a Sublicensee are
subject to paragraph 3.7 and are included in the definition of “Sublicense Payment” in
Appendix E.
	 
	3.5.	 	Annual Minimum Royalties.






	 	(a).	 	For Sales by Licensee. For sales by Licensee, an Affiliate of Licensee, or an
assignee of Licensee’s rights and obligations under this Agreement, Licensee shall pay
to UGARF the amounts identified in Appendix C. If applicable, any annual minimum
royalty payment shall be made within sixty (60) days of the end of each respective
calendar year. If this Agreement terminates for any reason during a year, a pro-rated
annual minimum royalty, if applicable, shall be paid for each Indication. The annual
minimum royalty paid to UGARF shall not exceed the amounts listed in Appendix C
regardless of the number of Licensed Patents.
	 
	 	(b).	 	For Sales by Sublicensee. Annual minimum royalty payments, if any, received by
Licensee from a Sublicensee are subject to paragraph 3.7 and are included in the
definition of “Sublicense Payments” in Appendix E.






	3.6.	 	Annual License Maintenance Fees. Licensee shall pay to UGARF an annual license maintenance
fee as set forth in Appendix D no later than thirty (30) days after each anniversary of the
Effective Date; provided, however that Licensee’s obligation to pay an annual license
maintenance fee shall cease in the first calendar year following the first sale of any
Licensed Product. Only one annual license maintenance fee is due to UGARF by Licensee in any
calendar year regardless of the number of patents within the Licensed Patents, and regardless
of the number of Sublicensees.
	 
	3.7.	 	Sublicense Fees. In addition to other payments required under this Article 3, in the event
that one or more Sublicenses are granted, Licensee agrees to pay UGARF Sublicense Fees as set
forth and defined in Appendix E. Sublicense Fees are only due if and when Sublicense Payments
are actually received by Licensee from a Sublicensee; provided however, in any calendar year
following the calendar year of the first sale of Licensed Product by a Sublicensee in which
Licensee has no sales of Licensed Product, then the combined total of all Sublicensee Fees
paid to UGARF by Licensee for such calendar





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	 	 	year for all Licensed Products and Indications shall not be less than [ * * * ] irrespective
of any amounts actually received by Licensee from Sublicensees. If owed, this fee shall be
due to UGARF sixty (60) days after the end of the calendar year.
	 
	3.8.	 	Milestone Payments. Licensee shall notify UGARF of the occurrence of a milestone event
within thirty (30) days of Licensee’s knowledge of such event, but in no event later than
ninety (90) days after its occurrence. Licensee shall make milestone payments to UGARF as set
forth in Appendix F. Each milestone payment is owed whether the milestone is achieved by
Licensee or by a Sublicensee, and payment shall be made within sixty (60) days after
Licensee’s notice of each milestone event.
	 
	3.9.	 	Reimbursement for Patent Expenses. Licensee shall reimburse UGARF for all un-reimbursed
Patent Expenses incurred before the Effective Date. Thereafter, Licensee shall reimburse
UGARF for all un-reimbursed Patent Expenses incurred for each patent or patent application
within the Licensed Patents for which Licensee is the only licensee of UGARF (excluding
Sublicensees). For Licensed Patents where there are one or more additional licensees of UGARF
other than Licensee (excluding Sublicensees), Licensee shall reimburse UGARF a pro rata share
of Patent Expenses based upon the number of aggregate licensees; for example, Licensee would
reimburse UGARF for [ * * * ] of Patent Expenses incurred for a Licensed Patent having one
other, third party licensee of UGARF (excluding Sublicensees). If UGARF is reimbursed by a
third party licensee for Patent Expenses incurred prior to the date of the third party
license, and those Patent Expenses have already been reimbursed to UGARF by Licensee
(“duplicate reimbursement”), then UGARF shall pay [ * * * ] of such duplicate reimbursement to
Licensee. As used herein, un-reimbursed Patent Expenses shall mean UGARF has not received,
and has no right to receive, reimbursement of such expenses from any third party. UGARF shall
invoice Licensee for reimbursement of Patent Expenses, and Licensee shall remit payment to
UGARF within thirty (30) days of the invoice date.
	 
	3.10.	 	Taxes. UGARF shall not be responsible to pay any taxes, customs, or other governmental
charges or levies (“Taxes”) imposed, charged or levied on sales of Licensed Products by
Licensee or Sublicensee. Nevertheless, any Taxes paid by Licensee or Sublicensees shall be
taken into account in calculating Net Sales. If any Taxes are imposed upon UGARF in
connection with the sale of Licensed Products, Licensee shall pay such Taxes, except that
UGARF shall be responsible for payment of any taxes (including but not limited to income
taxes) imposed, charged or levied on it as a result of its role as licensor and the recipient
of income in the form of royalty payments and any other payments made to it hereunder.





ARTICLE 4. REPORTS AND AUDITS





	4.1.	 	Progress Reports. Within sixty (60) days of each calendar year end, Licensee shall provide
UGARF with a written report detailing the current status of the Licensee and Sublicensees
toward meeting the objectives of the Development Plan.
	 
	4.2.	 	Payment Reports. During the term of this Agreement, Licensee shall furnish, or cause to be
furnished, written reports to UGARF regarding Net Sales of Licensed Products, Sublicensee
Fees, and all other payments due to UGARF, that include all applicable information identified
in Appendix G. Licensee shall provide these reports within sixty




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	 	 	(60) days of the end of each calendar quarter following the first sale of Licensed Products.
	 
	4.3.	 	Report of First Sale. Licensee shall make written notice to UGARF of the date of the first
arm’s length commercial sale for consideration of each Separate and Distinct (as defined in
Appendix C) Licensed Product within sixty (60) days of such sale, whether such sale is made by
Licensee or by a Sublicensee.
	 
	4.4.	 	Audit. Licensee shall keep, and shall cause Sublicensees to keep, accurate records in
sufficient detail such that the amount of any payment due and payable to UGARF may be
verified. During the term of this Agreement and for a period of one year thereafter, Licensee
shall permit UGARF or its qualified representatives no more than once per calendar year to
inspect, copy, and audit its books and records with respect only to payments due under this
Agreement, upon reasonable notice and during normal business hours. Such books and records
include, but are not limited to, invoice registers and original invoices; product sales
reports; price lists, sales ledgers; accounting general ledgers; sublicense and distributor
agreements; price lists; product catalogues and marketing materials; financial statements and
income tax returns; sales tax returns; and inventory and production records and shipping
documents. Such examination shall be made at UGARF’s expense. If such examination determines
an underpayment of [ * * * ] or more in the amount of royalty or other payments due UGARF for
any year, then Licensee shall reimburse UGARF for reasonable out of pocket costs associated
with such examination or audit, including any professional fees. Conversely, if such
examination determines an overpayment was made by Licensee, such overpayments will be refunded
or credited against future amounts owed by Licensee. No separate confidentiality agreement
will be required between the Parties to conduct such an examination or audit so long as any
representatives of UGARF agree to be bound by confidentiality terms no less restrictive than
those set forth in Article 10 herein, and the results of the audit shall be treated as
Licensee’s Confidential Information. The Parties agree that UGARF or its representative may
keep a copy of all documents provided by Licensee hereunder and all documents created by UGARF
or its representative in connection with such examination or audit for archival purposes.





ARTICLE 5. PAYMENTS





	5.1.	 	Payments and Due Dates. Licensee shall pay to UGARF all payments attributable to the period
covered by each payment report under paragraph 4.2 on the date such payment report is due.
All other payments, if not otherwise specified in this Agreement, shall be paid within thirty
(30) days after the due date. All payments shall be made by wire transfer to an account
designated by UGARF, or in person, via U.S. mail or by commercial carrier to Technology
Commercialization Office, University of Georgia Research Foundation, Inc., Boyd Graduate
Studies Research Center, Athens, GA 30602-7411. Royalty reports shall be faxed or sent by
email or express courier to the Director, Technology Commercialization Office on the same
date.
	 
	5.2.	 	Currency Conversion. All payments shall be paid in U.S. dollars. If any Licensed Products
are sold for consideration other than dollars, the Net Sales of such Licensed





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	 	 	Products shall first be determined in the currency of the country in which such sales of
Licensed Products were made and then converted to dollars at a ninety (90) day trailing
average published by the Wall Street Journal (U.S. ed.) for conversion of the foreign
currency into dollars on the last day of the quarter for which such payment is due.
	 
	5.3.	 	Overdue Payments. Overdue payments shall bear simple interest until paid at the lower of (i)
the annual rate of ten percent (10%) or (ii) the highest rate permitted by law. Any payment
not made due to a bona fide dispute between the Parties shall not be considered an overdue
payment until such dispute is resolved.
	 
	5.4.	 	Termination Report and Payment. Within sixty (60) days after the date of termination or
expiration of this Agreement, Licensee shall make a final report and payment to UGARF per
Articles 4 and 5, respectively, except that if Licensee continues to sell Licensed Products
after termination pursuant to paragraph 11.4, then Licensee shall continue to make payments
and reports as required by this Agreement through the period of continued sales, and shall
make a final report and payment to UGARF within sixty (60) days of the last date of continued
sales. Licensee shall reimburse UGARF for all Patent Expenses, as set forth in paragraph 3.8,
incurred by UGARF (i) through the effective date of termination; or (ii) through the period of
Licensee’s sales, if Licensee continues to make sales of Licensed Product after the effective
date of termination pursuant to paragraph 11.4.
	 
	5.5.	 	No Refunds or Credits. All amounts paid to UGARF by Licensee pursuant to paragraphs 3.1, 3.6
and 3.8 shall be non-refundable. Any amounts paid to UGARF pursuant paragraphs 3.3, 3.4, 3.5,
3.7, or 3.9 in error or subject to correction shall be refunded or credited against future
payments by Licensee.





ARTICLE 6. COMMERCIAL DILIGENCE, MILESTONES,




AND DEVELOPMENT PLANS





	6.1	 	Commercial Diligence. Licensee shall meet the obligations of paragraphs 6.2 and 6.3 and
shall otherwise use commercially reasonable efforts, directly or through Sublicensees, to
bring one or more Licensed Products to market. Sublicensee’s performance of any Licensee
obligations under this Agreement will be deemed performance by Licensee, and commercial
efforts by a Sublicensee will be deemed commercial efforts of Licensee.
	 
	6.2	 	Development Plans and Milestone Dates. At no time during the term of this Agreement will
there be a period greater than [ * * * ] in which Licensee (or at least one Sublicensee) is
not pursuing development of a Licensed Product pursuant to a Development Plan submitted to
UGARF, or at least one Licensed Product is not on the market.






	 	(a).	 	[ * * * ] and [ * * * ] for HIV Indication. As of the Effective Date, Appendix
A sets forth Licensee’s Development Plan for compounds [ * * * ] and [ * * * ] for the
HIV Indication. Subject to the extension provisions of paragraph 6.3 below, for at
least one of either [ * * * ] or [ * * * ], Licensee shall initiate a [ * * * ] within
[ * * * ] of the Effective Date, a [ * * * ] within [ * * * ] of the Effective




10









 












	 	 	 	Date, and a [ * * * ] within [ * * * ] of the Effective Date.
	 
	 	(b).	 	HIV Indication Other Than [ * * * ] and [ * * * ]. Within [ * * * ]after
submitting an Investigational New Drug application (“IND”) to the U.S. Food and Drug
Administration (or a like application to a like agency in any other country) for a HIV
Indication Licensed Product other than [ * * * ] or [ * * * ], Licensee shall provide
to UGARF a Development Plan setting forth Licensee’s planned development efforts for
such Licensed Product. Subject to the extension provisions of paragraph 6.3 below,
Licensee shall initiate a [ * * * ] for the Licensed Product within [ * * * ] of the
date of such IND, a [ * * * ] within [ * * * ] of the date of such IND, and a [ * * * ]
within [ * * * ] of the date of such IND. The Development Plan shall be incorporated
into Appendix A and made part of this Agreement. Any prior Development Plan for
compounds that are no longer being pursued by Licensee shall be deleted from Appendix
A.
	 
	 	(c).	 	HCV Indication. Subject to the extension provisions of paragraph 6.3 below,
Licensee shall initiate a [ * * * ] within [ * * * ] of the Effective Date, [ * * * ]
within [ * * * ] of the Effective Date, and [ * * * ] within [ * * * ] of the Effective
Date for a HCV Indication Licensed Product. Within [ * * * ] after submitting an IND
to the U.S. Food and Drug Administration (or a like application to a like agency in any
other country) for a HCV Indication Licensed Product, Licensee shall provide to UGARF a
Development Plan setting forth Licensee’s planned development efforts for such Licensed
Product. The Development Plan shall be incorporated into Appendix A and made part of
this Agreement. Any prior Development Plan for a HCV Indication that is no longer
being pursued by Licensee shall be deleted from Appendix A.
	 
	 	(d).	 	Indications Other Than HIV and HCV. During the term of this Agreement,
Licensee may initiate development of one or more Licensed Products for an Indication
other than HIV or HCV (“Other Indication”). If so, within [ * * * ] after submitting
an IND to the U.S. Food and Drug Administration (or a like application to a like agency
in any other country) for an Other Indication Licensed Product, Licensee shall provide
to UGARF a Development Plan setting forth Licensee’s planned development efforts for
such Licensed Product. Subject to the extension provisions of paragraph 6.3, for each
Other Indication Licensed Product for which Licensee submits a Development Plan,
Licensee shall initiate a [ * * * ] within [ * * * ] of the date of such Development
Plan, a [ * * * ] within [ * * * ] of the date of such Development Plan, and a [ * * *
] within [ * * * ] of the date of such Development Plan. Any Other Indication for
which Licensee has not submitted a Licensed Product Development Plan within [ * * * ]
of the Effective Date shall automatically be excluded from the Field of this License
Agreement.






	6.3	 	Diligence Dates and Extensions. No later than 30 days after the due date for a development
diligence milestone event listed in paragraph 6.2, Licensee may purchase an extension of time
to achieve the milestone at the rate of [ * * * ] per Indication, for up to a maximum of [ * *
* ] extension years per Indication, which extension years need not be




11









 












	 	 	exercised immediately following one another. Each such extension will only become effective
upon Licensee’s payment to UGARF of the [ * * * ] extension fee. If Licensee elects not to
purchase an extension or one is not available, then: (i) in the case of 6.2(a) the rights
to [ * * * ] and [ * * * ] shall revert to UGARF; (ii) in the case of 6.2(b) the rights to
the HIV Indication Other Than [ * * * ] and [ * * * ] shall automatically be excluded from
the Field of this License; and (iii) in the case of 6.2(c) the rights to the HCV Indication
shall automatically be excluded from the Field of this License; and (iv) in the case of
6.2(d) the rights to each given Other Indication shall revert to UGARF and automatically be
excluded from the Field of this License.
	 
	6.4	 	Sublicense Performance. Licensee shall incorporate, or shall cause to be incorporated, into
any Sublicense an obligation to use commercially reasonable efforts (per customary terms and
conditions for sublicenses of that type) to bring a Licensed Product to market. A
Sublicensee’s performance of any obligations under this Agreement will be deemed performance
by Licensee.





ARTICLE 7. PATENT PROSECUTION AND MAINTENANCE





	7.1.	 	Patent Prosecution and Maintenance. UGARF shall be primarily responsible for prosecuting and
maintaining the Licensed Patents using patent counsel reasonably acceptable to both Parties.
As of the Effective Date, Henry D. Coleman is acceptable patent counsel to both Parties.
UGARF shall use reasonable efforts to assure that the inventors on the Licensed Patents meet
their obligations of disclosure to the U.S. Patent Office. The Parties shall enter into a
joint representation agreement so that both may communicate freely with patent counsel without
waiving the work product or attorney client privilege. UGARF shall promptly provide Licensee
with copies of all filings and correspondence pertaining to patent prosecution and maintenance
activities so as to give Licensee reasonable opportunities to advise and cooperate with UGARF
and review and comment on such patent applications and prosecution documents. UGARF shall
consult with Licensee as to the preparation, filing, prosecution, and maintenance of all
Licensed Patents reasonably prior to any deadline or action with the United States Patent &
Trademark Office or any foreign patent office. Licensee and UGARF agree to cooperate with
each other during the patent application and prosecution process. Licensee shall notify UGARF
in writing of the countries in which Licensee wishes patent applications to be filed,
including but not limited to national phase filings and registrations in countries from
regional filings. UGARF shall file such additional applications. UGARF may, at its own
expense, file patent applications in those countries in which Licensee elects not to file.
Applications filed in non-elected countries will be excluded from the Licensed Patents; and
the expenses therefore shall not be reimbursed by Licensee. By ninety (90) days prior written
notice at any time during the term, Licensee may advise UGARF that it no longer will reimburse
the Patent Expenses on one or more Licensed Patents in a particular country. Expenses
incurred by UGARF ninety (90) days or more after Licensee’s written notice shall not be
reimbursed by Licensee. UGARF may elect to continue prosecution and maintenance at its own
expense or permit Licensed Patents in such countries to be abandoned or lapse. If UGARF
elects to continue, Licensed Patents in such countries shall be removed from Licensed Patents.




12









 












	7.2.	 	Interferences. UGARF will give Licensee prompt written notice upon the declaration of any
interference involving the Licensed Patents. The Parties shall cooperate in the interference
proceeding using counsel acceptable to both Parties unless there is a Sublicense, in which
case the counsel shall be chosen by the Sublicensee. In the absence of a Sublicense, fees and
costs incurred in connection with the interference shall be deemed to be Patent Expenses and
shall be reimbursed as provided herein. Licensee may terminate its obligation to reimburse
for interference expenses upon ninety (90) days written notice, and the claims or patent at
issue shall be removed from the Licensed Patents in the geographic territory governed by the
interference proceeding.
	 
	7.3.	 	Patent Extension. Upon Licensee’s request and at Licensee’s pro rata expense (as determined
by the ratio of 1 to the number of other licensees (excluding Sublicensees) to the applicable
Licensed Patent), UGARF shall apply to the patent office of a given country to have the normal
term of any Licensed Patent extended or restored under a country’s procedure for extending a
patent term where such extension relates to duration of patent prosecution of such patent
application. Licensee shall assist UGARF in its efforts to obtain such extension. If
extended, Licensee shall be obligated to make all payments due under this Agreement through
the end of the extended patent term. If after written notice Licensee affirmatively elects
not to extend, UGARF may at its own expense obtain such extension, and the license to the
non-elected extended Licensed Patent under this Agreement will expire upon expiration of the
natural patent term. No other type of extension of the term of patent rights or exclusive
marketing rights shall be sought by UGARF or any licensee of UGARF except with the prior
written consent of Licensee, which consent shall not be unreasonably withheld.





ARTICLE 8. REPRESENTATIONS, WARRANTIES, DISCLAIMER,

LIMITATION OF LIABILITY, INDEMNIFICATION, AND INSURANCE





	8.1.	 	UGARF Representations. Licensee relies on the following representations of UGARF in entering
into this Agreement. UGARF represents that as of the Effective Date:






	 	(a).	 	all of the patent applications listed in Appendix B are owned by UGARF;
	 
	 	(b).	 	UGARF has not granted any rights in claimed subject matter of the Licensed
Patents in the Field to a third party, other than the rights reserved in the UGARF,
transferable to UGA, set out in paragraph 2.2(a), and the rights in the U.S. government
set out in paragraph 2.2(b);
	 
	 	(c).	 	other than those listed in Appendix B, UGARF does not own or has not
in-licensed under any patents or applications relating to the use of uracil and
pyridinone nucleobase scaffolds in compounds;
	 
	 	(d).	 	to the best of UGARF’s knowledge, the issued patents or allowed claims in
Appendix B hereto are valid and enforceable, and UGARF is not aware of any information
that would render such patents invalid or unenforceable. UGARF










13









 












	 	 	 	further represents that it has not received any notice that any issued patent or
allowed claim in the Licensed Patents is invalid or unenforceable;
	 
	 	(e).	 	UGARF has not received notice that a product or process of a third party is
alleged to infringe any issued patent or allowed claim in the Licensed Patents, and
UGARF has given no such notice to any third party;
	 
	 	(f).	 	with respect to the Licensed Patents, UGARF has complied with all disclosure,
reporting, election and other applicable provisions of the Bayh-Dole Act (35 U.S.C.
200, et seq.);
	 
	 	(g).	 	all test results relating to the subject matter disclosed in the Licensed
Patents, as well as any and all other data and information at UGA relating to the
subject matter disclosed in the Licensed Patents, if requested by Licensee, has been
made available to Licensee, except for the names of any third party proprietary
compound(s), which name(s) were redacted from test results or other data or
information, and Licensee agrees that UGARF need not provide such compound name(s) to
Licensee; and
	 
	 	(h).	 	UGARF is compliant with all of its own policies, and with Georgia law, material
to this Agreement; and
	 
	 	(i).	 	after reasonable inquiry with Dr. Nair, UGARF is not aware of any test results
or data that has not been provided or disclosed to Licensee that would reasonably be
expected to have a material adverse impact on Licensee’s evaluation or the development
of the inventions disclosed in the Licensed Patents.






	8.2.	 	UGARF Warranties. UGARF warrants that during the term of this Agreement:






	 	(a).	 	UGARF will not assign any of its rights to any of the Licensed Patents except
pursuant to paragraph 13.1 below;
	 
	 	(b).	 	UGARF will not grant any rights in Licensed Patents in the Field and in the
Territory to a third party, and UGARF will not transfer direct or indirect ownership of
the rights to the Licensed Patents that are licensed to Licensee to any third person or
entity;
	 
	 	(c).	 	UGARF will promptly notify Licensee in writing if it receives any notice that
any issued patent or allowed claim in Licensed Patents is invalid or unenforceable;
	 
	 	(d).	 	UGARF will promptly notify Licensee in writing if it receives any written
notice wherein a product or process of a third party is alleged to infringe any issued
patent or allowed claim in the Licensed Patents; and




14









 












	 	(e).	 	with respect to the Licensed Patents, UGARF will comply with all disclosure,
reporting, election and other applicable provisions of the Bayh-Dole Act (35 U.S.C. 200
et seq.).






	8.3.	 	Mutual Representations. The Parties each rely on the following representations in entering
into this Agreement. Each Party represents that as of the Effective Date:






	 	(a).	 	it has the right, power and authority to enter into this Agreement and to
perform its obligations hereunder;
	 
	 	(b).	 	it has taken all necessary corporate action on its part to authorize the
execution and delivery of this Agreement and the performance of its obligations
hereunder;
	 
	 	(c).	 	it has obtained all necessary consents, approvals, and authorizations of all
governmental authorities and other entities required in connection with entering into
this Agreement, except for those the failure of which to obtain would not have a
material adverse effect; and
	 
	 	(d).	 	the execution and delivery of this Agreement, including the grant of licenses
or Sublicenses hereunder, and the performance of such Party’s obligations hereunder do
not conflict with or violate or constitute a default of any requirement of applicable
laws or regulations or with any material contractual obligation of such Party.






	8.4.	 	Mutual Warranties. Each Party warrants that during the term of this Agreement:






	 	(a).	 	it will take all necessary corporate action on its part to authorize the
performance of its obligations hereunder; and
	 
	 	(b).	 	performance under this Agreement, including the grant of Sublicenses hereunder,
and the performance of each Party’s obligations hereunder will not conflict with or
violate or constitute a default of any requirement of applicable laws or regulations or
with any material contractual obligation of such Party.






	8.5.	 	Licensee Warranties. Licensee warrants that it will use commercially reasonable efforts to
obtain all necessary consents, approvals, and authorizations of all governmental authorities
and other entities (other than FDA and other comparable product approvals and product pricing
approvals) required in connection with performance of its obligations under this Agreement,
except for those the failure of which to obtain would not have a material adverse effect.
	 
	8.6.	 	Disclaimer of Warranties. EXCEPT AS SET FORTH IN PARAGRAPHS 8.1 THROUGH 8.5: (1) UGARF
DISCLAIMS ALL REPRESENTATIONS AND WARRANTIES, EXPRESS OR IMPLIED, RELATING IN ANY WAY TO THE
LICENSED PATENT RIGHTS OR LICENSED PRODUCTS, INCLUDING BUT NOT LIMITED TO, THE IMPLIED
WARRANTIES OF MERCHANTABILITY AND




15









 












	 	 	FITNESS FOR A PARTICULAR PURPOSE; AND (2) LICENSEE AND ITS SUBLICENSEES ASSUME THE ENTIRE
RISK AND RESPONSIBILITY FOR THE SAFETY, EFFICACY, PERFORMANCE, DESIGN, MARKETABILITY, TITLE,
AND QUALITY OF ALL LICENSED PATENTS AND LICENSED PRODUCTS. NOTHING CONTAINED IN THIS
AGREEMENT SHALL BE CONSTRUED AS EITHER A WARRANTY OR REPRESENTATION BY UGARF AS TO THE
VALIDITY OR SCOPE OF THE LICENSED PATENTS.
	 
	8.7.	 	Limitation of Liability. UGARF assumes no liability with respect to infringement of any
patent or other intellectual property right of third parties due to the activities of Licensee
or Sublicensees under this Agreement (except with respect to any breach of this Agreement by
UGARF). In no event will UGARF, the Board of Regents of the University System of Georgia,
UGA, or their regents, trustees, directors, officers, faculty, students, employees,
consultants, and agents (collectively “UGARF Indemnitees”) be responsible or liable for any
direct, indirect, special, punitive, incidental, or consequential damages or lost profits to
Licensee or Sublicensees, or any other individual or entity arising from the acts or omissions
of Licensee or Sublicensees regardless of legal theory (except with respect to any breach of
this Agreement by UGARF). The above limitations on liability apply even though UGARF, or any
of UGARF Indemnitees, may have been advised of the possibility of such damage. Licensee shall
not make any statements, representations, or warranties, or accept any liabilities or
responsibilities whatsoever, with regard to UGARF or UGARF Indemnitees that are inconsistent
with any disclaimer or limitation included in this Agreement.
	 
	8.8.	 	Indemnification. Except with respect to any breach of this Agreement by UGARF: none of
UGARF or UGARF Indemnitees shall have any liability to Licensee or Sublicensees or any other
person or entity for or on account of (and Licensee agrees and covenants, and agrees to cause
each Sublicensee to agree and covenant, not to sue any UGARF Indemnitee in connection with)
any injury, loss, or damage of any kind incurred by Licensee or Sublicensees or any other
person or entity, whether direct, indirect, special, punitive, incidental, consequential or
otherwise arising under any legal theory (and further excluding without limitation any
existing or anticipated profits or opportunities for profits lost by Licensee or
Sublicensees), directly arising out of or in connection with or resulting from (i) any acts or
omissions of Licensee or a Sublicensee relating to this Agreement, Licensee’s or a
Sublicensee’s use of the rights granted under the Licensed Patents, Licensee’s or a
Sublicensee’s Licensed Products, or any of Licensee’s or Sublicensees’ activities undertaken
hereunder; (ii) the production, use, or sale of the Licensed Products by Licensee or a
Sublicensee, or (iii) any advertising or other promotional activities of Licensee or a
Sublicensee with respect to either (i) or (ii). Licensee shall indemnify and hold each UGARF
Indemnitee harmless against all claims, demands, losses, damages or penalties (including but
not limited to reasonable attorney’s fees and expenses at the pretrial, trial or appellate
level) to the extent they are made against any UGARF Indemnitee with respect to items (i)
through (iii) above, whether or not such claims are groundless or without merit or basis
(except with respect to any breach of this Agreement by UGARF). Licensee understands and
agrees that its




16









 












	 	 	indemnification of any UGARF Indemnitee under this Agreement shall include indemnification
for attorney’s fees and expenses.
	 
	8.9.	 	Indemnification Procedure. As a condition to the indemnification under this Agreement, a
UGARF Indemnitee that intends to claim indemnification under this Article 8 shall promptly
notify Licensee and Sublicensees, as applicable (such indemnifying entity, the “Indemnitor”)
of any liability or action in respect of which the UGARF Indemnitee intends to claim such
indemnification, and the Indemnitor shall have the right to participate in, and, to the extent
the Indemnitor so desires, jointly with any other Indemnitor similarly noticed, to assume the
defense thereof with counsel selected by the Indemnitor; provided, however, that a UGARF
Indemnitee shall have the right to retain its own counsel, with the fees and expenses to be
paid by such UGARF Indemnitee. The indemnity obligations under this Article 8 shall not apply
to amounts paid in settlement of any loss, claim, damage, liability, or action if such
settlement is effected without the consent of the Indemnitor, which consent shall not be
unreasonably withheld. The failure to deliver notice to the Indemnitor within a reasonable
time after the commencement of any such action, to the extent such failure substantially
impairs Indemnitor’s ability to defend such action, shall relieve such Indemnitor of any such
liability to the UGARF Indemnitee with regard to such action under this Article 8. The UGARF
Indemnitee, its employees, and agents, shall cooperate fully with the Indemnitor and its legal
representatives in the investigation of any action, claim, or liability covered by this
indemnification.
	 
	8.10.	 	Insurance. Licensee shall obtain and carry in full effect, and shall cause Sublicensees to
obtain and carry in full effect, insurance with coverage and limits, the nature and extent of
which shall be commensurate with those of similar companies in Licensee’s industry but not
less than set out in Appendix H. Such insurance will be written by an insurance company
having a rating reasonably acceptable to UGARF, will name UGARF as an additional insured, and
shall require thirty (30) days written notice to UGARF prior to cancellation, endorsement or
other policy change. Within thirty (30) days of a request by UGARF, Licensee shall provide
UGARF with appropriate certificates of insurance satisfying the obligations of Licensee
hereunder.





ARTICLE 9. INFRINGEMENT





	9.1.	 	Notice. The Parties shall report to each other in writing all suspected infringement of the
Licensed Patents. Should Licensee desire to negotiate with or file suit against a potential
infringer, it shall first provide to UGARF a written analysis setting out in pertinent detail
the grounds for infringement. Upon such notice, UGARF shall permit Licensee to take action
under paragraph 9.2.
	 
	9.2.	 	Enforcement. Subject to paragraph 9.1, Licensee shall have exclusive authority to negotiate,
license, file suit, or otherwise settle the matter without limitation. Licensee shall employ
counsel reasonably satisfactory to UGARF; Licensee shall enter into a joint representation
agreement with UGARF so that both may communicate freely with litigation counsel without
waiving the work product or attorney client privilege. To the extent doing so will (a) not
waive the work product or attorney client privilege and (b)





17









 











	 	 	not violate any protective order imposed in the case, Licensee shall inform UGARF of all
material developments, and provide UGARF at UGARF’s request and expense with (i) copies of
all pleadings and discovery materials, and (ii) any other documents and information relevant
to the case. Licensee shall be responsible for its expenses. UGARF shall reasonably
cooperate and execute any documents reasonably required by Licensee, all at Licensee’s
expense. Licensee shall not oppose joinder of UGARF as a party for any reason, and UGARF
consents to be joined as a party, if necessary for Licensee to proceed with a suit. UGARF
may be represented by its own counsel in such proceedings at its own expense. Prosecution,
settlement, or abandonment of any proceeding shall be at Licensee’s reasonable discretion,
provided that Licensee must not grant any infringer any rights to the Licensed Patents other
than by sublicense pursuant to paragraph 2.3 of this Agreement. Any funds collected by
Licensee will be paid as follows: (a) to Licensee to reimburse its documented and
reasonable out of pocket third party costs and expenses incurred in such action; (b) to
UGARF for its documented and reasonable out of pocket third party costs and expenses
incurred in assisting Licensee; and (c) the remainder, if any, shall be treated as [ * * *
]. Upon prior written notice to UGARF, Licensee may delegate any of its rights and duties
under this Article 9 to a Sublicensee, which Sublicensee shall be bound to all such rights
and duties.
	 
	9.3.	 	UGARF Enforcement. Upon Licensee’s prior approval UGARF shall have the authority to
negotiate, license, file suit, or otherwise settle the matter without limitation. UGARF shall
employ counsel reasonably satisfactory to Licensee; UGARF shall enter into a joint
representation agreement with Licensee so that both may communicate freely with litigation
counsel without waiving the work product or attorney client privilege. To the extent doing so
will (a) not waive the work product or attorney client privilege and (b) not violate any
protective order imposed in the case, UGARF shall inform Licensee of all material
developments, and provide Licensee at Licensee’s request and expense with (i) copies of all
pleadings and discovery materials, and (ii) any other documents and information relevant to
the case. UGARF shall be responsible for its expenses. Licensee shall reasonably cooperate
and execute any documents reasonably required by UGARF, all at UGARF’s expense. Licensee
consents to be joined as a party, if necessary in order for UGARF to proceed with a suit.
Licensee may be represented by its own counsel in such proceedings at its own expense.
Prosecution, settlement, or abandonment of any proceeding shall be at UGARF’s reasonable
discretion, provided that UGARF must not grant any infringer any rights to the Licensed
Patents in the Field without Licensee’s prior consent. Any funds collected by UGARF will be
paid as follows: (a) to UGARF to reimburse its documented and reasonable out of pocket third
party costs and expenses incurred in such action; (b) to Licensee for its documented and
reasonable out of pocket third party costs and expenses incurred in assisting UGARF; and (c)
the remainder, if any, shall be [ * * * ]. Upon prior written notice to Licensee, UGARF may
delegate any of its rights and duties under this Article 9 to a licensee outside the Field,
which licensee shall be bound to all such rights and duties.
	 
	9.4.	 	Abandonment. The rights of Licensee include the right to abandon a suit or refrain from
suit. Licensee’s abandonment or refraining from suit does not give UGARF the right to proceed
except that, Licensee shall provide UGARF thirty (30) days prior written notice of Licensee’s
decision to abandon suit and then UGARF may proceed with the suit in the event that Licensee
abandons the suit (in the trial court or on appeal) at any time after
a judicial determination that at least one claim of a Licensed Patent is invalid or
unenforceable.





18









 






ARTICLE 10. CONFIDENTIALITY





	10.1.	 	Confidential Information. Pursuant to and for the purpose of complying with its obligations
under this Agreement (“the Purpose”), either Party may disclose to the other Party
confidential and proprietary information, technical data, trade secrets or know-how, including
but not limited to, research, product plans, products, markets, developments, inventions,
processes, formulas, technology, designs, drawings, engineering, marketing, distribution,
sales methods and systems, and sales and profit figures (the “Confidential Information”).
	 
	10.2.	 	General Defined Terms. The terms “Recipient” and “Provider” refer to Licensee and the UGARF
in their capacity either as the recipient or the provider of Confidential Information under
this Agreement.
	 
	10.3.	 	Manner of Disclosure. The Provider may disclose the Confidential Information to the
Recipient, in writing, electronically, orally or by drawings or inspection of documents or
other tangible property for the Purpose.
	 
	10.4.	 	Non-Disclosure Obligation. In its capacity as Recipient, each Party agrees that for a
period of five (5) years from the date of disclosures received, that such Party will treat the
Confidential Information with reasonable care to avoid disclosure of the Confidential
Information to any person (natural or otherwise). A Recipient may disclose such Confidential
Information to (i) others within its organization pursuant to paragraph 10.7 and (ii) to third
parties; provided they enter into a confidentiality agreement no less restrictive than that of
this Article 10. A Recipient shall be generally liable for unauthorized disclosure or failure
to exercise such reasonable care, but a Recipient will not be so restricted with respect to
any Confidential Information which:






	 	(a).	 	is in the public domain, not through a breach of this Agreement, at the time of
disclosure;
	 
	 	(b).	 	after disclosure, becomes part of the public domain, except through breach of
this Agreement by the Recipient;
	 
	 	(c).	 	the Recipient can establish by documentary evidence was legally in its
possession at the time of disclosure by the Provider;
	 
	 	(d).	 	comes to the Recipient from third parties who are not under an obligation to
the Provider to maintain the confidentiality of that Confidential Information;
	 
	 	(e).	 	is independently developed by employees of the Recipient without use of the
Confidential Information, as shown by documentary evidence;
	 
	 	(f).	 	is approved for release by written authorization of the Provider, or:










19









 












	 	(g).	 	subject to paragraph 10.5, disclosure is required by applicable law or judicial
or administrative order.






	10.5.	 	Required Disclosures. If the Recipient is required by applicable law or administrative or
judicial order to disclose Confidential Information, the Recipient shall give the Provider
prompt notice of such fact so that the Provider may attempt to obtain a protective order or
other appropriate remedy with respect to any such disclosure. The Recipient shall fully
cooperate with the Provider in connection with the Provider’s efforts to obtain any such order
or other remedy. If any such order or other remedy does not fully preclude disclosure, the
Recipient will make such disclosure only to the extent that such disclosure is legally
required.
	 
	10.6.	 	Limited Use. Acceptance of the Confidential Information by the Recipient gives the
Recipient the right and obligation to use the Confidential Information only for the Purpose in
accordance with this Agreement and does not give the Recipient any sort of license to, use of,
or any other rights in the Confidential Information.
	 
	10.7.	 	Internal Dissemination. Recipient’s internal dissemination of the Provider’s Confidential
Information is limited to those employees, officers, directors, and agents (or, where UGARF is
the Recipient, those employees, officers, directors, and agents of UGARF and UGA) whose duties
justify the need to know such Confidential Information. The Recipient will make all necessary
efforts to require such officers, directors, employees and agents, who have been given access
to and who shall receive disclosures of the Confidential Information, to maintain the
strictest secrecy under the terms and conditions of this Agreement.
	 
	10.8.	 	Unauthorized Use. If any third party makes any unauthorized use or disclosure of the
Confidential Information under this Agreement, the Recipient shall notify the Provider and
cooperate in taking reasonable steps to protect the Confidential Information from further
unauthorized use or disclosure.
	 
	10.9.	 	Return of Information. Upon termination or expiration of this Agreement and upon request by
the Provider, the Recipient will promptly return to the Provider all Confidential Information
received from the Provider which is in tangible form or provide a letter certifying as to its
destruction.





ARTICLE 11. TERM AND TERMINATION





	11.1.	 	Term. Unless sooner terminated as otherwise provided herein, this Agreement begins on the
Effective Date and continues until expiration of the last to expire of the Licensed Patents or
patent extension as provided by paragraph 7.3.
	 
	11.2.	 	UGARF Right to Terminate. UGARF may, without prejudice to any of its other rights,
terminate this Agreement if Licensee:






	 	(a).	 	fails to pay any undisputed amount when due under this Agreement, and fails to
make such payment after ninety (90) days written notice by UGARF;
	 
	 	(b).	 	fails to deliver any report when due under this Agreement, and Licensee fails
to make such report after ninety (90) days written notice from UGARF; or




20









 












	 	(c).	 	materially breaches this Agreement other than by (a)-(b) above, and fails to
cure such breach or default within ninety (90) days after receipt of written notice by
UGARF.






	11.3.	 	Licensee Right to Terminate. Licensee may, without prejudice to any of its other rights,
terminate this Agreement:






	 	(a).	 	at any time with or without cause effective on ninety (90) days written notice
of termination; or
	 
	 	(b).	 	if UGARF materially breaches this Agreement and fails to cure such breach or
default within ninety (90) days after receipt of written notice by Licensee.






	11.4.	 	Effect of Termination. If this Agreement terminates for any reason under paragraphs 11.2 or
11.3, on the effective date of termination Licensee shall immediately cease practicing the
inventions claimed in Valid Claims of Licensed Patents and making, having made and selling the
Licensed Products, and shall return to UGARF, or deliver or destroy as UGARF directs, all
Confidential Information in its possession; provided, however, that (a) Licensee may continue
to sell in the ordinary course of business for a period of one (1) year reasonable quantities
of Licensed Products that are in Licensee’s normal inventory at the date of termination if (i)
all monetary obligations of Licensee to UGARF have been satisfied and (ii) royalties on such
sales, and any other payments, are paid to UGARF in the amounts and in the manner provided in
this Agreement.
	 
	11.5.	 	Survival. Notwithstanding termination or expiration of this Agreement for any reason, the
following provisions shall survive:






	 	(a).	 	Licensee’s payment obligations that are accrued and remaining unpaid or
unperformed prior to such termination;
	 
	 	(b).	 	Articles 4, 5, 9, 10, 12, and 13, and paragraphs 8.6, 8.7, 8.8, 8.9, 11.4, and
11.5,; and
	 
	 	(c).	 	Any cause of action or claim of a Party, accrued or to accrue, because of any
breach or default of this Agreement by the other Party.





ARTICLE 12. MEDIATION





	12.1.	 	Except for the right of either Party to apply to a court of competent jurisdiction for a
temporary restraining order, preliminary injunction, or other equitable relief, any and all
claims, disputes or controversies arising under, out of, or in connection with this Agreement
(including patent validity, claim for theft of trade secrets, unauthorized disclosure of
confidential information, damages, restitution, rescission or reformation, or any combination
of such remedies) that the Parties are unable to resolve within sixty (60) days following
written notice of a dispute including an attempt to resolve the dispute, will be mediated
through non-binding mediation in good faith as follows: The Party raising such dispute shall
promptly provide notice to the other Party of its claim, dispute or controversy in a writing
that describes in reasonable detail the nature of the dispute (“Dispute Notice”). By not
later than twenty (20) business days after the recipient has received the Dispute Notice, each
Party shall have selected for itself a representative who




21









 












has the authority to bind such Party, and shall additionally have advised the other Party in
writing of the name and title of such representative. These representatives shall meet in
person and in good faith attempt to resolve the dispute within sixty days of the Dispute
Notice. If they fail to resolve it, then by not later than twenty (20) business day after
their meeting date, the Parties shall each notify the other of two acceptable mediators and
the representatives shall promptly select and agree upon one commonly acceptable mediator
for a mediation hearing. Within thirty days thereafter, the Parties shall enter into good
faith mediation and shall share the costs of mediation equally; provided, however, that each
Party shall pay its own attorneys’ fees. If the representatives of the Parties do not
resolve the dispute within thirty (30) business days after the mediation hearing, the
Parties shall be deemed to have satisfied this requirement for mediation. If thereafter
either Party desires arbitration of the dispute then such Party shall propose and the other
Party shall in good faith consider the proposal.



ARTICLE 13. MISCELLANEOUS





	13.1.	 	Assignment. This Agreement, and the rights and obligations hereunder, shall not be assigned
by either Party without the prior written consent of the other Party, such consent not to be
unreasonably withheld, except however that this Agreement or rights and obligations hereunder
may be assigned by Licensee without consent to the acquirer of substantially all of the assets
of Licensee to which the assigned rights and obligations pertain. No assignment requiring
consent will be effective unless the assignor has, no less than ten (10) days before the
effective date thereof, (i) delivered written notice of the transaction to the other Party;
and (ii) caused the successor entity to deliver to such other Party the form of a written
assignment and assumption by such successor of all of the assigned terms and conditions of
this Agreement, such assignment and assumption to be in form and substance satisfactory to
such other Party.
	 
	13.2.	 	Entire Agreement, Amendment and Waiver. This Agreement, including its Appendices, contains
the entire understanding of the Parties with respect to the subject matter of this Agreement
and supersedes any and all prior written or oral discussions, arrangements, courses of conduct
or agreements. This Agreement may be amended only by a written instrument executed by the
Parties. The waiver of an obligation hereunder shall not constitute a waiver of any other
obligation, and shall not constitute a permanent waiver of that obligation. Notwithstanding
that the SRA is attached hereto as Appendix J and incorporated herein by reference, it is a
separate and distinct agreement and deals with a subject matter separate and distinct from the
subject matter of this Agreement.






	13.3.	 	Force Majeure. No Party shall be considered in default or be liable for any delay in
performance or for any non-performance caused by circumstances beyond the reasonable control
of such Party, including but not limited to acts of God, explosion, fire, flood, accident,
strike or other labor disturbance, war (whether declared or not), terrorism, sabotage, order
or decree of any court or unforeseen or unanticipated action of any governmental authority, or
other causes, whether similar or dissimilar to those specified, that cannot reasonably be
anticipated or controlled by the Party who failed to perform.




22









 












	 	 	Performance is excused only for the duration of the force majeure event and a commercially
reasonable time thereafter.
	 
	13.4.	 	Notices. All notices required or desired to be given under this Agreement, and all payments
to be made to UGARF under this Agreement, shall be delivered to the Parties in the manner set
out herein and at the addresses set forth in Appendix I, unless otherwise set forth in this
Agreement. Notices may be given (i) by hand, or (ii) by certified mail return receipt
requested, or (iii) by commercial carrier. Such notices or payments are effective upon
receipt by an employee, agent, or representative of the receiving Party authorized to receive
notices or other communications sent or delivered in the manner set forth above.
	 
	13.5.	 	Severability. If any one or more of the provisions of this Agreement is held by any court
of competent jurisdiction to be invalid, illegal or unenforceable, such provision or
provisions shall be reformed to approximate as nearly as possible the intent of the Parties,
and the validity of the remaining provisions shall not be affected; provided that such
reformation does not depart materially from the intent of the Parties.
	 
	13.6.	 	Governing Law. This Agreement is governed and interpreted under the laws of the State of
Georgia applicable to contracts made entirely within Georgia by Georgia residents.
	 
	13.7.	 	Damages. The Parties each hereby waive any right to receive punitive, consequential,
special or indirect damages relating in any way to this Agreement.
	 
	13.8.	 	Marking. Licensee shall place in a conspicuous location on any Licensed Product (or its
packaging where appropriate) made or sold under this Agreement a patent notice in accordance
with applicable laws.
	 
	13.9.	 	Manufacture. Licensee shall be bound by and comply with any applicable laws, regulations or
restrictions regarding the location of manufacture of Licensed Product imposed by the U.S.
government upon UGARF, Licensee or a Sublicensee as a result of any United States government
funding of the research from which any inventions claimed in any Licensed Patent were
conceived or reduced to practice. Upon request, UGARF will cooperate with Licensee in
compliance efforts.
	 
	13.10.	 	Export Controls. Licensee acknowledges that Licensed Products may be subject to U.S. laws
and regulations controlling the export of technical data, biological materials, chemical
compositions, computer software, laboratory prototypes and other commodities (“Technical
Data”). Licensee’s transfer of Technical Data may require a license from an agency of the
U.S. government or written assurances by Licensee that Licensee shall not export Technical
Data to certain foreign countries without prior approval of the U.S. government. UGARF
neither represents that an export license will not be required nor that, if required, such
export license shall issue.
	 
	13.11.	 	Implementation. Each Party shall, at the request of the other Party, execute any document
reasonably necessary to implement the provisions of this Agreement.
	 
	13.12.	 	Remedies. Due to the proprietary nature of the subject matter, the Parties agree that their
respective rights and obligations under this Agreement may be enforced by injunction, specific
performance, or other equitable relief, without prejudice to any other rights and remedies the
Parties may have.










23









 












	13.13.	 	Jury Trial Waiver. Each Party acknowledges the additional time and expense required for a
jury trial versus a bench trial for disputes relating to patent infringement or validity. The
Parties hereby waive their right to trial by jury in any action relating to the infringement
or validity of any claim in the Licensed Patents.
	 
	13.14.	 	Relationship of Parties. The Parties are independent contractors. There is no relationship
of principal to agent, master to servant, employer to employee, or franchiser to franchisee
between the Parties. Neither Party has the authority to bind the other or incur any
obligation on its behalf.
	 
	13.15.	 	Agreement Conflicts. In the event of a conflict between this Agreement and an Appendix
attached hereto, the terms of this Agreement shall control.
	 
	13.16.	 	Advertising. Each Party shall not use (and shall prohibit its agents, Affiliates, licensees
and sublicensees from using) the names and marks of the other Party or any of its agents in
connection with any commercial activity under this Agreement without prior written consent.
Notwithstanding the foregoing, Licensee may use the name of UGARF in a non-misleading fashion
in (i) business plans, offering memoranda and other similar documents for the purpose of
raising financing for the operations of Licensee as related to the Licensed Products; (ii) as
required in sublicenses to vest UGARF’s interests as a third party beneficiary, and (iii) as
required in any securities reports required to be filed with the Securities and Exchange
Commission.




IN WITNESS WHEREOF, the Parties hereto have caused this License Agreement to be executed by their
authorized officers or representatives on the date indicated below.




	 	 	 	 	 	 	 	 	 	 	 
	University of Georgia Research
Foundation, Inc.	 	Inhibitex, Inc.	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	By:

	 	 	 	 	 	By:	 	 	 	 
	 

	 	 
	 	 	 	 	 	 	 	 
	Name:

	 	Dr. David Lee
	 	 	 	Name (print):	 	 	 	 
	 

	 	 	 	 	 	 	 	 	 	 
	Title:

	 	Executive Vice President
	 	 	 	Title:	 	 	 	 
	 

	 	 	 	 	 	 	 	 	 	 
	Date:

	 	 	 	 	 	Date:	 	 	 	 
	 

	 	 
	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	Read and understood by:	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	University of Georgia	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	By:
	 	 	 	 	 	 	 	 	 	 
	 

	 	 	 	 	 	 	 	 	 	 
	Name:

	 	Dr. David Lee	 	 	 	 	 	 	 	 
	Title:

	 	Vice President for Research	 	 	 	 	 	 	 	 
	Date:
	 	 	 	 	 	 	 	 	 	 
	 

	 	 

	 	 	 	 	 	 	 	 







24









 








APPENDIX A

LICENSEE’S TECHNOLOGY DEVELOPMENT PLAN




[ * * * ]




25









 





APPENDIX B

LICENSED PATENTS




	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	 	 	U.S.	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	UGARF	 	 	 	Application	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	Case	 	 	 	Serial	 	Filing	 	 	 	Pub.	 	 	 	International	 	 
	 	 	Number	 	Title	 	Number	 	Date	 	Pub. Number	 	Date	 	PCT Application	 	Filing Date	 	Status/Comments
	(1)

	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	(2)

	 	[ * * * ]
	 	 	 	[ * * * ]
	 	[ * * * ]
	 	 	 	 	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	(3)

	 	[ * * * ]
	 	 	 	 	 	[ * * * ]
	 	 	 	 	 	 	 	 	 	[ * * * ]
	(4)

	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	 	 	 	[ * * * ]
	(5)

	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	 	[ * * * ]
	 	 	 	 	 	 	 	[ * * * ]
	 	[ * * * ]
	(6)

	 	[ * * * ]
	 	 	 	[ * * * ]
	 	[ * * * ]	 	 	 	 	 	 	 	 	 	 
	(7)

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






26









 






[ * * * ]




[ * * * ]




27









 








APPENDIX C

ANNUAL MINIMUM ROYALTY PAYMENTS (Paragraph 3.5)





	1.	 	HIV Indication Licensed Products Licensee shall make written notice to UGARF of the date of
Licensee’s first arm’s length commercial sale for consideration of each Separate and Distinct
(as defined below) Licensed Product for the HIV Indication (“HIV Indication Licensed Product”)
within [ * * * ] of such sale. The Annual Minimum Royalty Payments at paragraph 3.5,
identified in dollars in the table below, are due beginning in the [ * * * ] following the
first sale of an HIV Indication Licensed Product [ * * * ] and continuing for [ * * * ], and
vary depending upon the total number of HIV Indication Products on the market at the end of
each calendar year, as set out in the table below. The Annual Minimum Royalty Payments are
only payable to the extent that the earned royalty actually paid upon the sale of such HIV
Indication Licensed Products for a given calendar year is less than the below-stated minimum
royalty payment; in which case Licensee shall pay to UGARF an amount equal to the applicable
minimum royalty payment less the earned royalty actually paid for such HIV Indication Licensed
Products. As used in Appendices C and F, and in paragraph 4.3, a “Separate and Distinct”
Licensed Product means a Licensed Product that differs from other Licensed Products in that it
is a different chemical entity, has new or different qualities, or is subject to separate
review and approval by the FDA or other relevant regulatory authority.





	 	 	 	 	 	 	 
	•

	 	• No. of HIV
Indication Products
on the market:
[ * * * ]

	 	• No. of HIV
Indication Products
on the market:
[ * * * ]

	 	• No of HIV
Products on the
market: [ * * *
]or [ * * * ]

	 
	 	 	 	 	 	 
	• [ * * * ]

	 	 • [ * * * ]

	 	• [ * * * ]

	 	• [ * * * ]








	2.	 	HCV Indication Licensed Products. Licensee shall make written notice to UGARF of the date of
Licensee’s first arm’s length commercial sale for consideration of each Separate and Distinct
(as defined at paragraph 1 above) Licensed Product for the HCV Indication (“HCV Indication
Licensed Product”) within [ * * * ] of such sale. The following Annual Minimum Royalty
Payments, identified in dollars in the table below, are due beginning in the [ * * * ]
following the first sale of an HCV Indication Licensed Product [ * * * ] continuing through [
* * * ], and vary depending upon the total number of HCV Indication Products on the market at
the end of each calendar year, as set out in the table below. The Annual Minimum Royalty
Payments are only payable to the extent that the earned royalty actually paid upon the sale of
such Licensed Products for a given calendar year is less than the below-stated minimum royalty
payment; in which case Licensee shall pay to UGARF an amount equal to the applicable minimum
royalty payment less the earned royalty actually paid for such HCV Indication Licensed
Products.




28









 











	 	 	 	 	 	 	 
	•

	 	• No. of HCV
Indication Products
on the market:
[ * * * ]

	 	• No. of HCV
Indication Products
on the market:
[ * * * ]

	 	 • No of HCV
Products on the
market: [ * * *
] or [ * * * ]

	 
	 	 	 	 	 	 
	• [ * * * ]

	 	• [ * * * ]
	 	• [ * * * ]
	 	• [ * * * ]







	3.	 	Other Indication Licensed Products. Licensee shall make written notice to UGARF of the date
of Licensee’s first arm’s length commercial sale for consideration of each Separate and
Distinct Licensed Product for any Indication other than HIV or HCV within [ * * * ] of such
sale. The following Annual Minimum Royalty Payments, identified in dollars in table below,
are due beginning in the [ * * * ] following the first sale of a Licensed Product for a new
Indication for which Licensed Product has not previously been sold [ * * * ] continuing for [
* * * ], and vary depending upon the number of Licensed Products for any Indication other than
HIV or HCV that are on the market at the end of year calendar year, as set out in the table
below. The Annual Minimum Royalty Payments are only payable to the extent that the earned
royalty actually paid upon the sale of such Licensed Products for such particular Indication
for a given calendar year is less than the below-stated minimum royalty payment; in which case
Licensee shall pay to UGARF an amount equal to the applicable minimum royalty payment less the
earned royalty actually paid for Licensed Products for each such separate Indication.





	 	 	 	 	 	 	 
	•

	 	• No. of
non-HIV/non-HCV
Indication Products
on the market:
[ * * * ]

	 	• No. of
non-HIV/non-HCV
Indication Products
on the market:
[ * * * ]

	 	• No of
non-HIV/non-HCV
Products on the
market: [ * * *
] or [ * * * ]

	 
	• [ * * * ]

	 	• [ * * * ]
	 	• [ * * * ]
	 	• [ * * * ]







29









 








APPENDIX D

ANNUAL LICENSE MAINTENANCE FEES (Paragraph 3.6)




     Licensee shall pay UGARF an Annual License Maintenance Fee of [ * * * ] no later than thirty
(30) days after each anniversary of the Effective Date provided, however, that Licensee’s
obligation to pay Annual License Maintenance Fees shall cease in the first full calendar year
following the first sale of a Licensed Product.




30









 








APPENDIX E

SUBLICENSE FEES (Paragraph 3.7)





	1.	 	Definitions. “Sublicense Payment” means a payment received by Licensee as direct
consideration specifically for the grant of a Sublicense of the Licensed Patents. For
purposes of paragraph 3.7 and this Appendix E, Sublicense Payments include, but are not
limited to, (a) Sublicense signing or upfront fees, (b) the portion of any premium (the excess
over the fair market value) paid by Sublicensee for debt or equity securities issued by
Licensee to a Sublicense to the extent such premium is (i) direct consideration for entering
into a Sublicense, and (ii) exceeds [ * * * ] of the fair market value of the debt or equity
securities issued by Licensee in direct connection with a Sublicense; (c) development or
commercial diligence milestone payments for development or commercialization of Licensed
Products, (d) annual license maintenance fees in excess of amounts payable to UGARF by
Licensee as set forth in Appendix D; (e) royalties received by Licensee from a Sublicensee;
(f) annual minimum royalty payments received by Licensee from a Sublicensee; or (g) similar
consideration that is milestone-based, development-based, or diligence-based.
	 
	 	 	Notwithstanding the foregoing, Sublicense Payment specifically excludes the following
payments received by Licensee from any Sublicensees: (a) reasonable funding or
reimbursement for research activities performed by Licensee on behalf of a Sublicensee after
the effective date of the respective Sublicense; (b) reasonable payments or reimbursements
for materials made for or transferred to a Sublicensee after the effective date of the
respective Sublicense; (c) reasonable payments or reimbursements for other expenses incurred
by Licensee on behalf of and for the benefit of a Sublicensee after the effective date of
the respective sublicense; (d) reimbursement for Licensee’s payment of Patent Expenses to
UGARF incurred before or after the effective date of the Sublicense; (e) reasonable payments
or reimbursements for the cost of clinical trials conducted by Licensee on behalf of
Sublicensee after the effective date of the Sublicense; (f) reasonable payments for the
transfer to a Sublicensee of know-how developed without input by UGARF or UGA, or if with
input from UGARF or UGA, then the pro rata portion of such payment attributable to know-how
developed without input by UGARF; and (g) consideration of any kind received by Licensee for
the transfer or grant from Licensee to a Sublicensee of rights, assets or value of any kind
other than rights, assets or value within the Licensed Patents under this Agreement.
	 
	 	 	As used herein, “completion” shall mean the date on which the last subject or patient in the
respective clinical trial has completed the requisite follow-up period and is off study, and
“initiation” shall mean the date on which the first subject or patient is enrolled in the
respective clinical trial.
	 
	2.	 	Sublicense Fees.






	 	(a).	 	If at any time before the completion of a [ * * * ] for a given Licensed
Product within a particular Indication, Licensee enters into a Sublicense for that
Licensed Product in that Indication, then at any time on or after the date of the
Sublicense,




31









 






	 	 	 	if Licensee receives from that Sublicensee any Sublicense Payments related to that
Licensed Product for that Indication, then Licensee shall pay to UGARF [ * * * ] of
such Sublicense Payments.






	 	(b).	 	If at any time after the completion of a [ * * * ] but before the completion of
a [ * * * ] for a given Licensed Product within a particular Indication, Licensee
enters into a Sublicense for that Licensed Product in that Indication, then at any time
on or after the date of the Sublicense, if Licensee receives from that Sublicensee any
Sublicense Payments related to that Licensed Product in that Indication, then Licensee
shall pay to UGARF [ * * * ] of such Sublicense Payments.
	 
	 	(c).	 	If, at any time after the completion of [ * * * ] for a given Licensed Product
within a particular Indication, Licensee enters into a Sublicense for that Licensed
product in that Indication, then at any time on or after the date of the Sublicense, if
Licensee receives from that Sublicensee any Sublicense Payments related to that
Licensed product for that Indication, then Licensee shall pay to UGARF [ * * * ] of
such Sublicense Payments.
	 
	 	(d).	 	If, at any time after completion of a [ * * * ] for a given Licensed Product
within a particular Indication, Licensee enters into a Sublicense for that Licensed
Product for that Indication, then at any time on or after the date of the Sublicensee
if Licensee receives from that Sublicensee any Sublicense Payments related to that
Licensed Product for that Indication, then Licensee shall pay to UGARF [ * * * ]of such
Sublicense Payments.






32









 








APPENDIX F

MILESTONE PAYMENTS (Paragraph 3.8)





	1.	 	HIV Indication Milestone Payments.






	 	(a).	 	First HIV Indication Licensed Product. The following one-time development
milestone payments only apply the first time each event occurs for the first Separate
and Distinct HIV Indication Licensed Product, as “Separate and Distinct” as defined in
Appendix D.





	 	 	 
	          • Development Milestone

	 	• Payment
	 
	 	 
	          • [ * * * ]

	 	• [ * * * ]







	 	(b).	 	Subsequent HIV Indication Licensed Products. Milestone payments for the second
and each subsequent Separate and Distinct HIV Indication Licensed Product will be the
same as those outlined in 1(a), provided however, that to the extent that a milestone
payment or payments were made for a prior Separate and Distinct HIV Indication Licensed
Product, such milestone payments that were already made will only again become payable
for the second and each subsequent Separate and Distinct HIV Indication Licensed
Product in the event that such Licensed Product achieves the last milestone that the
prior Separate and Distinct HIV Indication Licensed Product failed to achieve.






	2.	 	HCV Indication Milestone Payments.






	 	(a).	 	First HCV Indication Licensed Product. The following one-time development
milestone payments only apply the first time each event occurs for the first Separate
and Distinct HCV Indication Licensed Product.





	 	 	 
	          • Development Milestone

	 	• Payment
	 
	 	 
	          • [ * * * ]

	 	• [ * * * ]







	 	(b).	 	Subsequent HCV Indication Licensed Products. Milestone payments for the second
and each subsequent Separate and Distinct HCV Indication Licensed Product will be the
same as those outlined in 2(a), provided however, that to the extent that a milestone
payment or payments were made for a prior Separate and Distinct HCV Indication Licensed
Product, such payments that were already made will only again become payable for the
second and each subsequent Separate and Distinct HCV Indication Licensed Product in the
event that such Licensed Product achieves the last milestone that the prior Separate
and Distinct HCV Indication Licensed Product failed to achieve.





33









 







	3.	 	Other Indication Milestone Payments.





	 	(a).	 	First Other Indication Licensed Product. For any Indication other than HIV or
HCV (“Other Indication”), the following one-time development milestone payments only
apply the first time each event occurs for the first Separate and Distinct Licensed
Product:





	 	 	 
	          • Development Milestone

	 	• Payment
	 
	 	 
	          • [ * * * ]

	 	• [ * * * ]







	 	(b).	 	Subsequent Other Indication Licensed Products. Milestone payments for the
second and each subsequent Separate and Distinct Other Indication Licensed Product will
be the same as those outlined in 3(a), provided however, that to the extent that a
milestone payment or payments were made for a prior Separate and Distinct Other
Indication Licensed Product, such milestone payments that were already made will only
again become payable for the second and each subsequent Separate and Distinct Other
Indication Licensed Product in the event that such Licensed Product achieves the last
milestone that the prior Separate and Distinct Other Indication Licensed Product failed
to achieve.






	4.	 	For purposes of this Appendix F, successful completion of a clinical trial shall mean that
the clinical trial achieved or met its predefined primary endpoint or objectives, and/or the
results of the trial support advancing the respective Separate and Distinct Licensed Product
to the next stage of clinical development.






34









 








APPENDIX G

PAYMENT REPORTS




     Each Royalty Report due under this Agreement shall provide the following aggregate information
per quarter for all Licensed Products sold by Licensee or Sublicensees.




	1.	 	Sales report by country sufficient for UGARF to determine specific volume of sales and total
Net Sales in each country;
	 
	2.	 	Number of units of each Licensed Product sold by Licensee or by Sublicensees;
	 
	3.	 	Total dollar amount Subject to Royalty;
	 
	4.	 	Applicable Conversion Rate for Foreign Sales;
	 
	5.	 	Total dollars Converted to U.S. Dollars;
	 
	6.	 	Minimum Royalty Due, if applicable;
	 
	7.	 	Total Royalty Due, if applicable;
	 
	8.	 	Total Sublicense Fee Due, if applicable;
	 
	9.	 	Names and Addresses of all Sublicensees, and Affiliates and distributors selling Licensed
Product.






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APPENDIX H

INSURANCE REQUIREMENTS




     Beginning on the date a first clinical trial is initiated incorporating a Licensed Product and
continuing for five years after the date of the last sale of a Licensed Product in the United
States, Licensee shall maintain a commercial general liability insurance policy that insures UGARF
Indemnitees and names UGARF Indemnitees as an additional insured for all claims, damages, actions,
and judgments mentioned in paragraphs 8.6, 8.7, and 8.8 of this Agreement, and provides UGARF
Indemnitees with liability coverage in an amount no less than five million Dollars ($5,000,000) per
occurrence, subject to a reasonable aggregate amount per policy period.



     In the event that this Agreement terminates without the sale of any Licensed Product, and no
sale of Licensed Product is anticipated, the insurance required under this paragraph may be
discontinued.




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APPENDIX I

NOTICES




	 	 	 	 	 
	1.

	 	If to UGARF:
	 	Director, Technology Commercialization Office

University of Georgia Research Foundation, Inc.

Boyd Graduate Studies Research Center, 6th Floor

Athens, Georgia 30602-7411

Facsimile: (706) 542-3837
	 
	 	 	 	 
	 

	 	With a copy to:
	 	General Counsel

University of Georgia Research Foundation, Inc.

Boyd Graduate Studies Research Center, 6th Floor

Athens, Georgia 30602-7411

Facsimile: (706) 583-0074
	 
	 	 	 	 
	2.

	 	If to Licensee:
	 	Dr. Joseph M. Patti, Chief Scientific Officer

Inhibitex, Inc.

9005 Westside Parkway

Alpharetta, GA 30004

Facsimile: (678) 746-0624
	 
	 	 	 	 
	 

	 	With a copy to:
	 	David S. Rosenthal, Esq.

Dechert, LLP

30 Rockefeller Plaza

New York, New York 10112

Facsimile: (212) 698-3599







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APPENDIX J

SPONSORED RESEARCH AGREEMENT




To be attached.





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