Exhibit 10.23


 










	
   

  	
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Execution Copy


 


LICENSE AGREEMENT


between


CROMPTON CORPORATION


and


BIOSYN, INC.


 


THIS
AGREEMENT, effective as of the 22nd day of May, 2001 by and between
CROMPTON CORPORATION (“Crompton”), a corporation organized and existing under
the laws of the State of Delaware and having a place of business at Benson
Road, Middlebury, Connecticut 06749, and BIOSYN, INC. (“Biosyn”), a corporation
organized and existing under the laws of the Commonwealth of Pennsylvania and
having its principal place of business at 3401 Market Street, Suite 300,
Philadelphia, Pennsylvania 19104.


 


WITNESSETH:


 


WHEREAS,
Crompton owns or controls United States Patents No. [*], and a patent
application that is the United States equivalent of International Application [*],
and corresponding foreign patents and patent applications relating to compounds
useful against the replication of the Human Immunodeficiency Virus (“HIV”) and
compounds having microbicidal properties, and Crompton owns or controls
technology relating to such patents, patent applications and compounds and to
formulations, pharmaceutical compositions and methods and processes for
treating or inhibiting the replication of HIV and/or inactivating pathogenic
microbes;


 


WHEREAS,
Crompton wishes to grant to Biosyn an exclusive worldwide license to make, use
and sell formulations and compositions utilizing the UC 781 Technology (as
hereinafter defined), but only for the Permitted Field of Use (as hereinafter
defined); and


 


WHEREAS,
Biosyn wishes to obtain an exclusive worldwide license to make, use and sell
formulations and compositions utilizing the UC 781 Technology (as hereinafter
defined), but only for the Permitted Field of Use (as hereinafter defined).


 


NOW,
THEREFORE, in consideration of the mutual covenants and agreements of the
parties contained herein, the parties agree as follows:


 


1.                                       Definitions


 


1.1                                 “Affiliate”
shall mean a direct or indirect subsidiary of a party.


 


1.2                                 “Crompton”
shall mean Crompton Corporation, a Delaware corporation, acting directly or
through an Affiliate.


 


1.3                                 “License”
shall have the meaning assigned to such term in Section 2.1 of this
Agreement.


 





















 










	
   

  	
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1.4                                 “Milestones”
shall mean the Milestones provided for in Article 5 of this Agreement, “Milestone”
shall mean one of the Milestones and “First Milestone”, “Second Milestone” and “Third
Milestone” shall have the meanings provided for those terms in Article 5
of this Agreement.


 


1.5                                 “Net
Sales” shall have the meaning assigned to such term in Section 8.1 of this
Agreement.


 


1.6                                 “Patents”
shall mean United States Patents No. [*]and [*], and the patent
application that is the United States equivalent of International Application
WO [*]and any patent that issues therefrom, and any continuation, continuation-in-part,
division, provisional, reissue, reexamination, renewal or extension thereof,
and the corresponding foreign patents and patent applications listed in
Attachment A to this Agreement.  “Patents”
shall also include any new United States or foreign patent or patent
application obtained or filed by or on behalf of Crompton or its affiliates
relating to the UC 781 Technology.


 


1.7                                 “Permitted Field of Use” shall mean use as a human topical microbicide,
alone or in combination with other compounds, for application to the skin,
mucosal and/or epithelial tissue as an active ingredient in formulations such
as creams, foams, jellies, or other similar formulations, including
contraceptive and other vaginal delivery devices such as sponges, intrauterine
devices, diaphragms and condoms; but Permitted Field of Use does not include,
and specifically excludes:


 


(a)          non-human
uses;


 


(b)         human
application for both systemic therapeutic uses and systemic post-exposure
prophylactic uses; and


 


(c)          uses
when applied to or incorporated into any surface (except for human surfaces
consisting of skin, mucosal and/or epithelial tissue) or device (except
contraceptive and other vaginal delivery devices as provided for above in this Section 1.7)
including, but not limited to, gloves, aprons, tubing and filters.


 


1.8                                 “Product”
shall mean any formulation, composition, device or other product that utilizes
in any way the UC 781 Technology.


 


1.9                                 “UC
781” shall mean the compound comprising [*].


 


1.10                           “UC 781
Technology” shall mean any and all technology, compounds, formulations,
pharmaceutical compositions and methods and processes covered by a Valid Claim
in the Patents and/or other proprietary technology and know-how (including
manufacturing process technology) related to UC 781 or any of the Patents.  The UC 781 Technology shall also include any
improvements in any of the UC 781 Technology.


 


1.11                           “Valid
Claim” shall mean a claim of any issued, unexpired Patent that has not been
revoked or held unenforceable or invalid by a decision of a court or
governmental agency of


 


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competent jurisdiction,
from which no further appeal can be taken or with respect to which an appeal is
not taken within the time allowed for appeal, and which has not been
disclaimed, denied or admitted to be invalid or unenforceable through reissue,
disclaimer or otherwise.


 


1.12                           “Warrant”
means the warrant, in the form attached to this Agreement as Attachment B, to
purchase up to two hundred twenty-eight thousand (228,000) shares of duly
authorized, validly issued, fully paid and nonassessable shares of the common
stock of Biosyn, as provided for in Section 7.1 of this Agreement.


 


2.                                       License
Grant


 


2.1                                 Crompton, Crompton Manufacturing Company, Inc., Uniroyal Chemical
Company, Inc. and Crompton Co./Cie each, to the extent of its respective
rights in the UC 781 Technology, hereby grants to Biosyn an exclusive,
worldwide license under the UC 781 Technology, with the right to grant
sublicenses, to make, have made, use, import, export, sell and have sold
Products, solely for the Permitted Field of Use.  The license rights granted pursuant to this Section 2.1
are defined herein as the “License”.


 


2.2                                 Crompton, Crompton Manufacturing Company, Inc. and Uniroyal Chemical
Company, Inc. each, to the extent of its respective rights, hereby assigns
to Biosyn the option, pursuant to that certain Research Agreement executed on
behalf of Uniroyal Chemical Company, Inc. on July 24, 1997, on behalf
of the Rega Institute for Medical Research on August 12, 1997 and by Dr. Jan
Balzarini on August 12, 1997 (a copy of which is attached to this
Agreement as Exhibit I), to obtain, for the Permitted Field of Use, an
exclusive, worldwide license under United States Patent No. [*], which is
entitled “Compositions containing two or three inhibitors of different HIV
reverse transcriptases”.


 


3.                                       Term


 


3.1                                 This
Agreement shall commence effective as of the date first above set forth and,
unless earlier terminated pursuant to the terms of this Agreement, shall remain
in effect until the expiration of the last-to-expire Valid Claim of the Patents.


 


4.                                       Representations,
Warranties and Covenants


 


4.1                                 Crompton
represents and warrants to Biosyn as follows:


 


(a)                                  Crompton
has been duly incorporated and is a validly existing corporation in good
standing under the laws of the State of Delaware with full corporate authority
to own, lease and operate its properties and conduct the business in which it
is presently engaged.


 


(b)                                 Crompton
has taken all actions necessary to authorize it, and to cause each of its
subsidiaries executing this Agreement (“Executing Subsidiaries”), to enter into
and perform its respective obligations under this Agreement and the agreements


 


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and instruments referred to in this Agreement and to consummate the
transactions contemplated hereby and thereby.


 


(c)                                  This
Agreement is a legal, valid and binding obligation of Crompton, and of each of
the Executing Subsidiaries to the extent of its obligations under this
Agreement, enforceable in accordance with its terms subject, as to enforcement,
to bankruptcy, insolvency, reorganization and other laws of general
applicability relating to creditors’ rights and to general equitable
principles.


 


(d)                                 Crompton
owns or controls, directly or indirectly, all right, title and interest in and
to the UC 781 Technology and no person or entity has or shall have any claim of
ownership or control with respect to the UC 781 Technology that would, in any
way, affect the License hereunder; provided, however, that Crompton makes no
representation or warranty that persons other than Crompton and its affiliates
do not own or control proprietary technology and know-how (including
manufacturing and process technology) substantially similar to proprietary
technology and know-how comprising part of the UC 781 Technology.


 


(e)                                  To
the best of Crompton’s knowledge, the Patents are the only patents owned by
Crompton and its Affiliates that cover the manufacture, use or sale of UC 781
Technology for the Permitted Field of Use.  Crompton has no reason to believe that any of
the Patents are or will be found to be invalid.


 


(f)                                    Crompton
and each of the Executing Subsidiaries is free to perform its respective
obligations under this Agreement in accordance with the terms and conditions
set forth herein and there are no license rights granted by Crompton or any of
its Affiliates to any other person or entity under the UC 781 Technology for
the Permitted Field of Use nor are there any other license rights granted by
Crompton or any of its Affiliates to any other person or entity that would
encumber the License granted herein or that would conflict with the License.


 


(g)                                 Neither
Crompton nor any of the Executing Subsidiaries is aware of any asserted or
unasserted claims or demands that it believes have been or can be asserted
against any of the Patents and that would materially adversely affect the
License.  Notwithstanding the foregoing,
Crompton, Crompton Manufacturing Company, Inc. and Uniroyal Chemical
Company, Inc. each, to the extent of its respective rights, hereby assigns
to Biosyn certain rights with respect to United States Patent No. 5,968,910,
as provided for in Section 2.2 of this Agreement.


 


(h)                                 To
the best of Crompton’s knowledge and belief, the quantities of UC 781 that are
to be provided by Crompton to Biosyn pursuant to Section 6.2 of this
Agreement will conform to the certificates of analysis, material data safety
sheets and specifications that are to be included with the shipments of such UC
781.


 


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4.2                                 Crompton
covenants as follows:


 


(a)                                  Except
as otherwise provided in Article 9 of this Agreement, it shall, with due
diligence and good faith, use commercially reasonable efforts to maintain the
Patents in full force and effect during the term of this Agreement.


 


(b)                                 If,
contrary to Crompton’s present best knowledge, Crompton or any of its
Affiliates should own any other patent(s) that cover the UC 781 Technology for
the Permitted Field of Use or the manufacture, use or sale of Products for the
Permitted Field of Use, (i) Crompton agrees not to, and to cause its
Affiliates not to assert such patent(s) against Biosyn or any sublicensee of
Biosyn, with respect to the Permitted Field of Use and (ii) if any such
patent(s) cover UC 781 in the Permitted Field of Use, Crompton hereby grants,
and shall cause its appropriate Affiliate(s) 
to grant, a worldwide, royalty-free, exclusive license to make, use or sell UC 781 under such patent(s)
in the Permitted Field of Use.


 


(c)                                  In
the event (i) that Crompton or any Affiliate of Crompton shall, at any
time during the term of this Agreement, develop any new compound that is not
licensed to Biosyn under this Agreement but that Crompton or such Affiliate
perceives to have application or utility for the Permitted Field of Use and (ii) if
Crompton or such Affiliate has an interest in developing such compound for
commercialization on its own or with a third party or in licensing such
compound to a third party for development and commercialization, Crompton shall
notify Biosyn in writing and shall negotiate exclusively with Biosyn, in good
faith and for a period of ninety (90) days, or such longer period to which the
parties may agree, for the grant of a license or other rights to Biosyn with
respect to such compound for the Permitted Field of Use.


 


(d)                                 As
promptly as practicable after the execution and delivery of this Agreement by
the parties hereto, Crompton shall provide to Biosyn copies of the documents
listed on Attachment C to this Agreement to the extent reasonably available to
Crompton.


 


(e)                                  During
the term of this Agreement and at the request of Biosyn, Crompton shall (i) cooperate
with Biosyn in the transfer of know-how and technology licensed to Biosyn under
this Agreement, (ii) provide reasonable access to Crompton’s scientific
and manufacturing technical personnel to assist Biosyn in understanding the
know-how and technology licensed to Biosyn under this Agreement and (iii) otherwise
provide reasonable assistance to Biosyn with respect to the UC 781 Technology.


 


(f)                                    Crompton
will file or cause to be filed with the United States Patent and Trademark
Office proper documents of assignment and/or name changes so that the actual
owner of the Patents is shown as the record owner of the Patents.


 


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4.3                                 Biosyn
represents and warrants to Crompton as follows:


 


(a)                       Biosyn
has been duly incorporated and is validly subsisting under the laws of the
Commonwealth of Pennsylvania with full corporate authority to own, lease and
operate its properties and conduct the business in which it is presently
engaged.


 


(b)                      All
of the issued and outstanding capital stock of Biosyn has been duly authorized
and is validly issued and fully paid and nonassessable.


 


(c)                       Biosyn
has all requisite corporate power and authority to enter into and perform all
of its obligations under this Agreement and to carry out the transactions
contemplated hereby in accordance with the terms and conditions set forth
herein.


 


(d)                      Biosyn
has all requisite power and authority to issue the shares of common stock
issuable upon exercise of the Warrant and such shares of common stock will,
upon their issuance in accordance with the terms of the Warrant (including
payment for such shares), be duly and validly issued, fully paid and
nonassessable and free of any pre-emptive rights.  Certain rights held by certain shareholders
to subscribe to any issuance of equity securities by Biosyn have been waived
with regard to the issuance of the Warrant and the shares of common stock of
Biosyn issuable upon exercise of the Warrant.


 


(e)                       Biosyn
has taken all actions necessary to authorize it to enter into and perform its
obligations under this Agreement and the agreements and instruments referred to
in this Agreement and to consummate the transactions contemplated hereby and
thereby.


 


(f)                         This
Agreement is a legal valid and binding obligation of Biosyn, enforceable in
accordance with its terms subject, as to enforcement, to bankruptcy,
insolvency, reorganization and other laws of general applicability relating to
creditors’ rights and to general equitable principles.


 


(g)                      The
execution and delivery by Biosyn of this Agreement and the agreements and
instruments referred to in this Agreement, the consummation by Biosyn of the
transactions contemplated herein and therein, and the performance by Biosyn of
its obligations hereunder and thereunder, do not and will not result in a
breach or violation of any of the terms and provisions of, or constitute a
default under, (i) any agreement or instrument to which it is party or by
which it is bound except for those subscription rights held by certain
shareholders that have been waived with regard to the issuance of the Warrant
and the shares of common stock of Biosyn issuable upon exercise of the Warrant
or (ii) its articles of incorporation or by-laws.


 


(h)                      As
of the date of this Agreement, the authorized capital stock of Biosyn consists
of twenty-five million (25,000,000) shares of common stock, par value $0.01 per
share (“Common Stock”), and one hundred thousand (100,000) shares of preferred
stock, par value $0.01 per share, twenty-one thousand (21,000) shares of which
have been designated “Series A Participating Preferred Stock” and
twenty-one thousand (21,000) shares of which have been designated as “Series B
Participating


 


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Preferred Stock”. 
The issued and outstanding shares of capital stock are as set forth on
Attachment D to this Agreement.  Other
than as set forth on such Attachment D and other than the Warrant, there are no
rights, subscriptions, warrants or agreements of any kind outstanding to
purchase any capital stock of Biosyn and no conversion rights with respect to
capital stock of Biosyn.


 


4.4                                 Biosyn
covenants as follows:


 


(a)                                  Biosyn
shall, with due diligence and good faith, but subject to the provisions of Article 5
of this Agreement, use commercially reasonable efforts to achieve each
Milestone in a timely manner and to commercialize the Products as promptly as
reasonably practicable consistent with sound and reasonable business practice
and judgment.  Attachment E to this Agreement
sets forth Biosyn’s general, and non-binding, development plan with respect to
a potential compound or formulation utilizing the UC 781 Technology for the
Permitted Field of Use, which development plan Crompton acknowledges to be
commercially reasonable and which development plan Crompton recognizes not to
contain all specific plans and details related to the planned development of
any Product and to be subject to modification as appropriate throughout such
development process.


 


(b)                                 Biosyn
shall keep Crompton informed (i) of progress toward achievement of the
Milestones, (ii) of plans, developments and achievements relating to the
marketing of Products throughout the world and (iii) of efforts to obtain
regulatory approvals with respect to the Products and the marketing of the
Products and the status of such efforts. 
The parties shall meet at times and places mutually agreeable or shall
participate in telephone conferences from time to time to enable Biosyn to
report to Crompton on the foregoing matters. 
Such reporting, whether by telephone or in meetings, shall take place
not less frequently than semiannually.


 


(c)                                  Biosyn
shall reserve for issuance upon exercise of the Warrant, such number of shares
of its Common Stock as shall, at the time, be issuable upon exercise of the
Warrant.


 


5.                                       Milestones


 


5.1                                 Biosyn
shall file with the United States Food and Drug Administration (“FDA”) for a
United States Investigational New Drug Application (or with an equivalent
foreign regulatory authority for a foreign equivalent in (a) [*], (b) [*]or
(c) [*]) that will describe protocols for the first in-human testing for
the UC 781 Technology in Phase I or Phase I/II testing.  Such filing shall comprise achievement of the
First Milestone.  If the First Milestone
has not been achieved on or before the date that is eighteen (18) months from
the date of this Agreement, Biosyn and Crompton shall meet to discuss, in good
faith, the reasons for the failure to achieve such First Milestone, suggested
cures and the anticipated time period to achieve such Milestone.  If, after such discussion, Crompton is
unwilling to extend the date for achievement of such Milestone, Crompton shall
have the right to terminate the License.


 


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5.2                                 [*]
shall comprise achievement of the Second Milestone.  If the Second Milestone has not been achieved
on or before the date that is [*] Biosyn and Crompton shall meet to discuss, in
good faith, the reasons for the failure to achieve such Second Milestone,
suggested cures and the anticipated time period to achieve such Milestone.  If, after such discussion, Crompton is
unwilling to extend the date for achievement of such Second Milestone, Crompton
shall have the right to terminate the License.


 


5.3                                 [*]
shall comprise achievement of the Third Milestone.  If the Third Milestone has not been achieved
on or before the date that is [*] Biosyn and Crompton shall meet to discuss, in
good faith, the reasons for the failure to achieve such Third Milestone,
suggested cures and the anticipated time period to achieve such Milestone.  If, after such discussion, Crompton is unwilling
to extend the date for achievement of such Third Milestone, Crompton shall have
the right to terminate the License.


 


	
  5.4

  	
  (a)

  	
  If Biosyn shall fail to achieve any of the
  Milestones and if Crompton shall exercise its right to terminate the License
  in accordance with Sections 5.1, 5.2 or 5.3 of this Agreement, Crompton shall
  have the option to purchase all development work theretofore undertaken by
  Biosyn in respect of UC 781 and the UC 781 Technology for the Permitted Field
  of Use and all of Biosyn’s rights therein (collectively, the “Development
  Work”) at an option exercise price equal to Biosyn’s cost incurred in such
  Development Work consisting of out-of-pocket expenditures paid to third
  parties plus an amount for overhead and internal labor costs calculated by
  using the rates then in effect for Biosyn with the National Institute of
  Health as established in accordance with FAR 42.705-1 (“Development
  Costs”). Such option shall be exercised, if at all, by notice to Biosyn given
  within ninety (90) days after the date of Crompton’s notice to Biosyn
  terminating the License.

  
	
   

  	
   

  	
   

  
	
   

  	
  (b)

  	
  In the event
  that Biosyn shall determine, at any time prior to the achievement of the
  Third Milestone that it does not intend to continue to pursue the development
  and testing of, seeking regulatory approval for, and sale, marketing or other
  offering of, any Product, Biosyn shall give prompt written notice of such
  determination to Crompton and Crompton shall have the option to purchase the
  Development Work at an option exercise price consisting of the Development Costs.
  Such option shall be exercised, if at all, by notice to Biosyn given within
  ninety (90) days after the date of Crompton’s receipt of Biosyn’s notice of
  such determination.

  
	
   

  	
   

  	
   

  
	
   

  	
  (c)

  	
  In the event
  that Crompton shall exercise either of the options provided for in this Section 5.4
  in respect of the Development Work, Biosyn shall provide reasonable
  assistance and cooperation in transferring the Development Work to Crompton.
  Crompton shall bear the reasonable out-of-pocket costs incurred by Biosyn to
  effect such transfer.

  



 


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6.                                       Developmental
Efforts


 


6.1                                 All
developmental expenses for Products including, but not limited to, all costs of
the conduct of testing and other trials will be borne by Biosyn.


 


6.2                                 Crompton
has available a quantity of UC 781 manufactured in accordance with good
manufacturing practices and maintained under good laboratory practices
conditions.  Notwithstanding the
provisions of Section 6.1 of this Agreement, Crompton shall provide to
Biosyn up to [*]grams of such UC 781 to assist Biosyn in connection with its
efforts to develop, test and obtain regulatory approval for Products.  Biosyn shall take delivery of [*] grams of
such UC 781 promptly after the date of this Agreement and shall have the right,
but not the obligation, to take delivery of all or part of the remaining [*]
grams at any time and from time to time thereafter, provided that if Biosyn
shall wish to take delivery of all or part of such remaining [*] Biosyn shall
so notify Crompton not later than [*] from the date of this Agreement.  Biosyn’s notice shall indicate how much of such
remaining [*] grams Biosyn will take and Biosyn’s best estimate of the date or
dates on which it will want delivery.  No
delivery of UC 781 under this Section 6.2 shall be for a quantity less
than [*].  Biosyn shall pay Crompton the
sum of [*] for each [*] gram quantity of UC 781 and such payment shall be made
within thirty (30) days after delivery of such UC 781.  Purification of the UC 781 shall be
undertaken at Crompton’s expense, but Biosyn shall provide good faith
assistance in trying to arrange for such purification at a lower cost than may
otherwise be available to Crompton.  The
UC 781 to be delivered hereunder shall have been either re-crystallized or
otherwise purified in such a manner that the UC 781 so delivered is no less
pure than if it had been re-crystallized; provided, however, that it is
understood and agreed that the first [*]grams of UC 781 to be delivered
pursuant to this Section 6.2 will be re-crystallized or otherwise purified
by Crompton at its facilities and, after such re-crystallization or other
purification, may not qualify as being manufactured in accordance with good
manufacturing practices.


 


7.                                       Initial
Payment and Milestone Payments


 


7.1                                 Upon
the execution of this Agreement, Biosyn shall pay to Crompton, in consideration
of the License granted under this Agreement, the sum of [*]and shall deliver to
Crompton the Warrant.


 


7.2                                 Upon
the successful achievement of the First Milestone, Biosyn shall pay to
Crompton, in consideration of the License granted under this Agreement, the sum
of [*].


 


7.3                                 Upon
the successful achievement of the Second Milestone, in consideration of the
License granted under this Agreement, Biosyn shall pay to Crompton the sum of [*]
and, in accordance with the terms of the Warrant, the Warrant shall become exercisable.


 


7.4                                 Upon
the successful achievement of the Third Milestone, Biosyn shall pay to
Crompton, in consideration of the License granted under this Agreement, the sum
of [*].


 


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8.                                       Royalty
Payments


 


8.1                                 Biosyn
shall pay to Crompton, during the term of this Agreement, royalties on Biosyn’s
Net Sales of Products.  For purposes of
this Agreement, “Net Sales” shall mean the gross amount billed or invoiced by
Biosyn, or any person or entity acting as Biosyn’s agent, for Products in the
Permitted Field of Use, less the sum of the following:


 


(a)                                  sales
taxes, use taxes, tariffs, import/export duties and other excise taxes imposed
on sales;


 


(b)                                 amounts
repaid or credited by reason of rejections, defects, recalls or returns or
because of chargebacks, retroactive price reductions, refunds or billing errors
not already reflected in amounts invoiced;


 


(c)                                  freight
costs, import and distribution allowances and insurance charges on shipments to
purchasers if included in invoiced amounts;


 


(d)                                 trade,
cash and/or quantity discounts and rebates and price reductions actually given
and not already reflected in amounts invoiced; and


 


(e)                                  compulsory
payments and rebates directly related to the sale of Products accrued, paid or
deducted pursuant to agreements, such as managed care agreements, or pursuant
to governmental regulations.


 


Net Sales shall not be deemed to include transfers
among divisions of Biosyn or to or from third party manufacturers or
formulators to enable them to produce or formulate Products on behalf of Biosyn
for sale by Biosyn.  Net Sales shall be
deemed to include payments to Biosyn by any sublicensees of all or any part of
the UC 781 Technology (“Sublicense Payments”); provided that any payments to
Biosyn for product development, research work, clinical studies and regulatory
approvals performed by or for Biosyn shall not be included as Net Sales.  As provided for in Section 10.3 of this
Agreement, Net Sales shall include monies recovered, net of out-of-pocket
expenses, in the prosecution of Infringements (as defined in such Section) or
defense against any counterclaim of invalidity or any declaratory judgment
action brought by a third party for non-infringement, invalidity or
interference.


 


8.2                                 Initially
the royalties under this Agreement shall be payable at the rate of [*] of Net
Sales; provided, however, that when the aggregate of the payments made by
Biosyn to Crompton pursuant to Article 7 of this Agreement and royalty
payments made by Biosyn to Crompton pursuant to this Article 8 have
reached [*], such royalty rate shall be reduced to [*]and when the aggregate of
the payments made by Biosyn to Crompton pursuant to Article 7 of this
Agreement and royalty payments made by Biosyn to Crompton pursuant to this Article 8
have reached [*], such royalty rate shall be reduced to [*].  In no event shall the issuance by Biosyn of
the Warrant in accordance with Section 7.1 of this Agreement or the
issuance by Biosyn of Common Stock upon the exercise of the Warrant be deemed a
payment pursuant to Article 7 of this Agreement for purposes of this Section 8.2.


 


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8.3                                 Royalty
Obligation, Reduction and Credit


 


(a)                                  Only
one royalty amount shall be due and payable under this Article 8 for any
Product sold by or on behalf of Biosyn, regardless of the number of Patents or
the amount of UC 781 Technology covering such Product, subject to subsection (d) of
Section 8.3 of this Agreement.


 


(b)                                 If Biosyn believes, based upon the practice of
the rights licensed hereunder with respect only to the UC 781 Technology in the
Permitted Field of Use, that such practice reasonably may infringe the patent
rights of any third party (“Third Party Rights”), then payments made for a
license to, or other acquisition of, such Third Party Rights shall be
considered for treatment as an offset against royalties otherwise owed to
Crompton under the following conditions:


 


(i)                                     Biosyn shall notify Crompton in writing either
before or after it acquires rights under such Third Party Rights, but no later
than ninety (90) days after acquiring such rights.  Crompton shall have ninety (90) days to
respond to Biosyn’s notification.


 


(ii)                                  If Crompton agrees in writing with Biosyn’s
belief that the practice of the rights licensed hereunder with respect to the
UC 781 Technology in the Permitted Field of Use reasonably may infringe the
Third Party Rights referred to in Biosyn’s notice, or if Crompton fails to
respond within its ninety (90) day response period, then Biosyn may have an
offset against royalties otherwise owed to Crompton hereunder as specified
below.


 


(iii)                               If Crompton notifies Biosyn in writing within
such ninety (90) day period that it does not agree with Biosyn’s belief that
the practice of the rights licensed hereunder with respect to the UC 781
Technology in the Permitted Field of Use reasonably may infringe such Third
Party Rights, then the Chief Executive Officer of Biosyn and an Executive Vice
President of Crompton shall meet to discuss and attempt to resolve the
dispute.  In the event that such parties
are unable to resolve the dispute, Biosyn may obtain the opinion of outside
legal counsel reasonably acceptable to Crompton, regarding such potential
infringement of Third Party Rights.


 


(A)                              If such opinion of outside legal counsel agrees
that the practice of the rights licensed hereunder with respect to the UC 781
Technology in the Permitted Field of Use reasonably may infringe such Third
Party Rights, then Biosyn may have an offset against royalties otherwise owed
to Crompton hereunder as specified below.


 


(B)                                If such opinion of outside legal counsel does not
agree that the practice of the rights licensed hereunder with respect to the UC
781 Technology in the Permitted Field of Use reasonably may infringe such Third
Party Rights, then Biosyn will not have an


 


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  portions of this document that have been omitted pursuant to a request for
  confidential treatment filed seperately with the Commission

  



 


offset against royalties otherwise owed to Crompton
hereunder; provided, however, that if Crompton shall ultimately acquire rights
to such Third Party Rights, Crompton shall so notify Biosyn, and Biosyn shall
be entitled to a royalty offset retroactive to the date of its notification to
Crompton pursuant to subsection(b)(i) of this Section 8.3.


 


(iv)                              Upon any such acquisition of rights under subsection (b)(ii) or
clause (A) of subsection (b)(iii) of this Section 8.3 or as
contemplated by the proviso of clause (B) of subsection (b)(iii) of
this Section 8.3, [*] of the consideration paid by Biosyn in respect of
such access to such Third Party Rights (whether paid in the form of up-front,
milestone or royalty payments, or otherwise) shall be credited against
royalties payable or becoming payable to Crompton under Article 8 of this
Agreement; provided, however, that in no circumstances shall Biosyn’s
acquisition of Third Party Rights result, in the aggregate, in a reduction of
royalties payable to Crompton of more than [*] of the royalties that would have
been payable, calculated on the basis of the royalty rate in effect, pursuant
to Section 8.2 of this Agreement, at the time such royalty payment would
otherwise be due.  For the avoidance of
doubt, the parties agree that the Third Party Rights to which this subsection (b) shall
apply shall be only those, if any, that may impair the ability of Biosyn (or
its sublicensees) to utilize the UC 781 Technology by itself in the Permitted
Field of Use, and not those, if any, that may impair the ability of Biosyn (or
its sublicensees) to utilize the UC 781 Technology in combination with other
compounds, devices or products or that may impair the utilization of the UC 781
Technology because of a method of manufacture that is not included as part of
the UC 781 Technology.


 


(c)                                  For
purposes of this subsection (c), “Biosyn Product” shall mean a Product
developed or manufactured by or for Biosyn in the Permitted Field of Use.  In the event that any Biosyn Product is sold
in any jurisdiction in which there is no Valid Claim in effect for any Patent (“Unprotected
Jurisdiction”) and in the event that there shall be any Product offered for
sale in such Unprotected Jurisdiction that is in the Permitted Field of Use (“Competitive
Product”), Biosyn may be entitled to a reduction of the royalties payable on
its Net Sales of such Biosyn Product in such Unprotected Jurisdiction, as
provided in this subsection (c).


 


(i)                                     If,
because of any Competitive Product in the Unprotected Jurisdiction, Biosyn
reduces the gross selling price of the applicable Biosyn Product in the
Unprotected Jurisdiction by less than [*], there shall be no royalty reduction
under this subsection (c) for such Biosyn Product in the Unprotected
Jurisdiction.


 


(ii)                                  If,
because of any Competitive Product in the Unprotected Jurisdiction, Biosyn
reduces the gross selling price of the applicable Biosyn Product in


 


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  portions of this document that have been omitted pursuant to a request for
  confidential treatment filed seperately with the Commission

  



 


the Unprotected Jurisdiction by [*] or more, but not
more than [*], Biosyn shall be entitled to a royalty reduction on its Net Sales
of such Biosyn Product in the Unprotected Jurisdiction.  Such reduction shall be a percentage of the
royalty rate otherwise at the time in effect under this Agreement equal to
twice Biosyn’s percentage reduction in the gross selling prices of the
applicable Biosyn Product in the Unprotected Jurisdiction.


 


(iii)                               If,
because of any Competitive Product in the Unprotected Jurisdiction, Biosyn
reduces the gross selling price of the applicable Biosyn Product in the
Unprotected Jurisdiction by more than [*], Biosyn shall be entitled to a royalty
reduction on its Net Sales of such Biosyn Product in the Unprotected
Jurisdiction which shall be [*] of the royalty rate otherwise at the time in
effect under this Agreement.


 


Biosyn shall give Crompton written notice of any
Competitive Product being offered or sold in any Unprotected Jurisdiction that
Biosyn believes would entitle Biosyn to a royalty reduction under this subsection (c).  Such notice shall include a reasonable
description of the Competitive Product and the applicable Biosyn Product, and
the amounts of Biosyn’s original and reduced gross selling prices of the
applicable Biosyn Product in the Unprotected Jurisdiction.  In the event that the offer or sale of any
Competitive Product in any Unprotected Jurisdiction shall, in Biosyn’s judgment,
make it impracticable for Biosyn to offer or sell any Biosyn Product or
Products notwithstanding the royalty rate reductions provided for in this subsection (c),
Biosyn may so advise Crompton.  In such
event, Crompton and Biosyn shall meet to negotiate in good faith an appropriate
and mutually acceptable royalty reduction other than as set forth in clauses
(i), (ii) and (iii) of this subsection (c).


 


(d)                           In
any jurisdiction in which any of the Patents have been filed, if Crompton shall
elect, in accordance with Section 9.3 of this Agreement, not to maintain
any Patent or Patents or if Crompton shall not, as provided in Article 10
of this Agreement, bring an action for an Infringement (as defined in Section 10.1
of this Agreement) or defend against any counterclaim of invalidity or any
declaratory judgment action brought by a third party for non-infringement,
invalidity or interference and if, as a result of such election or such failure
to bring such an action or defend against such an action, there shall no longer
be in such jurisdiction Valid Claims under Patents sufficient to prevent sales
in such jurisdiction of competitive products utilizing all or any part of the
UC 781 Technology, Biosyn shall no longer be obligated to pay royalties on its
Net Sales of Products in such jurisdiction.


 


8.4                                 Upon
the first commercial sale of any Product by or on behalf of Biosyn and
thereafter within forty-five (45) days of the end of each calendar quarter,
Biosyn shall provide Crompton with a certificate signed by an executive officer
of Biosyn certifying the following information for such quarter for the
Products:


 


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  [*]         designates
  portions of this document that have been omitted pursuant to a request for
  confidential treatment filed seperately with the Commission

  



 


(a)                                  the
number of Products sold by Biosyn (by Product type);


 


(b)                                 total
of gross amounts billed or invoiced for Products sold by or on behalf of
Biosyn, with a break-out showing separately billings in each applicable foreign
currencies;


 


(c)                                  deductions
from total amounts billed or invoiced for Products used to arrive at Net Sales
of Products;


 


(d)                                 exchange
rates used for each conversion of any foreign currency billings or invoices
into United States dollars;


 


(e)                                  a
tabulation of all initial payments, Milestone payments (excluding the issuance
of the Warrant provided for in Section 7.1 and any issuance of Biosyn
Common Stock upon exercise of the Warrant) and royalty payments theretofore
made by Biosyn to Crompton pursuant to this Agreement; and


 


(f)                                    amounts
claimed by Biosyn, pursuant to subsection (b) of Section 8.3 of
this Agreement as credits against royalty amounts otherwise payable or,
pursuant to subsection (c) of Section 8.3, as reduced royalties;
and


 


(g)                                 Biosyn’s
calculation of the royalty amount payable to Crompton under this Agreement in
respect of such quarter.


 


The royalty amounts so calculated by Biosyn in the
certificates of Biosyn’s executive officer shall accompany such certificates.


 


8.5                                 Biosyn
shall keep full, true and accurate books and records containing sufficient
detail to enable verification of the royalties payable to Crompton pursuant to
this Article 8.  Such books and
records shall be maintained at Biosyn’s principal place of business for not
less than three (3) years following the end of the quarter to which they
pertain.  On reasonable notice and at
reasonable times, Biosyn shall permit a nationally recognized independent
certified public accountant (who may be a representative of Crompton’s firm of
auditors) appointed by Crompton and reasonably acceptable to Biosyn to examine
such books and records of Biosyn as may be reasonably necessary and only to the
extent necessary to verify the royalties payable to Crompton pursuant to this Article 8;
provided that such accountant shall have entered into a confidentiality
agreement with Biosyn.  Such examination
may occur only once in each calendar year and may apply only to records
pertaining to the preceding three (3) calendar years.  Any such audit shall be at Crompton’s
expense, unless such audit shall disclose an underpayment by Biosyn greater
than [*] for any particular calendar year, in which event, the cost of such
audit shall be payable by Biosyn.  In the
event that such examination shall reveal that Biosyn has overpaid royalties
under this Article 8, Biosyn shall be entitled to an immediate credit
against future royalty payments for the amount of any such overpayment.


 


8.6                                 Payments
provided for in this Article 8 and amounts due to Crompton under Article 7
shall, if overdue for more than fifteen (15) days, bear interest until payment
has been made at the


 


14





















 


lesser of (a) a rate equal to two percent above
the “Prime Rate”, as published in the Wall Street Journal,
in effect on the payment due date and (b) the highest rate permitted by
applicable law.  The payment of any such
interest shall not deprive Crompton of any other rights it may have at law or
in equity as a consequence of the lateness of payment.


 


9.                                       Patent
Prosecution, Maintenance Fees and Marking


 


9.1                                 Crompton
will be responsible for and will pay for the prosecution of all patent
application matters, including but not limited to continuations, reissues,
oppositions and appeals, relating to the Patents, except as otherwise provided
in Section 9.3 of this Agreement.  Beginning from and after the execution and
delivery of this Agreement, Crompton shall furnish Biosyn with copies of all
substantive communications between the United States Patent and Trademark
Office (or any applicable foreign equivalent) and Crompton regarding pre- and
post- issuance prosecution of International Application WO 97/45116 everywhere
in the world, as well as copies of any responses or amendments thereto.  Crompton shall provide copies of all
substantive communications relating to such patent application sufficiently in
advance of the proposed submission date of amendments and responses to allow
Biosyn to comment thereon.  Crompton
shall consider any reasonable request, comment or recommendation made by Biosyn
pertaining to such communication. 
Notwithstanding anything to the contrary above, final decisions with
respect to the prosecution of such patent application shall be determined by
Crompton in its sole discretion.


 


9.2                                 Crompton
shall be solely responsible for all maintenance fees relating to the Patents,
except as otherwise provided in Section 9.3 of this Agreement.


 


9.3                                 Crompton
may, in its sole discretion, decide to abandon any pending Patent application
or to refrain from paying any fee required to maintain any Patent.  In such event, Crompton shall notify Biosyn,
in writing, of such decision not less than forty-five (45) days before the
expiration of the time when such decision would have irrevocable effect and
Biosyn shall, thereupon, have the right to assume responsibility for the
prosecution of such pending Patent application or the maintenance of such
Patent at its sole cost and expense.  If
Biosyn shall assume such responsibility, Crompton shall assign such Patent
application or Patent, as the case may be, to Biosyn but subject, in any such
case, to any rights theretofore granted or conveyed by Crompton to other
parties in respect of fields of use other than the Permitted Field of Use.


 


9.4                                 Biosyn
shall mark or cause to be marked all Products with the applicable Patent
numbers.


 


10.                                 Enforcement
of Patents


 


10.1                           Each
party shall promptly notify the other party, in writing, of any alleged Patent
infringement relating to the manufacture, use and/or sale of Products for the
Permitted Field of Use (“Infringement”) of which it becomes aware and shall
provide any evidence available to it of such Infringement.


 


10.2                           Crompton
may bring an action for an Infringement and may defend against any counterclaim
of invalidity or any declaratory judgment action brought by a third party for
non-infringement,


 


15





















 


invalidity or interference.  Biosyn shall cooperate with Crompton in all
reasonable respects in the prosecution and/or defense of such action including,
without limitation, making its employees available to testify and providing all
relevant documents, records, papers, information, samples, specimens and the
like, as reasonably requested by Crompton.


 


10.3                           If
Crompton does not, within ninety (90) days of notice from Biosyn of an
Infringement, bring such an action for patent infringement and/or act to defend
against any such counterclaim or declaratory judgment action, Biosyn shall have
the right to bring suit for such infringement and to join Crompton as a party
plaintiff or to use Crompton’s name, if required by law, at Biosyn’s sole cost
and expense and with counsel of its own selection; provided, however, that
Biosyn acknowledges and agrees that any other person or entity to whom Crompton
shall have theretofore granted or conveyed rights under such Patent may join as
a party plaintiff in such action. 
Crompton shall cooperate with Biosyn in all reasonable respects in the
prosecution or defense of such action including, without limitation, making its
employees available to testify and providing all relevant documents, records,
papers, information, samples, specimens and the like, as reasonably requested
by Biosyn.  Biosyn may settle any such
action at its own expense and through its own counsel, subject to the approval
of Crompton, which approval shall not be unreasonably withheld or delayed, but
Biosyn understands and acknowledges that Crompton will not, and may not be
required to, approve any settlement that may materially adversely affect the
rights of any other person or entity to which Crompton shall have theretofore
granted or conveyed rights under the applicable Patent.  In the event that Biosyn shall recover any
moneys in any such action, whether by way of judgment or settlement, the excess
of such recoveries, including damages and interest amounts, over Biosyn’s
out-of-pocket expenses in the prosecution or defense of such action shall be
included as Net Sales of Products for the purpose of calculation of royalties payable
to Crompton pursuant to Article 8 of this Agreement.


 


11                                    Liability
and Indemnity


 


11.1                           Biosyn
shall indemnify and hold harmless Crompton and its subsidiaries, affiliates,
directors, officers, employees and agents from and against any and all loss, cost,
claim, damage, liability or expense (including reasonable attorneys’ fees,
costs of suit and costs of appeal) incurred by any of them arising out of or in
connection with any claim, action, suit, proceeding or investigation (“Claim”)
filed or threatened including, without limitation, any Claim alleging death or
injury to any person, with respect to (a) the production, manufacture,
sale, marketing, distribution, shipment, transportation, handling, cleanup, use
or disposal of any Product developed, manufactured or sold by or on behalf of
Biosyn, (b) the negligence or willful misconduct of Biosyn and/or its
subsidiaries, affiliates, directors, officers, agents, contract manufacturers,
distributors, sublicensees and other representatives and (c) the breach by
Biosyn of any of its obligations under this Agreement.


 


11.2                           Crompton
shall indemnify and hold harmless Biosyn and its subsidiaries, affiliates,
directors, officers, employees and agents from and against any and all loss,
cost, claim, damage, liability or expense (including reasonable attorneys’
fees, costs of suit and costs of appeal) incurred by any of them arising out of
or in connection with any Claim filed or threatened including, without
limitation, any Claim alleging death or injury to any person, with respect to


 


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  portions of this document that have been omitted pursuant to a request for
  confidential treatment filed seperately with the Commission

  



 


(a) the breach by Crompton of any of its
representations and warranties set forth in Section 4.1 of this Agreement
and (b) the breach by Crompton of any of its obligations under this
Agreement.


 


11.3                           The
selection of the UC 781 Technology for the development, making, use and sale of
Products, and the decision to market any Products for the Permitted Field of
Use, is solely Biosyn’s, and Crompton does not assume any responsibility
whatsoever for such development, making, use, sale or marketing.  CROMPTON MAKES NO EXPRESS OR IMPLIED WARRANTY
OF ANY KIND INCLUDING, BUT NOT LIMITED TO, ANY WARRANTY OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, OR ANY OTHER THING CONCERNING THE PATENTS OR
UC 781 TECHNOLOGY, NOR DOES CROMPTON MAKE ANY REPRESENTATIONS CONCERNING ANY
PRODUCT THAT MAY BE MADE, USED OR SOLD. 
IN PARTICULAR, AND WITHOUT LIMITING THE GENERALITY OF THE FOREGOING,
CROMPTON MAKES NO REPRESENTATION OR WARRANTY THAT ANY PRODUCT WILL BE SAFE OR
EFFECTIVE FOR THE PERMITTED FIELD OF USE OR WILL BE GRANTED ANY REQUIRED
REGULATORY APPROVALS.  Nor does Crompton
make any representation or warranty that the practice by Biosyn of the rights
under the License will not infringe proprietary rights of any third party.  In no event shall Crompton have any liability
whatsoever for damages, whether direct, indirect, special or consequential,
including without limitation damages for economic loss, death or injury to
persons or damage to property, in respect of any Patent, the UC 781 Technology
or any Product, whether or not Crompton shall be advised, shall have reason to
know or in fact shall know of the possibility of such damages.


 


11.4                           Biosyn
shall, with respect to the Product in the Permitted Field of Use, obtain and
maintain in full force and effect product liability insurance in an amount and
with coverage (which shall include Biosyn’s indemnification obligations to
Crompton pursuant to this Agreement), which is reasonable and customary in
Biosyn’s industry based on the developmental stage of the Product under
development and which shall not be less than [*] per occurrence during such
development but which shall be reviewed at the commencement of clinical trials
and upon commercialization and increased as appropriate, reasonable and
customary in such industry, at such stages. 
Biosyn shall provide Crompton with evidence of such insurance and the
policies of such insurance shall require that Crompton be given notice of any
cancellation of such insurance or reduction of coverage or amount and shall
name Crompton as an additional insured.


 


12.                                 Compliance
with Law


 


12.1                           Biosyn,
its subsidiaries, affiliates, directors and officers shall, and Biosyn shall
use commercially reasonable efforts to cause its agents, contract
manufacturers, distributors, sublicensees and other representatives to, comply
with all United States federal, state and local laws, rules and
regulations and all foreign laws, rules and regulations applicable to the
development, testing, production, transportation, packaging, labeling, export,
import, marketing, distribution, sale and use of the Products in the Permitted
Field of Use.


 


17





















 


13.                                 Confidentiality


 


13.1                           The
recipient of information supplied pursuant to this Agreement shall treat the
same as confidential.  For purposes of
this Section 13.1, the terms “recipient” and “recipient party” shall mean
the party receiving information pursuant to this Agreement, its officers,
directors, employees and agents.  The
foregoing obligations as to confidentiality shall not extend to any transmitted
information that is publicly available at the date of its disclosure to the
recipient party or which is, at that date, already properly in the possession
of the recipient party (evidenced by writing) or which may thereafter become
publicly available from sources other than the recipient party and its
employees or which may properly thereafter become available to the recipient
party on a non-confidential basis from a source other than the disclosing party
and that is not known by the recipient party to be under an obligation of
confidentiality to the disclosing party with respect thereto.  For the purpose of this Section 13.1,
disclosures made to the recipient party under this Agreement which are specific
shall be deemed to be confidential and therefore shall not be deemed to be
within the exceptions set forth in this Section 13.1 merely because they
are embraced by general disclosures in the public domain or in the possession
of the recipient party.  In addition, any
combination of features shall be deemed to be confidential and therefore shall
not be deemed to be within the foregoing exceptions merely because individual
features are in the public domain or in the possession of the recipient party;
provided that such combination of features shall be deemed not to be
confidential and to be within the exception set forth in this Section 13.1
only if the combination itself and its principle of operation are in the public
domain or in the possession of the recipient party.  The obligations set forth in this Section shall
survive for a period of five years after the expiration or termination of this
Agreement.  Notwithstanding the foregoing
provisions of this Section 13.1, Biosyn may disclose information supplied
by or on behalf of Crompton pursuant to this Agreement to sublicensees of
Biosyn’s rights under Article 2 of this Agreement or any consultants,
manufacturers and other third parties for the purpose of development,
manufacture and/or sale of Products, but only if such sublicensees,
consultants, manufacturers and other third parties, as the case may be, agree
in writing to be bound by nondisclosure undertakings equivalent to those of
Biosyn under this Article 13.


 


13.2                           If
either party becomes or believes that it will become legally compelled to
disclose any confidential information of the other party, the party subject to
such disclosure requirement shall give prompt written notice of such
requirement to the other party prior to any such disclosure so that such other
party may seek a protective order or other appropriate remedy and/or waive
compliance with the provisions of Section 13.1 of this Agreement.  The party subject to such disclosure
requirement shall disclose only the portion of the confidential information
that, in the reasonable judgment of its counsel, it is legally required to
disclose and shall use reasonable efforts to obtain an appropriate protective
order or other reasonable assurance that the confidential information being
disclosed will be given confidential treatment.


 


13.3                           Biosyn
shall have the right to publish its results in scientific journals or at
scientific meetings.  In order that
disclosure of information described in a publication will not adversely affect
the patent rights or proprietary rights of Crompton, Crompton shall be given
the opportunity to review any proposed manuscript or abstract for a period of
thirty (30) days before it is submitted for publication.  If Crompton shall reasonably determine that
any proprietary information of Crompton is disclosed in the proposed manuscript
or abstract, Crompton shall have the right to require that such information be
deleted.  If the proposed manuscript or
abstract describes any patentable invention, Crompton shall have the right to
request a reasonable delay


 


18





















 


in submission of the proposed manuscript or abstract
so that Crompton can further evaluate such invention and initiate filing, if it
deems it necessary, of appropriate patent applications.


 


14.                                 Termination


 


14.1                           Biosyn
may terminate this Agreement at any time and for any reason or no reason upon
sixty (60) days prior written notice.  In
the event of any such termination, the License shall immediately and
automatically revert back to Crompton.


 


14.2                     This
Agreement may be terminated prior to expiration of the term hereof by either
party “for cause” immediately upon notice. 
A party shall have the right to terminate this Agreement “for cause” in
the event of: (i) any material breach of this Agreement by the other party
that shall go uncorrected for a period of thirty (30) days after notice of such
breach, setting forth the details thereof with reasonable particularity, has
been given to the other party; or (ii) the institution against the other
party of voluntary proceedings in bankruptcy or under any insolvency law or law
for the relief of debtors, the making by or on behalf of the other party of an
assignment for the benefit of creditors, the filing by or on behalf of the
other party of an involuntary petition under any bankruptcy or insolvency law,
unless such petition is dismissed or set aside within sixty (60) days from the
date of its filing, or the appointment for such other party of a receiver or
trustee, unless such appointment is dismissed or set aside within sixty (60)
days from the date of such appointment. 
Termination of this Agreement, or of the License as provided for in Article 5
of this Agreement, shall not be deemed to terminate or extinguish any right
accruing prior to the effectiveness of such termination.  In the event of any such termination by
Crompton pursuant to clause (i) of this Section 14.2, the License
shall immediately and automatically revert back to Crompton.  In the event of any termination of this
Agreement by Biosyn pursuant to clause (i) of this Section 14.2, the
License shall survive as a fully-paid, perpetual, worldwide, exclusive license
in the Permitted Field of Use.


 


14.3                           In
the event of any termination of this Agreement by Biosyn pursuant to Section 14.1
of this Agreement or by Crompton pursuant to Section 14.2 of this
Agreement, Crompton shall have the option in respect of the Development Work
provided for in Section 5.4 of this Agreement.


 


15.                                 Notice


 


15.1                           All
notices, requests, demands and other communications which are required or
permitted to be given under this Agreement shall be in writing and shall be
deemed to be duly given upon the delivery or mailing thereof, as the case may
be, if hand delivered or sent by registered or certified mail, return receipt
requested, postage prepaid, or upon delivery to an express courier service,
addressed in any such case:


 


19





















 


	
  if
  to Crompton or any Crompton Affiliate:

  
	
   

  
	
   

  	
  Crompton
  Corporation

  
	
   

  	
  Benson Road

  
	
   

  	
  Middlebury,
  Connecticut 06749

  
	
   

  	
  Attn: Executive
  Vice President and

  
	
   

  	
  General Manager Crop Protection Division

  
	
   

  
	
  if
  to Biosyn:

  
	
   

  
	
   

  	
  Biosyn, Inc.

  
	
   

  	
  3401 Market
  Street, Suite 300

  
	
   

  	
  Philadelphia,
  Pennsylvania 19104

  
	
   

  	
  Attn: Chief
  Executive Officer

  



 


or to such other address
as either party shall have specified for itself by notice to the other given in
accordance with this Section 15.1.


 


16.                                 Use
of Name


 


16.1                           Except
as otherwise provided herein, neither party shall have any right, express or
implied, to use in any manner the name of the other party or any other trade
name or trademark or other identifying mark or symbol of the other party for
any purpose in connection with the performance of this Agreement.


 


17.                                 Announcements


 


17.1                           All press
releases and other public announcements related to the subject matter hereof
shall be made only with the mutual written agreement of the parties hereto
(which shall not be unreasonably withheld or delayed), except that any such
public announcement required by law (including regulations of the FDA or
Securities and Exchange Commission) may be made without such written agreement.


 


18.                                 General


 


18.1                           This
Agreement shall be binding upon and inure to the benefit of the parties hereto
and their respective successors and assigns, provided, however, that neither
party shall have the right to transfer or assign its interest in this Agreement
without the prior written consent of the other party except pursuant to (a) a
merger, consolidation or reorganization of the assigning party or the sale of
substantially all of the assets of the assigning party or (b) an
assignment, in whole or in part, to any entity controlling, controlled by or
under common control with the assigning party, provided that the assigning
party remains liable for the performance and observance of the duties and
obligations of the assignee under this Agreement.


 


18.2                           This
Agreement shall be governed by and construed in accordance with the laws of the
State of Connecticut, United States, without giving effect to the
conflicts-of-laws provisions


 


20





















 


thereof, except where the
federal laws of the United States are applicable and have precedence; provided,
however, that it is hereby acknowledged that the Warrant and the issuance of
the Warrant will, as provided therein, be governed by and construed in
accordance with the laws of the Commonwealth of Pennsylvania.


 


18.3                           No
waiver of any right under this Agreement shall be deemed effective unless
contained in a writing signed by the party charged with such waiver, and no
waiver of any right arising from any breach or failure to perform shall be
deemed to be a waiver of any future such right or of any other right arising
under this Agreement.


 


18.4                           This
Agreement, the agreements referred to in this Agreement and the License
Agreement between Biosyn and Crompton of even date herewith relating to rights
of reference and use of data related to certain Biosyn regulatory filings set
forth and constitute the entire agreement between the parties hereto with
respect to the subject matter hereof, and supersede any and all prior
agreements, understandings, promises and representations made by either party
to the other concerning the subject matter hereof and the terms applicable
hereto.  No other terms and conditions
shall be binding on either party including terms that may be additional to or
at variance with the terms hereof, unless such provision is expressly agreed to
in writing signed by both parties hereto.


 


18.5                           If any
provision of this Agreement is or becomes or is deemed invalid, illegal or
unenforceable in any jurisdiction to which the Agreement is sought to be
enforced, (a) such provision shall be deemed amended to conform to
applicable laws of such jurisdiction so as to be valid and enforceable or, if
it cannot be so amended without materially altering the intention of the
parties, it shall be stricken; (b) the validity, legality and
enforceability of such provision shall not in any way be affected or impaired
thereby in any other jurisdiction; and (c) the remainder of this Agreement
shall remain in full force and effect.


 


18.6                           Except
as otherwise provided herein, neither party to this Agreement shall be liable,
or be in breach of any provision hereof, for any failure or delay on its part
to perform any obligation (other than the obligation to make payments when due)
under any provision of this Agreement because of circumstances of force majeure, including, but not limited to, any act of
God, flood, fire, explosion, breakdown of plant, strike, lockout, labor
dispute, war, insurrection, riot, sabotage, or any injunction, law, ordinance
or demand or requirement of any governmental authority, or inability to procure
or use materials, labor, equipment or energy sufficient to meet manufacturing
needs from customary sources at customary prices and without litigation, or any
other cause whatsoever, whether similar or dissimilar to those enumerated
herein, beyond the reasonable control of such party.  If any such event or force
majeure shall prevent a party from performing its obligations
hereunder for a period of six months or more, the other party may terminate
this Agreement forthwith by written notice.


 


18.7                           The
headings of this Agreement are included only for ease of reference and shall
not affect the interpretation of this Agreement in any manner.


 


21





















 


IN
WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
by their respective authorized representatives on the dates indicated below,
effective as of the 22nd day of May, 2001.


 


	
   

  	
  BIOSYN, INC.

  
	
   

  	
   

  
	
   

  	
  By:

  	
   

  	
   

  
	
   

  	
  Name:  Anne-Marie Corner

  
	
   

  	
  Title: Chief
  Executive Officer

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  CROMPTON
  CORPORATION

  
	
   

  	
   

  
	
   

  	
  By:

  	
   

  	
   

  
	
   

  	
  Name:  Alfred F. Ingulli

  
	
   

  	
  Title: Executive
  Vice President

  
	
   

  	
   

  
	
  With
  respect to the matters set forth in Article 2 of the foregoing Agreement.

  
	
   

  	
   

  
	
   

  	
  CROMPTON
  MANUFACTURING

  
	
   

  	
  COMPANY, INC.

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  By:

  	
   

  	
   

  
	
   

  	
  Name:  Alfred F. Ingulli

  
	
   

  	
  Title: Executive
  Vice President

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  UNIROYAL
  CHEMICAL COMPANY, INC.

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  By:

  	
   

  	
   

  
	
   

  	
  Name:  Walter K. Ruck

  
	
   

  	
  Title: President

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  CROMPTON CO./
  CIE

  
	
   

  	
   

  
	
   

  	
  By:

  	
   

  	
   

  
	
   

  	
  Name:  Walter K. Ruck

  
	
   

  	
  Title: President

  



 


22





















 










	
   

  	
  [*]         designates
  portions of this document that have been omitted pursuant to a request for
  confidential treatment filed seperately with the Commission

  



 


ATTACHMENT A


 


Foreign Patents and Patent Applications


 


I.                                         USPN
5,268,389 AND 5,693,827 AND FOLLOWING FOREIGN EQUIVALENTS


 


[*]


 


	
  COUNTRY

  	
   

  	
  STATUS

  	
   

  	
  APPLN. NO.

  	
   

  	
  PATENT NO.

  	
   

  
	
  AUSTRIA

  	
   

  	
  GRANTED

  	
   

  	
  90915588.9

  	
   

  	
  0497816

  	
   

  
	
  AUSTRALIA

  	
   

  	
  GRANTED

  	
   

  	
  66035/90

  	
   

  	
  636409

  	
   

  
	
  BELGIUM

  	
   

  	
  GRANTED

  	
   

  	
  90915588.9

  	
   

  	
  0497816

  	
   

  
	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  SWITZERLAND

  	
   

  	
  GRANTED

  	
   

  	
  90915588.9

  	
   

  	
  0497816

  	
   

  
	
  GERMANY

  	
   

  	
  GRANTED

  	
   

  	
  90915588.9

  	
   

  	
  69019533.8

  	
   

  
	
  DENMARK

  	
   

  	
  GRANTED

  	
   

  	
  90915588.9

  	
   

  	
  0497816

  	
   

  
	
  FRANCE

  	
   

  	
  GRANTED

  	
   

  	
  90915588.9

  	
   

  	
  0497816

  	
   

  
	
  GREAT BRITAIN

  	
   

  	
  GRANTED

  	
   

  	
  90915588.9

  	
   

  	
  0497816

  	
   

  
	
  GREECE

  	
   

  	
  GRANTED

  	
   

  	
  90915588.9

  	
   

  	
  3017128

  	
   

  
	
  HAITI

  	
   

  	
  GRANTED

  	
   

  	
   

  	
   

  	
  198/5

  	
   

  
	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  ISRAEL

  	
   

  	
  GRANTED

  	
   

  	
  95956

  	
   

  	
  95956

  	
   

  
	
  ITALY

  	
   

  	
  GRANTED

  	
   

  	
  90915588.9

  	
   

  	
  0497816

  	
   

  
	
  JAPAN

  	
   

  	
  GRANTED

  	
   

  	
  514569/90

  	
   

  	
  1967760

  	
   

  
	
  SOUTH KOREA

  	
   

  	
  GRANTED

  	
   

  	
  700831/92

  	
   

  	
  0222233

  	
   

  
	
  LUXEMBOURG

  	
   

  	
  GRANTED

  	
   

  	
  90915588.9

  	
   

  	
  0497816

  	
   

  
	
  MEXICO

  	
   

  	
  GRANTED

  	
   

  	
  22844

  	
   

  	
  179450

  	
   

  
	
  NICARAGUA

  	
   

  	
  GRANTED

  	
   

  	
  91-009

  	
   

  	
  920R.P.I.

  	
   

  
	
  NETHERLANDS

  	
   

  	
  GRANTED

  	
   

  	
  90915588.9

  	
   

  	
  0497816

  	
   

  
	
  NEW ZEALAND

  	
   

  	
  GRANTED

  	
   

  	
  235653

  	
   

  	
  235653

  	
   

  
	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  RUSSIAN FED.

  	
   

  	
  GRANTED

  	
   

  	
  5011885.04

  	
   

  	
  2108785

  	
   

  
	
  SWEDEN

  	
   

  	
  GRANTED

  	
   

  	
  90915588.9

  	
   

  	
  0497816

  	
   

  



 


23





















 


	
  TAIWAN

  	
   

  	
  GRANTED

  	
   

  	
  79108696

  	
   

  	
  NI-58187

  	
   

  
	
  SOUTH AFRICA

  	
   

  	
  GRANTED

  	
   

  	
  90/8094

  	
   

  	
  90/8094

  	
   

  



 


II.                                     USPN
5,696,151 AND THE FOLLOWING FOREIGN EQUIVALENTS


 


	
  COUNTRY

  	
   

  	
  STATUS

  	
   

  	
  APPLICATION NO.

  	
   

  	
  PATENT NO.

  	
   

  
	
  KENYA

  	
   

  	
  GRANTED

  	
   

  	
  AP/P/98/01245

  	
   

  	
  AP902

  	
   

  
	
  GAMBIA

  	
   

  	
  GRANTED

  	
   

  	
  AP/P/98/01245

  	
   

  	
  AP902

  	
   

  
	
  ZIMBABWE

  	
   

  	
  GRANTED

  	
   

  	
  AP/P/98/01245

  	
   

  	
  AP902

  	
   

  
	
  GHANA

  	
   

  	
  GRANTED

  	
   

  	
  AP/P/98/01245

  	
   

  	
  AP902

  	
   

  
	
  AFRICA (ARIPO)

  	
   

  	
  GRANTED

  	
   

  	
  AP/P/98/01245

  	
   

  	
  AP902

  	
   

  
	
  LESOTHO

  	
   

  	
  GRANTED

  	
   

  	
  AP/P/98/01245

  	
   

  	
  AP902

  	
   

  
	
  MALAWI

  	
   

  	
  GRANTED

  	
   

  	
  AP/P/98/01245

  	
   

  	
  AP902

  	
   

  
	
  SUDAN

  	
   

  	
  GRANTED

  	
   

  	
  AP/P/98/01245

  	
   

  	
  AP902

  	
   

  
	
  SWAZILAND

  	
   

  	
  GRANTED

  	
   

  	
  AP/P/98/01245

  	
   

  	
  AP902

  	
   

  
	
  UGANDA

  	
   

  	
  GRANTED

  	
   

  	
  AP/P/98/01245

  	
   

  	
  AP902

  	
   

  
	
  AUSTRALIA

  	
   

  	
  GRANTED

  	
   

  	
  11199/97

  	
   

  	
  704086

  	
   

  
	
  BRAZIL

  	
   

  	
  PENDING

  	
   

  	
  PI9611838.5

  	
   

  	
   

  	
   

  
	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  HAITI

  	
   

  	
  GRANTED

  	
   

  	
   

  	
   

  	
  229-REG.5

  	
   

  
	
  HUNGARY

  	
   

  	
  PUBLISHED

  	
   

  	
  P9901990

  	
   

  	
   

  	
   

  
	
  JAPAN

  	
   

  	
  GRANTED

  	
   

  	
  520533/97

  	
   

  	
  3027771

  	
   

  
	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  NEW ZEALAND

  	
   

  	
  GRANTED

  	
   

  	
  324118

  	
   

  	
  324118

  	
   

  
	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  



 


24





















 


	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  SOUTH AFRICA

  	
   

  	
  GRANTED

  	
   

  	
  96/9490

  	
   

  	
  96/9490

  	
   

  



 


 


III.                                 USPN
6,017,947


 


No
filings outside of the United States.


 


IV.                                 INTERNATIONAL
APPLICATION PUBLICATION NO. WO/97/45116 AND THE FOLLOWING EQUIVALENTS:


 


	
  COUNTRY

  	
   

  	
  STATUS

  	
   

  	
  APPLICATION NO.

  	
   

  	
  PATENT NO.

  	
   

  
	
  [*]

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  



 


25





















 


ATTACHMENT B


 


Form of
Warrant


 


26





















 










	
   

  	
  [*]         designates
  portions of this document that have been omitted pursuant to a request for
  confidential treatment filed seperately with the Commission

  



 


ATTACHMENT C


 


Documents for Transfer of UC-781 Technology


 


[*]


 


27





















 


ATTACHMENT D


 


Capitalization of
Biosyn


 


Capitalization
of Biosyn, Inc.


as of May 18,
2001


 


	
   

  	
   

  	
  Total Outstanding

  	
   

  	
  Convertible into

  or Exercisable for

  No. of Shares of

  Common Stock

  	
   

  
	
  Common Stock

  	
   

  	
  4,506,267

  	
   

  	
  n/a

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Series A Preferred

  	
   

  	
  7,000

  	
   

  	
  2,800,000

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Series B Preferred

  	
   

  	
  5,000

  	
   

  	
  1,666,667

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Warrants (other than the Warrant to be issued to Crompton
  per License)

  	
   

  	
  n/a

  	
   

  	
  563,000

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Options (NQSOs & ISOs)

  	
   

  	
  n/a

  	
   

  	
  1,866,168

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
  Fully Diluted Total

  	
   

  	
  11,402,102

  	
   

  



 


28





















 










	
   

  	
  [*]         designates
  portions of this document that have been omitted pursuant to a request for
  confidential treatment filed seperately with the Commission

  



 


ATTACHMENT E


 


Non-binding Development Plan


 


[*]


 


29





















 


EXHIBIT I


 


Research Agreement between Rega Institute for Medical Research


and Uniroyal Chemical Company, Inc.


 


30