**Exhibit 10.2**

 

*****TextOmitted and Filed Separately**

**with theSecurities and Exchange Commission.**

**ConfidentialTreatment Requested**

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

**and240.24b-2.**

 

**INTELLECTUALPROPERTY ASSIGNMENT AND**

**LICENSEAGREEMENT**

 

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

 

**RECITALS**

 

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

 

**WHEREAS,** Optimer has assigned, and OBI has assumed, Optimer’srights and obligations under certain license agreements related to thedevelopment programs known as OPT-88 and OPT-822/821;

 

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

 

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

 

**WHEREAS,** in connectionwith the sale of OBI stock by Optimer pursuant tothat certain Stock Purchase Agreement between Optimer and the purchasers listedon Schedule A thereto (the “***Purchasers”***)of even date herewith and commitments by Optimer and the Purchasers topurchase an aggregate of 66,000,000 new shares of OBI’s common stock pursuantto that certain Financing Agreement between Optimer, the Purchasers and OBI ofeven date herewith (the ***“Financing Agreement”***),(i) Optimer is willing to assign to OBI all its right, title and interestin and to certain patent rights and know-how related to its OPT-88 andOPT-822/821 programsand forgive OBI’soutstanding intercompany indebtedness to Optimer, and (ii) OBI is willingto terminate the Prior License Agreement and OBI’s license rights thereunder,all subject to the terms and conditions set forth below.

 

**AGREEMENT**

 

**NOW, THEREFORE,**inconsideration of the foregoing and the mutual covenants and conditions setforth below, and for other good and valuable consideration, the receipt andsufficiency of which are hereby acknowledged, the parties hereby agree asfollows:

 

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** **

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

 

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

 

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

 

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

 

**1.4****                              ****“FirstCommercial Sale”** shall mean, with respect to any Product, the firstsale by or on behalf of OBI or any of its Affiliates to a Third Party for enduse or consumption of such Product in a country after the governing healthregulatory authority of such country has granted Regulatory Approval for suchProduct.  A sale to an Affiliate shallnot constitute a First Commercial Sale.

 

**1.5****                              ****“Information”** shall mean alltangible and intangible (a) techniques, technology, practices, tradesecrets, inventions (whether patentable or not), methods, knowledge, know-how,skill, experience, test data and results (including pharmacological,toxicological and clinical test data and results), analytical and qualitycontrol data, results or descriptions, software and algorithms and (b) compositionsof matter, cells, cell lines, assays, animal models and physical, biological orchemical material.

 

**1.6****                              ****“LicenseAgreements”** shall mean the Scripps Agreement and the MSKCCAgreement.

 

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

 

**1.8****                              ****“MSKCCAgreement”** means that certain License Agreement, effective asof July 31, 2002, as amended, between Optimer and the MemorialSloan-Kettering Cancer Center.

 

**1.9****                              ****“NetSales”** shall mean the dollar amount determined by deducting from the grossinvoiced price billed for Products sold by or on behalf of OBI or itsAffiliates (or a licensee, sublicensee, assignee, or successor of any of them),as the case may be, to Third Parties in arm’s length transactions, thefollowing amounts, as allocable to Products: (i) all applicable, actuallyallowed sales credits accrued in accordance with accounting principalsgenerally accepted in the

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

**1.18****                       ****“Patents”** shall mean (a) patentsand patent applications, (b) all reissues, reexamination, renewals,extensions, non-provisionals, divisionals, continuations, andcontinuations-in-part of such patents and patent applications, (c) anyforeign counterparts of any of the foregoing and (d) any patents which issueon such patent applications described in clauses (a)-(c) or claim priorityto the patent applications described in clauses (a)-(c).

 

**1.19****                       ****“Phase2 Clinical Trial”**shall mean a human clinical trial that satisfies therequirements for a Phase 2 study as defined in 21 C.F.R. 312.21(b) (orits successor regulation).

 

**1.20****                       ****“Phase3 Clinical Trials”** shall mean a human clinical trial that satisfiesthe requirements for a Phase 3 study as defined in 21 C.F.R. 312.21(c) (orits successor regulation).

 

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

 

**1.22****                       ****“RegulatoryApproval”**shall mean any and all approvals (including priceand reimbursement approvals, if required), licenses, registrations, orauthorizations of any country, federal, supranational, state or localregulatory agency, department, bureau or other government entity that arenecessary for the manufacture, use, storage, import, transport and/or sale of aProduct in such jurisdiction.

 

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

 

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

 

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

 

**2.****                                     ****ASSIGNMENT**

 

**2.1****                              ****Assignment to OBI.**

 

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

 

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assignment of the AssignedPatents shall be evidenced by an executed Assignment of Patents and PatentApplications, which shall be prepared by OBI at its sole expense, and filed byOBI at its sole expense, with the U.S. Patent and Trademark Office and itsforeign counterparts as soon as reasonably practicable after the EffectiveDate.  Optimer agrees to undertake anyactions and execute and deliver any documents and instruments that arereasonably necessary to perfect OBI’s title in and to the Assigned Patents in atimely manner, if so requested by OBI at OBI’s sole expense.

 

**(b)****                                 **Subject to theterms and conditions of this Agreement, the parties acknowledge that Optimerhas assigned to OBI, and OBI has assumed, all of Optimer’s rights and obligationsunder (i) the Scripps Agreement pursuant to an Assignment and AssumptionAgreement between Optimer, OBI and The Scripps Research Institute (the ***“Scripps Assignment”***) and (ii) theMSKCC Agreement pursuant to an Assignment and Assumption Agreement betweenOptimer, OBI and Memorial Sloan-Kettering Cancer Center (the ***“MSKCC Assignment”*** and together withthe Scripps Assignment, the ***“Assignments”***).

 

**2.2****                              ****OptimerInformation.**  Promptlyafter the Effective Date, Optimer shall disclose to OBI such Information inOptimer’s Control and in written, electronic or tangible form that relatesdirectly and specifically to the Assigned Patents or the Licensed Patents.

 

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

 

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

 

**3.****                                     ****CONSIDERATION**

 

**3.1****                              ****MilestonePayments.**

 

**(a)****                                 ****P****r****oof of Principle Trial.**  OBI shall pay to Optimer a milestone paymentin the amount of $[***] (a ***“Proof of Principle TrialMilestone Payment”***) upon OBI’s or its Affiliates’ (or alicensee, sublicensee, assignee, or successor of any of them) completion of thefirst Phase 2 Clinical Trial of each Product resulting in data which OBI’sBoard of Directors determines in its good faith judgment to be reasonablysufficient to support the conduct of a Phase 3 Clinical Trial with respect tosuch Product in either the United States or the European Union (a ***“Proof of Principle Trial Milestone”***).  OBI shall notify Optimer promptly of itsdetermination that a Proof of Principle Trial Milestone has occurred and OBIshall pay the associated Proof of Principle Trial Milestone Payment no laterthan thirty (30) days following the achievement of such Proof of PrincipleTrial Milestone.  Notwithstandinganything to the contrary, if OBI or its Affiliates (or a licensee, sublicensee,assignee, or successor of any of them) initiates a Phase 3 Clinical Study withrespect to a Product, OBI’s Board of Directors shall

 

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***Confidential Treatment Requested

 

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

 

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

 

**(c)****                                 ****MilestonePayment Terms.**  A Proof of Principle Trial Milestone Payment andRegulatory Approval Milestone Payment shall bepayable one time for each Product when the Proofof Principle Trial Milestone and Regulatory ApprovalMilestone is achieved for such Product, as applicable, regardless ofthe number of indications for which such Product is developed orcommercialized.  All payments made toOptimer pursuant to this Section 3.1 are non-refundable and may not becredited against any other payments payable by OBI to Optimer under thisAgreement.

 

**3.2****                              ****Royalties.**

 

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

 

**(b)****                                 ****Payment;Reports. **RoyaltyPayments shall be calculated and reported for each calendarquarter.  All Royalty Payments shall bepaid within forty-five (45) calendar days of the end of each calendarquarter, unless otherwise specifically provided herein.  Each payment shall be accompanied by a reportof Net Sales of Products by or on behalf of OBI and its Affiliates insufficient detail to permit confirmation of the accuracy of the Royalty Paymentmade, including, without limitation and on a country-by-country basis, thegross sales and Net Sales of each Product, the Royalty Payments payable, themethod used to calculate the Royalty Payments, and the exchange rates used, ifapplicable.  OBI shall keep, and shallcause its Affiliates to keep, complete and accurate records pertaining to thesale or other disposition of Products in sufficient detail to permit Optimer toconfirm the accuracy of all Royalty Payments.

 

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

 

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

 

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*** Confidential Treatment Requested

 

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reports provided pursuant toSection 3.2(b).  An examinationunder this Section 3.2(d) shall not occur more than twice in anycalendar year.  The accounting firm shalldisclose to Optimer only whether the royalty reports are correct or incorrectand the specific details concerning any discrepancies.  No other information shall be provided toOptimer.  The accounting firm shallprovide OBI with a copy of any reports or conclusions made to Optimer.  Any and all such accounting firms shall signa confidentiality agreement (in a form and substance reasonably acceptable toOBI) as to any of OBI’s or its Affiliate’s confidential information that theyare provided, or to which they have access, while conducting any audithereunder.

 

**(e)****                                 ****Adjustments.**  Promptadjustments shall be made by OBI to compensate or adjust for any confirmederrors or omissions disclosed by and audit conducted pursuant to Section 3.2(d).  Optimer shall bear the full cost of suchaudit unless such audit discloses an underpayment by OBI of more than fivepercent (5%) of the amount of Royalty Payments or other payments due under thisAgreement, in which case, OBI shall bear the full cost of such audit and shallpromptly remit to Optimer the amount of any underpayment.

 

**4.****                                     ****INTELLECTUALPROPERTY MATTERS**

 

**4.1****                              ****PatentProsecution. **OBI shall havethe sole responsibility for the preparation, filing, prosecution andmaintenance of, and conducting or defending any interferences or similarproceedings and obtaining and maintaining any patent extensions, supplementaryprotection certificates and the like with respect to, the AssignedPatents.  As between the parties, OBIshall bear all costs associated with any such activities undertaken by OBI.

 

**4.2****                              ****PatentEnforcement.**  OBI shallhave the sole and exclusive right to bring and control any action or proceedingwith respect to infringement of any patents owned by OBI, including withoutlimitation the Assigned Patents, by counsel of its own choice.  As between the parties, OBI shall bear allcosts, and be entitled to all recoveries, associated with any such activitiesundertaken by OBI.

 

**4.3****                              ****Allegationof Infringement by Third Parties. **Subject to Article 7 hereof, each party shall be solelyresponsible, at its sole cost, for responding to any claim or allegation ofinfringement made by a third party against such party based on such party’sactions or activities.

 

**4.4****                              ****Terminationof Prior License Agreement; Forgiveness of Loans.**  As of the Effective Date, Optimer and OBIhereby agree that the Prior License Agreement be, and it hereby is, terminatedin all respects and of no further force or effect, other than Articles VIII andX of the Prior License Agreement which shall survive in accordance with Section 12.11thereof.  OBI hereby represents andwarrants to Optimer that no sublicenses have been granted under the PriorLicense Agreement and that any such sublicenses, to the extent existing as ofthe Effective Date, are hereby terminated in their entirety.  For purposes of clarification, OBI shall notretain any rights to OPT-80/Fidaxomicin under the Prior License Agreement orotherwise.  Those certain intercompanyloan obligations of OBI in the aggregate amount of $3,335,056.01, including OBI’sobligations to repay a portion of such intercompany loan obligations in twoequal installments on October 1, 2009 and October 1, 2010, asdescribed in the Prior License Agreement, be, and they hereby are, forgiven intheir entirety.

 

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**5.****                                     ****DILIGENCEOBLIGATIONS.**

 

**5.1****                              ****ProductDevelopment.**  OBI shalluse commercially reasonable and diligent efforts to pursue the development andcommercialization of OPT-88 Products and OPT-822/821 Products, and to maximizesales of such Products.  As used herein, “commerciallyreasonable and diligent efforts” shall mean those efforts, consistent with theexercise of prudent scientific and business judgment, as applied in thepharmaceutical industry to development and commercialization activitiesconducted with respect to other products of similar potential and market size.

 

**5.2****                              ****LicenseAgreement Obligations.** Pursuant to the Assignments, OBI shall perform all of Optimer’sobligations under the License Agreements and shall avoid any condition whichwould give Scripps or MSKCC the right to terminate the License Agreements orthe licenses granted pursuant thereto.

 

**5.3****                              ****AdditionalFunding.**  For purposesof Section 5.4, the failure of a Purchaser to fulfill its obligations topurchase shares of OBI’s common stock pursuant to the Financing Agreement shallbe deemed to be a failure regarding OBI’s obligations with respect to bothOPT-88 Products and OPT-822/821 Products.

 

**5.4****                              ****Reversionof Assignments and License to OBI Technology.**  If (a) OBI fails to fulfill any of theforegoing obligations set forth in this Article 5 and such failure is notcured within 30 days notice from Optimer, (b) OBI’s board of directorsdecides to abandon research and development of OPT-88 Products and/orOPT-822/821 Products, (c) OBI takes any affirmative action to terminateeither the Scripps Agreement or MSKCC Agreement or (d) Optimer validlyexercises its right to assume all of OBI’s rights and obligations under theMSKCC Agreement pursuant to the MSKCC Assignment, then

 

(i) OBI shallimmediately assign to Optimer, without further consideration, all of OBI’sright, title and interest in and to the OPT-88 Patents (if the condition setforth in clauses (a)-(d) relates to OPT-88 Products or the Scripps Agreement)and/or the OPT-822/821 Patents (if the condition set forth in clauses (a)-(d) relatesto OPT-822/821 Products or the MSKCC Agreement) and OBI agrees to undertake anyactions and execute and deliver any documents and instruments that arereasonably necessary to perfect Optimer’s title in and to the OPT-88 Patentsand/or OPT-822/821 Patents, as applicable, in a timely manner, if so requestedby Optimer at Optimer’s sole expense;

 

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

 

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(iii) Optimer’sobligations under Section 2 related to the OPT-88 Patents and the ScrippsAgreement and/or the OPT-822/821 Patents and the MSKCC Agreement, asapplicable, shall terminate; and

 

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

 

**6.****                                     ****CONFIDENTIALITY**

 

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

 

**6.2****                              ****Exceptions. **Confidential Informationshall not include any information which the receiving party can prove bycompetent written evidence: (a) is now, or hereafter becomes, through noact or failure to act on the part of the receiving party, generally known oravailable; (b) is known by the receiving party at the time of receivingsuch information, as evidenced by its records; (c) is hereafter furnishedto the receiving party by a third party, as a matter of right and withoutrestriction on disclosure; (d) is independently discovered or developed bythe receiving party without the use of Confidential Information belonging tothe disclosing party; or (e) is the subject of a written permission todisclose provided by the disclosing party.

 

**6.3****                              ****AuthorizedDisclosure. **Each party maydisclose Confidential Information belonging to the other party only asexpressly permitted by this Agreement or if and to the extent such disclosureis reasonably necessary in the following instances:

 

**(a)****                                 **filing orprosecuting patents as permitted by this Agreement;

 

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

 

**(c)****                                 **prosecuting ordefending litigation as permitted by this Agreement;

 

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

 

**(e)****                                 **disclosure toAffiliates, employees, consultants or agents or other third parties inconnection with due diligence or similar investigations by such third parties,and disclosure to potential third party investors in confidential financingdocuments, provided, in

 

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each case, that any suchAffiliate, employee, consultant, agent or third party agrees to be bound byterms of confidentiality and non-use at least as restrictive as those set forthin this Article 6.

 

Notwithstanding the foregoing, in the event a party isrequired to make a disclosure of the other party’s Confidential Informationpursuant to Section 6.3(c) or (d), it will give reasonable advancenotice to the other party of such disclosure and use efforts to secureconfidential treatment of such information at least as diligent as such partywould use to protect its own confidential information, but in no event lessthan reasonable efforts.  The partieswill consult with each other on the provisions of this Agreement to be redactedin any filings made by the parties with the U.S. Securities and ExchangeCommission or as otherwise required by law. The parties’ obligations pursuant to this Article 6 shall survivefor a period of 7 years following the termination of this Agreement.

 

**7.****                                     ****INDEMNIFICATION**

 

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

 

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

 

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

 

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itsconsent (but such consent will not be unreasonably withheld or delayed), andwill not be obligated to pay the fees and expenses of any separate counselretained by the indemnified party with respect to such Losses.  The indemnified party shall provide theindemnifying party with all information in its possession and all assistancereasonably necessary to enable the indemnifying party to carry on the defenseof any such Losses.

 

**8.****                                     ****TERMAND TERMINATION.**

 

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

 

**8.2****                              ****Survival.** The parties’ obligations underSections 2.4, 6, 7, 8, and 9 shall survive any expiration termination of thisAgreement.

 

**9.****                                     ****MISCELLANEOUS**

 

**9.1****                              ****GoverningLaw; Venue.**This Agreement shall be governed by the laws of theState of California, without regard to any conflicts of law principles thatwould provide for application of the law of a jurisdiction outsideCalifornia.  The parties agree that anyaction brought by either party under or in relation to this Agreement,including without limitation to interpret or enforce any provision of thisAgreement, shall be brought in, and each party agrees to and does hereby submitto the jurisdiction and venue of, any state or federal court located in theCounty of San Diego, California, USA.

 

**9.2****                              ****EntireAgreement; Amendment. **This Agreement,together with the Exhibits hereto and each other agreement entered into by theparties in connection with this Agreement, constitute the entire, final andcomplete agreement and understanding between the parties with respect to thesubject matter hereof and thereof, and replaces and supersedes all priordiscussions and agreements between the parties with respect to such subjectmatter, including, without limitation, the Prior License Agreement.  No amendment, modification or waiver of anyterms or conditions hereof shall be effective unless made in writing and signedby a duly authorized officer of each party.

 

**9.3****                              ****Disclaimer. **Except as expressly set forth in this Agreement or any otheragreement entered into by the parties in connection with this Agreement, THE TECHNOLOGY AND INTELLECTUAL PROPERTY RIGHTSPROVIDED BY EACH PARTY HEREUNDER ARE PROVIDED “AS IS” AND EACH PARTY EXPRESSLYDISCLAIMS ANY AND ALL WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED, INCLUDINGWITHOUT LIMITATION THE WARRANTIES OF DESIGN, MERCHANTABILITY, FITNESS FOR APARTICULAR PURPOSE, NON-INFRINGEMENT OF THE INTELLECTUAL PROPERTY RIGHTS OFTHIRD PARTIES, OR ARISING FROM A COURSE OF DEALING, USAGE OR TRADE PRACTICES,IN ALL CASES WITH RESPECT THERETO.

 

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

 

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GRANTEDHEREUNDER; *provided, however,*that this Section 9.4 shall not be construed to limit either party’sindemnification obligations under Article 7.

 

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

 

**9.6****                              ****Successorsand Assigns. **Except asexpressly provided hereunder, neither this Agreement nor any rights orobligations hereunder may be assigned, sublicensed or otherwise transferred, byoperation of law or otherwise, by either party without the prior writtenconsent of the other party (which consent shall not be unreasonablywithheld).  The rights and obligations ofthe parties under this Agreement shall be binding upon and inure to the benefitof the successors and permitted assigns of the parties.  Any assignment not in accordance with thisAgreement shall be void.  To the extentOBI is permitted to and does assign, sublicense or transfer any of its rightsand obligations under this Agreement, OBI shall ensure that the assignee,sublicensee or transferee expressly assumes all of OBI’s applicable obligationsunder this Agreement and OBI shall agree to remain liable for such assignee’s,sublicensee’s or transferee’s performance of such obligations.

 

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

 

**9.8****                              ****Notice.**

 

**(a)****                                 **All noticesrequired or permitted to be given under this Agreement shall be in writing andshall be deemed to have been given (a) upon personal delivery to the partyto be notified at the address set forth below, (b) five (5) daysafter having been sent by registered or certified mail, return receiptrequested, postage prepaid, to the address set forth below, (c) one (1) dayafter deposit with a nationally recognized overnight courier, specifying nextday delivery to the address set forth below, with written verification ofreceipt, or (d) upon confirmation of receipt if sent by facsimile to thenumber set forth below.

 

To Optimer:

 

Optimer Pharmaceuticals, Inc.

10110 Sorrento Valley Road, Suite C

SanDiego, CA  92121

USA

Attn:  Chief Financial Officer

Fax: (858) 909-0737

 

To OBI:

 

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Optimer Biotechnology, Inc.

Room W1907, 19F, 3 YuanQu Street

Nankang Software Park,Taipei 115, Taiwan

Attn:  President & CEO

Fax: 02-2655-8798

 

Anyparty may, by written notice to the other, designate a new address or faxnumber to which notices to the party giving the notice shall thereafter bemailed or faxed.

 

**(b)****                                 **During the termof this Agreement, OBI shall as promptly as possible forward to Optimer anywritten correspondence (or a written summary of oral correspondence) betweenOBI and either The Scripps Research Institute or the Sloan-Kettering Institutefor Cancer Research which, in either case, relates to the Licensed Patents, analleged breach by OBI under the License Agreements or the potential terminationof the License Agreements or the licenses granted thereby.

 

**9.9****                              ****Counterparts;Facsimile. **This Agreementmay be executed in two or more counterparts, each of which shall be an originaland all of which shall constitute together the same document.  Facsimile signatures shall have the sameforce and effect as originals.

 

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

 

**9.11****                       ****IndependentContractors. **Each partyshall act solely as an independent contractor, and nothing in this Agreementshall be construed to give either party the power or authority to act for, bindor commit the other party in any way. Nothing herein shall be construed to create the relationship ofpartnership, principal and agent, or joint venture between the parties.

 

**9.12****                       ****U.S.Dollars.**  Allreferences in this Agreement to dollars or $ shall mean United States dollarsunless explicitly stated otherwise.

 

*[Signature Page Follows]*

 

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**INWITNESS WHEREOF**, the parties have executed this IntellectualProperty Assignment and License Agreement on the Effective Date.

 

 
| **OPTIMER  PHARMACEUTICALS, INC.** | ** **            | **OPTIMER  BIOTECHNOLOGY, INC.** |
|------------------------------------|-----------------------|----------------------------------|
| ** **                         | ** **            | ** **                       |
| By:                                | /s/  Michael N. Chang |                             | By: | /s/  Youe-Kong Shue |
|                               |                  |                             |   |   |
| Name:                              | Michael  N. Chang     |                             | Name: |  Youe-Kong Shue |
|                               |                  |                             |   |   |
| Title:                             | CEO                   |                             | Title: | President  and CEO |

 

[SignaturePage to IP Assignment and License Agreement]

 

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**SCHEDULE1**

 

**OPT-88**

 

[***]

 

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*** Confidential Treatment Requested

 

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**SCHEDULE2**

 

**OPT-822/821**

 

[*****]**

 

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*** Confidential Treatment Requested

 

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**EXHIBIT A**

 

**OPT-88PATENTS**

 

[***]

 

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*** Confidential Treatment Requested

 

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**EXHIBIT B**

 

**OPT-822/821PATENTS**

 

[***]

 

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*** Confidential Treatment Requested

 

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