Unassociated Document


Agreement




This
Agreement
effective as of the 9th day of
March 2005 (the “Effective Date”) is entered into by and between Keryx
Biopharmaceuticals, Inc., a
Delaware corporation having an office at 750 Lexington Avenue, 26th Floor,
New York, NY 10022 (“Keryx”), Procept,
Inc., a
Delaware Corporation having an office at 10 East 53rd Street, 33rd Floor,
New York, NY 10022 (“Procept”), and the
United States Public Health Service, an
agency of the United States Government, having an address at Office of
Technology Transfer, National Institute of Health, 6011 Executive Boulevard,
Suite 325, Rockville, MA 20852-2804 (“PHS”). Each of Keryx, Procept and PHS
shall be referred to as a Party and collectively as the Parties.

 

WHEREAS, Procept
and the Penn State Research Foundation (PSRF) are parties to a license agreement
dated February 6, 1998 as amended (the “License Agreement”) relating to patent
rights associated with 06-Benzylguanine and/or its derivatives (the “Patent
Rights”);

 

WHEREAS, Procept
has sub-licensed to AOI Pharmaceuticals, Inc. (“AOIP”) its rights to the Patent
Rights under the License Agreement pursuant to a Sublicense Agreement executed
on or about October 13, 2000, as amended (the “Sublicense
Agreement”);

 

WHEREAS, as a
result of the acquisition of AOIP by Keryx, AOIP has become a wholly-owned
subsidiary of Keryx;

 

WHEREAS, PSRF
and PHS entered into Interinstitutional Agreements executed January 29, 2002
(the “Interinstitutional Agreements”) pursuant to which PHS has exclusive
licensing rights associated with the Patent Rights;

 

WHEREAS, the
University of Chicago and PHS entered into Interinstitutional Agreement
effective February 28, 2002 (the “Interinstitutional Agreements”) pursuant to
which PHS has exclusive licensing rights associated with the Patent
Rights;

 

WHEREAS,
such
Interinstitutional Agreements superseded and terminated the License Agreement,
but not the Sublicense Agreement; and Procept and PHS have executed a new
exclusive patent license agreement dated February 28, 2002 regarding the Patent
Rights, as amended (the “Revised License Agreement”); 

 




















 

WHEREAS, Keryx
desires to purchase and assume from Procept and Procept has agreed to sell and
assign to Keryx all of Procept’s rights, interests and obligations under the
Revised License Agreement, which constitutes substantially the entire business
of Procept relating to the operations which concern the Revised License
Agreement; and

 

WHEREAS, in
order to effectuate such Assignment, pursuant to Section 14.07 of the Revised
License Agreement, Procept is obligated to pay PHS the sum of seventeen thousand
five hundred dollars ($17,500). 

 

NOW
THEREFORE, in
consideration of the foregoing premises and the mutual covenants herein
contained, and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the Parties hereby agree as
follows:

 

1.  Procept
hereby assigns to Keryx all of its rights and interests under the Revised
License Agreement, and Keryx hereby assumes all of the obligations of Procept
under the Revised License Agreement (whether such obligations accrued prior to
or after the date of this Agreement); provided, however, such assignment and
assumption shall become effective upon the receipt by Procept of the First
Installment. Procept, PHS and Keryx agree to take all reasonable steps necessary
to effectuate and perfect the actions set forth in this Paragraph.

 

2.  Procept
represents and warrants to Keryx that (i) the rights and interest conveyed
hereunder are free and clear from any liens or encumbrances of any nature
created by Procept and, to the knowledge of Procept, are free from any
requirement of any past payments, charges, fees or conditions, rights or
restrictions, (ii) Procept is not a party to any pending claim, litigation or
proceeding contesting the rights and interests conveyed hereunder nor, to the
knowledge of Procept, is any such claim threatened against Procept, and (iii)
Procept has not sold, assigned, conveyed, transferred or delivered to any third
party, and, to the knowledge of Procept, no person or entity has any licenses or
other rights under the Revised License Agreement. Keryx represents and warrants
to Procept that AOIP has performed and discharged all of its obligations under
the Sublicense Agreement.

 




















 

3.  Procept
agrees to indemnify and hold Keryx, its directors, officers, employees and
agents harmless from and against any claims, liabilities, damages and expenses
in connection therewith (including reasonable attorney fees, costs and other
expenses of litigation) resulting from material misrepresentation or material
breach of a warranty by Procept under this Agreement. Keryx
agrees to indemnify and hold Procept, its directors, officers, employees and
agents harmless from and against any claims, liabilities, damages and expenses
in connection therewith (including reasonable attorney fees, costs and other
expenses of litigation) resulting from any failure of AOIP to perform and
discharge its obligations under the Sublicense Agreement. 

 

4.  The
Parties hereby agree that for purposes of the Revised License Agreement, AOIP
shall be deemed a third party sublicensee under the Sublicense Agreement and not
an Affiliate of Keryx, with the effect among other things, that all amounts
(including milestones and royalties) owed or to be owed by Procept under the
Revised License Agreement currently applicable to Procept as a result of the
Sublicense Agreement shall remain unchanged by the assignment, except that they
shall become the responsibility of Keryx, irrespective of the affiliated
relationship between Keryx and AOIP. Following this assignment, for all purposes
of the Sublicense Agreement, any reference to Procept shall be deemed a
reference to Keryx. The parties acknowledge and agree that the Sublicense
Agreement shall survive this assignment. 

 

5.  As full
consideration for the agreements set forth herein, Keryx agrees to pay Procept a
total consideration of one hundred fifty eight thousand seven hundred and fifty
dollars ($158,750), payable in two installments, a first installment of eighty
three thousand seven hundred fifty dollars ($83,750) (the “First Installment”),
and a second installment of seventy five thousand dollars ($75,000) (the “Second
Installment”). The First Installment shall be payable as provided in Paragraph
6, and the Second Installment shall be evidenced by a promissory note from Keryx
payable to Procept, in the form attached hereto as Exhibit
A, which
bears no interest until after the maturity date and shall be due and payable on
December 31, 2005.

 




















 

6.  Within
ten (10) business days following execution of this Agreement by all
Parties, Keryx shall make payment of the First Installment as follows: (i) Keryx
shall pay PHS on behalf of Procept the sum of seventeen thousand five hundred
dollars ($17,500) in full satisfaction of the terms and conditions of Section
14.07 of the Revised License Agreement, and (ii) Keryx shall pay Procept an
amount equal to sixty six thousand two hundred and fifty dollars ($66,250),
which represents the First Installment less the amount paid by Keryx to PHS on
behalf of Procept pursuant to this Paragraph 6(i).

 

7.  This
Agreement embodies
the entire understanding of the parties as to its subject matter hereof.


 

8.  This
Agreement shall be
construed, governed, interpreted and applied in accordance with the laws of the
State of New York, without regard to its conflict of law rules.

 

9.  This
Agreement has been
prepared jointly and shall not be strictly construed against any
Party.




IN
WITNESS WHEREOF, the
Parties hereto have executed this Agreement as of
the Effective Date.

 

SIGNATURES
BEGIN ON NEXT PAGE

 

























PROCEPT-KERYX
ASSIGNMENT AGREEMENT 




SIGNATURE
PAGE




For
Keryx Biopharmaceuticals, Inc.







/s/
Michael S.
Weiss                      


Name:
Michael S. Weiss

Title:
Chairman & CEO

Date:
3/15/05










For
Procept, Inc. 







By:
/s/ Salvatore A.
Bucci             


Name:
Salvatore A. Bucci 

Title:
President & CEO

Date:
3/10/05

 




















 

ACKNOWLEDGEMENT
AND ACCEPTANCE




By
PHS:




/s/
Steven M. Ferguson                         Date:
3/17/05

Steven M.
Ferguson      




Director,
Division of Technology Development and Transfer

Office of
Technology Transfer

National
Institutes of Health




Official
and Mailing Address for Notices:




Office of
Technology Transfer

National
Institutes of Health

6011
Executive Boulevard, Suite 325

Rockville,
Maryland 20852-3804 U.S.A.




By
PSRF:




/s/
David E. Branigan                      Date:
3/23/05

David E.
Branigan




Treasurer,
The Penn State Research Foundation




Official
and Mailing Address for Notices:




Ronald J.
Huss

The
Pennsylvania State University

Intellectual
Property Office

113
Technology Center

University
Park, PA 16802 U.S.A.







By the
University of Chicago




/s/
Alan E. P. Thomas                     Date:
3/25/05

Alan E.
P. Thomas




Director,
Office of Technology & Intellectual Property

University
of Chicago




Official
and Mailing Address for Notices:

University
of Chicago

5555
South Woodlawn Avenue, Suite 300

Chicago,
IL 60637 U.S.A