Exhibit
10.4


 


Transfer, Consent to Transfer, 

Amendment and Assumption 

of License Agreement


 


This
Transfer, Consent to Transfer, Amendment and Assumption of License Agreement (“Transfer &
Assumption Agreement”), effective as of July 31, 2005 (the “Effective Date”),
is entered into by and among the Regents of the University of California, a
California corporation (“Licensor”), Collateral Therapeutics, Inc., a
Delaware corporation (“Transferor”), and Cardium Therapeutics, Inc., a
Delaware Corporation (“Transferee”), each a Party, collectively Parties hereto,
in each case including its respective corporate affiliates, successors and
assigns.


 


RECITALS


 


Whereas,
Licensor and Transferor previously entered into a license agreement for Angiogenesis Gene Therapy, dated June 18,
1997 and including subsequent amendments thereto (UC Agreement No. 97-04-0664
referred to herein as the “License Agreement”);


 


Whereas,
Transferor and its affiliates have elected to pursue product development
efforts and product candidates other than those related to the License
Agreement;


 


Whereas,
Transferee is interested in pursuing certain research and development in the
cardiovascular field and, for this purpose and pending receipt of necessary
funding as described below, wishes to acquire the rights of Transferor under
the License Agreement, and is willing to accept the corresponding obligations,
thereby completely assuming both the rights and the obligations of Transferor
with respect to the License Agreement; and


 


Whereas,
the Parties jointly agree to transfer the entirety of Transferor’s rights and
obligations under the License Agreement to Transferee, amending the License
Agreement to reflect such transfer;


 


AGREEMENT


 


Now,
therefore, in consideration of the promises and covenants contained herein, and
other good and valuable consideration, the receipt of which is hereby
acknowledged, and intending to be legally bound, the Parties agree as follows:


 


1.             Qualified Financing as Condition
Precedent to Transfer of Rights and Assumption of Obligations; Termination of
License Agreement in the Event of Non-Occurrence of Transfer and Assumption.  The transfer of rights and assumption of
obligations under the License Agreement as contemplated hereby (and the
amendments as provided below), shall be conditioned upon, and shall occur upon
the date of, the closing of a qualified financing pursuant to which Transferee
has received funding of at least Twenty Million U.S. Dollars or its substantial
equivalent (a “Qualified Financing”). 
The date of closing of the Qualified Financing and coincident transfer
of rights and obligations under this Transfer & Assumption Agreement
shall be referred to herein as the “Transfer Date”.  The occurrence of the transfer of rights and
obligations in connection with the Qualified Financing shall be confirmed to
Licensor by completion and delivery by fax or mail of a “Confirmation of
Transfer and Assumption of Rights” substantially in the form as attached hereto
as Appendix A but which has been executed by Transferor and Transferee on or
promptly following the Transfer Date. 
Since, in the absence of


 





















 


the
proposed Transfer and Assumption, Transferor would otherwise have provided or
provide notice to Licensor of its election to terminate the License Agreement
(in accordance with Article 10 of the License Agreement), the Parties
hereby agree that in the event that the Transfer Date (and coincident Transfer
and Assumption) does not occur by November 30, 2005 (the “Termination Date”),
then the License Agreement may thereafter be terminated by Licensee effective
immediately upon Licensee’s written notice of such termination to Licensor.


 


2.             Transfer and Assumption as of
Transfer Date, Negation of Agency. 
Effective on and from the Transfer Date, Transferor hereby transfers,
and Transferee hereby assumes, the entirety of the Transferor’s ongoing rights,
title and interest in, and the entirety of the Transferor’s ongoing  obligations arising from, the License
Agreement (which transfer and assumption are referred to herein as the “Transfer
and Assumption”).  Neither Transferee nor
Transferor are agents or affiliates of the other and, following this Transfer
and Assumption, Transferor shall remain solely responsible for satisfaction of
any and all obligations arising prior to the Transfer Date, but Transferee
shall become solely responsible for satisfaction of any and all obligations
arising on or after the Transfer Date. 
The Parties agree that there are no outstanding material defaults under
the License Agreement as of the Effective Date; and that although all ongoing
rights are to be transferred and assumed as of the Transfer Date, this Transfer
and Assumption Agreement is without prejudice to any rights possessed by
Transferor prior to the Transfer Date.


 


3.             Amendment. The License Agreement
is amended as follows, effective as of the Transfer Date noted above:


(i) 
in the first paragraph, “Collateral Therapeutics (“Licensee”), a California
corporation having a principal place of business at 9360 Towne Center Drive,
San Diego, California 92121” as Licensee is replaced by “Cardium Therapeutics, Inc.,
a Delaware corporation having a principal place of business at 11622 El Camino
Real, Suite 300, San Diego, California 92130” as Licensee;


(ii) 
in Section 18.1, notice in the case of Licensee shall be replaced with the
following: “Cardium Therapeutics, Inc., 11622 El Camino Real, Suite 300,
San Diego, CA 92130, Tel. (858) 794-3428, Fax (858) 794-3430, Attn: General
Counsel”.


 


4.             Consent.  Licensor hereby consents to the Transfer and
Assumption and to Amendment of said License Agreement as described herein.


 


5.             Authority.  Each Party represents and warrants to the other that, as of the
Effective Date and as of the Transfer Date, it: (1) has and will have the
corporate power and authority and the legal right to enter into this Agreement
and to perform its obligations hereunder; (2) has taken and/or will take
all necessary corporate action on its part required to authorize the execution
and delivery of this Agreement and the performance of its obligations
hereunder; (3) has not taken and will not take any action that is
inconsistent with the terms of this Agreement; (4) this Agreement has been
duly executed and delivered on behalf of such Party, and constitutes a legal,
valid and binding obligation of such Party and is enforceable against it in
accordance with its terms; and (5) all necessary consents, approvals and
authorizations of all governmental authorities and other persons or entities
required to be obtained by such Party in connection with entry into this
Agreement have been obtained.


 


6.             Further Assurances.  Each Party agrees to execute, acknowledge and deliver such further
instruments, and to do all such other acts as may be necessary or appropriate
in order to carry out the purposes and intent of this Transfer &
Assumption Agreement.


 


2





















 


7.             Successors. This Transfer &
Assumption Agreement shall be binding upon and inure to the benefit of the
Parties hereto and their respective successors and permitted assigns.


 


8.             Counterparts.  This Transfer & Assumption Agreement
may be signed in counterparts, each of which shall be deemed an original and
which shall together constitute one agreement.


 


IN
WITNESS WHEREOF, each of the Parties, intending to be legally bound, have
caused the execution of this Transfer & Assumption Agreement by their
respective duly-authorized officers who have signed below, to be effective as
of the date noted above.


 


	
  UNIVERSITY OF CALIFORNIA

  	
   

  	
  COLLATERAL THERAPEUTICS, INC.

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  By:

  	
  / S / Candace L. Voelker

  	
   

  	
   

  	
  By:

  	
   

  	
  / S / John Nicholson

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Name:

  	
  Candace L. Voelker

  	
   

  	
  Name:

  	
  John Nicholson

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Title:

  	
  Director, Licensing

  	
   

  	
  Title:

  	
  Treasurer

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Date:

  	
  October 1, 2005

  	
   

  	
  Date:

  	
  October 13, 2005

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  CARDIUM THERAPEUTICS, INC.

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  By:

  	
  / S / Christopher J. Reinhard

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Name:

  	
  Christopher J. Reinhard

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Title:

  	
  CEO

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Date:

  	
  October 3, 2005

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
  Approved as to legal form:

  	
   

  
	
   

  	
   

  	
  / S / P. Martin Simpson, Jr.

  	
  August 3, 2005

  	
   

  
	
   

  	
   

  	
  University Counsel

  
	
   

  	
   

  	
  Office of General Counsel

  
											



 


3





















 


Appendix A


Form of Confirmation of Transfer and Assumption


 


By
Fax: (510) 587-6090


 


University
of California

Office of Technology Transfer


1111
Franklin Street, 5th Floor


Oakland,
California 94607-5200


 


Attn:
Bernadette McCafferty


 


Re:
Transfer and Assumption of License Agreement Related to 

Angiogenesis Gene Therapy (UC Control No. 97-04-0664)

from Collateral Therapeutics, Inc. to Cardium Therapeutics, Inc.


 


Dear
Sirs:


 


This
is to confirm, pursuant to Section 1 of the Transfer, Consent to Transfer,
Amendment and Assumption of License Agreement (the Transfer and Assumption
Agreement) effective as of        by and among the
Regents of the University of California (as Licensor), Collateral Therapeutics, Inc.
(as Transferor) and Cardium Therapeutics, Inc. (as Transferee), that the
transfer of rights and obligations coincident with the closing of the Qualified
Financing occurred on        (the Transfer Date).


 


Sincerely,


 


	
  COLLATERAL THERAPEUTICS, INC.

  	
   

  	
  CARDIUM THERAPEUTICS, INC.

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  By:

  	
   

  	
   

  	
   

  	
  By:

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Name:

  	
   

  	
   

  	
  Name:

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Title:

  	
   

  	
   

  	
  Title:

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Date:

  	
   

  	
   

  	
   

  	
  Date:

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  Acknowledged
  by:

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  THE REGENTS OF THE UNIVERSITY OF CALIFORNIA

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  By:

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Name:

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Title:

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Date:

  	
   

  	
   

  	
   

  	
   

  	
   

  
													



 


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