Exhibit
10.2


 


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 August 31, 2005(the “Effective
Date”), is entered into by and among Yale University, a corporation organized
and existing under and by virtue of a charter granted by the general assembly
of the Colony and State of Connecticut (“Licensor”), Schering
Aktiengesellschaft, a German 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 related to
an invention entitled “eNOS Mutations Useful for Gene Therapy and Therapeutic
Screening”, effective as
of 9 August, 2000, and including any subsequent amendments thereto (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.  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.  Licensor and Transferor reserve the right to
cancel this Transfer & Assumption Agreement in the event that the
Qualified Financing does not occur within six months of the Effective Date.  Since, in the absence of the proposed
Transfer and Assumption, Transferor would likely already have provided
termination notice to Licensor, 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, provided that Transferor has satisfied all of its
obligations to Licensor prior to the date of such proposed termination.


 


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; that this Transfer and
Assumption Agreement is without prejudice to any rights possessed by Transferor
prior to the Transfer Date.  In order to
further clarify and avoid any potential uncertainty, the Parties acknowledge
that until the Transfer Date, the rights and obligations of the Transferor shall
remain in effect (and none of the following amendments to the License Agreement
shall have any effect); and that beginning with and following the Transfer and
Assumption on the Transfer Date, the following amendments shall be in effect
and the Transferor shall have no rights or obligations under the License
Agreement.


 


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


(i) 
in the first paragraph, the party “SCHERING AKTIENGESELLSCHAFT with offices in
Mullerstrasse 178, D-13353, Berlin, Germany” 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 3.3, the phrase “reaching the ‘B3’ decision, that is to file an
IND and initiate” is replaced by “filing an IND to initiate”; and references to
“Schering” are replaced by “LICENSEE”;


(iiii)  in Section 4.2.1, the phrase “upon
entering LICENSEE’S ‘B2’ phase of drug development (preclinical development and
regulatory toxicity)” is replaced by “upon completion of preclinical studies,
including toxicity studies, requisite to the filing of an IND”;


(iv) 
in Section 11.1, the phrase “‘Schering’ or ‘Berlex’ nor any adaptation of
such names” is replaced by “Cardium Therapeutics nor any adaptation of such
name”;


(v) 
in Section 14.1, the address for notice to Licensee is replaced with the
following: “Cardium Therapeutics, Inc., 11622 El Camino Real, Suite 300,
San Diego, CA 92130, 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.


 


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.


 


 


	
  YALE UNIVERSITY

  	
   

  	
  SCHERING
  AG

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  By:

  	
   /
  S /Jon Soderstom

  	
   

  	
   

  	
  By:

  	
   /
  S / Dr. Hubertus Erlen

  	
   

  
	
  Name:

  	
  Jon
  Soderstom

  	
   

  	
  Name:

  	
  Dr. Hubertus
  Erlen

  
	
  Title:

  	
  Managing
  Director,

  	
   

  	
  Title:

  	
  Chairman
  of the Executive Board

  
	
   

  	
  Office
  Cooperative Research

  	
   

  	
  Date:

  	
  October 13,
  2005

  	
   

  
	
  Date:

  	
  August 31,
  2005

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
  By:

  	
   /
  S / Dr. Karin Dorrepaal

  	
   

  
	
   

  	
   

  	
   

  	
  Name:

  	
  Dr. Karin
  Dorrepaal

  
	
   

  	
   

  	
   

  	
  Title:

  	
  Member
  of the Executive Board

  
	
   

  	
   

  	
   

  	
  Date:

  	
  October 13,
  2005

  
	
  CARDIUM THERAPEUTICS, INC.

  	
   

  	
   

  	
   

  
	
  By:

  	
   /
  S / Christopher J. Reinhard

  	
   

  	
   

  	
   

  	
   

  
	
  Name:

  	
  Christopher
  J. Reinhard

  	
   

  	
   

  	
   

  
	
  Title:

  	
  CEO

  	
   

  	
   

  	
   

  
	
  Date:

  	
  September 16,
  2005

  	
   

  	
   

  
										



 





















 


Appendix A


Form of Confirmation of Transfer and Assumption


 


By
Fax: (203) 436-8086


 


Yale
University


Office
of Cooperative Research


433
Temple St.


New
Haven CT, 06511


 


Attn:
E. Jonathan Soderstrom, Ph.D.


 


Re:
Transfer and Assumption of License Agreement Related to eNOS

from Schering AG 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
Yale University (as Licensor), Schering AG (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,

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  SCHERING AKTIENGESELLSCHAFT

  	
   

  	
  CARDIUM THERAPEUTICS, INC.

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  By:

  	
   

  	
   

  	
   

  	
  By:

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Name:

  	
   

  	
   

  	
  Name:

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Title:

  	
   

  	
   

  	
  Title:

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Date:

  	
   

  	
   

  	
   

  	
  Date:

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Acknowledged
  by:

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  YALE UNIVERSITY

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  By:

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Name:

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Title:

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Date: